DETAILED ACTION
Election/Restrictions
Applicant’s election of species (1) (the first specific binding reagent is an antibody or single-chain Fv fragment (scFv) or antibody fragment-antigen binding (Fab), see claims 33 and 34) and species (3) (the first barcode sequence consists of 1 nucleotide and the second barcode sequence consists of 1 nucleotide, see claims 38 and 39) in the reply filed on July 2, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 31-39 and 41-50 will be examined.
Information Disclosure Statement
Information disclosure statements filed on December 7, 2022, January 19, 2023, September 8, 2023, October 23, 2023, January 24, 2024, August 19, 2024, August 29, 2024, November 15, 2024, March 27, 2025, October 17, 2025, and July 2, 2026 contain 41 pages and 321 patent and non-patent literatures. However, most of these patent and non-patent literatures are unrelated to this application. Applicant should only consider to file patent and non-patent literatures related to this application such that the valuable time of the examiner will not be wasted.
Specification
The disclosure is objected to because of the following informalities: (1) no Journal’s name for a non-patent literature “Fuller CW, et al. 2016;113(19):5233-5238” in paragraph [0062]; and (2) there are several non-patent literatures in paragraphs [0226] to [0229] (see Example 6). However, no Journal’s name, volume, and page numbers are associated with these non-patent literatures in paragraphs [0226] to [0229].
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. For example, see paragraph [0255]. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Appropriate correction is required.
Claim Objections
Claim 31 is objected to because of the following informality: a word “and” should be added before “iii)”.
Claim 35 or 48 is objected to because of the following informality: “hybridizing the first polynucleotide probe comprises hybridizing a 5’ and a 3’ end of the polynucleotide probe to two adjacent nucleic acid sequences of the oligonucleotide” should be “said hybridizing a first polynucleotide probe comprising a first barcode sequence to a first oligonucleotide of a first protein-probe complex comprises hybridizing a 5’ and a 3’ end of the first polynucleotide probe to two adjacent nucleic acid sequences of the first oligonucleotide”.
Claim 36 is objected to because of the following informality: “the polynucleotide probe should be “the first polynucleotide probe”.
Claim 37 or 49 is objected to because of the following informality: “hybridizing the first polynucleotide probe comprises hybridizing a 3’ end of the polynucleotide probe to a first complementary sequence of the oligonucleotide, and hybridizing the 5’ end of the polynucleotide probe to a second complementary sequence of the oligonucleotide” should be “said hybridizing a first polynucleotide probe comprising a first barcode sequence to a first oligonucleotide of a first protein-probe complex comprises hybridizing a 3’ end of the first polynucleotide probe to a first complementary sequence of the first oligonucleotide, and hybridizing the 5’ end of the first polynucleotide probe to a second complementary sequence of the first oligonucleotide”.
Claim 41 is objected to because of the following informalities: (1) “each tagged complex” in contacting step should be “each of the tagged complexes”; (2) “each hybridized polynucleotide probe” in amplifying step should be “each polynucleotide probe in each of the tagged complexes”; and (3) “sequencing comprises hybridizing a sequencing primer the amplification product” in sequencing step should be “the sequencing step comprises hybridizing a sequencing primer to the amplification products”.
Claim 42 is objected to because of the following informality: “each tagged complex” should be “each of the tagged complexes”.
Claim 43 or 45 is objected to because of the following informality: “each polynucleotide probe” should be “each of the plurality of polynucleotide probes”.
Claim 44 is objected to because of the following informalities: (1) “a first amplification product” should be “a first amplification product of the plurality of amplification product”; and (2) “a second amplification product” should be “a second amplification product of the plurality of amplification product”.
Claim 46 is objected to because of the following informality: “amplifying comprises extending an amplification primer with a strand-displacing polymerase, wherein the primer extension generates an extension product comprising multiple complements of the circular polynucleotide” should be “the amplifying step comprises extending an amplification primer with a strand-displacing polymerase, wherein the extending step generates an extension product comprising multiple complements of the circular polynucleotide”.
