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 .
Claim 12 is cancelled.
Claims 1-11 and 13-21 are pending and under examination on the merits.
Claim Interpretation
In the instant Application, every disclosed means of calculating an intensity increase rate involves at least two florescence intensity values (taken at different times) (see for example paragraphs 0028-0029 of the instant specification). This informs the interpretation that said recitations of calculating an increase rate must involve at least 2 measurements of fluorescence intensity (and not, for example comparison of a single measured value to reference data (such as a chart of historical data).
The recited formula of It=(ft-F0)/F0 is understood to be a rate (ratio) calculation, but is not a calculation of speed as instantly recited by the 07/29/2025 claim amendments and exemplified by formula 2 of the specification (see for example paragraphs 0028-0029).
Withdrawn Claim Objections and Rejections
The rejections of the claims under 35 USC §103 as issued in the office action dated 05/15/2025 are withdrawn and replaced with the rejections under 35 USC §103 as presented in this Office action to account for the 07/29/2025 claim amendments.
Maintained-35 U.S.C. 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3, 4, and 9 are rejected under 35 U.S.C. 101, because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim is directed to a judicial exception (mathematical concepts), specifically, the formula recited in instant claim 3. Furthermore the claim does not integrate said judicial exception in to practical application, and the claim does not recite additional elements that amount to significantly more than said judicial exception.
Where a claim describes a judicial exception, such a claim “requires closer scrutiny for eligibility because of the risk that it will ‘tie-up’ the excepted subject matter and pre-empt others from using [the judicial exception]" (federal register, p.74622, C1). While all inventions to some degree involve natural laws, products, and other judicial exceptions, the new guidance regarding patent eligibility makes clear that a practical application of these exceptions is necessary, offering “significantly more” than the exception itself. Limitations that were found not to be enough to qualify as “significantly more” include:
Mere instructions to implement an abstract idea on a computer;
Adding generic instructions that the judicial exception should be used ("apply it");
Simply appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality;
Adding insignificant extra solution activity to the exception ("mere data gathering"); and
Generally linking the use of the exception to a particular technological environment or field of use.
The MPEP (see § 2103-2106.07) provides a means of determining whether a particular claim is patent eligible under 35 U.S.C. 101. The Guidance requires an analysis of multiple steps, Steps 1, 2A, and 2B:
Step 1 - Following a determination of the broadest reasonable interpretation of a claim, is the claim drawn to a process, machine, manufacture, or composition of matter? If the answer to this inquiry is “Yes,” the analysis moves on to step 2A.
Step 2A - A two-prong analysis. For prong one, does the claim recite an abstract idea, law of nature, or natural phenomenon? If “Yes,” the analysis proceeds to prong two, which asks whether the claim recites additional elements that integrate the judicial exception into a practical application. If “No,” the analysis moves on to step 2B.
Step 2B - Does the claim recite additional elements that amount to significantly more than the judicial exception? If “No,” the claim is not eligible subject matter under 35 U.S.C. 101.
In the instant case, the claims are drawn to a process, so the answer to Step 1 is “Yes.”
With respect to prong one of Step 2A, the answer is “Yes,” because as indicated above, the claims are drawn to mathematical concepts.
Claim 1 is directed to a method of (1a) contacting cells comprising a receptor and a fluorescence indicator with sample containing target, (1b) calculating a fluorescence intensity increase rate, and selecting cells (1c). Claim 3 only adds the limitation of the same formula for calculating intensity. Claim 4 only limits the scope of step 1c of claim 1 by requiring selection of cells within the top 30% of exhibited fluorescence intensity increase rate. Claim 9 only adds further mathematical information about the quantification steps of calculating intensity. Thus, claims 4 and 9 incorporate and fail to remedy the deficiency of claims 1 and 3, from which they respectively depend.
Regarding claim 1, the claim language reciting the judicial exception is found in steps 1b and 1c, noting that steps 1a (being directed to contacting cells with target) and 1b (interpreted to require measurement at 2 points in time) are not deemed to be directed to a mental step.
Step 1 - Following a determination of the broadest reasonable interpretation of a claim, is the claim drawn to a process, machine, manufacture, or composition of matter? If the answer to this inquiry is “Yes,” the analysis moves on to step 2A. Here, the instant claim 1 recites, “A method for selecting….” Therefore, the instant claim 1 is directed towards a method, which is a process under 35 U.S.C. 101. So the answer to step 1 is “YES.” Thus, the analysis proceeds to Step 2A.
