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 .
DETAILED ACTION
Status of Application, Amendments and/or Claims
2. The amendment dated 9/19/2025 is considered and entered into record. Claims 1, 8, 10-12 and 28 are amended. Claims 1, 3, 6, 8-14, 16-17 and 21-28 are pending in the instant application.
3. Claims 6, 9, 13-14, 16-17, 21-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 19 May 2023.
4. Claims 1, 3, 8, 10-12 and 28, drawn to a method of preparing a diagnostic composition, are being considered for examination in the instant application.
Objection/Rejection withdrawn
5. Upon consideration of amendment of claims 1, 10 and 11, the claim objections are withdrawn.
6. Upon consideration of appropriate amendment of claims 8, 11 and 12, and Applicant’s remarks, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn.
Specification
7. The disclosure is objected to because of the following informalities:
The use of the trademark NLuc has been noted in this application (for example paragraph 18). It should be capitalized wherever it appears and be accompanied by the generic terminology. Although the use of trademarks is permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner, which might adversely affect their validity as trademarks. The objection is maintained for reasons of record in the Office Action dated 6/25/2025.
8. Appropriate correction is required.
Applicant’s remarks:
9. Applicant asserts that the objection is addressed by present amendment to the specification. Applicant is right as proper correction is made in paragraphs 218, 242, 252 and Table 2. However, para 0018 still has the NLuc trademark.
New Rejections – necessitated by current amendment
Claim Rejection - 35 USC § 103
10. 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.
11. Claims 1, 3, 8, 10-11 and 28 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Arnold et al WO 2012/125652, 9/20/2012 (IDS) OR Bryan et al US Patent 6,232,107, 5/15/2001 (IDS) and Pikal-Cleland et al (J Pharm Sci 91: 1969-1979, 2002) and Yin et al (Sensors Actuators B130: 374-378, 2008), in view of Tozzoli et al (Autoimmun Highlights 1: 95-100, 2010), and in further view of Boute et al Front Pharm 7, 1-11, 2016 (IDS) and Chaudhary, PM, WO 2017173403, 10/5/2017.
12. The claims are directed to a method of preparing a diagnostic composition comprising: obtaining a nucleic acid of a full-length antibody or antigen binding fragment thereof, operably linking the nucleic acid sequence to a nucleic acid of a label of interest, expressing the antibody or its antigen binding fragment with the label as an antibody fusion in a host cell, isolating the antibody fusion, mixing the antibody fusion with a buffer to obtain a buffered formulation at pH of about 6 to about 8, wherein the buffer is one of those listed in claim 1e), or is glycine (claim 28); and providing the formulation on a solid support comprising a microporous structure, the support being one or more wells of a microarray plate; wherein the label is luciferase having the amino acid sequence of SEQ ID NO: 23, RLuc (Renilla-luciferin 2-monooxygenase) or FLuc (FireflyLuc), and the antibody or its fragment is anti-thyroid stimulating hormone receptor (TRAb) (claims 1, 3, 8), wherein: the full-length antibody or fragment thereof is a TSHR or thyroid stimulating hormone receptor specific antibody M22 (claims 10, 11).
13. Arnold et al teach constructing expression vectors containing a fusion protein, comprising (obtaining) a nucleic acid sequence encoding a fusion antibody comprising an antibody or its fragment (Abstract; para 0016, 0197), and a polynucleotide encoding a reporter luciferase (para 0019, 0120, 0124). Even though the reference does not explicitly state that the reporter is operably linked to the antibody nucleic acid, the teaching that the nucleic acid encoding the fusion polypeptide comprises the nucleic acid of the luciferase reporter, indicates that the reporter nucleic acid is operably linked to the antibody nucleic acid. Arnold et al teach that the nucleic acid sequence of the fusion protein is inserted into an expression vector and is used for expression (expressing) in a host cell by transformation techniques (para 0195, 0197), and that the expressed recombinant (fusion) protein is isolated by protein purification method (para 0198). The reference teaches that fusion with fluorescent proteins helps in visualization of proteins (para 0005, 0006), and the polynucleotide comprising the fusion antibody comprising a reporter can be contacted with a cell for recognizing and labelling an endogenous protein of the cell (para 0022) (instant claim 1, steps a-d). The reference also teaches compositions comprising the fusion protein and a label (Abstract; para 0011, 0021, 0082), combined with a carrier, which can be used as a diagnostic composition (para 0083), wherein the carriers represent all the recited amino acids functioning as buffers (instant claim 1e) (para 0163), including glycine of instant claim 28.
