Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Applicant’s amendments and remarks, filed 08/12/2025, are acknowledged.
Claims 2, 7, 10, 14-19, and 21 are canceled.
Claims 1, 3, 5-6, 8-9, 11, 13, and 20 are amended.
Claims 22-27 are new.
Claims 1, 3-6, 8-9, 11-13, 20, and 22-27 are pending.
As such, claims 1, 3-6, 8-9, 11-13, 20, and 22-27 are pending examination and currently under consideration for patentability under 37 CFR 1.104.
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/12/2025 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/4/2025 was filed after the mailing date of the final Office Action on 02/12/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Objections
The claim objections are withdrawn. Issues regarding minor informalities have been sufficiently addressed through amendments to the claims filed on 08/12/2025.
The specification objections are withdrawn. Issues regarding minor informalities and missing the cross-reference statement have been sufficiently addressed through amendments to the specification on 08/12/2025.
Withdrawn Rejections
Applicant’s arguments, see pages 23-34, filed 08/12/2025, with respect to claims 1-15 and 20-21 rejected under 35 USC 112(b) as allegedly being indefinite have been fully considered and are persuasive. The issue regarding have been sufficiently addressed through amendments to the claims. Specifically, Examiner acknowledges that:
The term “vehicle” recited in claims 1(a) and 21 has been removed;
Claims 1 and 8 were amended to remove the improper Markush grouping;
The term “pro-peptide” in claims 3 and 11 has been defined as being encoded by exon 2, exon 3, and exon 4 of the MPO gene;
The terms “transduced” and “transfected” recited in claims 6 and 9 have been removed;
Examiner understands that the phrase “exhibiting an inhibited or eliminated expression and/or activity of MPO” recited in claims 6 and 9 is meant to be in comparison to the original (unmodulated) MPO expression and/or activity in the transplanted subject (see pg. 57 of the specification).
Claim 9 was amended to add the term “BM” before “cell population”; and,
The phrase “and related conditions” recited in claim 20 has been removed.
Further, Examiner acknowledges that claims 2, 10, and 21 are canceled thus rendering the rejection moot. As such, the rejection under 35 USC 112(b) is withdrawn.
Applicant’s arguments, see pages 43-53, filed 08/12/2025, with respect to claims 1-15 and 20-21 rejected under 35 USC 112(a) as allegedly not being enabled for a method of modulating the expression and/or activity of MPO in all mammals with all gene editing compounds and all undifferentiated BM cells nor a method for treating, preventing, ameliorating, inhibiting or delaying the onset of any MPO-related condition or disorder, or NETosis and related conditions, in all mammals have been fully considered and are persuasive. Examiner acknowledges the claims have been amended to specify that the “gene editing compound” is a “CRISPR/Cas system”, and the claims were amended to specifically recite specific MPO-related conditions or disorders such as AD, MS, and PAH. It is known in the art that elevated MPO activity is associated with the claimed conditions or disorders as evident by Siraki (Redox Biology 46 (2021) 102109), thus the claimed method of reducing MPO activity would enable treatment for the claimed disease. Further, Examiner acknowledges that claims 2, 7, 10, 14-15, and 21 are canceled thus rendering the rejection moot. As such, the scope of enablement rejection under 35 USC 112(a) is withdrawn.
Applicant’s remarks, see pages 53-58, filed on 08/12/2025, with respect to claims 1-2, 8, 10, 14-15, and 20 rejected under 35 USC 102 as allegedly anticipated by Zhang et al have been fully considered and are persuasive. Examiner acknowledges that claims 2, 10, and 14-15 are canceled, thus rendering the rejection moot. Further, Examiner acknowledges that claims 1, 8, and 20 recite “at least one undifferentiated BM cell, or BM cell population exhibiting a reduced or inhibited expression and/or activity of MPO, said undifferentiated BM cell being a hematopoietic stem cell (HSC) or a hematopoietic progenitor cell” which is not disclosed by Zhang et al. While the art does disclose of administering cells (such as stem cells derived from bone marrow) that are capable of differentiating completely or partially, these cells are directed to administering within the ear and is not directed to reducing or inhibiting expression and/or activity of MPO. As such, the rejection of claims 1, 8, and 20 under 35 USC 102 is withdrawn.
New Objections and Rejections Necessitated by Amendment
Claim Objections
Claims 1, 5, and 13 are objected to because of the following informalities:
Claim 1(a): “CRISPER” should read “CRISPR”.
Claims 5 and 13: “SEQ ID NO: 35 SEQ ID NO: 42” should read “SEQ ID NO: 35, SEQ ID NO: 42”.
Appropriate correction is required.
