The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following in an analysis of claim 1. The preamble state that claim 1 is a method for determining the amount of an insulin analog in a sample by mass spectrometry. Step (a) requires immunocapturing an insulin analog. The one possible question/unclear factor with this step is whether it requires immunocapturing a single analog or as long as one analog is present it doesn’t matter how many insulin analogs are immunocaptured. Since there are no specifics relative to the immunocapturing step and because claim 3 adds further precursor ions, examiner is treating the limitation as covering any type of immunocapturing step. Immunocapturing a specific analog or a more general procedure that captures a plurality of analogs will be treated as meeting the requirement of step (a). Step (b) requires subjecting the immunocaptured insulin analog to an ionization source under conditions suitable to generate one or more insulin analog ions detectable by mass spectrometry, wherein the one or more insulin analog ions comprise a precursor ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5. This step requires the captured insulin analog to be ionized in a manner that one or more ions having a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 to be produced. A question with this step is if it is requiring certain analogs to be present in the sample and/or ionized. Examiner notes that if that is the case, paragraph [00327] of the instant specification appears to contain Table 18 which gives the parent ions for 6 analogs. From that table, it appears that the Levemir, Novalog and Apidra insulin analogs are the only analogs capable of producing the required ions. The fact that the one or more analog ions comprise a precursor ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 means that ions other than these ions can be produced from the immunocaptured analog (for example see claim 3). This appears to include the possibility that more than one analog may be immunocaptured from the sample and also appears to allow for production of different multiply charged ions (i.e. 5+ and/or 4+ multiply charged ions) in the ionization source. Relative to the “precursor ion” language in step (b), a precursor implies that there is a subsequent product ion created from the precursor. Since there is no product ion being claimed, the claim is being treated as not requiring the formation of product ions. For examination purposes, step (b) will be treated as requiring the immunocaptured insulin analog(s) to be subjected to an ionization source that produces one or more insulin analog ions that can include multiply charged ions from the 4+, 5+ and/or 6+ states as long as the required ions are produced. In other words step (b) requires one or more of the Levemir, Novalog and Apidra insulin analogs to be immunocaptured in step (a). Step (c) requires determining an amount of the one or more insulin analog ions by mass spectrometry. Examiner notes that this step does not require the amount of any specific insulin analog ion to be determined. As a result it covers determining an amount of any of the insulin analog ion produced in step (b) (i.e., the required precursor ions or any other ion present after the subjecting step with or without the formation of product ions). This would include multiply charged ions from the 4+, 5+ and/or 6+ states as well as the precursor ions with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 or a product ion from one or more of the precursor ions. Thus, as long as there is evidence that a precursor ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 would have been produced when immunocaptured insulin analogs are ionized, determining the amount of any single and/or combination of the ions produced in the ionization source meets the requirement of step (c).
With respect to new claim 24, the above analysis of claim 1 applies. The difference is that the claim no longer requires the immunocapturing step so that any purification method such as liquid-liquid extraction and/or solid-phase extraction are also covered by the claim. The requirement that the amount of the one or more insulin analog ions is correlated with the amount of the insulin analog in the sample is being treated as inherently met if the amount of the insulin analog is determined from the one or more insulin analog ions.
With respect to new claim 25, the above analysis of claim 1 applies. One difference is that that the claim no longer requires the immunocapturing step so that any purification method such as liquid-liquid extraction and/or solid-phase extraction are also covered by the claim. A second difference is that fragment ions with a mass-to-charge ratio (m/z) selected from 1179.0 ± 0.5, 454.4 ± 0.5, 660.8 ± 0.5, 346.2 ± 0.5, 328.2 ± 0.5, or 315.2 ± 0.5 are being claimed without a precursor ion being claimed from which the fragment ions are derived. A gain from instant paragraph [00327]/Table 18, the above fragment ions are derived from the Iantus analog (1179.0 ± 0.5), the Levemir analog (454.4 ± 0.5), the Novalog analog (660.8 ± 0.5), the Humalog analog (346.2 ± 0.5 or 328.2 ± 0.5) or the Bov analog (315.2 ± 0.5). Thus the claim is being treated as requiring one or more of these analog nee to be present after step (a). In this case the claim is additionally being treated as covering the production of fragment ions either directly or through the production of a precursor ion which is subsequently fragmented. The requirement that the amount of the one or more insulin analog ions is correlated with the amount of the insulin analog in the sample is being treated as inherently met if the amount of the insulin analog is determined from the one or more insulin analog ions.
