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 .
Response to Amendment
The amendment filed October 8th, 2025 is acknowledged. Regarding the Office Action mailed April 8th, 2025:
The objections to the claims are withdrawn in view of the amendments.
The rejections set forth under 35 U.S.C. 112(b) are withdrawn in view of the amendments.
The rejection set forth under 35 U.S.C. 112(a) is withdrawn in view of the amendments.
Maintained or modified rejections are set forth below. New grounds of rejection are set forth below, as necessitated by the addition of new claims. Responses to arguments, if necessary, follow their respective rejection sections.
Claim Summary
Claims 1, 5, 9, 11, 13 and 15-20 have been amended. Claims 23 and 26-27 have been canceled. Claims 28-29 have been added. Claims 1-22, 24-25, and 28-29 are pending. Claims 17, 20, and 25 are withdrawn from consideration as being drawn to a non-elected invention/species. Claims 1-16, 18-19, 21-22, 24, and 28-29 are under examination and discussed in this Office action.
Claim Rejections - 35 USC § 101 – Modified – Necessitated by Amendment
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 therefor, subject to the conditions and requirements of this title.
Claims 15-16, 18-19, 21-22, 24, and 28-29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon and abstract ideas without significantly more. While the claims are directed to a process, and therefore meet step 1 of the subject matter eligibility test (see MPEP 2106.03), the claim(s) recite the natural correlation between levels of miRNAs and diagnosing cancer based on these levels. Such correlation is a natural phenomenon because it describes a consequence of natural processes in the human body (e.g. a change in miRNA levels due to disease). The abstract ideas consist of determining, comparing, and diagnosing, all of which can be considered mental processes.
Step 2A of the subject matter eligibility test requires a two-pronged analysis. Prong One asks: does the claim recite an abstract idea, law of nature or natural phenomenon? As discussed in MPEP 2106.04(II)(A)(1), the meaning of “recites” is “set forth” or “describes”. That is, a claim recites a judicial exception when the judicial exception is “set forth” or “described” in the claim. In the instant case, the claims describe a natural phenomenon: the natural correlation between levels of miRNAs and diagnosing cancer based on these levels. The claims further describe the mental processes of determining, comparing, and diagnosing.
Prong Two of the analysis under step 2A asks: does the claim recite additional elements that integrate the judicial exception into a practical application of the judicial exception? As discussed in MPEP 2106.04(II)(A)(2), “Because a judicial exception is not eligible subject matter, Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)), if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."). For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B.” The considerations to be used are set forth at MPEP 2106.05(a) through (c) and (e) through (h). Turning to those sections of the MPEP:
MPEP 2106.05(a) has to do with improvements to the functioning of a computer or to any other technology or technical field. The claims at issue do not improve the functioning of a computer or other technology. While the instant claims recite steps of determining levels of miR gene products in a urine sample from a subject, comparing them to the levels of a control, and diagnosing a subject based on the comparison, the claims do not improve upon determining levels of miRNAs. The claims merely use existing methods for these steps. Note that MPEP 2106.05(a) indicates that “[u]sing well-known standard laboratory techniques to detect enzyme levels in a bodily sample” is an example that the courts have indicated may not be sufficient to show an improvement to technology. That the above steps were known in the prior art will be shown below.
MPEP 2106.05(b) has to do with whether the claims involve the use of a particular machine. In this case, the claims do not involve the use of a particular machine. While the instant claims recite steps of determining levels of miR gene products in a urine sample from a subject, comparing them to the levels of a control, and diagnosing a subject based on the comparison, no such machines are required by the claim, and certainly no particular machines. Even if some conventional machine were recited in the claims, like a PCR machine to determine levels of miR gene products, further considerations such as the particularity or generality of the recited machine must be taken into account, as well as whether the involvement of the machine is merely extra-solution activity. MPEP 2106.05(g) describes “extra-solution activity”, noting that “[d]etermining the level of a biomarker in blood” is an example of “mere data gathering” which the courts have found to be insignificant extra-solution activity.
MPEP 2106.05(c) has to do with whether the claims involve a particular transformation. Here, none of the limitations of the claims involve a particular transformation. For example, determining the level of an miR gene product in a subject does not transform the miR gene product into something else.
