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 .
Status of Claims
Claims 1-15, 17, 18, 20, 22, 25 and 29-35 are currently pending. Claims 1, 3, 9-11, 14, 29, 30, 34 and 35 have been amended by Applicants’ amendment filed 10-28-2025. No claims have been added or canceled by Applicants’ amendment filed 10-28-2025.
Applicant's election without traverse of Group I, claims 1-26, directed to a method for sample identification; and the election of Species without traverse as follows:
Species (A): wherein assaying comprises assaying, in parallel, a plurality of drug therapies (instant claim 2);
Species (B): the method of claim 1 further comprising characterizing a response of the one or more drug therapies (instant claim 3);
Species (C): wherein forming the library of Patient-Derived Micro-Organospheres comprises forming more than 1,000 Patient-Derived Micro-Organospheres (instant claim 10);
Species (D): wherein the microfluidics apparatus is configured to maintain an approximately constant pressure within the one or more channels (instant claim 15);
Species (E): wherein exposing the plurality of droplets of unpolymerized mixture to a temperature of greater than 25oC comprises flowing the plurality of droplets of unpolymerized mixture to a region of the microfluidics apparatus that is maintained at greater than 25oC (instant claim 17); and
Species (F): wherein the Patient-Derived Micro-Organospheres form budding clusters of cells and/or hollow structures of cells (instant claim 25), in the reply filed on August 12, 2021 was previously acknowledged.
Claims 27, 28, 34 and 35 (claims 27 and 28, now canceled) were previously withdrawn further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention, there being no
allowable generic or linking claim.
Claims 5-9, 11-13, 16-18, 20-22, 24, 26, 30 and 31 from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected species, there being no allowable generic or linking claim.
The restriction requirement was deemed proper and was made FINAL.
A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144) See MPEP § 821.01.
Therefore, claims 1-4, 10, 14, 15, 25, 29, 30 and 33 are under consideration to which the following grounds of rejection are applicable.
Priority
The present application filed February 17, 2021 is a CON of US Patent Application 17/118,586, filed December 10, 2020 (now abandoned), which claims the benefit of US Provisional Patent Application 63/120,719, filed December 2, 2020; which is a CIP of US Patent Application 16/838,010, filed April 1, 2020, which claims the benefit of US Provisional Patent Application 62/853,219, filed May 28, 2019.
Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, the as-filed Specification and original claims, filed February 17, 2021 to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for one or more claims of this application. The specific method steps recited in independent claim 1 does not have support for (at least): “polymerizing the unpolymerized liquid matrix material in the plurality of droplets of the unpolymerized mixture to form spherical droplets;” and “wherein the polymerizing occurs while the plurality of droplets of the unpolymerized mixture flow along an elongated microchannel of the microfluidics apparatus that terminates in an outlet port” in lines 25-28 Therefore, the priority date for the presently claimed invention is February 17, 2021, the filing date of the US Patent Application 17/178,210.
Applicants are invited to specifically indicate the location of the cited phrase pertinent to claim 1 of the instant application.
Response to Arguments
Applicant’s arguments filed October 28, 2025 have been fully considered but they are not persuasive. Applicants essentially assert that: (a) US Patent Application 17/118,586, filed December 10, 2020 teaches “polymerizing the unpolymerized liquid matrix…to form spherical droplets” in paragraphs [0034], [0146], [0175] and [0201] (Applicant Remarks, pg. 10, last partial paragraph through pg. 11, first partial paragraph).
Regarding (a), it is noted that the limitations as indicated supra are not disclosed in the instant as-filed Specification, filed February 17, 2021. The Examiner respectfully requests that Applicant indicate where these teachings can be found in the instant as-filed Specification.
Declaration
The Examiner acknowledges receiving a Declaration under 37 CFR § 1.132, executed by Daniel Nelson on October 28, 2028, and filed October 28, 2025 (hereinafter the “Nelson decl.”).
The Nelson decl. has been considered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 28, 2025 has been considered. An initialed copy of the IDS accompanies this Office Action.
Withdrawn Objections/Rejections
Applicants’ amendment and arguments filed October 28, 2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or
objection not specifically addressed below are herein withdrawn.
Claim Rejections - 35 USC § 112(d)
The rejection of claims 3 and 29 is withdrawn under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends due to Applicant’s amendments to the claims, in the reply filed 10-28-2025.
In view of the withdrawn rejection, Applicant’s arguments are rendered moot.
Maintained Objections/Rejections
Claim Rejections - 35 USC § 112(b)
The rejection of claims 1-4, 10, 14, 15, 25, 29, 30 and 33 is maintained under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The rejection of claim 1 is maintained as being indefinite for the recitation of the term “polymerizing the unpolymerized liquid matrix material…to form spherical droplets” such as recited in claim 1, lines 24-25. There is insufficient antecedent basis for the term “the unpolymerized liquid matrix material” in the claim because claim 1, lines 10-11 recites the term “an unpolymerized matrix material to form an unpolymerized mixture.”
Claim 1 is indefinite for the recitation of the term “wherein the polymerizing occurs while the plurality…that terminates in an outlet port” such as recited in claim 1, lines 25-28 because the as-filed Specification and original claims do not teach that ‘polymerization occurs while the plurality of droplets of unpolymerized mixture flow along an elongated microchannel of the microfluidics apparatus’ as recited in claim 1 and, thus, the metes and bounds of the claim cannot be determined.
Claim 1 is indefinite for the recitation of the term “the plurality of droplets” such as recited in claim 1, line 26. There is insufficient antecedent basis for the term “the plurality of droplets” in the claim because claim 1, line 6 recites the term “forming spherical droplets.”
Claim 1 is indefinite for the recitation of the term “elongated microchannel” such as recited in claim 1, line 27 because the as-filed Specification and original claims do not teach an “elongated microchannel,” and because claim 1, lines 6-7 recites that spherical droplets are formed in one or more channels, such that no spherical droplets are formed in an ‘elongated microchannel.’ Thus, the difference between the one or more channels as recited in claim 1 (and, as taught in the as-filed Specification) and an “elongated microchannel” is unclear and, thus, the metes and bounds of the claim cannot be determined.
Claim 1 is indefinite for the recitation of the term “outlet port” such as recited in claim 1, line 28 because the as-filed Specification and original claims do not teach an “outlet port” including an elongated microchannel that terminates at an “outlet port” and, thus, the metes and bounds of the claim cannot be determined.
Claim 10 is indefinite for the recitation of the term “forming the spherical droplets comprises” such as recited in claim 10, lines 1-2 because claim 10 depends from instant claim 1, wherein claim 1, lines 10-32 recites that “forming” the spherical droplets comprises the steps of combining, driving, forming a plurality of droplets; polymerizing the unpolymerized liquid matrix material; and generating cultured spherical droplets, such that “forming spherical droplets” as recited in claim 10 cannot “comprise” something different than what it “comprises” in claim 1 and, thus, the metes and bounds of the claim cannot be determined.
Claims 2-4, 14, 15, 25, 29, 30 and 33 are indefinite insofar as they ultimately depend from instant claim 1.
Claim Rejections - 35 USC § 103
(1) The rejection of claims 1-4, 10, 14, 15, 23, 29, 30 and 33 is maintained under 35 U.S.C. 103 as being unpatentable over Konry et al. (US Patent Application Publication No. 20170199173, published July 13, 2017; PCT filed June 26, 2015; effective filing date June 26, 2014; of record) in view of Desai et al. (US Patent Application Publication No. 20060141617, published June 29, 2006; of record) as evidenced by Matsuoka et al. (Polymer Journal, 2010, 42, 368-374; of record); and Healio (LearnGenomics, 2023, 1-9; of record); and Sengupta (US Patent Application Publication No. 20210285932, published September 16, 2021; effective filing date March 29, 2019; of record); and Comsa et al. (Anticancer Research, 2015, 35, 3147-3154); and ATCC (ATCC, 1, 2024); and Kellokumpu-Lehtinen (Anticancer Research, 2013, 33, 2623-2628); and Jeong et al. (hereinafter “Jeong”) (PLoS One, 2016, 1-17).
