DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Withdrawn Objections/Rejections
The objection to the claims are withdrawn in response to the amendments.
The 112a written description rejection is withdrawn in response to the amendments.
The rejection of claims 1-2, 5-6, 8 and 10-12 under 112b are withdrawn in response to the amendments. However, new grounds of rejection are set forth below.
The 103 rejections are withdrawn in response to the amendments; however, new grounds of rejection are set forth below.
Priority
The present application was filed as a proper National Stage (371) entry of PCT Application No. PCT/CN2021/114774, filed 08/26/2021. Acknowledgment is also made of applicant’s claim for foreign priority under 35 U.S.C. 119(a)-(d) to Application No. CN202010911697.3, filed on 09/02/2020 in China.
Status of the Claims
Claims 1-2, 5-6, 8, 10-13, 15, 18-19, 21-24 and 26-28 are pending; claims 1-2, 5-6, 8, 10-13, 15, 18-19, 21-22 and 27-28 are amended, claims 3-4, 7, 9, 14, 16-17, 20 and 25 are canceled; claims 15, 18-19, 21-24 and 26-28 are withdrawn. Claims 1-2, 5-6, 8 and 10-13 are examined below.
Maintained Rejection
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 5-6, 8, 10-11 and 13 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.
The rejection has been modified to address Applicant’s amendments.
Claim 1 recites an “An AKR1C3 detecting method, wherein AKR1C3 expression levels in an isolated formalin-fixed paraffin-embedded human tissue specimen are detected by using an immunohistochemical staining method, comprising the following steps…b) a primary antibody incubation step comprising mixing the antigen-retrieved formalin-fixed paraffin-embedded human tissue specimen with a 1.0 to 3.0 µg/ml concentration of mouse AKR1C3 monoclonal antibody NP6.G6.A6 solution…”.
However, it is not clear how the primary antibodies would be able to detect AKR1C3 given that the specimen is “paraffin-embedded” and the primary antibody solution is aqueous. Note that “NP6.G6.A6” is an antibody sold by “SigmaA6229” (see instant specification Table 1 page 31). As evidenced by Sigma Aldrich “Product Information” (retrieved online https://www.sigmaaldrich.com/deepweb/assets/sigmaaldrich/product/documents/384/121/a6229dat.pdf on 8/14/2026), the NP6.G6.A6 “Reagent [is] Supplied as a solution in 0.01 M phosphate buffered saline, pH 7.4, containing 15 mM sodium azide. Antibody Concentration: Approx. 2 mg/ml” (page 1 col. 2 paras. 1-2). How can the primary antibody solution comprising 0.01 M phosphate buffered saline mix with the paraffin-embedded tissue? A person having ordinary skill in the art would be confused by the “paraffin-embedded” language recited throughout the claims.
Claim 13 recites “wherein between the antigen retrieval of step and the primary antibody incubation of step, the method further comprises: b1) a blocking non-specific antigen step comprising co-incubating the antigen-retrieved formalin-fixed paraffin-embedded human tissue specimen with a blocking solution to block a non-specific antigen; wherein the blocking solution is a serum of an animal from which the AKRIC3 monoclonal antibody is derived”. The limitation “the blocking solution is a serum of an animal from which the AKRIC3 monoclonal antibody is derived” is unclear. How can a blocking solution comprising the serum of the same animal as the primary antibody solution allow blocking? Indeed, it is expected that the secondary antibody, which targets the primary, would be targeting the blocking serum since it most likely contains antibodies of the same species as the primary antibody. See as evidenced by Vector Laboratories “Getting to the Specifics: Blocking for Immunohistochemistry” 23 June 2021 (retrieved online https://vectorlabs.com/blog/blocking-for-immunohistochemistry/?srsltid=AfmBOooEapQgvJMz_aHqqFl0YDIcoe-4OVsKtVYFsHPh1XL8H8sRWzlN on 8/14/2026) teaches that “One common protein block is normal sera collected from healthy animals. Sera contain antibodies that bind non-specifically to Fc receptors, blocking the primary antibodies from interacting. The sera should originate from the species in which the secondary antibody was raised rather than that of the primary antibody animal. This ensures that the secondary antibody does not bind to the block and increase background signal” (page 3 para. 3). Note that the specification discloses that “[t]he secondary antibody is goat anti-mouse antibody, rabbit anti-mouse antibody, horse anti-mouse antibody or donkey anti-mouse antibody” (page 42 para. 8). Therefore, if the blocking solution contains mouse antibodies (as does mouse serum), the secondary anti-mouse antibody would also target the blocking solution, not just the primary antibody bound to AKR1C3. Therefore, a person having ordinary skill in the art would question the metes and bounds of the claim.
