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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/12/2025 has been entered.
Claims status
Claims 1-12, 15-21 is/are currently pending with claims 18-21 is/are withdrawn. Claims 1-12, 15-17 is/are under examination.
Priority - Reiterated from previous actions
Applicant’s claim for the benefit of a prior-filed application No. PCT/US2019/24686 is acknowledged. Claims 1-12, 15-17 are entitled to the benefit of the prior-filed application No. PCT/US2019/24686, filed 03/28/2019.
Applicant’s also claim benefit of a prior-filed applications No. 62/649, 781, 62/774,052 and PCT/US2018/067289. However, the disclosure of these prior-filed applications fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The instant application is related as a Continuation-in-part to applications No. 62/649, 781, 62/774,052 and PCT/US2018/067289, and adds the disclosure of a left and a right homology arm targeting a CD38 locus as recited in independent claim 1 in Example 6 which was not present in previous applications. Furthermore, none of the listed prior-filed applications disclose a construct comprising a left and a right homology arm targeting a CD38 locus. None of the listed prior-filed applications disclose a construct comprising a left and a right homology arm targeting a CD38 locus, operatively linked to one or more nucleic acids encoding exogenous protein(s).
MPEP 2163 (I) guides that “35 U.S.C. 112(a) and the first paragraph of pre-AIA 35 U.S.C. 112 require that the "specification shall contain a written description of the invention ...." This requirement is separate and distinct from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010) (en banc); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991); see also Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir. 2004) (discussing the history and purpose of the written description requirement); In re Curtis, 354 F.3d 1347, 1357, 69 USPQ2d 1274, 1282 (Fed. Cir. 2004) ("conclusive evidence of a claim’s enablement is not equally conclusive of that claim’s satisfactory written description").”
As a first essential step in the method to determine adequacy of written description, MPEP 2163 (II) guides that “To make a prima facie case, it is necessary to identify the claim limitations that are not adequately supported, and explain why the claim is not fully supported by the disclosure. For example, in Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007), the examiner made a prima facie case by clearly and specifically explaining why applicant’s specification did not support the particular claimed combination of elements, even though applicant’s specification listed each and every element in the claimed combination. The court found the "examiner was explicit that while each element may be individually described in the specification, the deficiency was lack of adequate description of their combination" and, thus, "[t]he burden was then properly shifted to [inventor] to cite to the examiner where adequate written description could be found or to make an amendment to address the deficiency." Id.; see also Stored Value Solutions, Inc. v. Card Activation Techs., 499 Fed.App’x 5, 13-14 (Fed. Cir. 2012) (non-precedential) (Finding inadequate written support for claims drawn to a method of processing debit purchase transactions requiring three separate authorization codes because "the written description [did] not contain a method that include[d] all three codes" and "[e]ach authorization code is an important claim limitation, and the presence of multiple authorization codes in [the claim] was essential".).”
In the instant case, the claims require a construct comprising a left and a right homology arm targeting a CD38 locus, operatively linked to one or more nucleic acids encoding exogenous protein(s). Applications No. 62/649, 781, 62/774,052 and PCT/US2018/067289 do not disclose such a construct by reduction to practice, drawing/structural details or description of sufficient identifying characteristics.
In the replies filed 9/12/2025, 3/3/2025, 6/18/2024 and, 12/29/2023 applicants appear to disagree with the above determination however present no argument or evidence to the contrary (“Without agreeing with the Office’s determination…” on page 9, para 4 in the latest reply filed 9/12/2025).
Accordingly, claims 1-12, 15-17 are not entitled to the benefit of the prior-filed Application No. 62/649, 781, 62/774,052 and PCT/US2018/067289.
Claim Interpretation
Claim 1 is a cell comprising a construct intended for genome engineering, wherein the structure of the construct is provided by (a-e). Claim 1 further recites “(f) the construct is effective to guide a targeted integration of the one or more nucleic acid sequences encoding the one or more exogenous protein at the selected position in the CD38 locus, and knockout CD38 in the host cell to thereby genomically edit the host cell to comprise the targeted integration and the CD38 knockout” and “(g) the host cell is a human induced pluripotent stem cells (iPSC) capable of differentiating into an NK cell comprising the CD38 knockout following the targeting integration in the iPSC”.
Per (f), the claimed construct of (a-e) is effective to integrate in the hiPSC (claimed host cell per (g) but it is not required to be integrated in the hiPSC such that there is no requirement that the claimed hiPSC is genetically edited to knockout endogenous CD38 gene. Additionally, per (g), the hiPSC is capable of differentiating into an NK cell after targeted integration which is expected to cause a CD38 gene knockout. Herein again, there is no requirement that the claimed hiPSC is genetically edited to knockout endogenous CD38 gene. Additionally, the claims are not directed to an NK cell but a hiPSC. Thus, (g) does not provide any additional structure to the claimed hiPSC but merely recites that the claimed hiPSC has some capability of differentiating into NK cell under some circumstance. An ordinary artisan would recognize that the claimed hiPSC could be differentiated into different cell types using appropriate differentiation protocols. Thus, an intended use of the claimed hiPSC to be capable of differentiating into an NK cell does not limit the structure of the claimed hiPSC.
In conclusion, Claim 1 is a hiPSC comprising the construct with the structure recited in (a-e). The hiPSC of claim 1 is not required to have the construct integrated at the endogenous CD38 locus.
In the remarks filed 9/12/2025, Applicant took issue with the previous claim interpretation presented in the final action dated 6/13/2025. Specifically, Applicant disagree that “"[c]laim 1 is not directed to a genomically edited cell" (page 9, last para). Applicant argue that since the recited construct may spontaneously integrate in the hiPSC genome such as by spontaneous homologous recombination using non-homologous end-joining machinery, use of gene editing agents such as CRISPR, TALEN etc. “may increase efficiency of recombination, such agents are not required in order for a construct of the present claims to effectuate a CD38 knockout” (page 10, para 1). Applicant contend that “Claim 1 did not (and still does not) exclude the possibility that the host cell comprises one or more additional genomic edits, and therefore could be a "genomically edited cell." (page 10, para 3).
In response, it is indeed true that there is some chance, although vanishingly small, that the claimed construct spontaneously integrates at the endogenous CD38 locus in the claimed hiPSCs without the use of gene editing agent, however there is still no requirement that the claimed hiPSC are limited to only those hiPSCs in which the construct is integrated at the endogenous CD38 locus. Applicant do not argue that the claimed hiPSC is required to be genetically modified, only that it could be. The updated claim interpretation makes this clear that there is no requirement for the claimed hiPSC to have a CD38 gene knocked out, such that the only structure required for the claim is hiPSC that comprises the construct of (a-e). This interpretation is in agreement with Applicant’s own interpretation presented on page 12, para 2 : “While claim 1 is therefore directed to the host cell in a state prior to such integration and knockout,” (emphasis added).
