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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Oct. 31, 2025 has been entered.
Claim Status
Claims 1-3, 5, 9, and 12-20 are currently pending in this application.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-11 in the reply filed on October 12, 2023 is acknowledged. Claims 12-19 are withdrawn for being directed to non-elected subject matter. Claims 1-3, 5, 9, and 20 have been considered on the merits, and all arguments have been fully considered.
Disclosure Objections
Although the use of trademarks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The use in the specification of the terms “NEB,” “kwik stop,” “Bioline,” “QIAQUICK,” and “The Jackson Laboratory,” which are trademarks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Appropriate correction is required because the proprietary nature of trademarks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Previous Rejections
Status of the rejections:
a) The previous claim rejections under AIA Section 33(a) are maintained.
b) The previous claim rejections under 35 USC 103 are withdrawn for Bier falling within 102(b)(1)(A) in view of the 130(a) declaration submitted on Oct. 31, 2025.
Claim Interpretation
In claim 1, the term “driving” is interpreted to mean the copying and insertion of the element into a genomic site in a cell(s) of a rodent (e.g., germline cells) or of rodents of a population (e.g., a strain), and possibly continued insertion activities in the progeny of such rodents.
In claims 1-2, the term “allele” is interpreted to encompass allele loci with eliminated gene function (e.g., a complete gene deletion named after the missing gene).
35 USC § 101 – Nonstatutory Subject Matter – Human Organism
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.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-3, 5, and 9 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). The broadest reasonable interpretation of the claimed invention as a whole encompasses methods of producing a genetically modified human, which is encompassed by the term “mammal” in the claims. It would be remedial for Applicant to amend the claims to recite non-human mammal.
Response to arguments
Applicant traverses the rejection arguing the claims are merely directed to a method of producing a genetically-modified mammal. Applicant asserts that Section 33(a) does not prohibit patenting of methods of performing genetic modification of humans without providing any evidence (pg. 5).
While the plain meaning of the statute seems unclear regarding the scope of “directed to”, a simple interpretation is this encompasses methods whose performance encompasses making a modified human, a type of mammal. What is clear is from the legislative record is there was disagreement between legislators over whether the law intended to prohibit patent claims directed to methods to produce human organisms (see 78 157 CONG. REC. E1178 (daily ed. June 23, 2011) (statement of Rep. David Weldon, some continue claiming it prohibits “patent claims directed to methods to produce human organisms. . . This is simply untrue.”). As this ambiguity remains unresolved absent evidence from a legal authority to the contrary, Section 33(a) is interpreted to prohibit patent claims directed to methods encompassing producing a modified human organism, as is the instant case.
Claim Rejections - 35 USC § 112(a), Written Description
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 1-3, 5, and 9 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
When claim 1 is analyzed in light of the specification, the instant invention is directed to a method of (1) genetic engineering a first mammal to make a transgenic mammal A having genetic element A (allele-gRNA-at-TYR), (2) genetic engineering a second mammal of the same species to make a transgenic mammal B having a genetic element B-Cas9 (any location), and (3) mating the transgenic mammals A and B or their progeny together to produce a genetically modified mammal C expressing, at least during meiosis I, a split gene-drive system (A-gRNA and B-Cas9) in trans whereby genetic element A is driven to be mobilized and inserted at a TYR locus by the activity of Cas9-gRNA during meiosis I in the mammal C and/or its offspring (strain C).
M.P.E.P. §2163 states “To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116.”
In the instant case, claim 1 broadly encompasses the genus of mammal, which encompasses some 6,400 species (including humans), distributed in about 1,200 genera, 152 families and up to 46 orders (en.wikipedia.org/wiki/Mammal, last visited August 31, 2022), such as Rodentia, Chiroptera, and Eulipotyphla, as well as diverse types, such as undomesticated mammals, egg-laying mammals, marsupials and whales. Claim 1 is also broad in that the strain A mammal and strain B mammal are not necessarily the same species of mammal.
In analyzing whether the written description requirement is met for genus claims, it is first determined whether a representative number of species have been described.
In the instant case, the specification describes in detail only how to make a transgenic mammal of a single species, mouse (Example 2), which relies on crossing males expression a meiosis-specific Cre transgene. There is only prophetic language at high generality for applying the claimed method to other mammals. Thus, the written description for the genus of mammal consists merely of an invitation to figure it out based on the mouse examples made by the method described in instant Example 2.
Therefore, the instant specification purports at the earliest effective filing date it was within the scope of skills of the ordinary artisan to make multiple transgenic lines and perform controlled genetic crosses of any species of mammal with reasonable predictability to accomplish the method of claim 1. This is not the case for undomesticated mammals and/or mammals which cannot be breed in captivity or without artificial fertilization technologies, such as for many species of cetaceans, elephants, rhinoceros, squirrels, etc. Further, it is preposterous to suggest applying a method for mice to humans that requires forced matings to generate progeny have the genotype desired by those in control.
