DETAILED ACTION
Status of the Application
Claims 1-37, 41-43 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A preliminary amendment filed on 10/06/20222 amending claims 1-5, 8-15, 17-30, 33-43 is acknowledged.
A preliminary amendment filed on 07/08/2025 amending claim 42 and cancelling claims 38-40 is acknowledged.
The examination of this case has been assigned to a different examiner in Group Art Unit 1652.
Applicant’s election with traverse of Group I, claims 1-35, directed to a method for preparing a solution containing non-colored proteins comprising a process for separating non-colored proteins from a solution containing non-colored proteins and colored proteins, as submitted in a communication filed on 07/08/2025 is acknowledged.
Applicant’s election with traverse is on the grounds that claims 1-35 (Group I), claims 36-37 (Group II), claim 41 (Group IV), claim 42 (Group V) and claim 43 (VI) share a common technical feature of “a process of separating non-colored proteins from colored proteins from a solution of non-colored and colored proteins, wherein the separation process comprises a step of loading the solution onto an ion-exchange carrier column and collecting a fraction containing the non-colored proteins". However, Butko et al. teaches the separation of non-colored and colored proteins by ion exchange as the common feature, so it does not qualify as a special technical feature under PCT Rule 13.2. The requirement is deemed proper and therefore is made FINAL.
Claims 36-37 and 41-43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/08/2025.
Claims 1-35 are under consideration and are being examined herein.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2020-073753, filed on 04/17/2020. The instant application is a 371 national stage application of PCT/JP2021/015665 filled on 4/16/2021).
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 10/06/2022, 01/24/2023, 05/18/2023, 07/17/2023, 08/17/2023, 09/07/2023, 10/05/2023, 10/17/2023, 11/20/2023, 11/30/2023, 01/09/2024, 02/15/2024, 04/24/2024, 05/24/2024, 06/28/2024, 07/17/2024, 07/29/2024, 12/11/2024, 01/30/2025, 03/17/2025, 03/25/2025, 05/15/2025, 06/26/2025, 07/10/2025, 07/31/2025, 08/29/2025, 10/16/2025, 11/20/2025 and 12/17/2025 are acknowledged. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
Figures 4-8 are objected to under C.F.R. 1.84 and MPEP 608.02 because the right y-axis scaling of the chromatograms includes negative values for parameters that cannot be negative, resulting in an unclear and misleading graphical representation of the data. Applicant is required to submit replacement drawing sheets for Figures 4-8 with the right y-axis rescaled to a non-negative range (starting at zero) that properly reflects the data, along with any necessary label or legend updates. New drawings must be submitted as “Replacement Sheet” per 37 CFR 1.121(d) and comply fully with 37 CFR 1.84 standards for graphs and charts.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to in the recitation of “a step for”. To enhance clarity, the term should be amended to recite “a step of”. Appropriate correction is required.
Claim 1 is objected to in the recitation of “resulting the non-colored… bind to ion-exchange”. To enhance clarity, the term should be amended to recite “resulting in the non-colored… proteins to bind to ion-exchange”. Appropriate correction is required.
Claim 1 is objected to in the recitation of “a step for flowing an elution buffer”. To enhance clarity, the term should be amended to recite “a step of applying an elution buffer”. Appropriate correction is required.
Claim 1 is objected to in the recitation of “to give collected or recovered non-colored proteins”. To enhance clarity, the term should be amended to recite “to obtain or recover non-colored proteins”. Appropriate correction is required.
Claim 2 is objected to in the recitation of "a step for flowing an elution buffer". To enhance clarity, the term should be amended to recite “a step of applying an elution buffer”. Appropriate correction is required.
Claim 2 is objected to in the recitation of “the non-colored proteins do not bind, through the ion-exchange”. To enhance clarity, the term should be amended to recite “the non-colored proteins do not bind and flow through the ion…”. Appropriate correction is required.
Claim 2 is objected to in the recitation of “to give collected or recovered non-colored proteins”. To enhance clarity, the term should be amended to recite “to obtain or recover non-colored proteins”. Appropriate correction is required.
Claim 3 is objected to in the recitation of the Arabic numbering “(1) and (2)”. They should be replaced with roman numerals or letters to avoid confusion with the Arabic numerals used in the claim numbering. Appropriate correction is required.
Claim 9 is objected to in the recitation of “arrange”. To enhance clarity, the term should be amended to recite “a range”. Appropriate correction is required.
Claim 15 is objected to because of the recitation of “MES, Bis-Tris, ADA, PIPES, ACES, MOPSO, BES, MOPS, TES, HEPES, TAPSO, POPSO, HEPSO, EPPS, Tricine, Bicine, TAPS, CHES, CAPSO and CAPS”. Abbreviations unless otherwise obvious and/or commonly used in the art, should not be recited in the claims without at least once reciting the entire phrase for which the abbreviation is used. Appropriate correction is required.
