DETAILED ACTION
Status of claim rejections
The rejection of record under 35 USC 102 are withdrawn in view of Applicant’s argument/amendments in the response filed 04/22/2026.
The rejections of record under 35 USC 103 are maintained in view of Applicant’s amendments/arguments in the response filed 04/22/2026.
Claim Interpretation
The claims have been amended to recite “culturing said host cell in a suitable culture medium under conditions to effect expression of plasminogen from the first polynucleotide and PAI-1 from the second polynucleotide for 4 or 7 days, wherein the culturing produces a yield of plasminogen is at least 30 mg/L of cell culture.” The examiner has interpreted this limitation to encompass an intended result of the culturing step (see also previous Office action; see MPEP 2111.04).
New Claim Rejections - 35 USC § 112(a) New Matter, as Necessitated by Amendment
Claims 1, 35, 39-44 and 54-57 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The instant claims have been amended to recite “(ii) culturing said host cell in a suitable culture medium under conditions to effect expression of plasminogen from the first polynucleotide and PAI-1 from the second polynucleotide for 4 or 7 days”.
Neither the instant specification nor the originally filed claims appear to provide support for the
recitation of culturing for 4 or 7 days as recited above. The instant specification is silent to the culturing of the cells at these specific time points (i.e., only for 4 days or only for 7 days). Within the Remarks/Declaration, Applicant points to Fig. 15 of the drawings for support, however Fig. 15 only depicts that the yield of recombinant plasminogen was determined at days 1, 3, and 5 days post-transfection (see pg. 44; see also Fig. 15-16). Furthermore, Applicant has failed to point to anywhere in the specification that provides support for this limitations, other than a cursory statement that “no new matter has been added” (see Applicant’s remarks on pg. 5).
Thus, such a recitation constitutes NEW MATTER. In response to this rejection, Applicant is
required to point to support for the recitation of “(ii) culturing said host cell in a suitable culture medium under conditions to effect expression of plasminogen from the first polynucleotide and PAI-1 from the second polynucleotide for 4 or 7 days” or to cancel the new matter.
Modified 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, 35, 39, 44, and 54-57 are rejected under 35 U.S.C. 103 as obvious over Mulvihill (US 5648254 A; prior art of record).
Mulvihill teaches a method for producing plasminogen, comprising: introducing into a baby hamster kidney cell a first DNA sequence encoding plasminogen (providing a host cell comprising a first recombinant polynucleotide encoding plasminogen as in claim 1) and an additional DNA sequence encoding a protein selected from the group consisting of Arg(358) alpha-1-antitrypsin, α2 plasmin inhibitor and plasminogen activator inhibitor 1 (and a second recombinant polynucleotide encoding PAI-1 as in claim 1), wherein said DNA sequences are operably linked to transcriptional promoter and terminator sequences; culturing the cell under conditions which allow the first and additional DNA sequences to be expressed (culturing said host cell in a suitable culture medium under conditions to effect expression of plasminogen from the first polynucleotide and PAI-1 from the second polynucleotide as in claim 1); and isolating the plasminogen from the cell (see claim 1 and claim 14; Example 2(E), col 17). Mulvihill further teaches use of a single vector (see col 2, lines 20-30; claim 1 and 3).
While Mulvihill teaches culturing cells co-expressing plasminogen and alpha2-AP for 10-25 days before quantification of plasminogen co-expression (see col 18, lines 45-60), Mulvihill does not explicitly teach that culturing cells co-expressing PAI-1 and plasminogen for 4-7 days produces a yield of 30 mg/L of cell culture. However, this limitation to encompass an intended result of the culturing step (see MPEP 211.04). As such, absent evidence to the contrary, the amount of plasminogen produced would flow from the teachings of the Mulvihill, which explicitly discloses the method steps as instantly claimed. Furthermore, Mulvihill teaches that the cells can be cultured under conditions that allow for expression of the protein (see, e.g., claim 1), such that the culturing conditions utilized (e.g., the time to culture the cells) would have been a matter of routine optimization using standard laboratory techniques available at the time of filing, absent evidence to the contrary (see MPEP 2144.05).
Therefore, it would have been prima facie obvious to one of ordinary skill at the time of filing to use the method of Mulvihill with a reasonable expectation of successfully producing recombinant plasminogen from recombinant host cells. One of ordinary skill would have been motivated to do so because Mulvihill teaches the protein can be successfully produced using recombinant vector transfection and culturing techniques.