Step 2A - A two-prong analysis. For prong 1, does the claim recite an abstract idea, law of nature, or natural phenomenon? If “Yes,” the analysis proceeds to prong 2, which asks whether the claim integrates the judicial exception into a practical application. If “No,” the analysis moves on to step 2B. Here, the instant claim 1 includes step 1c directed to a mental step of selecting cells, which is a judicial exception. Therefore, the answer to prong 1 of step 2A is “YES.” Thus, the analysis proceeds to prong 2 of step 2A. Here, the instant claim 1 fails to recite any claim limitations which would integrate the recited judicial exception, for example, by applying or using said judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition.
Step 2B - Does the claim recite additional elements that amount to significantly more than the judicial exception? If “No,” the claim is not eligible subject matter under 35 U.S.C. 101.
The additional claim elements are insufficient to amount to significantly more than the judicial exception for the following reasons.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, has been found to be insufficient to add “significantly more” (MPEP 2106.05(I)(A)).
The additional step 1a of contacting target cells with cells comprising a receptor for the target cells and a fluorescent indicator and of calculating a fluorescence intensity increase rate, respectively, do not add a meaningful limitation to the instant method as they would have been routinely used by those of ordinary skill in the art as supported by Mitsuno et al (Novel cell-based odorant sensor elements based on insect odorant receptors. Biosens Bioelectron. 2015 Mar 15;65:287-94. doi: 10.1016/j.bios.2014.10.026. Epub 2014 Oct 17).
Mitsuno et al teach the use of Sf21 cell lines expressing insect odorant receptors (cells having a receptor for target and a fluorescence indicator) to noninvasively visualize cellular responses via fluorescence intensities using calcium-based imaging with analysis of fluorescence data by calculating IT=(Ft-F0)/F0, wherein Ft is the fluorescence intensity at time t, and F0 is the average signal intensity during the baseline period and wherein data are plotted as ((ΔF/F)/s) (see for example the abstract, section 2.5 and Figure 1 of Mitsuno et al). Mitsuno et al cite to various other sources which teach the use of the commercially obtained products and use of the manufacturer's instructions. This means that the method of contacting target and cells comprising a receptor for target and a fluorescence indicator for subsequent calculation of a fluorescence intensity increase rate is well-understood.
For all of these reasons, t, the steps of contacting cells with a receptor for target and a fluorescence indicator amount to no more than mere data gathering steps and do not add ‘significantly more,’ (see Mayo v. Prometheus, 566 U.S.66, 132 SA. Ct. 1289). The claims fail to include additional elements that are sufficient to amount to significantly more than the judicial exception(s) recited in step 1c.
Therefore, the answer to prong 2B is “No” and the instant claim 1 is therefore directed toward patent ineligible subject matter under 35 U.S.C. 101 and is thereby rejected under 35 U.S.C. 101.
Regarding claim 3, the claim language reciting the judicial exception is, “…It is (Ft-F0)/F0, wherein FO represents a fluorescence intensity of the cells before the sample is brought into contact, Ft represents a fluorescence intensity of the cells at any stage after the sample is brought into contact and before the fluorescence intensity reaches a plateau, and the predetermined time is a time between any two stages after the sample is brought into contact and before the fluorescence intensity reaches a plateau.”
Step 1 - Following a determination of the broadest reasonable interpretation of a claim, is the claim drawn to a process, machine, manufacture, or composition of matter? If the answer to this inquiry is “Yes,” the analysis moves on to step 2A. Here, the instant claim 3 recites, “[t]he method according to claim 1….” Therefore, the instant claim 3 is directed towards a method, which is a process under 35 U.S.C. 101. So the answer to step 1 is “YES.” Thus, the analysis proceeds to Step 2A.
Step 2A - A two-prong analysis. For prong 1, does the claim recite an abstract idea, law of nature, or natural phenomenon? If “Yes,” the analysis proceeds to prong 2, which asks whether the claim recites additional elements that integrate the judicial exception into a practical application. If “No,” the analysis moves on to step 2B. Here, the instant claim 3, through dependency, recites a method comprising an equation and definition of variables used therein, wherein claim 3 only further adds the equation beyond the method steps of claim 1, said equation represents a mathematical concept, which is a judicial exception. Therefore, the answer to prong 1 of step 2A is “YES.” Thus, the analysis proceeds to prong 2 of step 2A. Here, the instant claim 3 fails to recite any claim limitations which would integrate the recited judicial exception into a practical application, for example, by applying or using said judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition.
