DETAILED ACTION
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. This action is in response to the Patent Board Decision mailed February 5, 2026. The Examiner was reversed on the Improper Markush Group Rejection.
Claims 60, 66-67, 88, 90-95, 97-98, and 101-107 are currently pending.
The election of species requirement between the recited miRNAs, as set forth in the Office action mailed on February 7, 2022 , has been reconsidered in view of the Board Decision. The election of species requirement is hereby withdrawn. The non-elected miRNA’s are no longer withdrawn from consideration.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 60, 66-67, 95, and 101-104 are rejected under 35 U.S.C. 103 as being unpatentable over Hannon (US 2007/0072204 Pub 3/29/2007) in view of Jacob (US 2014/0341841 Pub 11/20/2014) and Cui (PloS One August 2011 Vol 6 Issue 8 e22988).
Regarding Claim 60 Hannon teaches a method for determining the efficacy of a therapeutic treatment regimen in a patient, comprising: a) measuring the expression level of one or more miRNAs in a first biological sample obtained from the patient, thereby generating data for a control level; b) administering the treatment regimen to the patient; c) measuring the expression level of at least one or more miRNA in a second biological sample from the patient at a time following administration of the treatment regimen, thereby generating data for a test level; and d) comparing the control level to the test level on a miRNA-by-miRNA basis, wherein data showing no decrease for any miRNA in the test level relative to the control level indicates that the treatment regimen is not effective in the patient. Thus Hannon teaches a method of treating a
a human subject in need thereof, the method comprising: (a) determining at a first time point a first level of one or more miRNAs in a first sample obtained from the human subject; (b) after the first time point and before a second time point, administering a first treatment; (c) determining a second level of the one or more miRNAs of step (a) in a second sample obtained from the human subject at the second time point; and (d) determining that the first treatment administered in step (b) was not effective.
Hannon does not teach a method wherein the treatment is for radiation-induced damage (clm 60). Hannon does not teach a method wherein the sample is a serum sample (clm 60). Hannon does not teach a method wherein the one or more miRNAs is selected from the group consisting of miR-130a-3p, miR-150-5p, miR-142-5p, miR-342-3p, miR-126-3p, miR-34b-3p, miR-187-3p, miR-194-5p, miR-27a-3p, and miR-30a-3p (clm 60). Hannon does not teach that the treatment for reducing radiation-induced damage is selected from the group consisting of: a cytokine, and blood transfusion (clm 60). Hannon does not teach administering a second treatment for reducing radiation-induced damage to the human subject, wherein the first treatment for reducing radiation-induced damage is not the same as the second treatment for reducing radiation-induced damage (clm 60). Hannon does not teach that (i) an elevation in the second level of one or more miRNAs selected from the group consisting of miR-142-5p, miR-150-5p, miR-342-3p, miR-187-3p, miR-194-5p, and miR-27a-3p, and (ii) a decrease in the second level of one or more miRNAs selected from the group consisting of miR-130a-3p, miR-126-3p, miR-34b-3p as compared to the first level indicates that the treatment for reducing radiation- induced damage administered to the human subject was effective (clm 60). Hannon does not teach a method wherein the cytokine is granulocyte-colony stimulating factor (clms 66 and 101). Hannon does not teach that an elevation in the second level of each of miR-150-5p, miR-342-3p, and miR-194-5p as compared to the first level indicates that the treatment for reducing radiation-induced damage administered to the human subject was effective (clm 95).
However Jacob discloses methods for measuring exposure of a mammalian subject to ionizing radiation. The methods generally involve determining in a cell-free biological sample (e.g., serum or plasma) from the subject the levels of radiation-sensitive miRNAs whose blood levels are radiation dose- and time-dependent (para 0007). Jacob discloses examples of radiation-sensitive miRNA, including miR-126-3p (para 0008). Jacob further teaches that 88 miRNAs detected in serum samples were evaluated for their radiation does dependent changes (para 0115 Fig 4A). Jacob teaches that changes were observed in several miRNAs distinguishable from irradiated versus controls and between different dosages of radiation (para 0115, Figures 4B-4D). In particular Jacob teaches that miR-130a and miR-150 are radio-responsive serum biomarkers (para 0116 and Figs 4B, 5A, 6A-B). Further Jacob teaches triaging a subject using the disclosed microRNAs as a dosimeter of radiation exposure, and then selecting an appropriate therapy for the subject depending on the exposure. Jacob teaches treating the mammalian subject for radiation poisoning if the normalized levels of radiation-sensitive miRNA in the sample indicate exposure by the subject to remediable doses of ionizing radiation. For example, the subject can be treated with hematopoietic stem cell transplant, blood transfusion, or administration of growth factors, such as GM-CSF (Neupogen), within few days of whole body exposure a significant dose (e.g., 2 Gy and above) or a partial body exposure to a significant dose (e.g., 4Gy and above) (para 0013). Finally it is noted that Jacob teaches that radiation exposure decreases the level of miRNA-150 in comparison to controls (Fig 5a, 6a).
