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 .
Applicant’s amendments and arguments of June 5, 2026, are entered.
Claims 1, 16, 17, and 22 have been amended.
Claims 15 and 57 have been canceled.
Claims 78 and 79 are new claims.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on July 23, 2026, was filed before the mailing of the Non-Final Office Action on August 29, 2026. The Non-Patent Literature is in compliance with the provisions of 37 CFR 1.97 and are being considered by examiner.
Drawings
The objection to Applicant’s drawings, Figures 1, 3 4A, 4B, and 5, is withdrawn.
Double Patenting
Claim 57 has been canceled. Therefore the double patent warning is withdrawn.
Claim Rejections – 35 USC § 112
In light of Applicant’s amendment to claim 17, the §112(b) rejection is withdrawn.
Claim Rejections – 35 USC § 103
In light of Applicant’s amendments, the §103 rejection for claims 1-6, 8-12, 14-18, 21-22, and 57 is withdrawn.
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 17 and 18 are newly rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 recites “wherein the air-sealed glass vial has less than 50 microliters”. As written, the claim is indefinite. Are 50 microliters referring to interior volume, liquid volume, headspace, or some other value associated with the vial?
Claim 78 is also rejected based on dependency to claim 17.
Claim 18 recites “wherein the protein is incubated with each sample of the set of samples…prior to step (c)”. As written, the claim language is inconsistent with part (c) of claim 1 where part (c) requires adding the protein to each sample of the set of samples”. This creates a chronological inconsistency given claim 18 is saying the protein is added prior to step (c), and step (c) requires adding the protein. A person of ordinary skill would not understand in what order or at what point the protein is to be added to the set of samples.
Claim 79 is also rejected based on dependency to claim 18.
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.
Claims 1-6, 8-12, 14, 16-19, 21-22, and 78-79 are newly rejected under 35 U.S.C. §103 as being unpatentable over Rudyk and Eaton (Hereinafter Rudyk) [Biochemical methods for monitoring protein thiol redox states in biological systems, Redox Biol, 2014], in view of Gurzeler et al. [Production of human translation-competent lysates using dual centrifugation, RNA Biology, 2021], in view of Ren et al. [Antibody disulfide bond reduction and recovery during biopharmaceutical process development – a review, Biotechnology and Bioengineering, 2021], in view of Handlogten et al. [Online control of cell culture redox potential prevents antibody interchain disulfide bond reduction, Biotechnology and Bioengineering, 2020], in view of Hardter et al. [Minimizing oxidation of freeze-dried monoclonal antibodies in polymeric vials using a smart packaging approach, Pharmaceutics, 2021], in view of Hutterer et al. [Monoclonal antibody disulfide reduction during manufacturing, Mabs, 2013], in view of Qi et al. [Characterization of the photodegradation of a human IgG1 monoclonal antibody formulated as a high-concentration liquid dosage form, Journal of Pharmaceutical Sciences, 2009], in view of Green [Chapter: Headspace Analysis, Encyclopedia of Analytical Science, 2005].
For part (a) of claim 1, Rudyk discloses general knowledge pertaining to comparative redox assay design. Rudyk teaches methods for assessing protein thiol redox status in biological samples, including cell lysates, and explain that these lysates contain endogenous reducing components that are capable of influencing the protein reduction state [Introduction ¶ 3]. Additionally, it would have been prima facie obvious to a person of ordinary skill in the art prior to the claimed invention to provide a first and second cell culture that are identical except that one contains a cell lysate in order to conduct comparative analysis of protein reduction under various conditions. It is merely creating a test group and a control group.
For part (b) of claim 1, Rudyk further discloses the use of multiple redox assays with varying reducing agent concentrations in order to generate gradients of redox potential [2. Monitoring reduced protein thiol status ¶ 1].