New Rejections
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 1-2, 8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. Steroids 69 (2004) 795–801-Cite No. 2 of IDS 10/1/2025 (“Lin”) in view of Yao et al. Am J Surg Pathol 2006;30:705–712 (“Yao”)-Cite No. U of PTO 892 4/14/2026 and Hamid et al. Mol. Med. 18: 1449-1455, 2012 doi: 10.2119/molmed.2012.00296 -Cite No. D of IDS 2/27/2024 (“Hamid”), as evidenced by Sigma Aldrich “Product Information” (retrieved online https://www.sigmaaldrich.com/deepweb/assets/sigmaaldrich/product/documents/384/121/a6229dat.pdf on 8/14/2026).
Regarding clams 1, 8 and 12, although claim 1 is indefinite (see 112b rejection above), in the interest of compact prosecution, the “isolate formalin-fixed paraffin-embedded human tissue specimen” is interpreted as a “dewaxed specimen” (as in claim 12).
Lin teaches an AKR1C3 detection method (“Immunohistochemical detection of AKR1C3 in breast and prostate” page 798 col. 1 para. 4), wherein AKR1C3 expression levels in an isolated formalin-fixed paraffin-embedded human tissue specimen are detected by using an immunohistochemical staining method (“A formalin-fixed paraffin embedded breast specimen containing normal and diseased breast… Formalin fixed, paraffin-embedded samples of normal and diseased prostate from patients with prostate cancer” page 798 col. 1 paras. 5-6), comprising the following steps: a) an antigen retrieval step comprising performing antigen retrieval by heating the isolated formalin-fixed paraffin-embedded human tissue specimen for 18 to 25 minutes in the presence of an antigen retrieval solution, thereby providing an antigen-retrieved formalin-fixed paraffin-embedded human tissue specimen (“Antigen retrieval was performed with 10mM citric acid buffer (pH 6.0) for a total of 20 min in a microwave oven” page 797 col. 1 para. 3); b) a primary antibody incubation step comprising mixing the antigen-retrieved formalin-fixed paraffin-embedded human tissue specimen with a concentration of mouse AKR1C3 monoclonal antibody NP6.G6.A6 solution, thereby providing a primary antibody-incubated formalin-fixed paraffin-embedded human tissue specimen (“The antigen was then detected by NP6G6.A6 antibody at a 1:200 dilution with blocking buffer as diluent and incubation in a moist chamber at 4 ◦C overnight” page 797 col. 1 para. 3). Note that although Lin fails to use the language “mixing”, the teaching of incubating the sample overnight with the antibody solution comprising blocking buffer inherently provides a step of mixing the sample with the antibody solution because the antibody solution would diffuse and effectively mix throughout the sample. Lin further teaches c) a secondary antibody incubation step comprising mixing the primary antibody-incubated formalin-fixed paraffin-embedded human tissue specimen with a secondary antibody solution and incubating, wherein the isolated formalin-fixed paraffin-embedded human tissue specimen is a breast cancer tissue specimen or a prostate cancer tissue specimen (“After washing, the slides were treated with 0.1M Tris–HCl, containing biotinylated goat-anti mouse secondary antibody, and incubated at room temperature for 1 h” page 797 col. 1 para. 3). Similar to above, note that although Lin fails to use the language “mixing”, the teaching of incubating the sample with the antibody inherently provides a step of mixing the sample with the antibody solution because the antibody solution would diffuse and effectively mix throughout the sample. Lin further teaches wherein before the antigen retrieval step, the method further comprises: a1) a dewaxing and rehydration step comprising dewaxing the formalin-fixed paraffin-embedded human tissue specimen using an organic solvent, thereby providing a dewaxed specimen, and washing the dewaxed specimen sequentially using alcohols containing different water contents; wherein the organic solvent is xylene (“Sections were deparaffinized with xylene and re-hydrated in graded ethanol” page 797 col. 1 para. 3).
