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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/15/2025 has been entered.
Response to Amendments
Withdrawn: Objection to claim 23 (claim cancelled). Withdrawn Rejections - 35 USC § 112: All rejections of Claims 1-5,22,23 withdrawn in view of amendment and claim 23 being cancelled. Withdrawn 35 USC § 103 rejection of Claim 7, withdrawn in view of amendments.
Status of the Claims
Applicant’s amendment was filed 08/15/2025 and is under consideration.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5,7,9,11-17,20-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. This is a scope of enablement rejection. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Specifically, claims 1, 7 and 20 are broadly directed to a method for screening primer combinations used for quantifying a large Genus of any plurality of target miRNAs, where the plurality of miRNA’s are associated with any health condition, in any species, which is too broad to be enabled by the instant specification.
The same broad associations hold true for claims 2-5 that depend from claim 1, where additionally some of these claims also overtly repeat the overly broad recitations (e.g. claim 3, miRNAs associated with any health condition). Claims 9, 11-13, 16, 17 depend from claim 7, and repeat the overly broad issue directly, and claims 14, 15 are rejected based upon dependence from claim 7. Claims 21 and 22 depend from claim 20, where claim 22 overtly repeats the issue.
To address whether sufficient evidence supports the determination that the disclosure does not satisfy the enablement requirement and whether undue experimentation might be needed, the below factors are considered:
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
A) The breadth of the claims: The scope is very broad, and recites targeting a Genus that would comprise any miRNAs, associated with any health condition, found in any taxonomic species.
B) The nature of the invention: The invention relates to screening multiplex miRNA primers associated with a health condition.
C) The state of the prior art: The art indicates continuing challenges associated with miRNA detection in multiplex reactions, as indicated by the specification disclosure, and by Lao et al. (2006, Multiplexing RT-PCR for the detection of multiple miRNA species in small samples, Biochemical and Biophysical Research Communications 343 85-89), who addressed methods considering simultaneous detection of multiple miRNAs, and recognized that increased, potentially problematic reactions between primers would occur with increased numbers of miRNA analyzed (Pg 85-90).
Busk (2014, A tool for design of primers for microRNA-specific quantitative RT-qPCR, BMC Bioinformatics 2014, 15:29) developed an automated primer design software, and indicated that when the recommended primers did not work, considering why assays fail was necessary, including multiple factors (Pg 7 left col) such as whether the miRNA are near identical or not (Pg 7 left col), and their propensity to bind to off target sequences (Pg 7 left col).
The art also indicates that miRNAs, even just those limited to humans, may play for example, opposed roles in health, where Suzuki (Mar 2023, Roles of MicroRNAs in Disease Biology, MA J. 2023;6(2):104-113) indicates that in cancer, for example, “miRNAs have both tumor-suppressive and oncogenic roles” (Pg 104, left col). Further it is known that complex interactions occur between miRNAs and target mRNAs, with miRNA cotargeting, cross talk with proteins and more (Abstract).
D) The level of one of ordinary skill: Skill references artisans in biotechnology, which are considered highly-skilled and hold a relevant PhD, where courts have considered this person at least a junior faculty member with one or two years of relevant experience or a postdoctoral student with several years of experience Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1373 (Fed. Cir. 1999) (citing Enzo Biochem, Inc. v. Calgene, Inc., 14 F. Supp. 2d 536, 567 (D. Del 1998)).
E) The level of predictability in the art: In general, the level of predictability in the art of biotechnology is considered low (C.f. In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348 (Fed. Cir. 2007)). In the instant case, there is insufficient descriptor/demonstration in the specification or claims to inform the public how the multiplex detection occurs for any and all miRNA associated with any health condition, of any subject, will or necessarily can be, conducted. In-fact, the disclosure reports upon just a couple of multiplex combinations, for just a few human miRNAs, and little relation to broad health knowledge even for just the known human miRNAs. However, it is disclosed that 2600 mature miRNAs are encoded in the human genome, involving many biological processes and their regulation [0006]. Thus, the working examples and figures support a much narrower scope than is found in the claims.
Further, the specification discloses that among the 326 human miRNA, the work to understand primer interactions for miRNAs that is expensive and difficult for any laboratory, even for just the 326 human miRNAs [0013]. In Li et al. (2007, Evolution of plant microRNA gene families Cell Research 17:212-218), they disclosed, even then, a broad array of miRNA in varied species, with more to be identified, “The number of miRNA genes is expected to increase to 500-1000 per species, which would amount to ~2-3% of protein-coding genes. The Release 8.1 of the miRNA Registry (February, 2006) stores more than 3 963 entries including 114 C. elegans, 78 fruit fly, 372 zebra fish, 144 chicken, 462 human, 118 Arabidopsis, 178 rice, and 213 poplar miRNA genes.” Differences were also noted in miRNA effects in animals and plants, “In animals, nearly all miRNAs suppress target gene functions by interfering with their translation. In plants, several possible mechanisms are applied by the miRNA genes. In some cases, the pairing of an0 miRNA with its target gene transcript causes the cleavage of the transcript (Pg 213 left col). Plant miRNAs can also interfere with the ability of target transcripts in translation in a manner similar to animal miRNAs (Pg 213 left col). They can also initiate RNA-dependent RNA polymerase-mediated second-strand synthesis and trans-acting siRNA production [23-26]. With more miRNA to be identified, and varied functional mechanisms that may relate to health of animal or plants, it is difficult to support that the method would necessarily work the same for all miRNA associated with health in all species, and it is not shown in the claims or specification that this is true.
