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 .
DETAILED ACTION
The claims are entitled to the effective filing date of 04/22/2019.
Claims 6-7 and 13-14 are canceled.
Claims 1-5, 8-12, and 15 are pending and under consideration in this action.
Specification
In the amended specification filed 07/15/2026, the use of the term “Thermo Scientific” (p. 13 line 3) and “Sigma Aldrich” (p. 13 line 5), which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminologies; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term(s).
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Response to Arguments
Applicant's arguments filed 07/15/2026 have been fully considered but they are not persuasive.
Objections to the Specification
Applicant argues that the revised specification obviates the objection. See the remarks p. 8 para. 4.
This argument is not persuasive because the amended specification includes trademarks without the appropriate symbol or capitalization. The specification filed 07/15/2026 recites “Thermo Scientific” (p. 13 line 3) and “Sigma Aldrich” (p. 13 line 5), which should be replaced with THERMO SCIENTIFIC or Thermo Scientific™ and SIGMA ALDRICH or Sigma Aldrich™ respectively.
Claim Rejections - 35 USC § 112(b)
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 9-12 and 15 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 9 recites reference character 12 in lines 8, 10, 15 and 16. MPEP 2173.05(b) states that a “claim may be rendered indefinite when a limitation of the claim is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined”. The amended specification filed 07/15/2026 uses reference character 12 for hydrazide functionalized resin and separately as NHS ester functionalized cross-linked polysaccharide-based resin such as sepharose™. The specification recites “hydrazide functionalised resin 12”. See p. 3 lines 8-9, p. 3 line 17, p. 3 line 23, p. 5 lines 26-27, p. 6 line 5, p. 12 line 5, p. 20 lines 2-3, p. 21 lines 15, and p. 21 lines 21-22. The specification also states: NHS ester functionalized cross-linked polysaccharide based resin such as sepharose™ 12. See p. 6 lines 7-8, and p. 6 lines 13-14. Claim 11 depends from 9 and further recites reference character 12 in line 2. Claim 15 depends from claim 9 and recites 12. Thus, claims 8, 12 and 15 are indefinite because it is uncertain which objects are being referenced.
Claim 9 recites, in line 9, the N-terminus glycine tagged protein, which renders the claim indefinite because it is unclear whether the N-terminus glycine tagged proteins is the earlier recited N-terminus glycine tagged protein 9 or a separate N-terminus glycine tagged protein.
Claims 10 and 12 depend from claim 9 and are rejected for the reasons set forth above.
Response to Arguments
Applicant's arguments filed 07/15/2026 have been fully considered but they are not persuasive.
Rejections of claims 9-12, and 15 under 35 U.S.C. 112(b)
Applicant argues that the claim amendments obviate the rejection. See the remarks p. 9 para. 1.
This argument is not persuasive for the reasons set forth above. With respect to the rejection of claims 9 (and dependent claims), 11 and 15 for the use of the reference characters, the specification filed 07/15/2026 provides multiple definitions for the reference character 12. Therefore, the relationship between the limitation and the object is not sufficiently defined.
Claim Rejections - 35 USC § 103
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.
Claims 1-5, 8-12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Rai (WO 2018/104962, as provided with the IDS filed 10/22/2021) in view of Witus (Curr Protoc Chem Biol. 2010 Jun 1;2(2):125-34), with evidence from LibreTexts (Chemistry LibreTexts, reference X on page 1 of the PTO-892 form) and CHEBI (CHEBI:73080, reference W on page 1 of the PTO-892 form). (n.d.). All references have previously been relied upon.
Regarding claims 1 and 3, Rai teaches a method for metal free protein purification. See the abstract. In example 4, Rai teaches preparing a resin-hydrogen bond promoter conjugate by adding N-(3-(2-(2-(3-aminopropoxy)ethoxy)ethoxy)propyl)-2-(2-formylphenoxy)acetamide (i.e. N-terminus glycine capture reagent) in DMSO from freshly prepared stock to a solution with N-hydroxy succinimidyl resin beads to form a hydrogen bond promoter immobilized resin (i.e. functionalized resin). See the paragraph spanning pgs. 26-27. Rai teaches purifying unlabeled protein from a mixture of proteins. To the prepared hydrogen bond promoter immobilized resin (functionalized resin), a mixture of proteins is added. The protein with Gly at the N-terminus is immobilized selectively (i.e. an ordered pattern). To release the [N-terminus glycine] labeled protein from its immobilized derivative, glycine buffer is added. See the first full paragraph on page 27 or paragraph [D]. Rai discloses tha,t if a hemiaminal is incubated in glycine buffer at pH 6.0 (i.e. physiological condition), it dissociates. Rai suggests that such incubation is part of a retro-hemiaminal process that dissociates a hemiaminal back into its precursors. The desired process is mild to leave the structure and function of proteins unperturbed. See p. 14 lines 14-16. As evidenced by CHEBI, hemiaminals are a form of amino alcohols but they are not identical to the instantly claimed 1, 2 amino alcohol. As shown in figure 1(a), Rai discloses that when an aldehyde and primary amine react it produces a hemiaminal, which subsequently generates an imine from the amine by the elimination of water. See figure 1(a) shown below. Furthermore, [AltContent: textbox (Rai figure 1(a))]
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Rai suggests recovering and reusing resin in multiple cycles. See p. 13 lines 14-15.
