`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box I450
`Alexandria. Virginia 223134450
`www.usplo.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`I0/193,462
`
`07/10/2002
`0'/M006
`759°
`DORSEY & WHITNEY LLP
`Suite 3400
`Four Embarcadero Center
`San Francisco, CA 94111-4187
`
`Omar D. Pcrcz
`
`468330-01773
`A-70545/RMS
`
`3984
`
`GABELGAILENE
`
`1641
`DATE MAILED: 01/31/2006
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO—90C (Rev. 10/03)
`
`Page 1 of 44
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`Fmidigm
`Exhibit 1015
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`Page 1 of 44
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`Fluidigm
`Exhibit 1015
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`

`

`Office Action Summary
`
`Application No.
`
`10/193,462
`
`Examine,
`
`Gailene R. Gabei
`
`App|icant(s)
`
`PEREZ ET AL.
`
`M Unit
`
`1641 _
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE § MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`_
`if NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute. cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months afler the mailing date of this communication, even if timely filed. may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`DE Responsive to communication(s) filed on 14 October 2005.
`2a)D This action is FINAL.
`2o)|Z This action is non-final.
`3)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)E CIaim(s) _1;32 is/are pending in the application.
`
`4a) Of the above claim(s) 10-22 and 26 is/are withdrawn from consideration.
`
`5)I:] C|aim(s) __ is/are allowed.
`
`6)|Z CIaim(s) 1-_$_J is/are rejected.
`
`7)El C|aim(s) 23-25 and 27-32 is/are objected to.
`
`8)IZ CIaim(s) _1_-.’;’_2 are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)lZ The specification is objected to by the Examiner.
`10) The drawing(s) filed on 20 December 2002 is/are: a)EI accepted or b)IZ| objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`11)[:] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)l:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)I:I All
`b)U Some * c)I:I None of:
`
`1.l] Certified copies of the priority documents have been received.
`
`2.[:l Certified copies of the priority documents have been received in Application No. __
`3.D Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachmentls)
`1) [Z Notice of References Cited (PTO-892)
`2) El Notice of Draflsperson’s Patent Drawing Review (PTO-948)
`3) [XI Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
`Paper No(s)/Mail Date 12/13/2002.
`U.S. Patent and Trademark Office
`
`4) El Interview Summary (PTO-413)
`PaP°' N°($)/Ma“ Data _-
`5) D Notice of Informal Patent Application (PT0152)
`6) C] Other:
`.
`
`PTOL-326 (Rev. 7-05)
`
`Office Action Summary
`Page 2 of 44
`
`Part of Paper No./Mail Date 121405
`Fiuidigm
`Exhibit 1015
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`Page 2 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
`
`Art Unit: 1641
`
`Page 2
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`DETAILED ACTION
`
`Election/Restrictions
`
`1.
`
`Applicant's election of Group 1, claims 1-9, 23-25, and 27-32, with traverse, filed
`
`10/14/05 is acknowledged and has been entered. Claims 10-22 and 26_are withdrawn
`
`from further consideration by the examiner, 37 CFR 1.142(b), as being claims drawn to
`
`a non-elected invention. Currently, claims 1-32 are pending. Claims 1-9, 23-25, and
`
`27-32 are under examination.
`
`2.
`
`Applicant's traversal of the restriction requirement is acknowledged. The
`
`traversal is on the basis that there would be no serious burden to search between the
`
`restricted groups.
`
`Applicant's argument is not found persuasive because restriction requirements
`
`are set forth for reasons of patentable distinction between each independent invention
`
`so as to warrant separate classification and search. Further, each independent and
`
`distinct invention is presented with separate structural and functional requirements;
`
`thus, literature search for and examination of each of the different methods are distinct,
`
`which renders patent examination of these multiple groups, burdensome to Examiner.
`
`In addition, while searches would be expected to overlap, there is no reason to expect
`
`the searches to be coextensive. Accordingly, the requirement for restriction is being
`
`maintained.
