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
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/14/2026 has been entered.
Status of the Claims
2. Claims 1-17 are the original claims filed 9/26/2022. In the Preliminary Amendment of 11/5/2024, Claims 1-17 are canceled and new claims 18-44 are added. In the Response of 12/5/2025, Claims 18, 21-22, 24-27, 29, 33, and 40-44 are amended, and Claims 19-20, 23, 30-32, and 34-36 are canceled. In the Response of 4/20/2026, Claims 18, 27, 29, 33, 41, and 42 have been amended, claims 21, 26, and 28 are canceled, and new claims 45-50 are added.
Claims 18, 22, 24-25, 27, 29, 33, and 37-50 are all the claims.
Applicants amendment of the claims raises new grounds for rejection.
Priority
3. USAN 17/914,432, filed 09/26/2022, and having 1 RCE-type filing therein, is a National Stage entry of PCT/JP2021/013795, International Filing Date: 03/31/2021, claims foreign priority to JP 2020-062601, filed 03/31/2020.
Information Disclosure Statement
4. As of 6/24/2026, a total of eighteen (18) IDS are filed: 10/5/2022; 10/25/2022; 12/7/2022; 1/5/2023; 5/26/2023; 7/27/2023; 8/23/2023; 9/5/2023; 10/10/2023; 12/6/2023; 1/24/2024; 3/28/2024; 5/13/2024; 7/23/2024; 8/5/2024; 8/27/2024; 1/8/2025; and 12/5/2025. The corresponding initialed and dated 1449 form is considered and of record.
Withdrawal of Objections
Specification
5. The objection to the disclosure because of informalities is withdrawn. The substitute clean and marked-up copies of the specification are filed on 4/20/2026. The substitute specification rectifies the deficiencies.
Withdrawal of Rejections
Double Patenting
6. The provisional rejection of Claims 18, 21-22, 24-29, 33, and 37-44 on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 19/277,602 (reference application- yet to publish) is withdrawn in view of the abandonment of the reference application.
Rejection Maintained
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Written Description
7. The rejection of Claims 18, 22, 24-25, 27, 29, 33, and 37-50 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 is maintained.
A) Applicants allege the rejection is overcome by amending generic claim 18 to recite: a method for increasing the percentage of a desired structural isoform in a preparation of a multispecific antigen binding molecule, the method comprising: providing an initial preparation comprising two or more structural isoforms of the multispecific antigen binding molecule that differ by at least one disulfide bond; and contacting the initial preparation with tris(2-carboxyethyl)phosphine (TCEP); and removing the TCEP, thereby producing a modified preparation of the multispecific antigen binding molecule in which the percentage of a structural isoform having a disulfide bond between cysteine residues at EU numbering position 191 is increased, compared to the percentage in the initial preparation.
Response to Arguments
Claim construction
Step 1 providing: An initial preparation is understood to comprise > 2 structural isoforms of a multispecific antigen binding molecule (MABM) comprising a 1st and 2nd Fab that bind a different 1st and 2nd antigen, respectively, and a Fab or scfv that binds a 3rd antigen different from the 1st and 2nd antigen that is fused to the 1st or 2nd Fab, wherein the 1st and 2nd Fab comprise a C191 residue (EU). The 1st and 2nd Fab are precluded from binding their respective antigens at the same time.
Step 2 contacting: the initial preparation is contacted with TCEP. The concentration of the MABM and the concentration of the TCEP are undefined for the contacting step.
Step 3 removing: the TCEP is removed after the contacting step.
Step 4 producing: a “modified preparation” is produced from steps 2-3. The specification does not define or support the phrase “a modified preparation”, hence the POSA is not apprised of what the resultant preparation is fully comprised. The amendment is new matter.
Assuming, arguendo, the preparation is a modified structural isoform of the MABM with increased C191 disulfide bond formation between the 1st and 2nd Fab, it is unclear whether the intrachain disulfide bond (Cys-paired LINC) results in the MABM binding both antigens or not.
B) Applicants allege the Office has misplaced its focus on the Examples in the specification, that instead should refer to Example 2.1. The object of Example 2.1 is to promote paired-Cys isoforms (LINC) compared to unpaired-Cys isoforms (UnLINC) with TCEP using “optimize[d] conditions… for times and antibody:TCEP molar ratios.” TCEP treatment “can increase the desired LINC isoform from the initial 63% to a range of 87-93%.”
