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 .
DETAILED ACTION
Response to Amendment
The amendment filed 08/25/2025, amending claims 1, 6-11, 13, 15, 19, and cancelling claims 2, 4, 5, 17 is acknowledged. Claims 1, 6-11, 13, 15, and 19 are pending and under examination. Applicant’s amendments to the claims have overcome each and every claim objection, 112(b) rejection, and 112(d) rejection previously set forth in the Non-Final Office Action mailed 03/28/2025.
Claim Objections – New, necessitated by amendment
Claims 1 and 15 are objected to because of the following informalities:
For consistency, the examiner recommends either adding “human” in front of “TGFBR1” in lines 9 and 10, or remove “human” in front of “JAG1” in lines 9 and 10 of claim 1.
Claim 15 is missing “)” after “(ALGS” in line 2.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)- Written Description; New, necessitated by amendment
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, 6-11, 13, 15, and 19 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.
Claim 1 recites “a method of inducing transdifferentiation of a hepatocyte into a mature cholangiocyte comprising introducing a heterologous polynucleotide encoding human Transforming Growth Factor Beta Type I Receptor (TGFBR1) or human JAG1 into a hepatocyte of a human patient with a cholestatic disease or cholestatic injury under conditions where the expression level of heterologous TGFBR1 or human JAG1 coding region is greater than the wild- type level of expression the TGFBR1 or human JAG1 in the hepatocyte, thereby inducing transdifferentiation of the hepatocyte into a mature cholangiocyte”.
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 by their complete structure. To provide adequate written description and evidence of possession of a claimed genus, the specification must provide sufficient distinguishing identifying characteristics of the genus. The factors to be considered include disclosure of complete or partial structure, physical and/or chemical properties, functional characteristics, structure/function correlation, methods of making the claimed product, or any combination thereof. The disclosure of a single species is rarely, if ever, sufficient to describe a broad genus, particularly when the specification fails to describe the features of that genus, even in passing. (see In re Shokal 113USPQ283(CCPA1957); Purdue Pharma L.P. vs Faulding Inc. 56 USPQ2nd 1481 (CAFC 2000).
The court explained that “reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” The court found that applicant was advocating the latter, i.e., the impermissible importation of subject matter from the specification into the claim.). See also In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997).
The broadest reasonably interpretation of the claims encompasses in vivo, in vitro, and ex vivo contexts (claim 19 limits to in vivo), which includes but is not limited to in vitro cell culture, tissue culture, organoid models, and direct application to cells in a human.
The specification fails to provide further guidance on what is considered “a cholestatic disease or injury”, noting in [0009]:
In some embodiments, the injury, such as a tissue or organ injury, results from a disease, such as human Alagille syndrome (ALGS), biliary atresia, cystic fibrosis, alpha-1 antitrypsin deficiency, progressive familial intrahepatic cholestasis, arthrogryposis-renal dysfunction-cholestasis syndrome, trihydroxycoprostanic acidemia, trisomy 17,trisomy 18,trisomy 21, primary biliary cholangitis, primary sclerosing cholangitis, autoimmune hepatitis, acute rejection of liver transplant, chronic rejection of liver transplant, liver transplant ischemia, bone marrow transplant-induced chronic graft-versus-host disease, Hodgkin lymphoma, Langerhans cell histiocytosis, macrophage activation syndrome, cytomegalovirus (CMV) infection, reovirus type 3 infection, rubella infection, hepatitis C infection, hepatitis B infection, Epstein-Barr Virus (EBV) infection; microbe infection, sarcoidosis, or idiopathic adulthood ductopenia.
In some embodiments, the disease is human Alagille syndrome (ALGS), biliary atresia, cystic fibrosis, alpha-1 antitrypsin deficiency, progressive familial intrahepatic cholestasis, arthrogryposis-renal dysfunction-cholestasis syndrome, trihydroxycoprostanic acidemia, trisomy 17,trisomy 18, or trisomy 21.
In some embodiments, the disease is human Alagille syndrome (ALGS) wherein the expressible coding region introduced into hepatocytes of the patient encodes JAG1, JAG2, DLL1, DLL3, DLL4, NOTCHi, NOTCH2, NOTCH3, NOTCH4 or any one or more of the respective NOTCH intracellular domains.
In some embodiments, the disease is primary biliary cholangitis, primary sclerosing cholangitis, autoimmune hepatitis, acute rejection of liver transplant, chronic rejection of liver transplant, liver transplant ischemia, bone marrow transplant-induced chronic graft-versus-host disease, Hodgkin lymphoma, Langerhans cell histiocytosis, macrophage activation syndrome, infections (CMV infection, reovirus type 3 infection, rubella infection, hepatitis C infection, hepatitis B infection, Epstein-Barr Virus infection; microbe infection, sarcoidosis, or idiopathic adulthood ductopenia.
In some embodiments, the disease is human Alagille syndrome (ALGS), biliary atresia, cystic fibrosis, alpha-1 antitrypsin deficiency, progressive familial intrahepatic cholestasis, arthrogryposis-renal dysfunction-cholestasis syndrome, trihydroxycoprostanic acidemia, trisomy 17,trisomy 18, or trisomy 21.
In some embodiments, the disease is primary biliary cholangitis, primary sclerosing cholangitis, autoimmune hepatitis, acute rejection of liver transplant, chronic rejection of liver transplant, liver transplant ischemia, bone marrow transplant-induced chronic graft-versus-host disease, Hodgkin lymphoma, Langerhans cell histiocytosis, macrophage activation syndrome, infections (CMV infection, reovirus type 3 infection, rubella infection, hepatitis C infection, hepatitis B infection, Epstein-Barr Virus infection; microbe infection, sarcoidosis, or idiopathic adulthood ductopenia.
In some embodiments, the disease is human Alagille syndrome (ALGS), primary biliary cholangitis, or primary sclerosing cholangitis.
The breadth of the claimed genus of cholestatic diseases or injuries reasonably encompasses any disease or injury that impacts, is impacted by, or related to the flow of bile through the biliary system, including those that would not benefit from the formation of a bile duct. The examples provided in the specification only relate to Alagille syndrome (ALGS), which does not provide much guidance to an artisan on what all the undisclosed species of cholestatic diseases or injuries are. Claims 13 and 15 to further limit what the cholestatic disease or injury of the patient may be.
Further, there is no recitation in the claims or disclosure in the specification for an artisan on the route of administration(s), dose(s) (i.e., number of cells), formulation(s), etc. that is necessary/sufficient to “induce transdifferentiation of hepatocyte into a mature cholangiocyte” in a hepatocyte of a human patient with a cholestatic disease or injury. While Example 8 of the specification investigates whether activating TGFbeta signaling in hepatocytes enhances HpBD formation by intravenously injecting mice with an AAV8 vector expressing constitutively active TGFBR1 from the Ef1alpha promoter, no doses or formulations are recited. The same can be said for Example 9, where mice were intravenously injected with AAV8-CMV-Jag1 vectors.
