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 .
Application Status
This action is written in response to applicant’s correspondence received 06/23/2025. Claims 21, 27-28, 32, 34, and 41-47 are currently pending. Claims 41-47 are withdrawn from prosecution as being drawn to nonelected Group II, there being no allowable generic or linking claim. The election was made on 01/07/2025 with traverse, however, applicant arguments were not deemed persuasive, hence treated as without traverse.
Any rejection or objection not reiterated herein has been overcome by amendment. Applicant’s amendments and arguments have been thoroughly reviewed, but are not persuasive to place the claims in condition for allowance for the reasons that follow.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 01/07/2025 is acknowledged. The traversal is based on the grounds that “Lesizza et al. … in vivo …conjugated to PEG …in vitro … and the claimed invention clearly differs from the miRNA-lipid formulations of Lesizza et al” (page 1, last ¶ to page 2, 2nd ¶). This is not found persuasive because the recitations of “… in vivo …” (page 1, 3rd ¶, 2nd line), “… diagnostic …” (page 2, 2nd line), and “… in vitro …” (page 2, 3rd line) in the traversal by the applicant are only intended use and not actual claim limitations, thereby carrying no patentability weight. The recitation of “… conjugated to PEG …” (page 1, last line) does not contribute to the prior art based on the demonstration of the use of “invivofectamine” (Lesizza et al. 2017; Figure 1. C & D), therefore, it is not a special technical feature.
Applicant’s remarks in response to the non-final rejection filed on 06/23/2025 regarding the restriction requirement (Page 7, 2-4¶) is acknowledged. However, it reiterates the traversal discussed above in the reply filed on 01/07/2025. It is found unpersuasive for reasons provided above.
Accordingly, the restriction requirement mailed on 11/08/2024 is still deemed proper, and claims 21, 27-28, 32, 34 are examined herein. The requirement is therefore made FINAL.
Claims 41-47 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being
drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely
traversed the restriction (election) requirement in the reply filed on 01/07/2025.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in EP19305496.2 on 04/16/2019.
Withdrawn Claim Rejections - 35 USC § 112
The rejection of claims 21, 27-28, 32, 34 under 35 USC 112(b) has been reconsidered and is withdrawn. Applicant’s remarks (see remarks on page 8) have been fully considered and are persuasive.
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 21, 27-28, 32 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Edwards et al. (WO2013148151A1, published in 2013; Hereinafter, Edwards) in view of Guo et al. ("MiR-23a regulates DNA damage repair and apoptosis in UVB-irradiated HaCaT cells", Journal of Dermatological Science, vol. 69, no. 1, January 2013; Hereinafter, Guo) in further view of Chen et al. (US20080020058A1, published in 2008; Hereinafter, Chen).
Claim 21 is directed to a diagnostic kit comprising more than one container, wherein the kit comprises:
at least one first container comprising a complex of a first synthetic miRNA and a lipid vector, wherein the lipid vector is selected from lipids conjugated to polyethyleneglycol (PEG), wherein the first synthetic miRNA is at a defined concentration; and
at least one second container comprising a complex of a second synthetic miRNA different from the first miRNA and a lipid vector, wherein the lipid vector is selected from lipids conjugated to PEG, wherein the second synthetic miRNA is at a defined concentration.
Regarding claim 21, Edwards (2013) teaching a kit for determining whether a subject suffers from EAOC comprising 25 different mir species (page 19). Edwards also teaches in the 6.2 Results section that the original plasmid miRNA population is modified by adding spike-ins of serially diluted synthetic miR-210. Edwards further teaches “various concentrations” which are interpreted as defined concentrations (page 3). Edwards teaches Fig. 2B which has various samples of different miR species. These samples are interpreted as being in containers and therefore Edwards teaches containers comprising miRNAs. These teachings of Edwards are interpreted as teaching a diagnostic kit with various miRNAs (this is interpreted as: one or more containers comprising a first miRNA and one or more containers comprising a second synthetic miRNA different from the first).
