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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 20, 2025 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 20, 2025 was filed after the mailing date of the Final Office Action on November 21, 2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of Claims / Response to Amendment
This office action is in response to an amendment filed on May 20, 2025.
Claims 1-2, 4, 7-9, 12-22, 24-25, and 56-58 were previously pending. Applicant amended claim 1.
Claims 1-2, 4, 7-9, 12-22, 24-25, and 56-58 are currently pending, with claims 2, 12, 15-16, 20, 22, 24 withdrawn from consideration.
Claims 1, 4, 7-9, 13-14, 17-19, 21, 25, and 56-58 are under consideration.
All of the amendment and arguments have been thoroughly reviewed and considered. All of the previously presented rejections 1 have been withdrawn as being obviated by the amendment of the claims, which added new limitations to the claims, that were not considered in the previous rejections.
Applicant' s amendments and arguments have been thoroughly reviewed, but are not persuasive to place the claims in condition for allowance for the reasons that follow.
This office action contains new grounds for rejection necessitated by amendment.
Response to Arguments
Applicant's arguments filed on May 20, 2025 have been fully considered.
Claim Interpretation
Regarding the term "photo cross-linker moiety," it is not defined in the specification, nor does it have a commonly understood definition in the prior art at the time of filling the present application (04/01/2021).
In the prior Office Action (Final Office Action, 11/21/2024), this term "photo cross-linker moiety," is interpreted under BRI to encompass any polymer that can form physical or chemical bonds to another, such as streptavidin-biotin complex that form hydrogen bonds, or chemical crosslinkers that form chemical bonds. This interpretation is made in view of the commonly understood meaning of the term "crosslink," as "a physical or chemical bond that connects the functional groups of a polymer chain to another one through covalent bonding or supramolecular interactions such as ionic bonding, hydrogen bonding, etc." (Id. at page 6)
Applicant disagrees with the above interpretation in view of the following argument:
"… photo cross-linker moiety is described in the specification in at least paragraphs [0068] - [0071]. Paragraphs [0067] - [0069] provide an example of a linker with a photo cross-linker moiety in OYO-LINK® reagents "
OYO-LINK® reagents contain low molecular weight, high affinity antibody-binding domains embedding a photo crosslinker within their Fe-binding site. Upon illumination with non-damaging 365 light, OYO-LINK® forms a covalent bond with the antibody (Light-Activated Site-Specific Conjugation))". Instant application, Paragraph [0067].
Additionally, paragraph [0071] describes a process of preparing a labeling moiety using the OYO-LINK® reagent.
Accordingly, a person of ordinary skill in the art would understand that a photo crosslinker would comprise a photo cross-linking moiety that upon illumination with a UV light source, would form a covalent bond with, for example, an antibody as described." (Remarks, page 4-5)
This argument is found persuasive.
Accordingly, the claim interpretation for the term "photo cross-linker moiety " is updated to mean a moiety that is photoreactive or capable of performing photo-activated cross-linking.
Regarding the term "selective plane imaging microscopy," it is not defined nor clearly described in the applicant's disclosure.
In the prior Office Action (Final Office Action, 11/21/2024), it is interpreted under BRI as "microscopy imaging that capture selected sections on a planer surface" 2(page 7).
In the remarks, Applicant disagrees with the above interpretation and asserts a different definition for the term is provided by Huisken 3(Remarks, page 6).
Huisken is a review article and provides the following definition for the term "selective plane illumination microscopy":
"Selective plane illumination microscopy (SPIM) is a fluorescence microscopy technique that uses a focused light-sheet (see Glossary in Box 1) to illuminate the specimen from the side. Techniques like SPIM, generally called light-sheet microscopy methods, are becoming increasingly popular because they achieve excellent resolution at high penetration depths (see Glossary in Box 1) while being minimally invasive at the same time "(Huisken, page 1)
This argument is found persuasive. There appears to be sufficient similarity between the terms "selective plane imaging microscopy"(in the present application) and "selective plane illumination microscopy" (in Huisken) in the art. And Applicant has provided a definition for "selective plane illumination microscopy," supported by objective evidence demonstrating knowledge in the art.