MPEP 2106.05(e) has to do with “other meaningful limitations”. The additional limitations imposed upon the natural correlation between levels of miR gene products and diagnosing cancer based on these levels, and the mental processes of determining, comparing, and diagnosing, in the instant case have to do with enriching a sample in extracellular vesicles; the control urine sample coming from a healthy individual; the subject being a human female; the level of miR gene products being measured by quantitative RT-PCR, digital PCR, next generation sequencing, or by hybridization using an oligonucleotide microarray; and the level of each miR gene product measured by hybridization to an oligonucleotide microarray comprising specific oligos. These limitations are not considered “meaningful limitations”. MPEP 2106.05(e) states: “The phrase "meaningful limitations" has been used by the courts even before Alice and Mayo in various contexts to describe additional elements that provide an inventive concept to the claim as a whole.” However, as will be discussed below, these limitations do not arrive at an inventive concept. In addition, as has been discussed, they represent insignificant extra-solution activity, i.e. “data gathering”.
MPEP 2106.05(f) raises the question as to whether the additional elements recited in the claim represent “mere instructions to apply an exception”. Here, the judicial exception is the natural correlation between levels of miR gene products and diagnosing cancer based on these levels, and the mental processes of determining, comparing, and diagnosing. The additional elements recited in the claims (i.e. with enriching a sample in extracellular vesicles; the control urine sample coming from a healthy individual; the subject being a human female; the level of miR gene products being measured by quantitative RT-PCR, digital PCR, next generation sequencing, or by hybridization using an oligonucleotide microarray; and the level of each miR gene product measured by hybridization to an oligonucleotide microarray comprising specific oligos) does amount to mere instructions to apply the correlation, since the collection from specific subjects, measuring by quantitative RT-PCR, digital PCR, next generation sequencing, or hybridization using an oligonucleotide microarray, and enriching a sample with extracellular vesicles serve as mere conventional steps taken for the purpose of gathering data about the miR gene product levels in a subject, which any practical use of the natural correlation and mental processes would require.
MPEP 2106.05(g) has to do with whether the additional elements of the claim amount to insignificant extra-solution activity. MPEP 2106.05(g) notes that “[d]etermining the level of a biomarker in blood” is an example of “mere data gathering” which the courts have found to be insignificant extra - solution activity. Likewise, MPEP 2106.05(g) notes that “[p]erforming clinical tests on individuals to obtain input for an equation” also represents insignificant extra-solution activity. This aligns closely with the instant claims, where the additional elements of the claims amount to collection from specific subjects, measuring by quantitative RT-PCR, digital PCR, next generation sequencing, or hybridization using an oligonucleotide microarray, and enriching a sample with extracellular vesicles, and further using this information to diagnose a subject with cancer.
MPEP 2106.05(h) has to do with whether the additional elements amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use. Here, the recitation of the method being used to diagnose cancer is considered a “field of use”. However, as MPEP 2106.05(h) indications, such limiting to a particular “field of use” does not confer patentability on otherwise ineligible subject matter.
Having considered the factors discussed in MPEP 2106.05 (a)-(c) and (e)-(h), it is clear that the additional elements recited in the claims, whether considered individually or as a combination, do not integrate the judicial exception into a practical application of that exception in such a way as to provide meaningful limits on the use of the judicial exception. The judicial exception is the natural correlation between levels of miRNAs and diagnosing cancer based on these levels, and the mental processes of determining, comparing, and diagnosing, and the claims amount to using routine and conventional steps to observe that correlation.
In addition, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception (as set forth in step 2B of the subject matter eligibility test; see MPEP 2106-III) because it was known in the prior art to enrich a sample in extracellular vesicles, as well as collect samples from specific subjects and measure miR gene products by quantitative RT-PCR, digital PCR, next generation sequencing, or hybridization using an oligonucleotide microarray.
Mitsuhashi (WO2012170037A1; previously cited) teaches a method for enriching or isolating extracellular vesicles from a body fluid sample (Pages 7-8, paragraph [0031]), comprising filtrating the body fluid sample through a first membrane (Page 3, paragraph [0012]; Page 10, paragraph [0036]); (ii) filtrating the filtrate obtained from step (i) through a second membrane (Page 3, paragraph [0012]; Page 10, paragraph [0036]); and (iii) recovering extracellular vesicles from the second membrane (Page 3, paragraph [0010]). Mitsuhashi further teaches that wherein the vesicle capture material is a filter, the type of filter may vary depending on the application (Page 10, paragraph [0036]). Mitsuhashi provides examples filters that do bind proteins (Page 10, paragraph [0036]). Borisovich (WO2019132688A1; previously cited), in the same field of endeavor, teaches wherein a filter for isolation of vesicles does not bind proteins (Page 9, paragraph [0018]). Mitsuhashi further suggests that the vesicle-capturing material captures desired vesicles from the biological sample (Pages 9-10, paragraph [0035]), and the size of the desired vesicle can determine the pore size of the desired material (Pages 9-10, paragraph [0035]). Borisovich, in the same field of endeavor, teaches wherein a pore size can range from 70-200 nm (Page 9, paragraph [0018]).
