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 .
Election/Restrictions
Applicant's election with traverse to Group I in the requirement for restriction dated 07 Oct 2025, encompassed in claims 1-3 and 11-20, and cancellation of claims 4-10 in the response filed 05 Nov 2025 are acknowledged.
Applicant's election with traverse to Group II in the requirement for restriction dated 26 Feb 2026, encompassed in claims 11-20, and amendments to cancel of claims 1-10, add claims 21-23, and withdraw claims 21-23 in the response filed 30 Mar 2026 are acknowledged.
Claims 11-23 are pending. Claims 11-20 are under consideration.
Applicant traverses on the grounds that the subject matter of all the claims is sufficiently related that a thorough search on any one of the Groups would encompass the other Groups. This is not found persuasive because the inventions are held to be independent and distinct, rationale for which is provided in each requirement for restriction. Consequently, the inventions are classified in different classes and subclasses. Therefore, the inventions would require the searching of different fields. See MPEP § 808.02. Moreover, a reference that anticipates in the invention of one group may not anticipate, or even make obvious, the invention of the other Groups.
The requirement for the restriction of Groups I and II dated 07 Oct 2025 and the requirement for restriction of Groups I and II dated 26 Feb 2026 are still deemed proper and are therefore made FINAL.
Claims 11-20 are presented for examination on the merits.
Claim Objections
Claim 1 is objected to because of the following informalities:
Regarding claim 1, the phrase "wherein an osmolarity" is grammatically incorrect. Osmolarity is a non-countable noun and should be preceded by the article "the".
Appropriate correction is required.
Claim Interpretation
The recitation "protective solution for isolating and protecting mitochondria from cells" as recited in claim 11 is a statement of intended use. Statements reciting purpose or intended use may impose structural limitations; however, in the instant case it is unclear what structural limitations the recitation is intended to impart on the solution claimed, and therefore, is not given patentable weight. See MPEP § 2111.02.
For the purposes of examination, the term "protective" is taken to mean that the solution prevents any deleterious effect on mitochondria when compared to in situ mitochondrial function in a healthy, homeostatic state. The term "isolating" is taken to mean that the solution may be used during any step of isolation of mitochondria from cells, up to and including the final solution in which mitochondria are suspended for use in subsequent steps.
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.
Claims 11-20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The phrase "protective solution for isolating and protecting mitochondria from cells" as recited in claim 11 is indefinite. Statements reciting purpose or intended use may impose structural limitations on the claim; however, in the instant case is unclear what, if any, structural limitations the recitations are intended to impart on the protective solution claimed. See MPEP § 2111.02. The specification provides that "the osmolarity of the protective solution is greater than 0 and less than or equal to 220 mOsm/L so that the cell membranes of the cells may be destroyed with the help of the protective solution to release the mitochondria." (par. 12). This is not a limiting definition for the protective solution as it only pertains to the destructive action on the cell membrane of whole cells, not to any effect on the mitochondria released. Furthermore, release of mitochondria from the whole cell is just one step in isolation, and this definition does not provide for structural limitations regarding other steps of mitochondrial isolation. The specification does not provide a limiting definition regarding what properties or function of the mitochondria are protected by the solution or to what degree the properties or function are protected. Therefore, the metes and bounds of the composition of the protective solution are unclear. Claims 12-20 are included in the rejection because they depend from claim 11 and do not clarify the matter.
Claim Rejections - 35 USC § 112(a)
The following is a quotation 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.
Claims 11-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. This rejection is made in the interest of compact prosecution to address an alternative interpretation of the claims that places weight on the intended use of the claimed invention.
Enablement is considered in view of the Wands factors (MPEP 2164.01(a)). The court in Wands states, “Enablement is not precluded by the necessity for some experimentation such as routine screening. However, experimentation needed to practice the invention must not be undue experimentation. The key word ‘undue’, not ‘experimentation.’” (Wands, 8 USPQ2d 1404). Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. "Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations." (Wands, 8 USPQ2d 1404). When determining whether a specification meets the enablement requirement, some of the factors to be analyzed are: (1) the breadth of the claims, (2) the nature of the invention, (3) the state of the prior art, (4) the level of one of ordinary skill in the art, (5) the level of predictability in the art, (6) the amount of direction provided by the inventor, (7) the existence of working examples, and (8) whether the quantity of any necessary experimentation to make and use the invention based on the content of the disclosure is undue (Wands). While all of these factors are considered, those sufficient for establishing a prima facie case are discussed below.