Given the teachings of Edwards directed to a kit for determining whether a subject suffers from EAOC that comprises 25 miR biomarkers, and the additional teaching of Edwards teaching synthetic miR-210, it would have been obvious to have combined these teachings and added a synthetic miR-210 to the comprising 25 miR biomarkers to determine whether a subject suffers from EAOC because Edwards uses this synthetic miR-210 to test EAOC in patients in the 6.2 Results section. One would have been motivated to have added synthetic miR-210 to the kit that is directed to determinizing whether a subject is suffering from EAOC since miR-210 has already been used for this purpose. One would have had an expectation of success as both the kit and synthetic miR-210 are disclosed within the same prior art and are both demonstrated to have worked for the same intended purpose.
However, Edwards does not teach “wherein the lipid vector is selected from lipids conjugated to PEG”. Additionally, Edwards does not expressly teach a different synthetic miR (one other than miR-210).
Guo (2013) teaches a method directed to various synthetic mir species. Guo teaches a lipid carrier lipofectamine 2000 (i.e. a lipid vector) that is used for transfection. Specifically, Guo teaches “oligonucleotides of miR-23a, miR-27a, miR-24, and negative controls…. The transfection was carried out using the lipid carrier lipofectamine 2000” (2.5 Transient transfection with the synthetic miRNA mimics and inhibitors). This is interpreted as the miRNA and lipid vectors being taught as a complex. Additionally, Guo’s teachings supply additional (at least one more) synthetic miR species.
Given Guo’s teachings of various synthetic miR species, it would have been obvious to one of ordinary skill in the art at the time of the claimed invention to have added one, or more, of these synthetic miR species to the kit of Edwards already comprising one synthetic miR species. One would have been motivated to have done so because the synthetic miR-210 taught by Edwards. has been proven to be useful in diagnostics of EAOC and one would have wanted to test additional synthetic miR species to see if they would be beneficial in diagnostics.
However, neither Edwards nor Guo teaches PEG.
Chen (2008) teaches that “The term "formulated miRNA composition" as used herein refers to a composition comprising one or more miRNA molecules or a vector encoding one or more miRNA molecules independently or in combination with a cationic lipid, a neutral lipid, and/or a polyethyleneglycol-diacylglycerol (PEG-DAG)” (¶ [0356]). Therefore, Chen clearly teaches a lipid conjugated to PEG.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have had a lipid vector conjugated to PEG, as taught by Chen, in the diagnostic kit comprising a synthetic miR-210 of Edwards with a synthetic miR species of Guo because one would have wanted a known formulated miRNA composition, as taught by Chen, to be added to a kit directed to diagnostics with synthetic miR-210. One would have been motivated to have these synthetic miRNAs (respectively a first and second) as they would provide a diagnostic kit that is known to be a “formulated
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miRNA composition”. Additionally, one would have expected success as the formulated miRNA composition of Chen taught that one or more miRNA molecules with a PEG lipid was known and the addition of said lipid conjugated to PEG would have been considered to have been a simple combination of known prior art elements.
Regarding claim 27, Edwards, in view of Guo, in further view of Chen, teaches containers containing a first synthetic miR-210 (Edwards) and at least one second synthetic miR species (Guo) Edwards teaches “various concentrations” which are interpreted as defined concentrations. Additionally, the Figures of Edwards demonstrate different defined concentrations of various miR species. Therefore, Edwards renders obvious miRNAs at different concentrations in each container of the first set of containers and the second set respectively. Fig. 2 of the Edwards demonstrates this and is reproduced below for clarity:
Regarding claim 28, Edwards further teaches Table 5 which teaches hsa-miR-193b-3p.
Regarding claim 32, Chen further teaches a neutral lipid (¶[0356]).
Regarding claim 34, Edwards, in view of Guo, in further view of Chen, teaches a complex of synthetic miRNA with a lipid vector and Guo teaches a synthetic serum in (2.5 Transient transfection with the synthetic miRNA mimics and inhibitors).
Response to Arguments
Applicants argue that:
Page 9, 2nd ¶,
“Claims 21, 27, 28, 32 and 34 are rejected under 35 U.S.C. § 103 as obvious over Edwards et al. (WO 2013/148151) in view of Guo et al. (2013) in further view of Chen et al. (U.S. Patent Publication No. 2008/0020058). Applicant respectfully asserts that the claimed invention is not obvious over the cited references and traverses.
