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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/07/2025 has been entered.
Election/Restrictions
Claims 3-4 and 21, previously withdrawn by restriction, have been amended to be dependent from the independent and elected claim 6. Therefore, claims 3-4 and 21 are no longer considered withdrawn.
Status of the Claims
Claims 3-4, 6-11, 13-19, and 21, and 24-26 are currently pending.
Claim 21 has been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.
Claims 3, 4, 6, 17, and 21 are amended.
Claims 1-2, 5, 12, 20, and 22-23 are cancelled.
Claims 3-4, 6-11, 13-18, 21, and 24-26 have been considered on the merits.
Withdrawn Rejections
The rejections made under 35 U.S.C. 103 have been withdrawn in light of the amendments made onto claim 6 submitted on 08/07/2025.
New and Maintained Rejections
Claim Objections
Claim 25 is objected to because of the following informalities: an “is” should be inserted between “potentiators” and “an” in line 1. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 3-4, 6-11, 13-18, 21, and 24-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method of inducing retinal regeneration through the administration of reprogramming potentiators in a Ascl1 overexpression transgenic mouse model, does not reasonably provide enablement for inducing retinal regeneration (i) through the administration of a nucleic acid encoding Ascl1 and a nucleic acid encoding one or more reprogramming potentiators, (ii) through any transfection technique (including any vector type and/or any route of administration into the retina), and in (iii) any mammalian retina. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Enablement is considered in view of the Wands factors (MPEP 2164.01(a)). The court in Wands
states: "Enablement is not precluded by the necessity for some experimentation such as routine
screening. However, experimentation needed to practice the invention must not be undue
experimentation. The key word is 'undue,' not 'experimentation.' " (Wands, 8 USPQ2d 1404). Clearly,
enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation
required to make or use the invention. "Whether undue experimentation is needed is not a single,
simple factual determination, but rather is a conclusion reached by weighing many factual
considerations." (Wands, 8 USPQ2d 1404). The factors to be considered in determining whether undue
experimentation is required include: (1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the
invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims. While all of these factors are considered, a
sufficient amount for a prima facie case are discussed below.
(1) The nature of the invention
The specification describes the invention as a method of inducing regeneration of the retina through increasing the expression of Ascl1 and reprogramming potentiators that help stimulate new neuron production from Muller Glia (MG) to replace the degenerated neurons in diseased retinas.
(2) the breadth of the claims:
Independent claim 6, and its dependents, broadly encompass a method of inducing retinal regeneration in a mammalian subject through administering to a subject a nucleic acid molecule comprising a nucleic acid (NA) sequence encoding Ascl1 and a NA sequence encoding one or more reprogramming potentiators selected from one or more of either HDAC or STAT inhibitors and/or microRNA 25, and wherein Ascl1 induces neurogenesis of MG-derived neurons. However, the claims are not limited to administering Ascl1 along with reprogramming potentiators under specific conditions described in the specification. Instead, the claims broadly encompass administering an NA encoding Ascl1 and an NA encoding reprogramming potentiators, without limitation to transfection technique/dosage or type/species of mammalian retina. Thus, the claims taken together with the specification imply that the method is able to induce retinal regeneration in any mammal, including a human subject, and through any transfection technique/dosage, which is unpredictable.
(3) The state of the prior art
The prior art shows that mammalian loss of retinal cells is an irreversible process, however certain non-mammalian vertebrates are able to regenerate retinal neurons through MG cells which are able to re-enter the cell cycle and reprogram into neurogenic progenitors upon injury or disease. The art shows that in vitro over expression of Ascl1 in mice MG cells was able to reprogram the cells into neurogenic progenitors. Administration of Ascl1, with or without reprogramming potentiators, to the in vivo human retina have not been demonstrated in this context.
(4) the predictability or unpredictability of the art:
The claims embody a method of inducing retinal regeneration through the administration of nucleic acid sequences encoding Ascl1 and one or more of HDACi, STATi, or microRNA 25 into any mammalian subject, which is unpredictable.
