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 without traverse of group I comprising claims 1 – 23, 33 – 44 and 55 – 64 in the reply filed on 8/3/2026 is acknowledged.
Claims 24 – 32 and 45 – 54 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/3/2026.
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 applicant regards as his invention.
Claims 1 – 23, 33 – 44 and 55 – 64 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.
Regarding claims 1, 13, 33 and 55, these claims, in particular their claim preamble, do not positively recite the specific entity in the sample whose hydrodynamic radius is being determined. It appears that the hydrodynamic radius of the protein (e.g., as recited in step a of claim 1) is being determined.
Note Regarding Prior Art
Examiner cites particular sections, columns, line numbers, paragraphs and figures, in the references as applied to the claims below for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4, 5, 8, 10 – 14, 16, 17, 20, 22 and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (Cite No. 1 on IDS (page 2) filed 5/21/2024 by Applicant; hereinafter “Liu”).
Regarding claim 1, Liu teaches a method of determining hydrodynamic radius in a sample, comprising:
a) contacting the sample with at least one unique fluorophore capable of binding to a protein (STAT3 protein; Abstract; STAT3 protein is labeled with tetramethylrhodamine (TMR); section 2.4 Protein labeling);
b) measuring correlation times of the sample using a confocal microscope (e.g., section 2.1, Confocal spectroscopy); and
c) determining the hydrodynamic radius in the sample based on the correlation times (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 2, Liu teaches the method of claim 1, wherein said correlation times are determined using fluorescence correlation spectroscopy (FCS) (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 4, Liu teaches the method of claim 2, wherein a fit model is used to determine said correlation times (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 5, Liu implicitly teaches the method of claim 4, wherein said fit model is chosen from the group consisting of a triplet fit model, translation fit model or a combination thereof (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 8, Liu teaches the method of claim 1, wherein two unique fluorophores exhibit non-overlapping emission spectra (section 2.4 Protein labeling; section 3.1 Protein labeling; section 3.2 A new fluorescein derivative; figures 3 and 5).
Regarding claim 10, Liu teaches the method of claim 1, wherein said correlation times are chosen from the group consisting of cross-correlation times, auto-correlation times or a combination thereof (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 11, Liu implicitly teaches the method of claim 1, wherein said sample is serum (the STAT3 protein is involved in the onset of cancers such as leukemia and lymphoma, which implies that the samples can be derived from serum samples from cancer patients; Abstract; section 1, Introduction).
Regarding claim 12, Liu teaches the method of claim 1, wherein said sample comprises a biological system (section 2.5, Artificial cell system).
Regarding claim 13, Liu teaches a method of determining hydrodynamic radius in a sample, comprising:
a) contacting the sample with at least one unique fluorophore capable of binding to a protein (STAT3 protein; Abstract; STAT3 protein is labeled with tetramethylrhodamine (TMR); section 2.4 Protein labeling);
b) measuring cross-correlation and/or auto-correlation times of the fluorophores within the sample using a confocal microscope capable of fluorescence correlation spectroscopy (FCS) (e.g., section 2.1, Confocal spectroscopy); and
c) determining the hydrodynamic radius in the sample based on the correlation times (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 14, Liu teaches the method of claim 13, wherein said cross-correlation and/or auto-correlation times are determined using fluorescence correlation spectroscopy (FCS) (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 16, Liu teaches the method of claim 14, wherein a fit model is used to determine said cross-correlation and/or auto-correlation times (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 17, Liu teaches the method of claim 16, wherein said fit model is chosen from the group consisting of a triplet fit model, translation fit model or a combination thereof (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 20, Liu teaches the method of claim 13, wherein two unique fluorophores exhibit non-overlapping emission spectra (section 2.4 Protein labeling; section 3.1 Protein labeling; section 3.2 A new fluorescein derivative; figures 3 and 5).
Regarding claim 22, Liu teaches the method of claim 13, wherein said sample is serum (the STAT3 protein is involved in the onset of cancers such as leukemia and lymphoma, which implies that the samples can be derived from serum samples from cancer patients; Abstract; section 1, Introduction).
Regarding claim 23, Liu teaches the method of claim 13, wherein said sample comprises a biological system (section 2.5, Artificial cell system).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 6, 7, 9, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (Cite No. 1 on IDS (page 2) filed 5/21/2024 by Applicant; hereinafter “Liu”) in view of Hung et al. (US 2019/0369106 A1; hereinafter “Hung”).
Regarding claim 6, Liu does not specifically teach the method of claim 1, wherein said protein is an antibody.
Regarding claim 7, Liu does not specifically teach the method of claim 1, wherein said protein is a monoclonal antibody.
Regarding claim 18, Liu teaches the method of claim 13, wherein said protein is an antibody.
Regarding claim 19, Liu teaches the method of claim 13, wherein said protein is a monoclonal antibody.
