DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Objections and Rejections
The rejection of claim 21 under 35 U.S.C. 103 as being unpatentable over Ma in view of Laskin and Wang is maintained. The rejection of claims 22-27 are maintained based on dependency of all of the limitations of claim 21.
Response to Arguments
Applicant's arguments, see pages 5-7, filed on 06/22/2026 with respect to the rejection of claims 21-27 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
Applicant argues (p. 5) that the Examiner admits on page 9 of the Office Action that primary reference, Ma, never teaches “determin[ing] a ratio of FA 18:1 and C18:1-containing phosphocholines (PCs)”. Applicant further adds (p. 6) that secondary reference Wang’s disclosure of comparing FA 18:1 to “other lipids” does not satisfy the claim limitation either especially in that Wang never even mentions C18:1-containing phosphocholines (PCs). Applicant concludes (p. 6) that “the Office Action, without any evidentiary basis in the cited art, merely jumps to an unsupported conclusion that a skilled artisan would understand from the general and speculative disclosure of Wang, to determine a ratio of FA18:1 and C18:1-containing phosphocholines (PCs), when no such teaching or suggestion is provided in either Ma or Wang”.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Wang offers a solution to Ma’s stated problem for the quantitative analysis of fatty acid lipid mixtures, and it was also generally known to those of ordinary skill in the art that expressing the amounts of two measured analytes as a ratio provides a normalized measure of their relative abundance and facilitates comparison between samples (See p. 2184, col. 1, para. 1 of Ekroos et al. “Charting molecular composition of phosphatidylcholines by fatty acid scanning and ion trap MS 3 fragmentation,”2003). Both references, Ma and Wang, employ FA 18:1 in connection with determining C=C characteristics of lipid species, reinforcing the applicability of Wang’s technique to Ma’s method. Wang need not specifically mention PC 18:1 because Ma already establishes the structural relationship between FA 18:1 and PC’s containing the same 18:1 (9Z) chain fatty acid chain, such as PC 16:0-18:1 (9Z)) which only has one double bond in the 18:1 acyl chain (p. 2595, col. 1, para. 3, ll. 4-5; Table 1). A person of ordinary skill in the art would have had a reasonable expectation of success when calculating the ratio because C=C double bonds were identified within a sample that contained a mixture of both free FA 18:1 (9Z) and PC 16:0-18:1 (9Z)). Ma recognizes a deficiency in its P-B reaction, namely that the reaction is not quantitative (p. 2596, col. 1, ll. 16-18). Wang addresses this recognized need by teaching quantitative fatty-acid analysis using measured intensity ratios of FA 18:1 and isomers that correlate with molar ratios (p. 2593, col. 2, para. 2). Accordingly, pursuant to MPEP 2143(C), a person of ordinary skill in the art would have been motivated to apply Wang’s known quantitative technique to Ma’s similar C=C structural analysis method to obtain the predictable improvement of quantitative analysis. The references need not be bodily incorporated into one another since the obviousness inquiry is based on what the combined teachings would have suggested to one of ordinary skill in the art, rather than whether Wang’s particular method could be physically inserted entirely into Ma’s disclosed procedure (See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Claim Rejections - 35 USC § 103
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (Pinpointing Double Bonds in Lipids by Paterno-Buchi Reactions and Mass Spectrometry, 02-05-2014) in view of Laskin (Tissue Imaging Using Nanospray Desorption Electrospray Ionization Mass Spectrometry; 2011), and Wang et al. (“Fatty Acidomics: Global Analysis of Lipid Species Containing a Carboxyl Group with a Charge-Remote Fragmentation-Assisted Approach”; 2013).
Regarding claim 21, Ma teaches a method for analyzing a sample, the method comprising:
introducing reagents (a mixture of acetone and water (50/50, v/v), and 1% (v) ammonium hydroxide; page 2593, column 2, paragraph 2, lines 8-10) for a radical reaction to a sample (addition of acetyl radicals to lipids; page 2593, column 2, paragraph 2, line 16) comprising an unsaturated compound (an unsaturated FA; page 2593, column 2 paragraph 2, lines 2-3), wherein the radical reaction targets a carbon-carbon double bond within the unsaturated compound (reacts with the C=C bond in an olefin; page 2593, column 2 paragraph , line 3);
conducting the radical reaction (on-line P-B reaction was conducted; page 2593, column 2 paragraph 2, lines 1-2) to produce reaction products (P-B reaction product; page 2593, column 2 paragraph 2, lines 21-22)(“to produce reaction products” is not given weight when it simply expresses the intended result of a process step positively recited.” Id. (quoting Minton v. Nat' l Ass' n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003) See MPEP 2111.04);
scanning the sample such that the reaction products are ionized (ionization; page 2593, column 2 paragraph 2, line 10) in a time resolved manner (confident, fast, and sensitive determination of double bond locations within various types of lipids; Abstract)(Under broadest reasonable interpretation, the Examiner interprets a time resolved manner to be any time duration between when the scanning begins to when the scanning ends); and
analyzing the ionized reaction products in a mass spectrometer (P-B reaction mass spectrum; page 2594 Fig. 1 (e)).
