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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/02/2026 has been entered.
Response to Amendment
The Amendment filed 02/02/2026 has been entered. Claims 21 and 25 are amended. Claims 1-20 are previously cancelled. Claims 21-27 remain pending in the application and are examined herein.
Status of Objections and Rejections
The objection to claim 21 is withdrawn in view of Applicant's amendment. The objection to claims 26-27 are withdrawn based on dependency of all of the limitations of claim 21.
The rejection of claim 21 under 35 U.S.C. 103 as being unpatentable over Ma in view of Laskin 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 5-6, filed on 02/02/2026 with respect to the rejection of claims 21 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
Applicant argues, “Ma merely reports uses usefulness of the Paterno-Buchi reaction in pinpointing carbon-carbon double bonds in lipids. Ma is not related to tissue samples, and does not disclose or suggest analyzing the desorbed and ionized reaction products in a mass spectrometer to determine a ratio of FA18-1 and C18-1-containing phosphocholines (PCs), thereby analyzing the tissue sample”.
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). A reference, Wang et al. (“Fatty Acidomics: Global Analysis of Lipid Species Containing a Carboxyl Group with a Charge-Remote Fragmentation-Assisted Approach”; 2013) 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 18:1). 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 against PC 18:1. 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 18:1, 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 18:1 as a way to quantitate the abundance of C=C bonds present in PC 18:1. 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, as this represents the use of a known solution to address a known problem, yielding predictable results (See MPEP 2143(I)(A and C).
Additionally, secondary reference, Laskin, cures the deficiency of Ma for the use of nano-DESI. 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, substitution of Ma’s nano-ESI technique with Laskin’s nano-DESI technique represents the use of well-known desorption instrumentation that would have yielded the predictable results of improved analytical efficiency through in situ analysis (See MPEP 2143(I)(B)).
The Examiner respectfully disagrees.
Ma ultimately subjects a sample mixture of lipids including PCs and FAs to mass spectrometry and identifies the double bond positions of the lipids using FA 16:1 and FA 18:1 as a basis (See Table 1). To expand, Ma demonstrates a successful Paterno-Buchi reaction (P-B) using oleic acid (FA 18:1) in an on-line MS (p. 2594, col. 1, last 3 ll.)(p. 2593, col. 2, para. 2, ll. 1-3). Diagnostic ions are detected including the CID ions, m/z 339.3 and 311.2 (See Fig. 1). Ma then extends this approach to more complex lipids like phosphatidylserines (PS), generating the same CID ions of FA 18:1 (See Fig. 2). Since the CID ions were identical to FA 18:1, the identification of double bond quantity and locations for the PS’s was determined based upon the deprotonated product ions of FA 18:1 (m/z 281.2 snf 253.2)(Fig. 1 shows m/z 281.2 fragmented from m/z 339.3). Ma therefore concludes that FA will be the basis for analysis of many different phospholipids since there are many double bonds present in a single FA chain (p. 2595, col. 1, ll. 1-4). Using this knowledge, Ma finally analyzes a sample with a mixtures of lipids, including PC 18:1 and FA 18:1, and identifies the double bond positions in each (See Table 1). Ma also recognizes 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). A reference, Wang et al. (“Charging and Charge Switching of Unsaturated Lipids and Apolar Compounds Using Paternò-Büchi Reactions”; 2018) Wang teaches determining ratios of MS signal intensities for the relative quantification of double bond lipid species in complex biological samples resulting from in-source P-B reactions including FA18:1 (p. 1977-1978).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 using Ma, as this represents the use of a known solution to address a known problem, yielding predictable results (See MPEP 2143(I)(A)).
Because mass spectrometry naturally presents all detected ions within the same spectrum, 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). A person of ordinary skill in the art would have found it obvious to express this relationship as a ratio of intensities between PC’s and Fa’s (including PC 18:1 and FA 18:1) as a routine optimization of data analysis using known intensity values for determining the number of double bonds and their positions (See MPEP 2144.05(II)).
Further analyzing a tissue sample, as taught by secondary reference Laskin, alongside Ma’s yeast polar extract sample would have yielded predictable results since both samples contain the same types of lipid species (See MPEP 2143(I)(A)). Additionally, 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, substitution of Ma’s nano-ESI technique with Laskin’s nano-DESI technique represents the use of well-known desorption instrumentation that would have yielded the predictable results of improved analytical efficiency through in situ analysis (See MPEP 2143(I)(B)).
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 (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 in further view of 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 PC18:1 (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.). 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. A person of ordinary skill in the art would have recognized that analyzing both kinds of biological samples would have yielded the predictable result of locating double bound positions within lipids (See MPEP 2143(I)(A and E)). Additionally, 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. 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, substitution of Ma’s nano-ESI technique with Laskin’s nano-DESI technique represents the use of well-known desorption instrumentation that would have yielded the predictable results of improved analytical efficiency through in situ analysis (See MPEP 2143(I)(B and C)).
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). A reference, Wang et al. (“Fatty Acidomics: Global Analysis of Lipid Species Containing a Carboxyl Group with a Charge-Remote Fragmentation-Assisted Approach”; 2013) 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 18:1). 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 18:1. 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 18:1, 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 18:1 as a way to quantitate the abundance of C=C bonds present in PC 18:1. 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, as this represents the use of a known solution to address a known problem, yielding predictable results (See MPEP 2143(I)(A and C).
Claims 22-27 are rejected under 35 U.S.C. 103 as being unpatentable over Ma (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, 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. Doing so would yield the predictable result of 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)(See MPEP 2143(I)(A)).
Regarding claim 23, 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:
Lanekoff et al., 2015 (instant PTO-892) teaches imaging lipids (FA 18:1 and LPC’s) in tissue samples using nano-DESI-MS.
No claims are allowed.
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/V.S./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758