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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/23/2026 has been entered.
Response to Amendment
The Amendment filed 02/23/2026 has been entered. Claims 1-18, 21-29 are pending in the application, and claim 21 remains withdrawn. Claims 19-20 have been cancelled. Claims 1-3 have been amended.
Status of Objections and Rejections
The objection to claims 2-3 and 20 have been withdrawn in view of Applicant's amendment. The objection to claim 4 is withdrawn based upon dependency of all of the limitations of claim 3.
The rejection of claims 1 from the previous office action under 35 U.S.C. 112(b) has been withdrawn in view of Applicant's amendment. The rejection of claims 2-18, 22-29 is withdrawn based upon dependency of all of the limitations of claim 1.
The objections to claims 2 and 20 are maintained.
The rejection of claims 1-18, 22-29 from the previous office action under 35 U.S.C. 103 has been withdrawn in view of Applicant's arguments.
Response to Arguments
Applicant’s arguments, see pages 10-12, filed 02/23/2026, with respect to the rejection(s) of claim(s) 1-18, 22-29 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found references.
Reference Swiderek teaches direct separation of a mixture of protein/peptide and a non-ionic surfactant using a PHEA HILIC column. Another reference, Huang, teaches the use of a ZIC-HILIC column for separation of biopharmaceutical formulation excipients from a protein mixture. Reference Montii (referred to as Asajima from the previous office action) separates polysorbates from a protein mixture of a biopharmaceutical formulation. The column chemistry of PHEA HILIC and ZIC-HILIC column are closer in chemistry than the IEC column taught by Montii (relied upon in the previous office action) and would be expected to yield predictable results based upon the same separation method of analyte polarity.
Claim Objections
Claims 1-18, 22-29 are objected to because of the following informalities:
Regarding claim 1, l. 2 recites “protein of interest and non-ionic surfactant“. Applicant may amend the claim by adding articles before the terms to read “a protein of interest and the non-ionic surfactant“.
Claims 2-18, 22-29 are objected to based on dependency of all of the limitations of claim 1.
Regarding claim 1, l. 3 recites “on zwitterionic hydrophilic interaction liquid chromatography (ZIC-HILIC) column “. Applicant may amend the claim by adding an article to read “on a zwitterionic hydrophilic interaction liquid chromatography (ZIC-HILIC) column”. Appropriate correction is required.
Claims 2-18, 22-29 are objected to based on dependency of all of the limitations of claim 1.
Regarding claim 3, l. 2 recites “the non-ionic surfactant selected from”. Applicant may amend the claim by adding the verb “is” to read “the non-ionic surfactant is selected from”.
Claim 4 is objected to based on dependency of all of the limitations of claim 3.
Regarding claim 4, l. 1 recites “wherein non-ionic surfactant is”. Applicant may amend the claim by adding the definite article “the” to read “wherein the non-ionic surfactant is”.
Regarding claim 22, l. 1 recites “wherein the elution of non-ionic surfactant is”. Applicant may amend the claim by adding the definite article “the” to read “wherein the elution of the non-ionic surfactant is”.
Appropriate correction is required.
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 4, 8, 11-12, 23-25, and 27-28 are 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.
Regarding claim 4, ll. 1-2 recites “non-ionic surfactant is Polysorbate 20 (PS20), Poloxamer 188 (P188)”. It is unclear whether both surfactants are required or that one surfactant can be selected from this list. The Applicant may amend the claim by stating that either both surfactants or only one is required.
Regarding claim 8, ll. 2-3 recites “mobile phase B is formic acid and water and/or combination thereof”. It is unclear whether both formic acid and water are required or selected from this list. The Applicant may amend the claim by stating that both formic acid and water are required or that one solvent can be selected from this list. The Applicant may amend the claim by stating that either both solvents or only one is required.
Claims 11-12, 24-25, and 28 are objected to based on dependency of all of the limitations of claim 8.
Regarding claim 23, ll. 2-3 recites “mobile phase B is formic acid and water and/or combination thereof”. It is unclear whether both formic acid and water are required or selected from this list. The Applicant may amend the claim by stating that both formic acid and water are required or that one solvent can be selected from this list. The Applicant may amend the claim by stating that either both solvents or only one is required.
