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 .
Application Status
This action is written in response to applicant' s correspondence received November 17, 2025. Claims 1-17, 21, 22, and 25-30 are currently pending.
Any rejection or objection not reiterated herein has been overcome by amendment. Applicant' s amendments and arguments have been thoroughly reviewed, but are not persuasive to place the claims in condition for allowance for the reasons that follow.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5 and 26 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.
Claim 5 recites a nucleic acid molecule comprising or consisting of SEQ ID NO: 29-31 which encodes the gRNA of Claim 1. Claim 1 recites, “wherein the modified MS2-binding loop sequence comprises at least nucleotide changes to the MS-2 binding loop sequence … (SEQ ID NO: 39)”. SEQ ID NO: 29-31 contain SEQ ID NO: 39 with no nucleotide changes as required by Claim 1. An alignment is provided below between SEQ ID NO: 29-31 and SEQ ID NO: 39. Therefore, Claim 5 is rejected under 35 USC 112(d) for failing to include all the limitations of the claim upon which it depends.
SEQ ID NO: 29
guuucagagcuagggccaacaugaggaucacccaugucugcagggcccuagcaaguugaaauaaggcuaguccguua
||||||||||||||||||||||||||||||||||
ggccaacaugaggaucacccaugucugcagggcc
ucaacuugggccaacaugaggaucacccaugucugcagggcccaaguggcaccgagucggugcuuuuu
||||||||||||||||||||||||||||||||||
ggccaacaugaggaucacccaugucugcagggcc
SEQ ID NO: 30
guuucagagcuaggccaacaugaggaucacccaugucugcagggccuagcaaguugaaauaaggcuaguccguuauc
||||||||||||||||||||||||||||||||||
ggccaacaugaggaucacccaugucugcagggcc
aacuuggccaacaugaggaucacccaugucugcagggccaaguggcaccgagucggugcuuuuu
||||||||||||||||||||||||||||||||||
ggccaacaugaggaucacccaugucugcagggcc
SEQ ID NO: 31
guuuuagagcuagggccaacaugaggaucacccaugucugcagggcccuagcaaguuaaaauaaggcuaguccguua
||||||||||||||||||||||||||||||||||
ggccaacaugaggaucacccaugucugcagggcc
ucaacuugggccaacaugaggaucacccaugucugcagggcccaaguggcaccgagucggugcuuuuu
||||||||||||||||||||||||||||||||||
ggccaacaugaggaucacccaugucugcagggcc
Regarding Claim 26, Claim 26 recites a nucleic acid encoding the gRNA of Claim 1 comprising or consisting of SEQ ID NO: 2-4. SEQ ID NO: 2-4 encode gRNA SEQ ID NO: 29-31 respectively. As described above, SEQ ID NO: 29-31 comprise SEQ ID NO: 39 with no nucleotide changes as required by Claim 1. Therefore, Claim 26 is rejected under 35 USC 112(d) for failing to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, 6-13, 15, 25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang, F., et. al., US 11001829 B2,filing date March 24, 2017 ; Lin, Y., et. al., US 2021/0130817 A1, filing date July 14, 2017; and Ui-Tei, K., et. al., Genome, Vol. 60, No. 6, published January 26, 2017.
Regarding Claim 1, Zhang recites a guide RNA comprising from 5’ to 3’: a first region comprising a backbone sequence, a second region comprising a MS-2 binding loop, a third region comprising a backbone sequence, a fourth region comprising the MS-2 binding loop, a fifth region comprising a backbone sequence, and a sixth region at the 5’ end of the gRNA comprising a sequence 15 or more nucleotides in length and is complementary to a target nucleic acid sequence as shown in the annotated figure below of Figure 27B.
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The instant specification provides a drawing of the claimed invention in instant SEQ ID NO: 23 in Figure 1C, which has near alignment with the sequence of Figure 27B where in SEQ ID NO: 23 has a GC substitution in stem-loop 1 and in the MS2 loop. An annotated drawing is provided below.
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243
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The sequence of Figure 27B comprises from 5’ to 3’: SEQ ID NO: 37 SEQ ID NO: 37 with one mismatch, a U to C at position 5, SEQ ID NO: 39 without a GC substitution, SEQ ID NO: 35, SEQ ID NO: 39 without a GC substitution, and SEQ ID NO: 36. Alignments are provided below.
