DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/3/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 4-8, 10-14, 21-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 sets forth a method for labelling nucleic acids in a cell in the preamble, but the body of the claim does not set forth any step that relates to actually labelling the nucleic acids. The claim requires contacting the cells with a first label “for labelling nucleic acids” which is a statement of intended use for the label, but no claim step requires actually labelling nucleic acids. The label must be introduced into the first cell, and “the second cell is not labelled by the first label” and so it is unclear if the method simply requires labelling a cell or if the method is intended to require that the label interact with nucleic acids within the cell, and if so how or when. If it is the latter, the claim should be amended to clarify this step. All additionally rejected claims depend from 1 and share the same issue.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4, 5, 12, and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jain et al. (IEEE TRANSACTIONS ON BIOMEDICAL ENGINEERING, VOL. 55, NO. 2, FEBRUARY 2008; cited in IDS).
Jain teaches providing a multielectrode array having a cell culture disposed thereon, wherein the cell culture comprises a plurality of cells that include a first cell and a second cell, see 3c and Figure 4a.
Jain teaches contacting the plurality of cells with a first label for labeling nucleic acids such that the cells are exposed to the label. In figure 3c the label is propidium iodide, and in Figure 4A the label is alexa-Flour-488. Note, the claim never positively sets forth that nucleic acid internal to or endogenous to the cell are labeled, thus, the alexa-Flour-488 meets the limitation “first label for labelling nucleic acids.”
The reference teaches increasing a permeability of the first cell of the plurality of cells to introduce the first label into the first cell by applying an electric field to the first cell via a first electrode of the multielectrode array that is located under the first cell, wherein the second cell is located a sufficient distance from the first electrode such that the second cell is not labeled. See discussion of “site specific transfection” p. 830, Figure 4 description, and p. 831, section d.
Regarding claim 4, the labeled oligo siRNA is a “barcoded nucleic acid capturing probe” as this is intended use and does not impart any particular structure on the probe. Note here also that the claim does not require any further activity after the introduction of the label to the cell.
Regarding claim 5, the reference teaches acquiring data about whether or not the cell membrane was permeabilized and whether or not the cells survived, which is electrophysiological data.
Regarding claim 12, the label is provided in fluid contacted with the cell.
Regarding claim 23, the reference teaches applying an electrical field via second electrodes to introduce the label into the second cell. See Figures 3 and 4.
Claim(s) 1, 2, 4-7, 10, 12, 21, and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vassanelli et al. (New Biotechnology Volume 25, Number 1 June 2008; pages 55-67).
Vassanelli teaches providing a multielectrode array having a cell culture disposed thereon, wherein the cell culture comprises a plurality of cells that include a first cell and a second cell, see “Cell culture on a chip” p. 57.
Vassanelli teaches contacting the plurality of cells with a first label for labeling nucleic acids such that the cells are exposed to the label. See p. 58, “Single-cell electroporation and delivery of molecules”; noting delivery of fluorescein labeled oligonucleotides and fluorescent siRNA). The claim never positively sets forth that nucleic acid internal to or endogenous to the cell are labeled, thus, the fluorescent labels of the prior art meet the limitation “first label for labelling nucleic acids.”
The reference teaches increasing a permeability of the first cell of the plurality of cells to introduce the first label into the first cell by applying an electric field to the first cell via a first electrode of the multielectrode array that is located under the first cell, wherein the second cell is located a sufficient distance from the first electrode such that the second cell is not labeled. See p. 58, “Single-cell electroporation and delivery of molecules” and at least figure 6.
Regarding claim 2, Vassanelli teaches cell sized microelectrodes, so that single-cell deliver is achieved (p. 56, Col. 1 and throughout).
Regarding claim 4, the labeled oligo siRNA is a “barcoded nucleic acid capturing probe” as this is intended use and does not impart any particular structure on the probe. Note here also that the claim does not require any further activity after the introduction of the label to the cell.
Regarding claim 5, the reference teaches recordings of intracellular voltages (p. 58, section “Electrophysiology”).
Regarding claim 7, Vassanelli teaches providing a multielectrode array having a cell culture disposed thereon, wherein the cell culture comprises a plurality of cells that include a first cell and a second cell, see “Cell culture on a chip” p. 57.
Vassanelli teaches contacting the plurality of cells with a first label for labeling nucleic acids such that the cells are exposed to the label. See p. 64, 1st column noting delivery of EYFP plasmid, see also figure 10. The plasmid is considered a label “for labeling nucleic acids” because once it is in the cell, the collection of total nucleic acids from the cell would include the plasmid and “label” the nucleic acids as being from a cell that was successfully transfected.