Thus, the skilled artisan cannot envision how to apply the claimed method as described in the instant application across the scope of the entire genus of mammals. Critically, the specification fails to describe enough representative species of methods and fails to provide the related guidance to adapt the representative method described to mammalian species that have never been genetically engineered before, especially if requiring multiple different strain creation (e.g., expression-limited Cre variants) and multiple genetic crosses based on controlled matings to generate the requisite heterozygotes. In conclusion, there is a lack of evidence in the instant specification as filed that the inventors were in possession of a method of making a genetically engineered split-gene drive system active in meiosis I over the entire scope of a mammal as encompassed by the instant claims requiring a “crossing” of mammalian strains.
35 USC § 112(a) – Scope of Enablement
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 1-3, 5, 9, and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification while being enabling for wherein the mammal is a mouse, rat or other laboratory raised mammal or domesticated/livestock mammal whose matings(crosses) and strains can be controlled; does not enable any person skilled in the art, to which it pertains or with which it is most nearly connected to, to perform the claimed methods on the entire genus of mammals as encompassed by the claims.
Enablement is considered in view of the Wands factors (MPEP 2164.01 (a)). The court in Wands states that "Enablement is not precluded by the necessity for some experimentation such as routine screening. However, experimentation needed to practice the invention must not be undue experimentation. The key word is 'undue.' Not 'experimentation;" (Wands, 8 USPQ2d 104). Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. "Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighting many factual considerations." (Wands, 8 USPQ2d 1404).
The factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation required is “undue” include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Furthermore, the USPTO does not have laboratory facilities to test if an invention will function as claimed when working examples are not disclosed in the specification. Therefore, enablement issues are raised and discussed based on the state of knowledge pertinent to an art at the time of the invention. And thus, skepticism raised in the enablement rejections are those raised in the art by artisans of expertise.
All of the Wands factors have been considered with regard to the instant claims, with the most relevant factors discussed below.
Nature of the invention:
The claims are directed to methods of creating (a) genetically modified mammals having an exogenous genetic construct (element A) inserted at the TYR gene and comprising a recombinant allele and gRNA; (b) genetically modified mammals having an exogenous genetic construct (element B) encoding a Cas9 endonuclease; and (c) a genetically modified mammal progeny of the aforementioned comprising both a stable insertion of element A and genetic element B such that both the gRNA and Cas9 are expressed during at least meiosis I.
Breadth of the claims
The claims are broadly directed to wherein the genetically modified mammals (a-c) are any species of mammal. The claims are also broadly directed to crossing to transgenic mammals (a and b) to obtain the genetically modified mammal (c).
The level of one of ordinary skill in the art:
The level of skill required to practice all aspects of the invention to its full scope, especially to create multiple genetically modified mammals of the same species and crossing them together, is high, potentially requiring a PhD in a biological/biomedical science. The level of skill required to practice all aspects of the invention to its full scope, especially to create genetically modified humans and direct their crossing to make genetically modified progeny, is high, potentially requiring a medical degree or PhD in a biological/biomedical science.
The state of the art:
The prior art teaches a method of generating genetically modified rodents and non-rodent mammals (rabbits) comprising a desired allele inserted into the TYR gene by editing the TYR gene in rabbits using CRISPR/Cas9 and a sgRNA expressed from an injected plasmid (Honda et al., Exp Anim 64: 31-7 (2014) at Abstract; Fig. 1-3). However this method does not comprise any of a gene drive, a split Cas9 system, inserting at the TYR locus a genetic construct (element A) comprising a gRNA; or the crossing of any strains, i.e., comprising an element A or element B as recited in claim 1.
The prior art also teaches methods of producing genetically modified mammals, the method comprising using a split Cas9-mediated gene-drive system to specifically insert into a target genome sequence a desired allele due to the gRNA(s) and Cas9 sources (e.g., transgenic elements) being located on different chromosomes and when combined by mating strains leads to autocatalytic copying of a first transgenic element (element A) to a sister chromosome (Bier (WO 2017049266 A2) at [00280], [00392], ([00341], [00349], [00413], [0013], [0015], [00339]-[00340], [00415]; Examples 3-4 and 10; FIG. 4-6, 19-21, 31-32). However these methods do not specify how to ensure the Cas9-mediated split gene-drive system is present during meiosis I.
As the prior art does not disclose any methods of using a Cas9-mediated split gene-drive system actively occurring in meiosis I in any mammal, these aspects must be shown to a reasonable extent over the scope of any mammal so that one of the ordinary skills in the art would be able to practice the invention without any undue or unreasonable burden being on such an Artisan.