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 4-5, 12-13, and 24-25 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 3, 11, and 23 recite wherein said at least one gRNA targets a protospacer comprised within at least one exon of the MPO gene encoding at least one MPO protein domain present in the MPO protein and wherein said MPO protein domain is at least one of MPO pro- peptide, MPO signal peptide, MPO light chain subunit and MPO heavy chain subunit wherein said MPO pro-peptide domain is encoded by exon 2, exon 3, and exon 4 of the MPO gene. However, claims 4-5, 12-13, and 24-25 recite “wherein said at least one gRNA targets at least one protospacer comprised within at least one of: exon 1, exon 2, exon 3, exon 5, exon 6, exon 8, exon 9 and exon 12 of the human MPO gene” and corresponding sequences which broaden the scope of the invention because it incorporates additional exons (e.g., exon 1 and exon 6). As such, claims 4-5, 12-13, and 24-25 are rejected.
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 § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-6, 8-9, 11-13, 20, and 22-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 8, 20, and 22 recite the limitation "said nucleic acid sequence" in (a)(ii). There is insufficient antecedent basis for this limitation in the claim. As such, claims 1, 8, 20 and 22, and their dependent claims, are rejected.
Claims 1, 8, and 22 recite “AVV” as an acronym for ANCA-associated vasculitis; however, the specification recites “AVV” and “AAV” as acronyms for this condition (see pgs. 65-66) and “AAV” for adeno associated vectors (see pgs. 24-25), thus it is unclear what acronym Applicant is using for ANCA-associated vasculitis.
Claims 1, 8, and 22 recite “at least one undifferentiated BM cell, or BM cell population”. It is unclear whether the “BM cell population” is also “undifferentiated” or if it only applies to the singular BM cell.
Claims 6 and 9 recite the phrase “at least one BM cell or BM cell population modified by and/or comprising at least one CRISPR/Cas system”. It is unclear if the same CRISPR/Cas system that is comprised within the BM cell or BM cell population is also modifying said BM cell or BM cell population, or if a different CRISPR/Cas system is modifying said BM cell or BM cell population.
Claim Rejections - 35 USC § 112(a) Written Description
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, 3-4, 6, 8-9, 11-12, 20, 22-24, and 26-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed. The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the application. These include “level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention.”
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, disclosure of drawings, or by disclosure of relevant identifying characteristics, for example, structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the Applicants were in possession of the claimed genus. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
Claim 1 is drawn to a method of reducing the expression and/or activity of Myeloperoxidase (MPO) in a mammalian subject, the method comprising the step of administering to said subject an effective amount of at least one of: (a) at least one clustered regulatory interspaced short palindromic repeat (CRISPR)/CRISPR associated (cas) protein system that inhibits or reduces the expression and/or activity of MPO in at least one undifferentiated bone marrow (BM) cell of said subject, said CRISPER/Cas system comprising at least one of:(i) at least one CRISPR/cas protein: and at least one guide RNA (gRNA) that targets a protospacer within the MPO gene, (ii) a nucleic acid molecule encoding said Cas protein, or a nucleic acid construct comprising said nucleic acid sequence: and a nucleic acid sequence encoding said gRNA or a nucleic acid construct comprising said nucleic acid sequence: and (iii) composition comprising (i) or (ii); and (b) at least one undifferentiated BM cell, or BM cell population exhibiting a reduced or inhibited expression and/or activity of MPO, said undifferentiated BM cell being a hematopoietic stem cell (HSC) or a hematopoietic progenitor cell; wherein said subject is a subject affected by or suffering from at least one MPO- related condition or disorder selected from the group consisting of: Alzheimer's disease (AD), multiple sclerosis (MS), Pulmonary arterial hypertension (PAH), Antineutrophil cytoplasmic autoantibody (ANCA)-Associated Vasculitis (AVV) and ANCA-associated glomerulonephritis (AAGN).
Claim 3 is drawn to the method according to claim 2, wherein: (i) said at least one gRNA targets a protospacer comprised within at least one exon of the MPO gene encoding at least one MPO protein domain present in the MPO protein; or (ii) said at least one gRNA targets a protospacer comprised within at least one exon of the MPO gene encoding at least one MPO protein domain present in the MPO protein and wherein said MPO protein domain is at least one MPO pro-peptide, MPO signal peptide, MPO light chain subunit and MPO heavy chain subunit; wherein said MPO pro-peptide domain is encoded by exon 2, exon 3, and exon 4 of the MPO gene.
Claim 4 is drawn to the method according to claim 3, wherein said at least one gRNA targets at least one protospacer comprised within at least one of: exon 1, exon 2, exon 3, exon 5, exon 6, exon 8, exon 9 and exon 12 of the human MPO gene.
