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 .
Claims 1-7 are pending in this application and were examined on their merits.
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 1-6 are rejected under 35 U.S.C. § 103 as being unpatentable
over Atapattu et al. (US 2012/0309039 A1), cited in the IDS, in view of Pirazzini et
al. (2012) and Dwyer et al. (1996), both of record.
Atapattu et al. teaches a method for detecting Botulinum toxin, comprising
providing a transfected cell which produces a construct (Pg. 7, Claims 1 and 11 and Pg.
6, Paragraph [0075]);
the construct comprising a first terminus comprising a first fluorophore (exhibits a
fluorescent signal) and a cleavage site that is cleaved by Botulinum toxin to release the
reporter-containing portion from the remainder of the construct (Pg. 7, Claim 1 and Fig.
1);
wherein the construct comprises a second fluorophore preferably at an opposite
end (e.g. proximal to a second terminus) from the reporter-containing portion (Pg. 7,
Claims 1, 2 and 6 and Fig. 1);
wherein the cell can be a primary cultured neuronal cell, such as a PC12 cell (Pg.
3, Paragraph [0039]);
exposing the cells to Botulinum toxin serotype A and incubating for 24 hours (Pg.
6, Paragraph [0075]);
and obtaining a non-FRET fluorescent signal (Pg. 7, Claims 1, 6 and 7), reading
on Claims 1, 2, 3, 4 and 5.
With regard to Claim 6, it would be inherent that the construct of Atapattu et al.
would have less than or equal 5% FRET because the prior art construct is non-FRET
based and would therefore not be expected to have any FRET signal.
Atapattu et al. did not teach a method of increasing the activity of heat shock
protein, as required by Claim 1.
Pirazzini et al. teaches that the membrane translocation of Botulinum toxin in
neurons is temperature dependent with increasing temperatures resulting in increased
translocation (Pg. 40, Figs. 1-2).
Dwyer et al. evidences that exposing PC12 cells to temperatures of 42 °C results
in the induction of Hsp70 (Pg. 661, Fig. 2).
It would have been obvious to those of ordinary skill in the art before the effective
filing date of the claimed invention to modify the method of Atapattu et al. of detecting
botulinum toxin A in transfected neuronal cell, such as a PC12 cell, using a non-FRET
construct with the application of heat to the cells because the cellular uptake of
Botulinum toxin is a result effective variable subject to routine optimization and
experimentation. Temperature is recognized by the Pirazzini et al. reference as
important in affecting the rate at which cells take up detectable botulinum toxin with the
fastest uptake taking place at elevated temperature. Thus, the prior art recognizes that
the temperature at which a cell is contacted with botulinum toxin is a critical result-
effective variable. As such, the modification/increasing of the temperature at which cells
are contacted with Botulinum toxin would have been obvious to the ordinary artisan
absent any showing of unexpected results. Those of ordinary skill in the art would have
been motivated to make this modification in order to optimize and maximize the desired
cellular uptake of detectable toxin.
There would have been a reasonable expectation of success in making this modification because both the Atapattu et al. and Pirazzini et al. references are drawn to the same field of endeavor, that is, assays of neuronal cells with botulinum toxin.
With regard to Claim 1, it would be inherent in the method of Atapattu et al. and
Pirazzini et al. that heating the PC12 cells would result in an increased activity of the
heat shock protein Hsp70 as this an inherent feature of exposing cells to heat as taught
by Dwyer et al. that exposing PC12 cells to temperatures of 42 °C results in the
induction of Hsp70 (Pg. 661, Fig. 2).
Claims 1-6 and 7 are rejected under 35 U.S.C. § 103 as being unpatentable
over Atapattu et al. (US 2012/0309039 A1), cited in the IDS, in view of Pirazzini et
al. (2012) and Mailhos et al. (1994), both of record.
The teachings of Atapattu et al. and Pirazzini et al. were discussed above.
Neither of the above references taught wherein the heat shock protein whose
activity is increased is Hsp90, as required by Claim 7.
Mailhos et al. teaches that exposing primary cultured neuronal cells (neuronal
dorsal root ganglion/ND7) to temperatures of 42 °C and 48 °C results in increased
production of Hsp90 (Pg. 1788, Column 1, Lines 42-48 and Column 2, Lines 31-34 and
Pg. 1792, Fig. 6, tracks 1-2).
