Office Action Predictor
Application No. 17/965,367

DEVICES AND METHODS FOR INCREASING THROUGHPUT OF FLOW-BASED ELECTROPORATION SYSTEMS

Non-Final OA §103§112
Filed
Oct 13, 2022
Examiner
MCGUIRK, JOHN SCHUYLER
Art Unit
1798
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Cytequest, INC.
OA Round
1 (Non-Final)
79%
Grant Probability
Favorable
1-2
OA Rounds
3y 2m
To Grant
99%
With Interview

Examiner Intelligence

79%
Career Allow Rate
162 granted / 206 resolved
Without
With
+24.8%
Interview Lift
avg trend
3y 2m
Avg Prosecution
33 pending
239
Total Applications
career history

Statute-Specific Performance

§101
3.8%
-36.2% vs TC avg
§103
39.8%
-0.2% vs TC avg
§102
15.9%
-24.1% vs TC avg
§112
33.3%
-6.7% vs TC avg
Black line = Tech Center average estimate • Based on career data

Office Action

§103 §112
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. Election/Restrictions Applicant's election with traverse of Group IV, Claims 37-43 in the reply filed on 9/29/2025 is acknowledged. The traversal is on the ground(s) that 1) the Office has not shown two-way distinctiveness of inventions between the related process inventions, and 2) as the Office classified the different Groups with the same classification group C12N 13/00, there is no undue examination burden for searching the different Groups. Without addressing these arguments, the Examiner notes that all prior pending claims have been canceled, and new claims 48-67 all belong under the same chain of dependency, i.e. claims 49-67 all depend directly or indirectly from claim 48. Therefore, Applicant’s traversal of the restriction requirement is moot, and newly added claims 48-67 have been examined. Claim Status Claims 48-67 are newly added, and are pending and examined. Claims 1-47 are canceled. Information Disclosure Statement The information disclosure statement (IDS) received on 12/29/2022 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. 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. Claims 55-56 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. The term “short-duration, high-amplitude segment followed by a long-duration, low-amplitude segment” in claim 55 is a relative term which renders the claim indefinite. The terms “short-duration, high-amplitude” and “long-duration, low-amplitude” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what amplitude of voltage would need to be present to be considered high-amplitude or low-amplitude, as well as what duration of voltage would need to be present to be considered short-duration or long-duration . Examiner’s Note : in order to overcome the above 112(b) rejection, the Examiner suggests amending the claim to recite: “wherein the voltage comprises a first segment followed by a second segment, the first segment having a shorter duration and higher amplitude relative to the second segment”. The term “short-duration, high amplitude positive segment followed by a long-duration, low-amplitude negative segment” in claim 56 is a relative term which renders the claim indefinite. The terms “short-duration, high-amplitude” and “long-duration, low-amplitude” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what amplitude of voltage would need to be present to be considered high-amplitude or low-amplitude, as well as what duration of voltage would need to be present to be considered short-duration or long-duration. Examiner’s Note : in order to overcome the above 112(b) rejection, the Examiner suggests amending the claim to recite: “wherein the voltage comprises a first positive segment followed by a second negative segment, the first segment having a shorter duration and higher amplitude relative to the second segment”. The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. Claim 50 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Regarding claim 50, the claim recites that the channel has a channel height (H) and a channel width (W). However, the channel was previously recited in claim 48, on which claim 50 depends, and the channel will inherently have a channel height and channel width. Therefore, claim 50 does not in any way further limit the subject matter of claim 48, and merely assigns the channel height a variable (H) and the channel width a variable (W) . Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. 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 s 48-55, 57-65, and 67 are rejected under 35 U.S.C. 103 as being unpatentable over Corso (US Pub. No. 2017/0283761; already of record on the IDS received 12/29/2022) in view of Huang et al. (WO Pub. No. 2006/112870; hereinafter Huang) . Regarding claim 48, Corso discloses a method of electroporation using a microfluidic device ([0009], [0022]) . The method comprises: flowing a liquid through a channel in a microfluidic device in a flow direction, the fluid including a plurality of cells and molecules, wherein the channel comprises a channel height and a channel width, the ratio of the channel height to the channel width is less than about 0.1 ([0009], [0022], [0029], the channel is 2 cm wide and 100 micrometers high, so the ratio of channel height to channel width is .05) . Generating a time-dependent electric field across the channel and perpendicular to the flow direction using electrodes arranged transverse to the direction of flow ([0023], see Fig. 3 at electrodes 101, 102 arranged perpendicular to flow direction in flow channel 106, [0042] , [0027], see also Fig. 6 at multiple electrodes 101 arranged opposite multiple electrodes 102 and perpendicular to the flow direction ) . Coordinating a flow speed of the liquid through the channel and a waveform of the time- dependent electric field such that the molecules are moved into the plurality of cells after being subject to the time-dependent electric field ([0009], [0022]) . Corso fails to explicitly disclose that the polarity of the time-dependent electric field is configured to alternate as a function of time, and wherein a waveform of the time-dependent electric field