Additionally Cui teaches plasma miRNA biomarkers for assessment of total body radiation exposure dosimetry. Cui teaches that they demonstrated using a murine model that plasma miRNA expression signatures could distinguish mice that received total body irradiation doses of 0.5 Gy, Gy, 2 Gy, and 10 Gy (at 6 h or 24 h post radiation) with accuracy, sensitivity, and specificity of above 90%. Taken together, these data demonstrate that plasma miRNA profiles can be highly predictive of different levels of radiation exposure. Thus, plasma-based biomarkers can be used to assess radiation exposure after mass-casualty incidents, and it may provide a valuable tool in developing and implementing effective countermeasures (abstract). Figure 1A shows clustering of 40 samples (10 controls and 10 samples from each of the following radiation doses 0.5 Gy, 2 Gy and 10 Gy at 6 h) using 239 differentially expressed miRNAs. It is noted that miR-194 is listed in this Table and is shown as being overexpressed at 10 Gy. Figure 3 shows differential expression of miRNA after different radiation doses at 6 hours. Cui teaches that miR-27a is changed in the 0.5 Gy 6 group compared to controls (Fig 3 A). Cui teaches that miR-130a and miR-342-5p is changed in the 10 Gy 6 group compared to controls (Fig 3 C). Cui teaches that miR-187 and miR-34b-3p is changed in all three radiation groups compared to controls (Fig 3 D). Figure 4 shows differential expression of miRNA after different radiation doses at 24 hours. Cui teaches that miR-30a is changed in all three radiation groups compared to controls (Fig 4 D). Figure 6 shows miRNA profiles that distinguish different levels of radiation exposure at 6h. Cui teaches that miR-142-5p predicts radiation dose exposure at 6 hours (Fig 6 E). Finally it is noted that Cui teaches that radiation exposure decreases the level of miR-342-59 in comparison to controls (Fig 3c) and that radiation exposure decreases the level of miR-194 in comparison to controls (Fig 1A)
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have adapted the method of Hannon to determine if a treatment for reducing radiation-induced damage is effective. Hannon teaches that miRNA markers can be used to determine the efficacy of a therapeutic treatment (para 0011). The prior art of Jacob teaches therapeutic treatments for radiation including cytokines and blood transfusions (para 0013). The prior art of Jacob further teaches radiation sensitive miRNA biomarkers. Based on these teachings one of skill in the art would have been motivated adapt the method of Hannon by using the radiation sensitive biomarkers to determine if a treatment for reducing radiation induced damage is effective for the benefit of improving the treatment of patients which have been exposed to radiation. Further it would have been obvious to continue to administer a treatment that is effective or switch to a different treatment if a treatment is not effective for the benefit of improving treatment of patients which have been exposed to radiation. Further it would have been obvious to measure the levels of miR-130a-3p, miR-150-5p, miR-142-5p, miR-342-3p, miR-126-3p, miR-34b-3p, miR-187-3p, miR-194-5p, miR-27a-3p, and miR-30a-3p since the prior arts of Jacob and Cui teaches that each of these biomarkers are radiation sensitive and differentially expressed in samples that have been exposed to radiation in comparison to those that have not. Based on this teaching there was a reasonable expectation of success that the biomarkers are differentially expressed following radiation exposure would return to their normal levels if a treatment for radiation exposure was effective and would not return to their normal levels if a treatment for radiation exposure was not effective. Additionally there is a reasonable expectation that any biomarker that is radiation sensitive in plasma will also be radiation sensitive in serum and vice versa particularly since Jacob teaches that the biomarkers can be detected in either sample type (para 0007). Further where the prior art teaches only that for example miR-130a is radiation sensitive and the claims recite miR-130a-3p, there is a reasonable expectation that miR-130a-3p will also be radiation sensitive since it is derived from miR-130a. Finally where the prior art teaches that a murine miRNA is a radiation sensitive biomarker, there was a reasonable expectation of success that the human miRNA will also be radiation sensitive.
Hannon does not teach a method wherein the miRNA levels are detected by
amplifying the miRNAs in the samples to generate amplification products, contacting the amplified products to a substrate, and detecting the amplified products bound to the substrate (clms 67 and 102).
However Jacob teaches miRNA can be amplified prior to measurement (para 0037). Jacob teaches that miRNA levels may be detected by hybridization assays such as microarrays (para 0044-0046).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Hannon by detecting miRNA by amplifying the miRNAs in the samples to generate amplification products, contacting the amplified products to a substrate, and detecting the amplified products bound to the substrate as suggested by Jacob. One of skill in the art would have been motivated to detect miRNA levels using the claimed methodology since as demonstrated by Jacob the method was conventional in the art for detecting miRNA expression.