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`Page 3 Of 44
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`Fluidigm
`Exhibit 1015
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`Page 3 of 44
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`Fluidigm
`Exhibit 1015
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`

`

`Application/Control Number: 10/193,462
`Art Unit: 1641
`
`’
`
`Page 3
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`-
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`Specification
`
`3.
`
`The disclosure is objected to because of the following informalities: it contains
`
`embedded hyperlink and/or other forms of browser—executab|e code in page 36, line 34;
`
`page 37, line 29; page 41, lines 7 and 9; page 45, line 18; page 69, line 6; page 106,
`
`line 37; page 107, line 26; page 163, line 18. Applicant is required to delete the
`
`embedded hyperlink and/or other form of browser-executable code. See MPEP §
`
`608.01.
`
`4.
`
`The disclosure is also objected to because of the following informalities:
`
`- the brief description of the drawings lacks necessary differential description of
`
`Figure 3A and Figure 3B1-.4 submitted in the preliminary amendment.
`
`- the brief description of the drawings lacks necessary differentialdescription of
`
`Figure 4A-D submitted in the preliminary amendment.
`
`- the brief description of the drawings lacks necessary description of Figure 8A-1
`
`and Figure 8A-2 submitted in the preliminary amendment.
`
`- the brief description of the drawings lacks necessary description of Figure 17A
`
`and Figure 17B submitted in the preliminary amendment, and which the drawings have
`
`not been submitted as such in the original disclosure.
`
`- the brief description of the drawings lacks necessary description of Figures
`
`33E-F submitted in the preliminary amendment.
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`Page 4 Of 44
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`Fiuidigm
`Exhibit 1015
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`Page 4 of 44
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`Fluidigm
`Exhibit 1015
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`

`

`Application/Control Number: 10/193,462
`
`Art Unit: 1641
`
`Page 4
`
`- supplemental Description of Figures 33A-D added into page 29, lines 8-21 is
`
`redundant since page 28, line 24 to page 29, line 7 appears to have already provided an
`
`original description for Figures A-D.
`
`- description of Figures 34H-I added into page 30, lines 1-8 is objected to as
`
`there are does not appear to be Figures 34H-I submitted in the original disclosure, and
`
`may potentially introduce new matter.
`
`-the brief description of the drawings lacks necessary description of Figure 36D
`
`submitted in the preliminary amendment.
`
`- description of Figure 36E added into page 31, lines 9-30 is objected to as there
`
`are does not appear to be Figure 36E submitted in the original disclosure, and may
`
`potentially introduce new matter.
`
`- the brief description of the drawings lacks necessary description of Figures
`
`38A-C submitted in the preliminary amendment, and which the drawings have not been
`
`submitted as such in the original disclosure.
`
`5.
`
`The lengthy specification has not been checked to the extent necessary to
`
`determine the presence of all possible minor errors. Applicant's cooperation is
`
`requested in correcting any errors of which applicant may become aware in the
`
`specification.
`
`Trademark Usage
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`Page 5 Of 44
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`Fiuidigm
`Exhibit 1015
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`Page 5 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
`
`Page 5
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`Art Unit: 1641
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`6.
`
`The use of the trademarks ALEXA FLUOR, CASCADE BLUE, CASCADE
`
`YELLOW, OREGON GREEN, LUCIFER YELLOW, etc., has been noted in this
`
`application.
`
`it should be capitalized wherever it appears and be accompanied by the
`
`generic terminology. As the instant specification is lengthy, Applicant's cooperation is
`
`requested in correcting any other incorrectly formatted trademarks which applicant may
`
`become aware in the specification.
`
`Although the use of trademarks is permissible in patent applications, the
`
`proprietary nature of the marks should be respected and every effort made to prevent
`
`their use in any manner which might adversely affect their validity as trademarks.
`
`Information Disclosure Statement
`
`7.
