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 .
Election/Restrictions
Applicant's election with traverse of Inventive Group II in the reply filed on 04/03/2026 is acknowledged. The traversal is on the ground(s) that the groupings are under the same classification and do not provide excessive search burden. This is not found persuasive because while all three groupings are under the same classification, the inventions require a different field of search and are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112(a).
Inventive group I fails to require use of pulsed laser light imaging, giving a different search burden to inventive group II. In addition, inventive group III requires a specific series of steps for storing said data collected via imaging, which is not required by either inventive group I or II. Therefore, each inventive group has unique features requiring entirely different fields of search such as data storage and pulse laser imaging.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-14 and 33-41 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventive group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/03/2026.
Claim Interpretation
Claim 15 states a series of steps pertaining to the claimed method of imaging a tissue sample, but fails to specify an order in which the steps are to occur. Therefore, art reading on the method steps, regardless of the order presented in the prior art, will be considered to satisfy the method of claim 15. Furthermore, claim 15 requires contacting the tissue sample with a fluorescent dye in an alcohol solution and also requires the clearing agent to be removed via contacting the undyed tissue sample with alcohol. As contacting the tissue sample with the fluorescent dye in an alcohol solution would be both contacting the undyed tissue and contacting said tissue with alcohol, the step of contacting the tissue sample with a fluorescent dye in an alcohol solution would inherently work to clear the clearing solution from the tissue.
Claim Rejections - 35 USC § 102
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 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) 15-21 and 27-32are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Torres et al. (US 2016/0003716 A1)
Regarding claim 1: Torres et al. discloses methods of processing and imaging a histological sample (0053) which further comprises the step of clearing the tissue with clearing agents (0055). Furthermore, the tissue is imaged via pulsed fiber laser (0013) and in an embodiment, second harmonic generation (hereafter SHG) is used to generate an image of the tissue. (0011)
Torres details an embodiment of the invention which makes use of fluorescent dye which may be used after the sample is fixed (0051) and further details an embodiment in which the cleared tissue is placed in fixative prior to being exposed to a dehydration agent in preparation for clearing. (0055) Lastly, Torres discloses it is possible to either combine the fixation and exposure to a fluorescent dye or perform one after the other, and makes it clear that the fluorescent dye may be applied at any point of the process (during fixation, during dehydration, etc). (0058)
Torres discloses that the fluorescent dye may be added during the dehydration step (0058) and that a solution combining at least one fluorescent dye and a dehydrating solution may be used (0066). Torres further details that alcohols are useful for dehydration of tissue samples (0072), which inherently means that the tissue sample is contacted with one or more fluorescent dyes in an alcohol solution.
Regarding claim 16: Torrens discloses an embodiment of the invention which uses an optical sectioning microscope. (0011)
Regarding claim 17: Torrens teaches an embodiment of the invention in which the clearing solution has a refractive index of about 1.33 to 1.49, reading on claim 17 regarding “about 1.47 or more”. (0067)
Regarding claim 18: Torres teaches an exemplary embodiment of the invention depicted in Figure 1 (0017) which, as shown below, can be seen to dictate the fixation step prior to the clearing step:
PNG
media_image1.png
632
714
media_image1.png
Greyscale
Regarding claim 19: Torres discloses an embodiment of the invention which uses formalin as the fixation solution. (0055)
Regarding claim 20: Torres details an embodiment of the invention which uses a short-pulse laser with a center wavelength adjusted to 800 nM, which reads on about 780 nM.
Regarding claim 21: Torrens discloses an embodiment of the invention which uses one objective lens and mirrors to reflect the light collected to multiple detectors in order to generate SHG imaging. (0101)
Regarding claim 27: Torrens discloses embodiments of the invention in which a fluorescent nuclear dye is used and in which a fluorescent protein dye is used. (0078)
Regarding claim 28: Torres discloses an embodiment of the invention which uses DAPI as the fluorescent nuclear dye. (0059, 0060) Torrens further discloses an example of the invention which uses DAPI. (0115)
Regarding claim 29: Torres discloses use of eosin as one of the fluorescent dyes of the claimed invention. (0010)
Regarding claim 30: Torres discloses embodiments of the invention which use methanol and acetic acid as clearing agents. (0072)
Regarding claim 31: Torres discloses a protocol in which a biopsy sized tissue specimen is incubated in methacarn at 45C for 60 minutes. (0131) This reads on the range of between about 37C and about 50C.
Regarding claim 32: Torres discloses embodiments of the invention which use a confocal microscope, multiphoton microscopy, selective plane illumination microscope, or deconvolution microscopy. (0074)
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.
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) 22-26 are rejected under 35 U.S.C. 103 as being unpatentable over Torres et al. (US 2016/0003716 A1) in view of Richardson et al. (TISSUE CLEARING, 2021)
The teachings of Torres are discussed above. Torres fails to teach tissue clearing prior to exposure to a dye.
Regarding claim 22: Torres teaches use of methanol as a clearing agent (0055) and states use of a clearing agent which has a refractive index higher than that of water, effectively working to replace said water with the clearing solution and comprising a higher refractive index from about 1.4-1.6. (0067) Torres fails to teach a protocol which does not use fluorescent dyes, often instead combining the step of dyeing with the step of fixing the solution (0074).
Richardson teaches an overview of different tissue clearing strategies so as to tailor a protocol for tissue clearing to the user. (Pg 2, Abstract) Richardson teaches that while methanol is typically used for the dehydration step, methanol will quench fluorescent proteins by removing water molecules from the sample which conformationally changes the structure of the fluorescence dye, eliminating or lessening its emission. (Pg 8, Delipidation) As such, one skilled in the art would choose to perform the incubation in methanol for the clearing process prior to exposing the sample to any sort of dye.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the protocol taught by Torres of combining the dyeing step with the fixation step by instead performing the dyeing step after tissue clearing is complete as taught by Richardson. One skilled in the art would have been motivated to do so and had a reasonable expectation of success based on the teachings of Richardson, who state that use of methanol (as is required by claim 22) will quench fluorescent proteins and conformationally change the structure of the dye, effectively reducing or eliminating fluorescence.
Regarding claim 23: Torres teaches a protocol for tissue clearing which uses a mixture of benzyl alcohol and benzyl benzonate at a 1:2 ratio. (0115)
Regarding claim 24: Torres fails to teach use of ethyl cinnamate for the process of tissue clearing.
Richardson teaches that the toxicity of solvents commonly used in tissue clearing remains a concern for researchers and that ethyl cinnamate is a less toxic clearing agent which shows equivalent clearing effects and prolonged fluorescent protein emission relative to more toxic solvents such as BABB solution. (Pg 13, Solvent-based solutions)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Torres with the teachings of Richardson to create a tissue clearing process which uses ethyl cinnamate as the clearing solution. One skilled in the art would have had motivation and a reasonable expectation of success based on the teachings of Richardson, who teaches that ethyl cinnamate works as well as more toxic solvents such as BABB solution while being less toxic for researchers to work with.
Regarding claims 25 and 26: Torres teaches in Example 4 an initial incubation step in methacarn for one hour, reading on the time range as specified in claim 25 followed by an incubation in BABB solution for 20 minutes, reading on the time range as specified in claim 26. (0133)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNA M THUESON whose telephone number is (571) 272-3680. The examiner can normally be reached M-F 7:30-5 EST. 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, Tracy Vivlemore, can be reached on (571) 272-2914. 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.
/HANNA MARIE THUESON/ Examiner, Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
Prosecution Insights