Accordingly, the claim interpretation for the term "selective plane imaging microscopy" is updated to mean "fluorescence microscopy technique that uses a focused light-sheet to illuminate the specimen from the side."
Priority
The priority date of the instant claims 1, 4, 7-8, 13-14, 17-18, 21, 25 and 57-58 is 04/01/2021, filling date of the provisional application PRO 63/169,566.
The priority date of the instant claims 9, 19, and 56 is 03/31/2022, because the priority document (PCT application PCT/US2022/022742) filed that date is the first to disclose the subject matter in these claims.
Claim Interpretation -- Updated
In evaluating the patentability of the claims presented in this application, claim terms have been given their broadest reasonable interpretation (BRI) consistent with the specification, as understood by one of ordinary skill in the art, as outlined in MPEP§ 2111.
For the purpose of applying prior art, claim 1 has been amended to recite a "photo cross-linker moiety," which is not defined in the applicant's disclosure.
In view of Applicant's Remarks filed on May 20, 2025 (page 4-5), the claim interpretation for the term "photo cross-linker moiety " is updated to mean a moiety that is photoreactive or capable of performing photo-activated cross-linking.
For the purpose of applying prior art, claim 19 recites the term "selective plane imaging microscopy," which is not defined nor clearly described in the applicant's disclosure.
In view of Applicant's Remarks filed on May 20, 2025 (page 6) and definition provided in Huisken (Huisken et al. Selective plane illumination microscopy techniques in developmental biology. Development. 2009 Jun;136(12):1963-75. doi: 10.1242/dev.022426. PMID: 19465594; PMCID: PMC2685720.), this term "selective plane imaging microscopy" is interpreted under BRI to mean "fluorescence microscopy technique that uses a focused light-sheet to illuminate the specimen from the side."
Claim Rejections - 35 USC § 112(b) -- New
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 1, 4, 7-9, 13-14, 17-19, 21, 25, and 56-58 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.
Claim 1 recites:
"contacting the biological sample with a labeling moiety,
wherein the labeling moiety comprises a binding moiety that is coupled to a detectable tag via a polynucleotide linker,
wherein the polynucleotide linker comprises a photo cross-linker moiety,
wherein the photo- crosslinker couples the binding moiety to the detectable tag,
wherein the contacting comprises illumination of the photo cross-linker moiety with light to form a covalent bond between the binding moiety to the detectable tag,"
This claim language is indefinite because the structure of labeling moiety and the sequence of the illumination in relation to "contacting the biological sample with a labeling moiety" is unclear.
The claim has been amended to include an additional "wherein" clause: "wherein the contacting comprises illumination of the photo cross-linker moiety with light to form a covalent bond between the binding moiety to the detectable tag."
However, the claim already describes the labeling moiety as comprising the detectable tag coupled to the binding moiety via the polynucleotide linker, which comprises the photo cross-linker moiety.
Thus, it is unclear whether the newly added "wherein" clause describes:
1. A process of making the labeling moiety, which must occur before contacting the biological sample with the labeling moiety (since the labeling moiety must exist prior to use in contacting), or
2. An additional process where, in addition to the coupling by the polynucleotide linker, the binding moiety and the detectable tag are further attached via an additional covalent bond, which can occur before, during, or after contacting the biological sample with the labeling moiety.
Additionally, the phrase "a covalent bond between the binding moiety to the detectable tag" is further unclear. It is not evident in view of the application's disclosure whether this requires a direct covalent bond between the two components, excluding the presence of any linker; or if the phrase encompasses indirect covalent bonding via a linker. The claim recites a polynucleotide linker between the binding moiety and the detectable tag, yet the language of the newly added clause suggest a direct bond, which introduces inconsistency. The specification does not clearly describe any structure in which the binding moiety and detectable tag are directly covalent-bonded without a linker.
