Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1, 22, 24-27, 29-33, 37, 42, 44, 46, and 49-53 are currently pending in this application.
Benefit of Priority Claim
Acknowledgement is made of applicant’s claim for the benefit of the prior-filed US application 62/649,057 and PCT/US2019/024603 under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c). As set forth fully below, all claims stand rejected under both 35 U.S.C. 112(a) for enablement and written description. As such, the specification (which incorporates by reference all of the priority documents) doesn’t have 35 U.S.C. 112 (a) support. Therefore, none of the priority documents can have 35 U.S.C. 112(a) support for the claims as the priority document is incorporated in its entirety by reference. See MPEP § 211.05 ("To be entitled to the benefit of the filing date of an earlier-filed application ... the disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later filed application in compliance with the requirements of 35 U.S.C. 112(a) ... ."). See also MPEP § 2152.06. See also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326 (Fed. Cir. 2008) ("a claim in a later application receives the benefit of the filing date of an earlier application so long as the disclosure in the earlier application meets the requirements of 35 U.S.C. § 112, 1st paragraph, including the enablement requirement, with respect to that claim."). See also MPEP § 2163.03(II). Therefore the earliest effective filing date of the claims is Aug. 25, 2020.
Previous Rejections
Status of the rejections:
The previous claim rejections under sections 112(a) are modified in view of applicant’s claim amendments.
Certain previous claim rejections regarding section 112(b) are withdrawn in view of applicant’s claim amendments
Claim Interpretation
The applicant has acted as her own lexicographer to specifically define the term of “exosome” contrary to its ordinary meaning as a membranous particle having a diameter (or largest dimension where the particles is not spheroid) of between about 10 nm to about 5,000 nm (instant [0061]). Thus throughout the claims, the term “exosomes” is interpreted as encompassing microvesicles having a size of 10-5000 nm as oppose to the more restricted definition known in the art of diameters of only about 30-200 nm, and never as large as 5000 nm (see e.g., Paulaitis et al., Langmuir 34: 9387-93 (2018) at pg. 9387).
In claims 1 and 22, the phrase “to induce protein expression” is interpreted to require de novo protein synthesis (i.e., translation via ribosome) occurs in an exosome composition, such as an acellular composition comprising only highly purified exosomes.
In claim 1, the phrase “deliver the therapeutic protein to the site of the breast cancer” is interpreted to require a delivering of the therapeutic protein to the site such that the protein contacts a breast cancer tissue or cell in order to treat the breast cancer.
In claim 22, the phrase “deliver the therapeutic agent to the site” is interpreted to require a delivering of the therapeutic agent to the site such that the agent contacts a breast cancer tissue or cell in order to treat the breast cancer.
In claim 30, the term “CRISPR/Cas system” regarding a type of “gene editing system” is interpreted to encompass (1) a CRISPR/Cas protein and a polynucleotide(s) encoding a cognate gRNA (e.g., a crRNA tracrRNA fusion or a multimeric gRNA comprising tracr and tracr-mate polynucleotides); (2) a CRISPR/Cas protein and a gRNA (e.g., in a molecular complex); or (3) a polynucleotide or set of polynucleotide(s) (e.g., a vector) encoding a CRISPR/Cas protein and a gRNA (see e.g., instant [00158]-[00170]; [0081]).
Claim Rejections - 35 USC § 112(a), New Matter (new)
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, 22, 24-27, 29-33, 37, 42, 44, 46, and 49-53 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 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 wherein the breast cancer “is a growth factor-expressing breast cancer.” The method of treating a growth factor-expressing breast cancer in a patient lacks support in the application as filed and thus constitutes new matter.
37 CFR 1.118(a) states “No amendment shall introduce new matter into the disclosure of an application after the filing date of the application”. In the instant case, the recitation of the limitation “a growth factor-expressing breast cancer” (Claim 1 or 22) is considered new matter. Upon review of the instant specification, examiner could not find explicit or implicit support for this limitation in the instant filing or in any priority document.
Thus, at the time the application was filed, an Artisan of skill would not recognize from the disclosure that Applicant was in possession of a method of treating a growth factor-expressing breast cancer in a patient.
