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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08 July 2026, has been entered.
Status of Application, Amendments and/or Claims
The amendment and Applicant’s arguments, filed 08 July 2026, have been entered in full. Claim 15 is withdrawn from consideration as being drawn to a non-elected invention. Claims 4-10, 16 are canceled. Claim 1 is amended. New claims 17-28 are added. Claims 1-3, 11-14, 17-28 are under examination.
MATTER OF RECORD
Applicant is reminded of their election with traverse of Group I (drawn to a method of treating cancer in subjects in need thereof comprising administering an anti-EPO antibody) and the cancer species election of glioblastoma.
Withdrawn Objections And/Or Rejections
The rejection to claims 1-3, 6, 10 and 16 under 35 U.S.C. 103 as being unpatentable over Nico et al. (J Neurooncol Vol. 102:51-58, 2011) in view of Wachtel et al. (Laboratory Investigation, Vol. 92, Supp. SUPPL. 1, pp. 437A. Abstract Number: 1823; February 2012), as set forth at pages 10-14 of the previous Office Action (12 January 2026), is withdrawn in view of the amendment (08 July 2026).
The rejection to claim 16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre- AIA ), second paragraph, as set forth at pages 14-15 of the previous Office Action (12 January 2026), is withdrawn in view of the amendment (08 July 2026).
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 11-14 (and new claims 17-22, 27 and 28) remain rejected under 35 U.S.C. 103 as being unpatentable over Abderrahim et al. (Reference of record; US 2008/0260746; published 23 October 2008) in view of Wachtel et al. (Survival benefit of temozolomide as treatment for glioblastoma; A population based analysis. Laboratory Investigation, Vol. 92, Supp. SUPPL. 1, pp. 437A. Abstract Number: 1823, Feb 2012).
The basis for this rejection is set forth at pages 4-10 of previous Office Action (12 January 2026) and pages 13-17 of previous Office Action (26 August 2025).
APPLICANT’S ARGUMENTS: Applicant discusses the instant invention. Applicant argues that the obviousness rejections in the Final Office Action appear to be premised on the assumption that the invention resides in combining known anti-EPO antibodies with known anti-cancer treatments, especially temozolomide. Applicant maintains that such combinations are not an essential feature of independent claim 1. Applicant argues that the invention is centered on the therapeutic significance of inhibiting endogenous EPO signaling itself, while any additional therapies, including temozolomide, are merely optional dependent embodiments.
Regarding the rejection based on the combination of the teachings of Abderrahim in view of the teachings of Wachtel, Applicant argues that neither reference, alone or in combination, identifies endogenous EPO signaling as the therapeutic target now recited in amended claim 1
Applicant submits that although Abderrahim discloses antibodies related to erythropoietin, it is not directed to the therapeutic strategy presently claimed and does not teach or suggest the use of a specifically characterized anti-EPO antibody as a negative functional modulator of endogenous EPO signaling for treating cancer.
Applicant argues that Wachtel reports clinical observations relating to temozolomide therapy and is entirely silent regarding inhibition of EPO signaling, anti-EPO antibodies, or any therapeutic approach based on modulation of that pathway.
Applicant maintains that the Examiner's reasoning therefore appears to rely on hindsight reconstruction of Applicants' invention. Applicant submits that even if anti-EPO antibodies and temozolomide were individually known, neither reference provides any teaching, suggestion, or motivation leading a skilled person to the presently claimed therapeutic strategy, nor any reasonable expectation of success associated with such an approach.
Applicant’s arguments have been fully considered but are not found persuasive for the following reasons:
1. The instant claims are drawn to a method of treating cancer in a subject. Applicant elected glioblastoma as the species of cancer. Abderrahim et al. and Wachtel et al. teach employing monoclonal anti-EPO antibody and temozolomide, respectively, to treat glioblastoma in subjects.
It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). In addition, KSR held that it is obvious to combine prior art elements according to known methods to yield predictable results.
2. Regarding Applicant’s arguments that the instant invention is centered on the therapeutic significance of inhibiting endogenous EPO signaling itself and that the references do not teach anti-EPO antibody as a negative functional modulator of endogenous EPO signaling for treating cancer;
MPEP 2112 teaches: The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). "In relying upon the theory of inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art."
MPEP 2112 teaches: There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference
In the instant case, Abderrahim et al. teach administering a pharmaceutical composition comprising a monoclonal anti-EPO antibody with a pharmaceutical acceptable excipient to subjects to treat glioblastoma. The administered monoclonal anti-EPO antibody would inherently function as a negative modulator of endogenous erythropoietin signaling.
The scientific reasoning and evidence as a whole indicates that the rejection should be maintained.
