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 .
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.
Priority
The present application claims benefit under 35 U.S.C. 119(e) to provisional application No. 63/332,085, filed 04/18/2022.
Status of the Claims
Claims 1-6, 8-12 and 14-20 are pending; claims 1, 4, 6, 8, 14, 19 and 20 are pending; claims 7, 13 and 21-49 are cancelled; no claims are withdrawn. Claims 1-6, 8-12 and 14-20 are examined below.
Withdrawn Objections/Rejections
The previous objections to claims 4 and 6 are withdrawn in response to Applicant’s amendments to the claims.
The previous rejections of claims under 35 U.S.C. 112(b) are withdrawn in response to Applicant’s amendments to the claims.
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.
Claim(s) 1-2, 4, 6, 8-10 and 13-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akkaya et al., A simple versatile antibody-based barcoding method for flow cytometry, J. Immunol., (2016), 197(5), p. 2027-2038 (IDS entered 07/25/2023).
Akkaya et al. teach a method of producing a plurality of distinguishably fluorescently barcoded particle samples (plurality of cell samples), the method comprising, providing a plurality of samples (see a plurality of samples to be pooled), and labeling the different particle samples (the different cell samples to be pooled) with the unique barcodes, each fluorescent barcode comprising a fluorescently labeled specific binding member that binds a specific marker (see abstract, page 2, paragraph 1, page 4, paragraph 3, page 5, last paragraph, page 6, paragraphs 1-3, fluorochrome-conjugated antibodies to a specific marker). See as cited above, Akkaya et al. teach their method producing a plurality of distinguishably fluorescently barcoded particle (cell) samples (see for example, cited above page 6, strategy was used to barcode six T or B cell populations using a combination of different conjugates).
Regarding the amended claim language, Akkaya as cited in detail above, the method wherein each unique fluorescent barcode comprises a plurality of labeled specific binding members (barcoding six populations of cells, using a combination of 3 different Fl-Ab conjugates, see for example double labeling, page 6, paragraph 2, thereby also addressing claims 8 and 9; each barcode comprises a distinguishably fluorescently labeled specific binding partner (i.e., plural of that binding partner) ).
Regarding claim 2, see Akkaya et al. pool a plurality of samples (see Akkaya at page 6, paragraph 2 and 3, teach pooling for example, 6 cell samples (6 T or B cell populations).
Regarding claim 4, see Akkaya is teaching cellular samples (see as cited above).
Regarding claim 6, Akkaya teach particles (cells) provided in wells of a multi-well plate (see pages 3-4, refer to providing the cells in the wells of an assay plate prior to barcoding).
Regarding claim 10, Akkaya teach fluorochromes that differ by emission maximums (see for example, page 2, paragraph 2).
Regarding claims 13 (see the rejection of claims under 35 U.S.C. 112(b) above, the recited language suggests that those species at claim 14 are considered presently by Applicant to be non-phenotype markers) and 14, Akkaya et al. teach particle (cell) marker including CD44 (see page 6). Further Akkaya performed examples using anti-CD45 (page 10, paragraph 3).
Regarding claim 15, Akkaya teach binding partner that is an antibody (see citations previously above).
Regarding claim 16, see Akkaya et al. teaching a particle sample population (for example at a given well) 2 x 105 – 4 x 105 cells (i.e., 200,000-400,000 particles).
Regarding claim 17, see Akkaya as cited above, teaching pooled samples (pooled distinguishably fluorescently labeled barcoded samples).
Regarding claim 18, see Akkaya is teaching a method, barcoding for use in flow cytometry (see e.g., page 2, paragraph 3, page 4, paragraphs 3 and 4).
Regarding claim 19, Akkaya is teaching their method, assigning cells having the same barcode as from the sample (e.g., Figure 1, page 5, last paragraph).
Regarding claim 20, Akkaya et al. further teach at the end of pages 8-9 describe exposing plurality of cell populations to stimuli (differential treatment, consistent with examples as in Applicant’s originally filed specification, see as discussed above under 35 U.S.C. 112(b).
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.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Akkaya et al.
Akkaya et al. teach pooling plurality of different cell samples, see specifically, Akkaya teach barcoding allows for relatively short acquisition time by decreasing the sample number and therefore offers a practical way to analyze large numbers of samples (page 2, first paragraph).
Akkaya et al. teach their results demonstrate that multiple Fl-Abs can be combined to effectively increase the number of barcodes, using the same Abs, that hypothetically, using all possible combinations of five Fl-Abs, 32 unique barcodes can be generated, the reference teaching achieving this many barcodes depends on the abundance of the target epitope and the capacity of the fly cytometer (See page 7, paragraph 3). Further, we see at Akkaya et al., from merely 3 distinct barcodes, demonstrate the ability to distinguish 6 different cell population samples (referring to page 6, paragraph 2). As a result, 32 barcodes would be expected capable of distinguishing a number of populations as within the claimed range (referring to the claimed range at claim 3).
As such, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Akkaya et al., in order to try to generate up to 32 barcodes as is contemplated by Akkaya (considering Akkaya specifically suggest that this as possible, from this reference alone, it would have been obvious to have tried to generate this many distinct barcodes, thereby making it possible to distinguish at least double this many sample populations). One having ordinary skill in the art would have a reasonable expectation of success given that the reference specifically indicates this as potentially possible (refers to it as a hypothetical).
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Akkaya et al. in view of ThermoFisher. “Flow Cytometry Compensation Beads”, April 22, 2016. Internet Archive, https://web.archive.org/web/20160422050112/https://www.thermofisher.com/us/en/home/life-science/cell-analysis/flow-cytometry/flow-cytometry-calibration/flow-cytometry-compensation-tools.html/. [Accessed 12/05/2025].
