DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of the Claims
Claim 9 has been canceled by Applicant’s amendment filed 04/10/2026. Claims 1, 6, 8, 10, 14, 15, 16, and 19 have been amended. Claims 1-8 and 10-20 are pending and examined herein.
Priority
This application is a DIV of 15/824,905, now US Patent Number 11733237, filed on November 28, 2017 and claims benefit of provisional application 62/447,772 filed on January 18, 2017. The effective filing date of this application is January 18, 2017.
Information Disclosure Statement
The Information Disclosure Statement filed 06/30/2023 is acknowledged and has been considered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 15 depends upon claim 6 which recites “The method of claim 1… wherein the determining by flow cytometry further comprises… a concentration of target IgG antibody per viable cell in each analysis mixture”. Claim 15 recites “The method of claim 6, wherein the determining by flow cytometry (iii) a concentration of target IgG antibody per viable cell in each analysis mixture”.
Claim 15 fails to further limit the subject matter of claim 6, as it merely recites this already existing limitation taught in claim 6. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Maranon et al. (1994). "A Competitive Enzyme Immunoassay Subclass® for the Determination of Total IgG—Subclass Levels in Human Serum". Journal of Immunoassay and Immunochemistry, 15(2), 147-156, in view of Tyagarajan et al. (WO 2007/067680 A2 - IDS dated 6/30/23).
Regarding claims 1 and 10, Maranon teaches a method for quantifying human immunoglobulin gamma (IgG) antibody levels in biological samples via competitive binding immunoassay. In this method, biological samples expressing IgG antibodies are incubated for a time and under conditions with detection reagents that consist of a labeled target IgG protein isotypes that binds to the target IgG antibodies (abstract; page 148, paragraph 2). Maranon discloses the use of microtiter strips of flat-bottom wells in the method (page 149, first full paragraph). Maranon also teaches that “Briefly, samples were diluted 1:10 in bovine serum albumin 7% for IgGI and IgG2 but were used undiluted for IgG3 and IgG4 determination.”, with regards to single radial immunodiffusion for the determination of total IgG subclass levels (page 148 3rd paragraph leading into page 149 1st paragraph).
While Maranon discloses the use of assay plate comprising individual wells, Maranon does not recite that the cell samples are transferred to an assay plate with sample wells wherein each sample well contains a cell sample that is an undiluted cell culture in each well. Maranon also does not recite the use of a capture bead that binds to IgG antibody, the use of flow cytometry, or the mixture steps of the first detection molecule.
However, Tyagarajan discloses a similar assay using particle-based methods for detecting analytes. Tyagarajan also teaches that the particle, sample, and detection moiety may be combined sequentially or simultaneously (page 4, lines 22-23). Tyagarajan teaches that the sample is provided in at least one well or vessel of a multiwell or multivessel platform, for example using a multiwell plate, and that the assay formats can be applied to any cytometry or imaging-based platform (page 4, line 27-30). Furthermore, Tyagarajan teaches that the sample or portion of the sample comprising or suspected of comprising the analyte can be any source of biological material, including cells or cellular lysate (page 19, lines 22-25; page 20, line 5). Claim 60 of Tyagarajan also teaches that in the method of any of the claims, wherein the sample is not diluted prior performing the method (page 52, lines 7-8). Furthermore, claim 62 of Tyagarajan teaches the method of any of the claims, wherein the sample is a culture medium from a protein-secreting eukaryotic cell, and the sample is assayed without prior dilution (page 52, lines 13-14). Tyagarajan teaches an immunoassay using capture beads that bind to an IgG antibody of interest (page 33, examples 1 and 2) that can quantify antibody levels via flow cytometry (page 10, line 23). Tyagarajan specifically teaches many advantages of particle-based assay including increased surface area for reaction and increased capacity of binding. The smaller size of the particles permits their retention in solution for a longer period of time which promotes better contact and reactivity with analytes. The better suspension properties of these beads can allow the use of automated sample preparation and maybe used without vigorous shaking and wash step (page 10, line 24 through page 11, line 14).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method recited in Maranon to mix the reagents in plate wells, as disclosed in Tyagarajan, because it allows the avoidance of a transfer step and reduces the possibility of human error. A person of ordinary skill would have had a reasonable expectation of success in placing and mixing the cell samples in uncoated wells instead of test tubes as they serve the same purpose and the results of the substitution would have been predictable.
It also would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method recited in Maranon to forgo a sample dilution step, as disclosed in Tyagarajan, because it reduces the possibility of additional human error. The skilled artisan would have been motivated to modify the method to use an undiluted sample in order to save time and reduce costs.
Additionally, it would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method recited in Maranon to use beads as the antibody binding substrate and to use flow cytometry analysis, for the advantages disclosed in Tyagarajan as discussed above, such as beads “provide the advantage of increased surface area for reaction and increased capacity of binding. Further, the smaller size of these particles permits their retention in solution for a longer period of time, which promotes better contact and reactivity with analytes”.