Lin teaches in a separate embodiment (drawn to immunoblot) a 1.0 to 3.0 µg/ml of primary antibody concentration and 1.0 to 3.0 µg/ml of secondary antibody concentration (“Panel A shows the detection of the antigen using a 1 in 1000 dilution of the monoclonal antibody followed by 1 in 1000 dilution of the secondary antibody” see Fig. 1 page 797). Note that as evidenced by Sigma Aldrich, the “clone NP6.G6.A6, purified from hybridoma cell culture” (page 1 col. 1 para. 1) has an “Antibody Concentration: Approx. 2 mg/ml” (page 1 col. 2 para. 2), and is recognized as being taught by Lin (“Lin, H.K., et al., Steroids, 69, 795-801 (2004)” page 1 col. 2 last paragraph). Therefore, Lin teaches a concentration of 2 µg/ml when teaching a dilution of 1:1000. Lin further teaches that this dilution is effective for detecting AKR1C3 with high specificity (“Using a 1 in1000 dilution of the AKR1C3 antibody, only a band corresponding to AKR1C3 was detected in the subsequent immunoblot analysis (Fig. 1). These data show that the antibody can discriminate between AKR1C1-AKR1C4 yet they possess greater than 86% amino acid sequence identity; and that the antibody will neither cross react with the rodent AKR1C homolog, e.g. AKR1C9, nor with a related human enzyme from the same AKR family, namely aldehyde reductase” page 797 col. 2 para. 1). Lin further shows immunoblot data of different concentrations of NP6.G6.A6 antibody solution binding to different concentrations of AKR1C3 (Fig. 2 of Lin). Lin further teaches that “[i]t was found that as little as 0.1µg of recombinant AKR1C3 can be detected at an antibody dilution of 1 in 30,000 (Fig. 2). This suggests that the antibody has the appropriate sensitivity to detect small amounts of AKR1C3 expression in human cells and tissues” (page 798 col. 1 para. 2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Lin from separate embodiments, namely the primary and secondary antibody concentration of 2 µg/ml taught in an embodiment drawn to immunoblot, with the rest of the teachings drawn to immunohistochemistry because Lin suggests that this concentration enables the specific detection of AKR1C3 without any cross-reactivity. A person having ordinary skill in the art would have had a reasonable expectation of success because Lin shows that 0.1 µg of recombinant AKR1C3 can be detected at an antibody dilution as small as 1 in 30,000.
Lin fails to teach the dewaxing and rehydration step comprising finally washing with water, the antigen retrieval step comprising heating the specimen at 92 to 102°C, the primary antibody incubation step comprising an incubation of 45 minutes; and/or the secondary antibody incubation step comprising an incubation of 30 minutes.
