DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
Applicant's amendments filed 6/17/2026 to claims 1, 3, and 6 have been entered. Claims 8-12 have been canceled. Claims 13-17 have been added. Claims 1-7 and 13-17 remain pending, and are being considered on their merits. No claims are withdrawn from consideration at this time. References not included with this Office action can be found in a prior action.
The instant amendments to claim 3 have overcome the indefiniteness rejections of record, which are withdrawn.
Any other rejections of record not particularly addressed below are withdrawn in light of the claim amendments and/or applicant’s comments.
Claim Objections
Applicant is advised that should claim 5 be found allowable, claim 13 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof and vice versa. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-7, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Grimmer et al. (Scientific Reports (2020), 10:3100) in view of Oglęcka et al. (eLife (2014), 3, e03695), Moonschi et al. (bio-protocol (2018), 8(9), e2825, 10 pages; Reference U) and as evidenced by Wuestehube and Schekman (Methods in Enzymology (1992), 219, 124-136).
Grimmer, citing the teachings of Wuestehube and Schekman, teaches a method of making a composition comprising giant endoplasmic reticulum vesicles comprising organelles (GERVs) and obtaining said vesicles (Abstract and Fig. 1), the method comprising 1) forming yeast spheroplasts by contacting the yeast cells with lyticase and chitinase, 2) osmotically lysing and homogenizing the yeast spheroblasts with a lysis buffer comprising 0.1 M sorbitol (and equating to about 100 mOsm/L), and 3) collecting the GERVs after two steps of differentiation centrifugation at 10 minutes each and a step of sucrose density fractionation (see Grimmer at p6, subheading “ER membrane preparation” and Wuestehube and Schekman at p125-127, subheading “Sucrose Density Gradient-Purified Membrane Preparation”), reading on steps (a) and (c) of claim 1, the intended outcome of claim 1 (a) (e.g. for swelling…organelle vesicles;”), the embodiments of “in bulk” and yeast cells for the organisms of claim 4, the embodiments of homogenization for the shearing mechanical force of claim 6, and the inherent properties of vesicles as recited in claim 14, and on claim 15. Grimmer teaches that the membrane tension of the GERVs is tunable by the osmotic tension of pipette aspiration (p1, the paragraph starting “On the other hand…”), reading in-part on step (b) of claim 1. Grimmer teaches that the GERVs have a diameter range of 2-10 µm (Fig. 2), reading in-part on step (b) of claim 1 and reading on claims 5, 13, and 17. Grimmer teaches transfecting the yeast cells with Sec12p-sfGFP as a marker of the endoplasmic reticulum (the paragraph spanning p5-6 and the green images in Fig. 4), reading on claim 7. Grimmer teaches that membrane tension is tunable by pipette aspiration (page 1, 2nd paragraph under the bolded Abstract), reading on the embodiment of suction pressure for claim 6 and reading on claim 16.
Regarding claims 5 and 13, Grimmer teaches the claimed surface (area)-to volume (SA:V) ratios based on the following calculations, wherein r = radius and approximated for a sphere or ball: 1) Surface area = 4 * π * r2, 2) Volume = (4/3) * π * r3, and so 3) SA:V is approximated as 3/r. 4) The GERV diameter range of 2-10 µm of Grimmer equates to r = 1 and r = 5 for the endpoints of the range, respectively, and so yields a SA:V ratio of about 0.6-3 µm-1, thus reading on claims 5 and 13.
Regarding claim 1 step (b), Gimmer does not teach applying a stretching membrane tension of 10-3 to 5 mN/m for 10-4 to 100 seconds. Regarding claim 1, Grimmer does not teach obtaining the giant extracellular vesicles from mammalian cells.
Oglęcka teaches that membrane tension of about 3-5 mN m-1 caused by contacting giant lipid vesicles with a composition comprising 200 mM sucrose (equating to 200 mOsm/L, and being hypotonic) is generally sufficient to induce membrane lysis in giant lipid vesicles (Abstract and p9-10, the paragraph starting “Consider a case…” through the paragraph ending “…(Portet and Dimova, 2010).”), reading on claim 1. Oglęcka teaches that giant lipid vesicles go through asynchronous swell-burst lytic cycles in hypotonic media from 0-247 seconds or 0-448 seconds (Abstract, Figure 2, and p3 the paragraph staring “A time-lapse video…), reading on stretching membrane surface tension range of claim 1.