Zhang 1 GUUUUAGAGCUA 12
|||| |||||||
SEQ ID NO: 37 1 GUUUCAGAGCUA 12
Zhang 1 GGCCAACATGAGGATCACCCATGTCTGCAGGGCC 34
||||||||:|||||:||||||:|:|:||||||||
SEQ ID NO: 39 1 GGCCAACAUGAGGAUCACCCAUGUCUGCAGGGCC 34
Zhang 1 UAGCAAGUUAAAAUAAGGCUAGUCCGUUAUCAACUU 36
||||||||||||||||||||||||||||||||||||
SEQ ID NO: 35 1 UAGCAAGUUAAAAUAAGGCUAGUCCGUUAUCAACUU 36
Zhang 1 AAGUGGCACCGAGUCGGUGCUU 22
||||||||||||||||||||||
SEQ ID NO: 36 1 AAGUGGCACCGAGUCGGUGCUU 22
Regarding the “T” recited in the sequence of Zhang, Zhang recites, “the MS2 system used here comprises an RNA sequence inserted into the guide” (Col. 39, lines 23-25) and therefore, the “T: recited is treated an “U” as described in Table 1 of MPEP 2412.03(a) for RNA.
Regarding the sixth region, Zhang teaches the guide sequence is “capable of hybridizing to a target sequence” (col. 6, lines 7-8) and the guide sequence is preferably “between 10 to 30 nucleotides in length” (col. 70, lines 41-42).
Regarding the GC substitutions in the MS-2 binding loop and SEQ ID NO: 37, Zhang teaches the use of increased GC content for stability: “Accordingly, in some embodiments, one or more GC tracts may replace stem portion of stem-loop 2. In some embodiments, one or more GC tracts may replace stem portion of the tetraloop.” (Col. 36-37, lines 49-11).
Zhang does not provide a suggestion for the substitution of a U to C at position 5 for SEQ ID NO: 37.
Lin teaches a sequence comprising instant SEQ ID NO: 37 as SEQ ID NO: 39 as a potential backbone of a sgRNA: “The potential backbone sequence is known to be any of SEQ ID NOs: 26-35” (p. 4, [0036]). An alignment is provided below.
SEQ ID NO: 39 1 GUUUCAGAGCUA 12
||||||||||||
SEQ ID NO: 37 1 GUUUCAGAGCUA 12
Ui-Tei teaches a TTTT stretch in a DNA expressing sgRNA experiences premature transcriptional termination with RNA polymerase III, and it is advantageous to substitute one of the bases: “[W]e revealed that sgRNA carrying a TTTT stretch reduces the efficiency of sgRNA transcription due to premature transcriptional termination, and decreases the efficiency of genome editing. Unexpectedly, it was also shown that the premature terminated sgRNA may have an adverse effect of inducing RNA interference. Such disadvantageous effects were avoided by substituting one base in the TTTT stretch” (p. 537, Abstract).
Regarding Claim 1, it would have been obvious to one skilled in the art before the effective filing date to modify the teachings of Zhang with the substitution of a U to C at the UUUU tract to create the gRNA of Claim 1 because Lin provides a suggestion for the substitution, and Ui-Tei provides motivation to avoid premature termination of expression of the gRNA and RNAi adverse effects. One skilled in the art would have a reasonable expectation of success because Lin teaches the sequence with a U to C substitution is a known backbone for gRNA sequences, and Ui-Tei teaches that a single substitution is sufficient to avoid premature termination. Therefore, Claim 1 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 2, Zhang teaches the sixth region is preferably 10 to 30 nucleotides. Therefore, Claim 2 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 4, Zhang teaches the use of GC substitutions in the tetraloop or third region. Therefore, Claim 4 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 6, Zhang teaches a “pharmaceutically-acceptable carrier” (col. 72, lines 39-67). Therefore, Claim 6 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 7, Zhang teaches a viral vector comprising a gRNA (col. 72, lines 19-30). Therefore, Claim 7 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 8, a kit is interpreted as a collection comprising of its components. The gRNA of Claim 1 is obvious over Zhang, Lin, and Ui-Tei. Zhang further teaches both Cas9 and dCas9 proteins (col. 35, lines 27 and 39) and MS2-transcriptional activator fusion protein (col. 246, lines 13-14). Therefore, Claim 8 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 9, Zhang teaches a first vector comprising a nucleic acid encoding dCas9 and a second vector encoding the gRNA and MS2-transcriptional activator protein: “Thus, the modified sgRNA, the inactivated CRISPR enzyme (with or without functional domains), and the binding protein with one or more functional domains, may each individually be comprised in a composition and administered to a host individually or collectively. … Administration to a host may be performed via viral vectors known to the skilled person” (col. 26, lines 35-48). Therefore, Claim 9 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 10, Zhang teaches a method of increasing expression of at least one gene product in a subject by infecting a cell in a subject: “[T]he invention provides a method of modifying expression of a polynucleotide in a eukaryotic cell. In some embodiments, the method comprises allowing a CRISPR complex to bind to the polynucleotide such that said binding results in increased or decreased expression of said polynucleotide” (col. 19, lines 1-6). Zhang teaches a first and second vector as described in Claim 9 above. Therefore, Claim 10 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 11, Zhang teaches the first and second vector are AAV vectors (col. 26, line 44). Therefore, Claim 11 is obvious Zhang, Lin, and Ui-Tei.