Therefore, a skilled artisan would not be able to determine, with reasonable certainty the structure of the labeling moiety or the sequence of steps involved in forming it. The metes and bounds of the claim are unclear.
For the purpose of compact prosecution and applying prior art under 35 USC§ 102 and 103, the newly added wherein clause is interpreted under BRI and in light of the specification as describing a process of forming the labeling moiety by Illumination, resulting in a covalent bond between the binding moiety and the detectable tag, where such bonding may be direct or may occur via a linker.
Claims 4, 7-9, 13-14, 17-19, 21, 25, and 56-58 are rejected for depending from claim 1 and not remedying the indefiniteness.
Claim Rejections - 35 USC § 112(a) -- New
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.
Claims 1, 4, 7-9, 13-14, 17-19, 21, 25, and 56-58 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contains 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, it recites "the contacting comprises illumination of the photo cross-linker moiety with light to form a covalent bond between the binding moiety to the detectable tag." As discussed in the 35 USC § 112(b) section above, this claim language encompasses both direct and indirect covalent bonding between the binding moiety and the detectable tag.
However, the specification only disclose the detectable tag and binding moiety as being connected through a linker (see Fig. 1 and [0067-0070]).
In contrast, the specification does not provide any support for a labeling moiety structure in which the binding moiety and detectable tag are directly covalent-bonded without a linker.
There is no description, figure, or example showing a direct covalent attachment of the binding moiety to the detectable tag without a linker component.
Therefore, the application's disclosure does not meet the written description requirement under 35 U.S.C. 112(a), for there is insufficient disclosure that convey to a person skilled in the art that the inventor was in possession of the full breadth of the claim at the time of filling.
Claims 4, 7-9, 13-14, 17-19, 21, 25, and 56-58 are rejected because they depend from claim 1 and inherit the deficiencies of the base claim.
Claim Rejections - 35 USC § 103 -- New
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.
Claims 1, 4, 7-9, 17, 19, 21, 25 and 56-58 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta 4(WO2019152391A1- Sequential staining for multiplex analyses of tissues and cells; Published August 08, 2019), in view of GAO (GAO et al. Efficient Small-Scale Conjugation of DNA to Primary Antibodies for Multiplexed Cellular Targeting. Bioconjug Chem. 2019 Sep 18;30(9):2384-2392. doi: 10.1021/acs.bioconjchem.9b00490. Epub 2019 Sep 3. PMID: 31438665; PMCID: PMC6753658), as evidenced by
Stehr (Stehr et al. Flat-top TIRF illumination boosts DNA-PAINT imaging and quantification. Nat Commun 10, 1268 (2019). doi.org/10.1038/s41467-019-09064-6).
A) Gupta teaches an immunofluorescent imaging method for sequential staining for multiplex analysis of analytes in biological samples, using antibodies binding to specific targets, wherein the antibodies are labeled with detectable fluorophores via DNA linker (title page, entire document).