Of note, the specification discloses that even after using the CRISPR gene editing agent, the knockout rate using the claimed construct was very low such that Applicants concluded that “As such, the bi- allelic targeted integration with simultaneous bi-allelic knockout seems to be a rare event” [000296]. Thus, spontaneous and targeted integration of the claimed construct is expected to be an even rarer event such that vast majority of the claimed hiPSC of claim 1 should be expected to not have a CD38 gene knocked out.
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.
Rejection of Claims 6 and 10 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 is withdrawn in light of claim amendments..
Claim 9 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 9 is amended to recite “the host cell, following said targeted integration” (emphasis added). Claim 9 is a product claim that depends from claim 1, a product claim that recites a host cell comprising a construct that is effective to guide a targeted integration and thereby produce by genomically edited cell. However, no targeted integration is required in claim 1. It is unclear if claim 9 requires the construct of claim 1 to be integrated or is merely reciting the phenotype if the construct integrates. For the purpose of compact prosecution, claim 9 is interpreted as “the host cellhas the construct integrated in its genome and”.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1, 2, 3, 6-12,15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Valamehr et al (WO 2017/079673 A1, Publication date May, 11, 2017; ref of record) in view of Wang et al (Cancer Res (2017) 77 (13_Supplement): 4617; cited in IDS dated 6/18/2024) and CD38 gene sequence (NM_001775.4, available on NCBI Gene database; ref of record).
Regarding claim 1, Valamehr teaches human iPSC (recited in (g) comprising a construct for genome engineering, wherein the construct comprises a pair of homology arms specific to the selected site (=left, right homology arms homologous to a first and second sequence at a selected locus of (a-i, c, d, e)) and flanking the exogenous polynucleotides of interest (=a-ii, b), wherein construct is for targeted integration of the exogenous polynucleotides at the selected site in iPSCs (= f; [0007, 0010, 000260, Example 9, 000294, Example 15-19]). Valamehr teaches that their human iPSC with the construct genomically integrated is capable of differentiating into hematopoietic lineage cells including NK cells (= g; [0020, 000188-000193, Example 18, Figure 28-32]).
Regarding claim 2, Valamehr teaches the one or more exogenous polynucleotides of interest operatively linked to one or more exogenous promoters comprised in the construct, or to an endogenous promoter comprised in a selected site upon integration [0007, 0010, 000260, Example 9, 000294, Example 15-19].
The construct taught by Valamehr is effective at guiding the targeted integration of the exogenous polynucleotides at a selected endogenous locus, generating a targeting integration and knockout of the target gene. In [000149], Valamehr elaborate that using their method “When an endogenous sequence is deleted at the insertion site during targeted editing, an endogenous gene comprising the affected sequence may be knocked-out or knocked-down due to the sequence deletion” [000149]. In example 14, they exemplify their method using a construct targeting the endogenous B2M locus and inserting CD16 at the disrupted locus [000294], Figure 34A and B). In example 19, they teach targeting the endogenous TCR locus for insertion of CD19 CAR-encoding polynucleotide resulting in knockout of TCR gene and expression of the CD19 CAR polypeptide (Example 19, Figure 20).
Regarding claim 3, Valamehr teaches polynucleotides encoding CD16 and its high-affinity, non-cleavable variant as an exogenous protein ([00017, 00018, Figure 28, 29, Example 14).
Regarding claim 6, Valamehr teaches CD19 CAR (a T-cell specific CAR) in their human iPSC ([000320], Figure 32A).
Regarding claims 7 and 8, Valamehr teaches that in some embodiments an exogenous promoter such as CMV, EF1a, PGK, CAG or UBC drive the expression of the nucleic acid sequences encoding the exogenous proteins [0008].
Regarding claim 9, in part, Valamehr teaches iPSC comprising polynucleotides encoding CD16 and with increased expression of CD16 ([00017, 00018, Figure 28, 29, Example 14).
Regarding claim 10, Valamehr teaches HLA-I and HLA-II deficient iPSCs [00017] and insertion of non-cleavable HLA-G [00018] ([000298], Figure 21B). Valamehr further teaches that each of the HLA-I deficient iPSCs with further knockout of B2M gene and insertion of various exogenous molecules including non-cleavable HLA-G are capable of differentiating into hematopoietic cells, NK and T cells (Figure 21B).
Regarding claims 11, Valamehr teaches embodiments wherein their hiPSC have improved persistency, increased resistance to immune cells, increased immune-resistance and are capable of differentiating into T cell progenitors, NK cell progenitors; T cells, NKT cells, NK cells, or B cells [0020, 000188-000193, Example 18, Figure 28-32].
Regarding claim 15, Valamehr teaches a composition comprising their genetically modifying iPSC [000202].
Regarding claim 16, Valamehr teaches their genetically modifying iPSC and differentiation medium required for the recited kit (page 61 and 66).
Regrading claim 17, Valamehr teaches the cell comprising the construct for therapeutic purposes in a pharmaceutically acceptable carrier [000222].
Valamehr teach that their “disclosure is broadly concerned with the field of genetic editing and genomic engineering of stem cells” [0002] and their objective is to provide methods and compositions to generate “iPSC clonal lines, or derivative cells therefrom, comprising one or several genetic modifications at selected sites, which include polynucleotides insertion, deletion, and substitution” [0004] which can be further differentiated into non-pluripotent cells such as HSCs (hematopoietic stem and progenitor cells), hematopoietic multipotent progenitor cells, T cell progenitors, NK cell progenitors, T cells, NKT cells, NK cells, and B cells [0006] that are used for therapeutic purposes (page 79, Section V. Therapeutic Use of Genetically Engineered iPSCs and Derived Immune Cells with Functional Modalities Therefrom).
Although Valamehr teaches that the targeted gene locus can be any gene of interest whose interruption is relevant to desirable cell function or properties [0007], Valamehr does not teach targeting CD38 gene locus or an hiPSC with a CD38-/- phenotype, as recited in claim 9 per claim interpretation presented above.
Wang teaches CD38 as a gene of interest in multiple myeloma and tumor specific antigen (line 7-10) and use of CD38 negative CS1-CAR NK cells as a potential therapeutic (lines 24-31). Wang teach that Daratumumab (recited in instant claim 12, approved antibody therapy for multiple myeloma) causes fratricide of CD38+ NK cells but not the CD38- NK cells (lines 18-25). Therefore, Wang teaches the importance of CD38 as a tumor antigen and a need to reduce or knockout CD38 in NK-cells to avoid fratricide of NK cells and especially CAR-NK cells.