MPEP 2163.06 notes “If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112, first paragraph-written description requirement”. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981) teaches that “Whenever the issue arises, the fundamental factual inquiry is whether a claim defines an invention that is clearly conveyed to those skilled in the art at the time the application was filed…If a claim is amended to include subject matter, limitation or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application. MPEP 2163.06 further notes, “When an amendment is filed in reply to an objection or rejection based on U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not “new matter” is involved. Applicant should therefore specifically point out the support for any amendment made to the disclosure”.
Applicant points to [0084], [0224]-[0225], and Examples 4-5 and 7 as supporting the claim amendments; however, examiner could not find explicit or implicit support for this limitation in these specific portions. This is a new matter rejection.
Claim Rejections - 35 USC § 112(a) - Written Description (modified)
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, 22, 24-27, 29-33, 37, 42, 44, 46, and 49-53 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.
The claimed invention as a whole is not adequately described if the claims require essential or critical elements that are not adequately described in the specification and that is not conventional in the art as of applicant’s effective filing date. Possession may be shown by actual reduction to practice, clear depiction of the invention in a detailed drawing, or by describing the invention with sufficient relevant identifying characteristics such that a person skilled in the art would recognize that the inventor had possession of the claimed invention. Pfaff v. Wells Electronics, Inc., 48 USPQ2d 1641,1646 (1998).
In making a determination of whether the application complies with the written description requirement under 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, it is necessary to understand what Applicant is claiming and what Applicant has possession of.
Claims 1, 22, 24-27, 29-33, 37, 42, 44, 46, and 49-53 are directed to methods of treating a growth factor-expressing breast cancer in a patient via administering exosomes transfected with a therapeutic agent or nucleic acid encoding a therapeutic protein wherein the exosomes have epidermal growth factor receptor (EGFR) on their surface (EGFR-expressing exosomes) and whereby the administered exosomes are attracted to a site of the breast cancer in the patient by a gradient of an epidermal growth factor (EGF), such as wherein the EGF concentration gradient peaks at the site of the breast cancer.
Growth factor-expressing breast cancer providing an EGF gradient at a site of cancer or peaking at a site of breast cancer in a patient
The breadth of claims 1, 22, 24-27, 29-33, 37, 42, 44, 46, and 49-51 encompasses using any EGF gradient to attract administered exosomes in vivo to any site of any growth factor-expressing breast cancer in a patient.
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 fails to provide for this genus any clear description of any EGF gradients at a site of breast cancer capable of attracting administered exosomes to the site. Nowhere does the application provide a working example for treating a single cancer in a patient whereby administered exosomes expressing an EGFR are attracted in vivo to any cancer-related site in the patient, such as a tumor or metastatic node. While the specification describes in vitro data in Example 6 that MDA-MB-231 derived exosomes expressing EGFR concentrate along an artificial EGF gradient in a Boyden chamber, the described species lacks a sufficient nexus to the breadth of the genus of treating growth factor-expressing breast cancer using any in vivo EGF gradient to attract and deliver exosomes to a site of breast cancer in a patient.
The prior art teaches both EGF and TGFα are secreted by normal breast tissues and that EGF expression is higher in some breast cancer cell lines that are steroid receptor positive and/or respond to progestins (Murphy et al., Semin Cancer Biol 1: 305-15 (1999), IDS ref.; Ciardiello et al., Ann Oncol 2: 169-82 (1991), IDS ref.; at pg. 176, right col., 2nd para., to 177, 1st para.; pg. 178, left col., 2nd para.). The prior art is silent as to the existence of EGFR ligand gradients peaking at a particular site of breast cancer in humans as well as interventions or methods of creating EGF gradients peaking at a particular site of cancer cells in a subject in order to attract exosomes expressing a cognate EGFR on their surfaces. Furthermore, there is a lack of evidence in the specification as filed that an EGF gradient is naturally present or could be provided at a site of breast cancer in a patient, such as a tumor or metastatic node or with a peak EGF concentration specifically at the site.
