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 amendment has been considered and entered for the record.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/27/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
Applicant’s amendment has been considered and entered for the record.
Claim Rejections - 35 USC § 102
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 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) 15 and 22 are rejected under 35 U.S.C. 102a1 as being anticipated by Huttner et al. (WO 2019/051072 A – hereafter ‘072) .
‘072 discloses the following limitations for claim 15:
“A method for injecting a substance into a plurality of cells of a cell population at a plurality of depths within a tissue sample”: ‘072 discloses an automatic microinjection device and method that injects substances such as genetic material into single cells of a tissue sample (Abstract; [0005]).
“for each respective cell of the plurality of cells”: This is done for each of the cells.
“determine a 3-dimensional location of the respective cell based on images formed by the microscope and captured by a microscope camera”: ‘071 uses a tracing trajectory line that moves the micropipette and inserts the tip into the tissue ([0085]). This control is such that a gene product can be injected into single cells ([0123]) where the micropipette is moved in 3-axis where this is being interpreted as using 3D images from a microscope camera (camera 104; [0038]).
“control the robotic manipulator apparatus to insert the micropipette into the respective cell”: After a determination of the location of the cell and the position of the needle ([0084]; [0090]), the needle is moved to the target cell by the needle control stage ([0090]; [0091]); Fig. 21).
“control the injector controller to eject the substance out of the micropipette and into the respective cell.”: ‘072 controls the pressure controller (controller 106) to eject a substance out of the micropipette and into the cell ([0038]).
‘072 discloses the following limitations for claim 22:
“A non-transitory computer-readable storage medium having instructions stored thereon that configure a robotic microinjection system to, for each respective cell of a plurality of cells of a cell population at a plurality of depths within a tissue sample”: ‘072 discloses an automatic microinjection device and method that injects substances such as genetic material into single cells of a tissue sample (Abstract; [0005]). ‘072 discloses a using manipulator (manipulator 108; Fig. 1) that is being interpreted as the robotic manipulator that holds a micropipette ([0035]; [0037]; [0038]).
“for each respective cell of the plurality of cells”: This is done for each of the cells.
“determine a 3-dimensional location of the respective cell based on images formed by the microscope and captured by a microscope camera”: 071 uses a tracing trajectory line that moves the micropipette and inserts the tip into the tissue ([0085]). This control is such that a gene product can be injected into single cells ([0123]) where the micropipette is moved in 3-axis where this is being interpreted as using 3D images from a microscope camera (camera 104; [0038]).
“control the robotic manipulator apparatus to insert the micropipette into the respective cell”: After a determination of the location of the cell and the position of the needle ([0084]; [0090]), the needle is moved to the target cell by the needle control stage ([0090]; [0091]); Fig. 21).
“control the injector controller to eject the substance out of the micropipette and into the respective cell.”: ‘072 controls the pressure controller (controller 106) to eject a substance out of the micropipette and into the cell ([0038]).
Therefore, ‘072 meets the limitations of claims 15 and 22.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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.
Claim Rejections - 35 USC § 103
Claims 1, 3, 5, 10 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Huttner et al. (WO 2019/051072 A – hereafter ‘072) in view of Smith et al. (US 2002/0149628 A1 – hereafter ‘628).
‘780 discloses a microinjection apparatus ([0010]) that includes the following limitations for claim 1:
“A system for injecting a substance into a plurality of cells of a cell population at a plurality of depths in a tissue sample”: ‘072 discloses an automatic microinjection device that injects substances such as genetic material into single cells of a tissue sample (Abstract; [0005]).
“a robotic manipulator apparatus configured to hold a position a micropipette”: ‘072 discloses a manipulator (manipulator 108; Fig. 1) that is being interpreted as the robotic manipulator that holds a micropipette ([0035]; [0037]; [0038]).
“an injector controller”: ‘072 discloses a pressure controller (controller 106; Fig. 1) that is being interpreted as the injector controller of the instant application as this delivers an injection pressure to the micropipette ([0039]).
“a robotic apparatus configured to manipulate a focal plane of a microscope”: ‘072 does not explicitly disclose a robotic apparatus for manipulating the focal plane.
“a computing device configured to, for each respective cell of the plurality of cells within the tissue sample:”: ‘072 discloses a computing device (device 102; Fig. 1):
“determine a 3-dimensional location of the respective cell based on images formed by the microscope and captured by a microscope camera”: ‘071 uses a tracing trajectory line that moves the micropipette and inserts the tip into the tissue ([0085]). This control is such that a gene product can be injected into single cells ([0123]) where the micropipette is moved in 3-axis where this is being interpreted as using 3D images from a microscope camera (camera 104; [0038]).
