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 .
Claim Status
Original claims 1-20 filed 19 Aug 2024 are pending and under consideration.
Claim Objections
Claims 4, 7, 13, and 15 are objected to because of the following informalities:
Claims 4 and 15 should be amended to recite "a dorsal root ganglion" rather than "a dorsal root ganglia" to preserve proper article-noun agreement.
Claims 7 and 13 should be amended to recite "a cryofreezing medium" rather than "a cryofreezing media" to preserve proper article-noun agreement.
Appropriate correction is required.
Claim Interpretation
To promote compact prosecution, the second line of claim 20 is interpreted as "freezing a sample of nerve tissue using a cryofreezing medium" to correct for an omission of an essential element.
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.
Claim 20 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 20 is rejected under 35 U.S.C. 112(b) as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. Claim 20 recites the step, "freezing a sample of nerve tissue using;". The incomplete phrase is also found in par. 10 of the specification and no similar phrasing was found. However, the phrases "the method may include using a cryofreezing media when freezing the biomaterial" (par. 7), "may include freezing a sample of biomaterial using a cryofreezing media" (par. 8), and "freezing a sample 200 of biomaterial may include using a cryofreezing media 205" (par. 31) are recited in the specification, and a specific example of the cryofreezing media is given as liquid nitrogen (par. 31 last line). The omitted element appears to be using a cryofreezing medium.
Claim Rejections - 35 USC § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 3 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 3 recites "wherein measuring the at least one longest outgrowing neurite from the neuron or the group of neurons comprises measuring a subset of the longest outgrowing neurites and averaging the lengths of the subset of the longest outgrowing neurites". Averaging the lengths of the subset of longest outgrowing neurites is a mathematical calculation, which falls into the abstract idea grouping of judicial exceptions. This judicial exception is not integrated into a practical application because the additional elements in the claim are mere data gathering steps that are insignificant extra solution activity. The claims do not include additional elements sufficient to amount to significantly more than the judicial exception because the additional steps of the in the method are well understood, conventional, and routine in the art of neurite growth assays.
The Office published the guidance document entitled 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance), published 16 Dec 2014. Step 2A was revised to include two prongs (Federal Register / Vol. 84, No. 4 / 07 Jan 2019).
Analysis is as follows:
Step 1: Is the claim drawn to one of the statutory categories of invention?
Step 1: The claim is directed to a process (a method for conducting an in vitro assay of a biomaterial).
Step 1: Yes.
Step 2A, Prong One: Is the claim drawn to a judicial exception (a law of nature, a natural product/phenomenon, or an abstract idea)?
Step 2A, Prong One: The process (a method for conducting an in vitro assay of a biomaterial) is directed to an abstract idea. The claim recites the mathematical calculation of averaging the lengths of the subset of longest outgrowing neurites.
Step 2A, Prong One: Yes.
Step 2A, Prong Two: Does the claim recite additional elements that integrate the judicial exception into practical application of the exception?
Step 2A, Prong Two: This exception is not integrated into practical application because the claim does not recite additional elements that integrate the judicial exception into practical application. The additional steps in the method for conducting an in vitro assay of a biomaterial are insignificant extra-solution activity as the additional steps are mere data gathering in conjunction with the calculation step. See MPEP § 2106.06(g).
Step 2A, Prong Two: No.
Step 2B: Does the claim recite additional elements that individually or in combination amount to significantly more than the judicial exception (i.e., whether the additional elements provide an inventive concept).
Step 2B: The additional elements recited in the claim do not add an inventive step to add significantly more than the mathematical calculation when considered alone or in combination. The additional elements recited in the claim are known in the art as a neurite outgrowth assay, which is well understood, conventional, and routine in the art. Zuo (J. Zuo, et al., J Neurosci, 1998) teaches that the "culture of neurons on tissue sections (cryoculture) has been used to study mechanisms of neuritic growth and to better understand the neurite-promoting status of peripheral and central nervous tissue." This teaching by Zuo indicates the neurite outgrowth assay recited in the additional elements of claim 3, and claim 1 from which claim 3 depends, is used widely in the art and is sufficiently routine so as to be adapted to studying numerous mechanisms of neurite outgrowth. Furthermore, output of the additional elements, the neurite outgrowth assay, result in a mere output of measurement of a subset of the longest outgrowing neurites. Therefore, the additional elements act as mere data gathering steps for the calculation step of averaging the lengths of the subset of the longest outgrowing neurites. The calculation is an end step in the recited method and the resulting calculation is not integrated into any other method steps so as to add significantly more.