`The listings of references in the specification at page 70, line 34 to page 73, line
`33; page 87, line 1 to page 92, line 2; page 109, line 30 to page 123, line 23; page 147,
`
`line 25 to page 30, line 30; page 170, line 18 to page 177, line 22; page 192, line 1 to
`
`page 197, line 18; are not a proper information disclosure statement. 37 CFR1.98(b)
`
`requires a list of all patents, publications, or other information submitted for
`consideration by the Office, and MPEP § 609.04(a) states, "the list may not be
`
`incorporated into the specification but must be submitted in a separate paper."
`
`Therefore, unless the references have been cited by the examiner on form PTO-892,
`
`they have not been considered.
`
`Sequence Compliance
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`Page 6 of 44
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`Fiuidigm
`Exhibit 1015
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`Page 6 of 44
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`Fluidigm
`Exhibit 1015
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`

`

`Application/Control Number: 10/193,462
`Art Unit: 1641
`
`-
`
`Page 6
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`8.
`
`It is noted that instant specification at page 33, lines 33-36, page 143, lines 16-17
`
`and page 166, lines 13-14, recites a nucleotide/amino acid sequence which is
`
`encompassed by the definitions for nucleotide sequences as set forth in,37 C.F.R.
`
`1.821(a)(1) and (a)(2). The M.P.E.P., Section 2422.02, 37 CFR 1.821(b) requires
`
`exclusive conformance, with regard to the manner in which the nucleotide/amino acid
`
`sequences are presented and described, with the sequence rules for all applications
`
`that include nucleotide sequences that fall within the definitions. When a sequence is
`
`presented, regardless of the format or the manner of the presentation of that sequence,
`
`the sequence must still be included in the Sequence Listing and a Sequence Identifier
`
`(“SEQ ID NO:X”) must be used. Sequence identifiers obtained through conformance
`
`(paper submission and CRF/electronic) must be inserted into the body of the
`
`specification directly following the sequence. Applicant is responsible for meeting
`
`compliance with any sequence the Examiner may have inadvertently missed.
`
`Additionally, it does not appear that the sequences disclosed in page 143 and page
`
`166, are in a Sequence Listing or submitted in a computer readable medium. Please
`
`refer to Sequence Compliance Notice mailed to Applicant on 12/29/2005.
`
`Drawing
`
`9.
`
`The drawings are objected to because of the following informalities that have not
`
`been addressed in the preliminary amendment.
`
`Page 7 Of 44
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`Fiuidigm
`Exhibit 1015
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`Page 7 of 44
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`Fluidigm
`Exhibit 1015
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`

`

`Application/Control Number: 10/193,462
`
`Art Unit: 1641
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`Page 7
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`- Figure 14A is presented as including a separate figure and is different from
`
`Figure 14A submitted in the original disclosure.
`
`- Figure 17A and Figure 17B are presented as different figures from the Figure
`
`17 submitted in the original disclosure.
`
`- Figure 20B is presented as including a separate figure and is different from
`Figure 20B submitted in the original disclosure.
`.
`
`- in Figure 21A, “% Apoptotis” should be “% Apoptosis”.
`
`- There are no Figures 33E-H submitted in the original disclosure.
`
`- Supplementary Figure 33 (A-D) appears to define the same figures as those
`
`submitted as Figures 33E-H in the preliminary amendment.
`
`- There are no Figures 34H-I submitted in the original disclosure.
`
`- Supplementary Figure 34 (A-B) appears to define the same figures as those
`
`submitted as Figures 34H-I in the preliminary amendment.
`
`- There is no Figure 35E submitted in the original disclosure.
`
`- Supplementary Figure 35 appears to define the same figure as that submitted
`
`as Figure 35E in the preliminary amendment.
`
`- There are no Figures 36D-E submitted in the original disclosure.
`
`- Supplementary Figure 36 appears to define the same figures as those
`
`submitted as Figures 36D-E in the preliminary amendment.
`
`- Figure 38A is presented as different figures from those defined as Figure 38A
`
`submitted in the original disclosure.
`
`Page 8 Of 44
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`.
