DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/17/2025 has been entered.
Priority
This application is a U.S. National Stage (371) application of PCT/US19/26364 filed on 04/08/2019 which claims priority to U.S. Provisional Application No. 62/654,638 filed on 04/09/2018.
Claim Status
Claims 1, is currently amended and Applicant notes that no new matter is added. Claims 2, 8 and 15 are cancelled at the Applicant’s request. Claims 3-7 and 9-14 are previously presented. Claims 16-21 are withdrawn as being directed to non-elected invention as noted in the office action of 06/28/2024.
Thus claims 1, 3-7 and 9-14 are pending and are under examination.
New Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 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.
Claims 1, 3-7 and 9-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for using evolocumab to inhibit PCSK9, it does not reasonably provide enablement for studying the effects of inhibiting PCSK9 with evolocumab over every biocellular marker that is listed in the claims and in the specification. 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. Claim 1 recites detecting any biocellular marker which is too broad and the specification does not provide support for each biocellular marker. The specification recites “The impact on evolocumab on biomarkers of endothelial function is evaluated. Biomarkers of oxidative stress (MDA), inflammation (MPO), cytokines (lL-6, lL-18 and TNF-α) and vascular endothelial activation (PECAM, ICAM, VCAM and alpha5/beta 3 activation)” but does not discuss the effects.
Regarding claims 1 and 9-12, the claims recite the use of evolocumab as the therapeutic agent and to note its dynamic molecular signature which is the effects of PCSK9 inhibition by evolocumab on at least one biocellular marker. The specification does not provide enough support for an artisan to perform the assay without undue additional experimentation as described in in re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP § 2164.01(a) and § 2164.04.
The breadth of the claims:
Claim 1 is recited at a high level of generality in which any biocellular marker for detecting the effects of inhibiting PCSK9 by evolocumab can be used. Similarly claims 9-12 are recited at a high level of generality in which more than one biocellular marker is suggested to use to study the impact of inhibiting PCSK9 by evolocumab.
The specification gives evolocumab as an example to evaluate its impact over a list of biomarkers but does not provide the results of such evaluation (Page 28, [0092]).
The nature of the invention:
The invention is for a method of assessing the effect of a therapeutic agent of evolocumab in a subject by performing an assay on a sample from a subject that has been administered or is being administered evolocumab to detect at least one biocellular marker and to generate a dynamic molecular signature. The specification shows that the invention is about the use of microfluidic devices and systems to generate dynamic molecular signatures based on the detection of various biocellular markers for various diagnostic and prognostic purposes, such as characterizing a disease or non-disease state, or predicting drug responsiveness (Page 1, [0002]; Page 25-26, [0087]; page 28, [0092]).
The state of the prior art:
Although there has been reports about the effects of inhibiting PCSK9 by evolocumab over biocellular markers, there is a high level of unpredictability of response as noted by Lappegard in which he teaches exploring changes in soluble inflammatory markers when changing from LDL apheresis to the novel PCSK9 inhibitor evolocumab (Abstract, objective). However, evolocumab did not affect the markers of innate immunity nor any of the soluble inflammatory markers (Abstract, Results; page 1486, conclusion, “whereas evolocumab did not affect the markers of innate immunity investigated in this study.”). Thus, no effects were noted for the inhibition of PCSK9 by evolocumab over any of the studied markers. Furthermore, in re Vaeck, 947 F.2d 488,495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991), the Court ruled that a rejection under 35 U.S.C. 112, first paragraph for lack of enablement was appropriate given the relatively incomplete understanding in the biotechnological field involved, and the lack of a reasonable correlation between the narrow disclosure in the specification and the broad scope of protection sought in the claims. Such is the case here where there is a relatively incomplete understanding in the biotechnological field involved, and the lack of a reasonable correlation between the narrow disclosure in the specification and the broad scope of protection sought in the claims of the instant application.
The level of one of ordinary skill:
A person having ordinary skill in the art (PHOSITA) will not be able to anticipate or predict such an invention without the use of proper pieces of art and thus the specification needs to address how to perform such an assay in great details in the specification. The specification of the instant application fails to address such a use of the invention and gives limited number of examples (Page 25, [0087]; page 26, [0088]; page 27-28, [0091-0092]).