Stickeler (US20160369352A1; previously cited) teaches a method of diagnosing cancer in a subject, said method comprising the steps of: (i) determining the level of at least one miR gene product in a urine sample obtained from said subject (Page 3, paragraph [0028]), (ii) comparing the level determined in step (i) to the level of the respective miR gene products in a control sample (Page 3, paragraph [0028]), and (iii) diagnosing said subject with cancer when the level of at least one miR gene product determined in step (i) differs from the associated control level (Page 3, paragraph [0028]), using multiple different combinations of miRNAs (Page 5, paragraphs [0040]-[0050]; Page 9, paragraph [0087]). Stickeler teaches a control sample is a urine sample from one or more healthy individuals (Page 4, paragraph [0033]). Stickeler teaches the subject is a female human (Page 4, paragraph [0031]). Stickler teaches the level of miR gene product(s) is measured by quantitative RT-PCR (Page 6, paragraph [0052]). Stickeler further teaches wherein the level of each miR gene product is measured by hybridization using an oligonucleotide microarray (Page 6, paragraph [0053]).
Therefore, the additional elements beyond the natural correlation between levels of miRNAs and diagnosing cancer based on these levels, and the mental processes of determining, comparing, and do not represent an inventive concept, since enriching a sample in extracellular vesicles, as well as collecting samples from specific subjects and measuring miR gene products by quantitative RT-PCR, digital PCR, next generation sequencing, or hybridization using an oligonucleotide microarray was known in the art.
Response to Arguments
Applicant's arguments filed October 8th, 2025 have been fully considered but they are not persuasive.
The Applicant first presents a short summary of the Examiner’s previous rejection (Page 10 of the Remarks filed October 8th, 2025). The Applicant traverses this rejection, and further states for the interest of expediting prosecution, claims 15 and 18 have been amended to be directed to a method of diagnosing breast cancer where levels of miR gene product are measured by quantitative RT-PCR, digital PCR, digital droplet PCR (ddPCR), next generation sequencing (NGS) and/or hybridization using a dedicated oligonucleotide array (Page 10 of the Remarks filed October 8th, 2025). The Applicant states the reason for the amendment adding the measurement methods is that claim 23 was notably excluded from the previous rejection (Page 10 of the Remarks filed October 8th, 2025). The Applicant then provides information regarding subject matter eligibility which the Examiner has reviewed (Page 10-11 of the Remarks filed October 8th, 2025). The Applicant states again that claim 23 was notably excluded from the previous rejection and further required both the fabrication and application of man-made, non-naturally occurring components such as specialized primers and/or a dedicated oligonucleotide microarray specifically constructed to detect the particular miR gene product of interest (Page 11 of the Remarks filed October 8th, 2025). The Applicant further states that incorporating the details of this claim into the other rejected claims transforms “diagnosis” into a quantifiable active step and provides for significantly more than a law of nature coupled to conventional and generalized steps (Page 11 of the Remarks filed October 8th, 2025).
In response to these arguments, the Examiner would first like to note for the Applicant that claim 23 was indeed included in the previous rejection. While claims were not individually addressed in the body of the 101 rejection, it is clearly stated that claims 15, 16, 18, 19, and 21-24 (e.g. 21 through 24) were rejected (see page 11 of the previous Office Action). Therefore, it was previously acknowledged that the limitations of claim 23 were not enough to transform diagnosing into something significantly more than a law of nature. However, to fully address these arguments, the Examiner notes for the Applicant that even if the aspects of the fabrication and application of specialized primers or dedicated oligonucleotide microarray are man-made and not natural, it is acknowledged in the MPEP guidance regarding additional elements that amount to significantly more than the judicial exception that “[u]sing well-known standard laboratory techniques to detect enzyme levels in a bodily sample” (see MPEP 2106.05(a)) is not sufficient to show an improvement to technology. While this may be a specific example, it provides context for well-known standard laboratory techniques for looking at samples to not be an improvement to technology. Well known and standard techniques include using PCR to amplify and detect DNA and hybridizing a gene probe (see MPEP 2106.05(d)(II)). Therefore, regardless of if aspects of the invention related to PCR or hybridization arrays are man-made and not natural, or if they turn diagnosis into a quantifiable step, they are acknowledged as not being enough to be significantly more than the identified judicial exceptions.
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.
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.