Nature of the invention
The invention is drawn to a hypo-osmolar solution with osmolarity less than 220 mOsm/L that may be used to isolate mitochondria from cells. Hypo-osmolarity causes cells to swell and burst, releasing mitochondria and allowing for subsequent isolation steps.
Breadth of the claims
As noted in Claim Interpretation and Claim Rejections - 35 U.S.C. §112(b) above, the intended use of protective and isolating mitochondria is indefinite and fails to impose a limit on the metes and bounds of the claimed invention. Regarding claims 11-12, the breadth of the claims includes any solution within the claimed range of osmolarity. Regarding claims 13-16 and 20, the breadth of the claims includes any solution within the claimed range of osmolarity and comprising the claimed solutes. Regarding claims 17-19, the breadth of the claims includes any solution within the claimed range of osmolarity and comprising the claimed solutes at the claimed weight ratios.
Existence of working examples and Amount of direction provided by the inventor
The specification provides exemplary solutions with osmolarity 42.8, 113, or 220 mOsm/L and comprising sodium chloride (NaCl), glucose, sodium dihydrogen phosphate (NaH2PO4), mannitol, or combinations thereof (Tables 6-8). No details are provided for how the exemplary solutions were made. The specification does not provide concentrations for any solute or even a ratio between solutes for exemplary solutions with more than one solute.
Osmolarity is related to solute concentration using the following equation:
O
s
m
o
l
a
r
i
t
y
=
∑
i
φ
i
n
i
C
i
, where the index i represents each particular solute, φ is the osmotic coefficient representing non-ideality of solute dissociation, n is the number of particles into which a solute molecule can dissociate under ideal conditions, and C is the molar concentration of the solute. Ionic solutes, particularly at low concentration, are close to ideal and predictable (A.C. Guyton and J.E. Hall, Textbook of Medical Physiology, 2006, pp. 297-298). Therefore, osmolarity is sufficient for a skilled artisan to calculate an approximate concentration of a solution comprising a single solute that is ionic, such as NaCl or NaH2PO4, or that does not dissociate, such as glucose or mannitol. However, osmolarity alone is insufficient to calculate or approximate solute concentration for solutions with more than one solute. The specification provides prophetic examples of weight ratios between NaCl, NaH2PO4, glucose, or mannitol, but does not provide working examples regarding how changing those weight ratios while keeping osmolarity in the claimed range affect mitochondrial protection or isolation.
Furthermore, the specification does not provide an exemplary solution with osmolarity less than 42.8 mOsm/L that shows how osmolarity between 0 and 42.8 mOsm/L affects mitochondrial function and extraction efficiency.
Therefore, the specification provides working examples applicable to claims 12-16 and 20 that could be created by a skilled artisan, but not for claims 11 and 17-19.
The specification provides that function in mitochondria isolated using the exemplary solutions range between 12.3 and 22.5% (Tables 6-8 and Fig. 9, 11, and 13). The specification provides that mitochondrial function greater than 10% is excellent (par. 90) and that function is measured by retention of tetramethylrhodamine ethyl ester (TMRE) as a "ratio of the functional mitochondria to the total particles" (par. 56). However, it is unclear to what control percent function is compared as it is unclear what is meant by "total particles" or during what stage of isolation function is measured. Furthermore, it is unclear from the specification whether mitochondrial function is a required attribute for protection, what percent function is considered to be protective, or whether other aspects of the mitochondria must be protected, such as structure or other mean to measurement mitochondrial function. The only comparative example provided is function in mitochondria isolated using hypertonic solutions. It is unclear whether or how comparison to hypertonic solutions demonstrates the protective quality of the claimed solution. No comparison is made against an isotonic solution or any conventional solution used in the art.
Therefore, the examples provided in the specification and guidance in the specification fail to provide sufficient direction to a skilled artisan to make a protective solution for isolating mitochondria from cells.
