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 .
Claims 1-3 and 6-25 are pending in this application, Claims 19-23 are acknowledged as withdrawn, Claims 1-3, 6-18, 24 and 25 were examined on their merits.
The objection to the Specification due to the improper use of Trademarks has been withdrawn due to the Applicant’s amendments to the Specification filed 09/03/2026.
The rejection of Claims 17-18 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applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, has been withdrawn due to the Applicant’s amendments to the claims filed 09/03/2026.
The rejection of Claims 1, 2, 3, 4 and 7 under 35 U.S.C. § 103 as being unpatentable over Knebel et al. (US 2016/0153892 A1), cited in the IDS, in view of Li et al. (2012), of record, has been withdrawn due to the Applicant’s amendments to the claims filed 09/03/2026.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 6, 7, 11 and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over Knebel et al. (US 2016/0153892 A1), cited in the IDS, in view of Li et al. (2012) and Loboda (US 2016/0194590 A1), both of record.
Knebel et al. teaches embedding a plurality of samples into a discrete entity/sub-
holders (embedding medium) and imaging the embedded samples (Fig. 2-3 and Pg. 6,
Paragraphs [0079]-[0083]);
and wherein the samples may be biological samples (Pg. 2, Paragraph [0020]),
and reading on Claims 1 and 25;
wherein the embedding medium may be an agarose polymer hydrogel (Pg. 6,
Paragraph [0081]), and reading on Claim 2;
wherein each of the sub-holders can be cylindrical or cube shaped and the
samples are ovoid in shape (Figs. 2-3);
and wherein the embedding medium (discrete entity) is a liquid (Pg. 6, Paragraph
[0079]), and reading on Claims 1, 4 and 25.
The teachings of Knebel et al. were discussed above.
Knebel et al. did not teach wherein the biological sample is a tissue section or a biopsy, or wherein the biological sample is divided to attain the plurality of samples, as now required by Claims 1 and 25;
wherein the sub-holders are spherical or spheroidal in shape, as required by
Claim 3;
wherein the sample is divided into a plurality of samples by a rotating cutter knife wheel, as required by Claim 6;
wherein each of the samples have a cuboid shape, as required by Claim 7;
or wherein the step of dividing the sample comprises associating location information relating to the location of each sample part of the plurality of sample parts within the sample with the respective sample part, as required by Claims 11 and 25.
It would have been obvious to those of ordinary skill in the art to modify the
method of Knebel et al. of embedding and imaging multiple discrete samples to provide
the plurality of samples by dividing a single initial biological sample because there are
only a finite number of ways to attain a plurality of samples, either sub-dividing a larger
sample or providing a plurality of separate unique samples. Those of ordinary skill in
the art would have been motivated to make this modification in order to obtain multiple
sub-samples from a larger whole which can then easily be imaged. There would have been a reasonable expectation of success in making this modification because Knebel et al. teaches embedding and imaging multiple samples and those samples can only be obtained in a few ways.
With regard to Claims 11 and 25, it would be inherent in the method of Knebel that the act of dividing an initial sample into a plurality of sub-samples would comprise “associating location information relating to the sample of each sample part of the plurality of sample parts within the sample with the respective sample part”, because the limitation when given its’ broadest, reasonable interpretation in the absence of a definition in the Specification, reads on the division of a sample into as little as two parts which can be associated by location. For example, the left and right half of the previously intact sample.
While the Knebel reference does not specifically teach the limitations of Claims 1 and 25, that each sample part has a sphericity of at least 0.4 and has a volume in the range of 1000 µm³ to 27 mm³, one of ordinary skill in the art would recognize that the sphericity and volume of a sample is a result-effective optimizable variable. Li et al. teaches that "sphericity" is a parameter which can be applied to non-spherical shapes (Pg. 97, Abstract and Pg. 98, Table 1) while volume is dependent on the size or amount of space a sample occupies. This is motivation for someone of ordinary skill in the art to practice or test the sample sphericity and volume widely to find those that are functional or optimal to provide a suitable sample for imaging which then would be inclusive or cover the instantly claimed values. Absent any teaching of criticality by the Applicant concerning the sphericity and volume of a sample, it would be prima facie obvious that one of ordinary skill in the art would recognize these limitations are an optimizable variable which can be met as a matter of routine optimization (see MPEP § 2144.05 (II)(B). Those of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to make this modification in order to obtain a desired size and shaped sample. There would have been a reasonable expectation of success in making these modifications because the Knebel reference is drawn to the embedding and imaging of biological samples and Li et al. teaches these samples will have an intrinsic sphericity as well as volume.
