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, 10, 75, and 86-106 are currently pending. Claims 75, 92-93, and 99 are amended. Claims 103-106 are new; Claims 2-9, 11-74, and 76-85 are cancelled. Claims 1, 10, 75, and 86-106 are examined below.
Priority
The present application was filed as a proper National Stage (371) entry of PCT Application No. PCT/US20/17697, filed 02/11/2020, which claims benefit under 35 U.S.C. 119(e) to provisional application No. 62/803,702, filed 02/11/2019.
Information Disclosure Statement
The information disclosure statement (IDS) filed 04/14/2026 has been considered, initialed, and is attached hereto.
Withdrawn rejections
The rejection of claims 92, 93 and 99 under 35 U.S.C. §112(b) are withdrawn due to the amendment of the claims.
The rejection of claim 75 under 35 U.S.C. §102 is withdrawn due to the amendment of the claim.
See new grounds of rejection below.
The rejection of the claims under 35 U.S.C. §102/103 is withdrawn due to the persuasiveness of applicant’s arguments.
See new grounds of rejection below.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.
Claim 93 is rejected under 35 U.S.C. 101 because the claimed invention is directed to law of nature/natural phenomena and an abstract idea (mental concept) without significantly more.
The U.S. Patent and Trademark Office recently revised the MPEP with regard to § 101 (see the MPEP at 2106). Regarding the MPEP at 2106, in determining what concept the claim is “directed to”, we
look to whether the claim recites:
any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and
additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (2) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim contains an “’inventive concept’ sufficient to ‘transform’” the claimed judicial exception into a patent -eligible application of the judicial exception. Alice, 573, U.S. at 221 (quoting Mayo, 566 U.S. at 82). In so doing, we thus consider whether the claim:
adds a specific limitation beyond the judicial exception that is no “well-understood, routine, conventional: in the field (see MPEP § 2106.05(d)); or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
See MPEP 2106.
ELIGIBILITY STEP 2A: WHETHER A CLAIM IS DIRECTED TO A JUDICIAL EXCEPTION
Step 2A, prong 1
Claim 93 is directed to the natural correlation between the amount of living sperm cells bound to the reagent (amount of living sperm cells displaying phosphatidylserine on the cell surface) and the fertility of a sperm sample. Claim 93 recites “identifying the sample as a fertile sample if an amount of living sperm cells bound to the reagent […] exceeds a predetermined number”.
The natural relationship to which the claims are directed (i.e. between amount of living sperm cells with phosphatidylserine exposed on the cell surface and the sample being fertile) is a law of nature. Similar concepts have been held by the courts to constitute law of nature/ natural phenomena, as in the identification of a correlation between the presence of myeloperoxidase in a bodily sample (such as blood or plasma) and cardiovascular disease risk in Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1361, 123 USPQ2d 1081, 1087 (Fed. Cir. 2017). In Mayo, the Supreme Court found that a claim was directed to a natural law, where the claim required administering a drug and determining the levels of a metabolite following administration, where the level of metabolite was indicative of a need to increase or decrease the dosage of the drug. See Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 74 (2012).
The instant claims are similar to those as in Mayo as they involve a “relation itself [which] exists in principle apart from any human action” (id. At 77), namely the relationship between the amount of living sperm cells bound to the reagent, i.e. the amount of sperm cells with exposed phosphatidylserine on the cell surface, and the sample being fertile.
As indicated above, in addition to natural correlation, the claims are also directed to abstract ideas.
Claim 93 recites “identifying the sample as a fertile sample if an amount of living sperm cells bound to the reagent in the sample does not exceed 50% of total sperm cells”.
The step of “identifying” based on comparison of living sperm cells bound to the reagent (a cutoff/threshold value) also represents abstract ideas. Similar concepts involving comparing information regarding a sample or test subject to a control or target data have been held to be an "abstract mental process", as in University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 113 USPQ2d 1241 (Fed. Cir. 2014) which involved "comparing BRCA sequences and determining the existence of alterations", the collecting and comparing of known information in Classen, the comparing information regarding a sample or test subject to a control or target data in Ambry and Myriad CAFC, as well as Mayo (which also involved specific numerical cutoff levels).
The claimed steps of identifying a fertile sample based on the comparison of the percentage value of cells bound to the reagent may also be categorized as an abstract idea, namely a mental process/concept performed in the human mind, such as a practitioner simply observing the results and thinking about the quantified amount relative to the cut-off value, and making an evaluation, judgement, or opinion (See MPEP 2106). The claims, under broadest reasonable interpretation, cover performance of these steps solely within the human mind.
The recited cutoff values also constitute an abstract idea (a cutoff value being itself a mathematical concept).
Step 2A, prong 2
The above discussed step of “identifying” is insufficient themselves to integrate into a practical application because as discussed, these steps themselves are directed to abstract ideas; in this case, identifying a fertile sample by comparing the amount of cells displaying phosphatidylserine on the surface to a predetermined threshold, represents the judicial exceptions and not a practical application thereof.
Regarding the independent claim (claim 1), see the claim further recites the limitations/steps “providing a sample” and “mixing the sample with a reagent”. However, these steps fail to further amount to a practical application of the indicated judicial exception(s). Specifically, the providing a sample and mixing the sample with the reagent are steps considered to be insignificant extra-solution activity, as it is a mere data gathering step (necessary in order to gather the data, namely, to count phosphatidylserine positive sperm). Similarly, the limitation of “bound to the reagent” is also refers to extra-solution activity, as it is directed to detecting the expression of phosphatidyl serine on the surface of the cell, which occurs naturally.