Step 2B - Does the claim recite additional elements that amount to significantly more than the judicial exception? If “No,” the claim is not eligible subject matter under 35 U.S.C. 101. Here, the instant claim 3 pertains to a method of calculating fluorescence intensities, as discussed above. Claim 3 fails to recite additional limitations that would add significantly more than the judicial exception to the metes and bounds of the claim given that the only matter recited beyond the limitations of instant claim 1 is the equation which is a conventional and routine equation used to calculate the rate of change as taught by Mitsuno et al at page 6/19.
The MPEP provides that:
" The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.... The Court’s rationale for identifying these “mathematical concepts” as judicial exceptions is that a ‘mathematical formula as such is not accorded the protection of our patent laws,’ Diehr, 450 U.S. at 191, 209 USPQ at 15 (citing Benson, 409 U.S. 63, 175 USPQ 673), and thus ‘‘the discovery of [a mathematical formula] cannot support a patent unless there is some other inventive concept in its application.’’ Flook, 437 U.S. at 594, 198 USPQ at 199.... More recent opinions of the Supreme Court, however, have affirmatively characterized mathematical relationships and formulas as abstract ideas. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 218, 110 USPQ2d 1976, 1981 (2014),"
(see MPEP §2106.04(a)(2)(I)).
Therefore, the answer to prong 2B is “No” and the instant claim 3 is therefore directed toward patent ineligible subject matter under 35 U.S.C. 101 and is thereby rejected under 35 U.S.C. 101.
Claim 4 is directed to a method of (1a) contacting cells comprising a receptor and a fluorescence indicator with sample containing target, (1b) calculating a fluorescence intensity increase rate, and selecting cells (1c) (as recited in claim 1 from which claim 4 depends). The language directed to the judicial exception is, " wherein, in step 1c, arbitrary cells exhibiting a fluorescence intensity increase rate within the top 30% are selected among the plurality of cells."
Step 1 - Following a determination of the broadest reasonable interpretation of a claim, is the claim drawn to a process, machine, manufacture, or composition of matter? If the answer to this inquiry is “Yes,” the analysis moves on to step 2A. Here, the instant claim 4 recites, “[t]he method….” Therefore, the instant claim 4 is directed towards a method, which is a process under 35 U.S.C. 101. So the answer to step 1 is “YES.” Thus, the analysis proceeds to Step 2A.
Step 2A - A two-prong analysis. For prong 1, does the claim recite an abstract idea, law of nature, or natural phenomenon? If “Yes,” the analysis proceeds to prong 2, which asks whether the claim integrates the judicial exception into a practical application. If “No,” the analysis moves on to step 2B. Here, the instant claim 4 includes step 1c directed to a mental step of selecting cells, which is a judicial exception. Therefore, the answer to prong 1 of step 2A is “YES.” Thus, the analysis proceeds to prong 2 of step 2A. Here, the instant claim 4 fails to recite any claim limitations which would integrate the recited judicial exception, for example, by applying or using said judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition.
Step 2B - Does the claim recite additional elements that amount to significantly more than the judicial exception? If “No,” the claim is not eligible subject matter under 35 U.S.C. 101. Here, the instant claim 4 pertains to a method of selecting cells, as discussed above.
The additional claim elements are insufficient to amount to significantly more than the judicial exception for the following reasons.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, has been found to be insufficient to add “significantly more” (MPEP 2106.05(I)(A)).
The additional steps 1a and 1 b of contacting target cells with cells comprising a receptor for the target cells and a fluorescent indicator and of calculating a fluorescence intensity increase rate, respectively, do not add a meaningful limitation to the instant method as they would have been routinely used by those of ordinary skill in the art as supported by Mitsuno et al, as discussed above.
For all of these reasons, the claims fail to include additional elements that are sufficient to amount to significantly more than the judicial exception(s) recited in step 1c.
Therefore, the answer to prong 2B is “No” and the instant claim 4 is therefore directed toward patent ineligible subject matter under 35 U.S.C. 101 and is rejected under 35 U.S.C. 101.
Regarding claim 9, the claim language reciting the judicial exception is, the method according to claim 3, wherein the fluorescence intensity increase rate is a maximum value of a time rate of change of It.”
Step 1 - Following a determination of the broadest reasonable interpretation of a claim, is the claim drawn to a process, machine, manufacture, or composition of matter? If the answer to this inquiry is “Yes,” the analysis moves on to step 2A. Here, the instant claim 9 recites, “[t]he method according to claim 3….” Therefore, the instant claim 9 is directed towards a method, which is a process under 35 U.S.C. 101. So the answer to step 1 is “YES.” Thus, the analysis proceeds to Step 2A.
