DETAILED ACTION
Response to Amendment
Applicant’s response to the office action filed on January 2, 2026 has been entered. The claims pending in this application are claims 1, 2, 8-14, 18, 20, 22-24, 26, 27, 30, 32, 34, 35, 37, and 43-45. The objections/rejections not reiterated from the previous office action are hereby withdrawn in view of applicant’s amendment filed on January 2, 2026. Claims 1, 2, 8-14, 18, 20, 22-24, 26, 27, 30, 32, 34, 35, 37, and 43-45 will be examined.
Claim Objections
Claim 1 or 44 or 45 is objected to because of the following informalities: (1) “each reactive species” in the end of the claim should be “the reactive species”; and (2) “each labeling agent” in the end of the claim should be “the labeling agent”.
Claim 18 is objected to because of the following informality: “corresponding to” should be “produced from “.
Claim 22 is objected to because of the following informality: “each labeling agent deposited in the biological sample has a corresponding optical label in the set of optical labels comprising an oligonucleotide that hybridizes to the labeling agent” should be “each of the different labeling agents deposited in the biological sample has a optical label from the set of optical labels”.
Claim 26 is objected to because of the following informalities: (1) “among the plurality of optical labels” should be deleted; and (2) “the optical signal” in line 4 should be “an optical signal”.
Claim 27 is objected to because of the following informality: “optical signals” should be “an optical signal”.
Claim 32 is objected to because of the following informality: “different labeling agents” should be “the different labeling agents”.
Claim 43 is objected to because of the following informality: “labeling agents” should be “labeling agents from the different labeling agents”.
Claim 45 is objected to because of the following informality: “each of the different catalytic agents comprises an oligonucleotide that specifically hybridizes to one of the plurality of reporter moiety moieties” in step (d) should be “each of the different catalytic agents comprises another oligonucleotide that specifically hybridizes to another of the plurality of reporter moiety moieties and the reactive species linked to the another oligonucleotide”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Scope of Enablement
Claims 1, 2, 8-14, 18, 20, 22-24, 26, 27, 30, 32, 34, 35, 37, and 43-45 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for performing the methods recited in claims 1, 2, 8-11, 32, 34, 35, and 37 when a biological sample comprising a target RNA is located on a surface of a support and performing the methods recited in claims 12-14, 18, 20, 22-24, 26, 27, 30, and 43-45 when a biological sample comprising a target RNA is located on a surface of a support and an optical signal or optical signals is/are a fluorescent or luminescent or color signal/signals, does not reasonably provide enablement for performing the methods recited in claims 1, 2, 8-11, 32, 34, 35, and 37 when a biological sample comprising a target RNA is in a solution and performing the methods recited in claims 12-14, 18, 20, 22-24, 26, 27, 30, and 43-45 when a biological sample comprising a target RNA is in a solution and an optical signal or optical signals is/are any kind of optical signal/signals. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
Factors to be considered in determining whether a disclosure meets the enablement requirement of 35 USC 112, first paragraph, have been described by the court in In re Wands, 8 USPQ2d 1400 (CA FC 1988). Wands states at page 1404,
“Factors to be considered in determining whether a disclosure would require undue experimentation have been summarized by the board in Ex parte Forman. They include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.”
The Nature of The Invention
The claims are drawn to three methods. The invention is a class of invention which the CAFC has characterized as “the unpredictable arts such as chemistry and biology.” Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1330 (Fed. Cir. 2001).