14. Bryan et al teach a method of preparing conjugates comprising using or obtaining a DNA (nucleic acid) encoding an antibody, F(Ab)2 or antigen binding fragment thereof, ligating the DNA in the same translational reading frame to DNA encoding a luciferase (operably linking), inserting the ligated or fused DNA into an expression vector, and introducing the antibody fusion into an appropriate host cell for expression (col 68, lines 14-33). The reference teaches that fusion antibodies can be used for diagnostic, and immunoassays with a fluorescent label and buffers (col 7, lines 46, 56; col 22, line 55; col 68, lines 34, 35; col 70, lines 6-8, 28-29), indicating that the step of isolation of the fused antibody is inherently contemplated. Bryan et al teach diagnostic kits comprising multi-well assay device (solid support) containing a plurality (one or more) of wells having antibody and the photodetector (label) (col 75, lines 48-51; col 76, lines 1-6). (instant claim 1, steps e, f)
15. Pikal-Cleland et al teach the effect of glycine in buffer systems in pharmaceutical protein formulations (glycine/phosphate at pH 7 for example (page 1971, col 1, para 2)), and show that amorphous glycine can stabilize a protein (Abstract). Using the example of two proteins (lactate dehydrogenase and recombinant human interferon-ƴ), the reference shows the effect of glycine on protein stability during freezing (page 1970, col 1, para 3). The reference teaches that freeze thawing of proteins causes changes in pH, and glycine can essentially recover 100% of the initial activity of protein, i.e., glycine stabilizes the native tetrameric protein (page 1975, col 2, para 2; Figs. 2, 5A, 5B, 8). The reference concludes that glycine is useful to stabilize proteins “against freezing-induced denaturation and dissociation” (page 1977, col 1, para 1; page 1978, lines 23-26).
16. Arnold et al, Bryan et al or Pikal-Cleland et al do not teach a microarray plate.
17. Yin et al teach the use of microporous polymeric substrate like nitrocellulose for protein microarrays that can be tools to diagnosis disease (Introduction). The reference teaches coating a buffer-diluted solution of anti-human alpha-fetoprotein antibody (antibody in buffered formulation) onto a nitrocellulose slide (solid microporous support) with multi-well film (multi-well of a microarray plate), wherein the buffer is at pH 7.4 (page 375, Experimental: Sections 2.1, 2.3, 2.4; Fig. 1) (instant claim 1, steps e, f). Please note the paragraph 0070 of instant specification teaches that nitrocellulose is a microporous structure.
18. Arnold et al, Bryan et al, Pikal-Cleland et al or Yin et al do not teach a TRAb antibody.
19. Tozzoli et al teach that TRAb autoantibodies acting as TSH receptor agonists, are “responsible for clinical manifestations and are a diagnostic hallmark of Graves’ disease (GD)” (Introduction, para 1), and that TRAb detection is accepted as a routine test for diagnosing and monitoring GD and hyperthyroidism (Discussion, para 1). The reference teaches - TRAb immunoassay based upon the human monoclonal TSHR antibody M22, and concludes that M22-based immunoassay shows a high functional sensitivity and diagnostic specificity (Abstract).
20. Arnold et al, Bryan et al, Pikal-Cleland et al, Yin et al or Tozzoli et al do not teach the claimed luciferase having SEQ ID NO: 23. However, NLUC® luciferase has an amino acid sequence of SEQ ID NO: 23 (see 9/4/2024 amendment of the specification – para 0009, 0012, 0022 for example).
