DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Remarks
The amendments and remarks filed on 01/07/2026 have been entered and considered. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action. The rejections and/or objections presented herein are the only rejections and/or objections currently outstanding. Any previously presented objections or rejections that are not presented in this Office Action are withdrawn. Claims 1-6, 9-10, 13-15, 17-19, 25, and 27-38 are pending; Claims 7-8, 11-12, 16, 20-24, and 26 are cancelled; Claims 1-6, 9-10, 13-15, 17-19, 25, and 27 are amended; Claim 28-38 are new; and Claims 1-6, 9-10, 13-15, 17-19, 25, and 27-38 are under examination.
Withdrawal of Rejections
The rejection of claim 16 under 35 U.S.C. 112(b) is withdrawn due to the cancellation of the claim.
The rejections of claims 1-19, 25, and/or 27 under 35 U.S.C. 103 over Burnett in view of Bortner and/or other cited prior art are withdrawn due to the amendment to the claims as well as Applicant’s persuasive arguments in the 01/07/2026 response, based on Dr. James Peter Stratford’s Declaration under 37 CFR 1.132 filed on 01/07/2026 as well as Dr. Munehiro Asari’s Declaration under 37 CFR 1.132 filed on 01/07/2026.
Claim Rejections - 35 USC § 112, First Paragraph
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 25 and 28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method of detecting viability of cells through cell-by-cell based approach by acquiring with an image sensor microscope images of fluorescent response of each of individual cells and analyzing the images, does not reasonably provide enablement for a method of detecting cell viability without using the cell-by-cell based approach for acquiring with image sensor microscope images of fluorescent response of each of individual cells and analyzing the images. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention the invention commensurate in the entire scope with these claims.
The breadth of the claims. Claims 25 and 28 are directed to a method of detecting vitality of cells in a sample containing vital cells and non-vital cells, comprising steps: providing a mixture of the sample and a fluorescent dye that responds to a change in cell membrane potential; applying a voltage with an voltage generator across a portion of the sample and inducing a cell membrane potential response in each vital cell as well as a directionally-opposite cell membrane potential response in each non-vital cell, thereby causing the fluorescent dye to be associated with each induced cell to present corresponding fluorescence changes (increase or decrease); recording fluorescence changes showing increases and decreases in fluorescence while the voltage is applied over a period of time and identifying certain cells to be the vital cells and other cells as the non-vital cells depending on a recorded increase or decrease in fluorescence.
Examiner notes that the sample in the claimed method comprises a mixture of vital cells and non-vital cells, which respectively show opposite changes in fluorescence response when voltage stimulation is applied to the mixed cells, e.g. when an increase in fluorescence is shown in vital cells, a decrease in fluorescence is shown in non-vital cells. As such, fluorescence response detected from the mixed vital and non-vital cells does not reflect truly fluorescence response in the vital cells or non-vital cells. Thus,
it is essential for the claimed method to comprise steps for performing cell-by-cell recording and analysis of fluorescent response changes in each of individual cells by applying an image sensor to acquire microscope images of fluorescent response of each cell and compare the images for determining which cells are vital and which cells are non-vital, as evidenced by the specification of the instant application (see page 9/line 34 – page 10/line 21; Figs. 4A-4C) and Dr. Stratford’s Declaration under 37 CFR 1.132 filed on 01/07/2026 (see Section 6 in pages 2 and 3 of Exhibit A). However, the instant claims 25 and 28 do not recite any active step for performing cell-by-cell based recoding (with image sensor) and analysis of fluorescent response changes in each of individual cells in the portion of the sample. Accordingly, the full scope of the claims encompasses a method comprising a step of recording fluorescence changes from a mixed population, not each of individual cells, of vital cells and non-vital cells, thus not allowing vital cells with increased fluorescence to be distinguished from non-vital cells with decreased fluorescence, and thus not allowing the determination of which cells show increases in fluorescence and which cells show decreases in fluorescence upon application of the voltage for detecting viability of cells.
The amount of direction or guidance presented and the existence of working examples. In the specification no specific working example is designated. However, the embodiment in page 9/line 34 – page 10/line 21 with results presented in Figs. 4A-4C is a working example-equivalent. This embodiment is directed to a method of identifying cell viability in a sample containing vital cells and non-vital cells of Bacillus subtilis by applying voltage (3V) to the cells, and the determination of cell vitality or lack thereof is carried out on a cell-by-cell basis, by acquiring/recording with an image sensor microscope images of fluorescence response of individual vital cell and individual non-vital cell during the application of voltage and further comparing the images to find out how fluorescence changes over the time, wherein an increase in fluorescence indicates the cells are vital. These disclosures indicate that the cell-by-cell based approach involved with acquiring microscope images with image sensor and recoding how fluorescence changes in each individual cell during voltage application is effective at identifying certain cells in a sample to be vital cells and other cells to be non-vital cells. However, the specification does not provide any information or guidance regarding how to use the claimed method to reach a goal of detecting cell viability and determining which cells are vital cells or non-vital cells without using an image sensor for acquiring microspore images and recoding how florescence changes on the cell-by-cell basis.
