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 .
Claim Status
Claims 1-3, 5-6, and 9-10 are rejected.
No claims are allowed.
New Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-6, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nordgren et al., (Bovine milk-derived extracellular vesicles enhance inflammation and promote M1 polarization following agricultural dust exposure in mice, Feb. 2019) (hereinafter Nordgren) in view of Micol (WO 2019/158955 A1, Aug. 22, 2019) (hereinafter Micol), and further in view of Ayala-Marr et al., (Recent advances and challenges in the recovery and purification of cellular exosomes, August 30, 2019) (hereinafter Ayala-Marr) as evidenced by Burke-Gaffney et al., (Tumour necrosis factor-ac-induced ICAM-1 expression in human vascular endothelial and lung epithelial cells: modulation by tyrosine kinase inhibitors, November 1996) (cited by Examiner on Form 892 10/24/2025) (hereinafter Burke-Gaffney).
Nordgren discloses that bovine milk-derived extracellular vesicles modulate inflammatory responses to agricultural dust exposures. In the study, mice were fed either an extracellular vesicle-enriched modification of the AIN-93G diet with lyophilized bovine milk (EV) (i.e., functional health food) or a control diet wherein the milk was presonicated, disrupting the milk extracellular vesicles and thereby leading to RNA degradation (DEV). Mice were maintained on the diets for 5–7 weeks and challenged with a single (acute) intranasal instillation of a 12.5% organic dust extract (DE). Significant interactions between diet and DE when considering numerous inflammatory outcomes were identified, including lavage inflammatory cytokine levels and cellular infiltration into the lung airways. IL-6, TNF, IL-12/23 were all significantly elevated in EV macrophages, ex vivo. These results suggest a role for dietary extracellular vesicles in the modulation of lung inflammation in response to organic dust (Abstract). In the method, pasteurized and homogenized fat-free bovine milk (i.e., commercial cow milk) was purchased at a local grocery. Milk nanovesicles were isolated by centrifugation at 3000×g, 15′ to remove residual fat and cellular debris, and the supernate was centrifuged at 12,000×g and again at 35,000×g. Clarified milk whey was mixed with equal volumes of 0.25 M EDTA (30′ on ice) to precipitate casein and casein-associated nanovesicles and recentrifuged at 48,000×g for 1.5 h. Supernates were collected and EVs precipitated using ExoQuick reagent. Samples were filtered through a 0.22-μm syringe filter, centrifuged at 1500×g, 30′, and the isolated EV pellet was resuspended in sterile PBS. Extracellular vesicles recovered using this method were characterized and particle sizes ranged from 47 to 144 nm, consistent with the reported size range for exosomes. The EV concentration in these preps was confirmed using a CD63 microplate assay which returned comparable concentration values (1.9 to 6.3×109 particles/ml) (i.e., positive for CD63) (2.9. Isolation and characterization of milk-derived EVs, pages 11-112). Inflammatory mediators such as TNF-α and CXCL1 were elevated in BALF from mice fed EV diet vs. DEV diet following acute DE exposure when mice were fed EV or DEV diet for 7 weeks (i.e., therapeutically effective amount) followed by a single DE challenge. (Fig. 3, page 113). Extracellular vesicles in bovine milk contain numerous microRNA species, and milk consumption alters human gene expression that is regulated by these microRNAs and modifies circulating inflammatory cytokine levels (Introduction, page 110).
Nordgren differs from the instant claims insofar as not disclosing wherein the exosomes are effective to increase expression of CCL3 and CCL5.
However, Micol discloses an isolated mRNA sequence comprising miRNA binding site sequences that allow for differential expression of the coding sequence within the target organ, used in the treatment of lung diseases (Abstract). The isolated mRNA sequence is comprised within an exosome (Claim 16). The isolated mRNA sequence encodes cytokines involved in immune response and inflammation selected from one or more of CCL3, and CCL5 (Claim 45(i)). Formulations and compositions of the invention are formulated to conform to regulatory standards and can be administered orally (page 44, lines 7-8).