Regarding claims 1-3, 15, 25, 29, 30 and 33, Konry et al. teach a microfluidic device provides high throughput generation and analysis of defined three-dimensional cell spheroids with controlled geometry, size, and cell composition, wherein the cell spheroids vary in size from about 50 microns to about 900 microns in diameter, and mimic tumor micro-environments including pathophysiological gradients, cell composition, and heterogeneity of the tumor mass mimicking the resistance to drug penetration providing more realistic drug response, and is used to test the effects of anti-tumor agents (interpreted as screening cancer therapy; and PDMOS, claim 1) (Abstract; and paragraph [0076], lines 3-5), wherein the context of tumor microenvironments is variable depending on the tissue origin and progression stages, and it generally consist of tumor vasculature, an extracellular matrix, cancer-associated fibroblasts, and activated immune cells that all interact with cancer cells as evidenced by Jeong (pg. 2, first full paragraph). Konry et al. teach a microfluidic device for the formation and analysis of cell spheroids, the device comprising: (a) a first inlet 10 for an oil, a second inlet 20 for a first aqueous suspension of cells, and a third inlet 30 for a polymerization mediator; the first inlet fluidically connected to a first microchannel, the second inlet fluidically connected to a second microchannel, and the third inlet fluidically connected to a third microchannel (interpreting the distance between inlets of Figure 1A as a total length of a path taken by dissociated tissue sample before combining with unpolymerized material is less than 10 cm); (b) a nozzle formed by a T-shaped intersection of the two or more of the first, second, and third microchannels, the nozzle capable of forming the aqueous droplets comprising the cells and the polymerization mediator (interpreted as driving the dissociated tissue sample and unpolymerized fluid matrix material through one or more microchannels); (c) an incubation chamber comprising a plurality of microchambers configured in two-dimensional array, the incubation chamber fluidically connected to the nozzle and capable of accepting and delivering said aqueous droplets individually into said microchambers (interpreted as culturing); (d) the microfluidic device comprising inlets, microchannels, outlets, valves, pumps, mixing zones, incubation chambers, vacuum channels, ports, heaters, vents, reservoirs, reagents or waste chambers (interpreted as a microfluidics apparatus that controls pressure and flow rate, and configured to maintain approximately constant pressure) and (e) one or more cell spheroids disposed in one or more microchambers (interpreted as a microfluidics apparatus that controls pressure and flow rate; configured to maintain approximately constant pressure; and interpreting the distance between inlets of Figure 1A as a total length of a path taken by dissociated tissue sample before combining with unpolymerized material is less than 10 cm, claims 1, 15 and 19) (paragraphs [0010]-[0014]; [0026]; [0089], lines 1-7; and Figure 1A). Konry et al. teach that the cell spheroid comprises one or more cells, or mixtures of different cell types including two or more cell types adhered to an essentially spherical polymer scaffold, wherein the cell types include a tumor cells, an immune cell, stromal cell, and cells from a particular patient (interpreting tumor cells as receiving a tissue sample from a patient tumor; and tumor biopsy, claims 1 and 23) (paragraphs [0030]; [0032]; and [0077], lines 21-25). Konry et al. teach that the cell spheroids comprise tumor cells; as well as, MCR7 cells (interpreted as receiving a tissue sample from a patient tumor; and a biopsy sample, claim 1) (paragraphs [0065]; and [0069]), wherein it is known that MCF-7 cells were isolated from the pleural effusion of a 69-year old woman with metastatic breast cancer; and that the patient had undergone a consecutive radical mastectomy of her left breast as evidenced by Comsa et al. (pg. 3147, col 2; first full paragraph, lines 3-7). Konry et al. teach a method of making a plurality of cell spheroids, the method comprising: (a) providing the microfluidic device of item 1, an oil, a first cell suspension comprising a polymer precursor, and a polymerization mediator (interpreted as receiving a tissue sample, dissociating the tissue sample; and unpolymerized matrix material); (b) flowing the oil, first cell suspension and polymerization mediator into the first, second, and third inlets, respectively, whereby aqueous droplets suspended in the oil are formed by the nozzle of the microfluidic device, the droplet comprising cells of the first cell suspension, the polymer precursor, and the polymerization mediator (interpreted as driving the dissociated tissue through one or more channels of a microfluidics apparatus, flowing the droplets to a region maintained at 25oC or greater, and combining the dissociated tissue and the unpolymerized fluid matrix material to form a plurality of droplets); (c) allowing the polymer precursor to polymerize to form polymer scaffolds in the aqueous droplets, whereby a cell spheroid if formed in each droplet (interpreted as polymerizing the mixture to form PDMOS); (d) distributing the cell spheroids into the microchambers of the microfluidic device; (e) interrupting the flow of oil in the cell incubation chamber of the microfluidic device and flowing an aqueous solution into the incubation chamber, whereby cell spheroids are washed; (f) initiating flow of cell culture medium through the incubation chamber; (g) placing the device into an environment suitable for survival and/or growth of the cells in the cell spheroids (interpreted as culturing the PDMOS); and (h) allowing the cells in the cell spheroids to proliferate (interpreted as structured clusters of cells that are maturing and replicating) (interpreting the process as receiving; dissociating; forming by driving, combining, exposing, and culturing to replicate; and flowing the droplets to a region maintained at 25oC or greater, claim 1) (paragraphs [0040]-[0049]). Konry et al. teach that the cell spheroids have a diameter in the range from about 50 microns to about 900 microns (interpreted as PDMOS diameter between 50 and 500 microns, claim 1) (paragraph [0035]). Konry et al. teach in Example 1 that the microfluidic device depicted in Fig. 1A was used to prepare the spheroids of MCF7 breast cancer cells (interpreting MCF7 cells as receiving a dissociated tissue sample from a patient tumor), wherein three inlets of the device were simultaneously fed with mineral oil containing Span 80, and a suspension of MCF7 cells at 7-10 million cells/mL (interpreting a 50 micron droplet to comprise 3.5 cells/mL matrix; and between 1 and 200 dissociated cells), and containing sodium alginate in Dulbecco’s Modified Eagle Medium (DMEM) containing fetal bovine serum, antibiotic antimycotic solution, and CaCl2, wherein the solutions were introduced via syringe pumps, the flow rates were 300 microliter/hour for the oil, 75 microliter/hour for the cells suspension, and 10 microliter/hour for the calcium solution (interpreting flow as being carried out at room temperature including 20 degrees or less); and that after the spheroids were produced, the flow of oil, cell suspension, and CaCl2 solution was stopped, the incubation chamber of the device was continuously perfused with cell culture medium, and the device was placed in a cell culture incubator maintained at 37oC (interpreted as receiving and dissociating; interpreting flow as being carried out at room temperature including 20 degrees or less; encompassing between 1 and 200 dissociated cells; laminar flow; and culturing, claim 1) (paragraph [0095]). Konry et al. teach forming cell spheroids from a series of aqueous droplets in an oil using a nozzle containing a T-shaped junction in a microfluidic device that has at least one channel of diameter in the range of 1 to 999 microns, wherein the aqueous contents include a suspension of one or more types of individual cells and an initially unpolymerized form of a polymer suitable for mimicking fibrous elements of the extracellular matrix of a mammalian tissue, and can include a polymerization mediator or catalyst that reacts with the polymer precursor in the droplet to form a 3D polymer scaffold within the droplet such as a microbead composed of an essentially spherical network of fibers; and wherein the droplet can include one or more cells or mixtures of different types of cells including tumor cells, such that the cells adhere to the polymer scaffold and grow, differentiate and/or proliferate within the droplet to form a cell spheroid (interpreted as forming a library of PDMOs; droplets of unpolymerized cell mixture; tissue sample; a stream of unpolymerized liquid matrix in oil forming droplets; streams converging at the T-section; using a microfluidics apparatus; one or more channels; culturing; and encompassing a density of unpolymerized liquid matrix material less than 5 X 106 cells/mL including a diameter of 50 micron sphere, claim 1) (paragraph [0077]). Konry et al. teach that the microfluidic device will include three or more inlets for the introduction of fluid into a fluid pathway or channel of the device, three or more interconnected microchannels, a nozzle for the formation of individual aqueous droplets in an oil, and an incubation chamber for the cell spheroids produced at the nozzle, wherein the microchambers can be essentially spherical; and the device can include one or more valves, pumps, vacuum channels, ports, heaters, vents, reservoirs, reagents, or waste chambers, or any combination thereof (interpreted as converging streams of oil and matrix to form spheroids comprising cells; the microfluidic device controls a parameter such as pressure, flow rate, etc.; and incubating the cells, claim 1) (paragraph [0085]). Konry et al. teach an important parameter used to determine the size of the cell spheroids is the size of the microchambers and connecting microchannels of the incubation chamber, wherein the size (i.e., diameter) of the microchambers limits the size of the spheroids, and polymer scaffolds, to slightly less than that of the microchamber; and that the microchamber size can be, for example, any value from about 70 to about 900 microns, wherein the diameter of the microchannels is less than that of the microchambers such as about 50 to about 300 microns (interpreted as encompassing 3.5 x 106 or less cells/mL matrix, claim 1) (paragraph [0087]). Konry et al. teach in Figures 1A-1C embodiments of the microfluidic device of the invention including, wherein a first inlet for introduction of the oil phase, a second and third inlets for optional mixing zone 14, wherein the second inlet 20 can be used for a cell suspension, such that both second and third inlets are connected via microchannels to optional mixing zones 24 and 34, which then are connected via microchannels to additional inputs that, together with the output of the oil microchannel, form the T-junction of the nozzle (rectangle on FIG. 1A), wherein the intersection of three substantially perpendicular inlet microchannels forms the nozzle; and the flow rates are controlled so that, in this design, the oil stream breaks the cell stream and forms aqueous droplets containing the cells and alginate, wherein suitable flow rates can be readily ascertained and optimized by routine experimentation with a given device (interpreted as combining and converging a stream of oil that intersects with unpolymerized mixture at the T-junction to form a plurality of droplets; and controlling the density of the droplets by controlling the flow rate, claim 1) (paragraphs [0086], lines 11-13; [0089]; and Figures 1A-1C). Konry et al. teach that an important parameter used to determine the size of the cell spheroids is the size of the microchambers and connecting microchannels of the incubation chambers, such that the size (i.e., diameter) of the microchambers limits the size of the spheroids, and polymer scaffolds, to slightly less than that of the microchamber, wherein the microchamber can be from about 70 to about 900 microns; and the diameter of the microchannels is less than that of the microchambers, such as from about 50 to about 300 microns; and the docking sites are intended to collect and entrap droplets that form cell spheroids, particularly larger spheroids of 600-900 microns in diameter (interpreting the diameter of the unpolymerized droplets to be from 50-900 microns; interpreting the combination of droplet size/diameter, matrix, and matrix concentration to encompass