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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/14/2026 has been entered.
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Claims 1-6, 8-12 and 14-20 are pending; claim 1 is amended; claims 7, 13 and 21-49 are cancelled; no claims are withdrawn.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Withdrawn Objections/Rejections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 rejections of claims under 35 U.S.C. 102 and 35 U.S.C. 103, citing Akkaya et al. as primary reference, are withdrawn in response to Applicant’s amendments to the claims and remarks filed 08/14/2026.
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 11, 12 and 18 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.
Claims 11 and 12 depend from a canceled claim (see claim 11 depends from claim 7 which is canceled; claim 12 depends from 11), and as such are indefinite because it is not clear what limitations are specifically encompassed by the claims.
Claim 18 recites the limitation "the pooled sample" in line 2. There is insufficient antecedent basis for this limitation in the claim. See specifically claim 18 depends from claim 16, and claim 16 depends from claim 1. The first instance of sample pooling is only recited at claim 17. As such, it is not readily clear what pooled sample the limitation “the pooled sample” of claim 18 is referencing.
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) 1-5, 8-10, 15, 16, 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Evans et al., WO2014/188170A1.
Evans et al. teach methods comprising producing a plurality of distinguishably fluorescently barcoded particle samples, the method comprising providing a plurality of particle samples (i.e., different/distinct cells in a population (heterogeneous mixture) of cells (see e.g., page 2, line 10 to page 4, line 30), labeling each particle sample of the plurality with a unique fluorescent barcode, each particle (cell of a given sample) comprises a plurality of different particle markers (i.e., each cell of a given sample/type, has a plurality of different antigens expressed on its surface, and each different labeled antibody binds to its specific antigen). The combination of different fluorescently labeled antibodies makes up the barcode (the combination represents the panel of antigens that identifies the particle, i.e., cell, as a specific type/phenotype). See for example, using FACS with reagent for detecting CD73, CD90, CD105 (and not displaying CD14, CD19, CD34 and CD45) as MSCs (see page 4, lines 17-30; see also page 5, lines 22-32; page 6, lines 1-9). See also page 5, using 10 fluorophore panel, 7 fluorophore panel to indicate MSCs, and 3 to identify subtypes (page 5, 14-17). See also page 8, lines 24-30 (and page 3, lines 1-8), usable to identify and isolate a variety of specific cell types using surface marker patterns.
Regarding claim 4, see the combination of the cited art above is teaching particles that are cells.
Regarding claim 5, see Evans at page 22, lines 10-20 for example, describing the use of beads for compensation control.
Regarding claims 8-10, see as cited above, Evans is describing panels of binding members comprising distinguishable fluorescent labels (e.g., 10 fluorophore panels, 7 fluorophore panels). See also Evans describing difference in terms of brightness and emission (e.g., page 7, line 25, page 8, first paragraph, page 14, line 16; see also page 2, lines 24-26).
Regarding claim 14, see Evans teach markers including CD44, CD45 (see page 10 for example, lines 6-11).
Regarding claim 15, Evans teaching antibody specific binding member (see as cited above, and e.g., page 9 and also page 11, line 18).
Regarding claim 16, Evans teaches particle samples having the same number of cells, see for example, during acquisition, counting cell events up to 100,000 particles/cells (page 23).
Regarding claim 18, Evans is teaching flow cytometry (see as cited previously, and at end of page 22 to page 24).
Regarding claim 19, Evans is teaching identifying and isolating a cell sample based on it’s assigned panel (combination of fluorescently labeled surface antigens specific to that type), and as such is assigning cells having the same “barcode”, i.e. combination of fluorophores, as from the sample sample/type.
Regarding claim 20, see Evans does further teach stimulating or inducing to express a placeholder marker.
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) 2, 3, 6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Evans et al., in view of 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).
Regarding claims 2 and 3, the limitation appears to describe the number of distinct cell types (i.e., “particle samples” referring to different type of cells). Evans et al. describe being able to use many different cell surface antigens, and describe, for example, 5 different specific panels for different cell types (page 4, lines 5-10). See also end of page 8 to page 9, Evans describe the methods can be used to identify and isolate a variety of cell types, using different cell surface marker patterns for different cells, see further using up to 5000 surface markers. Evans does also considered combining cell from different samples (see page 3, line 21, isolate/capture cell from a 1000s tissue sample).
However, Evans does not clearly teach a plurality of particle samples (different types of cells in a heterogenous mixture) that is between 5 to 500 (claim 2), or 50-400 (claim 3).
Akkaya et al. is similar to Evans in that Akkaya is teaching a method of producing a plurality of distinguishably fluorescently barcoded particle samples (plurality of cell, i.e., particle, samples), the method comprising, providing a plurality of samples (see a plurality of different cells expressing different surface antigens, to be labeled, see abstract, and page 6 experiments, also as shown at Figure 1), see Akkaya is teaching labeling each of the different particle (cell) samples (the different cell samples to be pooled) with the unique barcodes (as cited page 6 and Figure 1, different combinations of detectable markers), 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).
Akkaya et al. teach flow cytometry as widely used and applicable for research and diagnostics including phenotyping cell subsets and identifying changes in protein expression, page 1, first paragraph to page 2 (see consistent with Evans et al.), that barcoding cells in multiple different samples and combining prior to staining and data acquisition by flow cytometry is an efficient strategy both to achieve uniform staining of pooled individual samples and to improve accuracy by eliminating sample to sample variation, that this strategy allows for short acquisition time by decreasing the sample number and offers a practical way to analyze large numbers of samples.
