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 .
Applicant’s response filed on 04/14/2026 is acknowledged and has been entered into the application file.
Election/Restrictions
Claims 1-3, 5, 10-11, 14-16, 23-26, 29, and 33-38 are pending in the instant application. Applicants have
previously elected Group I, drawn to an apparatus adapted for passaging of cultured cells, comprising: a mesh; and
a housing. Claims 14-16, 23-26, and 29 remain withdrawn from further consideration by the examiner, 37 CFR
1.142(b), as being drawn to a non-elected invention. Therefore, claims 1-3, 5, 10-11, and 33-38 are under examination in the instant application.
Claim Interpretation
Claims 1 and 5 are understood to be directed to an apparatus comprising a mesh and a housing. This
apparatus is capable of passaging cultured cells. The recitation “adapted for passaging of cultured cells” is an
intended use that does not limit the structure of the claimed apparatus. Therefore, claims are being interpreted as
being drawn to any device the comprises a mesh and housing and is capable of passaging cells.
Status of Prior Rejections/Response to Arguments
RE: Rejection of claim(s) 1-3, 5, 10-11, 13, and 33 under 35 U.S.C. 103 as being unpatentable over
Jovanovich (WO2019178164A1, filed on 03/12/2019), in view of Tanaka et al. (US Patent No. 9,236, 212 B2,
filed on 05/15/2012, and issued on 01/12/2016):
Applicants have traversed the rejection asserting that the cited combination of Jovanovich and Tanaka et al. fails to disclose or suggest that "a tensile strength of the wires is 100 kilo Pascals (kPa) to 1 giga Pascal (GPa)," as recited in amended claim 1 because in Tanaka et al., tungsten wires are used for construction of cathode heaters and the wires according to amended claim 1 is clearly distinguishable from the tungsten wire disclosed in Tanaka et al. because Tanaka et al. clearly discloses that the tungsten wire is for a completely different purpose, i.e., used as a component for cathode heaters, vibration service lamps, and so forth, which are used under conditions of high temperatures or exposed to high temperatures.
In response, this is not persuasive because although Tanaka et al. discloses that the tungsten wire is for a completely different purpose, Tanaka et al. was only used to provide motivation to use the tungsten or tungsten alloy in the mesh of Jovanovich because of their high strength properties (tensile strength). Tanaka et al. actually discloses that tungsten is widely used in many areas due to its high tensile strength and hardness and workability (see Tanaka et al. teachings on (column 1, lines 33-37 and column 5, lines 1-6). Additionally, Tanaka et al. also provides motivation to optimize the tensile strength of the tungsten alloy used in the mesh to improve processing ability (workability) by heightening ductility. In this case, to cut the cell aggregates as they pass through the tungsten wires.
Applicants further argue that the technical field of Tanaka et al. is completely different from that of the claimed invention, i.e., an apparatus for mesh chopping of neural progenitor cell aggregates.
This is not persuasive because as set forth above under Claim Interpretation, the recitation “adapted for passaging of cultured cells” is an intended use that does not limit the structure of the claimed apparatus.
Applicants further argue that in FIG. 9 of Tanaka et al., the tungsten wire 21 is heating element/filament having a wire diameter of approximately 30 to 50 pm is wound in a spiral as a heating element, with the perimeter thereof coated with an insulation of ceramics film 22. In contrast to the wires made of tungsten or tungsten alloy and having a tensile strength of 100 kilo Pascals (kPa) to 1 giga Pascal (GPa) in the claimed apparatus according to amended claim 1 adapted for passaging of cultured cell.
In response, this is not persuasive because Figure 9 of Tanaka et al. was only referred to for the teaching of “circular diameter” and not to the specific tensile strength as currently claimed.
Applicant's arguments filed 04/14/2026 have been fully considered but they are not persuasive. The rejection is therefore maintained.
New/maintained Grounds of Rejection
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.
Claim(s) 1-3, 5, 10-11, and 33-38 are rejected under 35 U.S.C. 103 as being unpatentable over
Jovanovich (WO2019178164A1, filed on 03/12/2019), in view of Tanaka et al. (US Patent No. 9,236, 212 B2,
filed on 05/15/2012, and issued on 01/12/2016).