Regarding Claim 12, Zhang teaches a sixth region complementary to a start site of an endogenous gene: “Additionally, Applicants observed that the success rate of guide sequences typically increased with closer proximity to the transcriptional start site (TSS) of the target gene” (col. 38, lines 48-51). Therefore, Claim 12 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 13, Zhang teaches a MS2-transcriptional activator fusion protein comprising VP64 and p65 (col. 36, lines 31-32). Therefore, Claim 13 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 15, Zhang teaches the cell is a liver cell and provides guidance for liver cells: “AAV8 is useful for delivery to the liver” (col. 77, line 25); “For liver expression, can use Albumin promoter” (col. 76, line 10). Therefore, Claim 15 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 25, Zhang teaches an isolated plasmid encoding the gRNA (col. 73, lines 51-63) Therefore, Claim 25 is obvious over Zhang, Lin, and Ui-Tei.
Regarding Claim 27, Zhang teaches the viral vector is a AAV Vector (col. 76, lines 20-22). Therefore, Claim 27 is obvious over Zhang, Lin, and Ui-Tei.
Claims 3, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang, F., et. al., US 11001829 B2,filing date March 24, 2017 ; Lin, Y., et. al., US 2021/0130817 A1, filing date July 14, 2017; and Ui-Tei, K., et. al., Genome, Vol. 60, No. 6, published January 26, 2017 as applied to Claim 1 and 10 above, and further in view of Liao, H. et. al., Cell, Vol. 171, p. 1495-1507, December 14, 2017.
The applied reference has a common applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Regarding Claim 3, Claim 1 is obvious over Zhang, Lin, and Ui-Tei. Zhang does not teach the target nucleic acid is a gene whose decreased expression results in a disease or disorder.
Liao teaches a TGA system using Cas9 and a transcriptional activation complexes with a modified gRNA to target a gene whose decreased expression results in a disease or disorder in a mammal: “The system relies on recruitment of Cas9 and transcriptional activation complexes to target loci by modified single guide RNAs. As proof-of-concept, we used this technology to treat mouse models of diabetes, muscular dystrophy, and acute kidney disease. Results demonstrate that CRISPR/Cas9-mediated target gene activation can be achieved in vivo, leading to measurable phenotypes and amelioration of disease symptoms.”(p. 1495, Abstract) “DMD is a lethal, inherited muscle wasting disorder resulting from a loss-of function mutation in the large gene, dystrophin” (p. 1503-1504).
Regarding Claim 3, it would have been obvious for one skilled in the art before the effective filing date to use the gRNA of Zhang modified by the teachings of Lin and Ui-Tei and further modify the gRNA with the teachings of Liao to target a dystrophin, a gene whose decreased expression results in a disease or disorder in a human. Liao provides a motivation to target dystrophin because rescuing expression ameliorates disease symptoms. One skilled in the art would have a reasonable expectation of success because Liao was able to use a TGA system with CRISPR, a gRNA, and transcription activator to ameliorate the symptoms of DMD in a mouse model. Therefore, Claim 3 is obvious over Zhang, Lin, and Ui-Tei in further view of Liao.
Regarding Claim 16, Claim 10 is obvious over Zhang, Lin, and Ui-Tei. Zhang does not teach treating a disease with no reduced expression of a gene.
Liao teaches a TGA system for treating a disease to the subject by administering a therapeutically effective amount of the TGA system to the subject (p. 1495, Abstract).