a density of less than 5 x 106 cells/mL; and incubating, claims 1, 29 and 30) (paragraphs [0087]; and [0090]). Konry et al. teach that the flow rates required for each of the fluid inputs into the microfluidic device can vary depending on the design of the device and the concentration of the components such as the cell concentration, the polymer precursor concentration, and the polymerization mediator concentration, wherein exemplary flow rates for oil into the oil inlet is 150-500 microliters/hr; and the flow of the cells suspension into the cell inlet is: 75-150 microliters/hr, wherein suitable flow rates can be readily ascertained and optimized by routine experimentation with a given device (interpreted as an adjustable and optimizable flow rate encompassing 0.01 mL/min to about 100 mL/min, claim 1) (paragraph [0086]). Konry et al. teach that polyethylene glycol (PEG) is a crosslinked polyether that has good biocompatibility and low immunogenicity, wherein many PEG derivatives are capable of polymerization by free radical methods, such that PEG can be functionalized with acrylate and methacrylate groups at the chain ends, wherein 2-hydroxy-2-methyl-propiophenone can be used as photoinitiator for polymerization by UV light, wherein the concentration range of PEG for cell encapsulation is 0.25%-10% w/v in complete cell growth media; the concentration of agarose used for cell encapsulation is 0.5%-10% w/v in complete cell growth media; and the concentration of collagen used for cell encapsulation is 2%-20% w/v in complete cell growth media (interpreting the combination of droplet size/diameter, matrix, and matrix concentration to encompass a density of less than 5 x 106 cells/mL; and polymerization at temperatures greater than 25oC, claims 1, 29 and 30) (paragraphs [0080])-[0082], wherein it is known that free radical polymerization of MMA with AIBN is carried out at 60-70oC as evidenced by Matsuoka et al. (pg. 369, col 2, last partial paragraph; and pg. 369, Table 1). Konry et al. teach that a device containing the spheroids can be placed into a typical cell culture incubator for a period of hours, days, or weeks, and removed periodically for monitoring (interpreted as encompassing culturing as less than 21 days, claims 1 and 4) (paragraph [0084], lines 5-8). Konry et al. teach that the matured cell spheroids are useful for studies of a variety of agents or test substances, such as antitumor agents, wherein the microfluidic device containing the microspheroids in the incubation chamber are perfused with aqueous solution, such as culture medium, containing the test substance, wherein the cell spheroids are monitored using a suitable technique, such as fluorescence microscopy, a cell viability assay, or other method to determine a state of interest of the cells, such that the microfluidic device can be used to screen different antitumor agents against the tumor cells of a particular patient, such as a human or other mammalian subject, to determine an effective agent or combination of agents for chemotherapeutic intervention for the patient (interpreted as receiving a tissue sample from a patient tumor; dissociating; matured cells; assaying; encompassing a biopsy; and PDMOS for budding structures or hollow structures of cells replicating the structure of the patient tumor, claims 1, 23 and 25) (paragraph [0094]). Konry et al. teach in Example 3, that Figures 6A and 6B show adriamycin resistant MCF7 cell spheroids at 96 hour incubation without doxorubicin (interpreted as incubating for 4 days) and at 48 hour incubation with doxorubicin (interpreted as incubating for 2 days), wherein the red fluorescence in Figure 6B indicates cell toxicity of the doxorubicin (interpreted as incubating for 2-4 days; incubating less than 21 days; and assay one or more drug therapies; assaying in parallel to each drug therapy; and different concentrations of doxorubicin, claims 1, 2, 4 and 8) (paragraph [0099], lines 1-5; and Figs. 6A and 6B). Konry et al. teach the sensitivity of co-cultured MCF7 and HS5 cells to a combination of antitumor agents (e.g., doxorubicin with and without paclitaxel) as shown in Figure 8, wherein there was a statistically significant drop in viability upon combination treatment as compared to the single drug regimen (interpreted as metastatic tumor cells; assay one or more drug therapies; assaying in parallel to each drug therapy; characterizing a response to one or more drug therapies; and different concentrations of paclitaxel; and interpreting the use of chemotherapy agents that treat metastatic tumors to encompass metastatic tumor biopsy samples, claims 1-3 and 8) (paragraph [0101]; and Fig. 8); where HS-5 is a cell with fibroblast morphology that was isolated from the stroma of a while, 30-year old, male patient as evidenced by ATCC (first full paragraph); and wherein it is known that paclitaxel is an effective treatment for advanced breast cancer and is widely used in the treatment of metastatic breast cancer as evidenced by Kellokumpu-Lehtinen (Title, and Abstract). Konry et al. teach that Figures 7A-7D compare the effect of doxorubicin on 2D cell monolayers and 3D cell spheroids containing MCF7 cells including changes in viability between 2D monolayers and 3D spheroids of MCF7 adriamycin resistant cells upon treatment with varying concentrations of doxorubicin of 800 nM to 12800 nM (interpreted as varying the concentration of one or more drug; and different drug carriers, claim 8) (paragraph [0073], lines 1-6; and Figure 7). Konry et al. teach that once cell spheroids are formed within microfluidic device, they can then be deposited into an array of wells, microchambers or docking stations where the cells can be monitored for viability, growth, proliferation, development, motility, intercellular interactions, interactions with the polymer scaffold, etc. (paragraph [0084]). Konry et al. teach that the invention is particularly useful for screening antitumor agents and their combinations using a combination of co-cultured cells types in a controlled 3D configuration that realistically mimics the ability of chemo-therapeutic agents to attack small early stage metastatic growth in a cancer patient (interpreted as metastatic tumor cells, claims 1 and 33) (paragraph [0075]). Konry et al. teach that the cells can be any type of cell including, for example, tumor cells (including tumor stem cells and model tumor cells); cells of a cell line or culture; and cells from a patient (interpreted as encompassing a biopsy sample, claim 1) (paragraph [0077], lines 19-23), wherein it is known in the art that tissue biopsies remove a small amount of tissue for pathology assessment, wherein biopsies include core needle biopsies, which use a hollow needle to remove a small cylinder of tissue of about 1/16 inch in diameter and about ½ inch in length as evidenced by Healio (interpreted as a cylinder between about 1/32 and 1/8 inch; and a diameter of about ¾ to ¼ inch) (pg. 2, last full paragraph; and pg. 3, core needle biopsy); and wherein it is known that core needle biopsies and surgical biopsies can be performed for the selection of chemotherapeutic agents to treat metastatic and recurrent solid tumors as evidenced by Sengupta (paragraphs [0008]; and [0019]). Konry teaches that the invention also contemplates methods of making a plurality of cell spheroids, wherein the oil, cell suspension, and optionally the polymerization mediator are flowed into first, second, and third inlets of the device; and the nozzle of the device forms aqueous droplets suspended in the oil, which contain cells of the cell suspension, the polymer precursor, and optionally the polymerization mediator (or, the polymerization mediator is added subsequent to the formation of the aqueous droplets), such that the polymer precursor is allowed to polymerize to form polymer scaffolds in the aqueous droplets, whereby a cell spheroid is formed in each droplet; and the droplets are then distributed into the microchambers of the microfluidic device (or, in a variation of the method, the droplets are distributed into the microchambers prior to polymerization of the polymer scaffold), and/or the flow of oil is stopped and an aqueous solution such as a cell culture medium is flowed into the incubation chamber, wherein the gelation of the spheroids can be performed either before or after this step (interpreting polymerization to occur while the mixture is flowed along a microchannel of the device, claim 1) (paragraph [0092]). Konry teaches a method of making a plurality of cell spheroids, the method comprising the steps of: (a) providing the microfluidic device of claim 1, an oil, a first cell suspension comprising a polymer precursor, and a polymerization mediator; (b) flowing the oil, first cell suspension, and polymerization mediator into the first second, and third inlets, respectively, whereby aqueous droplets suspended in the oil are formed by the nozzle of the microfluidic device, the droplets comprising cells of the first cell suspension, the polymer precursor, and the polymerization mediator; (c) allowing the polymer precursor to polymerize to form polymer scaffolds in the aqueous droplets, whereby a cell spheroid is formed in each droplet; and (d) distributing the cell spheroids into the microchambers of the microfluidic device (interpreting polymerization to occur while the mixture is flowed along a microchannel of the device, claim 1) (pg. 8, col 1, claim 28). Konry teaches that the microfluidic device of any of the preceding items, further comprising one or more additional inlets, one or more additional microchannels, one or more outlets, and/or one or more valves, pumps, mixing zones, incubation chambers, vacuum channels, ports, heaters, vents, reservoirs, reagents, or waste chambers (interpreting the channels to terminate at an outlet port, claim 1) (paragraph [0020]; and pg. 7, col 2, claim 8).
Regarding claim 4, Konry et al. teach that the cell spheroids were housed in a microfluidic device for 14 days and continuously perfused with fresh culture medium, and the cell viability was checked after 1, 4, and 14 days using the LIVE/DEAD assay, such that as shown in Figure 5, there was no statistically significant change in the cell viability over a period of 14 days, after which about 99% of the cells were alive (interpreted as time between receiving an characterizing a response encompasses less than 21 days, claim 4) (paragraph [0097]; and Figure 5).
Regarding claim 10, Konry et al. teach that the microchambers or docking stations can be arranged in an array of 1000 or more ordered positions for monitoring and analysis (interpreted as forming more than 1000 PDMOS, claim 10) (paragraph [0085], lines 15-17).
Regarding claim 14, Konry et al. teach that the microchannels connected to the microchambers have a diameter in the range from about 50 microns to about 400 microns (interpreted as encompassing a microchannel diameter of 100 microns or greater, claim 14) (paragraph [0023]). Konry et al. teach Konry teaches that the microchannels have a diameter in the range from 1 to 999 microns (paragraph [0077]).
Although Konry et al. do not specifically exemplify a biopsy sample that comprises a cylinder with a diameter between about 1/32 and 1/8, and a length of about ¾ to ¼ inch, Konry et al. do teach that the cells used to form the cell spheroids can be any type of cell including, for example, tumor cells (including tumor stem cells and model tumor cells), and cells from a patient, wherein it is known in the art that tissue biopsies remove a small amount of tissue for pathology assessment, wherein biopsies include core needle biopsies, which use a hollow needle to remove a small cylinder of tissue of about 1/16 inch in diameter and about 0.5 inch in length as evidenced by Healio (interpreted as a cylinder with a diameter of between about 1/32 and 1/8 inch; and a length of about 0.75 to 0.25 inch); and wherein it is known in the art that core needle biopsies and surgical biopsies can be performed for the selection of chemotherapeutic agents to treat metastatic and recurrent solid tumors as evidenced by Sengupta, such that one of ordinary skill in the art would clearly recognize that a tissue sample including a sample from an early stage metastatic growth can be obtained from a patient via biopsy including core needle biopsies, such that a cylinder sample can be provided having desired dimensions and/or a desired number of cells including a cylinder having a diameter between about 1/32 and 1/8 inch; and having a length of about ¾ to ¼ inch.
Konry et al. do not specifically exemplify a density of less than 1 x 105 cells per mL (instant claim 30).