Step 2B: No.
The Supreme Court has identified several considerations for determining whether a claim with additional elements amounts to significantly more than the judicial exception itself. Limitations that may qualify as significantly more when recited in a claim with a judicial exception include: improvements to another technology or technical field; improvements to the functioning of the computer itself; applying the judicial exception with, or by use of, a particular machine; effecting a transformation or reduction of a particular article to a different state or thing; adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application; or other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Limitations that were found not to be enough to qualify as significantly more when recited in a claim with a judicial exception include: adding the words ‘apply it’ (or an equivalent) with the judicial exception; mere instructions to implement an abstract idea on a computer; simply appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception; adding insignificant extra-solution activity to the judicial exception; or generally linking the use of the judicial exception to a particular technological environment or field of use.
In the instant case, the method for conducting an in vitro assay of a biomaterial does not recite additional elements that distinguish the method steps of a neurite outgrowth assay, which is a well understood, conventional, and routine assay in the art and the output of measurements of the subset of the longest outgrowing neurites act as mere data gathering steps for the calculation step of averaging the lengths of the subset of the longest outgrowing neurites. Accordingly, based on analysis of the claim as a whole, claim 3 does not recite additional elements adding significantly more than the judicial exception and is thus rejected under 35 U.S.C. § 101 because the claimed invention is not directed to patent eligible subject matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 4-18, and 20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Tuttle (R. Tuttle and W.D. Matthew, Development, 1995) as evidenced by Huang (W.M. Huang, et al., Histochemistry, 1983).
Regarding claims 1, 13, and 20, Tuttle discloses an in vitro neurite outgrowth assay comprising the following steps: 1) dissecting sciatic nerve and spinal cord from an adult rat (biomaterial and nerve tissue), 2) freezing the nerve samples, 3) sectioning the nerve samples into a plurality of 10 - 20 μm cryosections (within the claimed range of about 10 μm to about 50 μm), 4) placing the cryosections of the sciatic nerve and spinal cord samples alongside with a small gap in between onto coverslips treated with poly-lysine (positively charged slides, Huang p. 275), 5) rehydrating with culture medium (thawing and washing), 6) affixing a dorsal root ganglion (DRG) explant onto the cryosection by withdrawing medium until surface tension holds the DRG into place to generate a test construct, 7) incubating the test construct at 37 °C, 8) staining the test constructs with the vital dye 5-(and-6)-carboxyfluorescein diacetate succinimidyl ester to visualize neurite outgrowths, and 9) imaging the stained test constructs by fluorescence microscopy and quantifying growth of all neurites from the DRG explant toward or along the sciatic nerve sample or the spinal cord sample using image analysis software (measuring on each slide all neurites, which inherently includes the longest outgrowing neurite from the group of neurons along the nerve tissue) (Materials and Methods p. 1302 and Fig. 7).
Regarding claims 1, 7, 13, and 20, Tuttle is silent with regard to a cryofreezing medium. However, freezing a material inherently requires heat exchange to another material with a temperature below the freezing temperature. The specification does not provide a special definition that limits the scope of cryofreezing media. Therefore, using a cryofreezing media to freeze the sample is considered inherent to the method disclosed by Tuttle.
Regarding claims 2 and 14, Tuttle discloses quantitating neurite growth growing toward or along the sciatic nerve sample or the spinal cord sample substratum using image analysis software (measuring on each slide all neurites, including the longest outgrowing neurite from the group of neurons along the nerve tissue) (Materials and Methods p. 1302 and Fig. 7).
Regarding claims 4, 12, and 15, Tuttle discloses incubating dorsal root ganglion explants as the group of neurons affixed to the section of biomaterial, which was generated from cryosections of sciatic nerve or spinal cord (nerve graft) (Materials and Methods p. 1302).
Regarding claim 5, Tuttle discloses staining the test constructs with the vital dye 5-(and-6)-carboxyfluorescein diacetate succinimidyl ester to visualize neurite outgrowths prior to imaging and quantification (determining the amount of neurite outgrowth) (Materials and Methods p. 1302).