While the instant specification at Example 7 describes exosomes enriching at tumor sites in a xenograft mouse model of human breast cancer (4T1) after intraperitoneal injection ([00212]), there is no evidence of an epidermal growth factor gradient in these mice or that such a gradient is attracting the exosomes to a cancer site. Instead, exosomes were observed not only at tumor sites, but also at sites in the lung, bone, and brain, albeit with less exogenous nucleic acid expression than in serum and tumors. The localization of the exosomes tested (i.e., in vivo fate of administered exosomes) could be decided by numerous other factors than an EGF gradient, such as size, dose (lung versus liver), the composition of lipid bilayers regarding lipids and surface charge, CD55, CD59, and integrins (lung versus liver) (see Shao et al., Int J Nanomedicine 15: 9355-71 (2020) at pg. 9359, left col., last para., to pg. 9360, left col., 1st para.). Tumor cell derived exosomes in particular are already known to distribute to cancer cells based on EGF-gradient independent mechanisms, such as the enhanced permeability and retention (EPR effect) and homotypic targeting. Thus, homotypic targeting of the breast cancer derived exosomes tested (MDA-MB 231) in tumor bearing mice are expected to preferentially target these growth-factor expressing breast cancer cells (4T1) regardless of any EGF gradient. However MDA-MB 231 derived exosomes are not necessarily expected to target esophageal, head and neck, ovarian, cervical, bladder, or lung cancers by homotypic mechanisms.
The skilled artisan could not rely upon the disclosure in the specification such that the specification would sufficiently describe that Applicant was in possession of a method for treating breast cancer by the recited methods requiring attracting exogenously delivered exosomes to a site of breast cancer in a patient by an EGF gradient thereby delivering the cargo of the exosomes to cells at that site.
While there is evidence of targeting endogenous breast cancer cells with breast cancer cell derived exosomes (Example 7), there is a lack of evidence in the specification and the prior art as to the mechanism of this attraction, such as a comparison of showing attraction (improved attraction) using exosomes lacking EGFR. Further, it is unpredictable that each type of growth factor-expressing breast cancer reliably produces a cancer site in a subject inherently having an EGF gradient to successfully attract administered exosomes in vivo to that site for delivery. There is unpredictability for such broad methods for treating breast cancer because the prior art and instant application are silent as to whether any breast cancers cause epidermal growth factor gradients in patients such that the gradient can predictably attract exosomes expressing epidermal growth factor receptor to a specific breast cancer site(s) for exosome cargo delivery, and even if the concentration peaks at a site of breast cancer as in claims 52-53.
EGF gradient at a site of cancer to “attract” exosomes to the site thereby delivering the exosome cargo and treating the growth factor-expressing breast cancer
The breadth of the claims encompasses using any EGF gradient present at a site of growth factor-expressing breast cancer to attract administered exosomes in vivo to the site, either to deliver any therapeutic agent or express a gene editing system from a transfected nucleic acid cargo.
The prior art is silent as to methods of using EGF gradients peaking at a particular site of cancer cells (e.g., a tumor) in a breast cancer patient to attract exosomes expressing a cognate epidermal growth factor receptor on their surfaces.
There is a lack of evidence in the specification as filed that any EGF gradient at a site of breast cancer attracts any type of administered exosome. While gradients peaking at or near a cancer site could logically provide for such attracting, gradients positioned far away from any site of cancer cannot predictably provide such function. For example, a gradient that is decreasing at the site of cancer still represents an epidermal growth factor gradient, albeit centered far away from the site. For example, although some gradients may attract exosomes past cancer sites all the way to non-cancer sites wherein the EGF concentration peaks. While the specification describes data in Example 6 that EGFR-expressing exosomes concentrate near the highest EGF of an artificial EGF gradient in an in vitro Boyden chamber, the described species lacks a sufficient nexus to the breadth of the genus of any growth factor-expressing breast cancer providing an EGF gradient at a site of breast cancer in a patient, which encompasses gradients peaking at non-cancer sites wherein the tail of the gradient extends through a breast cancer site.
The skilled artisan could not rely upon the disclosure in the specification such that the specification would sufficiently describe that Applicant was in possession of a method for treating growth factor-expressing breast cancers by the recited methods requiring attracting and delivering exogenously delivered exosomes having EGFR on their surface to a site of breast cancer in a patient by the existence of an EGF gradient “at a site” of such cancer in the patient, even if the gradient peaks at the site.
Response to Arguments
Applicant’s arguments in the response filed 11/18/25 have been fully considered but not found persuasive.