Rai does not teach forming a 1, 2 amino alcohol having a C-C bond. However, Rai teaches figure 6A(a), which shows a reaction in which an insulin protein with an N-terminus glycine tag is reacted with 2i (N,N'-(((oxybis(ethane-2,1-diyl))bis(oxy))bis(propane-3,1-diyl) )bis(2-(2-formylphenoxy)acetamide).
[AltContent: textbox (Figure 6A(a)(b) of Rai (top) and Figure 8 instantly disclosed (bottom). Labeled to highlight the hemiaminal and 1, 2 amino alcohol portions of the formed products.)] The instant figure 8, which depicts an identical reaction compared to the reaction disclosed in figure 6A(a) of Rai, but the reaction disclosed in instant figure 8 shows a resulting product with a 1,2 amino alcohol having a C-C bond. See both figure 6A of Rai and instant figure 8 below.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention that the reaction taught by Rai necessarily results in a 1,2 amino alcohol having a C-C bond. MPEP 2112.01 states that [w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In the instant case, the starting reactants and reaction conditions taught by Rai in figure 6A(a) are identical to that shown in instant figure 8. Although Rai does not teach a 1,2 amino alcohol product, the chromatogram of the resulting products taught by Rai in figure 6A(b) is also identical to that shown in instant figure 8.
Rai does not teach C-C bond dissociation with an additive wherein the additive is pyridoxal-5-phosphate (PLP) and wherein the additive dissociates the C-C bond through reacting the PLP with the amine of the 1,2 amino alcohol and subsequently eliminating water to generate the imine from the amine. However, Rai teaches reacting an aldehyde with an amine and subsequently eliminating water to generate an imine from an amine.
Witus teaches a pyridoxal 5’-phosphate (PLP) mediated transamination reaction that is specific for the N-terminus of a protein. See the abstract. Witus states that PLP-mediated bioconjugation proceeds at mild pH and temperature, and is tolerant of a number of buffers and conditions. See p. 1 first passage. Witus teaches combining a protein solution with a PLP stock solution. See the first paragraph on page 4. The PLP stock solution is made in the same buffer in which the transamination reaction will be run, typically phosphate buffer at pH 6.5. In figure 1, Witus teaches a reaction scheme that includes a first step where the protein is incubated with PLP, which transaminates the N-terminus to form a ketone or an aldehyde. In the second step, the keto-protein reacts with an alkoxyamine probe to form an oxime-linked protein bioconjugate. Witus discloses that the protein is modified in a single specific location using this procedure. See page 12.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to combine the glycine buffer of Rai with the PLP stock solution of Witus. One would be motivated to do so because Witus suggests that PLP is specific for the N-terminus of a protein. There would have been a reasonable expectation of success because Rai teaches a dissociation in a glycine buffer under mild conditions (p. 14 lines 14-16), and Witus discloses that PLP mediated bioconjugation proceeds at mild pH and temperature, and is tolerant of a number of buffers and conditions (p. 1 first passage). Furthermore, Rai teaches a reversible reaction in figure 1(a) in which an amine reacts with an aldehyde and PLP includes an aldehyde functional group.
Regarding claim 2, Rai teaches synthesizing hydrogen bond promoters, such as 2-(2-formylphenoxy) acetic acid. See line 29 on page 14 and lines 13-15 on page 15 for the structure. Moreover, Rai illustrates the design of aldehyde with hydrogen bond promoters for stable hemiaminal formation with glycine in figure 2 scheme a. Thus, Rai teaches a structure that aligns with the instantly claimed structure wherein R1-5 are independently -H, X is O and n is 1.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to replace the N-(3-(2-(2-(3-aminopropoxy)ethoxy)ethoxy)propyl)-2-(2-formylphenoxy)acetamide hydrogen bond promoter of Rai with the 2-(2-formylphenoxy) acetic acid hydrogen bond promoter of Rai. There would be a reasonable expectation of success because Rai demonstrates synthesizing the 2-(2-formylphenoxy) acetic acid hydrogen bond promoter and demonstrates preparing resin with a hydrogen bond promoter.