Regarding claim 6, Tuttle discloses incubating the test constructs under 2.5% CO2 (carbon dioxide) (Materials and Methods p. 1302).
Regarding claims 8 and 17, Tuttle discloses placing the cryosections onto coverslips (slides) treated with poly-lysine, which produces a positively charged coating on the slide surface (Materials and Methods p. 1302 and Huang p. 275).
Regarding claims 9, 11, and 18, Tuttle discloses rehydrating the nerve cryosections by incubating in culture medium at 37 °C (thawing at least one section of biomaterial), pretreating the cryosections with 15 ng/mL nerve growth factor (NGF, an agent), and washing three times in culture medium (buffer solution) prior to affixing the DRG (group of neurons) (Materials and Methods p. 1302). Tuttle further discloses comparison of the amount neurite outgrowth from DRG cultured on NGF-treated nerve cryosections and non-treated nerve cryosections (determining an effect of the agent on neurite growth by comparing an amount of neurite growth in the treated first subset of sections of biomaterial to an amount of neurite growth in a second subset of untreated sections of the plurality of sections of biomaterial) (Results pp. 1303-1306 and Fig. 6-7).
Regarding claim 10, Tuttle discloses cutting a plurality of nerve cryosections and placing the cryosections on a plurality of coverslips (slides) (Materials and Methods p. 1302).
Regarding claim 16, Tuttle discloses cryosectioning the nerve tissue sections (sections of biomaterial), which involves freezing the cut sections onto slides (Materials and Methods p. 1302). Tuttle further discloses rehydrating the sections in culture medium and incubating in culture medium comprising NGF at 37 °C (thawing) (Materials and Methods p. 1302).
Claims 1-2, 5-14, and 16-18, and 20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Ferguson (T.A. Ferguson and D. Muir, Mol Cell Neurosci, 2000) as evidenced by Metwalli (E. Metwalli, et al., Colloid Interface Sci, 2006).
Regarding claims 1, 13, and 20, Ferguson discloses an in vitro neurite outgrowth assay comprising the following steps: 1) dissecting sciatic nerve from an adult rat (biomaterial and nerve tissue), 2) freezing the nerve samples on powdered dry ice (cryofreezing medium), 3) sectioning the nerve samples into a plurality of 20 μm cryosections (within the claimed range of about 10 μm to about 50 μm, 4) placing the cryosections of the sciatic nerve onto a plurality of coverslips (slides) coated with 3-aminopropyltriethoxysilane (APTS, which creates a positive surface charge, Metwalli p. 826), 5) freezing the cryosections prior to use and thawing the cryosections, 6) washing the cryosections in Hank's balanced salt solution, 7) affixing dorsal root ganglion (DRG) neurons (group of neurons) onto the cryosection to generate a test construct, 8) incubating the test construct to allow for neurite outgrowth along the nerve tissue substratum, 9) staining the test constructs with FITC to visualize neurite outgrowth by fluorescence microscopy, and 10) imaging the stained test constructs by fluorescence microscopy and quantifying growth of all neurites along the sciatic nerve sample using image analysis software (determining an amount of neurite growth from the group of neurons along the at least one section of biomaterial and measuring on each slide all neurites, which inherently includes the longest outgrowing neurite from the group of neurons along the nerve tissue) (Results p. 158 and Experimental Methods p. 164).
Regarding claims 2 and 14, Ferguson discloses measuring the length of all neurites, which inherently includes measuring the longest outgrowing neurite (Results p. 158).
Regarding claim 5, Ferguson discloses staining the test constructs with FITC to visualize neurite outgrowth by fluorescence microscopy prior to neurite outgrowth quantification (Experimental Methods p. 164).
Regarding claim 6, Ferguson is silent regarding exposure of the test construct to carbon dioxide. However, the atmosphere comprises about 0.04% carbon dioxide and Ferguson is silent with regard to purging atmosphere around the test constructs and replacing with a purified gas. Therefore, exposure of the test constructs to carbon dioxide is considered inherent to the method disclosed by Ferguson.
Regarding claim 7, Ferguson discloses freezing the sciatic nerves (biomaterial) in powdered dry ice (cryofreezing medium) (Experimental Methods p. 164).
Regarding claims 8 and 17, Ferguson discloses placing the cryosections onto coverslips (slides) treated with 3-aminopropyltriethoxysilane (APTS ), which produces a positively charged coating on the slide surface (Ferguson Experimental Methods p. 164 and Metwalli p. 826).