Yao teaches “small cell carcinoma of the prostate: an immunohistochemical study” (Title). Yao further teaches that “Immunohistochemical studies were performed on formalin-fixed, paraffin-embedded tissue sections using the antibodies listed in Table 1” (page 706 col. 1 para. 3 and col. 2 para. 1). Yao suggests a dewaxing and rehydration step comprising washing with water (“Sections were deparaffinized according to established procedures and quenched with 3% hydrogen peroxide for 6 minutes. They were then cleared in running water” page 706 col. 2 para. 1). Yao further teaches an antigen retrieval step by heating the formalin-fixed, paraffin-embedded tissue sections to 90 to 115°C for 17 to 30 min (“Antigen unmasking was performed by one of the following methods: …heat-retrieval with citrate buffer, pH 6.1 (DakoCytomation, Carpinteria, CA) with preheated (95 to 99°C) in a Black and Decker steamer (Shelton, CT, Model HS800) for 30 or 40 minutes” page 706 col. 2 para. 1). Yao further suggests the antigen-retrieved formalin-fixed paraffin-embedded tissue specimen is incubated with the primary antibody solution for 30 to 45 min (“All sections were incubated with the primary antibodies at room temperature for 45 to 60 minutes” page 706 col. 2 para. 1). Yao further suggests the primary antibody-incubated formalin-fixed paraffin-embedded tissue specimen is incubated with the secondary antibody solution for 30 to 45 min (“sections were then incubated for 30 minutes with the link antibody (rabbit or mouse) labeled polymer-HRP (Envision Plus System, DakoCytomation, Carpinteria, CA) or by 30-minute incubations with goat antirabbit IgG-Biotin or horse antimouse IgG Biotin and Streptavidin-HRP” page707 col. 1 para. 1). Yao suggests that “Immunohistochemical markers can help separate SCPC from HGPC and may be useful in histologically borderline cases. Potential therapeutic targets are identified immunohistochemically in SCPC (Bombesin/GRP, c-kit, bcl-2, and EGFR)” (Abstract).
Hamid teaches an AKR1C3 detection method (“A total of 15 BPH or nonmalignant prostate, 30 primary PCa and 44 CRPC samples were evaluated for AKR1C3 mRNA and protein expression levels” page 1451 col. 3 para. 3), wherein AKR1C3 expression levels in an isolated formalin-fixed paraffin-embedded human tissue specimen are detected by using an immunohistochemical staining method (“The specimens were snap-frozen in liquid nitrogen or formalin fixed and paraffin embedded. Tissues were processed by step sectioning, and the samples for analysis were selected after histopathological confirmation of the tissue to be CRPC, primary PCa, BPH or normal prostate” page 1450 col. 2 para. 1, “Immunohistochemistry Paraffin-embedded tissues were used for immunohistochemistry” page 1450 col. 3 para. 2) , comprising the following steps: a) an antigen retrieval step comprising performing antigen retrieval by heating the isolated formalin-fixed paraffin-embedded human tissue specimen at 92 to 102 °C in the presence of an antigen retrieval solution, thereby providing an antigen-retrieved formalin-fixed paraffin-embedded human tissue specimen (“antigen retrieval was performed with 10 mmol/L sodium citric acid buffer (pH 6.0) at 95°C for 1 h” page 1450 col. 3 para. 2); b) a primary antibody incubation step comprising mixing the antigen-retrieved formalin-fixed paraffin-embedded human tissue specimen with a 1.0 to 3.0 µg/ml concentration of mouse AKR1C3 monoclonal antibody NP6.G6.A6 solution, thereby providing a primary antibody-incubated formalin-fixed paraffin-embedded human tissue specimen (“Human AKR1C3 was detected by monoclonal mouse NP6G6.A6 antibody (Abcam) at a 1:1,000 dilution in the blocking buffer. Primary antibody was incubated overnight at 4°C in a moist chamber” page 1450 col. 3 para. 2); and c) a secondary antibody incubation step comprising mixing the primary antibody-incubated formalin-fixed paraffin-embedded human tissue specimen with a secondary antibody solution and incubating, wherein the isolated formalin-fixed paraffin-embedded human tissue specimen is a breast cancer tissue specimen or a prostate cancer tissue specimen (“Rabbit anti-mouse peroxidase secondary antibody was applied for 1 h at room temperature” page 1450 col. 3 para. 2). Hamid further teaches that their protocol correlates with mRNA analysis, enables