State and level of predictability in the art
Holtzman (D. Holtzman, et al. J Neurochem, 1978) teaches several exemplary solutions comprising mannitol and/or sucrose for measuring mitochondrial respiration in mitochondria isolated from rat brain or liver (Table 1 and p. 1410). Holtzman demonstrates that compared to iso-osmolar solutions, mitochondria in hypo-osmolar solutions have impaired respiratory control ratio and State 3 respiration (Table 2 and Results p. 1411), lower cytochrome oxidase activity (Table 7 and Results pp. 1412 and 1414), and were ballooned, had disarranged cristae, and had missing outer membranes (Fig. 2-3 and Results pp. 1415-1416). The magnitude of these effects correlated with decreasing osmolarity (Holtzman, Results pp. 1411-1416). Therefore, Holtzman teaches that hypo-osmolar solutions comprising mannitol have deleterious effects on isolated mitochondria. Furthermore, a skilled artisan could extrapolate from the correlation taught by Holtzman between hypo-osmolarity and mitochondrial function and structure to predict that solutions with decreasing hypo-osmolarity below 40 mOsm/L (the lowest taught by Holtzman, Table 1) would have worse mitochondrial function and structure.
Jäckle (T. Jäckle, et al., Am J Physiol Cell Physiol, 2001) teaches several exemplary hypo-osmolar solutions comprising diluted Iscove's Modified Eagle's Medium (IMDM) or RPMI 1640 (Materials and Methods p. C1717). IMDM comprises NaCl, NaH2PO4, and glucose (N.N. Iscove and F. Melchers, J Exp Med, 1978). Jäckle demonstrates that cells in hypo-osmolar media have decreased mitochondrial mass and decreased mitochondrial membrane potential, which precedes cytochrome c release and caspase 3 activation that lead to apoptosis (Discussion p. C1723). Therefore, Jäckle teaches that hypo-osmolar solutions comprising NaCl, NaH2PO4, and glucose have deleterious effects on mitochondria in cells.
Taken together, the state of the art shows that hypo-osmolar solutions with osmolarity in the claimed ranges and comprising the claimed solutes have deleterious effects on mitochondria in situ and in isolated mitochondria.
Conclusions
Based on the state of the art, a skilled artisan would predict that using a solution comprising NaCl, NaH2PO4, glucose, mannitol, or a combination thereof with osmolarity of 220 mOsm/L or less would not be protective of mitochondria at any stage of isolation, from culturing intact cells to testing physiological function in isolated mitochondria. The specification does not provide working or prophetic examples or direction to overcome limitations identified in the art. Therefore, a skilled artisan would thus be faced with an undue burden of experimentation when attempting to make or use the invention as claimed.
Claim Rejections - 35 USC § 101
The following is a quotation of 35 U.S.C. § 101:
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.
Claim 11 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to natural product without significantly more. The claim recites a solution with osmolarity greater than 0 and less than or equal to 220 mOsm/L. This judicial exception is not integrated into a practical application because the scope of the claim encompasses an aqueous solution with no solutes, which is water. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the recitations "protective" and "for isolating and protecting mitochondria from cells" are intended use statements that do not impose structural limitations that differ the claimed solution from water. Osmolarity of an aqueous solution is defined by the concentration and dissociation of dissolved solutes (). An aqueous solution with an osmolarity of zero thus has no dissolved solutes and is just water.
The Office published the guidance document entitled 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance), published 16 Dec 2014. Step 2A was revised to include two prongs (Federal Register / Vol. 84, No. 4 / Monday, 07 Jan 2019).
Analysis to determine subject matter eligibility is as follows:
Step 1: Is the claim directed to a statutory category under 35 U.S.C. § 101 (i.e. process, machine, manufacture, or composition of matter)?
The claim is directed to a composition of matter (a solution).
Step 1: Yes.
Step 2A, Prong One: Does the claim recite a judicial exception to the statutory categories (i.e., a law of nature, a natural product or natural phenomenon, or an abstract idea)?
The composition of matter (a solution) is directed to a natural product. The claim is directed to a composition that is not markedly different from water.
Step 2A, Prong One: Yes.
Step 2A, Prong Two: Does the claim recite additional elements that integrate the judicial exception into practical application of the exception?
This exception is not integrated into practical application because the claim does not recite additional elements that integrate the judicial exception into practical application. The recitations "protective" and "for isolating and protecting mitochondria from cells" merely link use of the natural product to a particular technological environment or field of use, which is not indicative of integrating the natural product into practical application. See MPEP § 2106.05(h).
Step 2A, Prong Two: No.
Step 2B: Does the claim recite additional elements that individually or in combination amount to significantly more than the judicial exception (i.e., whether the additional elements provide an inventive concept)?
The additional elements recited in the claim do not add an inventive step to add significantly more than link the natural product to a particular technological environment or field of use when considered alone or in combination.
Step 2B: No.