Claim 27 is objected to based on dependency of all of the limitations of claim 23.
Appropriate correction is required.
Claim Interpretation
The claims contain limitations which are directed to intended uses or capabilities of the claimed invention. These limitations are only given patentable weight to the extent which effects the structure of the claimed invention. Please see MPEP 2114. Note that functional limitations are emphasized in italics herein.
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.
Claims 1-9, 11-13, 15, 17-18, 23-29 are rejected under 35 U.S.C. 103 as being unpatentable over Swiderek et al. (“Strategies for the Removal of Ionic and Non-Ionic Detergents From Protein and Peptide Mixtures For On- And Off-Line Liquid Chromatography Mass Spectrometry (LCMS)”; 1995) in view of Huang et al. (“Enablement of the direct analysis of excipients in monoclonal antibody formulations through the incorporation of a wide pore C18 protein trap with hydrophilic interaction liquid chromatography”; 2017), Merck (“A Practical Guide to HILIC including ZIC®-HILIC applications”), and Montii (US 20190178859 A1).
Regarding claim 1, Swiderek teaches a method for separation of a non-ionic surfactant from a protein mixture (Removal of…Non-Ionic Detergents From Protein and Peptide Mixtures; Title) comprising protein of interest (test peptide ALF; Fig. 5) and non-ionic surfactant (“Triton X-100,” or “Nonidet P-40”; Fig. 5; p. 274, ll. 11-12)(See peptide as a “protein of interest” in paragraph [0181] of the instant publication US 20240352061 A1) comprising;
a) loading the protein mixture on hydrophilic interaction liquid chromatography (HILIC) column (“HILIC separation of the test peptide ALF from Triton X-100,” using “capillary PHEA capillary column,” and wherein loading necessarily occurs prior to the separation on the column; Fig. 5; p. 274, l. 6);
b) eluting the non-ionic surfactant from HILIC column by using mobile phase A and B in a suitable ratio (“Solvents: A=0.1% TFA in water. B=0.1% TFA in 90% acetonitrile. Gradient: 100% B,” wherein Solvent A is mobile phase B (TFA in acetonitrile) and Solvent B is mobile phase A (TFA in water); Fig. 5)(Triton X-1(X) (middle panel) was not retained by the column under these conditions; p. 274, ll. 9-10);
c) eluting the protein of interest from HILIC column by using mobile phase A and B in a suitable ratio (ALF was eluted by lowering the acetonitrile concentration, p. 274, ll. 10-11);
wherein the non- ionic surfactant elutes before the elution of protein of interest (“Triton X-100 (middle panel) was not retained by the column under these conditions, while ALF was eluted by lowering the acetonitrile concentration,” and therefore the non-ionic surfactant Triton X-100 eluted before ALF) ;
wherein the ratio of mobile phase A to mobile phase B in step (b) is selected from the group consisting of 100:0 (“Gradient: 100% B,” wherein Solvent B is mobile phase A; Fig. 5), 90:10, 80:20, and 70:30; and
wherein the ratio of mobile phase B to mobile phase A in step (c) is selected from the group consisting of 100:0 (“0% B,” wherein Solvent B is mobile phase A, and mobile phase B is 100%; Fig. 5), 90:10, 80:20, and 70:30.
Swiderek fails to teach using a ZIC-HILIC column and that the protein mixture is a biopharmaceutical formulation or composition.
Huang teaches using a ZIC-HILIC column to separate a protein mixture that includes a biopharmaceutical formulation or composition (“[using a] HILIC column by making repetitive injections of mAb samples in a formulation drug product containing…excipients,” wherein “A silica based SeQuant ZIC-HILIC column was tested and found to have comparable separation and resolution”; p. 132, col. 2, 3. Results and discussion, ll. 6-8; p. 133, col. 2, ll. 5-6; Table 1)(Under broadest reasonable interpretation, the Examiner understands that a “”Biopharmaceutical formulation”…refers to formulations comprising proteins or monoclonal antibodies or fusion proteins and a variety of excipients” as discussed in paragraph [0057] of the instant publication US 20240352061 A1).
Merck highlights the specific benefits of using ZIC-HILIC over HILIC for protein/peptide separation (See pp. 4-5 and Fig. 4).