Hannon does not teach a method wherein the treatment is for radiation disease caused by exposure to a sublethal, high and not lethal, or lethal dose of radiation (para 103). Hannon does not teach a method wherein the sublethal dose of radiation is less than or equal to 2 Gy of radiation; the high and not lethal dose of radiation is greater than 2 Gy to about 6 Gy; and the lethal dose of radiation is greater than about 6.5 Gy (clm 104).
However Jacob teaches that lower doses (2-5 GY) are not immediately lethal (para 0004). Jacob teaches treating the mammalian subject for radiation poisoning if the normalized levels of radiation-sensitive miRNA in the sample indicate exposure by the subject to remediable doses of ionizing radiation. For example, the subject can be treated with hematopoietic stem cell transplant, blood transfusion, or administration of growth factors, such as GM-CSF (Neupogen), within few days of whole body exposure a significant dose (e.g., 2 Gy and above) or a partial body exposure to a significant dose (e.g., 4Gy and above) (para 0013).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Hannon by administering a treatment for reducing radiation induced damage to a subject with sublethal or high and not lethal dose of radiation as suggested by Jacob for the benefit of improving the acute effects of radiation poisoning in these subjects.
5. Claims 88, 90-93 are rejected under 35 U.S.C. 103 as being unpatentable over Jacob (US 2014/0341841 Pub 11/20/2014) in view of Cui (PloS One August 2011 Vol 6 Issue 8 e22988).
Regarding Claim 88 Jacob discloses methods for measuring exposure of a mammalian subject to ionizing radiation. The methods generally involve determining in a cell-free biological sample (e.g., serum or plasma) from the subject the levels of radiation-sensitive miRNAs whose blood levels are radiation dose- and time-dependent (para 0007). Jacob discloses examples of radiation-sensitive miRNA, including miR-126-3p (para 0008). Jacob further teaches that 88 miRNAs detected in serum samples were evaluated for their radiation does dependent changes (para 0115 Fig 4A). Jacob teaches that changes were observed in several miRNAs distinguishable from irradiated versus controls and between different dosages of radiation (para 0115, Figures 4B-4D). In particular Jacob teaches that miR-130a and miR-150 are radio-responsive serum biomarkers (para 0116 and Figs 4B, 5A, 6A-B). Further Jacob teaches triaging a subject using the disclosed microRNAs as a dosimeter of radiation exposure, and then selecting an appropriate therapy for the subject depending on the exposure. Jacob teaches treating the mammalian subject for radiation poisoning if the normalized levels of radiation-sensitive miRNA in the sample indicate exposure by the subject to remediable doses of ionizing radiation. For example, the subject can be treated with hematopoietic stem cell transplant, blood transfusion, or administration of growth factors, such as GM-CSF (Neupogen), within few days of whole body exposure a significant dose (e.g., 2 Gy and above) or a partial body exposure to a significant dose (e.g., 4Gy and above) (para 0013). Finally it is noted that Jacob teaches that radiation exposure decreases the level of miRNA-150 in comparison to controls (Fig 5a, 6a). Thus Jacob teaches a method of treating a human subject in need thereof, wherein the human subject has previously been determined to have: a decreased serum level of miR-150 relative to a reference level of the miRNA, wherein the reference level of the miRNA is a level of the miRNA in a reference serum sample from a human subject not exposed to radiation, the method comprising administering to the human subject a treatment for radiation disease, wherein the treatment for radiation disease is a cytokine or blood transfusion.
Jacob does not teach a method of treating a human subject previously been determined to have: an increased serum level of miR-130a- 3p, miR-126-3p, or miR-34b-3p, or a decreased serum level of miR-142-5p, miR-150-5p, miR-342-3p, or miR-194-5p (clm 88).
However Cui teaches plasma miRNA biomarkers for assessment of total body radiation exposure dosimetry. Cui teaches that they demonstrated using a murine model that plasma miRNA expression signatures could distinguish mice that received total body irradiation doses of 0.5 Gy, Gy, 2 Gy, and 10 Gy (at 6 h or 24 h post radiation) with accuracy, sensitivity, and specificity of above 90%. Taken together, these data demonstrate that plasma miRNA profiles can be highly predictive of different levels of radiation exposure. Thus, plasma-based biomarkers can be used to assess radiation exposure after mass-casualty incidents, and it may provide a valuable tool in developing and implementing effective countermeasures (abstract). Figure 1A shows clustering of 40 samples (10 controls and 10 samples from each of the following radiation doses 0.5 Gy, 2 Gy and 10 Gy at 6 h) using 239 differentially expressed miRNAs. It is noted that miR-194 is listed in this Table and is shown as being overexpressed at 10 Gy. Figure 3 shows differential expression of miRNA after different radiation doses at 6 hours. Cui teaches that miR-130a and miR-342-5p is changed in the 10 Gy 6 group compared to controls (Fig 3 C). Cui teaches that miR-34b-3p is changed in all three radiation groups compared to controls (Fig 3 D). Figure 6 shows miRNA profiles that distinguish different levels of radiation exposure at 6h. Cui teaches that miR-142-5p predicts radiation dose exposure at 6 hours (Fig 6 E). Finally it is noted that Cui teaches that radiation exposure decreases the level of miR-342-59 in comparison to controls (Fig 3c) and that radiation exposure decreases the level of miR-194 in comparison to controls (Fig 1A)
Accordingly it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Jacob by administering a treatment for radiation disease to a subject known to differential expression of the recited biomarkers. It would have been obvious to measure the levels of miR-130a-3p, miR-150-5p, miR-142-5p, miR-342-3p, miR-126-3p, miR-34b-3p, miR-187-3p, miR-194-5p, miR-27a-3p, and miR-30a-3p prior to treating a subject for radiation disease since the prior arts of Jacob and Cui teaches that each of these biomarkers are radiation sensitive and differentially expressed in samples that have been exposed to radiation in comparison to those that have not. There is a reasonable expectation that any biomarker that is radiation sensitive in plasma will also be radiation sensitive in serum and vice versa particularly since Jacob teaches that the biomarkers can be detected in either sample type (para 0007). Further where the prior art teaches only that for example miR-130a is radiation sensitive and the claims recite miR-130a-3p, there is a reasonable expectation that miR-130a-3p will also be radiation sensitive since it is derived from miR-130a. Finally where the prior art teaches that a murine miRNA is a radiation sensitive biomarker, there was a reasonable expectation of success that the human miRNA will also be radiation sensitive.