Claim 50 is objected to because of the following informality: “each polynucleotide probe” should be “each of the first polynucleotide probe and the second polynucleotide probe”.
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.
New Matter
Claims 31-39 and 41-50 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Newly added claim 31 contains a limitation “i) hybridizing a first polynucleotide probe comprising a first barcode sequence to a first oligonucleotide of a first protein-probe complex and hybridizing a second polynucleotide probe comprising a second barcode sequence to a second oligonucleotide of a second protein-probe complex, wherein the first protein-probe complex comprises a first protein bound to the first oligonucleotide, and the second protein-probe complex comprises the second protein bound to the second oligonucleotide; ii) amplifying the first polynucleotide probe to form a first amplification product comprising the first barcode sequence, or a complement thereof, in the cell or tissue and amplifying the second polynucleotide probe to form a second amplification product comprising the second barcode sequence, or a complement thereof, in the cell or tissue; iii) hybridizing a first sequencing primer to the first amplification product and sequencing the first barcode sequence, or a complement thereof; followed by hybridizing a second sequencing primer to the second amplification product and sequencing the second barcode sequence, or a complement thereof”, newly added claim 41 contains a limitation “contacting the cell or tissue with a plurality of polynucleotide probes and forming a plurality of tagged complexes, wherein each tagged complex comprises one of said polynucleotide probes hybridized to an oligonucleotide, wherein said oligonucleotide is attached to a specific binding reagent and said specific binding reagent is bound to a protein in said cell or tissue; amplifying each hybridized polynucleotide probe to form a plurality of amplification products; and sequencing said amplification products, wherein sequencing comprises hybridizing a sequencing primer the amplification product and incorporating with a polymerase a labeled nucleotide into the sequencing primer; and detecting the incorporated labeled nucleotide”, and newly added claim 47 contains a limitation “i) forming a first protein-probe complex by binding a first specific binding reagent to a protein in a cell or tissue, wherein the first specific binding reagent is attached to a first oligonucleotide, and forming the second protein-probe complex by binding a second specific binding reagent to the protein in the cell or tissue, wherein the second specific binding reagent is attached to a second oligonucleotide; ii) hybridizing a first polynucleotide probe comprising a first sequence to the first oligonucleotide and hybridizing a second polynucleotide probe comprising a second sequence to the second oligonucleotide; iii) amplifying the first polynucleotide probe to form a first amplification product comprising the first sequence, or a complement thereof, in the cell or tissue and amplifying the second polynucleotide probe to form a second amplification product comprising the second sequence, or a complement thereof, in the cell or tissue; iv) hybridizing a first sequencing primer to the first amplification product and sequencing the first sequence, or a complement thereof; followed by hybridizing a second sequencing primer to the second amplification product and sequencing the second sequence, or a complement thereof; and v) identifying the protein when the first sequence and second sequence are detected”. Although the specification describes that “[I]n embodiments, the method further includes proximity ligation techniques known in the art; see for example the methods, complexes, and kits described in US 2002/0064779, US 2005/0287526, and US 2014/0170654, each of which are incorporated herein by reference. With these methods, an amplified product is produced only if two specific antibodies bind to the same protein (or within approximately 5 nm from each other). One antibody provides the DNA oligonucleotide barcode that acts as a splint for a padlock probe, while the other antibody carries the primer for RCA. Thus, RCA amplification reaction only occurs if both antibodies bind to their respective epitopes on the target protein (or protein complex). Thus, in an aspect is provided a method of detecting a plurality of targets including different proteins within an optically resolved volume of a cell in situ; the method including: i) associating a different oligonucleotide barcode from a known set of barcodes with each of the plurality of targets, wherein associating an oligonucleotide barcode with each of the plurality of targets comprises contacting each of the targets with a specific binding reagent, wherein the specific binding reagent comprises an oligonucleotide barcode, and contacting each of the targets with a specific binding reagent, wherein the specific binding reagent comprises an oligonucleotide primer sequence from a known set of primer sequences; ii) hybridizing a padlock probe to two adjacent nucleic acid sequences of the barcode, wherein the padlock probe is a single-stranded polynucleotide having a 5’ and a 3’ end; iii) sequencing each barcode to obtain a multiplexed signal in the cell in situ; iv) demultiplexing the multiplexed signal by comparison with the known set of barcodes; and v) detecting the plurality of targets by identifying the associated barcodes detected in the cell”
(see paragraph [0154] of US 2023/0100215 A1, which is US application of this instant application), paragraphs [0020], [0054], [0085] to [0088], [0104] to [0109], and [0117] of the specification and Figure 5B suggested by applicant do not describe such limitations recited in claims 31, 41, and 47 since nowhere in the specification describes: (1) amplifying a first polynucleotide probe in a hybridization product formed by the first polynucleotide probe and a first protein-probe complex and amplifying a second polynucleotide probe in a hybridization product formed by the second polynucleotide probe and a second protein-probe complex recited in claims 31 and 47 and amplifying each of a plurality of polynucleotide probes in each of hybridization products formed by one of the plurality of polynucleotide probes and one of tagged complex as recited in claim 41; and (2) a first polynucleotide probe comprising a first barcode sequence and a second polynucleotide probe comprising a second barcode sequence recited in claim 31.