Regarding claim 1, Gupta teaches a method for analyzing a biological sample comprising:
(a) contacting the biological sample with a labeling moiety ([0086]lines1-6; [0078], line1, SeqProbe; [0091]),
wherein the labeling moiety comprises a binding moiety ([0078], lines2-3, analyte recognizing agent; [0091]lines12-20, antibodies) that is coupled to a detectable tag (([0078], line3, florescent tag; [0091]lines12-20, Alexflour488) via a polynucleotide linker ([0078],lines17-20, double-stranded DNA; [0091]lines12-20, dsDNA oligo),
wherein the polynucleotide linker comprises a photo cross-linker moiety ([0078] “fluorescent tags on oligonucleotides can be attached via a cleavable chemical linker, such as a disulfide or a glycol”; [0095]; FIG.1A; FIG. 17; [0059] UV cross-linkers for example ),
wherein the photo-crosslinker couples the binding moiety to the detectable tag (FIG. 1A; [0078]; [0095] lines 1-8; [0091]), wherein the binding moiety exhibits specific binding to a target ligand ([0091]lines12-20, anti-CD11 antibody);
(b) subsequent to (a), imaging the biological sample to obtain an image ([0091]lines20-21 ; FIG13A, Anti-CDF11b-AF488),
wherein the image is indicative of presence or absence of the target ligand in the biological sample based on staining or lack of staining by the labeling moiety ([0091]lines20-21 ; FIG13A, Anti-CDF11b-AF488); and
(c) subsequent to (b), contacting the biological sample with a cleavage moiety ([0091]lines21-22, EcoRV restriction enzyme), wherein the cleavage moiety forms a complex with the polynucleotide linker (([0091]lines21-22; FIG.18, the restriction enzyme binds to the DNA and forms a complex), wherein, after formation of the complex, the cleavage moiety effects cleavage of the polynucleotide linker to release the detectable tag from the binding moiety (([0091]lines21-22; claim 24 ; FIG 20, destain; FIG. 6).
Gupta teaches a DNA-Antibody conjugate for sequential staining for multiplex analyses of tissues and cells (entire document), referred to as SeqProbe. Gupta teaches its SeqProbe as a labeling moiety comprising a binding moiety such as an antibody ([0078], lines2-3, analyte recognizing agent; [0091]lines12-20, antibodies) coupled to a detectable tag, such as a florescent tag (([0078], line3, florescent tag; [0091]lines12-20, Alexflour488) via a polynucleotide linker, such as DNA ([0078],lines17-20, double-stranded DNA attached to analyte recognizing agent; [0091]lines12-20, dsDNA oligo). In para. [0078], Gupta teaches that an oligonucleotide linker in a SeqProbe can be functionalized using biotin/streptavidin (lines 14-15), chemical crosslinkers such as disulfide or glycol (lines 25-27), among other linkers (lines 8-14).
While Gupta teaches the polynucleotide linker with a detectable tag can be attached to the binding moiety via a photo cross-linker moiety, including a variety of different crosslinkers such as UV cross-linkers ([0078]; [0095]; FIG.1A; FIG. 17; [0059]), it does not explicitly teach illumination of the photo cross-linker moiety with light to form a covalent bond between the binding moiety to the detectable tag.
B) GAO teaches an method for efficient conjugation of DNA to Antibodies for Multiplexed Cellular Targeting (entire document). Specifically, GAO’s method performs site-selective labeling of antibodies with DNA comprising detectable tag, this is achieved using an DNA-functionalized protein G adaptor that can be photo-cross-linked to the heavy-chain region of an antibody (Figure1), thereby achieving successful cellular labeling that support multiplexed cellular labeling and imaging (entire document, introduction for example).
Regarding claim 1, GAO teaches protein G adaptor as a UV cross-linker, and illuminating the photo cross-linker moiety (DNA-functionalized protein G adaptor) with UV light to form a covalent bond between the binding moiety to the detectable tag (Fig.1 and legends ).
GAO suggest potential benefits of its antibody conjugation method, such as no cross-activity, preservation of antibody function, compatibility with universal purification strategy, and directly applicable to commercially available antibodies. Gao additionally highlights the method's potential to support more quantitative imaging applications in multiplex cellular assays (page 1289, conclusion):
"In this work, we have developed a generally applicable ODN–antibody coupling method using a small protein G adaptor that site-selectively targets the heavy chain of an IgG antibody. We successfully demonstrated pG-ODN labeling of antibodies from different host species without cross-reactivity towards BSA. Importantly, we showed that the pG-ODN labeling did not affect the native function of the antibody. In combination with the universal, benchtop-compatible purification strategy using magnetic beads, this ODN labeling method is directly applicable to commercially available primary antibodies. Because multiple pG-ODN conjugates can be constructed in parallel and lyophilized without a loss of function, the potential of the pG-ODN labeling strategy lies in the synthesis of a library of pG-ODN constructs that can directly be used for antibody labeling. This could eventually facilitate the implementation of the multiplexing abilities of DNA-based read-out methods for the detection of a large variety of subcellular components and make these methods accessible for a broader scientific community. Additionally, we envision the use of pG-ODN–antibody constructs in more quantitative imaging applications, owing to the unique ability of pG-ODN conjugates to selectively label an antibody with a controlled number of ODNs."