Ma fails to teach analyzing a tissue sample by desorption (Emphasis added) and determining a ratio of FA18:1 and C18:1-containing phosphocholines (PCs). However, Ma does teach analyzing a “yeast polar extract (S. cerevisiae)” sample by using “nanoelectrospray ionization (nanoESI)” (page 2595, column 1, paragraph 4, line 3)(page 2593, column 2, paragraph 3, line 6) as well as using FA18:1 as a basis for determining double bond locations in PC 16:0-18:1 (9Z) (See Table 1).
Laskin teaches analyzing a tissue sample by desorption (Laskin teaches analyzing rat brain tissue using nano-DESI in the Abstract and p. 142, col. 2, l. 4).
Laskin is considered to be analogous to the claimed invention because it is in the same field of endeavor for methods of analyzing lipids in a tissue sample using nanoDESI. Ma states that “the n-3 polyunsaturated fatty acids (PUFAs) (also called omega-3, where 3 is the double bond position counted from n, the terminal methyl group) are essential for the functional development of brain and retina” (p. 2593; col. 1, para. 1, ll. 8-12). There are only a finite number of sample types that have such a complex lipid profile which includes tissue samples, and there was a market demand for “chemical characterization of biological materials and real-time identification of tissues in biological and clinical applications” (Laskin, p. 144, col. 1, ll. 3-4). Ma meets this demand by providing “lipid structural characterization” using the P-B reaction to pin-point C=C bonds (p. 2593, col. 1, para. 2, last 5 ll.). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have tried to extend Ma’s same P-B analytical method for a yeast polar extract sample to that of a brain tissue sample as taught by Laskin because both kinds of biological samples would have yielded the predictable result of locating double bound positions within lipids and this involves choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (See MPEP 2143(I)(E)).
Additionally, the analysis of biological samples such as yeast and tissue samples requires an extraction process. The benefit of using nano-DESI “is that no sample pretreatment is necessary prior to analysis for obtaining high-quality ion images” (page 147, Conclusions, lines 12-13). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the complex lipid analytical method taught by Ma to incorporate the teachings of Laskin by substituting nano-ESI with nano-DESI because it would reduce sample preparation steps and this involves the simple substitution of one known element for another to obtain predictable results (See MPEP 2143(I)(B)).
Modified Ma fails to teach determining a ratio of FA18:1 and C18:1-containing phosphocholines (PCs).
Wang teaches determining a ratio of fragment ion intensities between FA18:1 and other lipids from a biological sample (The correlation of the molecular ion intensity ratio of representative FA species (as aforementioned) relative to the d4-16:0 FA ion; Figs. 3-4).
Wang is considered to be analogous to the claimed invention because it is in the same field of endeavor for the structural characterization of lipids in a complex biological sample using nano-ESI-MS. Ma ultimately subjects a sample mixture of lipids including PCs and FAs to in-source Paternò-Büchi functionalization through nano-ESI-MS and identifies the double bond positions of the lipids using diagnostic ions as a basis (See Table 1). The reference uses FA18:1 as a model compound with a known double bond position to validate the method and confirm the resulting fragmentation behavior before applying the technique to the more complex lipid mixture (p. 2593, col. 2, para. 2). Ma, however, admits that although the P-B reaction yield is reasonable for structural analysis by MS/MS, the reaction itself is not quantitative (p. 2596, col. 1, ll. 16-18). Wang recognizes that the double bond structure in FAs produces distinct fragmentation patterns and analyzes the resulting signals using relative intensity ratios in order to determine the relative FA concentration of each species in a mixture (p. 9315, col. 1., para. 2). Wang executes this by calculating peak intensity ratios between different FA isomers and an internal standard (d4-16:0 FA) all within the same mixture (See Figs. 3-4). Similarly, Table 1 of Ma shows that the mixture composition includes FA18:1, a fatty acyl chain attached to the backbone of the other lipids (including PC 16:0-18:1 (9Z)). In the same way that d4-16:0 FA was used as an internal standard of the mixture of Wang, a person of ordinary skill in the art would have sought to use FA18:1 as a comparative baseline to create an intensity ratio relative to PC 16:0-18:1 (9Z). Mass spectrometry naturally presents all detected ions within the same spectrum and their relative intensities are directly comparable (See Fig. 3 which shows the intensities for both PC’s and FA’s from a P-B reaction in the MS). Since the sample data of Ma is already based upon the characterization of FA 18:1 which is a chain within PC 16:0-18:1 (9Z), one of ordinary skill in the art would have found it useful to apply this ratio based quantification technique by using a ratio of FA 18:1 to PC 16:0-18:1 (9Z)) as a way to quantitate the abundance of PC 16:0-18:1 (9Z) in a sample. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the ratio based quantification technique of Wang to the MS data generated by Wang in view of Laskin because it would provide a way for quantitative analysis and this involves the use of a known technique to improve a similar method in the same way (See MPEP 2143(I)(C).