Modified – Necessitated by Amendment
Claim(s) 1-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Mitsuhashi (WO2012170037A1; previously cited), in view of Borisovich (WO2019132688A1; previously cited).
Regarding instant claim 1, Mitsuhashi teaches a method for enriching or isolating extracellular vesicles from a body fluid sample (Pages 7-8, paragraph [0031]), comprising filtrating the body fluid sample through a first membrane (Page 3, paragraph [0012]; Page 10, paragraph [0036]); (ii) running the filtrate obtained from step (i) through a second membrane (Page 3, paragraph [0012]; Page 10, paragraph [0036]); and (iii) recovering extracellular vesicles from the second membrane (Page 3, paragraph [0010]).
Mitsuhashi does not specifically teach wherein the first membrane of their multilayer device does not bind proteins and wherein the second membrane of their multilayer device does bind proteins (Page 3, paragraph [0012]). However, Mitsuhashi teaches that wherein the vesicle capture material is a filter, the type of filter may vary depending on the application (Page 10, paragraph [0036]). Mitsuhashi provides examples filters that do bind proteins (Page 10, paragraph [0036]). Mitsuhashi does not teach a filter option that does not bind proteins. Borisovich, in the same field of endeavor, teaches wherein a filter for isolation of vesicles does not bind proteins (Page 9, paragraph [0018]). Therefore, it would be obvious to one of ordinary skill in the art to substitute in a filter with the claimed properties as needed for the required application of the method.
Mitsuhashi does not specifically teach a pore size from 180nm to 250nm for either filter, but suggests that the vesicle-capturing material captures desired vesicles from the biological sample (Pages 9-10, paragraph [0035]). Furthermore, the size of the desired vesicle can determine the pore size of the desired material (Pages 9-10, paragraph [0035]). Borisovich, in the same field of endeavor, teaches wherein a pore size can range from 70-200 nm (Page 9, paragraph [0018]). Therefore, it would be obvious to one of ordinary skill in the art to substitute in a filter with the claimed properties as needed for the required application of the method.
Regarding instant claim 2, Mitsuhashi, in view of Borisovich, teaches the method of claim 1. Mitsuhashi further teaches wherein the vesicles are selected from the group consisting of microvesicles and exosomes (Pages 7-8, paragraph [0031]).
Regarding instant claim 3, Mitsuhashi, in view of Borisovich, teaches the method of claim 1. Mitsuhashi further teaches wherein the body fluid is blood, plasma, urine, ascites, saliva, or amniotic liquor (Page 11, paragraph [0040]).
Regarding instant claim 4, Mitsuhashi, in view of Borisovich, teaches the method of claim 1. Mitsuhashi further teaches wherein the body fluid is urine (Page 11, paragraph [0040]).
Regarding instant claim 5, Mitsuhashi, in view of Borisovich, teaches the method of claim 1.
Mitsuhashi does not specifically teach a pore size from 180nm to 250nm for either filter, but suggests that the vesicle-capturing material captures desired vesicles from the biological sample (Pages 9-10, paragraph [0035]). Furthermore, the size of the desired vesicle can determine the pore size of the desired material (Pages 9-10, paragraph [0035]). Borisovich, in the same field of endeavor, teaches wherein a pore size can range from 70-200 nm (Page 9, paragraph [0018]). Therefore, it would be obvious to one of ordinary skill in the art to substitute in a filter with the claimed properties as needed for the required application of the method.
Mitsuhashi does not teach wherein the first membrane comprises cellulose acetate.
Borisovich, in the same field of endeavor, teaches wherein a membrane comprises cellulose acetate (Page 9, paragraph [0018]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the filter of Mitsuhashi with the filter material of Borisovich. Since both Mitsuhashi and Borisovich are in the same field of endeavor, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because Mitsuhashi teaches that wherein the vesicle capture material is a filter, the type of filter may vary depending on the application (Page 10, paragraph [0036]). Therefore, it would be obvious to one of ordinary skill in the art to substitute in a filter with the claimed properties as needed for the required application of the method.
Regarding instant claim 6, Mitsuhashi, in view of Borisovich, teaches the method of claim 1. Mitsuhashi further teaches wherein the second membrane comprises a polyamide (Page 10, paragraph [0036]: nylon).
Regarding instant claim 7, Mitsuhashi, in view of Borisovich, teaches the method of claim 5.
Mitsuhashi does not teach wherein the pore size of the first membrane is about 0.20 µm.