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`Fluidigm
`Exhibit 1015
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`Page 8 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
`
`Art Unit: 1641
`
`Page 8
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`10.
`
`App|icant’s cooperation is requested in correcting any errors of which applicant
`
`may become aware in the specification and if the incongruencies aforementioned are
`
`supposed errors. The lengthy specification has not been checked to the extent
`
`necessary to determine the presence of all possible minor errors.
`
`11.
`
`As the specification is rather lengthy, it has not been thoroughly checked to the
`
`extent necessary to determine descriptive support for all amendments effected in the
`
`preliminary amendment of the specification and drawings. Accordingly, Applicant is
`
`advised to point where in the specification, certain specific subject matters are
`
`discussed, that provide evidentiary support for all the amendments effected in the
`
`preliminary amendment, in response to this Office Action.
`
`12.
`
`Examiner acknowledges Applicant’s submission of corrected formal drawings for
`
`Figures 6-12.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`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.
`
`13.
`
`Claims 1-9 are rejected under 35 U.S.C. 112, second paragraph, as being
`
`indefinite for failing to particularly point out and distinctly claim the subject matter which
`
`applicant regards as the invention.
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`Page 9 Of 44
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`Fjuidigm
`Exhibit 1015
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`Page 9 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
`
`Art Unit: 1641
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`Page 9
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`Claim 1, step c) lacks clear antecedent support in reciting, “said binding of
`
`antibodies” because step b), parts i) and ii) only recite that the first and the second
`
`activation state-specific antibodies are “capable of binding”.
`
`Claim 1, step c) is vague and indefinite in reciting, “said binding of said first and
`
`second activation state-specific antibodies in single cells of said population of cells”
`
`because it fails to clearly define what the first and second activation state-specific
`antibodies bind to, in the single cells since step b), parts i) and ii) only recite that the first
`
`and the second activation state-specific antibodies are “capable of binding”. Perhaps,
`
`Applicant intends, “said binding of said first and second activation state-specific
`
`antibodies to their corresponding isoform of said first and second activatable proteins in
`
`single cells of said population of cells”.
`
`Claim 1, step c) is further vague and indefinite in reciting, “using flow cytometry to
`
`detect said binding
`
`in single cells of said population” because it is unclear how
`
`differential flow cytometric detection of binding between each of the antibodies and their
`
`corresponding isoform of activatable proteins, is effected in the absence of a label for
`
`each of the antibodies.
`
`It appears that each of the individual activatable protein in the
`
`single cells upon which the antibodies bind must be labeled and to a differential extent
`
`in order to thus, distinguish between each of the first and second proteins, so as to meet
`
`the requirement of the preamble which recites, “detecting the activation state of at least
`
`a first and a second activatable protein [present] in single cells”.
`
`Claim 1 is rejected under 35 U.S.C. 112, second paragraph, as being incomplete
`
`for omitting essential steps, such omission amounting to a gap betweenthe steps. See
`
`Page 10 Of 44
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`Fluidigm
`Exhibit 1015
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`Page 10 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
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`Page 10
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`Art Unit: 1641
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`MPEP § 2172.01.
`in this case, claim 1 lacks a permeabilization or lysing step which is a
`critical step in order to allow the activation state-specific antibodies to penetrate the cell
`
`membrane of single cells so as to also bind to intracellular activatable proteins, i.e.
`
`enzymes, located within the cells. See especially page 67, lines 20-22 and page 69,
`
`lines 9-11 and 21-22 of Applicant's disclosure.
`
`Claim 6 lacks antecedent basis in reciting, “said first activation site-specific
`
`antibody” and “said second activation site-specific antibody”.
`
`Claim 9 lacks antecedent basis in reciting, “said plurality of activation site-specific
`
`antibodies.”
`
`Claim Objections
`
`14.
`
`Claims 23-25 and 27-32 are objected to under 37 CFR 1 .75(c) as being in
`
`improper form because a multiple dependent claim shall contain a reference, in the
`
`alternative only, to more than one claim previously set forth, and then specify a further
`
`limitation of the subject matter claimed. See MPEP § 608.01 (n). Accordingly, claims
`
`g
`
`23-25 and 27-32 have not been further treated on the merits.
