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 .
The amendments and remarks filed 5/27/25 are acknowledged. Claims 8, 11, and 12 have been amended. Claims 1-7 and 9-10 have been canceled. Claim 13 has been added.
Claims 8 and 11-13 are pending and under examination.
Withdrawn Rejections
The rejection of claims 8-12 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph, as failing to comply with the written description requirement, is withdrawn in light of Applicant’s amendment thereto. See paragraph 4, page 2 of the previous Office action.
The rejection of claim 12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 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or a joint inventor (or for applications subject to pre-AlA 35 U.S.C. 112, the applicant), regards as the invention, is withdrawn in light of Applicant’s amendment thereto. See paragraph 8, page 13 of the previous Office action.
The rejection of claims 8-12 under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (Angiogenesis (2005) 8: 63-71), is withdrawn in light of Applicant’s amendment thereto. See paragraph 11, page 13 of the previous Office action.
The rejection of claims 8-9 and 11-12 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kim et al. (US Patent Application Publication 2017/0044494 A1, published February 16, 2017), is withdrawn in light of Applicant’s amendment thereto. See paragraph 12, page 14 of the previous Office action.
New Rejections Necessitated by Applicant’s Amendment
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 8 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1a) and 102(a)(2) as being anticipated by Fajas et al. (WO 2010/092440 A1, published August 19, 2010).
The instant claims are drawn to a culture medium of an egg, a fertilized egg, and/or an embryo, comprising a substance that inhibits signal transmission from CXCL5, wherein the substance is an anti-CXCL5 antibody or a fragment thereof.
Fajas et al. teach a CXCR2 antagonist, wherein the antagonist is an antibody directed against CXCL5 (See pages 9-10). Fajas et al. teach a composition comprising the antagonist (See pages 16-19). Regarding the limitations “a culture medium of an egg, a fertilized egg, and/or an embryo”, “wherein the culture medium is used for improving a quality of an egg, a fertilized egg, and/or an embryo” and “wherein the quality of an egg, a fertilized egg, and/or an embryo is deteriorated due to aging of a subject”, and “wherein the one or more evaluation items related to pregnancy childbirth is selected from the group consisting of a blastocyst reaching rate, an implantation rate, an offspring acquisition rate, and a miscarriage rate”, the limitations are directed to the intended use of the culture medium. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the prior art teaches the claimed culture medium, and would therefore, be capable of performing the intended use recited in the instant claims. Thus, Fajas et al. anticipate the claims.
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.
Claim(s) 8 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US Patent Application Publication 2017/0044494 A1, published February 16, 2017) in view of Fajas et al. (WO 2010/092440 A1, published August 19, 2010).
The instant claims are drawn to a culture medium of an egg, a fertilized egg, and/or an embryo, comprising a substance that inhibits signal transmission from CXCL5, wherein the substance is an anti-CXCL5 antibody or a fragment thereof.
Kim et al. teach a culture medium comprising an CXCR2 antagonist (See paragraph 0029). Kim et al. teach that the “CXCR2 antagonist” means to inhibit the CXCR2 activity, and the antagonist may interfere with the binding of natural ligand and the receptor by binding to the receptor (See paragraph 0030). Regarding the limitations “of an egg, a fertilized egg, and/or an embryo”, “wherein the culture medium is used for improving a quality of an egg, a fertilized egg, and/or an embryo” and “wherein the quality of an egg, a fertilized egg, and/or an embryo is deteriorated due to aging” and “wherein the one or more evaluation items related to pregnancy childbirth is selected from the group consisting of a blastocyst reaching rate, an implantation rate, an offspring acquisition rate, and a miscarriage rate”, the limitations are directed to the intended use of the culture medium. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the prior art teaches the claimed culture medium, and would therefore, be capable of performing the intended use recited in the instant claims.
Kim et al. do not teach wherein the substance that inhibits signal transmission from CXCL5 is an anti-CXCL5 antibody.
Fajas et al. teach a CXCR2 antagonist, wherein the antagonist is an antibody directed against CXCL5 (See pages 9-10). Fajas et al. teach a composition comprising the antagonist (See pages 16-19).
It would have been obvious to one with ordinary skill in the art, at the time of the invention, to modify the culture medium of Kim et al. by substituting the anti-CXCL5 antibody of Fajas et al. for the CXCR2 antagonist because the Supreme Court set forth in KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007), that if the prior art contained a product which differed from the claimed product by the substitution of some component with another component, where both components are known in the art, and one of ordinary skill in the art could have substituted one known element for another to yield predictable results, the substitution of one known element for another would have been obvious. The culture medium of Kim et al. comprises an CXCR2 antagonist. It would be predictable that the anti-CXCL5 antibody of Fajas et al. could be used in the culture medium of Kim et al. because Fajas et al. teach that the anti-CXCL5 antibody is also a CXCR2 antagonist. Given that the anti-CXCL5 antibody is also a CXCR2 antagonist, the culture medium could be modified to comprise the anti-CXCL5 antibody and the medium would function in its intended manner the same as with the CXCR2 antagonist. Thus, the combination of prior art references as combined provided a prima facie case of obviousness, absent convincing evidence to the contrary.
Claim Status
No claims are allowed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANDRA CARTER whose telephone number is (571)272-2932. The examiner can normally be reached 8:00-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vanessa L. Ford can be reached at (571)272-0857. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANDRA CARTER/Examiner, Art Unit 1674
/VANESSA L. FORD/Supervisory Patent Examiner, Art Unit 1674