Additionally, it is unclear from these examples whether human TGFBR1 and JAG1 were used. While Example 8 discusses whether the findings are relevant for human ALGS, pSMAD3 IF was used to determine if TGFbeta signaling is active in pBDs of regenerative nodules from liver samples of 2 patients.
Therefore, an artisan is unable to determine the necessary amount of heterologous polynucleotide encoding TGFBR1 or JAG1 into hepatocytes of a human patient with a cholestatic disease or injury, and what conditions lead to the expression of the heterologous TGFBR1 or JAG1 being greater than the wild-type level of expression of the TGFBR1 or JAG1 in the hepatocyte. Further, there is not enough necessary/sufficient guidance in the disclosure on what expression level is necessary to predictably induce transdifferentiation of the hepatocyte into a mature cholangiocyte.
Benenato (US2019/0275170; claims priority to PCT/USUS2017/033413, filed May 18, 2017, and provisional application 62/338,170, filed May 18, 2016) is considered relevant prior art for teaching mRNA therapy for the treatment of ALGS, where the mRNA administered in vivo encodes JAGGED1 and is encapsulated in lipid nanoparticles (Abstract; claim 1). Further, Benenato discloses a host cell or vector comprising the JAG1 polynucleotide [0156-0162; 0257] via a variety of viral and non-viral techniques [1254], and administering the polynucleotide to human cells such as HeLa cells, BJ fibroblast cells, and peripheral blood mononuclear cells [0434; 1258-1260]. Benenato also teaches administering a pharmaceutical composition comprising the mRNA encoding JAG1 as a single intravenous dose, which is sufficient to improve bile flow rate [0169]. Figs 16 and 17 (and corresponding [0186-0187]) also teach the expression of mRNA constructs encoding wild-type human JAG1 or mouse JAG1 in the liver of C678BL6 mice, and that the expression of wild-type human JAG1 increases with the dose of mRNA administered, and that wild-type human JAG1 has a relatively short half-life in the liver of the mice (see also Example 18, starting [1614], and Example 22, starting [1674]).
Chen, Simeng, et al. "Transforming growth factor β1 (TGF-β1) activates hepcidin mRNA expression in hepatocytes." Journal of Biological Chemistry 291.25 (2016): 13160-13174 is considered relevant prior art for teaching transfecting hepatocytes from human patients undergoing partial hepatectomy for metastatic liver tumors of colorectal cancer and hepatocytes from the livers of C56BL/6JRj mice with human recombinant TGF-B1. Additionally, Chen et al. injected AdTGFB1 into the tail vein of male C56BL/6JRj mice. Further, primary murine hepatocytes underwent adenoviral transduction to introduce ALK5 (also known as TGFBR1) (pg. 13161; “Experimental Procedures”). Chen teaches “To test whether TGF-B1 induces hepcidin in wild-type mice, adenovirus encoding constitutively active TGF-B1^223/225 or DL70–3 control virus was injected into C56BL/6JRj mice through the tail vein. Constitutively active TGF-B1^223/225 is preferentially expressed in hepatocytes after systemic intravenous
adenovirus vector injections (38, 39). 4 days after injection, hepatic porcine TGF-B1^223/225 mRNA was highly induced in the AdTGF-B1^223/225 injected group but was undetectable in the untreated and control virus-injected group (AdCON) (data not shown). Consistently, hepatic TGF-B1 signaling was activated, as evidenced by increased phosphorylation of Smad3 (Fig. 2A) and increased mRNA levels of the hepatic target gene Pai1 (Fig. 2C).We further observed a small increase of hepcidin mRNA levels in the liver, indicating that the hepcidin response to TGF-B1 is preserved in vivo (Fig. 2C).
In summary, Chen et al. showed that TGF-beta1 mRNA levels are increased in mouse models of iron overload and that TGF-beta1 contributes to hepatocyte hepcidin activation via an ALK5 and Smad1/5-dependent signaling pathway (pg. 13172, col 1, “The Role of TGF-B1-mediated Hepcidin Regulation”). Chen is silent on whether the introduction of TGF-beta1 induced transdifferentiation of the hepatocytes into mature cholangiocytes.
Delhove, Juliette MKM, et al. "Longitudinal in vivo bioimaging of hepatocyte transcription factor activity following cholestatic liver injury in mice." Scientific reports 7.1 (2017): 41874 is considered relevant prior art for the following teaching: “We compared the effects of modulating Notch signalling by transducing HepaRG (terminally differentiated hepatic cells derived from a human hepatic progenitor cell line that retain many characteristics of primary human hepatocytes; considered a biologically relevant alternative to primary human hepatocytes- see ThermoFisher NPL) cells with lentiviruses constitutively expressing the Notch inhibitor NUMB (HepaNumb) or the Notch ligand JAG1 (HepaJag) before subjecting them to our differentiation protocol. There was a significantly higher total area of hepatocyte-like colonies in HepNumb cultures (36.94%, n = 14) compared to HepaJag (22.05%, n = 12) (Fig. 7Bi and ii). The transgenes were expressed from a bicistronic lentiviral cassette co-expressing GFP from a truncated CMV promoter and transduction efficiencies ranged between 50 and 80%. Interestingly, we did not observe Jag1/GFP expression in any hepatocyte-like colonies (Fig. 7Ci and ii). We imply from these data that hepatocyte differentiation can only occur in HepaRG cells when Notch activity is repressed” (pg. 5, para 1).
Additionally, “In line with our previous observations, transduction was largely restricted to the liver but, unexpectedly, histological analysis revealed that transduced cells within the liver were almost exclusively hepatocytes. Specifically, we observed no evidence of cholangiocyte, HSC or HPC transduction pre- or post-BDL (BDL=bile duct ligation) inferring that we were not transducing bi-potent progenitor cells. This is consistent with increased hepatocyte colony formation in Numb transduced HepaRG cultures” (pg. 6, para 1).
Further, “Differentiated HepaRG cultures over-expressing JAG1 had less hepatocyte-like colonies. Interestingly, bi-potent HepaRG transduced with the JAG1-GFP expressing lentivirus were unable to differentiate to hepatocyte colonies. It is possible that this observation is a result of differential methylation of the CMV promoter in hepatocytes compared to cholangiocytes, or that hepatocyte differentiation is not possible in the presence of JAG1. With either situation hepatocyte-like colonies do not have exogenous JAG1 expression” (pg. 8, para 1; Fig. 7). In summary, Delhoye teaches varying outcomes/results when transducing hepatocyte-like cells with JAGGED-1, and is silent on whether the introduction of JAGGED-1 induced transdifferentiation into mature cholangiocytes.