Applicant traverses the previous 112(a) rejections by arguing in part that the prior art teaches EGFR ligands are expressed by breast cancers and, thus, a skilled artisan would reasonably expect EGFR-expressing exosomes to be attracted to breast cancer sites by such an EGFR ligand expression pattern (pg. 6). This evidence is not persuasive because Murphy teaches EGF expression is higher only in certain breast cancer cell lines that are also steroid receptor positive and/or respond progestins; however, the breast cancer cells (4T1) used in the as evidence in the instant application are categorized as triple negative and, thus, neither steroid receptor positive nor progestin responsive. Thus, there is no evidence provided that these human breast cancer cells (4T1) produce a gradient of EGF in a patient, or even a mouse model. Furthermore, even if there is a gradient of an EGF ligand present, there is no evidence it is capable of attracting the EGFR-expressing exosomes recited in the claims in a patient. In addition, Ciardiello teaches the EGFR ligand TGFα is expressed in about 50-70% of certain primary human breast tumors and secreted by normal human mammary cells (at Abstract); however, Ciardiello does not show the expressed TGFα is ever secreted in any long range fashion, as this ligand functions locally only adjacent cells as a paracrine growth factor. Finally, there is no evidence provided that infiltrating mouse TAMs are present in the human breast cancer tumors (4T1) or that these TAMs produced a gradient of EGF in the mouse model shown, and even if there is a TAM-produced EGF ligand gradient present, there is no evidence it is capable of attracting the EGFR-expressing exosomes.
Applicant traverses the previous 112(a) rejections by arguing that a skilled artisan can extrapolate in vitro results to reasonably predict in vivo success, at least in some cases (pg. 6-7), and particular for the instant claims based on the in vitro evidence shown in instant Example 6. However as noted above and in the previous rejection of record, that while the specification describes data that EGFR-expressing exosomes concentrate near the highest EGF of an artificial EGF gradient in an in vitro Boyden chamber, there is a lack of evidence such a gradient occurs in vivo near a breast cancer site in a patient. It is not the opinion of this office action that an EGF gradient in a patient would be unsuccessful at attracting exogenously administered EGFR-expressing exosomes but rather there is unpredictability and lack of evidence such EGF gradients exists in vivo in any type of breast cancer subject, and thus the applicant has not established possession of a patient providing an EGF gradient at a site of cancer.
Applicant also traverses the previous 112(a) rejections by arguing that the instant application provides at Example 7 empirical evidence that EGFR-expressing MDA-MB-231 exosomes are attracted to sites of human breast cancer (tumors) in a xenograft mouse model (pg. 7). However, the mere localization of EGFR-expressing exosomes can be explained by various alternative hypotheses, and the mechanism of localization is not clearly based on any EGF gradient providing an attraction to the exosomes. In fact, there is no evidence of any EGF gradient in these mice (e.g., peaking at a site of cancer) or that such a gradient is attracting the exosomes to a cancer site. The localization of the exosomes tested (i.e., in vivo fate of administered exosomes) could be decided by numerous other factors than an EGF gradient. Tumor cell derived exosomes in particular were already known to distribute to cancer cells based on EGF-gradient independent mechanisms, such as the enhanced permeability and retention (EPR effect) and homotypic targeting. Thus, homotypic targeting of the breast cancer derived exosomes tested (MDA-MB 231) in tumor bearing mice are expected to preferentially target breast cancer cells (4T1) regardless of any EGF gradient. Thus, applicant’s evidence has not established possession of a patient providing an EGF gradient at a site of cancer that functions to attract EGFR-expressing MDA-MB-231 exosomes to the site to deliver a therapeutic protein or agent comprised by the exosome to the site.
35 USC § 112(a) – Scope of Enablement (modified)
Claims 1, 22, 24-27, 29-33, 37, 42, 44, 46, and 49-53 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification does not enable a method of treating breast cancer by administering an exosome composition to a patient with a growth factor-expressing breast cancer.
The office has analyzed the specification in direct accordance to the factors outlines in In re Wands. MPEP 2164.04 states: “[W]hile the analysis and conclusion of a lack of enablement are based on factors discussed in MPEP 2164.01(a) and the evidence as whole, it is not necessary to discuss each factor in written enablement rejection.” These factors will be analyzed, in turn, to demonstrate that one of ordinary skill in the art would have had to perform “undue” and “unreasonable” experimentation to make and/or use the invention and therefore, applicant’s claims are not enabled. It is noted that all of the Wands factors have been considered with regard to the instant claims, with the most relevant factors discussed below.
