DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s amendment and response filed on 11/19/2025 have been received and entered into the case. Claims 4 and 10 have been canceled, Claims 31-32 have been added. Claims 1-3, 5-9 and 11-32 are pending, Claims 8-9, 11, 13-16, and 19-30 have been withdrawn, and Claims 1-3, 5-7, 12, 17-18, and 31-32 have been considered on the merits, insofar as they read on the elected species of at least one molecular probe comprises 1 to 15 enzyme probes, phosphatases, and an animal cell. All arguments have been fully considered.
Withdrawn Rejections
Rejections of Claim 10 under 35 U.S.C. 101 are withdrawn in view of the cancellation of Claim 10.
Rejections of Claim 10 under 35 U.S.C. 103 as being unpatentable over Cheng et al (US 2022/0074861 A1; 3/10/2022. Cited on IDS) in view of Tai et al (Analyst. 2021;146:2307-2312. Cited on IDS), Bakthavatsalam et al (RSC Chem. Biol. 2021;2:1415-1429.) and Gao et al (Nat Commun. 2012;3(1033):1-8. Cited on IDS) are withdrawn in view of applicant’s amendments – Claim 10 has been canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5-7, 12, 17-18, and 31-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), before the effective filing date of the claimed invention, had possession of the claimed invention.
The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the application. These include “level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would lead one of skill in the art to the conclusion that the applicant was in possession of the claimed species is sufficient” (MPEP 2163).
A claimed genus may be satisfied through sufficient description of a representative number of species or disclosure of relevant, identifying characteristics such as functional characteristics coupled with a known or disclosed correlation between function and structure (MPEP 2163(3)a(II)). The number of species that describe the genus must be adequate to describe the entire genus; if there is substantial variability, a large number of species must be described.
The analysis for adequate written description considers (a) actual reduction to practice, (b) disclosure of drawings or structural chemical formulas, (c) sufficient relevant identifying characteristics in the way of complete/partial structure or physical and/or chemical properties or functional characteristics when coupled with known or disclosed correlation with structure and (d) representative number of samples.
In the instant case, Applicants have claimed molecular probes, each comprises a substrate and a chemical functional group:
(a and b) actual reduction to practice and disclosure of drawings or structural chemical formulas: Claims recite the “substrate is an enzyme substrate for an enzyme selected from the group consisting of phosphatases, caspases, protein kinases, esterases, and matrix metalloproteases”, and the chemical functional group “produces an enzyme-specific, reaction-activatable spectral shift upon enzyme-catalyzed cleavage of the substrate”, “has a spectral shift between 2000 cm-1 and 2300 cm-1”, and “is an alkyne, nitrile, azide, thiocyanate, or an isonitrile group”. Phosphatases, caspases, protein kinases, esterases, and matrix metalloproteases each represents a diverse group / family / class of enzymes, and alkyne, nitrile, azide, thiocyanate, and isonitrile group each represents a broad class of compounds. Applicants only list Casp-CN(S) in Fig. 2A and Phos-CN(S) in Fig. 2B in the instant specification.
(c) sufficient relevant identifying characteristics in the way of complete/partial structure or physical and/or chemical properties or functional characteristics when coupled with known or disclosed correlation with structure: Applicants are claiming a substrate that is an enzyme substrate for any enzymes from phosphatases, caspases, protein kinases, esterases, or matrix metalloproteases, and any chemical functional groups from an alkyne, nitrile, azide, thiocyanate, or an isonitrile group that produce an enzyme-specific, reaction-activatable spectral shift between 2000 cm-1 and 2300 cm-1 upon enzyme-catalyzed cleavage of the substrate. However, applicants have not described what structural features are required to meet this functional requirement. In essence, applicants have defined a critical facet of their invention by function. That is not sufficient to meet the written description requirement.
(d) representative number of samples: Applicants list Casp-CN(S) in Fig. 2A and Phos-CN(S) in Fig. 2B in the instant specification. There is no explanation of what enzyme substrate and/or what parts of these chemical functional groups are required for activity. Given that the universe of possible enzymes and chemical functional groups is essentially infinite, this is not sufficient to provide WD to the claims.
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 31-32 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 pre-AIA the applicant regards as the invention.
Claim 31 recites “wherein enzyme-catalyzed cleavage of the substrates alters electronic donation from para-position atoms to significantly change electron density and vibrational frequency of the chemical functional group”, which is a functional limitation. It is unclear what enzyme-catalyzed cleavage is being claimed. In addition, it is unclear how the term “significantly change …” is being claimed.