Borisovich, in the same field of endeavor, teaches wherein a pore size can range from 70-200 nm (Page 9, paragraph [0018]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the filter of Mitsuhashi with the pore size of Borisovich. Since both Mitsuhashi and Borisovich are in the same field of endeavor, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because Mitsuhashi suggests that the vesicle-capturing material captures desired vesicles from the biological sample (Pages 9-10, paragraph [0035]). Furthermore, the size of the desired vesicle can determine the pore size of the desired material (Pages 9-10, paragraph [0035]). Therefore, it would be obvious to one of ordinary skill in the art to substitute in a filter with the claimed properties as needed for the required application of the method.
Regarding instant claim 8, Mitsuhashi, in view of Borisovich, teaches the method of claim 1.
Mitsuhashi does not teach wherein the pore size of the first membrane is about 0.22 µm.
Borisovich, in the same field of endeavor, teaches wherein a pore size can range from 70-200 nm (Page 9, paragraph [0018]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the filter of Mitsuhashi with the pore size of Borisovich. Since both Mitsuhashi and Borisovich are in the same field of endeavor, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because Mitsuhashi suggests that the vesicle-capturing material captures desired vesicles from the biological sample (Pages 9-10, paragraph [0035]). Furthermore, the size of the desired vesicle can determine the pore size of the desired material (Pages 9-10, paragraph [0035]). Therefore, it would be obvious to one of ordinary skill in the art to substitute in a filter with the claimed properties as needed for the required application of the method.
Regarding instant claim 9, Mitsuhashi, in view of Borisovich, teaches the method of claim 1.
Mitsuhashi does not teach wherein the body fluid sample is subjected to a centrifugation step prior to step (i).
Borisovich, in the same field of endeavor, teaches wherein the body fluid sample is subjected to a centrifugation step prior to step (i) (Pages 44-45, paragraphs [0083]-[0085]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of Mitsuhashi with the centrifugation step of Borisovich. Since both Mitsuhashi and Borisovich are in the same field of endeavor, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because it rids the samples of unwanted cellular components (Borisovich, Page 45, paragraph [0085]).
Regarding instant claim 10, Mitsuhashi, in view of Borisovich, teaches the method of claim 9.
Mitsuhashi does not teach wherein said centrifugation step comprises centrifuging the body fluid sample at 3,000 g to 5,000 g for 5 to 30 minutes.
Borisovich, in the same field of endeavor, teaches wherein said centrifugation step comprises centrifuging the body fluid sample at 3,000 g to 5,000 g for 5 to 30 minutes (Page 44-45, paragraphs [0083]-[0085]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of Mitsuhashi with the centrifugation step of Borisovich. Since both Mitsuhashi and Borisovich are in the same field of endeavor, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because it rids the samples of unwanted cellular components (Borisovich, Page 45, paragraph [0085]).
Regarding instant claim 11, Mitsuhashi, in view of Borisovich, teaches the method of claim 1. Mitsuhashi further teaches wherein said recovering is effectuated by contacting the second membrane with a lysis buffer (Page 3, paragraph [0010]).
Regarding instant claim 14, Mitsuhashi, in view of Borisovich, teaches the method of claim 1. Mitsuhashi further teaches wherein said method further comprises the step of separating microvesicles from exosomes (Pages 7-8, paragraph [0031]).
Response to Arguments
Applicant's arguments filed October 8th, 2025 have been fully considered but they are not persuasive.
The Applicant first summarizes the Examiner’s previous rejections and the art that they are based on (Pages 11-12 of the Remarks filed October 8th, 2025). The Applicant further notes that the rejection of claim 23 is moot given its cancellation (Page 12 of the Remarks filed October 8th, 2025). The Applicant states that all prior art rejections stand or fall on the combination of Mitsuhashi and Borisovich, which is used to reject claim 1, and gives a brief summary of how the Examiner previously used these references in the 103 rejection (Page 12 of the Remarks filed October 8th, 2025). The Applicant then states that basic criteria for a case of obviousness, further stating that neither Mitsuhashi nor Borisovich teach the combination of a first membrane which does not bind proteins and a second membrane which does bind proteins (Page 12 of the Remarks filed October 8th, 2025). As argued by the Applicant, “While Mitsuhashi is admittedly silent as to a second membrane, Borisovich at best teaches combining two membranes "that substantially [do] not bind biological polymers" (see [0018]). Nowhere in Borisovich is there an inkling or hint, much less guidance toward the use of two membranes having completely different functionality. Rather, Mitsuhashi and Borisovich only vary the pore size of two combined filters, but do not suggest combining a first membrane which does not bind proteins and a second membrane which does bind proteins” (Page 12 of the Remarks filed October 8th, 2025). The Applicant further states that, because these references fail to teach or suggest all the claim limitations, the rejection of claims 1-11 and 14 as obvious over the teachings of Mitsuhashi and Borisovich must fall, and none of the secondary references can cure the deficiencies of Mitsuhashi and Borisovich (Page 13 of the Remarks filed October 8th, 2025). The Applicant argues this also makes the obviousness rejections of claims 12, 13, 15, 16, 21, and 22 deficient (Page 13 of the Remarks filed October 8th, 2025). Finally the Applicant argues that since none of the reference alone or in combination disclose or suggest claim 1, the claimed invention cannot be characterized as obvious (Page 13 of the Remarks filed October 8th, 2025).