Claim 6 is drawn to the method according to claim 1, wherein said at least one undifferentiated BM cell or BM cell population of (b) is: (i) at least one BM cell or cell population modified by and/or comprising at least one CRISPR/Cas system that inhibits or reduces the expression and/or activity of MPO in said cells, wherein said at least one undifferentiated BM cell or BM cell population is of an autologous or of an allogenic source; or (ii) said at least one undifferentiated BM cell or BM cell population is a BM cell or BM cell population of an allogeneic subject exhibiting an inhibited or eliminated expression and/or activity of MPO.
Claim 8 is drawn to the method according to claim 1, for treating, ameliorating, inhibiting or delaying the onset of an MPO-related condition or disorder in a mammalian subject, the method comprising the step of administering to said subject a therapeutically effective amount of at least one of: (a) at least one CRISPR/Cas system that inhibits or reduces the expression and/or activity of MPO in at least one undifferentiated BM cell of said subject, said CRISPR/Cas system comprising at least one of: (i) at least one CRISPR/cas protein; and at least one gRNA that targets a protospacer within the MPO gene; (ii) a nucleic acid molecule encoding said Cas protein, or a nucleic acid construct comprising said nucleic acid sequence; and a nucleic acid sequence encoding said gRNA or a nucleic acid construct comprising said nucleic acid sequence; and (iii) a composition comprising (i) or (ii); and (b) at least one undifferentiated BM cell or BM cell population exhibiting a reduced or inhibited expression and/or activity of MPO; wherein said MPO-related condition or disorder is selected from the group consisting of: AD, MS, PAH, AVV and AAGN.
Claim 9 is drawn to the method according to claim 8, wherein said at least one undifferentiated BM cell or BM cell population is: (a) at least one BM cell or BM cell population modified by, and/or comprising at least one CRISPR/Cas system that inhibits or reduces the expression and/or activity of MPO in said cells, wherein said undifferentiated BM cell or BM cell population is of an autologous or of an allogenic source; or (b) said at least one undifferentiated BM cell or BM cell population of an allogeneic subject exhibiting an inhibited or eliminated expression and/or activity of MPO.
Claim 11 is drawn to the method according to claim 8, wherein: (a) said at least one gRNA targets a protospacer comprised within at least one exon of the MPO gene encoding at least one MPO protein domain present in the MPO protein; or (b) said at least one gRNA targets a protospacer comprised within at least one exon of the MPO gene encoding at least one MPO protein domain present in the MPO protein, wherein said MPO protein domain is at least one MPO pro-peptide, MPO signal peptide, MPO light chain subunit and MPO heavy chain subunit; wherein said MPO pro-peptide domain is encoded by exon 2, exon 3, and exon 4 of the MPO gene.
Claim 12 is drawn to the method according to claim 11, wherein said at least one gRNA targets at least one protospacer comprised within at least one of exon 1, exon 2, exon 3, exon 5, exon 6, exon 8, exon 9 and exon 12 of the human MPO gene.
Claim 20 is drawn to a method for inhibiting neutrophil extracellular trap (NET) activation and release, and/or NETosis in a mammalian subject, said method comprising the step of administering to said subject a therapeutically effective amount of at least one of: (a) at least one CRISPR/Cas system that inhibits or reduces the expression and/or activity of MPO in at least one undifferentiated BM cell of said subject, the Cas system comprising at least one of:(i) at least one CRISPR/cas protein; and at least one gRNA that targets a protospacer within the MPO gene;(ii) a nucleic acid molecule encoding said Cas protein, or a nucleic acid construct comprising said nucleic acid sequence; and nucleic acid sequence encoding said gRNA or a nucleic acid construct comprising said nucleic acid sequence; and (b) undifferentiated BM cell population exhibiting a reduced or inhibited expression and/or activity of MPO; (c) any composition comprising at least one of the CRISPR/Cas system of (a), and/or the undifferentiated BM cell population of (b).
Claim 22 is drawn to a method for treating, ameliorating, inhibiting or delaying the onset of an MPO-related condition or disorder in a mammalian subject, the method comprising the step of administering to said subject a therapeutically effective amount of at least one of: (a) at least one CRISPR/Cas system that inhibits or reduces the expression and/or activity of MPO in at least one undifferentiated BM cell of said subject, said CRISPR/Cas system comprising at least one of: (i) at least one CRISPR/cas protein; and at least one gRNA that targets a protospacer within the MPO gene; said at least one gRNA targets a protospacer comprised within at least one exon of the MPO gene encoding at least one MPO protein domain present in the MPO protein; (ii) a nucleic acid molecule encoding said Cas protein, or a nucleic acid construct comprising said nucleic acid sequence; and a nucleic acid sequence encoding said gRNA or a nucleic acid construct comprising said nucleic acid sequence; and(iii) a composition comprising (i) or (ii); and(b) at least one undifferentiated BM cell or BM cell population exhibiting a reduced or inhibited expression and/or activity of MPO; wherein said MPO-related condition or disorder is selected from the group consisting of: AD, MS, PAH, AVV and AAGN.