If this is not what applicant was attempting to claim, appropriate changes should be made to clearly define the methods that applicant is claiming.
Claims 1-16 and 18-25 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. With respect to claims 1and 24, as noted above, the claim includes the requirement that “the one or more insulin analog ions comprise a precursor ion” (emphasis added). It is not clear if applicant was intending to require the formation of a fragment/product ion from the use of the “precursor ion” language or of the “precursor ion” is simply a name that applicant chose to call the ions formed in the subjecting step. As noted above, since there is not a specific requirement to form fragment/product ions, step (b) is being treated as covering formation of the required ions with or without the subsequent formation of fragment/product ions from the one or more precursor ions. With respect to claim 2, since claim 1 requires the production of specific precursor ions that are not generic to all of the claimed analogs, it is not clear if the scope of the claim needs to be adjusted to the specific analogs related to the specific precursor ions or changes to reflect the fact that the specific precursor ions of claim 1 require the presence of specific analogs and the analogs not related to the specific precursor analogs are additional analogs that may be present in the sample. With respect to claim 12, it is not clear whether this step comes before or after the immunocapture step or if the step is intended to replace the immunocapture step. With respect to claim 25, A fragment ion implies that a precursor ion has been fragmented. It is not clear if applicant is attempting to require some form of fragmentation process such as tandem mass spectroscopy or if applicant intends to cover all fragmentation processes. For examination purposes the claim is being treated as covering all fragmentation processes. All other claims depend from one or more of the above claims and fail to correct the problem of the parent claim.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5-8, 12-14, 16, 18-21 and 24 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Peterman (Proteomics 2014). In the paper Peterman teaches that the detection and quantification of insulin and its therapeutic analogs is important for medical, sports doping, and forensic applications. Synthetic variants contain slight sequence variations to affect bioavailability. To reduce sample handling bias, a universal extraction method is required for simultaneous extraction of endogenous and variant insulins with subsequent targeted quantification by LC-MS. A mass spectrometric immunoassay (MSIA), a multiplexed assay for intact insulin and its analogues that couples immunoenrichment with high resolution and accurate mass (HR/AM) spectrometric detection across the clinical range is presented in this report. The assay is sensitive, selective, semi-automated and can potentially be applied to detect new insulin isoforms allowing their further incorporation into second or third generation assays. With specific reference to claim 1, Peterman teaches a method for determining the amount of an insulin analog in a sample by mass spectrometry, by a) immunocapturing an insulin analog (immunoaffinity retrieval described in section 2.3); b) subjecting the immunocaptured insulin analog to an ionization source under conditions suitable to generate one or more insulin analog ions detectable by mass spectrometry, wherein the one or more insulin analog ions comprise a precursor ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 (see section 2.4: LC-MS/MS, section 2.5: Data Analysis, to “provide additional levels of qualitative analysis, the three most abundant precursor charge states per insulin variant were used as well as the six most abundant isotopes per charge state.", Section 3.1: LC-MS Qual/Quan data extraction strategies using HR/AM MS, the analysis software co-added 6 peaks [area under curve (AUC) values] from each of the "three primary precursor charge states, the +4, +5 and +6 charge states, for detection and quantitation to increase signal without significantly increasing noise. This means that positive electrospray ionization produced measurable ions from each of the +4, +5 and +6 charge states for each of the insulins measured. Figure 2 shows the detection and verification scheme for 60 pM Humulin S (R) extracted from plasma. The Pinpoint software utilizes theoretical isotopic m/z values for the top six isotopes per precursor charge state for data extraction, verification, and quantification. Figure 2A shows the overlaid extracted ion chromatogram (XIC) profile for the 18 different m/z values representing three different precursor charge