Huang is considered to be analogous to the claimed invention because it is in the same field of endeavor for using a ZIC-HILIC column to separate a protein mixture within a biopharmaceutical formulation. Merck is considered to be analogous to the claimed invention because it is in the same field of endeavor for using a ZIC-HILIC column to separate a protein mixture. Swiderek shows that neutral HILIC (e.g., via a PHEA column) retains only certain peptides (e.g. ALF) and fails for others (e.g. EPMISIYVY), while non-ionic surfactants like Triton X-100 and Nonidet P-40 are not retained (p. 273-274). Retention in the PHEA column is governed primarily by hydrophilicity and lacks robustness across different analytes (Swiderek, p. 272, last para. ll. 1-2). ZIC-HILIC would predictably improve this by adding electrostatic interactions, thereby enabling more consistent peptide retention without retaining the surfactants and with the added benefit of separating compounds with similar hydrophilicity (See p. 4, col. 2 of Merck). Additionally, ZIC-HILIC requires low eluent buffer concentrations similar to neutral HILIC columns (e.g. PHEA) which preserves high-sensitivity MS detection with the advantage of enhancing selectivity and separation performance (See p. 5, col. 1, para. 1 of Merck). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the PHEA HILIC column taught by Swiderek with the ZIC-HILIC column taught by Huang and Merck because using a known alternative stationary phase within the same chromatographic mode would yield predictable, enhanced separation results with a reasonable expectation of success (See MPEP 2143(I)(B)).
Modified Swiderek doesn’t teach a non-ionic surfactant excipient in the biopharmaceutical formulation.
Montii teaches a non-ionic surfactant excipient in a biopharmaceutical formulation (the non-ionic surfactant is poloxamer (P188) or a polysorbate…the composition is a pharmaceutical formulation; [0008]).
Montii is considered to be analogous to the claimed invention because it is in the same field of endeavor for separating a protein from a non-ionic surfactant within a biopharmaceutical formulation via a column. Montii acknowledges that “Polysorbate 20 (PS20) is a surfactant commonly used in polypeptide formulations to protect product from physical damage during processing and storage,” and that it “must be accurately quantified in each product's control system” ([0003]). It is a recognized problem in the art that mAb pharmaceutical formulations contain high concentrations of protein that can interfere with the accurate analysis of common non-ionic surfactants, such as polysorbates (Montii; [0004]). Huang also recognizes the previous attempts documented in literature to separate proteins before analysis of polysorbates (p. 131, col. 1, ll. 19-21). The non-ionic surfactant Triton X-100 taught by modified Swiderek (Swiderek, Fig. 5) and the non-ionic surfactant polysorbate taught by Montii are chemically analogous, exhibiting similar amphiphilic properties. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the known ZIC-HILIC separation technique of Swiderek in view of Huang and Merck to a mAb formulation containing polysorbate as taught by Montii, because polysorbates are important for product stability, separating a surfactant from a protein improves analytical resolution, and the application of the technique addresses a recognized need that would yield predictable results with a reasonable expectation of success. See MPEP 2143(I)(D)).
Regarding claim 2, Modified Swiderek teaches the method of claim 1.
Modified Swiderek fails to teach the eluted non-ionic surfactant in step (b) is quantified by a suitable technique selected from ultraviolet light absorbance (UV), fluorescence (FL), refractive index (RI), evaporative light scattering (ELSD), charged aerosol (CAD), and mass spectrometry (MS).
Huang teaches the eluted non-ionic surfactant in step (b) is quantified by ultraviolet light absorbance (UV) and charged aerosol (CAD) (“The detection was by UV at 280 nm and/or by CAD,” wherein “linear calibration curves were used for quantitation”; p. 132, col. 1, para. 3, ll. 12-13; p. 133, last 2 ll.; See excipients peaks 1 and 2 of Fig. 2 as quantified in Table 1,).