C) It would have been prima facie obvious to apply the antibody labeling approach taught by GAO ꟷ using UV cross-linking of a DNA-functionalized protein adapter ꟷ in the method of Gupta for multiplex analysis of tissues and cells using DNA-labeled antibodies. Both references are in the same or overlapping field of multiplex cellular analysis using antibody-DNA conjugates for imaging. A skilled artisan would likely encounter both references when seeking labeling strategies to support multiplex imaging of biological samples.
The person of ordinary skill would have had a reasonable expectation of success in combining these teachings, because they disclose overlapping and technically compatible subject matter. Gupta teaches the use of DNA-conjugated antibodies with detectable labels for multiplex imaging, and it suggests that the DNA with a detectable tag can be attached to the antibody via a photo cross-linker moiety, including UV cross-linkers([0078]; [0095]; FIG.1A; FIG. 17; [0059]). GAO teaches a similar approach: also using DNA-conjugated antibodies for multiplex analysis ꟷbut provides a specific improvement: a site-specific UV cross-linking strategy for antibody labeling; with additional benefits.
The skilled artisan would have been motivated to make this combination to leverage the technical advantages suggested in GAO, including increased labeling specificity and potential for improved quantitative multiplex imaging.
Additionally, this combination would have been obvious as it represents the KSR principle of predictable use of prior art elements (site-specific DNA-antibody conjugation using UV crosslinking in GAO) according to a known method (method for imaging analysis of tissues and cells using DNA-labeled antibodies) to yield predictable results. (See MPEP §2143).
D) Regarding claim 4, Gupta teaches contacting the biological sample with an additional labeling moiety ([0091]lines12-20, anti-CD45 antibodies conjugated with oligo2 and a terminal Alexaflour594), wherein the additional labeling moiety comprises an additional binding moiety ([0091]lines12-20, anti-CD45 antibody) that is coupled to an additional detectable tag ([0091]lines12-20, terminal Alexaflour594) via an additional polynucleotide linker (([0091]lines12-20, oligo2), wherein (i) the additional binding moiety exhibits specific binding to an additional target ligand that is different from the target ligand ([0091]lines12-20, CD45 is a different target from CD11 ) and (ii) the additional detectable tag is different from the detectable tag ([0091]lines12-20, Alexaflour594 is different from Alexaflour488);
imaging the biological sample to obtain an additional image ([0091]lines20-21 ; FIG13A, Anti-CD45-AF594), wherein the additional image is indicative of presence or absence of the additional target ligand in the biological sample based on staining or lack of staining by the additional labeling moiety([0091]lines20-21 ; FIG13A, Anti-CD45-AF594); and
contacting the biological sample with an additional cleavage moiety ([0091]lines21-22, SmaI restriction enzyme), wherein the additional cleavage moiety forms an additional complex with the additional polynucleotide linker ([0091]lines21-22; FIG.12, the restriction enzyme binds to the DNA and forms a complex), wherein, after formation of the additional complex, the additional cleavage moiety effects cleavage of the additional polynucleotide linker to release the additional detectable tag from the additional binding moiety ([0091]lines21-22; claim 24 ; FIG 20, destain; FIG. 6).
Regarding claim 7, Gupta teaches the cleavage moiety is not expressed by a cell of the biological sample (([0091]lines21-22, EcoRV and SmaI are sourced from bacteria, not expressed by mouse cells).
