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 .
Status of the Claims
Claims 1, 3-4, 6-12, and 14-17 are pending.
Claims 1 and 10 are newly amended.
Claims 10-12 and 14-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was considered to have been made without traverse in the reply filed on 05/10/2023.
Claims 1, 3-4, and 6-9 have been examined on their merits.
Withdrawn Objections & Rejections
The objections and rejections presented herein represent the full set of objections and rejections currently pending in the application. Any objections or rejections not specifically reiterated are hereby withdrawn. Prior objections have been addressed by amendment.
The rejection of claims 1, 3-4, and 6-9 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement are maintained as discussed below.
Claim Rejections - 35 USC § 112(a)
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, 3-4, and 6-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The factors to be considered in determining whether undue experimentation is required are summarized In re Wands 858 F.2d 731, 8 USPQ2nd 1400 (Fed. Cir, 1988). The Court in Wands states: “Enablement is not precluded by the necessity for some 'experimentation.'” Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. “Whether undue experimentation is needed is not a single simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” (Wands, 8 USPQ2d 1404). The factors to be considered in determining whether undue experimentation is required include: (1) the quantity of experimentation necessary, (2) the amount or direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. While all of these factors are considered, a sufficient amount for a prima facie case is discussed below.
SCOPE OF THE INVENTION
Claim 1 encompasses a method for the early detection of Alzheimer’s disease (AD).
The active method steps comprise: (a) employing a cell-based biosensor sensing device ex vivo comprising a monolayer of brain microvascular endothelial cells cultured on a membrane that mimics a physiology of a blood brain barrier in a subject; (b) measuring transendothelial electrical resistance (TEER) in the monolayer of brain microvascular endothelial cells; (c) introducing at least one cerebral fluid or blood sample from a subject to the cell-based biosensor comprising the monolayer of brain microvascular endothelial cells; and (d) determining if introduction of the at least one cerebral fluid or blood sample to the cell- based biosensor causes a change in the TEER of the monolayer of brain microvascular endothelial cells.
The claim stipulates that a decrease in TEER is indicative in AD.
The claim further stipulates that when the cerebral fluid or blood sample, is introduced to the biosensor, and has a concentration of pathogenic AB aggregate in the range of 1 µM down to 10pM, this will cause a decrease in TEER, induce an increase in permeability in the monolayer of brain microvascular endothelial cells, and causes movement of at least one tight junction protein away from at least one cell border.
The claim further stipulates that the biosensor detects an amount of pathogenic AB aggregate in the presence of a larger amount of non-pathogenic AB aggregate and that detection of a pathogenic AB aggregate triggers a sensor-based signal.
It is noted that the claim is limited to “cerebral fluid”. While the may be cerebral spinal fluid (CSF), CSF is not required, and the claim broadly allows for any cerebral fluid.
Additionally, the claim suggests that a concentration of pathogenic AB in either a cerebral fluid or blood sample of 1 µM down to 10pm is sufficient to cause a decrease in TEER and trigger the signal.
Claim 3 encompasses an embodiment wherein a synthetic monomer is added to the cerebral fluid and blood sample to amplify the concentration of at least one physiologically active AB aggregate by inducing oligomer formation between a physiologically active AB oligomer, ranging from 0.1 µM to 1µM, and the synthetic monomer.
Claim 4, which depends on claim 3, stipulates that no amplification or increase in the number of active AB aggregates signifies an absence of AB aggregate.
Claim 6 indicates that AB aggregation including AB oligomerization is detected.
Claim 7 is a further embodiment wherein transendothelial transfer rate is specifically measured.
Claim 8, which depends on claim 7, specifies that the endothelial cells are human.
Claim 9, which depends on claim 7, indicates that there is no change in resistance (TEER) when an AB monomer or mature AB fibril is presence without the presence of at least one pathogenic AB aggregate.