The amount of direction and guidance and working examples provided by Applicant:
The instant application provides working examples only in a laboratory mouse strain (C57BL/6J) using either Vasa-Cre or Stra8-Cre mouse strains whereby conditional Cas9 expression is driven in germ cells Example 2, FIG. 1-6) (id.). In these working example, males carrying a genetic element A (heterozygous for TyrCopyCat and U6-Tyr4a gRNA) and the Cre transgene were crossed to females carrying a genetic element B (homozygous H11:LSL-Cas9) and then crossed to TyrCh homozygotes resulting in up to 78.6% gene drive of the TyrCopyCat of element A in the F4 generation as determined by conversion of the TyrCh chinchilla phenotype to Tyr null, which is predicted to occur naturally at a lower frequency of 4.7×10−5 (Example 2; FIG. 8; Table 7). The instant specification notes that Tyr locus mosaicism observed in progeny when males carrying genetic element B were crossed to females carrying element A indicates Cas-9 mediated split gene drive activity outside of meiosis, perhaps due to promoter leakiness ([0081]; Table 6). Regarding claims 3 and 5, the instant specification lacks a working example of any method comprising multiple gRNAs.
The instant specification provides guidance in detail only how to make a transgenic mammal of a single species, mouse (Example 2). In the working examples, the method relies on a human U6 snRNA promoter to drive expression of the gRNA and a germline-specific promoter system to drive expression of Cas9 during meiosis. However no ready-made germline promoter mouse line was available, so first another transgenic mouse line was constructed comprising a floxed mutant Cas9 transgene at Rosa26/LSL2 and crossed with an already available Vasa-Cre or Stra8-Cre mouse line to obtain transgenic mammal B before moving on to perform the method recited in claim 1.
Of the over 6,000 species of mammals, most lack any genetically engineered strains or technologies, such as for expressing Cre, as well as no operational knowledge of reliable germline promoter technologies. Thus, the instant method requires for each application to a new mammalian species the identification of a meiosis-specific promoter or even a germline-permissive constitutive promoter to either drive Cas9 directly or, as per the working examples, to be engineered via an additional cross after setting up de novo a loxP Cre system in each new mammalian species. Even in view of the human snRNA and mouse Vasa/Stra8 expression constructs in the working examples, extensive experimentation would be required to find and validate homologs of these in each mammalian species or to determine an acceptable alternative to the human snRNA promoter.
If this was to be applied, e.g., to a squirrel, then reliable transgene promoters need to be identified both for the gRNA and the Cas9 constructs in that mammalian species. But it is not clear from the guidance in the application if first a floxed Cas9 transgenic squirrel strain needs to be generated and then a germline-specific Cre recombinase squirrel strain needs to be generated, e.g., using mouse or squirrel Vasa/Stra8 promoter. This requires experimentation for any mammalian species that lacks any transgenic protocol or already established Cre-lox system.
Furthermore, the gRNA of element A must be driven by a first promoter and the Cas9 of element B must be driven by a second promoter such that both are expressed during at least meiosis I. Due to the generality of the claims, this leaves various options for these two promoters in each mammalian species, e.g., (1) both meiosis-limited, (2) one constitutive and the other meiosis limited, respectively for the Cas9 or gRNA or vice versa, or (3) one constitutive and the other meiosis limited by Cre-based activation only in meiotic cells as in the mouse working examples.
There is only prophetic language at high generality for applying the claimed method to other mammals, which is not predictable to work for all mammalian species. There is no specific guidance how to adapt this single mouse example and apply it to a mammal other than mouse, such as any rodent, e.g., a capybara. While Cas9-gRNA editing likely works in all mammals and all mammals probably have a Tyr locus and a U6 promoter, it is not predictable from the prior art how to breed all mammals in captivity to obtain the progeny of the cross of strain A and strain B, as required in claim 1. Further, the creation of strain B for some mammalian species may require the creation of two additional strains, (1) a floxed inactivated Cas9 and (2) germline promoter Cre strain, but this is not recited in any of the claims.
The quantity of experimentation needed to make and/or use the invention:
Extensive experimentation would be required to determine how to create transgenic mammals of each species comprising genetic element A or element B and breed them into a single mammal, across the breadth of any mammal. The field of genetic engineering has not evolved such that, without guidance or working examples in the specification, the artisan could predictably perform the method of claim 1 using each mammalian species without undue and/or unreasonable experimentation.
Critically, the ability to intentionally cross strains of certain extant mammalian species is notoriously difficult (e.g., pangolin, giant panda, Sumatran rhino, platypus) or has never been accomplished for some species. Some mammalian species have narrow breeding windows, long sexual maturity time-lines and gestation times (e.g., whales). Some mammalian species cannot be breed in captivity (e.g., narwhals) at least at the earliest effective filing date. For some mammalian species in captivity, the mothers fail to eat, fail to care for or even kill all their offspring.