Tang, Guiju, et al. "Reversal effect of Jagged1 signaling inhibition on CCl4-induced hepatic fibrosis in rats." Oncotarget 8.37 (2017): 60778 is considered relevant prior art for investigated the role of Jagged1 in the activation of hepatic stellate cells (HSCs) and development of hepatic fibrosis in rats. As part of the study Tang et al. transferred an rAAV1 vector comprising JAG1 to rat livers via injection into the tail vein. Upregulation of Jagged1 promoted HSC activation and increased the expression of the key EMT proteins fibronectin and Snail in HSC-T6 cells (Abstract; pg. 60785, col 1, para 1). Tang et al. notes “Our findings suggest that EMT is involved in the development of liver fibrosis. rAAV1-Jagged1-shRNA treatment can improve hepatic fibrosis through reversion of EMT” (pg. 60785, col 1, para 1)”. Additionally, “Our experimental results showed that the expression of green fluorescence from EGFP was mainly confined to the portal area and fiber spacing, and no obvious expression was observed in liver cells after intravenous injection of rAAV1-Jagged1-shRNA-EGFP in the hepatic fibrosis rat model. In this study, rAAV1-Jagged1-shRNA administration did not affect hepatocyte proliferation (data not shown). Adeno-associated virus (AAV) has shown potential as a gene therapy tool because of its optimal distribution in the liver” (pg. 60785, col 1, para 2). Although Tang et al. used hepatic stellate cells in the study instead of hepatocytes, the teachings are still relevant as Tang et al. teaches a reduction to practice of delivering a nucleic acid encoding Jag1 to a type of liver cell.
Zu (US Patent 9,512,406, by inventors) is considered relevant prior art for teaching methods for treatment of a liver disease or injury in a patient comprising administering immature hepatocytes produced by a process in which cells are incubated in a first composition to generate induced multipotent progenitor cells from which endoderm progenitor cells differentiated and subsequently immature and mature hepatocytes are differentiated (claim 1). Zu teaches that endodermal progenitor cells can be differentiated into hepatocytes in a composition (e.g., a medium) containing a TGF-beta inhibitor, basic fibroblast growth factor (bFGF), bone morphogenetic protein 4 (BMP4), dexamethasone, hepatocyte growth factor (HGF), oncostatin M (OSM), a Notch inhibitor (e.g., compound E (C-E)), or any combination on thereof (paragraph [0165] of the published application). However, Zu et al., does not identify administration into hepatocytes of a patient of at least one expressible coding region gene that induces transdifferentiation of mature hepatocytes into cholangiocytes.
Kodama (2004; Gastroenterology 127, 1775-1786) is considered relevant prior art for teaching the role of Notch signaling in the differentiation of biliary epithelial cells and its criticality for their tubular formation during intrahepatic bile ducts (IHBD) development (Abstract). Further, Kodama teaches that mutations in Jagged1, a Notch ligand, cause Alagille syndrome (AGS), a disorder characterized by a paucity of IHBD (Abstract). Thus, Kodama’s teaches that “Notch signaling is activated through epithelial-mesenchymal interactions during IHBD development, and is essential for the control of ductal plate remodeling and bile duct maturation” (page 1784; col. 2, last paragraph).
Sparks (2010; Hepatology, Pgs. 35-43) is considered relevant art for further teaching that four Notch receptors (Notch1 [N1], N2, N3, and N4) transduce signals from two families of ligands (Jagged1 [Jag1], Jag2, Delta-like-1 [Dll1], Dll3, and Dll4) expressed on the surface of neighboring cells, where mutations in both JAGGED1 (JAG1) and NOTCH2, a Notch pathway ligand and receptor, respectively, cause Alagille syndrome (AGS) (page 35; col. 1). However, Sparks et al., evidences that only N1 is critical for maintenance of major bile duct branches into adulthood while N3 and N4 are redundant and N2 is not sufficient to maintain tubular structures outside the local portal environment into adulthood (page 1399; col.1). Sparks teaches an expressible coding region of NOTCH1 inducibly expressed under control of the ubiquitously expressed ROSA26 locus (page 1392 col.1) and states “to date, no mouse model has inactivated Notch signaling and disrupted all IHBD formation. This limits our ability to definitively affirm that Notch signaling is required for cholangiocyte specification” (page 1399; col.1).
Neither Kodama nor Sparks teach introducing TGFBR1 or JAG1 into hepatocytes of a patient can convert hepatocytes into mature cholangiocytes.
Aznarez (WO2017106210A1) is considered relevant prior art for teaching the treatment of Alagille Syndrome in a subject by increasing the expression of a target protein such as Jag1 in cells of the subject through the use of antisense oligomers (ASOs) (Abstract, claim 1). However, Aznarez does not specifically recite the cells being hepatocytes, and instead uses ARPE-19, a retinal pigment epithelia cell line, THLE-3, a human liver epithelial cell line, in the working examples (e.g., [0026-0027]) [0110].
Duryagina (Duryagina, Regina, et al. "Overexpression of Jagged-1 and its intracellular domain in human mesenchymal stromal cells differentially affect the interaction with hematopoietic stem and progenitor cells." Stem Cells and Development 22.20 (2013): 2736-2750.) is considered relevant prior art for teaching overexpression of Jagged-1 and its intracellular domain (JICD) in human mesenchymal stromal cells. Duryagina teaches that long-term co-culture of hematopoietic stem and progenitor cells with Jagged-1-overexpressing MSCs led to a significantly better support of cobblestone area-forming cells and long-term culture-initiating cells (LTC-ICs) compared with JICD-overexpressing MSC (Abstract). Duryagina does not teach overexpressing Jagged-1 in hepatocytes.
Meindl (Meindl‐Beinker, Nadja M., and Steven Dooley. "Transforming growth factor‐β and hepatocyte transdifferentiation in liver fibrogenesis." Journal of gastroenterology and hepatology 23 (2008): S122-S127.) is considered relevant prior art for teaching that stimulation of hepatocytes with TGF-beta regulates the expression of genes involved in epithelial mesenchymal transition (EMT) and fibrosis. Additionally, in a mouse model, hepatocyte-specific overexpression of Smad7 was able to blunt a fibrogenic response after CCl4 intoxication (Abstract). However, Meindl does not teach the treatment of TGF-beta nor the overexpression of Smad7 in hepatocytes inducing transdifferentiation into mature cholangiocytes that form at least one bile duct.
Hasegawa (Drugs (2021) 81:1181–1192) is considered relevant post-filing art and teaches that cholestatic liver disease is represented by primary biliary cholangitis (PBC) and primary sclerosing cholangitis (PSC), with different pathophysiological pathways causing bile stasis in both diseases (abstract). Thus, Hasegawa highlights the unpredictability of forming a bile duct using different expressible coding regions, as cholestatic liver diseases/injuries differ in etiologies and therapeutic end points.
Thus, different expressible polynucleotides (e.g., TGFBR1 and JAG1) as claimed would necessarily have different modes of operation, different functions, and different effects since they individually function to modulate different target molecules in a patient having a cholestatic disease.
The prior art does not provide further guidance on the relationship between the structure (i.e., active method step) claimed in claim 1 of the instant case and its claimed resulting function(s). Additionally, although the art does teach overexpressing Jag1 in MSCs, for example, or exposing hepatocytes to TGFB, the art does not teach overexpressing JAG1 or TGBR, for example, in hepatocytes leads to the transdifferentiation of hepatocytes into mature cholangiocytes.
Additionally, the promoter(s) [structure] of the claims is/are recited at a high level of generality (e.g., no promoter recited in claim 1; claim 7 further limits to a constitutive promoter; claim 8 further limits to the EF1alpha promoter) that is/are to yield greater than wildtype level of expression in hepatocytes [function].