Step 2A - A two-prong analysis. For prong 1, does the claim recite an abstract idea, law of nature, or natural phenomenon? If “Yes,” the analysis proceeds to prong 2, which asks whether the claim recites additional elements that integrate the judicial exception into a practical application. If “No,” the analysis moves on to step 2B. Here, the instant claim 9, through dependency, recites a method comprising an equation and definition of variables used therein, wherein claim 9 only further adds that the resulting It calculated is a maximum value of a time rate of change. Therefore, the answer to prong 1 of step 2A is “YES.” Thus, the analysis proceeds to prong 2 of step 2A. Here, the instant claim 9 incorporates the judicial exceptions noted in claims 1 and 3 through dependency and fails to recite any claim limitations which would integrate the recited judicial exception into a practical application, for example, by applying or using said judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition.
Step 2B - Does the claim recite additional elements that amount to significantly more than the judicial exception? If “No,” the claim is not eligible subject matter under 35 U.S.C. 101. Here, the instant claim 9 pertains to a method of calculating fluorescence intensities, as discussed above. Claim 9 fails to recite additional limitations that would add significantly more than the judicial exception to the metes and bounds of the claim given that the only matter recited beyond the calculated result is the method of claim 1 which, given its generality, recites subject matter deemed routine and conventional, as evidenced by the prior art cited above, where such method steps are only incorporated through dependency. Moreover, claim 9 only defines the result of practicing the method of claim 3, without reciting a further active step. Therefore, the answer to prong 2B is “No” and the instant claim 9 is therefore directed toward patent ineligible subject matter under 35 U.S.C. 101 and is thereby rejected under 35 U.S.C. 101.
Therefore, claims 1, 3, 4, and 9 are rejected under 35 USC §101 as being directed towards patent ineligible mathematical concepts, failing to integrate or add substantially more so as to transform the metes and bounds of the claims into subject matter eligible for patentability.
Newly Necessitated-Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The 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.
Claims 1 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kanzaki (JP2013027376A (as cited in the Written Opinion of the International Search Report for this PCT/JP2019/043560 and the 07/15/2021 IDS)) in view of AIST (US20070054266A1) and Lumen Learning (Time, Velocity, and Speed, OpenStax College, obtained from: https://courses.lumenlearning.com/suny-physics/chapter/2-3-time-velocity-and-speed/; available as of 2017 as evidenced by the accompanying screen capture).
Regarding claim 1, Kanzaki teaches an odour sensor.
Regarding step 1a of claim 1: Kanzaki teaches an odour sensor comprising a cell chip retaining, in a container provided on a substrate, Spodoptera frugiperda cells that coexpress an insect olfactory receptor protein and a fluorescent protein and emit light by being in contact with a sample containing an odour substance (this teaches step 1a) (see translated specification of Kanzaki, for example at the Technical Solution section at page 4/8 and page 5/8) to be detected on the basis of a shift in an intracellular ion concentration, a sensor outputting a signal when detecting the light and a determining device that detects the odour substance on the basis of the signal, and indicates that the fluorescent protein is a calcium-sensitive fluorescent protein, and the calcium-sensitive fluorescent protein is GCaMP3 (see the claims (English translation)); for greater detail, see the specification (English translation) at the Technical Solution section, for example). Kanzaki further specifically indicates that when a response to bombykol or bombykal was measured using Sf21 cells containing a GCaMP3-expressing vector and a BmORl- or BmOR3-expressing vector introduced therein, BmORl and BmOR3 selectively responded to bombykol and bombykal, respectively (see for example, Example 1 of Kanzaki and the Description of the Drawings at pages 4/8-7-8), and the response to odour was measured while shifting the concentration of bombykol or bombykal added from 30 nM-10 μM (see for example, pages 4/8-7/8 (more specifically, see examples 2-3 on page 7/8) and figures 5 and 6).
Regarding step 1b of claim 1, as discussed above, Kanzaki teaches step 1a.
Kanzaki does not indicate that the fluorescence intensity increase rate is a speed and is further obtained by calculation for each cell.
However, AIST teach a chemical sensor comprising, for example, a cell comprising an olfactory receptor, the cell being immobilized on a support to form a chip which is part of a sensor (see for example, the abstract). AIST further teaches an analysis method for evaluating the level of response of each receptor species within an array from a change in fluorescence intensity measured as a response of a cell expressing the receptor, using a change of a transient intracellular calcium concentration using fura-2as an indicator, where it is desirable to remove the baseline fluorescence present without stimulation (presence of the olfactory substance which binds the olfactory receptor) (see for example paragraph 0570), AIST further teaches that when one measures responses in a time resolution such that one can approximate the rise of the response as mentioned above to the approximating curve, it is also possible to evaluate response intensity from the dynamic behavior of the rise. Specifically, it can be determined that the faster the rise speed of the response is, the larger the response intensity is. More generally, amplitude widths of response peaks may be calculated as a difference between the post- and pre-stimulation signal values, and evaluation may be conducted to calculate the matter, property, concentration, intensity of the stimulant based on the amplitude widths (see for example, paragraph 0571).