However, the use of these fluorophore labeled antibodies using fluorescence correlation spectroscopy (FCS) for size and concentration measurements is well known in the art. For example, Hung teaches the use of Alexa Fluor 647-conjugated antibody using the FCS technique (paragraph 28). Hung further teaches the use of monoclonal antibodies (paragraphs 44, 53, 54, 81 and 133). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art (see MPEP § 2144.07). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein said protein is an antibody or a monoclonal antibody.
Regarding claim 9, Liu does not specifically teach the method of claim 1, wherein two unique fluorophores comprise Alexa Fluor 488, Alexa Fluor 647, or both.
Regarding claim 21, Liu does not specifically teach the method of claim 13, wherein two unique fluorophores comprise Alexa Fluor 488, Alexa Fluor 647 or both.
However, the use of these fluorophore compounds in fluorescence correlation spectroscopy (FCS) is well known in the art. For example, Hung teaches the use of Alexa Fluor 647 or 488 as a labelling compound using the FCS technique (paragraphs 28 and 76). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art (see MPEP § 2144.07). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein two unique fluorophores comprise Alexa Fluor 488, Alexa Fluor 647, or both.
Claim(s) 33, 34, 36 – 44, 55 and 57 – 64 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (Cite No. 1 on IDS (page 2) filed 5/21/2024 by Applicant; hereinafter “Liu”) in view of Hung et al. (US 2019/0369106 A1; hereinafter “Hung”) and Tsien et al. (US 2002/0157120 A1; hereinafter “Tsien”).
Regarding claim 33, Liu teaches a method of determining hydrodynamic radius in a sample, comprising:
a) contacting the sample with at least one unique fluorophore capable of binding to a protein (STAT3 protein; Abstract; STAT3 protein is labeled with tetramethylrhodamine (TMR); section 2.4 Protein labeling);
b) measuring correlation times of the sample using a confocal microscope (e.g., section 2.1, Confocal spectroscopy); and
c) determining the hydrodynamic radius in the sample based on the correlation times (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Liu does not specifically teach using two fluorophores, i.e., a protein labeled with a first fluorophore and a ligand labeled with a second fluorophore.
Liu does not specifically teach the steps of:
a) labeling a protein with a first fluorophore;
b) labeling a ligand of the protein with a second fluorophore; and
c) combining the labeled protein and the labeled ligand in said sample.
However, using two fluorophore labeling compounds in this manner is well known in the art as evidenced by Hung. Hung teaches providing a therapeutic agent or protein conjugated to a first detectable moiety and a biological sample comprising a target or ligand conjugated to a second detectable moiety (e.g., paragraphs 14, 15, 17, 28, 71, 73, 78 and 83; claim 66). Hung teaches by using fluorescence correlation spectroscopy for measuring the time associated with each burst of fluorescent light, diffusion coefficients can be calculated (e.g., paragraph 78). The Stokes-Einstein equation relates the diffusion coefficient with the effective hydrodynamic radius (e.g., see Tsien: paragraph 179). Having determined the diffusion coefficient, the effective hydrodynamic radius of a protein or target molecule in a sample can then be determined. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Therefore, 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 method of Liu with the teachings of Hung in providing the additional steps of: a) labeling a protein with a first fluorophore; b) labeling a ligand of the protein with a second fluorophore; and c) combining the labeled protein and the labeled ligand in said sample, and then determine the hydrodynamic radius in the sample based on the correlation times.
Regarding claim 34, Liu teaches the method of claim 33, wherein said correlation times are determined using fluorescence correlation spectroscopy (FCS) (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 36, Liu teaches the method of claim 33, wherein a fit model is used to determine said correlation times (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 37, Liu teaches the method of claim 36, wherein said fit model is chosen from the group consisting of a triplet fit model, translation fit model or a combination thereof (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claims 38 and 39, Hung teaches the use of Alexa Fluor 647-conjugated antibody using the FCS technique (paragraph 28). Hung further teaches the use of monoclonal antibodies (paragraphs 44, 53, 54, 81 and 133).
Regarding claim 40, Liu teaches the method of claim 33, wherein said first and second fluorophores exhibit non-overlapping emission spectra (section 2.4 Protein labeling; section 3.1 Protein labeling; section 3.2 A new fluorescein derivative; figures 3 and 5).
Regarding claim 41, Hung teaches the use of Alexa Fluor 488 or 647 as a labelling compound using the FCS technique (paragraphs 28 and 76).
Regarding claim 42, Liu teaches the method of claim 33, wherein said correlation times are chosen from the group consisting of cross-correlation times, auto-correlation times or a combination thereof (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 43, Liu teaches the method of claim 33, wherein said sample is serum (the STAT3 protein is involved in the onset of cancers such as leukemia and lymphoma, which implies that the samples can be derived from serum samples from cancer patients; Abstract; section 1, Introduction).
Regarding claim 44, Liu teaches the method of claim 33, wherein said sample comprises a biological system (section 2.5, Artificial cell system).
