(X / ,2
`IN THE UNITEL2 STATES PATENT AND TRADEMARK OFFICE
`
`App1icant(s): Jannis G. Stavrianopoulos, et al.
`: 07/607,347
`October 30, 1990
`
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`September 27,
`New York. New York “‘
`
`A
`
`RE§PoN§E g1Nu§R 37 QER §1,11§
`
`Dear Sirs:
`
`Please enter this response to the Office Action of March 28,
`
`1991. This response is being timely filed with a Request for a
`
`Three—Month Extension of Time and the fee therefor. Accordingly,
`
`this response is being timely filed.
`
`APP
`
`I
`
`A
`
`In the fipggifigfiign:
`
`Page 1 of the specification, line 1, as amended by preliminary
`amendment of Oetobe
`0 1990, line 2, after "1989," delete "is"
`
`-which issued as U.S. Pat. No. 4,994,373 on February
`and insert
`19, 1991, which was filed as --
`
`Page 1 of the specification, line 1, delete "This is a continuation-in-
`part of applicants‘ pending United States patyat application, serial
`number 461,469, filed January 21, 1983.“
`
`Please amend the claims as follows:
`
`Claim 28, Line 1, after "Claim", delete "40" and insert --27--.
`Claim 30, line 1, after "Claim", delete "42" and insert ——29—-. /
`
`E“z'7(°113l¢3 1
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`.,Page1ofa’I’21
`Page 1 of 12
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`I
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`'9
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`BD EXH|B|T1026
`BD EXHIBIT 1026
`
`

`
`Jannis G. Stavria... ipoulos et al.
`Serial No.: 07/607,347
`Filed: October 30, 1990
`Page'2 (Amendment Under 37 C.F.R. §1.115 - September 27, 1991)
`
`: C
`
`laim 33. A composition of matter which comprises a transparent
`
`w 1 i
`
`’ or translucent non—porous system further comprising a double-
`
`stranded polynucleotide which is immobilized on a solid support
`
`wherein one of the strands is chemically labelled and capable of
`
`generating a soluble signal.
`
`Claim 34. The composition of claim 33 wherein the solid support
`is contained within the transparent or translucent non~porous
`system.
`
`Claim 35. A method for detecting a polynucleotide sequence which
`comprises:
`
`hybridizing a polynucleotide or oligonucleotide probe,
`
`which is in sing1e—stranded form and has attached
`
`thereto a chemical label comprising a signalling moiety
`capable of generating a signal, to said polynucleotide
`sequence;
`
`fixing said hybridized polynucleotide to a solid support
`
`which comprises or is contained within a transparent
`
`or translucent system: and
`
`generating and detecting a signal characterized in that
`
`the transparent or translucent system is non—porous
`
`and the generated signal is a soluble signal.
`
`Enz-7(CIP)C2
`
`Page 2 of 12
`Page 2 of 12
`
`

`
`Jannis G. Stavriaiiapoulos et al.
`Serial No.: 07/607,347
`Filed: October 30, 1990
`Page‘3. (Amendment Under 37 C.F.R. §1.1 15 - September 27, 1991)
`
` §
`
`Reconsideration of the above—identified application is
`respectfully requested. The status of the claims is as follows:
`
`In addition,
`Claims 27-32 are pending in this application.
`Applicants have added new claims 33-35 based on the case as filed.
`
`Accordingly, claims 27-35 are presently under examination in this
`application.
`
`Applicants would like to acknowledge that the original
`numbering of the instant claims was not in accordance with 37 CFR
`
`§1.l26. Applicants appreciate that the Examiner has undertaken
`
`to renumber claims 40-45 as 27-32, respectively. All of the instant
`
`claims, including the dependencies of claims 28 and 30, conform
`
`to the renumbered format. Any inconvenience caused by this
`original oversight is sincerely regretted.
`
`Applicants have updated the present status of the parent
`application, Serial No. 07/385,986 which issued as U.S. Patent No.
`
`4,994,373 on February 19, 1991, by including the present status of
`the case in the instant specification. Further, Applicants have
`deleted the previous first line in the specification after the title
`which contained the reference to Serial Number 461,469, to avoid
`
`duplication with the amended language in the Preliminary
`Amendment and to accurately set forth the current status of the
`
`parent application which issued after the instant application was
`filed on October 30, 1990. Finally, Applicants appreciate the
`
`courtesy extended by the Examiner in presenting the explanation
`of the two digit prefix whichindicates the series of a particular
`application in the PTO numbering system for pending applications.
`Applicants will endeavor to use the prefix reference in the future to
`
`more accurately specify the application in question in Pro
`correspondence.
`
`Enz-7(CIP)C2
`
`Page 3 of 12
`Page 3 of 12
`
`

