DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Remarks
This office action fully acknowledges Applicant’s remarks and amendments filed on 15 January 2026.
Claims 1-2, 7-8, 11, 14, and 17-33 are pending.
Claims 3-6, 9-10, 12-13, and 15-16 are cancelled.
No claims are withdrawn.
No claims are newly added.
Claims 1-2 and 29 are amended.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 19-23, 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Adamo et al. (US 2009/0280518 A1), hereinafter “Adamo”, in view of Suresh et al. (US 2011/0289043 A1), referred to hereinafter as “Suresh”, and Abassi et al. (US 2006/0121446 A1), hereinafter “Abassi”, and as evidenced through Diez-Silva et al. (Diez-Silva M, et al. “Shape and Biomechanical Characteristics of Human Red Blood Cells in Health and Disease”. MRS Bull. 2010 May; 35(5): 382-388.), hereinafter “Diez-Silva”.
Regarding Claim 1, Adamo teaches a cell-handling device for deforming cells comprising:
an inlet 32 for receiving the cell 100 (Fig. 1);
an outlet 34 (Fig. 1);
a conduit 30 positioned along a solid substrate 20 connected to the inlet 32 and the outlet 34 (Fig. 1 and [0050]: “…the system 10 may be constructed with…wet or dry etching…”), the conduit 30 comprising at least one non-constricted portion and a constricted portion 50 through which the cell can pass having a width smaller than the width of the non-constricted portion ([0007]: “The channel includes a constriction in the channel walls spaced apart from the first end and the second end, where the constriction is configured to deform a cell passing through the channel.”), wherein the constricted portions are each in fluid communication with the inlet 32 (Fig. 1), wherein the constricted portion has a tapered entrance portion (Fig. 1), as in Claim 1.
Further regarding Claim 1, Adamo does not specifically teach a plurality of said constricted portion, wherein the constricted portions are arranged in parallel, nor the constricted portions having a width of greater than or equal to 3 microns and less than or equal to 198 microns, as in Claim 1.
However, regarding a plurality of the constricted portion, mere duplication of parts has no patentable significance unless a new and unexpected result is produced – see MPEP 2144.04(VI)(B). Herein, one of ordinary skill in the art would have found it obvious to provide the device taught by Adamo with a plurality of the constricted portions 50 so as to provide a structure capable of analyzing multiple cells in parallel to increase throughput, or preforming multiple measurements on a single cell so as to improve the accuracy and precision of the mechanical property measurement.
Further, regarding the plurality of constrictions being arranged in parallel, Suresh teaches a respective microfluidic device for causing cell deformation via a channels having constricted portions therein ([0007-0008]). Further, Suresh teaches said channels and constrictions as arranged in parallel ([0036]); wherein the system benefits from this arrangement by increasing throughput ([0228]).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device taught by Adamo to include a plurality of channels and/or constrictions arranged in parallel, such as suggested by Suresh, so as to improve efficiency and throughput afforded by the device.
Further, regarding the constricted portions having a width of greater than or equal to 3 microns and less than or equal to 198 microns, Adamo teaches testing of the mechanical properties red blood cells (RBCs) to determine the presence of malaria, given that the mechanical properties of a diseased cell significantly differ from the mechanical properties of a healthy cell (Malaria parasites modify the infected RBCs to promote their survival, making the cell membrane more rigid, adhesive, and permeable.).
To this end, Diez-Silva discloses that RBCs typically have a diameter of approximately 7.5 to 8.7 microns.
Diez-Silva additionally discloses that RBCs demonstrate a unique ability for repeated large deformation and may be deformed to a diameter as low as 2 microns, allowing RBC movement through blood vessels as small as 2 microns in diameter, as evidenced through Diez-Silva.
As the range of about 2-8 microns overlaps with the instant claimed range of about 3-198 microns, a prima facie case of obviousness exists in view of In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), absent contrary evidence of criticality or non-obviousness of the claimed range.
Given that Diez-Silva discloses RBCs have a diameter of about 8 microns and have an ability to be deformed to about 2 microns one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Adamo to select the overlapping portion of the range at 3-8 microns that corresponds to sizing that suitably affects a deformation of the RBCs to assay their membrane elasticity as likewise desired in Adamo.
Further regarding Claim 1, Adamo discloses a solution in the conduit, but does not specifically teach the system discussed above further comprising:
a payload-containing solution comprising the payload to be inserted into the cell, wherein the payload-containing solution is located:
in the conduit; and/or
in an outlet reservoir configured to collect cells passed through the conduit, wherein the outlet reservoir is connected to the outlet;
wherein the payload in the payload-containing solution is dissolved and/or suspended in liquid of the payload-containing solution and is exogenous to the cell, and wherein the payload comprises: a macromolecule, a particle comprising a nanoparticle or a magnetic bead, a carbon nanotube, and/or a detectable marker, wherein the detectable marker comprises a fluorescent labeled molecule, a fluorescent dye, a radionucleotide, a quantum dot, a gold nanoparticle, or a magnetic bead, as in Claim 1.