Claim 18 is objected to in the recitation of “CV”. Abbreviations unless otherwise obvious and/or commonly used in the art, should not be recited in the claims without at least once reciting the entire phrase for which the abbreviation is used. Appropriate correction is required.
Claims 20-21 are objected in the recitation of “an electrical conductivity”. To enhance clarity, the term should be amended to recite “the electrical conductivity”. Appropriate correction is required.
Claim 22 is objected in the recitation of “a pH of the equilibrium buffer”. To enhance clarity, the term should be amended to recite “the pH of the equilibrium buffer”. Appropriate correction is required.
Claim 29 is objected to in the recitation of “a protein concentration of the collected”. To enhance the clarity, the term should be amended to recite “the protein concentration of the collected”. Appropriate correction is required.
Claim 30 is objected to in the recitation of “wherein the colored proteins and non-colored proteins are an antibody or antibody fragment thereof”. To enhance clarity, the term should be amended to recite “wherein the colored and non-colored proteins are antibodies or antibody fragments thereof”. Appropriate correction is required.
Claim 31 is objected to in the recitation of “wherein the antibody”. To enhance clarity, the term should be amended to recite “wherein the antibodies are bispecific antibodies”. Appropriate correction is required.
Claim 32 is objected to in the recitation of “bispecific antibody is a bispecific antibody capable”. To enhance the clarity, the term should be amended to recite “bispecific antibodies are bispecific antibodies capable”. Appropriate correction is required.
Claim 33 is objected to as being dependent upon rejected base claim 1 (through claim 30, 31, and 32). However, claim 33 would be allowable if rewritten in independent form, including all of the limitations of claims 1, 30, 31 and 32 from which it ultimately depends, and removing its dependency from a rejected claim. Appropriate correction is required.
Claim 34 is objected to as being dependent upon rejected base claim 1 (through claim 30, 31, 32 and 33). However, claim 34 would be allowable if rewritten in independent form, including all of the limitations of claims 1, 30, 31, 32 and 33 from which it ultimately depends, and removing its dependency from a rejected claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 3, 6-12, 14-29 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.
Claim 3 is indefinite in the recitation of “color concentration of the solution” for the following reasons. While the solution can have a concentration of a particular component, it is unclear as to how one could have a concentration of color, which is a visual perception caused by light. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Correction is required.
Claim 3 is indefinite in the recitation of “determined according to a visual comparison test with a reference standard solution BY5 of color comparison test described in item 2.65 of general tests of the Japanese Pharmacopoeia, 17th edition, is more than that of BY5” for the following reasons. It is unclear as to what is a standard BY5 of a color comparison test. Moreover, it is unclear as to what is item 2.65 of general tests of the Japanese Pharmacopeia, 17th edition and how is this related to the standard BY5. Also, it is unclear as to what is "more than that of BY5". As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Correction is required.
Claim 3 is indefinite in the recitation of “a value calculated by multiplying a ratio of a peak area of fluorescence… by 100 (EM/UV*100 value) is higher than” for the following reasons. It is unclear as to how the fluorescence intensity is related to 100, how 100 is associated with the term in parentheses, and which are the peak areas that one should use to calculate the 6.3 value. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Correction is required.
Claim 3 is indefinite in the recitation of “about 6.3” for the following reasons. The specification does not define the range of “about 6.3”. The term “about” is not defined in the specification, and it is unclear whether this term is intended to include values such as 6.2, 6.4, or some other range. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Claim 3 depends on claim 1 but fails to further limit the subject matter of claim 1 in a clear and definite manner. For examination purposes, claim 3 will be interpreted as a duplicate of claim 1. Correction is required.
Claim 6 & 7 are indefinite under MPEP § 2173.05(u), because trademarks identify source “product or brand”, not what the carrier chemically or structurally is. The use of a trademark in a claim does not clearly define the chemical or structural characteristics of the weak anion exchange carrier, and it is unclear whether the claim is limited to the specific products sold under the trademarks, or to all products having similar properties or composition. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claims. Claims 6 & 7 depend on claim 5 but fail to further limit the subject matter of claim 5 in a clear and definite manner. For examination purposes, claims 6 & 7 are interpreted as duplicates of claim 5. Correction is required.
Claim 8 is indefinite in the recitation of “wherein a total loading amount … is from about 2 to about 200 mg/mL for the following reasons. The term “amount” implies mass. The terms 2 mg/mL and 200 mg/mL are concentrations. Therefore, it is unclear as to how the total amount of proteins could be a concentration. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. For examination purposes, claim 8 is interpreted as a duplicate of claim 1. Correction is required.
