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 .
Claim Rejections - 35 USC § 102
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.
Claim(s) 50 – 53, 57, 58, and 65 – 69 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taylor (US 2006/0141539 A1).
With respect to independent claim 50, Taylor teaches in Fig. 4 a method for controlling cell signaling, cell differentiation, or both, in a cell, the method comprising:
(a) providing or obtaining a plurality of cells 13, wherein at least one cell of the plurality of cells expresses a light-activatable protein see paragraph [0064] which, upon stimulation with light, activates a cell signaling pathway, a cell differentiation pathway, or both; and
(b) selectively illuminating as disclosed in paragraph [0062] the at least one cell with light by passing the light through an optical mask see paragraph [0062] configured to selectively block passage of a wavelength of light, wherein the at least one cell is illuminated with a wavelength of light which is not blocked by the optical mask, thereby selectively activating the cell signaling pathway, the cell differentiation pathway, or both, in the at least one cell.
With respect to dependent claim 51, in paragraph [0062] Taylor should have wherein the optical mask comprises an aperture, a core region, a cut-out feature, an etched feature, or any combination thereof.
With respect to dependent claim 52, Taylor teaches wherein the optical mask comprises a photomask see paragraph [0007], an intensity mask, a phase mask, or any combination thereof.
With respect to dependent claim 53, Taylor teaches in paragraph [0062] and in paragraph [0062] wherein the light is emitted from an illumination device.
With respect to dependent claim 57, Taylor teaches wherein the at least one light guide photo mask is configured to provide uniform illumination to at least a subset of the plurality of cells.
With respect to dependent claim 58, Taylor teaches wherein the light comprises at least one illumination parameter selected from the group consisting of: an illumination intensity, an illumination duration, an illumination pattern, an illumination wavelength see paragraph [0063], and any combination thereof.
With respect to dependent claim 65 – 67, the limitations of “ wherein the light-activatable protein is selected from the group consisting of: a cryptochrome, a photoactive yellow protein (PYP) photosensor, a photoreceptor of blue light using flavin adenine dinucleotide (BLUF), a light, oxygen or voltage sensing (LOV) domain, and a phytochrome, wherein the light-activatable protein is a light-inducible dimerizer and wherein the light-inducible dimerizer is selected from the group consisting of: a CRY2/CIB system, a Phy/Pif system, and a BphP1/PpsR2 system” cannot carry patentability because they are known samples.
With respect to dependent claim 68, Taylor teaches in paragraph [0064] wherein the light-activatable protein is coupled to a protein or a protein domain involved in the cell signaling pathway, the cell differentiation pathway, or both.
With respect to dependent claim 69, Taylor teaches in Fig. 4 wherein the plurality of cells are on a multi-well plate or on a tissue culture plate.
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.
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) 54 and 56 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taylor, and further in view of Deisseroth (US 2015/0072394 A1).
The teaching of Taylor has been discussed above.
With respect to dependent claim 54, Taylor is silent with wherein the illumination device comprises at least one light- emitting diode (LED).
In paragraph [0199], Deisseroth, a pertinent art, teaches LED as a light source. In view of this, it would be obvious at the time of the claimed invention was filed to modify the teaching of Taylor in order to provide a desired light source with a known light source. This is in consistency with the Supreme Court Decision of the KSR. V. International Co.: Simple substitution of one known, equivalent element for another to obtain predictable results.
With respect to dependent claim 56, Taylor is silent with wherein the illumination device further comprises at least one light guide. In paragraph [0199], Deisseroth teaches fiber optics. In view of this, it would be obvious at the time of the claimed invention was filed to modify the teaching of Taylor in order to deliver desired light from a desired light source. This is in consistency with the Supreme Court Decision of the KSR. V. International Co.: applying a known technique to a known device (method or product) ready for improvement to yield predictable results.
Claim(s) 55 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taylor, and further in view of Sato (US 2015/0330905 A1).
The teaching of Taylor has been discussed above.
With respect to dependent claim 55, Taylor is silent with wherein the illumination device is wirelessly controllable.
In paragraph [0092], Sato, a pertinent art, teaches light sources controlled wirelessly. In view of this, it would be obvious at the time of the claimed invention was filed to modify the teaching of Taylor in order to control desired light source by a known method. This is in consistency with the Supreme Court Decision of the KSR. V. International Co.: applying a known technique to a known device (method or product) ready for improvement to yield predictable results.
Allowable Subject Matter
Claims 59 – 64 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to dependent claim 59, as discussed above, Taylor is the closest art, but the prior art of record fails to teach or reasonably suggest:
wherein the illumination parameter comprises illumination intensity, and an amount of light-activatable protein is activated based on the illumination intensity.
With respect to dependent claim 60, the prior art of record fails to teach or reasonably suggest:
wherein the illumination intensity is below an amount that causes phototoxicity in the plurality of cells.
With respect to dependent claim 61, the prior art of record fails to teach or reasonably suggest:
wherein the illumination intensity is from about 0.005 µW/mm2 to about 20 µW/mm2.
With respect to dependent claim 62, the prior art of record fails to teach or reasonably suggest:
wherein the illumination pattern comprises a pulsing pattern, a sinusoidal pattern, a linear pattern, a blinking pattern, or any combination thereof.
With respect to dependent claim 63, the prior art of record fails to teach or reasonably suggest:
wherein the illumination pattern comprises a pulsing frequency, and wherein the pulsing frequency is about 1 Hz or more.
With respect to dependent claim 64, the prior art of record fails to teach or reasonably suggest:
wherein the illumination duration is about 0.5 ms or more.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIHO KIM, Ph.D. whose telephone number is (571)270-1628. The examiner can normally be reached M-F: 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Makiya can be reached at (571)272-2273. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KIHO KIM, Ph.D.
Primary Examiner
Art Unit 2884
/Kiho Kim/Primary Examiner, Art Unit 2884