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 .
Status of Claims
Claims 1, 3-6, and 8-12 were pending. Claims 1, 4, 8, 10 and 11 are amended. Claim 3 is cancelled.
Claims 1, 4-6, and 8-12 are examined herein.
Withdrawn Rejections
The rejections of claims 1, 4-6, and 8-12 under 35 U.S.C. § 112(b) is withdrawn in view of claims 1, 8, and 11 amendments.
The rejection of claims 1, 4-6, and 8-12 under 35 U.S.C. 103 is withdrawn in view of claim 1 amendments. However, the amendments necessitated a new prior art search and new grounds of rejection have been found in view of Lee et al. (IDS; Lab Chip. 2018 Dec 18;19(1):111-119). Therefore, claims 1, 4-6, and 8-12 are rejected under 35 U.S.C. 103 as unpatentable over Appleyard in view of Gerion and Lee.
The rejections of claim 3 are withdrawn in view of claim cancellation.
The rejection of claim 10 under 35 U.S.C. 112(d) is withdrawn in view of claim amendments.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claims 4 recites “a functional group configured to react with an unreacted carbon-carbon double bond”, which are not modified by sufficient structure, material, or acts for performing the claimed function.
The specification fails to provide details on how the functional group is configured to react with an unreacted carbon-carbon double bond. This limitation is interpreted as a functional group capable to react with an unreacted carbon-carbon double bond.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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, 4-6, 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Appleyard et al. (IDS; Nat Protoc. 2011 Oct 20; 6(11):1761-74) in view of Gerion et al. (PGPub 2008/0213814) and Lee et al. (IDS; Lab Chip. 2018 Dec 18;19(1):111-119).
Regarding claim 1, 4 and 6, Appleyard teaches assays using bar-coded hydrogel microparticles for protein detection (Title) comprising:
reacting a sample containing target analytes with hydrogel particles loaded with probes specifically binding to the target analytes. Specifically, Appleyard teaches mixing particles and unknown sample (pg. 1769, step 34). The hydrogel particles are synthesized using PEG precursors and “[b]iological entities can be mixed directly into the PEG precursor solutions, allowing 3D covalent incorporation into the resulting network” (pg. 1762, col. 2, par. 2), meeting the hydrogel particles loaded with probes (biological entities);
binding a label to the target analytes bound to the probes. Specifically, Appleyard teaches “(ii) a 3–4-h assay in which protein targets are captured and labeled within particles using an antibody sandwich technique” (Abstract). The reference teaches formation of a sandwich between a capture antibody bound to the particles, a target, a reporter antibody, and a fluorescent label - “assay involves assembling an antibody sandwich around the target protein by exposing particles to the sample, adding a biotinylated reporter antibody, and labeling the bound reporters with a streptavidin-phycoerythrin (SAPE) complex (Fig. 2 and pg. 1764, col. 2, par. 4). Phycoerythrin is a fluorescent label.
The reference teaches using cross-linking agent (PEG DA) in the synthesis of the hydrogel particles (pg. 1763, col. 2, par. 3). Appleyard does not specifically teach three-dimensionally crosslinked polymer network, but since the synthesis of the hydrogel particles produces “porous, 3D gel matrix” (pg. 1762, col. 2, par. 2), one would expect the polymer network to have three-dimensionally crosslinked polymer chains.
Appleyard does not specifically teach an enzyme used to produce an insoluble colorimetric material, which colorimetrically labels the hydrogel particles; and the probes are immobilized within the polymer network by covalent attachment to unreacted carbon-carbon double bonds remaining in the polymer network after synthesis of the hydrogel particles.
Regarding claim 1, Gerion teaches a surface plasmon resonance detection method in sandwich immunoassays (Abstract, Fig. 1-2). Gerion also teaches that sandwich assays can use enzymes for analyte detection ([0053]) among many other methods ([0052]), specifically, enzymes “that convert a soluble compound into an insoluble compound” ([0054]). The colored, insoluble compound colorimetrically labels the hydrogel particles.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the sandwich assay method of Appleyard by employing colorimetric detection as taught by Gerion in order to provide detection of the target analytes, as an obvious matter of simple substitution of one known element (colorimetric detection) for another (fluorescent detection) to obtain predictable results.
One having ordinary skill in the art would have had a reasonable expectation of success in combining the prior art references because both Appleyard and Gerion teach sandwich format immunoassays, which are known in the art for accepting wide variety of different labels (Gerion [0052]). The substitution of the colorimetric detection for fluorescent detection is routine and the results would have been predictable.
Appleyard and Gerion do not specifically teach a three-dimensionally crosslinked polymer network that restricts diffusion of the insoluble colorimetric material, and the insoluble colorimetric material is generated and immobilized inside the hydrogel particles such that outward diffusion of the insoluble colorimetric material is suppressed by the polymer network, thereby causing accumulation of the insoluble colorimetric material inside the hydrogel particles. However, the references teach all necessary components of the method: hydrogel particles with capture antibodies immobilized to the particles throughout the particles volume (Appleyard, Fig. 2), formation of the sandwich between the capture antibodies, the targets (Fig. 2a), and the reporter antibodies (Fig. 2b). The reporter antibodies can be conjugated to reporter enzymes, such as, alkaline phosphatase and horseradish peroxidase (Gerion, [0054]), which can convert their substrates into an insoluble colorimetric material. When all the assay elements are present, the accumulation of the insoluble colorimetric material necessarily follows from the method and its mechanism.