Claim 32 recites “a molecular structure shown in FIG. 2B.” According to MPEP 2173.05(s), where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.”.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3, 5-7, 12, 17-18, and 31 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is directed to a method of characterizing biological activity in at least one live cell of a sample on a substrate using a mid-infrared photothermal (MIP) system and at least one molecular probe. The claim recites “characterizing biological activity in the sample based on a spectral shift of each of the at least one molecular probe caused by the biological activity”, which describes a correlation or relationship between biological activity in a sample and a spectral shift of a probe introduced into the sample caused by the biological activity. This limitation sets forth a judicial exception, because this type of correlation is a consequence of natural processes. Thus, the claim is directed to at least one exception, which is termed a law of nature. Next, the claim as a whole is analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception. Besides the law of nature, the claim recites additional steps of introducing at least one molecular probe to a sample, generating a mid-infrared beam, generating a light, collecting the light, and additional elements of a substrate and a chemical functional group. Utilizing an imaging system to study cells is well-understood, routine and conventional. Further, the steps of “introducing”, “generating” and “collecting”, and elements of “a substrate” and “a chemical functional group” are recited at a high level of generality such that they amount to insignificant pre-solution activity. When recited at this high level of generality, there is no meaningful limitation, such as a particular or unconventional machine or a transformation of a particular article, in these steps that distinguish it from well-understood, routine, and conventional data gathering activity engaged in by scientists prior to applicant’s invention, and at the time the application was filed. Consideration of the additional steps and elements as a combination also adds no other meaningful limitations to the exception not already present when the elements are considered separately. Thus, the claim as a whole does not amount to significantly more than the exception itself. Accordingly, the claim is not eligible and should be rejected under 35 U.S.C. § 101.
Claims 2-3, 5-7, 12, 17-18, and 31 recite “wherein”. These additional elements / steps are not themselves natural laws but neither are they sufficient to transform the nature of the claims. The “wherein” clauses simply tell the scientist about the relevant natural laws, for instance, what probe, substrate and functional group to use for cell imaging. These additional elements / steps consist of well-understood, routine, conventional activity already engaged in by the scientific community; and those elements / steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. For these reasons it is believed that these elements / steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities. Accordingly, the claims are not eligible and should be rejected under 35 U.S.C. § 101.
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 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 of this title, 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 1-3, 5-7, 12, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al (US 2022/0074861 A1; 3/10/2022. Cited on IDS) in view of Tai et al (Analyst. 2021;146:2307-2312. Cited on IDS), Bakthavatsalam et al (RSC Chem. Biol. 2021;2:1415-1429.) and Gao et al (Nat Commun. 2012;3(1033):1-8. Cited on IDS).
The instant claims recite a method of characterizing biological activity in at least one live cell of a sample on a substrate using a mid-infrared photothermal (MIP) system and at least one molecular probe, comprising: introducing the at least one molecular probe to the sample; generating, with a mid-infrared optical source, a mid-infrared beam, the midinfrared beam being directed at the sample to induce a thermal effect; generating, with a visible light source, a light, the light illuminating the sample on the substrate; and collecting, with an optical detector, the light after interaction with the sample and the at least one molecular probe; and characterizing biological activity in the sample based on a spectral shift of each of the at least one molecular probe caused by the biological activity, wherein the biological activity comprises enzymatic activity, lipid oxidation, level of oxidative stress, or membrane voltage, and wherein each molecular probe comprises: a) a substrate, and b) a chemical functional group, wherein the substrate is an enzyme substrate for an enzyme selected from the group consisting of phosphatases, caspases, protein kinases, esterases, and matrix metalloproteases and wherein the chemical functional group produces an enzyme- specific, reaction-activatable spectral shift upon enzyme-catalyzed cleavage of the substrate.