Claim 93 does recite an additional active step of “treating the subject for infertility”. Although limitations which amount to applying or using a judicial exception to effect a particular treatment or prophylaxis for disease or medical condition are typically indicative of a practical application, in the present case the claim fails to recite a particular treatment. The language specific to the treatment is recited at a high level of generality, and is not limited to any particular treatment. Such highly generalized treatment limitations which do not require any specific treatment and does not amount to sufficient practical application to provide patentability.
The level of generality in the instant claim stands in contrast to the treatment claims found patent-eligible in Vanda Pharm. Inc. v. West-Ward Pharm. lnt'/Ltd., 887 F.3d 1117 (Fed. Cir. 2018) and
Natura/Alternatives lnt'lv. Creative Compounds LLC, 2017 WL 1216226 (Fed. Cir. Mar. 15, 2019). The claims at issue in Vanda recited administering a specific drug (iloperidone) at specific dosage ranges based on a patient's genotype. Vanda, 887 F.3d at 1135. Accordingly, the court found that although the inventors recognized the relationships between iloperidone, a patient's genotype, and QTc prolongation, what they claimed is "an application of that relationship," i.e., "'a new way of using an existing drug' that is safer for patients because it reduces the risk of QTc prolongation." Id. (quoting Mayo, 566 U.S. at 87). The Federal Circuit characterized the Vanda claims as being directed to "a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome." Id. at 1136. Similarly, the Federal Circuit found that the claims in Natura/Alternatives "contain specific elements that clearly establish they are doing more than simply reciting a natural law," such as specifying a patient population, particular results to be obtained, specific compounds to be administered to achieve the claimed results, and dosages via an "effective" limitation. Natural Alternatives, 4-5.
In contrast to the claims in Vanda and Natura/Alternatives, the claim 93 does not specify a particular result to be obtained, a compound to be administered to achieve a claimed result, or any specific dosage of a specific compound.
Rather, “treating the subject for infertility” as claimed would be directed to any and all treatments. The recited treating steps do not limit the claims to a particular application; instead, the effect of the treatment limitations "is simply to tell doctors to apply the law somehow when treating their patients." Mayo, 566 U.S. at 81-82.
ELIGIBILITY STEP 2B: WHETHER THE ADDITIONAL ELEMENTS CONTRIBUTE AN "INVENTIVE CONCEPT"
Further, the additional elements of the claims (the active method steps/limitations recited in addition to the judicial exceptions themselves) do not add significantly more to the judicial exception(s); the additional recited claim elements are recited at a high level of generality, and are not, for example limited to any specific testing technique or any non-routine/unconventional reagent.
It was routine and conventional in the assay art at the time of the invention to determine phosphatidylserine and cell viability on sperm cells using Annexin V and a membrane impermeable dye such as 7AAD or propidium iodide, see for example Tavalaee et al. (Relationship between fertilization rate and early apoptosis in sperm population of infertile individuals. Andrologia. 2014 Feb;46(1):36-41) teaches the use of annexin V and propidium iodide to study externalization of phosphatidyl serine on the sperm membrane and teaches a positive correlation between the percentages of fertilization and annexin-positive PI-negative sperm (Tavalaee, page 36, ‘Summary’, lines 2-12). Further, Wechalekar et al. (Whole-body heat exposure induces membrane changes in spermatozoa from the cauda epididymidis of laboratory mice. Asian journal of andrology. 2010 Jun 7;12(4):591; PTO-892 01/15/2026) teaches dual fluorescent staining of spermatozoa with Annexin V-phycoerythrin and 7-AAD (Wechalekar, page 592, ‘2.4’, lines 1-2). Alternatively, Gadella et al. (Capacitation induces cyclic adenosine 3′, 5′-monophosphate-dependent, but apoptosis-unrelated, exposure of aminophospholipids at the apical head plasma membrane of boar sperm cells. Biology of reproduction. 2002 Jul 1;67(1):340-50; PTO-892 01/15/2026) teaches staining sperm samples with annexin V and propidium iodide (Gadella, page 341, ‘Annexin V Staining’, lines 1-4). You et al. (Semen phthalate metabolites, spermatozoa apoptosis, and DNA damage: a cross-sectional study in China. Environmental science & technology. 2015 Mar 17;49(6):3805-12; PTO-892 01/15/2026) similarly teaches staining sperm with Annexin V and propidium iodide (You, page 3806, ‘Annexin V Assay’, lines 11-16).
Given that assaying for phosphatidylserine and viable cells, using Annexin V and a membrane impermeable dye such as 7-AAD or propidium iodide to stain sperm cells, was routinely done in the assay art at the time, the claimed determining step fails to go beyond routine/conventional activity and fails to impose meaningful limit on the claim scope. The claimed determining step does not add any feature that is more than well-understood, purely conventional, or routine activity in the field. When recited at this high level of generality, there is no meaningful limitation, such as a particular or unconventional machine or a transformation of a particular article, in this step that distinguishes it from well-understood, routine, and conventional data gathering activity engaged in by scientists prior to applicant’s invention. See also MPEP 2106.05(g). As indicated previously above, referring to MPEP 2106.05(b), use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of use limitation) would not integrate a judicial exception or provide significantly more.