Claim 23 is drawn to the method according to claim 22, wherein said at least one gRNA targets a protospacer comprised within at least one exon of the MPO gene encoding at least one MPO protein domain present in the MPO protein and wherein said MPO protein domain is at least one of MPO pro-peptide, MPO signal peptide, MPO light chain subunit and MPO heavy chain subunit; wherein said MPO pro-peptide domain is encoded by exon 2, exon 3, and exon 4 of the MPO gene.
Claim 24 is drawn to the method according to claim 23, wherein said at least one gRNA targets at least one protospacer comprised within at least one of: exon 1, exon 2, exon 3, exon 5, exon 6, exon 8, exon 9 and exon 12 of the human MPO gene.
Claim 26 is drawn to the method according to claim 22, wherein said at least one undifferentiated BM cell or BM cell population of (b) is at least one BM cell or BM cell population modified by and/or comprising at least one CRISPR/Cas system that inhibits or reduces the expression and/or activity of MPO in said cells, wherein said at least one undifferentiated BM cell or BM cell population is of an autologous or of an allogenic source.
Claim 27 is drawn to the method according to claim 22, wherein said at least one undifferentiated BM cell or BM cell population of (b) is a BM cell or BM cell population of an allogeneic subject exhibiting an inhibited or eliminated expression and/or activity of MPO.
The specification discloses of targeting MPO in the experimental allergic encephalomyelitis (EAE) model of MS (see Example 1). The specification disclose that Lin-hematopoietic progenitors retain their hematopoietic reconstitution potential and are adequate for CRISPR-Cas9 KO experiments (see pg. 103). The specification also discloses of targeting MPO in the FAD model of Alzheimer disease (AD) (see Example 2). The specification discloses that blood samples from FAD model mice subjected to transplantation of BM cells obtained from MPO KO mice showed less peroxidase activity, confirming MPO KO hematopoietic reconstitution of MPO KO cells in these mice (see pg. 104, Figs. 3E-3F). Further, almost undetectable MPO-mRNA levels were found in BM derived from wildtype-MPO KO and 5XFAD-MPO KO mice, as compared to high levels in the controls indicating for efficient exchange of the hematopoietic population in the transplanted mice (see pg. 105, Fig. 4B). Example 3 discloses MPO knock-out using CRISPR/Cas9 technology in isolated HSCs (see pg. 107). Example 4 discloses MPO knock-out using CRISPR/Cas9 technology in human cells (HEK293); specifically, discloses transfecting HEK293 cells with ribonucleoproteins (RNP) complexes containing Cas9 protein, fluorescently labeled tracrRNA and crRNA sequences that target the human MPO encoding sequences and the corresponding protospacers: T173 (denoted by SEQ ID NO: 33 and SEQ ID NO: 43, respectively), D260 (denoted by SEQ ID NO: 34 and SEQ ID NO: 44, respectively), H502 (denoted by SEQ ID NO: 35 and SEQ ID NO: 45, respectively), C319 (denoted by SEQ ID NO: 42 and SEQ ID NO: 46, respectively). Example 5 further teaches of MPO knock-out using CRISPR/Cas9 technology in human cells (HEK293, HL-60). Specifically, Example 5 disclose of 39 gRNA sequences (SEQ ID NOs: 107-140 and 142-145) that displayed successful knock-out targeting exons of the MPO gene (see Table 5). In human hematopoietic cells demonstrating that delivery of RNPs with synthetic MPO gRNAs (gRNA nos. 9, 12, 19, 16, 27, 28, 31, 33, 36, 37, and 39) into HSPCs led to allelic disruption of the targeted MPO sites (see Figs. 15A-16). Table 6 also disclose of gRNAs (SEQ ID NOs: 141 and 148-182) that target various MPO genes. The specification discloses of using the CRISPR/Cas9 system for manipulating human MPO function and levels (see Example 6). Specifically, Example 6 disclose of the following amino acid substitutions that: form conformational changes in the MPO protein or changes in protomer biosynthesis and processing – C167A, C180A, C319A, C158A, R128A, N355A; mimic human MPO deficiency substitutions – T173C, M251T, R569W, R499C, G501S; interfere with promoter heme binding – Q257A, D260A, M409A, E408A, H261A, H502A; and, interfere with proper protein glycosylation – N355A (see pg. 116). Example 7 discloses of a procedure for a clinical study highlighting hematopoietic stem cell transplantation (HSCT) combined with CRISPR-mediated gene editing. Example 8 discloses of a proposed treatment of PAH using MPO knock-out. Lastly, Example 9 discloses of a proposed treatment of crescentic glomerulonephritis (CGN) using MPO knock-out.