Cheng teaches a method for microscopic analysis of a sample utilizing mid-infrared (IR) photothermal (MIP) imaging system, comprising directing a mid-infrared beam being onto at least a portion of a sample to induce a temperature change in the portion of the sample by absorption of the mid-infrared beam, directing a probe beam to impinge on the sample, detecting fluorescent emissions from the sample when the probe beam impinges on the sample, and receiving and processing the fluorescent emissions from the sample, wherein said processing comprises generating a signal indicative of infrared absorption by the portion of the sample, generating a signal indicative of temperature in the portion of the sample based on the signal indicative of infrared absorption by the portion of the sample, and generating an image of the portion of the sample using the signal indicative of temperature in the portion of the sample (para 0002, 0004, 0010), the sample is deposited on a substrate and the fluorescence with IR on/off is measured to demonstrate the applicability of wide-field MIP to biological specimens (para 0079). Highly sensitive probes are utilized to improve the detection sensitivity in a MIP microscope, and generally, MIP microscopy uses a visible light (para 0030). Cheng teaches a fluorescence-enhanced MIP (FE-MIP) provides a benefit for chemical imaging – the ability to record the vibrational spectrum of a specific component in a complex environment, FE-MIP can obtain an IR spectrum (para 0037). Cheng teaches MIP imaging of cancer cells (para 0072). It is noted that the recitation of “wherein the chemical functional group produces an enzyme- specific, reaction-activatable spectral shift upon enzyme-catalyzed cleavage of the substrate” is a functional limitation that does not recite any structure of the chemical functional group.
Cheng does not teach the biological activity comprises enzymatic activity as well as the chemical functional group (claim 1), wherein the chemical functional group has a spectral shift between 2000 cm-1 and 2300 cm-1 (claim 2), the chemical functional group is nitrile (claim 3), and the light is focused with water immersion objective lens (claim 18).
However, Cheng does teach IR photothermal imaging (para 0002), and chemical imaging plays an increasingly important role in studying biological systems, it combines molecular spectroscopy with high-resolution spatial information to create quantitative images of molecular distributions (para 0031). Tai teaches the use of IR photothermal microscopy is emerging for imaging chemical substances in various samples (Abstract). Tai teaches the use of IR photothermal microscopy to detect vibrational tags of nitrile groups in the silent region, which is particularly useful for separating target molecules from the intrinsic biological molecules (p.2311 col left – para 4), and IR photothermal imaging of live cells (p.2311 col right – para 1), wherein a probe beam from a sample was collected by water immersion objective lens (p.2308 col right – para 1). Figure 2 demonstrates the spectrum shape of protonated FCCP with a high absorbance in 2223 cm-1 assigned to the CN triple bond. Before the effective filing date of the claimed invention, it was well-known in the art that nitrile-based activatable probes is used to detect enzyme activity, as evidenced by Bakthavatsalam (p.1419 col left – last para, col right – first para).
Thus, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to incorporate a chemical functional group such as nitrile to characterize biological activity comprises enzymatic activity, since Bakthavatsalam discloses that nitrile-based activatable probes is used to detect enzyme activity, Cheng and Tai both disclose the use of IR photothermal microscopy for chemical imaging, and Tai discloses that using IR photothermal microscopy to detect vibrational tags of nitrile groups in the silent region (which have a spectral shift between 2000 cm-1 and 2300 cm-1) is particularly useful for separating target molecules from the intrinsic biological molecules. In addition, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to incorporate water immersion objective lens, since Cheng and Tai both disclose the use of IR photothermal microscopy for chemical imaging, and Tai discloses that water immersion objective lens are routinely used to collect a probe beam from a sample. Moreover, before the effective filing date of the claimed invention, one of ordinary skill in the art would have been motivated by the cited reference and routine practice to incorporate a chemical functional group such as nitrile and to incorporate water immersion objective lens, with a reasonable expectation for successfully microscopically analyzing a sample utilizing mid-infrared (IR) photothermal (MIP) imaging system.
References cited above do not teach the substrate is phosphatases (claim 1), and the enzyme probe comprises a hydrophobic peptide derivative (claims 5-6).
However, Cheng does teach IR photothermal imaging (para 0002), and Tai does teach IR photothermal imaging of live cells (p.2311 col right – para 1). Gao teaches imaging enzyme-triggered self-assembly of small molecules inside live cells (Title), which explores supramolecular chemistry inside cells and may lead to new insights, processes or materials at the interface of chemistry and biology (Abstract). This approach comprises a self-assembly moiety that is a hydrophobic peptide derivative, and phosphatase (p.2 col right – para 3, p.3 col left – para 1). This approach uses enzymatic hydrogelation to produce the nanofibers in cells (p.2 col left – para 2).