Claims 8, 11, 12, 18-22 and 29 are indefinite in the recitation of “from about X to about Y” for the following reasons. The term “about” encompasses a range which includes values which are higher and lower than the recited reference value (e.g., 2 mg/mL, 200 mg/mL). The term “from X to Y” implies a range where X and Y are endpoints. Therefore, in the absence of a clear definition of what is encompassed by the term “about”, the term “from about X to about Y” is unclear and confusing because X and Y are endpoints which are undefined ranges. If the intended limitation is “from X to Y, the claims should be amended accordingly. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claims. Correction is required.
Claim 9 is indefinite in the recitation of “is/are interposed between the same range” for the following reasons. It is not clear what “the same range” refers to or how the isoelectric point(s) must relate to the initial and terminal pH values. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Claim 9 depends on claim 1 but fails to further limit the subject matter in claim 1 in a clear and definite manner. For examination purposes, claim 9 is interpreted as being of substantially the same scope as claim 1 and is treated as a duplicate claim. Correction is required.
Claim 10 is indefinite in the recitation of “wherein the pH gradient descends from the initial pH to the terminal pH” for the following reasons. One cannot determine if the method requires the pH gradient to go from a high pH to a low pH due to the recitation of “descends”. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Correction is required.
Claims 14-18 are indefinite in the recitation of “the elution buffer consists of a combination of the buffer at the initial pH and the buffer at the terminal pH”. It is unclear whether this limitation is intended to define (i) the gradient-forming system in general (i.e., that the pH gradient is generated from two stock buffers adjusted to the initial and terminal pH) or (ii) the composition of the mobile phase at all points during elution. For example, a typical gradient run, the mobile phase composition changes from 100% of the initial pH buffer to 100% of the terminal pH buffer, such that at the beginning or end of the gradient the mobile phase may consist solely of one buffer and 0% of the other. The claim does not make clear whether such conditions, where only one of the two buffers is present, still satisfy the requirement that “the elution buffer is a combination of the buffer at the initial pH and the buffer at the terminal pH.” Claim 14 depends on claim 1 but fails to further limit the subject matter in claim 1 in a clear and definite manner. For examination purposes, claims 14-18 are interpreted as being of substantially the same scope as claim 1 and is treated as a duplicate claim. Claims 15-18 are dependent on claim 14 and therefore incorporate this indefinite limitation, rendering their scope likewise unclear. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claims. Correction is required.
Claim 15 is indefinite in the recitation of “plurality of good buffers” is indefinite for the following reasons. The term “good” is relative term and it is unclear as to how this term further limits the list of buffers recited after the term "group consisting of". For examination purposes, no patentable weight will be given to the term "good". If “good” is for Norman Good’s buffers, the claim should be amended accordingly. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Correction is required.
Claim 16 is indefinite in the recitation of “registered trademark” to identify source “product or brand”, not what the buffer chemically is. The use of a trademark in a claim does not clearly define the chemical composition of the buffers used. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claims. Correction is required.
Claim 16 is indefinite in the recitation of “Buffer B (pH 10.2) … Buffer A (pH 5.6)” for the following reason. One cannot determine if the terms in parathesis are further limiting Buffer B and Buffer A. As written, it is unclear if what is in parentheses is merely exemplary (e.g., the pH of Buffer B may be 10.2). If Buffer A has a pH of 5.6 and Buffer B has a pH of 10.2, the claim should be amended accordingly. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Correction is required.
Claim 17 is indefinite in the recitation of “changing the ratio of the combination of the buffer at the initial pH and the buffer at the terminal pH” for the following reasons. The pH gradient is obtained changing the ratio of buffer at the initial pH and the buffer at the terminal pH. Therefore, it is unclear as to how one could create a pH gradient changing the ratio of the combination of buffers and the buffer at the terminal pH. If the intended limitation is changing the ratio of the combination of buffer at the initial pH and the buffer at the terminal pH, the claim should be amended accordingly. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Correction is required.
Claim 23 is indefinite in the recitation of “wherein the step (ii) further comprises a step for washing the ion-exchange carrier with a washing buffer for the following reasons. It is unclear if this step occurs before or after elution. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Correction is required.
Claims 24-26 are indefinite in the recitation of “color concentration of the collected or recovered fraction” for the following reasons. While a solution can have a concentration of a particular component, it is unclear as to how one could have a concentration of color, which is a visual perception caused by light. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Correction is required.
Claims 24-26 are indefinite in the recitation of "is substantially the same as or lighter than that of BY5/BY6/BY7, according to a visual comparison test with a reference standard solution BY5/BY6/BY7 as set forth in color comparison test of the Japanese Pharmacopoeia" for the following reasons. The terms "substantially the same as" and "lighter than" are relative terms and the claims fail to provide a definition or a standard for ascertaining the requisite degree such that one of ordinary skill in the art would be reasonably apprised of the scope of the invention. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Correction is required.