The Breadth of The Claims
Claims 1, 2, 8-14, 18, 20, 22-24, 26, 27, 30, 32, 34, 35, 37, and 43 encompass a method, comprising: (a) contacting a biological sample comprising a target RNA with a probe, wherein the probe comprises a capture moiety that specifically binds to the target RNA, and a plurality of reporter moieties; and (b) for each reporter moiety of the plurality of reporter moieties: contacting the reporter moiety with a catalytic agent comprising an oligonucleotide that specifically binds to the reporter moiety, and a reactive species linked to the oligonucleotide; and contacting the biological sample with a labeling agent that reacts with the reactive species to deposit the labeling agent or a derivative thereof in the sample in proximity to the target RNA, wherein each reporter moiety of the plurality of reporter moieties comprises a nucleic acid sequence; wherein each reactive species comprises a peroxidase; and wherein each labeling agent comprises an inactive tyramide species that reacts with the reactive species to generate an active tyramide species. Claim 44 encompasses a method, comprising: (a) contacting a biological sample comprising a target RNA with a probe, wherein the probe comprises a capture moiety that specifically binds to the target RNA, and a plurality of reporter moieties; (b) for each reporter moiety of the plurality of reporter moieties: contacting the reporter moiety with a catalytic agent comprising an oligonucleotide that specifically hybridizes to the reporter moiety, and a reactive species linked to the oligonucleotide; and contacting the biological sample with a labeling agent comprising a substrate conjugated to an optical label, wherein the substrate reacts with the reactive species to deposit the labeling agent or a derivative thereof in the biological sample in proximity to the target RNA; (c) measuring optical signals generated by optical labels of each of the labeling agents in the biological sample; and (d) determining a location of the target RNA in the biological sample based on the measured optical signals, wherein each reporter moiety of the plurality of reporter moieties comprises a nucleic acid sequence; wherein each reactive species comprises a peroxidase; and wherein each labeling agent comprises an inactive tyramide species that reacts with the reactive species to generate an active tyramide species. Claim 45 encompasses a method, comprising: (a) contacting a biological sample comprising different target RNAs with a plurality of different probes, wherein each of the plurality of different probe selectively hybridizes to a different target RNA and comprises a different combination of a plurality of reporter moieties; (b) contacting the biological sample with a catalytic agent, wherein the catalytic agent comprises an oligonucleotide that specifically hybridizes to one of the plurality of reporter moieties, and any kind of reactive species linked to the oligonucleotide; (c) contacting the biological sample with a labeling agent comprising a substrate conjugated to any kind of labeling oligonucleotide, wherein the substrate reacts with the reactive species to deposit the labeling oligonucleotide in the biological sample in proximity to the one of the plurality of reporter moieties; (d) repeating steps (b) and (c) with different catalytic agents, wherein each of the different catalytic agents comprises an oligonucleotide that specifically hybridizes to one of the plurality of reporter moieties; (e) contacting the biological sample with a plurality of optical labels each of the plurality of optical labels comprising a reporter oligonucleotide conjugated to an optical moiety, wherein each reporter oligonucleotide hybridizes to the labeling oligonucleotide; (f) measuring optical signals generated by the plurality of optical labels in the biological sample; and (g) determining a location of one or more target RNAs in the biological sample based on the measured optical signals, wherein each reporter moiety of the plurality of reporter moieties comprises a nucleic acid sequence; wherein each reactive species comprises a peroxidase; and wherein each labeling agent comprises an inactive tyramide species that reacts with the reactive species to generate an active tyramide species.
Working Examples
The specification provides no working example for performing the methods recited in claims 1, 2, 8-11, 32, 34, 35, and 37 when a biological sample comprising a target RNA is in a solution and performing the methods recited in claims 12-14, 18, 20, 22-24, 26, 27, 30, and 43-45 when a biological sample comprising a target RNA is in a solution and an optical signal or optical signals is/are any kind of optical signal/signals.
The Amount of Direction or Guidance Provided and The State of The Prior Art
The specification provides no working example for performing the methods recited in claims 1, 2, 8-11, 32, 34, 35, and 37 when a biological sample comprising a target RNA is in a solution and performing the methods recited in claims 12-14, 18, 20, 22-24, 26, 27, 30, and 43-45 when a biological sample comprising a target RNA is in a solution and an optical signal or optical signals is/are any kind of optical signal/signals. Furthermore, there is no experimental condition and/or experimental data in the specification to support the claimed invention. During the process of the prior art search, the examiner has not found any prior art which is related to perform the methods recited in claims 1, 2, 8-11, 32, 34, 35, and 37 when a biological sample comprising a target RNA is in a solution and perform the methods recited in claims 12-14, 18, 20, 22-24, 26, 27, 30, and 43-45 when a biological sample comprising a target RNA is in a solution and an optical signal or optical signals is/are any kind of optical signal/signals.
Level of Skill in The Art, The Unpredictability of The Art, and The Quantity of Experimentation Necessary
While the relative skill in the art is very high (the Ph.D. degree with laboratory experience), there is no predictability whether the methods recited in claims 1, 2, 8-11, 32, 34, 35, 37 can be performed when a biological sample comprising a target RNA is in a solution and the methods recited in claims 12-14, 18, 20, 22-24, 26, 27, 30, and 43-45 can be performed when a biological sample comprising a target RNA is in a solution and an optical signal or optical signals is/are any kind of optical signal/signals.