For all of these reasons, the claims fail to include additional elements that are sufficient to amount to significantly more than the judicial exception(s).
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, 86, 88-90, 103, and 105 are rejected under 35 U.S.C. 103 as being unpatentable over Tavalaee et al. Relationship between fertilization rate and early apoptosis in sperm population of infertile individuals. Andrologia. 2014 Feb;46(1):36-41.
Regarding claim 1, Tavalaee teaches obtaining semen samples from candidates (Tavalaee, page 37, ‘Semen sample collection and preparation’, lines 4-5), mixing the washed sample with FITC-labelled Annexin V (AnV), washing the samples, incubating the sample with propidium iodide (PI), and using annexin V to detect external phosphatidyl serine as well as using propidium iodide as a vital dye (Tavalaee, page 37, ‘Assessment of EPS by flow cytometry’, lines 7-16). Tavalaee further teaches that for successful fertilization, events including (i) sperm maturation in the spididymis; (ii) dynamic changes in membrane proteins and lipids during sperm capacitation/ (iii)acrosome exocytosis and (iv) binding adhesion and fusion of spermolemma with oolemma have to occur and that one molecule that plays a central role in these events is phosphatidyl serine (Tavalaee, page 36, 2nd paragraph, lines 1-9). Tavalaee further teaches that externalization of phosphatidyl serine takes place as a part of the physiological process by preparing the sperm to fuse with the oocyte (Tavalaee, page 37, lines 4-8).
Tavalaee further teaches that the percentage of AnV+PI- sperm in individuals with fertilization rates higher and lower than 50% significantly differed and the percentage of AnV+PI- sperm in semen of the partners of pregnant women significantly differed from the partners of nonpregnant women (Tavalaee, page 36, ‘Summary’, lines 14-18).Tavalaee teaches a positive correlation between the percentage of fertilization with the percentage of AnV+PI- sperm (Tavalaee, page 38, 2nd column, 2nd paragraph, lines 2-4). There is no positive correlation between pregnancy and AnV-PI-, AnV-PI+, AnV+PI+ expression on sperm (Tavalaee, page 38, Table 1, column ‘Fertilization rate’) and as such Tavalaee teaches that AnV+PI- sperm shows increased fertilization competency compared to AnV-PI-, AnV-PI+, or AnV+PI+ sperm cells.
It would have been prima facie obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed to have used Annexin V and propidium iodide to detect fertilization competent sperm cells in a sample because of the teaching of Tavalaee that there is a positive correlation between pregnancy rate and AnV+PI- sperm.
Regarding claim 86 and 103, Tavalaee teaches obtaining semen samples from candidates (Tavalaee, page 37, ‘Semen sample collection and preparation’, lines 4-5) and further teaches a percentage of annexin-positive PI-positive sperm in semen of the partners of pregnant women (Tavalaee, page 36, ‘Summary’, lines 16-17). As such, Tavalaee teaches human subjects.
Regarding claim 88, Tavalaee teaches performing experiments on washed samples after density-gradient centrifugation (Tavalaee, page 37, ‘Semen sample collection and preparation’, lines 9-11) and that sperm is separated from seminal fluid (Tavalaee, page 39, 2nd column, 2nd paragraph, lines 3-5). As such, Tavalaee teaches forming a sample by concentrating a semen sample.
Regarding claims 89, 90¸ and 105, Tavalaee teaches mixing the washed sample with FITC-labelled Annexin V (Tavalaee, page 37, ‘Assessment of EPS by flow cytometry’, line 7).
Claim 93 is rejected under 35 U.S.C. 103 as being unpatentable over Tavalaee et al. as applied to claim 1 above, in view of Gadella et al. Capacitation induces cyclic adenosine 3′, 5′-monophosphate-dependent, but apoptosis-unrelated, exposure of aminophospholipids at the apical head plasma membrane of boar sperm cells. Biology of reproduction. 2002 Jul 1;67(1):340-50 (see PTO-892, 01/15/2026) and Dabaja et al. Medical treatment of male infertility. Translational andrology and urology. 2014 Mar;3(1):9-16.
Regarding claim 93, Tavalaee teaches a method of detecting fertilization competent sperm cells substantially as claimed.
As explained previously in detail above, Tavalaee further teaches that externalized phosphatidyl serine plays an important part in fertilization by preparing the sperm to fuse with the oocyte (Tavalaee, page 37, lines 4-8).
Tavalaee fails to teach identifying an infertile sample if the amount of living sperm cells (Propidium iodide-) bound to the reagent (Annexin V) does not exceed 50% of the total sperm cells in the sample and treating the subject for infertility.
Gadella teaches investigating the effect of bicarbonate on surface exposure of phosphatidylserine in boar spermatozoa (Gadella, page 340, ‘Abstract’, lines 4-7). Gadella teaches collecting sperm-rich fractions of boar semen from highly fertile boars (Gadella, page 341, ‘Sperm Cell Preparation’, lines 1-2). Gadella further teaches that after bicarbonate induced exposure, 50% of intact sperm cells express external phosphatidyl choline, i.e. 50% of PI negative (live) cells are Annexin V+ (Gadella, page 343, Figure 2B and figure legend). Put another way, Gadella teaches that highly fertile samples can be identified by binding of Annexin V on 50% of live sperm cells.