However, the specification fails to disclose that Applicant was in possession of the large genera of methods of reducing the expression and/or activity of MPO in a mammalian subject as recited in the claims. Specifically, the specification fails to disclose that Applicant was in possession of administering an effective amount of any CRISPR/Cas system comprising any gRNA that targets a protospacer within any mammalian species of MPO gene.
Although the specification discloses of utilizing CRISPR-Cas9 mediated KO experiments on the BM cells of MS mice models to determine MPO levels and of AD mice models to determine peroxidase activity, MPO-mRNA and amyloid-β levels, functional behavior, inflammation activity, and APOE expression, the claims are not limited to these constructs or conditions, and are inclusive of any CRISPR/Cas system comprising any gRNA that targets a protospacer within any mammalian species of MPO gene. This indicates that there are hundreds, if not thousands, of possible compositions and disorders encompassed by the claims. Thus, the claims encompass a vast genus of CRISPR/Cas systems-gRNAs that have the claimed functions. However, the specification provides limited guidance on the structure and steps required to impart the claimed function(s). Therefore, the specification does not provide adequate written description to identify the broad and variable genus of MPO reducing CRISPR/Cas systems-gRNAs because, inter alia, the specification does not disclose a correlation between the necessary structure of the CRISPR/Cas system-gRNA and the function(s) recited in the claims; and thus, the specification does not define the claimed genus and encompassed species, except by function. Although the term “protein” does impart some structure, the structure that is common to proteins is generally unrelated to its specific binding function; therefore, correlation is less likely for proteins than for other molecules. Accordingly, the specification does not define any structural features commonly possessed by the members of the genus, because while the description of an ability of the claimed substance may generically describe the molecules’ function, it does not describe the substance itself. A definition of function does not suffice to describe the genus because it is only an indication of what the substance does, rather than what it is; therefore, it is only a definition of a useful result rather than a definition of what achieves the result. In addition, because the genus of substances is highly variable (i.e. each substance would necessarily have a unique structure, See MPEP 2434), the generic description of the substance is insufficient to describe the genus. Further, given the highly diverse nature of proteins, particularly in binding site sequences, even one of skill in the art cannot envision the structure of a protein by only knowing its binding characteristics. Thus, the specification does not provide substantive evidence for possession of this large and variable genus, encompassing a potentially massive number of gene editing compounds and gRNA compositions and variants thereof claimed only be a functional characteristic(s) and/or partial structure.
A biomolecule sequence described only by a functional characteristic, without any known or disclosed correlation between that function and the structure of the sequence, normally is not sufficient identifying characteristics for written description purposes, even when accompanied by a method of obtaining the agent. The specification does not adequately describe the correlation between the chemical structure and function of the genus, such as structural domains or motifs that are essential and distinguish members of the genus from those excluded. Thus, the genus of peptides has no correlation between their structure and function.
MPEP § 2163.03(V) states:
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement. “Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
Applicant has not shown possession of a representative number of species of reducing the expression and/or activity of MPO in a mammalian subject comprising the step of administering to said subject an effective amount of at least one of: (a) at least one clustered regulatory interspaced short palindromic repeat (CRISPR)/CRISPR associated (cas) protein system that inhibits or reduces the expression and/or activity of MPO in at least one undifferentiated bone marrow (BM) cell of said subject, said CRISPER/Cas system comprising at least one of:(i) at least one CRISPR/cas protein: and at least one guide RNA (gRNA) that targets a protospacer within the MPO gene, (ii) a nucleic acid molecule encoding said Cas protein, or a nucleic acid construct comprising said nucleic acid sequence: and a nucleic acid sequence encoding said gRNA or a nucleic acid construct comprising said nucleic acid sequence: and (iii) composition comprising (i) or (ii); and (b) at least one undifferentiated BM cell, or BM cell population exhibiting a reduced or inhibited expression and/or activity of MPO, said undifferentiated BM cell being a hematopoietic stem cell (HSC) or a hematopoietic progenitor cell.
The disclosure of only one or two species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure "indicates that the patentee has invented species sufficient to constitute the gen[us]." See Enzo Biochem, 323 F.3d at 966, 63 USPQ2d at 1615; Noelle v. Lederman, 355 F.3d 1343, 1350, 69 USPQ2d 1508, 1514 (Fed. Cir. 2004) (Fed. Cir. 2004) ("[A] patentee of a biotechnological invention cannot necessarily claim a genus after only describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated.") (MPEP 2163).