easy detection of AKR1C3 in prostate tissue and shows AKR1C3 as a specific biomarker of castration-resistant prostate cancer (“[o]ur studies have shown that AKR1C3 mRNA and protein can be easily detected by PCR and immunohistochemistry in biopsy and transurethral resection of the prostate material, respectively… Even though our samples were divided into two groups—frozen (RNA and Western blot analysis) and paraffin embedded (immunohistochemistry)—a correlation between AKR1C3 mRNA and protein level was consistent. Immunohistochemistry showed that AKR1C3 was expressed specifically in the carcinoma cells and not in the stromal cells. The specific upregulation of AKR1C3 in a subset of CRPC cases makes it an attractive biomarker to select patients for therapeutic intervention with AKR1C3” page 1453 cols. 1-2 paras. 2 and 1, respectively). Hamid further teaches that castration-resistant prostate cancer is a common and deadly disease and a current problem in the field (“patients will eventually experience disease progression and develop castration-resistant prostate cancer (CRPC) within 1–3 years. CRPC patients have a poor prognosis, with a median survival of ~30 months” page 1449 cols. 1-2 para. 1). Hamid further suggests that their protocol can be used to identify patients that may benefit from AKR1C3-interferring therapy in castration-resistant prostate cancer patients (“We show that AKR1C3 can be a biomarker to identify CRPC patients who may benefit from therapies interfering with AKR1C3 activity. Those patients having high levels of AKR1C3 may be amenable to novel forms of secondary hormonal treatment” page 1454 col. 3 para. 2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Lin to replace the microwave heating taught by Lin with a preheated Black and Decker steamer at 95 to 99°C taught by Yao because Hamid suggests this temperature enables easy detection of AKR1C3 in prostate cancer tissue specimens and Lin is interested in detecting AKR1C3 in prostate cancer tissue specimens. Furthermore, Hamid teaches that AKR1C3 is a specific biomarker of castration-resistant prostate cancer and suggests that IHC detection of AKR1C3 can be used to select patients for treatment and help address the poor prognosis of these patients. A person having ordinary skill in the art would have had a reasonable expectation of success because Yao teaches the make and model of the steamer. Furthermore, both Lin, Yao and Hamid teach immunohistochemistry detection of cancer-related protein biomarkers in prostate tissue specimens.
It would have been further prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Lin in view of Yao and Hamid to rely on the dewaxing and rehydration step comprising a final washing step, rely on the 45 minute primary antibody incubation step and rely on the 30 minute secondary antibody incubation step taught by Yao because Yao suggests this enables the identification of immunohistochemical markers in prostate tissue specimens for potential cancer therapeutic targets and Lin in view of Yao and Hamid are interested in the identification of immunohistochemical markers for potential therapeutic targets in prostate cancer. A person having ordinary skill in the art would have had a reasonable expectation of success because both Lin, Yao and Hamid teach immunohistochemistry detection of cancer-related protein biomarkers in cancerous prostate tissue specimens.
Regarding claim 2, Lin in view of Yao and Hamid teach the method of claim 1 as discussed above.
Lin in view of Yao and Hamid further teach wherein in the antigen retrieval step, the antigen retrieval solution has a pH of 2.0 to 9.0 and/or wherein in the antigen retrieval step, the antigen retrieval solution includes a sodium citrate retrieval solution or an EDTA antigen retrieval solution (“Antigen retrieval was performed with 10mM citric acid buffer (pH 6.0)” page 797 col. 1 para. 3 of Lin).
Regarding claim 10, Lin in view of Yao and Hamid teach the method of claim 1 as discussed above.
Lin in view of Yao and Hamid further teach wherein in the secondary antibody incubation step, the secondary antibody is a goat anti-mouse antibody (“Biotinylated goat-anti mouse secondary antibody” page 796 col. 2 para. 2 of Lin).
Regarding claim 11, Lin in view of Yao and Hamid teach the method of claim 1 as discussed above.