Although Valamehr teaches the method to design a construct comprising left and right homology arms targeting an endogenous loci in hiPSC and Wang provides motivation to knockout CD38, Valamehr and Wang do not teach the gene sequence of CD38 gene required for the left and right homology arms targeting a CD38 gene locus. However, this sequence is publicly available from NCBI Gene database as NM_001775.4 which teaches the sequence of a CD38 gene.
Therefore, owing to teachings of Wang regarding the importance of CD38 in multiple myeloma and its expression on NK-cells, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the iPSCs of Valamehr to comprise a construct comprising a left and a right homology arms targeting a CD38 gene locus (taught by NM_001775.4 ) flanking a nucleotide sequence encoding an exogenous CAR protein, wherein the genetically modified iPSC is expected to be capable of differentiating into NK cells. Furthermore, it would be obvious to an ordinary artisan to utilize methods taught by Valamehr (such as used in example 14) to effectuate the CD38 gene locus targeting construct to generate a CD38-/- hiPSC as required for claim 9 per claim interpretation presented above.
An ordinary artisan would be motivated to modify the iPSCs of Valamehr to comprise a construct that targets CD38 locus and inserts a CAR therein because such an iPSC cell line would be used to generate CD38-knockout CAR-iPSC cells that have “Greater Proliferative, Survival and Persistence Potential” (see Valamehr’s teachings regarding telomeres in Example 21), and differentiated into a variety of blood cell types including the CD38-knockout CAR-NK cells motivated by teachings from Wang.
An ordinary artisan would reasonably expect to generate a iPSC comprising a construct comprising a left and a right homology arm targeting the CD38 gene locus flanking a nucleotide sequence encoding a CAR because Valamehr teaches the method to generate iPSC comprising construct with a pair of homology arms targeting a gene locus flanking a nucleotide sequence, the sequence of CD38 gene locus is taught by NM_001775.4 and, Wang teaches a CS1-CAR. Furthermore, an ordinary artisan would reasonably expect that CD38 knockout iPSC of Valamehr, Wang and NM_001775.4 would show reduced fratricide in the presence of Daratumumab, an anti-CD38 antibody, as required by claim 11(ix) and 12 because fratricide of a cell in the presence of an antibody requires the expression of the antibody target on the cell. For example, Wang teaches that Daratumumab causes fratricide of CD38+ NK cells but not the CD38 negative NK cells (lines 18-25). Thus, an ordinary artisan expects a CD38 knockout iPSC or its derivates immune cell (recited in claim 11(b) to show reduced fratricide in the presence of Daratumumab, an anti-CD38 antibody, as required by claim 11(ix) and 12.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the effective time of filing of the invention, especially in the absence of evidence to the contrary.
Claim(s) 4-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Valamehr et al (WO 2017/079673 A1, Publication date May, 11, 2017; ref of record) in view of Wang et al (Cancer Res (2017) 77 (13_Supplement): 4617; cited in IDS dated 6/18/2024) and CD38 gene sequence (NM_001775.4, available on NCBI Gene database; ref of record) as applied to claim 1 above, and further in view of Caratelli et al (Frontiers in Immunology, April 2017; ref of record).
Valamehr teaches polynucleotides encoding CD16 and its high-affinity, non-cleavable variant as an exogenous protein. Valamehr and Wang do not teach a CD16 variant comprising non-native domains recited in claim 4 or a CD16 variant comprising non-native domains derived from the proteins recited in claim 5.
Caratelli teaches CD16 Fc gamma chimeric receptors (CD16-Fcγ-CRs or CD16-CR), a CD16 variant, that comprises non-native transmembrane domains from CD8a, non-native co-stimulatory domain of 4-1BB or CD 28 and non-native signaling domain from CD3z (see Figure 1 and section: Second Generation of CD16-CR). Caratelli teaches that Fc gamma chimeric receptors are similar to CARs in structure and design (Figure 1, page 3, right column, para 2) yet have distinct advantages in targeting different types of tumors regardless of antigen-specificity as long as a tumor-antigen specific antibody is available (page 4, right column , para 1 and Figure 2) and superior targeting of some solid tumors that CARs target inefficiently (page 6, left column, para 1).
Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to further modify the iPSC of Valamehr and Wang that comprises a CD38 targeting construct to comprise a nucleotide sequence encoding CD16-chimeric receptor, taught by Caratelli. Such a combination would result in CD38-/- CD16 human iPSC as required by claim 9.
An ordinary artisan would be motivated to include a polynucleotide encoding a CD16-Chimeric receptor in the construct of Valamehr to produce an CD38-knockout iPSC comprising a CAR and CD16-chimeric receptor that can be differentiated into a multi-specific NK-cell capable of targeting not only multiple myeloma cells but also other tumor cells expressing tumor-antigen with a specific antibody. Such a modification would result in an “off-the-shelf” product ready to use for therapy.
An ordinary artisan would reasonably expect to further modify the iPSC of Valamehr and Wang to comprise a polynucleotide encoding CD16-chimeric receptor because Caratelli teaches the various protein domains that are fused to form CD16-chimeric receptor and Valamehr teaches the use of linkers between polynucleotide sequences of distinct exogenous proteins [0007].
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the effective time of filing of the invention, especially in the absence of evidence to the contrary.
Claim(s) 1, 2, 6-8, 10-12, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (Genome Biology (2017) 18:35; ref of record) in view of Hermanson et al (Blood (2013) 122 (21) : 896; ref of record), Wang et al (Cancer Res (2017) 77 (13_Supplement): 4617; cited in IDS dated 6/18/2024) and CD38 gene sequence (NM_001775.4, available on NCBI Gene database; ref of record).
Regarding claim 1 and 11, Zhang teaches human iPSC (recited in (g)) comprising a construct for genome engineering, wherein the construct comprises a pair of homology arms specific to an exon within an endogenous gene (=left, right homology arms homologous to a first and second sequence at a selected locus of (a-i, c, d, e)) and flanking the exogenous polynucleotides of interest (=a-ii, b), wherein construct is for targeted integration of the exogenous polynucleotides at the exon in an endogenous gene in iPSCs (= f; [0007, 0010, 000260, Example 9, 000294, Example 15-19]). Since Zhang’s human iPSC are pluripotent stem cells, they are inherently capable of differentiating into all cell types recited in instant claim 1, 11, including NK cell progenitor, NK cell. This is also evidenced by Hermanson that differentiates human iPSCs into NK cells which implicitly requires human iPSCs to differentiate into intermediate NK cell progenitor cell type (Abstract, para 2).