Regarding claims 29 (in part) and 30 (in part), Desai et al. teach a multilayer microculture capable of modeling complex in vitro structures, such as mammalian tissues and organ structures, along with methods for producing such a microculture, and using such microcultures for assaying for modulators of cell-cell interaction, cell migration, cell proliferation, cell adhesion or cellular or organismal physiology; and/or for identifying hazardous materials such as environmental toxins and pollutants (e.g., carcinogenic compounds) (Abstract). Desai et al. teach a flexible and cost-effective approach to multilayer microculturing of cells that provides a more accurate mimic of in vivo tissues than approaches known in the art, such that microculturing is being readily adapted to the culturing of multiple layers of a single cell type, to the culturing of multiple cell types in individual layers of a microculture, and to the culturing of mixed cell populations in one or more layers of a microculture, wherein each layer of the microcultures contains in addition to cells, a biopolymer capable of polymerizing to provide a three-dimensional architectural framework for cell culture that approaches the in vivo microculture of most cells of multicellular organisms (paragraph [0012], lines 1-14). Desai et al. teach a method for monitoring physiological health comprising: (a) obtaining a biological sample from a subject; (b) incorporating a biological sample into at least one layer of a multilayer microculture; (c) incubating the microculture; and (d) measuring the culture development in the presence of the biological sample relative to the culture development in the absence of the biological sample, wherein a difference in response relative to a microculture lacking said biological sample provides an indication of the physiological health of the subject, such that any property or characteristic of culture development known in the art or disclosed herein can be subject to measurement including cell viability, cell proliferation, cell migration, cell adhesion, (e.g., spatial patterning), and extracellular signaling (interpreted as receiving a tissue sample from a patient, claim 1) (paragraph [0017]). Desai et al. teach a method for identifying a modulator of cell proliferation (interpreted as assaying for one or more drug therapies, claim 1) (paragraph [0021], lines 1-3). Desai et al. teach that many cellular or tissue activities are amenable to detection in the microdevice including: diffusion rate of the drugs in to the layered tissues in the transported flow channel; cell morphology and differentiation changes at different layers; cell locomotion, apoptosis, and the like; and that the effects of various drugs on different types of cells located at different layers of the three-dimensional system can be assessed (paragraph [0046], lines 48-55). Desai et al. teach that Figure 2 illustrates a flow chart of preparing cell patterns on the substrate using microfabrication and microfluidic techniques, wherein Figure 2 shows the cells in a matrix patterned on a substrate after polymerization (interpreted as cell spheroids, claim 1) (paragraph [0027]; and Figure 2). Figure 2 is shown below:
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Desai et al. teach the effect of various drugs on different types of cells located at different layers of the three-dimensional system can be assessed including HUVEC cells (primary human umbilical vein endothelial cells) and SMCs cells (human aortic primary smooth muscle cells) (interpreted as encompassing any cell type including metastatic primary cells from a tumor biopsy, claim 1) (paragraphs [0040]; and Figure 15; and [0046], last three lines). Desai et al. teach that the invention is directed to a method for preparing a cell microarray, such that cellular array or patterns can constitute the future “lab-on-a-chip”, wherein the original design of the patterns on the film is generated using techniques known in the art of soft lithography; and that to pattern cell-ECM (extracellular matrix) assemblies, cell-matrix solutions were prepared including cell-collagen, cell-collagen/chitosan or others, and injected through the closed microchannels in contact with the modified glass/silicon substrate (interpreted as encompassing forming droplets of unpolymerized matrix material, and dissociated tissue sample, claim 1) (paragraphs [0053]; [0063], lines 1-3; and [0069], lines 1-4). Desai et al. teach that different biopolymer matrices can be used in generating multilayer structures including collagen, modified collagen, Matrigel, fibrin, and the like, wherein all of the biopolymers are maintained in solution phase to serve as a carrier for cells by mixing with a cell suspension, and then polymerization is induced within the microstructure by conventional manipulations such as changing a physical condition like temperature, osmolarity, ion strength, or the like, such that after polymerization, cells remain viable in the 3-D biopolymer matrices, adhering to the fiber networks (paragraph [0066]). Desai et al. teach that because polymerization of all these matrix materials is finally controlled by temperature, the pre-polymer solution delivered into the channels by pressure-driven microfluidics should be kept at low temperature (interpreted as driving the dissociated tissue sample and unpolymerized matrix material through one or more channels; and encompassing a temperature of 20oC or less, claim 1) (paragraph [0067], lines 32-35 and 41-45). Desai et al. teach in Figure 3 that cell concentration is influenced by several parameters including: cell type, cell concentration, matrix type, matrix composition, substrate surface chemistry, and time, such that the thickness of each layer can be controlled at the microscale size; and that the initial cell concentration was fixed at 3 x 105 cells/mL, wherein Figure 3 shows contraction of cells over days, and indicates cell densities in collagen and collagen-chitosan (interpreted as a density of less than 5 x 106 cells per mL; a density of less than 3 x 106 cells per mL; and controlling cell density encompasses a density of less than 1 x 105, claims 1, 29 and 30) (paragraphs [0067]; [0072], lines 1-4 and 15-16; and Figure 3). Desai et al. teach that the PDMS stamp as placed onto an unmodified substrate and a cell-matrix fluid was delivered through the channels, such that after polymerization of the cell-matrix assembly inside the microchannel, the PDMS stamp was (interpreted as forming spheroids in the microchannel) (paragraph [0073], lines 1-8). Desai et al. teach that the effective flow rate is dependent on many factors including effective channel height, channel width, mechanical properties of cell-matrix of the first layer, viscosity of the second layer fluids, and the like (paragraph [0076], lines 21-25). Desai et al. teach that typical biopolymers will begin polymerizing at temperatures above 10oC; and that most cells die quickly at temperatures below 20oC, such that suitable delivery rates have been found to include rates of 5-10 microliters/min, wherein one of ordinary skill in the art would be able to determine suitable flow rates for a given cell culture layer using no more than routine experimentation (interpreted as one of skill in the art is able to determine a suitable flow rate including a flow rate of 0.01 mL/min to 100 mL/min; and encompassing a temperature of 20oC or less, claim 1) (paragraph [0076], lines 1-5 and 31-42; and Figure 3). Desai et al. that the drug is transported by the fluid (analogous to blood) along the top confluent EC layer (analogous to the vascular endothelium), with a controlled flow rate (analogous to physiological blood flow) by a syringe pump; and the fluidic equation: DP = 12hLQ/wh3, where DP is pressure difference, h is viscosity, Q is volume flow rate, and L, w, and h are the dimensions of the channel (paragraphs [0046], lines 24-27; and [0069], lines 14-17). Desai et al. teach that because the first layer of cells is secured by adhesive molecules, the range of effective flow rates for delivering the second layer can be quite large, from 1 microliter/min to 10 mL/min (interpreted as encompassing a flow rate of 0.01 ml/min to 100 mL/min, claim 1) (paragraph [0075], lines 14-17). Desai et al. teach human lung fibroblasts (IMR-90) were cultured in MEM (interpreted as metastatic lung cancer cells, claim 1) (paragraph [0084]).
"It is prima facie obvious to combine prior art elements according to known methods to yield predictable results; the court held that, " ... a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S._,_, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303,306 (1950)". Therefore, in view of the benefits of creating a three-dimensional system comprising a multilayer microculture capable of modelling complex tissue microarchitecture found in vivo as disclosed by Desai et al., it would have been prima facie obvious before the effective filing date of the claimed invention to modify the microfluidic method of producing three-dimensional cell spheroids that mimic the heterogeneity of a tumor mass for use in screening different antitumor agents as disclosed by Konry et al. to include a method of producing a three-dimensional, microscale, single layer or multilayer microculturing structures as exemplified by Desai et al. with a reasonable expectation of success in the high throughput production and microfluidic generation of three-dimensional cell spheroids that can comprise the tumor cells of a particular patient as taught by Konry et al. including tumor cells that comprise a single-cell type, multiple-cell types, and/or mixed-cell types in one or more layers of a microculture using different biopolymer matrices that closely mimic in vivo tissue conditions as taught by Desai et al., such that cell microarrays can be produced that provide a flexible and cost-effective method to measure and/or monitor multiple properties or characteristics of culture development including cell viability, cell proliferation, cell migration, or cell adhesion; and/or in producing a cell array that can be used as a drug screening model for the identification of new antitumor agents including the identification of an effective drug treatment regimen using a patient’s own tumor cells.
Thus, in view of the foregoing, the claimed invention, as a whole, would have been obvious to one of ordinary skill in the art at the time the invention was made. Therefore, the claims are properly rejected under 35 USC §103 as obvious over the art.
Response to Arguments
Applicant’s arguments filed October 28, 2025 have been fully considered but they are not persuasive. Applicants essentially assert that: (a) the combined references do not teach "polymerizing the unpolymerized liquid matrix material…the polymerizing occurs while the plurality of droplets of the unpolymerized mixture flow along an elongated microchannel of the microfluidics apparatus that terminates in an outlet port" as recited in amended claim 1 (Applicant Remarks, pg. 13, last full paragraph through pg. 14, first full paragraph); and (b) as indicated in the Nelson decl., polymerization while droplets of unpolymerized mixture flow along an elongated channel, as is claimed, has performance advantages that are not available to Konry's approach, wherein polymerization that occurs during flow of droplets along an elongated microchannel allows for precise control of the exposure time of the droplets to a polymerization stimulus, thus ensuring that droplets spend sufficient time in the elongated microchannel to achieve complete polymerization while also ensuring high throughput by avoiding unnecessary residence time beyond when complete polymerization has been achieved. See Nelson Declaration, paragraph 7 (pg. 14, second full paragraph through pg. 15, first full paragraph).
Regarding (a), although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26USPQ2d 1057 (Fed. Cir. 1993). It is noted that none of the references has to teach each and every claim limitation. If they did, this would have been anticipation and not an obviousness-type rejection. One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As noted in MPEP 2112.01(I),
where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Moreover, MPEP 2123(I) states:
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)) (underline added).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
Applicant’s assertion that the references do not teach "polymerizing the unpolymerized liquid matrix material…the polymerizing occurs while the plurality of droplets of the unpolymerized mixture flow along an elongated microchannel of the microfluidics apparatus that terminates in an outlet port", is not found persuasive. As an initial matter, Applicant has not indicated where this limitation can be found in the as-filed Specification and/or the original claims. The Examiner cannot locate the asserted teaching. It is noted that the as-filed Specification and original claims do not teach:
That polymerizing occurs while the plurality of droplets of the unpolymerized mixture flow along an elongated microchannel of the microfluidics apparatus that terminates in an outlet port.