Lin in view of Yao and Hamid further teach wherein after the secondary antibody incubation step, the method further comprises: d) a staining and sealing step comprising staining the formalin-fixed paraffin-embedded human tissue specimen using hematoxylin, and performing a dehydration and sealing of specimen after staining (“Specimens were counter stained lightly with hematoxylin (Sigma). Slides were dehydrated and sealed with Permount Mounting Media for visualization by light microscopy” page 797 col. 1 para. 3 of Lin).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin in view of Yao and Hamid as applied to claim 1 above, and further in view of R&D Systems "Human Aldo-keto Reductase 1C3/AKR1C3 Antibody Monoclonal Mouse IgG1 Clone # 871701 Catalog Number: MAB7678" Rev. 2/7/2018-Cite No. A of IDS 2/7/2024 ("R&D").
Regarding claim 5, Lin in view of Yao and Hamid teach the method of claim 1 as discussed above.
Lin in view of Yao and Hamid fail to teach wherein in the primary antibody incubation step, the AKR1C3 monoclonal antibody solution has a concentration of 1.2 µg/ml; and/or in the secondary antibody incubation step, the secondary antibody solution has a concentration of 1.2 µg/ml.
R&D teaches “Human Aldo-keto Reductase 1C3/AKR1C3 Antibody” (Title). R&D further teaches a 1-25 μg/ml concentration of AKR1C3 monoclonal antibody solution (“1-25 µg/mL” APPLICATIONS Immunohistochemistry page 1). R&D “recommends” a 1-25 μg/ml concentration of AKR1C3 monoclonal antibody solution for “immunohistochemistry” (“Recommended Concentration” APPLICATIONS Immunohistochemistry page 1). R&D further show that a “1.7 µg/mL” concentration of primary antibody enables the localization of “ Specific staining…localized to cytoplasm in epithelial cells” (DATA Immunohistochemistry page 1) of prostate tissue specimens.
With regards to the claimed concentration of 1.2 µg/ml, the prior art teaches a range of 1-25 µg/ml. In such a case, since the prior art concentration range covers the claimed concentration, a prima facie case of obviousness exists because it would have been obvious to a person having ordinary skill in the art to arrive at the claimed concentration by selecting values disclosed within the prior art range. See MPEP 2144.05.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Lin in view of Yao and Hamid to rely on the 1.2 µg/mL concentration of primary monoclonal antibody taught by R&D because R&D suggests this is a recommended concentration for immunohistochemistry applications and Lin in view of Yao and Hamid are interested in immunohistochemistry. Furthermore, given that Hamid teaches that prostate cancer is a deadly disease, a current problem in the field, and that AKR1C3 is a biomarker that may help prostate cancer patients, it would have been obvious to try choosing the 1.2 µg/mL concentration of primary monoclonal antibody from the finite list of recommended concentrations taught by R&D. A person having ordinary skill in the art would have been motivated to try the 1.2 µg/mL concentration of primary monoclonal antibody in order to help the cancer patients. A person having ordinary skill in the art would have had a reasonable expectation of success because Lin shows that 0.1 µg of recombinant AKR1C3 can be detected at an antibody dilution as small as 1 in 30,000.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lin in view of Yao and Hamid as applied to claim 1 above, and further in view of Yurchenko et al. (RU 2700410C1)-2019-09-17 Cite No. O of PTO 892 4/14/2026 ("Yurchenko") as evidenced by PanReac AppliChem (retrieved online https://www.itwreagents.com/germany/en/product/tris-for-molecular-biology/A2264 on 4/8/2026)-Cite No. W of PTO 892 4/14/2026.
Regarding claim 6, Lin in view of Yao and Hamid teach the method of claim 1 as discussed above.
Lin in view of Yao and Hamid further suggest wherein the AKRIC3 monoclonal antibody solution and the secondary antibody solution both contain, H+, C1- and tromethamine (“Tris-HCl” page 797 col. 1 para. 3 of Lin). Note that Tris is tromethamine as evidenced by PanReac AppliChem (“Tris…also known as tromethamine” page 1 para. 1).
Lin in view of Yao and Hamid fail to teach NaN3. Note that NaN3 is sodium azide.