Regarding claim 2, Zhang teaches targeted integration with an exon in an endogenous gene and exons are downstream of the endogenous promoter thus resulting in integration within an exon inherently results in the exogenous polynucleotides placed under the control of an endogenous promoter (Enhanced HDR editing at the CTNNB1 locus in iPSCs with double cut HDR donors, Figures 3-5, Methods: Cell culture, Donor plasmid construction, Construction of putative HDR-enhancing plasmids).
Regarding claims 7 and 8, Zhang teaches constructs comprising linkers (GS and 2A) between polynucleotide sequences of distinct exogenous proteins and polyA tail (Figures 3-5; Donor plasmid construction).
Regarding claims 15-17, Zhang teaches the human iPSC in a composition/kit with a medium for culturing the human iPSC that comprises mTeSR1 medium that is pharmaceutically acceptable (Methods: Cell culture).
Zhang teaches a detailed method for generating genomically modified human iPSC wherein exogenous genes are inserted at endogenous sites. Zhang does not teach targeting the CD38 locus in the human iPSC.
Wang teaches CD38 as a gene of interest in multiple myeloma and tumor specific antigen (line 7-10) and a CD38-negative CS1-CAR NK cells as a potential therapeutic (Abstract, lines 24-31). Regarding claims 6 and 10, Wang teaches NK-cell specific CS1 CAR (Abstract). Regarding claims 11 and 12, Wang teach that Daratumumab (recited in claim 12, approved antibody therapy for multiple myeloma) causes fratricide of CD38+ NK cells but not the CD38 negative NK cells (lines 18-25). Therefore, Wang teaches the importance of CD38 as a tumor antigen and a need to reduce or knockout CD38 in NK-cells to avoid fratricide of NK cells and especially CAR-NK cells.
Although Zhang teaches the method to design a construct comprising left and right homology arms targeting an endogenous loci and Wang provides motivation to knockout CD38, Zhang and Wang do not teach the gene sequence of CD38 gene required for the left and right homology arms targeting a CD38 gene locus. However, this sequence is publicly available from NCBI Gene database as NM_001775.4 which teaches the sequence of a CD38 gene.
Finally, Hermanson teaches that “CARs targeting various tumor-associated antigens have been developed and tested via expression in primary T cells with promising clinical results. However, engineering these T cells must be done on a patient-specific basis, thus limiting the number of patients who can be treated” (para 1, last sentence). Hermanson teaches generating CAR-expressing human iPSC as an “off-the shelf” product that are differentiated to generate CAR-NK cells for therapy (Abstract, para 1 and 2).
Therefore, owing to the teachings of Wang and Hermanson, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the human iPSC of Zhang to generate an “off-the-shelf” human iPSC cell that comprises a construct comprising a left and right homology arm that targets the CD38 locus (homology sequence taught by NM_001775.4) for knockout of CD38 gene and insertion of CS1-CAR.
An ordinary artisan would be motivated to modify Zhang’s iPSCs to comprise such a construct because it would allow for generation of an “off-the shelf” version of Wang’s CAR-NK cells since Zhang’s modified iPSC would be used to generate CD38-knockout CS1-CAR-NK cells of Wang. An ordinary artisan would reasonably produce such a modified human iPSC because Zhang provides a detailed method for generating constructs that target endogenous loci and insert exogenous nucleotides therein, NM_001775.4 teaches the sequence of CD38 gene locus that would be used to design the construct targeting CD38 locus and, Wang teaches a CS1-CAR.
Claim(s) 3-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (Genome Biology (2017) 18:35; ref of record) in view of Hermanson et al (Blood (2013) 122 (21) : 896; ref of record), Wang et al (Cancer Res (2017) 77 (13_Supplement): 4617; cited in IDS dated 6/18/2024) and CD38 gene sequence (NM_001775.4, available on NCBI Gene database; ref of record) as applied to claim 1 above, and further in view of Caratelli et al (Frontiers in Immunology, April 2017; ref of record).
Zhang, Wang, NM_001775.4 teach the human iPSC of claim 1 comprising the CD38 targeting construct of claim 1. They do not teach the construct comprising nucleotides encoding a CD16 variant (recited in claim 3) comprising non-native domains (recited in claim 4) or a CD16 variant comprising non-native domains derived from the proteins recited in claim 5.
Caratelli teaches CD16 Fc gamma chimeric receptors (CD16-Fcγ-CRs or CD16-CR), a CD16 variant, that comprises non-native transmembrane domains from CD8a, non-native co-stimulatory domain of 4-1BB or CD 28 and non-native signaling domain from CD3z (see Figure 1 and section: Second Generation of CD16-CR). Caratelli teaches that Fc gamma chimeric receptors are similar to CARs in structure and design (Figure 1, page 3, right column, para 2) yet have distinct advantages in targeting different types of tumors regardless of antigen-specificity as long as a tumor-antigen specific antibody is available (page 4, right column , para 1 and Figure 2) and superior targeting of some solid tumors that CARs target inefficiently (page 6, left column, para 1).
Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the human iPSC of Zhang, Wang, NM_001775.4 that comprises a CD38 knockout to comprise a nucleotide sequence encoding CD16-chimeric receptor, taught by Caratelli. Such a combination would result in CD38-/- CD16 human iPSC as required by claim 9.
An ordinary artisan would be motivated to include a polynucleotide encoding a CD16-Chimeric receptor in the construct of Zhang, Wang and NM_001775.4 to produce an CD38-knockout iPSC comprising a CAR and CD16-chimeric receptor that can be differentiated into a multi-specific NK-cell capable of targeting not only multiple myeloma cells but also other tumor cells expressing tumor-antigen with a specific antibody. Such a modification would result in an “off-the-shelf” product ready to use for therapy for targeting multiple myeloma and others tumors when combined with tumor-specific antibody.
An ordinary artisan would reasonably expect to further modify the iPSC of Zhang, Wang and NM_001775.4 to comprise a polynucleotide encoding CD16-chimeric receptor because Caratelli teaches the various protein domains that are fused to form CD16-chimeric receptor and Zhang teaches the use of linkers between polynucleotide sequences of distinct exogenous proteins.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the effective time of filing of the invention, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant’s arguments, see pages 10-11, filed 9/12/2025, with respect to the U.S.C. 112b rejection of claims 6, 9 and 10 have been fully considered and are persuasive for claims 6 and 10. The amendments to claims 6 and 10 resolve the indefiniteness issues with these claims and thus the U.S.C. 112b rejection of claims 6 and 10 is withdrawn. However, amendment to claim 9 does not resolve the indefiniteness issues with this claim and thus U.S.C. 112b rejection of claim 9 is maintained.
Regarding claim 9, Applicant argue that The term "following" in "following said targeted integration" is consistent with the recitation that the construct is "effective to guide a targeted integration." (page 11, para 2).