MPEP 2163.06 notes “If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112, first paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).” MPEP 2163.02 teaches that “Whenever the issue arises, the fundamental factual inquiry is whether a claim defines an invention that is clearly conveyed to those skilled in the art at the time the application was filed...If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application.” MPEP 2163.06 further notes “When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not “new matter” is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure” (emphasis added).
Scope of Enablement
Claims 31-39 and 41-50 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 contacting a cell or tissue with a plurality of polynucleotide probes, does not reasonably provide enablement for: (1) detecting a first protein and a second protein in a cell or tissue using the methods recited in claims 31-39; (2) detecting a plurality of proteins in a cell or tissue using the methods recited in claims 41-46; and (3) detecting a protein in a cell or tissue using the methods recited in claims 47-50. 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 a method of detecting a first protein and a second protein in a cell or tissue, a method of detecting a plurality of proteins in a cell or tissue, and a method of detecting a protein in a cell or tissue. 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 31-39 encompass a method of detecting a first protein and a second protein in a cell or tissue, said method comprising: i) hybridizing a first polynucleotide probe comprising a first barcode sequence to a first oligonucleotide of a first protein-probe complex and hybridizing a second polynucleotide probe comprising a second barcode sequence to a second oligonucleotide of a second protein-probe complex, wherein the first protein-probe complex comprises a first protein bound to the first oligonucleotide, and the second protein-probe complex comprises the second protein bound to the second oligonucleotide; ii) amplifying the first polynucleotide probe to form a first amplification product comprising the first barcode sequence, or a complement thereof, in the cell or tissue and amplifying the second polynucleotide probe to form a second amplification product comprising the second barcode sequence, or a complement thereof, in the cell or tissue; and iii) hybridizing a first sequencing primer to the first amplification product and sequencing the first barcode sequence, or a complement thereof; followed by hybridizing a second sequencing primer to the second amplification product and sequencing the second barcode sequence, or a complement thereof. Claims 41-46 encompass a method of detecting a plurality of proteins in a cell or tissue, the method comprising: contacting the cell or tissue with a plurality of polynucleotide probes and forming a plurality of tagged complexes, wherein each tagged complex comprises one of said polynucleotide probes hybridized to an oligonucleotide, wherein said oligonucleotide is attached to a specific binding reagent and said specific binding reagent is bound to a protein in said cell or tissue; amplifying each polynucleotide probe in each of the tagged complexes to form a plurality of amplification products; and sequencing said amplification products, wherein sequencing comprises hybridizing a sequencing primer to the amplification product and incorporating with a polymerase a labeled nucleotide into the sequencing primer; and detecting the incorporated labeled nucleotide. Claims 47-50 encompass a method of detecting a protein in a cell or tissue, said method comprising: i) forming a first protein-probe complex by binding a first specific binding reagent to a protein in a cell or tissue, wherein the first specific binding reagent is attached to a first oligonucleotide, and forming the second protein-probe complex by binding a second specific binding reagent to the protein in the cell or tissue, wherein the second specific binding reagent is attached to a second oligonucleotide; ii) hybridizing a first polynucleotide probe comprising a first sequence to the first oligonucleotide and hybridizing a second polynucleotide probe comprising a second sequence to the second oligonucleotide; iii) amplifying the first polynucleotide probe to form a first amplification product comprising the first sequence, or a complement thereof, in the cell or tissue and amplifying the second polynucleotide probe to form a second amplification product comprising the second sequence, or a complement thereof, in the cell or tissue; iv) hybridizing a first sequencing primer to the first amplification product and sequencing the first sequence, or a complement thereof; followed by hybridizing a second sequencing primer to the second amplification product and sequencing the second sequence, or a complement thereof; and v) identifying the protein when the first sequence and second sequence are detected.