The instant claims do not fully describe the required method, or present any form of specific threshold or other standards that would allow the method to achieve the required function. Accordingly, the specification also does not provide adequate written description to identify the broad genus of CRISPR/Cas systems-gRNAs, claimed only be a function characteristic(s) and not structures per se, because inter alia, it does not describe a sufficient number and/or a sufficient variety of representative species to reflect the breadth and variation within the claimed genus. Consequently, based on the lack of information within the specification, there is evidence that a representative number and a representative variety of the numerous proteins and gRNAs had not yet been identified and thus, the specification represents little more than a wish for possession. Therefore, one of skill in the art would not conclude that Applicant was in possession of the broad and highly variable genus of gene editing compounds claimed only by a partial structure and functional characteristic(s). Thus the method described by the instant specification encompasses an overly broad genus, and there is no correlation between the steps of the method, the structure of the gRNAs, and the functional outcome.
As stated above, Applicant has not demonstrated possession of the overly broad genus of methods of reducing the expression and/or activity of MPO comprising administering a CRISPR/Cas system. For example, Ma et al. (ACS Appl. Mater. Interfaces 2022, 14, 6358−6369; previously submitted with the Office Action mailed on 05/07/2024) disclose of biomimetic, pH-responsive metal organic framework (MOF) nanoparticles to deliver carbon nanodots (C-dot) nanozyme and CRISPR/Cas9 system for site-specific treatment of ulcerative colitis (UC) (see Abstract). In this system, C-dots and CD98 CRISPR/Cas9 plasmid were successfully encapsulated into MOF carrier by a one-pot approach and then camouflaged with macrophage membrane (see Abstract). Cas9 plasmids with two different CD98-targeting gRNAs were constructed on the basis of plasmid pX458 (see pg. 6361, left column). Ma et al. disclose that MPO activity could reflect the degree of neutrophil infiltration at inflammatory sites, could be used for evaluating the severity of UC (see pg. 6366, left column). After inducing dextran sulfate sodium (DSS), MPO activity was increased while treatment with the CRISPR/Cas system decreased the MPO activity; indicating that neutrophil infiltration was decreased and the severity of UC was mitigated (see pg. 6366, left column).
Additionally, Yan et al. (Sci. Adv. 7, eabj0624 (2021); previously submitted with the Office Action mailed on 05/07/2024) disclose of a CRISPR-Cas9 prodrug nanosystem (termed NanoProCas9) that combines the targeted delivery and the conditional activation of CRISPR-Cas9 for the precision therapy of inflammatory bowel disease (see Abstract). NanoProCas9 is composed of (i) cationic poly(β-amino ester)(PBAE) capable of complexing plasmid DNA encoding destabilized Cas9 (dsCas9) nuclease, (ii) a layer of biomimetic cell membrane coated on PBAE/plasmid nanocomplexes for the targeted delivery of PBAE/dsCas9 complexes, and (iii) the stimuli-responsive precursory molecules anchored on the exofacial membrane (see Abstract). Similarly to the teachings of Ma et al. above, Yan et al. found that MPO activity was highly elevated in the colon of mice in the colitis group and was markedly decreased in the NanoProCas9-treated group (see pg. 8, left column; Fig. 5F).
Furthermore, Colarmartino et al (Blood 142 (2023) 7120) developed a gene therapy approach to pulmonary arterial hypertension (PAH) in which autologous HSCs will undergo gene editing using CRISPR/Cas9 to achieve bi-allelic disruption of the MPO gene (see 2nd paragraph). These MPO-knock-out HSCs will then be autologous transplanted; that autologous transplantation of HSPC in which the MPO gene is disrupted is expected to prevent progression of PAH due to the essential role of neutrophil MPO activity on disease development (see 2nd paragraph). Colarmartino et al identified a sgRNA that leads to high frequency disruption of MPO in primary human CD34+ hematopoietic stem and progenitor cells (HSPC), leading to efficient elimination of MPO protein in the resultant neutrophils (see 3rd paragraph). That sequence was assessed for genome-wide off-target and showed no detectable locus, validating it as a lead candidate for safe gene editing strategy (see 3rd paragraph). MPO KO differentiated cells exhibit reduced neutrophil extracellular traps formation (NETosis) and absence of MPO protein (see 3rd paragraph). An optimized gene editing protocol for HSC was optimized and showed consistent allelic disruption over 80%. The edited cells retain hematopoietic potential and showed no skewing in the generated lineages in an in vitro colony forming assay (see 3rd paragraph).
As such, the art indicates there are known species of methods of modulating the expression and/or activity of MPO comprising administering a CRISPR/Cas system-gRNAs that are structurally different than the compounds disclosed in the instant application.
