Ex Parte Courtney et al

Patent Trial and Appeal Board

Mar 23, 2017

12162444 (P.T.A.B. Mar. 23, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/162,444 11/12/2008 Patrick Courtney 920602-107942 mi
23644 7590 03/27/2017
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
EXAMINER
SHEN, BIN
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
03/27/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Patent-ch@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK COURTNEY and ALISTAIR FITCH
Appeal 2015-0066301
Application 12/162,444
Technology Center 1600
Before RICHARD M. LEBOVITZ, JOHN G. NEW and TIMOTHY G.
MAJORS, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed a method of modifying a
biological sample comprising a mixed population of cells by enriching the
sample with respect to cells of interest. The Examiner rejected the claims as
anticipated under 35 U.S.C. § 102. We have jurisdiction under 35 U.S.C.
§134. The rejection is affirmed.
1 The Appeal Brief (“Appeal Br.”) 2 lists PerkinElmer Singapore PTE Ltd.,
as the real-party-in-interest.
Appeal 2015-006630
Application 12/162,444
STATEMENT OF CASE
Appellants appeal from the Examiner’s final rejection of claims 1—4,
6—15, 17, and 18 as anticipated by Palsson (U.S. Pat. No. 6,514,722 B2, pat.
Feb. 4, 2003). Final Rejection (“Final Rej.”) 2
Claim 1, the only independent on appeal, reads as follows:
1. A method of modifying a biological sample comprising a
mixed population of cells by enriching the sample with respect
to cells of interest, comprising the steps of:
(a) providing a sample comprising a plurality of cells
which include a photosensitive compound that can be induced
by light irradiation to inactivate or kill at least part of the
respective cell;
(b) acquiring a time sequence of images of the plurality
of cells;
(c) identifying cells of interest in the sample images from
said plurality of cells by analysis of the sequence of images
acquired in step (b) by an image processing arrangement, the
identification of cells of interest being based on detection of a
predetermined event involving those cells;
(d) selecting cells from said plurality of cells other than
the cells identified in step (c);
and
(e) irradiating only those cells selected in step (d) by
directing a light beam to particular locations to induce the
photosensitive compound therein to inactivate or kill at least
part of those cells, and to enrich the sample with respect to the
cells of interest for further analysis.
REJECTION
The Examiner rejected the claims as anticipated by Palsson.
Appellants did not argue the claims separately. Consequently, the claims
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Below, each step of
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Appeal 2015-006630
Application 12/162,444
the claim is listed followed by the anticipatory disclosure of Palsson as
summarized in the pertinent findings of fact (“FF”).
(a) providing a sample comprising a plurality of cells which include a
photosensitive compound that can be induced by light irradiation to
inactivate or kill at least part of the respective cell;
FF1
This invention provides a high-speed method and apparatus for
selectively identifying, and individually targeting with an
energy beam, specific cells within a cell population for the
purpose of inducing a response in the targeted cells. Using the
apparatus of the present invention, every detectable target cell
in a cell population can be specifically identified and targeted,
without substantially affecting cells that are not being targeted.
The cells can be a mixed population or of a homogenous origin.
Palsson, col. 4,11. 59—67.
FF2
A patient with a B cell-derived metastatic tumor in need of an
autologous HSC transplant is identified by a physician. As a
first step in the treatment, the patient undergoes a standard HSC
harvest procedure, resulting in collection of approximately
lxlO10 hematopoietic cells with an unknown number of
contaminating tumor cells.
Id., col. 18,11. 10-16.
FF3
This invention provides a high-speed method and
apparatus for selectively identifying, and individually targeting
with an energy beam, specific cells within a cell population for
the purpose of inducing a response in the targeted cells.
Id., col. 4,11. 59—62 (see FF1 above) (emphasis added).
FF4
The nature of the response that is induced by the energy beam
is dependent upon the nature of the energy beam. The response
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Application 12/162,444
can be lethal or non-lethal. Thus, examples of responses that
can be induced with an energy beam include necrosis,
apoptosis, optoporation (to allow entry of a substance that is
present in the surrounding medium, including genetic material),
cell lysis . . . activation of a photosensitive substance, excitation
of fluorescent reagent, photobleaching, and molecular
uncaging.
Id., col. 5,11. 20-30 (emphasis added).
FF5
Although this embodiment describes the killing of cells via
thermal heating by the energy beam, one skilled in the art
would recognize that other responses can also be induced in the
cells by an energy beam, including photomechanical disruption,
photodissociation, photoablation, and photo chemical reactions,
as reviewed by Niemz (Niemz 1996). For example, a
photosensitive substance (e.g., hemtoporphyrin derivative, tin-
etiopurpurin, lutetuim texaphyrin) (Oleinick and Evans 1998)
within the cell mixture could be specifically activated in
targeted cells by irradiation.
Id., col. 12,11. 16-25.
Palsson teaches “providing a sample comprising a plurality of cells”
(FF1, FF2). Palsson describes “includ[ing] a photosensitive compound that
can be induced by light irradiation to inactivate or kill at least part of the
respective cell,” where an energy beam is used to selectively target cells and
they have been identified (FF3) and where photosensitive compounds can be
used to kill the cells (FF4, FF5).
(b) acquiring a time sequence of images of the plurality of cells;
(c) identifying cells of interest in the sample images from said
plurality of cells by analysis of the sequence of images acquired in
step (b) by an image processing arrangement, the identification of