Moonschi teaches methods of obtaining vesicles from HEK293T cells by nitrogen cavitation and density centrifugation (Abstract; detailed procedure/methods at pages 4-9) and being advantageous to isolate fluorescently-labeled transmembrane proteins for further study of ligand-induced changes in the assembly of multimeric transmembrane proteins such as nicotinic receptors (page 2, 1st two full paragraphs), reading on claim 1.
Regarding membrane tension of claim 1, it would have been obvious to a person of ordinary skill in the art before the invention was filed to apply the membrane tension and time range of Oglęcka to the methods of Grimmer. A person of ordinary skill in the art would have had a reasonable expectation of success to do so because both Oglęcka and Grimmer are in-part directed towards giant lipid vesicle compositions and contacting said vesicles with hypotonic compositions, and because Grimmer teaches that the membrane tension of the GERVs is expressly tunable by the osmotic tension of pipette aspiration The skilled artisan would have been motivated to do so because Oglęcka teaches that membrane tension of about 3-5 mN m-1 is predictably advantageous to induce membrane lysis and so would likely improve upon the cell lysis and methods of making a composition comprising giant endoplasmic reticulum vesicles comprising organelles of Grimmer.
Regarding the mammalian cells of claim 1, It would have been obvious to a person of ordinary skill in the art before the invention was filed to substitute the yeast cells of Grimmer with the HEK293T mammalian cells of Moonschi in Grimmer’s methods of making GERVs. A person of ordinary skill in the art would have had a reasonable expectation of success to do so because both Moonschi and Grimmer are directed towards methods of preparing vesicles from eukaryotic cells and both teach detailed methods thereof. A person of ordinary skill in the art would have had a reasonable expectation of success to do so because Moonschi teaches that the substitution would be predictably advantageous to isolate fluorescently-labeled transmembrane proteins for further study of ligand-induced changes in the assembly of multimeric transmembrane proteins such as nicotinic receptors.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill before the invention was filed.
Claim 2 is rejected, and claims 1 and 4 are alternatively rejected, under 35 U.S.C. 103 as being unpatentable over Grimmer in view of Oglęcka and Moonschi and as evidenced by Wuestehube and Schekman as applied to claim 1 above, and further in view of Ansell et al. (US 2017/0119904).
The teachings of Grimmer, Oglęcka and Wuestehube and Schekman are relied upon as set forth above.
Regarding claim 2, Grimmer, Oglęcka and Wuestehube and Schekman do not teach the embodiment of mixing the cells at a rate of 0.01-10 m/s for 0.01 seconds to 10 minutes
Ansell teaches methods of preparing lipid nanoparticles/vesicles from liver tissue, the method comprising obtaining a liver tissue sample, homogenizing the liver tissue at 2x6.0 m/s for 15 seconds (¶0159-0161), reading on claim 2.
Regarding claim 2, it would have been obvious to a person of ordinary skill in the art before the invention was filed to substitute the homogenization step of Ansell for the homogenization step of Grimmer as evidenced by Wuestehube and Schekman A person of ordinary skill in the art would have had a reasonable expectation of success to do so because Ansell and Grimmer as evidenced by Wuestehube and Schekman are directed towards methods of making related lipid nanoparticle/vesicle compositions from eukaryotic cells. The skilled artisan would have been motivated to do so because the substitution would be predictably advantageous to yield a homogenization step with precisely defined operation parameters in the methods of Grimmer as evidenced by Wuestehube and Schekman.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill before the invention was filed.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Grimmer in view of Oglęcka and Moonschi and as evidenced by Wuestehube and Schekman as applied to claim 1 above, and further in view of Baghirova et al. (MethodsX (2015), 2, 440-445).
The teachings of Grimmer, Oglęcka and Wuestehube and Schekman are relied upon as set forth above. Grimmer further teaches quantitating organelle-specific protein markers by western blot and including against Nop9 as a nuclear membrane marker (p6, subheading “ER membrane preparation”), reading in-part on claim 3.
Regarding claim 3, Grimmer, Oglęcka and Wuestehube and Schekman do not teach the embodiment of SDS as a species of additional molecule.
Baghirova teaches methods of subcellular fractionating cells to isolate proteins of interest from the cytosol, membrane-bound organelles, and the nucleus (Abstract). Baghirova teaches three lysis buffers with increasing detergent strength, the third lysis buffer comprising sodium dodecyl sulfate (i.e. SDS) (Abstract and Table 1), reading on claim 3. Baghirova teaches that sodium dodecyl sulfate (i.e. SDS) is an anionic detergent that is extremely effective at membrane that when combined with sodium deoxycholate yields an effective nuclear lysis buffer (the paragraph spanning p442-443), reading on claim 3.