For part (c) of claim 1, Qi et al. teaches that protein formulations/samples can be placed in glass vials where 1mL of sample was placed into a 2 mL type I glass vial [Light Exposure Experiments]. Qi et al. further teaches that oxygen present in the vial headspace contributes to protein degradation and that removing oxygen from and/or limiting the vial headspace reduces protein degradation [Effect of environmental and formulation conditions on photo oxidation of the IgG formulation]. Additionally, it would have been obvious to a person of ordinary skill in the art to incubate the samples in an air-sealed container having a small interior volume and limited headspace given that controlling headspace to limit oxygen is a known design consideration in redox chemistry. Additionally, selecting small vial volumes for bench-scale assays would be considered routine laboratory practice and reducing headspace in order to minimize oxygen is a known method for reducing oxidative interference that leads to improved redox conditions as evidenced by the additional teaching of Green that discusses the use of headspace examination as a known technique used in forensic samples, pharmaceuticals, natural products, and polymers [Applications]. Lastly, Hardter et al., discussing minimizing oxidation of freeze-dried monoclonal antibodies, teaches that oxidation is an important degradation pathway for monoclonal antibodies, and that continuous migration of oxygen into drug product containers should be avoided overall [Abstract]. Hardter et al. further teaches that glass vials are known for their ability to maintain low levels of headspace oxygen [3.2 Effect of the Absorber on the oxygen levels in the headspaces of the lyophilizates ¶ 2]. Given this, there is a reasonable expectation of success that a person of ordinary skill in the art would recognize that glass vials provide a unique advantage in maintaining low headspace oxygen levels compared to polymer vials given that polymers are known to be more permeable to gases in general. Because of this, it is prima facie obvious to a person of ordinary skill prior to the filing of the claimed invention to modify the systems of Rudyk discussing biochemical methods for monitoring protein thiol redox and Ren et al. where antibody disulfide bond reduction in biopharmaceutical process development was discussed with the additional teachings of Hardter et al. that disclosed that glass vials have a lower oxygen permeability and therefore are able to maintain a lower oxygen headspace. This would lead a person of ordinary skill in the art to understand that the use of glass vials, especially for small batch testing, would be more beneficial given the oxygen level in the headspace could be more easily controlled given glass is less permeable to gases when compared to polymer vials.
For part (d) of claim 1 where the level of protein reduction and/or redox potential is determined, Rudyk directly teaches maleimide labeling of reduced thiols [2. Monitoring reduced protein thiol status ¶ 3], iodoacetate labeling [Id.], Ellman’s reagent [2. Monitoring reduced produced thiol status ¶ 1], and then comparing the measurements across samples [5. Monitoring protein S-nitrosation ¶ 2].
For part (e) for claim 1 where determining reduction susceptibility based on measured reduction/redox potential, Rudyk teaches comparative redox analysis [5. Monitoring protein S-nitrosation ¶ 2] by evaluating how protein thiols respond to different redox environments that infers susceptibility from such data which is an inherent analytical step.
For claim 2 where the cell lysate was obtained through homogenization of cells, Gurzeler et al., discussing methods for producing human cell lysates via mechanical disruption methods, teaches preparation of functional lysates by physically disrupting cells to release intracellular components, including homogenization, by means of dual centrifugation [Introduction ¶ 4].
For claim 3 where the cell lysate was centrifuged to remove cellular debris, Gurzeler et al. discloses the use of centrifugation for the purpose of removing cellular debris [Results & Discussion ¶ 2].
For claim 4 where the second cell culture fluid is obtained by removing essentially all of the cells from the cell culture medium, while not explicit, Gurzeler in figure 1B shows cells being removed and placed in a vial for dual centrifugation that leads to a supernatant and pellet, i.e. nuclei and unlysed cells. Additionally, removing cells from a culture medium, either by centrifugation or filtration, represent known methods for preparing a lysate-free control fluid and represent known and routine steps in cell culture processing that are a predictable means for generating the non-lysate sample, i.e. control sample.
Here, it is prima facie obvious to a person of ordinary skill in the art prior to the filing of the claimed invention to modify the systems and methods of Rudyk where methods for evaluating reduction/redox states in proteins for comparative analysis were discussed with the additional teachings of Gurzeler et al. that discloses methods for obtaining lysates using dual centrifugation. Because of this, there is a reasonable expectation of success that a person of ordinary skill in the art would recognize the teachings of Rudyk and Gurzeler to develop a system for determining or observing any reduction susceptibility of proteins where the samples included a test group and a control group where the samples were compared for analysis.
For claim 5 where the protein is a recombinant protein, Ren et al. discussing disulfide bond reduction in monoclonal antibodies, teaches monoclonal antibodies, i.e. recombinant proteins, undergo disulfide bond reduction during biopharmaceutical proves development [Abstract]. Furthermore, Ren et al. stresses the importance of monitoring and analyzing disulfide bond reduction [5 Analytical methods for disulfide bond reduction monitoring and analysis ¶ 1].
For claim 6 where the recombinant protein is an antibody, Ren et al. discloses methods of monitoring disulfide bond reduction in monoclonal antibodies [Figure 2, 3 Impact of disulfide reduction on downstream processing, 4 root cause analysis for disulfide bond reduction ¶ 1].
For claim 8 where the level of protein reduction is determined by assessing the oxidation stated of disulfide bonds, Ren et al. teaches that mAb disulfide bond reduction is essentially an oxidation-reduction, i.e. redox, reaction that involves redox enzyme [4 Root cause analysis for disulfide bond reduction ¶ 1].