An elongated microchannel.
An elongated microchannel that terminates in an outlet port.
There is no support in the as-filed Specification and/or original claims for the limitation recited in instant claim 1. Additionally, because the term “elongated” is a relative term, an “elongated microchannel” as recited in claim 1 is interpreted to have any length and/or diameter.
Assuming arguendo, that the limitations are actually taught by the as-filed Specification and/or the original claims, the Examiner contends that the limitation is taught in the prior art references. For example:
Konry teaches:
(i) A method of making a plurality of cell spheroids, the method comprising the steps of:
(a) providing the microfluidic device of claim 1, an oil, a first cell suspension comprising a polymer precursor, and a polymerization mediator;
(b) flowing the oil, first cell suspension, and polymerization mediator into the first second, and third inlets, respectively, whereby aqueous droplets suspended in the oil are formed by the nozzle of the microfluidic device, the droplets comprising cells of the first cell suspension, the polymer precursor, and the polymerization mediator;
(c) allowing the polymer precursor to polymerize to form polymer scaffolds in the aqueous droplets, whereby a cell spheroid is formed in each droplet; and
(d) distributing the cell spheroids into the microchambers of the microfluidic device (interpreting polymerization to occur while the mixture is flowed along a microchannel of the device, claim 1) (pg. 8, col 1, claim 28).
(ii) Polymerization by temperature reduction and using UV light - solutions of low-gelling temperature agarose can be used to encapsulate cells, wherein they are liquid at a temperature of 37oC, and below 20oC they gel (interpreted as polymerizing via temperature) (paragraph [0081]).
(iii) The device can also include one or more outlets for removal of a fluid from the device including outlet 45 (interpreting the channels to terminate at an outlet port, claim 1) (paragraphs [0085] and [0089]; and Figure 1A).
(iv) The microfluidic device of any of the preceding items, further comprising one or more additional inlets, one or more additional microchannels, one or more outlets, and/or one or more valves, pumps, mixing zones, incubation chambers, vacuum channels, ports, heaters, vents, reservoirs, reagents, or waste chambers (interpreting the channels to terminate at an outlet port, claim 1) (paragraph [0020]; and pg. 7, col 2, claim 8).
Applicant argues that Figure 1A of Konry does not teach the cited limitation. However, consistent with MPEP 2123(I), Konry teaches this limitation elsewhere including in the claims. Furthermore, paragraph [0092] of Konry teaches variations on the method of polymerizing, wherein: (i) the droplets are distributed into the microchambers prior to polymerization of the polymer scaffold, and/or (ii) the flow of oil is stopped and an aqueous solution such as a cell culture medium is flowed into the incubation chamber, wherein the gelation of the spheroids can be performed either before or after this step. Moreover, Applicant clearly acknowledges that Konry teaches that polymerization takes place while flowing the polymer precursor through a channel, stating:
“Konry's approach uses a polymerization mediator that starts a chain reaction of chemical polymerization of droplets as they flow toward an incubation chamber. See Konry, [0077]; See Nelson Declaration (paragraph 8)” (See, pg. 14, last partial paragraph).
Clearly, the method of forming cell spheroids as taught by Konry includes polymerizing the polymer precursor in the aqueous droplet while the oil is flowing within an elongated microchannel. The combined references teach all of the limitations of the claims. Thus, the claims remain rejected.
Regarding (b), please see the discussion supra regarding the Examiner’s response to Applicant’s arguments including that the as-filed Specification and original claims do not teach the limitation wherein “polymerizing occurs while the plurality of droplets of the unpolymerized mixture flow along an elongated microchannel of the microfluidics apparatus that terminates in an outlet port.” As noted in MPEP 716.02(b)(I), the burden is on Applicant to establish that the results are unexpected and significant. Moreover, MPEP 2145 states (in part) that a showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997) (conclusory statements regarding unusually low immune response or unexpected biological activity that were unsupported by comparative data held insufficient to overcome prima facie case of obviousness). Additionally: MPEP 2145 also states:
Rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997) (underline and italics added).
Additionally, the evidence must be reasonably commensurate in scope with the claimed invention. See, e.g., In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 777 (Fed. Cir. 1983) (underline and italics added).
in order for evidence of secondary considerations to be accorded substantial weight, there must be a nexus, i.e., a legally and factually sufficient connection or correspondence between the submitted evidence and the claimed invention. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373, 2019 USPQ2d 483355 (Fed. Cir. 2019), cert. denied, 141 S.Ct. 373 (2020). See MPEP § 716.01(b) (underline and italics added).
MPEP 2112.01(II) indicates:
"Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty") (underline added).
Applicant’s assertion that the limitation discussed provides advantages over Konry and Desai, is not found persuasive. As an initial matter:
Applicant has not pointed to where the “unexpected or superior results” can be found in the as-filed Specification.
No evidence supporting the unexpected results has been provided by Applicant.
Applicant’s has not provided any evidence of improved properties that are reasonably commensurate in scope with the claimed invention.
There is no nexus or co-extensiveness between Applicant’s asserted improvements and the components of the claimed microfluidic device.
Evidence has not been provided that the "superior results" asserted by Applicant were unknown in the prior art.
Konry teaches all of the limitations as recited in instant claim 1, therefore, any purported advantages asserted for the instant invention will also be present in the device and methods taught by Konry and Desai including precise control of the exposure time, achieving complete polymerization, and ensuring high-throughput by avoiding unnecessary residence time (See, MPEP 2112.01(II), supra).
The Nelson decl. states that:
The performance benefits associated with polymerization occurs while the plurality of droplets of unpolymerized mixture flow along an elongated microchannel (See, #6).
However, instant claim 1 does not recite any specific channel length and/or diameter for the “elongated microchannel,” and the as-filed Specification does not teach an “elongated microchannel.”
Polymerization that occurs during flow of droplets allows for precise control of the exposure time of the droplets to a polymerization stimulus, such as the duration of exposure to an elevated temperature. Specifically, the amount of time that the droplets spend in the elongated microchannel is determined by the length of the microchannel and the flow rate of the medium carrying the droplets (See, #7, #9 and #10).
Konry clearly teaches polymerization via an external stimulus such as temperature and by = exposure to UV light; as well as, exemplary flow rates.
However, instant claim 1 does not recite: (a) a polymerization stimulus; (b) exposure to an elevated temperature; (c) an amount of time that the droplets are exposed to a polymerization stimulus; (d) a flow rate or an adjustable flow rate, (d) a microchannel length, and/or (e) a medium that carries the droplets.
The flow rate advantageously can be adjusted to an optimum flow rate that both (1) ensures that the droplets spend sufficient time in the elongated microchannel to achieve complete polymerization and (2) ensures high throughput (See, #7).
However, instant claim 1 does not recite: (a) a flow rate; (b) an amount of time that the droplets spend within the channel and/or a “sufficient time”; (c) the length of the microchannel; (d) achieving complete polymerization; and/or (e) high-throughput formation of spherical droplets.
Konry's approach, lacking an elongated channel, cannot achieve the exposure control that is achievable in the methods claimed in the present application, in which polymerization occurs while droplets flow along an elongated microchannel. This is at least because Konry's device does not offer a mechanism for precise control of exposure time (See, #10).
However, as previously noted, instant claim 1 does not recite: (a) any particular channel length and/or diameter; (b) exposure to a polymerization stimulus (e.g., heat); (c) a mechanism for precise control of exposure time to the polymerization stimulus; and/or (d) an exposure time.
There is no nexus or co-extensiveness between Applicant’s asserted improvements and the components of the claimed microfluidic device as recited in claim 1. There is no support in the as-filed Specification and/or original claims for the unexpected or superior results regarding the performance benefits asserted in the Nelson decl. and/or as argued by Applicant. The combined references teach all of the limitations of the claims, such that the benefits asserted by Applicant are inherently present in the methods taught by the cited references. Thus, the claims remain rejected.
(2) The rejection of claims 1-4, 10, 14, 15, 25, 29, 30 and 33 is maintained under 35 U.S.C. 103 as being unpatentable over Konry et al. (hereinafter “Konry”) (US Patent No. 10928382, issued February 23, 2021; published July 13, 2017; effective filing date June 26, 2014) in view of Jeong et al. (hereinafter “Jeong”) (PLoS One, 2016, 1-17); and further in view of Qui et al. (hereinafter “Qui”) (Lab Chip, 2015, 15, 339-350); as evidenced by Wong et al. (hereinafter “Wong”) (Scientific Reports, 2017, 7(9109), 1-15); and Healio (LearnGenomics, 2023, 1-9; of record); and Erturk et al. (hereinafter “Erturk”) (American Journal of Roentgenology, 2006, 187, 1531-1535).