Regarding claim 9, Ferguson discloses freezing the sciatic nerve cryosections (plurality of sections of biomaterial) at -20 °C until use, thawing, then washing in Hank's balanced salt solution (buffer) (Experimental Methods p. 164).
Regarding claim 10, Ferguson discloses cutting a plurality of nerve cryosections and placing the cryosections on a plurality of coverslips (slides) (Experimental Methods p. 164).
Regarding claims 11 and 18, Ferguson discloses treating the nerve cryosections with matrix metalloproteinase 2, 3, or 9 (MMP-2, MMP-3, or MMP-9, respectively) comparing the effect of MMP treatment on neurite outgrowth from DRG neurons cultured on MMP-treated cryosections to growth on untreated nerve cryosections (Results pp. 158-162, Fig. 1-5, and Experimental Methods p. 164).
Regarding claim 12, Ferguson discloses sciatic nerve (nerve graft) as the biomaterial (Experimental Methods p. 164).
Regarding claim 16, Ferguson discloses freezing the cryosections prior to use and thawing the cryosections (Experimental Methods p. 164).
Claims 1-7 and 9-12, are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Bentley (C.A. Bentley and K.F. Lee, J Neurosci, 2000).
Regarding claim 1, Bentley discloses an in vitro neurite outgrowth assay comprising the following steps: 1) dissecting sciatic nerve from an adult rat (biomaterial), 2) cryosectioning the nerve samples into a plurality of 20 μm cryosections (freezing and sectioning within the claimed range of about 10 μm to about 50 μm, 3) placing the cryosections of the sciatic nerve onto a plurality of coverslips (slides), 4) affixing dorsal root ganglia (DRG, group of neurons) onto the cryosections to generate a test construct, 5) incubating the test construct to allow for neurite outgrowth along the nerve tissue substratum, and 6) quantifying neurite outgrowth (determining an amount of neurite growth from the group of neurons along the at least one section of biomaterial) (Materials and Methods p. 7707).
Regarding claims 1, and 7, Bentley is silent with regard to freezing the adult sciatic nerve in a cryofreezing medium. However, Bentley discloses adult sciatic nerve cryosections, which are generated from frozen tissue. Freezing a material inherently requires heat exchange to another material with a temperature below the freezing temperature. The specification does not provide a special definition that limits the scope of cryofreezing media. Therefore, using a cryofreezing media to freeze the sample is considered inherent to the method disclosed by Bentley.
Regarding claims 2-3, Bentley discloses measuring the neurite outgrowth from the leading edge of the DRG to the farthest neurite visualized (measuring at least one longest outgrowing neurite from the group of neurons) and taking the mean of that value from five repeated assays (measuring a subset of the longest outgrowing neurites and averaging the lengths of the subset of the longest outgrowing neurites) (Results pp. 7709-7710).
Regarding claim 4, Bentley discloses incubating dorsal root ganglion (DRG) explants as the group of neurons affixed to the section of biomaterial (Materials and Methods p. 7707).
Regarding claim 5, Bentley discloses staining the test constructs with the vital dye 5-(and-6)-carboxyfluorescein diacetate succinimidyl ester to visualize neurite outgrowths prior to imaging and quantification (determining the amount of neurite outgrowth) (Materials and Methods p. 7707).
Regarding claim 6, Bentley is silent regarding exposure of the test construct to carbon dioxide. However, the atmosphere comprises about 0.04% carbon dioxide and Ferguson is silent with regard to purging atmosphere around the test constructs and replacing with a purified gas. Therefore, exposure of the test constructs to carbon dioxide is considered inherent to the method disclosed by Bentley.
Regarding claim 9, Bentley discloses thawing the cryosections at room temperature in 35 mm Petri dishes for 1 h and washing the cryosections in Rose Park Memorial Institute (RPMI) medium (buffer) (Materials and Methods p. 7707).
Regarding claim 10, Bentley discloses cutting a plurality of nerve cryosections and placing the cryosections on a plurality of coverslips (slides) (Materials and Methods p. 7707).