In response to the Applicant’s arguments, the Examiner would first like to note that appropriate analysis for combination between Mitsuhashi and Borisovich appears in the rejection of claim 1. Mitsuhashi is cited for teaching a first and second membrane, making the Applicant’s assertion that Mitsuhashi is silent to a second membrane incorrect. Mitsuhashi’s second layer accounts for the second membrane. Furthermore, Mitsuhashi provides motivation for choosing filters based on the application, along with options for protein binding filters. Therefore, it would be obvious to choose a filter based on what the filter needs to accomplish, as has already been stated. Borisovich then teaches filters that do not bind proteins, which amounts to simple substitution of one known element for another to yield predictable results (see MPEP 2141(III)). Given these considerations, the arguments provided by the Applicant are not found persuasive. Given that these arguments were also directed towards the secondary references of the 103 rejections following this one not making up for the deficiencies of Mitsuhashi and Borisovich, the above response reasonably addresses this issue as well and serves as response to those arguments.
Claim(s) 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Mitsuhashi (WO2012170037A1; previously cited) and Borisovich (WO2019132688A1; previously cited), and further in view of Invitrogen (Cell Extraction Buffer [online]. Thermofisher, [2017] [retrieved on March 31st, 2025]. Retrieved from: https://assets.thermofisher.com/TFS-Assets/LSG/manuals/MAN0014666_FNN0011_Cell%20Extraction%20Buffer_PI.pdf; previously cited).
Regarding instant claim 12, Mitsuhashi, in view of Borisovich, teaches the method of claim 11
Neither Mitsuhashi, nor Borisovich, teach wherein said lysis buffer comprises at least one surfactant.
Invitrogen, in a reasonably pertinent field, teaches wherein a lysis buffer comprises at least one surfactant (Buffer Formulation box).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the lysis buffer of Mitsuhashi with the lysis buffer of Invitrogen. Since Invitrogen teaches on a lysis buffer containing a surfactant, which is reasonably pertinent to the lysis buffer of Mitsuhashi, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because this is a simple substitution of one known element for another to obtain predictable results (see MPEP 2141(III)).
Regarding instant claim 13, Mitsuhashi, in view of Borisovich and Invitrogen, teaches the method of claim 12. Invitrogen further teaches wherein said at least one surfactant is sodium lauryl sulfate (SDS), polyethylene glycol p-(1,1,3,3-tetramethylbutyl)-phenyl ether, and combinations thereof (Buffer Formulation box).
Claim(s) 15 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Stickeler (US20160369352A1; previously cited), in view of Mitsuhashi (WO2012170037A1; previously cited), Borisovich (WO2019132688A1; previously cited), Kinoshita et al. (MicroRNAs in extracellular vesicles: potential cancer biomarkers, Journal of Human Genetics, July 2016, 62, 67-74; previously cited), Zhang et al. (A circulating miRNA signature as a diagnostic biomarker for non-invasive early detection of breast cancer, Breast Cancer Research and Treatment, October 2015, 154, 423-434; previously cited), Krishnan et al. (Next generation sequencing profiling identifies miR-574-3p and miR-660-5p as potential novel prognostic markers for breast cancer, BMC Genomics, September 2015, 16, 1-17; previously cited), and Qattan et al. (Robust expression of tumor suppressor miRNA’s let-7 and miR-195 detected in plasma of Saudi female breast cancer patients, BMC Cancer, November 2017, 17, 1-10; previously cited).
Regarding instant claim 15, Stickeler teaches a method of diagnosing cancer in a subject, said method comprising the steps of: (i) determining the level of at least one miR gene product in a urine sample obtained from said subject (Page 3, paragraph [0028]), (ii) comparing the level determined in step (i) to the level of the respective miR gene products in a control sample (Page 3, paragraph [0028]), and (iii) diagnosing said subject with breast cancer when the level of at least one miR gene product determined in step (i) differs from the associated control level (Page 3, paragraph [0028]), using multiple different combinations of miRNAs (Page 5, paragraphs [0040]-[0050]; Page 9, paragraph [0087]). Stickeler further teaches wherein the level of miR gene product(s) is measured by quantitative RT-PCR (Page 6, paragraph [0052]).