The skilled artisan would have been motivated to modify the method in Maranon to use beads as the antibody binding substrate and flow cytometry analysis because beads allow for the use of automated sample preparation that can be used without vigorous shaking and/or wash steps”. Tyagarajan makes obvious that the use of automated detection methods such as flow cytometry allows for a multiplex format which can assay from 2 to more than 1000 different analytes and/or cells using different particles and detection moieties simultaneously (page 11, lines 20-23), which saves time.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Maranon and Tyagarajan as applied to claims 1 and 10 above, and further in view of McFarland (2000). “Preparation of pure cell cultures by cloning”. Methods in cell science, 22(1), 63-66, as evidenced by Brezski et al. (2016), "Immunoglobulin isotype knowledge and application to Fc engineering." Current opinion in immunology 40 (2016): 62-69.
Regarding instant claim 2, Maranon and Tyagarajan recites all of the limitations of claim 1 of the instant application but does not recite “wherein the cell culture is propagated from a single clone”.
However, McFarland (2000) teaches multiple strategies to produce cell cultures through cloning for use in biological assays, in order to avoid the use of cultures with multiple cell types that may confound results (abstract). McFarland teaches the preparation of cell cultures through cloning can “insure the purity of cell cultures” (abstract), which can make data interpretation easier such as by avoiding paracrine interactions between different cell types (page 1, column 1, paragraph 1). Such a cloning method for antibody screening purposes in order to insure efficient antibody production.
Therefore, it would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to apply the isotyping method recited in Maranon and Tyagarajan to test a cell sample from a cell culture propagated from a single clone because it is well known in the art that antibody screening, tittering and isotyping are important in-process and final antibody-testing steps in any custom antibody production project and cloned cell cultures. This is further evidenced by Brezski, which teaches the identifying of cell clone lines that produce IgG isotypes in pursuit of efficient production (abstract). A skilled artisan would have been motivated to use the method of the patented claims to identify different IgG isotypes from a single clone for the advantage taught by McFarland, that interpretation of data is clearer than those arising from cell cultures with more than one type of cell (“Interpretation of data arising from studies using these mixed cultures can lead to difficulties, because it may not be possible to ascertain which of the cell types present may have responded to a given treatment” – abstract).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Maranon and Tyagarajan as applied to claims 1 and 10 above, and further in view of Mali et al. (2016). “Observations on different resin strategies for affinity purification mass spectrometry of a tagged protein”. Analytical Biochemistry, 515, 26-32.
Regarding claim 3, Maranon and Tyagarajan recites all of the limitations of claim 1 of the instant application but does not recite “wherein the capture bead is covalently linked with Protein G or Protein A”.
However, Mali et al. (2016) teaches the use and effect of different support resins (e.g. agarose and paramagnetic capture beads) for immobilization of the antibody in methods for identifying and isolating proteins (abstract). Mali teaches capture beads covalently coupled to Protein A or Protein G for use in mass spectrometry of a tagged protein (Figure 1). Furthermore, Mali teaches that Protein A and Protein G are commonly used for immobilization of antibodies and attached to resin matrices, which confers the advantage of allowing for covalent or non-covalent attachment to antibodies (page 26, paragraph 1).
It would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method recited in Maranon and Tyagarajan to use capture beads linked to Protein A or protein G, as disclosed in Mali, because the use of Protein A or Protein G “…enables non-covalent attachment to antibodies (Condition B) or the addition of crosslinkers including BS3 for covalent attachment through Protein A and G (Condition C)” – Figure 1 caption. A person of ordinary skill would have had a reasonable expectation of success in selecting Protein A or protein G as the binding molecule in the method of Maranon and Tyagarajan because Mali teaches that A or protein G can be successfully covalently attached to beads in order to bind target proteins and because these agents are well known in the art as being specific binding agents for immunoglobulins.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Maranon and Tyagarajan as applied to claims 1 and 10 above, and further in view of Bangs (1990)."New developments in particle-based tests and immunoassays". Journal of the International Federation of Clinical Chemistry, 2(4), 188-193.
Regarding claim 4, Maranon and Tyagarajan recites all of the limitations of claim 1 of the instant application but does not recite that the capture bead is a magnetic bead or an agarose bead.
However, Bangs (1990) recites the use of particle immunoassays for quantitative measurements, done in 96-well plates or tubes (abstract). Bangs teaches that polymers of many types may be utilized as the binding substrate in particle-based tests, (page 193, column 3), and that magnetic particles in particular have speed and convenience advantages and are used in immune- and chemiluminescent assays (page 193, column 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have chosen a magnetic bead or an agarose bead as the bead recited in the method of Maranon and Tyagarajan. The skilled artisan would have been motivated to make the selection because Bangs teaches that magnetic particles give the advantage of permitting fast and easy separation of solid and liquid phases (page 193, column 2, lines 11-13). Furthermore, these magnetic and agarose beads are well known in the art as being widely used binding substrates used for immunoassays.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Maranon and Tyagarajan as applied to claims 1 and 10 above, and further in view of Belouski et al. (2010). "Utility of lyophilized PMA and ionomycin to stimulate lymphocytes in whole blood for immunological assays". Cytometry Part B: Clinical Cytometry: The Journal of the Int. Society for Analytical Cytology, 78(1), 59-64.