Working Examples
Although the specification provides 14 working examples (see pages 35-46 of US 2023/0100215 A1, which is US publication of this instant case), the specification provides no working example for: (1) detecting a first protein and a second protein in a cell or tissue using the methods recited in claims 31-39; (2) detecting a plurality of proteins in a cell or tissue using the methods recited in claims 41-46; and (3) detecting a protein in a cell or tissue using the methods recited in claims 47-50.
The Amount of Direction or Guidance Provided and The State of The Prior Art
The specification provides 14 working examples (see pages 35-46 of US 2023/0100215 A1, which is US publication of this instant case). However, the specification provides no working example for: (1) detecting a first protein and a second protein in a cell or tissue using the methods recited in claims 31-39; (2) detecting a plurality of proteins in a cell or tissue using the methods recited in claims 41-46; and (3) detecting a protein in a cell or tissue using the methods recited in claims 47-50. 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 (1) detect a first protein and a second protein in a cell or tissue using the methods recited in claims 31-39; (2) detect a plurality of proteins in a cell or tissue using the methods recited in claims 41-46; and (3) detect a protein in a cell or tissue using the methods recited in claims 47-50.
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: (1) a first protein and a second protein can be detected in a cell or tissue using the methods recited in claims 31-39; (2) a plurality of proteins can be detected in a cell or tissue using the methods recited in claims 41-46; and (3) a protein can be detected in a cell or tissue using the methods recited in claims 47-50.
The specification teaches that “[I]n another aspect is provided a method of detecting a plurality of proteins (e.g., different proteins) within an optically resolved volume of a cell in situ, wherein the method includes i) associating a different oligonucleotide barcode from a known set of barcodes with each of the plurality of targets, wherein associating an oligonucleotide barcode with each of the plurality of targets includes contacting each of the targets with a specific binding reagent, wherein the specific binding reagent includes an oligonucleotide barcode; ii) hybridizing a padlock probe to two adjacent nucleic acid sequences of the barcode, wherein the padlock probe is a single-stranded polynucleotide having a 5’ and a 3’ end, and wherein the padlock probe includes a primer binding sequence from a known set of primer binding sequences; iii) sequencing each barcode to obtain a multiplexed signal in the cell in situ; iv) demultiplexing the multiplexed signal by comparison with the known set of barcodes; and v) detecting the plurality of targets by identifying the associated barcodes detected in the cell. In another aspect is provided a method of detecting a plurality of proteins (e.g., different proteins) within an optically resolved volume of a cell in situ, wherein the method includes i) associating a different oligonucleotide barcode from a known set of barcodes with each of the plurality of targets, wherein associating an oligonucleotide barcode with each of the plurality of targets includes contacting each of the targets with a specific binding reagent, wherein the specific binding reagent includes an oligonucleotide barcode; ii) sequencing each barcode to obtain a multiplexed signal in the cell in situ; iii) demultiplexing the multiplexed signal by comparison with the known set of barcodes; and iv) detecting the plurality of targets by identifying the associated barcodes detected in the cell” and “[I]n embodiments, the method further includes proximity ligation techniques known in the art; see for example the methods, complexes, and kits described in US 2002/0064779, US 2005/0287526, and US 2014/0170654, each of which are incorporated herein by reference. With these methods, an amplified product is produced only if two specific antibodies bind to the same protein (or within approximately 5 nm from each other). One antibody provides the DNA oligonucleotide barcode that acts as a splint for a padlock probe, while the other antibody carries the primer for RCA. Thus, RCA amplification reaction only occurs if both antibodies bind to their respective epitopes on the target protein (or protein