First, since the specification teaches that “[T]arget RNA 210 can be located in a biological sample, which can be any one of a variety of different types of samples. Examples of biological samples include, but are not limited to, tissue sections (e.g., fresh sections, fresh-frozen sections, formalin-fixed paraffin embedded sections), tissue biopsies, cells, cell suspensions, cell dispersions, cell cultures, and various bodily fluids such as blood, urine, interstitial fluid, and lymphatic fluid”, “[T]he biological sample can be immobilized on a surface. For example, the surface can be a surface of a slide, a plate, a well, a tube, a membrane, or a film. In some embodiments, the biological sample can be mounted on a slide. In certain embodiments, the biological sample can be fixed using a fixative, such as an aldehyde, an alcohol, an oxidizing agent, a mercurial, a picrate, HOPE fixative, or another fixative. The biological sample may alternatively, or in addition, be fixed using heat fixation. Fixation can also be achieved via immersion or perfusion”, “[I]n general, within each detection cycle, each different type of optical label includes a different oligonucleotide sequence, and generates a distinguishable optical signal. As such, within each cycle, following hybridization of one of more of the optical labels to complementary labeling agents, the optical signals corresponding to the different types of optical labels can be measured and distinguished, identifying the different types of optical labels that have hybridized to complementary labeling agents associated with different reporter moieties”, and “[O]ptical signals generated by the different types of optical labels can be distinguishable in various ways. In some embodiments, for example, different types of optical labels include different dyes (e.g., fluorescent dyes) that emit light in different wavelength bands (i.e., bands that have different central wavelengths and/or different wavelengths of maximum emission intensity). If the wavelength bands are sufficiently separated spectrally, the optical signals can be distinguished from one another by spectral filtering and/or related techniques” (see paragraphs [0055], [0056 ], [0193], and [0194] of US 2023/0130371 A1, which is US publication of this instant case), the specification clearly indicates that an active labeling agent is deposited in proximity to the target RNA in the sample in the methods recited in claims 1, 44, and 45 when the biological sample comprising the target RNA is on a surface of a support, each of the reporter moieties includes a nucleic acid sequence, the reactive species is horseradish peroxidase (HRP), an inactive labeling agent is inactive tyramide, and an active labeling agent is active tyramide produced from the inactive tyramide by HRP. However, the scope of the claims are much broader than the teachings of the specification since claims 1, 44, and 45 does not limit that the biological sample comprising a target RNA is on a surface of a support. It is known that, when a target DNA or a target RNA an in situ sample is detected by a tyramide signal amplification reaction, after the reaction, activated or reactive tyramide molecules produced from inactive tyramide molecules by HRP are deposited in proximity to the target DNA or the target RNA in the in situ sample (see pages 1, 2, and 9 of TSA Signal Amplification (TSA) System, published in 2007 by PerkinElmer Life and Analytical Sciences). Since claims 1, 44, and 45 does not require that the biological sample comprising a target RNA is on a surface of a support, if the biological sample comprising the target RNA is a target RNA in solution, it is unpredictable that, in which situation, a skilled artisan knows that active tyramide molecules produced from inactive tyramide molecules by HRP are deposited in proximity to the target RNA. Furthermore, although the methods recited in claims 12-14, 18, 20, 22-24, 26, 27, 30, and 43-45 are directed to methods related to tyramide signal amplification reactions, since claims 12-14, 18, 20, 22-24, 26, 27, 30, and 43-45 do not require that an optical signal is a fluorescent or luminescence or color signal or optical signals are fluorescent or luminescence or color signals and the specification and available arts do not show that a tyramide signal amplification reaction can be performed by detecting any kind of optical signal such as an optical signal produced by an infrared tag, if the optical signal or optical signals recited in claims 12-14, 18, 20, 22-24, 26, 27, 30, and 43-45 is an optical signal produced by an infrared tag or are optical signals produced by infrared tags, it is unpredictable how an optical signal produced by an infrared tag or optical signals produced by infrared tags can be detected using the methods recited in claims 12-14, 18, 20, 22-24, 26, 27, 30, and 43-45.
Second, since claim 12 does not indicate how to differentiate optical signals generated from a different plurality of optical labels, it is unpredictable how one or more of the unique combinations of different labeling agents in the biological sample can be identified based on the measured optical signals and how a location of one or more of the target RNAs in the biological sample can be determined based on the identified combinations of different labeling agents as recited in steps (f) and (g).
Third, since claim 45 does not indicate how to differentiate optical signals generated from a plurality of optical labels, it is unpredictable how a location of more than target RNAs in the biological sample can be determined based on the measured optical signals.
