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 .
The Response of 3 June 2026 has been entered.
Claims 1-40 are currently pending.
Election/Restrictions
Applicant’s election of the species of: (a) observation as the basis for separating the column in claim 3; a dye as the means for observing the separating and reference columns in claims 4-5; application of an electric potential as the means for separating biomolecules by MW; a protein as the biomolecule; a solid separation matrix comprising a polyacrylamide gel as the separating medium; (a), (b) or (c) in claim 12; a microparticle as the species of material contacting the fractions; and a distinct fluorescent label as the species of microparticle in the reply filed on 3 June 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 23-25 and 27-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3 June 2026.
Claims 1-22 and 26 are considered here with respect to the elected species.
Claim Objections
Claims 6-22 and 26 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim (claims 6, 7, 10, 11, 13, 18, 19, 21, 22 and 26) cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Claims 6-22 and 26 are examined below based on dependency from claim 1 or the earliest of the claimed dependencies.
Claim Rejections - 35 USC § 112(b) (indefiniteness)
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.
Claims 11-22 and 26 are rejected under 35 U.S.C. 112(b) 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.
Regarding claim 11, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-2, 6-8, 10-15, 18 and 26 are rejected under 35 U.S.C. 103 as obvious over the combination of US6660149 to Karger et al. in view of Cohen et al., Journal of Chromatography A 397 (1987): 409-417.
Regarding claims 1-2, 10 and 13, Karger teaches a method for fractionating a sample of biomolecules, comprising: a) introducing the sample into a separating column; b) separating biomolecules in the sample into at least n fractions along the separating column; and c) placing the separating column into successive engagement with first through nth wells of a multiwell collection plate and advancing into each of the first through nth wells the corresponding first through nth fraction (col. 1, line 57 to col. 7, line 65; Figs. 1-10). The separating column can comprise any type of separation system, including a capillary electrophoresis column comprising a polyacrylamide separation medium (col. 2, lines 2-8; col. 3, lines 37-60). The method can be used to separate any type of biomolecule, including proteins or nucleic acids (col. 3, lines 37-43).
Regarding claim 6, Karger teaches that the collection plate is on a motorized stage, allowing it to move relative to the separation column as the fractions are dispensed to the wells (col. 5, lines 27-33; Figs. 5-6).
Regarding claims 7-8, Karger teaches electrophoretic separation with application of a constant electric potential (voltage) across the sample/column (col. 5, lines 30-47; EXAMPLE).
Regarding claim 12, Karger teaches that the “capillary column” can include a vessel of any shape in which a microseparation technique can be carried out (col. 2, lines 6-8). Thus, it would have been obvious to use a capillary electrophoresis column having any shape, including a standard cylindrical column/capillary.
Regarding claim 18, Karger teaches that the sample can be divided into 16 fractions (EXAMPLE; Fig. 12). Moreover, Figs. 1-6 illustrate embodiments in which the multiwell plate has ~50-100 wells.
Regarding claim 26, Karger teaches subjecting the fractions to analysis, including pooling of the fractions (EXAMPLE). It would have been obvious that once collected, the fractions could be subjected to any type of downstream handling/analysis including pooling (e.g., as a control to confirm no loss of sample during fractionation).
Claims 1-2, 6-8, 10-15, 18 and 26 differ from Karger in that: the separation column separates the biomolecules by MW in a polyacrylamide gel medium (elected species and claims 11 and 13-15).
Cohen teaches a method of separating proteins via capillary electrophoresis using an SDS-PAGE polyacrylamide gel column (entire doc, including Abstract). Cohen teaches that the method provides a rapid and reliable method for separating proteins via MW with a linear mobility/MW correlation, and can be used with small (nanogram/nanoliter) quantities of sample/protein (Abstract; p. 415, last ¶).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use the method of Karger to separate biomolecules such as proteins into fractions via capillary electrophoresis and collect the fractions into wells of a multiwell collection plate wherein the capillary electrophoresis column is a polyacrylamide gel column as taught by Cohen because it would have been obvious to combine prior art elements according to known methods to yield predictable results. One of ordinary skill would have been motivated to use a polyacrylamide gel column as taught by Cohen in the method of Karger because Cohen teaches that the polyacrylamide gel column offers a rapid and reliable method for separating proteins via MW and can be used with small (nanogram/nanoliter) quantities of sample/protein. Using a polyacrylamide gel column as taught by Cohen in the method of Karger would have led to predictable results with a reasonable expectation of success because Karger teaches that any type of known separation column can be used with the fraction collection system/method of Karger, and Karger exemplifies a similar polyacrylamide capillary electrophoresis separation column.