To the extent it is not an inherent property (that naturally flows) from the product/method
of the independent claim, then something must change. The claim is considered to lack adequate written description for failing to recite the structure that is necessary and sufficient to cause the
recited functional language (i.e., yield greater than wildtype level of expression in hepatocytes).
The recitation of claim 7, “wherein the TGFBR1 coding region is under the expression control of a constitutive promoter”, for example, denotes a first genus of constitutive promoters that do not increase the expression level of TGFBR1 in the hepatocyte (i.e., do not have greater activity) to greater than the wildtype expression of the TGFBR1 in the hepatocyte, as opposed to a second genus of constitutive promoters that do have greater activity compared to wildtype TGFBR1 in the hepatocyte.
The specification fails to disclose what structural changes to the method steps of claim 1
(e.g., promoter) is necessary and sufficient to produce greater expression levels of TGRBF1 or JAG1 than wildtype level of expression in hepatocytes, and thus the ordinary artisan would not know what modification(s) must be made in order to fulfill the instant recitation.
The specification offers minimal guidance on the promoter(s) of the claimed invention. The claim is far broader in scope than the working example(s) of the specification. For example, Example 8 of the specification discloses the use of a ELFalpha1 promoter in the AAV8 vector comprising the heterologous polynucleotide TGFBR1. Example 9 discloses the use of a CMV promoter in the AAV8 vector comprising JAG1. Additionally, [0008] recites:
“In some embodiments, the TGFBR1 coding region is a constitutive allele, or the TGFBR1 is under the expression control of a constitutive expression control element, e.g., a constitutive promoter, such as the Elongation Factor la (EFla) promoter”.
[0033] recites:
“Expression control elements contemplated for inclusion in this aspect of the disclosure are heterologous promoters, such as strong promoters, constitutive promoters, inducible promoters, repressible promoters, and any combination thereof known in the art. Other contemplated expression control elements include enhancers, strong ribosome binding sites (e.g., sites conforming more closely to the Kozak consensus sequence for expression in eukaryotic cells), an altered intron sequence or length, stronger intron donor and acceptor splice sites, a polyadenylation sequence, or a transcriptional termination element. Preferred expression control elements for delivery to hepatocytes according to the disclosure are heterologous promoters and enhancers.”
The claims fail to recite, and the specification fails to disclose, a nexus between the required promoter that the heterologous polynucleotide of claim 1 is under control of and the corresponding functional property(ies) of to producing greater expression levels of TGRBF1 or JAG1 than wildtype level of expression in hepatocytes, thereby inducing transdifferentiation of the hepatocyte into a mature cholangiocyte.
Therefore, the claims fail to recite, and the specification fails to disclose the nexus of the structure of claim 1 and the function of transdifferentiating hepatocytes of human patients with a cholestatic disease or injury into mature cholangiocytes.
Dependent claims are included in the basis of the rejection because they do not correct the primary deficiencies of the independent claim(s).
Claim Rejections - 35 USC § 112(a)- Scope of Enablement; New, necessitated by amendment
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, 6-11, 13, 15, and 19 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
an in vitro method of genetically modifying hepatocytes, comprising introducing an AAV8 vector comprising a heterologous polynucleotide encoding human TGFBR1 or human JAG1 under the control of an EF1alpha or CMV promoter into a hepatocyte, and
an in vivo method of genetically modifying hepatocytes, comprising introducing an AAV8 vector comprising a heterologous polynucleotide encoding human TGFBR1 or human JAG1 under the control of an EF1alpha or CMV promoter into a hepatocyte via intravenous, bile duct, or direct liver injection,
does not reasonably provide enablement for a method of inducing transdifferentiation of a hepatocyte into a mature cholangiocyte comprising introducing a heterologous polynucleotide encoding human TGFBR1 or human JAG1 under control of a vast genera of promoters via a vast genera of methods of transduction and transfection recited at a high level of generality. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
While determining whether a specification is enabling, one considers whether the claimed invention provides sufficient guidance to make and use the claimed invention. If not, whether an artisan would have required undue experimentation to make and use the claimed invention and whether working examples have been provided. When determining whether a specification meets the enablement requirements, some of the factors that need to be analyzed are: the breadth of the claims, the nature of the invention, the state of the prior art, the level of one of ordinary skill, the level of predictability in the art, the amount of direction provided by the inventor, the existence of working examples, and whether the quantity of any necessary experimentation to make or use the invention based on the content of the disclosure is “undue” (In re Wands, 858 F.2d 731, 737, 8 USPQ2ds 1400, 1404 (Fed. Cir. 1988)). Furthermore, USPTO does not have laboratory facilities to test if an invention will function as claimed when working examples are not disclosed in the specification. Therefore, enablement issues are raised and discussed based on the state of knowledge pertinent to an art at the time of the invention. And thus, skepticism raised in the enablement rejections are those raised in the art by artisans of expertise.
The factors to be considered in determining whether undue experimentation is required are summarized in In re Wands, 858 F.2d 731, 737, 8 U.S.P.Q.2d 1400, 1404 (Fed. Cir. 1988) (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. While all of these factors are considered, a sufficient number are discussed below so as to create a prima facie case.
The current claims are not enabled for:
Any promoter
Any method of transfection or transduction in order to introduce the heterologous polynucleotide to a hepatocyte
Any route of administration
A method of inducing transdifferentiation of the hepatocyte into a mature cholangiocyte
The Breadth of the Claims and The Nature of the Invention
The Examiner incorporates herein the analysis discussed above in the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, written description rejection.
The claims are directed to a method of inducing transdifferentiation of a hepatocyte into a mature cholangiocyte, the method comprising introducing a heterologous polynucleotide encoding human Transforming Growth Factor Beta Type I Receptor (TGFBR1) or human JAG1 into a hepatocyte of a human patient with a cholestatic disease or cholestatic injury under conditions where the expression level of heterologous TGFBR1 or human JAG1 coding region is greater than the wild- type level of expression the TGFBR1 or human JAG1 in the hepatocyte, thereby inducing transdifferentiation of the hepatocyte into a mature cholangiocyte.
None of the claims recite an action-taking step of administering the heterologous polynucleotide to a patient, or administering the hepatocytes that comprise the heterologous polynucleotide to the patient. Although claim 19 recites introducing the coding region into the hepatocytes in vivo, no dose, route of administration, volume, formulation, etc. is recited.
The claims are broad for reasonably encompassing a multitude of gene therapy methods, including but not limited to CRISPR, and a vast genus of viral vectors such as adenoviruses, lentiviruses, AAVs, etc. Claim 11 further limits TGFBR1 being transmitted by an AAV8 vector.
The claims are broad for reasonably encompassing any disease or injury related to the flow of bile in the biliary system (e.g., any cholestatic disease or cholestatic injury).
The State of the Prior Art, The Level of One of Ordinary Skill and The Level of Predictability in the Art
The Examiner incorporates herein the analysis discussed above in the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, written description rejection.