For claim 9 where the redox potential is determined by measuring one or more listed, Ren et al. teaches that glutathione, thioredoxin, and nicotinamide adenine dinucleotide phosphate (NADPH) are known enzyme systems that contribute to disulfide bond reduction [4 Root cause analysis for disulfide bond reduction ¶ 1].
For claim 10 where the redox potential is determined by using a redox potential probe, Handlogten et al. discussing online control of cell culture redox potential, discloses the use of monitoring cell culture redox potential via an online redox probe [Abstract].
For claim 11 where the level or protein reduction is determined by the amount of intact and/or reduced protein after incubating with each set of samples, Ren et al. discloses monitoring structural integrity and redox-induced changes in recombinant proteins [6.31 Inhibit enzyme expression in the cells ¶ 1].
For claim 12 where the amount of intact and/or reduced protein is determined using a native SDS-PAGE gel, Ren et al. further discloses the use of SDS-PAGE, i.e. a size-based method, for detecting and quantifying protein modifications, including disulfide bond reductions [5 Analytical methods for disulfide bond reduction monitoring and analysis ¶ 2].
For claim 14 where the protein reduction is determined and the results are graphed, Ren et al. discloses monitoring intact and reduced antibody species [8.2 identifying disulfide bond reduction risks using machine learning algorithms ¶ 1]. Furthermore, graphical representation of reduction versus process conditions or redox state is routine analytical steps in bioprocessing.
For claim 16 where the air-sealed container has an interior volume of about 2 mL to about 2.5 mL, Hutterer et al. discloses the use of small scale model systems for replicating and monitoring antibody reduction behavior [Small scale model ¶ 1]. Additionally, the use of small-scale models is routinely employed for reduction studies. Therefore, the use of 2 mL to 2.5 mL glass vials would have been obvious to a person of ordinary skill given small-scale redox environments are well-understood to differ from large-scale systems due to oxygen exposure and process conditions.
For claim 17 where the air-sealed container has less than 50 microliters or less of headspace, although Hutterer et al. or Ren et al. disclose headspace limitations of less than 50 microliters, headspace in small-scale protein assays directly effect oxidative exposure of proteins. Meaning, the less air in the vial, the lower the oxygen available to drive disulfide reduction. Therefore, selecting headspace volumes would be considered routine optimization on well-known biochemical principles. Furthermore, Hutterer et al. and Rudyk both discuss minimizing headspace to control oxidative interference despite not listing specific headspace volumes.
For claim 18 where the protein is incubated with each sample set of samples for about 0.5 to 4 hours prior to step (c), Hutterer et al. teaches that samples were taken at 0, 0.5, 1, 2, 4, 8 and 24 hours where the samples were placed in a 3L bioreactor, where the resulting slurry was sparged with nitrogen to simulate an anaerobic environment [Small scale model ¶ 1]. Although not specifically disclosing incubation times between 0.5 and 4 hours, it would have been prima facie obvious to a person of ordinary skill in the art prior to the filing of the claimed invention to modify the systems of Hutterer et al. to incubate the protein with each sample prior to adding the protein to the air-sealed container allowing for measurable interaction between protein and reducing environment.
For claim 19 where the reduction susceptibility of the protein is compared with a reference standard, Rudyk does not explicitly disclose comparing the reduction susceptibility of a protein with a reference standard comprising a standard curve of reduction susceptibility of a reference protein. However, it would have been prima facie obvious to a person of ordinary skill in the art at the time the claimed invention was filed to compare the measured reduction susceptibility of the protein to a “reference standard” or “standard curve” in order to interpret the obtained measurement. The use of standard curves and reference standards to analyze experimental data is a well-known and routine practice in biochemical and analytical assays that allows researchers to determine things such as relative activity, susceptibility, or concentration levels and comparing those results to known standards.
For claim 21 where the protein is selected based on the reduction susceptibility of the protein, Ren et al. discloses analytical methods to monitor intact versus reduced protein species during process development and notes that these measurements inform selection of stable proteins or antibody candidates for manufacturing [5 Analytical methods for disulfide bond reduction monitoring and analysis ¶ 1and 2].
For claim 22, Rudyk discloses all the steps (a) through (e) as described above.
Additionally, for part (f), both Hutterer et al. and Ren et al. discuss modifying cell cultures or manufacturing processes based on observed protein stability and disulfide reduction. Because of this, it would have been prima facie obvious to a person of ordinary skill in the art prior to the filing of the claimed invention to modify the systems of Rudyk and Gurzeler et al. with the additional teachings of both Hutterer et al. and Ren et al. to use reduction susceptibility data from small-scale assays to adjust cell culture conditions, e.g. temperature, agitation, oxygen levels, lysate exposure, to improve protein stability. This represents a predictable application of routine process development in biopharmaceutical manufacturing.