“control the robotic manipulator apparatus to insert the micropipette into the respective cell”: After a determination of the location of the cell and the position of the needle [0038]; [0123]), the needle is moved to the target cell by the manipulator ([0030]; [0123]).
“control the injector controller to eject the substance out of the micropipette and into the respective cell.”: ‘072 controls the pressure controller (controller 106) to eject a substance out of the micropipette and into the cell ([0038]).
For claim 1, ‘072 does not explicitly disclose a robotic autofocus controller.
‘628 discloses an item that can be positioned within a three-dimensional space observable by a microscope ([0005]) that for claim 1 includes using a microscope focus controller (controller 110, i.e. the robotic apparatus configured for manipulating the focus; [0029]). This controller provides for automated focusing of the microscope ([0032]).
Therefore, it would have been obvious to one ordinary skill in the art at the time of filing to include the automatic focus control of ‘628 within ‘072 in order to control the microscope. The suggestion for doing so at the time would have been in order to obtain stable results eliminating drift of the image ([0116]). See also MPEP §2144.04 III.
For claim 3, ‘072 discloses that the cell population is defined based on the spatial location or selectin of the cells ([0030]).
For claim 5, ‘072 discloses using computer-vision feedback ([0005]; [0029]) to identify a 3D location in order to move a 3-axis manipulator.
For claim 10, ‘072 discloses that the computing device determines a trajectory line for the micropipette ([0006]).
For claim 21, ‘072 does not explicitly disclose a robotic autofocus controller.
‘628 discloses an item that can be positioned within a three-dimensional space observable by a microscope ([0005]) that for claim 21 includes using a microscope focus controller (controller 110, i.e. the robotic apparatus configured for manipulating the focus; [0029]). This controller provides for automated focusing of the microscope ([0032]).
Therefore, it would have been obvious to one ordinary skill in the art at the time of filing to include the automatic focus control of ‘628 within ‘072 in order to control the microscope. The suggestion for doing so at the time would have been in order to obtain stable results eliminating drift of the image ([0116]). See also MPEP §2144.04 III.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Huttner et al. (WO 2019/051072 A – hereafter ‘072) and Smith et al. (US 2002/0149628 A1 – hereafter ‘628) in view of Wingstrom et al. (US 2004/0181343 A1 – hereafter ‘343).
For claim 4, modified ‘072 discloses that the device can be used for electroporation ([0027]) but does not disclose the circuitry that is used for electroporation.
‘343 discloses a microfluidic workstation for examining the physiological responses of ion channels ([0010]) that for claim 4 includes circuitry and a power source for electroporation ([0271]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to include the electroporation system of ‘343 within modified ‘072in order to for screening compound libraries to search for novel classes of compounds. The suggestion for doing so at the time would have been in order to obtain pharmacological information relating to cellular targets ([0109]).
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ando et al. Huttner et al. (WO 2019/051072 A – hereafter ‘072) and Smith et al. (US 2002/0149628 A1 – hereafter ‘628) in view of Rupesh et al. (US 2021/0180014 A1 – hereafter ‘014).
Modified ‘072differs from the instant claim regarding the molecular barcode of claim 2.
‘014 discloses a method for screening for an activity of a recombinant receptor (Abstract) that includes for claim 2 using a molecular barcode ([0031]). This provide a molecular identifier that can be used to identify particular nucleic acid molecules ([0263]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to include the molecular barcode of ‘014 within modified ‘072 in order to identify the nucleic acid. The suggestion for doing so at the time would have been in order to evaluate and identify the one or more polynucleotides ([0263]).
Allowable Subject Matter
Claims 6-9, 11-14 and 16-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
For claim 6, the prior art fails to teach or fairly suggest a system that includes the step where the images captured by the microscope camera are a z-stack of images of the tissue sample while scanning through a volume of the tissue sample, and the computing device is configured to, as part of applying the computer vision process: generate a maximum intensity projection (MIP) based on the z-stack of images; segment the one or more cells from the MIP; and for each respective cell of the one or more cells, determine an x-y coordinate of a centroid of the respective cell and a z-coordinate of the respective cell based on a most in-focus optical section of the respective cell.
Claim 7 would be allowable for the same reasons as claim 6.
For claim 8, the prior art fails to teach or fairly suggest a system where the images captured by the microscope camera are a z-stack of images of the tissue sample while scanning through a volume of the tissue sample, and the computing device is configured to, as part of applying the computer vision process to determine the 3-dimensional location of the respective cell: apply a machine-learned neural network (NN) such as U-Net or Mask R-CNN to one or more of the images in the z-stack to segment cells; and for each respective cell of the one or more cells, determine the 3-dimensional location of the respective cell as the centroid of the 3-dimensional segmented cell. Claim 9. (Original): The system of claim 1, wherein the computing device is further configured to assess the viability of the respective cell using a logistic regression model trained on image- based features of successfully injected cells to predict a probability of a successful injection of the respective cell.
