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 .
Priority
This application filed on 10/30/2020 is a continuation of PCT/EP2019/060864, filed on 04/29/2019. This application also claims foreign benefit to EP 18170409.9, filed on 05/02/2018.
Status of the Claims
Claims 1, 3, 6-13 and 16-17 are pending. Claims 2, 4-5 and 14-15 are cancelled. Claim 1 is amended. Claims 1, 3, 6-13 and 16-17 are examined herein.
Rejection/Objection status
The objection of claims 1, 18 and 13 are maintained.
The rejections of claims 1, 3, 6-13 and 16-17 under 35 USC 103 are updated in view of the amendment of the claim.
New ground of rejection is made as necessitate by the claim amendments
Claim Objections
Claims 1, 8 and 13 are objected to because of the following informalities: claims 1, 8 and 13 contain many periods, e.g., a., b., i., ii., etc.
It is noted that each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviation. See MPEP 608.01(m).
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, 6-13 and 16-17 are rejected under 35 U.S.C 103 as being unpatentable over Liu et al. (“Simple, rapid, homogeneous oligonucleotides colorimetric detection based on non-aggregated gold nanoparticles” Chem, Commun., 2012 48, 3164-3166, PTO-892 dated 12/14/2023 and dated 07/30/2024) in view of Giehring (US20170016890) and Comley (ELISA ASSAYS recent innovations take analyte detection to new levels, 2012).
As to claims 1, and 16-17, Liu teaches a method for detecting a target in a sample comprising a step of incubating at the same time in a buffer solution in a reaction well (see supplemental information, page 2, para 3, lines 3-4: reaction performed in PBS-T buffer),
i/ the sample is suspected of containing one or more target molecules, ii/ capture molecules suitable for binding to the target molecules, wherein the capture molecules are coupled to capture-beads, (see supplemental information, page 1 Preparation of Magnetic Beads Modified with Capture Probe, page 2 par. 3: teaching that sample solution containing target DNA was added to magnetic bead modified with capture probe),
iii/ a defined amount of detection molecules suitable for binding to the target molecules and/or the capture molecules, wherein the detection molecules are coupled to detection-beads (see page 3164 col.2 par.2, page 3165 col.1 par.1-2: teaching that the detection probe is 30 nm GNPs, GNPs is modified with a sequence partially complementary to the target sequence of interest, i.e., GNPs can bind to the target molecule, GNPs is also loaded with the reporter and is used for colorimetric observation).
The capture-beads are separable from the detection beads, and wherein the capture-beads and/or the detection-beads are single compact beads (see page 3165 col.1 par.1-2 and Scheme 1: disclosing that the capture-bead is a magnetic particle, the detection-bead is a GNP, and they are separated from each other by a magnetic field; see Scheme 1, page 3165 col.1 par.1-2, supplemental information, page 1 Preparation of Magnetic Beads Modified with Capture Probe and Preparation of GNPs Modified with Reporter Probe: showing that the beads are single beads).
Liu also teaches a step of separating in the reaction well the capture-beads from the buffer solution comprising unbound detection-beads (see page 3165 col.1 par.1: teaching that magnetic captured-beads were employed to facilitate sample separation activated by an external magnetic field, Scheme 1: showing that unbound detection beads are separated from bound detection beads in the buffer solution).
Liu also teaches a step of detecting remaining unbound detection-beads in the buffer solution, which has been separated from the capture beads, wherein the detection of remaining unbound detection beads in the same reaction well as the incubation and separation by means of a label that does not require additional reagents for signal generation (see page 3165, Scheme 1, showing that superparamagnetic MBs with a carboxyl-modified coating which were employed to facilitate sample separation activated by an external magnetic field; page 3165 col.1 par.2, teaching that the rest of 30 nm GNPs in the supernatant after hybridization were used for colorimetric observation, the color of the supernatant changed from deep red to light red which could be easily observed by the naked eye; Fig.1 illustrates that the detection of unbound detection-beads occurs in the same reaction well);
wherein the label is a fluorescent tag (see supplemental information, page 1 Materials section and page 2 Quantification of PEG-thiol Oligonucleotides Loaded on GNPs section: reporter probe comprises FAM which is used to produce a fluorescent signal).
It is noted that the method does not comprise a washing step (see supplemental information, page 2, Detection of Sequence-specific DNA section).
Generally, Liu teaches, a simple rapid colorimetry for DNA detection based on gold nanoparticles and magnetic beads with high selectivity and sensitivity (see page 3164 col.1 par.1).
However, Liu does not teach the method is performed in a single automated system without involvement of any manual steps.