For claim 78 where the air-sealed glass vial has less then 10 microliters of headspace, Qi et al. teaches that oxygen in the headspace of a glass vial containing a protein formulation contributes to protein degradation and that limiting the headspace can reduce such degradation [Effect of environmental and formulation conditions on photo oxidation of the IgG formulation], and although Qi et al. does not specifically teach the exact limitation of “less than 10 microliters of headspace”, Qi et al. does teach selecting a smaller headspace would have been routine optimization of a known result-effective variable given that reducing headspace, as taught by Qi et al., teaches that reducing headspace reduces oxygen exposure resulting in minimizing protein degradation. Furthermore, MPEP § 2144.05(II)(A) states “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Here, Qi et al. teaches that headspace affects protein degradation and that limiting the headspace can reduce degradation.
For claim 79 and as stated in the rejection for claim 78, Qi et al. teaches that oxygen present in the headspace of a glass vial containing a protein formulation contributes to protein degradation and further teaches that limiting headspace can reduce such degradation [Effect of environmental and formulation conditions on photo oxidation of the IgG formulation, Table 3]. Thus, headspace is recognized as a result-effective variable with respect to protein stability, and although Qi et al. does not expressly disclose eliminating the headspace altogether, selecting 0 microliters of headspace would have been an obvious optimization of this known variable where a person of ordinary skill in the art was seeking to minimize oxygen exposure. Furthermore, the specification does not identity any criticality or unexpected result associated with 0 microliter headspace. Instead, the specification lists “less than 10 microliters, or 0 microliters of headspace” as one of several alternative headspace amounts while providing no experimental data demonstrating that 0 microliters produces unexpected results. See Applications specification at pg. 4 line 7, pg. 5 line 31, pg. 7 line 19, pg. 9 line 5, and pg. 22 line 12. Based on this, these parameters would have been within the scope of routine experimentation. See MPEP § 2144.05(II)(A).
The Supreme court has acknowledged:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable varition..103 likely bars its patentability…if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions…
…the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (see KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 U.S. 2007) emphasis added.
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court reaffirmed "the conclusion that when a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976)). The Supreme Court also emphasized a flexible approach to the obviousness question, stating that the analysis under 35 U.S.C. § 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418; see also id. at 421 ("A person of ordinary skill is... a person of ordinary creativity, not an automaton.").
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Argument
Applicant essentially argues that none of the cited prior art references, alone or in combination, teach or suggest mixing a first cell culture fluid and a second culture fluid as stated in claim 1 to generate a set of samples and adding a protein of interest to each sample of the set of samples.
The examiner finds this argument unpersuasive.
In combination, the references teach that cell lysates contain endogenous reducing components capable of altering the redox state of proteins and provide methods for evaluating protein reduction under differing cellular environments. The combined teachings disclose preparing otherwise identical cell culture fluids differing in the presence or amount of a cell lysate, combining the fluids at different ratios to provide samples having differing levels of the lysate-derived reducing environment, and introducing the protein into the resulting samples would have been a predictable experimental approach for evaluating the effect of lysate on protein reduction susceptibility.
Additionally, Qi et al. teaches evaluating a protein formulation in a glass vial and demonstrates that oxygen present in the vial headspace contributes to protein degradation, while limiting or removing oxygen from the headspace reduces such degradation. Here, the prior art references recognize both the use of glass vials for protein-containing samples and the importance of controlling headspace to control oxygen exposure. Given this, applying the known glass vial and headspace conditions to the protein samples of the assay would have been a predictable use of known techniques for their established purpose. Furthermore, the claimed headspace limitations would have constituted routine optimization of a result-effective variable. The prior references recognize that oxygen within a vial headspace can affect protein stability and that limiting the headspace reduces oxygen exposure. In addition, the specification merely identifies progressively smaller headspace volume amounts less 100 microliters or less without identifying any criticality or unexpected result associated with those particular values and without providing experimental data demonstrating that the claimed volumes produce a different result. Applicant goes onto claim that their findings were unexpected. However, Applicant’s assertion is not supported by the specification. The specification does not provide comparative experimental data demonstrating that reducing headspace volume leads to unexpected improvement relative to what’s already known in the art. The specification merely identifies the dimensions as embodiments without establishing that the recited ranges are critical to, responsible for, the asserted improvement. For these reasons, claims 1-6, 8-12, 14, 16-19, 21-22, and 78-79 are rejected under 35 U.S.C. §103 in view of the cited references.
Conclusion
No claims allowed.
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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/JOHN DAVID MOORE/Examiner, Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
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