Claims 24-26 are indefinite in the recitation of "a reference standard solution BY5/BY6/BY7 as set forth in color comparison test of the Japanese Pharmacopoeia" is indefinite because it is unclear as to how the standard solution BY5/BY6/BY7 is related to a color comparison test of the Japanese Pharmacopoeia. How can a standard solution be set forth in a color comparison test? It is unclear as to what a color comparison test of the Japanese Pharmacopoeia is. For examination purposes, claims 24-26 will be interpreted as duplicates of claim 1.
Claims 27 & 28 are indefinite in the recitation of “about 6.3 or less” and “about 4.1 or less”. The specification does not define the range of “about in the recitation of “about 6.3 or less” and “about 4.1 or less” for the following reasons. The term “about” is not defined in the specification, and it is unclear whether this term is intended to include values such as 6.2, 6.4, or some other range and for “about 4.1 or less” it is unclear whether this term is intended to include the values 4.0, 4.2 or a different range. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Claims 27 & 28 depends on claim 3 but fails to further limit the subject matter in claim 3 in a clear and definite manner. For examination purposes, claims 27 & 28 are interpreted as being of substantially the same scope as claim 3 and are treated as duplicates of claim 1. Correction is required.
Claim 29 is indefinite in the recitation of “arbitrary concentration”. The specification does not provide any definition or guidance as to what is meant by “arbitrary” in this context. In the absence of guidance, it is uncertain whether the claim requires that any and all protein concentrations within 20-300 mg/mL are encompassed, or whether only some unspecified subset of concentrations, chosen on an “arbitrary” basis, is intended to fall within the scope of the claim. As a result, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. Claim 29 is dependent on claim 1 but fails to further limit the subject matter in claim 1 in a clear and definite manner. For examination purposes, claim 29 is interpreted as being of substantially the same scope as claim 1 and is treated as a duplicate claim. Correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 35 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 35 is of different scope because it encompasses a variant of the protein in claim 33. Claim 33 already fixes the full heavy-chain amino acid sequences (including constant regions) for the PD-1 specific heavy chain as SEQ ID No: 1-5 and the CD3 specific heavy chain as SEQ ID No: 6. The variants of claim 35 are not encompassed by claim 33. It is unclear what the final heavy-chain sequences are after this substitution, rendering the scope of claim 35 unclear. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 following is a quotation of the appropriate paragraphs of pre-AIA 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 35 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shibayama et al. (WO2021006199A1), published 01/14/2021; cited in the IDS #49, 10/06/2022). Shibayama et al. is a WIPO application effectively filed on 07/05/2019 (via priority to JP-2019-126503), which is before the effective filling date (04/17/2020) of the claimed invention, names different inventors and designates the United States. Accordingly, Shibayama et al. qualifies as prior art under AIA 35 U.S.C. 102(a)(2).
Claim 35 is directed to bispecific antibodies that only have a limitation of the presence of SEQ ID No. 8-19 because the claim does not require the presence of specific fragments of SEQ ID No. 1-7. Claim 35 therefore encompasses bispecific antibodies that are variants of the antibody of claim 33, in which the heavy chain constant region and/or other regions can be modified, so long as SEQ ID No. 8-19 are present in the bispecific antibodies.
Shibayama et al. teaches the first arm of a bispecific antibodies that specifically bind PD-1, that have a heavy chain constant region that consist of one of the amino acid sequences selected from SEQ ID No: 42-47, that are identical to SEQ ID No. 8-13 of the instant application (see claim 36). Shibayama et al., further teaches a second arm that specifically binds CD3, that has a constant region that consists of one of the amino acid sequences from SEQ ID No: 48-53, that are identical to SEQ ID No. 14-19 of the instant application (see claim 37). Because Shibayama et al. discloses bispecific antibodies specific for PD-1 and CD3 that comprise identical sequence to each of SEQ ID No. 8-19, it teaches each and every limitation of claim 35. Therefore, Shibayama et al. anticipates claim 35 as written/interpreted.
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, 3, 8-9, 14-18, and 24-29 are rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. (Anal. Chem 2014) in view of Wang et al. (WO2014078729 A1, published on 05/22/2014).
Butko et al. teaches recombinant antibody drug substances that exhibit a slight yellow-brown color due to Advanced Glycation End products (AGEs). (Abstract). Butko et al. further teaches AGE-modified (colored) antibody species which are enriched in acidic ion-exchange fractions, thereby teaching separation of colored vs non-colored protein populations using ion-exchange chromatography. (Results and Discussion first paragraph). Butko et al. teaches that recombinant antibodies produced in CHO cells often exhibit a slight yellow brown color and that this is undesirable in antibody compositions for therapeutic use because it may indicate the presence of an impurity and a source of heterogeneity (page 9816, right column). Butko et al. does not teach eluting the bound proteins using an elution buffer that forms a pH gradient from the initial pH to a terminal pH, nor does it teach collecting non-colored proteins in a defined pH window during such a gradient.