Considering the mode of administration, the specification simply requires administration of the AAV to the subject by any means. The art has demonstrated through numerous publications, delivery of nucleic acid vectors in vivo is highly unpredictable for successful human therapy.
At issue in general are organ barriers, failure to persist, side-effects in other organs, T-cell responses, virus neutralizing antibodies, humoral immunity, normal tropism of the vector to other organs and more. The challenge is to maintain the efficiency of delivery and expression while minimizing any pathogenicity of the virus from which the vector was derived. The inability to develop an adequate means of overcoming obstacles such as humoral; responses and refractory cells limits the successful means by which the nucleic acid can be administered. The physiological art is recognized as unpredictable. (MPEP 2164.03.) In cases involving predictable factors, such as mechanical or electrical elements, a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific laws. In cases involving unpredictable factors, such as most chemical reactions and physiological activity, the scope of enablement obviously varies inversely with the degree of unpredictability of the factors involved. In this case, the nucleic acid is broadly stated as being administered to a patient. The lack of guidance exacerbates the highly unpredictable field of gene therapy and the method of delivery of polynucleotides is highly unpredictable to date. Gene delivery has been a persistent problem for gene therapy protocols and the route of delivery itself presents an obstacle to be overcome for the application of the vector therapeutically.
To date, no single mode of gene transfer has provided a viable option for successful gene therapy protocols Daya et al (Gene Therapy Using Adeno-Associated Virus Vectors, Clin. Microbiol. Rev. 21(4): 583-593, 2008; pg 590-591, joining ¶). When considering AAV therapy, there are many obstacles to its use systemically- host cell immune response which leads to toxicity (Daya et al, pg 587, col 2), blood brain as well as cellular barriers against the virus, adequate expression, degradation of the vector or the product. Even the use of targeting methods and tissue specific promoters have done little to overcome the numerous obstacles related to gene delivery. Even use of tissue specific promoters and capsids targeting has not successfully overcome these obstacles. Taken together with the large breadth of target tissues and diseases claimed, in light of the difficulties to overcome even one of these barriers, one could not perform the full breadth of the claims.
The Existence of Working Examples and The Amount of Direction Provided by the Inventor
The Examiner incorporates herein the analysis discussed above in the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, written description rejection.
The specification fails to provide any evidence that the method as written can predictably and reliably induce transdifferentiation of hepatocytes from a patient with cholestatic disease or injury into mature cholangiocytes with any promoter, any method of transfection or transducing, and via any route of administration.
The specification teaches in Example 9 and paragraph [0082] systemic administration of the AAV8-CMV-Jag1 in transgenic Jag1+/−; R26R-RFP+/− mice (mouse model of ALGS) which caused hepatocytes to convert into cholangiocytes and assemble into bile ducts with a much higher frequency than occurred spontaneously in Jag1+/−; R26R-RFP+/− mice intravenously injected only with control AAV8-Ttr-Cre. The specification discloses that hepatocyte-derived bile ducts in Jag1+/−; R26R-RFP+/− mice intravenously injected with AAV8-CMV-Jag1 and AAV8-Ttr-Cre were connected to the pre-existing bile ducts as evidenced by retrograde ink injection into the common bile duct. Moreover, the function of the hepatocyte-derived bile ducts was further illustrated by lower serum levels of cholestasis and liver injury markers in transgenic Jag1+/−; R26R-RFP+/− mice intravenously injected with AAV8-CMV-Jag1 and AAV8-Ttr-Cre than in Jag1+/−; R26R-RFP+/− mice intravenously injected only with AAV8-Ttr-Cre. The specification concludes “These results showed that JAG1 does not have to be provided by mesenchymal cells for bile duct formation to occur, as had been thought to be necessary for bile duct development. In contrast, our results establish that hepatocytes can serve as JAG1 ligand providers to adjacent hepatocytes, and that the resulting activation of Notch signaling leads to bile duct formation from these cells. Collectively, these results establish that expressing JAG1 in hepatocytes can be used to overcome bile duct paucity in mice modeling ALGS, thereby providing a curative strategy for patients suffering from this disease.” [0082] (Figure 13). Thus, the specification provides support for bile duct development by hepatocyte transdifferentiation expressing the JAG1 ligand and activating the NOTCH signaling.
Moreover, the specification identifies in Example 8, the TGFβ signaling as the driver of hepatocyte transdifferentiation and Hepatic bile duct (HpBD) formation in mice and potentially also in patients with ALGS where NOTCH signaling is not needed (paragraph [0081]). However, the mice used in Example 8 were not a mouse model of ALGS.
In relation to introducing a heterologous polynucleotide under conditions where the expression level of the coding region is greater than the wild-type level of expression, the specification contemplates increasing expression of a normal, or wild-type, allele of a TGFβ or Notch pathway gene such as TGFBR1 or JAG1 using CRISPR technology (paragraph [0012]). However, there are not examples of expressible coding regions under CRISPR technology, let alone other conditions (other than what is discussed above) that when introduced into hepatocytes of a patient convert hepatocytes into mature cholangiocytes that mimic the hepatic phenotype of human ALGS.
In relation to expression control elements, the specification also discloses enhancers, strong ribosome binding sites (e.g., sites conforming more closely to the Kozak consensus sequence for expression in eukaryotic cells), an altered intron sequence or length, stronger intron donor and acceptor splice sites, a polyadenylation sequence, or a transcriptional termination element (paragraph [0033]). However, except for systemic administration of the recombinant adeno-associated Virus serotype 8 (AAV8), wherein expression of constitutively active Jag1
is under the control of a constitutive expression control element, e.g., CMV-Jag1 (paragraph [0082]), there are not teachings of other expression control elements that would predictably result in introducing in vivo into hepatocytes of a patient an expressing said heterologous polynucleotides to convert hepatocytes into mature cholangiocytes.
The specification fails to make up for the deficiencies of the global scientific community.
The Quantity of Any Necessary Experimentation to Make or Use the Invention
Thus, the quantity of necessary experimentation to make or use the invention as claimed, based upon what is known in the art and what has been disclosed in the specification, will create an undue burden for a person of ordinary skill in the art to demonstrate that heterologous human TGFBR1 or human JAG1 introduced to human hepatocytes of the broadly encompassing recitation of a patient with a cholestatic disease or injury so as to necessarily and predictably achieve the transdifferentiation of hepatocytes into mature cholangiocytes.
It is generally recognized in the art that biological compounds often react unpredictably under different circumstances (Nationwide Chem. Corp. v. Wright, 458 F. supp. 828, 839, 192 USPQ95, 105(M.D. Fla. 1976); Affd 584 F.2d 714, 200 USPQ257 (5th Cir. 1978); In re Fischer, 427 F.2d 833, 839, 166 USPQ 10, 24(CCPA 1970)). The relative skill of the artisan and the unpredictability of the pharmaceutical art are very high. Where the physiological activity of a chemical or biological compound is considered to be an unpredictable art (Note that in cases involving physiological activity such as the instant case, "the scope of enablement obviously varies inversely with the degree of unpredictability of the factors involved" (See In re Fischer, 427 F.2d 833, 839, 166 USPQ 10, 24(CCPA 1970))), the skilled artisan would have not known how to extrapolate the results provided in the instant specification to necessarily and predictably for transdifferentiate hepatocytes in patients with an enormous plurality of etiologically and pathologically distinct cholestatic disease and injuries.