It would have been obvious to those of ordinary skill in the art before the effective
filing date of the claimed invention to modify the method of Atapattu et al. and Pirazzini
et al. of applying heat to increase botulinum toxin translocation before detecting
botulinum toxin in a transfected primary cultured neuronal cell, using a non-FRET
construct, to use the primary cultured ND7 cells in which heat induces increased hsp90
production of Mailhos et al. and increased toxin membrane translocation because the
method of Atapattu et al. and Pirazzini et al. is not limited to any particular neuronal
cells and Mailhos et al. teaches a particular type of neuronal cell suitable for in vitro
experimentation. Those of ordinary skill in the art would have been motivated to make this modification in order to detect botulinum toxin in a heat-treated, transfected primary
cultured ND7 neuronal cell. There would have been a reasonable expectation of
success in making this modification because all of the references are drawn to the same
field of endeavor, that is, assays of cultured neuronal cells.
Response to Arguments
Applicant's arguments filed 02/20/2026 have been fully considered but they are not persuasive.
The Applicant argues that Pirazzini is directed to Tetanus neurotoxin and Botulinum neurotoxin serotypes C and D, and alleges that the reference selected those neurotoxins as having a common receptor-based cell entry mechanism distinct from Botulinum serotype A.
Applicant alleges that the ordinary artisan would not find that Pirazzini teaches or implies that any temperature increase within any temperature range would equate with increased internalization of every Botulinum serotype toxin (Remarks, Pg. 5, Lines 29-33 and Pg. 6, Lines 1-12).
This is not found to be persuasive for the following reasons, as discussed in the prior action and above, the Examiner notes that Atapattu teaches a method of detecting botulinum toxin A in transfected neuronal cell. The Examiner further notes that Pirazzini teaches at Pg. 41, Column 1, Lines 41-43 that;
"… one conclusion that appears to be extendable to all the clostridial neurotoxins [thus all botulinum serotypes] is that the membrane translocation step at 37 °C is very rapid…".
Thus, the ordinary artisan would expect that elevated temperatures would also
increase neuronal membrane translocation of other botulinum serotypes including the
BoNT/A taught by Atapattu as well as the BoNT/E of the Pirazzini reference..
The Applicant argues that Fig. 5 of the disclosure depicts the measure of botulinum toxin cleavage of the claimed reporter peptide upon exposure to Botulinum neurotoxin serotypes A and E wherein serotype E intake does not appear to be increased upon increasing temperature from 37 °C to 39 °C. Applicant concludes this disproves the Examiners contention that temperature is a result-effective variable (Remarks, Pg. 6, Lines 13-17 and Pg. 7, Lines 1-4).
This is not found to be persuasive for the following reasons, the Specification at Paragraph [0062] discusses Fig. 5 and clearly indicates that both BoNT/A and BoNT/E cleave sites in SNAP-25 but that elevated temperature (to 39 °C) resulted in slightly decreased sensitivity for BoNT/E. This, along with the teachings of Pirazzini above, that the membrane translocation of Botulinum toxin in neurons is temperature dependent with increasing temperatures is an indicia that the temperature at which membrane translocation of Botulinum toxin takes place in neurons is temperature dependent, thus a result-effective variable subject to routine experimentation and optimization.
The Applicant argues that Mailhos teaches the protective effects of specified heat shock proteins that are constitutively expressed in neuronal cells and Applicant contends that constitutive expression cannot be equated with induced expression. Applicant concludes that the ordinary artisan in seeking guidance regarding the effects of HSP90 induction in neuron cells by increased temperature on sensitivity to botulinum neurotoxin A would not look to Mailhos (Remarks, Pg. 8, Lines 14-20).
This is not found to be persuasive for the following reasons, in response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which Applicant relies (i.e., constitutive or induced expression) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In this instance, the claims only require “increasing the activity of a heat shock protein (HSP90) of the transfected cells”. Mailhos teaches that exposing primary cultured neuronal cells (neuronal dorsal root ganglion/ND7) to temperatures of 42 °C or 48 °C results in increased production of Hsp90 (Pg. 1788, Column 1, Lines 42-48 and Column 2, Lines 31-34 and Pg. 1792, Fig. 6, tracks 1-2). Therefore, it would have been obvious to those of ordinary skill in the art to modify the method of Atapattu and Pirazzini of applying heat to increase botulinum toxin A translocation before detecting botulinum toxin A in a transfected primary cultured neuronal cell, using a non-FRET construct, to use the primary cultured ND7 cells in which heat induces increased hsp90 production of Mailhos and increased toxin membrane translocation because the method of Atapattu and Pirazzini is not limited to any particular neuronal cells and Mailhos teaches a particular type of neuronal cell suitable for in vitro experimentation.
Conclusion
No claims are 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to PAUL C MARTIN whose telephone number is (571)272-3348. The Examiner can normally be reached Monday-Friday 12pm-8pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Sharmila G Landau can be reached at (571) 272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL C MARTIN/ Examiner, Art Unit 1653
/SHARMILA G LANDAU/ Supervisory Patent Examiner, Art Unit 1653
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