Regarding claim 11, Bentley discloses comparison of the amount neurite outgrowth from DRG cultured on nerve growth factor (NGF)-treated nerve cryosections and non-treated nerve cryosections (determining an effect of the agent on neurite growth by comparing an amount of neurite growth in the treated first subset of sections of biomaterial to an amount of neurite growth in a second subset of untreated sections of the plurality of sections of biomaterial) (Materials and Methods p. 7707).
Regarding claim 12, Bentley discloses sciatic nerve as the biomaterial (Materials and Methods p. 7707).
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.
Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Bentley (C.A. Bentley and K.F. Lee, J Neurosci, 2000) in view of Tuttle (R. Tuttle and W.D. Matthew, Development, 1995) and Huang (W.M. Huang, et al., Histochemistry, 1983).
Bentley discloses a neurite outgrowth assay as discussed in the rejection of claims 1-7 and 9-12 under 35 U.S.C. § 102 above.
Regarding claims 13 and 20, Bentley teaches sciatic nerve as the biomaterial (nerve tissue), thawing the cryosections at room temperature in 35 mm Petri dishes for 1 h, washing the cryosections in Rose Park Memorial Institute (RPMI) medium, and staining the test constructs with the vital dye 5-(and-6)-carboxyfluorescein diacetate succinimidyl ester to visualize neurite outgrowths prior to imaging and quantification (Materials and Methods p. 7707).
Regarding claim 14, Bentley teaches measuring the neurite outgrowth from the leading edge of the DRG to the farthest neurite visualized (measuring at least one longest outgrowing neurite from the group of neurons) (Results pp. 7709-7710).
Regarding claim 15, Bentley teaches culturing dorsal root ganglion (DRG) explants as the group of neurons (Materials and Methods p. 7707).
Regarding claim 16, Bentley teaches cryosectioning the nerve tissue sections (sections of biomaterial), which involves freezing the cut sections onto slides (Materials and Methods p. 7707). Bentley further thawing the cryosection at room temperature (Materials and Methods p. 7707).
Regarding claim 18, Bentley teaches comparison of the amount neurite outgrowth from DRG cultured on nerve growth factor (NGF)-treated nerve cryosections and non-treated nerve cryosections (determining an effect of the agent on neurite growth by comparing an amount of neurite growth in the treated first subset of sections of biomaterial to an amount of neurite growth in a second subset of untreated sections of the plurality of sections of biomaterial) (Materials and Methods p. 7707).
Regarding claim 19, Bentley teaches incubating the test constructs at 37 °C for 72 h (three days, within the range of about 3 days to about 10 days) (Materials and Methods p. 7707 and Results p. 7708).
Bentley does not teach placing the sections of biomaterial onto positively charged slides as required by claims 8 and 13-20.
However, Tuttle teaches a neurite outgrowth assay as discussed in the rejection of claims 1-2, 4-18, and 20 under 35 U.S.C. § 102 above. Tuttle teaches adhering sciatic nerves cryosections to poly-lysine-coated coverslips (placing the sections of biomaterial onto positively charged slides).
Huang teaches that coating slides with poly-L-lysine (also referred to as poly-lysine or PLL) changes the surface charge of glass from negative to positive, which allows for strong adhesion of negatively charged entities, such as tissue sections (Introduction p. 277).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the neurite outgrowth assay taught by Bentley as a base method by applying the known technique of coating slides with poly-lysine to generate positively-charged slides as taught by Tuttle and Huang to arrive at the claimed invention. One would be motivated to make such a combination as Huang teaches that poly-lysine coating improves tissue adhesion to slides. One would have a reasonable expectation of success in making the combination as Tuttle teaches a nearly identical neurite outgrowth assay as Bentley with successful outgrowth of neurites from DRG explants.
Conclusion
No claim is allowed.
The following publication is additionally cited but was not relied upon by the examiner:
Tajdaran, K., Chan, K., Zhang, J., Gordon, T. & Borschel, G. H. Local FK506 dose-dependent study using a novel three-dimensional organotypic assay. Biotechnol Bioeng 116, 405–414 (2019)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric B Wright whose telephone number is (571) 272-2607. The examiner can normally be reached Mo - Fr, 09:00 a.m. - 05:00 p.m. Eastern. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Paras can be reached at (571) 272-4517.
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Eric B Wright, PhD
Examiner
Art Unit 1632
/Eric B Wright/Examiner, Art Unit 1632
/PETER PARAS JR/Supervisory Patent Examiner, Art Unit 1632
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