Regarding claim 8, Gupta teaches the labeling moiety is disposed at an extracellular space of a cell of the biological sample ([0091]lines18-20), and wherein the cleavage moiety is disposed at the extracellular space of the cell ([0091]lines21-22).
Regarding claim 9, Gupta teaches the target polynucleotide linker has a length of at least about 10 nucleobases (FIG.17, Linker Oligo Sequence, 28 nucleobases).
Regarding claim 17, Gupta teaches the biological sample comprises a cell (FIG.20; FIG.19; [0061]line4).
Regarding claim 19, GAO teaches imaging comprises selective plane imaging microscopy, as evidenced by Stehr.
GAO teaches imaging using total internal reflection fluorescence (TIRF) microscopy (page 2391, left-hand col, para 2). TIRF is a form of selective plane imaging microscopy, as evidenced by Stehr:
"DNA-PAINT experiments are typically performed using some sort of selective plane illumination and/or detection, such as total internal reflection fluorescence (TIRF) microscopy, oblique illumination, or spinning disk confocal microscopy." (Stehr, page 2, left-hand col, lines 19-23)
Regarding claim 21, Gupta teaches the binding moiety is covalently coupled to the detectable tag ([0051]line4) via the polynucleotide linker ([0051]lines6-8).
Regarding claim 25, Gupta teaches the polynucleotide linker is a double-stranded nucleic acid molecule ([0091]lines12-20, dsDNA oligo).
Regarding claim 56, Gupta teaches the target polynucleotide linker had a length of at most about 50 nucleobases (FIG.17, Linker Oligo Sequence, 28 nucleobases).
Regarding claim 57, Gupta teaches wherein the polynucleotide linker comprises an oligonucleotide sequence configured to be recognized by the cleavage moiety (FIG 1A; [0078] lines 20-21).
Regarding claim 58, Gupta teaches wherein the polynucleotide linker comprises an oligonucleotide sequence configured to be cleaved by the cleavage moiety (FIG 1A; [0078] lines 20-24).
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta in view of GAO, as applied to claim 1 above and further in view of Hennek 5(US20180372736A1- Compositions for multiplex imaging using labeled nucleic acid imaging agents; Published on December 27, 2018).
A) The teachings of Gupta and GAO are recited above and applied as for base claim 1.
Regarding claim 13, Gupta teaches that the attached fluorescent tags to the antibody can be removed by cleavage agents or cleavage moieties such as exonuclease and endonuclease enzymes ([0078]lines17-20).
However, the combined teachings of Gupta and GAO do not explicitly teach a cleavage moiety complex, comprising a Cas protein and a guide nucleic acid molecule.
B) Hennek teaches a immunofluorescent imaging method and compositions for multiplex imaging analysis of analytes in biological samples, using antibody-DNA conjugate with corresponding fluorescent labels (entire document, [0043] for instance).
Regarding claim 13, Hennek teaches a cleavage moiety comprises a complex, wherein the complex comprises a Cas protein (claims 19-20; [0154]lines6-9) and a guide nucleic acid molecule ([0154]lines6-9, RNA-guided), wherein the guide nucleic acid molecule exhibits specific binding to the polynucleotide linker ([0154]lines6-9, the guide RNA binds specifically to recognition site).
C) It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by the combined teachings of Gupta and GAO, by integrating Cas9 protein disclosed by Hennek. Because both references are within the same field of immunofluorescent imaging microscopy and utilize similar antibody labeling technologies for analysis of biological samples.
The person of ordinary skill would have had a reasonable expectation of success in combining the teachings because applying the specific and efficient RNA-guided cleavage mechanism of Cas9 from Hennek is a predictable use of known technology in a known method, to achieve a predictable result (i.e. DNA cleavage). The skilled artisan would have been motivated to use Cas9 proteins with specific guide RNAs, taught by Hennek, as a cleavage agent in the method disclosed by Gupta for potential enhancement in specificity and efficiency in the cleavage process, leveraging the precise targeting capabilities of Cas9. Such integration is technically feasible and would have been seen as a logical step to further optimize the utility of the method taught by Gupta and GAO.