AIST teaches that the faster the rise speed of the response is, the larger the response intensity is. This teaching is deemed to make obvious calculating such a speed by means known in the art. The failure of AIST to specify means for such calculation would lead the artisan to understand that such calculation is obvious/may be accomplished by any means known in the art.
While AIST does not explicitly teach the steps/formula of calculating the speed of dynamic rate of fluoresce intensity increase, it is presumed that any art-known means for said calculation would be predictably used in the method of Kanzaki and AIST to use the speed of fluorescence intensity increase rate of change as an indicator for strength or response of the receptor for the target in order to determine the receptor(s) having the largest intensity, indicating a stronger response for the target.
Lumen Learning teaches that the basic calculation of speed is also called velocity, colloquially. Lumen Learning teaches that speed has no direction, while velocity has a direction. Given that the rate being measured is a speed of change, the Examiner believes the teachings related to velocity and average velocity of Lumen Learning are most applicable (the claims recite calculating a fluorescence intensity increase speed, which implies a direction noting further that calculation of a decrease is not disclosed). Lumen Learning teaches that the average velocity is calculated as shown, below (see for example, pages 4/14-6/14).
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The artisan would have found it obvious to adapt this well-settled principle of mathematics/physics to the practical application of calculating the speed of change of fluorescence intensity increase (which AIST teaches provides valuable information regarding the response size/intensity of the receptor for target, as discussed above). Lumen Learning’s equation would appear to be the foundation underlying the formulas disclosed at pages 11-12 of the instant specification (which are not claimed). It is noted that the instant claims do not recite or require any particular means for calculating the recited speed per cell.
Regarding step 1c of claim 1, it is noted that Kanzaki does not explicitly teach that the arbitrary cell that shows a fluorescence intensity increase rate within the top 50th percentile is selected among a plurality of cells
However, Kanzaki does teach that when cell lines that stably express olfactory receptor proteins were established, the proportion of cells responding to an odour substance was 16.0-63.3% in the respective lines (per the International Search Authority citing paragraphs [0044]-[0047], table 1) or alternatively, at least 60% of the cells responded to the olfactory target (see for example, page 7/8 of Kanzaki).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of Kanzaki, AIST, and Lumen Learning. The artisan would have been motivated to make and use the invention as claimed because the inventions taught by Kanzaki and AIST collectively teach detecting an odour substance using a cell expressing an olfactory receptor and emitting fluorescence upon binding of target to receptor whereupon said binding is observed and analyzed through fluorescence. Kanzaki and AIST both further teach steps of measuring the fluorescence intensity as a measure of receptor/odor molecule activity. AIST goes on to teach that it can be determined that the faster the rise speed (fluorescence intensity increase speed) of the response is, the larger the response intensity is. Lumen Learning teaches a general formula for calculating speed, which the artisan would have found obvious to adapt to the assay of Kanzaki and AIST by using the change in fluorescence intensity to stand in for displacement in the formula of Lumen Learning because there is no displacement to be measured in the assay of Kanzaki and AIST. The artisan would have found it obvious to measure this speed per cell so as to select for cells having a higher response to the olfactory substance (ligand) as indicated by an increased rate of fluorescence intensity increase speed (faster response). One of ordinary skill in the art would have decided, as appropriate, the percentile of cells to be measured/selected with a reasonable expectation of success. It is noted that Kanzaki does teach that at least 60% of the cells responded (being interpreted to mean that they had a measurable fluorescence intensity increase speed). Thus, the use of the compositions of Kanzaki as modified by AIST and Lumen Learning to measure the change in fluorescence intensity per cell before and after contact of the cell with the olfactory substance, subsequent calculation of the fluorescence intensity increase speed (ideally subtracting out the baseline fluorescence) per cell, and further selection of the top 50% of cells exhibiting a fluorescence intensity increase speed as a measure of responsiveness of the cell to the olfactory substance would have been obvious to the artisan. The artisan would have had a reasonable expectation of success based on the cumulative disclosure of these prior art references.