As discussed above, Nordgren teaches that extracellular vesicles (i.e., exosomes) in bovine milk contain numerous microRNA species, and milk consumption alters human gene expression that is regulated by these microRNAs and modifies circulating inflammatory cytokine levels and further, discloses a method that significantly elevates inflammatory cytokine levels in response to dust exposure through administration of exosomes isolated from bovine milk. Micol teaches that isolated mRNA sequences are comprised within an exosome. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have used bovine milk exosomes comprising an isolated mRNA sequence that encodes CCL3 and CCL5 since these are cytokines involved in immune response and inflammation and can be comprised within exosomes for delivery and expression in the lung, as taught by Micol.
The combined teachings of Nordgren and Micol do not disclose wherein the exosomes are positive for CD9, CD63, CD81, and TSG101.
However, Ayala-Marr teaches that breast milk-derived exosomes are used in regulation of immune responses and are typically isolated through differential centrifugation (Table 1, page 3039). However, immunoaffinity techniques can also be used to selectively isolate exosomes from complex biological fluids. Immunoaffinity approaches take advantage of the many proteins, receptors, lipids, and polysaccharides that are present in the outer surface of exosomes. Exosome biomarkers such as CD63, CD81, CD9, and TSG-101 have been used in immunoaffinity techniques to selectively identify and isolate specific subpopulations of these types of exosomes. Immunoaffinity techniques are usually coupled to other strategies that integrate the specific selection of exosomes with a physical separation or isolation procedure. Such strategies allow the enrichment of the sample with exosomes or the depletion of unwanted vesicles (2.4 Immunoaffinity procedures, page 3043). The main advantage of the immunoaffinity procedures used with this purpose is the better quality and purity of the resulting isolated exosomes. Since antigen-antibody interactions are highly specific, this technique is very useful to selectively isolate a subpopulation of extracellular vesicles without contaminants (page 3044, third paragraph).
As discussed above, Nordgren discloses that the bovine milk exosomes isolated through centrifugation and filtration techniques were confirmed using a CD63 concentration value. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have differentially isolated exosomes comprising the additional biomarkers (i.e., are positive for) CD81, CD9, and TSG-101 since these biomarkers are used in techniques that selectively isolate a subpopulation of extracellular vesicles without contaminants resulting in better quality and purity of the resulting isolated exosomes, as taught by Ayala-Marr.
Regarding the limitation of claim 1 reciting wherein the amount of exosome is effective to increase expression of CD54, as evidenced by Burke-Gaffney, tumour necrosis factor-alpha (TNF alpha) increases the expression of the adhesion molecule intercellular adhesion molecule-1 (ICAM-1) (i.e., CD54) (Abstract). Accordingly, because the bovine milk exosomes of Nordgren led to an increase in TNF alpha, the bovine milk exosomes of Nordgren would necessarily increase expression of CD54.
Regarding claims 3 and 5-6, as discussed above, Nordgren discloses a commercial bovine milk-derived exosome used for enhancing immunity of a subject. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), see MPEP 2113. The final product disclosed in the instant application holds no patentably distinct structural differences from the final product disclosed by Nordgren.
Regarding claim 10, as noted in the instant specification, CD54, CXCL1, and TNF- a are factors involved in T cell and dendritic cell activation and inflammatory responses ([0217]). Accordingly, because the bovine milk-derived exosomes of Nordgren led to an increase in CD54, CXCL1, and TNF-a, the bovine milk-derived exosomes of Nordgren would necessarily be effective to activate T cells and dendritic cells in the subject.
Response to Applicant’s Arguments
Applicant’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendments have been made.
New Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
1. Claims 1-3 and 5-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-15 and 21-39 of co-pending Application No. 17780391 in view of Nordgren et al., (Bovine milk-derived extracellular vesicles enhance inflammation and promote M1 polarization following agricultural dust exposure in mice, Feb. 2019) (hereinafter Nordgren) in view of Micol (WO 2019/158955 A1, Aug. 22, 2019) (hereinafter Micol), and further in view of Ayala-Marr et al., (Recent advances and challenges in the recovery and purification of cellular exosomes, August 30, 2019) (hereinafter Ayala-Marr) as evidenced by Burke-Gaffney et al., (Tumour necrosis factor-ac-induced ICAM-1 expression in human vascular endothelial and lung epithelial cells: modulation by tyrosine kinase inhibitors, November 1996) (cited by Examiner on Form 892 10/24/2025) (hereinafter Burke-Gaffney).