Huang is considered to be analogous to the claimed invention because it is in the same field of endeavor for using a ZIC-HILIC column to separate a protein mixture within a biopharmaceutical formulation. Modified Swiderek explains that Triton X-100 is not retained by the HILIC column under 100% mobile phase A and uses mass spectrometry to generate spectra with a scaled measure of absorbance (Swiderek, p. 268, last para. ll. 1-2; Fig. 5). This confirmed the separation since the spectrum shows a peak for ALF and not for Triton X-100. Huang shows a clear separation of excipients using a mobile phase of 70% ACN as opposed to Swidelek’s 90% ACN (Huang, Fig. 2, excipient peaks 1 and 2)(Swidelek,100% B; Fig. 5). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the separation method taught by Swiderek in view of Huang, Merck and Montii to further incorporating the teachings of Huang by optimizing the mobile phase ratio and quantifying the eluted non-ionic surfactant, because confirming the proper flow and complete separation of the surfactant through the system via calibration and quantitation is routine in the art, and this involves the combination of known techniques that would yield predictable results with a reasonable expectation of success. See MPEP 2143(I)(A) and 2144.05(II).
Regarding claim 3, Modified Swiderek teaches the method of claim 1, wherein the non-ionic surfactant selected from polyglycerol alkyl ethers, glucosyl dialkyl ethers, crownethers, ester-linked surfactants, polyoxyethylene alkyl ethers, BYK-110, Polysorbate 20 (polysorbate 20; Montii, [0008]), Polysorbate 40 (PS 40), Polysorbate (PS 60), Polysorbate 80 (PS 80), Poloxamer 188 (P188), Poloxamer 237 (P237), Poloxamer (P338), Poloxamer (P407), and Nonidet-P40 (nonylphenoxypolyethoxyethanol)(Swiderek, Nonidet P-40; p. 274, ll. 11-12).
Regarding claim 4, Modified Swiderek teaches the method of claim 3, wherein non-ionic surfactant is Polysorbate 20 (PS20) 20 (polysorbate 20; Montii, [0008]), Poloxamer 188 (P188)(Montii, poloxamer (P188); [0008).
Regarding claim 5, Modified Swiderek teaches the method of claim 1, wherein mobile phase A or mobile phase B is an organic solvent (Fig. 5 of Swiderek states acetonitrile to be in Solvent B which is Mobile Phase A), or water and/or combination thereof to improve the binding affinity of protein of interest with column resin (“ALF was eluted by lowering the acetonitrile concentration,” and therefore the binding affinity was improved with increased ACN concentration; Swiderek, p. 274, ll. 10-11).
Regarding claim 6, Modified Swiderek teaches the method of claim 5, wherein the organic solvent of mobile phase A or mobile phase B is selected from the group consisting of formic acid, acetonitrile (Fig. 5 of Swiderek states acetonitrile to be in Solvent B which is Mobile Phase A), methanol, ethanol, acetic acid, trifluoroacetic acid, and isopropanol.
Regarding claim 7, Modified Swiderek teaches the method of claim 6, wherein mobile phase A or mobile phase B is an organic solvent (Fig. 5 of Swiderek states acetonitrile to be in Solvent B which is Mobile Phase A), or water and/or combination thereof to improve the elution of protein of interest (“ALF was eluted by lowering the acetonitrile concentration,” and therefore the elution of protein of interest was improved with decreasing ACN concentration).
Regarding claim 8, Modified Swiderek teaches the method of claim 5, wherein mobile phase A is an organic solvent (Fig. 5 of Swiderek states acetonitrile to be in Solvent B which is Mobile Phase A), or water and/or combination thereof.
Modified Swiderek fails to teach mobile phase B is formic acid and water.
Montii teaches a mobile phase with formic acid and water (paragraph [0089] of Montii explains that formic acid can be 0.5% (v/v) in either water or methanol).
Montii is considered to be analogous to the claimed invention because it is in the same field of endeavor for separating a protein from a non-ionic surfactant in a biopharmaceutical formulation or composition. Modified Swiderek teaches lowering the pH of the ACN mobile phase with 0.1% TFA in order to induce the peptide to adhere to the HILIC column walls and delay elution (Swiderek, p. 273, ll. 1-7). This is a technique that is a well-known in the art. For example, Huang teaches the use of formic acid to adjust the pH of the mobile phase in the ZIC-HILIC column as well (p. 132, col. 1, para. 3, ll. 3-4). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the 0.1% TFA pH adjuster taught by Swiderek in view of Huang and Montii with the 0.5% formic acid also taught by Montii because TFA and FA are known equivalents used in column chromatography to separate analytes and the substitution is expected to yield predictable results with a reasonable expectation of success. See MPEP 2143(I)(B).