Regarding Claim 90 Jacob teaches a method wherein the cytokine granulocyte colony-stimulating factor (para 0013).
Regarding Claim 91 Jacob teaches that miRNAs in serum samples from control and irradiated animals collected 24 hrs after 1, 2, 4, 6 and 8 Gy total body irradiation (TBI) were compared (para 0115). Thus Jacob teaches a method wherein the serum level of the miRNA is from a serum sample obtained from the subject within 30 minutes to 96 hours after possible exposure of the subject to radiation.
Regarding Claims 92-93 Jacob teaches that lower doses (2-5 GY) are not immediately lethal (para 0004). Jacob teaches treating the mammalian subject for radiation poisoning if the normalized levels of radiation-sensitive miRNA in the sample indicate exposure by the subject to remediable doses of ionizing radiation. For example, the subject can be treated with hematopoietic stem cell transplant, blood transfusion, or administration of growth factors, such as GM-CSF (Neupogen), within few days of whole body exposure a significant dose (e.g., 2 Gy and above) or a partial body exposure to a significant dose (e.g., 4Gy and above) (para 0013).
Regarding Claim 94 Jacob discloses methods for measuring exposure of a mammalian subject to ionizing radiation. The methods generally involve determining in a cell-free biological sample (e.g., serum or plasma) from the subject the levels of radiation-sensitive miRNAs whose blood levels are radiation dose- and time-dependent (para 0007). Jacob discloses examples of radiation-sensitive miRNA, including miR-126-3p (para 0008). Jacob further teaches that 88 miRNAs detected in serum samples were evaluated for their radiation does dependent changes (para 0115 Fig 4A). Jacob teaches that changes were observed in several miRNAs distinguishable from irradiated versus controls and between different dosages of radiation (para 0115, Figures 4B-4D). In particular Jacob teaches that miR-130a and miR-150 are radio-responsive serum biomarkers (para 0116 and Figs 4B, 5A, 6A-B). Further Jacob teaches triaging a subject using the disclosed microRNAs as a dosimeter of radiation exposure, and then selecting an appropriate therapy for the subject depending on the exposure. Jacob teaches treating the mammalian subject for radiation poisoning if the normalized levels of radiation-sensitive miRNA in the sample indicate exposure by the subject to remediable doses of ionizing radiation. For example, the subject can be treated with hematopoietic stem cell transplant, blood transfusion, or administration of growth factors, such as GM-CSF (Neupogen), within few days of whole body exposure a significant dose (e.g., 2 Gy and above) or a partial body exposure to a significant dose (e.g., 4Gy and above) (para 0013). Finally it is noted that Jacob teaches that radiation exposure decreases the level of miRNA-150 in comparison to controls (Fig 5a, 6a). Thus Jacob teaches a method of treating a human subject in need thereof, the method comprising: (a) determining a level of miR-130a, miR-150, and miR-126-3p in a serum sample from a human subject; (b) comparing the levels of the one or more miRNAs in the serum sample from the human subject to reference levels of the one or more miRNAs, wherein the reference levels of the one or more miRNAs are levels of the one or more miRNAs in a reference serum sample from a human subject not exposed to radiation; (c) determining that: (i) the levels miR-150 are decreased, in the serum sample from the human subject compared to the reference levels of the one or more miRNAs; and (d) administering a treatment for reducing damage induced by radiation to the human subject, wherein the treatment for radiation disease is a cytokine or a blood transfusion.