Yurchenko teaches “immunohistochemistry” (para. 1) “to improve the quality of visualization of cells and tissues of large biological objects” (para. 13). Yurchenko further teaches wherein the primary antibody solution and the secondary antibody solution both contain sodium azide (“The stated problem is solved in that in the known method of immunostaining of biological material for confocal microscopy, including preparation of the material, fixation, removal of the fixative, blocking of non-specific binding of antibodies, incubation with primary antibodies in a blocking buffer, washing off the primary antibodies, incubation with secondary antibodies in a blocking buffer, washing off the secondary antibodies, dehydration, clarification and visualization of the object, according to the invention, a phosphate buffer containing 0.1-1.0% non-ionic detergent, 20.0% dimethyl sulfoxide, 1.0% bovine serum albumin, no more than 10.0% sheep serum and 0.03% sodium azide is used as a blocking buffer” para. 14). Yurchenko further suggests that the sodium azide enables “one to exclude non-specific staining throughout the entire depth of the sample and subsequently label only the structures of scientific interest and obtain a clear image of the desired structures” (para. 19)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Lin in view of Yao and Hamid to include on the primary antibody solution and the secondary antibody solution the sodium azide taught by Yurchenko because Yurchenko suggests this helps exclude non-specific staining thus improving the quality of visualization of cells and tissues of large biological objects. A person having ordinary skill in the art would have had a reasonable expectation of success because both Lin in view of Yao and Hamid and Yurchenko teach an immunohistochemical staining method comprising a primary and secondary antibody solution containing a buffer.
Response to Arguments
Applicant's arguments filed 7/14/2026 have been fully considered but they are not persuasive.
Regarding the 112b rejection of claim 13,
Applicant argues that “mouse serum) used for blocking, which is a well-recognized technique in immunohistochemistry. Mouse serum contains immunoglobulins and other proteins that occupy non-specific binding sites on the tissue specimen, thereby preventing non-specific binding of the mouse derived primary antibody to those sites, The blocking step occurs before application of the primary antibody, and the serum proteins effectively
saturate Fc receptors and other non-specific binding sites. This technique is well-established and routinely practiced by those skilled in the art of immunohistochemistry. Accordingly, the scope of Claim 13 is clear and definite” (page 18 para. 5).
However, given that the “Mouse serum contains immunoglobulins” (Remarks page 18 para. 5), and that the secondary antibody is an anti-mouse antibody (page 42 para. 8 of spec.), the secondary antibody would target the blocking solution, i.e. the mouse antibodies. See the rejection above citing as evidence Vector Laboratories “Getting to the Specifics: Blocking for Immunohistochemistry” 23 June 2021 (retrieved online https://vectorlabs.com/blog/blocking-for-immunohistochemistry/?srsltid=AfmBOooEapQgvJMz_aHqqFl0YDIcoe-4OVsKtVYFsHPh1XL8H8sRWzlN on 8/14/2026). As evidence by Vector Laboratories, the secondary antibody is expected to target the blocking solution and increase the background signal. Therefore, a person having ordinary skill in the art would question the metes and bounds of the claim (see 112b rejection above).
Regarding the 103 rejections,
Applicant argues that “First, the IHC detection method of Ashley is directed exclusively to formalin-fixed, paraffin-embedded cryptorchid testes and adult testis with normal parenchyma -not cancer tissues…General purpose methods cannot be directly applied in a simplistic manner across disparate tissue types” (page 20 para. 2 and page 21 para. 1).
However, new grounds of rejection are set forth above over Lin in view of Yao and Hamid. Lin in view of Yao and Hamid teach immunohistochemistry detection of AKR1C3 in prostate cancer tissue specimen (see rejection above).
Applicant further argues that “Second, the IHC detection method of Ashley requires markedly different experimental parameters from those required by the instantly claimed IHC detection Method…A person of ordinary skill in the art would readily appreciate that optimal antibody concentrations are highly clone-specific and cannot be extrapolated from one clone to another without further experimentation” (page 21 para. 3 and page 22 para. 1).