Claims 3-5 are rejected under 35 U.S.C. 103 as obvious over the combination of Karger in view of Cohen, as applied to claims 1-2, 6-8, 10-15, 18 and 26, further in view of Guttman et al., Journal of Chromatography A 632.1-2 (1993): 171-175.
The teachings of Karger and Cohen are set forth above. Regarding claims 3-5, Karger further teaches that the fractionation can be monitored by observing optical characteristics such as color (col. 2, lines 20-25).
Claims 3-5 differ from the combination of Karger in view of Cohen, as applied to claims 1-2, 6-8, 10-15, 18 and 26, in that: the separating column is removed from engagement from a well based at least in part on observation of the separating column (claims 3, 5); and observation of the separating column comprises observing movement of a dye (claim 4).
Guttman teaches a method of separating proteins via capillary gel electrophoresis wherein the extent of sample separation is monitored by observing a tracking dye (Orange G) in the column (p. 172, under Chemicals; Fig. 1). Guttman teaches that the use of the tracking dye allows for separation without need for use of MW standards (p. 173, last ¶).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use the method of Karger in view of Cohen to separate biomolecules/proteins into fractions via capillary gel electrophoresis and collect the fractions into wells of a multiwell collection plate wherein the fractionation timing is based on observing a dye in the separation column as taught by Guttman (e.g., by taking fractions at intervals of the sample travel along the length of the column) because it would have been obvious to combine prior art elements according to known methods to yield predictable results. One of ordinary skill would have been motivated to use a tracking dye as taught by Guttman in the method of Karger in view of Cohen because Guttman teaches that doing so allows tracking without having to run MW standards in the column. Moreover, a tracking dye would be more effective than, e.g. time intervals, where the migration rate of the sample down the column was not constant (e.g., due to molecules of varying molecular weight having different migration rates). Using observation of a tracking dye to time the fraction collection in the method of Karger in view of Cohen would have led to predictable results with a reasonable expectation of success because Karger teaches that the fractionation can be monitored by observing color and other sample characteristics, and one of ordinary skill would have recognized that a tracking dye (and other aspects of capillary electrophoresis separation protocols) could be applied to the separation part of the method of Karger in view of Cohen without interfering with the sample collection aspect.
Claim 9 is rejected under 35 U.S.C. 103 as obvious over the combination of Karger in view of Cohen, as applied to claims 1-2, 6-8, 10-15, 18 and 26, further in view of Guttman et al., Analytical chemistry 64.20 (1992): 2348-2351 (“Guttman 1992”).
Claim 9 differs from the combination of Karger in view of Cohen, as applied to claims 1-2, 6-8, 10-15, 18 and 26, in that: the electric potential is variable.
Guttman 1992 teaches a method of separating biomolecules via capillary gel electrophoresis wherein the electrophoresis uses a voltage gradient to provide enhanced resolution to the separation (under RESULTS AND DISCUSSION).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use the method of Karger in view of Cohen to separate biomolecules into fractions via capillary gel electrophoresis and collect the fractions into wells of a multiwell collection plate wherein the electrophoresis uses a voltage gradient (variable electric potential) as taught by Guttman 1992 because it would have been obvious to combine prior art elements according to known methods to yield predictable results. One of ordinary skill would have been motivated to use a voltage gradient as taught by Guttman 1992 in the method of Karger in view of Cohen because Guttman 1992 teaches that doing so provides for enhanced resolution for the separation of some biomolecules. Using a voltage gradient in the method of Karger in view of Cohen would have led to predictable results with a reasonable expectation of success because Guttman 1992 teaches use of such a gradient for a similar capillary gel electrophoresis separation as in the method of Karger in view of Cohen, and one of ordinary skill would have recognized that a voltage gradient (and other aspects of capillary electrophoresis separation protocols) could be applied to the separation part of the method of Karger in view of Cohen without interfering with the sample collection aspect.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as obvious over the combination of Karger in view of Cohen, as applied to claims 1-2, 6-8, 10-15, 18 and 26, further in view of Foret et al., Journal of Chromatography A 1053.1-2 (2004): 43-57.