Giehring teaches a method for detecting a target molecule in a sample (see Abstract), comprising the sequential steps of:
a/ incubating at the same time in a buffer solution in a reaction well (see par.31-41):
i/ the sample suspected to contain one or more target molecules (see par.33),
ii/ capture molecules suitable for binding to the target molecules (see par.29), wherein the capture molecules are coupled to capture-beads (see par.29, 32), and
iii/ a defined amount of detection molecules suitable for binding to the target molecules and/or the capture molecules (see par.29 and 34), wherein the detection molecules are coupled to detection-beads (see par.140-143: “fluorescent dye is linked to a biological molecule (for example protein, antibody, antibody fragment) which has a suitable binding site and is able to bind the desired test component (preferably the biological analyte or analytes to be determined),” “fluorescent quantum dots (“Qdots”) can also be used to produce fluorescence markers”),
wherein the capture-beads are separable from the detection-beads (see par.29, 32, 34, 36: capture beads and detection beads can be separated by magnetic field; see par.52-53: the capture-beads can be a functionalized magnetic particles, so the separation step can be done by using magnetic element),
b/ separating in the reaction well the capture-beads from the buffer solution comprising unbound detection-beads (see par.36), and
c/ detecting remaining unbound detection-beads in the buffer solution (see par.26, 37), which has been separated from the capture-beads, wherein the detection of remaining unbound detection-beads occurs in the same reaction well as the incubation and separation by means of a label that does not require additional reagents for signal generation, wherein the separating occurs without passing the capture-beads through a density medium (see par.31-41),
wherein the label is a fluorescent tag (see par.34),
wherein the method does not comprise a washing step (see par.31-41: does not have a washing step).
Giehring teaches a measuring chamber for use in the method of Giehring, in which the chamber comprises a measuring window on the bottom. The sedimentation of the functionalized magnetic particles is so guided that no particles settle above the measuring window. The luminescence, preferably fluorescence, is measured with a fluorescence meter through the measuring window in the bottom of the measuring chamber. (See par.52-54)
Giehring teaches that the method steps can take place manually or in an automated manner, e.g., mixing step, introducing assay reagents, and measuring (see par.132-134, 152). The measuring chamber of Giehring can be combined with known laboratory devices, e.g., a holder system, in order to be able to work on devices which are conventional in the laboratory and thus to be able to achieve a high degree of automation (see par.192).
Comley teaches a plurality of automated systems for immunoassay that enables assay processing in miniaturized reaction volumes with walkaway operation (see page 32). The benefits of an automated system are continuous automation, reproducible and rapid analysis of biological samples, easy set-up and use, potential for broad deployment and cost savings per data point (see page 31 par.2). The immunoassay can be done by fully automated robotic processing comprising: sample/reagent additions, plate washing, incubation and detection (see page 25 par.2). Some automated systems eliminate the washing step to increase the throughput and sensitivity of the assay, e.g., bead-based assays and microfluidic platforms (see page 24 par.1 and page 26 par.3). The automated system can integrate with an on-deck shaker to mix samples and reagents at desired temperatures for efficient interaction of biomolecules (see page 28 col.2 par.2), or with a magnetic field to separate the complexes of capture-analyte-detector from the aqueous phase (see page 29 col.1 par.1), or with centrifugal system (see page 34 col.2 par.2). The automated system for immunoassay has been gaining momentum in recent years to meet the requirements of immunoassay formats (see page 34 col.2 par.2).
As to claim 16, Comley teaches that the automated system can be a microfluidic system (see page 24 par.1, page 34 col.2 par.2: Gyrolab™ xP workstation).
As to claim 17, Comley teaches that the automated system can be a centrifugal microfluidic system (see page 34 col.2 par.2: Gyrolab™ xP workstation).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Liu, Giehring and Comley, performing the detection method of Liu in an automated system using the device of Giehring for the benefit of high throughput, highly sensitive, cost saving analysis as taught by Comley. The automated system used for the method of Liu and Giehring can be a microfluidic system or a centrifugal microfluidic system as taught by Comley (see Comley page 34 col.2 par.2).
One having an ordinary skill in the art would have had a reasonable expectation of success in combining Liu, Giehring and Comley because: Liu and Giehring are directed to the bead-based method for detecting a target molecule in a sample, wherein the detection is based on the signal from unbound detectors; Giehring provides a measuring chamber which is specifically used for detecting signal from unbound detectors and can be used in an automated system; Comley discloses a plurality of automated systems for immunoassay that enables assay processing in miniaturized reaction volumes with walkaway operation, wherein the automated systems can be improved, allowing integration of the chemical operations involved in conventional analytical processes, such as mixing, reaction and separation, to meet the requirements of immunoassay formats.