`
`Jarmis G. Stavrla....;poulos et al.
`Serial No.: 07/607,347
`Filed: October 30, 1990
`Page’4 (Amendment Under 37 C.F.R. §1.1 15 - September 27, 1991)
`
`It is submitted that all of the foregoing amendments
`
`comprise subject matter which Applicants are duly entitled to
`
`claim. No new matter has been entered thereby.
`
`Applicants have added new claims 33 and 34 to further
`
`define an embodiment of the invention which is a composition
`
`comprising a transparent or translucent system in which a
`
`polynucleotide is fixed to a solid support in double—stranded form,
`
`and in which one of the strands of the polynucleotide is chemically
`
`labelled and capable of generating a soluble signal. The transparent
`
`or translucent system either comprises or contains the solid
`
`support. New claims 33 and 34 are based upon the specification at
`
`page 10, lines 10-12, lines 17-25, and page 14, lines 26-36.
`
`Applicants thus submit that no new matter is presented hereby.
`
`Applicants have added new claim 35 to further define the
`
`various embodiments of the invention for fixing the nucleic acid to
`
`the solid support, i.e., in single-stranded or double—stranded form.
`In accordance with claim 35, the invention is directed toward the
`
`detection of a polynucleotide sequence by a method in which a
`
`probe. which is chemically labelled, is hybridized to a
`
`polynucleotide sequence, and the hybridized polynucleotide is fixed
`
`to a solid support, thereby resulting in the generation of an easily
`
`detected and measurable soluble signal comprising or contained
`
`within a transparent or translucent non—porous system. Support for
`
`newly added claim 35 is set forth on page 10, lines 6-9 and page
`
`10. lines 17-25 of the instant specification. Thus, no new matter is
`presented hereby.
`M
`
`The above claims have been added to further define the
`invention. Applicants submit that these claims are fully supported
`by the instant disclosure. Furthermore, no new matter has been
`
`introduced by any of the foregoing claims, which comprise subject
`
`matter to which Applicants are duly entitled.
`
`Enz-7(CIP)C2
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`Page 4 of 12
`Page 4 of 12
`
`

`
`-.poulos et al.
`Jannis G. Stavria.
`Serial No.: 07/607,347
`Filed: October 30, 1990
`Page‘5 (Amendment Under 37 C.F.R. §1.115 - September 27, 1991)
`
` .m.Z(h1
`
`The Examiner has rejected claims 27-31 under 35 U.S.C.
`§lO2(b) as being anticipated by Langer et. al.
`In the Office Action
`(pages 3-4), the Examiner stated:
`
`"Langer et. al. discloses a biotin labeled polynucleotide
`probe composition in the abstract. The capability of
`this chemically labeled probe to produce a soluble
`signal is via the binding of avidin coupled -with an
`indicator enzyme as disclosed on page 6633, first
`column, lines 11-14. The apparatus of instant claim 31
`is inherent in the hybridization assay methodology
`disclosed by Langer et al. The hybridization on non-
`porous
`solid supports,
`that are transparent or
`translucent. of instant claims 29-30 is disclosed by the
`in-situ hybridization method discussed by Langer et. al.
`on page 6637, second column, lines 1-8. A transparent
`non-porous solid support is embodied by glass slides
`etc. onto which chromosomes are fixed for in-situ
`hybridization assay.
`
`Applicants respectfully request reconsideration of this
`rejection based on the following grounds.
`
`The instant invention relates to a composition which
`comprises a doub1e—stranded polynucleotide which is immobilized,
`in which one of the strands comprises a chemical label which is
`capable of generating a soluble signal comprising or contained
`within a transparent or translucent non-porous system. The instant
`invention is a departure from the prior art. According to the
`invention, a detectable soluble signal is generated using any one of a
`number of signal generating systems in any number of different
`formats. The soluble signal may be detected using a variety of
`techniques. According to the invention, chemically labelled .
`polynucleotides or oligonucleotides are employed to detect analytes
`using a soluble signal.
`
`Enz-7(CIP)C2
`
`Page 5 of 12
`Page 5 of 12
`
`