Page 9, 3rd ¶,
Applicant wishes to point out that the purpose of the present invention is to provide a diagnostic kit comprising at least two synthetic miRNAs with stable levels that are provided at predetermined concentrations. These miRNAs can be used as positive controls and/or standards of miRNAs of interest to precisely indicate the levels of miRNAs of interest in a sample. It is therefore crucial to protect the synthetic miRNA from degradation during the storage or during the experiment for measuring the levels of miRNAs of interest.
Page 9, 4th ¶,
For example, as explained in the present application, synthetic miRNA may need to be stable at 4°C during several weeks and not affected by repetitive freeze/thaw cycles at -20°C (see page 19, lines 3-4 and 8-9). This requirement is completely different from that for transduction of cells with miRNA, which essentially requires the miRNA to efficiently cross the cell membrane. In addition, in the experiments of cell transfection, the complex of a miRNA is in general prepared just before the experiment or transfection of the cells.
The arguments above have been considered, but are unpersuasive because the teachings of Edwards in view of Guo, in further view of Chen have been discussed in the §103 rejection above. The assertions from applicant regarding “the purpose…”, “can be used as …”, “crucial to protect…”, “may need to be stable…”, “This requirement is…”, “essentially requires…”, “prepared just before…” (See bold fonts in 3rd and 4th ¶s are merely intended use or preferred embodiments, not claim limitations, thereby carry no patentability weight.
Page 9, 5th ¶,
In the examples of the present application, hsa-miR-34-a-5p/invivofectamine complex is compared to hsa-miR-34a-5p/Lipofectamine complex. As explained in the last table on page 11 of the specification, IVF2.0 (or Invivofectamine) is a lipid conjugated to PEG. Lipofectamine consists of DOSPA (2,3-dioleoyloxy-N- [2(sperminecarboxamido)ethyl]-N,N-dimethyl-lpropammmmm trifluoroacetate) which 1s a cationic lipid, and DOPE (1,2-Dioleoyl-sn-glycerophospho ethanolamine) which is a neutral lipid.
Page 9,6th ¶ - Page 10, 1st ¶,
Figures 6 and 7 of the present application represent Cq values of qPCR amplification obtained from a matrix with spiked hsa-miR-34a-5p/Invivofectamine complex and hsa-miR-34a-5p/Lipofectamine complex, respectively. qPCR was also conducted with hsa-miR-34a-5p alone as control. Of note, Cq values are inverse to the amount of target microRNA. The result shown in Figure 6 shows that, compared to Lipofectamine, the use of Invivofectamine is more effective in protecting spike-in hsa-miR-34-a-Sp from degradation (Figure 7).
Page 10, 2nd ¶,
In addition, Figures 3 and 4 of the present application show that Invivofectamine protects synthetic miRNA spiked in serum at 4°C during a 4 week period or during repetitive freeze/thaw cycles at -20°C. Therefore, compared to Lipofectamine used in Edwards et al., a lipid vector selected from a lipid conjugated to PEG provides a better protection for synthetic miRNAs against degradation. Furthermore, Edwards et al. does not teach or suggest that a lipid conjugated to PEG as a lipid vector can protect a synthetic miRNA from degradation at low temperature conditions over several weeks. This observation is, thus, also unexpected over the prior art.
The arguments above have been considered, but are unpersuasive because the claim limitation of a lipid conjugated to PEG has been addressed by the teachings of Edwards in view of Guo, in further view of Chen, as discussed in the §103 rejection above. The repeated assertions from applicant reciting “Invivofectamine” or examples of using “Invivofectamine” to support the benefits of PEG-lipids (See bold fonts in Page 9, 5th-6th ¶, Page 10, 1st-2nd ¶) are prophetic because the composition of “Invivofectamine” is not publicly available. The perceived effects of PEG in protecting the integrity of synthetic miRNA standards using lipid complexes cannot be confirmed based on the use of “Invivofectamine” (See attached PE2E search history summary and STNext Query Report for relevant search strings and results). These assertions carry no patentability weight.
Page 10, 3rd ¶,
According to the Office Action, Edwards et al. teach a kit for determining whether a subject suffers from EAOC comprising 25 different miR species (Edwards et al., page 19); Edwards et al. also teach in the 6.2 Results section that the original plasmid miRNA population is modified by adding spike-ins of serially diluted synthetic miR-210; Edwards et al. further teach Fig. 2B which has various samples of different miR species. These samples would be interpreted as being in containers and therefore Edwards et al. teach containers comprising miRNAs. The Office Action concludes that these teachings of Edwards et al. are interpreted as teaching a diagnostic kit with various miRNAs. Applicant disagrees.
