DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
2. Claims 52-72 are pending and have been examined herein.
3. This action is in response to the amendment filed on 03/28/2026. Applicant's arguments and amendments to the claims have been fully considered but do not place the application in condition for allowance. All rejections and objections not reiterated herein are hereby withdrawn.
In particular, the previous objection to the drawings and objections to the specification have been obviated by the filing of the replacement drawings and the amendment to the specification to omit the references to colors in describing the figures and by the additional amendments to the specification.
The previous rejection of claims 1-11 and 19 under 35 U.S.C. 112(a) / written description has been obviated by the cancelation of these claims. This rejection does not apply to newly added claims 52-66 because claims 52-66 recite the particular miRNAs of hsa-miR-128-3p (SEQ ID NO:3), hsa-miR-421 (SEQ ID NO:18) and hsa-miR-30c-5p (SEQ ID NO: 14).
The previous rejection of claims 1-10 under 35 U.S.C. 103 as unpatentable over Mahnke et al in view of Mangat et al; of claims 11 and 19 under 35 U.S.C. 103 as being unpatentable over Mahnke et al in view of Mangat et al and further in view of Friedmann et al; of claims 1-10 under 35 U.S.C. 103 as being unpatentable over Bakhireva et al. in view of Mangat et al; and of claims 11 and 19 under 35 U.S.C. 103 as being unpatentable over Bakhireva et al. in view of Mangat et al and further in view of Friedmann et al have been obviated by the cancellation of these claims. The previously applied prior art is not applicable to the present claims because the prior art does not teach or suggest the claimed methods of identifying and treating neonatal opioid withdrawal syndrome (NOWS) in a neonatal patient with NOWS (claims 52-66) and of determining the effectiveness of pharmacological opioid withdrawal syndrome therapy of a neonatal patient being treated for NOWS (claims 67-71) comprising (in part) obtaining a blood sample from the neonatal patient, identifying and quantifying miRNA biomarkers hsa-miR-128-3p (SEQ ID NO:3), hsa-miR-421 (SEQ ID NO:18) and hsa-miR-30c-5p (SEQ ID NO: 14) in the plasma and/or cellular fraction of the blood sample and detecting a down- regulated concentration of hsa-miR-128-3p (SEQ ID NO:3) and hsa-miR-421 (SEQ ID NO:18) and an up-regulated concentration of hsa-miR-30c-5p (SEQ ID NO:14), relative to a standard (claims 52-66) or to a first sample taken at an earlier time point (claims 67-72) as indicative of the effectiveness or lack of effectiveness of the NOWS therapy.
The previous rejection of (canceled) claims 1-11, 18, 19 and 30 under 35 U.S.C. 101 does not apply to new claims 52-66. Claims 52-66 are drawn to a method of identifying and treating neonatal opioid withdrawal syndrome (NOWS) in a neonatal patient with NOWS syndrome and recite a final step of treating the neonatal patient identified as having opioid withdrawal syndrome with pharmacological opioid withdrawal syndrome therapy comprising administering to said patient an effective amount of at least one opiate selected from the group consisting of morphine, methadone, buprenorphine and tincture of opium, alone or in combination with at least one additional agent selected from the group consisting of a barbiturate, clonidine, a selective opium reuptake inhibitor (SSRI) and a benzodiazepine. The final treating by administering the recited opiates alone or in combination with at least one of the listed agents is considered to integrate the recited judicial exception into a practical application of the exception. However, new claims 67-72 are rejected under 35 U.S.C. 101 for the reasons set forth below.
4. Applicant’s response to the Request for Information under 37 CFR 1.105 and the declarations of Ludmila N. Bakhireva and Amanda H. Mahnke, filed on 03/28/2026 are acknowledged. The information provided is complete and has been fully considered.
New Claim Objections
5. Claims 52-66 are objected to because of the following informalities:
Claims 52-66 are objected to because claim 52 (and thereby dependent claims 53-66) recites a capital letter at each step and includes periods within the claim (i.e., “1. Obtaining” and “2. Treating”). MPEP 608.01(m) states: “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.” Capitalizing the first word suggests that the step or clause is a new sentence, whereas claims consist of a single sentence. This objection may be obviated by amendment of claim 52 to recite: “(i) obtaining…; and (ii) treating…”.