The gene therapy art is extremely unpredictable. The unpredictability is manifested in the poor and unpredictable targeting of the gene therapy vectors to target cells (e.g., the enormous genus of possible vectors), routes of administration, the transient and unpredictable expression of the transgenes in target cells (the genus of undisclosed possible promoters and/or regulatory sequences), the specific genes to be used for a treatment (the enormous genus of structurally undisclosed expressible coding regions), and the unsuitability of many animal models of human diseases (as discussed below), all of which are critical for the success of a gene therapy method.
Reliance on animal models is not predictive of clinical outcome. This has been complicated by the inability to extrapolate delivery methods in animals with those in humans or higher animals.
Mingozzi and High (Immune responses to AAV vectors: overcoming barriers to successful gene therapy, Blood 122(1): 23-36, 2013) demonstrate that the human findings are not recapitulated from the animal studies (page 26, col 2, “it seemed logical that one could model the human immune response in these animals, but multiple attempts to do so have also failed”). Hence, lessons learned from small animals such as the mice studies could not recapitulate the ability to deliver adequately in humans.
Kattenhorn et al (Adeno-Associated Virus Gene Therapy for Liver Disease, Human Gene Therapy 27(12): 947-961, November 28, 2016) taught concerns for translation lead to extensive analysis of the effects on clinical use. The use of AAV after initial promising results went on hiatus (pg 947, col. 2, “clinical hiatus in the field”) as the animal models were deficient (pg 953, col. 2, “Although animal models predicted many aspects of the human immune response…, they largely failed to predict responses to AAV capsid”; “Work done in nonhuman primates has not met with any additional success”). This emphasizes that the challenge in humans is to maintain the efficiency of delivery and expression while minimizing any pathogenicity of the virus from which the vector was derived. Eventually, the use of AAV is serotype-dependent (e.g. pg 950, col. 1), organ and concentration dependent. The inability to develop an adequate means of overcoming humoral responses, neutralizing antibody, inactivation of transgene expression, shedding and refractory cells limits the successful means by which the nucleic acid can be administered.
Ferdowsian et al (Primates in Medical Research: A Matter of Convenience, not Sound Science, The Hastings Center, www.thehastingscenter.org/primates-in-medical-research-convenience-not-sound-science/; July 8, 2022; last visited September 27, 2024) is considered relevant art for having taught that, “Today, unlike in the 17th century, scientists easily recognize the truth in the saying “mice lie and monkeys exaggerate,” which points to a well-known problem in biomedical research: using nonhuman primates and other animals in research fails more often than it succeeds.”
The courts have stated that reasonable correlation must exist between scope of exclusive right to patent application and scope of enablement set forth in patent application. 27 USPQ2d 1662 Exparte Maizel. In the instant case, in view of the lack of guidance, working examples, breadth of the claims, the level of skill in the art and state of the art at the time of the claimed invention was made, it would have required undue experimentation to make and/or use the invention as claimed.
If little is known in the prior art about the nature of the invention and the art is unpredictable, the specification would need more detail as to how to make and use the invention in order to be enabling. See, e.g., Chiron Corp. v. Genentech Inc., 363 F.3d 1247, 1254, 70 USPQ2d 1321, 1326 (Fed. Cir. 2004) ("Nascent technology, however, must be enabled with a 'specific and useful teaching.' The law requires an enabling disclosure for nascent technology because a person of ordinary skill in the art has little or no knowledge independent from the patentee's instruction. Thus, the public's end of the bargain struck by the patent system is a full enabling disclosure of the claimed technology." (citations omitted)).
As In re Gardner, Roe and Willey, 427 F.2d 786,789 (C.C.P.A. 1970), the skilled artisan might eventually find out how to use the invention after “a great deal of work”. In the case of In re Gardner, Roe and Willey, the invention was a compound which the inventor claimed to have antidepressant activity, but was not enabled because the inventor failed to disclose how to use the invention based on insufficient disclosure of effective drug dosage. The court held that “the law requires that the disclosure in the application shall inform them how to use, not how to find out how to use for themselves”.
Perrin (Make mouse studies work, Nature (507): 423-425, 2014) taught that the series of clinical trials for a potential therapy can cost hundreds of millions of dollars. The human costs are even greater (pg 423, col. 1). For example, while 12 clinical trials were tested for the treatment of ALS, all but one failed in the clinic (pg 423, col. 2). Experiments necessary in preclinical animal models to characterize new drugs or therapeutic compounds are expensive, time-consuming, and will not, in themselves, lead to new treatments. But without this upfront investment, financial resources for clinical trials are being wasted and [human] lives are being lost (pg 424, col. 1). Animal models are highly variable, and require a large number of animals per test group. Before assessing a drug’s efficacy, researchers should investigate what dose animals can tolerate, whether the drug reaches the relevant tissue at the required dose and how quickly the drug is metabolized or degraded by the body. We estimate that it takes about $30,000 and 6–9 months to characterize the toxicity of a molecule and assess whether enough reaches the relevant tissue and has a sufficient half-life at the target to be potentially effective. If those results are promising, then experiments to test whether a drug can extend an animal’s survival are warranted — this will cost about $100,000 per dose and take around 12 months. At least three doses of the molecule should be tested; this will help to establish that any drug responses are real and suggest what a reasonable dosing level might be. Thus, even assuming the model has been adequately characterized, an investment of $330,000 is necessary just to determine whether a single drug has reasonable potential to treat disease in humans. It could take thousands of patients, several years and hundreds of millions of dollars to move a drug through the clinical development process. The investment required in time and funds is far beyond what any one lab should be expected to do. (pg 425, col.s 2-3). The human costs are even greater: patients with progressive terminal illnesses may have just one shot at an unproven but promising treatment. Clinical trials typically require patients to commit to year or more of treatment, during which they are precluded from pursuing other experimental options (pg 423, col.2 1-3).
Greenberg (Gene Therapy for heart failure, Trends in Cardiovascular Medicine 27: 216-222, 2017) is considered relevant prior art for taught that despite success in experimental animal models, translating gene transfer strategies from the laboratory to the clinic remains at an early stage (Abstract). The success of gene therapy depends on a variety of factors that will ultimately determine the level of transgene expression within the targeted cells. These factors include the vector used for delivery, the method and conditions of delivery of the vector to the [target tissue], the dose that is given and interactions between the host and the vector that alter the efficiency of transfection of [target] cells (e.g. pg 217, col. 1). Failure of therapeutic results may arise because the vector DNA levels were at the lower end of the threshold for dose-response curves in pharmacology studies, and/or only a small proportion of target cells were expressing the therapeutic transgene (e.g. pg 220, col. 1). Although the use of AAVs for gene therapy is appealing, additional information about the best strain of AAVs to use in human patients is needed. Experience indicates that there is a need to carefully consider the dose of the gene therapy vector; however, this has proved to be difficult in early phase developmental studies due to the complexity and cost of such studies (e.g. pg 221, col. 1).