Wang et al. teaches binding a polypeptide and contaminants to an ion exchange material at an initial pH with a pH gradient between an initial and final pH while collecting fractions in defined pH range so the desired polypeptide is obtained separately from variants or contaminants. Wang et al. further teaches that the polypeptide is an antibody (see pages 2-3, ¶ [0006]-[0007]).
Claims 1, 3, 8-9, 14-18, and 24-29 are directed to a method of obtaining non-colored proteins from a solution containing non-colored proteins and colored proteins by binding the solution onto an ion-exchange carrier column and eluting the proteins using a pH gradient.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the pH gradient ion-exchange method of Wang et al. used to purify antibodies to the antibody mixtures described in Butko et al., thus separating the unmodified antibody fraction (non-colored) from AGE-modified (colored) species. A person of ordinary skill in the art is motivated to apply a pH gradient ion-exchange chromatography to obtain separation of non-colored proteins from colored proteins. One of ordinary skill in the art has a reasonable expectation of success of separating the non-colored proteins from the colored proteins and recovering non-colored proteins from the ion-exchange carrier column because methods of using pH gradient ion-exchange chromatography to separate proteins from contaminants or variants is known in the art and has been successfully used by Wang et al. with other proteins such as antibodies. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. (Anal. Chem 2014) in view of Kim et al. (US10053489 B2, published 08/21/2018).
As discussed above, Butko et al. (Anal. Chem. 2014), teaches antibodies that have AGE-modifications (colored), which can be separated from antibodies without the modification (non-colored) using ion-exchange chromatography (Abstract and Results and Discussion).
Butko et al. does not teach collecting the flow-through (antibody) while binding the impurities to the ion-exchange carrier.
Kim et al. teaches using a neutral pH buffer to allow for the antibody to pass through an anion exchange column without binding and the impurities with low isoelectric points are absorbed onto the column (see Column 6, line 61-Column 7, line 14).
Claim 2 is directed to a method of obtaining non-colored proteins from a solution containing non-colored proteins and colored proteins by loading the solution onto an ion-exchange carrier column with an equilibrium buffer that allows the colored proteins to bind to the column and the non-colored proteins flowthrough without binding and are collected.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the separation of Butko et al. using an anion exchange flow-through polishing configuration as taught by Kim et al. to separate colored vs non-colored protein from samples. A person of ordinary skill in the art is motivated to use ion-exchange flow-through polishing and selection for the benefit of retaining the impurities on the column while passing protein of interest through, allowing the collection of purified protein. One of ordinary skill in the art has a reasonable expectation of success at separating the non-colored proteins from the colored proteins and recovering non-colored proteins from the ion-exchange carrier column because Ion exchange flow-through polishing is known in the art and has been successfully used by Kim et al. to purify antibodies. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. in view of Wang et al. (WO2014078729 A1, published on 05/22/2014) and further in view of Kim et al. (US10053489 B2, published 08/21/2018).
The teachings of Butko et al. and Wang et al. are discussed above. Butko et al. and Wang et al. do not teach using an anion-exchange carrier to purify non-colored proteins from colored proteins. Kim et al. teaches using an anion-exchange carrier column to purify antibodies (see Column 6, line 61-Column 7, line 14).
Claim 4 is directed to the composition of claim 1 were the ion-exchange carrier is an anion-exchange carrier.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ an anion exchange carrier in the method of claim 1 to obtain predictable purification and separation of charged variants, as taught by Kim et al. A person of ordinary skill in the art is motivated to use an anion-exchange chromatography column to separate colored proteins and non-colored proteins that have a different net charge. One of ordinary skill in the art has a reasonable expectation of success at using anion-exchange to separate colored and non-colored proteins because anion-exchange would be able to separate the proteins based on net charge and has been used successfully in Kim et al. to separate antibodies from impurities. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. (Anal. Chem 2014) in view of Wang et al. (WO2014078729 A1, published on 05/22/2014) and further in view of Kim et al. (US10053489 B2, published 08/21/2018) and Giese et al. (US20190256556 A1, published 08/22/2019).
The teachings of Butko et al., Wang et al., and Kim et al. are discussed above. Butko et al., Wang et al., and Kim et al. do not teach using weak anion-exchange carriers or multi-mode anion-exchange carriers. Giese et al. further teaches using different anion exchange resins such as DEAE-Sepharose, which is a weak anion exchange carrier (see page 16, ¶ [150]), to purify antibodies. It further teaches using multi-mode anion exchange to purify antibodies (see page 54, ¶ [0486]).