Regarding claim 1, Jovanovich teaches an apparatus for processing tissue and other samples encoding
cellular spatial position information (Title). Jovanovich specifically teaches in claim 1 a system comprising a
perforated specimen holder configured to support a frozen tissue specimen, wherein the specimen holder comprises
a plurality of perforations having a size sufficient to permit the passage of cells or nuclei. Jovanovich teaches in
claim 9 that the specimen holder comprises a mesh, e.g., a stainless-steel mesh, polymer mesh, metal mesh, strainer.
Additionally, Figures 3 and 5 of Jovanovich show perforated substrate 250, which can be mesh or strainer mesh
comprising metal, stainless steel.
However, Jovanovich fails to teach that the mesh comprises wires having a circular diameter and made of
tungsten or tungsten alloy wherein a tensile strength of the wires is 100 kilo Pascals (kPa) to 1 giga Pascal (GPa).
However, Tanaka et al. complements Jovanovich by teaching tungsten wires are widely used because of
their high strength properties (tensile strength) and hardness (anti-friction, wear-resistance) and improving
processing ability (workability) by heightening ductility (column 1, lines 33-37 and column 5, lines 1-6). Figure 9 of
Tanaka et al. shows that the wires are circular.
Therefore, it would have been prima facie obvious to one of the ordinary skills in the art before the
effective filing date of the claimed invention to have modified the mesh of Jovanovich and made it out of circular
tungsten wires with a reasonable expectation of success. One would have been motivated to have done so since
tungsten alloy has physical and mechanical properties including ductility and tensile strength that makes it optimal
to be used in making the mesh as taught by Tanaka et al.
Additionally, it would have been prima facie obvious to one of the ordinary skills in the art before the effective filing date of the claimed invention to have modified the tensile strength of the tungsten wire to be between 100 kilo Pascals (kPa) and 1 giga Pascal (GPa) with a reasonable expectation of success. One would have been motivated to have optimized the tensile strength of the tungsten wire in the mesh of Jovanovich to improve the processing ability (workability) by heightening ductility and in this case, to cut the cell aggregates as they pass through the tungsten wires since Tanaka et al. establishes that the tensile strength of the tungsten wire would have required only routine experimentation.
Regarding claim 2: Following discussion of claim 1 above, Figures 3 and 5 of Jovanovich show perforated
substrate 250, which can be mesh or strainer mesh comprising metal, stainless steel, which appears to be a square
grid.
Regarding claims 3 and 37: Following discussion of claim 2 above, Jovanovich further teaches in claims 1 and 10 that the perforations have a diameter of about 20 pm to about 100 pm, e.g., about 20 pm to about 50 pm or about 50 pm to about 100 pm, e.g. about 30 microns, such that the size is sufficient to permit the passage of single cells and moving the cell aggregates through a mesh. Although Jovanovich does not specifically teach that the mesh
comprises square grids of about 200 microns, it would have been prima facie obvious to one of the ordinary skills in
the art before the effective filing date of the claimed invention to have modified the perforations diameter of the
mesh of Jovanovich such that the mesh comprises square grids of about 200 microns with a reasonable expectation
of success. One would have been motivated to have optimized the diameter of the perforations in the mesh to permit
the passage of single cells since Jovanovich establishes that the perforations size would have required only routine
experimentation.
Regarding claims 5 and 33, Jovanovich teaches an apparatus for processing tissue and other samples
encoding cellular spatial position information (Title). Jovanovich specifically teaches in claim 1 a system
comprising a perforated specimen holder configured to support a frozen tissue specimen, wherein the specimen
holder comprises a plurality of perforations having a size sufficient to permit the passage of cells or nuclei. Jovanovich teaches in claim 9 that the specimen holder comprises a mesh, e.g., a stainless-steel mesh, polymer
mesh, metal mesh, strainer. Additionally, Figures 3 and 5 of Jovanovich show perforated substrate 250, which can
be mesh or strainer mesh comprising metal, stainless steel. Figures 3 and 5 of Jovanovich show perforated substrate 250, which can be mesh or strainer mesh comprising metal, which appears to be a square grid and the figures show the spacing between the metal wires that form the grid shape of the perforated substrate, such that the large cell aggregates are cut as they pass through the mesh. Jovanovich teaches that a fluid flows from the upper array of conduits directly into the lower array of conduits (paragraph 0085). This reads on a fluid flow from a first end of the housing to a second end of the housing moves through the mesh.
However, Jovanovich fails to teach that the mesh comprises wires having a circular diameter and are at
least 5μm or 5-10μm in diameter.