Regarding claim 11, as discussed above, Kanzaki in view of AIST and Lumen Learning teaches the method of instant claim 1 and further teaches the cell-based fluorescence assay using/binding an odor substance using insect olfactory receptors and a calcium-sensitive fluorescent protein (see for example, the Technical Problem and Technical Solution sections of the English translation of the Kanzaki Disclosure at page 4/8).
Claims 3-5, 7-10, and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kanzaki and AIST and Lumen Learning, as applied to claims 1 and 11 above, in view of Mitsuno et al (Novel cell-based odorant sensor elements based on insect odorant receptors. Biosens Bioelectron. 2015 Mar 15;65:287-94. doi: 10.1016/j.bios.2014.10.026. Epub 2014 Oct 17).
Regarding claim 3, as discussed above Kanzaki in view of AIST and Lumen Learning teaches the method of instant claim 1.
Kanzaki, AIST, and Lumen Learning do not teach that It is (Ft-F0)/F0, where F0 is the fluorescence intensity of the cells before the sample is contacted with the cells, Ft is a fluorescence intensity at any stage after the sample is contacted with the cell and before the fluorescence intensity reaches a plateau, and the predetermined time is a time between any 2 stages after the sample is contacted and before the plateau is reached.
However, Mitsuno et al teach that Sf21 cell lines expressing insect odorant receptors are sensitive to the level of several tens of parts per billion in solution, can selectively distinguish between different types of odorants based on the odorant selectivity intrinsic to the expressed receptors, and have response times of approximately 13s. Specifically, with the use of Sf21 cells and insect odorant receptors, Mitsuno et al demonstrated that the established cell lines stably expressing insect odorant receptors are able to detect odorants with consistent responsiveness for at least 2 months, thus exceeding the short life-span normally associated with cell-based sensors. Mitsuno et al noninvasively visualized cellular responses via fluorescence intensities using calcium-based imaging. Mitsuno et al further teach a compact odorant sensor chip by integrating the established insect cell lines into a microfluidic chip. Mitsuno et al teach analysis of fluorescence data by calculating IT=(Ft-F0)/F0, wherein Ft is the fluorescence intensity at time t, and F0 is the average signal intensity during the baseline period (presumably prior to contact with the target) and wherein data are plotted as ((ΔF/F)/s) (see for example the abstract, section 2.5 and Figure 1 of Mitsuno et al at pages 4/19 and 6/19-7/19).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of Kanzaki, AIST, Lumen Learning, and Mitsuno et al, which collectively teach the use of cells comprising an insect odorant receptor for detecting a target odorant, using calcium-sensitive fluorescence. The artisan would have been motivated and would have further found it obvious to use F0 and the fluorescence intensity of the cells before a sample is brought into contact with target to obtain the baseline value taught by Mitsuno et al. Because this baseline is being compared to a time when target is bound (because IT or as Mitsuno et al call it ΔF/F must be what Applicant recites as IT given that the formula to arrive at the end value is the same), the artisan would have found it obvious that Ft is sometime after the sample containing target is contacted with the cells. While Mitsuno et al do not explicitly mention that Ft is prior to a plateau of fluorescence, it would have been obvious to one of ordinary skill in the art to choose an Ft prior to plateauing because a plateau would indicate receptor saturation such that no active binding is occurring and any measurement at or after saturation would not yield a dynamic Ft indicative of active binding between receptor and target (and thus would not be indicative of responsiveness of the cell/receptor to an olfactory/target substance). The artisan would have had a reasonable expectation of success based on the cumulative disclosure of these prior art references.
Regarding claim 4, it is noted that Kanzaki, AIST, and Lumen Learning, teaching instant claim 1 as noted above, do not explicitly teach selection of arbitrary cells showing a fluorescence intensity increase speed within the top 30th percentile.
However, Kanzaki teaches that when cell lines that stably express olfactory receptor proteins were established, the proportion of cells responding to an odour substance was 16.0-63.3% in the respective lines (per the International Search Authority citing paragraphs [0044]-[0047], table 1) or alternatively, at least 60% of the cells responded to the olfactory target (see for example, page 7/8 of Kanzaki). Note further that Mitsuno et al support this through teaching that more than 30% of BmOR1-1 and BmOR3-1 responded to the odorants with at least 50% increases in their fluorescent intensities (indicative of responsiveness of the cell to the olfactory substance) (see for example paragraph 2 of p. 8/19). The artisan would have understood that the measurement sensitivity decreases when evaluation is carried out with cells including those not responding to an/the (target) odour substance. As such, it would not have been particularly difficult to measure the fluorescence intensity as stated above by selecting cells with a response (or higher responsiveness) to an odour (target) substance in the invention taught by Kanzaki.