GUIDANCE & WORKING EXAMPLES
In regards to claims 1 and 6, the specification does not provide working examples of introducing cerebral spinal or blood samples from a patient to a cell-based biosensor.
Instead, the specification only provides examples of incubating endothelial monolayers with specific concentrations of AB aggregates (paragraphs [0052-0064], Figs. 1-10), which appears to be isolated AB specifically (paragraph [0056], Fig. 7), in order to induce changes in TEER on the monolayer of endothelial cells.
In regards to the concentration of pathogenic AB (aggregates), while the specification states that concentrations of AB aggregate as low as 100pM can elicit activation of the NF-κB transcription factor (paragraph [0064]), there is no indication that this concentration can elicit a decrease in TEER as required by the claim.
Indeed, the specification only indicates that concentrations of AB aggregates at a concentration of least 0.3 µM, and after about 8 days of culturing elicits a change in TEER (paragraph [0052]; Fig. 3).
Additionally, while paragraph [0058] and Fig. 9 indicate that a concentration of 0.1 µM AB oligomers after 72 hours can result in decreased TEER, it is noted that the claims are drawn to “pathogenic AB aggregates” not AB oligomers, and as claim 6 and paragraph [0064] make clear, pathogenic AB aggregates are a species of AB oligomer, and therefore the data does not necessarily suggest that pathogenic AB aggregates result in decreases of TEER at a concentration of 0.1 µM.
Therefore, the lowest concentration of pathogenic AB demonstrated to be sufficient to trigger a decrease in TEER over the model as in claim 1 is 0.3 µM.
In regards to claims 3-4, the specification states that low concentrations of physiologically active AB oligomers can be amplified by the addition of synthetic AB monomers to induce a larger change in TEER (paragraph [0059]).
However, similarly to as above, the presence of physiologically active AB oligomers does not necessarily suggest the presence of pathogenic AB aggregates. Nor does “physiologically active AB aggregates” necessarily suggest the presence of pathogenic AB aggregates because physiologically active AB aggregates could refer to non-pathogenic aggregates.
Moreover, and critically, no evidence is provided that demonstrates that the addition of synthetic AB monomers can boost the concentration of pathogenic AB aggregates, reduce TEER on the endothelial monolayer, and that this is indicative of AD.
None of Figs. 3, 4, or 9 indicate that synthetic monomers contributed to increased oligomeric AB aggregation (whether pathogenic or not). Fig. 10, which discusses the addition of synthetic AB monomers only demonstrates that incubation of oligomers and monomers leads to a higher absorbance, as compared to oligomers or monomers alone, but doesn’t indicate that this can increase the concentration of pathogenic AB monomers, and critically does not indicate that this level is sufficient to decrease TEER are required by claim 1.
In regards to claim 7, the specification indicates that transendothelial transfer rate can be measured (Fig. 3).
In regards to claim 8, the specification indicates that the endothelial cells may be human (paragraph [0016]; Fig. 8).
In regards to claim 9, the specification indicates that when there is no change in resistance when AB monomers or AB fibrils are present in the absence of AB aggregates (paragraphs [0064]).
STATE OF THE ART AND QUANTITY OF EXPERIMENTATION
In regards to claim 1, turning to the art, in regards to cerebral fluid, as evidenced by Faull et al. (American Journal of Neurodegenerative Disorders, 2014, previously cited), abnormally low Aβ1-42 is the most use-ful biomarker in predicting clinical AD (Abstract, p143), and that low Aβ1-42 is highly associated with AD pathology (p114, left column). As further evidence by Faull, the CSF of AD patients have a concentration of approximately 500 pg/mL when measured by ELISA (Fig. 2, p146), which is a concentration about 110 pM.
In regards to blood sample, as evidenced by Yang et al. (Frontiers in Cell and Developmental Biology, 2020, previously cited), the plasma concentrations of Aβ1-40 and Aβ1-42 are unstable after blood samples have been obtained and fluctuate over time (Abstract, p1), with concentrations ranging from about 310 to a maximum of about 380 pg/mL for Aβ1-40 (Fig. 1, p4) (about 67 to 84 pM) and a range of about 45 to 65 pg/mL for Aβ1-42 (Fig. 4, p7) (about 10 to 14 pM), over 24 hours.