Appropriate correction is required.
Modified Claim Rejections - 35 USC § 101
6. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 67-72 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the judicial exception of a law of nature / natural phenomenon, and/or an abstract idea without significantly more. The judicial exception is not integrated into a practical application and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the reasons that follow.
Applicant' s attention is directed to MPEP 2106 “Patent Subject Matter Eligibility” which discusses the Alice/Mayo two-part test for evaluating subject matter eligibility.
Regarding Step 1 of the subject matter eligibility test set forth at MPEP 2106III, the claims are directed to the statutory category of a process.
Regarding Step 2A, prong one, the claims recite the judicial exception of a law of nature. The claims recite the correlation between the effectiveness of therapy for opioid withdrawal syndrome in a neonate and the level of the miRNA biomarkers hsa-miR-128- 3p (SEQ ID NO:3), hsa-miR-421 (SEQ ID NO:18) and hsa-miR-30c-5p (SEQ ID NO:14). As in Mayo Collaborative Services v. Prometheus, the recited relationship is a natural phenomenon that exists apart from any human action. See also Cleveland Clinic Foundation v. True Health Diagnostic, LLC, 2018-1218 (Fed Cir. 2019) which states that “The re-phrasing of the claims does not make them less directed to a natural law.”
The claims also recite the judicial exception of an abstract idea and particularly mental processes.
MPEP 2106.04(a) states that the enumerated groupings of abstract ideas include:
“1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);…
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).”
The claims require performing a step of comparing the level of the miRNA biomarker in a first and second sample from the neonatal patient to a standard. Note that whether the comparing step is recited as an active step or a passive step, the claims still require that a comparison is made between the amount of the miRNA biomarker in the test sample and the standard. The claims do not set forth how the comparing step is accomplished and the specification does not provide a limiting definition for how the comparing is to be accomplished. As broadly recited, the comparing step may also be accomplished by critical thinking processes. Thereby, the comparing step is considered to be an abstract idea / process.
The claims also recite that “the therapy is continued” and “the therapy is terminated or modified.” The claims do not set forth how these steps are performed. The broadest reasonable interpretation of these steps is that they may be performed in an abstract manner, either mentally or verbally. For example, a physician may prescribe continuing / maintaining, terminating or modifying the therapy that is to be administered to the patient. Note that such prescribing is an abstract process, having no particular concrete or tangible form.
Regarding Step 2A, prong two, having determined that the claims recite a judicial exception, it is then determined whether the claims recite additional elements that integrate the judicial exception into a practical application.
Herein, the claims do not recite additional steps or elements that integrate the recited judicial exceptions into a practical application of the exception(s). The additionally recited steps of obtaining a blood sample from a neonatal patient and measuring miRNA levels in the blood sample are part of the data gathering process necessary to observe the judicial exception. These steps do not practically apply the judicial exception.
Additionally, as discussed above, the recitations that the therapy is continued / maintained, terminated or modified are a judicial exception of an abstract idea and not something in addition to the judicial exception. In claims 19 and 30. Note that the claims do not recite a clear, active step of administering one of the recited therapies to the patient or administering a different / modified therapy to the subject.
Also, when the therapy is terminated, no additional step is performed and thereby the claims do not recite an additional step or element that integrates the judicial exception into a practical application.