The state of prior art, and the predictability or unpredictability of the art. There is no teaching or suggestion in the prior art indicating that changes in fluorescence in each individual cell in a sample containing a mixture of vital and non-vital cells, during application of voltage, can be recorded and determined without using a cell-by-cell based approach.
The quantity of experimentation necessary. It is not routine in the art to determine during voltage application the changes in fluorescence of each individual cell in a sample containing a mixture of vital and non-vital cells for detecting cell viability or lack thereof, without using a cell-by-cell based approach involved with acquiring microscope images through image sensor. Neither the prior art nor disclosure of the specification shows that cell viability or lack thereof can be detected in a sample containing vital and non-vital cells without using a cell-by-cell based approach to acquire images and recoding changes in fluorescence in each of individual cells. Therefore, in absence of some guidance as to how to detect cell viability or lack thereof without using a cell-by-cell based approach for acquiring and recoding changes in florescence in each of vital cells and non-vital cells, one of skill in the art would have to carry out a large amount of experimentation to find which additional steps need to be included in the claimed method, or how to modify the claimed method, to reach the goal of detecting cell viability and determining which cells are vital cells or non-vital cells without using the cell-by-cell based approach.
Therefore, the full scope of claims 25 and 28 is not enabled due to the lack of information and guidance with regard to how to detect cell viability without using a cell-by-cell based approach. Thus, neither the specification nor the prior art enable the entire scope of the claimed invention.
Claim Rejections - 35 USC § 112(b), or 112, Second Paragraph
Claims 9-10, 15, 25 and 27-38 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 25 is indefinite because the claim lacks an essential step that accomplishes the goal of detecting cell viability and identifying vital cells and non-vital cells in a sample based on a recorded increase or decrease in fluorescence, as recited in the preamble and body of the claim. Examiner notes that given the sample recited in the claim comprises both vital cells and non-vital cells, it is essential for the claimed method to comprise steps for performing a cell-by-cell based process for recording/analysis of fluorescent response changes in each of individual cells by applying an image sensor to acquire microscope images of fluorescent response of each cell and compare the images for determining which cells are vital and which cells are non-vital, as evidenced by the specification of the instant application (see page 9/line 34 – page 10/line 21; Figs. 4A-4C) and Dr. Stratford’s Declaration under 37 CFR 1.132 filed on 01/07/2026 (see Section 6 in pages 2 and 3 of Exhibit A). However, the claim 25 does not recite any active step for performing cell-by-cell based recoding (with image sensor) and analysis of fluorescent response changes in each of individual cells so as to allow vital cells and non-vital cells to be identified based on a recorded increase or decrease in fluorescence. In the absence of this essential step, the claim is indefinite because it leaves the scope of the claim unclear. See Ex parte Erich, 3 USPQ2d1011, p.1011 (Bd. Pat. App. Int. 1986). For the purpose of examination with regard to prior art search, it is assumed that the cell-by-cell approach of the dependent claim 27 is a part of the claim 25.
Claim 25 is also indefinite due to the recitation of “the direction of the membrane potential change response” in the applying step of the claim. It is noted that only movement of ions associated with the membrane potential of cells has a direction when the ions move across membrane of the cells. Given the recited “membrane potential change response” has no direction, it is unclear what the recited “direction” specifically refers to.
Claim 29 is indefinite due to the recitation of “said acquiring the sequence of images includes acquiring at least two images during the step of applying the voltage; and said detecting includes comparing the images”. There is no sufficient antecedent basis for this limitation in the claim, because the claim 29 does not previously define any steps for acquiring a sequence of images. For the purpose of examination, it is assumed that the claim 29 depends on the claim 27.