The reference teaches increasing a permeability of the first cell of the plurality of cells to introduce the first label into the first cell by applying an electric field to the first cell via a first electrode of the multielectrode array that is located under the first cell, wherein the second cell is located a sufficient distance from the first electrode such that the second cell is not labeled. . See p. 64, 1st column noting delivery of EYFP plasmid, see also figure 10. The reference teaches that transfection was not 100% efficient, that means inherently that some cells did not receive the label.
The reference teaches subsequent to introducing the first label to the first cell, washing off an amount of the first label that is present outside the first cell and in contact with the plurality of cells; See p. 58, 2nd column which teaches after electroporation and incubation at room temperature cells were washed with PBS prior to observation.
Contacting the plurality of cells with a second label, wherein the second label differs from any previously used label; See p. 64, 1st column noting delivery of ECFP plasmid, see also figure 10.
And increasing the permeability of the cell membrane of the first cell of the plurality of cells at a second time to introduce the second label into the first cell by applying an electrical field via the first electrode See p. 64, 1st column noting delivery of ECFP plasmid, see also figure 10.
Regrading claim 10, the reference teaches applying an electrical field potential to a plurality of additional cells via additional electrodes that are part of a same column or row, thereby introducing the same label into those cells. See figure 6 where electrodes 19, 28, 37 and 45 make up a “row.”
Regarding claim 12, the label is provided in fluid contacted with the cell; see methods.
Regarding claim 21, introducing the second label was conducted 24 hours after the first label, and fluorescence was measured after delivery of the first label and then after delivery of the second label, which is a “state of the cell” using the labels.
Regarding claim 23, the reference teaches applying an electrical field via second electrodes to introduce the label into the second cell. See Figures 3 and 4.
Claim Rejections - 35 USC § 103
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.
Claim(s) 8, 11, 13, 14 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vassanelli in view of Dunne et al. (US 20170136458).
The teachings of Vassanelli as they relate to claims 1, 2, 7, and 10, from which claims 8, 11, 13-14 and 22 depend are given previously in this Office action and are fully incorporated here.
Vassanelli teaches that electroporation of single cells can be finely tuned, space resolved and time resolved (see abstract and throughout). The reference exemplifies inserting small oligonucleotides into cells, and teaches that the method will be broadly applicable across a range of molecules, including proteins and nucleic acids (p. 64, 2nd column).
Vassanelli does not teach a method wherein applying electrical fields to cell of the cell culture or tissue via electrodes of the multielectrode array is repeated for each column and each row of the array, thereby introducing into cells of the cell culture or tissue that are proximate to electrodes of the same column or row is introduced a same label and different labels are introduced to different rows or columns.
Dunne et al. teaches labelling nucleic acids in a multiwell array by introducing a row-specific barcode to each row and a column specific barcode to each column as a way to label the cell with the precise position of the cell in the addressable array (¶ 33 and 34, for example). Dunne et al. teaches the method for barcoding cells to allwo for single cell analysis (abstract). The reference teaches that the wells can contain single cells (¶0034). The reference teaches that once nucleic acids in the cells are barcoded the barcoded library can be sequenced (¶0034).
Dunne et al. further teach barcoding to identify plate or chip, reaction, or experiment date (¶0096).
It would have been prima facie obvious to one having ordinary skill in the art to have modified the methods taught by Iyer so as to have introduced column and row specific barcodes to the cells on the surfaces taught by Vassanelli et al. In addition, it would have been obvious to have introduced plate or chip identifying barcodes, to amount to a third barcode, as taught by Dunne. One would have been motivated to do so by the teachings of Dunne et al. who provide a precise way to label cells with their location on an array and prepare nucleic acids for sequencing. One would have been motivated to introduce the barcode pairs (column, row) either simultaneously or sequentially because these are the only two choices and the order of steps would not affect the outcome of labeling the cells with a precise location. This would facilitate gene expression analysis of cells treated with siRNA or plasmids or the like, which is suggested by Vassanelli when they teach that the future application of their methods include gene expression studies (p. 66, 2nd column). Therefore, based on the teachings of the prior art, the claimed invention would have been prima facie obvious before the effective filing date.
Response to Remarks
The previously set forth rejections were overcome by amendment. New rejections are set forth to address the current claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Juliet Switzer whose telephone number is (571)272-0753. The examiner can normally be reached Monday to Thursday, 8:00 AM-3:30 PM.
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Juliet Switzer
Primary Examiner
Art Unit 1682
/JULIET C SWITZER/Primary Examiner, Art Unit 1682
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