comprises a series of alternating positive and negative peaks. Huang is in the analogous field of devices and methods for controlled electroporation (Huang [0007]) . Huang teaches a time-dependent electric field that is configured to alternate as a function of time, and wherein a waveform of the time-dependent electric field comprises a series of alternating positive and negative peaks ( Huang; [00 89 ], see Fig. 4 d ) . It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of Corso with the teachings of Huang so that the polarity of the time-dependent electric field is configured to alternate as a function of time, and wherein a waveform of the time-dependent electric field comprises a series of alternating positive and negative peaks, as Huang teaches that such a time-dependent electric field can allow measurement of the impedance of non-electroporated cells, initiate electroporation, and maintain electroporation (Huang; [00 89 ], see Fig. 4 d ) . Regarding claim 49, modified Corso discloses the method of claim 48. Corso further discloses selecting parameters for the electroporation, the parameters including: a volume (V) of the liquid to be electroporated; and a time (T) to perform the electroporation in ([0029]) . Further, even if Corso is not considered to teach selecting parameters for the electroporation, the parameters including: a volume (V) of the liquid to be electroporated; and a time (T) to perform the electroporation in, Huang further teaches selecting a volume (V) of liquid to be electroporated, and a time (T) to perform the electroporation in (Huang; [0093], see also Fig. 4 d , which shows the voltage varies over time ) . It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of modified Corso with the further teachings of Huang to include selecting parameters for the electroporation, the parameters including: a volume (V) of the liquid to be electroporated; and a time (T) to perform the electroporation in, in order to optimize throughput of the electroporation process. Regarding claim 50, modified Corso discloses the method of claim 49. Modified Corso further discloses that the channel has a channel height (H) and a channel width (W) (Corso [0029]) . Regarding claim 51, modified Corso discloses the method of claim 50. Modified Corso further discloses that the flow speed is a fluid flow speed (S), and a relationships exists where H x W x S equals the throughput of the electroporation, and wherein the throughput is defined as the volume of the liquid (V) to be electroporated per the time (T) (Corso; [0022], [0029]. Further, the relationship where H x W x S intrinsically equals the throughput of the electroporation, which will also be equal to the volume of the liquid to be electroporated per the time) . Regarding claim 52, modified Corso discloses the method of claim 51. Modified Corso fails to explicitly disclose that the channel width and the fluid flow speed are proportionally modified by a same factor to maintain a same average linear flow velocity of the plurality of cells. However, with regards to the channel width and the fluid flow speed being proportionally modified by a same factor to maintain a same average linear flow velocity of the plurality of cells, Corso teaches modifying a channel width of the flow channel to achieve a desired flow rate of cells through the channel (Corso [0024]) . It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of modified Corso that the channel width and the fluid flow speed are proportionally modified by a same factor to maintain a same average linear flow velocity of the plurality of cells, in order to maintain the average linear flow velocity at velocity optimized for electroporation. Regarding claim 53, modified Corso discloses the method of claim 48. Modified Corso further discloses that the microfluidic device comprises 2-10 electrodes (Corso; see Fig. 6 at multiple electrodes 101 arranged opposite multiple electrodes 102 and perpendicular to the flow direction, where there is a total of 4 electrodes) . Regarding claim 54, modified Corso discloses the method of claim 48. Modified Corso further discloses that the channel comprises multiple pairs of electrodes to apply the time-dependent electric field (Corso; see Fig. 6 at multiple electrodes 101 arranged opposite multiple electrodes 102 and perpendicular to the flow direction) . Regarding claim 55, modified Corso discloses the method of claim 48. Modified Corso fails to explicitly disclose that the time-dependent electric field is generated by a voltage, wherein the voltage comprises a short-duration, high-amplitude segment followed by a long-duration, low-amplitude segment. However, Huang further teaches that the time-dependent electric field is generated by a voltage, wherein the voltage comprises a short-duration, high-amplitude segment followed by a long-duration, low-amplitude segment (see Huang Fig. 4 d , where 39 is the short-duration, high amplitude segment and 40 is the long-duration, low-amplitude segment ) . It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of modified Corso with the further teachings of Huang so that the time- dependent electric field is generated by a voltage, wherein the voltage comprises a short-duration, high-amplitude segment followed by a long-duration, low-amplitude segment, as Huang teaches that such a time-dependent electric field can allow measurement of the impedance of non-electroporated cells, initiate electroporation, and maintain electroporation (Huang; [0089], see Fig. 4d) . Regarding claim 57, modified Corso discloses the method of claim 48. Modified Corso further discloses that the microfluidic device comprises one inlet (Corso; [0033], see Fig. 3 at inlets 104, 105) . Regarding claim 58, modified Corso discloses the method of claim 48. Modified Corso further discloses that the microfluidic device comprises at least two inlets (Corso; [0033], see Fig. 3 at inlets 104, 105) . Regarding claim 59, modified Corso discloses the method of claim 48. Modified