However, Abassi teaches a respective system for inserting material into cells comprising cells placed in a payload-containing solution comprising the payload to be inserted into the cell, wherein the payload in the payload-containing solution is dissolved and/or suspended in liquid of the payload-containing solution and is exogenous to the cell ([0117]), and wherein the payload comprises: a macromolecule ([0017]). Further, similarly as in Adamo, Abassi performs measurements on the payload-containing cells using electrodes (Fig. 1 and [0018]). Therein, Abassi provides for measurement of payload entry into cells of a diverse set of potential payloads, thereby broadening the scope of measurements that can be performed.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Adamo to further include a payload-containing solution comprising the payload to be inserted into the cell wherein the payload in the payload-containing solution is dissolved and/or suspended in liquid of the payload-containing solution and is exogenous to the cell, and wherein the payload comprises a macromolecule, such as suggested by Abassi, so as to provide for measurement of payload entry into cells of a diverse set of potential payloads, thereby broadening the scope of measurements that can be performed. Further, it is noted that as the cells in Adamo are permeabilized in a conduit, one skilled in the art would find it obvious to provide the payload-containing solution of Abassi in the conduit of Adamo.
Regarding Claim 19, the prior art meets the limitations of Claim 1 as discussed above. Further, Adamo does not specifically teach the system discussed above wherein at least some of the plurality of constricted portions have a width of greater than or equal to 3 microns and less than or equal to 17 microns, as in Claim 19.
However, as discussed above, Adamo teaches testing of the mechanical properties red blood cells (RBCs) to determine the presence of malaria, given that the mechanical properties of a diseased cell significantly differ from the mechanical properties of a healthy cell (Malaria parasites modify the infected RBCs to promote their survival, making the cell membrane more rigid, adhesive, and permeable.).
To this end, Diez-Silva discloses that RBCs typically have a diameter of approximately 7.5 to 8.7 microns.
Diez-Silva additionally discloses that RBCs demonstrate a unique ability for repeated large deformation and may be deformed to a diameter as low as 2 microns, allowing RBC movement through blood vessels as small as 2 microns in diameter, as evidenced through Diez-Silva.
As the range of about 2-8 microns overlaps with the instant claimed range of about 3-17 microns, a prima facie case of obviousness exists in view of In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), absent contrary evidence of criticality or non-obviousness of the claimed range.
Given that Diez-Silva discloses RBCs have a diameter of about 8 microns and have an ability to be deformed to about 2 microns one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Adamo to select the overlapping portion of the range at 3-8 microns that corresponds to sizing that suitably affects a deformation of the RBCs to assay their membrane elasticity as likewise desired in Adamo.
Regarding Claim 20, the prior art meets the limitations of Claim 1 as discussed above. Further, Adamo does not specifically teach the system discussed above wherein at least some of the plurality of constricted portions have a width of greater than or equal to 4 microns and less than or equal to 8 microns, as in Claim 20.
However, as discussed above, Adamo teaches testing of the mechanical properties red blood cells (RBCs) to determine the presence of malaria, given that the mechanical properties of a diseased cell significantly differ from the mechanical properties of a healthy cell (Malaria parasites modify the infected RBCs to promote their survival, making the cell membrane more rigid, adhesive, and permeable.).
To this end, Diez-Silva discloses that RBCs typically have a diameter of approximately 7.5 to 8.7 microns.
Diez-Silva additionally discloses that RBCs demonstrate a unique ability for repeated large deformation and may be deformed to a diameter as low as 2 microns, allowing RBC movement through blood vessels as small as 2 microns in diameter, as evidenced through Diez-Silva.
As the range of about 2-8 microns overlaps with the instant claimed range of about 3-17 microns, a prima facie case of obviousness exists in view of In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), absent contrary evidence of criticality or non-obviousness of the claimed range.
Given that Diez-Silva discloses RBCs have a diameter of about 8 microns and have an ability to be deformed to about 2 microns one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Adamo to select the overlapping portion of the range at 3-8 microns that corresponds to sizing that suitably affects a deformation of the RBCs to assay their membrane elasticity as likewise desired in Adamo.
Regarding Claim 21, the prior art meets the limitations of Claim 20 as discussed above. Further, Adamo teaches the system discussed above wherein the microfluidic channel comprises a non-constricted portion 30 and a constricted portion 50 (Fig. 1), as in Claim 21.
Further, Adamo does not specifically teach the device discussed above wherein the conduit comprises a plurality of microfluidic channels arranged in parallel and in fluid communication with the inlet, as in Claim 21.