With regard to Claims 3 and 7, it would have been further obvious to those of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Knebel et al. and Li et al. of embedding and imaging multiple discrete ovoid samples into cylindrical or cuboid sub-holders because changing the shape of an element is prima facie obvious in the absence of evidence that the claimed shape is critical. See the MPEP at 2144.04, IV. B. Those of ordinary skill in the art would have been motivated to make this modification in order to prepare a sample and sub-holder having the artisan desired shape. There would have been a reasonable expectation of success in making this modification because the Knebel already teaches that the sub-holders can be different shapes and the samples have a certain shape, therefore the alteration thereof could be reasonably expected to be performed in the absence of any evidence to the contrary.
Loboda teaches a biological material which may be a biological tissue, such as a biopsy section (Pg. 6, Paragraph [0060]).
Loboda further teaches that biological material/tissue can be separated into discrete areas by cutting the tissue into sections (Pg. 6, Paragraphs [0060]-[0061]) and,
“wherein in certain applications it may be desirable to focus analysis on one or more specific areas of a tissue or cell smear or to target individual cells from a cell sample applied as a thin layer. Moreover, a user may also want to obtain an optical or other image of the tissue or a cell smear or the cells spreads over the carrier prior to the analysis by imaging mass cytometry or imaging mass spectrometry, in order, for example, to correlate the mass cytometry or mass spectrometry results with cellular or morphological structure. Also, by taking the optical image one will be able to record an image over a large area quickly and then identify the areas of interest that require in-depth characterization by imaging mass cytometry or imaging mass spectrometry".
and,
"In certain embodiments, cutting a tissue sample into subsections involves laser cutting or mechanical cutting. In certain embodiments it is desirable to make mechanical cuts by operating a rotating cutting wheel with multiple cutting zones along the circumference".
It would have been obvious to those of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Knebel et al. and Li et al. of embedding and imaging multiple subdivided biological samples with the method of Loboda of cutting a biological sample, such as a biopsy section, into subsections by cutting with a rotating cutting wheel because the multiple biological samples of Knebel are not limited solely to whole samples and Loboda provides a specific means for dividing a biological sample to obtain multiple biological samples.
Those of ordinary skill in the art would have been motivated to make this modification because Loboda teaches the technique is applicable when it is desired to focus analysis on one or more specific areas of a tissue or cell smear or to target individual cells from a cell sample applied as a thin layer. There would have been a reasonable expectation of success in making this modification because all of the references are reasonably drawn to the same field of endeavor, that is, the analysis of biological samples.
Claims 1-3, 6, 7, 11, 8-10, 24 and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over Knebel et al. (US 2016/0153892 A1), cited in the IDS, in view of Li et al. (2012) and Loboda (US 2016/0194590 A1), both of record, as applied to Claims 1-3, 6, 7, 11 and 25 above, and further in view of Fuchs (WO 2014/172530 A1), of record.
The teachings of Knebel et al., Li et al. and Loboda were discussed above.
None of the above references taught a method wherein images of the embedded samples are assembled into a composite image, as required by Claim 8;
wherein the assembling comprises stitching the images of the embedded parts to generate the composite image, as required by Claim 9;
wherein the assembling comprises combining the images based on location information of each embedded sample part within the sample, as required by Claim 10;
or wherein images of the embedded sample parts are assembled into a composite image of the biological sample by combining the images based on the location information associated with the respective sample part, as required by Claim 24.
Fuchs teaches a simple and reliable method for generating a composite image from multiple adjacent sub-images by stitching the sub-images together to form a composite image in the image processing operation is performed using an optical pattern that is generated by means of a pattern means. The pattern provides adequate optical information, so that the position of the sub-images in relation to each other can be reliably determined by means of the properties of the pattern, such as its’ location in the sub-images (Pg. 2, Lines 9-16);
wherein the sample can be a biological sample (Pg. 4, Lines 30-32).