Co-pending application claims 14, 26, and 33 teach a method comprising applying a therapeutically effective amount of exosomes isolated from milk or goat milk to the skin of the subject but do not teach a method of enhancing immunity of a subject wherein the therapeutically effective amount of exosomes is effective to increase expression of CD54, CXCL1, CCL3, CCL5, and TNF-a in the subject wherein the exosomes are not drug carriers, and the exosomes are positive for CD9, CD63, CD81, and TSG101, as recited in instant claim 1.
However, Nordgren discloses that mice were fed either an extracellular vesicle-enriched modification of the AIN-93G diet with lyophilized bovine milk (EV) or a control diet wherein the milk was presonicated, disrupting the milk extracellular vesicles and thereby leading to RNA degradation (DEV). Pasteurized and homogenized fat-free bovine milk (i.e., commercial cow milk) was purchased at a local grocery. Milk nanovesicles were isolated and particle sizes ranged from 47 to 144 nm, consistent with the reported size range for exosomes. The EV concentration in these preps was confirmed using a CD63 microplate assay which returned comparable concentration values (1.9 to 6.3×109 particles/ml) (i.e., positive for CD63) (2.9. Isolation and characterization of milk-derived EVs, pages 11-112). Inflammatory mediators such as TNF-α and CXCL1 were elevated in BALF from mice fed EV diet vs. DEV diet following acute DE exposure when mice were fed EV or DEV diet for 7 weeks (i.e., therapeutically effective amount) followed by a single DE challenge. (Fig. 3, page 113). Extracellular vesicles in bovine milk contain numerous microRNA species, and milk consumption alters human gene expression that is regulated by these microRNAs and modifies circulating inflammatory cytokine levels (Introduction, page 110).
The combined teachings of the copending claims and Nordgren do not disclose wherein the exosomes are effective to increase expression of CCL3 and CCL5.
However, Micol discloses an isolated mRNA sequence comprising miRNA binding site sequences that allow for differential expression of the coding sequence in at least a first and a second cell type within the target organ used in the treatment of lung diseases (Abstract). The isolated mRNA sequence is comprised within an exosome (Claim 16). The isolated mRNA sequence encodes cytokines (or their ligands) involved in immune response and inflammation selected from one or more of CCL3, and CCL5 (Claim 45(i)). Formulations and compositions of the invention are formulated to conform to regulatory standards and can be administered orally (page 44, lines 7-8).
As discussed above, Nordgren teaches that extracellular vesicles in bovine milk contain numerous microRNA species, and milk consumption alters human gene expression that is regulated by these microRNAs and modifies circulating inflammatory cytokine levels and discloses a method that significantly elevates inflammatory cytokine levels in response to dust exposure through administration of exosomes isolated from bovine milk. Micol teaches that isolated mRNA sequences are comprised within an exosome. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have used bovine milk exosomes comprising an isolated mRNA sequence that encodes CCL3 and CCL5 since these are cytokines involved in immune response and inflammation and can be comprises within exosomes for delivery and expression in the lung, as taught by Micol.
The combined teachings of the instant claims, Nordgren and Micol do not disclose wherein the exosomes are positive for CD9, CD81, and TSG101.
