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
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Claims 1, 4, 7-8, 10-14, 16, and 19-21 have an effective filing date of 18 OCT 2019.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/22/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restriction
In the response filed on 8/11/2025, Applicant elected:
Group I, claims 1-4, 7, 8, 10-17, and 19-21
Species
Non-crosslinking Fixative – methanol
Crosslinking Fixative – formaldehyde
Transmembrane Protein and Antibody: PLXDC1 and peptide SEQ ID NO: 1 and anti-PLXDC1 antibody
Disease in Frozen Sample – tumor
Status of Claims
Claims 1, 4, 7-8, 10-14, 16, and 19-21 are currently pending and presented for examination on the merits.
Claims 1, 4, 8, and 13 are amended.
Claims 2-3, 5-6, 9, 15, 17-18, and 22-49 are canceled.
Rejections Withdrawn
The rejection filed under 35 U.S.C. 112(a) is withdrawn in view of Applicant canceling the claims.
The rejection filed under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments to claims.
Rejections Maintained
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.
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 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.
Claims 1, 4, 7-8, 10-14, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Balzano et al (Nidogen-1 Contributes to the Interaction Network Involved in Pro-B Cell Retention in the Perisinusoidal Hematopoietic Stem Cell Niche, Cell Reports 26, 3257–3271, 2019, Previous OA), and further in view of Forest et al (Optimization of immunostaining on flat-mounted human corneas, Molecular Vision 2015; 21:1345-1356, IDS 7/12/2022).
In regards to claims 1 and 4, Balzano et al teaches a method of immunohistochemistry [Immunohistochemistry, pg. e6]. Balzano et al further teaches sample of osteo-medullary biopsies [Immunohistochemistry, pg. e6]. Balzano et al further teaches imaging of PLXDC1 on femoral sections [Figure 5, pg. 3264]. Balzano et al further teaches detecting PLXDC1 on sample [Figure 5, pg. 3264]. Balzano et al further teaches the samples were formalin-fixed [Immunohistochemistry, pg. e6]. Balzano et al further teaches the detection of transmembrane protein PLXDC1 [Figure 5].
Balzano et al does not specifically teach fixing the tissue in a slide in a non-crosslinking fixative. However, this deficiency is made up in the teachings of Forest et al.
Forest et al teaches a methods of immunohistochemistry [Left column, 2nd paragraph, pg. 1346]. Forest et al further teaches fixing cells in pure methanol [Left column, 2nd paragraph, pg. 1346].
One of ordinary skill, before the effective filing date, would have been motivated to combine Balzano’s method for preparing a sample for immunohistochemistry and detecting of expression of a transmembrane protein comprising sectioning a tissue sample from a tissue sample, with Forest’s method of immunohistochemistry comprising fixing sample in pure methanol. The idea of combining them flows logically from their having been individually taught in the prior art (MPEP 2144.06). Combining prior art elements according to known methods to yield predictable results is an exemplary rationale for a prima facie case of obviousness. MPEP2143. It would have been prima facie obvious to combine Balzano and Forest’s methods for a method for preparing a tissue sample for detection of the expression of a transmembrane protein in the tissue sample comprising sectioning a tissue slide from a tissue sample and fixing the tissue slide in a non-crosslinking fixative, because Balzano teaches the imaging and detection of PLXDC1, and Forest teaches the immunohistochemistry methods for preparing and imaging tissue samples.
In regards to claims 7-8, 10-13, and 19, with regards to timing of fixation and isolation of tissue sample is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for an artisan of ordinary skill to determine the optimal timing for each ingredient needed to achieve the desired results. Thus, absent some demonstration of unexpected results from the claimed parameters, the optimization of ingredient amounts would have been obvious at the time of applicant's invention.
The principle of law states from MPEP 2144.05: "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."(Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382); Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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).
In regards to claim 14, Forest et al further teaches that fixation with formaldehyde cross-links amino acid groups of proteins [Right column, 1st paragraph, pg. 1353].
In regards to claim 16, Balzano et al further teaches immunohistochemical staining [Figure 5 & Figure 7].