`
`Scope of Enablement
`
`The following is a quotation of the first paragraph of 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. _
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`Page 11 of 44
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`Fluidigm
`Exhibit 1015
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`Page 11 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
`
`Art Unit: 1641
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`Page 11
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`15.
`
`Claims 1-9 are rejected under 35 U.S.C. 112, first paragraph, because the
`
`specification, while being enabled for,
`
`A method for detecting activation state of at least a first and a second activatable
`
`protein in single cells which comprises
`
`providing a population of cells having a first and a second activatable protein,
`
`permeabilizing or lyzing the cells,
`
`contacting the population of cells with a plurality of activation state-specific
`
`antibodies,
`
`and using flow cytometry to detect binding interaction between the activatable
`
`proteins and their corresponding activation state-specific antibodies, and
`
`wherein binding therebetween is indicative of the activation state of the
`
`activatable protein; does not reasonably provide enablement for,
`
`A method for detecting activation state of at least a first and a second activatable
`
`protein in single cells which comprises
`
`providing a population of cells having a first and a second activatable protein,
`
`contacting the population of cells with a plurality of activation state-specific
`
`antibodies,
`
`and using flow cytometry to detect binding interaction between the activatable
`
`proteins and their corresponding activation state-specific antibodies, and
`
`wherein binding therebetween is indicative of the activation state of the
`
`activatable protein;
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`Page 12 of 44
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`Fiuidigm
`Exhibit 1015
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`Page 12 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
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`Page 12
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`Art Unit: 1641
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`as claimed, without a Iysis step or a permeabilization step for the cells so as to
`
`allow for the activation state-specific antibodies to bind to many intracellular activatable
`proteins such as kinases and caspases which are encompassed and recited in the
`
`claimed invention. As currently recited, the activation state-specific antibodies can only
`
`bind activatable cell surface proteins that are readily accessible in the cell membranes
`
`of the populations of cells. 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.
`
`As set forth in In re Wands, 858 F .2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988),
`
`enablement requires that the specification teach those skilled in the art to make and use
`
`the invention without undue experimentation. Factors to be considered in determining,
`
`whether a disclosure would require undue experimentation include 1) the nature of the
`
`invention, 2) the state of the prior art, 3) the predictability or lack thereof in the art, 4) the
`
`amount of direction or guidance present, 5) the presence or absence of working
`
`examples, 6) the quantity of experimentation necessary, 7) the relative skill of those in
`
`the art, and 8) the breadth of the claims.
`
`The nature of the invention- the invention is directed to a method of detecting the
`
`activation state of at least a first and a second activatable protein in single cells wherein
`
`intracellular and extracellular activatable proteins in the cells are caused to be contacted
`
`with activation state-specific antibodies for binding and wherein binding therebetween is
`
`detected by flow cytometry to provide an indication of the activation state of each of the
`
`proteins that bound.
`
`Page 13 of 44
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`Fluidigm
`Exhibit 1015
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`Page 13 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
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`Page 13
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`Art Unit: 1641
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`The state of the prior art- the prior art of record discloses a method of detecting
`
`the activation state of activatable proteins in lysed or permeabilized cells so that
`
`intracellular and extracellular activatable proteins in the cells are contacted with
`
`activation state-specific antibodies for binding, and wherein binding therebetween is
`
`detected by flow cytometry to provide an indication of the activation state of each of the
`
`proteins that bound.
`
`The predictability or lack thereof in the art- there is no predictability based on the
`
`instant specification that the claimed method can flow cytometrically detect intracellular
`
`activatable proteins such as intracellular kinases and intracellular caspases, in the
`
`absence of a permeabilization or lysis step that allows for activation state-specific
`
`antibodies to penetrate single cells and bind to intracellular proteins present therein.