states. Relevant to the instant claims are the values around m/z of 968 and 969 shown in figure 2B for the +6 state. Since this was does for each of the analogs, as shown by figure 3, at least the +6 state of the Apidra analog would have produced one or mor ions meeting the requirement of one or more ions of the required m/z.); and c) determining the amount of one or more insulin analog ions by mass spectrometry (see at least the abstract, section 2.5 and section 3.2). With respect to claim 2 see the insulin analogues listed in section 2.1. With respect to claim 3, see the m/z ratios given in figure 2A, 2B, 4A, 4B and 7. With respect to claim 5 see the article title. With respect to claims 6 and 17-18 see the first paragraph of section 3.1 (intact human insulin ionizes under positive electrospray conditions). With respect to claims 7-8 see the first paragraph of section 2.4 (each sample was separated using a linear gradient (10–50% in ten minutes) composed of (A) 0.1% formic acid in water and (B) 0.1% formic acid in MeCN). With respect to claims 12-14 and 16 see the abstract and section 2.4 (quantification by LC-MS with high resolution and accurate mass (HR/AM) spectrometric detection). With respect to claims 19-21 see section 2.1 (Immunoaffinity pipette tips (MSIA D.A.R.Ts -- Disposable Automated Research Tips) derivatized with mouse antihuman insulin antibody). With respect to claim 24, since the claim is generally broader than claim 1, any reference that anticipates claim 1 will anticipate claim 24.
Claims 1-7, 12-14, 16, 18-21 and 24 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Hess (Analytical and Bioanalytical Chemistry 2012) in view of the teachings of Peterman as described above. In the paper Hess teaches simultaneous determination and validated quantification of human insulin and its synthetic analogues in human blood serum by immunoaffinity purification and liquid chromatography-mass spectrometry. A procedure was developed for the identification and quantification of human insulin and different long-acting as well as short-acting synthetic insulins in human blood serum specimens. After an immunoaffinity purification step and separation by liquid chromatography, the insulins were characterized by their five- or six-fold protonated molecule ions and diagnostic product ions. As described above, Peterman clearly teaches that electrospray ionization would have produced one or more insulin analog ions from each of the +4, +5 and +6 states for each of the analogs. With specific reference to claim 1, Hess teaches a method for determining the amount of an insulin analog in a sample by mass spectrometry, by a) immunocapturing an insulin analog (see the sample preparation section on page 1814); b) subjecting the immunocaptured insulin analog to an ionization source under conditions suitable to generate one or more insulin analog ions detectable by mass spectrometry, wherein the one or more insulin analog ions comprise a precursor ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 (see the paragraph bridging pages 1814 and 1815, the fact that Hess used at least one insulin analog ion from the 6-fold protonated molecular ions and Peterman teaches that electrospray ionization produced one or more insulin analog ions from each of the +4, +5 and +6 states for each of the analogs combined with the presence of the Levemir/detemir the Apidra/glulisine analogs means that the specifically claimed insulin analog ions would have been produced); and c) determining the amount of one or more insulin analog ions by mass spectrometry (see at least paragraph bridging pages 1814 and 1815). With respect to claim 2 see the insulin analogues listed in the paragraph bridging the columns of page 1814. With respect to claims 3-4 see the precursor and product ions listed in table 1. With respect to claim 5 see the article title. With respect to claims 6 and 17-18 see the paragraph bridging pages 1814-1815 (molecules were ionized by electrospray ionization in positive-ion mode). With respect to claim 7 see the paragraph bridging pages 1814-1815 (separation was carried out with mobile phases consisting of 0.2 % acetic acid with 0.01 % trifluoroacetic acid (TFA) (phase A) and 0.04 % acetic acid and 0.002 % TFA in acetonitrile (phase B)). With respect to claims 12-14 and 16 see the abstract and section 2.4 (quantification by LC-MS with high resolution and accurate mass (HR/AM) spectrometric detection). With respect to claims 19-21 see section 2.1 (Immunoaffinity pipette tips (MSIA D.A.R.Ts -- Disposable Automated Research Tips) derivatized with mouse antihuman insulin antibody). With respect to claim 24, since the claim is generally broader than claim 1, any reference that anticipates claim 1 will anticipate claim 24.