Regarding Claim 16, it would have been obvious for one skilled in the art before the effective filing date to modify the TGA system taught by Zhang modified by teachings of Lin and Ui-Tei and further modify the system with the teachings of Liao to treat a disease associated with no or reduced expression of a gene. One skilled in the art would have a reasonable expectation of success because Liao was able to use a TGA system with CRISPR, a gRNA, and transcription activator to ameliorate the symptoms of DMD in a mouse model. Therefore, Claim 16 is obvious over Zhang, Lin, and Ui-Tei in further view of Liao.
Regarding Claim 17, Zhang does not teach type I diabetes, Duchenne muscular dystrophy, or acute kidney disease. Liao teaches the disease is type I diabetes, Duchenne muscular dystrophy, or acute kidney disease. it would have been obvious for one skilled in the art before the effective filing date to modify the TGA system taught by Zhang modified by teachings of Lin and Ui-Tei and further modify the system with the teachings of Liao to treat type I diabetes, Duchenne muscular dystrophy, or acute kidney disease as described above for Claim 16. Therefore, Claim 16 is obvious over Zhang, Lin, and Ui-Tei.
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claims 21, 22 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang, F., et. al., US 11001829 B2,filing date March 24, 2017 ; Lin, Y., et. al., US 2021/0130817 A1, filing date July 14, 2017; and Ui-Tei, K., et. al., Genome, Vol. 60, No. 6, published January 26, 2017 as applied to Claim 1 above, and further in view of Gemberling, M. and Gersbach, C., Molecular Therapy, Vol. 26, No. 2, p. 334-336, February 7, 2018.
Regarding Claim 21, Claim 1 is obvious over Zhang, Lin, and Ui-Tei. Zhang does not teach dgRNA.
Gemberling teaches dgRNA allow for the use of Cas9 without activating the nuclease activity: “Finally, rather than use the full-length gRNAs that typically contain 20 nucleotide (nt) targeting sequences, they used “dead” gRNAs (dgRNAs) that only contain 14–15 nt targeting sequences. These shorter targeting sequences facilitate Cas9 binding to a target sequence but do not allow Cas9 to undergo the conformational change necessary to activate nuclease activity and cut DNA” (p. 334, col. 3).
Regarding Claim 21, it would have been obvious for one skilled in the art before the effective filing date to use the gRNA of Zhang modified by the teachings of Lin and Ui-Tei and further modify the gRNA with the teachings of Gemberling to use dgRNAs. Gemberling teaches an advantage of dgRNAs to avoid cleaving the target DNA with Cas9. One skilled in the art would have a reasonable expectation of success because Zhang allows for a targeting sequence of 10 to 30 nucleotides, which includes 14 to 15 sequences. Therefore, Claim 21 is obvious over Zhang, Lin, and Ui-Tei in further view of Gemberling.
Regarding Claim 22, Zhang teaches one or more vectors comprising a nucleic acid encoding a gRNA, Cas9 protein or dCas9 protein, and a MS2-transcriptional activator fusion protein as described above for Claim 9 (col. 26, lines 35-48). Therefore, Claim 22 is obvious over Zhang, Lin, and Ui-Tei in further view of Gemberling.
Regarding Claim 29, Claim 1 is obvious over Zhang, Lin, and Ui-Tei. Zhang does not teach the target nucleic acid molecule is follistatin, PDX1, klotho, utrophin or IL10.
Gemberling teaches using a gRNA targeting follistatin, PDX1, klotho, utrophin or IL10 (p. 334, col. 3). Gemberling teaches motivation for targeting these genes: folistatin is a “a known inhibitor of the negative regulatorof muscle mass myostatin”, “activation of PDX1 in liver cells can induce glucose-responsive insulin production”, and “the expression of Klotho or IL10 prior to cisplatin-induced injury, result[s] in prolonged survival” (p. 334, col. 3).
Regarding Claim 29, it would have been obvious for one skilled in the art before the effective filing date to use the gRNA of Zhang modified by the teachings of Lin and Ui-Tei and further modify the gRNA with the teachings of Gemberling to target the genes of Claim 29. Gemberling provides motivation as gene therapy of these genes lead to improved conditions. One skilled in the art would have a reasonable expectation of success because Gemberling teaches targeting these genes lead to improved symptoms. Therefore, Claim 29 is obvious over Zhang, Lin, and Ui-Tei in further view of Gemberling.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang, F., et. al., US 11001829 B2,filing date March 24, 2017 ; Lin, Y., et. al., US 2021/0130817 A1, filing date July 14, 2017; and Ui-Tei, K., et. al., Genome, Vol. 60, No. 6, published January 26, 2017 as applied to Claim 13 above, and further in view of Zhang, F, US 11578312 B2, filed December 12, 2017, referenced as Zhang 2.