Additionally, the court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. See MPEP 2144.04 (III). Therefore, the claimed limitation “wherein the method is performed in a single automated system without involvement of any manual steps” is not sufficient by itself to patentably distinguish over the teaching of Liu.
As to claim 3, Liu, Giehring and Comley teach the invention as discussed above. Liu further teaches that the method does not require more than one buffer solution, (see Supplementary information, page 2, Detection of sequence-specific DNA section, teaching that the buffer is PBS-T).
As to claim 6, Liu, Giehring and Comley teach the invention as discussed above. Liu further teaches that the capture-beads have a higher density than the detection-beads and/or a diameter of at least 0.5 μm, (see Supplementary information, page 1: teaching 1.05 μm Dynabeads® MyOne ™carboxyl-coated Magnetic Beads (MBs)).
As to claims 7, Liu, Giehring and Comley teach the invention as discussed above. Liu further teaches that separating the capture-beads from the buffer solution occurs through a magnetic field (see page 3165 col.1 par.1: teaching that magnetic captured-beads were employed to facilitate sample separation activated by an external magnetic field, Scheme 1: showing that unbound detection beads are separated from bound detection beads in the buffer solution, see Supplementary information, page 2 Detection of sequence-specific DNA section: teaching that after hybridization, the MBs with target-linked GNPs along with unreacted MBs were easily pulled to the wall of the tube in just about one minute by applying external magnetic field).
As to claim 8, Liu, Giehring and Comley teach the invention as discussed above. Liu teaches the capture molecule recognizes a first epitope comprised by the target molecule (see page 3165, col. 1, para 1, lines 5-14: teaching magnetic beads modified with capture DNA (different from the region recognized by the GNPs) as the capture molecule).
Also, Liu discloses that the detection molecule recognizes a second epitope comprised by the target molecule (sandwich assay), (see at least page 3165, col. 1, para 1, lines 5-14 as discussed above).
For the purpose of examination, the broader meaning of epitope is used, per specification, page 33, lines 6-15, (i.e. “the term “epitope” is used in a broader sense to denominate the structure of a target molecule that is recognized and bound by the capture molecule and /or the detection molecules…”).
As to claim 9, Liu, Giehring and Comley teach the invention as discussed above. Liu doesn’t teach that the capture molecule comprises an antibody or fragments thereof or an antigen, and /or the detection molecule comprises an antibody or fragments thereof or an antigen.
Giehring teaches that the capture molecule comprises an antibody (see par.29: teaches there are catcher molecules, which bind to the biological analyte or analytes and/or to the fluorescence marker or markers, on the surface of capture particles; par.97: teaches that catchers are mostly proteins (for example antibodies)).
Giehring discloses that the detection molecule comprises an antibody or fragments thereof (see par.140: teaches that fluorescence markers (i.e., detection molecules) comprise a biological molecule (for example, protein, antibody, antibody fragment) which has a suitable binding site and is able to bind the desired test component; par.145: teaches different fluorescence-labelled antibodies are used as the luminescence markers).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the capture and/or detection molecules of Liu, by the capture and/or detection molecules of Giehring, in which these molecules comprise antibodies or fragments thereof because they are functionally equivalent in terms of binding to the target molecules and using in the detecting method based on the signal from unbound detectors.
One having an ordinary skill in the art would have had a reasonable expectation of success in combining Liu and Giehring because Liu and Giehring are directed to the bead-based method for detecting a target molecule in a sample, wherein the detection is based on the signal from unbound detectors.
As to claim 10, Liu, Giehring and Comley teach the invention as discussed above. Liu discloses that the detection molecule comprises a label (see page 3164 right col last par.: teaching that the detection molecules are coupled to beads (detection-beads) and the beads (GNP) serve as a label). Under broadest reasonably interpretation and according to the instant specification (page 26, lines 40-41) the beads may serve as a label.
Also, the detection bead may comprise FAM reporter probe (see supplementary information, page 1 Materials section), thus the bead comprises a label.
As to claim 11, Liu, Giehring and Comley teach the invention as discussed above. Liu teaches that the separation is in just about one minute (see Supplementary information, page 2, Detection of Sequence-Specific DNA section, thereby it reads on the instant claim limitation.
Liu also discloses that the whole process requires only about 60 mins and the incubation time is about 30 minutes (see page 3166 col.1 par.1-2; see more in Supplementary information, page 2, Detection of Sequence-Specific DNA section).