NEW REJECTIONS/OBJECTIONS
Claim Rejections-35 USC § 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 11-14, 17-28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite because of the recitation “..human EPO (SEQ ID NO:2) comprising an epitope contained within amino acids 28-189 of SEQ ID NO:2 or the corresponding amino acid sequence of SEQ ID NO:3..”.
Instant SEQ ID NO:2 comprises 162 amino acid residues and instant SEQ ID NO:3 comprises 166 amino acid residues. Thus, the limitation “within amino acids 28-189 of SEQ ID NO:2 or the corresponding amino acid sequence of SEQ ID NO:3” is unclear. The metes and bounds of this claim cannot be determined.
Claim 1 is indefinite because of the limitation “..wherein said anti-EPO antibody..” (see line 8). There is insufficient antecedent basis for this limitation in the claim. Amending the claim 1 to recite, “..wherein said monoclonal anti-EPO antibody” would be remedial.
Claims 18-22 are indefinite because of the limitation “the method according to claim 1, wherein said inhibition..”. There is insufficient antecedent basis for this limitation in the claims.
Claim 24 is indefinite because of the limitation "the method according to claim 1, wherein said modulator..". There is insufficient antecedent basis for this limitation in the claim.
Claim 26 is indefinite because of the limitation "the method according to claim 1, wherein said negative functional modulator..". There is insufficient antecedent basis for this limitation in the claim.
Claims 2-3, 11-14, 17, 23, 25, 27 and 28 are included in this rejection insofar as they depend from claim 1 and do not resolve the issue discussed above.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 11-14, 17-22 are rejected under 35 U.S.C. 102(a1) and 35 U.S.C. 102(a2) as being anticipated by Abderrahim et al. (Reference of record; US 2008/0260746; published 23 October 2008).
Abderrahim et al. teach the invention relates to novel EPO polypeptides and their uses, particularly for therapeutic or prophylactic treatment in human subjects. Further included are antibodies specific for the novel EPO polypeptides of the present invention (abstract and paras 0009, 0022 and 0258-0264). Abderrahim et al. teach the novel EPO polypeptides are variant polypeptides consisting of a polypeptide differing from the sequence set forth at SEQ ID NO:3 (human immature EPO) by the lack of at least one of the amino acids 56 (Cysteine) to 193 (Arginine) of SEQ ID NO: 3, or a variant or an analog of said polypeptide (paras 0013- 0017 and 0051).
Antibodies made against human variant EPO polypeptides that lack one amino acid from SEQ ID NO:3, as taught by Abderrahim, would be able to bind human EPO comprising an epitope contained within amino acids 28-189 of SEQ ID NO:2 or the corresponding amino acid sequence of SEQ ID NO:3 (applies to claim 1).
Abderrahim et al. teach antibodies of the invention include monoclonal or polyclonal antibodies (paras 0268 and 0324-0325) (applies to claim 1). Abderrahim et al. teach a pharmaceutical composition comprising an antibody and a pharmaceutically acceptable carrier, excipient, or stabilizer (para 0313) (applies to claim 1). Abderrahim et al. teach administering the pharmaceutical composition comprising the antibody and EPO polypeptide variant to subjects to treat glioblastoma (para 0313) (applies to claims 1-3, 14). Abderrahim et al. teach useful conjugates or complexes can also be generated for improving the agents in terms of drug delivery efficacy. The pharmaceutical compositions of the present invention may contain, in combination with the polypeptides or proteins of the invention as active ingredient, carriers, biologically compatible vehicles and additives which are suitable for administration, including biomaterials and polymers for drug delivery (paras 0256 and 0336) (applies to claim 13). Abderrahim et al. teach the pharmaceutical composition may be in a liquid or lyophilized form (para 0337) (applies to claim 11). Administration of the pharmaceutical composition include parenteral routes such as subcutaneous, intravenous, intradermal, intramuscular, intraperitoneal, intranasal, transdermal, rectal, oral, or buccal routes (para 0338) (applies to claim 12). Abderrahim et al. teach treating anemias associated with cancers (paras 0334 and 0342) (applies to claim 14).
The Examiner notes that the functional language recited in instant claims 1, 17-22 are not positive, active steps of the claimed method. It merely describes a property of the administered monoclonal anti-EPO antibody. That is to say, the claim recites features by what the antibody does rather than by what the antibody is (i.e. as evidenced by a specific structure). Chemical compounds and their properties are inseparable (In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA1963)), as are their processes and yields (In re Von Schickh, 362 F.2d 821, 150 USPQ 300 (CCPA 1966)). As such, it would have been reasonable to conclude that the administered monoclonal anti-EPO antibody of Abderrahim et al. would have the associated properties (applies to claims 1, 17-22).