The Breadth of the Claims
The instant claims are directed to methods of treating a growth factor-expressing breast cancer in a patient via a method comprising stimulating exosomes with recombinant EGF “to induce protein expression by the exosomes” and whereby an epidermal growth factor gradient in the patient attracts the exosomes to a site of breast cancer functions to deliver the therapeutic protein to that site. As noted in a previous section above, the phrase “to induce protein expression” is interpreted as encompassing de novo protein synthesis (i.e., translation via ribosome) occurs in the exosome composition, such as outside of the exosomes or independently of an exosome. Also, the phrase “deliver the therapeutic protein to the site” is interpreted to require a delivering of the therapeutic protein to the site such that the protein contacts a breast cancer tissue or cell in order to treat the breast cancer.
The scope of the claims encompass acellular exosome compositions comprising only highly purified and/or isolated exosomes for the administering step (see instant [0062]-[0067]). Thus, the claims are broad in that the method fails to require the therapeutic protein be incorporated or encapsulated inside any exosome administered to the patient. Furthermore, the claim are broad in that the breast cancer being treated need not express the epidermal growth factor of the gradient but rather must only express a growth factor of some kind.
The State of the Prior Art and the Predictability or Lack Thereof in the Art
The prior art (Kalluri (WO2015085096A1, PCT/US2014/068630); IDS ref.) teaches exosomes preparations derived from immortal cells (MCF10A and MDA-MB-231) which exhibit evidence of de novo protein synthesis using an electroporated plasmid encoding an exogenous protein (FIG. 6-7; [00176]-[00177]). Kalluri suggests exosome compositions have the capacity “to synthesize proteins de novo, independently from their original cells” and can “deliver newly synthesized proteins” to cells in vitro (id.). However, nowhere does Kalluri show a stimulation of protein expression using any growth factor, wherein the exosomes have EGFR on their surface, or wherein a protein cargo is delivered in vivo to a site of breast cancer in a patient, e.g., a site defined by the presence of a epidermal growth factor concentration gradient.
Further as noted by the instant application, different subpopulations of exosomes may possess distinct molecular characteristics ([0045]; Willms et al., 2016; IDS ref.) such that only a small subset and/or certain types of exosomes may possess the capacity for de novo protein synthesis purportedly observed by Kalluri with exosomes of only two cell types (MCF10A and MDA-MB-231). Furthermore, the International Society for Extracellular Vesicles (ISEV) warns that extracellular vesicles of 10-1000 nm are difficult to work with reliability due to problems with nomenclature, reporting, purity and characterization, such as due to ascribing specific functions based on crude, potentially contaminated, and heterogeneous preparations and/or failure to follow community recommended scientific methods (Thery et al., J Extracell Vesicles 7: 1535750 (2018) at Abstract, Table 4).
As there is no supporting evidence in the prior art beyond a single patent application first published in 2015 involving one of the instant inventors and not appearing to follow the later recommended methods of Thery at Table 4, the disclosure provided by the applicant must encompass a wide area of knowledge to a reasonably comprehensive extent to guide to how to make and use exosome preparations capable of de novo protein expression upon stimulation (e.g., to express and encapsulate a therapeutic protein as required in claim 1). The cell origin and purity of the exosomes is not limited in the claims and thus encompasses exosomes secreted or isolated form any cell type (e.g., from any body-fluid (claims 24-25)) and at the highest exosome purity levels known in the art, such as exosomes purified after the stimulating step completely lacking any therapeutic protein due to a lack of encapsulation or conjugation.
In view of claim 50, claims 1, 22, 24-27, 29-33, 37, 42, 44, 46, 49, and 51-53 encompass wherein the exosomes are isolated from any tumor cell, such as any lung cancer cell. The prior art teaches lung cancer cells produce EGFR+ exosomes (TEXs) which intrinsically function to suppress immune responses in vivo resulting in a hypothesis to inhibit EGFR transmission of EGFR+ exosomes to treat cancer (Takaoka, Nat Immunol 19(3): 207-8 (2018) at pg. 207, right col., last para., to pg. 208, last para.).