Regarding claim 5, Maranon and Tyagarajan recites all of the limitations of claim 1 of the instant application but does not recite “the assay plate contains lyophilized analysis reagents before the plurality of samples are transferred”.
However, Belouski et al. (2009) teaches the efficacy of lyophilized immunoassay reagents used in assay plates, in comparison with the standard liquid formulation equivalency (abstract). Belouski teaches the use of plates for immunoassays preloaded with lyophilized reagents prior to the addition of samples that can provide the advantage of reducing the potential for error that can occur when adding reagents to the wells (Discussion, paragraph 2).
It would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to have the assay plate contain lyophilized analysis reagents before the plurality of samples are transferred, as disclosed in Belouski, within the method of Maranon and Tyagarajan, to prolong the stability of the reagents and potentially reduce human error (“the lyophilised reagent plates offer long reagent stability, even at room temperature (>1 year), and a potential reduction in errors caused by incorrect reagent addition.” – Discussion, paragraph 2).
Claims 6, 8, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Maranon and Tyagarajan as applied to claims 1 and 10 above, and further in view of Shenkin et al. (2007). "Accurate assessment of cell count and viability with a flow cytometer". Cytometry Part B: Clinical Cytometry, 72(5), 427-432.
Regarding claim 6, 8, and 15, Maranon and Tyagarajan recites all of the limitations of claims 1 and 10 of the instant application but does not teach where the analysis reagents further comprise a cell viability dye that is added wells/mixtures upon which the plurality of analysis mixtures are incubated, and wherein the determining by flow cytometry further comprises one or more of: (i) a number of cells in each analysis mixture; (ii) a percentage of viable cells in each analysis mixture; (ii) a concentration of target IgG antibody per cell in each analysis mixture; and/or (iii) a concentration of target IgG antibody per viable cell in each analysis mixture.
However, Shenkin et al. (2007) teaches a method to measure cell concentration and viability in specimens received in flow cytometry and cytogenetics laboratories using the cell impermeant viability dye, 7-AAD (abstract). Additionally, Shenkin teaches this method using several tissue types, including lymph, peripheral blood, and bone marrow, and teaches the determination of the percentage of viable and apoptotic cells via flow cytometry (Figs. 1-8). Shenkin also teaches that the mixture of dyes and sample were incubated for 15-30 minutes at room temperature (page 428, column 1, 1st paragraph). Shenkin teaches that this method allows for the avoidance of using specimens for studies that are low quality and cellularity in order to improve immunophenotypic analysis (page 427, paragraph 1). Shenkin further teaches that their method provides the advantages of determining the distribution of cell types present and allowing for the proper selection of antibody reagents for specimen analysis, as well as allowing the laboratory to process the specimen to a controlled cell concentration (page 431, column 1, 2nd paragraph). Shenkin teaches that this allows standardized volumes of cells and antibody reagents to be employed, resulting in reproducible immunophenotypic clustering and diagnostic fluorescence intensities (page 431, column 1, 2nd paragraph).
It would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method recited in Maranon and Tyagarajan to measure viable cell counts and use it to quantify the amount of antibody per cell and viable cell, as disclosed by Shenkin, in order to ensure specimen quality and provide accurate data and analysis (“An accurate assessment of specimen quality is an important parameter when performing flow cytometric…” – abstract; “Use of a cell count and viability measurement prior to leukemia and lymphoma assessment by flow cytometry and cytogenetics helps to increase the rate of successful immunophenotypic and cytogenetic analysis.” – abstract). A person of ordinary skill would have had a reasonable expectation of success in making these modifications because Shenkin teaches that determination of cell viability has been performed by several methods, and that the determination of cell concentration using a flow cytometer has been well established (page 427, column 1, paragraphs 2-3).
Regarding claim 14, Shenkin teaches the use of a marker of apoptosis (Figs. 2-8).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Maranon and Tyagarajan as applied to claims 1 and 10 above, and further in view of Dunne et al. (2004), “Automation of cytokine flow cytometry assays”. JALA: Journal of the Association for Laboratory Automation, 9(1), 5-9.
Regarding instant claim 7, Maranon and Tyagarajan recites all of the limitations of claim 1 of the instant application but does not recite “wherein the assay plate is centrifuged before reading the plurality of analysis mixtures in the assay plate in a flow cytometer”.