Dabaja teaches that about 15% of couples are infertile and male infertility contributes to about 50% of infertility cases. There are multiple known causes of male infertility and medical treatment of said causes of male infertility tend to have targeted and high success rates whereas idiopathic or genetic causes of male infertility the medical management is directed for the purpose of optimization (Dabaja, page 9, ‘Introduction’, see entire first paragraph).
It would have been prima facie obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed to have modified the method of Tavalaee of staining sperm cells with Propidium Iodide and Annexin V (identifying life sperm cells expressing phosphatidylserine, which plays an important part in fertilization, can be used to identify fertilization competent sperm samples) with a cut-off of 50% live cells expressing phosphatidyl serine, below which the samples are designated infertile, because of the teaching of Gadella that highly fertile sperm samples express phosphatidyl serine on 50% of the sperm cells.
It would have been prima facie further been obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed to have treated subjects with infertile sperm samples as determined by the method of Tavalaee because of the teaching of Dabaja that 50% of infertility cases are due to male infertility and that treatment of known causes of infertility has a high success rate.
One of ordinary skill in the art would have a reasonable expectation of success applying the 50% cutoff derived from the teaching of Gadella to the method of Tavalaee because both Tavalaee and Gadella teach that external phosphatidyl serine expression can be detected on sperm cells and correlates with fertility in both humans (Tavalaee) and boars (Gadella).
One of ordinary skill in the art would have a reasonable expectation of success in treating males with infertility as determined by Annexin V expression on live sperm cells in the method of Tavalaee because of the teaching of Dabaja that treatment of known cases of infertility has a high success rate.
Claims 10, 94, 96-98, 100-101, 104 and 106 and are rejected under 35 U.S.C. 103 as being unpatentable over Tavalaee in view of Paasch et al. Deterioration of plasma membrane is associated with activated caspases in human spermatozoa. Journal of andrology. 2003 Mar 4;24(2):246-52 (see PTO-892, 01/15/2026).
Regarding claim 10, Tavalaee teaches obtaining semen samples from candidates (Tavalaee, page 37, ‘Semen sample collection and preparation’, lines 4-5), mixing the washed sample with FITC-labelled Annexin V (AnV), washing the samples, incubating the sample with propidium iodide (PI), and using annexin V to detect external phosphatidyl serine and propidium iodide as a vital dye (Tavalaee, page 37, ‘Assessment of EPS by flow cytometry’, lines 7-16). Tavalaee further teaches a positive correlation between the percentage of fertilization with the percentage of AnV+PI- sperm (Tavalaee, page 38, 2nd column, 2nd paragraph, lines 2-4). Tavalaee further teaches that the percent of AnV+PI- sperm was 3.91% in individuals with a fertilization rate higher than 50% and 0.93% in individuals with a fertilization rate lower than 50% (Tavalaee, page 37, 2nd column, 3rd paragraph, lines 5-8). Put another way, sperm with a higher percentage of AnV+ live sperm cells is more likely to result in successful fertilization in post-intracytoplasmic sperm injection.
Tavalaee fails to teach isolating sperm cells bound to the reagent that binds phosphatidyl serine on sperm cells.
Paasch teaches a technique for separating spermatozoa by magnetic-activated cell sorting after binding superparamagnetic annexin V-conjugated microbeads to membrane phosphatidylserine (Paasch, page 246, ‘Abstract, lines 1-4). Paasch teaches dividing sperm (human) suspensions into two fractions using a magnetic field by incubating spermatozoa with annexin V-conjugated microbeads (capture moiety/microbead) and the loading the spermatozoa/microbeads suspension on a separation column containing iron balls. The fraction composed of phosphatidylserine-positive membranes spermatozoa (annexin V-conjugated microbead+) was retained in the separation column (isolating the capture moiety) and after removing the column from the magnetic field the retained fraction was eluted using annexin V-binding buffer (Paasch, page 247, see entire paragraph ‘Depletion of Spermatozoa With Deteriorated Membrane by Magnetic Cell Separation’). Paasch further teaches that annexin V-conjugated microbeads are useful, specific, and sensitive method (Paasch, page 250, 2nd paragraph, lines 1-2).
It would have been prima facie obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed to have modified the invention of Tavalaee of identifying AnV+PI- sperm cells by flow cytometry with the method of Pasch of isolating AnV+ sperm because of the teaching of Tavalaee that sperm samples with a higher percentage of AnV+PI- sperm cells are more likely to result in fertilization.
One of ordinary skill in the art would have a reasonable expectation of success in isolating the AnV+ sperm cells of Tavalaee with the method of Paasch because Paasch teaches that isolation of sperm cells using Annexing V-conjugated microbeads and Tavalaee teaches identification of AnV+PI- sperm cells using Annexin V.
Regarding claims 94 and 104, Tavalaee teaches obtaining semen samples from candidates (Tavalaee, page 37, ‘Semen sample collection and preparation’, lines 4-5) and further teaches a percentage of annexin-positive PI-positive sperm in semen of the partners of pregnant women (Tavalaee, page 36, ‘Summary’, lines 16-17). As such, Tavalaee teaches human subjects.
Regarding claim 96, Tavalaee teaches performing experiments on washed samples after density-gradient centrifugation (Tavalaee, page 37, ‘Semen sample collection and preparation’, lines 9-11) and that sperm is separated from seminal fluid (Tavalaee, page 39, 2nd column, 2nd paragraph, lines 3-5). As such, Tavalaee teaches forming a sample by concentrating a semen sample.