Regarding claim 35, Mulvihill teaches providing polynucleotide encoding plasminogen and a second polynucleotide encoding PAI-1 (see Example 2(E); see col 17; claim 14 and 15) where the polynucleotides are operably linked to a promoter (see claim 14) and transfecting a host cell with the polynucleotides (see Example 2(E); claim 14 and 15).
Regarding claim 39, Mulvihill teaches the use of Glu-plasminogen and Lys-plasminogen (see col 7, lines 18-20; col 17, lines 56-67).
Regarding claim 44, Mulvihill teaches that the host cell is a mammalian cell (see claim 1, 4, 6, 14, 15).
Regarding claim 54, Mulvihill teaches isolating plasminogen from the host cell (see claim 1 and 14).
Regarding claim 55-56, Mulvihill teaches “introducing the DNA sequences into the host cell may be through (a) cotransfection or cotransformation with multiple vectors, each containing a separate expression unit (i.e., monocistronic expression of each protein); or (b) transfection or transformation with a single vector containing multiple expression units” where “introducing may also be through transfection with a single vector containing a single expression unit transcribed into a polycistronic message” (i.e., at least bicistronic expression) (see col 2, lines 12-31).
Regarding claim 57, Mulvihill teaches preferred mammalian cells, including COS cells (see col 9, lines 9-10).
Accordingly, the claimed invention was rendered prima facie obvious by the teachings of Mulvihill.
Second rejection
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Mulvihill as applied to claim 1, 35, 39, 44, and 54-57 above, and further in view of Cao et al (WO200220813).
As discussed above, claims 1, 35, 39, 44, and 54-57 were anticipated, or rendered obvious by the teachings of Mulvihill.
The difference between Mulvihill and the instant claims is that Mulvihill does not explicitly teach the plasminogen comprises, consists or consists essentially of the amino acid sequence as set forth in any one of SEQ ID NO: 2, or a sequence at least 95% identical thereto.
However, Cao teaches recombinant proteins including human plasminogen (see abstract). Cao teaches that the nucleic acid molecule is derived from that encoding human plasminogen as shown in Fig. 1, as well as a method of making a protein, including expression from nucleic acid encoding the recombinant protein which is conveniently be achieved by growing a host cell containing such a vector in culture, under appropriate conditions which cause or allow expression of the protein (see pg. 14). Cao teaches a plasminogen polypeptide which has 99.9% sequence identity to instant SEQ ID NO: 2 (see alignment below).
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Therefore, it would have been prima facie obvious to one of ordinary skill at the time of filing to modify the method of producing plasminogen in recombinant mammalian cells as taught by Mulvihill by using the plasminogen polypeptide sequence as taught by Cao to arrive at the claimed invention. As the claimed invention requires the production of plasminogen polypeptide from a host cell, one of ordinary skill would have been motivated to perform a simple substitution of one known element (the plasminogen polypeptide of Mulvihill) with another (the polypeptide sequence of Cao) with a reasonable expectation of success (production of plasminogen polypeptide from a host cell). One of ordinary skill would have been motivated to make the substitution because Cao teaches that the disclosed plasminogen polypeptide can be successfully produced from a recombinant host cell.
Accordingly, the claimed invention was prima facie obvious to one of ordinary skill at the time of filing, especially in the absence of evidence to the contrary.
Third rejection
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Mulvihill as applied to claim 1, 35, 39, 44, and 54-57 above, and further in view of Uniprot/SwissProt Accession No. PAI1_HUMAN (as disclosed/evidenced by Pannekoek et al (Endothelial plasminogen activator inhibitor (PAI): a new member of the Serpin gene family. EMBO J. 1986 Oct;5(10):2539-44; hereinafter “Pannekoek”); hereinafter “PAI”; prior art of record).
As discussed above, claims 1, 35, 39, 44, and 54-57 were anticipated by the teachings of Mulvihill.
The difference between Mulvihill and the instant claims is that Mulvihill does not explicitly teach the polynucleotide encoding PAI-1 comprises a nucleic acid sequence as set forth in SEQ ID NO: 4, or a sequence at least 90% identical thereto.
However, PAI teaches a sequence of PAI-1 that has 98.8% identity to instant SEQ ID NO: 4. As disclosed by Pannekoek, inhibition of plasminogen activators [both t-PA and urokinase (uPA)] by PAI is accomplished by the formation of a 1:1 complex of the inhibitor and the 'target' serine protease (see pg. 2539, col 2, paragraph 3). Pannekoek further discloses the PAI nucleic acid sequence, as well as its production and expression from transfected mammalian cells in recombinant expression plasmids (pg. 2540, col 1, Fig. 1; col 2, paragraph 3; Fig. 2(a)).
