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 .
Claim Status
Claims 1-3, 5-14, 18-21, 23, 25, 27, and 29 are canceled.
Claims 4, 15-17, 22, 24, 26, 28, and 30-36 are under examination.
Rejections Withdrawn
Claim Rejections - 35 USC § 112
The rejection of claims 4, 12, 15, 17, 22, 24, 26, 28, and 30-36 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of Applicant’s amendments.
The rejection of claim 16 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form is withdrawn in view of Applicant’s persuasive arguments that plasma can be sampled from non-circulating pools.
Rejections Maintained
Claim Rejections - 35 USC § 103
Claim(s) 4, 15-17, 22, 24, 26, 28, and 30-36 remain rejected under 35 U.S.C. 103 as being unpatentable over F. Hoffmann-La Roche (EP2311865, published 04/20/2011, previously cited), Liu (Cancer Medicine, Vol. 2, No. 2, Pg. 234-242, 2013, on IDS), Van Cutsem (Journal of Clinical Oncology, Vol. 30, No. 28, Pg. 3499-3506, 2012, on IDS), Castan (US2014/0051642, published 02/20/2014), Cedarbaum (US2005/0276808, published 12/15/2005), Bedi (US2013/0039911, published 02/13/2014), and Compton (US6500633, published 12/31/2002, on IDS).
Examiner’s Response to Traversal: Applicant’s arguments have been carefully considered but are not found persuasive.
It is noted first that Applicant has amended the claims but these new claims were addressed in the rejection of record and so this rejection stands.
Applicant summarizes each prior art reference and attacks them individually for not teaching the entire invention claimed. This cannot obviate this rejection built not on individual references taken independently of each other but rather on their combination. It has been held that one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references. In re Keller, 208 USPQ 871 (CCPA 1981). Thus, these arguments are not persuasive.
Applicant lingers on Compton’s teachings but this reference is only used to show that PHOSITA knows to establish thresholds. The nature of the thresholds specifically in Compton as diagnostic is unimportant. As explained in the previous action, other thresholds are obvious here.
Applicant repeatedly uses the phrase in contrast to the instant claims. Any implication that any of the references cited teaches away from the claimed invention can only be based on a misreading thereof. None teach the instant method cannot function and so no teaching away is provided. If Applicant simply meant the references teach different methods, then the examiner agrees and this is why a 103 rejection was made and not a 102.
Applicant states that not all claim elements are taught by the prior art. However, all claim elements have been made obvious here for the reasons of record. Applicant fails to specifically point out any that are missing from the rejection.
Applicant then argues unsuccessfully unexpected results.
It is not surprising that the level of PIGFs identifies responders to the anti-VEGF therapy recited in the claims. PIGF indicates anti-angiogenic escape in the prior art and so was known to have a connection with anti-VEGF therapy response. Thus, for the reasons of record, this rejection must clearly stand.
Furthermore, it is not surprising, and in fact is only logical, that sensitive patients respond better than non-sensitive patients to the recited therapy. Thus, no unexpected results have been shown.
Taken all together, this rejection must clearly stand.
Double Patenting
Claims 4, 15-17, 22, 24, 26, 28, and 30-36 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11033606 in view of F. Hoffmann-La Roche (EP2311865, published 04/20/2011, previously cited), Liu (Cancer Medicine, Vol. 2, No. 2, Pg. 234-242, 2013, on IDS), Van Cutsem (Journal of Clinical Oncology, Vol. 30, No. 28, Pg. 3499-3506, 2012, on IDS), Castan (US2014/0051642, published 02/20/2014), Cedarbaum (US2005/0276808, published 12/15/2005), Bedi (US2013/0039911, published 02/13/2014), and Compton (US6500633, published 12/31/2002, on IDS).
Examiner’s Response to Traversal: Applicant’s arguments have been carefully considered but are not found persuasive.
Applicant summarizes the patented claims and attacks those claims and the prior art reference individually for not teaching the entirety of each claimed method. However, as discussed in the rebuttal to Applicant’s arguments in the 103 section above, all said section incorporated here, individual attacks cannot show non-obviousness and this is as true for reference application (patent) claims in double patenting rejections as it is for prior art references. The reference claims do not need to teach the instant claims. Rather, here, their combination with the cited art makes the claims obvious. Thus, this rejection is proper and must stand.
The 103 stands for the reasons supra and its addition to the reference application claims here renders all instant claims obvious.
Claims 4, 15-17, 22, 24, 26, 28, and 30-36 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10501523 in view of F. Hoffmann-La Roche (EP2311865, published 04/20/2011, previously cited), Liu (Cancer Medicine, Vol. 2, No. 2, Pg. 234-242, 2013, on IDS), Van Cutsem (Journal of Clinical Oncology, Vol. 30, No. 28, Pg. 3499-3506, 2012, on IDS), Castan (US2014/0051642, published 02/20/2014), Cedarbaum (US2005/0276808, published 12/15/2005), Bedi (US2013/0039911, published 02/13/2014), and Compton (US6500633, published 12/31/2002, on IDS).
Examiner’s Response to Traversal: Applicant’s arguments have been carefully considered but are not found persuasive.
Applicant summarizes the patented claims and attacks those claims and the prior art reference individually for not teaching the entirety of each claimed method. However, as discussed in the rebuttal to Applicant’s arguments in the 103 section above, all said section incorporated here, individual attacks cannot show non-obviousness and this is as true for reference application (patent) claims in double patenting rejections as it is for prior art references. The reference claims do not need to teach the instant claims. Rather, here, their combination with the cited art makes the claims obvious. Thus, this rejection is proper and must stand.
The 103 stands for the reasons supra and its addition to the reference application claims here renders all instant claims obvious.
Claims 4, 15-17, 22, 24, 26, 28, and 30-36 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11208461 in view of F. Hoffmann-La Roche (EP2311865, published 04/20/2011, previously cited), Liu (Cancer Medicine, Vol. 2, No. 2, Pg. 234-242, 2013, on IDS), Van Cutsem (Journal of Clinical Oncology, Vol. 30, No. 28, Pg. 3499-3506, 2012, on IDS), Castan (US2014/0051642, published 02/20/2014), Cedarbaum (US2005/0276808, published 12/15/2005), Bedi (US2013/0039911, published 02/13/2014), and Compton (US6500633, published 12/31/2002, on IDS).
Examiner’s Response to Traversal: Applicant’s arguments have been carefully considered but are not found persuasive.
Applicant summarizes the patented claims and attacks those claims and the prior art reference individually for not teaching the entirety of each claimed method. However, as discussed in the rebuttal to Applicant’s arguments in the 103 section above, all said section incorporated here, individual attacks cannot show non-obviousness and this is as true for reference application (patent) claims in double patenting rejections as it is for prior art references. The reference claims do not need to teach the instant claims. Rather, here, their combination with the cited art makes the claims obvious. Thus, this rejection is proper and must stand.
The 103 stands for the reasons supra and its addition to the reference application claims here renders all instant claims obvious.
Conclusion
No claim is 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 MICHAEL D ALLEN whose telephone number is (571)270-3497. The examiner can normally be reached Mon-Fri 10-6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samira Jean-Louis can be reached on 571-270-3503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael Allen/Primary Examiner, Art Unit 1642
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