Jacob does not teach a method of determining a level miR-130a-3p, miR-150-5p, miR-142-5p, miR-342-3p, miR-126-3p, miR- 34b-3p, or miR-194-5p, in a serum sample from the human subject. Jacob does not teach determining that (i) the levels of miRNAs miR-130a-3p, miR-126-3p, or miR-34b-3p are increased, and (ii) the levels of miRNAs miR-142-5p, miR-150-5p, miR-342-3p, or miR-194-5p are decreased, in the serum sample from the human subject compared to the reference levels of the one or more miRNAs (clm 94).
However Cui teaches plasma miRNA biomarkers for assessment of total body radiation exposure dosimetry. Cui teaches that they demonstrated using a murine model that plasma miRNA expression signatures could distinguish mice that received total body irradiation doses of 0.5 Gy, Gy, 2 Gy, and 10 Gy (at 6 h or 24 h post radiation) with accuracy, sensitivity, and specificity of above 90%. Taken together, these data demonstrate that plasma miRNA profiles can be highly predictive of different levels of radiation exposure. Thus, plasma-based biomarkers can be used to assess radiation exposure after mass-casualty incidents, and it may provide a valuable tool in developing and implementing effective countermeasures (abstract). Figure 1A shows clustering of 40 samples (10 controls and 10 samples from each of the following radiation doses 0.5 Gy, 2 Gy and 10 Gy at 6 h) using 239 differentially expressed miRNAs. It is noted that miR-194 is listed in this Table and is shown as being overexpressed at 10 Gy. Figure 3 shows differential expression of miRNA after different radiation doses at 6 hours. Cui teaches that miR-130a and miR-342-5p is changed in the 10 Gy 6 group compared to controls (Fig 3 C). Cui teaches that miR-34b-3p is changed in all three radiation groups compared to controls (Fig 3 D). Figure 6 shows miRNA profiles that distinguish different levels of radiation exposure at 6h. Cui teaches that miR-142-5p predicts radiation dose exposure at 6 hours (Fig 6 E). Finally it is noted that Cui teaches that radiation exposure decreases the level of miR-342-5p in comparison to controls (Fig 3c) and that radiation exposure decreases the level of miR-194 in comparison to controls (Fig 1A).
Accordingly it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Jacob by administering a treatment for radiation disease to a subject known to differential expression of the recited biomarkers. It would have been obvious to measure the levels of miR-130a-3p, miR-150-5p, miR-142-5p, miR-342-3p, miR-126-3p, miR-34b-3p, miR-187-3p, miR-194-5p, miR-27a-3p, and miR-30a-3p prior to treating a subject for radiation disease since the prior arts of Jacob and Cui teaches that each of these biomarkers are radiation sensitive and differentially expressed in samples that have been exposed to radiation in comparison to those that have not. There is a reasonable expectation that any biomarker that is radiation sensitive in plasma will also be radiation sensitive in serum and vice versa particularly since Jacob teaches that the biomarkers can be detected in either sample type (para 0007). Further where the prior art teaches only that for example miR-130a is radiation sensitive and the claims recite miR-130a-3p, there is a reasonable expectation that miR-130a-3p will also be radiation sensitive since it is derived from miR-130a. Finally where the prior art teaches that a murine miRNA is a radiation sensitive biomarker, there was a reasonable expectation of success that the human miRNA will also be radiation sensitive.
Regarding Claim 97 Jacob discloses methods for measuring exposure of a mammalian subject to ionizing radiation. The methods generally involve determining in a cell-free biological sample (e.g., serum or plasma) from the subject the levels of radiation-sensitive miRNAs whose blood levels are radiation dose- and time-dependent (para 0007). Jacob further teaches that 88 miRNAs detected in serum samples were evaluated for their radiation does dependent changes (para 0115 Fig 4A). Jacob teaches that changes were observed in several miRNAs distinguishable from irradiated versus controls and between different dosages of radiation (para 0115, Figures 4B-4D). In particular Jacob teaches that miR-150 is a radio-responsive serum biomarker (para 0116 and Figs 4B, 5A, 6A-B). Further Jacob teaches triaging a subject using the disclosed microRNAs as a dosimeter of radiation exposure, and then selecting an appropriate therapy for the subject depending on the exposure. Jacob teaches treating the mammalian subject for radiation poisoning if the normalized levels of radiation-sensitive miRNA in the sample indicate exposure by the subject to remediable doses of ionizing radiation. For example, the subject can be treated with hematopoietic stem cell transplant, blood transfusion, or administration of growth factors, such as GM-CSF (Neupogen), within few days of whole body exposure a significant dose (e.g., 2 Gy and above) or a partial body exposure to a significant dose (e.g., 4Gy and above) (para 0013). Finally it is noted that Jacob teaches that radiation exposure decreases the level of miRNA-150 in comparison to controls (Fig 5a, 6a). Thus Jacob teaches a
method of treating a human subject in need thereof, wherein the human subject is or has previously been determined to have a decreased serum level of miR-150 relative to a reference level of miR-150, wherein the reference level of the miRNA is a level of the miRNA in a reference serum sample from a human subject not exposed to radiation, the method comprising administering to the human subject a treatment for radiation disease, wherein the treatment for radiation disease is a cytokine or a blood transfusion.