Claim 30 is indefinite due to the recitation of “a first cell of said cells” in the acquiring step. It is noted there are two different cells populations previously defined in the claim: cells presented in the sample (at line 3 of the claim); and cells with induced hyperpolarization (at line 9 of the claim). It is unclear whether “said cells” recited in the acquiring step refers to the cells originally present in the sample or to those cells having induced hyperpolarization. In addition, the claim is indefinite due to the recitation of
“correlating said increase or decrease in fluorescence in the first cell with hyperpolarization in the first cell; and correlating said hyperpolarization and said increase or decrease in fluorescence, in said first cell, with said first cell being a vital cell …”. It is noted that a non-vital cell with de-polarization also shows a decrease in fluorescence. It is unclear how these correlating steps distinguish a decrease in fluorescence in a de-polarized non-vital cell from a decrease in fluorescence in a hyperpolarized vital cell. For the purpose of examination, it is assumed vital cells and non-vital cells are comprised in the sample, and the voltage application induces a cell membrane potential response in the vital cells as well as a directionally-opposite cell membrane potential response in non-vital cells, causing opposite fluorescent responses between the vital cells and non-vital cells.
Claims 30 and 31 are indefinite due to the recitation of “the application of the voltage”, “applying said voltage”, and “application of said voltage”. It is noted that the claims do not previously define applying a voltage to cells/sample. It is unclear where this voltage application comes from. For the purpose of examination, the operating step in the claim 30 is interpreted as: “operating the electrical system to generate an electric field and apply a voltage across the portion of the sample … in one or more cells”.
Claim 35 is indefinite due to the recitation of “the vital cells” at line 3 of the claim. The base claim 30, upon which the claim 35 depends, is directed to a method for detecting a vital cell possibly present in a sample and no “vital cells” are specifically defined; and the claim 35 does not previously define any “vital cells” in the sample, either. It is unclear where the recited “the vital cells” come from.
Claim 37 is indefinite due to the recitation of “… apply the voltage … cause redistribution of a Thioflavin fluorescent dye and accumulate relative to said vital cells”. The claim 37 and base claims 30 and 35-36 do not define the fluorescent dye
is a Thioflavin fluorescent dye. It is unclear whether the recited Thioflavin is the fluorescent dye used in the claimed method, or the claim recites the Thioflavin only to reflect what this fluorescent dye could possibly do when a voltage is applied.
Claim 9 is indefinite due the recitation of “detecting the cells in the sample to be non-vital cells if … decrease by more than a predetermined amount over the period of time”. It is noted that the base claim 1 defines a step of detecting the second cell in the sample to be non-vital cell. It is unclear how the second cell detected in the claim 1 is related to the cells detected in the claim 9.
Claim 10 is indefinite due the recitation of “said applying, illuminating, measuring … and detecting steps are maintained to track … at least one vital cell and at least one non-vital cell in the same sample”. It is noted that the base claim 1 defines detecting a first cell and a second cell in the sample to be respectively a vital cell and a non-vital cell. It is unclear how the recited “at least one vital cell” and “at least one non-vital cell” are related to the first cell and the second cell recited in the base claim 1. Furthermore, the recited limitation “in the same sample” renders the claim to be indefinite because there is no comparison phase. It is unclear comparing to what specific bench mark, a sample can be considered as being the same sample.
Claim 15 is indefinite due the recitation of “detecting the vital cells in the sample if … changes by more than a predetermined amount over the period of time”. This limitation indicates that detecting vital cells in the sample is optional and it is comprised in the claimed method only when the response changes by more than a predetermined amount. However, this limitation conflicts with the base claim 1 because the claim 1 defines a step of detecting a first cell in the sample to be a vital cell having ability to proliferate. It is unclear how the first cell detected in the claim 1 is related to the cells detected in the claim 15 and whether the claimed method comprises detecting vital cells. For the purpose of examination, it is assumed that the vital cell detected in the claim 1 has its fluorescence change by more than a predetermined amount.
The remaining claims are indefinite because they are dependent on an indefinite claim.
Allowable Subject Matter
Claims 1-5, 13-14, 17-19 are allowable over the prior art of record.
The subject matter of Claims 9-10, 15, 25 and 27-38 is free of art.
Response to Arguments
Applicant's arguments about the rejections of claims 1-19, 25, and/or 27 under 35 U.S.C. 103 over Burnett in view of Bortner and/or other cited prior art in the 01/07/2026 response (pages 9-21) have been fully considered but they are moot, because the 103 rejections have been withdrawn, as indicated above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Qing Xu, Ph.D., whose telephone number is (571) 272-3076. The examiner can normally be reached on Monday-Friday from 9:30 AM to 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath N. Rao, can be reached at (571) 272-0939. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (571) 272-1600.
/Qing Xu/
Patent Examiner
Art Unit 1656
/MANJUNATH N RAO/Supervisory Patent Examiner, Art Unit 1656
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