Regarding claims 97-98, Tavalaee teaches mixing the washed sample with FITC-labelled Annexin V (Tavalaee, page 37, ‘Assessment of EPS by flow cytometry’, line 7).
Regarding claims 100, 101, and 106 Tavalaee and Paasch as applied to claim 10, also applies to claim 99.
Paasch teaches dividing sperm suspensions into two fractions using a magnetic field by incubating spermatozoa with annexin V-conjugated microbeads and the loading the spermatozoa/microbeads suspension on a separation column containing iron balls. The fraction composed of phosphatidylserine-positive membranes spermatozoa was retained in the separation column (Paasch, page 247, see entire paragraph ‘Depletion of Spermatozoa With Deteriorated Membrane by Magnetic Cell Separation’).
Claim 102 is rejected under 35 U.S.C. 103 as being unpatentable over Tavalaee et al. in view of Paasch et al. as applied to claim 10 above and further in view of Biocompare Isolate specific cell populations with magnetic separation systems; 05/30/2013 accessed 12/13/2025 (see PTO-892, 01/15/2026) and Vogt et al. Antiphosphatidylserine antibody removes annexin-V and facilitates the binding of prothrombin at the surface of a choriocarcinoma model of trophoblast differentiation. American journal of obstetrics and gynecology. 1997 Oct 1;177(4):964-72 (see PTO-892, 01/15/2026).
Regarding claim 102¸ Tavalaee and the cited art above teaches a method of isolating fertilization competent sperm cells substantially as claimed.
Tavalaee and the cited art does not teach eluting sperm cells form the reagent that selectively binds phosphatidylserine on the sperm cells.
Biocompare teaches that working with magnetic separation system positive selection is the simplest approach but that the downside is that the cells are stuck to antibodies which are stuck to magnetic beads and that there is concern that the bead-cell attachment could interfere with downstream experiments, for example if examining gene expression, the binding of a cell-surface receptor to an antibody might alter the transcriptome (Biocompare, ‘Positive selection’, lines 1, 5-6, and 12-14).
Vogt teaches using BeWo choriocarcinoma cells (Vogt, page 965, 2nd paragraph, line 2) and further teaches staining BeWo cells with fluorescently labeled annexin V (Vogt, page 965, see ‘Fluorescein isothiocyanate-annexin-V binding’). Vogt further teaches that adding anti-phosphatidylserine antibody removed most annexin-V from the BeWo surface (Vogt, page 965, lines 1-4).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Tavalaee and the cited art above of isolating AnV+PI- sperm cells with the method of Vogt of adding anti-phosphatidylserine antibodies to release Annexin V binding to phosphatidylserine in order to release the beads. One of ordinary skill in the art would be motivated to do so because of the teaching of Biocompare that there is concern that the attachment of antibodies could interfere with downstream experiments.
One of ordinary skill in the art would have a reasonable expectation of success in removing the microbeads by adding anti-phosphatidylserine antibodies, because of the teaching of Vogt of having removed Annexin V bound to a sample with said method.
Claim 75 is rejected under 35 U.S.C. 103 as being unpatentable over Elliott et al. Unexpected requirement for ELMO1 in clearance of apoptotic germ cells in vivo. Nature. 2010 Sep 16;467(7313):333-7.
Regarding claim 75, Elliott teaches a soluble fragment containing the TSR region of BAI1, denoted GST-BAI1-TSR (Elliott, page 335, 2nd column, 3rd paragraph, line 15). Elliott further teaches that BAI1 is a phosphatidyl Serine recognition receptor (reagent that selectively binds phosphatidyl serine; Elliot, page 335, 2nd column, 2nd paragraph, line 10-11). Elliot further teaches that in order to address the potential role of BAI1 in engulfment by Sertoli cells a soluble fragment containing the TSR region of ABI1 (denoted GST-BAI1-TSR) was used which strongly blocks the in vitro binding/internalization of apoptotic targets to murine Sertoli cells (Elliot, page 335, 2nd column, 3rd paragraph, lines 13-17).
Regarding the limitation “instructional material for detecting and/or isolating fertilization competent sperm cells”, MPEP 2112.01(III) states that “[w]here the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining "[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product."). In the instant case the limitation is not considered to contribute to the overall patentability of the claimed invention the prior art teaches GST-BAI1-TSR.
The preamble of claim 75 recites “A kit for detecting and/or isolating fertilization competent sperm cells in a sample”.
Elliott is silent as to “a kit” and “detecting and/or isolating fertilization competent sperm”.
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided
The normal purpose of a claim preamble is to recite the purpose or intended use of the claimed invention. Such statements merely define the context in which the invention operates and usually will not limit the scope of the claim (MPEP 2111.02). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). “If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.” Pitney Bowes Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). However, when the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation. Id.
In the instant case, the statements in the preamble merely express the purpose of the claimed kit (detecting and/or isolating fertilization competent sperm cells) and fail to clearly result in a manipulative difference. The statements in the preamble do not provide antecedent basis for terms in the body of the claim, and are not essential to understand the limitations or terms in the body of the claim.