It would have been obvious to a person of ordinary skill in the art before the invention was filed to add the SDS of Baghirova to the methods of Grimmer in view of Oglęcka and Moonschi and as evidenced by Wuestehube and Schekman. A person of ordinary skill in the art would have had a reasonable expectation of success to do so because both Baghirova and Grimmer are in-part directed towards methods of subcellular fractionating cells. The skilled artisan would have been motivated to do so because Baghirova teaches that the addition of a composition comprising SDS would be predictably advantageous as a nuclear lysis buffer and so would predictably enhance the methods of Grimmer by lysing the nucleus of Grimmer’s yeast cells to further detect the nuclear membrane marker, Nop9, of Grimmer.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill before the invention was filed.
Response to Arguments
Applicant's arguments on pages 4-20 of the reply have been fully considered, but not found persuasive of error for the reasons given below.
Applicant’s remarks on pages 6-10 of the reply appear to be a summary of the disclosed invention and the remarks on pages 10-11 are a piecemeal summation of Grimmer (see M.P.E.P. § 2145 (IV)), and so are not persuasive of error as they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Applicant’s allegation on page 11 of the reply that Grimmer does not every element of claim 1 (a) as amended is not persuasive of error, as “for swelling … organelle vesicles;” is a statement of intended outcome and is therefore inherently met by contacting the cells with the 100 mOsm/L composition of Grimmer; see M.P.E.P. § 2111.02 and 2111.04, in that claim scope is not limited by statements of intended outcome/results of positively recited process steps. Grimmer teaches the steps claim 1 (a), and so must meet the intended outcome/results absent any showing to the contrary, see M.P.E.P. § 2112.
In response to applicant's arguments against the references individually on pages 12-14 and again on pages 15-16 of the reply, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations 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). in this case, claim 1 (b) is fully addressed by the combination of Grimmer and Oglęcka and none of Applicant’s arguments address the specific rationale of record to arrive at a prima facie case of obviousness and the arguments do not address that the combination of references would (or would not) reasonably suggest to a person of ordinary skill in the art. Similarly
On pages 14-15 of the reply, Applicant alleges that Grimmer is deficient by teaching adjusting membrane tension in the context of giant unilamellar vesicles (i.e. GUVs). This is not persuasive of error as a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments; see M.P.E.P. § 2123. In this case, the teaching of a nonpreferred embodiment by itself is not persuasive of error as nothing in Grimmer teaches away from the use of a (micro) pipette suction to tune membrane tension in Grimmer’s methods.
On pages 16-18 of the reply, Applicant alleges that Grimmer teaches away from the claimed invention. This is not found persuasive in Grimmer, Oglęcka, and /or Moonschi criticizes, discredit, or otherwise discourages their combination to arrive at a prima facie case for obviousness over the claims; see M.P.E.P. § 2415(X)(D).
In response to applicant’s argument on pages 17-19 of the reply that there is no teaching, suggestion, or motivation to combine Oglęcka with Grimmer, 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, none of Applicant’s arguments address the specific rationale set forth above in support of the prima facie case for obviousness of record. Furthermore, the claims are not rejected over Grimmer as evidenced by as evidenced by Wuestehube and Schekman as anticipated under 35 U.S.C. § 102, but in-combination with Oglęcka and Moonschi, and the claimed invention becomes prima facie obvious when the references are considered together as a whole rather than each alone.
Applicant’s arguments regarding the operability of Oglęcka on pages 18-19 of the reply is acknowledged, but not found persuasive of error as the prior art is presumed operable absent any showing to the contrary, See M.P.E.P. § 716.07 and 2121. At this time, Applicant has not yet shown by any preponderance of evidence in the record that increasing the osmotic pressure to at least 200 mOsm/L would not be capable of generating the claimed surface tension range of claim 1 (b) in view of Oglęcka.
On pages 19-20 of the reply, Applicants rely on arguments traversing the above rejection over Grimmer, Oglęcka, and Moonschi as evidenced by Wuestehube and Schekman to traverse the rejection of claim 2 further in view of Ansell, the rejection of claim 3 further in view of Baghirova. Therefore, the response set forth above to arguments also applies to this rejection.
Conclusion
No claims are allowed. No claims are free of the art.
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 SEAN C BARRON whose telephone number is (571)270-5111. The examiner can normally be reached 7:30am-3:30pm EDT/EST (M-F).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached at 571-272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sean C. Barron/Primary Examiner, Art Unit 1653
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