The level of predictability in the art:
There is a high level of unpredictability in the art regarding the effects of inhibiting PCSK9 by evolocumab over biocellular markers as noted by Lappegard. Lappegard noted that evolocumab did not affect the markers of innate immunity nor any of the soluble inflammatory markers (Abstract, Results; page 1486, conclusion).
On the other hand, Saud et al. teaches that IL-17, IL-1β, ICAM, and VCAM levels were significantly reduced by evolocumab treatment (Journal of Medicine and Life, Vol 16, ISSUE 5 May 2023; Abstract).
The amount of direction provided by the inventor:
As discussed above, the art shows a high level of unpredictability and the specification does not teach which biocellular marker seems to be responding to PCSK9 inhibition by Evolocumab. The specification is only listing a group of biocellular markers to consider when evaluating the inhibition of PCSK9 by evolocumab (Page 28, [0092]). Thus, the specification seems to provide limited direction on how to use the invention
The existence of working examples:
There is a limited number of examples in the specification (Page 25-28, [0087-0092]). The examples are directed only to a single therapeutic agent, specifically the effects of PCSK9 inhibition by evolocumab. There is no indication that the broadly claimed method would work with any biocellular marker and any therapeutic agent in any type of immunoassay.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
With the lack of results that can tell which biocellular marker is being affected by inhibition of PCSK9 by evolocumab, the PHOSITA is expected to face an unreasonable amount of experimentation.
The Examiner suggests for example to limit the effects of inhibiting PCSK9 by evolocumab to one biocellular marker.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 (PHOSITA) to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-7, 9 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Basu et al. (US 2015/0307947 A1) in view of Goonewardena et al. (US 2016/0025723 A1), Tsakiridou et al. (Journal of Clinical Lipidology, Vol 12, No 3, June 2018, accepted for publication on 03/05/2018) and Lappegard et al. (Journal of Clinical Lipidology (2016) 10, 1481–1487).
Regarding claim 1, Basu teaches a method of assessing an effect of a therapeutic agent (Page 1, [0007]; page 69, [0383]).
Basu teaches performing an assay on a sample from a subject that has been administered a therapeutic agent or an alternative therapeutic agent to detect at least one biocellular marker (Page 25, [0179]; page 62, [0341]; page 70, [0387]).
Basu teaches generating a dynamic molecular signature based on the detection of the at least one biocellular marker from the sample (Page 8, [0033]; page 62, [0341]; page 67, [0373]).
Basu teaches that the dynamic molecular signature is indicative of the effect of the therapeutic agent in the subject (page 62, [0341]).
Regarding claim 1, Basu does not teach that the assay is performed using a microfluidic immunoblotting device.
Basu does not teach that the device comprises a flat membrane-contacting surface. Basu does not teach that device comprise a plurality of non-connected parallel microfluidic channels.
Basu does not teach that the entire length of the microfluidic channels is open to the membrane-contacting surface.
Basu does not teach that the therapeutic agent is evolocumab.
Basu does not teach that the dynamic molecular signature represents the effects of PCSK9 inhibition on at least one biocellular marker.
Regarding claim 1, Goonewardena teaches that the assay is performed using a microfluidic immunoblotting device (Page 1, [0005]).
Goonewardena teaches that the device comprises a flat membrane-contacting surface (Page 1, [0005]).
Goonewardena teaches that device comprise a plurality of non-connected parallel microfluidic channels (Page 1, [0005]).
Goonewardena teaches that wherein the entire length of the microfluidic channels is open to the membrane-contacting surface (Page 1, [0005]).
Regarding claim 1, Tsakiridou teaches that evolocumab should be considered for treatment when managing cancer patients who develop mitotane-related hypercholesterolemia that cannot be managed with conventional lipid-lowering treatment (Abstract).
Regarding claim 1, Lappegard teaches quantifying soluble inflammatory markers to explore changes when changing LDL apheresis to the novel PCSK9 inhibitor evolocumab (Journal of Clinical Lipidology (2016) 10, 1481–1487, Abstract, objective).