Claims 1-3, 5-8, 12-16 and 18-24 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Thomas (Methods 2012, hereinafter called Thomas ‘12) in view of the teachings of Peterman as described above. In the paper Thomas ‘12 teaches hyphenated purification and enrichment steps prior to mass spectrometric detection of insulin. Immunoaffinity purification in combination with nano-scale liquid chromatography coupled to high resolution/high accuracy mass spectrometry was found to have the potential of providing the necessary sensitivity and unambiguous specificity to produce reliable results. With the presented methodology 12 prohibited peptides (porcine insulin, Novolog, Apidra, Lantus DesB30–32 metabolite, Humalog and human insulin, Synacthen (synthetic ACTH analogue), luteinizing hormone-releasing hormone (LH-RH), growth hormone releasing hormone (GH-RH(1–29)) and CJC-1295 (GH-RH analogue), LongR3-IGF-1 and IFG-1) were simultaneously purified from plasma/serum or urine. With limits of detection for each target compound ranging in the low pg/mL level (urine), the method enables the determination of urinary peptides at physiologically relevant concentrations. For each class of peptides an appropriate antibody and a respective internal standard was implemented ensuring robust analysis conditions. As described above, Peterman clearly teaches that electrospray ionization would have produced one or more insulin analog ions from each of the +4, +5 and +6 states for each of the analogs. With respect to claim 1 Thomas ‘12 teaches a method for determining the amount of an insulin analog in a sample by mass spectrometry, by a) immunocapturing an insulin analog (see the abstract and section 2.6); b) subjecting the immunocaptured insulin analog to an ionization source under conditions suitable to generate one or more insulin analog ions detectable by mass spectrometry, wherein the one or more insulin analog ions comprise a precursor ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 (see section 2.7 in combination the Peterman teaching noted above and the fact that the Novalog and Apidra analogs are present points to the presence of the required ions in the ionized sample); and c) determining the amount of one or more insulin analog ions by mass spectrometry (see at least paragraph bridging the columns of page 234 -- for quantitative data interpretation). With respect to claim 2 see the insulin analogues listed in the abstract and Table 3. With respect to claim 3 see the precursor listed in table 2. With respect to claim 5 see section 2.5. With respect to claims 6 and 17-18 see the second paragraph on page 231 in combination with sections 2.7 and 2.8 ((nano-UHPLC coupled to nano-electrospray ionization, a nano-UPLC system and employing positive ionization). With respect to claims 7-8 see the last paragraph of section 2.7 (The aqueous solvent (A) consisted of a mixture of 0.1% of formic acid in water, and the organic phase (B) was acetonitrile). With respect to claims 12-14 and 16 see the see the second paragraph on page 231 (ultra-high performance liquid chromatography (UHPLC) and high resolution/high accuracy mass spectrometry (HRMS)). With respect to claim 15, see section 2.4 -- solid phase extraction. With respect to claims 19-23 see section 2.6 and figure 1 and the paragraph bridging pages 233-234 (antibody-coated magnetic beads and a combination of anti-mouse-IgG, anti-rabbit-IgG and protein A coated beads was found to yield best results for the selected peptide mixture). With respect to claim 24, since the claim is generally broader than claim 1, any reference that anticipates claim 1 will anticipate claim 24.
Claims 11 is rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Thomas ’12 in view of Peterman as applied to claim 1 above and further in view of Watkins (Journal of Chromatography A 1999). Section 204 of Thomas teaches that the solid phase extraction with a stationary phase that enables desalting and concentration with high recovery of the peptides is advantageous. Thomas does not teach that the sample is delipidated prior to quantitation by mass spectrometry. In the paper Watkins teaches a new method for the delipidation of human serum lipoproteins involving the use of a reversed-phase C solid-phase 18 extraction (SPE) cartridge. This method was compared with two other methods of lipoprotein delipidation (the conventional delipidation method using methanol–ether liquid–liquid extraction and (2) a two-step method, dialysis of the HDL fraction followed by methanol delipidation). The SPE method of delipidation produces a higher and more reproducible protein yield than the conventional liquid–liquid methanol–diethyl ether delipidation technique. Furthermore, the SPE method implements a fast, sequential, desalting and delipidation of the lipoproteins for subsequent mass spectrometric analysis providing high quality spectra. In other words Watkins teaches that the SPE method of Thomas constitutes a delipidation step anticipating claim 11.