It is noted that, as evidenced by Festa et al. (International Journal of Molecular Science, 2019, previously cited), both Aβ1-40 and Aβ1-42 exist as aggregation states of monomers, to oligomers, and to fibrils (Abstract, p2). Thus, the absolute concentrations of aggregated pathogenic AB within would be expected to be lower than the concentrations of 110 pM for CSF Aβ1-40, approximately 67 to 84 pM blood Aβ1-40, and 10 to 14 pM for blood Aβ1-42, as evidenced by Faull and Yang, respectively, as above.
In the cases of both blood and CSF, the concentration of AB is magnitudes lower than the concentration of least 0.3 µM which, as discussed above, is demonstrated as being the lowest concentration capable of reducing TEER when pathogenic AB is present.
Therefore, the invention does not appear to be sensitive enough to detect pathogenic AB aggregates in the blood or cerebral fluid of AD patients and elicit a decrease in TEER as required by the claims.
Indeed, as further evidenced by Faull, while the potential of cerebrospinal fluid (CSF) bio-markers in diagnosing AD has been suggested, the degree of clinical utility is yet to be defined due to variability between studies (Abstract, p143).
Continuing, Faull evidences that the lack of standardized laboratory techniques and inconsistencies in assay kit performance between studies has resulted in the variability of absolute values of CSF analytes and contribut-ed to study comparability issues (p144, left column). Faull evidences that this is further obscured by variability in the ages and characteristics of patients enrolled in studies, variability in the clini-cal and pathological diagnostic criteria, and the presence of other diseases possessing pathological overlap with AD (p144, left column).
Thus, methods in which samples of blood or cerebral fluid are contacted with a cell-based biosensor and wherein the presence of pathogenic AB aggregates causes a decrease in TEER is not a highly successful technique, or would have highly variable results, and necessitates further experimentation.
As a result, since the art at the effective filing date of the present application did not provide guidance for a method for the early detection of AD by introducing a sample of cerebral fluid or blood to cell-based biosensor and wherein the presence of pathogenic AB aggregates causes a decrease in TEER, the physiological art is recognized as unpredictable (MPEP 2164.03).
As set forth in In re Fisher, 166 USPQ 18 (CCPA 1970), compliance with 35 USC 112, first paragraph requires: “That scope of claims must bear a reasonable correlation to scope of enablement provided by specification to persons of ordinary skill in the art; in cases involving predictable factors, such as mechanical or electrical elements, a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific laws; in cases involving unpredictable factors, such as most chemical reactions and physiological activity, scope of enablement varies inversely with degree of unpredictability of factors involved.”
Moreover, the courts have also stated that reasonable correlation must exist between scope of exclusive right to patent application and scope of enablement set forth in the patent application (27 USPQ2d 1662 Ex parte Maizel). In view of the foregoing, due to the lack of sufficient guidance provided by the specification regarding the issues set forth above, the state of the relevant art, and the breadth of the claims, it would have required undue experimentation for one skilled in the art to perform the method as claimed.
CONCLUSION
In conclusion, since the method is highly unpredictable with respect to detecting early AD by introducing a sample of cerebral fluid or blood to cell-based biosensor and wherein the presence of pathogenic AB aggregates causes a decrease in TEER, and since the specification does not provide ample guidance with respect to achieving the unexpected results, one would be burdened with undue experimentation to perform and use the claimed invention.