This method is found to be unpredictable with regards to inducing retinal regeneration (i) through the administration of a nucleic acid encoding Ascl1 and a nucleic acid encoding one or more reprogramming potentiators, (ii) through any transfection technique including any vector type and/or any route of administration into the retina, and in (iii) any mammalian retina. The instant method of the specification only provides guidance on inducing retinal regeneration through the administration of reprogramming potentiators in a transgenic Ascl1 overexpression mouse model, and through in vitro MG cells taken from the transgenic Ascl1 overexpression mouse model. Additionally, an injection of a subject, mouse or other, with a nucleic acid encoding Ascl1 and a nucleic acid encoding one or more reprogramming potentiators was not completed.
The specification only provides guidance for the administration of either/both of an HDACi or STATi to a mouse model which is an inducible overexpression of Ascl1 model by the provided methods in examples 1-2. The specification does not provide guidance for the administration of a NA encoding Ascl1, with or without reprogramming potentiators, into the retina of a mammal, mouse or other. The specification does not provide guidance for the method to be performed in any mammal, therefore the specification does not provide guidance for the method to be performed in humans. The specification does not provide guidance for the method to be conducted through any conceivable means of transfecting cells.
(i) Unpredictability in the administration of a nucleic acid encoding Ascl1 and a nucleic acid encoding one or more reprogramming potentiators
The method specifically claims, “administering to a retina of the subject a nucleic acid molecule comprising a nucleic acid sequence encoding Achaete-scute-like family bHLH transcription factor 1 (Ascl1) as a nucleic acid sequence encoding one or more reprogramming potentiators” (independent claim 6), however it appears all in vivo examples provided relied on a transgenic mouse which contained an inducible overexpression of Ascl1. This is significantly distinct from the claim language because the claim requires both Ascl1 and the reprogramming potentiators be administered together, and into the retina specifically. The examples provided in the specification do not at any point administer both the Ascl1 and reprogramming potentiators into the retina of a mouse or other subject. It is well known in the art of gene delivery that available inducible transgenic animal models provide a stable inducible expression pattern that is well characterized. In contrast, local/retinal administration of nucleic acids, which is the claimed method of administration, is far more unpredictable without specific guidance, especially without any limitation regarding the type of vector employed nor the route of administration.
Hurst et al (Adv. Funct. Matter. 2025) teaches that “[g]enerally, non-viral gene transfer to non-dividing cells is notably less efficient than viral delivery, especially in the eye, where physical barriers such as the vitreous, inner/outer limiting membranes, and inter-photoreceptor matrix significantly hinder cellular access” (pg. 2, col. 2, para 1). In this statement Hurst exemplifies that the currently claimed method of administering the nucleic acids containing Ascl1 and reprogramming potentiators is a method that is “notably less efficient than viral delivery”. Additionally, Hurst states that “high concentrations of glycosaminoglycans found through-out the eye, particularly in the vitreous, tend to sequester DNA, causing aggregation and further impeding cellular uptake” (pg. 2. Col. 2, para 1). Therefore, Hurst supports that the method as instantly claimed is highly unpredictable in its ability to reach in vivo MG cells. Further, Hurst supports that without explicit guidance from the instant specification, the assumption that the Ascl1 containing nucleic acid would reach MG cells in vivo and produce a similar result to a fully characterized inducible transgenic model of Ascl1 overexpression is wholistically unpredictable and a skilled artisan would have to perform undue experimentation to make and use the invention.
Therefore, the method is found unpredictable in its ability to induce retinal regeneration in a mammalian subject through the administration of an NA encoding Ascl1 and an NA encoding reprogramming potentiators.
(ii) Unpredictability in any transfection technique (including vector and/or route of administration)
With regards to the unpredictable nature of the method regarding the type of vector employed and the route of administration, independent claim 6 does not limit the vector type nor route of delivery, dependent claim 11 limits the vector to be either viral or non-viral, dependent claim 13 limits the vector to be either an AAV vector or a lentiviral vector, and dependent claim 16 limits the route of delivery to either intravitreal or subretinal injection. Therefore, the dependent claims do not limit the vector type or delivery method to a single species of vector type or route of delivery.