Claims 24-25 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Chambers (Analytical Chemistry 2014, newly cited and applied). In the paper Chambers teaches a multidimensional method for the simultaneous, direct quantification of intact human insulin and five insulin analogs in human plasma. Figure 1 shows the stru tures of the different insulins inculing the following analogs: Lantus (insulin glargine), Apidra (insulin glulisine), Levemir (insulin detemir), NovoLog (insulin aspart) and Humalog (insulin lispro). The method uses a mixed-mode SPE and a multidimensional LC method including a solid-core particle column containing an anion exchange stationary phase. Matrix factors for all analogs were calculated in 6 sources of human plasma and CVs of the matrix factors were <15% in all cases supporting the selectivity of the method, while achieving LLOQs of 50−200 pg/mL (1.4−5.6 μIU/mL) for each insulin from 250 μL of human plasma. With respect to claims 24 and 25, Chambers teaches a method for determining the amount of an insulin analog in a sample by mass spectrometry (see at least the title), the method comprising: (a) purifying the insulin analog from the sample (see the "Protein Precipitation (PPT) Pretreatment" and "Solid-Phase Extraction (SPE)" paragraphs on pages 696-697); subjecting the purified insulin analog to an ionization source under conditions suitable to generate one or more insulin analog ions detectable by mass spectrometry, wherein the one or more insulin analog ions comprise a precursor ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 or a fragment ion with a mass-to-charge ratio (m/z) selected from 1179.0 ± 0.5, 454.4 ± 0.5, 660.8 ± 0.5, 346.2 ± 0.5, 328.2 ± 0.5, or 315.2 ± 0.5 (see the "Mass Spectrometry and Software" paragraph on page 697 and the MRM transitions of Table 1 teaching a precursor ion at an m/z of 971.8 and fragment ions at an m/z of 1179, 454.4, 660.8 and 346.2); and (c) determining an amount of the one or more insulin analog ions by mass spectrometry, wherein the amount of the one or more insulin analog ions is correlated with the amount of the insulin analog in the sample (see at least the title, the "Mass Spectrometry and Software" paragraph on page 697 and Table 1).
Claims 1-8, 12-14, 16 and 18-25 is rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Thomas (Drug Testing and Analysis 2014, newly cited and applied and hereinafter called Thomas ’14) in view of peterman as described above. In the paper Thomas ’14 teaches the determination of human insulin and its analogues in human blood using liquid chromatography coupled to ion mobility mass spectrometry (LC-IM-MS). The qualitative and quantitative determination of insulin from human blood samples is an emerging topic in doping controls as well as in other related disciplines (e.g. forensics). Beside the therapeutic use, insulin represents a prohibited, performance enhancing substance in sports drug testing. In both cases accurate, sensitive, specific, and unambiguous determination of the target peptide is of the utmost importance. The challenges concerning identifying insulins in blood by liquid chromatography coupled to ion mobility mass spectrometry (LC-IM-MS) are detecting the basal concentrations of approximately 0.2 ng/mL and covering the hyperinsulinaemic clamps at >3 ng/mL simultaneously using up to 200 μL of plasma or serum. This is achieved by immunoaffinity purification of the insulins with magnetic beads and subsequent separation by micro-scale liquid chromatography coupled to ion mobility/high resolution mass spectrometry. The method includes human insulin as well as the synthetic or animal analogues insulin aspart, glulisine, glargine, detemir, lispro, bovine, and