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of Kanzaki, AIST, and Mitsuno et al. The artisan would have been motivated to make and use the invention as claimed because the artisan would have obviously decided, as appropriate, the percentile of cells to be measured/selected as a means of improving the assay resulting from the cumulative disclosure of the cited prior art with a reasonable expectation of success, as a matter of choice yielding no more than predictable results, particularly where Mitsuno guides towards selection of the top 30% of cells selected for having at least a 50% response, as discussed above. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 may bar its patentability. When considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions,” (see MPEP 2141. I.). The artisan would have had a reasonable expectation of success based on the cumulative disclosure of these prior art references.
Regarding claim 5, as discussed above, Kanzaki, AIST, Lumen Learning, and Mitsuno et al teach a means of detecting fluorescence intensity increase speed as an indicator of receptor-target binding/responsiveness of the cell for the olfactory substance in a cell-based, fluorescence assay so that responsive cells may be selected and the presence of target in the sample may be ascertained based upon analysis such as the calculation steps taught by Mitsuno et al. Further, AIST teaches that the amplitude widths of fluorescence intensity/response peaks may be calculated as a difference between the post- and pre-stimulation signal values, and evaluation may be conducted to calculate the matter, property, concentration, intensity of the stimulant based on the amplitude widths (see for example, paragraph 0571). Kanzaki, AIST, Lumen Learning, and Mitsuno et al do not teach contacting a sample with a known amount of target to the cell assay (step 2a of claim 5), calculating a fluorescence intensity increase speed (step 2b of claim 5), repeating steps 2a and 2b of claim 5 using one or more standard samples containing the target substance with different concentrations to calculate a fluorescence intensity increase rate for each sample (step 2c of claim 5). Then bringing a sample containing an unknown concentration of target into contact with the cells (step 2d of claim 5), calculating the fluorescence intensity increase rate for each of the cells after the sample is brought into contact (step 2e of claim 5), selecting arbitrary cells in which the fluorescence intensity increase rate calculated for the sample or any of the standard samples is within the top 50% among the cells (step 2f of claim 5), and comparing the fluorescence intensity increase rate calculated for the sample in step 2e with the fluorescence intensity increase rate calculated for the standard samples in step 2b and step 2c to calculate a concentration of the target substance in the sample, wherein the compared increase rates are the increase rates calculated for the cells selected in step 2f, wherein steps 2a, 2b, 2c, 2d, 2e, and 2g are performed in this order, and step 2f is performed at any stage after step 2b and before step 2g.
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of Kanzaki, AIST, Lumen Learning, and Mitsuno et al. The artisan would have been motivated to make and use the invention as claimed because the limitations of instant claim 5 amount to no more than obtaining fluorescence intensity increase rates for known concentration samples and comparing them to a value calculated for a sample with an unknown concentration sample and then using basic comparison to approximate the concentration of target contained in the sample whose concentration was unknown. This basic process of comparison would have been obvious to one of ordinary skill in the art because the artisan would have decided, as appropriate, the process of comparing values to approximate concentration amounts because such an analysis is standard in the art. Note that Mitsuno et al further teach generation of a dose-dependent concentration curve (see for example, Figure 2D and its caption at pages 8/19-9/19). Generation of such a curve is conventional as evidenced by Mitsuno et al’s silence as to how such a curve is generated. It is implicit that at least one sample with a known concentration was used in generation of the curve. While Mitsuno et al do not mention the use of an unknown sample, comparison of a test substance to a reference/standard/control substance in order to draw conclusions about the test substance is conventional in the art. Moreover, where a curve such as that of Mitsuno et al is made, one of ordinary skill in the art would have found it obvious to obtain the ΔF/F and use the curve to find the corresponding X-axis value to ascertain the concentration of the unknown sample by comparison. Note that, the MPEP provides that,
“A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.”KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.”Id. at 418, 82 USPQ2d at 1396,”
(see MPEP § 2141 (II)(c)). The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 may bar its patentability. When considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions,” (see MPEP 2141. I.). Here, the claimed assay is made obvious by the cited prior art references. The comparative method of using said assay to obtain a dose-dependent concentration curve by contacting the assay with one or more standard (known concentration) samples (where the fluorescence intensity increase speed is calculated and plotted) and then contacting the assay with a sample of unknown concentration (test sample), calculating, plotting, and comparing the fluorescence intensity increase speed of the test sample to the curve and determining the concentration of the test sample through said comparison would have been an obvious matter of choice yielding no more than predictable results. The artisan would have had a reasonable expectation of success based on the cumulative disclosure of Kanzaki, AIST, Lumen Learning, and Mitsuno et al, as discussed above.