In Amgen Inc. v. Sanofi, 124 USPQ2d 1354 (Fed. Cir. 2017), relying upon Ariad Pharms., Inc. v. Eli Lily & Co., 94 USPQ2d 1161 (Fed Cir. 2010), it is noted that to show invention, a patentee must convey in its disclosure that is “had possession of the claimed subject matter as of the filing date. Demonstrating possession “requires a precise definition” of the invention. To provide this precise definition” for a claim to a genus, a patentee must disclose “a representative number of species within the scope of the genus of structural features common to the members of the genus so that one of skill in the art can visualize or recognize the member of the genus” (see Amgen at page 1358). Also, it is not enough for the specification to show how to make and use the invention, i.e., to enable it (see Amgen at page 1361). An adequate written description must contain enough information about the actual makeup of the claimed products — “a precise definition, such as structure, formula, chemic name, physical properties of other properties, of species falling with the genus sufficient to distinguish the gene from other materials”, which may be present in “functional terminology when the art has established a correlation between structure and function” (Amgen page 1361). Most significant to the present case, the Court held that "knowledge of the chemical structure of an antigen [does not give] the required kind of structure-identifying information about the corresponding antibodies" (Amgen at 1361). The idea that written description of an antibody can be satisfied by the disclosure of a newly-characterized antigen “flouts basic legal principles of the written description requirement” as it “allows patentees to claim antibodies by describing something that is not the invention, i.e., the antigen... And Congress has not created a special written description requirement for antibodies” (Amgen at page 1362).
Abbvie v. Centocor (Fed. Cir. 2014) is also relevant to the instant claims. In Abbvie, the Court held that a disclosure of many different antibodies was not enough to support the genus of all neutralizing antibodies because the disclosed antibodies were very closely related to each other in structure and were not representative of the full diversity of the genus. The Court further noted that functionally defined genus claims can be inherently vulnerable to invalidity challenge for lack of written description support especially in technology fields that are highly unpredictable where it is difficult to establish a correlation between structure and function for the whole genus or to predict what would be covered by the functionally claimed genus.
The instant case has many similarities to AbbVie above. First, the claims clearly attempt to define the genus of CRISPR/Cas systems-gRNAs by the functions of reducing or inhibiting the expression and/or activity of MPO. As noted by AbbVie above, functionally defined genus claims can be inherently vulnerable to invalidity challenge for lack of written description. Second, there is no information in the specification based upon which one of skill in the art would conclude that the disclosed species for which applicant has identified as having the recited functions would be representative of the entire genus. The specification discloses no structure to correlate with the function. Therefore, the specification provides insufficient written description to support the genus encompassed by the claim.
Furthermore, regardless whether a compound is claimed per se or a method is claimed that entails the use of the compound, the inventor cannot lay claim to that subject matter unless he can provide a description of the compound sufficient to distinguish infringing compounds from non-infringing compounds, or infringing methods from non-infringing methods. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir. 2004).
Vas-Cath Inc. v. Mahurkar, 19 USPQ2d 1111, makes clear that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed." (See page 1117.) The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed." (See Vas-Cath at page 1116.)
Further, the skilled artisan cannot envision the detailed chemical structure of the encompassed gRNAs, regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method for isolating it. The nucleic acid and/or protein itself is required. See Fiers v. Revel, 25 USPQ2d 1601, 1606 (CAFC 1993) and Amgen Inc. V. Chugai Pharmaceutical Co. Ltd., 18 USPQ2d 1016. In Fiddes v. Baird, 30 USPQ2d 1481, 1483, claims directed to mammalian FGF's were found unpatentable due to lack of written description for the broad class. The specification provided only the bovine sequence.
Finally, University of California v. Eli Lilly and Co., 43 USPQ2d 1398, 1404. 1405 held that: ... To fulfill the written description requirement, a patent specification must describe an invention and does so in sufficient detail that one skilled in the art can clearly conclude that "the inventor invented the claimed invention." Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (1997); In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (" [T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed."). Thus, an applicant complies with the written description requirement "by describing the invention, with all its claimed limitations, not that which makes it obvious," and by using “such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention." Lockwood, 107 F.3d at 1572, 41 USPQ2d 1966.
Furthermore, regardless whether a compound is claimed per se or a method is claimed that entails the use of the compound, the inventor cannot lay claim to that subject matter unless he can provide a description of the compound sufficient to distinguish infringing compounds from non-infringing compounds, or infringing methods from non-infringing methods. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir. 2004).