However, Dunne (2004) teaches a method of flow cytometry assays with elements that facilitate their automation to increase sample analysis output. In the method of this assay, Dunne teaches the centrifugation of assay plates prior to analysis via flow cytometry to avoid transfer steps which allows for more streamlined protocols and increased efficiency (page 6, column 2, second full paragraph).
It would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method recited in Maranon and Tyagarajan to include a step where the assay plate is centrifuged prior to the samples are read via flow cytometry, as disclosed in Dunne, to decrease the potential of human error during vessel transfer and increase reproducibility (page 6, column 2, second full paragraph). The skilled artisan would have been motivated to modify the method of Maranon and Tyagarajan to have the assay plate centrifuged because it can allow for an entirely plate-based assay which Dunne teaches produces comparable results to tube-based methods while having higher throughput (page 6, column 2, first full paragraph).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Maranon and Tyagarajan as applied to claims 1 and 10 above, and further in view of Kaleem et al. (2000). "Lack of expression of surface immunoglobulin light chains in B-cell non-Hodgkin lymphomas". American journal of clinical pathology, 113(3), 399-405.
Regarding instant claim 11, Maranon and Tyagarajan recites all of the limitations of claim 10 of the instant application but does not recite “wherein the first detection molecule lacks immunoglobulin light chains and is capable of binding to the capture bead”.
However, Kaleem et al. (2000) recites the identification of patients with non-Hodgkin lymphoma with cells that do not express immunoglobulin kappa or lambda light chains (abstract). Kaleem teaches that an assay having the ability to measure immunoglobulin has invaluable diagnostic purposes (page 404, column 1, paragraphs 2-3). Kaleem teaches the detection of cells lacking immunoglobulin light chain expression using flow cytometry (abstract).
It would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method recited in Maranon and Tyagarajan to allow for the detection of molecules that lack immunoglobulin light chains, as disclosed in Kaleem, in order to correctly identify and differentiate lymphoma cells in order to avoid misdiagnosis (page 404, column 1, paragraphs 2-3).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Maranon, Tyagarajan and Kaleem as applied to claim 11 above, and further in view of Manning et al. (2012). "Benefits and pitfalls of secondary antibodies: why choosing the right secondary is of primary importance". PloS one, 7(6), e38313.
Regarding instant claim 12, Maranon and Tyagarajan in view of Kaleem recites all of the limitations of claim 11 of the instant application but does not recite the use of a detectably labeled anti-IgG light chain secondary antibody.
However, Manning et al. (2012) teaches labeling multiple antibodies in one sample in order to provide robust measurement of target protein amounts (abstract). Manning also teaches that using IgG subclass-specific secondary antibodies are superior to using general anti-mouse IgG secondary antibodies when quantifying IgG subclasses (abstract). Manning teaches the use of IgG secondary antibodies (including those binding to light chains) for multiplex labeling of IgG protein subclasses for use in multiple detection applications (page 2, column 1, paragraph 2; Figure 6).
It would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to use a labeled anti-IgG light chain antibody, as disclosed in Manning, within the method of Maranon and Tyagarajan and Kaleem, to allow for robust, reliable, and simultaneous detection of different IgG subclasses in one sample (page 7, column 2). The skilled artisan would have been motivated to modify the method to have a secondary detection molecule (anti-IgG light chain secondary antibody) to distinguish different sites of primary antibody labeling and avoid sample heterogeneity issues (abstract; page 7, column 2).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Maranon, Tyagarajan, Kaleem, and Manning as applied to claim 12 above, and further in view of Shah et al. (2008). "Flow cytometric measurement of microparticles: pitfalls and protocol modifications". Platelets, 19(5), 365-372.
Regarding instant claim 13, Maranon, Tyagarajan, Kaleem, and Manning recites all of the limitations of claim 12 of the instant application but does not recite “wherein the plurality of analysis mixtures are centrifuged and subjected to a wash step before the labeled anti-light chain antibody is added”.
However, Shah et al. (2008) teaches how variation in sample preparation can significantly influence the results of flow cytometry measurements, and how to optimize sample preparation for the best results through contamination removal (abstract). Shah teaches that centrifugation of biological samples for flow cytometry sample preparation is “...considered to be the primary contributor to variation in microparticle isolation” (page 368, column 2, paragraph 2) and that “most protocols advocate microparticle isolation via washing and centrifugation to reduce background signals” (page 370, column 1, paragraph 1).
It would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method recited in Maranon, Tyagarajan, Kaleem, and Manning to include a step where the analysis mixtures are centrifuged and subjected to a wash step before the labeled anti-light chain antibody is added, as disclosed in Shah, in order to reduce background signal and improve results. The skilled artisan would have been motivated to perform these steps for assay standardization to have consistent measurements that can be compared across labs.
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Maranon, Tyagarajan, Mali, Bangs, Belouski, Kaleem and Shenkin in view of Zuk et al. (U.S. Patent No. 4208479).