However, Ayala-Marr teaches that breast milk-derived exosomes are used in regulation of immune responses and are typically isolated through differential centrifugation (Table 1, page 3039). However, immunoaffinity techniques can also be used to selectively isolate exosomes from complex biological fluids. Immunoaffinity approaches take advantage of the many proteins, receptors, lipids, and polysaccharides that are present in the outer surface of exosomes. Exosome biomarkers such as CD63, CD81, CD9, and TSG-101 have been used in immunoaffinity techniques to selectively identify and isolate specific subpopulations of these types of exosomes. Immunoaffinity techniques are usually coupled to other strategies that integrate the specific selection of exosomes with a physical separation or isolation procedure. Such strategies allow the enrichment of the sample with exosomes or the depletion of unwanted vesicles (2.4 Immunoaffinity procedures, page 3043). The main advantage of the immunoaffinity procedures used with this purpose is the better quality and purity of the resulting isolated exosomes. Since antigen-antibody interactions are highly specific, this technique is very useful to selectively isolate a subpopulation of extracellular vesicles without contaminants (page 3044, third paragraph).
As discussed above, Nordgren discloses that the bovine milk exosomes isolated through centrifugation and filtration techniques were confirmed using a CD63 concentration value. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have differentially isolated exosomes comprising the additional biomarkers (i.e., are positive for) CD81, CD9, and TSG-101 since these biomarkers are used in techniques that selectively isolate a subpopulation of extracellular vesicles without contaminants resulting in better quality and purity of the resulting isolated exosomes, as taught by Ayala-Marr.
Regarding the limitation of instant claim 1 reciting wherein the amount of exosome is effective to increase expression of CD54, as evidenced by Burke-Gaffney, tumour necrosis factor-alpha (TNF alpha) increases the expression of the adhesion molecule intercellular adhesion molecule-1 (ICAM-1) (i.e., CD54) (Abstract). Accordingly, because the bovine milk exosomes of Nordgren led to an increase in TNF alpha, the bovine milk exosomes of Nordgren would necessarily increase expression of CD54.
Regarding claims 1 and 2, it would be obvious to one of ordinary skill in the art to utilize a therapeutically effective amount of exosomes derived from commercial cow milk for the intended use of enhancing immunity of a subject, with a reasonable expectation of success because commercial bovine-milk derived exosomes that are not drug carriers and are positive for CD9, CD63, CD81, and TSG101 have been shown to increase expression of CD54, CXCL1, CCL3, CCL5, and TNF-a as taught by Nordgren in view of Micol and Ayala-Marr.
Claims 3 and 5-6 of the instant application are dependent on claim 1. Regarding claims 3 and 5-6, as discussed above, Nordgren discloses a commercial bovine milk-derived exosome used for enhancing immunity of a subject. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), see MPEP 2113. The final product disclosed in the instant application holds no patentably distinct structural differences from the final product disclosed above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2. Claims 1-3 and 5-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of co-pending Application No. 18133918 in view of Nordgren et al., (Bovine milk-derived extracellular vesicles enhance inflammation and promote M1 polarization following agricultural dust exposure in mice, Feb. 2019) (hereinafter Nordgren) in view of Micol (WO 2019/158955 A1, Aug. 22, 2019) (hereinafter Micol), and further in view of Ayala-Marr et al., (Recent advances and challenges in the recovery and purification of cellular exosomes, August 30, 2019) (hereinafter Ayala-Marr) as evidenced by Burke-Gaffney et al., (Tumour necrosis factor-ac-induced ICAM-1 expression in human vascular endothelial and lung epithelial cells: modulation by tyrosine kinase inhibitors, November 1996) (cited by Examiner on Form 892 10/24/2025) (hereinafter Burke-Gaffney).
Co-pending application claim 1 teaches a method comprising applying a therapeutically effective amount of exosomes isolated from milk or goat milk to the subject but does not teach a method of enhancing immunity of a subject wherein the exosomes are not drug carriers, and the exosomes are positive for CD9, CD63, CD81, and TSG101, as recited in instant claim 1.