The markedly different characteristics analysis performed in Step 2A, Prong One is a comparison of the nature-based product limitation to its naturally occurring counterpart in its natural state. Such characteristics can be expressed as the product’s structure, function, and/or other properties. Product of nature exceptions include both naturally occurring products and non-naturally occurring products that lack markedly different characteristics from any naturally occurring counterpart. See MPEP § 2106.04(b)(II). If the claim recites a nature-based product limitation that does not exhibit markedly different characteristics, the claim is directed to a product of nature exception, and the claim requires further analysis to determine eligibility based on whether additional recited elements add significantly more to the exception. In accordance with this analysis, a solution, for example, is eligible when there is a resultant change in characteristics sufficient to show a marked difference from water. It is concluded here, that the claimed medium is no markedly different from its naturally occurring counterpart, water, as an osmolarity of about zero does not distinguish an aqueous solution from water.
The Supreme Court has identified considerations for determining whether a claim with additional elements amounts to significantly more than the judicial exception itself, which include:
improvements to another technology or technical field;
improvements to the functioning of the computer itself;
applying the judicial exception with, or by use of, a particular machine;
effecting a transformation or reduction of a particular article to a different state or thing;
adding a specific limitation other than what is well-understood, routine, and conventional in the field;
adding unconventional steps that confine the claim to a particular useful application; or
other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Limitations found to be insufficient to qualify as significantly more when recited in a claim with a judicial exception include:
adding the words ‘apply it’ (or an equivalent) with the judicial exception;
mere instructions to implement an abstract idea on a computer;
simply appending well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception;
adding insignificant extra-solution activity to the judicial exception; or
generally linking the use of the judicial exception to a particular technological environment or field of use.
In the instant case, the limitations of the claims do not impose limits on the scope of the claim such that the claimed medium is markedly different from a naturally occurring product. Accordingly, based on analysis of the claim as a whole, claim 11 does not recite additional elements adding significantly more than the judicial exception. Thus, claim 11 is rejected under 35 U.S.C. § 101 because the claimed invention is not directed to patent eligible subject matter. Claims 12-20 are not included because the claims recite subject matter that differ the claims from the judicial exception.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 11-15 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gu (CN 106668840 B, Feb 2020) and as evidenced by Guyton (A.C. Guyton and J.E. Hall, Textbook of Medical Physiology, 2006).
Gu discloses a hypotonic solution with osmolality 72 mOsm/kg comprising 5 mM sodium chloride (NaCl, claims 11, 13, 17-18, and 20), 20 mM glucose (claims 14, 17, and 19-20), and 15 mM sodium dihydrogen phosphate (NaH2PO4, claims 15 and 18-20) (par. 19).
The density of a dilute aqueous solution is about 1 kg/L (Guyton p. 297); therefore, the osmolarity of the hypotonic solution taught by Gu is about 72 mOsm/L, which is within the claimed range of 42.8 to 113 mOsm/L (claims 11-15 and 17-20).
The disclosed concentration of NaCl is 0.29 g/L, concentration of glucose is 3.60 g/L, and concentration of NaH2PO4 is equal to 1.80 g/L. Therefore, the weight ratio of NaCl to glucose is 0.08, which is within the claimed range of 1:0.06 to 1:2560 (claim 17). The weight ratio of NaCl to NaH2PO4 is 0.16, which is within the claimed range of 1:0.015 to 1:133 (claim 18). The weight ratio of glucose to NaH2PO4 is 2.00, which is within the claimed range of 1:0.0007 to 1:22 (claim 19).
Claims 11, 13-14, 16-17, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moqrich (US 9884088 B2, 2018).
Moqrich discloses a hypotonic solution with osmolarity 200 mOsM (mOsm/L, claims 11, 13-14, 16-17, and 20) comprising 87 mM NaCl (claims 13, 17, and 20), 51 mM mannitol (claims 16-17, and 20), and 10 mM glucose (claims 14, 17, and 20) (col. 21 lines 49-51).
The disclosed concentration of NaCl is 5.08 g/L and concentration of glucose is 1.80 g/L. Therefore, the weight ratio of NaCl to glucose is 2.82, which is within the claimed range of 1:0.06 to 1:2560 (claim 17).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric B Wright whose telephone number is (571) 272-2607. The examiner can normally be reached Mo - Fr, 09:00 a.m. - 05:00 p.m. Eastern. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Paras can be reached at (571) 272-4517.
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/Eric B Wright/Examiner, Art Unit 1632 /VALARIE E BERTOGLIO/Primary Examiner, Art Unit 1632
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