However mere duplication of parts has no patentable significance unless a new and unexpected result is produced – see MPEP 2144.04(VI)(B). Herein, one of ordinary skill in the art would have found it obvious to provide the device taught by Adamo with a plurality of the constricted portions 50 so as to provide a structure capable of analyzing multiple cells in parallel to increase throughput, or preforming multiple measurements on a single cell so as to improve the accuracy and precision of the mechanical property measurement.
Regarding Claim 22, the prior art meets the limitations of Claim 21 as discussed above. Further, Adamo teaches the system discussed above wherein the non-constricted portion and the constricted portion of each of the plurality of microfluidic channels are contiguous (Fig. 1), as in Claim 22.
Regarding Claim 23, the prior art meets the limitations of Claim 20 as discussed above. Further, Adamo teaches the system discussed above wherein the constricted portion has a tapered entrance portion further comprise a tapered exit portion (Fig. 5B), as in Claim 23.
Regarding Claim 25, the prior art meets the limitations of Claim 1 as discussed above. Further, Adamo teaches the system discussed above wherein the microfluidic channel comprises a non-constricted portion 30 and a constricted portion 50 (Fig. 1), as in Claim 25.
Further, Adamo does not specifically teach the device discussed above wherein the conduit comprises a plurality of microfluidic channels arranged in parallel and in fluid communication with the inlet, as in Claim 25.
However mere duplication of parts has no patentable significance unless a new and unexpected result is produced – see MPEP 2144.04(VI)(B). Herein, one of ordinary skill in the art would have found it obvious to provide the device taught by Adamo with a plurality of the constricted portions 50 so as to provide a structure capable of analyzing multiple cells in parallel to increase throughput, or preforming multiple measurements on a single cell so as to improve the accuracy and precision of the mechanical property measurement.
Regarding Claim 26, the prior art meets the limitations of Claim 25 as discussed above. Further, Adamo teaches the system discussed above wherein the non-constricted portion and the constricted portion of each of the plurality of microfluidic channels are contiguous (Fig. 1), as in Claim 26.
Regarding Claim 27, the prior art meets the limitations of Claim 1 as discussed above. Further, Adamo teaches the system discussed above wherein the constricted portion has a tapered entrance portion further comprise a tapered exit portion (Fig. 5B), as in Claim 27.
Claims 30-33 are rejected under 35 U.S.C. 103 as being unpatentable over Adamo in view of Suresh and Abassi, as discussed above regarding Claims 1, 19-23, 25-27, and in further view of Hallow et al. (Hallow DM, Seeger RA, Kamaev PP, Prado GR, LaPlaca MC, Prausnitz MR. Shear-induced intracellular loading of cells with molecules by controlled microfluidics. Biotechnol Bioeng. 2008 Mar 1;99(4):846-54.), hereinafter “Hallow”, and as evidenced through Clarke et al. (Clarke MS, McNeil PL. Syringe loading introduces macromolecules into living mammalian cell cytosol. J Cell Sci. 1992 Jul;102 (Pt 3):533-41.), hereinafter “Clarke”.
Regarding Claim 30, the prior art meets the limitations of Claim 1 as discussed above. Further, Hallow, applied for modifying Adamo as discussed above regarding Claim 1, teaches the payload comprising a macromolecule, wherein the macromolecule comprises a protein (see the section “Experimental protocol of microchannel exposure”: “FITC-labeled bovine serum albumin (BSA, 66 kDa, Sigma)”), as in Claim 30.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the payload to Adamo as a protein, such as suggested by Hallow, given that inserting proteins into cells in a lab enables researchers to observe intracellular processes, add new functions, and develop novel therapies for diseases by directly influencing protein networks and bypassing the need for DNA integration, and would have a reasonable expectation of success therein.
Regarding Claim 31, the prior art meets the limitations of Claim 30 as discussed above. Further, Adamo teaches the system discussed above wherein the system comprises a cell located in the conduit (See Fig. 1: cell 100.), as in Claim 31.
Regarding Claim 32, the prior art meets the limitations of Claim 30 as discussed above. Further, Hallow, applied for modifying Adamo as discussed above regarding Claim 1, teaches the macromolecule as being purified (See the section “Experimental protocol of microchannel exposure” which discusses the FITC-labeled BSA as purchased from Sigma. Further note that one skilled in the art would find it common sense that Hallow utilizes purified protein given that it is recited in isolation, so as to avoid interference from unwanted/unneeded molecules.), as in Claim 32.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize in Adamo a purified macromolecule as the payload, such as suggested by Hallow and as would be understood by one skilled in the art as being common sense, so as to avoid interference from unwanted/unneeded molecules in the solution.