complex). Thus, in an aspect is provided a method of detecting a plurality of targets including different proteins within an optically resolved volume of a cell in situ; the method including: i) associating a different oligonucleotide barcode from a known set of barcodes with each of the plurality of targets, wherein associating an oligonucleotide barcode with each of the plurality of targets comprises contacting each of the targets with a specific binding reagent, wherein the specific binding reagent comprises an oligonucleotide barcode, and contacting each of the targets with a specific binding reagent, wherein the specific binding reagent comprises an oligonucleotide primer sequence from a known set of primer sequences; ii) hybridizing a padlock probe to two adjacent nucleic acid sequences of the barcode, wherein the padlock probe is a single-stranded polynucleotide having a 5’ and a 3’ end; iii) sequencing each barcode to obtain a multiplexed signal in the cell in situ; iv) demultiplexing the multiplexed signal by comparison with the known set of barcodes; and v) detecting the plurality of targets by identifying the associated barcodes detected in the cell” (see paragraphs [0088] and [0154] of US 2023/0100215 A1, which is US application of this instant application), the specification clearly indicates that hybridization reactions are in situ hybridization reactions. However, the scope of the claims is much broader than the teaching of the specification.
First, it is known that “[B]iomolecules such as peptides, proteins, and nucleic acids generally cannot cross a cell membrane by passive diffusion” (see abstract of Pei, Acc. Chem. Res., 55, 309-318, 2022). Since claim 31 does not require that a cell is a permeabilized cell or a tissue is a tissue containing permeabilized cells, if a cell is a cell with a complete cell membrane or a tissues is a tissue only containing cells with a complete cell membrane, a first polynucleotide probe comprising a first barcode sequence and a second polynucleotide probe comprising a second barcode sequence cannot enter the cell or the cells of the tissue such that the first polynucleotide probe comprising the first barcode sequence cannot hybridize to a first oligonucleotide of a first protein-probe complex, the second polynucleotide probe comprising the second barcode sequence cannot hybridize to a second oligonucleotide of a second protein-probe complex, and steps ii) and iii) of claim 31 cannot be performed. Furthermore, although steps ii) and iii) of claim 31 require amplifying the first polynucleotide probe to form a first amplification product comprising the first barcode sequence, or a complement thereof, in the cell or tissue and amplifying the second polynucleotide probe to form a second amplification product comprising the second barcode sequence, or a complement thereof, in the cell or tissue and hybridizing a first sequencing primer to the first amplification product and sequencing the first barcode sequence, or a complement thereof; followed by hybridizing a second sequencing primer to the second amplification product and sequencing the second barcode sequence, or a complement thereof, since claim 31 do not indicate how sequencing the first barcode sequence and sequencing the second barcode sequence are correlated with detecting a first protein and a second protein in a cell or tissue, it is unpredictable how the first protein and the second protein in the cell or tissue can be detected using the methods recited in claims 31-39.
Second, it is known that “[B]iomolecules such as peptides, proteins, and nucleic acids generally cannot cross a cell membrane by passive diffusion” (see abstract of Pei, Acc. Chem. Res., 55, 309-318, 2022). Since claim 41 does not require that a cell is a permeabilized cell or a tissue is a tissue containing permeabilized cells, if a cell is a cell with a complete cell membrane or a tissues is a tissue only containing cells with a complete cell membrane, a plurality of polynucleotide probes cannot enter the cell or the cells of the tissue such that a plurality of tagged complexes cannot be formed wherein each of the tagged complexes comprises one of said polynucleotide probes hybridized to an oligonucleotide, said oligonucleotide is attached to a specific binding reagent and said specific binding reagent is bound to a protein in said cell or tissue and steps ii) and iii) of claim 41 cannot be performed. Furthermore, although steps ii) and iii) of claim 41 require amplifying each hybridized polynucleotide probe to form a plurality of amplification products and sequencing said amplification products, wherein the sequencing step comprises hybridizing a sequencing primer the amplification product and incorporating with a polymerase a labeled nucleotide into the sequencing primer; and detecting the incorporated labeled nucleotide, since claim 41 do not indicate how sequencing said amplification products is correlated with detecting a plurality of proteins in a cell or tissue, it is unpredictable how the plurality of proteins in the cell or tissue can be detected using the methods recited in claims 41-46.