Page 10, 4th ¶ - Page 11, 1st ¶
Firstly, the teaching at pages 18-19 of Edwards et al. discloses a kit for determining whether a subject suffers from EAOC comprising measurement means for plasma level microRNAs in a sample. This disclosure clearly teaches that the kit comprises means for measuring microRNAs, but the microRNAs are present in the sample to be measured, not in the diagnostic kit itself. In addition, the natural microRNAs in a blood sample cannot be considered as synthetic microRNAs in different containers. This understanding is further confirmed by the results shown in Figure 2B of Edwards et al. Here, it is explained (in the 6.2 Results section) that "expression of three randomly selected miRNAs, miR-132, 362-Sp, and 1974 was measured in three independent RT-qPCR assays using miRNAs extracted from six plasma samples." It is clear to a skilled person that the experiment shown in Figure 2B measures the level of miR-132, miR-362-5p or miR-1974 in plasma samples. Six plasma samples were used for this purpose. RT-qPCR was repeated three times for each sample and for each miRNA. Figure 2B of Edwards et al. cannot be interpreted as teaching more than one container, each comprising a synthetic miRNA complexed with a lipid vector as is recited in the claims of this application.
Page 11, 2nd ¶,
Edwards et al. also disclose that synthesized miR-210 is used as spiked-in synthetic miRNA for testing the reliability of the RNA extraction technique used in Edwards et al. and that synthesized miR-210 was mixed with LipoFectamine before spiking in plasma to protect synthesized miR-210 from degradation. Contrary to the opinion of the Examiner, Edwards et al. does not disclose a diagnostic kit further comprising a second synthetic miRNA different from miR-210 in more than one container. In addition, Edwards et al. does not teach a complex of a synthetic miRNA with a lipid vector comprising lipids conjugated to PEG.
The arguments above have been considered, but are unpersuasive because:
Applicant recognizes that: “This disclosure clearly teaches that the kit comprises means for measuring microRNAs” (Page 10, 4th ¶ - Page 11, 1st ¶).
Applicant also recognizes that: “Edwards et al. also disclose that synthesized miR-210 is used as spiked-in synthetic miRNA for testing the reliability of the RNA extraction technique used in Edwards et al. and that synthesized miR-210 was mixed with LipoFectamine before spiking in plasma to protect synthesized miR-210 from degradation.” (Page 11, 2nd ¶).
While Figure 2B by Edwards does not show the presence of synthetized miR-210 in the multiple containers in this specific embodiment, it would have been obvious to one with ordinary skill in the art to contemplate combining the above two aspects of the same disclosure by adding the spike-in synthetic miRNA to each sample container as a control, taught by Edwards, with the motivation to ensure the reliability of the RNA extraction technique, also taught by Edwards, and perform the biological fluid-derived miRNA sample measurement in the same step, and one with ordinary skill in the art would have arrived at the same limitations of the claimed invention.
Therefore, the assertion from application: “cannot be considered as synthetic microRNAs in different containers” is unpersuasive.
Furthermore, although “Edwards et al. does not explicitly disclose a diagnostic kit further comprising a second synthetic miRNA different from miR-210 in more than one container” (Page 11, 2nd ¶), applicant correctly recognizes that “It is clear to a skilled person that the experiment shown in Figure 2B measures the level of miR-132, miR-362-5p or miR-1974 in plasma samples. Six plasma samples were used for this purpose. RT-qPCR was repeated three times for each sample and for each miRNA” (Page 10, 4th ¶ - Page 11, 1st ¶), and it would have been obvious to one with ordinary skill in the art to run multiple sets of containers to run tests against multiple target miRNAs based on the success of consistent measurements demonstrated by Edwards in Figure 2B, motivated by the high reliability and accuracy of the multiple miRNA target measurements by Edwards, and would have arrived at the same claimed invention.
Therefore, the assertion from application that “Figure 2B of Edwards et al. cannot be interpreted as teaching more than one container…” (Page 10, 4th ¶ - Page 11, 1st ¶) is unpersuasive.