D) Regarding claim 14, Hennek teaches guide nucleic acid molecule without a dye (claims 19-20; [0154]).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Gupta in view of GAO, as applied to claims 1 and 17 above and further in view of Lu 6(Lu et al., Identifying cancer origin using circulating tumor cells. Cancer Biol Ther. 2016 Apr 2;17(4):430-8. doi: 10.1080/15384047.2016.1141839. PMID: 26828696; PMCID: PMC4910938.)
A) The teachings of Gupta and GAO are recited above and applied as for base claims 1 and 17.
Regarding claim 18, Gupta discloses the use of biological samples that comprise a cell (FIG.20; FIG.19; [0061]line4), but the combined teachings of Gupta and GAO do not explicitly teach the use of circulating tumor cell as a sample type.
B) Lu teaches a method for isolating and analyzing circulating tumor cells using immunofluorescent imaging to identify the origin of cancer cells (entire document).
Regarding claim 18, Lu teaches using circulating tumor cells as biological sample for analysis (Abstract; entire document).
Lu also suggests (introduction, para 1):
"Cancer constitutes an enormous burden and is a leading cause of death worldwide due to the growth and aging of the population. The majority of cancer deaths are caused by metastasis, when circulating tumor cells (CTCs) leave the primary tumor site, travel in blood through the circulatory system, and lead to the formation of distant, secondary tumors. Quantity of CTCs has shown to correlate with the severity of the cancer disease, and the emerging evidence showed that the characteristic of CTCs may provide the source of primary tumors as a simple, fast alternative to tumor biopsy. Thus, the combination of both could be a powerful tool in the ongoing battle against cancer."
C) It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine method taught by the combined teachings of Gupta and GAO, involving immunofluorescent imaging, with the teachings of analyzing circulating tumor cells disclosed by Lu. Both references pertain to the field of biosample analysis using immunoassaying, and specifically address methods for cellular analysis using immunofluorescent techniques.
The person of ordinary skill would have had a reasonable expectation of success in combining these teachings because Lu provides a specific application (circulating tumor cell analysis) that is a natural extension of the general cell analysis taught in Gupta and GAO. The method described in the combined teachings of Gupta and GAO is technically compatible to the circulating tumor cells detailed in Lu.
Doing so would have yielded the predictable result of an enhanced method for cancer diagnostics using circulating tumor cells, allowing for more precise and multiplexed data collection. The skilled artisan would have been motivated to combine these teachings to capitalize on the benefits of using circulating tumor cells for cancer diagnostics, as highlighted by Lu.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIAN NMN YU whose telephone number is (703)756-4694. The examiner can normally be reached Monday - Friday 8:30 am - 5:30 pm.
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/TIAN NMN YU/Examiner , Art Unit 1681 /AARON A PRIEST/Primary Examiner, Art Unit 1681
1 Rejections of claims 1, 4, 7-9, 17, 19, 25, and 56-58 under 35 U.S.C. 102(a)(1) as being anticipated by Gupta;
Rejections of claims 13-14 under 35 U.S.C. 103 as being unpatentable over Gupta in view of Hennek;
Rejection of claim 18 under 35 U.S.C. 103 as being unpatentable over Gupta in view of Lu.
2 The same interpretation was also made in the earlier Non-Final Office Action (mail date 05/15/2024), but the Applicant's response to that Office Action, filed on 11/05/2024, did not contest it.
3 Huisken J, Stainier DY. Selective plane illumination microscopy techniques in developmental biology. Development. 2009 Jun;136(12):1963-75. doi: 10.1242/dev.022426. PMID: 19465594; PMCID: PMC2685720.
4 cited in previous office action
5 cited in previous office action
6 cited in previous office action