porcine insulin. The method validation shows reliable results considering specificity, limit of detection (0.2ng/mL except for detemir: 0.8 ng/mL), limit of quantification (0.5ng/mL for human insulin), precision (CV<20%), linearity (r>0.99), recovery, accuracy (>90%), robustness (plasma/serum), and ion suppression. For quantification of human insulin a labelled internal standard ([[2H10]-LeuB6,B11,B15,B17] human Insulin) is introduced. By means of the additional ion mobility separation of the different analogues, the chromatographic run time is shortened to 8 min without losing specificity. As proof-of-concept, the procedure was successfully applied to different blood specimens from diabetic patients receiving recombinant synthetic analogues. As described above, Peterman clearly teaches that electrospray ionization would have produced one or more insulin analog ions from each of the +4, +5 and +6 states for each of the analogs. With respect to claims 1, 24 and 25, Thomas '14 teaches a method for determining the amount of an insulin analog in a sample by mass spectrometry (see at least the title, abstract, table 1 ), the method comprising: (a) immuno extracting (purifying) the insulin analog from the sample (see at least the abstract and the "sample preparation" paragraph on page 1127 and the mass spectrometry); subjecting the purified insulin analog to an ionization source under conditions suitable to generate one or more insulin analog ions detectable by mass spectrometry, wherein the one or more insulin analog ions comprise a precursor ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 or a fragment ion with a mass-to-charge ratio (m/z) selected from 1179.0 ± 0.5, 454.4 ± 0.5, 660.8 ± 0.5, 346.2 ± 0.5, 328.2 ± 0.5, or 315.2 ± 0.5 (see at least the "Ion mobility - mass spectrometry" paragraph on page 1127 and the "Mass spectrometry" paragraph on pages 1129-1130 teaching fragment ions (diagnostic product ions) at an m/z of 315.15, 454.36 and 346.16 in combination the Peterman teaching noted above and the fact that the aspart (Novolog), glulisine (Apidra) and detemir (Levemir) analogs are present points to the presence of the required precursor ions in the ionized sample); and (c) determining an amount of the one or more insulin analog ions by mass spectrometry, wherein the amount of the one or more insulin analog ions is correlated with the amount of the insulin analog in the sample (see at least the title, the "Ion mobility - mass spectrometry" paragraph on page 1127 and Tables 1 and 2). With respect to claim 2 see the insulin analogues listed in Tables 1-2. With respect to claim 3 see the precursor ions listed in table 1. With respect to claim 4, see the diagnostic product ions listed in Table 1. With respect to claim 5 see the “Blood specimens” paragraph on page 1126. With respect to claims 6 and 18 see the “Ion mobility – mass spectrometry” paragraph on page 1127 in combination with the ”Liquid chromatography (LC)” paragraph on page 1127 ((AQUITY nanoflow UPLC coupled to nano-electrospray ionization, positive ion mobility mode). With respect to claims 7-8 see the ”Liquid chromatography (LC)” paragraph on page 1127 (The aqueous solvent (A) consisted of a mixture of 0.1% of formic acid in water, and the organic phase (B) was acetonitrile). With respect to claims 12-14 and 16 see at least the "Ion mobility - mass spectrometry" paragraph on page 1127 and the "Mass spectrometry" paragraph on pages 1129-1130 (ultra-high performance liquid chromatography (UHPLC) and high resolution/high accuracy mass spectrometry (HRMS)). With respect to claims 19-23 see the “Chemicals and reagents” paragraph on page 1126 (paramagnetic secondary antibody-coated (anti-mouse IgG) beads)).