Claims 5-7 are directed to the composition of claim 4 described above, wherein the anion-exchange carrier is a weak anion-exchange carrier or a multi-mode anion-exchange carrier.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ using either a weak anion exchange carrier or multi-mode anion exchange carrier in the method of claim 4 which is dependent on claim 1 to obtain separation of non-colored proteins from colored proteins. A person of ordinary skill in the art is motivated to use a weak anion exchange carrier to separate non-colored proteins and colored proteins by net charge or a multi-mode carrier to separate non-colored proteins and colored proteins by net charge and an additional interaction such as a hydrophobic moiety or hydrogen bonding moiety for impurity challenges that are hard to achieve One of ordinary skill in the art has a reasonable expectation of success at separating non-colored proteins from colored proteins using weak anion exchange carriers or multi-mode anion exchange carriers because these types on anion exchange resins have been known in the art as evidenced by Giese et al. to be able to purify proteins such as antibodies that commonly have modifications that cause the coloration of the protein solution. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. (Anal. Chem 2014) in view of Wang et al. (WO2014078729 A1, published on 05/22/2014) in further view of Cytiva, Sepharose Fast Flow Ion Exchange Resins and Prepacked Column Formats (2020).
The teachings of Butko et al. and Wang et al. are discussed above. Butko et al. and Wang et al. do not teach a total protein loading onto an ion exchange column in the range of 2 to about 200 mg/mL. Cytiva, Sepharose Fast Flow Ion Exchange Resins and Prepacked Column Formats (2020), teaches their ion exchange resins have a dynamic binding capacity in the ranges of about 5 mg (thyroglobulin, ANX Sepharose 4 Fast Flow) to 110 mg (HSA, DEAE Sepharose Fast Flow) per mL of resin (see Table 1. Characteristics of Sepharose Fast Flow ion exchangers, page 2).
Claim 8 is directed to the composition of claim 1 as described above, wherein the total amount of non-colored and colored protein that is loaded onto the ion-exchange carrier column is in a range of about 2 mg/mL to 200 mg/mL.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to load the non-colored and colored protein solution of claim 1 onto an ion-exchange column at a concentration range of 2 to 200 mg/mL because the range is within the binding capacity of most ion exchange resins as evidenced by Cytiva, Sepharose Fast Flow Ion Exchange Resins and Prepacked Column Formats (2020). A person of ordinary skill in the art is motivated to load the total amount of non-colored and colored proteins within the claimed range, because ion-exchange chromatography practice focuses on optimizing total protein mass applied per mL of resin to balance binding capacity, yield, and resolution. Controlling sample load is a routine design variable in ion-exchange chromatography. One of ordinary skill in the art has a reasonable expectation of success in loading a mixture of non-colored and colored proteins onto an ion-exchange column a total protein concentration within the claimed range, because ion-exchange resin manuals as evidenced by Cytiva, Sepharose Fast Flow Ion Exchange Resins and Prepacked Column Formats (2020) teach the range as being a routine range for the binding capacity of ion-exchange resins, so adjusting the load to any value with the claimed range would be expected to yield predictable separation and binding behavior. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. (Anal. Chem 2014) in view of Wang et al. (WO2014078729 A1, published on 05/22/2014).
The teachings of Butko et al. and Wang et al. are discussed above. Butko et al. does not teach using either a linear or step-wise pH gradient descends from the initial pH which is at least 1.0 higher than the terminal pH within the pH range of 11.0 to 7.0 and the terminal pH is within the range of 4.0 to 8.2. Wang et al. further teaches a pH gradient that decreases from pH 8 to pH 5. (see page 4, ¶ [0012]) and the pH gradient being either a step or linear gradient.
Claims 10-13 are directed to the composition of claim 1 as described above, wherein either a linear or step-wise pH gradient descends from the initial pH which is at least 1.0 higher than the terminal pH within the pH range of 11.0 to 7.0 and the terminal pH is within the range of 4.0 to 8.2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply a step-wise or linear pH gradient that descends from the initial pH to the terminal pH as taught in Wang et al. to the antibody mixtures described in Butko et al. to separate the unmodified antibody fraction (non-colored) from AGE-modified (colored) species. A person of ordinary skill in the art is motivated to use a step-wise or linear pH gradient for the benefit of separating the non-colored proteins from colored proteins. One of ordinary skill in the art has a reasonable expectation of success at implementing a linear or step-wise pH gradient because Wang et al. taught an initial pH from about pH 8.0 which falls into the arbitrary pH range of 11.0 to about 7.0 and to about 5.0 for the terminal pH is within the range of 4.0 to 8.2. The initial pH is at least 1.0 higher than the terminal pH. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. (Anal. Chem 2014) in view of Wang et al. (WO2014078729 A1, published on 05/22/2014) in further view of Cytiva, Sepharose Fast Flow Ion Exchange Resins and Prepacked Column Formats (2020).