However, Nordgren discloses that mice were fed either an extracellular vesicle-enriched modification of the AIN-93G diet with lyophilized bovine milk (EV) or a control diet wherein the milk was presonicated, disrupting the milk extracellular vesicles and thereby leading to RNA degradation (DEV). Pasteurized and homogenized fat-free bovine milk (i.e., commercial cow milk) was purchased at a local grocery. Milk nanovesicles were isolated and particle sizes ranged from 47 to 144 nm, consistent with the reported size range for exosomes. The EV concentration in these preps was confirmed using a CD63 microplate assay which returned comparable concentration values (1.9 to 6.3×109 particles/ml) (i.e., positive for CD63) (2.9. Isolation and characterization of milk-derived EVs, pages 11-112). Inflammatory mediators such as TNF-α and CXCL1 were elevated in BALF from mice fed EV diet vs. DEV diet following acute DE exposure when mice were fed EV or DEV diet for 7 weeks (i.e., therapeutically effective amount) followed by a single DE challenge. (Fig. 3, page 113). Extracellular vesicles in bovine milk contain numerous microRNA species, and milk consumption alters human gene expression that is regulated by these microRNAs and modifies circulating inflammatory cytokine levels (Introduction, page 110).
The combined teachings of the copending claims and Nordgren do not disclose wherein the exosomes are effective to increase expression of CCL3 and CCL5.
However, Micol discloses an isolated mRNA sequence comprising miRNA binding site sequences that allow for differential expression of the coding sequence in at least a first and a second cell type within the target organ used in the treatment of lung diseases (Abstract). The isolated mRNA sequence is comprised within an exosome (Claim 16). The isolated mRNA sequence encodes cytokines (or their ligands) involved in immune response and inflammation selected from one or more of CCL3, and CCL5 (Claim 45(i)). Formulations and compositions of the invention are formulated to conform to regulatory standards and can be administered orally (page 44, lines 7-8).
As discussed above, Nordgren teaches that extracellular vesicles in bovine milk contain numerous microRNA species, and milk consumption alters human gene expression that is regulated by these microRNAs and modifies circulating inflammatory cytokine levels and discloses a method that significantly elevates inflammatory cytokine levels in response to dust exposure through administration of exosomes isolated from bovine milk. Micol teaches that isolated mRNA sequences are comprised within an exosome. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have used bovine milk exosomes comprising an isolated mRNA sequence that encodes CCL3 and CCL5 since these are cytokines involved in immune response and inflammation and can be comprises within exosomes for delivery and expression in the lung, as taught by Micol.
The combined teachings of the copending claims, Nordgren and Micol do not disclose wherein the exosomes are positive for CD9, CD81, and TSG101.
However, Ayala-Marr teaches that breast milk-derived exosomes are used in regulation of immune responses and are typically isolated through differential centrifugation (Table 1, page 3039). However, immunoaffinity techniques can also be used to selectively isolate exosomes from complex biological fluids. Immunoaffinity approaches take advantage of the many proteins, receptors, lipids, and polysaccharides that are present in the outer surface of exosomes. Exosome biomarkers such as CD63, CD81, CD9, and TSG-101 have been used in immunoaffinity techniques to selectively identify and isolate specific subpopulations of these types of exosomes. Immunoaffinity techniques are usually coupled to other strategies that integrate the specific selection of exosomes with a physical separation or isolation procedure. Such strategies allow the enrichment of the sample with exosomes or the depletion of unwanted vesicles (2.4 Immunoaffinity procedures, page 3043). The main advantage of the immunoaffinity procedures used with this purpose is the better quality and purity of the resulting isolated exosomes. Since antigen-antibody interactions are highly specific, this technique is very useful to selectively isolate a subpopulation of extracellular vesicles without contaminants (page 3044, third paragraph).
As discussed above, Nordgren discloses that the bovine milk exosomes isolated through centrifugation and filtration techniques were confirmed using a CD63 concentration value. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have differentially isolated exosomes comprising the additional biomarkers (i.e., are positive for) CD81, CD9, and TSG-101 since these biomarkers are used in techniques that selectively isolate a subpopulation of extracellular vesicles without contaminants resulting in better quality and purity of the resulting isolated exosomes, as taught by Ayala-Marr.