Regarding Claim 14, Claim 13 is obvious over Zhang, Lin, and Ui-Tei. Zhang does not teach SEQ ID NO: 18.
Zhang 2 teaches a MS2-p65-HSF1 fusion protein (Col. 54, lines 48-49 and 65-67) with the sequence SEQ ID No. 82. This protein has a 100% sequence match to SEQ ID No. 18 from the instant application.
SEQ ID No. 18 MASNFTQFVLVDNGGTGDVTVAPSNFANGVAEWISSNSRSQAYKVTCSVRQSSAQKRKYT 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
SEQ ID No. 82 MASNFTQFVLVDNGGTGDVTVAPSNFANGVAEWISSNSRSQAYKVTCSVRQSSAQKRKYT 60
Zhang
SEQ ID No. 18 IKVEVPKVATQTVGGVELPVAAWRSYLNMELTIPIFATNSDCELIVKAMQGLLKDGNPIP 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
SEQ ID No. 82 IKVEVPKVATQTVGGVELPVAAWRSYLNMELTIPIFATNSDCELIVKAMQGLLKDGNPIP 120
Zhang
SEQ ID No. 18 SAIA ANSGIYSAGGGGSGGGGSGGGGSGPKKKRKVAAAGSPSGQISNQALALAPSSAPVL 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
SEQ ID No. 82 SAIA ANSGIYSAGGGGSGGGGSGGGGSGPKKKRKVAAAGSPSGQISNQALALAPSSAPVL 180
Zhang
SEQ ID No. 18 AQTMVPSSAMVPLAQPPAPAPVLTPGPPQSLSAPVPKSTQAGEGTLSEALLHLQFDADED 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
SEQ ID No. 82 AQTMVPSSAMVPLAQPPAPAPVLTPGPPQSLSAPVPKSTQAGEGTLSEALLHLQFDADED 240
Zhang
SEQ ID No. 18 LGALLGNSTDPGVFTDLASVDNSEFQQLLNQGVSMSHSTAEPMLMEYPEAITRLVTGSQR 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
SEQ ID No. 82 LGALLGNSTDPGVFTDLASVDNSEFQQLLNQGVSMSHSTAEPMLMEYPEAITRLVTGSQR 300
Zhang
SEQ ID No. 18 PPDPAPTPLGTSGLPNGLSGDEDFSSIADMDFSALLSQISSSGQGGGGSGFSVDTSALLD 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
SEQ ID No. 82 PPDPAPTPLGTSGLPNGLSGDEDFSSIADMDFSALLSQISSSGQGGGGSGFSVDTSALLD 360
Zhang
SEQ ID No. 18 LFSPSVTVPDMSLPDLDSSLASIQELLSPQEPPRPPEAENSSPDSGKQLVHYTAQPLFLL 420
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
SEQ ID No. 82 LFSPSVTVPDMSLPDLDSSLASIQELLSPQEPPRPPEAENSSPDSGKQLVHYTAQPLFLL 420
Zhang
SEQ ID No. 18 DPGSVDTGSNDLPVLFELGEGSYFSEGDGFAEDPTISLLTGSEPPKAKDPTVS 473
|||||||||||||||||||||||||||||||||||||||||||||||||||||
SEQ ID No. 82 DPGSVDTGSNDLPVLFELGEGSYFSEGDGFAEDPTISLLTGSEPPKAKDPTVS 473
Zhang
Regarding Claim 14, it would have been obvious for one skilled in the art before the effective filing date to modify the TGA system taught by Zhang modified by teachings of Lin and Ui-Tei and perform a simple substitution with the protein taught by Zhang 2 because Zhang uses a MS2-p65 fusion protein and Zhang 2 teaches a MS2-p65 fusion protein such that both proteins perform the same function. One skilled in the art would have a reasonable expectation of success because Zhang teaches the genus of MS2-p65 proteins work within their system, and Zhang 2 teaches a species of that genus. Therefore, Claim 14 is obvious over Zhang, Lin, and Ui-Tei in further view of Zhang 2.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang, F., et. al., US 11001829 B2,filing date March 24, 2017 ; Lin, Y., et. al., US 2021/0130817 A1, filing date July 14, 2017; and Ui-Tei, K., et. al., Genome, Vol. 60, No. 6, published January 26, 2017 as applied to Claim 27 above, and further in view of Singh, K., et. al., Molecular Therapy, Vol. 26, No. 5, May 2, 2018.