`
`The amount of direction or guidance present- appropriate guidance is provided
`
`by the specification for the claimed method to work in detecting only acti_vatable cell
`
`surface proteins in cells by binding them with antibodies specific thereto. However, the
`
`specification fails to provide any guidance to enable the claimed method to function in
`
`detecting any and all of intracellular and extracellular activatable proteins, absent a
`
`permeabilization or lysis step to cause the intracellular activatable proteins to also be
`
`bound by antibodies that are specific for them.
`
`The presence or absence of working examples- working examples are provided
`
`in the specification that show use of permeabilization step or lysis step in order to allow
`
`activation state-specific antibodies to bind activatable intracellular proteins present in
`
`the single cells. There do not appear to be working examples that show analogous
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`Page 14 of 44
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`Fiuidigm
`Exhibit 1015
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`Page 14 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
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`Art Unit: 1641
`
`Page 14
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`-
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`results absent use of a permeabilization step or lysis step in the claimed method, which
`
`is encompassed by the broad scope of the instant claims.
`
`The quantity of experimentation necessary- it would require undue amount of
`
`experimentation for the skilled artisan to use the method as claimed.
`
`The relative skill of those in the art-the level of skill in the art is high.
`
`The breadth of the claims- as recited, the instant claims are directed to a method
`
`that is applicable to flow cytometric detection of any and all activatable intracellular and
`
`extracellular proteins without any regard as to how the activatable intracellular proteins
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`can be accessed for binding within intact cell membranes by antibodies specific to them,
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`absent a permeabilization or Iysis step.
`
`In this case, the claimed method does not recite any limitation pertaining to how
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`each and all of the activatable proteins present in cells are caused to be bound by
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`activation-specific antibodies. Claim 1 merely requires the intact cells to be contacted
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`with the activation specific antibodies. The examples in the specification, however, all
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`show that a permeabilization or lysis step is required in the claimed method to allow
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`activation state-specific antibodies to bind to certain specific activatable intracellular
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`proteins such as kinases and caspases. The breadth of the claims certainly intends to
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`encompass binding of all activatable proteins present in the cells, including those that
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`are intracellular and extracellular, using antibodies specific thereto, but fails to recite
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`how this can be done without a required permeabilization or lysis step to allow for the
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`antibodies to access and bind the activatable intracellular proteins for detection. See
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`especially page 67, lines 20-22, page 69, lines. 9-11 and 21-22, page 77, lines 12-14.
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`Page 15 of 44
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`Fiuidigm
`Exhibit 1015
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`Page 15 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
`Art Unit: 1641
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`Page 15
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`in as far as general state of the art, the Craig et al. (US Patent 6,972,198)
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`reference which teaches a method of detecting protein conformations consonant with
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`the activity of the proteins, provides that activatable proteins such as kinases “are
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`intracellular and tissue specific” (see column 1, lines 64-67) and are required to be
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`bound to labeled activation specific antibodies for detection so as to provide an
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`indication of the activation state of the proteins in the cells. The Cravatt et al. (US
`
`Patent 6,872,574) reference also provide that antibodies or probes must readily pass
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`through a cellular membrane, i.e. permeabilized or lysed, in order to bind them with
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`activatable intracellular proteins to which they are specific (see column 22, lines 5-38).
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`In view of the teachings of In re Wands, 8 USPQ2d 1400, it has been determined
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`that the level of experimentation required to enable the breadth of the claims is undue.