The teachings of Butko et al. and Wang et al. are discussed above. Butko et al. nor Wang et al. expressly teaches the use of linear velocity in the range of 100-800 cm/h for ion-exchange chromatography. Cytiva, Sepharose Fast Flow Ion Exchange Resins and Prepacked Column Formats (2020), teaches that typical linear flow velocities for ion-exchange columns are in the range of 300-600 cm/h, with some systems operating as low as 100 cm/h and up to 700 cm/h depending on resin and column design.
Claim 19 is directed to the method described in claim 1, wherein the linear flow rate of the elution buffer is from 100 to 800 cm/h.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a suitable flow rate, including one corresponding to a linear flow rate within about 100 to about 800 cm/h or volumetric flow (mL/min) given their relationship of describing the same physical thing (flow) and can be routinely converted to mL/min using the columns cross-sectional area to the composition of Wang et al. One of ordinary skill in the art has a reasonable expectation of success at separating non-colored proteins from colored proteins using a linear flow rate in the range from about 100 to about 800 cm/h because these are commonly used flow rates for high-performance/process ion-exchange media as taught by Cytiva, Sepharose Fast Flow Ion Exchange Resins and Prepacked Column Formats (2020). Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. (Anal. Chem 2014) in view of Wang et al. (WO2014078729 A1, published on 05/22/2014).
The teachings of Butko et al. and Wang et al. are discussed above. Butko et al. does not teach the equilibrium buffer and/or elution buffer having an electrical conductivity in the range of 1 to about 20 mS/cm. Wang et al. further teaches that the mobile phase used for equilibrium and/or elution in ion-exchange chromatography has an electrical conductivity in the range of from about 1 to about 20 mS/cm (see page 32, ¶ [0124]).
Claim 20 is directed to the method described in claim 1, wherein the electrical conductivity of the equilibrium or elution buffer is in a range from about 1 to about 20 mS/cm.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an equilibrium and/or elution buffer that have an electrical conductivity within the range of 1 to 20 mS/cm taught in Wang et al. to the to the antibody mixtures described in Butko et al. A person of ordinary skill in the art is motivated to use an equilibrium and/or elution buffer with an electrical conductivity in the range of 1 to 20 mS/cm to allow for separation of non-colored proteins from colored proteins by ion-exchange chromatography. One of ordinary skill in the art has a reasonable expectation of success using an equilibrium and/or elution buffer with an electrical conductivity in the range of 1 to 20 mS/cm in the method of Butko et al. because the art as evidence by Wang et al. teaches the use of the mobile phase in a range of 1 to 20 mS/cm is well known and common in the art. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. (Anal. Chem 2014) in view of Kim et al. (US10053489 B2, published 08/21/2018) in further view of Wang et al. (WO2014078729 A1, published on 05/22/2014).
The teachings of Butko et al. and Kim et al. are discussed above. Butko et al. and Kim et al. do not teach the equilibrium buffer having an electrical conductivity in the range of 1 to about 20 mS/cm. Wang et al. further teaches that the mobile phase used for equilibrium and/or elution in ion-exchange chromatography has an electrical conductivity in the range of from about 1 to about 20 mS/cm (see page 32, ¶ [0124]).
Claim 21 is directed to the method described in claim 2, wherein the electrical conductivity of the equilibrium buffer is in a range from about 1 to about 20 mS/cm.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an equilibrium buffer that has an electrical conductivity within the range of 1 to 20 mS/cm taught in Wang et al. to the to the antibody mixtures described in Butko et al. and the flowthrough purification method described in Kim et al. A person of ordinary skill in the art is motivated to use an equilibrium buffer that has an electrical conductivity in the range of 1 to 20 mS/cm to allow for separation of non-colored proteins from colored proteins by flowthrough ion-exchange chromatography. One of ordinary skill in the art has a reasonable expectation of success using an equilibrium buffer with an electrical conductivity in the range of 1 to 20 mS/cm in the method of separating non-colored and colored proteins in Butko et al. and the flowthrough ion-exchange chromatography taught in Kim et al. because the art as evidence by Wang et al. teaches the use of the mobile phase in a range of 1 to 20 mS/cm is well known and common in the art. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. (Anal. Chem 2014) in view of Kim et al. (US10053489 B2, published 08/21/2018) in further view of Giese et al. (US20190256556 A1, published 08/22/2019).