Regarding claims 1 and 33 (in part), Konry teaches that the cell spheroids of the invention resemble the tumor microenvironment, including pathophysiological gradients, cell composition and heterogeneity of the tumor mass mimicking the resistance to drug penetration providing more realistic drug response (interpreted as replicating structures of a patient tumor including budding clusters of cells, claim 1) (col 2, lines 55-60). Konry teaches a microfluidic device provides high throughput generation and analysis of defined three-dimensional cell spheroids with controlled geometry, size, and cell composition, and mimic tumor micro-environments including pathophysiological gradients, cell composition, and heterogeneity of the tumor mass mimicking the resistance to drug penetration providing more realistic drug response, and is used to test the effects of anti-tumor agents (interpreting cell spheroids as 3D cell aggregates; controlling the size, composition and density of cells in an organoid; and assaying drug therapies; and replicate structures of the patient tumor including structured clusters of cells, claim 1) (Abstract). Konry teaches that the cells can be any type of cell including tumor cells (including tumor stem cells and model tumor cells), cells of a cell line or culture, cells from a patient, immune cells such as lymphocytes or macrophages, stromal cells, or fibroblasts (interpreted as receiving cells from a patient tumor and encompassing primary cells from a metastatic tumor; and encompassing a biopsy, claim 1) (col 7, lines 15-19). Konry teaches that the invention is particularly useful for screening antitumor agents and their combinations using a combination of co-cultured cell types in a controlled 3D configuration that realistically mimics the ability of chemotherapeutic agents to attack small early stage metastatic growths in a cancer patient (interpreted as primary cells from a metastatic tumor from a patient; 3D aggregate; and screening two or more therapeutic agents, claims 1 and 2) (col 6, lines 43-48). Konry teaches that the term “cell spheroid” refers to any generally round collection of cells bound to a substantially spherical polymer scaffold, wherein the size of the cell spheroid can vary from about 50 microns to about 900 microns in diameter (interpreted as between 50 and 500 microns in diameter; interpreting a 50 micron organoid comprising 3.5 x 105 cells/mL at 7 million cells/mL; and interpreting a collection of cells to indicate that the tumor tissue was dissociated, claim 1) (col 6, lines 49-53). Konry teaches a microfluidic device for the formation and analysis of cell spheroids, the device comprising: (a) a first inlet for an oil, a second inlet for a first aqueous suspension of cells, and a third inlet for a polymerization mediator; the first inlet fluidically connected to a first microchannel, the second inlet fluidically connected to a second microchannel, and the third inlet fluidically connected to a third microchannel; (b) a nozzle formed by a T-shaped intersection of two or more of the first, second, and third microchannels, the nozzle capable of producing aqueous droplets suspended in the oil, the aqueous droplets comprising the cells and the polymerization mediator; and (c) an incubation chamber comprising a plurality of microchambers configured in a two-dimensional array fluidically connected to the nozzle and capable of accepting and delivering said aqueous droplets individually into said microchambers, wherein a cell spheroid comprises two or more cell types adhered to an essentially spherical polymer scaffold (interpreted as a microfluidic device for forming cultured spherical droplets; comprising channels that intersect; converging streams including a matrix and an oil, claim 1) (col 1, lines 61-67; col 2, lines 1-13). Konry teaches that the microfluidic device comprises inlets, microchannels, outlets, valves, pumps, mixing zones, incubation chambers, vacuum channels, ports, heaters, vents, reservoirs, reagents or waste chambers or any combination thereof (interpreted as a microfluidics apparatus that controls pressure and flow rate, and configured to maintain constant pressure, claims 1 and 15) (col 3, lines 22-27). Konry teaches that the droplets are substantially spherical, and their aqueous contents include a suspension of one or more types of individual cells and an initially non-polymerized form of a polymer suitable for mimicking fibrous elements of the extracellular matrix of a mammalian tissue, wherein the droplets can also include a polymerization mediator or catalyst, which is a chemical agent that reacts with a polymer precursor in the droplet to form a 3D polymer scaffold within the droplet, such as a microbead composed of an essentially spherical network of fibers (interpreted as forming droplet that polymerize to form a 3D cell aggregates; and mimicking the tumor microenvironment to encompass replicating the structure of the patient tumor, claim 1) (col 7, lines 4-13). Konry teaches that Figure 8 shows the results of treating with different chemotherapeutic regimens in co-cultured MCF7 and HS5 cell spheroids, wherein the co-cultured cell spheroids were incubated either with doxorubicin (DOX) along or concurrently with DOX and paclitaxel (PCT), and cell viability was determined (interpreted as assaying one or more drug therapies, claim 1) (col 6, lines 28-33; and Figure 8). Konry teaches a method of making a plurality of cell spheroids, comprising the steps of: (a) providing the microfluidic device of item 1, an oil, a first cell suspension comprising a polymer precursor, and a polymerization mediator; (b) flowing the oil, first cell suspension, and polymerization mediator into the first, second, and third inlets, respectively, whereby aqueous droplets suspended in the oil are formed by the nozzle of the microfluidic device, the droplets comprising cells of the first cell suspension, the polymer precursor, and the polymerization mediator; (c) allowing the polymer precursor to polymerize to form polymer scaffolds in the aqueous droplets, whereby a cell spheroid is formed in each droplet; and (d) distributing the cell spheroids into the microchambers of the microfluidic device; (e) washing the cell spheroids; (f) initiating a flow of cell culture medium through the incubation chamber; and (g) placing the device into an environment suitable for survival and/or growth of the cells in the cell spheroids; and (h) allowing the cells in the cell spheroids to proliferate (interpreted as driving the mixture through the channels; combining a stream of unpolymerized material with a stream of an oil; intersecting; forming a plurality of droplets; and polymerizing the droplets within the channels to form spherical droplets; culturing to form cultured spherical droplets; and forming 3D cell aggregates, claim 1) (col 4, lines 13-31). Konry teaches that a device containing the spheroids can be placed in to a typical cell culture incubator for a period of hours, days or weeks and removed periodically for monitoring (interpreted as encompassing culturing for 1 to 14 days; and forming structured clusters of cells, claim 1) (col 8, lines 26-29). Konry teaches in Figure 1A was used to prepare spheroids of MCF7 breast cancer cells, wherein the three inlets of the device were simultaneously fed with mineral oil containing 3% v/v of Span 80 (a surfactant), a suspension of MCF7 cells at 7-10 million cells/mL and containing 2% w/v sodium alginate in Dulbecco's Modified Eagle Medium (DMEM) (interpreting 7 million cells/mL in a 50 micron bead to have a density of 3.5 x 105 cells/mL, which is less than 5 x 106 cells/mL, claims 1, 29 and 30) (col 11, lines 32-38; and Figure 1A). Konry teaches in Example 1, that the cell spheroids were housed in the microfluidic device for 14 days and continuously perfused with fresh cell culture medium, and the cell viability was checked after 1, 4, and 14 days using the LIVE/DEAD assay, wherein Figure 5 shows that there was no statistically significant change in the cell viability over a period of 14 days, after which about 99% of the cells were alive (interpreted as culturing for 1 to 14 days; structured clusters of cells; and the time between receiving the sample and characterizing is less than 21 days, claims 1 and 4) (col 12, lines 3-10). Konry teaches that the device can include one or more outlets for removal of fluid from the device including outlet 45 at the lower end of the incubation chamber is used to collect fluid that has passed through the incubation chamber, wherein outlet 45 can be used to perfused the microchambers and the incubation chamber (interpreted as a microchannel that terminates at an outlet port, claim 1) (col 8, lines 52-52; and col 9, lines 61-67). Konry teaches a method of making a plurality of cell spheroids, the method comprising the steps of: (a) providing the microfluidic device of item 1, an oil, a first cell suspension comprising a polymer precursor, and a polymerization mediator; (b) flowing the oil, first cell suspension, and polymerization mediator into the first second, and third inlets, respectively, whereby aqueous droplets suspended in the oil are formed by the nozzle of the microfluidic device, the droplets comprising cells of the first cell suspension, the polymer precursor, and the polymerization mediator; (c) allowing the polymer precursor to polymerize to form polymer scaffolds in the aqueous droplets, whereby a cell spheroid is formed in each droplet; and (d) distributing the cell spheroids into the microchambers of the microfluidic device (interpreting polymerization to occur while the mixture is flowed along a microchannel of the device, claim 1) (pg. 8, col 1, claim 28). Konry teaches that the microfluidic device of any of the preceding items, further comprising one or more additional inlets, one or more additional microchannels, one or more outlets, and/or one or more valves, pumps, mixing zones, incubation chambers, vacuum channels, ports, heaters, vents, reservoirs, reagents, or waste chambers (interpreting the channels to terminate at an outlet port, claim 1) (col 4, lines 14-31).
Regarding claim 2, Konry teaches that Figure 8 shows the results of treating with different chemotherapeutic regimens in co-cultured MCF7 and HS5 cell spheroids, wherein the co-cultured cell spheroids were incubated either with doxorubicin (DOX) along or concurrently with DOX and paclitaxel (PCT), and cell viability was determined (interpreted as assaying two or more drug therapies in parallel, claim 2) (col 6, lines 28-33; and Figure 8). Konry teaches that the invention is particularly useful for screening antitumor agents and their combinations using a combination of co-cultured cell types in a controlled 3D configuration that realistically mimics the ability of chemotherapeutic agents to attack small early stage metastatic growths in a cancer patient (interpreted as screening for cancer therapies; metastatic tumor; and interpreting drug combinations as assaying one or more drug therapies, claim 1) (col 6, lines 43-48). Konry teaches that the microfluidic device of the invention can be used to screen different antitumor agents against the tumor cells of a particular patient, such as a human or other mammalian subject, to determine an effective agent or combination of agents for chemotherapeutic intervention for the patient, wherein the device also can be used for basic studies of cell interactions, cell-matrix interactions, or for the development of new antitumor agents (interpreted as assaying one or more, or two or more drug therapies; and specific to the patient, claim 1) (col 11, lines 16-23).
Regarding claim 3, Konry teaches that in Figure 7D, it is evident that the addition of fibroblasts, which provide a supporting cell component to the spheroid cultures, caused a significant increase in the overall cell survival rate in response to doxorubicin (interpreted as characterizing a drug response, claim 3) (col 12, lines 54-58; and Figure 7D).
Regarding claim 4, Konry teaches in Example 1, that the cell spheroids were housed in the microfluidic device for 14 days and continuously perfused with fresh cell culture medium, and the cell viability was checked after 1, 4, and 14 days using the LIVE/DEAD assay, wherein Figure 5 shows that there was no statistically significant change in the cell viability over a period of 14 days, after which about 99% of the cells were alive (interpreted as culturing for 1 to 14 days; and the time between receiving the sample and characterizing is less than 21 days, claims 1 and 4) (col 12, lines 3-10).
Regarding claim 10, Konry teaches that the microchambers or docking stations can be arranged in an array of 1000 or more ordered positions for monitoring and analysis (interpreted as encompassing forming 1000 spherical droplets, claim 10) (col 8, lines 58-61). Konry teaches the flowing of oil in (b) is at a rate in the range from about 150 μL/hr to about 500 μL/hr, wherein the flowing of first cell suspension in (b) is at a rate in the range from about 75 μL/hr to about 150 μL/hr, wherein an alginate scaffold is formed in (c), and wherein the polymerization mediator is a 0.1 to 1 M calcium salt solution and Figures 7A-7D compare the effect of doxorubicin on 2D cell monolayers and 3D cell spheroids containing MCF7 cells (interpreted as encompassing the formation of more than 1000 spherical droplets, claim 1) (col 5, lines 11-19).