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`It has been set forth above that 1)the experimentation required to enable the claimed
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`method for detecting any and all activatable proteins present in cells absent a
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`permeabilization or lysis step, would be great as, 2) there is no experimental evidence
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`provided that would indicate that the claimed method would work in binding and
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`detecting any activatable proteins, other than extracellular or cell surface proteins; 3)
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`there is no proper guidance that shows binding and detection of any and all activatable
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`proteins absent a permeabilization step or lysis step in the instant specification, 4) the
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`nature of the invention is a method of detecting the activation state of at least a first and
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`a second activatable protein in single cells wherein intracellular and extracellular
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`activatable proteins in the cells are caused to be contacted with activation state-specific
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`antibodies for binding and wherein binding therebetween is detected by flow cytometry
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`Page 16 Of 44
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`Fiuidigm
`Exhibit 1015
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`Page 16 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
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`Page 16
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`Art Unit: 1641
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`to provide an indication of the activation state of each of the proteins that bound, 5) the
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`relative skill of those in the art is high, yet 6) the state of the prior art has been shown to
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`be unpredictable as evidenced by the fact that no prior art has been cited that shows
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`detection of all activatable proteins, including intracellular proteins, without the necessity
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`of a permeabilization or lysis step, and lastly 7) the claims broadly recitea method that
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`is applicable to flow cytometric detection of any and all activatable intracellular and
`
`extracellular proteins without any regard as to how the activatable intracellular proteins
`
`can be accessed for binding within intact cell membranes by antibodies specific to them,
`
`absent a permeabilization or lysis step, and without specifically stating how this can be
`
`done without undue experimentation.
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`Therefore, it is maintained that one of ordinary skill in the art could not use the
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`invention as claimed without undue experimentation.
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`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:
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`A person shall be entitled to a patent unless -
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in public
`use or on sale in this country, more than one year prior to the date of application for patent in the United
`States.
`
`16.
`
`Claims 1, 3, and 7-9 are rejected under 35 U.S.C. 102(b) as being anticipated by
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`Belloc et al. (Flow Cytometry Detection of Caspase 3 Activation in Preapoptotic
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`Leukemic Cells (Cytometry 40: 151-160 (2000)).
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`Page 17 of 44
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`”
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`Fiuidigm
`Exhibit 1015
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`Page 17 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
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`.
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`Page 17
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`Art Unit: 1641
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`Belloc et al. teach detecting activated caspase 3 in a population of leukemic cells
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`using phycoerythrin-labeled anti-activated caspase 3 antibodies by flow cytometry
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`method. Belloc et al. specifically taught permeabilizing and fixing the cells (Permeafix)
`
`in order to allow for the phycoerythrin-labeled anti-activated caspase 3 antibodies to
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`bind and label the activated caspase-3. According to Belloc et al., caspase 3 is a
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`cleaved product of procaspase 3, a constitutive proenzyme, that is activated by
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`cleavage during apoptosis. See Abstract and page 153, column 1. Belloc et al. also
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`teach determining DEVDase activity in caspase 3 and caspase 7 in cells using a
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`plurality of DEVDase activation site-specific antibodies comprising anti-caspase 3
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`antibody and anti-caspase 7 antibody. DEVDase results from activation of caspase 3
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`and caspase 7 activation in chemo-induced apoptotic leukemic cells (see page 154,
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`column 2 to page 155 columns 1 and 2).
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`This application currently names joint inventors.
`
`In considering patentability of
`
`the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of
`
`the various claims was commonly owned at the time any inventions covered therein
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`were made absent any evidence to the contrary. Applicant is advised of the obligation
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`Page 18 of 44
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`Fiuidigm
`Exhibit 1015
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`Page 18 of 44
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`Fluidigm
`Exhibit 1015
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`

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`Application/Control Number: 10/193,462
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`Page 18
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`Art Unit: 1641
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`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
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`not commonly owned at the time a later invention was made in order for'the examiner to
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`consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g)
`
`prior art under 35 U.S.C. 103(a).
`
`17.
`
`Claims 2 and 4-6 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Belloc et al. (Flow Cytometry Detection of Caspase 3 Activation in Preapoptotic
`
`Leukemic Cells (Cytometry 40: 151-160 (2000)) in view of Craig et al. (US Patent
`
`6,972,198).
`
`Belloc et al. is discussed supra. Belloc et al. differ from the instant invention in
`
`failing to disclose that the activatable proteins are kinases, which are phosphorylated
`
`kinases, and which are detected by isoform specific antibodies thereto.
`
`Craig et al. disclose a method for determining activation state (conformational
`
`state) of proteins which exist in more than one