In addition to the details of Maranon, Tyagarajan, and Shenkin discussed above, Tyagarajan also teaches a kit used to perform particle-based immunoassays to measure antibodies.
Furthermore, Zuk et al. teaches the convenience and accuracy enhancement associated with combining all necessary reagents for an assay together in a kit (column 22, lines 20-68).
Therefore, it would have been obvious to one of ordinary skill in the art to assemble together the reagents (capture bead, control IgG antibody, first detectable moiety, cell viability dye, marker of apoptosis, etc.) in the form of a kit, in order to create an assay kit for analyzing IgG antibody production that can be quantified via flow cytometry as described in Maranon and Tyagarajan. A skilled artisan would have been motivated to combine all necessary reagents for an assay for analyzing IgG antibody production that can be quantified via flow cytometry together in a kit kits are well known as being convenient and economical. A person of ordinary skill would have had a reasonable expectation of success in in assembling the reagents of the patented claims into kits as taught by Zuk because the creation and use of kits is a practice that is well-understood, routine and conventional in the field.
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.
Although there is a restriction in the parent application, 15/824,905 now USP 11,733,237, the prohibition against nonstatutory double patenting rejections under 35 U.S.C. 121 does not apply because the claims of the application under examination (18/345,170) and claims of the patented application are not consonant with the restriction requirement made in the parent application, since the claims have been changed in material respects from the claims at the time the requirement was made. The divisional application, 18/345,170 includes additional claims not consonant in scope with the original claims subject to restriction in the parent (MPEP § 804.01).
Claims 1-8 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable claims 1, 2, and 4 of Liu et al. (U.S. Patent No. 11733237) in view of Maranon, Tyagarajan, McFarland, Mali, Bangs, Belouski, Shenkin, Dunne, Kaleem, Manning, Shah, and Zuk.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 10 under examination are anticipated, respectively, by claims 1 and 2 of the reference patent Liu `237. The instant application and reference patent both teach a method of quantifying immunoglobulin gamma (IgG) antibody levels, and every limitation in the application under examination claims is recited in the conflicting reference patent claims.
Claims 1 and 2 of Liu `237 teaches a method for determining immunoglobulin gamma (IgG) antibody isotype concentration and total IgG antibody concentration (`237 claim 6, lines 4-6), from a biological sample, the method comprising: (a) transferring a plurality of cell samples to an assay plate having a plurality of sample wells (`237 claim 1, column 1, line 40), wherein each sample well contains a cell sample that is an undiluted cell culture expressing a target IgG antibody (`237 claim 1, column 1, lines 41-43) and mixing the plurality of cell samples with analysis reagents to generate a plurality of analysis mixtures, wherein the analysis reagents comprise:(i) a capture bead, wherein the capture bead binds to IgG antibody (`237 claim 1, column 2, lines 13-15); and (ii) a first detection molecule comprising (A) a control IgG antibody or fragment thereof (`237 claim 2, lines 26-39), and (B) a first detectable moiety; (b) wherein the mixing comprises:(i) adding the first detection molecule to the cell samples already present in the wells to generate premixed analysis mixtures in each sample well; and (ii) adding the capture bead to the premixed analysis mixtures in each well to generate the plurality of analysis mixtures (`237 claim 1, column 2, lines 7-25); (c) incubating the plurality of analysis mixtures for a time and under conditions to promote binding of the target IgG antibody and the first detection molecule to the capture bead (`237 claim 2, lines 26-46); and (d) determining the target IgG antibody concentration in each analysis mixture of the plurality of analysis mixtures by flow cytometry analysis (`237 claim 1, column 1, lines 63 – column 2, line 3).
Instant claim 2 recites the method of instant claim 1, wherein the cell culture is propagated from a single clone. Claims 1 and 2 of Liu `237 teach all the limitation of claim 1 but do not teach that the cell culture is propagated from a single clone. However, McFarland teaches multiple strategies to produce cell cultures through cloning for use in biological assays. Incorporating these modifications into the method of Liu `237 would have been an obvious refinement, rendering instant claim 2 not patentably distinct.
Instant claim 3 recites the method of claim 1, wherein the capture bead is covalently linked with Protein G or Protein A. Claims 1 and 2 of Liu `237 teach all the limitations of claim 1 but does not teach that the capture bead is covalently linked with Protein G or Protein A. However, Mali teaches capture beads covalently coupled to Protein A or Protein G for use in mass spectrometry of a tagged protein (Figure 1). Furthermore, Mali teaches that Protein A and Protein G are commonly used for immobilization of antibodies and attached to resin matrices, which confers the advantage of allowing for covalent or non-covalent attachment to antibodies (page 26, paragraph 1). Incorporating these modifications into the method of Liu `237 would have been an obvious refinement, rendering instant claim 3 not patentably distinct.