Corso further discloses that the channel comprises one or more electrodes disposed on each of opposite sides of the channel, wherein a space is defined between the electrodes (Corso; [0023], see Fig. 3 at electrodes 101, 102 arranged perpendicular to flow direction in flow channel 106, [0042], [0027], see also Fig. 6 at multiple electrodes 101 arranged opposite multiple electrodes 102 and perpendicular to the flow direction) . Regarding claim 60, modified Corso discloses the method of claim 59. Modified Corso further discloses that the plurality of cells pass through the space in a single layer (Corso [0021]) . Regarding claim 61, modified Corso discloses the method of claim 48. Modified Corso further discloses that the plurality of cells are selected from the group consisting of lymphocytes, T cells, primary T cells, CHO, Hela, CD8+, CD4+, CD3+, PBMC, Huh-7, Renca, NIH 3T3, Primary Fibroblasts, hMSC, K562, Vero, HEK 293, A549, B16, BHK- 21, C2C12, C6, CaCo-2, CAP-T, COS-1, Cos-7, CV-1, DLD-1, H1299, Hep G2, HOS, Jurkat, L5278Y, LNCaP, MCF7, MDA-MB-231, MDCK, Mesenchymal Stem Cells, Min-6, Neuro2a, NIH3T3L1, NSO, Panc- PC12, PC-3, RBL, RLE, SF21, SF9, SH-SY5Y, SK-MES-1, SK-N- SH, SL3, SW403, THP-1, U205, U937, and combinations thereof ( Corso [0074]) . Regarding claim 62, modified Corso discloses the method of claim 48. Modified Corso further discloses that the microfluidic device further comprises a flow sensor configured to measure the flow speed and communicate with a feedback control mechanism (Corso [0062]) . Regarding claim 63, modified Corso discloses the method of claim 48. Modified Corso further discloses that the channel has a channel width that is constant across a length of the channel (Corso [0026]) . Regarding claim 64, modified Corso discloses the method of claim 48. Modified Corso further discloses that the channel has a channel width that varies across a length of the channel (Corso [0026]) . Regarding claim 65, modified Corso discloses the method of claim 48. Modified Corso further discloses that the molecules are selected from the group consisting of DNA, RNA, protein, peptide, peptidomimetic, beads, dyes, or combinations thereof (Corso [0075]) . Regarding claim 67, modified Corso discloses the method of claim 48. Modified Corso further discloses that the molecules are charged (Corso [0022]) . Claim 66 is rejected under 35 U.S.C. 103 as being unpatentable over Corso in view of Huang as applied to claim s 48-55, 57-65, and 67 above, and further in view of Bernate et al. (US Pub. No. 2019/0100774; hereinafter Bernate). Regarding claim 66, modified Corso discloses the method of claim 48. Modified Corso further discloses that the molecules comprise mRNA (Corso [0073]) . Modified Corso fails to explicitly disclose that the mRNA is electroporated into at least a portion of the plurality of cells with a transfection efficiency of greater than 95% and less than 2% in loss of cell viability. Bernate is in the analogous field of electroporation devices (Bernate [0005]) . Bernate teaches molecules that are electroporated into at least a portion of a plurality of cells with a transfection efficiency of greater than 95% and less than 2% in loss of cell viability (Bernate; [0014], [0091] ) . It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of modified Corso with the teachings of Bernate so that the mRNA is electroporated into at least a portion of the plurality of cells with a transfection efficiency of greater than 95% and less than 2% in loss of cell viability. The motivation would have been to be able to provide a high throughput of transfection, while minimizing damage to the transfected cells. Allowable Subject Matter Claim 56 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: Claim 56 would be allowable for reciting that the time-dependent electric field is generated by a voltage, wherein the voltage comprises a short-duration, high amplitude positive segment followed by a long-duration, low-amplitude negative segment. Corso, Huang, Bernate, and Chang et al. (US Pub. No. 2019/0040350; hereinafter Chang) teach a method similar to that claimed. However, Corso, Huang, Bernate, and Chang do not teach, either alone or in combination with the prior art, that the time-dependent electric field is generated by a voltage, wherein the voltage comprises a short-duration, high amplitude positive segment followed by a long-duration, low-amplitude negative segment. Specifically, although Huang, which is considered to be the closest prior art to the claimed subject matter in claim 56, teaches a voltage that comprises a short-duration, high amplitude segment followed by a long-duration, low-amplitude segment ( see Fig. 4d, where 39 is the short-duration, high amplitude segment and 40 is the long-duration, low-amplitude segment ) , Huang does not teach or suggest, either alone or in combination with the prior art, that the short-duration, high amplitude segment is positive, and that the long-duration, low-amplitude segment is negative. Further, modifying Huang so that the short-duration, high amplitude segment is positive, and that the long-duration, low-amplitude segment is negative, would constitute impermissible hindsight. See MPEP 2142. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT John McGuirk whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1949 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 8am-530pm . 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, FILLIN "SPE Name?" \* MERGEFORMAT Charl es Capozzi can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 270-3638 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOHN MCGUIRK/ Examiner, Art Unit 1798
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Prosecution Timeline

Oct 13, 2022
Application Filed
Dec 16, 2025
Non-Final Rejection — §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
79%
Grant Probability
99%
With Interview (+24.8%)
3y 2m
Median Time to Grant
Low
PTA Risk
Based on 206 resolved cases by this examiner