21. Boute et al teach the use of NLuc or NanoLuc luciferase (NLUC® or NANOLUC® luciferase) in “high throughput antibody drug screenings” and protein-protein interaction assays (Abstract; page 2, col 1, para 2). The reference teaches generation of NLuc scFv antibody fusion, comprising genetically fusing the NLuc gene to the C-terminus of human IgG1 constant domain by directed ligation (operably linked), and cloning of the fusion molecule in an expression vector (page 2, col 2, para 1). The reference also teaches that fusion of NLuc to scFv or antibodies is useful for screening and characterization assays like ELISA, Western Blot, etc. (page 9, col 1, last para). The reference concludes that because of its small size, high stability and luminescence signal intensity, NLuc would be the reporter of choice, “when fused to whole antibodies or fragments to generate multipotent tools essential for library screening”, with a “rapid quantification of the fusion partner” (page 10, last para).
22. Boute et al do not teach the amino acid sequence of the luciferase to be SEQ ID NO: 23. However, as stated above, the instant specification (9.4.2024 amendment) (para 0022 for example) teaches that SEQ ID NO: 23 is the amino acid sequence of NLUC® or NANOLUC® luciferase. Since Boute et al teach NLuc luciferase (which is the same as NLUC® luciferase), it would inherently have the amino acid sequence of SEQ ID NO: 23. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches NLuc of instant claims, the properties (sequence) applicant discloses and/or claims are necessarily present. In re Spada 15 USPQ2d 1655, 1658 (Fed. Cir.1990). See MPEP 2112.01. Also, the Courts have held that there is no requirement that those of ordinary skill in the art know of the inherent property. See MPEP 2131.01 (d) and MPEP 2112 - 2113 for case law on inherency.
23. The teachings of Chaudhary are added to show that the recited luciferase sequence of NanoLuc is not only inherently present, but the sequence is also taught in the prior art. Chaudhary teaches a fusion protein comprising a single chain antibody specific to an antigen fused to a reporter (Abstract), wherein the reporter is a luciferase (para 0012). Chaudhary also teaches that the luciferase can be NanoLuc (NLuc) (para 0014) which is used for producing bioluminescence (para 0072), and which comprises SEQ ID NO: 2030, which is 100% identical to instant SEQ ID NO: 23 (see “Appendix a” submitted with Office Action dated 6/4/2024) (para 0092; Table 11, para 00234).
24. It would therefore have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the method of preparing a diagnostic composition in glycine buffer, comprising obtaining an antibody fusion having M22 and luciferase as taught by the combined teachings of Arnold et al/Bryan et al, Pikal-Cleland et al, Yin et al and Tozzoli et al, by using a luciferase having the amino acid sequence of SEQ ID NO: 23 in view of the teachings of Boute et al and Chaudhary. The person of ordinary skill would have been motivated to use TRAb fusion in a diagnostic composition, as TRAb autoantibodies are a diagnostic hallmark of GD, and TRAb detection is accepted as a routine test for diagnosing and monitoring GD and hyperthyroidism (Tozzoli et al). The person of ordinary skill would have been motivated to use M22 as the TSHR antibody, as M22-based immunoassay shows a high functional sensitivity and diagnostic specificity for TRAb detection (Tozzoli et al). The person of ordinary skill would have been motivated to use glycine buffer, as glycine is useful to stabilize proteins against denaturation and dissociation (Pikal-Cleland et al). The person of ordinary skill would have been motivated to use a luciferase having the amino acid sequence of SEQ ID NO: 23 (i.e., NLUC® or NANOLUC® or NLuc or NanoLuc) with antibodies because NLuc has a small size, displays high stability and luminescence signal intensity, and when fused to whole antibodies or fragments, it provides important tools for library screening in in vivo or in vitro assays, wherein NLuc in the antibody fusion allows rapid quantification of the fusion partner (Boute et al). The person of ordinary skill would have been motivated to use solid microporous structure (like nitrocellulose) as it irreversibly binds proteins and is suitable for protein microarray application, wherein arrays having antibodies present as powerful tools to disease diagnosis (Yin et al, Introduction). The person of ordinary skill in the art would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