With regards to non-viral delivery methods, Hurst et al (Adv. Funct. Matter. 2025) teaches that “[g]enerally, non-viral gene transfer to non-dividing cells is notably less efficient than viral delivery, especially in the eye, where physical barriers such as the vitreous, inner/outer limiting membranes, and inter-photoreceptor matrix significantly hinder cellular access” (pg. 2, col. 2, para 1). In this statement Hurst exemplifies that the currently claimed method of administering the nucleic acids containing Ascl1 and reprogramming potentiators is a method that is “notably less efficient than viral delivery”. Additionally, Hurst states that “high concentrations of glycosaminoglycans found through-out the eye, particularly in the vitreous, tend to sequester DNA, causing aggregation and further impeding cellular uptake” (pg. 2. Col. 2, para 1). Therefore, Hurst supports that the method is unpredictable in its ability to induce retinal regeneration through a non-viral delivery method.
Regarding any viral vector as applicable to the current invention is unpredictable due to the variable characteristics of different viruses, and subsequently any viral vector. Viral vectors, in general, have highly variable physical characteristics which can vary the degree of accumulation inside cells significantly, and this is a challenge to developing approaches with predictable yield outcomes (Capra et al, McKinsey & Company, 2022; Section 2, lines 5-8). The unpredictable nature of viral vectors is further maintained throughout specific subsets of vectors from the same virus. In reference to experimentation on AAV vectors’ ability to transduce various cell types, Ellis teaches that “there are clear qualitative differences for the ability of different serotypes to transduce different sub-types giving general guidance on the best serotypes to use and that a priori prediction is not always possible” (Ellis et al, Virology Journal, 2013, 10:74; pg. 2, column 2, lines 18-22). This further supports that even narrowing to a specific virus vector genus, such as all AAV vectors, still leaves the instant invention unpredictable. Thus, without limiting the viral vector type, the instant invention is rendered unpredictable and a skilled artisan would have to perform undue experimentation to make and use the invention. Furthermore, Carvalho et al (Human gene Therapy, 2018) teaches that most AAV serotypes will result in transduction of the retinal pigment epithelium, however “[i]nner retina cell types have proven a more challenging target” (pg. 772, col 1, para 1). Carvalho teaches that the “majority of AAV-based ocular clinical trials have used AAV2 so far, and in at least one of these trials, the lack of functional improvement has been attributed to low levels of transgene expression, an effect that could be countered by using a different serotype with higher capacity for photoreceptors targeting and/or transduction” (pg. 772, col. 1, para 2). Therefore, Carvalho supports that without guidance from the instant specification on the vector type employed in the method, one would need to perform undue experimentation to make or use the invention as claimed.
Regarding the unpredictability of any route of administration, Xue et al (Eye, 2017, 31, 1308-1316) teaches about human AAV vector based retinal gene therapies. Xue teaches that “the least unpredictable of all the variables is the surgical delivery to the subretinal space, which must minimize trauma but maximize viral transduction of the target cells” (intro, para 2). In this statement, Xue exemplifies that the route of delivery is a factor in the unpredictability of the instant method in that the route of administration must maximize the viral transduction of the target cells. The actual contents of the injection require specific instruction, beyond a NA encoding Ascl1 and an NA encoding one or more reprogramming potentiators, and optimization depending on the recipient of the method of retinal regeneration. Additionally, Ghoraba et al (Clinical Ophthalmology, 2022) teaches that “different modes of delivery, whether intravitreal, subretinal or suprachoroidal, induce variable immune and inflammatory reactions. Given the etiological complexity of these responses and their detrimental effect on gene therapy efficacy, many studies have tried to analyze the factors that influence these responses” (pg. 1754, para 4). Ghoraba supports that the route of administration plays a large role in the uptake of and reaction to the therapy. Therefore, Xue and Ghoraba support that the instant method is unpredictable without guidance from the instant specification on the route of administration.