Regarding claim 14, Konry teaches that the microchannels have a diameter in the range from 1 to 999 microns; and/or about 50 microns to about 400 microns (interpreted as encompassing a channel diameter of 100 microns or greater, claim 14) (col 3, lines 34-36; and col 7, lines 3-4).
Regarding claim 15, Konry teaches that the microfluidic device comprises inlets, microchannels, outlets, valves, pumps, mixing zones, incubation chambers, vacuum channels, ports, heaters, vents, reservoirs, reagents or waste chambers or any combination thereof (interpreted as a microfluidics apparatus that configured to maintain constant pressure, claims 1 and 15) (col 3, lines 22-27).
Regarding claim 25, Konry teaches that the droplets are substantially spherical, and their aqueous contents include a suspension of one or more types of individual cells and an initially non-polymerized form of a polymer suitable for mimicking fibrous elements of the extracellular matrix of a mammalian tissue, wherein the droplets can also include a polymerization mediator or catalyst, which is a chemical agent that reacts with a polymer precursor in the droplet to form a 3D polymer scaffold within the droplet, such as a microbead composed of an essentially spherical network of fibers (interpreted as forming droplet that polymerize to form a 3D cell aggregates; and mimicking the tumor microenvironment to encompass replicating the structure of the patient tumor, claims 1 and 25) (col 7, lines 4-13).
Regarding claims 29 and 30, Konry teaches that the term “cell spheroid” refers to any generally round collection of cells bound to a substantially spherical polymer scaffold, wherein the size of the cell spheroid can vary from about 50 microns to about 900 microns in diameter (interpreted as between 50 and 500 microns in diameter; and a 50 micron organoid comprising 3.5 x 105 cells/mL at 7 million cells/mL, claim 1) (col 6, lines 49-53). Konry teaches in Figure 1A was used to prepare spheroids of MCF7 breast cancer cells, wherein the three inlets of the device were simultaneously fed with mineral oil containing 3% v/v of Span 80 (a surfactant), a suspension of MCF7 cells at 7-10 million cells/mL and containing 2% w/v sodium alginate in Dulbecco's Modified Eagle Medium (DMEM) (interpreting 7 million cells/mL in a 50 micron bead to have a density of 3.5 x 105 cells/mL, which is less than 5 x 106 cells/mL, claims 1, 29 and 30) (col 11, lines 32-38; and Figure 1A).
Konry does not specifically exemplify a density of less than 1 x 105 cells per mL (instant claim 30, in part); and a biopsy sample comprising a cylinder between about 1/32 and 1/8 inch and about 0.75 to about 0.25 inch (claim 33).
Regarding claim 30 (in part), Jeong teaches that tumor microtissues or tumor spheroids (TS) are widely used as 3D models representing avascular tumor regions, such that for multilayer tissue models, 3D cell cultures using hydrogels, polymer scaffolds, microcarrier beads, and hanging droplets have been developed; and these technologies have been exploited to study tumor specific phenomena including drug transport and binding, chemo-resistance and cell invasion, such that the transition to 3D cell culture models is critical by which better biomimetic tissue models can be accomplished (pg. 2, first partial paragraph). Jeong teaches that the context of tumor microenvironments is variable depending on the tissue origin and progression stages, and it generally consist of tumor vasculature, an extracellular matrix, cancer-associated fibroblasts, and activated immune cells that all interact with cancer cells via not only paracrine signaling but also cell-to cell contact mechanisms (pg. 2, first full paragraph). Jeong teaches that cells were harvested and cell suspension was prepared at 5 × 106 cells/mL for HT-29 and 3 × 106 /mL for CCD-18Co, wherein the collagen gel solution (2 mg/mL) was prepared by mixing collagen type I (rat tail) with phenol red-containing PBS with pH adjusted (interpreted as less than 3.5 x 106 cells/mL); the cell suspension was mixed with the type I collagen solution at a 1:9 ratio and 3.5 × 103 of HT-29 cells (into one channel) and 4.2 × 103 of CCD-18Co cells (divided into two channels) were loaded into each designated channel by injecting 7 μL of cell-hydrogel mixture into the gel channels, wherein the ratio cancer cells to fibroblasts was fixed at 1:1.2 which was in the range reported for in vivo relevancy; and the carcinoma-stromal ratio has been reported to vary among patients (20% ~ 90%) and the ratios of cancer cells to fibroblasts as 1:1 to 1:3 have been usually studied in many in vitro studies (interpreting 3.5 × 103 cells/mL as less than 1 x 105 cells/mL, claim 30) (pg. 3, last partial paragraph; and pg. 4, first partial paragraph), wherein it is known that optimal cell density is considered for two reasons: (1) sufficient cell population for statistical analysis of drug susceptibility; and (2) optimization of droplet cell density to avoid overcrowding, wherein a cell population over 100 cells for each treatment conditions was ensured although, generally, a density of about 1-2 x 106 cells/mL works for the majority of mammalian cells as evidenced by Wong (pg. 6, last full paragraph).
Jeong teaches a 7-channel microfluidic chip comprising micrometer-sized channels having a channel width of 1000 mm and channel depth of ~190 mm, useful for the study of the tumor microenvironment (interpreted as a microfluidic device comprising elongated microchannels, claim 1) (Abstract, lines 15-17; pg. 2, last partial paragraph, line 3; and pg. 5, last partial paragraph, lines 4-5). Jeong teaches that inlet and outlet ports were made for loading/withdrawal of cell-hydrogel mixture and media (interpreted as a microchannel that terminates at an outlet port, claim 1) (pg. 3, last full paragraph, lines 6-7).
It would have been prima facie obvious to one ordinary skill in the art before the effective filing date of the claimed invention to modify the microfluidic method of generating three-dimensional cell spheroids with controlled geometry, size, and cell composition including cell spheroids comprising 7-10 million cells/mL in a 50 micron organoid as disclosed by Konry to include 3D cell spheroids comprising different cells and/or different combinations of cells such as fibronectin and fibronectin/collagen I mixtures at cell densities between 3.5 x 103 and 3 x 106 cells/mL as taught by Jeong with a reasonable expectation of success in producing cell spheroids that mimic tumor microenvironments including pathophysiological gradients, cell composition, and heterogeneity for the high throughput analysis of tumor cell response to one or more drug therapies; in analyzing patient resistance to a drug therapy; and/or in identifying patient-specific cancer therapeutics, while improving the overall biological and clinical relevance of the tumor model.
Konry does not specifically exemplify a biopsy sample comprising a cylinder between about 0.03 and 0.12 inch and about 0.75 to about 0.25 inch (claim 33).
Regarding claim 33, Qui teaches a novel microfluidic device to improve mechanical dissociation of digested tissue and cell aggregates into single cells, wherein the device design includes a network of branching channels that range in size from millimeters down to hundreds of microns, such that the channels also contain flow constrictions that generate well-defined regions of high shear force, which we refer to as “hydrodynamic micro scalpels”, to progressively disaggregate tissue fragments and clusters into single cells; and that using in vitro cancer cell models that the microfluidic device significantly enhances cell recovery in comparison to mechanical disruption by pipetting and vortexing after digestion with trypsin or incubation with EDTA, such that the device enabled superior results to be obtained after shorter proteolytic digestion times, resulting in fully viable cells in less than ten minutes, wherein the device can also be operated under enzyme-free conditions that could better maintain expression of certain surface markers (interpreted as a device including elongated microchannels, claim 1) (Abstract). Qui teaches the preparation of 3D cell spheroids as a more advanced in vitro tumor model (pg. 343, col 1, last partial paragraph). Qui teaches that cell-based analysis platforms such as flow cytometry are ideally suited to this task because they offer high-throughput and multiplexed information at the single cell level, allowing the entire population to be analyzed; and that reducing tumor tissue into single cells is a critical step in providing material for identification and analysis of specific tumor cell subsets such as cancer stem cells, metastatic precursors, or drug resistant clones for more detailed study (pg. 339, col 2, first partial paragraph). Qui teaches that tumor tissues and cancer cell aggregates are dissociated into single cells using proteolytic enzymes that digest cellular adhesion molecules and/or the underlying extracellular matrix, such that large clinical specimens such as surgical resections and core biopsies are first minced with a scalpel into approximately 1–2 mm pieces to facilitate digestion, wherein samples are then subjected to fluid shear forces by vortexing and/or repeated pipetting to mechanically liberate individual cells (interpreted as dissociating; and needle biopsy, claim 33) (pg. 339, col 2, last full paragraph). Qui teaches that sample types could include tumors or other tissues that are 1 mm in size or less, such as laboratory-scale tissue models, small volume specimens such as fine needle aspirate (FNA) biopsies, and larger surgical or core biopsy specimens that have been finely cut with a scalpel (interpreting fine needle biopsy as having the dimensions recited in claim 33, claim 33) (pg. 340, col 2, first partial paragraph); wherein biopsies include core needle biopsies, which use a hollow needle to remove a small cylinder of tissue of about 1/16 inch in diameter and about 0.5 inch in length as evidenced by Healio (interpreted as a cylinder between about 1/32 and 1/8 inch; and a diameter of about ¾ to ¼ inch) (pg. 2, last full paragraph; and pg. 3, core needle biopsy); and wherein fine needle biopsies of malignant tumors can also be conducted using 20-22 gauge needles as evidenced by Erturk (Abstract, Materials & Methods; and pg. 1532, col 3, second full paragraph).