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Therefore, it would have been prima facie obvious to one of ordinary skill at the time of filing to modify the method of producing plasminogen in recombinant mammalian cells as taught by Mulvihill by using the PAI-1 nucleic acid sequence as taught by PAI to arrive at the claimed invention. As the claimed invention requires the production of plasminogen and PAI-1 from nucleic acid sequence in a host cell, one of ordinary skill would have been motivated to perform a simple substitution of one known element (the PAI-1 polynucleotide sequence of Mulvihill) with another (the PAI-1 polynucleotide sequence of PAI/Pannakoek) with a reasonable expectation of success (production of PAI-1 from nucleic acid sequence in a host cell). One of ordinary skill would have been motivated to make the substitution because PAI teaches that the disclosed polynucleotide can be used successfully to produce PAI-1 in a host cell.
Accordingly, the claimed invention was prima facie obvious to one of ordinary skill at the time of filing, especially in the absence of evidence to the contrary.
Response to Arguments
The Declaration under 37 CFR 1.132 and Applicant's arguments filed 04/22/2026 is insufficient to overcome the rejection of claims based upon Mulvihill under 35 USC 103 as set forth in the last Office action for the reasons set forth below.
On pg. 5-9 of the remarks, Applicant argues the recitation of culturing for “10-25 days” in col 18 of Mulvihill refers to culturing lys-plasminogen and alpha-2 plasmin inhibitor and relates to culturing truncated plasminogen with a different protein and col 19 discloses that plasminogen co-expressed with a2-AP as being about 5 ug/mL or 5 mg/L which is lower than the 30 mg/L recited in claim 1. Applicant points to plg/PAI-1 expression in Fig. 15 in the Declaration (given its fullest consideration) showing that the timeframe for culturing along with PAI-1 is key for producing superior yield of plasminogen of more than 500 mg/L. Applicant argues that co-expression with either PAI-1 or a2-AP in Mulvihill is only 5 mg/L. Applicant argues that Example E of Mulvihill describes determining successful expression of plasminogen uses concentrating the protein by radioimmunoprecipitation followed by autoradiography of SDS-PAGE gel and that this method is used to detect low amounts of proteins. Applicant argues the data published in the patent is not quantifiable but estimated to be less than 5 mg/L vs the yield of the invention, such that the method is not obvious. Applicant then argues much of the same for the rejection of claims 41 and 42.
In response, the examiner disagrees. First, while Mulvihill teaches culturing cells co-expressing plasminogen and alpha2-AP for 10-25 days before quantification of plasminogen co-expression (see col 18, lines 45-60), Mulvihill does not explicitly teach that culturing cells co-expressing PAI-1 and plasminogen for 4-7 days produces a yield of 30 mg/L of cell culture. However, this limitation has been interpreted to encompass an intended result of the culturing step (see MPEP 211.04). As such, absent evidence to the contrary, the amount of plasminogen produced would flow from the teachings of the Mulvihill, which explicitly discloses the method steps as instantly claimed. Second, Mulvihill teaches “a host cell line will be selected on the basis of its ability to produce the protein of interest at a high level or its ability to carry out at least some of the processing steps necessary for the biological activity of the protein. In this way, the number of cloned DNA sequences which must be transfected into the host cell line may be minimized and overall yield of biologically active protein may be maximized” (see col 9, lines 40-50). Furthermore, Mulvihill teaches that the cells can be cultured under conditions that allow for expression of the protein (see, e.g., claim 1), such that the culturing conditions utilized (e.g., they types of cells and the time to culture the cells) would have been a matter of routine optimization using standard laboratory techniques available at the time of filing, absent evidence to the contrary (see MPEP 2144.05). The yield of plasminogen, then, seems to be the result of the cells/culture conditions used to express the polypeptides, as Applicant has argued on record that typical yields of plasminogen range from 30-50 mg/L to 80-100 mg/L cell culture (i.e., at least 30 mg/L as claimed) from stably transfected cells suitable for large-scale expression versus general, transient expression. Thus, in view of the teachings of the prior art references, the claims are prima facie obvious and the rejection is maintained.
Conclusion
NO CLAIMS ALLOWED.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/G.C.R./Examiner, Art Unit 1651
/MELENIE L GORDON/Supervisory Patent Examiner, Art Unit 1651
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