The teachings of Butko et al. and Kim et al. are discussed above. Butko et al. and Kim et al. do not teach the pH of the equilibrium buffer being in the range from about 9.2 to 7.4. Giese et al. teaches an anion-exchange equilibrium buffer between pH 8.0 and about pH 9.0 (see page 3, ¶ [0021]).
Claim 22 is directed to the method described in claim 2, wherein the pH of the equilibrium buffer is in a range from about 9.2 to about 7.4.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an equilibrium buffer that has pH within the range of 9.2 to about 7.4 taught by Giese et al. and apply to the antibody mixtures of Butko et al. and the flowthrough purification method described in Kim et al. A person of ordinary skill in the art is motivated to use an equilibrium buffer that has a pH range from 9.2 to 7.4 to allow for separation of non-colored proteins from colored proteins by flowthrough ion-exchange chromatography. One of ordinary skill in the art has a reasonable expectation of success using an equilibrium buffer with a pH range from 9.2 to 7.4 in the method of separating non-colored and colored proteins in Butko et al. and the flowthrough ion-exchange chromatography taught in Kim et al. because the art as evidence by Giese et al. teaches the use of equilibrium buffers in the range of 8.0 to 9.0 is well known and common in the art. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. (Anal. Chem 2014) in view of Wang et al. (WO2014078729 A1, published on 05/22/2014) in further view of Giese et al. (US20190256556 A1, published 08/22/2019).
The teachings of Butko et al. and Wang et al. are discussed above. Butko et al. and Wang et al. do not teach washing the ion-exchange carrier column with a washing buffer. Giese et al. teaches washing an anion-exchange column with equilibration buffer following loading of the protein (see page 3, ¶ [0021]).
Claim 23 is directed to the method described in claim 1, wherein the ion-exchange carrier is washed prior to the pH gradient or after elution by pH gradient of the non-colored proteins and colored proteins.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to wash the ion-exchange column with a washing buffer taught by Giese et al. and apply the washing buffer to the antibody mixtures of Butko et al. and the pH gradient ion-exchange described in Wang et al. A person of ordinary skill in the art is motivated to use a washing buffer before elution to remove contaminants while retaining the protein(s) of interest on the column such as non-colored proteins and colored proteins and/or after to further clean the column after elution. One of ordinary skill in the art has a reasonable expectation of success using a washing buffer to wash contaminants off the column before elution in the method of separating non-colored and colored proteins in Butko et al. and pH gradient ion-exchange chromatography taught in Wang et al. because the art as evidence by Giese et al. teaches using wash buffers following loading proteins is well known and common in the art. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claim 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Butko et al. (Anal. Chem 2014) in view of Wang et al. (WO2014078729 A1, published on 05/22/2014) in further view of Shibayama et al. (WO2019156199 A1, published on 08/15/2019).
The teachings of Butko et al. and Wang et al. are discussed above. Butko et al. and Wang et al. explicitly teaches that the proteins or polypeptides are antibodies or antibody fragments (see Butko et al., Abstract, see Wang et al. page 3, ¶ [0007]). Wang et al. further teaches that “antibodies” covers bispecific antibodies (see page 12, ¶ [0061]). Shibayama et al. teaches the use of PD-1/CD3 bispecific antibodies (see page 23, ¶ [0019]). Shibayama et al. further teaches producing their bispecific antibodies in CHO cells (page 42, lines 24-28) and that their bispecific antibodies have therapeutic applications (page 47).
Claim 30-32 are directed in part to the method described in claim 1, wherein the non-colored and colored proteins are bispecific antibodies that specifically bind PD-1 and CD3.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to separate non-colored bispecific antibodies that specifically bind PD-1 and CD3 from colored bispecific antibodies that specifically bind PD-1 and CD3 using an ion exchange column, and eluting the non-colored bispecific antibodies using a pH gradient. because Butko et al. and Wang et al. already teach applying ion-exchange separation methods to antibodies and antibody fragments. A person of ordinary skill in the art is motivated to separate a composition of the bispecific antibodies of Shibayama et al. produced by CHO cells to obtain non-colored bispecific antibodies from a therapeutic composition. A person of ordinary skill in the art is motivated to use the ion exchange purification method of Butko et al. using the pH gradient of Wang et al. because antibodies and antibody fragments are well-known therapeutic proteins that are routinely purified by using the methods of Butko et al. and Wang et al. One of ordinary skill in the art would have had a reasonable expectation of success in applying the separation method of Butko et al. and Wang et al. to a composition comprising the bispecific antibodies of Shibayama et al. because ion exchange chromatography and a pH gradient have been successfully used to separate antibodies and antibody fragments. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Allowable Subject Matter
Claims 33-34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/DALTON EDWARD KIEFER/Examiner, Art Unit 1652
/DELIA M RAMIREZ/Primary Examiner, Art Unit 1652