Case law has established that “(t)o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’.” In re Wright 990 F.2d 1557, 1561. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) it was determined that “[T]he scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art”. The amount of guidance needed to enable the invention is related to the amount of knowledge in the art as well as the predictability in the art. Furthermore, the Court in Genentech Inc. v Novo Nordisk 42 USPQ2d 1001 held that “[I]t is the specification, not the knowledge of one skilled in the art that must supply the novel aspects of the invention in order to constitute adequate enablement”.
In view of above discussions, the skilled artisan will have no way to predict the experimental results. Accordingly, it is concluded that undue experimentation is required to make the invention as it is claimed. These undue experimentation at least includes to test whether the methods recited in claims 1, 2, 8-11, 32, 34, 35, 37 can be performed when a biological sample comprising a target RNA is in a solution and the methods recited in claims 12-14, 18, 20, 22-24, 26, 27, 30, and 43-45 can be performed when a biological sample comprising a target RNA is in a solution and an optical signal or optical signals is/are any kind of optical signal/signals.
Conclusion
In the instant case, as discussed above, the level of unpredictability in the art is high, the specification provides one with no guidance that leads one to claimed methods. One of skill in the art cannot readily anticipate the effect of a change within the subject matter to which the claimed invention pertains. Thus given the broad claims in an art whose nature is identified as unpredictable, the unpredictability of that art, the large quantity of research required to define these unpredictable variables, the lack of guidance provided in the specification, the absence of any working example related to claimed invention and the no teaching in the prior art balanced only against the high skill level in the art, it is the position of the examiner that it would require undue experimentation for one of skill in the art to perform the method of the claim as broadly written.
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, 8-14, 18, 20, 22-24, 26, 27, 30, 32, 34, 35, 37, and 43-45 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 or 44 or 45 is vague and indefinite because the phrase “contacting the biological sample with a labeling agent that reacts with the reactive species to deposit the labeling agent or a derivative thereof in the sample in proximity to the target RNA” does not make sense since in view of the claim, a labeling agent that reacts with the reactive species comprises an inactive tyramide species while the labeling agent deposited in the sample in proximity to the target RNA comprises an active tyramide species and a labeling agent that reacts with the reactive species and the labeling agent deposited in the sample in proximity to the target RNA are two different labeling agents. Please clarify.
Claim 10 is vague and indefinite because the phrase “the probe” does not make sense since the probe comprising a capture moiety that specifically binds to the target RNA and a plurality of reporter moieties in claim 1 and the probe comprising a combination of the plurality of reporter moieties in claim 10 are two different probes and the probe in claim 10 is not identical to the probe in claim 1. Furthermore, since claims 1 and 9 do not contain a unique combination of different labeling agents, it is unclear why a unique combination of different labeling agents can be deposited in the biological sample in proximity to the additional target RNAs as recited in clam 10. Please clarify.
Claim 22 is vague and indefinite because it is unclear what is the relationship between a different plurality of optical labels in claim 12 and a set of optical labels in claim 22. Please clarify.
Claim 43 is vague and indefinite. Since claims 1, 10, and 32 do not require that the different labeling agents have optical labels, it is unclear why the one or more images can comprise contributions from optical signals generated by labeling agents associated with more than one type of target RNA in the biological sample. Please clarify.
Claim 44 is vague and indefinite. Since step (b) requires contacting the biological sample with a labeling agent comprising a substrate conjugated to an optical label wherein the substrate reacts with the reactive species to deposit the labeling agent or a derivative thereof in the biological sample in proximity to the target RNA while step (d) requires that each labeling agent comprises an inactive tyramide species that reacts with the reactive species to generate an active tyramide species, it is unclear what is the relationship between a substrate conjugated to an optical label and an inactive tyramide species that reacts with the reactive species. Please clarify.
Claim 45 is vague and indefinite. Since step (c) requires contacting the biological sample with a labeling agent comprising a substrate conjugated to a labeling oligonucleotide wherein the substrate reacts with the reactive species to deposit the labeling oligonucleotide in the biological sample in proximity to the one of the plurality of reporter moiety moieties while step (g) requires that each labeling agent comprises an inactive tyramide species that reacts with the reactive species to generate an active tyramide species, it is unclear what is the relationship between a substrate conjugated to a labeling oligonucleotide and an inactive tyramide species that reacts with the reactive species. Please clarify.
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.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Frank Lu, Ph. D., whose telephone number is (571)272-0746. The examiner can normally be reached Monday to Friday, 9 AM to 5 PM.
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/FRANK W LU/
Primary Examiner, Art Unit 1683
March 26, 2026
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