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 .
Detailed Action
Pursuant to a preliminary amendment filed on March 21, 2025, claims 43 - 62 are currently pending in the instant application.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on November 11, 2024, and August 16, 2024 has been considered. An initialed copy of the IDS accompanies this Office Action.
Priority
The present application filed August 16, 2024, is a 35 U.S.C. 371 national stage filing of International Application No. PCT/EP2023/053213, filed February 9, 2023, which claims the benefit of EP22158620.9, filed February 24, 2022.
Therefore, the earliest priority date is February 24, 2022.
Claim Rejection - 35 USC § 112(b)
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 43 - 62 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.
Claims 43, 47, 48, 51, 55, 56, 57, and 59 – 62 are indefinite for the recitation of ….preferably” such as recited in claim 43, line 3. It is unclear exactly what are limitations of the claim. For example, in claim 43, it is unclear what percentage of the heavy metal compound is being used in the buffered aqueous solution. Thus, the metes and bounds of the claim cannot be determined.
Claims 44 – 46, and 49 are indefinite insofar as they ultimately depend on claim 43.
Claims 52 – 54, and 58 are indefinite insofar as they ultimately depend on claim 51.
Claim Rejection - 35 USC § 112(a) Scope of Enablement
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 43 - 62 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the Specification, while being enabling for the protocol described in Table 2 of the as-Filed Specification, wherein the heavy metal compound is 2% OsO4, the buffered aqueous solution is 0.15 M CaC, pH 7.4, the reducing agent is 2.5% FeCN, the staining amplification agent is 4% Pyrogall in H20, the heavy metal agent of step 10 is 4% Uranyl Acetate (UA) in water, wherein the sample is first cultured in UA overnight for 14h at 4 C, and then cultured in UA for 2h at 50 C, wherein the sample is a sample is of a brain of size 2 – 3 mm,
does not reasonably provide enablement for any heavy metal compound, buffered aqueous solution, reducing agent, staining amplification agent, or heavy metal compound, culturing the sample in UA for any amount of time at any temperature, or staining any sample of any size. The Specification does not enable any person skill in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The claims, when given the broadest possible interpretation, encompasses a method for en-bloc staining of a biological tissue, comprising the steps disclosed in claim 43 of the instant claims. The Specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The test of enablement is whether one skilled in the art could make and use the claimed invention from the disclosures in the patent coupled with information known in the art without undue experimentation (United States v. Telectronics, Inc., 8 USPQ2d 1217 (Fed. Cir. 1988)). Whether undue experimentation is required is not based on a single factor but is rather a conclusion reached by weighing many factors (See Ex parte Forman, 230 USPQ 546 (Bd. Pat. App. & Inter, 1986) and In re Wands, 8USPQ2d 1400 (Fed. Cir. 1988); these factors include the following:
Nature of invention. The invention a method for en-bloc staining of a biological tissue, comprising the steps disclosed in claim 43 of the instant claims.
Scope of the invention. The invention encompasses a method of en-bloc staining of a biological tissue for dense neuronal circuit reconstruction.
Number of working examples and guidance. In the instant case, Applicant provides one example wherein 2×3×2 mm.sup.3 human samples were stained based on the 2 mm protocol (Table 1) (Paragraph [0519]). Table 1 teaches overview of 2 – 3 mm, hemisphere, and whole brain protocol steps with incubation time and temperature steps. Table 2 is also very similar, in terms of steps, incubation time, and temperature steps, to Table 1. These protocol requires using specific reagents at particular concentrations and at particular temps and pH.
State of the art. Although the field of en bloc staining biological tissues is highly developed,
the particular method for en bloc staining as taught by the instantly recited claims is not highly developed. The art must therefore be considered to be poorly developed.
Unpredictability of the art. Before the effective filing date of the claimed invention, it was
known in the art that there are many staining methods that are known in the art, as summarized in the supplementary table 1, as evidenced by Hua et al. (Hua, Y. et al. Large-volume en-bloc staining for electron microscopy-based connectomics. Nat Commun 6, 7923 (2015)). In the protocol taught by Hua et al., 1% uranyl acetate is used (while the instant claims teach the use of 4% uranyl acetate), and does not teach incubating in OsO4 twice (as taught by the instantly recited claims).
Additionally, it as known in the art that although a variety of electron microscopic techniques can achieve ~10 nm isotropic resolution, none are well suited to image tissue volumes in the 1 mm3 range and above, as evidenced by Hayworth et al. (Hayworth KJ. Et al. Gas cluster ion beam SEM for imaging of large tissue samples with 10 nm isotropic resolution. Nat Methods. 2020 Jan;17(1):68-71.) (pg. 68, left column, second paragraph).
Amount of Experimentation Required. Given the unpredictability of the art, the many different en bloc staining methods known in the art, which includes the use of 1% uranyl acetate, and the lack of techniques to image tissues in the 1 mm3 range and above, the skilled artisan would have to conduct undue, and unpredictable experimentation to practice the claimed invention for en bloc staining of the tissues.
Conclusion
Claims 43 – 62 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VYOMA SHUBHAM TIWARI whose telephone number is (571)272-2954. The examiner can normally be reached M-F 8:30 - 5:30 EST.
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/VYOMA SHUBHAM TIWARI/Examiner, Art Unit 1634
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
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