Prosecution Insights
Last updated: April 19, 2026
Application No. 18/399,109

METHODS, COMPOSITIONS, AND SYSTEMS FOR ENHANCING SPATIAL ANALYSIS OF ANALYTES IN A BIOLOGICAL SAMPLE

Non-Final OA §112
Filed
Dec 28, 2023
Examiner
KIM, YOUNG J
Art Unit
1681
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
10X Genomics, Inc.
OA Round
1 (Non-Final)
65%
Grant Probability
Moderate
1-2
OA Rounds
3y 4m
To Grant
82%
With Interview

Examiner Intelligence

Grants 65% of resolved cases
65%
Career Allow Rate
711 granted / 1098 resolved
+4.8% vs TC avg
Strong +18% interview lift
Without
With
+17.7%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
61 currently pending
Career history
1159
Total Applications
across all art units

Statute-Specific Performance

§101
5.0%
-35.0% vs TC avg
§103
32.5%
-7.5% vs TC avg
§102
16.6%
-23.4% vs TC avg
§112
33.6%
-6.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1098 resolved cases

Office Action

§112
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. Information Disclosure Statement The IDS received on February 8, 2024; May 3, 2024; August 13, 2024; November 8, 2024; February 12, 2025; May 9, 2025; and August 13, 2025 are proper and are being considered by the Examiner. The totality of the references cited exceeds over one thousand and five hundred documents. Drawings The drawings received on December 28, 2023 are acceptable. 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 appl icant regards as his invention. Claim s 15-17 and 19 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. Claim 15 is indefinite reciting the phrase, “extended capture agent barcode domain or a complement thereof ” because the claim recites that the capture agent barcode domain is extended by a polymerase, but fails to recite a step that results in the generation of a complementary strand to the capture agent barcode ( i.e., does not have a proper antecedent basis). Claim 16 is indefinite for the same reason. Claim 19 is indefinite for analogous reasons. Claim 17 is indefinite because the claim appears to be disjointed from parent claim 1. Parent claim 1 is directed to a method of analyzing a protein in a biological sample involving, inter alia, a capture probe that is specifically recited as comprising, “(i) a spatial barcode and (ii) a capture domain” wherein the capture domain is hybridized to a capture handle sequence portion of a capture agent barcode that is bound to a protein. Claim 17 recites that the capture probe now comprises a poly(T) sequence, one or more functional domains, UMI, a cleavage domain, but fails to recite how these regions relate to the method of the parent claim, as well as confusing whether the capture probe is being “redefined” to comprise these elements over elements recited in claim 1. No reasonable interpretation could be made for the claim. Conclusion Claims 15-17 and 19 are rejected. Claims 1-14, 18, and 20 are allowable. Claims are free of prior art. The closest prior art is provided by Ramachandran et al. (WO 2020/176788 A1, published September 2020 ). Ramachandran et al. teach a method of detecting a protein analyte in a biological sample comprising the below analyte configuration (from Figure 10): left 3810 0 0 The detection complex is achieved by contacting a sample with a plurality of analyte capture reagents ( see element 1026) comprising an analyte binding moiety and a capture agent barcode domain ( see element 1022, antibody as the analyte binding domain; and element 1016; also “analyte binding domain 1022”, page 107, line 29; “capture agent barcode domain 1016”, page 107, line 32), wherein the analyte binding moiety binds to the protein analyte, and wherein the capture agent barcode domain comprises an analyte binding moiety barcode and a capture handle sequence ( see element 1014 for capture handle sequence ; see element 1016 for analyte binding moiety barcode). However, Ramachandran et al. teach the analyte capture reagents are contacted with a sample that is disposed on a substrate, and the capture probes are also disposed on the same substrate: “contacting a plurality of analyte capture agents to a biological sample comprising a live cell, wherein the biological sample is disposed on a substrate … and the substrate comprises a plurality of capture probes. The instant claims are distinct from the Ramachandran et al. I that the biological sample is mounted on a first substrate , wherein the plurality of analyte capture agents are contacted thereto, and a second substrate comprising an array of plurality of capture probes are brought into proximity to the first substrate by alignment in the presence of a medium comprising a mono-/di-valent salt, wherein the capture agent barcode domain of the analyte capture agents are released from the first substrate to hybridize to the capture probes on the second substrate . No such teaching/suggestion is made by Ramachandran et al. nor is there any reason to modify the teachings of Ramachandran et al. to arrive at such a method. Inquiries Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Young J. Kim whose telephone number is (571) 272-0785. The Examiner can best be reached from 7: 3 0 a.m. to 4:00 p.m (M- F ). The Examiner can also be reached via e-mail to Young.Kim@uspto.gov. However, the office cannot guarantee security through the e-mail system nor should official papers be transmitted through this route. If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's supervisor, Gary Benzion, can be reached at (571) 272-0782. Papers related to this application may be submitted to Art Unit 16 81 by facsimile transmission. The faxing of such papers must conform with the notice published in the Official Gazette, 1156 OG 61 (November 16, 1993) and 1157 OG 94 (December 28, 1993) (see 37 CFR 1.6(d)). NOTE: If applicant does submit a paper by FAX, the original copy should be retained by applicant or applicant’s representative. NO DUPLICATE COPIES SHOULD BE SUBMITTED, so as to avoid the processing of duplicate papers in the Office. All official documents must be sent to the Official Tech Center Fax number: (571) 273-8300. Any inquiry of a general nature or relating to the status of this application should be directed to the Group receptionist whose telephone number is (571) 272-1600. 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. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /YOUNG J KIM/ Primary Examiner Art Unit 1637 DATE \@ "MMMM d, yyyy" March 17, 2026 /YJK/
Read full office action

Prosecution Timeline

Dec 28, 2023
Application Filed
Mar 17, 2026
Non-Final Rejection — §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12590329
Novel Replicase Cycling Reaction (RCR)
2y 5m to grant Granted Mar 31, 2026
Patent 12590330
METHODS FOR INDEXING SAMPLES AND SEQUENCING MULTIPLE POLYNUCLEOTIDE TEMPLATES
2y 5m to grant Granted Mar 31, 2026
Patent 12577627
SELECTIVE DETECTION OF DIFFERENT DENGUE VIRUS RNA SEROTYPES USING TANDEM TOEHOLD-MEDIATED DISPLACEMENT REACTIONS
2y 5m to grant Granted Mar 17, 2026
Patent 12571059
COMPOSITIONS AND METHODS FOR DETECTION OF EPSTEIN BARR VIRUS (EBV)
2y 5m to grant Granted Mar 10, 2026
Patent 12560604
BACTERIAL BIOSENSOR SYSTEM
2y 5m to grant Granted Feb 24, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

1-2
Expected OA Rounds
65%
Grant Probability
82%
With Interview (+17.7%)
3y 4m
Median Time to Grant
Low
PTA Risk
Based on 1098 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month