25. Thus, the claimed invention as a whole was prima facie obvious over the combined teachings of the prior art.
26. Claims 1, 3, 8, 10-12 and 28 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Arnold et al (2012) OR Bryan et al (2001), Pikal-Cleland et al (2002), Yin et al (2008) and Tozzoli et al (2010), in view of Boute et al (2016) and Chaudhary (2017), and in further view of Filippini et al (Cytometry 31: 180-186, 1998) and Kronick et al (Clin Chem 29: 1582-1589, 1983).
27. Claim 12 recites that the antibody or its fragments (comprising M22 and the luciferase having SEQ ID NO: 23), is paired with a second antibody comprising an R-phycoerythrin (RPE) anti human IgG or its fragment.
28. The teachings of Arnold et al, Bryan et al, Pikal-Cleland et al., Yin et al, Tozzoli et al, Boute et al and Chaudhary are set forth above.
29. Arnold et al, Bryan et al, Pikal-Cleland et al., Yin et al, Tozzoli et al, Boute et al or Chaudhary do not teach a second antibody comprising an RPE anti human IgG or its fragment.
30. Filippini et al teach flow cytometry assay for detection and quantification of p53 in human cell lines, wherein such assay correlates with immunocytochemistry and ELISA (Abstract). The reference teaches that the use of a second antibody coupled to RPE-fluorescence, resulted in improved difference between the control and specific peak (Abstract; page 181, Results, para 2). The reference also teaches immunofluorescence quantification using anti-p53 monoclonal antibody and RPE conjugated anti-mouse F(ab)2 antibody as the second antibody (page 181, col 1, last para). Note that F(ab)2 is a fragment of antibody as stated in para 0059 of instant specification. Also note that the term “paired with a second antibody comprising an …RPE…” (emphasis added) in instant claim 12, is interpreted as being present along (or mixed) with M22 plus the claimed luciferase (in an assay format), as derived from the teaching in para 0223 of instant specification.
31. Kronick et al teach immunoassay techniques using phycobiliprotein fluorescent dyes like RPE from red algae (page 1582, col 1, para 1, 5; Figure 1), and BPE from a different species of red algae, wherein BPE is coupled to anti-human IgG (page 1582, col 2, Material and Methods, para 2). The reference generally teaches the advantages of using phycobiliproteins as fluorescent labels in immunological assays, stating that these are “intense, easy-to-use labels across the spectrum” with less non-specific binding, can be efficiently used in multilabel immunoassays, and will “enhance the use of fluorescence in immunoassay” (page 1586, col 1, para 6, 7; col 2, para 1, 3).
32. Filippini et al or Kronick et al do not teach RPE conjugated to or comprising an anti-human IgG or fragment thereof (emphasis added). However, mice, and humans are all mammals and absent evidence to the contrary, use of human IgG would be obvious to one skilled in the art in view of Filippini et al. Furthermore, in considering the disclosure of a reference, it is proper to take into account not only specific teaching of the reference but also the inferences which one skilled in the art would be reasonably be expected to draw therefrom (In re Preda, 401 F.2d 825, 159 USPQ 342, 344 (CCPA 1968)). Also, a reference must be considered, under 35 U.S.C. 103, not only for what it expressly teaches but also for what it fairly suggests; all disclosures of prior art, including unpreferred embodiments, must be considered in determining obviousness (In re Burckel 201 USPQ 67 (CCPA 1979)).