It would have been prima facie obvious to one having ordinary skill in the art at the time the claimed invention was effectively filed to have provided GST-BAI1-TSR (as such providing a kit comprising GST-BAI1-TSR) because the prior art teaches that GST-BAI1-TSR strongly blocks the in vitro binding/internalization of apoptotic targets to murine Sertoli cells and can be used to study the potential role of BAI1 in engulfment by Sertoli cells.
Claim 87 is rejected under 35 U.S.C. 103 as being unpatentable over Tavalaee et al. as applied to claim 86 above and further in view of McPherson et al. Semen effects on insemination outcomes in sows. Animal reproduction science. 2014 Dec 10;151(1-2):28-33 (see PTO-892, 01/15/2026) and Gadella et al.
Regarding claim 87¸ Tavalaee and the cited art above teaches a method of detecting fertilization competent sperm cells substantially as claimed.
Tavalaee does not teach a non-human animal subject.
McPherson teaches that artificial insemination is common practice in the global pig industry with reliance on extended, chilled semen permitting more rapid genetic gain than that achievable via natural breeding. This places more emphasis on quantitative and qualitative aspects of boar semen. McPherson further teaches that when sperm numbers per inseminate are reduced to increase the number of artificial insemination doses per ejaculate, compensable defects become more important as these can lead to reduced litter size and thus, failure to monitor boar semen quality can result in significant economic loss, especially when one problem boar is used to inseminate large numbers of females (McPherson, page 28, ‘Introduction’, see entire first paragraph).
Gadella teaches that during fertilization, two membrane fusion events must take place in the sperm cell and that at the time of fertilization a preparatory process of membrane destabilization must take place prior to the sperm’s encountering the egg, a process known as capacitation. Gadella further teaches that capacitation leads to alterations in the lipid architecture of the plasma membrane in boar spermatozoa (Gadella, page 340, ‘Introduction’, see entire first paragraph). Gadella further teaches that the bicarbonate-induced alteration is found to be concomitant with a change in transport and transverse membrane distribution of phospholipids (Gadella, page 340, ‘Introduction’, 2nd paragraph, lines 1-7), resulting in exposure of phosphatidylserine at the outer surface (Gadella, page 341, lines 7-10). Gadella further teaches labeling sperm samples with annexin V-FL and propidium iodide to discriminate between live and dead cells (Gadella, page 341, ‘Annexin V Staining’, lines 1-3). Gadella further teaches that staining spermatozoa with annexin V and propidium iodide showed bicarbonate induced exposure of phosphatidyl serine in a substantial subpopulation of intact cells (detect fertilization competent cells; Gadella, page 343, 2nd column, lines 4-6).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have applied the method of Tavalaee of identifying fertilization competent boar (pork) sperm cells by labeling the with annexin V and propidium iodide because of the teaching of McPherson that quantitative and qualitative aspects of boar semen are important during artificial insemination because failure to monitor boar semen quality can result in significant economic loss.
One of ordinary skill in the art would have a reasonable expectation of success in applying the method of Tavalaee of labeling human sperm with AnV and PI to boar sperm because of the teaching of Gadella that AnV and PI staining in boar identifies sperm that has undergone capacitation.
Claim 91 is rejected under 35 U.S.C. 103 as being unpatentable over Tavalaee et al. as applied to claim 1 above and further in view of Koç et al. The detailed comparison of cell death detected by annexin V-PI counterstain using fluorescence microscope, flow cytometry and automated cell counter in mammalian and microalgae cells. Journal of fluorescence. 2018 Nov;28(6):1393-404 (see PTO-893, 01/03/2026) and Tomlinson et al. Comparison of the sperm quality necessary for successful intrauterine insemination with World Health Organization threshold values for normal sperm. Fertility and Sterility. 1999 Apr 1;71(4):684-9.
Regarding claim 91¸ Tavalaee and the cited art above teaches a method of isolating fertilization competent sperm cells substantially as claimed.
Tavalaee teaches identifying four subpopulations of sperm, namely live intact sperm (AnV-PI-), live sperm with externalized Phosphatidyl Serine (AnV+PI-), sperm that were PI-positive but Annexin V negative (AnV-, PI+), and late apoptotic sperm that is (AnV+PI+); Tavalaee, page 37, ‘Assessment of EPS by flow cytometry’, lines 17-26). ). Tavalaee further teaches a positive correlation between the percentage of fertilization with the percentage of AnV+PI- sperm (Tavalaee, page 38, 2nd column, 2nd paragraph, lines 2-4).
Tavalaee fails to teach counting the apoptotic and/or necrotic sperm cells and counting sperm cells bound to the reagent minus the apoptotic and/or dead sperm cells.
Koç teaches the evaluation of mammalian cell wellness by annexin V-Propidium iodide counterstaining to discriminate apoptotic and necrotic cell profiles. Koç teaches a fluorescence-based detection of counterstain via laser beam-employed instruments including flow cytometer, fluorescence microscope and automated cell counter (Koç, Title and ‘Abstract’, lines 1-5). Koç teaches evaluating the total cell number (Figure 1 e) and live and dead cells in a mammalian cell line MDA-MBD213 by automated cell counter (Figure 1 b and d; Koç, page 1395, see Figure 1). Koç further teaches the same evaluation in a second mammalian cell line AR42J (Koç, page 1396, see Figure 2). Koç further teaches analyzing Annexin V and PI staining using an automated cell counter (Koç, page 1396, 2nd paragraph, lines 3-4). As such Koç teaches counting a total number of cells in a sample, counting necrotic cells and counting cells bound to Annexin V.