It would have been obvious for a PHOSITA before the effective filing date of the application to combine the microfluidic device of Goonewardena with the method of Basu to generate a molecular signature for a disease for treatment purposes because Goonewardena offered a microfluidic device, system and method that have the advantages of traditional Western blotting with increased throughput, multiplex ability, and decreased time, sample and reagent requirements (Abstract; page 1, [0002]) and suggested using their invention in studying the dynamics of different signaling pathways by profiling their protein components (Page 6, [0042]). Basu further offered a method to study the molecular profile of a particular disease by assessing one or more biomarkers for treatment purposes (Abstract; Page 8, [0033]) and noted the need for a better assessment of cancer patients by conducting molecular profiling to identify one or more individual profiles to provide a more effective treatment option (Page 1, [0006]). A skilled artisan would combine Tsakiridou suggestion of using evolocumab in cancer patients with the cancer assay methods of Basu and Goonewardena because evolocumab should be considered for treatment when managing cancer patients who develop mitotane-related hypercholesterolemia that cannot be managed with conventional lipid-lowering treatment (Abstract). A skilled artisan would further test the effects of the therapeutic agent of evolocumab of Lappegard with the methods of Basu, Goonewardena and Tsakiridou because it specifically aids in assessing the treatment of a disease (Abstract; conclusion). A skilled artisan would combine the above methods to expediate the identification of a molecular pathway that can be used to treat a cancer patient for example. A PHOSITA would have had a reasonable expectation of success in combining the methods of Basu, Goonewardena based on the methods being in the field of detecting specific proteins by immunoassays.
It would have been obvious for a PHOSITA to combine evolocumab treatment and effects method with the methods of Goonewardena and Basu to identify at least one biomarker that can be used in providing an effective treatment to a cancer patient.
Regarding claim 3, Basu teaches all of the limitations of the claim as mentioned above but fails to teach the following limitations.
Basu does not teach transferring proteins from a sample onto a membrane. Basu does not teach placing a membrane-contacting face of a microfluidic immunoblotting device onto the membrane. Basu does not teach injecting an activating buffer into microfluidic channels of the device. Basu does not teach injecting primary antibody solutions into the microfluidic channels of the device.
Basu does not teach detecting binding of antibodies with the antibody solutions to the proteins.
Regarding claim 3, Goonewardena teaches transferring proteins from a sample onto a membrane (Page 1, [0007]).
Goonewardena teaches placing a membrane-contacting face of a microfluidic immunoblotting device onto the membrane (Page 1, [0007]).
Goonewardena teaches injecting an activating buffer into microfluidic channels of the device (Page 1, [0007]).
Goonewardena teaches injecting primary antibody solutions into the microfluidic channels of the device (Page 1, [0007]).
Goonewardena teaches detecting binding of antibodies with the antibody solutions to the proteins (Page 1, [0007]).
It would have been obvious for a skilled artisan to combine the teachings of Goonewardena with Basu to perform the biomarker testing because Goonewardena offered a convenient assay for testing biomarkers.
Regarding claim 4, Basu teaches a method that comprises selecting and isolating a group of cells from the sample prior to generating the dynamic molecular signature (Page 47, [0273]).
Regarding claim 5, Basu teaches a method of assessing one or more effects of the therapeutic agent on gene and protein expression or activation (page 23, [0158]; page 70, [0387]; page 176, [0483]; page 178, [0505]).
Regarding claim 6, Basu teaches that generating dynamic molecular signature comprises quantifying a level of expression or activation of the at least one biocellular marker in the sample from the subject with reference to a control sample (Page 20, [0133-0134]).
Regarding claim 7, Basu teaches that the method comprises correlating the dynamic molecular signature to one or more results of a clinical assessment of the subject (Page 66, [0367]; page 202, [claim 100]).
Regarding claim 9, Basu teaches that at least one biocellular marker comprises a protein involved in a signaling pathway selected from MAPK, , Akt, , mTOR, and Jak-STAT signaling pathways (Page 7, [0026]; page 125, “ERBB2”, “The most commonly affected signaling pathways are the PI3K -Akt and MAP kinase pathways.”; page 127, “PDGFRA”, “activate multiple signaling pathways including PIK3CA/AKT, RAS/MAPK and JAK/STAT”; page 193, “[0613-0614]”).