It would have been obvious to those of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Knebel et al., Li et al. and Loboda of embedding and imaging multiple subdivided biological samples, such as biopsy sections, with the method of Fuchs of forming a composite image from multiple sub-images based on the location information associated with each respective part because this would allow the imaging of the sub-divided samples as well as the whole sample from which they were derived. Those of ordinary skill in the art would have been motivated to make this modification because this would provide an image of both the whole and the parts of the imaged biological sample.
There would have been a reasonable expectation of success in making this modification because at least the Knebel and Fuchs references are reasonably drawn to the same field of endeavor, that is, the image analysis of biological samples.
Claims 1-3, 6-11, 12-15 and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over Knebel et al. (US 2016/0153892 A1), cited in the IDS, in view of Li et al. (2012), Loboda (US 2016/0194590 A1) and Fuchs (WO 2014/172530 A1), all of record, as applied to Claims 1-3, 6-11 and 25 above, and further in view of Seppo et al. (US 2015/0050650 A1), of record.
The teachings of Knebel et al., Li et al., Loboda and Fuchs were discussed above.
None of the above references taught a method wherein at least one sample part
contained by the respective discrete entity is analyzed by molecular biology
techniques comprising at least one of in particular, proteomic, metabolomic,
transcriptomic and/or genomic analysis, as required by Claim 12;
wherein images of embedded parts are assembled into a composite image and analysis data generated by the molecular biology techniques, comprising at least one of proteomic, metabolomic, transcriptomic and/or genomic analysis, is superimposed on the composite image at the location of the respective sample part within the sample, as required by Claim 13;
wherein each sample part comprises a marker, as required by Claim 14;
or wherein the marker is associated with location information, as required by
Claim 15.
Seppo et al. teaches a method wherein an image is generated of a region of
interest in a biological sample treated with a first protocol and a second image of the
region after treatment with a second protocol and the immunofluorescent detection of a
target protein or at least one target nucleic sequence (Pg. 20, Claim 1);
and wherein a composite image is generated including at least the regions of interest from the first and second images and wherein generating of the composite image comprises registering locations of selected signals (markers) obtained during the generation of the first image with locations of selected signals obtained during the generation of the second image (Pg. 20, Claims 25-26).
It would have been obvious to those of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Knebel et al., Li et al. Loboda and Fuchs of embedding and composite imaging multiple, subdivided biological samples, such as biopsy sections, with the method of Seppo et al. of forming a composite image of proteomic and/or genomic data which is correlated with the location of detected signals (e.g. superimposed) because this would allow the protein and/or genomic data images to be correlated with the location within the sample that the signals were obtained. Those of ordinary skill in the art would have been motivated to make this modification because this would provide a composite image of both the presence and location of protein and/or genomic signals in the sub-samples.
There would have been a reasonable expectation of success in making this modification because at least the Knebel and Seppo references are reasonably drawn to the same field of endeavor, that is, the image analysis of biological samples.
Claims 1-3, 6-15, 16-18 and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over Knebel et al. (US 2016/0153892 A1), cited in the IDS, in view of Li et al. (2012), Loboda (US 2016/0194590 A1), Fuchs (WO 2014/172530 A1) and Seppo et al. (US 2015/0050650 A1), all of record, as applied to Claims 1-3, 6-15 and 25 above, and further in view of Alexander et al. (US 2020/0011775 A1), of record.
The teachings of Knebel et al., Li et al., Loboda and Fuchs were discussed above.
None of the above references taught a method wherein at least one of the
sample parts contained by the respective discrete entity is dissociated into a plurality of
single cells that are individually analyzed by molecular biology techniques, comprising
at least one of: microscopic, cytometric, proteomic, transcriptomic, metabolomic and/or
genomic analysis, as required by Claim 16;
wherein single cell analysis data generated by the molecular biology techniques,
comprising at least one of: microscopic, cytometric, proteomic, transcriptomic,
metabolomic and/or genomic analysis, is superimposed on a composite image of the
embedded sample parts at a location of the respective single cell within the sample, as
required by Claim 17;
or wherein the location of the respective single cell within the sample is
determined by tracking the origin of the respective single cell from one of the sample
parts and by correlating levels of molecular markers determined in the respective
sample part with levels of molecular markers determined in the respective single cell, as
required by Claim 18.