Akkaya et al. teach a method substantially as claimed, however fails to teach a plurality of particle samples comprising a plurality of bead samples (claim 5) (rather teaching cells as particles).
ThermoFisher teach compensation beads (antigen coated beads) as a way to mitigate broad emission beads resulting from dyes and fluorescent proteins. Compensation beads are taught as a way to correctly assign fluorescence signal to each fluorophore (see page 1). See also, end of page 1, these beads are taught as an alternative to using samples for setting flow cytometry compensation, and remove inconsistencies due to variations in antigen expression.
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed inventio to have modified the method of Akkaya to further have performed the method on samples comprising particles that are beads (rather than cells) in order to establish compensation for the broad emissions and antigen expression variations (ThermoFisher). One would have been motivated to rely on particles that are beads in order for establishing flow cytometry compensation, considering this was a known technique for mitigating potential discrepancies (see described above). One having ordinary skill would have a reasonable expectation of success because ThermoFisher demonstrate the ability to use beads as particles for methods of flow cytometry, further one expecting success using a known technique for its art intended purpose.
Claim(s) 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Akkaya et al. in view of McKinnon, Multiparameter Conventional Flow Cytometry, Methods Mol. Biol., 1678, (2018), p.139-150.
Akkaya et al. teach a method substantially as claimed, however fails to teach the labeled binding members excitable by a common light source (claim 11), namely a laser (claim 12).
However, see further McKinnon, McKinnon teach multicolor flow cytometry as a useful technique for examining mixture populations of cells (consistent with Akkaya, cited above). McKinnon teach with the advent of new flow cytometers that can detect more fluorochromes on each sample by using tandem dyes, multiple laser configurations, digital electronics, and software generated compensation matrices. McKinnon teach there can be up to eight fluorochromes detected off a single laser and the separation between fluorochromes is narrower than on older 4-6 color instruments (see page 2, first full paragraph).
It would have been prima facie obvious to one having ordinary skill in the art, to have modified the method as taught by Akkaya et al., in order to employ a single laser as a source (and as such, to rely on fluorochromes detectable off that single source), as an obvious matter of a known technique for performing flow cytometry. In particularly the prior art contained knowledge of the base method comprising multiple different fluorescent barcoded binding reagents for detecting pluralities of cell samples (Akkaya et al.), further through advance of the technology in the art, one can detect multiple fluorochromes off of a single laser (McKinnon). One having ordinary skill in the art would have recognized that by applying such advancements in the art (relative to the technology/fluorochromes) a predictable result would be achieves (namely distinguishable detection of the different fluorochromes), further one having ordinary skill in the art would appreciate a single laser as a more compact system (since there is no need for multiple different laser sources). One having ordinary skill would have a reasonable expectation of success employing known techniques (like a single laser applicable to many similarly excitable labels, as described as known in the art by McKinnon) for the prior art recognized intended purposes.
Response to Arguments
Applicant's arguments filed 03/12/2026 have been fully considered but they are not persuasive for the following reasons:
Regarding the objections to claims 4 and 6 (remarks page 5), see as indicated in detail above, the objection is withdrawn in response to amendments to the claims.
Regarding the rejections of claims under 35 U.S.C. 112(b), see as indicated in detail previously above, the rejections are withdrawn in response to Applicant’s amendments to the claims.
Regarding the rejections of claims under 35 U.S.C. 102, Applicant refers to the amendments to the independent claim (specifically, incorporating the limitations of previous claim 7, see remarks page 6). Applicant refers to Figure 1 of the originally filed specification, and remarks that samples are barcoded using four different antibodies with four different targets, arguing this is in contrast to Akkaya et al. which relies on a single antibody conjugated to different fluorochromes.
Claim 1 recites “labeling different particles samples of the plurality with unique fluorescent barcodes, wherein a given fluorescent barcode comprises a plurality of distinguishably fluorescently labeled specific binding members that each specifically bind to a different particle marker”, this language still encompasses, for example, every different specific binding partner labeled with a distinct fluorescent label. Every fluorescently labeled binding partner is not one single binding partner, but rather a plurality of that same binding partner, and that same label (i.e., plural binding partner 1 with a first fluorescent label, plural binding partner 2 with a second fluorescent label, etc.). Akkaya et al. is further teaching examples for example that demonstrate barcoding six populations of cells, using a combination of 3 different Fl-Ab conjugates, see for example double labeling, page 6, paragraph 2 (see also described at Figure 1a of Akkaya, multiple different binding partners with distinct labels can be bound a single cell). See, therefore, it is also the case that Akkaya’s method of barcoding is similarly using plurality of different labeled antibodies (antibodies to different targets) to multiply label a targeted particle (the cell being the particle). Claim 1 does not recite a limitation that requires a given particle to be identified or bind with 4 distinct binding partner/label combinations (does not require that a given barcode require at least 4 labels). For these reasons, Applicant’s remarks at page 6, that Akkaya at most discloses samples barcoded with only a single antibody with a single target, is not persuasive.
Regarding the rejection of claims under 35 U.S.C. 103 (remarks page 7-8), Applicant further refers to arguments specific to Akkaya as discussed above, however for the reasons as discussed above, Applicants arguments are not persuasive.
For all of these reasons, Applicant’s arguments are not persuasive, and the rejections are maintained as indicated above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN J MARCSISIN whose telephone number is (571)272-6001. The examiner can normally be reached M-F 8:00am-4:30pm.
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, Bao-Thuy Nguyen can be reached at 571-272-0824. 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.
/ELLEN J MARCSISIN/Primary Examiner, Art Unit 1677
Prosecution Insights