Tomlinson teaches that influence of semen parameters on natural or assisted pregnancy are contradictory, suggesting that many variables have not been takin into account but that the concentration of progressively motile sperm has consistently been shown to be most predictive with regard to outcome. Tomlinson teaches that to have a reasonable chance of success with artificial insemination requires at least 5 x 106 motile sperm. Tomlinson further teaches that sperm morphology remains controversial with a lack of standardization across centers and that sperm DNA damage appears to be related to sperm quality, but there is no consensus on the best testing procedures, clinical reference values and how patients should be managed and that laboratories should continue to focus on improving the quality of their basic semen analysis (Tomlinson, page 1, see entire ‘Abstract’).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Tavalaee of determining the percentage of live cells expressing phosphatidylserine on the cells surface with the method of Koç of counting cells labeled with Annexin V (expressing phosphatidylserine) and stained with propidium iodide (dead cells) in the total cell population because of the teaching of Tavalaee that a positive correlation between the percentage of fertilization with the percentage of AnV+PI- sperm and the teaching of Tomlinson that there is a specific minimum number of motile sperm cells (namely 5 x 106) that is necessary to have a reasonable chance of success in assisted pregnancy but that there is no consensus or standardization regarding the best testing procedures. One of ordinary skill in the art would therefore be motivated to count the different subpopulations as described by Tavalaee in order to determine the number of AnV+PI- sperm cells required for successful artificial insemination and to determine if this might be a method of standardizing the sperm quality and number in a why helpful to achieve pregnancy.
One of ordinary skill in the art would have a reasonable expectation of success in doing so because Koç teaches counting mammalian cells stained with Annexin V and propidium iodide using laser beam-employed instruments including flow cytometer, fluorescence microscope and automated cell counter and Tavalaee shows success identifying different populations of semen using Annexin V and propidium iodide staining and a flow cytometer. Put another way, Tavalaee shows success detecting Annexin V and propidium iodide stained cells using a laser beam-employed instrument, namely a flow cytometer, and therefore one of ordinary skill in the art would reasonably expect another laser beam-employed instrument, an automated cell counter, to also be able to detect Annexin V and propidium iodide stained cells.
Claim 92 is rejected under 35 U.S.C. 103 as being unpatentable over Tavalaee et al., in view of Koç et al. and Tomlinson et al. as applied to claim 91 above and further in view of Jiang et al. Monitoring the progression of cell death and the disassembly of dying cells by flow cytometry. Nature protocols. 2016 Apr;11(4):655-63 (PTO-892, 01/15/2026).
Regarding claim 92, Tavalaee and the cited art above teaches a method of isolating fertilization competent sperm cells substantially as claimed.
Tavalaee teaches taking sperm samples and labeling them with Annexin V-FL and propidium iodide to discriminate between phosphatidylserine positive live and dead cells (Tavalaee, page 38, ‘Assessment of EPS by flow cytometry’, lines 7-12).
Tavalaee does not teach that counting apoptotic and/or necrotic cells comprises staining the sample with 7AAD.
Jiang teaches that the use of Annexin V and either propidium iodide or 7-aminoactinomycin D (PI/7-AAD) stains to measure cell death by flow cytometry has been considered the gold standard (Jiang, page 655, Abstract, lines 1-2). Jiang further teaches that the Annexin V binding and PI/7-AAD uptake assay and subsequent data analysis is very effective in determining cell viability (Jiang, page 655, 2nd column, 2nd paragraph, lines 1-3). Jian further teaches that propidium iodide is a membrane-impermeable nucleic acid-binding dye that can be replaced by another membrane-impermeable nucleic acid-binding dye, 7AAD (Jiang, page 655, ‘Introduction’, lines 21-22 and 27-28).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention of Tavalaee in order to use 7AAD to label dead cells in place of propidium iodide as taught by Tavalaee as an obvious matter of a simple substitution of one art recognized membrane impermeable nucleic acid binding dye over another, both recognized as suitable for the same purpose, both effective in determining cell viability. One of ordinary skill in the art would be motivated to do so, because the propidium iodide of Tavalaee performs the same function specified in the claim in substantially the same way and produces substantially the same results of labeling dead and dying cells. Substituting one membrane-impermeable nucleic acid staining dye such as propidium iodide of Tavalaee with a different membrane-impermeable nucleic acid staining dye both of which have been successfully used in cell viability assays would yield a predictable result.
One of ordinary skill in the art would have a reasonable expectation of success in doing so because of the teaching of Jiang that an assay comprising propidium iodide or 7AAD together with Annexin V is very effective in determining cell viability.
Claim 95 is rejected under 35 U.S.C. 103 as being unpatentable over Tavalaee et al. in view of Paasch et al. as applied to claim 94 above and further in view of McPherson et al. and Gadella et al.
Regarding claim 95¸ Tavalaee and the cited art above teaches a method of isolating fertilization competent sperm cells substantially as claimed.
Tavalaee does not teach a non-human animal subject.
McPherson teaches that artificial insemination is common practice in the global pig industry with reliance on extended, chilled semen permitting more rapid genetic gain than that achievable via natural breeding. This places more emphasis on quantitative and qualitative aspects of boar semen. McPherson further teaches that when sperm numbers per inseminate are reduced to increase the number of artificial insemination doses per ejaculate, compensable defects become more important as these can lead to reduced litter size and thus, failure to monitor boar semen quality can result in significant economic loss, especially when one problem boar is used to inseminate large numbers of females (McPherson, page 28, ‘Introduction’, see entire first paragraph).