However, Tanaka et al. complements Jovanovich by teaching that tungsten wires can be made thin and
have a fine diameter of 20μm such that they are processed by performing heat treatment and swaging processing as
illustrated in FIG. 2 (claim6 and column 3, lines 10-14). Figure 9 of Tanaka et al. shows that the tungsten wires are
circular. Tanaka et al. further teaches that tungsten alloy is specifically used to make thin wires because of their
high strength properties (tensile strength) and hardness (anti-friction, wear-resistance) and improving processing
ability (workability) by heightening ductility (column 1, lines 33-37 and column 5, lines 1-6).
Therefore, it would have been prima facie obvious to one of the ordinary skills in the art before the
effective filing date of the claimed invention to have modified the mesh of Jovanovich and made it out of circular
thin tungsten wires with a reasonable expectation of success. One would have been motivated to have done so since
tungsten alloy has physical and mechanical properties including ductility and excellent durability when used in
conditions of high temperature that makes it optimal to be made thin and strong enough to be used in making the
mesh as taught by Tanaka et al. Also, although Tanaka et al. does not specifically teach that the wires are of at least
5μm, it would have been prima facie obvious to one of the ordinary skills in the art before the effective filing date of
the claimed invention to have modified the mesh of Jovanovich such that the mesh comprises wires of at least 5μm
with a reasonable expectation of success. One would have been motivated to have optimized the diameter of the
wires to produce wires thin and durable enough for chopping cell aggregates and retain the tensile strength to
prevent deformation of the mesh since Tanaka et al. establishes that the tungsten wire thickness would have required
only routine experimentation.
Regarding claims 10-11: as set forth above under Claim Interpretation, the apparatus in claim 1 is not
structurally limited to an apparatus to be used only for passaging the cultured cells, but it is drawn to any apparatus
that is capable of passaging any cultured cells, so the cells are also not limited to be neurospheres or neurospheres
are induced pluripotent stem cell derived neurospheres as recited in claims 10-11, respectively.
Regarding claim 34: Following discussion of claim 1, Jovanovich teaches that the housing comprises a first reservoir in fluidic contact with a second reservoir, the mesh is disposed in a fluidic pathway connecting the first and second reservoirs such that a fluid flowing from the first reservoir moves through the mesh (paragraphs 00133, 0159).
Regarding claim 35: Following discussion of claim 1, as set forth above under Claim Interpretation, the apparatus in claim 1 is not structurally limited to an apparatus to be used only for passaging the cultured cells, but it is drawn to any apparatus that is capable of passaging any cultured cells, so the cells are also not limited to any size such as cell aggregates sized about 50-350 pm or about 200 pm in diameter.
Regarding claim 36: Following discussion of claim 35, Jovanovich fails to teach that the tensile strength of the wires is about 400 mega Pascals (MPa) to about 1 GPa at room temperature.
However, Tanaka et al. complements Jovanovich by teaching tungsten wires are widely used because of
their high strength properties (tensile strength) and hardness (anti-friction, wear-resistance) and improving
processing ability (workability) by heightening ductility (column 1, lines 33-37 and column 5, lines 1-6).
Therefore, it would have been prima facie obvious to one of the ordinary skills in the art before the effective filing date of the claimed invention to have modified the tensile strength of the tungsten wire to be between 400 mega Pascals (MPa) to about 1 GPa with a reasonable expectation of success. One would have been motivated to have optimized the tensile strength of the tungsten wire in the mesh of Jovanovich to improve the processing ability (workability) by heightening ductility and in this case, to cut the cell aggregates as they pass through the tungsten wires since Tanaka et al. establishes that the tensile strength of the tungsten wire would have required only routine experimentation.
Regarding claim 38: Following discussion of claim 5, Jovanovich teaches in claim 19 that the multifunctional head is configured to deliver pressure and/or vacuum to the conduits. This reads on the housing is connected to a vacuum such that the cultured cells are moved through the mesh by means of a vacuum-driven flow.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANAN ISAM ABUZEINEH whose telephone number is (571)272-9596. The examiner can normally be reached Mon- Fri 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CHRISTOPHER BABIC can be reached at (571)272-8507. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Hanan Isam Abuzeineh
/H.I.A./Examiner, Art Unit 1633 /CHRISTOPHER M BABIC/Supervisory Patent Examiner, Art Unit 1633
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