Regarding claim 55, Liu teaches a method of determining hydrodynamic radius in a sample, comprising:
a) contacting the sample with at least one unique fluorophore capable of binding to a protein (STAT3 protein; Abstract; STAT3 protein is labeled with tetramethylrhodamine (TMR); section 2.4 Protein labeling);
b) measuring correlation times of the sample using a confocal microscope (e.g., section 2.1, Confocal spectroscopy); and
c) determining the hydrodynamic radius in the sample based on the correlation times (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Liu does not specifically teach using two fluorophores, i.e., a protein labeled with a first fluorophore and a ligand or reporter labeled with a second fluorophore.
Liu does not specifically teach the steps of:
a) labeling a protein with a first fluorophore;
b) labeling a secondary reporter with a second fluorophore; and
c) combining the labeled protein and the secondary labeled reporter in said sample.
However, using two fluorophore labeling compounds in this manner is well known in the art as evidenced by Hung. Hung teaches providing a therapeutic agent or protein conjugated to a first detectable moiety and a biological sample comprising a target, reporter or ligand conjugated to a second detectable moiety (e.g., paragraphs 14, 15, 17, 28, 71, 73, 78 and 83; claim 66). Hung teaches by using fluorescence correlation spectroscopy for measuring the time associated with each burst of fluorescent light, diffusion coefficients can be calculated (e.g., paragraph 78). The Stokes-Einstein equation relates the diffusion coefficient with the effective hydrodynamic radius (e.g., see Tsien: paragraph 179). Having determined the diffusion coefficient, the effective hydrodynamic radius of a protein or target molecule in a sample can then be determined. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Therefore, 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 method of Liu with the teachings of Hung in providing the additional steps of: a) labeling a protein with a first fluorophore; b) labeling a secondary reporter with a second fluorophore; and c) combining the labeled protein and the secondary labeled reporter in said sample, and then determine the hydrodynamic radius in the sample based on the correlation times.
Regarding claim 57, Liu teaches the method of claim 55, wherein a fit model is used to determine said cross-correlation and/or auto-correlation times (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claim 58, Liu teaches the method of claim 57, wherein said fit model is chosen from the group consisting of a triplet fit model, translation fit model or a combination thereof (e.g., section 2.6, Fluorescence correlation spectroscopy, and section 3.1, Protein labeling; figure 3).
Regarding claims 59 and 60, Hung teaches the use of Alexa Fluor 647-conjugated antibody using the FCS technique (paragraph 28). Hung further teaches the use of monoclonal antibodies (paragraphs 44, 53, 54, 81 and 133).
Regarding claim 61, Liu teaches the method of claim 57, wherein said first and second fluorophores exhibit non- overlapping emission spectra (section 2.4 Protein labeling; section 3.1 Protein labeling; section 3.2 A new fluorescein derivative; figures 3 and 5).
Regarding claim 62, Hung teaches the use of Alexa Fluor 488 or 647 as a labelling compound using the FCS technique (paragraphs 28 and 76).
Regarding claim 63, Liu teaches the method of claim 57, wherein said sample is serum (the STAT3 protein is involved in the onset of cancers such as leukemia and lymphoma, which implies that the samples can be derived from serum samples from cancer patients; Abstract; section 1, Introduction).
Regarding claim 64, Liu teaches the method of claim 57, wherein said sample comprises a biological system (section 2.5, Artificial cell system).
Claim(s) 3, 15, 35 and 56 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (Cite No. 1 on IDS (page 2) filed 5/21/2024 by Applicant; hereinafter “Liu”) in view of Laurence et al. (WO 2004/011903 A2; hereinafter “Laurence”).
Regarding claim 3, Liu does not specifically teach the method of claim 1, wherein the method is used to estimate protein-ligand stoichiometry in the sample.
Regarding claim 15, Liu teaches the method of claim 13, wherein the method is used to estimate protein-ligand stoichiometry in the sample.
Regarding claim 35, Liu teaches the method of claim 33, wherein the method is used to estimate protein-ligand stoichiometry in the sample.
Regarding claim 56, Liu teaches the method of claim 55, wherein the method is used to estimate protein-ligand stoichiometry in the sample.
Liu does teach that the multiparameter confocal setup enables examination of the protein-peptide interaction at the single molecule level (section 3.4, Peptide binding parameters).
Laurence teaches the combined use of Fluorescence correlation spectroscopy with the determination of, or estimation of, protein-ligand stoichiometry in a sample (e.g., paragraphs 11 and 12). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the method is used to estimate protein-ligand stoichiometry in the sample.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J. SINES whose telephone number is (571)272-1263. The examiner can normally be reached 9 AM-5 PM EST M-F.
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BRIAN J. SINES
Primary Patent Examiner
Art Unit 1796
/BRIAN J. SINES/Primary Examiner, Art Unit 1796
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