Regarding claim 4, Rai teaches a glycine buffer at pH 6.0 (i.e. aqueous physiological condition), which is a pH of 7±1 as instantly claimed. See p. 14 lines 14-16. Furthermore, Rai teaches washing beads with phosphate buffer, pH 7.3, and KCl to remove the adsorbed protein from resin. The beads are further washed with phosphate buffer, pH 7, and resuspended in phosphate buffer, pH 7. See page 26 lines 12-26 and figure 7(b).
Witus teaches a PLP stock solution that is made in the same buffer in which the transamination reaction will be run, typically phosphate buffer at pH 6.5, which is a pH of 7±1 as instantly claimed. See the “PLP Stock Solution” section on page 5.
Regarding claim 5, Rai teaches NHS-SEPHAROSE (i.e. NHS ester functionalized cross-linked polysaccharide based resin) in figure 14. Figure 14 outlines the synthesis of hemiaminal precursor-resin conjugate. See page 4 line 10 for the description of the figure.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to use the NHS-SEPHAROSE as the N-hydroxy succinimidyl resin beads in the method discussed above. One would be motivated to do so because Rai illustrates using NHS-SEPHAROSE in figure 14. There would be a reasonable expectation of success because Rai demonstrates forming a hydrogen bond promoter immobilized resin (e.g. functionalized resin) with N-hydroxy succinimidyl resin beads.
Regarding claim 8, Rai teaches recovering and reusing the hydrazide activated resin in multiple cycles. See lines 14-15 of page 13.
Rai does not teach using the recovered functionalized resin for 5-7 purification cycles.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to optimize the number of cycles that the resin of Rai is reused. A person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. One would be motivated to optimize the number of cycles in which the resin is reused in order to reduce waste. There would be a reasonable expectation of success because Rai suggests using resin for multiple cycles (e.g. at least 2). MPEP 2144.05(II) indicates that “[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 9, Rai teaches a method for metal free protein purification. See the abstract and line 5 of page 14. Rai synthesizing hydrogen bond promoters, such as 2-(2-formylphenoxy) acetic acid (N-terminus glycine capture reagent), which aligns with the structure of instant claim 2 wherein R1-5 are independently -H, X is O and n is 1. See line 29 on page 14 and lines 13-15 on page 15 for the structure. Rai teaches reacting proteins with a hydrogen bond promoter to obtain a single site labelled protein with a stable hemiaminal formed. See claim 10. In example 4, Rai teaches single-site labeling of a protein where a solution containing protein and 2-(2-formyl phenoxy) acetic acid is diluted with acetonitrile: water (e.g. aqueous phase). See page 25 lines 13-24. Rai indicates that the single-site is an N-terminal glycine. See line 24 line 10. Rai teaches reacting labeled protein, 9, with hydrazide functionalized resin. See page 13 lines 9 and figure 7. As shown in figure 7, the labeled protein, “9”, is described as a hemiaminal (e.g. amino alcohol). Rai teaches releasing immobilized protein with O-hydroxylamine from resin through transoximization. Rai teaches recovering and reusing hydrazide activated resin in multiple cycles. See the first full paragraph on page 13. Rai teaches methods that operate under physiological conditions. See page 5 line 5. As shown in figure 12A resin is recovered with an aniline NaHCO3 buffer at pH 7 (e.g. aqueous physiological condition). See figure 12A and the description provided on page 3 lines 30-33.
Rai does not teach an additive that is PLP and wherein the additive dissociates the C-C bond to separate the N-terminus glycine tagged protein from the hydrazide functionalized resin 12 or the probe 10d.
Witus teaches a pyridoxal 5’-phosphate (PLP) mediated transamination reaction that is specific for the N-terminus of a protein. See the abstract. Witus teaches a PLP stock solution that is made in the same buffer in which the transamination reaction will be run, typically phosphate buffer at pH 6.5. See the “PLP Stock Solution” section on page 5.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to add the PLP of Witus to the aniline buffer of Rai where the transoximization reaction occurs. One would be motivated to do so because Rai indicates that transoximization involves the addition of an amino group (-NH2) in figure 12A, and Witus teaches transamination reaction specific to the N-terminus of a protein, where transamination is a transfer of an amino group. There would be a reasonable expectation of success because Witus demonstrates making a PLP stock solution and suggests that the stock solution may be made in the same buffer in which the transamination reaction will be run.