Claims 1-4, 6-7, 12-14, 16, 18-21 and 24-25 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Thevis (Analytical Chemistry 2006, previously cited and newly applied) in view of the Peterman teachings as described above. In the paper Thevis teaches doping control analysis of intact rapid-acting insulin analogues in human urine by liquid chromatography-tandem mass spectrometry. Insulin and related synthetic therapeutics have been prohibited by the World Anti-Doping Agency for athletes demonstrably not suffering from diabetes mellitus. The primary specimen for doping controls has been urine, but the renal excretion of intact human insulin as well as synthetic analogues such as the rapid-acting products Humalog LisPro, Novolog Aspart, and Apidra Glulisine has been reported negligible owing to metabolic degradation. Nevertheless, employing solid-phase extraction in combination with immunoaffinity purification followed by a top-down sequencing-based mass spectrometric approach, an assay was established allowing the identification of three intact rapid-acting synthetic insulins in doping control urine samples. A volume of 25 mL of urine was concentrated, insulin analogues were isolated from the concentrate by immunoaffinity chromatography, and the eluate was analyzed using microbore liquid chromatography/tandem mass spectrometry. Characteristic product ion spectra obtained from 5-fold protonated intact analytes as well as isolated insulin B-chains allowed the unambiguous identification of target analytes with detection limits of 0.05 ng/mL (9 fmol/mL). Moreover, assay validation demonstrated recoveries between 72 and 80% for Humalog LisPro, Novolog Aspart, and Apidra Glulisine, and assay precisions ranged from 9 to 16%. A reliable tool is provided that allows the qualitative determination of rapid-acting insulins in urine specimens collected for sports drug testing. As described above, Peterman clearly teaches that electrospray ionization would have produced one or more insulin analog ions from each of the +4, +5 and +6 states for each of the analogs. With respect to claims 1, 24 and 25, Thevis teaches a method for determining the amount of an insulin analog in a sample by mass spectrometry (see at least the title and abstract), the method comprising: (a) purifying the insulin analog from the sample using a solid-phase extraction step in combination with an immunocapture step (see the abstract, the "Materials and Chemicals" paragraph on pages 1898-1899 and the "Sample Preparation" paragraph on page 1899); subjecting the purified insulin analog to an ionization source under conditions suitable to generate one or more insulin analog ions detectable by mass spectrometry, wherein the one or more insulin analog ions comprise a precursor ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 or a fragment ion with a mass-to-charge ratio (m/z) selected from 1179.0 ± 0.5, 454.4 ± 0.5, 660.8 ± 0.5, 346.2 ± 0.5, 328.2 ± 0.5, or 315.2 ± 0.5 (see the "Liquid Chromatography-Tandem Mass Spectrometry" paragraph on page 1899, the paragraph bridging pages 1900-1901 teaching that the Apidra yielded product ions at m/z 346, 328, and 227 in combination the Peterman teaching noted above and the fact that the Novolog Aspart, and Apidra Glulisine analogs are present points to the presence of the required precursor ions in the ionized sample); and (c) determining an amount of the one or more insulin analog ions by mass spectrometry, wherein the amount of the one or more insulin analog ions is correlated with the amount of the insulin analog in the sample (see at least the title and abstract). With respect to claim 2 see the insulin analogues described in figure 1. With respect to claim 3 see the precursor ions listed the "Liquid Chromatography-Tandem Mass Spectrometry" paragraph on page 1899. With respect to claim 4, see at least the paragraph bridging pages 1900-1901. With respect to claims 6 and 18 see the "Liquid Chromatography-Tandem Mass Spectrometry" paragraph on page 1899 (the mass spectrometer was operated in positive ion spray mode). With respect to claim 7 see the "Liquid Chromatography-Tandem Mass Spectrometry" paragraph on page 1899 (The mobile phases consisted of 0.5% acetic acid with 0.01% TFA (A) and a mixture of 0.5% acetic acid with 0.01% TFA and acetonitrile (1:4, v/v) (B).). With respect to claims 12-14 and 16 see at least the "Liquid Chromatography-Tandem Mass Spectrometry" paragraph on page 1899 (LC-MS/MS was performed on an Agilent 1100 Series high-performance liquid chromatograph). With respect to claim 15, the purifying comprises subjecting the sample to solid-phase extraction (see at least the abstract and the “Sample Preparation paragraph on page 1899). With respect to claims 19-21 see the “Materials and Chemicals” paragraph on pages 1898-1899 (the anti-insulin immunoaffinity gel (0.5 mL/column, 10 mg of IgG/mL)).
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Peterman or Hess, Thomas ’12, Thomas ’14 or Thevis in view of the peterman teachings as applied to claim 1 above, and further in view of Chen ( Clinical Chemistry 2013). Hess, Peterman, Thevis, Thomas ‘12 or Thomas ‘14 do not teach that the sample is subjected to basic conditions prior to mass spectrometry.