Regarding claim 13, Basu teaches that the method is based on treating the subject with a therapeutic agent based on the dynamic molecular signature (Page 176, [483]; page 178, [0505]).
Regarding claim 14, Basu teaches the method is based on altering the method of treatment based on the dynamic molecular signature (Page 11, [0071]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Basu et al. (US 2015/0307947 A1), Goonewardena et al. (US 2016/0025723 A1), Lappegard et al. (Journal of Clinical Lipidology (2016) 10, 1481–1487) and Tsakiridou et al. (Journal of Clinical Lipidology, Vol 12, No 3, June 2018, accepted for publication on 03/05/2018) as applied to claim 1 above, and further in view of Balzan et al. (Life Sciences 198 (2018) 79–86).
Regarding claims 10-12, Basu, Goonewardena, Lappegard and Tsakiridou teaches all of the limitations of the claims, but Basu fails to teach the following limitations.
Regarding claim 10, Basu does not teach that at least one biocellular marker comprises at least one of VCAM-1, ICAM-1, LOX-1, MCP-1 and MIP-1α.
Regarding claim 10, Balzan teaches LOX-1 as a biocellular marker (page 80, left column, “LOX-1 and atherosclerosis”; page 80, right column, last paragraph, “Angiogenesis by LOX-1 has a double face”; page 82, left column, “LOX-1 and cancer”; page 84, Conclusions).
It would have been obvious to a PHOSITA before the effective filing date of the application to combine the biocellular marker of Balzan with the methods of Basu, Goonewardena Lappegard and Tsakiridou to improve the method of generating a molecular signature for a disease for treatment purposes because Balzan noted that LOX-1 is involved in cancer and in cardiovascular diseases (page 84, Conclusions) and Basu offered a method to study the molecular profile of a particular disease by assessing one or more biomarkers for treatment purposes (Abstract; Page 8, [0033]). Basu noted the need for a better assessment of cancer patients by conducting molecular profiling to identify one or more individual profiles to provide a more effective treatment option (Page 1, [0006]). A skilled artisan would have combined the above methods to expediate the identification of a molecular pathway that can be used to treat a cancer patient for example. A PHOSITA would have had a reasonable expectation of success in combining the methods of Balzan, Basu, Goonewardena Lappegard and Tsakiridou based on the methods being in the field of detecting specific proteins by immunoassays.
It would have been obvious for a PHOSITA to use the separation method of Goonewardena to test LOX-1 in the method of Basu to identify signaling pathways that can affected by using evolocumab as noted by Lappegard and Tsakiridou.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Basu et al. (US 2015/0307947 A1), Goonewardena et al. (US 2016/0025723 A1), Lappegard et al. (Journal of Clinical Lipidology (2016) 10, 1481–1487) and Tsakiridou et al. (Journal of Clinical Lipidology, Vol 12, No 3, June 2018, accepted for publication on 03/05/2018) as applied to claim 1 above, and further in view of Balzan et al. (Life Sciences 198 (2018) 79–86) and Draude et al. (Biochemical Pharmacology, Vol. 57, pp. 383–386, 1999).
Regarding claims 11-12, Basu, Goonewardena, Lappegard, Tsakiridou and Balzan teaches all of the limitations of the claims, but Basu fails to teach the following limitations.
Regarding claim 11, Basu does not teach that at least one biocellular marker comprises at least one protein expressed by a peripheral blood mononuclear cell.
Regarding claim 12, Basu does not teach that at least one biocellular marker comprises at least one protein expressed by a circulating monocyte.
Regarding claims 11 and 12, Balzan teaches LOX-1 as a biocellular marker as above.
Regarding claims 11 and 12, Draude teaches LOX-1 as a protein can be expressed by a peripheral blood mononuclear cell such as circulating monocytes (Abstract).