Thus, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to incorporate phosphatase and a hydrophobic peptide derivative for monitoring enzymatic activity in live cells, since Cheng discloses IR photothermal imaging, Li discloses IR photothermal imaging of live cells, and Gao discloses imaging enzyme-triggered self-assembly of small molecules inside live cells promises the development of intracellular biomaterials that interact with biological entities. Moreover, before the effective filing date of the claimed invention, one of ordinary skill in the art would have been motivated by the cited reference to incorporate phosphatase and a hydrophobic peptide derivative with a reasonable expectation for successfully microscopically analyzing a sample utilizing mid-infrared (IR) photothermal (MIP) imaging system.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al (US 2022/0074861 A1; 3/10/2022. Cited on IDS) in view of Tai et al (Analyst. 2021;146:2307-2312. Cited on IDS), Bakthavatsalam et al (RSC Chem. Biol. 2021;2:1415-1429.) and Gao et al (Nat Commun. 2012;3(1033):1-8. Cited on IDS) as applied to claims 1-3, 5-7, 12, and 18 above, further in view of Li et al (Anal. Chem. 2017;89:4863-4867.).
References cited above do not teach collecting light with the optical detector after interaction with the sample is done in the forward and backward directions (claim 17).
However, Cheng does teach IR photothermal imaging (para 0002). Li teaches IR photothermal imaging (Title), wherein a backward detected photothermal microscope was developed (p.4864 col left – para 2), and a forward detected photothermal microscope is also developed (p.4864 col left – para 3). Li teaches the current trend in pharmaceuticals is the combination of multiple techniques to provide integrated understanding (p.4867 col left – para 1).
Thus, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to incorporate IR photothermal imaging having forward and backward detection modes, since Cheng and Li both disclose IR photothermal imaging, and Li discloses that both a forward detected photothermal microscope and a backward detected photothermal microscope have been developed, and a combination of multiple techniques provides integrated understanding. In other words, a skill in the art would be motivated to achieve IR photothermal imaging in forward and backward detection modes to provides comprehensive information and boost the future research in pharmaceutical sciences. Moreover, before the effective filing date of the claimed invention, one of ordinary skill in the art would have been motivated by the cited reference to incorporate IR photothermal imaging having forward and backward detection modes, with a reasonable expectation for successfully microscopically analyzing a sample utilizing mid-infrared (IR) photothermal (MIP) imaging system.
Response to Arguments
Applicant argues that as recited in the amended claims, the molecular probes comprise a substrate and a chemical functional group (e.g., nitrile), wherein the substrate is an enzyme substrate for an enzyme selected from phosphatases, caspases, protein kinases, esterases, and matrix metalloproteases and wherein the chemical functional group produces an enzyme- specific, reaction-activatable spectral shift upon enzyme-catalyzed cleavage of the substrate. Because this man-made probe (e.g., Phos-CN(S) as shown in FIG. 2a and claimed in claim 32) is introduced to the sample and not naturally present.
These arguments are not found persuasive because the man-made probe (e.g., Phos-CN(S) as shown in FIG. 2a and claimed in claim 32) is not recited in claim 1.
Applicant argues that Cheng and Tai do not teach or suggest a probe with a chemical functional group that produces an enzyme-specific, reaction-activatable spectral shift upon enzyme- catalyzed cleavage of the substrate as recited in amended claim 1.
These arguments are not found persuasive because the recitation of “wherein the chemical functional group produces an enzyme- specific, reaction-activatable spectral shift upon enzyme-catalyzed cleavage of the substrate” is a functional limitation that does not recite any structure of the chemical functional group.
Applicant argues that because Bakthavatsalam references probes in a different imaging modality (electronic preresonance SRS) with NIR molecular absorption shifts, one of ordinary skill the art would not have looked to that reference nor found sufficient guidance or probability of success in creating the claimed probes providing spectral shifts in mid-infrared photothermal imaging, and that the individual probes of Gao do not undergo a spectral shift in the presence of phosphatases as presently claimed, instead relying on self-assembly of already fluorescent molecules into a hydrogel in the presence of ALP.
These arguments are not found persuasive because Bakthavatsalam is relied upon to demonstrate that nitrile-based activatable probes is used to detect enzyme activity, not spectral shifts in mid-infrared photothermal imaging. In addition, Gao is relied upon to demonstrate imaging enzyme-triggered self-assembly of small molecules inside live cells using phosphatase and a hydrophobic peptide derivative, not the spectral shift in the presence of phosphatases.
NOTE: Phos-CN(S) in FIG. 2B is free of prior art. The examiner has contacted Daniel A. Palmer by phone on 2/11/2026 and left a message wishing to discuss an Examiner’s Amendments, but received no response. On 2/17/2026, the examiner called Daniel A. Palmer again and received no response.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNN Y FAN whose telephone number is (571)270-3541. The examiner can normally be reached on M-F 7am-4pm.
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, Curtis Mayes can be reached on (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/Lynn Y Fan/
Primary Examiner, Art Unit 1759