Alexander et al. teaches wherein a biological sample is dissociated into discrete/individual cellular particles which may be cells (Pg. 1, Paragraph [0004]) and wherein the cellular particles are assayed for an RNA (genomic) biomarker or a protein (proteomic) biomarker (Pg. 1, Paragraph [0008]) and wherein flow cytometry analysis may be used to analyze the genomics or proteomics of a specific cell population (Pg. 16, Paragraph [0163]).
It would have been obvious to those of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Knebel et al., Li et al., Loboda, Fuchs and Seppo et al. of embedding and imaging multiple, subdivided biological samples, such as biopsy sections, and forming a composite image of proteomic and/or genomic data which is correlated with the location of detected signals (e.g. superimposed) with the method of Alexander et al. of dissociating a biological sample into individual cells and analyzing the individual cells genomics and/or proteomics cytometrically because this would allow the individual cell proteomic and/or genomic data and images to be correlated with the location within the sample that the signals were obtained.
Those of ordinary skill in the art would have been motivated to make this modification because this would provide a composite image of both the presence and location of proteomic and/or genomic signals in the sub-samples correlated with individual cell proteomic and/or genetic signals. There would have been a reasonable expectation of success in making this modification because at least the Knebel, Seppo and Alexander references are reasonably drawn to the same field of endeavor, that is, the analysis of biological samples.
It would have been further obvious to those of ordinary skill in the art before the
effective filing date of the claimed invention to modify the method of Knebel et al., Li et
al., Loboda, Fuchs, Seppo et al. and Alexander et al. of embedding and imaging multiple, subdivided biological samples, such as biopsy sections, and determining marker locations therein, dissociating a biological sample into individual cells and analyzing the individual cells cytometrically and forming a composite image of proteomic and/or genomic data which is correlated with the location of detected signals (e.g. superimposed) with the superimposition of the obtained genomic and/or proteomic data on the composite image and tracking cell location by correlating measured biomarkers in single cells with the measured biomarkers in the sample whole because this would allow the artisan to determine the cells position in the sample and visually correlate that data to measured biomarkers in the cell and adjacent and non-adjacent cells.
Those of ordinary skill in the art would have been motivated to make this modification because this would provide a composite image of both the presence and location of proteomic and/or genomic signals in the sub-samples correlated with individual cell proteomic and/or genetic signals. There would have been a reasonable expectation of success in making this modification because at least the Knebel, Seppo and Alexander references are reasonably drawn to the same field of endeavor, that is, the analysis of biological samples.
Response to Arguments
Applicant’s arguments, see Remarks, filed 09/03/2026, with respect to the above withdrawn objection and rejections have been fully considered and are persuasive. The remaining arguments have been considered insofar as they apply to the pending rejections.
The Applicant argues that Knebel reference does not teach or suggest the limitations of amended Claim 1. Applicant asserts that Knebel exemplifies their invention for investigating living cell aggregates, such as tissue culture of skin cells and the embryonic development of vertebrates, neither of which is a biopsy or tissue section as now claimed (Remarks, Pg. 9, Lines 1-4 and Pg. 10, Lines 1-29 and Pg. 11, Lines 1-2).
This is not found to be persuasive for the reasoning provided in the above rejections. In response to Applicant's arguments against the Knebel reference individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The Examiner notes that the teachings of Knebel are not limited to the disclosed examples or preferred embodiments and the reference encompasses samples which may generally be biological samples (Pg. 2, Paragraph [0020]) while Loboda teaches a biological material which may be a biological tissue, such as a biopsy section (Pg. 6, Paragraph [0060]). Thus, those of ordinary skill in the art would have appreciated that it would have been obvious to apply the method of Knebel which teaches any biological samples generically could be applied to the analysis of a specific biological tissue, such as the biopsy section of Loboda.
The Applicant argues that the Examiner has used impermissible hindsight in the rationale that “there are only a finite number of ways to obtain a plurality of samples, either subdividing a larger sample or providing a plurality of separate unique samples” and that those of ordinary skill in the art would have been motivated to divide a larger sample “in order to obtain multiple sub-samples from a larger whole which can then be imaged”. Applicant asserts that Knebel is directed to individual organisms and cultures and the division thereof would allegedly destroy the sample to be imaged (Remarks, Pg. 11, Lines 3-16).