For claim 9, the prior art fails to teach or fairly suggest a system where the computing device is further configured to assess the viability of the respective cell using a logistic regression model on image-based features of successfully injected cells to predict a probability of a successful injection of the respective cell.
For claim 11, the prior art fails to teach or fairly suggest a system where the computing device is further configured to: segment a shank of the micropipette in an image; fit lines to segmented shank of the micropipette; extrapolate and intersect the lines to measure an (x, y) position of a tip of the micropipette; and apply a Kalman filter to the (x, y) position of the tip of the micropipette, and the computing device is configured to, as part of controlling the robotic manipulator apparatus to insert the micropipette into the respective cell, attempt injection of the respective cell based on the (x, y) position of the tip of the micropipette.
For claim 12, the prior art fails to teach or fairly suggest a system where the computing device is further configured to: apply a ML model to an image of the micropipette to measure an (x, y) position of a tip of the micropipette; apply a Kalman filter to the (x, y) position of the tip of the micropipette, and the computing device is configured to, as part of controlling the robotic manipulator apparatus to insert the micropipette into the respective cell, attempt injection of the respective cell based on the (x, y) position of the tip of the micropipette.
For claim 13, the prior art fails to teach or fairly suggest where the computing device is further configured to apply a ML model to an image of the micropipette to determine a classification of a z position of the tip of the micropipette, and the computing device is configured to apply downward or upward correction, depending on the classification, to the position of the tip of the micropipette prior to attempting to insert the micropipette into the respective cell.
For claim 14, the prior art fails to teach or fairly suggest the system where the computing system is further configured to: apply a ML model to an image of the micropipette to classify an attempt to inject the respective cell as successful or unsuccessful; and in response to determining that the attempt to inject the respective cell was unsuccessful: move the micropipette upward or downward relative to an initial injection position; and reattempt to inject the respective cell.
For claim 16, the prior art fails to teach or fairly suggest the method where the images captured by the microscope camera are a z-stack of images of the tissue sample while scanning through a volume of the tissue sample, and determining the 3-dimensional location of the respective cell comprises: using, by the computing device, the microscope camera to generate a z-stack of images of the tissue sample while scanning through a volume of the tissue sample ;generating, by the computing device, a maximum intensity projection (MIP) based on the z-stack of images; segmenting, by the computing device, the one or more cells from the MIP; and for each respective cell of the one or more cells, determining, by the computing device, an x-y coordinate of a centroid of the respective cell and a z-coordinate of the respective cell based on a most in-focus optical section of the respective cell.
For claim 17, the prior art fails to teach or fairly suggest the method where the determining the z-coordinate of the respective cell comprises: computing, by the computing device, a focus metric, wherein the focus metric is one of a pixel intensity, a Tenengrad variance, a normalized variance, or a Vollath's autocorrelation for each image of the z-stack for the respective cell; fitting, by the computing device, a gaussian distribution to the focus metric for the images; and selecting, by the computing device, a mean of the gaussian distribution as the z- coordinate of the respective cell.
For claim 18, the prior art fails to teach or fairly suggest the method where the images captured by the microscope camera are a z-stack of images of the tissue sample while scanning through a volume of the tissue sample, and applying the computer vision process to determine the 3-dimensional location of the respective cell comprises: applying, by the computing device, a machine-learned neural network (NN) to one or more of the images in the z-stack to segment cells; and for each respective cell of the one or more cells, determining, by the computing device, the 3-dimensional location of the respective cell as the centroid of the 3- dimensional segmented cell.
For claim 19, the prior art fails to teach or fairly suggest the step where the assessing of the viability of the respective cell using a logistic regression model trained on image- based features of successfully injected cells to predict a probability of a successful injection of the respective cell.
For claim 20, the prior art fails to teach or fairly suggest the step of correcting, by the computing device, the micropipette trajectory to a cell in the event of micropipette positioning inaccuracy using computer vision or machine learning based algorithms and a Kalman filter.
The closest prior art is Huttner et al. (WO 2019/051072 A1) which discloses an electroporation system that uses a micropipette, but does not teach or suggest the allowable subject matter of claims 6-9, 11-14 and 16-20.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5 and 10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure Wigstrom et al. (US 2004/0181343 A1) which discloses a patch clamp device that uses a micropipette.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L HOBBS whose telephone number is (571)270-3724. The examiner can normally be reached Variable, but generally 8AM-5PM M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Marcheschi can be reached at 571-272-1374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL L HOBBS/Primary Examiner, Art Unit 1799