Maguire et al (Viral vectors for gene delivery to the inner ear, Hearing Research 394: e107927, 13 pages, doi.org/10.1016/j.heares.2020.107927, 2020) is considered relevant post-filing art for taught that despite the progress with AAV vectors in the inner ear, little is known regarding the mechanism of transduction of specific cells by AAV within the cochlea (e.g. pg 2, col. 2). There are limitations to what experiments in mice can tell us about the true translation potential of a new therapeutic (e.g. pg 8, col. 2), e.g. species-related physiological differences between mice and humans (e.g. pg 9, col. 1). The AAV dosage is a significant factor in achieving transduction of the target cell, as insufficient dosage may achieve no transduction of the target cells (e.g. pg 9, col. 2).
Tobias (Mouse Study Used in Research, Multiple Sclerosis News Today, multiplesclerosisnewstoday.com/news-posts/2023/09/08/lets-not-get-overexcited-about-any-mice-study-used-research/; September 8, 2023; last visited September 27, 2024) is considered relevant art for having taught that, “Mice exaggerate and monkeys lie, some researchers jokingly say. (Or is it the other way around?)” The odds of an experimental treatment making it from mouse or monkey to human are very low. Less than 8% of cancer treatments make it from animal studies into a clinical setting, where they’re tested on people, and only 10% of the medications in those clinical trials make it through to government approval. No wonder some researchers joke about mice and monkeys lying and exaggerating.
The instant portion of the invention, as claimed, falls under the "germ of an idea" concept defined by the CAFC. The court has stated that "patent protection is granted in return for an enabling disclosure, not for vague intimations of general ideas that may or may not be workable". The court continues to say that "tossing out the mere germ of an idea does not constitute an enabling disclosure" and that "the specification, not knowledge in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement". (See Genentech Inc v. Novo Nordisk A/S 42 USPQ2d 1001, at 1005). The claimed method of forming a bile duct by introducing a genus of structurally undisclosed and variable genus of structurally and functionally different coding regions to necessarily and predictably sufficiently differentiate hepatocytes into mature cholangiocytes in an enormous plurality of etiologically and pathologically distinct cholestatic diseases and injuries, constitutes such a "germ of an idea".
In conclusion, the specification fails to provide any guidance as to how an artisan would have dealt with the art-recognized limitations of the claimed method. While genetically modifying hepatocytes in vitro and in vivo is enabled, the art does not teach that overexpression of the recited genes yields transdifferentiated hepatocytes into mature cholangiocytes in vitro or in vivo, and therefore lacks enablement. Those of ordinary skill in the art would immediately recognize that the instant specification fails to establish the nexus between the enormous genus of cholestatic diseases and injuries and generically recited method step of introducing a heterologous polynucleotide encoding human TGFBR1 or human JAG1 into a hepatocyte of a human patient, and necessarily and predictably achieve a real-world result inducing transdifferentiation of the hepatocyte into a mature cholangiocyte.
Dependent claims are included in the basis of the rejection because they do not correct the primary deficiencies of the independent claim(s).
Claim Rejections - 35 USC § 112(b) – New, necessitated by amendment
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.
Claims 9-11 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.
Claim 9 recites the limitation "the method of claim 2" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 2 is cancelled, so it is unclear what claim 9 is intended to further limit. It would be remedial to change “claim 2” to the correct claim number of which claim 9 should depend upon. For examination purposes, claim 9 is interpreted to be dependent upon claim 1.
Claims 10 and 11 are included in the basis of the rejection because they depend upon claim 9.
Claim Rejections - 35 USC § 112(d) – New, necessitated by amendment
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.
Claim 19 is 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.
The recitation of “the expressible coding region of Transforming Growth Factor Beta Type I Receptor (TGFBR1), Transforming Growth Factor Beta Type II Receptor (TGFBR2), SMAD3, SMAD1, SMAD2, SMAD5, SMAD8/9, JAG1, JAG2, DLL1, DLL3, DLL4, NOTCH1, NOTCH2, NOTCH3, NOTCH41 or the respective NOTCH intracellular domains” in claim 19 is broader in scope than “a heterologous polynucleotide encoding human Transforming Growth Factor Beta Type I Receptor (TGFBR1) or human JAG1”, as recited in claim 1. Therefore, the recitation of “wherein the expressible coding region of Transforming Growth Factor Beta Type I Receptor (TGFBR1), Transforming Growth Factor Beta Type II Receptor (TGFBR2), SMAD3, SMAD1, SMAD2, SMAD5, SMAD8/9, JAG1, JAG2, DLL1, DLL3, DLL4, NOTCH1, NOTCH2, NOTCH3, NOTCH41 or the respective NOTCH intracellular domains is introduced into the hepatocytes in vivo” in claim 19 fails to further limit claim 1.
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.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1, 13, 15, 19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Benenato (c; claims priority to PCT/USUS2017/033413, filed May 18, 2017, and provisional application 62/338,170, filed May 18, 2016) as evidenced by Colorado State (https://vivo.colostate.edu/hbooks/pathphys/digestion/liver/histo_hcytes.html; last accessed 11/25/2025).
Regarding claims 1 and 19, Benenato teaches an mRNA treatment for treatment of Alagille syndrome (claims 13, 15) using mRNA encoding JAG1 (Abstract) [0005-0006], including pharmaceutical compositions comprising a lipid nanoparticle encapsulated mRNA that comprises an open reading frame (ORF) encoding a Jagged 1 (JAG1) polypeptide, wherein the composition is suitable for administration to a human subject in need of treatment for Alagille syndrome (ALGS) and improves liver function in reference to a subject untreated for ALGS [0165, 0167]. Benenato also teaches multiple routes of administration, including intravenously [0170], directly to a target tissue or organ [1335] (Benenato notes mammalian liver being a target tissue [1405, 1485]), and via intraluminal (within a lumen of a tube) and intratubular (within the tubules of an organ) injections [1329].
Benenato does not explicitly state that the heterologous polynucleotide encoding JAG1 is introduced to a hepatocyte of a human patient. However, as evidenced by Colorado State, 80% of mass of the human liver is composed of hepatocytes, and hepatocytes are considered the chief functional cells of the liver. Further, Benenato introduced mRNA encoding human JAG1 to mice via intravenous injection, which resulted in [1615]. Levels of human JAG1 in the liver of the mice were tested, and the expression level of all mRNA constructs tested increased when the dose of mRNA administered to mice increased. Further, the wild-type human JAG1 or mouse JAG1 had a relatively short half-life in the liver of C56BL6 mice (FIG. 16B), while the secreted JAG1 had a long half-life in the liver of C56BL6 mice and was detectable 7 days after the administration of the mRNA constructs to mice (FIG. 17B) [1675]. Considering these results, the other teachings of Benenato and evidence of Colorado State, absent evidence to the contrary, one of ordinary skill in the art could reasonably conclude that the heterologous polynucleotide encoding JAG1 would be introduced to hepatocytes and would read on “hepatocytes of a human patient with a cholestatic disease or cholestatic injury”. Additionally, absent evidence to the contrary, one of ordinary skill in the art could reasonably conclude that the expression level of heterologous JAG1 is greater than the wild-type level of expression of JAG1, thereby inducing transdifferentiation of the hepatocyte into a mature cholangiocyte (i.e., function), as Benenato teaches the same method step (i.e., structure) as the claimed invention, and Benenato demonstrated increased expression in mice.