In response, the amendment does not resolve the indefiniteness issue with claim 9 since no targeted integration is required in claim 1. The phrase “following said targeted integration” is unclear because it is not clear if claim 9 is merely reciting the phenotype of the cell that would occur following the construct integration or does the claim require the cell to necessarily have the recited phenotype. An interpretation is presented in the instant U.S.C. 112b rejection above that attempts to resolve this issue by making it explicit that the claimed cell necessarily has the recited phenotype.
Applicant’s arguments with respect to the U.S.C. 103 rejection of claim(s) 1-3, 6-12, 15-17 over Valamehr in view of Wang and NM_001775.4 have been considered but they are not persuasive.
First, Applicant reiterate, regarding Valamehr that “Applicant has not acquiesced to the Office's determination concerning alleged lack of priority entitlement to US 62/649,781, filed March 29, 2018. Applicant therefore reserves the option to dispute the availability of WO 2017/079673 as prior art, which was published less than a year before the earliest claimed priority. However, even if WO 2017/079673 were available as prior art (which is not conceded) the present claims are unobvious over the cited references” (page 10, last para). This note is acknowledged. Applicant is again requested to identify support for instant claim 1, specifically critical claim limitation of a construct comprising a left and a right homology arm targeting a CD38 locus and additionally wherein the CD38 locus targeting homology arms are operatively linked to one or more nucleic acids encoding exogenous protein(s), in US 62/649,781.
Regarding the rejection of record, Applicant argues the following:
Applicant argue that the cited references do not disclose the claimed host cell. In support, Applicant argue:
(i) Regarding Valamehr, Applicant argue that “Valamehr does not mention CD38”, “Neither does Valamehr provide any guidance as to whether a human iPSCs would be capable of differentiating into any particular cell upon CD38 knockout, much less an NK cell as currently claimed” and “Valamehr do not provide guidance for combining a construct effective to knockout CD38 in a human iPSC, nor reason to predict the results thereof” (page 12, last para).
(ii) Regarding Wang, Applicant argue that “Wang fails to provide the missing teaching for at least two reasons. First, the cells of Wang are NK cells, not iPSCs. Second, and more importantly, the cells of Wang that are designated "CD38-" merely do not express CD38 – there is no evidence that they comprise a CD38 knockout. There is no evidence in Wang itself that "CD38(-)" actually means "knockout" rather than merely "negative for expression." (page 13, para 1). In support, Applicant point to another prior art publication from Wang (Wang2) which they allege shows a CD38-/low NK cell population that are positive for CD38 and increase CD38 expression in vitro. Using these teachings from Wang2, Applicant argue that “If the cells that are CD38 negative can later exhibit “increased CD38 expression,” then it cannot be assumed that CD38 was knocked out” (page 12, para 2).
(iii) Finally, Applicant argue that since “Wang is not relied upon to meet the limitation of human iPSC in the instant claims nor to teach a CD38-/- (i.e. a CD38 knockout)” and “The final reference, NM_ 001775.4, is merely a nucleotide sequence, which provides neither disclosure of nor motivation for knocking out any target whatsoever, much less CD38 specifically. In view of the foregoing, none of the references disclose a construct effective to knockout CD38 in any cell, much less in a human iPSC” (page 13, para 3, 4).
In response:
Regarding (i), Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Valamehr is not relied upon for its teachings of CD38 gene but for its teachings regarding hiPSC, constructs for knockout of endogenous genes in hiPSC and inserting sequences encoding proteins of interest at the endogenous gene locus. Valamehr also teaches the value of genomically engineered hiPSC and their ability to differentiate into immune cells for therapeutic use. The teachings regarding CD38 are provided by Wang (motivation) and NM_001775.4 (structure).
Regarding ability of claimed hiPSC to differentiate into other cells, there is no evidence of record that hiPSC with a construct that is effective at knocking out CD38 would be unable to differentiate into another cell type, including NK cells. This is especially so because there is no requirement that the claimed hiPSC has a CD38 gene knockout. See Applicants statement “claim 1 is therefore directed to the host cell in a state prior to such integration and knockout “ (page 12, para 2). Thus, an artisan may effectuate the construct after differentiating the hiPSC into their desired cell type such as NK cell. The claimed hiPSC is not limited to the recited structure (see the use of transitional phrase “comprising”). Thus, the capability of differentiating into a desired cell type maybe provided by additional elements, such as exogenous CD38. In this regard, the limitation reciting the capability of the claimed hiPSC to differentiate into a specific cell type such as NK cell (recited in claim 1(g)) is an intended use of the claimed hiPSC that provides no additional structure to the claimed cell. This intended use is also evident from claim 11 which recites that the claimed hiPSC be capable of differentiating into other desired cell types, such as T cell or its progenitor, B cell or its progenitor, or NKT cell etc.
Regarding (ii), Wang is relied upon to provide a motivation to provide a construct effective to knockout CD38 in human iPSC of Valamehr. Wang is not relied upon to meet the limitation of human iPSC in the instant claims nor to teach a CD38-/- (i.e. a CD38 knockout) NK cell – which should be noted is NOT a claim limitation. Wang teaches that Daratumumab (recited in instant claim 12, approved antibody therapy for multiple myeloma) causes fratricide of CD38+ NK cells but not the CD38 negative NK cells (lines 18-25). Therefore, Wang teaches the importance of CD38 as a tumor antigen and a need to reduce or knockout CD38 in NK-cells to avoid fratricide of NK cells and especially CAR-NK cells.
Regarding if Wang’s CD38(-) NK cells are CD38 knockout or not, the instant rejection does not require for Wang’s NK cells to be a CD38 knockout. As noted above, Wang provides sufficient motivation to an artisan to knockout CD38 expression regardless of if their cells are themselves a knockout or not. Wang’s teaching of Daratumumab caused fratricide of CD38+ NK cells but not in CD38 knockout OR even CD38(-) provides motivation to modify Valamehr.