Regarding claim 9, The method of claim 1, wherein the protein of interest is selected from peptide, antibody (Huang, mAb samples in a formulation drug product; p. 132, col. 2, 3. Results and discussion, ll. 6-8)(Montii, a monoclonal antibody; [0008]), antibody fragment, PEGylated protein, and fusion protein.
Regarding claim 11, Modified Swiderek teaches the method of claim 8, wherein the concentration of formic acid is selected from the group consisting of 0.1%, 0.2%, 0.3%, 0.4%, 0.5% (paragraph [0089] of Montii explains formic acid can be 0.5% (v/v) in either water or methanol), 0.6%, 0.7%, 0.8%, 0.9%, and 1%.
Regarding claim 12, Modified Swiderek teaches the method as claimed in claim 11.
Modified Swiderek fails to teach the concentration of formic acid is 0.1%.
However, paragraph [0089] of Montii explains formic acid can be as low as 0.5% (v/v) in either water or methanol. Applicant has provided no comparative data showing that 0.1% formic acid achieves an unexpected advantage over a 0.5% concentration and is thus a result-effective variable that can be optimized to create the appropriate pH of the mobile phase for protein separation. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to have adjusted the formic acid concentration to a concentration of 0.1% in order to improve the overall analysis results. See MPEP 2144.05(II)(A).
Regarding claim 13, Modified Swiderek teaches the method of claim 6, wherein the concentration of methanol is selected from 5%, 10%, 15%, 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55%, 60%, 65%, 70%, 75%, 80%, 85%, 90%, 95%, and 100%.
Modified Swiderek fails to teach the concentration of methanol is selected from 5%, 10%, 15%, 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55%, 60%, 65%, 70%, 75%, 80%, 85%, 90%, 95%, and 100%.
Monti teaches a mobile phase with a methanol concentration of 95%, (paragraph [0089] of Montii explains formic acid can be about 5% (v/v) in methanol, which then leaves the concentration methanol to be 95% which is within the limitations of the claim).
Montii is considered to be analogous to the claimed invention because it is in the same field of endeavor for separating a protein from a non-ionic surfactant in a biopharmaceutical formulation or composition. Modified Swiderek teaches a mobile phase of water at 99.9% (Fig. 5 states that Solvent A is 0.1% TFA in water which is 99.9% water). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted 99.9% water mobile phase taught by Swiderek in view of Huang and Montii with the 95% methanol mobile phase also taught by Montii because water and methanol are known organic solvent equivalents used in column chromatography to separate analytes and the substitution is expected to yield predictable results with a reasonable expectation of success. See MPEP 2143(I)(B).
Regarding claim 15, Modified Swiderek teaches the method of claim 6, wherein the concentration of acetonitrile is selected from 5%, 10%, 15%, 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55%, 60%, 65%, 70%, 75%, 80%, 85%, 90% (Swiderek, 90% acetonitrile; Fig. 5), 95%, and 100%.
Regarding claim 17, Modified Swiderek teaches the method of claim 5, wherein the concentration of water is selected from 5%, 10%, 15%, 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55%, 60%, 65%, 70%, 75%, 80%, 85%, 90%, 95%, 96%, 97% 98%, and 99.9% (Fig. 5 of Swiderek states that Solvent A is 0.1% TFA in water which is 99.9% water).
Regarding claim 18, Modified Swiderek teaches the method of claim 17, wherein the concentration of water is 5% or 99.9% (Fig. 5 of Swiderek states that Solvent A is 0.1% TFA in water which is 99.9% water).
Regarding claim 23, Modified Swiderek teaches the method of claim 7, wherein the mobile phase A is an organic solvent (Fig. 5 of Swiderek states acetonitrile to be in Solvent B which is Mobile Phase A), or water and/or combination thereof.
Modified Swiderek fails to teach mobile phase B is formic acid and water.
Montii teaches a mobile phase with formic acid and water (paragraph [0089] of Montii explains that formic acid can be 0.5% (v/v) in either water or methanol).