It would have been obvious to a PHOSITA before the effective filing date of the application to combine circulating monocytes with LOX-1 of Draude with the methods Basu, Goonewardena Lappegard, Tsakiridou and Balzan to improve the method of generating a molecular signature for a disease for treatment purposes because Draude found that LOX-1 can be expressed on the surface of circulating monocytes in peripheral blood (Abstract) and Balzan noted that LOX-1 is involved in cancer and in cardiovascular diseases (page 84, Conclusions). Basu further suggested a method to study the molecular profile of a particular disease by assessing one or more biomarkers for treatment purposes (Abstract; Page 8, [0033]) and noted the need for a more specific assessment of cancer patients by conducting molecular profiling to identify one or more individual profiles to provide a more effective treatment option (Page 1, [0006]). A skilled artisan would combine the above methods to expediate the identification of a molecular pathway that can be used to treat a cancer patient for example. Balzan, Basu, Draude, Goonewardena, Lappegard and Tsakiridou had a reasonable amount of success as described in their methods and discussions. A PHOSITA would have had a reasonable expectation of success in combining the methods of Balzan, Basu, Draude, Goonewardena, Lappegard and Tsakiridou based on the methods being in the field of detecting specific proteins by immunoassays.
It would have been obvious for a PHOSITA to use separation method of Goonewardena to test LOX-1 in the method of Basu to identify signaling pathways that can be used in providing a more specific treatment to a cancer patient.
Response to Arguments
Applicant's arguments filed on 08/18/2025 have been fully considered but they are not persuasive.
The Applicant alleged that to expedite prosecution o expedite prosecution claim 1 is amended to incorporate the subject matter of claim 8, which the Examiner indicates would be allowable if rewritten in independent form as indicated in the Office action of 03/18/2025.
However, new grounds of rejection are made in view of Lappegard et al. (Journal of Clinical Lipidology (2016) 10, 1481–1487) and Tsakiridou et al. (Journal of Clinical Lipidology, Vol 12, No 3, June 2018, accepted for publication on 03/05/2018).
Regarding claim 1, Lappegard teaches quantifying soluble inflammatory markers to explore changes when changing LDL apheresis to the novel PCSK9 inhibitor evolocumab (Journal of Clinical Lipidology (2016) 10, 1481–1487, Abstract, objective).
Regarding claim 1, Tsakiridou teaches that evolocumab should be considered for treatment when managing cancer patients who develop mitotane-related hypercholesterolemia that cannot be managed with conventional lipid-lowering treatment (Abstract).
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Barale et al. teaches treating a patient with evolocumab to inhibit PCSK9 and note its effects over the platelets function in primary hypercholesterolemia (HC) (Nutrition, Metabolism & Cardiovascular Diseases (2020) 30, 282-291, Abstract). The inhibition of PCSK9 by evolocumab decreased the expression CD62P on platelets and plasma levels of the in vivo platelet activation
markers soluble CD40 Ligand, Platelet Factor-4, and soluble P-Selectin (Abstract). However, the reference of Barale was available online on 17th of September of 2019 which is after the effective filing date of the instant application of 9th of April of 2018.
Peach et al. teaches evaluating how treatment with evolocumab, a fully human monoclonal IgG2 antibody to PCSK9, affects markers of cholesterol synthesis and absorption by measuring these
markers in patients from an evolocumab clinical trial (Journal of Lipid Research Volume 57, 2016). Peach teaches that Evolocumab had a modest effect on markers of cholesterol synthesis and absorption (Abstract). Peach notes that these results suggest that evolocumab has a modest effect on cholesterol synthesis and absorption despite significant LDL-C lowering (Abstract). However, Peach does not teach the effects of evolocumab over at least one biocellular marker and only teaches the effects of evolocumab over cholesterol synthesis and absorption.
Schreml et al. teaches the role of anti-PCSK9 antibodies such as evolocumab in the treatment of patients with statin intolerance (SI) (Current Medicinal Chemistry, 2018, 25, 1538-1548). However, Schreml does not teach the effects of evolocumab over at least one biocellular marker and only teaches the presence of evidence that support the use of anti-PCSK9 antibodies in treating patients with SI.
Claims 3-7 and 9-14 are dependent on claim 1 and are deemed allowable.
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/OMAR RAMADAN/Examiner, Art Unit 1678
/GREGORY S EMCH/Supervisory Patent Examiner, Art Unit 1678