DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/25/2025 has been entered.
Claim Status and Formal matters
This action is in response to filed 7/25/2025.
Claim 1, 16-17have been amended.
Claims 31-37 has been added by amendment.
Applicant’s election of (a) Specific scale of mRNA Applicant elects 1 gram or greater, (b) Length of nucleotides of mRNA Applicant elects 0.5 kb or greater, (c) Specific efficiency of capping Applicant elects 70% or greater (d) Specific integrity of mRNA Applicant elects 65% or greater, encompassed by claims 1, 2, 4, and 6-22. (ce) pH for the capping and tailing reaction Applicant elects pH 7.5, encompassed by claims 1, 2, 4, and 6-22. 2 in the reply filed on 1/17/2023 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1, 2, 4, 8-11, 16-17, 23-25, 29-30-37 are being examined.
Response to Amendment
The declaration by Abysalh under 37 CFR 1.132 filed 7/25/2025 is insufficient to overcome the rejection of claims 1, 2, 4, 8-11, 26-17, 23-25, 29-30-37 based upon written description as set forth in the last Office action because: The declaration provide the declarants credentials. The declaration continues by providing the declarants opinion of what the invention encompasses. The declaration continues, “The enzymes used for the examples of the application were the most commonly available and widely used enzymes at the time the application was filed. For poly A polymerases (PAPs), there were two enzymes commercially available, originating from E. coli and from yeast. The & coli PAP is much more widely used than yeast PAP. Hence, the E. coli PAP used in the examples of this application would have been considered the standard. Nevertheless, these two enzymes function in the same manner. As shown in the enclosed scientific article of Yehudai-Resheff and Schuster, published in Nucleic Acids Research in 2000, /. coli and yeast PAPs were tested in the same butter conditions for a polyadenylation assay thus indicating that both enzymes can perform tailing under the same pH and MgCl. concentration conditions (p.1140 “In vitro RNA polyadenylation assay”).” This argument has been thoroughly reviewed but is not considered persuasive as the claims are not limited to commercially available enzymes, the yeast or E. coli enzymes. Thus the argument is not consistent with the breadth of the claims.
The declaration continues by asserting, “A person of ordinary skill in the art would have known that they could use any of the commercially available 2’O-methyltransferase and guanylyl transferase capping enzymes and poly A polymerase tailing enzymes that were disclosed in the art before the filing date of this application, such as the &. coli Poly(A) Polymerase from New England Biolabs, Inc. (reference M0276S), the Vaccima Capping System (i.e. a guanylyl transferase} from New England Biolabs, Inc. (reference M20808, 2013), or mRNA Cap 2-O-Methyltransferase from New England Biolabs, Inc. (reference M03665, 2013), to respectively cap and tail the in vitro transcribed mRNA,” This argument has been thoroughly reviewed but is not considered persuasive as the claims recite, “2'O- methyltransferase and a guanylyl transferase, and wherein tailing the in vitro transcribed purified mRNA is performed by a poly A polymerase.” Thus the claims encompass any of the recited enzymes from any species. Further this is merely the opinion of the declarant who is an inventor in the instant case.
MPEP 716.01 (c) III. States:
Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application meets the requirements of 35 U.S.C. 112 is not entitled to any weight; however, facts supporting a basis for deciding that the specification complies with 35 U.S.C. 112 are entitled to some weight); In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, "some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him." 385 F.2d at 456, 155 USPQ at 524 (emphasis in original)).
In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, the interest of the expert in the outcome of the case, and the presence or absence of factual support for the expert’s opinion. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). See also In re Oelrich, 579 F.2d 86, 198 USPQ 210 (CCPA 1978) (factually based expert opinions on the level of ordinary skill in the art were sufficient to rebut the prima facie case of obviousness); Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989) (statement in publication dismissing the "preliminary identification of a human b-NGF-like molecule" in the prior art, even if considered to be an expert opinion, was inadequate to overcome the rejection based on that prior art because there was no factual evidence supporting the statement); In re Carroll, 601 F.2d 1184, 202 USPQ 571 (CCPA 1979) (expert opinion on what the prior art taught, supported by documentary evidence and formulated prior to the making of the claimed invention, received considerable deference); In re Beattie, 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992) (declarations of seven persons skilled in the art offering opinion evidence praising the merits of the claimed invention were found to have little value because of a lack of factual support); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991) (conclusory statements that results were "unexpected," unsupported by objective factual evidence, were considered but were not found to be of substantial evidentiary value).