Jacob does not teach a method wherein the subject is or has previously been determined to have a decreased serum level of miR-150-5p, miR-342-3p, and miR-194-5p (clm 95).
However Cui teaches plasma miRNA biomarkers for assessment of total body radiation exposure dosimetry. Cui teaches that they demonstrated using a murine model that plasma miRNA expression signatures could distinguish mice that received total body irradiation doses of 0.5 Gy, Gy, 2 Gy, and 10 Gy (at 6 h or 24 h post radiation) with accuracy, sensitivity, and specificity of above 90%. Taken together, these data demonstrate that plasma miRNA profiles can be highly predictive of different levels of radiation exposure. Thus, plasma-based biomarkers can be used to assess radiation exposure after mass-casualty incidents, and it may provide a valuable tool in developing and implementing effective countermeasures (abstract). Figure 1A shows clustering of 40 samples (10 controls and 10 samples from each of the following radiation doses 0.5 Gy, 2 Gy and 10 Gy at 6 h) using 239 differentially expressed miRNAs. It is noted that miR-194 is listed in this Table and is shown as being overexpressed at 10 Gy. Figure 3 shows differential expression of miRNA after different radiation doses at 6 hours. Cui teaches that miR-342-5p is changed in the 10 Gy 6 group compared to controls (Fig 3 C). Finally it is noted that Cui teaches that radiation exposure decreases the level of miR-342-5p in comparison to controls (Fig 3c) and that radiation exposure decreases the level of miR-194 in comparison to controls (Fig 1A)
Accordingly it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Jacob by administering a treatment for radiation disease to a subject known to differential expression of the recited biomarkers. It would have been obvious to measure the levels of miR-150-5p, miR-342-3p, and miR-194-5p prior to treating a subject for radiation disease since the prior arts of Jacob and Cui teaches that each of these biomarkers are radiation sensitive and differentially expressed in samples that have been exposed to radiation in comparison to those that have not. There is a reasonable expectation that any biomarker that is radiation sensitive in plasma will also be radiation sensitive in serum and vice versa particularly since Jacob teaches that the biomarkers can be detected in either sample type (para 0007). Further where the prior art teaches only that for example miR-130a is radiation sensitive and the claims recite miR-130a-3p, there is a reasonable expectation that miR-130a-3p will also be radiation sensitive since it is derived from miR-130a. Finally where the prior art teaches that a murine miRNA is a radiation sensitive biomarker, there was a reasonable expectation of success that the human miRNA will also be radiation sensitive.
Regarding Claim 105 Jacob teaches a method wherein the cytokine granulocyte colony-stimulating factor (para 0013).
Regarding Claims 106-107 Jacob teaches that lower doses (2-5 GY) are not immediately lethal (para 0004). Jacob teaches treating the mammalian subject for radiation poisoning if the normalized levels of radiation-sensitive miRNA in the sample indicate exposure by the subject to remediable doses of ionizing radiation. For example, the subject can be treated with hematopoietic stem cell transplant, blood transfusion, or administration of growth factors, such as GM-CSF (Neupogen), within few days of whole body exposure a significant dose (e.g., 2 Gy and above) or a partial body exposure to a significant dose (e.g., 4Gy and above) (para 0013).
Regarding Claim 98 Jacob discloses methods for measuring exposure of a mammalian subject to ionizing radiation. The methods generally involve determining in a cell-free biological sample (e.g., serum or plasma) from the subject the levels of radiation-sensitive miRNAs whose blood levels are radiation dose- and time-dependent (para 0007). Jacob further teaches that 88 miRNAs detected in serum samples were evaluated for their radiation does dependent changes (para 0115 Fig 4A). Jacob teaches that changes were observed in several miRNAs distinguishable from irradiated versus controls and between different dosages of radiation (para 0115, Figures 4B-4D). In particular Jacob teaches that miR-150 is a radio-responsive serum biomarker (para 0116 and Figs 4B, 5A, 6A-B). Further Jacob teaches triaging a subject using the disclosed microRNAs as a dosimeter of radiation exposure, and then selecting an appropriate therapy for the subject depending on the exposure. Jacob teaches treating the mammalian subject for radiation poisoning if the normalized levels of radiation-sensitive miRNA in the sample indicate exposure by the subject to remediable doses of ionizing radiation. For example, the subject can be treated with hematopoietic stem cell transplant, blood transfusion, or administration of growth factors, such as GM-CSF (Neupogen), within few days of whole body exposure a significant dose (e.g., 2 Gy and above) or a partial body exposure to a significant dose (e.g., 4Gy and above) (para 0013). Finally it is noted that Jacob teaches that radiation exposure decreases the level of miRNA-150 in comparison to controls (Fig 5a, 6a). Thus Jacob teaches a method of treating a human subject in need thereof, the method comprising: (a) determining a level of miR-150 in a serum sample from the human subject; (b) comparing the levels of miR-150 in the serum sample from the human subject to reference levels of miR-150; and (c) determining that the levels of miR-150 is decreased in the serum sample from the human subject compared to the reference levels of miR- 150; and (d) administering a treatment for reducing damage induced by radiation to the human subject, wherein the treatment for radiation disease is a cytokine or a blood transfusion.