However, new grounds of rejection are set forth above over Lin in view of Yao and Hamid. The combination of Lin with Yao and Hamid address the claimed parameters as currently recited. Lin and Hamid both teach the NP6.G6.A6 clone claimed in an immunohistochemistry detection method of AKR1C3 in human prostate cancer tissue specimens. Furthermore, there is a reasonable expectation of success in combining Lin with Yao and Hamid because all three references teach immunohistochemistry detection in human prostate tissue specimens comprising cancer. For these reasons, Applicant’s arguments are not persuasive. See new grounds of rejection above.
Applicant further argues that “A person of ordinary skill in the art would have no reason to selectively adopt Yao's incubation times while simultaneously attempting to adapt Ashley's fundamentally different cold overnight protocol. Indeed, Ashley's deliberate choice of overnight incubation at 4°C reflects a slow-diffusion, low-temperature methodology that is inconsistent with (and teaches away from) the short room-temperature incubation used by Yao and recited in the instant claims. A skilled artisan following Ashley's approach would have no motivation to abandon the overnight cold-incubation philosophy in favor of a 30 to 45 minute protocol, particularly when attempting to detect AKR1C3 across nine different cancer tissue types” page 23 para. 1).
However, new grounds of rejection are set forth above over Lin in view of Yao and Hamid. In this case, even though Lin teaches overnight incubation at 4°C, there is still motivation to modify this incubation step in favor of a 30 to 45 minute protocol taught by Yao because Hamid teaches that there is a need for treatment biomarkers of prostate cancer and Yao suggests this incubation step enables the identification of treatment biomarkers in prostate tissue specimens for potential cancer therapeutic targets. Therefore, a person having ordinary skill in the art would be motivated to make such a modification in order to help prostate cancer patients. See new grounds of rejection above.
Applicant further argues that “Yurchenko cannot cure the deficiencies of Ashley, R&D. and Yao noted above” (page 23 para. 2).
However, there are no deficiencies in the combination of Lin, Yao and Hamid.
Applicant further argues that “The Skilled Artisan ·would Not Have Had a Reasonable Expectation of Success in Arriving the Instantly Claimed Method… The process of obtaining a technical solution that achieves reliable detection across multiple solid tumors through these experimental verifications inherently requires inventive effort far beyond routine optimization” (page 24 paras. 2-3).
However, there is a reasonable expectation of success in combining Lin with Yao and Hamid. Briefly, given that Lin, Yao and Hamid teach IHC detection in cancerous prostate tissue, there is a reasonable expectation of success (see new grounds of rejection above for the complete analysis). Furthermore, note that the claims recite “wherein the isolated formalin-fixed paraffin-embedded human tissue specimen is a breast cancer tissue specimen, a colorectal cancer tissue specimen…a non-small cell lung cancer tissue specimen, a prostate cancer tissue specimen…or a nodular NK/T-cell lymphoma specimen” (annotations added). The claims, therefore, encompass the exclusion of multiple types of tissue specimen. In order words, the detection across multiple solid tumors is not required in order to address the claim over the art. For these reasons, arguments are not persuasive.
Applicant further argues that “The Instantly Claimed Method is Surprisingly Superior…determination precision results show that inter-batch precision (interday/ operation, inter-operator and inter-instrument) and intra-batch precision afford 100% consistency… show 100% consistency between pathologists based on AKR1C3 expression” (page 25 paras. 4-5).
However, given that the prior art teaches the claimed NP6.G6.A6 antibody for immunohistochemical detection of AKR1C3 in prostate cancer tissue specimens (see Lin and Hamid cited above), and given that the claimed antibody is purchased from Sigma (“SigmaA6229” page 31 of spec.), the arguments directed to “inter-batch precision…and intra-batch precision” and “100% consistency between pathologists” are not considered persuasive.
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 FERNANDO IVICH whose telephone number is (703)756-5386. The examiner can normally be reached M-F 9:30-6:00 (E.T.).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gregory S. Emch can be reached at (571) 272-8149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Fernando Ivich/Examiner, Art Unit 1678
/GREGORY S EMCH/Supervisory Patent Examiner, Art Unit 1678
Prosecution Insights