"It is prima facie obvious to combine prior art elements according to known methods to yield predictable results; the court held that, " ... a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S._,_, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303,306 (1950)". Therefore, in view of the benefits of co-culturing tumor spheroids in a matrix using a microfluidic chip platform as exemplified by Jeong, it would have been prima facie obvious before the effective filing date of the claimed invention to modify the method of microfluidically producing three-dimensional cell spheroids that mimic the tumor microenvironment for use in screening different antitumor agents and/or combinations of antitumor agents as disclosed by Konry to include the method of obtaining and dissociating a tumor tissue sample including via surgical biopsy, resection, core needle biopsy or fine needle aspirate as disclosed by Qui; and including the cell spheroids comprising the cell matrix scaffolds having the cell suspension densities as taught by Jeong with a reasonable expectation of success in increasing the speed and efficiency of obtaining dissociated single cells from a tissue sample for the microfluidic formation of 3D cell spheroids and the multiplexed identification and analysis of specific tumor cell subsets such as cancer stem cells, metastatic precursors, or drug resistant clones; in the high-throughput generation and analysis of 3D cell spheroids for testing the effects of different antitumor agents on cancer cells including cell differentiation, efficacy, and resistance to drug penetration; in screening different antitumor agents against the tumor cells of a particular patient in order to determine an effective agent or combination of agents for chemotherapeutic intervention; and/or in providing a high-throughput method that realistically mimics the tumor microenvironment for screening drug targets under clinical development or investigation for the identification of new antitumor agents.
Thus, in view of the foregoing, the claimed invention, as a whole, would have been obvious to one of ordinary skill in the art at the time the invention was made. Therefore, the claims are properly rejected under 35 USC §103 as obvious over the art.
Response to Arguments
Applicant’s arguments filed October 28, 2025 have been fully considered but they are not persuasive. Applicants essentially assert that: (a) the combined references do not teach "polymerizing the unpolymerized liquid matrix material…flow along an elongated microchannel of the microfluidics apparatus that terminates in an outlet port," as recited in amended claim 1 (Applicant Remarks, pg. 15, fourth full paragraph).
Regarding (a), please see the discussion supra regarding the Examiner’s response to Applicant’s argument as discussed supra including that the as-filed Specification and original claims do not teach the limitation "polymerizing the unpolymerized liquid matrix material…flow along an elongated microchannel of the microfluidics apparatus that terminates in an outlet port," as recited in amended claim 1. Moreover, the as-filed Specification and original claims do not teach or define an “elongated microchannel” and/or an outlet port. The Examiner contends that the combined references teach all of the limitations as recited in instant claim 1. For example –
Konry teaches:
(i) A method of making a plurality of cell spheroids, the method comprising the steps of:
(a) providing the microfluidic device of item 1, an oil, a first cell suspension comprising a polymer precursor, and a polymerization mediator;
(b) flowing the oil, first cell suspension, and polymerization mediator into the first second, and third inlets, respectively, whereby aqueous droplets suspended in the oil are formed by the nozzle of the microfluidic device, the droplets comprising cells of the first cell suspension, the polymer precursor, and the polymerization mediator;
(c) allowing the polymer precursor to polymerize to form polymer scaffolds in the aqueous droplets, whereby a cell spheroid is formed in each droplet; and
(d) distributing the cell spheroids into the microchambers of the microfluidic device (interpreting polymerization to occur while the mixture is flowed along a microchannel of the device, claim 1) (col 4, lines 14-31).
(ii) Polymerization using temperature reduction and exposure to UV light; as well as, exemplary flow rates (col 7, lines 35-37 and 63-67; col 8, lines 66-67; and col 9, lines 1-4).
(iii) The device can also include one or more outlets for removal of a fluid from the device including outlet 45 at the lower end of the incubation chamber is used to collect fluid that has passed through the incubation chamber, wherein outlet 45 can be used to perfused the microchambers and the incubation chamber (interpreted as a microchannel that terminates at an outlet port, claim 1) (col 8, lines 52-52; and col 9, lines 61-67).
Jeong teaches:
A 7-channel microfluidic chip comprising micrometer-sized channels having a channel width of 1000 mm and channel depth of ~190 mm, useful for the study of the tumor microenvironment (interpreted as a microfluidic device comprising elongated microchannels, claim 1) (Abstract, lines 15-17; pg. 2, last partial paragraph, line 3; and pg. 5, last partial paragraph, lines 4-5).
Inlet and outlet ports were made for loading/withdrawal of cell-hydrogel mixture and media (interpreted as a microchannel that terminates at an outlet port, claim 1) (pg. 3, last full paragraph, lines 6-7).
Qui teaches:
Cell-based analysis platforms such as flow cytometry are ideally suited to this task because they offer high-throughput and multiplexed information at the single cell level (interpreted as comprising high-throughput) (pg. 339, col 2, first partial paragraph).
The device design includes a network of branching channels that range in size from millimeters down to hundreds of microns (interpreted as a microfluidic device comprising elongated microchannels, claim 1) (Abstract).
Inlet and outlet tubing (interpreted as terminating at an outlet port, claim 1) (pg. 348, col 1; first full paragraph, lines 14-15).
The combined references of Konry, Jeong and Qui teach all of the limitations of the claim. Thus, the claim remain rejected.
Double Patenting
The rejection of claims 1-4, 10, 14, 15, 25, 29, 30 and 33 is maintained as being provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over:
Claims 1-10, 12-15, 17-22, 26, 30 and 31 of copending US Patent Application No. 17/870,035;
Claims 1-10, 12-18, and 20-31 of copending US Patent Application No. 17/874,136;
Claims 1-8, 12, 14 and 31-39 of copending US Patent Application No. 17/874,136; and
Claims 1-8, 12, 14 and 31-39 of copending US Patent Application No. 18/692,489 for the reasons of record.
(2) The rejection of claims 1-4, 10, 14, 15, 25, 29, 30 and 33 is maintained on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent No. 11555180 for the reasons of record.
Response to Arguments
Applicant’s arguments filed October 28, 2025 have been fully considered but they are not persuasive. Applicants essentially assert that: (a) Applicant requests that the double patenting rejections be held in abeyance (Applicant Remarks, pg. 16, first full paragraph).
Regarding (a), Applicant’s request that the copending US patent applications and the US patent be held in abeyance did not specifically indicate how the claims of the copending patent applications recited supra are patentably distinct from the instant claims as required by 37 CFR 1.111(b). Thus, the claims remain rejected for the reasons already of record.
New Objections/Rejections
Claim Objection
Claim 1 is objected to because of the following informalities: Claim 1 recites a mixture of pronouns including “the” and “said,” such that for consistency, a single pronoun reciting either “the” or “said” should be used.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a) – New Matter
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 1-4, 10, 14, 15, 25, 29, 30 and 33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection. This is a new rejection necessitated by amendment of the claims in the response filed 10-28-2025.
MPEP § 2163.II.A.3.(b) states, “when filing an amendment an applicant should show support in the original disclosure for new or amended claims” and “[i]f the originally filed disclosure does not provide support for each claim limitation, or if an element which applicant describes as essential or critical is not claimed, a new or amended claim must be rejected under 35 U.S.C. 112, para. 1, as lacking adequate written description”. According to MPEP § 2163.I.B, “While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure” and “The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64, 19 USPQ2d at 1117”.
The claim contains subject matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art (hereafter the Artisan), that the inventor(s), at the time the application was filed, had possession of the claimed invention. 37 CFR §1.118 (a) states that "No amendment shall introduce new matter into the disclosure of an application after the filing date of the application". Claim 1 recites in part: “polymerizing the unpolymerized liquid matrix material in the plurality of droplets of the unpolymerized mixture to form spherical droplets” in lines 24-25; and “wherein the polymerizing occurs while the plurality of droplets of the unpolymerized mixture flow along an elongated microchannel of the microfluidics apparatus that terminates in an outlet port” in lines 25-28. Applicant does not point to where support for the instant amendments can be found in the as-filed Specification, such that it is unclear where in the as-filed Specification this limitation is taught.
Upon review of the instant as-filed Specification and original claims, support was not found for polymerization occurring while the plurality of droplets of the unpolymerized mixture flow along an elongated microchannel of the microfluidics apparatus that terminates in an outlet port as recited in instant claim 1. The instant as-filed Specification, filed February 17, 2021 teaches, for example; “[O]ne or more additional materials may be combined with the dissociated cells and fluid (e.g., liquid) matrix material to form the unpolymerized mixture” (paragraph [0018]); “[T]he same apparatus may therefore include multiple parallel channels” (paragraph [0020]); “the methods may include polymerizing the Micro-Organospheres by changing the temperature” (paragraph [0021]); “combining a dissociated tissue sample and a fluid matrix material to form an unpolymerized mixture; forming a plurality of droplets of the unpolymerized mixture; and polymerizing the droplets to form a plurality of Patient-Derived Micro-Organospheres each having a diameter of between 50 and 500 μm” (paragraph [0024]); “forming a plurality of droplets from a continuous stream of the unpolymerized mixture wherein the droplets have less than a 25% variation in size; and polymerizing the droplets by warming to form a plurality of Patient-Derived Micro-Organospheres” (paragraph [0025]); “converging a stream of the unpolymerized mixture with one or more streams of a fluid that is immiscible with the unpolymerized mixture; polymerizing the droplets” (paragraph [0026]); “the droplets are formed (e.g., pinched off) in an excess of the immiscible material, and the droplets may be concurrently and/or subsequently polymerized” (paragraph [0034]); “combining the streams comprises driving the stream of the unpolymerized mixture across a junction into which the one or more streams of the second fluid also converge. Polymerizing the droplets may comprise heating the droplets” (paragraph [0059]); and “driving the dissociated tissue sample and an unpolymerized fluid matrix material through one or more channels of the microfluidics apparatus” (paragraph [0074]). No such corresponding teaching that polymerization occurs while the plurality of droplets of the unpolymerized mixture flow along an elongated microchannel of the microfluidics apparatus that terminates in an outlet port is taught in the instant as-filed Specification.
A claim-by-claim analysis and for independent claim 1, and a method step by method step analysis regarding where support can be found for the teaching of polymerization occurring within a flowing unpolymerized mixture within an elongated microchannel that terminates in an outlet port in the originally filed specification is respectfully suggested. See MPEP § 2163 particularly § 2163.06.
Claims 1-4, 10, 14, 15, 25, 29, 30 and 33 will remain rejected until Applicant cancels all new matter.
Conclusion
Claims 1-4, 10, 14, 15, 25, 29, 30 and 33 are rejected.
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.
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/AMY M BUNKER/Primary Examiner, Art Unit 1684