Claim Rejections - 35 USC § 103
Claim(s) 6-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benenato as applied to claims 1, 13, 15, and 19 above, and further in view of Chen (Chen, Simeng, et al. "Transforming growth factor β1 (TGF-β1) activates hepcidin mRNA expression in hepatocytes." Journal of Biological Chemistry 291.25 (2016): 13160-13174.) and Cameron (US2011/0305772, published 12/11/2011).
Benenato does not teach introducing a heterologous polynucleotide encoding human TGFBR1. Benenato teaches the method of expressing in vivo an active JAG1 polypeptide
in a subject in need thereof comprising administering to the subject an effective amount of a polynucleotide via a vector, and that the polynucleotide can be reconstituted and transformed into a vector such as, but not limited to, plasmids, viruses, etc. [0161, 0257].
Chen teaches treating cultures of hepatocytes from human patients undergoing partial hepatectomy for metastatic liver tumors of colorectal cancer with recombinant TGFBR1 (pg. 13161; “Experimental Procedures”; Fig. 1B, D, E, F). Additionally, Chen injected adenovirus encoding constitutively active TGFBR1 (porcine) (AdTGFB1) (claim 6) into the tail vein of male C56BL/6JRj mice, as constitutively active TGF-B1^223/225 is preferentially expressed in hepatocytes after systemic intravenous adenovirus vector injections (pg. 13162, Results column). 4 days after injection, hepatic porcine TGF-B1^223/225 mRNA was highly induced in the AdTGF-B1^223/225 injected group but was undetectable in the untreated and control virus-injected group (AdCON) (i.e., greater than wild-type expression level)
Chen does not teach the vector comprising the TGFBR1 polynucleotide being AAV8 or comprising a EF1a promoter.
Cameron teaches compositions and methods to delivery nucleic acids to the liver ex vivo. In one experiment, Cameron teaches injecting an AAV8-EF1a-eGFP viral vector (claims 7-11) systemically to mice by tail vein injection. After 8 weeks, mice were sacrificed, and livers were exposed and imaged for GFP expression. FIG. 10 shows 8 weeks after administration of the AAV8-EF1a-eGFP viral vector, eGFP expression can be readily observed (FIG. 11). Further analysis of the liver demonstrates that nearly 100% of hepatocytes express eGFP. These data demonstrate that AAV vectors can be used to efficiently deliver coding sequences to the liver and that expression in the liver is sustained in vivo for an extended period (through at least 6 months) [0174].
Prior to the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to substitute the JAG1 polynucleotide as taught/disclosed by Benenato et al, with a TGFBR1 polynucleotide, as taught/disclosed by Chen et al, in a method of inducing transdifferentiation of hepatocytes with a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. An artisan would be motivated to substitute the JAG1 polynucleotide with a TGFBR1 polynucleotide in a method of inducing transdifferentiation of a hepatocyte because Chen teaches that TGFB1 activates hepcidin (maintains serum iron levels by controlling dietary iron uptake from duodenal enterocytes and iron release from iron recycling macrophages) mRNA expression in hepatocytes, allowing one to regulate hepcidin (Fig. 1; pg. 13172, “The Role of TGF-B1-mediated Hepcidin Regulation”) had successfully demonstrated the ability of the ordinary artisan to successfully introduce TGFBR1 to hepatocytes.
Additionally, prior to the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to substitute the Adenovirus vector and promoter as taught by Chen et al, with a AAV8 vector comprising EF1a, as taught by Cameron with a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Additionally, Cameron had successfully demonstrated the ability of the ordinary artisan to successfully introduce a gene of interest (e.g., eGFP in Cameron) to the liver using an AAV8-Ef1a vector. One would be motivated to make this substitution because Cameron teaches that nearly 100% of hepatocytes in the liver expressed the gene of interest and that expression in the liver is sustained in vivo for an extended period (through at least 6 months) [0174]. Further, Cameron teaches that AAV8 is efficiently delivered to the liver [0093], and that the AAV8 serotype is known to be preferentially hepatotrophic [0117].
M.P.E.P. §2144.07 states "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).” “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).” When substituting equivalents known in the prior art for the same purpose, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). M.P.E.P. §2144.06.
It is proper to "take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741,82 USPQ2d 1385, 1396 (2007). See also Id. At 1742, 82 USPQ2d 1397 ("A person of ordinary skill is also a person of ordinary creativity, not an automaton.").
It should be noted that the KSR case forecloses the argument that a specific teaching, suggestion, or motivation is required to support a finding of obviousness. See the recent Board decision Ex parte Smith, —USPQ2d—, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007) (citing KSR, 82 USPQ2d at 1396) (available at http: www. uspto.gov/web/offices/dcom/bpai/prec/fd071925 .pdf).
Response to Arguments
Applicant's arguments filed 8/25/2025 have been fully considered but they are not persuasive.
Regarding the 112(a) written description rejection, Applicant argues that [0009-0015], which was previously cited by the examiner and explicitly noted to not provide further guidance on what is considered “a cholestatic disease or injury”, confirms that the specification does in fact support the genus of cholestatic diseases. This argument is not convincing because the Applicant does not respond to the issues previously set forth by the examiner, such as explicitly stating why [0009-0015] do in fact provide enough support for the enormous genus claimed, and fails to provide further evidence to support this argument.
Regarding the 112(a) enablement rejection, Applicant argues that the disclosure provides sufficient information to one of ordinary skill in the art such that undue experimentation is not required, and that the Wands enablement factors leads to the conclusion that the claims are enabled. The Applicant fails to respond to the issues raised upon this issue by the examiner in the rejection and distinctly point out why there is no undue experimentation and why the Wands factors, which were outlined by the examiner, lead to enablement.
Additionally, the Applicant argues that “in general, methods of introducing a heterologous polynucleotides into a cell were well understood prior to the effective filing date”, and that “the application further teaches (see, e.g., paragraph [0034]) that the polynucleotide encoding human TGFBR1 or JAG1 could be inserted in an expression or amplification vector using standard ligation techniques, and that the vector is typically selected to by compatible with host cell machinery”. This information does not sufficiently address the burden outlined by examiner (for example, issues raised by the examiner regarding the unpredictability in the art). Further, the Applicant cites the results of Examples 8 and 9, which were previously discussed by the examiner in the enablement rejection, in support of their argument, but fails to distinctly point out how these examples demonstrate/provide evidence for enablement for the genus as a whole without undue experimentation.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALLISON MARIE JOHNSON/Examiner, Art Unit 1638
/KEVIN K HILL/Primary Examiner, Art Unit 1638