Regarding prescribing or providing directions for continuing, terminating or modifying a therapy, Applicant’s attention is directed to MPEP 2106.04(d)(2):
Examiners should keep in mind that in order to qualify as a "treatment" or "prophylaxis" limitation for purposes of this consideration, the claim limitation in question must affirmatively recite an action that effects a particular treatment or prophylaxis for a disease or medical condition. An example of such a limitation is a step of "administering amazonic acid to a patient" or a step of "administering a course of plasmapheresis to a patient." If the limitation does not actually provide a treatment or prophylaxis, e.g., it is merely an intended use of the claimed invention or a field of use limitation, then it cannot integrate a judicial exception under the "treatment or prophylaxis" consideration. For example, a step of "prescribing a topical steroid to a patient with eczema" is not a positive limitation because it does not require that the steroid actually be used by or on the patient, and a recitation that a claimed product is a "pharmaceutical composition" or that a "feed dispenser is operable to dispense a mineral supplement" are not affirmative limitations because they are merely indicating how the claimed invention might be used.
Also, while the claims include treating the patient prior to measuring the level of the miRNA biomarkers, in these instances, the treating step is performed as part of the data gathering step. The step is extra-solution activity and does not constitute a practical application of the recited judicial exceptions.
Applicant’s attention is directed to M.P.E.P. § 2106.04(d)(2)(c), which states:
“The treatment or prophylaxis limitation must impose meaningful limits on the judicial exception, and cannot be extra-solution activity or a field-of-use. For example, consider a claim that recites (a) administering rabies and feline leukemia vaccines to a first group of domestic cats in accordance with different vaccination schedules, and (b) analyzing information about the vaccination schedules and whether the cats later developed chronic immune-mediated disorders to determine a lowest-risk vaccination schedule. Step (b) falls within the mental process grouping of abstract ideas enumerated in MPEP § 2106.04(a). While step (a) administers vaccines to the cats, this administration is performed in order to gather data for the mental analysis step, and is a necessary precursor for all uses of the recited exception. It is thus extra-solution activity, and does not integrate the judicial exception into a practical application.”
Regarding Step 2B, the next question is whether the remaining elements/steps – i.e., the non-patent-ineligible elements/steps - either in isolation or combination, amount to significantly more than the judicial exception.
Herein, the claims as a whole are not considered to recite any additional steps or elements that amount to significantly more than routine and conventional activity and do not add something “significantly more” so as to render the claims patent-eligible. The additionally recited steps of obtaining a blood or plasma sample and measuring miRNA biomarkers in the sample are recited at a high degree of generality and were well-known, routine and conventional in the prior art. This finding is evidenced by the teachings in the specification. For example, para [0077] of the specification states “Alternative methods for identifying and quantifying miRNA in an umbilical cord sample include miRNA arrays, RNA-seq assay and multiplex miRNA profiling, all using methods which are well known in the art.”
See also MPEP 2106.05(d) II which states that:
The courts have recognized the following laboratory techniques as well-understood, routine, conventional activity in the life science arts when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
i. Determining the level of a biomarker in blood by any means, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; Cleveland Clinic Foundation v. True Health Diagnostics, LLC, 859 F.3d 1352, 1362, 123 USPQ2d 1081, 1088 (Fed. Cir. 2017);
ii. Using polymerase chain reaction to amplify and detect DNA, Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377, 115 USPQ2d 1152, 1157 (Fed. Cir. 2015);
iii. Detecting DNA or enzymes in a sample, Sequenom, 788 F.3d at 1377-78, 115 USPQ2d at 1157); Cleveland Clinic Foundation 859 F.3d at 1362, 123 USPQ2d at 1088 (Fed. Cir. 2017);
iv. Immunizing a patient against a disease, Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1063, 100 USPQ2d 1492, 1497 (Fed. Cir. 2011);
v. Analyzing DNA to provide sequence information or detect allelic variants, Genetic Techs., 818 F.3d at 1377; 118 USPQ2d at 1546;
vi. Freezing and thawing cells, Rapid Litig. Mgmt. 827 F.3d at 1051, 119 USPQ2d at 1375;
vii. Amplifying and sequencing nucleic acid sequences, University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 764, 113 USPQ2d 1241, 1247 (Fed. Cir. 2014); and
viii. Hybridizing a gene probe, Ambry Genetics, 774 F.3d at 764, 113 USPQ2d at 1247.
In Mayo v. Prometheus, the Supreme Court stated: "[t]o put the matter more succinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately."