In the paper Chen teaches quantitative analysis of insulin using liquid chromatography–tandem mass spectrometry (LC-MS/MS). The standards and reagents section on page 1350 teaches that a 1.5 mol/L Tris (Trizma) base solution were from Sigma. The sample preparation section which bridges pages 1350-1351 teaches that patient serum was thawed and vortex mixed, and 150 µL was vigorously mixed with 350 µL of basic ethanol (85% ethanol, 15% Tris base) and allowed to incubate for 60 min at -20 °C. The resulting precipitate was pelleted by centrifugation for 10 min at 5200g to produce clarified supernatant which was used to determine insulin. the following two paragraphs on page 1351 describe the solid-phase sample cleanup, liquid chromatography and mass spectral analysis.
It would have been obvious to one of ordinary skill in the art to use the basic ethanol (Trizma) reagent to treat the Hess, Peterman, Thevis, Thomas ‘12 or Thomas ’14 samples as taught by Chen because of its ability to selectively remove undesirable components of the sample for insulin measurement prior to chromatography and mass spectral detection of the insulin as taught by Chen.
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.
Claims 1-16 and 18-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-59 of U.S. Patent No. 10,324,082, claims 1-50 of U.S. Patent No. 11,486,874 or claims 1-6 of U.S. Patent No. 12,372,539 in view of Hess, Peterman, Thevis, Thomas ‘12 or Thomas ‘14 (last 5 as described above). The instant claims are of a broader or similar scope to those in U.S. Patent Nos. 10,324,082, 11,486,874 and 12,372,539 except for the step of immunocapturing an insulin analog. Examiner nots that dependent claims 26-30 of U.S. Patent No. 10,324,082 and claims 27-32 of U.S. Patent No. 11,486,874 are directed toward immunocapturing of insulin.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to ad the immunocapture step of Hess, Thomas or Peterman to the methods of U.S. Patent Nos. Nos. 10,324,082, 11,486,874 and 12,372,539 because of their known ability and use to selectively separate insulin from plasma and/or serum samples prior to quantitative analysis for insulin by mass spectrometry as shown by Hess, Peterman, Thevis, Thomas ‘12 or Thomas ‘14.
Applicant's arguments filed December 12, 2025 have been fully considered but they are not persuasive. In response to the amendments examiner has provided a claim interpretation above to show applicant how the current independent claim language is being interpreted. In this respect, examiner notes that the independent claims require the formation of specific ions, but fail to require that those ions are the ions used to determine the amount of an ion or that that ion is correlated to the concentration of an analog. Thus any precursor and/or fragment ion can be used to meet that requirement of the claims. Based on the interpretation, the previous anticipation rejections have been modified to show that the required ions are produced, new anticipation rejections clearly teaching the required ions have been added and a new rejection based on 35 U.S.C. 112(b) has been added. The arguments are moot with respect to the new rejections.
With respect to the anticipation by Hess, Peterman and Thomas ’12, Peterman clearly teaches that ions of the +4, +5 and +6 states are produced by the electrospray ionization process. From Table 18 of the instant specification the ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 are derived from ionizing the Levemir, Novalog and Apidra analogs. Each of these references is looking at quantifying at least one of these analogs. Thus, if, as Peterman clearly teaches, an ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5 would inherently result from subjecting the analytes to an electrospray ionization source. Thus contrary to the argument that none of these references teach an ion with a mass-to-charge ratio (m/z) of 987.2 ± 0.5 or 971.5 ± 0.5, there is evidence in Peterman that points directly to the creation of these ions in an electrospray ionization source. For that reason the argument is not persuasive for claim 1 and the claims which depend therefrom. With respect to the obviousness-type double-patenting rejections, here again the Hess, Peterman and Thomas ’12 show that there is a desire and/or need to measure the various analogs in addition to human insulin. Thus contrary to the argument of applicant, there is a clear reason to measure analogs of human insulin by a mass spectrometric method as shown by Hess, Peterman and Thomas ’12. For that reason the argument is not persuasive.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited art are the Chambers and Thomas ’14 references applied above.
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/ARLEN SODERQUIST/ Primary Examiner, Art Unit 1797