`
`Jannis G. Stavria..Jpoulos et al.
`Serial No.2 07/607,347
`Filed: October 30, 1990
`Page 6 (Amendment Under 37 C.F.R. §1.l 15 - September 27, 1991)
`
`Langer et. al. discloses a process for enzymatically
`incorporating a label into nucleic acid probes. Langer relates to the
`development of a system of detection based upon two methods with
`labelled probes, i.e., dot or blot, which results in a signal which is a
`precipitate. and in situ hybridization, which results in a signal
`which is localized or a precipitate. Lines 12-14 of Langer, in the
`abstract, specifically state that biotin-labeled polynucleotides,
`which are described, can be selectively immunoprecipitated in the
`presence of antibiotin antibody and Staphylococcus aureus protein
`A. The reference also discloses various characteristics of the
`labelled nucleic acids in which the labels were incorporated
`enzymatically.
`
`In order to sustain a rejection for anticipation, a cited
`reference must disclose all of the material elements of a claimed
`invention. For the invention at hand, it is submitted that the
`
`fail to disclose at least two material elements of the instantly
`claimed invention. First, Langer et. al. does not disclose or suggest,
`in any manner, the capability of generating a soluble signal in his
`detection methods. By way of contrast, Applicants specifically
`teach the generation of a soluble signal as set forth in claims 27-30,
`and delineated in apparatus claim 31, wherein the soluble signal is
`generated by means of a signalling moiety. Secondly, unlike the
`instant invention, there is no mention or suggestion in the
`reference of the generation, via a signalling moiety, of a non-
`localized signal as set forth in the instant specification and claims.
`In fact, Langer et. al. teaches away from the instant case, since the
`signal disclosed in this reference is required to be a localized signal
`or a precipitate. Thus, quite clearly, Langer is limited to the
`generation of an insoluble or localized signal.
`
`By way of explanation, the reference states that biotin-labeled
`polymers, as disclosed therein, can be used in conjunction with
`appropriate immunofluorescent, immunohistochemical, or affinity
`
`Enz-7(CIP]C2
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`4....-I.
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`Page 6 of 12
`;..t.,_,,,.i
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`

`
`Jannis G. Stavriai apoulos et al.
`Serial No.2 O7/607,347
`Filed: October 30, 1990
`Page 7 (Amendment Under 37 C.F.R. §1.l 15 — September 27, 1991)
`
`reagents for detecting or localizing specific sequences in
`
`chromosomes, cells, tissue sections and blots [emphasis added].
`Further, Langer et. al. states at column 6637, lines 1-5 that,
`
`"Our studies have led to the development of a
`rapid method of gene mapping by in situ
`hybridization that uses rabbit antibiotin antibody
`and fluorescein—labeled goat anti-rabbit
`IgG to
`identify me loci of hybridized Bio—DNA probes .
`.
`.
`" [emphasis added].
`
`Quite clearly. Langer's in-situ hybridization method as set
`
`forth on page 6637 hereinabove, while it is performed on non-
`porous solid supports that are transparent or translucent, has to be
`
`limited to the generation of a localized signal.
`states on page 6633, lines 14-17 that.
`
`In fact, Langer et. al.
`
`"The specificity and tenacity of the biotin—avidin
`complex has been exploited to develop methods
`for the visual
`localization of specific proteins,
`lipids
`and carbohydrates
`on
`or within
`cells." [emphasis added].
`
`By way of contrast, Applicants‘ signal is not localized, nor is it
`a precipitate, but it is required to be detected in a liquid media.
`
`The signal as taught by Langer is required to be a precipitate, or
`
`localized within the confinement of a cellular or chromosomal
`structure, which is completely different from Applicants‘ invention.
`In view of Langer's clear failure to disclose the two aforementioned
`
`material elements of Applicants’ invention, it is submitted that
`
`Langer et. al. cannot reasonably be held to anticipate the instant
`invention.
`
`Finally, Applicants submit that even if Langer et. al. were to be
`
`combined with other prior art references, it would not have
`rendered the instant invention obvious at the time it was made.
`
`Enz-7(CIP)C2
`
`Page 7 of 12
`’ Page 7 of 12
`
`