Regarding Claim 33, the prior art meets the limitations of Claim 32 as discussed above. Further, Hallow, applied for modifying Adamo as discussed above regarding Claim 1, teaches the payload as being suspended in PBS (see the section “Experimental protocol of microchannel exposure”), wherein one skilled in the art would find it common sense to utilize a physiological or similar buffer to maintain the structure of the macromolecule.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize in Adamo the macromolecule as being suspended in a buffer solution, such as suggested by Hallow, so as to maintain a stable pH, which is critical for preserving protein/macromolecule structure, solubility, and activity by preventing denaturation and aggregation.
Claims 2 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Austin et al. (US PAT 5,427,663 A), referred to hereinafter as “Austin”, in view of Hallow. Hallow has been discussed above.
Regarding Claim 2, Austin teaches a microfluidic system, the system comprising:
one or more cell-deforming constrictions 54 configured to cause perturbations in a membrane of the cell 214 (Fig. 4 and “The space between adjacent of obstacles 39 in a cross section of array 38 taken normal to floor 28 of receptacle 24 defines a pore 54 of the lattice structure cumulatively produced by obstacles 39 of array 38.”),
the one or more cell-deforming constrictions 54 being configured to suddenly and temporarily deform the cell by applying pressure to the cell 214 (Fig. 16 and “As cells 214 enter channels 206, cells 214 deform from a disc shape to an elongated shape so as to be able to squeeze through channels 206.”),
wherein the one or more constrictions are in the form of:
a plurality of micropillars (Figs. 3 and 4 and “…an array of obstacles is provided upstanding from the floor of the receptacle.”),
wherein the perturbations in the membrane of the cell are large enough for a payload to pass through and into the cell (Austin Claim 10: “wherein said separation distance [between the obstacles/micropillars] is in a range of from about 0.01 microns to about 50.0 microns.” – Herein, this range of separation distances is fully capable of providing perturbations in the membrane of the cell that are large enough for a payload to pass through and into the cell. – Examiner further notes that the recitation “a payload to pass through and into the cell” is drawn to a process recitation. As the claims are drawn to a device, such process recitation is not afforded patentable weight.), as in Claim 2.
Further regarding Claim 2, Austin does not specifically teach the system discussed above further comprising:
a payload-containing solution comprising the payload to be inserted into the cell, wherein the payload-containing solution is located:
in the one or more cell-deforming constrictions; and/or
in an outlet reservoir for collecting the cell, wherein the outlet reservoir is connected to an outlet connected to the one or more cell-deforming constrictions;
wherein the payload in the payload-containing solution is dissolved and/or suspended in liquid of the payload-containing solution and is exogenous to the cell, and wherein the payload comprises: a macromolecule, a particle comprising a nanoparticle or a magnetic bead, a carbon nanotube, and/or a detectable marker, wherein the detectable marker comprises a radionuclide, a quantum dot, a gold nanoparticle, or a magnetic bead; and
the cell located in the one or more cell-deforming constrictions or in the outlet reservoir; as in Claim 2. – (Further note that Austin teaches collection of cells in a reservoir or equivalent thereof (col. 23, line 19).)
However, Hallow teaches a respective microfluidic method for loading cells with molecules exogenous to the cells via shear-induces membrane stress and poration (Abstract) wherein cells are suspended in a payload-containing fluid medium (see the section: “Experimental protocol of microchannel exposure”) and passed through a constriction/cone-shaped structure (Fig. 1B). Given that the cell-containing payload solution is flowed through the constricted structure, the payload-containing solution is located in the one or more cell-deforming constrictions commensurately as claimed. Further, given that cells also flow through the constrictions, the cells are located in the one or more cell-deforming constrictions commensurately as claimed. Hallow further teaches the payload as being a macromolecule (The “intracellular delivery of molecules by shear” section discusses protein insertion.).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Austin further comprising: a payload-containing solution comprising the payload to be inserted into the cell, wherein the payload-containing solution is located: in the one or more cell-deforming constrictions; and/or in an outlet reservoir for collecting the cell, wherein the outlet reservoir is connected to an outlet connected to the one or more cell-deforming constrictions; wherein the payload in the payload-containing solution is dissolved and/or suspended in liquid of the payload-containing solution and is exogenous to the cell, and wherein the payload comprises: a macromolecule, a particle comprising a nanoparticle or a magnetic bead, a carbon nanotube, and/or a detectable marker; and the cell located in the one or more cell-deforming constrictions or in the outlet reservoir, such as suggested by Hallow, so as to provide a payload to cells deformed by the membrane-deforming pillars of Austin, given that Austin similarly contemplates membrane perturbation as it relates to the chemical environment of the cell (col. 23, line 50), and would have a reasonable expectation of success therein.