Response to Arguments
For those data in the excerpted table from Fig. 6, none of the claims recite the molar ratios or the incubation times for the respective molar ratios that are the “optimized conditions” for increasing the percentage of the LINC form compared to the initial preparation.
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It is noted that the features upon which applicant relies (i.e., the optimized conditions for Cys191 disulfide-mediated LINC formation) 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).
AS for Claims 18, 22, 24-25, 27, 29, 33, 37-40, and 47-48, the concentrations recited in Claims 24-25 are ranges for the respective reagent of the reaction and not a mixed ratio much less for a specifically defined “multispecific antigen biding molecule.” The specification and those data in the table teach the product made (LINC at 87%-93%) is from only a limited molar range for each of the inputs (i.e., antibody: TCEP). The specification does not support the breadth and scope of just any amount of the MABM and any amount of TCEP in order to achieve just any increase in LINC formation.
AS for Claim 41, the “homogenous” LINC, the specification does not clarify the percentage of the preferred embodiment for the LINC isoform that forms a homogeneous population.
[0812] A “homogeneous” population of an antibody means an antibody population that comprises largely a single form of the antibody, for example, at least 50%, 60%, 70%, 80% or more, preferably at least 90%, 95%, 96%, 97%, 99% or 100% of the antibody in the solution or composition is in the properly folded form. Similarly, a “homogeneous” population of an antibody having at least one disulfide bond formed outside of the hinge region means a population of said antibody which comprises largely a single, properly folded form, for example, at least 50%, 60%, 70%, 80% or more, preferably at least 90%, 95%, 96%, 97%, 99% or 100% molar ratio of said antibody having at least one disulfide bond formed outside of the hinge region. In one preferred embodiment, said “homogeneous” population of an antibody comprises at least one disulfide bond which is formed between the amino acid residues at position 191 according to EU numbering in the respective CH1 regions of the first antigen-binding domain and the second antigen-binding domain (i.e. “paired cysteines” at the position 191 according to EU number in the CH1 region).
The homogeneity of a population is broader in scope than those data in the table presented in Applicants case in chief that the desired LINC isoform is a range of 87%-93%. The antigen binding molecules of claim 41 are broader in scope for the structure of the 1st, 2nd and 3rd moieties compared to the specifically defined “multispecific antigen binding molecule” of claim 18 (1st (FAB), 2nd (FAB) and 3rd (FAB or scfv)) and for the tested trispecific antibody DLL3-DUALAE05/DUALAE05-FF046 (Table 2) and Figure 6.
AS regards Claims 42-46 and 49-50, at least for claim 44, the requirement that the LINC comprise “at least 95%” in the preparation exceeds what Applicants have shown themselves to be in possession of from the data in the specification and Applicants admission of record for a range of “87%-93%.” Also, the antigen binding molecules of claim 42 are broader in scope for the structure of the 1st, 2nd and 3rd moieties compared to the specifically defined “multispecific antigen binding molecule” of claim 18 (1st (FAB), 2nd (FAB) and 3rd (FAB or scfv)) and for the tested trispecific antibody DLL3-DUALAE05/DUALAE05-FF046 (Table 2) and Figure 6.
C) Applicants allege cited paragraphs [0450], [0035], and [1183] of 2023/0121511 say that a mutation creating a disulfide linkage between the first and second antigen binding moieties that holds them close to each other will promote "cis-antigen binding"-i.e., binding of both antigen- binding moieties to antigens on the same cell. This means it is less likely the two arms of the antibody will bind to antigens on two separate cells and thereby crosslink the two cells. As noted in these paragraphs, such crosslinking of two immune cells by an antibody is undesirable in that it causes toxicity, so that reducing the chance of such crosslinking by holding the two antibody arms closer together with a disulfide bond between CH1 domains will improve the safety profile of the antibody. (EU position 191 is in the CH1 domain, so a disulfide bond between Cys 191 residues is an example of this.)