Response to Arguments
Applicant argues that the invention is enabled (Remarks, p6-7). Applicant argues that enablement is satisfied when an application describes a claimed invention in a manner that permits one of ordinary skill to practice it, without undue experimentation; that the mere fact that experimentation might be required is insufficient to support an enablement rejection; and the mere fact that experimentation might be required is insufficient to support an enablement rejection (citing MPEP 2164.01; Remarks, p6)
Continuing, Applicant argues that the mere fact that experimentation might be required is insufficient to support an enablement rejection, and that even complex experimentation is not necessarily undue (citing MPEP 2164.01; Remarks, p6).
Applicant argues that the question of enablement is one of predictability in view of what is known in the art and that the amount of guidance or direction needed to satisfy the enablement requirement is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art (citing MPEP 2164.01; Remarks, p6).
Specifically, Applicant argues that the specification as well as ongoing experiments demonstrate the ability of amyloid-ß oligomers, to elicit changes in TEER within the biosensor format and to do so at physiological concentrations. (Remarks, p6).
Applicant’s arguments filed 10/15/2020 have been fully considered, but are not found persuasive.
In regards to Applicant’s arguments concerning the ability of AB oligomers to elicit changes in TEER, the claims are drawn to “pathogenic AB aggregates” not “AB oligomers”, which as discussed above are a genus/species. This is explicitly acknowledged in this specification which states “oligomeric aggregates of the protein, which appear early in disease progression, have been identified as the most pathogenic species” (paragraph [0004]). Thus, the claims read on aggregates other than AB oligomers and Applicant’s arguments are not commensurate in scope with the claims as limited.
In regards to undue experimentation, the claims explicitly indicate that pathogenic AB aggregates in the range of 1 µM down to 10 pM elicit a decrease in TEER and that this is indicative of Alzheimer’s disease.
As discussed above, the specification provides no working examples of testing pathogenic AB aggregates that demonstrate a likelihood of success at performing the method steps over the claimed range. Indeed, as discussed above, the specification only indicates that concentrations of AB aggregates (which are not derived from patients) at a concentrations of least 0.3 µM (and up to 10 µM), and after about 8 days of culturing elicits a change in TEER (paragraph [0052]; Fig. 3). It is also noted that this difference does not appear to be significant over controls (without AB aggregates) until day 11 (Fig. 3).
However, the demonstrated lowest concentration (0.3 µM) is far greater than the amount of pathogenic AB found in the blood or cerebral fluid of Alzheimer’s patients, whom as discussed above, have concentrations of AB of about 10 pM to 100 pM (as evidenced by Yang and Festa as above).
Thus, the lowest concentration demonstrated to elicit a TEER response is a magnitude of 3,000 to 30,000 times greater than the low end of the claim (at least about 10 pM to 100 pM) which corresponds to the levels of AB in the blood or cerebral spinal fluid of Alzheimer’s patients.
In comparison, the highest demonstrated concentration (10 µM) is only 33 times greater than the lowest demonstrated concentration (0.3 µM).
As demonstrated in Fig. 3, the concentration of AB aggregates is critical to elicit a response in TEER, which higher concentrations resulting in greater decreases in TEER.
Comparing these groups, at day 11 of culture (as above, the amount of time necessary to elicit a difference from the negative control), the difference in TEER between 0.3 µM and 10 µM AB aggregate groups is a difference in 75 Ω/cm2 (the difference in TEERs of approximately 425 Ω/cm2 and 500 Ω/cm2, respectively). At that same time, the negative control has a TEER of approximately 550 Ω/cm2 which is only a difference of 50 Ω/cm2 compared to the lowest concentration of 0.3 µM.
Even after 14 days of culture, the difference in TEER between the lowest concentration of AB aggregates (0.3 µM) and the highest concentration (10 µM) is still greater than the difference in TEER between a concentration of 0.3 µM and the negative control.
Thus, there is a greater difference in a concentration between the highest demonstrated concentration and the lowest concentration and the lowest concentration and the negative control.
Therefore, it is unclear if there would even be a difference in TEER between the negative control and pathogenic AB aggregates from Alzheimer’s patients’ blood or cerebral fluid at the low concentration of about 10pM to 100pM which is 3,000 to 30,000 times lower than the lowest demonstrated concentration of 0.3 µM.