Giehring teaches that with optimal mixing, times in the range of from 15 to 30 minutes are usually required to achieve equilibration of the binding of the components that is sufficient for the measurement (see par.135). The sedimentation of the particles is about 1 to 2 minutes if magnetic particles are used (see par.186).
Liu and Giehring do not teach the same incubation time recited in claim 11. However, they teach a varying incubation time and separation time. Giehring suggests that the time required for equilibration of the binding of the components can vary and can easily be found (see par.135).
Since Applicant has not disclosed that the specific incubation time recited in the instant claims is for any particular purpose or solve any stated problem, and the prior arts teach that incubation time can vary, it would have been obvious for one of ordinary skill to discover the optimum workable ranges of the incubation time disclosed by the prior arts by normal optimization procedures known in the art.
As to claim 12, Liu, Giehring and Comley teach the invention as discussed above. Liu also provides quantitative results for detection of a target molecule (see page 3165, col. 1, para 2 and Fig. 1: teaching quantitative detection of target molecule using GNPs, with the analyte amount ranging from 4 fmol to 400 fmole).
As to claim 13, Liu, Giehring and Comley teach the invention as discussed above, wherein two or more different target molecules comprised in the sample are detected in parallel, wherein:
a/ one or more target molecules are detected by a sandwich assay and one or more other target molecules are detected by a competitive assay (see Liu page 3165 col.2 par.2, page 3166 col.2 par.1: teaches that the method can be modified for simultaneous multiplex detection by using more than one type of metal NPs with distinct maximum absorption wavelengths; Liu supplemental information page 2 Detection of Sequence-Specific DNA teaches that the target molecules are detected by a sandwich assay; Giehring par.28: teaches that the target molecules are detected by sandwich immunoassay or competitive immunoassay; Giehring par.145: teaches that different fluorescence-labelled antibodies are used as the luminescence marker, so that different analytes can be detected simultaneously),
b/ all target molecules are detected by a sandwich assay (see Liu page 3165 col.2 par.2, page 3166 col.2 par.1: teaches that the method can be modified for simultaneous multiplex detection by using more than one type of metal NPs with distinct maximum absorption wavelengths; Liu supplemental information page 2 Detection of Sequence-Specific DNA teaches that the target molecules are detected by a sandwich assay), or
c/ all target molecules are detected by a competitive assay (see Giehring par.28: teaches that the method according to the invention is preferably an immunoassay, in particular an immunoassay selected from a group consisting of direct immunoassay, sandwich immunoassay, displacement immunoassay (also called inhibition assay herein), competitive immunoassay and secondary immunoassay).
Moreover, Liu teaches the range of analyte detection, e.g., 4 fmol to 400 fmol (final concentration from 50 fmol mL-1 to 5 pmol mL - 1) (see page 3165 left col par.2). Giehring teaches that the range of analyte detection in Fig.5 (Giehring par.227-229, Fig.5).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the method taught by Liu and Giehring, detecting one or more target analytes by a sandwich or competitive assay because Giehring teaches the sandwich or competitive assay can be used in the detection method of Liu and Giehring (Giehring par.28). One having an ordinary skill in the art would have had a reasonable expectation of success in combining Liu, Giehring and Comley because Liu and Giehring are directed to the bead-based method for detecting a target molecule in a sample, wherein the detection is based on the signal from unbound detectors.
Liu and Giehring do not specifically teach the same concentration of target molecules that can be detected by using the method. However, the concentration of target molecules in the sample varied depending on the sensitivity of the method. Liu and Giehring suggest that the sensitivity of the assay depends on a variety of parameters (Liu page 3166 col.2 par.1: teaches the concentration of GNPs or type of nanoparticles can affect the sensitivity of the assay; Giehring par.179: teaches that the sensitivity of the method in which the device is used can be modulated by suitably selecting the size of the measuring window and the type of luminescence marker). Liu and Giehring teach all the claimed method steps as discussed in claim 1 above. Absent unexpected results, it would have been obvious to one having an ordinary skill in the art to arrive at the claimed concentration of the target molecule using normal optimization procedures known in the art.
Response to Arguments
Applicant’s arguments with respect to the Remark filed 10/29/2025 have been considered.
Applicant’s arguments with respect to claim(s) 1, 3, 6-13 and 16-17 have been considered but are moot because the new ground of rejection has been made in view of the amendment of the claim.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N.B. TRAN whose telephone number is (571)272-3663. The examiner can normally be reached Mon-Fri 8:30-6:30 CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bao-Thuy L Nguyen can be reached on 571-272-0824. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAU N.B. TRAN/ Examiner, Art Unit 1677
/BAO-THUY L NGUYEN/Supervisory Patent Examiner, Art Unit 1677 February 24, 2026