The Amount of Direction or Guidance and Absence of Working Examples
The instant application shows evidence that exosomes preparations purified from cancer or immortalized mammalian cells (MDA-MB-231 or MCF10A) comprise EGFR and the machinery required for translation and are capable of cell-independent protein synthesis (Examples 4-5; Table 7; FIG. 1-5 and 10-13; [0030]-[0031]; [0039]). More specifically, the use of a GFP, Ova, or luciferase expression plasmid electroporated into isolated exosome compositions (enriched for exosomes 30-200 nm) resulted in a baseline de novo protein synthesis as a result of both transcription and translation by “exosome” compositions made from cell culture supernatants prepared by ultracentrifugation and suspension in PBS (Examples 1, 4-5; FIG. 4-5; Melo et al., Cancer Cell 26: 707-21 (2014)). Relevantly, adding recombinant human EGF (rhEGF) at 500 or 1000 ng/mL to MDA-MB-231 exosome preparations and incubating for 48 hours at 37° C (stimulating) resulted in an increase (about x2) in the amount of de novo GFP protein synthesis from the electroporated expression plasmid (Example 5; FIG. 5E) or a general increase in de novo protein production by MDA-MB-231 or MCF10A exosome preparations (Example 2, FIG 2D-G).
Thus, the instant application presents only a single working example of “stimulating” with rhEGF using an exosome preparation isolated from a single cell type (triple-negative human breast adenocarcinoma cancer cells) by the ‘Melo’ method whereby increased protein expression from an exogenous transgene introduced by electroporation and driven specifically by a CMV promoter was observed in response to specific EGF-stimulation conditions ([0031], [0209]).
There is unpredictability in the effect of EGF in stimulating any exosome preparation, e.g., isolated from a non-cancer cell type, a non-breast cancer cell type, a non TNBC cell type, or even a cell type other than triple-negative human breast adenocarcinoma cancer cells or MDA-MB-231 cells. There is also unpredictability in EGF stimulations lasting less than 48 hours or at other than physiological conditions (e.g., temperatures other than 37° C). Furthermore, there is unpredictability of inducing protein expression from endogenous nucleic acids wherein the transfected agent is not a nucleic acid encoding the protein to be expressed. There is also unpredictability of inducing protein expression wherein the transfected agent is not a DNA transgene, e.g., an mRNA, or a DNA transgene utilizing a strong mammalian promoter, e.g., CMV. Finally, there is unpredictability when the exosomes are prepared by methods producing different purities/impurities than the “Melo” method exemplified in the single working embodiment.
There is unpredictability when the exosomes are obtained from any source, such as any body fluid or a cancer cell, when the breast cancer of the patient does not express EGF preferentially bound by the EGFR, and when the exosomes fail to encapsulate the therapeutic protein. In particular, if the exosomes are obtained from certain lung cancers then these exosomes may not only fail to treat cancer but make the cancer worse by suppressing the immune system in view of Takaoka.
The quantity of experimentation needed to make and/or use the invention:
In light of the lack of direction, guidance and working examples, it would require undue and unreasonable experimentation for one of ordinary skill in the pertinent art to achieve EGF-based stimulation and induction of any protein expression by an exosome composition that is unlimited by cell origin, purity and preparation. It would also require undue and unreasonable experimentation for one of ordinary skill in the pertinent art to achieve treating of breast cancer in patient using exosomes from any source, wherein the breast cancer does not express the epidermal growth factor of said gradient, and wherein the exosomes are from lung cancer cells. It would also require undue and unreasonable experimentation to achieve protein expression in the exosomes across the scope of the claims, such as to create an exosome expressed and encapsulated therapeutic protein. Because neither the instant specification, nor the prior art provides sufficient guidance as how make/use the claimed invention across the full breadth of the claims, it would require undue and unreasonable experimentation to practice the invention as broadly claimed.
It is noted that claim limitations limiting the source of the exosomes to MDA-MB-231 cells, to exosomes preparations produced by the “Melo” method, incubating for 48 hours at 37° C with at least 500 ng/mL EGF (as in the one working example), and wherein the breast cancer secretes an epidermal growth factor with high affinity to the epidermal growth factor receptor of the exosomes may be enabled by the instant application in view of the prior art of record, but the vast majority of method embodiments encompassed by the instant claims using diverse EGFR-expressing exosome preparations lack enablement for the reasons set forth above.