Third, it is known that “[B]iomolecules such as peptides, proteins, and nucleic acids generally cannot cross a cell membrane by passive diffusion” (see abstract of Pei, Acc. Chem. Res., 55, 309-318, 2022). Since claim 47 does not require that a cell is a permeabilized cell or a tissue is a tissue containing permeabilized cells, if a cell is a cell with a complete cell membrane or a tissues is a tissue only containing cells with a complete cell membrane and a first specific binding reagent and a second specific binding reagent are an antibody (see claim 34), the first specific binding reagent and the second specific binding reagent cannot enter the cell or the cells of the tissue such that a first protein-probe complex cannot be formed by binding a first specific binding reagent to a protein in a cell or tissue and the second protein-probe complex can be formed by binding a second specific binding reagent to the protein in the cell or tissue wherein the first specific binding reagent is attached to a first oligonucleotide and the second specific binding reagent is attached to a second oligonucleotide and steps iii) to v) of claim 47 cannot be performed. Furthermore, although steps iii) to v) of claim 47 require amplifying the first polynucleotide probe to form a first amplification product comprising the first sequence, or a complement thereof, in the cell or tissue and amplifying the second polynucleotide probe to form a second amplification product comprising the second sequence, or a complement thereof, in the cell or tissue, hybridizing a first sequencing primer to the first amplification product and sequencing the first sequence, or a complement thereof; followed by hybridizing a second sequencing primer to the second amplification product and sequencing the second sequence, or a complement thereof, and identifying the protein when the first sequence and second sequence are detected, since claim 41 do not indicate how identifying the protein in the cell or tissue is correlated with detecting the first sequence of the first polynucleotide probe and the second sequence of the second polynucleotide probe, it is unpredictable how the protein in the cell or tissue can be detected using the methods recited in claims 47-50.
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. The undue experimentation at least includes to test whether: (1) a first protein and a second protein can be detected in a cell or tissue using the methods recited in claims 31-39; (2) a plurality of proteins can be detected in a cell or tissue using the methods recited in claims 41-46; and (3) a protein can be detected in a cell or tissue using the methods recited in claims 47-50.
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 31-39 and 41-50 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 31 is rejected as vague and indefinite in view of step i) because it is unclear whether hybridizing a first polynucleotide probe comprising a first barcode sequence to a first oligonucleotide of a first protein-probe complex and hybridizing a second polynucleotide probe comprising a second barcode sequence to a second oligonucleotide of a second protein-probe complex have occurred in a permeabilized cell or a tissue containing permeabilized cells. Please clarify.
Claim 38 is rejected as vague and indefinite. Since a sequence contains at least two nucleotides, it is unclear why the first barcode sequence can consist of 1 nucleotide. Please clarify.
Claim 39 is rejected as vague and indefinite. Since a sequence contains at least two nucleotides, it is unclear why the second barcode sequence can consist of 1 nucleotide. Please clarify.
Claim 41 is rejected as vague and indefinite because it is unclear whether the amplifying step has occurred in a permeabilized cell or a tissue containing permeabilized cells. Please clarify.
Claim 47 is rejected as vague and indefinite in view of step ii) because it is unclear whether hybridizing a first polynucleotide probe comprising a first sequence to the first oligonucleotide and hybridizing a second polynucleotide probe comprising a second sequence to the second oligonucleotide have occurred in a permeabilized cell or a tissue containing permeabilized cells. Please clarify.
Conclusion
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
September 4, 2026
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