`
`Jannis G. Stavrianopoulos et al.
`Serial No.: 07/607,347
`Filed: October 30, 1990
`Page 8 (Amendment Under 37 C.F.R §1.1l5 - September 27, 1991)
`
`In light of the remarks presented above, Applicants
`respectfully request reconsideration and withdrawal of the
`anticipation rejection of claims 27-31 based upon Langer et. al.
`
` mm
`
`The Examiner has rejected claim 32 under 35 U.S.C. §102[e)
`as being anticipated by Ranki et. al.
`In the Office Action (page 4),
`the Examiner stated:
`
`"Ranki et. al. reads on the instant claim in that a
`sandwich hybridization assay kit is disclosed where the
`probe has a biotin chemical label. A biotin labelled
`probe is disclosed in column 3, lines 18-22. A soluble
`signal can be generated via biotin."
`
`This ground of rejection is respectfully traversed.
`
`As set forth below, it is submitted that Ranki et. al. neither
`discloses or suggests the instant invention, as specifically claimed
`in claim 32. According to this claim, a sandwich hybridization assay
`kit is disclosed in which a polynucleotide or oligonucleotide
`sequence is detected via a probe which has a chemical label
`comprising a signalling moiety capable of generating a soluble
`signal, and a particular sequence in sing1e—stranded form, is
`indirectly bound to a solid support by sandwich hybridization, and
`capable of hybridizing to theprobe. Support for the instant claim is
`presented in the specification at page 10, lines 12-17.
`
`The instant invention clearly is a departure from the prior
`art. According to the invention, a soluble signal is generated using
`any one of a number of signal generating systems in any number of
`different formats, an example of which is set forth in instant claim
`32. The soluble signal which is generated is detected by various
`techniques, including spectrophotometric techniques.
`
`Enz—7(CIP)C2
`
`Page 8 of 12
`‘ Page 8 of 12
`
`

`
`Jannis G. Stavriailapoulos et al.
`Serial No.: 07/607,347
`Filed: October 30, 1990
`Page 9 (Amendment Under 37 C.F.R. §1.115 - September 27, 1991)
`
`Ranki et. al., by way of contrast, discloses a kit and a method
`
`for the detection of nucleic acids using a Qngstep sandwich
`hybridization technique [emphasis added]. This technique
`
`requires the simultaneous addition of two purified nucleic acid
`
`reagents for each target to be identified [emphasis added]. The
`
`reagents are two distinct sing1e—stranded nucleic acid fragments
`
`isolated from the genome of the microbe to be identified, which
`
`fragments have no extensive sequence homology in common. One
`of the nucleic acid fragments is affixed onto a solid carrier. Suitable
`solid carriers, in accordance with Ranki, are nitrocellulose sheets
`
`or conventional modified paper, such as nitrobenzoyloxymethyl
`paper. The only limitation on the solid carrier is that it must be
`
`capable of affixing nucleic acids in sing1e—stranded form such that
`the single—stranded nucleic acids are available to hybridize with
`complementary nucleic acids and that the carrier must be easily
`removed from the hybridization mixture [emphasis added]. The
`other fragment, also in single-stranded form is labelled with
`radioisotopes, such as 1251 and 32P, fluorochromes, chromogens
`and enzymes. After the sample nucleic acids to be identified are
`
`rendered single-stranded, they are contacted with single-stranded
`nucleic acid reagents. All the filters, which are porous, non-
`
`transparent, non-translucent matrices, in the reagent combination,
`can be added to the sample simultaneously, along with the labelled
`nucleic acid reagents [emphasis added]. Ranki specifically
`describes the attachment of-the DNA to the filters, i.e., solid
`
`carriers, in column 5, lines 46-68, and column 6, lines 1-2.
`
`According to Ranki, annealing of complementary base pairs results
`
`in the formation of double—stranded hybrids, i.e., nucleic acid
`
`sample/ labelled reagent and nucleic acid sample/reagent affixed to
`the solid carrier, which in Ranki's disclosure are filters. After this
`
`hybridization step has taken place, the solid carriers are removed
`and their labelling on the washed carriers is measured.
`
`Enz-7(CIP)C2
`
`Page 9 of 12
`‘ Page 9 of 12
`
`