33. It would therefore, have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the method comprising an antibody fusion having M22 and a luciferase comprising the amino acid sequence of SEQ ID NO: 23 based upon the combined teachings of Arnold et al or Bryan et al, Pikal-Cleland et al, Yin et al, Tozzoli et al, Boute et al and Chaudhary, by using a second antibody comprising RPE anti-human IgG or fragment thereof, in view of the teachings of Filippini et al and Kronick et al. The person of ordinary skill would have been motivated to use RPE antibody conjugate as a second antibody coupled to RPE-fluorescence, as this results in an improved difference between the control and specific peak in the assay (Filippini et al). The person of ordinary skill would have been also motivated to use phycobiliproteins (like RPE) as fluorescent labels in immunological assays, as these are “intense, easy-to-use labels across the spectrum” with less non-specific binding, can be efficiently used in multilabel immunoassays, and will “enhance the use of fluorescence in immunoassay” (Kronick et al). The person of ordinary skill in the art would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
34. Thus, the claimed invention as a whole was prima facie obvious over the combined teachings of the prior art.
Applicant’s Remarks:
35. Defining the method presented in the amended claims, Applicant alleges that the cited art does not contemplate a method of producing an antibody fusion for diagnostic assays as presently claimed, or preparing a diagnostic composition comprising said fusion in a buffered formulation on a microporous solid support like a microarray plate. Applicant argues that even if Tozzoli discloses TRAb antibodies, the ordinarily skilled artisan would not have any guidance to “design a fusion antibody based on a TRAb antibody without motivation from the instant claims”. Directing to amended claim 1, Applicant alleges that the cited combination fails to suggest “buffering with an amino acid buffer”, and that “there is no reason, absent hindsight, why a person of ordinary skill in the art would specifically select any of the amino acids recited in amended independent claim 1”. Applicant argues that the cited art does not teach reasons that would have led to choosing glycine buffer as recited in dependent claim 28. Applicant therefore, requests reconsideration and withdrawal of the rejections.
36. Applicant’s arguments are fully considered, however, are not found to be persuasive. Applicant’s assertion of the present amendment of claims 1 and 28 reciting amino acid buffers is considered and new rejections have been set forth. Primary references - Arnold et al and Bryan et al teach the general concept of using molecular and cell biology techniques for generating constructs comprising an antibody and a luciferase reporter, which can be used for recognizing and labeling an endogenous protein, and for diagnostic assays. Taking note of amended claims 1e and 28, Pikal-Cleland et al teach the benefit of glycine buffers emphasizing that glycine stabilizes proteins from denaturation. Yin et al’s teaching that an antibody in a buffered formulation at pH 6 to 8 on a nitrocellulose slide (solid microporous support) with multi-well film (multi-well of a microarray plate) can be tools to disease diagnosis, indicates that the claimed elements (particularly step f) of claim 1) were well known before the effective filing date of the claimed invention. Tozzoli et al teach that TRAb autoantibodies are a diagnostic hallmark of GD, and that TRAb detection is a routine test for diagnosing and monitoring GD and hyperthyroidism. The combined teachings therefore, obviously provide a rational underpinning and necessary motivation for modifying the method and composition of Arnold, Bryan, Pikal-Cleland and Yin to produce an antibody fusion having M22 and luciferase.
37. Applicant seems to be picking each reference teaching in a stand-alone manner, when it is understood that all claimed limitations need not necessarily be taught by a single reference in an obviousness rejection. Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
38. Applicants may argue that the examiner's conclusion of obviousness is based on hindsight reasoning. However, "[a]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper." In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). All components of the claimed antibody fusion, the making of such constructs, and using the same in a buffered formulation as a diagnostic composition, were well known in the art before the effective filing date of the claimed invention, and therefore, the combination of the cited references would render the recited method obvious.
Conclusion
39. No claims are allowed.
40. Applicant’s amendment necessitated the new ground(s) of rejection presented in the Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
41. 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 extension fee 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.
42. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aditi Dutt whose telephone number is (571)272-9037. The examiner can normally be reached on M-F 9:00am-5:00pm.
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/A. D./
Examiner, Art Unit 1675
30 January 2026
/KIMBERLY BALLARD/Primary Examiner, Art Unit 1675