Claims 1, 4, 7-8, 10-14, 16, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Balzano et al (Nidogen-1 Contributes to the Interaction Network Involved in Pro-B Cell Retention in the Perisinusoidal Hematopoietic Stem Cell Niche, Cell Reports 26, 3257–3271, 2019, Previous OA), Forest et al (Optimization of immunostaining on flat-mounted human corneas, Molecular Vision 2015; 21:1345-1356, IDS 7/12/2022) as applied to claims 1, 4, 7-8, 10-14, 16, and 19 above, and further in view of Cheng et al (Identification of PLXDC1 and PLXDC2 as the transmembrane receptors for the multifunctional factor PEDF, eLife 2014;3:e05401, IDS 7/12/2022).
The teachings of Balzano et al and Forest et al are discussed above.
Balzano et al does not specifically teach the tissue sample comprising blood vessels and the human patient suffering from cancer. However, this deficiency is made up in the teachings of Cheng et al.
In regards to claims 20 and 21, Cheng et al teaches the identification of PLXDC1 transmembrane proteins [Abstract]. Cheng et al further teaches PLXDC1 is expressed the endothelial cells of diabetic retinopathy diseased blood vessels [3rd Paragraph, pg. 10].
One of ordinary skill, before the effective filing date, would have been motivated to combine Balzano’s method for preparing a sample for immunohistochemistry and detecting of expression of a transmembrane protein comprising sectioning a tissue sample from a tissue sample, with Forest’s method of immunohistochemistry comprising fixing sample in pure methanol, with Cheng’s method of detecting PLXDC1 in blood vessels and cancer. The idea of combining them flows logically from their having been individually taught in the prior art (MPEP 2144.06). Combining prior art elements according to known methods to yield predictable results is an exemplary rationale for a prima facie case of obviousness. MPEP2143. It would have been prima facie obvious to combine Balzano, Forest, and Cheng’s methods for a method for preparing a tissue sample for detection of the expression of a transmembrane protein in the tissue sample comprising sectioning a tissue slide from a tissue sample and fixing the tissue slide in a non-crosslinking fixative, because Balzano and Cheng both teach the imaging and detection of PLXDC1 and its role in cancer, and Forest teaches the immunohistochemistry methods for preparing and imaging tissue samples.
Applicant’s Arguments:
Balzano discloses a method of immunohistochemistry (IHC) using formalin-fixed tissues. While acknowledging that Balzano does not disclose the use of a non- crosslinking fixative, the Office nevertheless alleges that such a deficiency is remedied by Forest.
More specifically, the Office alleges that Forest discloses fixing cells in pure methanol. It is important to note, however, Forest stresses that the treatment temperature when fixing cells with methanol heavily depends on the protein of detection:
Staining quality after fixation with methanol was particularly dependent on temperature (Figure 3 and Table 2). The conventional temperature of -20 *C was optimal only for ZO-1 and failed with histone H3. Room temperature was optimal for hnRNPL, and 37 *C was optimal for actin. Interestingly, histone H3 was perfectly revealed after fixation at 50 *C, a temperature never before reported for methanol.
For the four different proteins detected, the optimal treatment temperatures were -20 °C, 25 °C, 37 °C, and 50 °C. On the one hand, these temperatures vary by a large extent, from -20 °C to 50 °C. On the other hand, the claimed temperature range of 2 °C to 8 °C is missing from the list.
Examiner’s Response:
Applicant states, “Forest stresses that the treatment temperature when fixing cell with methanol heavily depends on the protein of detection”, and “these temperatures vary by a large extent, from -20 °C to 50 °C. On the other hand, the claimed temperature range of 2 °C to 8 °C is missing from the list.”.
One of ordinary skill would recognize that Forest et al teaches that the temperature for fixing with methanol varies with each protein in a range from -20 °C to 50 °C. Applicant’s claimed temperature range for fixing PLXDC1 is from 2 °C to 8 °C, and falls within the teachings from Forest et al.
With regard to the temperature for fixing a protein in methanol, the temperature of the preparation is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for an artisan of ordinary skill to determine the optimal temperature of methanol of each protein needed to achieve the desired results. Thus, absent some demonstration of unexpected results from the claimed parameters, the optimization of ingredient amounts would have been obvious at the time of applicant's invention.
The principle of law states from MPEP 2144.05: "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."(Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382); Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DENNIS JOHN SULLIVAN whose telephone number is (571)272-0509. The examiner can normally be reached Mon - Fri: 7:30AM - 4:30PM.
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, Samira Jean-Louis can be reached at (571) 270-3503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS J SULLIVAN/Examiner, Art Unit 1642
/NELSON B MOSELEY II/Primary Examiner, Art Unit 1642
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