This is similar to the present situation wherein the additional steps and elements are recited at a high degree of generality and are all routine, well understood and conventional in the prior art. The recited steps and elements do not provide the inventive concept necessary to render the claims patent eligible. See also Genetic Technologies Ltd. v. Merial L.L.C. 818 F.3d at 1377, 1379 (Fed. Cir. 2016).
For the reasons set forth above, when the claims are considered as a whole, the claims are not considered to recite something significantly more than a judicial exception and thereby are not directed to patent eligible subject matter.Response to Remarks:
The response states:
“Applicant has provided a method of treatment and a method of determining the effectiveness of pharmacological treatment/therapy for neonatal opioid withdrawal syndrome (NOWS) which is novel and non-obvious in the art. Applicant respectfully submits that the claims as amended are directed to subject matter which meets the requirements of 35 U.S.C. §101.”
These arguments have been thoroughly considered but are not persuasive. The fact that the claims as a whole are novel and unobvious over the prior art does not render the claims patent-eligible because this is not the criteria for meeting the requirements of 35 U.S.C. §101. The claims have been examined herein using the Alice/Mayo two-part test for evaluating subject matter eligibility outlined in MPEP 2106. For the reasons discussed in detail above, the claims recite the judicial exceptions of a law of nature and abstract ideas. The claims do not recite additional, non-patent- ineligible steps or elements that integrate the judicial exceptions into a practical application. Nor do the claims recite additional, non-patent-ineligible elements or steps that, either in isolation or combination, amount to significantly more than the judicial exception(s). Accordingly, the claims fail the Alice/Mayo test and are not patent-eligible.
The rejection is maintained for the reasons discussed above.
With respect to claim 67, this rejection may be obviated by amendment of the claim to recite:
“A method of determining the effectiveness of pharmacological opioid withdrawal syndrome therapy of a neonatal patient being treated for neonatal opioid withdrawal syndrome (NOWS) comprising:
obtaining blood samples from the patient at a first time and a second later time during a first therapy; identifying and quantifying miRNA biomarkers hsa-miR-128- 3p (SEQ ID NO:3), hsa-miR-421 (SEQ ID NO:18) and hsa-miR-30c-5p (SEQ ID NO:14) in the plasma and/or cellular fraction of the blood samples obtained from said patient;
comparing the concentrations of the miRNA biomarkers hsa-miR-128-3p (SEQ ID NO:3), hsa-miR-421 (SEQ ID NO:18) and hsa-miR-30c-5p (SEQ ID NO:14) in the blood sample obtained at the second, later time with that in the blood sample obtained at the first time; and
i) detecting a down-regulated concentration of hsa-miR-128-3p (SEQ ID NO:3) and hsa-miR-421 (SEQ ID NO:18) and an up-regulated concentration of hsa-miR-30c-5p (SEQ ID NO:14) in said blood sample obtained at the second, later time as compared to the concentrations of said biomarkers in the first blood sample as indicative that the therapy for opioid withdrawal syndrome is effective and then, following the detecting, administering the same therapy for opioid withdrawal syndrome to the patient, or ii) detecting no change in the concentrations of hsa-miR-128-3p (SEQ ID NO:3), hsa-miR-421 (SEQ ID NO:18) and hsa-miR-30c-5p (SEQ ID NO:14) in the blood sample obtained at the second, later time as compared to the concentrations of said biomarkers in the first blood sample as indicative that the therapy for opioid withdrawal syndrome is ineffective and then, following detecting, administering a modified therapy for opioid withdrawal syndrome to the patient that is different from the prior therapy for opioid withdrawal syndrome,
wherein the therapy for opioid withdrawal syndrome is an effective amount of at least one opiate selected from the group consisting of morphine, methadone, buprenorphine and tincture of opium, alone or in combination with at least one additional agent selected from the group consisting of a barbiturate, clonidine, a selective opium reuptake inhibitor (SSRI) and a benzodiazepine.”
New Claim Rejections - 35 USC § 112(b) - Indefiniteness
7. 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 52-66 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.
