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 .
Claim Status
Claims 1, 5, 8-10, 17, 20, and 24-32 are pending. Claims 1, 5, 10, 17 are amended. Claims 2-4, 6-7, 11-16, 18-19, 21-23 are canceled. Claims 20, 24-30 are withdrawn. Claims 1, 5, 8-10, 17, and 31-32 are being examined on the merits in this office action.
Claim Rejections - Withdrawn
The rejection of claim 4 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn because the claim is canceled.
Claim Objections -New
Claim 1 is objected to because of the following informalities:
Claim 1 recite “….reconstituted when the portions contact each other”. Examiner suggests amending the claim to recite “….reconstituted when the N and C-terminal portions contact each other”. Appropriate correction is required.
Claim Rejections - 35 USC § 103 - Modified
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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, 5, 8-10, 17, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US20160208243A1 – hereinafter “Zhang”) in view of Wehr et al, (Nature Methods volume 3, pages985–993 (2006)) and Morgan et al. (Methods Enzymol. 2014; 544: 179–213).
Zhang teaches a composition comprising a Type VI CRISPR-Cas loci effector protein and one or more nucleic acid components, wherein the effector protein forms a complex with the one or more nucleic acid components and upon binding of the said complex to the locus of interest the effector protein induces the modification of the target locus of interest [0019], and that the target locus of interest comprises guide RNA (Abstract; [0009], which may be cleaved in vivo or in vitro [0023], wherein the effector protein comprises first and second effector protein [0039]. Zang teaches the addition of TEV protease and confirmation of TEV cleavage [1686, 0158] and teaches the substrate comprising caspase 7 and caspase 9 [1396, 1400, 1505].
Even though Zhang teaches the addition of TEV protease and caspase, Zhang does not explicitly teach or disclose how it is attached to the substrate.
With regards to the Tev protease, Wehr teaches protein-protein interactions using split TEV (Title, Abstract).Wehr teaches that split TEV combines the advantages of split enzyme– and reporter gene–mediated assays, and provides full flexibility with regard to the final readout (Abstract). Wehr teaches N and C terminus are fused or linked with the TEV protease and that upon interaction of the proteins (or fragments) X and Y, N-TEV and C-TEV moieties are brought to close proximity, thereby reconstituting the proteolytic activity (See Fig. 1a, also reproduced below).
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Further, Morgan teaches the use of TEV protease that further comprises procaspase (caspase 3 or 7) (Page 3, section 1.3 and Page 4, line 1-3; Fig. 8 reproduced below).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Zhang use the Type VI crispr protein fused to a TEV protease with a procaspase as taught by Wehr and Morgan since Wehr teaches that split TEV combines the advantages of split enzyme– and reporter gene–mediated assays, and provides full flexibility with regard to the final readout (Abstract) and Morgan teaches that the activation of the caspase with TEV reconstitution. One of ordinary skill in the art would be motivated and would have had a reasonable expectation of success in combining the teachings of Zhang, Wehr and Morgan to arrive to the instant invention for the control of gene expression involving sequence targeting, such as perturbation of gene transcripts or nucleic acid editing. The disclosures render obvious claim 1.
Regarding claim 5, Zhang teaches a first fragment and a second fragment, and the fragments can be of CRISPR enzyme [0210], that the chimeric CRISPR protein, comprising a first fragment from a first CRISPR orthologue and a second fragment from a second CRISPR orthologue, and the first and second CRISPR orthologues are different [0293
Regarding claims 8-10, Zhang teaches caspase 3, 7 and 9 [1396, 1400, 1505]. Further, Morgan teaches wherein the procaspase is 3, 6-8 (See Fig. 8) and teaches the proteolytic enzyme and complementary portion of the enzyme comprising procaspase (Fig. 8.3 and 8.5). It would have been obvious to combine the teachings of Zhang and Morgan and use proteolytic enzyme comprising procaspase as taught by Morgan.
Regarding claim 17, Wehr teaches that TEV protease activity can be monitored with either inactivated transcription factors (‘transcription-coupled reporters) or inactivated reporter proteins and that TEV-protease cleavage, and the transcription factor then activates a firefly luciferase (G5-Luci) or EGFP (G5-EGFP) reporter (Page 986, left col., last paragraph, line 1-3; Page 986, right col., line 1-12). It would have been obvious to modify Zhang with the teachings of Wehr and use the cleavage site on TEV to activate the substrate.
Regarding claims 31-32, Zhang teaches that the substrate further comprises suitable markers such as fluorescent proteins [0898, 0904, 0971, 1113-1116] and that a detectable marker maybe fused to the protein [0219, 0970].
Response to Arguments
Applicant's arguments filed 10/28/2025 have been fully considered but they are not persuasive.
Applicant Arguments
Applicant argues that the cites references fail to teach Type VI CRISPR protein and that the cites references target DNA and not RNA (Page 7-9).
Applicant argues that there is no motivation to combine because Cas9 is a DNA binding system while Type VI CRISPR protein targets RNA (Page 8-9).
Applicant argues that not all elements are taught, that the references do not teach two Type VI CRISPR Cas systems and teaches no reasonable expectation of success. Applicant argues that, the concept of using two separate Cas proteins to reassemble a functional proteolytic enzyme and execute targeted protein cleavage was entirely unknown in the art, that no prior art suggested that CRISPR proteins could serve as molecular scaffolds for reassembling split enzymes, nor that such an approach could achieve spatially controlled proteolysis (Page 9-10).
Examiner’s Response
The arguments presented above have been fully considered but are unpersuasive. Examiner notes that split crispr technology with two separate Cas proteins which reassemble a functional proteolytic enzyme is known in art and has been in the art for a long time. Further, Zhang teaches
Zhang teaches a composition comprising a Type VI CRISPR-Cas loci effector protein and one or more nucleic acid components, wherein the effector protein forms a complex with the one or more nucleic acid components and upon binding of the said complex to the locus of interest the effector protein induces the modification of the target locus of interest [0019], and that the target locus of interest comprises guide RNA (Abstract; [0009], which may be cleaved in vivo or in vitro [0023], wherein the effector protein comprises first and second effector protein [0039]. Zang teaches the addition of TEV protease and confirmation of TEV cleavage [1686, 0158] and teaches the substrate comprising caspase 7 and caspase 9 [1396, 1400, 1505]. Examiner notes Zhang teaches the instant invention. Examiner used the Wehr and Morgan references to teach how the TEV is attached to the substrate. Examiner notes that attaching TEV protease as recited in the instant claims is known in the art. One of ordinary skill in the art would be motivated to combine the cited references to arrive to the instant claims. Thus, Applicants assertion that the cited references cannot be combined because there is no reasonable expectation of success in unpersuasive. Examiner notes that Zhang teaches first and second system, teaches Type VI Cas system, teaches the sysyem for targeting RNA, teaches a substrate with a cleavage site and comprises TEV protease and teaches reconstitution when portions contact each other. All the elements of the instant invention are taught by Zhang. Thus, Applicants assertion that not all claim elements are taught by prior art is unpersuasive. Examiner notes obviousness does not require absolute predictability, only a reasonable expectation of success, i.e., a reasonable expectation of obtaining similar properties. See, e.g., In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). (MPEP 2144.08 (II).
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mercy H. Sabila whose telephone number is (571)272-2562. The examiner can normally be reached Monday - Friday 5:00 am - 3:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lianko G. Garyu can be reached at (571)270-7367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MERCY H SABILA/Examiner, Art Unit 1654
/LIANKO G GARYU/Supervisory Patent Examiner, Art Unit 1654