cells of interest being based on detection of a predetermined event
involving those cells;
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Application 12/162,444
FF6
In addition to the illumination laser 305, an optional treatment
laser 400 is present to irradiate the targeted cells once they have
been identified by image analysis. Of course, in one
embodiment, the treatment induces necrosis of targeted cells
within the cell population.
Palsson, col. 10,11. 56—60 (emphasis added).
FF7
It is readily apparent to one skilled in the art that the single
filter 460 could be replaced by a movable filter wheel that
would allow different filters to be moved in and out of the
optical pathway. In such an embodiment, images of different
wavelengths of light could be captured at different times during
cell processing, allowing the use of multiple cell labels.
Id., col. 13,11. 11—17 (emphasis added).
Palsson teaches “identifying cells of interest” by image analysis
(FF6), and that such images utilized in the analysis can be collected at
different time intervals (“a time sequence of images of the plurality of
cells”) (FF7) as required by step (b) of the claim. The “predetermined
events” of step (c) reads on the image or morphology of the imaged cell.
Final Rej. 3.
(d) selecting cells from said plurality of cells other than the cells
identified in step (c);
(e) irradiating only those cells selected in step (d) by directing a light
beam to particular locations to induce the photosensitive compound
therein to inactivate or kill at least part of those cells, and to enrich
the sample with respect to the cells of interest for further analysis.
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Application 12/162,444
FF8
The cells targeted can be labeled as is often the case when the
specimen is a mixed population . . . Generally, the method first
employs a label that acts as a marker to identify and locate
individual cells of a first population of cells within a cell
mixture that is comprised of the first population of cells and a
second population of cells. The cells targeted by the apparatus
and methods herein are those that are selectively labeled, in the
case of a mixed population of cells, or the ones undergoing
interrogation or intersection by the illumination source or
energy beam.
Palsson, col. 7,11. 27-42.
FF9
ft should be noted that if no specific label is available for cells
of the first population, the method can be implemented in an
inverse fashion by utilizing a specific label for cells of the
second population. For example, in hematopoietic cell
populations, the CD34 or ACC-133 cell markers can be used to
label only the primitive hematopoietic cells, but not the other
cells within the mixture. In this embodiment, cells of the first
population are identified by the absence of the label, and are
thereby targeted by the energy beam.
Id., col. 8,11. 5—13 (emphasis added).
In steps (b) and (c) of claim 1, cells are identified from a time
sequence of images (FF7). Palsson also teaches that cells not labeled can be
selected and irradiated as in step (e) of claim 1 (FF9). Thus, Palsson teaches
that cells which are not labeled in the time sequence (FF7) (“other than the
cells identified in step (c)”) can be selected as required by step (d) of claim 1
and then irradiated as in step (e) (FF8, FF9).
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Discussion
Appellants contend that “Palsson does not disclose the irradiation of
cells selected based upon identification of cells of interest from a time
sequence of images of the original sample of cells as required in claim 1
Appeal Br. 12. Specifically, Appellants contend that the Examiner’s
reference to Example 11 as teaching “acquiring a time sequence of images
of the plurality of cells” is an error because in the example the time-lapse
images are acquired after the step of irradiating in contrast to the order
required by the claims. Id., 11—12 (compare steps (e) and (b)). See also
Reply Br. 3.
We agree with Appellants that Example 11 does not describe the order
of steps required by claim 1. However, in addition to Example 11, the
Examiner also cited the disclosure at column 13, line 14++ of Palsson (Ans.
4, 6) which describes capturing a sequence of images at different times
during cell processing to allow the use of multiple labels (FF7). Such image
analysis is performed for the purpose of identifying cells which are to be
irradiated, including to kill (necrosis) cells (FF6). In addition to teaching a
time-sequence of images (FF7), Palsson also teaches that the first population
to be targeted with the energy beam can be identified by the absence of the
label (FF9). Thus, if the time sequence described by Palsson (FF7) is used
to identify a second population of cells which is to be spared (e.g., if the
second population are the HSC cells of Palsson’s Example 1 (FF2)) by
distinguishing it from other populations of cells in the mixture, then step (d)
and (e) of claims 1 are met because then the unlabeled cells would be
irradiated (FF9).
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Application 12/162,444
There is adequate evidence to establish that Palsson describes every
step of the claimed invention “arranged as in the claim.” Net Money IN, Inc.
v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Palsson describes
identifying cells by image analysis (FF6), and specifically teaches time
sequence capture (step (b)) as an alternative to single image capture (FF7).
Palsson also teaches targeting cells which are unlabeled and not captured by
the image analysis of steps (d) and (e) (FF9). Thus, there are only a few
envisageable alternatives: performing a time-sequence or collecting only one
image; and irradiating labeled or unlabeled cells. Anticipation can be
established when a small genus is disclosed and each member can be at once
envisaged. In re Petering, 301 F.2d 676, 681 (CCPA 1962). Even if choices
are to be made, such choices do not disqualify the disclosure from being
anticipatory. In Wm. Wrigley Jr. Co. v. Cadbury Adams USALLC, 683 F.3d
1356, 1361-62 (Fed. Cir. 2012)
For the foregoing reasons, the anticipation rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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