Arguments pertaining to Wang2 and there relation to Wang are unpersuasive. It appears that Applicant are arguing, without evidence, that the CD38(-) cells of Wang are the same as CD38-/low cells of Wang2 since they are arguing that if CD38-/low NK cells of Wang2 could later increase CD38 expression then CD38(-) of Wang cannot be “assumed” to be CD38 knock out. At first, it must be noted that the teachings from Wang remain relevant regardless of if their NK cell are CD38 knockout or not. Secondly, it appears that Applicant are alleging that the research group of Wang would use CD38-/low and CD38(-) interchangeably even though an artisan in the field, such as Wang and the Applicants, understand that CD38-/low is not CD38(-) and stating it as such would be considered misrepresentation. It should be noted that the CD38-/low NK cells of Wang2 are derived from patients treated with Daratumumab (Figure 1) and at no point Wang2 represents them as CD38(-). Thus, since the patient derived cells of Wang2 have low CD38 expression, an artisan recognizes that these cells are capable of increasing or further decreasing the CD38 expression. On the other hand, Wang clearly shows that the research group of Wang understands that designation CD38(-) means cells without CD38 expression. For example, they teach U266 cell line as a CD38-negative MM cell line (stating “but not CD38-negative (e.g., U266)”, in line 17-18) and this cell line indeed has a CD38-negative expression (see Tai et al, Blood, Volume 114, Issue 22, November 2009; ref of record). Tai states “U266 cells, which lack CD38 mRNA” (line 7). Thus, it is more likely than not that Wang’s CD38 negative NK cells are indeed CD38 knockout. Critically, Wang remains relevant regardless of if their NK cell are CD38 knockout or not
Regarding (iii), NM_ 001775.4 is the nucleotide sequence that is relied upon to provide structure for the homology arms targeting a CD38 gene locus. Valamehr provides the requisite teachings for designing a construct targeting an endogenous gene locus in an hiPSC and Wang provides the motivation to target CD38 gene locus. Taken together, contrary to Applicants allegation, the references of Valamehr, Wang and NM_ 001775.4 together disclose a hiPSC with a construct effective to knockout CD38.
2. Applicant argue that cited references do not suggest or motivate the production of the claimed host cell. In support, Applicant argue:
(i) “there is no evidence in Wang that CD38 is knocked out in the NK cells described therein (and Applicant has provided evidence to the contrary) (page 13-14, bridging para).
(ii) “Second, considering that none of the references disclose a CD38 knockout in any cell, it is entirely speculative to conclude that an iPSC with such knockout "would be used" to "differentiate[] into a variety of blood cell types including the CD38-knockout CAR-NK cells," as alleged by the Office. Without a basis for concluding that such differentiation would have been reasonably predictable, there would have been no motivation to introduce a construct effective to knockout CD38 into an iPSC as presently claimed” (page 14, para 1).
In response:
(i) Applicants alleged evidence regarding Wang’s CD38 negative NK Cells has not been persuasive (see analysis above on page 22). Wang appears to understand that designation CD38(-) means cells without CD38 expression. For example, they teach U266 cell line as a CD38-negative MM cell line and this cell line is indeed CD38-negative expression (see Tai et al, Blood, Volume 114, Issue 22, November 2009; ref of record). Tai states “U266 cells, which lack CD38 mRNA” (line 7). Thus, it is more likely than not that Wang’s CD38 negative NK cells are indeed CD38 knockout. Nevertheless, regardless of if Wang’s cells are themselves a knockout or not, Wang provides sufficient motivation to an artisan to knockout CD38 expression.
(ii) Applicant provide no evidence as to why differentiation of a hiPSC into other cells wherein the hiPSC merely comprises a construct would be unpredictable. (See additional discussion in “Regarding ability of claimed hiPSC to differentiate into other cells” above on page 21). Sufficient motivation to introduce a construct effective at targeting CD38 locus is provided by the combination of Valamehr and Wang with a reasonable expectation that a product, as claimed i.e. hiPSC with a construct, would be produced (see pages 10-12).
3. Applicant argue that Results of the alleged combination would not have been considered predictable. In support, Applicant argue:
(i) “The skilled person would have had reason to avoid disrupting CD38 in such cells” because the instant specification states that CD38 is expressed in plasma cells, NK cells, activated T and B cells and CD34+ stems cells during hematopoiesis and plays key roles in cell developmental biology and cell function (page 14, para 3) and “[I]t was unknown and there was a concern, prior to the present application, whether iPSCs comprising CD38 knockout would develop properly when subjected to directed differentiation conditions and whether the generated effector cells would be functional, considering CD38 expression profile and functionality." (W02019191495A1, para. [0281])”. Applicant argue that “None of the cited references nor the Office provide any reason to dispute this assessment of the state of the art prior to the present invention, as it relates to the presently claimed human iPSCs comprising a construct effective to knock out CD38 therein” (page 14, last para).
In response, it is vital to keep note that claimed human iPSC are not genetically modified to knockout CD38 gene. As noted above, an artisan may effectuate the construct after differentiating the hiPSC into their desired cell type such as NK cell. The claimed hiPSC is not limited to the recited structure (see the use of transitional phrase “comprising”). Thus, the capability of differentiating into a desired cell type maybe provided by additional elements, such as exogenous CD38. In this regard, the limitation reciting the capability of the claimed hiPSC to differentiate into a specific cell type such as NK cell (recited in claim 1(g)) is an intended use of the claimed hiPSC that provides no additional structure to the claimed cell. This intended use is also evident from claim 11 which recites that the claimed hiPSC be capable of differentiating in other desired cell types, such as T cell or its progenitor, B cell or its progenitor, or NKT cell etc.
Further, even if the claimed cells are used to generate a CD38-knockout human iPSC, an ordinary artisan does not expect knockout of CD38 in hiPSC to affect its ability to differentiate into an NK cell or that CD38 KO NK cells would be non-functional. Cockayne was provided as evidence in the office action dated 3/20/2024 because it teaches a CD38 knockout mouse generated by producing a CD38 knockout embryonic stem cells (Results, para 1) and states, in agreement with the specification, that “Several observations would have predicted an in vivo role for CD38 in bone marrow hematopoiesis and B lymphopoiesis. CD38 is widely expressed on cells of hematopoietic origin, including hematopoietic stem cells, and studies in both the human49-51 and murine22 systems have used CD38 as a phenotypic marker for different hematopoietic progenitor subsets. [….]” (emphasis added, Discussion, para 2). Yet, Cockayne generated the congenital CD38-/- mice and concluded that “However, analysis of CD38-/- mice has shown that this ecto-NAD1 glycohydrolase is not required for the development or maintenance of either hematopoietic stem cells or committed lineage-specific cell populations”. (Discussion, para 2) and “Although murine CD38 is expressed on hematopoietic stem cells as well as on committed progenitors, we show that CD38 is not required for hematopoiesis or lymphopoiesis” (emphasis added, Abstract). Therefore, owing to Cockayne’s teachings, an ordinary artisan knows that CD38 plays important roles in immune cell development in both mouse and humans but also recognizes that CD38 KO does not affect the ability of a pluripotent stem cell, such as mouse ESC, to differentiate into other cells, including lymphocytes such as NK cells. With regards to the potential negative effects of CD38 loss on immune cell function, this does not provide evidence that loss of CD38 on stem cells disrupts their NK-cell differentiation capability. Furthermore, although loss of CD38 is known to negatively affect T-cell function (taught by Cockayne and noted by Applicant), this did not teach away from generation of CD38 KO T-cells or CD38 KO NK-cells. Duchateau (ref of record) generated CD38 KO T-cells and Wang teaches CD38 (-) NK-cells prior to instant application.