Jacob does not teach a method of determining a level of miR-150-5p, miR-342-3p, and miR-194-5p in a serum sample (clm 98). Jacob does not teach determining that the levels of miR-150-5p, miR-342-3p, and miR-194-5p is decreased in the serum sample (clm 98).
However Cui teaches plasma miRNA biomarkers for assessment of total body radiation exposure dosimetry. Cui teaches that they demonstrated using a murine model that plasma miRNA expression signatures could distinguish mice that received total body irradiation doses of 0.5 Gy, Gy, 2 Gy, and 10 Gy (at 6 h or 24 h post radiation) with accuracy, sensitivity, and specificity of above 90%. Taken together, these data demonstrate that plasma miRNA profiles can be highly predictive of different levels of radiation exposure. Thus, plasma-based biomarkers can be used to assess radiation exposure after mass-casualty incidents, and it may provide a valuable tool in developing and implementing effective countermeasures (abstract). Figure 1A shows clustering of 40 samples (10 controls and 10 samples from each of the following radiation doses 0.5 Gy, 2 Gy and 10 Gy at 6 h) using 239 differentially expressed miRNAs. It is noted that miR-194 is listed in this Table and is shown as being overexpressed at 10 Gy. Figure 3 shows differential expression of miRNA after different radiation doses at 6 hours. Cui teaches that miR-342-5p is changed in the 10 Gy 6 group compared to controls (Fig 3 C). Finally it is noted that Cui teaches that radiation exposure decreases the level of miR-342-5p in comparison to controls (Fig 3c) and that radiation exposure decreases the level of miR-194 in comparison to controls (Fig 1A)
Accordingly it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Jacob by administering a treatment for radiation disease to a subject known to differential expression of the recited biomarkers. It would have been obvious to measure the levels of miR-150-5p, miR-342-3p, and miR-194-5p prior to treating a subject for radiation disease since the prior arts of Jacob and Cui teaches that each of these biomarkers are radiation sensitive and differentially expressed in samples that have been exposed to radiation in comparison to those that have not. There is a reasonable expectation that any biomarker that is radiation sensitive in plasma will also be radiation sensitive in serum and vice versa particularly since Jacob teaches that the biomarkers can be detected in either sample type (para 0007). Further where the prior art teaches only that for example miR-130a is radiation sensitive and the claims recite miR-130a-3p, there is a reasonable expectation that miR-130a-3p will also be radiation sensitive since it is derived from miR-130a. Finally where the prior art teaches that a murine miRNA is a radiation sensitive biomarker, there was a reasonable expectation of success that the human miRNA will also be radiation sensitive.
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
7. Claims 88, 90-94, 97-98, and 105, 106, and 107 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,801,065 in view of Jacob (US 2014/0341841 Pub 11/20/2014) and Cui (PloS One August 2011 Vol 6 Issue 8 e22988). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding Claim 88 both sets of claims are drawn to a method of treating a human subject by administering a treatment for radiation disease, wherein the treatment for radiation disease is selected from the group consisting of: a cytokine, potassium iodide, Prussian blue, diethylenetriamine pentaacetic acid, bone marrow transplantation, blood transfusion, and surgery to remove damaged tissues ( clm 1 and 2 of the Patent). Regarding Claim 90 both sets of claims state that the cytokine is selected from the group consisting of granulocyte colony-stimulating factor, filgrastim, and pegfilgrastim (clm 3 of the Patent). Regarding Claim 91 both sets of claims state that the serum level of the miRNA is from a serum sample obtained from the human subject within 30 minutes to 96 hours after possible exposure of the human subject to radiation (clm 4 of the Patent). Regarding Claim 92 both sets of claims state that the treatment is for radiation disease caused by a lethal dose of radiation (clm 1 of the Patent). Regarding Claim 93 both sets of claim state that a sublethal dose of radiation is less than or equal to 2 Gy of radiation; the high and not lethal dose of radiation is greater than 2 Gy to about 6 Gy; and the lethal dose of radiation is greater than about 6.5 Gy (clms 5, 9, 16 of the Patent). The instant claims are different from the Patent because they require that the human subject has previously been determined to have: an increased serum level of an miRNA selected from miR-130a- 3p, miR-126-3p, and miR-34b-3p or a decreased serum level of an miRNA selected from miR-142-5p, miR-150-5p, miR-342-3p, and miR-194-5p, relative to a reference level of the miRNA, wherein the reference level of the miRNA is a level of the miRNA in a reference serum sample from a human subject not exposed to radiation. However as discussed above in the 103 rejections the prior arts of Jacob and Cui teach that each of these recited biomarkers are radiation sensitive. Accordingly, it would have been obvious to have modified the method of the Patent by detecting the radiation sensitive biomarkers disclosed by Jacob and Cui for the benefit of having additional biomarkers that can be used to measure radiation exposure and choose treatments for radiation exposure.