Response to Arguments
The explanation is relevant to the outstanding grounds for rejection, namely, that the 191Cys disulfide bond formation between the 1st and 2nd antigen binding moieties contributes to and/or confers the required property that the 1st and 2nd binding moieties from claims 18, 41 and 42, “do[es] not bind both antigens at the same time.” However, in generic claim 18, the initial preparation requires that the pre-TCEP treated 1st and 2nd moieties do not bind both antigens at the same time (see element (a)). Clarification is requested.
Based on Applicants admission of record, the method and product inventions of the claims are required to possess a structure function correlation for any multispecific antigen binding molecule wherein a single disulfide bond formation between C191 on any 1st and any 2nd binding moiety in a trispecific molecule is what prevents both of the corresponding antigens from being bound at the same time.
D) Claims 18, 22, 24-25, 27, 29, 33, 37-40, and 47-48 are incomplete for omitting essential steps, such omission amounting to a gap between the steps. The omitted steps are: the oxidation step. Applicants’ instructions in the Response of 4/20/2026 that Example 2.1 ([0320], p 139) that exemplifies the claimed invention reveals the missing step for “further re-oxidation (e.g., remove reducing reagent [TCEP] via buffer exchange) of de-capped antibody can promote disulfide bond formation between the de-capped cysteines for LINC formation” (Examiner’s italics).
The rejection is maintained for reasons of record.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
8. The rejection of Claims 11274151 is withdrawn for claims 18, 22, 24-25, 27, 29, 33, 37-40, and 47-48 and maintained for claims 41-46 and 49-50. The reference patent is not afforded safe harbor under 35 USC 121 because it does not share continuity or a restriction/speciation with the claims of the instant application.
Applicants allege the present claims require steps of adding and removing TCEP and that are no trivial modifications but which promote the disulfide formation between C191 (EU) for the molecules.
Response of Arguments
None of claims 41-46 and 49-50 depend from withdrawn claim 18 (reciting TCEP steps) nor do they claim any aspect of TCEP.
The rejection is maintained.
9. The rejection of Claims 11718672 is withdrawn for claims 18, 22, 24-25, 27, 29, 33, 37-40, and 47-48 and maintained for claims 41-46 and 49-50. The reference patent is not afforded safe harbor under 35 USC 121 because it does not share continuity or a restriction/speciation with the claims of the instant application.
Applicants allege the present claims require steps of adding and removing TCEP and that are no trivial modifications but which promote the disulfide formation between C191 (EU) for the molecules.
Response of Arguments
None of claims 41-46 and 49-50 depend from withdrawn claim 18 (reciting TCEP steps) nor do they claim any aspect of TCEP.
The rejection is maintained.
10. The provisional rejection of Claims 20240400721) is withdrawn for claims 18, 22, 24-25, 27, 29, 33, 37-40, and 47-48 and maintained for claims 41-46 and 49-50. The reference is not afforded safe harbor under 35 USC 121 because it does not share continuity or a restriction/speciation with the claims of the instant application.
Applicants allege the present claims require steps of adding and removing TCEP and that are no trivial modifications but which promote the disulfide formation between C191 (EU) for the molecules.
Response of Arguments
None of claims 41-46 and 49-50 depend from withdrawn claim 18 (reciting TCEP steps) nor do they claim any aspect of TCEP.
The provisional rejection is maintained.
11. The on the ground of nonstatutory double patenting as being unpatentable over claims is withdrawn for claims 18, 22, 24-25, 27, 29, 33, 37-40, and 47-48 and maintained for claims 41-46 and 49-50. The reference patent is not afforded safe harbor under 35 USC 121 because it does not share continuity or a restriction/speciation with the claims of the instant application.
Applicants allege the present claims require steps of adding and removing TCEP and that are no trivial modifications but which promote the disulfide formation between C191 (EU) for the molecules.
Response of Arguments
None of claims 41-46 and 49-50 depend from withdrawn claim 18 (reciting TCEP steps) nor do they claim any aspect of TCEP.
12. The provisional rejection of Claims 18, 22, 24-25, 27, 29, 33, and 37-50 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 8-21 of copending Application No. 17/797,540 (reference application 20230348528) is maintained.
Applicants allege the none of claims in the '540 application discloses an antigen-binding moiety in which each of the first and second antigen-binding moieties binds to a first antigen and a second antigen, but not at the same time. This limitation is included in each pending independent claim (claims 18, 41, and 42) and therefore in each pending dependent claim.