Montii is considered to be analogous to the claimed invention because it is in the same field of endeavor for separating a protein from a non-ionic surfactant in a biopharmaceutical formulation or composition. Modified Swiderek teaches lowering the pH of the ACN mobile phase with 0.1% TFA in order to induce the peptide to adhere to the HILIC column walls and delay elution (Swiderek, p. 273, ll. 1-7). This is a technique that is a well-known in the art. For example, Huang teaches the use of formic acid to adjust the pH of the mobile phase in the ZIC-HILIC column as well (p. 132, col. 1, para. 3, ll. 3-4). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the 0.1% TFA pH adjuster taught by Swiderek in view of Huang and Montii with the 0.5% formic acid also taught by Montii because TFA and FA are known equivalents used in column chromatography to separate analytes and the substitution is expected to yield predictable results with a reasonable expectation of success. See MPEP 2143(I)(B).
Regarding claim 24, Modified Swiderek teaches the method of claim 8, wherein the concentration of formic acid is selected from 0.1%, 0.2%, 0.3%, 0.4%, 0.5%, 0.6%, 0.7%, 0.8%, 0.9% and 1% (paragraph [0089] of Montii explains formic acid can be 0.5% (v/v) in either water or methanol).
Regarding claim 25, Modified Swiderek teaches the method of claim 24.
Modified Swiderek fails to teach the concentration of formic acid is 0.1%.
However, paragraph [0089] of Montii explains formic acid can be as low as 0.5% (v/v) in either water or methanol. Applicant has provided no comparative data showing that 0.1% formic acid achieves an unexpected advantage a 0.5% concentration and is thus a result-effective variable that can be optimized to create the appropriate pH of the mobile phase for protein separation. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to have adjusted the formic acid concentration to improve the overall analysis results. See MPEP 2144.05(I)).
Regarding claim 26, Modified Swiderek teaches the method of claim 7, wherein the concentration of water in mobile phase A and mobile phase B is selected from 5%, 10%, 15%, 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55%, 60%, 65%, 70%, 75%, 80%, 85%, 90%, 95%, 96%, 97% 98%, and 99.9% (Fig. 5 of Swiderek states that Solvent A (Mobile phase B) is 0.1% TFA in water which is 99.9% water)(Swiderek states that solvent B (Mobile phase A) can be 90% ACN in water which equals 10% water. See p. 268 II. Methods and Materials, ll. 5-6).
Regarding claim 27, Modified Swiderek teaches the method of claim 23, wherein the concentration of water in mobile phase B is 99.9% (Fig. 5 of Swiderek states that Solvent A (Mobile phase B) is 0.1% TFA in water which is 99.9% water).
Modified Swiderek fails to teach the concentration of water in mobile phase A is 5%. However, Modified Swiderek does teach that is can be 10% (Swiderek states that solvent B (Mobile phase A) can be 90% ACN in water which equals 10% water. See p. 268 II. Methods and Materials, ll. 5-6). Applicant has provided no comparative data showing that 5% water concentration achieves an unexpected advantage a 10% concentration and is thus a result-effective variable that can be optimized to create the appropriate elution gradient for protein separation. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to have adjusted the concentration of water in mobile phase A to improve the overall analysis results. See MPEP 2144.05(II)).
Regarding claim 28, Modified Swiderek teaches the method of claim 8, wherein the concentration of water in mobile phase A and mobile phase B is selected from 5%, 10%, 15%, 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55%, 60%, 65%, 70%, 75%, 80%, 85%, 90%, 95%, 96%, 97% 98%, and 99.9% (Fig. 5 of Swiderek states that Solvent A (Mobile phase B) is 0.1% TFA in water which is 99.9% water)(Swiderek states that solvent B (Mobile phase A) can be 90% ACN in water which equals 10% water. See p. 268 II. Methods and Materials, ll. 5-6).
Regarding claim 29, Modified Swiderek teaches the method of claim 28, wherein the concentration of water in mobile phase B is 5% or 99.9% (Fig. 5 of Swiderek states that Solvent A (Mobile phase B) is 0.1% TFA in water which is 99.9% water).