Response to Arguments
Applicant’s arguments in the response filed 11/18/25 have been fully considered but not found persuasive. Applicant traverses the previous enablement rejections (pg. 7-8) by arguing the instant application provides at FIGs 2D-G evidence that EGFR-expressing exosomes increased protein production and, further, that this is increased in response to stimulation by EGF as evidenced by FIGs 2D-G and 5E and [0225]. However nowhere does applicant show this protein expression is confined to the interior of the exosomes in FIGs. 2 or 5, and thus, it is more likely occurring in the exosome preparation independent of the exosomes, which would presumably be traveling in the subject to a site of cancer in the subject to deliver de novo expressed proteins. The evidence at [0225] is indicative of vector expression (GFP or OVA) but not that this expression occurs within the interior of an exosome. Instead, it is more likely to be occurring inside cells after internalizing the administered exosomes based on the strong CMV promoter and independent of prior EGF stimulation of an exosome preparation.
Thus, the evidence of record fails to establish an enabled method whereby exosomes produce any protein de novo inside of the exosomes (e.g., a therapeutic protein) such that upon administration of the exosomes to a patient the de novo produced protein could be delivered to a site of cancer. Rather, the evidence suggests the exosomes can deliver an expression vector to cells in a mouse model of cancer for expression of a transgene (Example 7). Moreover, the prior art teaches EGF is expressed in normal breast tissue but that EGF expression is higher in some breast cancer cell lines that are steroid receptor positive and/or respond progestins (Murphy et al., Semin Cancer Biol 1: 305-15 (1999), IDS ref.); however, the breast cancer cells (4T1) used in the working embodiment (Example 7; [0225]) are categorized as triple negative and, thus, neither steroid receptor positive nor progestin responsive. Thus there is no evidence provided that these human breast cancer cells produce a gradient of EGF in a patient, or even a mouse model. While the instant application provides written description of methods for detecting protein production in an EGFR-expressing exosome compositions (e.g. increased protein production due to EGF stimulation), as detailed above the skilled artisan would not reasonably predict this would occur inside exosomes.
Claim Rejections - 35 USC § 112(b) (maintained)
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.
Claim 49 is 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.
Claim 49 recites the relative term “about” regarding a measurable value of recombinant EGF protein concentration in ng/mL. A person of ordinary skill in the art reading the claim would not understand the metes and bounds of “about” across all situations because the instant application lacks a definition or standard for the term “about” regarding an EGF concentration. See MPEP 2173.05(b). Although the instant specification defines the term “about” to vaguely include the inherent variation or error for a measuring device or the method being employed to determine the value (at [0024]), this is not a definite standard for an EGF protein concentration that can be measured by various known means, e.g., ELISA, quantitative western, or mass spectroscopy, or even yet to be invented means, with each means having its own inherent precision, accuracy and variance that may have to be empirically determined upon making such an EGF concentration measurement in order to determine an “inherent variation of error.”
Response to Arguments
Applicant’s arguments in the response filed 11/18/25 (pg. 9) have been fully considered but not found persuasive. Despite the definition of “about” provided in the specification at [0024], this functional definition is ambiguous and unclear what the “inherent variation of error” for the device and/or method being employed to determine the value means for a recombinant EGF concentration of “about 500 ng/ml” or “about 1000 ng/ml.”
Claim Rejections - 35 USC § 112(d) (new)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 52-53 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 52 further limits claim 1 to wherein the “concentration peaks at a site of breast cancer” in the patient, which seems to imply a patient sub-selection process beyond growth factor expressing breast cancers but no active step is modified or added to the method of claim 1. Thus, performing the method of claim 1 is indicated by the claim language as not needing any modification to achieve claim 52.
Claim 53 further limits claim 22 to wherein the “concentration peaks at a site of breast cancer” in the patient, which seems to imply a patient sub-selection process beyond growth factor expressing breast cancers but no active step is modified or added to the method of claim 1. Thus, performing the method of claim 22 is indicated by the claim language as not needing any modification to achieve claim 53.
Thus, both of these dependent claims fails to further limit the subject matter of a claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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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/ERIC J ROGERS/Examiner, Art Unit 1638
/KEVIN K HILL/Primary Examiner, Art Unit 1638