Claims 52-66 are indefinite over the recitation of “the neonatal patient identified as having opioid withdrawal syndrome” because this phrase lacks proper antecedent basis. The claims previously recite “wherein an up-regulated concentration of hsa-miR-128-3p (SEQ ID NO:3) and hsa-miR-421 (SEQ ID NO: 18) and the down-regulated concentration of hsa-miR-30c-5p (SEQ ID NO: 14) compared with a standard evidences opioid withdrawal syndrome in said neonatal patient.” This constitutes a property of the concentration of the miRNAs, as compared to the standard. However, the claims do not recite a step of identifying the neonatal patient as having opioid withdrawal syndrome and thereby do not recite a patient identified as having opioid withdrawal syndrome.
New Claim Rejections - 35 USC § 112(a) – New Matter
8. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 52-66 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a New Matter rejection.
The disclosure as originally filed does not provide support for the limitation in new claims 52-66 of a standard that is “a neonate or population of neonates with NOWS before treatment” and particularly of methods in which an up-regulated concentration of hsa-miR-128-3p (SEQ ID NO:3) and hsa-miR-421 (SEQ ID NO: 18) and the down-regulated concentration of hsa-miR-30c-5p (SEQ ID NO: 14) compared with a standard that is “a neonate or population of neonates with NOWS before treatment” evidences opioid withdrawal syndrome in the neonatal patient.
In the response of 03/28/2026, Applicant states that support for the new claims is found throughout the originally filed application.
However, the originally filed application does not teach that the standard can be any neonate or a population of any neonates with NOWS before treatment and that when either of these standards are compared to the miRNA levels of the neonatal patient, upregulation in the concentration of hsa-miR-128-3p (SEQ ID NO:3) and hsa-miR-421 (SEQ ID NO: 18) and down-regulation in the concentration of hsa-miR- 30c-5p (SEQ ID NO: 14) is indicative that the neonatal patient has NOWS.
Rather, the originally filed specification (para [0024]; paragraph numbering herein is with respect to the published application) teaches:
“often a standard of the neonate before treatment has commenced and/or of a neonate or population of neonates without NOWS or having been successfully treated for NOWS, such that a decision may be made to continue therapy, discontinue therapy or modify therapy in the treated neonate.”
Note that in the above disclosure in the specification “the neonate” refers to the same neonate as that being tested for the miRNA levels, as opposed to “a” / any neonate.
It is acknowledged that the specification at para [0098] states:
“The term “standard” is used to a describe a pre-determined measurement of concentration of one or more miRNAs established from a neonate or population of neonates with or without NOWS, treated for NOWS including cured of NOWS.”
However, the specification does not teach that miR-128-3p and miR-421 are up-regulated and miR-30c-5p is down-regulated in neonates having NOWS, as compared to a standard that is a neonate or population of neonates with NOWS.
Note that the specification (para [0013]) teaches:
“analyzing the blood sample for the concentration of three miRNAs to determine the presence of NOWS in the patient or subject: hsa-miR-128-3p (SEQ ID NO:3) which is overexpressed or up-regulated compared to a standard (often, a standard obtained from a population of neonates without NOWS), hsa-miR-421 (SEQ ID NO:18) which is also overexpressed or up-regulated compared to a standard and hsa-miR-30c-5p (SEQ ID NO:14) which is under-expressed or down-regulated compared to a standard to provide a diagnosis of NOWS in said patient or subject.”
If Applicant maintains that the originally filed disclosure provides basis for the amended claims, Applicant should point to specific teachings (e.g., by paragraph number) in the present application to establish basis for each of the recitations set forth in the claims.
See MPEP 2163 II at “(b) New Claims, Amended Claims, or Claims Asserting Entitlement to the Benefit of an Earlier Priority Date or Filing Date under 35 U.S.C. 119, 120, 365, or 386” which states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLA J MYERS whose telephone number is (571)272-0747. The examiner can normally be reached M-Th 6:30-5:00 EST.
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/CARLA J MYERS/Primary Examiner, Art Unit 1682