Although the Cre/loxP system has been developed in a handful of mammalian species beyond mice, such as in pigs and rats (see e.g., Song et al., Open Bio 6: 50-5 (2016)), it would take undue and unreasonable experimentation to setup such systems in each mammalian species without undue experimentation. Extensive experimentation is required at the earliest effective filing date to find and use a germline-specific promoter driving genetic element for each mammalian species or to make/use a loxP-cre system based on mouse in any mammalian species, such as a platypus or naked mole-rat. It was unpredictable if all mammalian species can be made to have a germline-specific promoter driving genetic element B or be made to have a loxP-cre system, e.g., for use in correcting a mutated Cas9 transgene in promoter conditional manner as in the guidance.
While various mammalian promoters of one species will often drive expression in other species, this has limits. Thus experimentation is required for many species to test/find reliable promoter sequences to use in the transgenic element B and/or Cre strain if needed to ensure expression/activity during meiosis.
Thus, there is no evidence provided in the application that transgenic mammals carrying an element A and others of the same species carrying an element B can be made and crossed with each other to produce a split gene-drive system with gRNA-guided Cas9 activity during meiosis I wherein the mammal encompasses any type of mammal. While there is enough evidence to enable similar methods in other laboratory mammals, the scope of the mammal genus is overly broad in encompassing, e.g., blue whales, platypus, and humans.
Following the working example provided by Applicant, the skilled artisan would need to have the genomic sequence of the Tyr locus and a safe position to insert the genetic element B (and possible Cre transgene), and be able to cross different engineered strains together, which would be challenging or impossible in the case of many mammals, such as humans or blue whales.
In summary, claims 1-3, 5, and 9 are rejected under 35 U.S.C. 112(a) because the specification does not reasonably provide enablement to a person skilled in the art to which it pertains, or with which it is most nearly connected to, to perform the claimed invention to create genetically modified mammals of any species. Given the lack of working examples, the limited guidance provided in the specification, the lack of guidance in the prior art, and the broad scope of the claims with regard to any mammal and requiring at least one controlled “crossing” or mating step, undue and unreasonable experimentation would have been required for one skilled in the art to use the claimed methods to produce the recited result across the breadth of the claims.
Mouse
Regarding claim 20, the mouse working examples (Example 2, FIG. 1-6) use either Vasa-Cre or Stra8-Cre mouse strains whereby conditional Cas9 expression is driven in germ cells specifically of males to avoid a maternal genetic effect phenotype of premature Cas9 activity or other unwanted promoter leakiness outside of meiosis ([0081]). While the implications of Cas9-drive gene-drive outside of meiosis are not expressly described, the applicant clearly endeavored to minimize this and avoid using ubiquitously expressed Cas9 activity. Therefore, while it may be trivial to obtain element A and element B expression occurring during meiosis using various constitutive promoters of mice, applicant’s own application indicate enabling the invention requires that element B does not drive expression of Cas9 outside of meiosis. It would be remedial for Applicant to amend the claims to recite the “Cas9-mediated split gene-drive system is restricted to occur during meiosis and occurs during meiosis I.”
It is noted that while a ubiquitously active Cas9-mediated split gene-drive system is enabled in mice, widespread Cas9 activity in somatic cells in the genetically modified mammal of the invention would result in undesirable fitness consequences, deleterious genetic changes, and toxicities over time that may defeat the overarching purpose of the claimed invention as described by the instant specification, e.g., use as a research model ([0005]) and as described at original claim 10.
Response to Arguments
Applicant's arguments filed 10/31/25 regarding the previous 112(a) enablement rejections (pg. 5-6) have been fully considered but not found persuasive regarding enablement.
As set forth above, the instant application as originally filed does not provide evidence to the skilled artisan that the inventors were in possession of a Cas9-mediated gene drive system technology that can be applied to any mammal and does not provide enough guidance to the skilled artisan to accomplish the claimed method over the scope of any mammal without undue experimentation.
Applicant argues that if germ cell development is similar across all, then a method enabled in the mouse germline is also enabled across any mammalian species mammals (as in the 132 Declaration of Bier 10/31/25, at ¶5-6). This is irrelevant to the new rejection set forth above. The lack of enablement is due to the lack of guidance and unpredictability about how to accomplish the required genetic crossings across the scope of mammalian species.
Additionally, the instant application notes at [0084] that Cas9 activity may have been “fortuitously” delayed to fall within an optimal window during female meiosis when using Vasa-Cre, which highlights the unpredictability around the timing of split gene-drive system activity in male meiosis even in the working examples.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC J ROGERS whose telephone number is (571)272-8338. The examiner can normally be reached Monday - Friday 9:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tracy Vivlemore, can be reached on 571-272-2914. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC J ROGERS/Examiner, Art Unit 1638
/KEVIN K HILL/Primary Examiner, Art Unit 1638