(iii) Unpredictability in any mammalian retina
Regrading the unpredictability of translating the instant invention into any mammal, Xue teaches that “unlike conventional drug treatments, retinal gene therapy is a complex biological treatment whose efficacy could depend on a multitude of factors, including optimized AAV vector design, high quality vector production and intervention at an appropriate stage of the disease” (Intro, para 2). Therefore, Xue is generally supporting that minimal data supporting the instant method in humans limits the ability of the ordinary artisan to complete the method of retinal regeneration without the existence of a working example in humans specifically. Due to the differences between mice and humans, the examples in the specification can only provide optimized vector design and disease intervention catered to mice as the subject. Ghoraba also supports that the translation of the method from mice into humans is highly unpredictable in outcome because “[r]ecently available data from clinical trials have shown that ocular gene therapy has been associated with severe ocular inflammation with resultant vision loss” (pg. 1754, para 5). Finally, Shamshad et al (Vision Research, 2023) states that “[a]lthough numerous preclinical trials using animal models of IRDs have demonstrated successful outcomes following AAV-mediated gene delivery, many of these studies fail to translate into successful outcomes in clinical trials” (pg. 1, col. 1, para 2). Shamshad even states that “While animal models are well-suited for investigating monogenic disorders given the relative ease of creating mutant strains, the discrepancies between prior animal model outcomes and human clinical trial outcomes suggest the need for a better understanding of the translatability between these drug development stages” (pg. 4, col. 2, last para). In this statement, Shamshad is defining the complexity between translating a human disease model in mice to the actual treatment of humans. Shamshad also states “it may be difficult to accurately predict correct gene targets in humans using results from mice models. Translatability between species is further complicated by the dissimilarities in the underlying pathophysiology of diseases. While IRDs often arise from a mutation in a given gene, their ultimate clinical presentations are modified by factors related to age, gender, and genetic background; it is therefore unlikely that knockout mice will fully recapitulate the complexity of human IRD presentation.” Therefore, Xue, Ghoraba, and Shamshad strongly suggest that the instant method is unpredictable for use in humans and mammals other than mice, without specific guidance from the instant specification on how to successfully apply the method in humans and other mammals.
Therefore, this method is found to be unpredictable with regards to inducing retinal regeneration (i) through the administration of a nucleic acid encoding Ascl1 and a nucleic acid encoding one or more reprogramming potentiators, (ii) through any transfection technique including any vector type and/or any route of administration into the retina, and in (iii) any mammalian retina.
(5) The relative skill of those in the art:
The relative skill of those in the art is high.
(6) The amount of direction or guidance presented
The specification details examples 1 and 2. Example 1 details experimental procedure and data showing that the STAT pathway activation reduces the efficiency of Ascl1-mediated reprogramming in MG cells, and how the Ascl1-mediated chromatin remodeling is required for neural regeneration from MG cells in adult mouse retina. Specifically, Example 1 provides guidance for the use of a transgenic mouse model of inducible Ascl1 overexpression, which is induced by injections of tamoxifen. Additionally, Example 1 provides guidance that MG cells that are induced to overexpress Ascl1 in vitro in the presence of a STAT inhibitor, result in enrichment of Ascl1 binding neuronal genes ([0190]).
Example 2 describes the miRNA-based induction of Ascl1 expression and conversion of approximately 40% of mature MG into a neuronal phenotype in vitro. Additionally, Example 2 states that primary dissociated cell cultures of MG were used to test the effect of each miRNA on MG.
(7) the presence or absence of working examples:
With specific regards to working examples, the specification teaches a mouse model of inducible Ascl1 overexpression as the mouse model employed in the method. This model does not appear to encompass a working model of the claimed invention as the claimed invention requires that a NA encoding Ascl1 be administered into the retina, and not an inducible transgenic overexpression of Ascl1 in mice. Otherwise, the examples heavily rely upon in vitro MG cell cultures, both from primary mouse MG cells and mouse MG cell lines.
(8) The quantity of experimentation necessary:
Considering the state of the art as discussed above and the high unpredictability and the lack of
guidance provided in the specification, one of ordinary skill in the art would be burdened with undue
experimentation to use the claimed invention within the broad scope as instantly claimed.
It is the examiner’s position that one skilled in the art could not practice the invention
commensurate in the breadth of the claims without undue experimentation. Therefore, claim 6
and its dependents are rejected under 35 U.S.C. 112, first paragraph, for a lack of enablement.
Response to Arguments
Applicant’s arguments, see Remarks, filed 08/07/2025, with respect to the 35 U.S.C. 103 rejections, have been fully considered and are persuasive. All previous rejections have been withdrawn.
Conclusion
No claims are allowed.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONSTANTINA E STAVROU whose telephone number is (571)272-9899. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Paras can be reached on 571-272-4517. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CONSTANTINA E. STAVROU
Examiner
Art Unit 1632
/PETER PARAS JR/Supervisory Patent Examiner, Art Unit 1632