Regarding the limitation of instant claim 1 reciting wherein the amount of exosome is effective to increase expression of CD54, as evidenced by Burke-Gaffney, tumour necrosis factor-alpha (TNF alpha) increases the expression of the adhesion molecule intercellular adhesion molecule-1 (ICAM-1) (i.e., CD54) (Abstract). Accordingly, because the bovine milk exosomes of Nordgren led to an increase in TNF alpha, the bovine milk exosomes of Nordgren would necessarily increase expression of CD54.
Regarding claims 1 and 2, it would be obvious to one of ordinary skill in the art to utilize a therapeutically effective amount of exosomes derived from commercial cow milk for the intended use of enhancing immunity of a subject, with a reasonable expectation of success because commercial bovine-milk derived exosomes that are not drug carriers and are positive for CD9, CD63, CD81, and TSG101 have been shown to increase expression of CD54, CXCL1, CCL3, CCL5, and TNF-a as taught by Nordgren in view of Micol and Ayala-Marr.
Claims 3 and 5-6 of the instant application are dependent on claim 1. Regarding claims 3 and 5-6, as discussed above, Nordgren discloses a commercial bovine milk-derived exosome used for enhancing immunity of a subject. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), see MPEP 2113. The final product disclosed in the instant application holds no patentably distinct structural differences from the final product disclosed above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
3. Claims 1-3 and 5-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of co-pending Application No. 18133901 in view of Nordgren et al., (Bovine milk-derived extracellular vesicles enhance inflammation and promote M1 polarization following agricultural dust exposure in mice, Feb. 2019) (hereinafter Nordgren) in view of Micol (WO 2019/158955 A1, Aug. 22, 2019) (hereinafter Micol), and further in view of Ayala-Marr et al., (Recent advances and challenges in the recovery and purification of cellular exosomes, August 30, 2019) (hereinafter Ayala-Marr) as evidenced by Burke-Gaffney et al., (Tumour necrosis factor-ac-induced ICAM-1 expression in human vascular endothelial and lung epithelial cells: modulation by tyrosine kinase inhibitors, November 1996) (cited by Examiner on Form 892 10/24/2025) (hereinafter Burke-Gaffney).
Co-pending application claim 1 teaches a method comprising applying a therapeutically effective amount of exosomes isolated from milk or goat milk to the subject but does not teach a method of enhancing immunity of a subject wherein the exosomes are not drug carriers, and the exosomes are positive for CD9, CD63, CD81, and TSG101, as recited in instant claim 1.
However, Nordgren discloses that mice were fed either an extracellular vesicle-enriched modification of the AIN-93G diet with lyophilized bovine milk (EV) or a control diet wherein the milk was presonicated, disrupting the milk extracellular vesicles and thereby leading to RNA degradation (DEV). Pasteurized and homogenized fat-free bovine milk (i.e., commercial cow milk) was purchased at a local grocery. Milk nanovesicles were isolated and particle sizes ranged from 47 to 144 nm, consistent with the reported size range for exosomes. The EV concentration in these preps was confirmed using a CD63 microplate assay which returned comparable concentration values (1.9 to 6.3×109 particles/ml) (i.e., positive for CD63) (2.9. Isolation and characterization of milk-derived EVs, pages 11-112). Inflammatory mediators such as TNF-α and CXCL1 were elevated in BALF from mice fed EV diet vs. DEV diet following acute DE exposure when mice were fed EV or DEV diet for 7 weeks (i.e., therapeutically effective amount) followed by a single DE challenge. (Fig. 3, page 113). Extracellular vesicles in bovine milk contain numerous microRNA species, and milk consumption alters human gene expression that is regulated by these microRNAs and modifies circulating inflammatory cytokine levels (Introduction, page 110).
The combined teachings of the copending claims and Nordgren do not disclose wherein the exosomes are effective to increase expression of CCL3 and CCL5.
However, Micol discloses an isolated mRNA sequence comprising miRNA binding site sequences that allow for differential expression of the coding sequence in at least a first and a second cell type within the target organ used in the treatment of lung diseases (Abstract). The isolated mRNA sequence is comprised within an exosome (Claim 16). The isolated mRNA sequence encodes cytokines (or their ligands) involved in immune response and inflammation selected from one or more of CCL3, and CCL5 (Claim 45(i)). Formulations and compositions of the invention are formulated to conform to regulatory standards and can be administered orally (page 44, lines 7-8).