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 11-14, 17-24 are rejected under 35 U.S.C. 103 as being unpatentable over Abderrahim et al. (US 2008/0260746; published 23 October 2008) in view of Estrada- Bernal et al. (Reference of record; Neuro-oncology, Vol. 14, No. 4, pp. 405-15. ABSTRACT. Electronic Publication Date: 20 Feb 2012; 2012 April).
Abderrahim et al. teach the invention relates to novel EPO polypeptides and their uses, particularly for therapeutic or prophylactic treatment in human subjects. Further included are antibodies specific for the novel EPO polypeptides of the present invention (abstract and paras 0009, 0022 and 0258-0264). Abderrahim et al. teach the novel EPO polypeptides are variant polypeptides consisting of a polypeptide differing from the sequence set forth at SEQ ID NO:3 (human immature EPO) by the lack of at least one of the amino acids 56 (Cysteine) to 193 (Arginine) of SEQ ID NO: 3, or a variant or an analog of said polypeptide (paras 0013- 0017 and 0051). Antibodies made against human variant EPO polypeptides that lack one amino acid from SEQ ID NO:3, as taught by Abderrahim, would be able to bind human EPO comprising an epitope contained within amino acids 28-189 of SEQ ID NO:2 or the corresponding amino acid sequence of SEQ ID NO:3 (applies to claim 1). Abderrahim et al. teach antibodies of the invention include monoclonal or polyclonal antibodies (paras 0268 and 0324-0325) (applies to claim 1). Abderrahim et al. teach a pharmaceutical composition comprising an antibody and a pharmaceutically acceptable carrier, excipient, or stabilizer (para 0313) (applies to claim 1). Abderrahim et al. teach administering the pharmaceutical composition comprising the antibody and EPO polypeptide variant to subjects to treat glioblastoma (para 0313) (applies to claims 1-3,14). Abderrahim et al. teach useful conjugates or complexes can also be generated for improving the agents in terms of drug delivery efficacy. The pharmaceutical compositions of the present invention may contain, in combination with the polypeptides or proteins of the invention as active ingredient, carriers, biologically compatible vehicles and additives which are suitable for administration, including biomaterials and polymers for drug delivery (paras 0256 and 0336) (applies to claim 13). Abderrahim et al. teach the pharmaceutical composition may be in a liquid or lyophilized form (para 0337) (applies to claim 11). Administration of the pharmaceutical composition include parenteral routes such as subcutaneous, intravenous, intradermal, intramuscular, intraperitoneal, intranasal, transdermal, rectal, oral, or buccal routes (para 0338) (applies to claim 12). Abderrahim et al. teach treating anemias associated with cancers (paras 0334 and 0342) (applies to claim 14). The Examiner notes that the functional language recited in instant claims 1, 17-22 are not positive, active steps of the claimed method. It merely describes a property of the administered monoclonal anti-EPO antibody. That is to say, the claim recites features by what the antibody does rather than by what the antibody is (i.e. as evidenced by a specific structure). Chemical compounds and their properties are inseparable (In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA1963)), as are their processes and yields (In re Von Schickh, 362 F.2d 821, 150 USPQ 300 (CCPA 1966)). As such, it would have been reasonable to conclude that the administered monoclonal anti-EPO antibody of Abderrahim et al. would have the associated properties (applies to claims 1, 17-22).
Abderrahim et al. do not teach administering fingolimod (FTY720) to treat glioblastoma.
Estrada-Bernal et al. teach FTY720 as a sphingosine analogue that down regulates expression of sphingosine-1-phosphate receptors and causes apoptosis of multiple tumor cell types, including glioma cells. Estrada-Bernal et al. examined the effect of FTY720 on brain tumor stem cells (BTSCs) derived from human glioblastoma (GBM) tissue. FTY720 treatment of BTSCs led to rapid inactivation of ERK MAP kinase, leading to upregulation of the BH3-only protein Bim and apoptosis. Estrada-Bernal et al. teach FTY720 is an excellent potential therapeutic agent for treatment of glioblastoma (applies to claims 23 and 24).
It would have been obvious for one of ordinary skill in the art before the effective filing date to modify a method of treating glioblastoma in subjects comprising administering a monoclonal anti-EPO antibody, as taught by Abderrahim et al., by further including administering FTY720 as taught Estrada-Bernal et al. One of ordinary skill in the art before the effective filing date, would have been motivated to modify the method because Estrada-Bernal et al. teach FTY720 is an excellent potential therapeutic agent for treatment of glioblastoma.
Additionally, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). In addition, KSR held that it is obvious to combine prior art elements according to known methods to yield predictable results.