Stickeler does not teach wherein said urine sample is first enriched in extracellular vesicles by the method of claim 1. However, the art of claim 1 and corresponding analysis teach a method of enriching extracellular vesicles in a urine sample (see above 103 analysis for claim 1). Furthermore, Kinoshita, in a reasonably pertinent field, teaches that miRNAs can be found in extracellular vesicles (Page 67, Abstract).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of Stickeler with the extracellular vesicle enrichment of Mitsuhashi and Borisovich, as analyzed in claim 1, bolstered by the knowledge that extracellular vesicles contain miRNAs from Kinoshita. Since Mitsuhashi and Borisovich teach on the enrichment of extracellular vesicle from a urine sample, and Kinoshita teaches extracellular vesicles contain miRNAs, which is reasonably pertinent to the urine samples containing miRNA of Stickeler, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because it was known in the art that extracellular vesicles contain miRNAs that have a functional association with tumor progression and cancer biology in general (Kinoshita, Page 67, Introduction, second paragraph).
Stickeler does not teach that the miR gene products are miR-424, miR-660 and let7-i.
Zhang teaches that expression of miR-424 differs in breast cancer patients compared to controls (Page 427, Validation of miRNA combinations). Krishnan teaches that expression of miR-660 differs in breast cancer patients compared to controls (Figure 5A). Qattan teaches that expression of let-7i differs in breast cancer patients compared to controls (Figure 2). All of these sources are in a reasonably pertinent field.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of Stickeler with the miRNAs of Zhang, Krishnan, and Qattan. Since Zhang, Krishnan, and Qattan all teach a difference of expression for their respective miRNAs compared to controls, which is reasonably pertinent to the method of Stickeler, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because it was known in the art to include multiple miRNAs to increase predictive and diagnostic power (Stickeler, Page 9, paragraph [0087]).
Regarding instant claim 21, Stickeler, in view of in view of Mitsuhashi, Borisovich, Kinoshita, Zhang, Krishnan, and Qattan teaches the method of claim 15. Stickeler further teaches wherein the control sample is a urine sample from one or more healthy individuals (Page 4, paragraph [0033]).
Regarding instant claim 22, Stickeler, in view of in view of Mitsuhashi, Borisovich, Kinoshita, Zhang, Krishnan, and Qattan teaches the method of claim 15. Stickeler further teaches wherein the subject is a female human (Page 4, paragraph [0031]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Stickeler (US20160369352A1; previously cited), in view of Mitsuhashi (WO2012170037A1; previously cited), Borisovich (WO2019132688A1; previously cited), Kinoshita et al. (MicroRNAs in extracellular vesicles: potential cancer biomarkers, Journal of Human Genetics, July 2016, 62, 67-74; previously cited), Zhang et al. (A circulating miRNA signature as a diagnostic biomarker for non-invasive early detection of breast cancer, Breast Cancer Research and Treatment, October 2015, 154, 423-434; previously cited), Krishnan et al. (Next generation sequencing profiling identifies miR-574-3p and miR-660-5p as potential novel prognostic markers for breast cancer, BMC Genomics, September 2015, 16, 1-17; previously cited), Qattan et al. (Robust expression of tumor suppressor miRNA’s let-7 and miR-195 detected in plasma of Saudi female breast cancer patients, BMC Cancer, November 2017, 17, 1-10; previously cited), and Wei et al. (Let-7d Inhibits Growth and Metastasis in Breast Cancer by Targeting Jab1/Cops5, Cellular Physiology and Biochemistry, July 2018, 47, 2126-2135; previously cited).
Regarding instant claim 16, Stickeler, in view of Mitsuhashi, Borisovich, Kinoshita, Zhang, Krishnan, and Qattan, teaches the method of claim 15. Stickeler teaches a method comprising the steps of: (i) determining the level of at least one miR gene product in a urine sample obtained from said subject (Page 3, paragraph [0028]), (ii) comparing the level determined in step (i) to the level of the respective miR gene products in a control sample (Page 3, paragraph [0028]), and (iii) diagnosing said subject with breast cancer when the level of at least one miR gene product determined in step (i) differs from the associated control level (Page 3, paragraph [0028]), using multiple different combinations of miRNAs (Page 5, paragraphs [0040]-[0050]; Page 9, paragraph [0087]). Stickeler further teaches wherein the level of miR gene product(s) is measured by quantitative RT-PCR (Page 6, paragraph [0052]).