As discussed above, Nordgren teaches that extracellular vesicles in bovine milk contain numerous microRNA species, and milk consumption alters human gene expression that is regulated by these microRNAs and modifies circulating inflammatory cytokine levels and discloses a method that significantly elevates inflammatory cytokine levels in response to dust exposure through administration of exosomes isolated from bovine milk. Micol teaches that isolated mRNA sequences are comprised within an exosome. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have used bovine milk exosomes comprising an isolated mRNA sequence that encodes CCL3 and CCL5 since these are cytokines involved in immune response and inflammation and can be comprises within exosomes for delivery and expression in the lung, as taught by Micol.
The combined teachings of the instant claims, Nordgren and Micol do not disclose wherein the exosomes are positive for CD9, CD81, and TSG101.
However, Ayala-Marr teaches that breast milk-derived exosomes are used in regulation of immune responses and are typically isolated through differential centrifugation (Table 1, page 3039). However, immunoaffinity techniques can also be used to selectively isolate exosomes from complex biological fluids. Immunoaffinity approaches take advantage of the many proteins, receptors, lipids, and polysaccharides that are present in the outer surface of exosomes. Exosome biomarkers such as CD63, CD81, CD9, and TSG-101 have been used in immunoaffinity techniques to selectively identify and isolate specific subpopulations of these types of exosomes. Immunoaffinity techniques are usually coupled to other strategies that integrate the specific selection of exosomes with a physical separation or isolation procedure. Such strategies allow the enrichment of the sample with exosomes or the depletion of unwanted vesicles (2.4 Immunoaffinity procedures, page 3043). The main advantage of the immunoaffinity procedures used with this purpose is the better quality and purity of the resulting isolated exosomes. Since antigen-antibody interactions are highly specific, this technique is very useful to selectively isolate a subpopulation of extracellular vesicles without contaminants (page 3044, third paragraph).
As discussed above, Nordgren discloses that the bovine milk exosomes isolated through centrifugation and filtration techniques were confirmed using a CD63 concentration value. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have differentially isolated exosomes comprising the additional biomarkers (i.e., are positive for) CD81, CD9, and TSG-101 since these biomarkers are used in techniques that selectively isolate a subpopulation of extracellular vesicles without contaminants resulting in better quality and purity of the resulting isolated exosomes, as taught by Ayala-Marr.
Regarding the limitation of instant claim 1 reciting wherein the amount of exosome is effective to increase expression of CD54, as evidenced by Burke-Gaffney, tumour necrosis factor-alpha (TNF alpha) increases the expression of the adhesion molecule intercellular adhesion molecule-1 (ICAM-1) (i.e., CD54) (Abstract). Accordingly, because the bovine milk exosomes of Nordgren led to an increase in TNF alpha, the bovine milk exosomes of Nordgren would necessarily increase expression of CD54.
Regarding claims 1 and 2, it would be obvious to one of ordinary skill in the art to utilize a therapeutically effective amount of exosomes derived from commercial cow milk for the intended use of enhancing immunity of a subject, with a reasonable expectation of success because commercial bovine-milk derived exosomes that are not drug carriers and are positive for CD9, CD63, CD81, and TSG101 have been shown to increase expression of CD54, CXCL1, CCL3, CCL5, and TNF-a as taught by Nordgren in view of Micol and Ayala-Marr.
Claims 3 and 5-6 of the instant application are dependent on claim 1. Regarding claims 3 and 5-6, as discussed above, Nordgren discloses a commercial bovine milk-derived exosome used for enhancing immunity of a subject. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), see MPEP 2113. The final product disclosed in the instant application holds no patentably distinct structural differences from the final product disclosed above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Applicant’s Arguments
Applicant’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendments have been made.
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.
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/S.J.K./ Examiner, Art Unit 1614
/TRACY LIU/ Primary Examiner, Art Unit 1614