Regarding Claim 7, the prior art meets the limitations of Claim 2 as discussed above. Further, Austin teaches the microfluidic system discussed above wherein the one or more constrictions are in the form of a plurality of micropillars (Fig. 4 shows the constrictions 54 formed by micropillars 39.), as in Claim 7.
Regarding Claim 8, the prior art meets the limitations of Claim 7 as discussed above. Further, Austin teaches the microfluidic system discussed above wherein the micropillars are configured in an array (Fig. 3 shows the micropillars 39 configured in an array.), as in Claim 8.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Austin in view of Hallow, as applied to Claims 2 and 7-8 above, and in further view of Tooner et al. (US 2011/0053241 A1), referred to hereinafter as “Tooner”.
Regarding Claim 11, the prior art meets the limitations of Claim 2 as discussed above. Further, Austin/Hallow does not specifically teach the microfluidic system discussed above wherein the one or more constrictions are in the form of one or more movable plates, as in Claim 11.
However, Tooner teaches a respective system wherein cells placed on a cell holding element 33 are deformed by the actuation of movable plates 31a/31b (Fig. 4a), wherein this arrangement poses less risk of damage to cells ([0006-0007]).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Austin/Hallow such that cell deformation is caused by the actuation of one or more movable plates, such as suggested by Tooner, so as to avoid damaging cells while deforming them; and would have a reasonable expectation of success therein.
Claims 14 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Austin in view of Hallow, as applied to Claims 2 and 7-8 above, and in further view of Chen et al. (Chen J, Hessler JA, Putchakayala K, Panama BK, Khan DP, Hong S, Mullen DG, Dimaggio SC, Som A, Tew GN, Lopatin AN, Baker JR, Holl MM, Orr BG. Cationic nanoparticles induce nanoscale disruption in living cell plasma membranes. J Phys Chem B. 2009 Aug 13;113(32):11179-85.), referred to hereinafter as “Chen”.
Regarding Claim 14, the prior art meets the limitations of Claim 2 as discussed above. Further, Austin does not specifically teach the microfluidic system discussed above wherein the one or more constrictions are in the form of bulking materials, as in Claim 14.
However, Chen teaches the induction of cell membrane nanoscale disruptions using polymeric cation nanoparticles (Abstract), wherein this arrangement provides for a non-cytotoxic, solution-phase method for disrupting cell membranes, thereby reducing the complexity of the apparatus for handling said cells, and providing a tunable method for achieving the desired degree of membrane disruption (Introduction).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Austin such that cell deformation is caused by bulking materials, such as suggested by Austin, so as to reduce the complexity of the apparatus for handling said cells, and provide a tunable method for achieving the desired degree of membrane disruption; and would have a reasonable expectation of success therein.
Regarding Claim 17, the prior art meets the limitations of Claim 14 as discussed above. Further, Austin does not specifically teach the microfluidic system discussed above wherein the bulking material materials comprise is-a microparticle or a nanoparticle, as in Claim 17.
However, Chen teaches the induction of cell membrane nanoscale disruptions using polymeric cation nanoparticles (Abstract), wherein this arrangement provides for a non-cytotoxic, solution-phase method for disrupting cell membranes, thereby reducing the complexity of the apparatus for handling said cells, and providing a tunable method for achieving the desired degree of membrane disruption (Introduction).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Austin such that cell deformation is caused by bulking materials, wherein said bulking materials comprise microparticles, such as suggested by Austin, so as to reduce the complexity of the apparatus for handling said cells, provide a tunable method for achieving the desired degree of membrane disruption, and provide a sufficient particle size for inducing said disruption; and would have a reasonable expectation of success therein.
Regarding Claim 18, the prior art meets the limitations of Claim 17 as discussed above. Further, Austin does not specifically teach the microfluidic system discussed above wherein the bulking materials are polymer-based, , as in Claim 18.
However, Chen teaches the induction of cell membrane nanoscale disruptions using polymeric cation nanoparticles (Abstract), wherein this arrangement provides for a non-cytotoxic, solution-phase method for disrupting cell membranes, thereby reducing the complexity of the apparatus for handling said cells, and providing a tunable method for achieving the desired degree of membrane disruption (Introduction).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Austin such that cell deformation is caused by bulking materials, wherein said bulking materials comprise polymeric microparticles, such as suggested by Austin, so as to reduce the complexity of the apparatus for handling said cells, provide a tunable method for achieving the desired degree of membrane disruption, and provide a sufficient particle size and composition for inducing said disruption; and would have a reasonable expectation of success therein.
Claims 24 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Adamo, Hallow, Suresh, Clarke, and Diez-Silva, as applied to Claims 1, 19-23, 25-27, and 30-33 above, and in further view of Toner et al. (US 20060134599 A1), referred to hereinafter as “Toner”.