Stickeler does not teach that the miR gene products further comprise let7-d.
Wei, in a reasonably pertinent filed, teaches that expression of let7-d differs in breast cancer patients compared to controls (Page 2130, Figure 1A).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of Stickeler, Zhang, Krishnan, and Qattan with the miRNA of Wei. Since Wei teaches a difference of expression for let7-d compared to controls, which is reasonably pertinent to the method of Stickeler, Zhang, Krishnan, and Qattan, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success One of ordinary skill in the art would have been motivated to make this modification because it was known in the art to include multiple miRNAs to increase predictive and diagnostic power (Stickeler, Page 9, paragraph [0087]).
New – Necessitated by Addition of Claims
Claims 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Stickeler (US20160369352A1; previously cited), Mitsuhashi (WO2012170037A1; previously cited), Borisovich (WO2019132688A1; previously cited), Kinoshita et al. (MicroRNAs in extracellular vesicles: potential cancer biomarkers, Journal of Human Genetics, July 2016, 62, 67-74; previously cited), Zhang et al. (A circulating miRNA signature as a diagnostic biomarker for non-invasive early detection of breast cancer, Breast Cancer Research and Treatment, October 2015, 154, 423-434; previously cited), Krishnan et al. (Next generation sequencing profiling identifies miR-574-3p and miR-660-5p as potential novel prognostic markers for breast cancer, BMC Genomics, September 2015, 16, 1-17; previously cited), and Qattan et al. (Robust expression of tumor suppressor miRNA’s let-7 and miR-195 detected in plasma of Saudi female breast cancer patients, BMC Cancer, November 2017, 17, 1-10; previously cited), as applied to claims 15 and 21-22 above, and further in view of Verdine (US 20140296087 A1).
Regarding instant claim 28, Stickeler, in view of Mitsuhashi, Borisovich, Kinoshita, Zhang, Krishnan, and Qattan, teaches the method of claim 15. Stickeler further teaches wherein the level of each miR gene product is measured by hybridization using an oligonucleotide microarray (Page 6, paragraph [0053]).
Stickeler does not teach wherein the microarray comprises: (i) an oligonucleotide capable of hybridizing to a nucleic acid consisting of SEQ ID NO:11, (ii) an oligonucleotide capable of hybridizing to a nucleic acid consisting of SEQ ID NO:12, and (iii) an oligonucleotide capable of hybridizing to a nucleic acid consisting of SEQ ID NO:17.
Verdine, in a reasonably pertinent field, teaches on libraries of oligomers that consists of every possible permutation of an oligomer of a particular length, where the length can be from a 2mer to a 15mer (Page 1, paragraph [0007]). These libraries will contain “at least one example of every unique sequence order that can be assembled using more or more of the four standard nucleotide base residues” (Page 1, paragraph [0007]). For example, this means that every possible sequence combination of 8 nucleotides is represented in the library. Verdine also teaches that oligomers can be made from RNA base residues (Page 1, paragraph [0004]). Verdine further teaches that these libraries can be features on an array (Page 2, paragraph [0014]). Given these teachings, Verdine necessarily teaches a microarray comprising an oligonucleotide capable of hybridizing with each of SEQ ID NOs: 11, 12, and 17.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the microarray of Stickeler with the microarray of Verdine. Since Verdine teaches on microarrays with oligonucleotides comprising every combination oligomer of a particular length, which is reasonably pertinent to the microarray of Stickeler, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because it amounts to simple substitution of one known element for another to obtain predictable results (see MPEP 2141(III)). Stickeler teaches on a microarray for measuring expression levels of multiple miRNAs, which could reasonably be substituted with the microarray of Verdine which has oligomers complementary to any miRNAs to be measured.
Regarding instant claim 29, Stickeler, in view of Mitsuhashi, Borisovich, Kinoshita, Zhang, Krishnan, Qattan, and Verdine, teaches the method of claim 28. Stickeler further teaches wherein the level of each miR gene product is measured by hybridization using an oligonucleotide microarray (Page 6, paragraph [0053]). As has been analyzed for claim 28, Verdine teaches every combination of a particular number of nucleotides included in the oligomers on the array, necessarily teaching that there is an oligonucleotide capable of hybridizing to nucleic acids consisting of the claimed SEQ ID NOs.
Conclusion
All claims are rejected.
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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/ALLISON E SCHLOOP/Examiner, Art Unit 1683
/Robert T. Crow/Primary Examiner, Art Unit 1683