Modified Swiderek fails to teach the concentration of water in mobile phase A is 5% or 95%. However, Modified Swiderek does teach that it can be 10% (Swiderek states that solvent B (Mobile phase A) can be 90% ACN in water which equals 10% water. See p. 268 II. Methods and Materials, ll. 5-6). Applicant has provided no comparative data showing that 5% water concentration achieves an unexpected advantage a 10% concentration and is thus a result-effective variable that can be optimized to create the appropriate elution gradient for protein separation. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to have adjusted the concentration of water in mobile phase A to improve the overall analysis results. See MPEP 2144.05(II).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Swiderek et al. (“Strategies for the Removal of Ionic and Non-Ionic Detergents From Protein and Peptide Mixtures For On- And Off-Line Liquid Chromatography Mass Spectrometry (LCMS)”; 1995) in view of Huang et al. (“Enablement of the direct analysis of excipients in monoclonal antibody formulations through the incorporation of a wide pore C18 protein trap with hydrophilic interaction liquid chromatography”; 2017), Merck (“A Practical Guide to HILIC including ZIC®-HILIC applications”), and Montii (US 20190178859 A1), as applied to claim 9 above, and in further view of Falkenstein et al. (US 20210155656 A1).
Regarding claim 10, Modified Swiderek teaches the method of claim 9,
Modified Swiderek is silent to teaching the antibody or fusion protein is selected from Rituximab, Palivizumab, Etanercept, Abatacept, Aflibercept, Belatacept, Rilonacept, Romiplostim, Alefacept, Conbercept, Infliximab, Trastuzumab, Alemtuzumab, Adalimumab, Ibritumomab tiuxetan, Omalizumab, Cetuximab, Bevacizumab, Natalizumab, Eculizumab, Certolizumab pegol, Ustekinumab, Canakinumab, Golimumab, Ofatumumab, Tocilizumab, Denosumab, Belimumab, Ipilimumab, Brentuximab vedotin, Pertuzumab, Trastuzumab emtansine, Raxibacumab, Obinutuzumab, Siltuximab, Ramucimmab, Vedolizumab, Blinatumomab, Nivolumab, Pembrolizumab, Darucizumab, Necitumumab, Dinutuximab, Secukinumab, Mepolizumab, Alirocumab, Evolocumab, Daratumumab, Elotuzumab, Ixekizumab, Reslizumab, Olaratumab, Bezlotoxumab, Atezolizumab, Obiltoxaximab, Sarilumab, Ocrelizumab, Tildrakizumab, Romosozumab, Brolucizumab, and Crizanlizumab.
Falkenstein teaches the antibody is Obinutuzumab, trastuzumab or pertuzumab; [0066]).
Falkenstein is considered to be analogous to the claimed invention because it is in the same field of endeavor for separation and quantification of non-ionic surfactants from proteins. Modified Swiderek teaches that the separated antibody is IgA, IgD, IgE, IgG, or IgM (Montii, [0153]) and provides a list of encompassed antibody genera (Montii, [0140]). Modified Swiderek also states that experiments were carried out for eleven different mabs and fusion proteins (Huang, p. 132, last 5 ll.). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the known ZIC-HILIC separation technique taught by Swiderek in view of Huang, Merck, and Montii to the mAbs taught by Hoffman (Obinutuzumab is of the CD20 antibody genus which is a listed genus of Montii; [0140]) because these antibodies are commonly present in biopharmaceutical formulations and application of the technique addresses a recognized need of surfactant separation to yield predictable results with a reasonable expectation of success See MPEP 2143(I)(D)).
Claims are 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Swiderek et al. (“Strategies for the Removal of Ionic and Non-Ionic Detergents From Protein and Peptide Mixtures For On- And Off-Line Liquid Chromatography Mass Spectrometry (LCMS)”; 1995) in view of Huang et al. (“Enablement of the direct analysis of excipients in monoclonal antibody formulations through the incorporation of a wide pore C18 protein trap with hydrophilic interaction liquid chromatography”; 2017), Merck (“A Practical Guide to HILIC including ZIC®-HILIC applications”), and Montii (US 20190178859 A1), as applied to claims 13 and 15 above, and in further view of Zhao (CN110398548, see attached translation).
Regarding claim 14, Modified Swiderek teaches the method of claim 13, wherein the concentration of methanol is 35%.
Modified Swiderek fails to teach the concentration of methanol is 35%.