Instant claim 4 recites the method of claim 1, wherein the capture bead is a magnetic bead or an agarose bead. Claims 1 and 2 of Liu `237 teach all the limitations of claim 1 but does not teach that the capture bead is a magnetic bead or an agarose bead. However, Bangs recites the use of particle immunoassays for quantitative measurements, and that magnetic particles in particular have speed and convenience advantages and are used in immune- and chemiluminescent assays. Incorporating these modifications into the method of Liu `237 would have been an obvious refinement, rendering instant claim 4 not patentably distinct.
Instant claim 5 recites the method of claim 1, wherein the assay plate contains lyophilized analysis reagents before the plurality of samples are transferred. Claims 1 and 2 of Liu `237 teach all the limitations of claim 1 but does not teach that the assay plate contains lyophilized analysis reagents before the plurality of samples are transferred. However, Belouski teaches the use of plates for immunoassays preloaded with lyophilized reagents prior to the addition of samples that can provide the advantage of reducing the potential for error that can occur when adding reagents to the wells. Incorporating these modifications into the method of Liu `237 would have been an obvious refinement, rendering instant claim 5 not patentably distinct.
Instant claims 6, 8, and 15 recite the method of claims 1, 10, and 6 respectively and further recites analysis reagents comprising a cell viability dye and its addition to the analysis mixtures, and further methods of the determination of cell number/viable cells/antibody concentration via flow cytometry. Claims 1 and 2 of Liu `237 teach all the limitations of claim 1, as well as that the detection reagents are added to the plate wells containing the cell sample and incubated for a time. and claim 4 of Liu `237 teaches that the detection reagent further comprises a detectable cell viability marker, and wherein the method further comprises measuring cell viability and/or cell number in the biological sample in the flow cytometer. Incorporating these modifications into the method of Liu `237 would have been an obvious refinement, rendering instant claim 6 not patentably distinct.
Instant claim 7 recites the method of claim 1, wherein the assay plate is centrifuged before reading the plurality of analysis mixtures in the assay plate in a flow cytometer. Claims 1 and 2 of Liu `237 teach all the limitations of claim 1 but does not teach that the assay plate is centrifuged before reading the plurality of analysis mixtures in the assay plate in a flow cytometer. However, Dunne teaches the centrifugation of assay plates prior to analysis via flow cytometry to avoid transfer steps which allows for more streamlined protocols and increased efficiency (page 6, column 2, second full paragraph). Incorporating these modifications into the method of Liu `237 would have been an obvious refinement, rendering instant claim 7 not patentably distinct.
Instant claim 11 recites the method of claim 10, wherein the first detection molecule lacks immunoglobulin light chains and is capable of binding to the capture bead. Claims 1 and 2 of Liu `237 teach all the limitations of claim 10 but does not teach the first detection molecule lacks immunoglobulin light chains and is capable of binding to the capture bead. However, Kaleem teaches the detection of cells lacking immunoglobulin light chain expression using flow cytometry (abstract). Incorporating these modifications into the method of Liu `237 would have been an obvious refinement, rendering instant claim 11 not patentably distinct.
Instant claim 12 recites the method of claim 11, wherein the first detection molecule lacks immunoglobulin light chains and is capable of binding to the capture bead. Claims 1 and 2 of Liu `237 in view of Kaleem teach all the limitations of claim 11 but does not teach a detectably labeled anti-IgG light chain secondary antibody and its use in the method of measuring IgG antibody concentration. However, Manning teaches the use of labeled IgG secondary antibodies (including those binding to light chains) for multiplex labeling of IgG protein subclasses for use in multiple detection applications (page 2, column 1, paragraph 2; Figure 6). Incorporating these modifications into the method of Liu `237 and Kaleem would have been an obvious refinement, rendering instant claim 12 not patentably distinct.
Instant claim 13 recites the method of claim 12, wherein the plurality of analysis mixtures are centrifuged and subjected to a wash step before the labeled anti-light chain antibody is added. Liu `237 in view of Kaleem and Manning recites all of the limitations of claim 12 of the instant application but does not recite wherein the plurality of analysis mixtures are centrifuged and subjected to a wash step before the labeled anti-light chain antibody is added. However, Shah teaches that centrifugation of biological samples for flow cytometry sample preparation is considered to be the primary contributor to variation in microparticle isolation and that most protocols advocate microparticle isolation via washing and centrifugation to reduce background signals (page 370, column 1, paragraph 1). Incorporating these modifications into the method of Liu `237, Kaleem, and Manning would have been an obvious refinement, rendering instant claim 13 not patentably distinct.
Instant claim 14 recites the method of claim 1, wherein the analysis reagents further comprise one or both of a cell surface biomarker or a marker of apoptosis. Claims 1 and 2 of Liu `237 teach all the limitations of claim 1 but does not teach that the analysis reagents further comprise one or both of a cell surface biomarker or a marker of apoptosis. However, Shenkin teaches the use of a marker of apoptosis (Figs. 2-8). Incorporating these modifications into the method of Liu `237 would have been an obvious refinement, rendering instant claim 14 not patentably distinct.