Response to Arguments
As stated on the record by Applicants paragraphs [0450], [0035], and [1183] of 2023/0121511 say that a mutation creating a disulfide linkage between the first and second antigen binding moieties that holds them close to each other will promote "cis-antigen binding"-i.e., binding of both antigen- binding moieties to antigens on the same cell. This means it is less likely the two arms of the antibody will bind to antigens on two separate cells and thereby crosslink the two cells. As noted in these paragraphs, such crosslinking of two immune cells by an antibody is undesirable in that it causes toxicity, so that reducing the chance of such crosslinking by holding the two antibody arms closer together with a disulfide bond between CH1 domains will improve the safety profile of the antibody. (EU position 191 is in the CH1 domain, so a disulfide bond between Cys 191 residues is an example of this.)
Therefore, the explanation is relevant to the inherency of the property, namely, that the 191Cys disulfide bond formation between the 1st and 2nd antigen binding moieties contributes to and/or confers the required property that the 1st and 2nd binding moieties from claims 18, 41 and 42, “do[es] not bind both antigens at the same time.”
The provisional rejection is maintained.
Examiner’s Comment as Regards Claims 41-46
Applicants allege while claims 41-46 are drawn to preparation claims they are not obvious over “any” of the cited reference claims. Claims 41-46 are characterized as a “homogenous population” (Claim 41) or a preparation with a defined percentage of the isoform (claim 42).
Response to Arguments
MPEP 804 (B)(1) stating in part:
The specification can be used as a dictionary to learn the meaning of a term in the claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999) (“[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning.”); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) (“Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings.”). “The Patent and Trademark Office (‘PTO’) determines the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ ” Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01.
The specification defines “homogenous” and a percent amount for any given LINC as being interchangeable in meaning. For example,
[0812] A “homogeneous” population of an antibody means an antibody population that comprises largely a single form of the antibody, for example, at least 50%, 60%, 70%, 80% or more, preferably at least 90%, 95%, 96%, 97%, 99% or 100% of the antibody in the solution or composition is in the properly folded form. Similarly, a “homogeneous” population of an antibody having at least one disulfide bond formed outside of the hinge region means a population of said antibody which comprises largely a single, properly folded form, for example, at least 50%, 60%, 70%, 80% or more, preferably at least 90%, 95%, 96%, 97%, 99% or 100% molar ratio of said antibody having at least one disulfide bond formed outside of the hinge region. In one preferred embodiment, said “homogeneous” population of an antibody comprises at least one disulfide bond which is formed between the amino acid residues at position 191 according to EU numbering in the respective CH1 regions of the first antigen-binding domain and the second antigen-binding domain (i.e. “paired cysteines” at the position 191 according to EU number in the CH1 region).
The rejections are maintained.
New Grounds for Rejection
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
13. Claims 18, 22, 24-25, 27, 29, 33, 37-40, and 47-48 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
a) Claims 18, 22, 24-25, 27, 29, 33, 37-40, and 47-48 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the oxidation step. Applicants’ instructions in the Response of 4/20/2026 that Example 2.1 exemplifies the claimed invention reveals the missing step for “further re-oxidation (e.g., remove reducing reagent [TCEP] via buffer exchange) of de-capped antibody can promote disulfide bond formation between the de-capped cysteines for LINC formation” (Examiner’s italics).
Written Description/ New Matter
14. Claims 18, 22, 24-25, 27, 29, 33, 37-40, and 47-48 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.
Claims 18, 22, 24-25, 27, 29, 33, 37-40, and 47-48 are amended to recite “a modified preparation” and which phrase finds no support in the original filed specification. The examiner’s search of the specification for each of the limitations does not identify literal support for these limitations. (MPEP 706.03(m) states in part "New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method. See MPEP § 608.04 to § 608.04(c). See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP § 2163.05 for guidance in determining whether the addition of specific percentages or compounds after a broader original disclosure constitutes new matter.”).
Conclusion
15. No claims are allowed.
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNN A. BRISTOL whose telephone number is (571)272-6883. The examiner can normally be reached Mon-Fri 9 AM-5 PM.
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LYNN ANNE BRISTOL
Primary Examiner
Art Unit 1643
/LYNN A BRISTOL/Primary Examiner, Art Unit 1643