Moreover, other compounds (such as the positive control TGFβ) also elicit a decrease in TEER. Therefore, it is unclear if the claimed invention in fact indicates that pathogenic AB in a blood or cerebral fluid causes a decrease in TEER or if this is some other molecule in the sample.
Furthermore, as demonstrated in Fig. 3, negative controls themselves demonstrate decreased TEER, which is explicitly acknowledged in the specification which states “In the absence of Aß aggregates, TEER maintains a plateau, decreasing by less than 8% over 7 days” (paragraph [0052]).
Therefore, as a basic matter, a decrease in TEER is not itself indicative of Alzheimer’s disease, as TEER naturally decreases over time.
As a result, as discussed above, the invention does not appear to be sensitive enough to detect pathogenic AB aggregates in the blood or cerebral fluid of AD patients and elicit a decrease in TEER as required by the claims and no supporting evidence is provided that suggests that it is.
Specifically, the invention does not appear sensitive enough to elicit a detectible difference in TEER as compared to a negative control of pathogenic AB at concentrations that are found in the CSF and blood of Alzheimer’s patients as claimed as the only supporting evidenced is at magnitudes greater concentration.
Indeed, as further discussed in paragraph [0064] of the specification, the specification freely admits that more work is needed in order to use utilize samples from patients, which are required by the claims. According to paragraph [0064]), “Current work involves confirming these responses with biological samples and implementing amplification to bolster measurements of biological samples.”
This is agreed upon by the art. As discussed above, as evidenced by Faull, while the potential of cerebrospinal fluid (CSF) bio-markers in diagnosing AD has been suggested, the degree of clinical utility is yet to be defined due to variability between studies (Abstract, p143).
Continuing, Faull evidences that the lack of standardized laboratory techniques and inconsistencies in assay kit performance between studies has resulted in the variability of absolute values of CSF analytes and contribut-ed to study comparability issues (p144, left column). Faull evidences that this is further obscured by variability in the ages and characteristics of patients enrolled in studies, variability in the clini-cal and pathological diagnostic criteria, and the presence of other diseases possessing pathological overlap with AD (p144, left column).
Therefore, as discussed above, methods in which samples of blood or cerebral fluid are contacted with a cell-based biosensor and wherein the presence of pathogenic AB aggregates causes a decrease in TEER is not a highly successful technique, or would have highly variable results, and necessitates further experimentation.
As a result, since the art at the effective filing date of the present application did not provide guidance for a method for the early detection of AD by introducing a sample of cerebral fluid or blood to cell-based biosensor and wherein the presence of pathogenic AB aggregates causes a decrease in TEER, the physiological art is recognized as unpredictable (MPEP 2164.03).
As set forth in In re Fisher, 166 USPQ 18 (CCPA 1970), compliance with 35 USC 112, first paragraph requires: “That scope of claims must bear a reasonable correlation to scope of enablement provided by specification to persons of ordinary skill in the art; in cases involving predictable factors, such as mechanical or electrical elements, a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific laws; in cases involving unpredictable factors, such as most chemical reactions and physiological activity, scope of enablement varies inversely with degree of unpredictability of factors involved.”
Moreover, the courts have also stated that reasonable correlation must exist between scope of exclusive right to patent application and scope of enablement set forth in the patent application (27 USPQ2d 1662 Ex parte Maizel). In view of the foregoing, due to the lack of sufficient guidance provided by the specification regarding the issues set forth above, the state of the relevant art, and the breadth of the claims, it would have required undue experimentation for one skilled in the art to perform the method as claimed.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH (PAUL) MIANO whose telephone number is (571)272-0341. The examiner can normally be reached Mon-Fri from 8:30am to 5:30pm.
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/JOSEPH PAUL MIANO/Examiner, Art Unit 1631
/JAMES D SCHULTZ/Supervisory Patent Examiner, Art Unit 1631