Additionally, regardless of a known role of a gene in immune cell development and function, skilled artisan do indeed generate hiPSC with those genes knocked out or knocked in. Valamehr generated a B2M knockout hiPSC even though B2M gene was known to play key role in mouse and human immune cell development and/or function. Koller et al (Science 1990 Jun 8;248(4960):1227-30) generated B2M knockout mouse and showed that the animals were grossly deficient in CD4- CD8+ cytotoxic T cells and TCRab CD8+ T cells were virtually absent (Abstract; page 1229, col.1, para 3; Table 3). Similar results were found in humans by Ardeniz et al (Journal of Allergy and Clinical Immunology, 2015, Volume 136, Issue 2, 392 - 401) that describe human patients with no detectable B2M protein expression on the surfaces of lymphocytes (Fig 1G) and significantly reduced levels of TCRab CD8+ cytotoxic T cells (Table 1). Despite Koller and Ardeniz that teach that B2M gene disruption results in reduced development/maturation of cytotoxic T cells, Valamehr generated a B2M knockout hiPSC and also differentiated them into immune cells of their choice, including NK cells and T cells [00298]. In comparison, Cockayne taught that CD38 knockout “exhibited a normal distribution and ratio of B- and T-lymphocyte subpopulations, as well as normal numbers of granulocytes, macrophages, and neutrophils” (page 1329, col. 1, para 1).
Taken together, the argument that a skilled person would have had reason to avoid disrupting CD38 in hiPSC remains unpersuasive.
Applicant’s arguments with respect to the U.S.C. 103 rejection of claim(s) 4-5, 9 over Valamehr in view of Wang and NM_001775.4 and Caratelli have been considered but they are not persuasive.
Applicant argue that “As explained above, claim 1 is unobvious over Valamehr, Wang, and NM_001775.4. Caratelli does not provide the missing teaching” (page 16, para 2). This is not persuasive because arguments pertaining to Valamehr, Wang, and NM_001775.4. presented above were unpersuasive.
Applicant’s arguments with respect to the U.S.C. 103 rejection of claim(s) 1, 2, 6-12 and 15-17 over Zhang in view of Hermanson, Wang and NM_001775.4 have been considered but they are not persuasive.
Applicant argue that “As explained above, Wang does not actually disclose knocking out CD38 in any cell, much less in an iPSC. Hermanson and Scaria, cited with respect to other features, also fails to provide the missing teaching (Office Action, pg. 18). As none of the cited references disclose knocking out CD38 in an iPSC or any iPSC comprising a construct for doing so, it follows that none of the references provides any motivation to prepare a host cell according to the present claims, or for reasonably predicting the results thereof” (page 16, last para).
In response, this argument was presented in the remarks filed 3/3/2025 on page 15 and was responded to in the office action dated 6/13/2025 on page 22 (repeated below).
It is vital to keep note that claimed human iPSC are not genetically modified to knockout CD38 gene. Therefore, there is no requirement to teach a CD38 KO hiPSC. Additionally, since the instant rejection of record is not an anticipation rejection, there is no requirement for a prior art reference to disclose all the limitations of a claim. In an obviousness rejection, such as that of record, prior art references are combined to together teach the limitations for the claim provided a motivation and reasonable expectation exists. In the instant case, Zhang teaches hiPSC comprising constructs that allow for insertion of polynucleotides of interest at endogenous sites, Zhang also teaches the method for generating such a construct with LHA/RHA, NM_001775.4 teaches the CD38 gene sequence to design RHA/LHA, Wang provides a strong motivation to produce CD38 KO NK cells to avoid at least Dara-induced fratricide and Hermanson shows that an artisan recognized the value of producing “off-the-shelf” hiPSCs products that are generated to produce NK cells for immunotherapy. Together, these prior art references render the instant claims prima facie obvious.
Applicants arguments pertaining to Wang, on pages 13 and 14, and lack of predictability, on pages 14 and 15, were unpersuasive as detailed above on pages 21-26.
Applicant’s arguments with respect to the U.S.C. 103 rejection of claim(s) 3-5, 9 over Zhang in view of Hermanson, Wang and NM_001775.4 and Caratelli have been considered but they are not persuasive.
Applicant argue that “As explained above, claim 1 is unobvious over Zhang, Hermanson, Wang, and NM_001775.4. Caratelli does not provide the missing teaching” (page 17, para 2). This is not persuasive because arguments pertaining to Zhang, Hermanson, Wang, and NM_001775.4. presented above were unpersuasive.
Applicant present additional remarks and arguments on page 17-21, that are addressed below.
(I) Applicants argue that “claim 1 requires that the construct is effective to guide the recited CD38 knockout, and that the cell have the recited differentiation capacity after such knockout is effectuated. As positively recited elements of the claim, the Office must establish that the alleged modifications of the cited references would have produced results that "would have been predictable to one of ordinary skill in the art" (MPEP § 2143.01(111)). As none of the cited references disclose any human iPSCs with a CD38 knockout, there is no basis in the cited references for reasonably predicting whether an iPSC with a construct effective to knockout CD38 therein would have had any such capability” (page 18, para 1).
In response, Applicants appear to be arguing that since the claimed hiPSC is not anticipated (“none of the cited references disclose any human iPSCs with a CD38 knockout”; note: claimed hiPSC is not a CD38 knockout), thus the claimed hiPSC is not obvious since in Applicants opinion a skilled artisan would be unable to “reasonably predict” that a construct is effective at knocking CD38 in hiPSC. Applicant provide no evidence in support.
The claimed hiPSC with the construct targeting CD38 locus is rendered obvious by Valamehr, Wang and NM_001775.4, and also Zhang, Hermanson, Wang and NM_001775.4. There is no evidence of record that an hiPSC with the construct targeting CD38 locus would be unable to differentiate into other cell types. Applicants argument pertaining to importance of CD38 gene in immune cell development and function as teaching away from generating an hiPSC with a construct targeting CD38 gene locus have been unpersuasive (see pages 25-26 above, especially teachings from Cockayne, Koller, Ardeniz).