Regarding claim 10, Rai teaches synthesizing hydrogen bond promoters including N,N'-(((oxybis(ethane-2,1-diyl))bis(oxy))bis(propane-3,1-diyl))bis(2-(2-formylphenoxy)acetamide) (2i). See example 1 starting on page 14 and page 18 paragraph (i) for the specific synthesis. Rai teaches protein in sodium bicarbonate buffer. To this solution, N,N'-(((oxybis(ethane-2,1-diyl))bis( oxy))bis(propane-3,1-diyl))bis(2-(2-formylphenoxy)acetamide) 2i in DMSO is added and vortexed. After, the reaction mixture is diluted in acetonitrile: buffer. Unreacted N,N'-(((oxybis(ethane-2,1-diyl))bis(oxy))bis(propane-3,1-diyl))bis(2-(2-formylphenoxy)acetamide) is removed and the protein mixture is further washed with sodium bicarbonate buffer. To the concentrated sample in sodium bicarbonate buffer, derivatives of O-hydroxylamine in DMSO from freshly prepared stock solution is added to convert mono-labeled protein to its oxime derivative. See paragraph [B](i) spanning pages 25-26.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to replace the 2-(2-formylphenoxy) acetic acid hydrogen bond promoter with the ,N'-(((oxybis(ethane-2,1-diyl))bis( oxy))bis(propane-3,1-diyl))bis(2-(2-formylphenoxy)acetamide) hydrogen bond promoter. Doing so is merely substituting known prior art equivalents. There would be a reasonable expectation of success because Rai demonstrates preparing a resin-hydrogen bond promoter conjugate.
Regarding claim 11, Rai teaches NHS-SEPHAROSE in figure 14, which outlines the synthesis of hemiaminal precursor-resin conjugate. See page 4 line 10 for the description of the figure.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to combine the hydrazide activated resin with the NHS-SEPHAROSE . One would be motivated to do so because Rai illustrates using NHS-SEPHAROSE in figure 14. There would be a reasonable expectation of success because Rai demonstrates forming a hydrogen bond promoter immobilized resin (e.g. functionalized resin) with N-hydroxy succinimidyl resin beads (see the paragraph spanning pages 26-27 of Rai).
Regarding claim 12, Rai teaches late-stage tagging of N-terminus Gly with an affinity tag, 19F NMR, and a fluorophore. Rai teaches insulin tagged with an 19F NMR in figure 8 and biotin tagged insulin in figure 9. See page 3 line 17-21. Furthermore, in figure 12A, Rai depicts the 19F NMR probe as 11a, biotin as 11b, and a fluorophore as 11c. See the paragraph spanning pages 12-13 and figure 12A, which is included below.
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It would have been obvious to a person of ordinary skill in the art prior to the instantly claimed invention to replace the resin of Rai with the 19F NMR probe, the biotin or the fluorophore of Rai. Doing so is merely substituting known prior art equivalents. One would be motivated to tag the protein with 19F NMR probe, biotin or fluorophore because Rai suggests that the conversion for the 19F NMR probe was 85%, the conversion with biotin is 87% and with fluorophore is 87%. See the paragraph spanning pages 12-13. There would be a reasonable expectation of success because Rai demonstrates protein conjugated with resin (e.g. see figure 12A above) and Rai demonstrates protein conjugated with an 19F NMR probe, biotin and fluorophore.
Regarding claim 15, Rai teaches recovering and reusing the hydrazide activated resin in multiple cycles. See lines 14-15 of page 13.
Rai does not teach using the recovered functionalized resin for 5-7 purification cycles.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to optimize the number of cycles that the resin of Rai is reused. A person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. One would be motivated to optimize the number of cycles in which the resin is reused in order to reduce waste. There would be a reasonable expectation of success because Rai suggests using resin for multiple cycles (e.g. at least 2). MPEP 2144.05(II) indicates that “[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Arguments
Applicant's arguments filed 07/15/2026 have been fully considered but they are not persuasive.
§103 rejection over Rai in view of Witus, with evidence from LibreTexts and CHEBI
Applicant argues that the revised claim set obviates the Office’s commensurability concerns. See the remarks p. 9 para 4. Thus, Applicant asserts that the obviousness rejection should be withdrawn. See the remarks p. 9 para. 5.
This argument is not persuasive for reasons set forth above.
Conclusion
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 KIMBERLY C BREEN whose telephone number is (571)272-0980. The examiner can normally be reached M-Th 7:30-4:30, F 8:30-1:30 (EDT/EST).
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/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657
/K.C.B./Examiner, Art Unit 1657
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