Regarding Claim 24, the prior art meets the limitations of Claim 20 as discussed above. Further, Adamo does not specifically teach the system discussed above wherein the outlet is connected to the outlet reservoir configured to collect cells passed through the conduit, as in Claim 24.
However, Toner teaches a respective microfluidic cell handling device comprising an outlet connecter to a reservoir to collect cells exiting the device ([0085]), wherein this arrangement provides for re-use of cells passed through the device.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Adamo such that the outlet is connected to a cell collection reservoir, such as suggested by Toner, so as to provide a structure capable of returning cells for re-use; and would have a reasonable expectation of success therein.
Regarding Claim 28, the prior art meets the limitations of Claim 1 as discussed above. Further, Adamo does not specifically teach the system discussed above wherein the outlet is connected to the outlet reservoir configured to collect cells passed through the conduit, as in Claim 28.
However, Toner teaches a respective microfluidic cell handling device comprising an outlet connecter to a reservoir to collect cells exiting the device ([0085]), wherein this arrangement provides for re-use of cells passed through the device.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Adamo such that the outlet is connected to a cell collection reservoir, such as suggested by Toner, so as to provide a structure capable of returning cells for re-use; and would have a reasonable expectation of success therein.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Butler et al. (US 2005/0207940 A1), hereinafter “Butler”, in view of Hallow, and as evidenced through Clarke. Hallow and Clarke have been discussed above.
Regarding Claim 29, Butler teaches a system comprising:
a cell pathway 20 (Fig. 2);
two or more fluid stream sources 21 configured to flow two or more fluid streams in such a manner as that the two or more fluid streams approach or impinge upon one another in the cell pathway 20 (Fig. 2 and [0038]: “In one embodiment, 1-dimensional focusing of cells (horizontally in the planar view shown) into a single file in the center of the main channel is achieved by pinching the cell input channel flow 20 with added flow of buffer from both the left 21 and right 22 sides, using a sheath flow approach as shown in FIG. 2.”),
Further regarding Claim 29, Butler does not specifically teach the system discussed above wherein the two or more fluid streams are configured to suddenly and temporarily deform the cell by applying a pressure to the cell when the cell is passed through the cell pathway, thereby causing perturbations in the membrane of the cell, wherein the perturbations in the membrane of the cell are large enough for a payload to pass through and into the cell.
However, limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function – see MPEP 2111.02(II). Herein, the fluid streams 21 of Butler are fully capable of suddenly and temporarily deforming a cell such that a payload may pass through the membrane and into the cell.
Further regarding Claim 29, Butler does not specifically teach the system discussed above further comprising:
a payload-containing solution comprising the payload to be inserted into the cell, wherein the payload-containing solution is located:
in the conduit; and/or
in an outlet reservoir configured to collect cells passed through the conduit, wherein the outlet reservoir is connected to the outlet;
wherein the payload in the payload-containing solution is dissolved and/or suspended in liquid of the payload-containing solution and is exogenous to the cell, and wherein the payload comprises: a macromolecule, a particle comprising a nanoparticle or a magnetic bead, a carbon nanotube, and/or a detectable marker, wherein the detectable marker comprises a radionuclide, a quantum dot, a gold nanoparticle, or a magnetic bead, as in Claim 29.
However, Hallow teaches a respective microfluidic method for loading cells with molecules exogenous to the cells via shear-induces membrane stress and poration (Abstract) wherein cells are suspended in a payload-containing fluid medium (see the section: “Experimental protocol of microchannel exposure”) and passed through a constriction/cone-shaped structure (Fig. 1B). Given that the cell-containing payload solution is flowed through the constricted structure, the payload-containing solution is located in the one or more cell-deforming constrictions commensurately as claimed. Further, given that cells also flow through the constrictions, the cells are located in the one or more cell-deforming constrictions commensurately as claimed. Hallow further teaches the payload as being a macromolecule (The “intracellular delivery of molecules by shear” section discusses protein insertion.). – Further note that Hallow teaches collection of processed cells in a microcentrifuge tube/reservoir (see the section “Experimental protocol of microchannel exposure”).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Butler further comprising: a payload-containing solution comprising the payload to be inserted into the cell, wherein the payload-containing solution is located: in the one or more cell-deforming constrictions; and/or in an outlet reservoir for collecting the cell, wherein the outlet reservoir is connected to an outlet connected to the one or more cell-deforming constrictions; wherein the payload in the payload-containing solution is dissolved and/or suspended in liquid of the payload-containing solution and is exogenous to the cell, and wherein the payload comprises: a macromolecule, a particle comprising a nanoparticle or a magnetic bead, a carbon nanotube, and/or a detectable marker; and the cell located in the one or more cell-deforming constrictions or in the outlet reservoir, such as suggested by Hallow, so as to provide a payload to cells deformed by the membrane-deforming streams of Butler, given the general knowledge available to one skilled in the art that sudden deformation of cells results in membrane poration as evidenced through Clarke (Abstract: “Loading is achieved by the production of transient, survivable plasma membrane disruptions as cells are passed back and forth through a standard syringe needle or similar narrow orifice.”) and that one skilled in the art would readily recognize that perturbation by a fluid stream would result in the deformation of the cell given the applied physical force, and would have a reasonable expectation of success therein.