It would have been prima facie obvious to one having ordinary skill in the art to have applied the pooling strategy of Akkaya et al. when performing the methods of Evans et al., namely by pooling different samples, identifying and isolating cells from pooled sample populations because this strategy is recognized in the art, applicable to methods utilizing multi-marker approach and flow cytometry, as efficient, and as capable of improving accuracy by eliminating sample to sample variation, and by decreasing acquisition time by decreasing het number or samples that need to be run (Akkaya, in reference to multi-labeled approach for pooled samples). One having ordinary skill in the art would have a reasonable expectation of success performing the method of Evans on pooled samples given that both prior art references are relevant to multiplex labeling of cells analyzed by flow cytometry, further because the art recognized this strategy as a practical away to analyze large numbers of samples (Akkaya).
Regarding the recited ranges, namely it would have been further obvious to have arrived at a number of samples between 5-500 particle (cell) samples (claim 2), and 40-400 particle (cell) samples (claim 3) as an obvious matter of combining different possible combinations of surface antigens/binding partners specific to the different surface antigens to identify a desired cell type. Akkaya at page 6, paragraph 2 and 3, teach pooling for example, 6 cell samples (6 T or B cell populations). As noted above, 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).
Also as noted above, Evans is teaching the ability to use up to 5000 surface markers for identifying and detecting cells. 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 Evans et al. in view of Akkaya et al., in order to try to generate up to, as an example, 32 barcodes as is contemplated by Akkaya (considering Akkaya specifically suggest that this as possible, from this reference alone, or more, given that Evans teach up to 5000 surface markers could be used. It would have been obvious to have tried to generate large numbers of distinct barcodes, thereby arriving at values within the disclosed ranges, depending on the surface antigens expressed to a desired cell to be identified, thereby making it possible to distinguish at least as many different types/populations as recited at the present claims (by the claimed ranges), one motivated to do so because the prior art supports pooling samples and distinguishing different populations in an interest to reduce sample to sample variation and improve efficiency.
One having ordinary skill in the art would have a reasonable expectation of success given that the references specifically support the potential to identify and isolate large numbers of possible types/subtypes hypothetically.
Regarding claim 6, Evans et al. and the cited art fails to teach providing the cells in the well of multi-well plate, however, see 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/labeling). It would have been prima facie obvious to one having ordinary skill in the art to have modified the methods of Evans to first provide the cells in the wells of an assay plate as a strategy for labeling (an obvious matter of a known technique applied to a known method). One having ordinary skill would have a reasonable expectation of success because like Evans et al., Akkaya teach subsequently analyzing labeled cells using flow cytometry.
Regarding claim 17, see as cited in detail above, Evans as modified by Akkaya et al. directs one to pool fluorescently labeled samples to produce a pooled single sample.
Claim(s) 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Evans et al.1 in view of McKinnon, Multiparameter Conventional Flow Cytometry, Methods Mol. Biol., 1678, (2018), p.139-150.
Evans 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 Evans 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 labeled binding reagents for detecting pluralities of cell samples (Evans 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 08/14/2026 have been fully considered but they are not persuasive for the following reasons.
Regarding the rejection of claims under 35 U.S.C. 102, see remarks page 5-6, Applicant refers to amendments to the claims and further argues that Akkaya does not anticipate the claimed invention (page 6). Specifically, Applicant argues that Akkaya is cited as disclosing the use of multiple antibodies to label samples; namely, anti-B220 for B cells and anti-CD4 for T cells. Applicant asserts, However, Akkaya clearly describes the method as "a simple, versatile barcoding strategy that relies on combinations of a single antibody conjugated to different fluorochromes" (Abstract; see also Introduction last para.), and asserts that the reference
must be considered in light of Akkaya's own unambiguous statement (this statement cited by Applicant at the abstract) that their barcoding strategy uses only a single antibody, arguing that there is no other teaching showing the simultaneous labeling of a single cell with different antibodies as presently claimed.
Applicant further argues (page 6 of remarks) that Akkaya, as described in the Abstract and Introduction, the "different Fl-Abs” refers only to one type of antibody (i.e., having the same target), wherein the individual antibodies are labeled with different fluorochromes. Akkaya at most discloses antibodies that bind to a single cell surface marker for each type of cell (e.g., anti-B220 for B cells, anti-CD4 for T cells). Applicant asserts Akkaya does not disclose the use of any other antibodies for labeling cells, and therefore as anti-B220 is specific for B cells and anti-CD4 is specific for T cells, each cell in Akkaya is labeled with only one type of antibody. In other words, Akkaya teaches a method in which one cell is barcoded with differently labeled antibodies with the same target on the cell. Applicant argues, that the present claims specify a method in which one cell is barcoded with differently labeled antibodies with multiple targets on the cell, and as such, Akkaya therefore does not teach the method of the present claims.
In response see as indicated above, the previous grounds of rejection, citing Akkaya et al. as primary reference, are withdrawn. See new grounds of rejection set forth in detail above (citing Evans et al., WO2014/188170A1).
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.
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/ELLEN J MARCSISIN/Primary Examiner, Art Unit 1677
1 Presently recited, claim 11 is recited as depending from 7; however, 7 is canceled, as such for the purpose of examination under 35 U.S.C. 103, claim11 is considered to depend from claim 1.
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