`
`Jannis G. Stavrianopoulos et al.
`Serial No.: O7/6074347
`Filed: October 30, 1990
`Page 10 (Amendment Under 37 C.F.R. §1.1l5 - September 27, 1991)
`
`In order to sustain a rejection for anticipation, a reference
`cited must disclose all the material elements of a claimed
`invention.
`It is submitted that for the instant invention, the
`anticipation rejection should be withdrawn because Ranki et. al.
`fails to disclose at least two material elements of the claimed
`invention. The first element not disclosed by Ranki et. al. is the
`generation of a soluble signal within his detection system.
`Secondly, unlike the instant case. there is no teaching in Ranki of
`the use of a solid support to which nucleic acid sequences are fixed
`for the generation of a signal within the hybridization vessel which
`is transparent or translucent.
`In fact, Ranki et. al. specifically
`teaches away from the instant invention in his requirement that the
`solid carrier, which is comprised of filters, be removed from the
`hybridization mixture prior to measuring the signal.
`
`For the following reasons, it is submitted that Ranki et. a1.
`does not anticipate the instant invention. Unlike the instant
`invention, Ranki does not mention or even suggest the possibility
`of generating a soluble signal.
`In fact, a soluble signal could not be
`generated using Ranki's method. A liquid media generating signal
`cannot be contained within a porous matrix (filter). Clearly, Ranki's
`requirement, as set forth in column 7, lines 27-29, for the removal
`of the solid carrier from the hybridization vessel, is in direct
`contrast to the instant invention in which the solid carrier is an
`integral component of the non-porous transparent or translucent
`system which serves as the hybridization vessel in which the
`soluble signal is generated. By way of contrast, there is no
`suggestion or teaching in the reference of the generation of a signal
`in solution as taught by Applicants. Clearly, Applicants‘ signal must
`be read in solution, while Ranki‘s signal is read after the solid
`carrier is removed.
`
`Finally, Applicants submit that even if Ranki et. al. were to be
`combined with other prior art references, it would not have
`rendered the instant invention obvious at the time it was made.
`
`Enz-7(CIP)C2
`
`Page 10 of 12
`Page 10 of 12
`
`

`
`poulos et a1.
`Jannis G. Stavria
`Serial No.2 O7/607,347
`Filed: October 30, 1990
`Page 1 1
`(Amendment Under 37 C.F.R. §1.115 - September 27. 1991]
`
`Finally, Applicants submit that even if Ranki et. al. were to be
`
`combined with other prior art references, it would not have
`rendered the instant invention obvious at the time it was made.
`
`In light of the remarks presented above, Applicants
`respectfully request reconsideration and withdrawal of the
`anticipation rejection of claim 32 based on Ranki et. al.
`
`Enz-7(CIP)C2
`
`Page 11 of 12
`' Page 11 of 12
`
`

`
`Jannis G. Stavrianopoulos et al.
`Serial No.2 O7/607,347
`Filed: October 30, 1990
`Page 12 (Amendment Under 37 C.F.R. §1.115 - September 27, 1991)
`
`SUMMARY AND CONCLUSIONS
`
`Claims 27-32 are presented for further examination. Claims
`33-35 have been added by this Amendment. No new matter has
`been added by any of the new claims, amendments to the claims, or
`
`to the specification.
`
`This Amendment is accompanied by a request for a Three-
`Month Extension of Time. The Patent and Trademark Office is
`
`hereby authorized to charge Deposit Account No. 05-1135 for the
`requisite fee of $730.00. as set forth in 37 C.F.R. §1.17[c). The
`Patent and Trademark Office is further authorized hereby to charge
`
`Deposit Account O5-1135 for any other fees required in connection
`with this Amendment and to credit any overpayment thereto.
`
`In view of the above amendments and discussion of the
`
`issues, Applicants respectfully submit that each of claims 27-35 are
`in condition for allowance. A favorable and speedy reconsideration
`
`If any of these claims are found not
`of their rejection is requested.
`to be in condition for allowance for any reason, the Examiner is
`
`respectfully requested to telephone the undersigned at (212) 924-
`5409 to discuss the subject application.
`
`Respectfully submitted
`
`Elaine P. Brenner
`
`Registration No.: 29,517
`Attorney for Applicants
`
`ENZO DIAGNOSTICS, INC.
`c/o Enzo Biochern, Inc.
`60 Executive Boulevard
`Farmingdale, NY 11735
`(212) 924-5409 or (212) 924-9578
`
`Enz-7(CIP)C2
`
`Page 12 of 12
`’ Page 12 of 12