In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this instance, as discussed above, the teachings of Knebel are not limited to the disclosed examples or preferred embodiments and the reference encompasses samples which may generally be biological samples (Pg. 2, Paragraph [0020]) while Loboda teaches a biological material which may be a biological tissue, such as a biopsy section (Pg. 6, Paragraph [0060]). Thus, those of ordinary skill in the art would have appreciated that it would have been obvious to apply the method of Knebel of embedding and imaging multiple discrete samples to provide the plurality of samples by dividing a single initial biological sample because there are only a finite number of ways to attain a plurality of samples, either sub-dividing a larger sample or providing a plurality of separate unique samples. Those of ordinary skill in the art would have been motivated to make this modification in order to obtain multiple sub-samples from a larger whole which can then easily be imaged. Knebel teaches a method utilizing any biological samples generically and the obvious subdivision thereof, which could be applied to a specific biological tissue, such as a biopsy section of Loboda.
Such a subdivision would not “destroy” the sample and even if the sample were limited to a cell culture, cells in culture are routinely “divided”, such as by passaging and expanding new cultures.
The Applicant argues that the Li reference is not analogous art in that the reference is drawn to particle packing and porosity and describes “sphericity” generally in terms of particle mechanics and geoengineering while the instant application is drawn to imaging divided, embedded biological samples, such as tissue sections or biopsies.
(Remarks, Pg. 11, Lines 25-30 and Pg. 12, Lines 1-11).
In response to applicant's argument that Li is non-analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the reference was cited in support of the rationale that the “sphericity” of a sample is an intrinsic, result-effective optimizable variable. Li et al. generally teaches that "sphericity" is a parameter which can be applied to non-spherical shapes (Pg. 97, Abstract and Pg. 98, Table 1). This is motivation for someone of ordinary skill in the art to practice or test the generic biological sample of Knebel (as well as the specific biopsy section of Loboda) sphericity values widely to find those that are functional or optimal to provide a suitable sample for imaging which then would be inclusive or cover the instantly claimed values.
Absent any teaching of criticality by the Applicant concerning the sphericity and volume of a sample, it would be prima facie obvious that one of ordinary skill in the art would recognize these limitations are an optimizable variable which can be met as a matter of routine optimization (see MPEP § 2144.05 (II)(B). Those of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to make this modification in order to obtain a desired size and shaped sample. There would have been a reasonable expectation of success in making these modifications because the Knebel reference is drawn to the embedding and imaging of biological samples and Li et al. teaches these samples will have an intrinsic sphericity as well as volume. As every material object, including the samples of Knebel would have an intrinsic “sphericity” which changes as the samples size/shape changes is considered to be reasonably pertinent to the particular problem with which the inventor was concerned, that is, the effects of particular values of “sphericity” on an imaging method.
The Applicant argues that even if Li were analogous art, the result-effective variable rationale would not apply as it requires the prior art recognize a relationship between the variable being optimized and the achieved result. Applicant asserts that Li does not recognize any relationship between sphericity and any result while the disclosure explains the claimed sphericity enables efficient 3D imaging, improved staining/labeling and embedding of sample parts in discrete entities for handling in a fluidic system.
Applicant notes that the other cited references do not remedy the alleged deficiencies of Knebel and Li, as well as the presence of New Claims 24-25 (Remarks, Pg. 12, Lines 12-31 and Pg. 13, Lines 1-16).
This is not found to be persuasive for the following reasons, as discussed above, the prior art recognizes that “sphericity” is a parameter which achieves a recognized result. Li et al. generally teaches that "sphericity" is a parameter which can be applied to non-spherical shapes (Pg. 97, Abstract and Pg. 98, Table 1). Therefore, the ordinary artisan would have also recognized that “sphericity” will change as the size/shape of an object changes. Thus, the ordinary artisan would have recognized and appreciated that a relationship exists between the variable being optimized (sphericity) and the achieved result (object shape). In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which Applicant relies (i.e., efficient 3D imaging, improved staining/labeling and handling in a fluidic system) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The Examiner maintains the other cited prior art references, in view of Knebel and Li make obvious the claimed invention, including the new claims, for reasons of record set forth above.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to PAUL C MARTIN whose telephone number is (571)272-3348. The Examiner can normally be reached Monday-Friday 12pm-8pm EST.
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, Sharmila G Landau can be reached at (571) 272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL C MARTIN/ Examiner, Art Unit 1653 09/03/2026
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