Response to Arguments
Rejections under 35 USC 103:
Applicant’s arguments are on the grounds that allegedly none of the previously applied prior art teaches the detectable marker as being a fluorescent labeled molecule, a fluorescent dye, a radionucleotide, a quantum dot, a gold nanoparticle, or a magnetic bead as required by the amended Claim 1.
Applicant’s arguments are not persuasive because the prior art reference of Abassi, newly cited herein as necessitated by Applicant’s amendments, accounts for the payload being a macromolecule, recited in Claim 1 as an alternative to the detectable marker. Therein, one skilled in the art would find it obvious to utilize the macromolecules of Abassi in the system of Adamo so as to permit electrical impedance measurements on a broader scope of compounds as both Adamo and Abassi teach poration of the cell membrane and the resulting changes to the cell as being measured by electrodes.
Applicant further argues that there would allegedly be no motivation for one of ordinary skill in the art to provide the payload-containing solution to the device of Adamo as the device of Adamo does not discuss payload delivery into cells, further alleging that such modification changes the principle of operation of Adamo.
Applicant’s arguments are not persuasive because the proposed modification is a predictable use of known cell-perturbation techniques. The primary reference of Adamo teaches deforming the cell membrane and measuring resulting cell stress, wherein a skilled artisan would have recognized that mechanically stressing membranes is known to increase permeability and introducing materials into cells during such perturbation is a well-known and predictable objective in the field. Once the membrane is intentionally stressed or permeabilized, introducing a surrounding solution containing a payload represents no more than using the known consequence of membrane perturbation for the additional known purpose of intracellular delivery – see MPEP 2143: obviousness may be shown where a claimed invention merely applies a known technique to a known device. Additionally, no change to the core structure or principle of operation is required. Adding a payload-containing solution to Adamo merely changes the environment in which the known process occurs. The cell is already exposed to fluid media during measurement; substituting or supplementing said fluid media with a solution containing a payload would have been an obvious design choice.
Applicant further argues that there would not have been a reasonable expectation of success in Adamo, citing that Hallow warns against passing cells through narrow constrictions to avoid clogging, and additionally alleging that poration in response to cell deformation would not have been a principle in the art well within the ordinary skill of the art at the time the claimed invention was made.
Applicant’s arguments citing clogging are not persuasive because Adamo is specifically optimized to avoid clogging ([0032-0033]) and clearly operates without clogging as a debilitating issue (see Figs. 4A-D showing a cell passing through the constriction without clogging). A clog forming each time a cell is passed through the constriction would render the device inoperable.
Applicant’s arguments alleging poration in response to cell deformation would not have been a principle in the art well within the ordinary skill of the art at the time the claimed invention was made are not persuasive because extensive scientific literature prior to Applicant’s filing demonstrates that mechanical deformation of cells can directly cause plasma membrane failure or transient permeabilization. For example, Vlahkis et al. (Vlahakis NE, Schroeder MA, Pagano RE, Hubmayr RD. Role of deformation-induced lipid trafficking in the prevention of plasma membrane stress failure. Am J Respir Crit Care Med. 2002 Nov 1;166(9):1282-9.) experimentally studied deformation-induced plasma membrane stress failure and showed that mechanical strain applied to cells results in membrane wounding and loss of membrane integrity as a function of the deformation magnitude and rate. Vhlakis further discusses this concept being previously known in the field and alludes to the scientific framework of additional prior literature thereto. Accordingly, the concept that mechanical stress can produce transient membrane permeability was part of the established scientific understanding in the field and thus would have been a principle in the art well within the ordinary skill of the art at the time the claimed invention was made.
Thus, Examiner sets forth the rejection of Claims 1, 19-23, 25-27 as unpatentable under 35 USC 103 over Adamo in view of Suresh and Abassi, as necessitated by Applicant’s amendments.
Applicant further alleges that, similarly as above, Austin does not disclose the claimed types of payloads required by amended Claim 2, that one skilled in the art would not be motivated to provide Austin with cellular payloads, and that there would be no reasonable expectation of success in providing Austin with a payload solution.