Regarding claim 7, as discussed above Kanzaki, AIST, and Lumen Learning in view of Mitsuno et al teaches the method of instant claim 5. Kanzaki, AIST, Lumen Learning, and Mitsuno et al teach measurement and calculation of fluorescence change and fluorescence intensity increase speed as an indicator of receptor-target binding/responsiveness of the cell for the olfactory substance in the cell-based assay, using the formula recited in instant claim 7 (see the rejection of claim 3 above).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of Kanzaki, AIST, Lumen Learning, and Mitsuno et al. The artisan would have been motivated to make and use the invention as claimed because one of ordinary skill in the art looking to further quantify the findings from using the cell-based, fluorescence assay of Kanzaki as modified by AIST, Lumen Learning, and Mitsuno et al would have found it obvious to use the measurement and calculation teachings regarding measurement of fluorescence and calculation of fluorescence intensity increase speed as taught by the cited portions of AIST, Lumen Learning, and Mitsuno et al, where the fluorescence intensity increase speed may be calculated per cell as an indicator of the responsiveness of the cell to the olfactory substance to select for cells responsive to said substance. One of ordinary skill in the art would have further found it obvious to use F0 and the fluorescence intensity of the cells before a sample is brought into contact with target to obtain the baseline value taught by Mitsuno et al. As this baseline is being compared to a time when target is bound (because IT or as Mitsuno et al call it ΔF/F must be what Applicant recites as IT given that the formula to arrive at the end value is the same), it is obvious that Ft is sometime after the sample containing target is contacted with the cells. While Mitsuno et al do not mention that Ft is prior to a plateau of fluorescence, this would have been obvious to one of ordinary skill in the art because a plateau would indicate receptor saturation such that no active binding is occurring and any measurement at or after saturation would not yield a dynamic Ft indicative of active binding between receptor and target. The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Regarding claim 8, as discussed above, the combined references teach the method of instant claim 5. It is further noted that Kanzaki does not explicitly teach that one or more arbitrary cells that show a fluorescence intensity increase rate within the top 30th percentile is/are selected among a plurality of cells. However, Kanzaki does teach that when cell lines that stably express olfactory receptor proteins were established, the proportion of cells responding to an odour substance was 16.0-63.3% in the respective lines (per the International Search Authority citing paragraphs [0044]-[0047] and table 1) or alternatively, at least 60% of the cells responded to the olfactory target (see for example, page 7/8 of Kanzaki). Note further that Mitsuno et al support this through teaching that more than 30% of BmOR1-1 and BmOR3-1 responded to the odorants with at least 50% increases in their fluorescent intensities (see for example, paragraph 2 of p. 8/19).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of Kanzaki, AIST, Lumen Learning, and Mitsuno et al. The artisan would have been motivated to make and use the invention as claimed because one of ordinary skill in the art would naturally have understood and would have found it obvious that the measurement sensitivity decreases when evaluation is carried out with cells including those not responding to an/the (target) odour substance. As such, it would not have been particularly difficult to measure the fluorescence intensity as stated above by selecting cells with a response (or higher responsiveness) to an odour (target) substance in the invention taught by Kanzaki. One of ordinary skill in the art would have obviously decided, as appropriate, the percentile of cells to be measured/selected as a means of routine optimization with a reasonable expectation of success. Moreover, as noted above, Mitsuno et al guide towards selection of the top 30% of cells by teaching that these cells had a responsiveness as measured by a change in fluorescence intensity of at least 50%. The artisan would have had a reasonable expectation of success based on the cumulative disclosure of these prior art references.
Regarding claim 9, as discussed above, the combined references make obvious instant claim 3. The recited matter of instant claim 9 is merely a result of practicing the method of instant claim 1 and the mathematical steps of instant claim 3 and achieving a numerical value through calculation. Therefore, the result recited by instant claim 9 is deemed inherent to the method of claim 1 given the at the products used and steps employed appear to be identical. Therefore, where Kanzaki, AIST, Lumen Learning, and Mitsuno et al make obvious the method of claim 1, they also make obvious the results of practicing said method (including the result recited in instant claim 9).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of Kanzaki, AIST, and Mitsuno et al. The artisan would have been motivated to make and use the invention as claimed because where AIST teaches that the fluorescence intensity increase speed (speed of rise of fluorescence) is an indicator of responsiveness of the cell of the olfactory substance (as discussed above), it would have been obvious to select first for cells with the fastest speed of fluorescence increase (the maximum value of a time rate of change of It) in order to select for the cells most responsive to the o