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 .
DETAILED ACTION
Election/Restrictions
1. Applicant's election of Group I, claims 1-9, 17, and 18, with traverse, filed November 7, 2025 is acknowledged and has been entered. Upon further consideration, claims 10-16, 19, and 20 have been rejoined with Group I for prosecution on the merits. Accordingly, claims 1-20 are pending are under examination.
Priority
2. Receipt is acknowledged of certified copies of foreign priority papers required by 37 CFR 1.55, which papers have been placed of record in the file.
3. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119(b) or 365(b), and 37 CFR 1.55 on the basis of the filing dates of EUROPEAN PATENT OFFCE (EPO) 21200842.9 filed 10/05/2021. Based on the filing receipt, the effective filing date of this application is October 5, 2021 which is the filing date of Foreign Application EPO 21200842.9 from which the benefit of foreign priority is claimed.
Claim Rejections - 35 USC § 112
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.
4. Claims 1-20 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 is vague and indefinite in reciting “exposing at least a first region of the biological sample” because “first” appears to be a subjective term lacking a comparative basis for defining its metes and bounds.
Claim 3 is indefinite in reciting “in particular.” A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “by transfection,” and the claim also recites “in particular by lipofection or electroporation” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Claim 4 lacks clear antecedent basis in reciting “the biological sample” in line 2 of the claim because it is unclear as to whether the recitation intends to refer back to the transfected biological sample cells of claim 1 or the biological sample comprising a plurality of cells in the preamble of claim 1. See also claim 5.
Claim 5 is vague and indefinite in reciting “a second region of the biological sample is exposed” because “second” appears to be a subjective term lacking a comparative basis for defining its metes and bounds. In particular, it is unclear where this “second region” of the biological sample is relative to the “first region.”
Claim 9 is ambiguous in reciting “the regions of the biological sample” because as set forth herein supra in claims 1 and 5, it is unclear what Applicant intends to encompass in the instant recitation of “regions” relative to each of the first region and the second region and relative to the biological sample comprising a plurality of cells itself.
Claim 14 is also ambiguous in reciting “a first region” and “a second region” because it is unclear what Applicant intends to encompass in the instant recitation of “first region” relative to “second region” and relative to the biological sample which comprises a plurality of cells.
Claim Rejections - 35 USC § 102
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.
5. Claims 1-3, 8-11, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (Photoregulation of protein plasmid expression in vitro and in vivo using BHQ caging group. Chinese Chemical Letters 22: 328-341 (2011)).
Zhang et al. disclose generating a marker in a biological sample comprising a plurality of cells using oligonucleotide constructs formed in a system (Abstract). Zhang et al. teach introducing, by liposome transfection (lipofection), a plurality of oligonucleotide constructs (i.e. first: plasmid) which comprises a promoter, a nucleic acid sequence encoding green fluorescent protein (GFP coding sequence), and a photoremovable (photolabile) cage molecule (photocaging group: DMNPE, BHQ) into HeLa cells (i.e. biological sample) (p. 338, 1st ¶; p. 340, 1st full ¶). Zhang et al. further teach exposing a region of the Hela cells with a spatially constrained light beam (spectrophotometric light beam) to form uncaged (de-caged) oligonucleotide constructs in order to enable synthesis of fluorescent proteins (photocleaved product) and generating a marker (model protein) in the region of the HeLa cell biological sample (p. 338, 1st ¶; p. 339, 1st ¶; Figure 1). The exposing step comprises scanning the HeLa cell biological sample (Figure 3). The biological sample is imaged prior to the exposing step (Figure 3B, 3D) in order to generate an image of the biological sample, and/or after the exposing step (Figure 3C, 3E) in order to generate an image of the biological sample with the marker. The regions of the biological sample have a circular, ovoid, or the shape of a single cell (Figure 3C, 3E). The spatially constrained light beams are generated by a widefield fluorescence microscope or an epi-fluorescence microscope (Figure 3). Accordingly, Zhang et al. appears to read on Applicant’s claimed invention.
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 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.
6. Claims 4-7 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (Chinese Chemical Letters 22: 328-341 (2011)) in view of Hauke et al. (Specific protein labeling with caged fluorophores for dual-color imaging and super-resolution microscopy in living cells. Chem Sci 8: 559-566 (2017)).
Zhang et al. is discussed supra. Zhang et al. differ from the instant invention in failing to teach that the first spatially constrained light beam is a focused light beam. Zhang et al. further does not teach a plurality of second oligonucleotide constructs having a second nucleic acid sequence encoding a second fluorescent protein and a second photoremovable cage molecule; and a second region of the biological sample being exposed with a second spatially constrained light beam to form uncaged second oligonucleotide constructs to synthesize second fluorescent proteins having different fluorescent emission wavelengths.
Hauke et al. teach generating various plasmids (oligonucleotide constructs) that express protein constructs (p. 560, right col. last ¶). Hauke et al. specifically teach introducing, by transfection, a first and a second (i.e. plurality) protein construct into live COS-7 cells (biological sample) which comprise photoremovable (photolabile) photoactivatable caged Halo-fluorophore and TMP fluorophore molecules having different fluorescent emission spectra (spectrally separable) for conjugation with histone proteins H2A and H2B (p. 559, right col. last ¶; p. 561, left col.). Scheme 1 also shows live cell dual-color photoactivation of caged-fluorescein and caged-Q-rhodamine conjugates localized to different cellular compartments. Thereafter, Hauke et al. teach exposing a first region and a second region (Scheme 1) of the live cell sample with a first and a second spatially constrained light beam using fluorescence microscopy (p. 562, left col.). The spatially (i.e. first) constrained light beam is a focused light beam (laser) (Figure 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to incorporate the teaching of Hauke in incorporating dual-color photoactivatable caged fluorophores for conjugation with two different intracellular proteins into the method of Zhang because the teaching of Hauke allows real-time visualization of intracellular protein dynamics in live cells. One of ordinary skill would have been motivated to have incorporate the teaching of Hauke into the method of Zhang because dual-color photoactivatable caged fluorophores enable dual-color super-resolution imaging of intracellular protein dynamics in living cells.
7. No claims are allowed.
Remarks
8. Prior art made of record are not relied upon but considered pertinent to the applicants' disclosure:
Chien et al. (US 20220090007) disclose methods relating to chemical compounds comprising a caged fluorophore moiety conjugated to photosensitizer moiety [0006, 0035, 0036].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAILENE R. GABEL whose telephone number is (571)272-0820. The examiner can normally be reached Monday, Tuesday, and Thursday 5:30 AM to 4:00 PM.
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/GAILENE GABEL/Primary Examiner, Art Unit 1678
March 26, 2026
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