Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 09/10/26 has been entered.
3. 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.
4. 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.
5. 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.
6. 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.
7. Claims 2-27 are rejected under 35 U.S.C. 103 as being unpatentable over Yellen et al. (WO 2019/079399).
Regarding independent claims 2 and 19, Yellen discloses a method comprising: introducing a plurality of live cells into a fluidic device such that a first cell is located in a first discrete area and a second cell is located in a second different discrete area; measuring interactions between different types of cells; and in the first discrete area releasing nucleic acids from the first cell and sequencing the nucleic acids. See paragraphs 4, 10, 43-50, 58-60, 78, 104, 109-111, 114-132, and 168-169.
Yellen does not explicitly or literally disclose step (b) of ‘measuring an interaction between the first individual live cell and the second individual live cell’.
However, in paragraph 50 of Yellen, near the middle of page 10, it is recited: ‘The disclosed methods, devices, and systems can also be used to study the interactions between different types of cells…’ (emphasis added).
One of ordinary skill in the art would have been motivated to modify the method of Yellen by measuring an interaction between first and second cells in different first and second discrete areas of the fluidic device because this was directly suggested by Yellen in the teaching that, ‘the disclosed methods, devices, and systems can also be used to study the interactions between different types of cells’. This follows by straightforward, logical scientific reasoning in that the discrete areas or cell-trapping features of Yellen are in fluidic communication by interconnecting fluid channels, thus facilitating the measurement of ‘interactions between different types of cells’ in different discrete areas or features. It would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to carry out the claimed methods.
Regarding claims 3-4, Yellen discloses using a capture oligonucleotide comprising a barcode in the first discrete area.
Regarding claim 5, use of capture oligonucleotides comprising a sequencing primer was conventional in the prior art to facilitate sequencing of captured target nucleic acids.
Regarding claims 6-8, Yellen discloses sequencing nucleic acids released from the first cell in the first discrete area.
Regarding claim 9, Yellen discloses detecting mRNA released from cells via production of cDNA.
Regarding claim 10, Yellen discloses lysing cells to release nucleic acids.
Regarding claim 11, Yellen discloses capturing nucleic acids within a discrete area.
Regarding claims 12-14 and 21-23, Yellen discloses detecting a cell-cell interaction involving a produced molecule, including a cytokine.
Regarding claims 15 and 24, Yellen discloses detecting interaction between different cell types.
Regarding claims 16 and 25, Yellen discloses that the first and second cell are in biological communication.
Regarding claims 17 and 26, Yellen discloses measuring a cell response to a drug.
Regarding claims 18 and 27, Yellen discloses using human cells and assessing a health status.
Regarding claim 20, sequencing by in-situ hybridization was conventional in the prior art, and thus would have been suggested merely by straightforward, logical scientific reasoning.
CONCLUSION
8. No claims are free of the prior art.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH R HORLICK whose telephone number is (571)272-0784. The examiner can normally be reached Mon. - Thurs. 8:30 - 6:30.
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, Gary Benzion can be reached at 571-272-0782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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09/16/26
/KENNETH R HORLICK/ Primary Examiner, Art Unit 1681
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