Claims 16-17 differ from the combination of Karger in view of Cohen, as applied to claims 1-2, 6-8, 10-15, 18 and 26, in that: the separating medium further comprises a polyacrylamide stacking gel.
Foret teaches that a stacking gel (which is more dilute/porous than the resolving gel which separates the proteins/biomolecules) can be used in biomolecule separations via capillary gel electrophoresis to preconcentrate the proteins prior to separation, leading to improved resolution (under 6.1. Preconcentration of proteins and peptides).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use the method of Karger in view of Cohen to separate biomolecules into fractions via capillary gel electrophoresis and collect the fractions into wells of a multiwell collection plate wherein the electrophoresis uses a stacking gel as taught by Foret because it would have been obvious to combine prior art elements according to known methods to yield predictable results. One of ordinary skill would have been motivated to use a stacking gel as taught by Foret in the method of Karger in view of Cohen because Foret teaches that doing so can preconcentrate the biomolecules prior to separation and provide for enhanced resolution. Using a stacking gel in the method of Karger in view of Cohen would have led to predictable results with a reasonable expectation of success because Foret teaches use of such a gradient for a similar capillary gel electrophoresis separation as in the method of Karger in view of Cohen, and one of ordinary skill would have recognized that a stacking gel (and other aspects of capillary electrophoresis separation protocols) could be applied to the separation part of the method of Karger in view of Cohen without interfering with the sample collection aspect.
Claims 19-22 are rejected under 35 U.S.C. 103 as obvious over the combination of Karger in view of Cohen, as applied to claims 1-2, 6-8, 10-15, 18 and 26, further in view of Japp et al., Journal of Immunology Research 2021.1 (2021): 9942605.
The teachings of Karger and Cohen are set forth above. Regarding claims 19-22, Karger further teaches that “particles, such as beads, can be placed in individual wells, as carriers of active materials, e.g., antibodies, enzymes, substrates, etc. For, example, functionalized solid phase particles would be useful for on-plate combinatorial chemical analysis” (col. 7, lines 5-10).
Claims 19-22 differ from the combination of Karger in view of Cohen, as applied to claims 1-2, 6-8, 10-15, 18 and 26, in that: the method further comprises contacting one or more of the n fractions with a distinct microparticle each to form one or more distinct fractions (claims 19-20); and the microparticle comprises a distinct fluorescent label (claims 21-22).
Japp teaches a Luminex assay for combinatorial analysis of multiple distinct target biomolecules, wherein a plurality of beads each having binding specificity for a unique target biomolecule and each being labeled with a unique fluorescent label can be added to the sample for detection of the individual targets (under 8.1. Luminex assay).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use the method of Karger in view of Cohen to separate biomolecules into fractions via capillary gel electrophoresis and collect the fractions into wells of a multiwell collection plate wherein the fractions are contacted with a plurality of uniquely fluorescently labeled beads for detection of specific target biomolecules as taught by Japp because it would have been obvious to combine prior art elements according to known methods to yield predictable results. One of ordinary skill would have been motivated to contact the fractions of Karger in view of Cohen with uniquely labeled beads in order to allow for further analysis of the fractions and the detection of relevant biomolecules (e.g., disease biomarkers). Contacting the fractions yielded by the method of Karger in view of Cohen with Luminex beads as taught by Japp
would have led to predictable results with a reasonable expectation of success because Karger specifically suggests use of such beads for downstream analysis of biomolecules in the collected fractions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J YAMASAKI whose telephone number is (571)270-5467. The examiner can normally be reached M-F 930-6 PST.
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, Louise Humphrey can be reached at 571-272-5543. 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.
/ROBERT J YAMASAKI/Primary Examiner, Art Unit 1657
Prosecution Insights