Applicant’s arguments are not persuasive because he proposed modification of Austin using Hallow is a predictable use of known cell-perturbation techniques and provides for the insertion of proteins (see the “intracellular delivery of molecules by shear” section of Hallow), accounting for the payload being a macromolecule, recited in Claim 2 as an alternative to the detectable marker. The primary reference of Austin teaches deforming the cell membrane, wherein a skilled artisan would have recognized that mechanically stressing membranes is known to increase permeability and introducing materials into cells during such perturbation is a well-known and predictable objective in the field. Once the membrane is intentionally stressed or permeabilized, introducing a surrounding solution containing a payload represents no more than using the known consequence of membrane perturbation for the additional known purpose of intracellular delivery – see MPEP 2143: obviousness may be shown where a claimed invention merely applies a known technique to a known device. Additionally, no change to the core structure or principle of operation is required. Adding a payload-containing solution to Austin merely changes the environment in which the known process occurs. The cell is already exposed to fluid media during measurement; substituting or supplementing said fluid media with a solution containing a payload would have been an obvious design choice. Further, as asserted by the prior office action, there would be a reasonable expectation of success in Austin considering that Austin is drawn to deforming cell membranes as it relates to the chemical environment of the cell, and such deformation resulting in permeabilization was a known principle of the art at the time of filing (see further the response to arguments above regarding such membrane permeabilization response being well within the ordinary skill of the art at the time the claimed invention was made). Applicant has not provided any force of logic or evidence to substantiate their claim that there would not be a reasonable expectation of success. Further, Applicant’s assertion that chemical environment in Austin is irrelevant to Hallow is not persuasive as Hallow is merely used for providing a different chemical environment than that of Austin.
Thus, Examiner maintains the rejection of Claims 2 and 7-8 under 35 USC 103 as unpatentable over Austin in view of Hallow.
Applicant further alleges that, similarly as above, Butler does not disclose the claimed types of payloads required by amended Claim 29, that one skilled in the art would not be motivated to provide Butler with cellular payloads, that there would be no reasonable expectation of success in providing Butler with a payload solution, and that Butler does not provide membrane perturbation with its cell-sorting streams.
Applicant’s arguments are not persuasive because the proposed modification of Butler using Hallow is a predictable use of known cell-perturbation techniques and provides for the insertion of proteins (see the “intracellular delivery of molecules by shear” section of Hallow), accounting for the payload being a macromolecule, recited in Claim 2 as an alternative to the detectable marker. The primary reference of Butler teaches deforming the cell membrane through two opposing fluid streams (Fig. 2 and [0037]: Butler teaches “pinching” a flow from the flow channel 20 using the opposing auxiliary channels 21, such “pinching” necessarily resulting in deformation of the cell given the applied force (which causes the cells to line up single file as taught in para. [0056]), thereby being analogous to the shear-induced perturbation of Hallow. When a fluid stream is "pinched" (a contraction), the fluid velocity increases, and the available space for suspended cells decreases. Cells passing through the pinched flow are compressed by the surrounding fluid.), wherein a skilled artisan would have recognized that mechanically stressing membranes is known to increase permeability and introducing materials into cells during such perturbation is a well-known and predictable objective in the field (see the above response to arguments). Once the membrane is intentionally stressed or permeabilized, introducing a surrounding solution containing a payload represents no more than using the known consequence of membrane perturbation for the additional known purpose of intracellular delivery – see MPEP 2143: obviousness may be shown where a claimed invention merely applies a known technique to a known device. Additionally, no change to the core structure or principle of operation is required. Adding a payload-containing solution to Butler merely changes the environment in which the known process occurs. The cell is already exposed to fluid media during measurement; substituting or supplementing said fluid media with a solution containing a payload would have been an obvious design choice. Based on the discussion above, there would be a reasonable expectation of success in Butler considering that Butler is drawn to deforming cell membranes via the opposing fluid sorting streams and pinched flow caused therethrough.
Thus, Examiner maintains the rejection of Claim 29 under 35 USC 103 as unpatentable over Butler in view of Hallow.
Dependent Claims
Applicant further argues that Claims 7-8, 11, 14, and 17-28, and 30-33 depending from the independent Claims 1, 2, and 29 are patentable through their dependence on a patentable claim alleged as overcoming the prior art. Applicant alleges that the additional modifying references fail to cure the alleged deficiencies of Adamo, Austin, and Butler. However, as discussed above, none of the alleged deficiencies exist within the prior art of Adamo, Austin, and Butler which were not previously appropriately cured by obvious modification with a modifying reference or new reference applied herein as necessitated by Applicant’s amendments. As such, Claims 7-8, 11, 14, and 17-28, and 30-33 depending from independent Claims 1, 2, and 29 are not patentable merely by virtue of their dependency.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/B.J.K./Examiner, Art Unit 1798
/NEIL N TURK/Primary Examiner, Art Unit 1798