Indee. Inc.

Patent Trials and Appeals Board

Dec 9, 2021

2022000801 (P.T.A.B. Dec. 9, 2021)

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.
16/100,158 08/09/2018 Ryan Pawell IND3-002-030US 1020
127866 7590 12/09/2021
Southern Cross Intellectual Property
PO Box 906
Brisbane QLD, 4001
AUSTRALIA
EXAMINER
POPA, ILEANA
ART UNIT PAPER NUMBER
1633
NOTIFICATION DATE DELIVERY MODE
12/09/2021 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):
docketing@martinip.com
tmartin@martinip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte RYAN PAWELL
__________

Appeal 2022-000801
Application 16/100,158
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, CYNTHIA M. HARDMAN, and
JAMIE T. WISZ, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
introducing an exogenous material into a cell. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Real Party in Interest as Indee. Inc.
(see Appeal Br. 2). We have considered the Specification of Sept. 18, 2018
(“Spec.”); Non-Final Office Action of May 28, 2020 (“Non-Final Action”);
Appeal Brief of June 20, 2021 (“Appeal Br.”); Examiner’s Answer of Oct. 8,
2021 (“Ans.”); and Reply Brief of Nov. 17, 2021 (“Reply Br.”). We note
that this application is related to US 15/497,122 which was the subject of
related Appeal 2021-005157.
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Application 16/100,158

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Statement of the Case
Background
The “ability to introduce exogenous material and in particular nucleic
acids into cells in a quick and efficient manner is both a valuable research
tool and a useful component of a therapeutic strategy” (Spec. ¶ 7).
“Conventional physical methods used to transfect eukaryotic cells include
the use of magnetic nanoparticles, electroporation, bolistic particle delivery
and microinjection. However, these methods tend to be quite harsh on the
cells” (id. ¶ 11).
The Specification teaches a method for introducing exogenous
material into “any cell with a cell membrane or cell wall that may be
temporarily permeabilised when said cell is exposed to a transient decrease
in pressure. The cell may or may not be viable before or after being exposed
to the transient decrease in pressure in the method of the invention” (Spec.
¶ 85).
The Claims
Claims 1–26, 29, and 30 are on appeal. Claim 1 is an independent
claim, is representative and reads as follows:
1. A method introducing an exogenous material into a cell,
comprising:
inducing a first condition around the cell where there is a first
ambient pressure insufficient to lyse the cell;
inducing a second condition around the cell where a second
ambient pressure is less than the first ambient pressure; and
inducing a third condition around the cell where a third ambient
pressure is greater than the second ambient pressure, the third
condition being induced while the cell is in an unsteady flow, which
creates a permeabilized cell membrane, allowing the exogenous
material to be introduced into the cell.
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The Rejections
A. The Examiner rejected claims 1–9, 14–22, 29, and 30 under 35 U.S.C.
§ 103(a) as obvious over Sharei,2 Doranz,3 Clarke,4 Hans,5 and Liao6 (Ans.
3–7).
B. The Examiner rejected claims 1–26, 29, and 30 under 35 U.S.C.
§ 103(a) as obvious over Sharei, Doranz, Clarke, Hans, Liao, and Wang7
(Ans. 7–8).
A. 35 U.S.C. § 103(a) over Sharei, Doranz, Clarke, Hans, and Liao
The Examiner finds Sharei teaches intracellular delivery of an
exogenous material by “passing a fluid comprising cells and the material to
be delivered through an enclosed microchannel comprising multiple
constrictions having a dimension smaller than the cell diameter to
mechanically deform (squeeze) the cells such as to induce transient holes
into the cell membrane and introduce the exogenous material into the cell”
(Ans. 3–4). The Examiner acknowledges that Sharei does not teach the use
of pressure changes.
The Examiner finds that Doranz teaches “vortices can be used to
create transient holes in lipid membranes for introducing exogenous

2 Sharei et al., A vector-free microfluidic platform for intracellular delivery,
110 PROC. NAT’L ACAD. SCI. USA 2082–87 (2013).
3 Doranz et al., US 2005/0123563 A1, published June 9, 2005.
4 Clarke et al., US 8,529,026 B2, issued Sept. 10, 2013.
5 Hans et al., Comparison of pressure and ultrasound measurements in
vortex flow meters, 33 MEASUREMENT 121–33 (2003).
6 Liao et al., The Kármán gait: novel body kinematics of rainbow trout
swimming in a vortex street, 206 J. EXPERIMENTAL BIOL. 1059–73 (2003).
7 Wang et al., Vortex-assisted DNA delivery, 10 LAB CHIP 2057–61 (2010).
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materials” and asserts “a vortex is a functional equivalent to squeezing”
(Ans. 4). The Examiner finds Clark teaches “vortices can be created within
the microchannels of microfluidic devices” by placing pillars in
microchannels (id.). The Examiner finds Hans and Liao teach that “vortex
structures are areas of lower pressure than the surrounding liquid” (id. at 5).
The Examiner therefore finds that:
by modifying Sharei et al. via using cylindrical bluff
bodies, one of skill in the art would have exposed the cell to:
(i) a first pressure upstream of the cylindrical bluff
bodies, insufficient to lyse the cells (first condition); (ii) a
vortex directly behind the cylindrical bluff body (i.e., the cell is
in an unsteady flow) characterized by a second pressure lower
than the first pressure (second condition as recited in claim 1;
first negative pressure change as recited in claim 14); and (iii)
increasing pressure while the cell is in an unsteady flow and
moving away from the cylindrical bluff body. . . . wherein the
unsteady flow temporarily permeabilizes the cell membrane
without cell lysis.
(Ans. 6).
The issue with respect to this rejection is: Does a preponderance of the
evidence of record support the Examiner’s conclusion that the prior art
suggests the methods of claims 1 and 14?
Findings of Fact
1. Sharei teaches methods “for cytosolic delivery based on rapid
mechanical deformation of the cell to produce transient membrane
disruptions that facilitate the passive diffusion of material into the cell
cytosol. This method was developed with the aim of delivering almost any
macromolecule of interest to almost any cell type, at high throughput”
(Sharei 2082, col. 2).
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2. Figure 1, panels A and B of Sharei are reproduced below:

Fig. 1. Delivery mechanism and system design. (A)
Illustration of delivery hypothesis whereby the rapid
deformation of a cell, as it passes through a microfluidic
constriction, generates transient membrane holes. Includes an
electron micrograph of current parallel channel design with blue
cells as an illustration. (B) Image of a finished device
consisting of Pyrex bound to silicon for sealing.
(Sharei 5283, col. 1).
3. Sharei teaches “the rapid mechanical deformation of a cell, as it
passes through a constriction with a minimum dimension smaller than the
cell diameter, results in the formation of transient membrane disruptions or
holes” (Sharei 2082, col. 2).
4. Sharei teaches:
We identified cell speed, constriction dimensions, and number
of constrictions as three parameters that influence delivery
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efficiency (defined as the fraction of live cells that receive the
delivery material []) by altering the shear and compression rates
experienced by the cells. For example, delivery efficiency of
membrane-impermeable, Cascade Blue-labeled 3-kDa dextran
molecules to live HeLa cells increases monotonically with cell
speed across different constriction designs . . . Constriction
dimensions also impact delivery; increasing the constriction
length from 20 to 40 μm almost doubled delivery efficiency at
all operating speeds . . . with minimal effect on viability . . .
Decreasing constriction width had a similar effect . . .
Increasing the number of constrictions in series also increased
delivery efficiency such that a device with five 10-μm length
constrictions in series outperformed a single 10-, 20-, or 40-μm
length design across all cell speeds.
(Sharei 2083, col. 2).
5. Doranz teaches: “Temporary poration or permeabilization can
be achieved by such treatments as electroporation, exposure to chemicals or
proteins (e.g. streptolysin-O, aerolysin, maltoporin, P2X7, melittin),
mechanical stress (e.g. sonication, vortex mixing), and the like” (Doranz
¶ 555).
6. Clarke teaches “a device and method for generating droplets of
a fluid in a controlled manner with a low range of size dispersity at a rate
sufficient for practical commercial use” (Clarke 2:57–60).
7. Clarke teaches
flow instability may be caused, for example, by the creation of
a series of unsteady eddies within the channel. Preferably, the
flow instability is caused by the shedding, preferably periodic
or regular, of vortices. Most preferably the flow instability is
due to a vortex street in the droplet fluid in the channel.
(Clarke 5:38–43).

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8. Clarke teaches “perturbation means may include bluff bodies
placed within a channel of constant cross-section or it may include changes
to the geometry of the channel cross-section, for example constrictions,
corners or junctions” (Clarke 6:5–9).
9. Hans teaches a “vortex structure represents an area of lower
pressure and density than in the surrounding fluid” (Hans 122, col. 2).
10. Liao teaches “staggered vortices behind cylinders” and teaches
“low-pressure, high-vorticity regions in the cylinder wake” (Liao 1069, col.
1).
Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
We are not persuaded by the Examiner’s finding that “one of skill in
the art would have readily recognized that a vortex street created by bluff
bodies is a functional equivalent to squeezing with respect to creating
transient holes in the cell membrane” (Ans. 5). While we appreciate that
Sharei teaches poration using a microfluidic constriction (FF 4) and Doranz
mentions poration using vortex mixing (FF 5), there is no discussion in any
cited reference that vortex mixing poration would operate in a microfluidic
environment.
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And we find the Examiner’s reliance on Doranz for vortices
particularly unpersuasive, because Doranz is clearly referring to a vortex
mixer, a simple common laboratory device used to mix microcentrifuge
tubes or other small vials (FF 6). Doranz is not referring to microfluidic
devices such as those of Sharei. Doranz does not reasonably suggest that
vortices in microfluidic devices are equivalent to constriction in microfluidic
devices. Doranz therefore lacks persuasive evidence that vortices in
microfluidic devices would reasonably be expected to result in the cell
poration obtained in Sharei’s device.
Also, whether or not we agree with Appellant as to the analogous art
status of Clarke, we do agree with Appellant that there is no evidence that
vortexing induced by bluff bodies or alternate channel geometries as in
Clarke (FF 8) would inherently and necessarily result in poration should
cells be placed into those channels. “Inherency . . . may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” MEHL/Biophile Int’l.
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). There is no need
to dispute the Examiner’s finding that vortices are associated with lower
pressure as in Hans and Liao (FF 9, 10) because the Examiner provides no
persuasive evidence that any vortex of any pressure necessarily results in
poration into cells.
We therefore agree with Appellant that this rejection relies on
hindsight. “We must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
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invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008).
Conclusion of Law
A preponderance of the evidence of record does not support the
Examiner’s conclusion that the prior art renders the methods of claims 1 and
14 obvious.

B. 35 U.S.C. § 103(a) over Sharei, Doranz, Clarke, Hans, Liao, and
Wang
Having reversed the obviousness rejection of claim 1 for the reasons
given above, we also find that the Examiner does not point to teachings in
Wang that render the rejected claims obvious. We therefore reverse this
rejection for the same reasons as given above.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–9, 14–
22, 29, 30
103 Sharei, Doranz, Clarke,
Hans, Liao
1–9, 14–
22, 29, 30
1–26, 29,
30
103 Sharei, Doranz, Clarke,
Hans, Liao, Wang
1–26, 29,
30
Overall
Outcome
1–26, 29,
30

REVERSED