Although an affidavit or declaration which states only conclusions may have some probative value, such an affidavit or declaration may have little weight when considered in light of all the evidence of record in the application. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).
Priority
The instant application was filed 02/10/2021 and claims priority from provisional application 62972471 , filed 02/10/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/25/2025 is being considered by the examiner.
The listing of references throughout the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
. Claim 31 has been amended to recite, “wherein: (i) capping the in vitro transcribed purified mRNA has an efficiency of 80% or more assessed by ultra-performance liquid chromatography (UPLC)/ mass spectrometry (MS) by quantifying a percentage of capped mRNA present in a final in vitro transcribed purified capped and tailed mRNA preparation; (ii) tailing the in vitro transcribed purified mRNA has an efficiency of 75% or more assessed by a capillary electrophoresis fragment analyzer as the percentage of capped and tailed mRNA having a tail length within a target range; and (iii) the mRNA integrity, assessed by the capillary electrophoresis fragment analyzer after capping and tailing as the percentage of the main peak area relative to the total peak area, is at least 65%.” Review and searching of the specification did not reveal antecedent basis for the limitations. Further the specification does not recite, “main peak area” and “total peak area.”
Response to Arguments
This is a new ground of objection.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 8, 10-11, 16-17, 23-25, 30-37 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.
Witten description
As set forth in In re Alonso 88 USPQ2d 1849 (Fed. Cir. 2008), at 1851:
The written description requirement of 35 U.S.C. § 112, ¶ 1, is straightforward: “The specification shall contain a written description of the invention ….” To satisfy this requirement, the specification must describe the invention in sufficient detail so “that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 [41 USPQ2d 1961] (Fed. Cir. 1997); see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 [76 USPQ2d 1724] (Fed. Cir. 2005); Eiselstein v. Frank, 52 F.3d 1035, 1039 [34 USPQ2d 1467] (Fed. Cir. 1995).
Alonso at 1852:
A genus can be described by disclosing: (1) a representative number of species in that genus; or (2) its “relevant identifying characteristics,” such as “complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics.” Enzo, 323 F.3d at 964.
Claim 1 has been amended to recite, “method of capping and tailing an in vitro transcribed purified messenger RNA (mRNA) preparation, the method comprising enzymatically capping and tailing the in vitro transcribed purified mRNA in a reaction mixture comprising a reaction buffer comprising 0.1 mM to 1.0 mM MgCl2 and having a pH of 7.5.
Dependent claim 8 requires the functional outcome of the method results in capped and tailed purified mRNA of at least 5 mg, 1 g, 15 g, 100 g, or 250 g in a single batch.
Dependent claim 9 requires the functional outcome of the wherein the method results in capped and tailed purified mRNA of at least 100 g in a single batch.
Dependent claim 10 requires the functional outcome of the wherein tailing the in vitro transcribed purified mRNA comprises addition of a poly-A tail having a length of about between 50 nucleotides and 750 nucleotides.
Dependent claim 11 requires the functional outcome of the wherein tailing the in vitro transcribed purified mRNA comprises addition of a poly-A tail having a length of about 100 nucleotides.
Dependent claim 16 requires the functional outcome of the wherein capping and tailing the in vitro transcribed purified mRNA results in capped and tailed mRNA that has greater integrity after capping and tailing, in comparison to capped and tailed mRNA using a reaction buffer having a pH of 8.0 or above, wherein the mRNA integrity is assessed by a capillary electrophoresis fragment analyzer.
Dependent claim 17 requires the functional outcome of the wherein capping and tailing the in vitro transcribed purified mRNA results in a capped and tailed mRNA that has greater integrity after capping and tailing, in comparison to capped and tailed mRNA using a reaction buffer having a MgCl2 concentration of greater than 1.0 mM, wherein the mRNA integrity is assessed by a capillary electrophoresis fragment analyzer.
Dependent claim 23 requires the functional outcome of the wherein tailing the in vitro transcribed purified mRNA comprises addition of a poly-A tail having a length of about between 100 nucleotides and 200 nucleotides.
Dependent claim 24 requires the functional outcome of the wherein tailing the in vitro transcribed purified mRNA comprises addition of a poly-A tail having a length of about between 100 nucleotides and 1500 nucleotides.