Claims 22-27 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (Pinpointing Double Bonds in Lipids by Paterno-Buchi Reactions and Mass Spectrometry, 02-05-2014) in view of Laskin (Tissue Imaging Using Nanospray Desorption Electrospray Ionization Mass Spectrometry; 2011) and Wang et al. (“Fatty Acidomics: Global Analysis of Lipid Species Containing a Carboxyl Group with a Charge-Remote Fragmentation-Assisted Approach”; 2013), as applied to claim 21 above, and in further view of Bonner (WO 2014045093 A1, see attached English translation).
Regarding claim 22, Modified Ma teaches the method according to claim 21, wherein scanning comprising conducting a desorption electrospray ionization using a desorption electrospray ionization probe at a location on a tissue sample (See nano-desi probe on one location of a tissue sample in Figure 1 of Laskin).
Modified Ma fails to teach a plurality of different locations on the tissue.
Bonner teaches plurality of different locations (a plurality of product ion spectra are produced for each location of the two or more locations; Abstract)
Bonner is considered to be analogous to the claimed invention because it is in the same field of endeavor for methods of analyzing a tissue sample. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the tissue imaging method taught by Ma in view of Laskin to incorporate the teachings of Bonner by imaging a tissue sample by desorption electrospray ionization probe at a plurality of different locations on the tissue because it would provide a more detailed image of the tissue sample to accurately characterize the health of a patient for clinical diagnostics, drug discovery, molecular biology, and biochemistry (Laskin, Abstract) and this involves combining prior art elements according to known methods to yield predictable results (See MPEP 2143(I)(A)).
Regarding claim 23, Modified Ma teaches the method according to claim 22, wherein the reagents for the radical reaction are introduced to the tissue via the desorption electrospray ionization probe (Fig. 1 of Laskin) and ultraviolet light is applied to the tissue (See "Lipid in acetone/water (50/50, v/v)" via "nano-Esi tip," and "UV irradiation of -nanoESI" on page 2594, Fig. 1 of Ma).
Regarding claim 24, Modified Ma teaches the method according to claim 23, wherein the conducting and scanning steps occur simultaneously (When the lamp was turned on to irradiate the nanoESI plume, a new species at m/z 339.4 was observed; Ma, page 2593, paragraph 2, lines 11-13)(Fig. 1 on page 2594 of Ma shows the UV lamp above the nanoESI tip. This nanESI tip is replaced by the teaching of Laskin’s nanoDESI probe on page 147 of Fig. 1 (b). The transparency of the probe will allow the UV light to have the same effect of conducting and scanning simultaneously).
Regarding claim 25, Modified Ma teaches the method according to claim 21, wherein the introducing step comprises applying reagents for radical reaction in a MALDI matrix to the tissue (Laskin’s conclusion section on page 147 describes combining nano-DESI with classical MALDI imaging nano-DESI for analysis of tissue samples).
Regarding claim 26, Modified Ma teaches the method according to claim 25, wherein scanning comprising conducting a MALDI technique using a MALDI source at a location on the tissue (“ion source device to produce and transmit to the tandem mass spectrometer a plurality of ions for each location of two or more locations of a sample,” wherein “the ion source device performs matrix-assisted laser desorption/ionization (MALDI)”; Bonner, [Abstract]; claims 1-2).
Regarding claim 27, Modified Ma teaches the method according to claim 26, wherein the conducting and scanning steps occur simultaneously. (When the lamp was turned on to irradiate the nanoESI plume, a new species at m/z 339.4 was observed; Ma, page 2593, paragraph 2, lines 11-13)(Fig. 1 on page 2594 of Ma shows the UV lamp above the nanoESI tip. This nanESI tip is replaced by the teaching of Laskin’s nanoDESI probe on page 147 of Fig. 1 (b). The transparency of the probe will allow the UV light to have the same effect of conducting and scanning simultaneously).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Ekroos et al., 2003 (instant PTO-892) teaches quantitative ratio analysis of PCs containing 18:1 by fragmenting PC 16:0/18:1 to produce oleic acid (FA 18:1) acyl anion and using fragment-ion intensity ratios to quantitatively characterize the PC.
THIS ACTION IS MADE FINAL. 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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/V.S./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758
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