F) The amount of direction provided by the inventor: There is no direction provided by the inventor regarding varied species’ miRNA similarities, differences, functionality of the method disclosed across the broad Genus of all species of miRNA associated with health.
G) “Working examples” describe only a couple combinations of a few human mi-RNA. Example 1 multiplex stem-loop transcription primers recite quantifying miR-16-5p, miR-34c-5p, miR-9-3p and miR-9-5p. It is stated throughout the specification (e.g. [0042],[0054]) that the length of each stem-loop primer may be 40-60 nucleotides; in Example 1, four RT primers are disclosed (Table 1: Seq 9-12, size 22,23,22, and 23 nt, respectively). Four sets of For/Rev qPCR primers are disclosed for the same four miRNA (Table 2). Four probes are disclosed for the same miRNA (Table 3). Thermal cycling conditions and singleplex RT-qPCR data is presented for these four miRNA provided (Table 5, 7, 8). Stem-loop primers with anchor of 6 nt, 8, 11, nt were used [00171] for the same four miRNA; multiplexing was conducted [00179], and comment was made re: informed consent provided for blood collection, [00182] thus all participants were human. Ct values were presented (singleplex and multiplex) (Table 12).
Example 2 is for human miR-210-3p, 126-3p, 205-5p and 486-5p. There is no disclosure on health condition and similar data to Example 1 is presented.
Thus, data is presented for results from singleplex/multiplex comparative work depicting amplification of two sets of four miRNAs amplification in two combinations. It is not clear what health condition is being evaluated in the Specification, and one Fig (FIG 11 mentions “919 physiological or mental conditions”), but nothing further. Hsa -miR’s refer specifically to human miRNAs.
H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: Due to the broad breadth of the claims, and the disclosure itself, as well as previously recited references indicating the challenges of multiplexing miRNA primers, given the lack of additional information in the specification and in the literature on effectiveness of this strategy with alternate multiplex miRNA, in combination, the Wands Factors weigh very heavily against patentability of the broad scope of the claims recited, a large Genus of any plurality of target miRNAs, where the plurality of miRNA’s are associated with any health condition, in any species, which is too broad to be enabled by the application. Issues arise related to the number of miRNA demonstrated to be amplified in multiplex with the disclosure (two sets of four), the number of taxonomic species (one; Homo sapiens only) relative to the Genus claimed, the lack of information on particular miRNA or miRNA combinations associated with health and how this relates to the invention, particularly for all species and all miRNAs claimed. The enabled scope for the method relates to the two disclosed human miRNA clusters in claims 16 and 17, excluding the indefinite and overly broad aspect of ”associated with a health condition”. Notably, new matter must be avoided in amendments.
Claim Rejections - 35 USC § 112(b)
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 1-5, 9, 13, 20-22 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.
Claims 1, 9, and 20 are indefinite in the recitation of “until the modified plurality of stem-loop reverse transcription primers demonstrates the multi-specificity and operatively quantifies the plurality of target miRNAs associated with the health condition simultaneously.”, found specifically, in Claim 1 (D), claim 9(b) and claim 20(D). It is unclear how to establish metes and bounds for “operatively quantifies”, as it is unclear what this means precisely since it refers a plurality of miRNAs primers with multispecificity. There is no Definitions section in the amended specification (the marked-up copy was used here to search).
The term appears only twice in the specification without further clarification, and is not typically used in molecular biology:
[0016] until the modified plurality of stem-loop reverse transcription primers demonstrates the multi-specificity and operatively quantifies the plurality of target miRNAs simultaneously.
[0027] …repeat process until the modified plurality of stem-loop reverse transcription primers demonstrates the multi-specificity and operatively quantifies the plurality of target miRNAs simultaneously.
Claims 2-5,13 and 21 and 22 depend from claims 1, 9 and 20, and are indefinite for the same reason.
Claims 1, 3, 7, 9, 11, 12, 13, 16, 17, 20,22 are indefinite in the recitation of miRNAs “associated with a (or the) health condition” for multiple reasons. It is not clear how to establish the metes and bounds for that which is “associated with” a health condition when what constitutes “associated with” is vague and indefinite in the recitation of and health condition is also vague and not defined. A search for “associated with a” OR “associated with the” does not come up with any hits (matches) related to health condition at all in the Specification. This is complicated by the fact “health condition” also is not found in a search of the specification. In fact, the only match for health in the entire specification is the singular hit in [00234] for “one or more healthy human individuals”.
Claims 2,4,5,14-15,21 depend from claims 1, 9 and 20, and are indefinite for the same reason.
Conclusion
All claims rejected.
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/LISA HORTH/ Examiner, Art Unit 1681
/GARY BENZION/ Supervisory Patent Examiner, Art Unit 1681