Instant claims 16-20 recite an assay kit for analyzing IgG antibody production that can be quantified via flow cytometry. While claims 1 and 2 of Liu `237, Mali, Bangs, Belouski, Kaleem and Shenkin recite all the reagents of instant claims 16-20, they do not specifically recite an assay “kit” or describe their invention using this terminology, as is done in claims 16-20 of the instant application. However, Zuk et al. teaches the convenience and accuracy enhancement associated with combining all necessary reagents for an assay together in a kit (column 22, lines 20-68). Incorporating this modification into the method of Liu `237, Mali, Bangs, Belouski, Kaleem and Shenkin would have been an obvious refinement, rendering instant claims 16-20 not patentably distinct.
Response to Arguments
Applicant's arguments filed 04/10/2026 have been fully considered but they are not persuasive except to the extent expressly indicated below.
Applicant’s arguments on page 9 with respect to the rejection of claim 6 under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends have been fully considered and are persuasive. Claim 6 has been amended to include a cell viability dye in the analysis reagents, incubation methods, and further methods of determining the phenotype of the sample analyzed. Accordingly, the rejection of claim 6 under 35 U.S.C. 112(d) has been withdrawn.
Applicant’s arguments on pages 9-11 with respect to the rejection of claims 1, 8, and 10 under 35 U.S.C. 103 over Maranon in view of Tyagarajan have been fully considered but are not persuasive. The rejections under 35 U.S.C. 103 are maintained and have been updated, where appropriate, in view of Applicant's claim amendments. Any modification to the statement of the rejection, including reliance on additional prior art, is necessitated by Applicant's amendments to the claims and is made to address the newly added or clarified claim limitations.
Applicant first argues that the method of Maranon requires a dilution step in its competitive assay, and therefore the combination of Maranon and Tyagarajan for analyzing a plurality of cell samples for IgG antibody production would require a significant dilution step.
Applicant argues that “Maranon expressly teaches the need for a dilution step in its competitive assay when using a biological sample (as opposed to IgGx standards). See page 149: "Briefly, sera to be investigated were diluted 1:50 in neutral buffer solution " Also see page 155: "This type of competitive immunoassay method provides a number of distinct practical advantages over existing methodologies. The recommended serum dilution of only 1:50 entails less experimental errors than those inherent to the dilution range of 1:40,000 to 1:80,000 required for a non-competitive sandwich EIA system for these IgG subclass proteins. Setting the dilution range for competitive EIA at 1:50 leaves open the possibility of retesting samples with a low IgGx concentration by choosing a lower dilution range."
This argument is not persuasive. While the Applicant is correct that the competitive immunoassay recited by Maranon used diluted samples, Maranon is not being relied upon for the use of an undiluted sample, but rather Tyagarajan is. Applicant states that Maranon teaches “the need for a dilution step”, however, the recitation of a dilution step by Maranon is not definitive evidence that the method could not be performed without one, and does not inherently indicate the combination of using an undiluted sample as taught by Tyagarajan in the method of Maranon would be non-functional. Regardless, MPEP § 2145 (III) also establishes that “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1332, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859, 225 USPQ 1, 6 (Fed. Cir. 1985) (en banc)). The criterion for establishing obviousness is not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.
Obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. V. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Here, the motivation is found in the references themselves: Tyagarajan does in fact teach analyzing a plurality of undiluted cell samples (see below); Maranon teaches the measurement of IgG antibody levels in biological samples. A further suggestion to use an undiluted biological sample can be found in Maranon, as Maranon does teach the measurement of IgG antibody when using a biological sample without the need for dilution step, just not with regards to the competitive immunoassay. On page 148 3rd paragraph leading into page 149 1st paragraph, Maranon teaches that “Briefly, samples were diluted 1:10 in bovine serum albumin 7% for IgGI and IgG2 but were used undiluted for IgG3 and IgG4 determination.”, with regards to single radial immunodiffusion for the determination of total IgG subclass levels. It would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of measuring IgG in a biological sample as recited in Maranon to forgo a sample dilution step, as disclosed in Tyagarajan, because Tyagarajan teaches the use of undiluted cell samples to measure an analyte, and because it reduces the possibility of additional human error. Furthermore, a skilled artisan would have been motivated to modify the method to use an undiluted sample in order to save time and reduce costs by reducing the amount of reagent used.