Zhao teaches a range of methanol concentrations that includes 35% (“the mobile phase B, the volume ratio of methanol to acetonitrile is (0:100) to (100:0); [0019][0020][0034]).
Zhao is considered to be analogous to the claimed invention because it is in the same field of endeavor for separation and quantification of non-ionic surfactants. Paragraph [0343] of Montii teaches that protein could be separated from PS20 esters by any methanol wash ranging from 15% - 50%. Although the concentration of methanol taught by Zhao is a range and not 35%, the concentration is a result-effective variable. Therefore, it would have obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the mobile phase concentration of methanol taught by Swiderek in view of Huang, Merck, and Montii to a value of 35% which is within the claimed range of Zhao in order to achieve similar or improved performance for separating the protein and non-ionic surfactant with a reasonable expectation of success (MPEP 2144.05(I&II)).
Regarding claim 16, Modified Swiderek teaches the method of claim 15.
Modified Swiderek fails to teach the concentration of acetonitrile is 60%.
Zhao teaches a range of acetonitrile concentrations that includes 60% (“the mobile phase B, the volume ratio of methanol to acetonitrile is (0:100) to (100:0),” wherein this range would encompass 60% acetonitrile; [0019][0020][0034]).
Zhao is considered to be analogous to the claimed invention because it is in the same field of endeavor for separation and quantification of non-ionic surfactants. Swiderek teaches that separation is optimized with a low pH and/or a maximum ACN concentration of 85% (pp. 272-273). Huang teaches a mobile phase with 70% ACN in a low pH buffer (p. 132, col. 1, 2.2. Solutions and HPLC conditions). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the mobile phase concentration of acetonitrile taught by Swiderek in view of Huang, Merck, and Montii to incorporate the teachings of Zhao by optimizing the concentration of acetonitrile to be 60%. Although the concentration of acetonitrile taught by Zhao is a range and not 60%, the concentration is a result-effective variable and one of ordinary skill in the art would have recognized the benefit of adjusting the pH and the concentration of acetonitrile in the mobile phase to a value of 60%, which is within the claimed range of Zhao, in order to achieve similar or improved performance for separating the protein and non-ionic surfactant with a reasonable expectation of success (MPEP 2144.05(I&II).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Swiderek et al. (“Strategies for the Removal of Ionic and Non-Ionic Detergents From Protein and Peptide Mixtures For On- And Off-Line Liquid Chromatography Mass Spectrometry (LCMS)”; 1995) in view of Huang et al. (“Enablement of the direct analysis of excipients in monoclonal antibody formulations through the incorporation of a wide pore C18 protein trap with hydrophilic interaction liquid chromatography”; 2017), Merck (“A Practical Guide to HILIC including ZIC®-HILIC applications”), and Montii (US 20190178859 A1), as applied to claim 1 above, and in further view of Kondo (US2004/0010156 A1).
Regarding claim 22, The method of claim 1.
Modified Swiderek fails to teach the elution of non-ionic surfactant is performed at temperature about 55°C.
Kondo teaches the elution of non-ionic surfactant is performed at temperature of 55°C (Paragraph [0044] teaches “The fluorochemical surfactant adsorbed on the IER is preferably eluted with about 25 to 500 parts by volume of the eluent ... The temperature at which the elution is carried out is not critical, and generally in the range of 0 to 50° C)
Kondo is considered to be analogous to the claimed invention because it is in the same field of endeavor for separation and quantification of non-ionic surfactants. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the separation method taught by Swiderek in view of Huang, Merck, and Montii to incorporate the teachings of Kondo and include a non-ionic surfactant elution temperature of about 55°C because this would provide a method for separating surfactants from an aqueous solution that minimizes the amount of eluent and makes it possible to recover the adsorbed surfactant during a short elution time (Kondo, [0007]). This represents a combination of known methods to yield the predictable result of improved separation. See MPEP 2143(I)(A).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE SIMMONS whose telephone number is (703)756-1361. The examiner can normally be reached M-F 7:30-4:00.
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, Maris Kessel can be reached on 571-270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/V.S./Examiner, Art Unit 1758
/REBECCA M FRITCHMAN/Primary Examiner, Art Unit 1758
Prosecution Insights