Regarding nucleic acid-based therapeutics, in this case gRNAs, the efficacy of any possible DNA or RNA based therapeutic modality is highly unpredictable. This unpredictability stems from an inability to predict the effects of any particular sequence the expression or function of any target. As taught by Aagaard et al. (Advanced Drug Delivery Reviews 59 (2007) 75–86; previously submitted with the Office Action mailed on 05/07/2024), the development of RNAi based therapeutics faces several challenges, including the need for controllable or moderate promoter systems and therapeutics that are efficient at low doses (see page 79), the ability of an unpredictable number of sequences to stimulate immune responses, such as type I interferon responses (see page 79), competition with cellular RNAi components (see page 83), the side effect of suppressing off targets (see page 80), and challenging delivery (see page 83). The success of antisense strategies, including anti-RNA and anti-DNA strategies are also highly unpredictable. Warzocha et al. (Leukemia and Lymphoma (1997) Vol. 24. pp. 267-281; previously submitted with the Office Action mailed on 05/07/2024) teach that the efficacy of antisense effects varies between different targeted sites of RNA molecules and three-dimensional RNA structures (see page 269), while DNA-targeting strategies have numerous problems including a restricted number of DNA sequences that can form triple helices at appropriate positions within genes and the inaccessibility of particular sequences due to histones and other proteins (see page 269). These references demonstrate that variation in RNA or DNA based therapeutics will often dramatically affect the biological activity and characteristics of the intended therapeutic. McKeague et al. (J Nucleic Acids. 2012;2012:748913. Epub 2012 Oct 24; previously submitted with the Office Action mailed on 05/07/2024) teach that aptamers have particular challenges because unlike antibodies or molecular imprinted polymers, their tertiary structure is highly dependent on solution conditions and they are easily degraded in blood. Further, they have less chemical diversity than other antagonist molecules (see page 2), and have issues associated with determining the Kd measurements for a given molecule (see page 13).
Specifically, regarding CRISPR/Cas9-mediated genome editing, Peng et al. (FEBS Journal 283 (2016) 1218–1231; previously submitted with the Office Action mailed on 05/07/2024) disclose that the CRISPR/Cas9 system has improved tremendously with respect to exploring the pathogenesis of diseases and correcting disease mutations, as well as phenotypes, due to short gRNAs (sgRNAs) precisely directing Cas9 to target sites and functions as an endonuclease to efficiently produce breaks in DNA double stands (see Abstract). However, there are still pitfalls regarding this system. Firstly, Cas9 can recognize genomic loci under the guidance of sgRNAs that bind to 20 target sequences (see pg. 1222, left column). However, sgRNAs with +85 nucleotide tracrRNA tails demonstrated concatenated and interspaced two base mismatches, which occurred in the proximal region of PAM, which greatly reduced Cas9 activity thus suggesting that excessively truncated gRNA would also result in Cas9 losing cutting activity (see pg. 1222, left column). Further, excessive sgRNA:Cas9 complexes may give rise to off-target effects as a result of the inevitable complementarity of nonspecific sequences in the genome (see pg. 1222, right column). Secondly, rational sgRNA design is of prime concern as CRISPR/Cas9 systems are highly programmable (see pg. 1223, left column). It’s assumed that Cas9/sgRNA complexes could cleave DNA in the presence of PAM and an adjacent complementary target sequence, however, many experiments show that some sgRNAs are less efficient or even inactive (see pg. 1223, left column). Thirdly, delivery methods need to be optimized. Peng et al. disclose that the demand for large fragment expression, multiple plasmids have been used to target different sites; however, all or part of the plasmids are often randomly integrated into the host genome (see pg. 1223, right column). Additionally, delivering via transfection are inefficient in primary cells and may lead to cytotoxicity, and once transfected plasmid DNA can also persist inside the cells for several days, which may aggravate off-target effects (see pg. 1225, right column). Delivery via electroporation or microinjection may be stressful to cells and may be inefficient (see pg. 1225, right column). With the use of viral vectors to deliver CRISPR systems, IDLVs are used to transfer CRISPR systems into mammalian cells but Cas9 expression may persist after IDLV delivery in quiescent and slowly dividing cells leading to high off-target effects (see pg. 1226, left column). Lastly, some of the fundamental attributes of the CRISPR/cas9 system remain unclear, including the catalytic mechanism of Cas9, the mechanisms of underlying target sites identification and the basis for PAM-dependence (see pg. 1228, right column).
Given the teachings of Aagaard et al, Warzocha et al, and McKeague et al, the claimed nucleic acid therapeutics could not be predicted based on the targets selected or similarities to the disclosed example therapeutics. Additionally, given the teachings of Peng et al., the claimed CRISPR/Cas9 system cannot be predicted based on several different aspects such as gRNA design, delivery methods, and off-target effects. Therefore, it is impossible for one of skill in the art to predic