Gadella teaches that during fertilization, two membrane fusion events must take place in the sperm cell and that at the time of fertilization a preparatory process of membrane destabilization must take place prior to the sperm’s encountering the egg, a process known as capacitation. Gadella further teaches that capacitation leads to alterations in the lipid architecture of the plasma membrane in boar spermatozoa (Gadella, page 340, ‘Introduction’, see entire first paragraph). Gadella further teaches that the bicarbonate-induced alteration is found to be concomitant with a change in transport and transverse membrane distribution of phospholipids (Gadella, page 340, ‘Introduction’, 2nd paragraph, lines 1-7), resulting in exposure of phosphatidylserine at the outer surface (Gadella, page 341, lines 7-10). Gadella further teaches labeling sperm samples with annexin V-FL and propidium iodide to discriminate between live and dead cells (Gadella, page 341, ‘Annexin V Staining’, lines 1-3). Gadella further teaches that staining spermatozoa with annexin V and propidium iodide showed bicarbonate induced exposure of phosphatidyl serine in a substantial subpopulation of intact cells (detect fertilization competent cells; Gadella, page 343, 2nd column, lines 4-6).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have applied the method of Tavalaee and the cited art above of isolating fertilization competent boar (pork) sperm cells by labeling the with annexin V and propidium iodide because of the teaching of McPherson that quantitative and qualitative aspects of boar semen are important during artificial insemination because failure to monitor boar semen quality can result in significant economic loss especially when sperm numbers per inseminate are reduced.
One of ordinary skill in the art would have a reasonable expectation of success in applying the method of Tavalaee and the cited art of isolating human sperm to boar sperm because of the teaching of Gadella that AnV and PI staining in boar identifies sperm that has undergone capacitation.
Claim 99 is rejected under 35 U.S.C. 103 as being unpatentable over Tavalaee et al. in view of Paasch et al. as applied to claim 10 above and further in view of Sousa et al. Not all sperm are equal: functional mitochondria characterize a subpopulation of human sperm with better fertilization potential. PloS one. 2011 Mar 23;6(3):e18112.
Regarding claim 99¸ Tavalaee and the cited art above teaches a method of isolating fertilization competent, AnV+PI- sperm cells substantially as claimed.
Tavalaee teaches staining sperm cells with FITC-Labelled Annexin V and propidium iodide and assessing the samples by flow cytometry and identifying four subpopulations of sperm (Tavalaee, page 37, ‘Assessment of EPS by flow cytometry’, lines 7-17).
Tavalaee does not teach isolating sperm cells bound to the reagent comprising employing flow cytometry or fluorescence-activated cell sorting.
Sousa teaches using fluorescence-activated cell sorting to separate sperm with active and inactive mitochondria finding that sperm with active mitochondria defined a more functional subpopulation able to decondense and participate in early development using chemical induction and injection into mature bovine oocytes (Sousa, page 1 of 6, ‘Abstract’, lines 6-10). Sousa further teaches that fluorescence activated cell sorting of sperm constitutes an easy and efficient way of isolating different sperm subpopulations (Sousa, page 6 of 11, 2nd column, see entire 2nd paragraph).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Tavalaee and the prior art above and isolated the sperm cells of interest by fluorescence activated cell sorting because of the teaching of Sousa that said method constitutes an easy and efficient way of isolating different sperm subpopulations. One of ordinary skill in the art would be motivated to do so because of the teaching of Tavalaee that there are four different subpopulations of sperm.
One of ordinary skill in the art would have a reasonable expectation of success applying fluorescence activated cell sorting of the sample of Tavalaee because Tavalaee teaches success identifying the different subpopulations by flow cytometry and Sousa teaches success using fluorescence activated cell sorting of sperm cells.
Response to Arguments
Applicant's arguments regarding the rejection under 35 U.S. C. 101 filed 04/14/2026 have been fully considered but they are not persuasive.
Applicant disagrees, starting on page 9, that claim 93 is not directed to a law of nature (the amount of living sperm cells bound to the reagent and the fertility of the sample) nor an abstract mental process. Applicant has amended claim 93 to include ‘treating the subject for infertility’, arguing that this integrates the judicial exception into a practical application. Applicant recites MPEP that such integration is achieved “when the additional elements apply or use the recited judicial exception to effect a particular treatment […]”. However, as explained previously in detail above in the rejection under 35 U.S.C. 101, the amendment does not cite “a particular treatment” and the general “treating the subject” is therefore not enough to integrate the judicial exception.
Therefore, the argument is not persuasive.
Applicant argues starting on page 8, that Kaufmann does not disclose the kit of amended claim 75.
This argument is persuasive, see new grounds of rejection above.
Applicant’s arguments, see page 9, filed 04/14/2026, with respect to the rejection of claims 1, 10, and 86-106 under 35 U.S.C. 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made in view of the newly found prior art teaching a method of detecting Annexin V binding to phosphatidyl serine negative sperm cells correlating fertilization competency (see Tavalaee et al. above).
Communication
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/STEFANIE J. KIRWIN/Examiner, Art Unit 1677
/Soren Harward/Primary Examiner, TC 1600
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