In the instant case, monoclonal anti-EPO antibody and FTY720 are taught by Abderrahim and Estrada-Bernal, respectively, to be employed to treat glioblastoma.
Claims 1-3, 11-14, 17-22, 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Abderrahim et al. (US 2008/0260746; published 23 October 2008) in view of Wu et al. (US 2010/0015135; published Jan 21, 2010).
Abderrahim et al. teach the invention relates to novel EPO polypeptides and their uses, particularly for therapeutic or prophylactic treatment in human subjects. Further included are antibodies specific for the novel EPO polypeptides of the present invention (abstract and paras 0009, 0022 and 0258-0264).Abderrahim et al. teach the novel EPO polypeptides are variant polypeptides consisting of a polypeptide differing from the sequence set forth at SEQ ID NO:3 (human immature EPO) by the lack of at least one of the amino acids 56 (Cysteine) to 193 (Arginine) of SEQ ID NO: 3, or a variant or an analog of said polypeptide (paras 0013- 0017 and 0051). Antibodies made against human variant EPO polypeptides that lack one amino acid from SEQ ID NO:3, as taught by Abderrahim, would be able to bind human EPO comprising an epitope contained within amino acids 28-189 of SEQ ID NO:2 or the corresponding amino acid sequence of SEQ ID NO:3 (applies to claim 1). Abderrahim et al. teach antibodies of the invention include monoclonal or polyclonal antibodies (paras 0268 and 0324-0325) (applies to claim 1). Abderrahim et al. teach a pharmaceutical composition comprising an antibody and a pharmaceutically acceptable carrier, excipient, or stabilizer (para 0313) (applies to claim 1). Abderrahim et al. teach administering the pharmaceutical composition comprising the antibody and EPO polypeptide variant to subjects to treat glioblastoma (para 0313) (applies to claims 1-3, 14). Abderrahim et al. teach useful conjugates or complexes can also be generated for improving the agents in terms of drug delivery efficacy. The pharmaceutical compositions of the present invention may contain, in combination with the polypeptides or proteins of the invention as active ingredient, carriers, biologically compatible vehicles and additives which are suitable for administration, including biomaterials and polymers for drug delivery (paras 0256 and 0336) (applies to claim 13). Abderrahim et al. teach the pharmaceutical composition may be in a liquid or lyophilized form (para 0337) (applies to claim 11). Administration of the pharmaceutical composition include parenteral routes such as subcutaneous, intravenous, intradermal, intramuscular, intraperitoneal, intranasal, transdermal, rectal, oral, or buccal routes (para 0338) (applies to claim 12). Abderrahim et al. teach treating anemias associated with cancers (paras 0334 and 0342) (applies to claim 14). The Examiner notes that the functional language recited in instant claims 1, 17-22 are not positive, active steps of the claimed method. It merely describes a property of the administered monoclonal anti-EPO antibody. That is to say, the claim recites features by what the antibody does rather than by what the antibody is (i.e. as evidenced by a specific structure). Chemical compounds and their properties are inseparable (In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA1963)), as are their processes and yields (In re Von Schickh, 362 F.2d 821, 150 USPQ 300 (CCPA 1966)). As such, it would have been reasonable to conclude that the administered monoclonal anti-EPO antibody of Abderrahim et al. would have the associated properties (applies to claims 1, 17-22).
Abderrahim et al. do not teach administering an anti-EPHB4 antibody to treat glioblastoma.
Wu et al. teach anti-EphB4 antibodies, and pharmaceutical compositions comprising and methods of using the anti-EphB4 antibodies (abstract, paras 0072 and 0080). Wu et al. teach administering an anti-EphB4 antibody to treat glioblastoma (paras 0087-0092 and 0167)(applies to claims 25 and 26).
It would have been obvious for one of ordinary skill in the art before the effective filing date to modify a method of treating glioblastoma in subjects comprising administering a monoclonal anti-EPO antibody, as taught by Abderrahim et al., by further including administering an anti-EphB4 antibody as taught Wu et al. One of ordinary skill in the art before the effective filing date, would have been motivated to modify the method because Wu et al. teach anti-EphB4 antibodies as a therapeutic agent for treatment of glioblastoma.
Additionally, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). In addition, KSR held that it is obvious to combine prior art elements according to known methods to yield predictable results.
In the instant case, monoclonal anti-EPO antibody and anti-EphB4 antibody are taught by Abderrahim and Wu, respectively, to be employed to treat glioblastoma.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REGINA M DEBERRY whose telephone number is (571)272-0882. The examiner can normally be reached M-F 9:00-6:30 pm (alt Fri).
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/R.M.D/Examiner, Art Unit 1647 9/28/2026
/BRIDGET E BUNNER/Primary Examiner, Art Unit 1647