Appleyard and Gerion do not specifically teach the probes are immobilized within the polymer network by covalent attachment to unreacted carbon-carbon double bonds remaining in the polymer network after synthesis of the hydrogel particles.
Regarding claim 1, Lee teaches “Multiplexed immunoassay using post-synthesis functionalized hydrogel microparticles” (Title). Lee also teaches covalent attachment to unreacted carbon-carbon double bonds of a hydrogel.
Specifically, Lee teaches that microparticle functionalization involves copolymerization of antibodies with the gel during particle synthesis. However, antibodies are susceptible to aggregation during gel polymerization. “In this work, we present a multiplex immunoassay platform that uses encoded hydrogel microparticles that are functionalized after particle synthesis by conjugating antibodies with remnant active groups readily available in the hydrogels” (Abstract). Antibodies of Lee are the probes of instant invention. The remnant active groups readily available in the hydrogels of Lee are unreacted carbon-carbon double bonds of instant invention introduced into the hydrogel by cross-linker PEGDA700 (pg. 113, col. 1, par. 2). The antibodies are immobilized using heterobifunctional PEG linker - thiol-PEG2000-NHS (id.), which links unreacted carbon-carbon double bonds with the thiol moiety and the antibodies with the NHS moiety.
This teaching meets the limitation of claim 4 reciting the probes loaded after synthesis of the hydrogel particles comprises a capture portion specifically binding to the corresponding target analyte and a functional group configured to react with an unreacted carbon-carbon double bond remaining in the polymer network after synthesis of the hydrogel particles, such that the probe is covalently attached to the polymer network. The thiol functional group configured to react with an unreacted carbon-carbon double bond meets the limitation of claim 6 reciting the thiol group.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Appleyard and Gerion by employing post-synthesis functionalized hydrogel microparticles as taught by Lee in order to immobilize capture antibodies on the hydrogel particles. One having ordinary skill in the art would have been motivated to use Lee’s approach to hydrogel functionalization, because it prevents aggregation of antibodies during gel polymerization (Lee, Abstract). This combination would have been desirable to those of ordinary skill in the art for the reasons mentioned above.
One having ordinary skill in the art would have had a reasonable expectation of success in combining the prior art references because Lee demonstrated this approach in immunoassays using hydrogel particles and Appleyard teaches immunoassays using hydrogel microparticles for protein detection.
Regarding claim 3, Appleyard teaches “[b]iological entities can be mixed directly into the PEG precursor solutions, allowing 3D covalent incorporation into the resulting network” (pg. 1762, col. 2, par. 2), meeting the limitation of claim 3 reciting the probes are loaded during
synthesis of the hydrogel particles. The biological entities of Appleyard are the probes specifically binding to the target analytes of the instant invention.
Regarding claim 5, Appleyard teaches the probes are antibodies. Specifically, Appleyard teaches capture antibodies (pg. 1762, col. 2, par. 2 and Fig. 2a).
Regarding claim 8, Appleyard in view of Gerion teaches a reporter antibody (Appleyard, Fig. 2a) as a secondary binding material specifically binding to the target analytes and adding the enzyme for binding to the secondary binding materials. The reporter antibody of Appleyard is bound to a fluorescent label and Gerion teaches that alkaline phosphatase and horseradish peroxidase can be used instead ([0054]).
Regarding claim 9, Appleyard teaches the secondary binding materials are antibodies. Specifically, Appleyard teaches reporter antibody that binds to separate epitopes of the target (Fig. 2b).
Regarding claim 10, Appleyard in view of Gerion teaches the enzyme is alkaline phosphatase or horseradish peroxidase ([0054]).
Regarding claim 11, Appleyard in view of Gerion teaches the substrate is 3,3',5,5'-tetramethylbenzidine (TMB), 4-chloronaphthol, or 3,3'-diaminobenzidine (DAB) ([0055]).
Regarding claim 12, Appleyard teaches the target analyte is protein, specifically, IL-2 (pg. 1766, col. 1, par. 3, “Reagents”).
Response to Arguments
Applicant's arguments filed June 18, 2026 have been fully considered.
Applicant argues that “claim 1 has been amended to clarify that the probes are immobilized within the polymer network by covalent attachment to unreacted carbon-carbon double bonds remaining in the polymer network after synthesis of the hydrogel particles” (pg. 6, par. 3) and the cited references fail to teach this mechanism of covalent attachment (par. 4-5). The argument is persuasive. However, the amendments necessitated a new prior art search and new grounds of rejection have been found in view of Lee et al. (IDS; Lab Chip. 2018 Dec 18;19(1):111-119). Therefore, claims 1, 4-6, and 8-12 are rejected under 35 U.S.C. 103 as unpatentable over Appleyard in view of Gerion and Lee. Briefly, Lee teaches “Multiplexed immunoassay using post-synthesis functionalized hydrogel microparticles” (Title) addressing the amendments of claims 1 and 4.
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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Volkov whose telephone number is (571) 272-1899. The examiner can normally be reached M-F 9:00AM-5:00PM (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bao-Thuy Nguyen can be reached on (571) 272-0824. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER ALEXANDROVIC VOLKOV/Examiner, Art Unit 1677
/REBECCA M GIERE/Primary Examiner, Art Unit 1677
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