Page 11, 3rd ¶,
The teachings of Guo et al. and Chen et al. also fail to cure the deficiencies of Edwards et al. Guo et al. studied the relationship between miR-23a expression level and DNA damage repair. Guo et al. disclose that mimic and inhibitor oligonucleotides of miR-23a, miR-27a and miR-24 were mixed with lipid carrier lipofectamine 2000 to be used in cell transfection. Lipofectamine 2000 does not comprise a lipid conjugated to PEG, thus Guo et al. do not disclose a complex of a synthetic microRNA (miRNA) and a lipid vector comprising lipids conjugated to PEG.
Page 11, 4th ¶,
Chen et al. describe novel particle-forming delivery agents including cationic lipids, microparticles, and nanoparticles that are useful for delivering various molecules to cells (see [0002]). Therefore, the formulated miRNA compositions described in [0356] are for the purpose of in vitro or in vivo cell transfection. It is well known to a person skilled in the art that the physicochemical requirements for a lipid nanoparticle suitable for in vitro or in vivo cell transfection are not the same of those of a complex of a synthetic microRNA and a lipid vector to be used as a positive control in a diagnostic kit.
Page 11, 5th ¶ - Page 12, 1st ¶
In general, lipid nanoparticles comprising oligonucleotides for in vitro or in vivo cell transfection are prepared extemporaneously, just before the transfection experiment (see paragraph [0641] of Chen et al.). A skilled person would not have considered the formulated miRNA compositions described in paragraph [0356] of Chen et al. to be suitable for use in a diagnostic kit, because Chen et al. provide no information, teaching or suggestion that would have made a skilled person aware that a lipid conjugated to PEG would protect synthetic miRNAs from degradation in experiments conducted in a biological sample, or at low temperature conditions over several weeks, let alone that a lipid conjugated to PEG provides a better protection to miRNAs than Lipofectamine. Accordingly, reconsideration and withdrawal of the rejection under 35 U.S.C. § 103 is respectfully requested.
The arguments above have been considered, but are unpersuasive because the assertions of the applicant below are mere recitations of intended use, thereby carrying no patentability weight:
“… are for the purpose of in vitro or in vivo cell transfection” (Page 11, 4th ¶), “that the physicochemical requirements for a lipid nanoparticle suitable for in vitro or in vivo cell transfection are not the same of those of a complex of a synthetic microRNA and a lipid vector to be used as a positive control in a diagnostic kit” (Page 11, 4th ¶), “In general, lipid nanoparticles comprising oligonucleotides for in vitro or in vivo cell transfection are prepared extemporaneously, just before the transfection experiment” (Page 11, 5th ¶ - Page 12, 1st ¶).
Furthermore, applicant asserts: “Chen et al. provide no information, teaching or suggestion that would have made a skilled person aware that a lipid conjugated to PEG would protect synthetic miRNAs from degradation in experiments conducted in a biological sample, or at low temperature conditions over several weeks, let alone that a lipid conjugated to PEG provides a better protection to miRNAs than Lipofectamine” (Page 11, 5th ¶ - Page 12, 1st ¶). These assertions are merely reciting preferred functional embodiments of the claimed structure, and are not claim limitations, thereby carrying no patentability weight.
Lastly, the assertion by applicant: “Lipofectamine 2000 does not comprise a lipid conjugated to PEG, thus Guo et al. do not disclose a complex of a synthetic microRNA (miRNA) and a lipid vector comprising lipids conjugated to PEG” (Page 11, 3rd ¶) is unpersuasive because teachings of Guo and Chen have been discussed in the §103 rejection above.
Therefore, the arguments above are unpersuasive.
Applicant’s response is not sufficient to rebut the prima facie case of obviousness, and the combination of known elements yielded expected results, thereby strengthening the prima facie case of obviousness. Accordingly, Applicant’s arguments have been considered but are not persuasive, and the rejection under 35 U.S.C. 103 is maintained.
Conclusion
No claims are allowable.
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 Delphinus D. Yu whose telephone number (571) 272-1576. The examiner can normally be reached Mon-Thr 7:30am to 4:30pm Fri 10am to 2pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neil P Hammell can be reached on (571) 270-5919. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DELPHINUS DOU YI YU/Examiner, Art Unit 1636
/NEIL P HAMMELL/Supervisory Patent Examiner, Art Unit 1636
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