Furthermore limitation pertaining to “differentiation capacity after such knockout is effectuated” does not limit the structure of the claimed cell since such a limitation is not a required claim limitation, rather a contingent one. One way to think about this limitation is by thinking if the claimed cell be infringed if an artisan produces an hiPSC with a construct targeting CD38 gene locus without effectuating the construct or without differentiating it into any immune cell or NK cell. The answer is yes. The claimed cell will be infringed regardless how the artisan chooses to use the cell. Thus, the differentiation capacity of the claimed cell, especially after additional steps such as effectuating the construct or differentiation steps, are intended uses (see MPEP 2111.02). Additionally, as noted above there is no evidence of record that hiPSC with the construct targeting CD38 locus would be unable to differentiate into other cell types.
(II) Applicant argue that “The Office does not provide any articulated reasoning or rationale as to why the observations of Wang in NK cells would be extrapolated to iPSCs of Valamehr. Neither does the Office explain why it would have been reasonable to predict based on the cited references that an iPSC with CD38 knocked out would have been capable of differentiating into NK cells. The Office's conclusion is more tenuous when considering that Wang does not establish that CD38 was even knocked out in NK cells” (page 18, last para).
In response, as noted in the U.S.C. 103 rejection above, “Valamehr teach their objective is to provide methods and compositions to generate “iPSC clonal lines, or derivative cells therefrom, comprising one or several genetic modifications at selected sites, which include polynucleotides insertion, deletion, and substitution” [0004] which can be further differentiated into non-pluripotent cells such as HSCs (hematopoietic stem and progenitor cells), hematopoietic multipotent progenitor cells, T cell progenitors, NK cell progenitors, T cells, NKT cells, NK cells, and B cells [0006] that are used for therapeutic purposes (page 79, Section V. Therapeutic Use of Genetically Engineered iPSCs and Derived Immune Cells with Functional Modalities Therefrom)”. Valamehr also teach that therapeutic immune cells differentiated from hiPSC have “Greater Proliferative, Survival and Persistence Potential (see Valamehr’s teachings regarding telomeres in Example 21)”. Thus, Valamehr is concerned with making genetically engineered hiPSC that can provide a pool of clonal lines that can be differentiated into therapeutic immune cells with desirable properties. As noted in the U.S.C. 103 rejection above, “Wang teaches CD38 as a gene of interest in multiple myeloma and tumor specific antigen (line 7-10) and use of CD38 negative CS1-CAR NK cells as a potential therapeutic (lines 24-31)”. As noted in the U.S.C. 103 rejection above, “An ordinary artisan would be motivated to modify the iPSCs of Valamehr to comprise a construct that targets CD38 locus and inserts a CAR therein because such an iPSC cell line would be used to generate CD38-knockout CAR-iPSC cells that have “Greater Proliferative, Survival and Persistence Potential” (see Valamehr’s teachings regarding telomeres in Example 21), and differentiated into a variety of blood cell types including the CD38-knockout CAR-NK cells motivated by teachings from Wang”. Thus, an articulated reasoning or rationale as to why the observations of Wang in NK cells would be extrapolated to iPSCs of Valamehr has been provided.
Arguments regarding capability of claimed hiPSC to differentiate into a specific cell types and if Wang’s cells are CD38 negative or CD38 knockout have been addressed above (pages 21-para 2, 3; page 22-para 1, 2; page 23-last para) and have not been persuasive.
(III) Applicants argue that “The cells of Wang designated 'CD38-' are not established as CD38 knockouts” because “Applicant instead submitted (and maintains) that use of these two annotations by the same research group is evidence that the label "CD38(-)" fails to establish that the cells of Wang necessarily comprises CD38 knockout” (page 19, para 1). Thus, Applicant argue that “Wang fails to disclose or even provide motivation for arriving at a construct effective to knockout CD38 in any host cell, much less a human iPSC comprising such construct, or reasonably predict the capabilities of such a cell.” (page 19, para 2).
In response, this argument if Wang’s cells are CD38 negative or CD38 knockout have been addressed above (page 22-para 1, 2; page 23-last para). Arguments pertaining to if it is even required for the rejection that Wang’s cell necessarily be CD38 knockout are also addressed above (page 21-para 3). None of these arguments were found to be persuasive.
Wang provides sufficient motivation to an artisan to knockout CD38 expression regardless of if their cells are themselves a knockout or not. See also discussion above on page 30 regarding articulated reasoning or rationale provided in the rejection as to why the observations of Wang in NK cells would be extrapolated to iPSCs of Valamehr.
(IV) Applicant argue that “the results of CD38 knockout in a human iPSC could not have been reasonably predicted” because “As explained above, the present application provides reasons why no such prediction could have been made, and the cited references provide no evidence for a contrary conclusion.” (page 19, para 3) and based on Malavasi regarding importance of CD38 protein in various immune functions such as LAK migration, cytotoxic immune response, particularly human cells wherein it is taught to “influence” human myeloid cell and lymphocyte migration into lymph nodes (page 20, para 1). Applicant also allege that teachings from Cockayne are irrelevant because Malavasi states that because they were unable to find CD38- individuals thus “absence of CD38 is incompatible with human life” (page 20, para 4).
In response, the reasons provided in the present application that Applicant allege support lack of predictability were addressed above (page 25, 26) and were unpersuasive. The important of CD38 in immune cell function, both mouse and human, is well known. Teachings from Malavasi, similar to instant specification, state the same and have been addressed above (page 25, 26). Critically, the claimed cell is not an immune cell but an hiPSC with a CD38-targeting construct. Reasons regarding why Valamehr, Wang and NM_001775.4, and also Zhang, Hermanson, Wang and NM_001775.4 render obvious the claimed hiPSC with a CD38-targeting construct have been detailed above in the U.S.C. 103 rejections above.
There is no evidence that a skilled artisan would be deterred from combining teachings of Valamehr, Wang and NM_001775.4, and also Zhang, Hermanson, Wang and NM_001775.4 to arrive at an hiPSC with a CD38-targeting construct because of statements such as Malavasi’s regarding “absence of CD38 is incompatible with human life”. Malavasi does not explain how lack of CD38 is “incompatible with human life”, only that they were unable to find a CD38- individual and that CD38 has important functions. Malavasi does not teach that lack of CD38 maybe incompatible with human life due its impact on pluripotent stem cells (such as ESC or PSCs or iPSCs) such that these stem cells would be unable to function, proliferate or differentiate and thus a skilled artisan would be deterred from knocking out CD38 from a human stem cell. Taken together, the impact of Malavasi’s statement on a skilled artisan and the claimed hiPSC (which does not lack CD38) is unclear. On the other hand, as detailed above on pages 25-26, skilled artisan do indeed generate hiPSC with knockout of genes well-known for their roles in immune cell development and function. Valamehr generated a B2M knockout hiPSC even though B2M gene was known to play key role in mouse and human immune cell development and/or function (see teachings from Koller and Ardeniz).
Conclusion
No claim is allowed.
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/MATASHA DHAR/Examiner, Art Unit 1632