Applicant also argues that Tyagarajan fails to teach that the cell sample is an undiluted cell culture comprising cells, and therefore pending claims 1 and 10 and their dependent claims are nonobvious over the combination of Maranon and Tyagarajan. This argument is not persuasive. As detailed in the rejection above, Tyagarajan teaches that the sample can be any source of biological material, including cells or cellular lysate, and Claim 60 of Tyagarajan specifically teaches that “in the method of any of the claims, wherein the sample is not diluted prior performing the method” (page 52, lines 7-8). Additionally, claim 62 of Tyagarajan teaches “the method of any of the claims, wherein the sample is a culture medium from a protein-secreting eukaryotic cell, and the sample is assayed without prior dilution” (page 52, lines 13-14). It would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of measuring IgG in a biological sample as recited in Maranon to forgo a sample dilution step, as disclosed in Tyagarajan, because: both Maranon and Tyagarajan teach a plate-based assay method for measuring an analyte, and avoiding a dilution step streamlines protocol workflow and avoids additional possibility of error in the method. Furthermore, a skilled artisan would have been motivated to modify the method to use an undiluted sample in order to save time and reduce costs by reducing the amount of reagent used.
Finally, with regards to the Applicant’s argument that “Thus, those of skill in the art would understand from the combination of Maranon and Tyagarajan that a competitive assay for analyzing a plurality of cell samples (as opposed to hybridoma supernatants) for immunoglobulin gamma (IgG) antibody production would require a significant dilution step”. As outlined above, Tyagarajan does in fact teach analyzing a plurality of undiluted cell samples contrary to applicants’ assertion. In light of this, asserting that the combination of Tyagarajan and Maranon would not be obvious purely because Maranon does not teach the use of undiluted samples would be to attack the references individually, where the rejection is based on a combination of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection does not rely on Maranon alone to teach the entire claimed method. Rather, the rejection relies on the combined teachings of Maranon and Tyagarajan to establish that the claimed method would have been obvious to one of ordinary skill in the art.
Therefore, pending claims 1 and 10 are obvious over the combination of Maranon and Tyagarajan, and accordingly the rejection against claims 1 and 10 are maintained. Applicant has amended claim 8 which has necessitated a modification to the rejection. Accordingly, claim 8 has still been rejected over Maranon and Tyagarajan as applied to claims 1 and 10 above, and further in view of Shenkin as described in the rejection above.
Applicant’s arguments on pages 11-12 with respect to the rejection of claims 2-7, 9, and 11-15 under 35 U.S.C. 103 over Maranon and Tyagarajan in view of various secondary references have been fully considered but are not persuasive. Applicant argues that none of the additional references cited cure the deficiency in the combination of Maranon and Tyagarajan with regards to independent claims 1 and 10. As discussed above, the combination of Maranon and Tyagarajan does make obvious the methods of claims 1 and 10, which recite "each sample well contains a cell sample that is an undiluted cell culture comprising cells expressing a target IgG antibody”. Accordingly, the rejection against claims 2-7 and 11-15 are maintained. Applicant has canceled claim 9.
Applicant’s arguments on page 12 with respect to the rejection of claims 16-20 under 35 U.S.C. 103 over Maranon and Tyagarajan in view of Zuk have been fully considered but are not persuasive. Applicant has amended claim 16 to further require a cell viability marker, necessitating a new rejection over Maranon, Tyagarajan, and various previously discussed secondary references in view of Zuk as discussed above.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the rejection recites “convenience and accuracy enhancement associated with combining all necessary reagents for an assay together in a kit” as motivation.
Applicant’s arguments on page 12 with respect to the rejection of claims 1-20 under a nonstatutory double patenting rejection over Liu `237 combined with various secondary references have been fully considered but are not persuasive.
Applicant argues that the claims in Liu `237 are distinct from those in the current application, as they recite methods for determining IgG antibody isotype concentration from biological samples, where the capture reagents comprise three or more different bead- bound IgG isotype-specific populations of capture reagent in a single reaction mixture.
This argument is not persuasive. As recited above, 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).
The examined claims are anticipated by the claims of Liu `237, as they are seen to provide coverage for an embodiment within the scope of the examined claims and thus are patentably indistinct from the reference claims. The claims being examined are generic to a species claimed by Liu `237, i.e., the entire scope of the reference claim falls within the scope of the examined claim. The claims being examined recite determining IgG antibody concentration, which is generic to IgG antibody isotype concentration recited by Liu `237, that is, an IgG isotype is inherently a species of IgG antibody. Similarly, the capture beads recited by the claimed invention are generic to the different bead- bound IgG isotype-specific populations of capture reagent recited by Liu `237, as they are merely capture beads for specific species of IgG antibodies. Accordingly, the rejection against claims 1-8 and 10-20 are maintained. Applicant has canceled claim 9.
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 ALEXANDER JOSEPH HOFFMAN whose telephone number is (571)272-9080. The examiner can normally be reached 10:00-6:30 M-F.
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/ALEXANDER J. HOFFMAN/ Examiner, Art Unit 1677
/BAO-THUY L NGUYEN/ Supervisory Patent Examiner, Art Unit 1677 July 6, 2026
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