Regarding Claim 28, Claim 27 is obvious over Zhang, Lin, and Ui-Tei. Zhang teaches the use of AAV vectors.
Zhang does not teach the use of AAV9.
Singh teaches the delivery of truncated gRNAs and Cas9 with AAV9: “we report that AAV9-delivery of truncated guide RNAs (gRNAs) and Cas9” (p. 1241, Abstract). Singh teaches their improved vector is “capable of achieving efficient and stable liver-specific genome editing in vivo with a potentially reduced risk of off-target effects in non-target genes while also preventing gene targeting in non-target organs” (p. 1242, col. 1).
Regarding Claim 28, it would have been obvious for one skilled in the art before the effective filing date to further modify the AAV vector taught by Zhang, Lin, and Ui-Tei with the teachings of Singh to use AAV9. Singh provides motivation for using AAV9 as it has liver-specific targeting with reduced off-target and non-target organ effects. Therefore, Claim 28 is obvious over Zhang, Lin, and Ui-Tei in further view of Singh.
RE: Applicant’s Arguments
Applicant argues, “In addition, or in the alternative, any alleged prima facie case of obviousness is overcome in view of evidence of superior, unexpected results presented in the application as filed. While Broad Institute allegedly describes a system that achieve activation using a single gRNA, Broad Institute only validates their system in vitro, not in vivo.” Applicant’s arguments are directed to solving “insufficient transduction of the Cas9 fusion protein in vivo and low levels of in vivo TGA”, which is solved with the use of a “dual-AAV system” with specific AAV vectors and Cas9 proteins. This argument is not persuasive because the evidence is not commensurate in scope with the claimed invention.
MPEP 716.02(d) recites, “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.”
Regarding Claim 1, Claim 1 does not recite the limitation of a “dual-AAV system” and may be used with any system and therefore, the unexpected results are not commensurate in scope with the claimed invention.
Regarding Claim 9, Claim 9 describes a first and second vector but does not recite an AAV and therefore, the unexpected results are not commensurate in scope with the claimed invention..
Regarding Claim 10, Claim 10 describes a first and second vector but does not recite an AAV and therefore, the unexpected results are not commensurate in scope with the claimed invention..
Regarding Claim 11, Claim 11 recites the use of a first and second vector and an AAV vector which includes the genus of all AAV vectors, and therefore, the unexpected results are not commensurate in scope with the claimed invention.
Regarding Claims 27 and 28, Claims 27 and 28 recite a AAV vector and an AAV9 vector but do not recite the use of a specific Cas protein, dual-AAV system, or method such that unexpected results are commensurate in scope.
Allowable Subject Matter
Claims 5, 26 and 30 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 5 and 26 are rejected under 35 USC 112(d) failing to include all the limitations of the claim upon which it depends.
Regarding Claim 5, Claim 4 is obvious over Zhang, Lin, and Ui-Tei.
Zhang does not teach SEQ ID NO: 38, SEQ ID NO: 40-42, and SEQ ID NO: 28.
The closest prior art is Zhang, which teaches SEQ ID NO: 147 which has a single misalignment with SEQ ID NO: 38. An alignment is provided below.
SEQ ID NO. 38 UAGCAAGUU G AAAUAAGGCUAGUCCGUUAUCAACUU
||||||||| : ||||||||||||||||||||||||||
SEQ ID NO. 147 UAGCAAGUU A AAAUAAGGCUAGUCCGUUAUCAACUU
Zhang
Zhang teaches SEQ ID NO: 1 as a MS2-loop but does not teach the specific substitutions to create SEQ ID NO: 40, 41, and 42 but rather a general suggestion to substitute GC nucleotides. One skilled in the art would have no suggestion or motivation to modify specific nucleotides to G or C to create SEQ ID NO: 40, 41 and 42.
A prior art search for SEQ ID NO: 28 failed to reveal relevant prior art.
Regarding Claim 26, a prior art search failed to reveal SEQ ID NO: 1. Components of SEQ ID NO: 1 including SEQ ID NO: 38 and SEQ ID NO: 42 are described above for Claim 5.
Regarding Claim 30, a prior art search for SEQ ID NO: 28 failed to reveal relevant prior at. Components of SEQ ID NO: 28 including SEQ ID NO: 38 and SEQ ID NO: 42 are described above for Claim 5.
Conclusion
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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/K.N.R./Examiner, Art Unit 1636
/NEIL P HAMMELL/Supervisory Patent Examiner, Art Unit 1636