Regarding Claim 94 both sets of claims are drawn to a method of treating a subject by administering a treatment for reducing damage induced by radiation to the human subject, wherein the treatment for radiation disease is selected from the group consisting of: administration of one or more of a cytokine, potassium iodide, Prussian blue, and diethylenetriamine pentaacetic acid, bone marrow transplantation, blood transfusion, and surgery to remove damaged tissues (clms 1 and 2 of the Patent). Both sets of claims require (a) determining a level of miRNA in a serum sample from a subject; (b) comparing the levels of the miRNAs in the serum sample from the human subject to reference levels of the one or more miRNAs, wherein the reference levels of the one or more miRNAs are levels of the one or more miRNAs in a reference serum sample from a human subject not exposed to radiation; (c) determining miRNAs that are increased and miRNAs that are decreased in comparison to the reference levels. The instant claims are different from the Patent because they require that the human subject has been determined to have: an increased serum level of an miRNA selected from miR-130a- 3p, miR-126-3p, and miR-34b-3p or a decreased serum level of an miRNA selected from miR-142-5p, miR-150-5p, miR-342-3p, and miR-194-5p, relative to a reference level of the miRNA. However as discussed above in the 103 rejections the prior arts of Jacob and Cui teach that each of these recited biomarkers are radiation sensitive. Accordingly, it would have been obvious to have modified the method of the Patent by detecting the radiation sensitive biomarkers disclosed by Jacob and Cui for the benefit of having additional biomarkers that can be used to measure radiation exposure and choose treatments for radiation exposure.
Regarding Claim 97 both sets of claims are drawn to a method of treating a human subject by administering to the human subject a treatment for radiation disease, wherein the treatment for radiation disease is selected from the group consisting of: a cytokine, potassium iodide, Prussian blue, diethylenetriamine pentaacetic acid, bone marrow transplantation, blood transfusion, and surgery to remove damaged tissues (see clms 1 and 2 of the Patent). Regarding Claim 105 both sets of claims state that the cytokine is selected from the group consisting of granulocyte colony-stimulating factor, filgrastim, and pegfilgrastim (clm 3 of the Patent). Regarding Claim 106 both sets of claims state that the treatment is for radiation disease caused by a lethal dose of radiation (clm 1 of the Patent). Regarding Claim 107 both sets of claim state that a sublethal dose of radiation is less than or equal to 2 Gy of radiation; the high and not lethal dose of radiation is greater than 2 Gy to about 6 Gy; and the lethal dose of radiation is greater than about 6.5 Gy (clms 5, 9, 16 of the Patent). The instant claims are different from the Patent because they require that the subject is one who has been determined to have a decreased serum level of miR-150-5p, miR-342-3p, and miR-194-5p relative to a reference level of miR-150-5p, miR- 342-3p, and miR-194-5p, wherein the reference level of the miRNA is a level of the miRNA in a reference serum sample from a human subject not exposed to radiation. However as discussed above in the 103 rejections the prior arts of Jacob and Cui teach that each of these recited biomarkers are radiation sensitive. Accordingly, it would have been obvious to have modified the method of the Patent by detecting the radiation sensitive biomarkers disclosed by Jacob and Cui for the benefit of having additional biomarkers that can be used to measure radiation exposure and choose treatments for radiation exposure.
Regarding Claim 98 both sets of claims are drawn to a method of treating a human subject administering a treatment for reducing damage induced by radiation to the human subject, wherein the treatment for radiation disease is selected from the group consisting of: administration of one or more of a cytokine, potassium iodide, Prussian blue, and diethylenetriamine pentaacetic acid, bone marrow transplantation, blood transfusion, and surgery to remove damaged tissues (see clms 1-2 of the Patent). Both sets of claims require (a) determining a level of miRNA in a serum sample from a subject; (b) comparing the levels of the miRNAs in the serum sample from the human subject to reference levels; (c) determining miRNAs that are increased and miRNAs that are decreased in comparison to the reference levels (clm 1 of the Patent). The instant claims are different from the Patent because they require
determining that the levels of miR-150-5p, miR-342-3p, and miR-194-5p are decreased in the serum sample from the human subject compared to the reference levels. However as discussed above in the 103 rejections the prior arts of Jacob and Cui teach that each of these recited biomarkers are radiation sensitive. Accordingly, it would have been obvious to have modified the method of the Patent by detecting the radiation sensitive biomarkers disclosed by Jacob and Cui for the benefit of having additional biomarkers that can be used to measure radiation exposure and choose treatments for radiation exposure.
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/AMANDA HANEY/Primary Examiner, Art Unit 1682
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