Dependent claim 25 requires the functional outcome of the wherein tailing the in vitro transcribedpurified mRNA comprises addition of a poly-A tail having a length of about between 100 nucleotides and 500 nucleotides.
Dependent claim 29 requires the functional outcome of the wherein capping and tailing the in vitro transcribed purified mRNA is performed in 50 to 135 minutes.
Dependent claim 30 requires the functional outcome of the wherein the reaction buffer further comprises salt at a concentration ranging from 0.1 mM to 100 mM.
Dependent claim 31 requires the functional outcome of the wherein: (i) capping the in vitro transcribed purified mRNA has an efficiency of 80% or more assessed by ultra-performance liquid chromatography (UPLC)/ mass spectrometry (MS) by quantifying a percentage of capped mRNA present in a final in vitro transcribed purified capped and tailed mRNA preparation; (ii) tailing the in vitro transcribed purified mRNA has an efficiency of 75% or more assessed by a capillary electrophoresis fragment analyzer as the percentage of capped and tailed mRNA having a tail length within a target range; and (iii) the mRNA integrity, assessed by the capillary electrophoresis fragment analyzer after capping and tailing as the percentage of the main peak area relative to the total peak area, is at least 65%.
Dependent claim 32 requires the functional outcome of the wherein tailing the in vitro transcribed purified mRNA has an efficiency of between 75% and 95%.
Dependent claim 33 requires the functional outcome of the wherein tailing the in vitro transcribed purified mRNA has an efficiency of 80% or more.
Dependent claim 34 requires the functional outcome of the wherein capping the in vitro transcribed purified mRNA has an efficiency of 90% or more.
Dependent claim 35 requires the functional outcome of the wherein capping the in vitro transcribed purified mRNA has an efficiency of 95% or more.
Dependent claim 36 requires the functional outcome of the wherein the mRNA integrity after capping and tailing is at least 75%.
Dependent claim 37 requires the functional outcome of the wherein the tail length is within the target range of 100- 1500 nucleotides.
The claims encompass a 2'O- methyltransferase and a guanylyl transferase from any species. Any enzyme with poly A polymerase from any species . The claims further require the O- methyltransferase, a guanylyl transferase, poly A polymerase provide the functional outcome of the dependent claims provided above.
Thus the claims encompass an enormous genus of O- methyltransferase, a guanylyl transferase with capping activity under conditions 0.1 mM to 1.0mM MgCl2 and having a pH of 7.5. The claims encompass an enormous genus of enzymes with poly A polymerase activity under conditions 0.1 mM to 1.0mM MgCl2 and having a pH of 7.5. Further the claims an enormous genus of buffers which have the pH 7.5 and a genus of MgCl2 concentrations between 0.1 mM to 1.0 mM. The claims encompass any amount of any of the recited enzymes. The claims encompass any mRNA and any concentration of mRNA and the reactions to be performed on any time standard. The claims encompass any buffer, any salt conditions, any nucleotide concentrations, etc.
Dependent claims require specific functional outcomes with respect to the capping efficiency, tailing efficiency, length of Poly-A tail, amount of mRNA and integrity of mRNA.
Benner et al (Trends in Genetics (2001) volume 17, pages 414-418) teaches that, “Here, the ‘homology-implies-equivalency’ assumption is restricted to a subset of homologs that diverged in the most-recent common ancestor of the species sharing the homologs. This strategy is useful, of course. But it is likely to be far less general than is widely thought. Two species living in the same space, almost by axiom, cannot have identical strategies for survival. This, in turn, implies that two orthologous proteins might not contribute to fitness in exactly the same way in two species” (see page 414, 3rd column last full paragraph). Benner specifically describes that although the leptin gene homologs have been found in mice and humans, their affect is different (see page 414, 3rd column last paragraph-3rd column page 415). Benner specifically teaches that the leptin gene in mice plays a major role in obesity, but no such effect has been demonstrated in humans due perhaps to the different evolutionary forces. Benner thus teaches that the activity and function of genes in different species is unpredictable.
Ramanathan (Nucleic Acids Research, 2016, Vol. 44, No. 16 7511–7526) teaches there are 3 activities required in eukaryotes for capping (RNA triphosphatase (TPase), RNA guanylyltransferase (GTase) and guanine-N7 methyltransferase (guanine-N7 MTase) “ (table 1 and figure 2). Ramanathan teaches nuclear capping activities are conserved in eukaryotes, but capping machinery varies (7513, 1st column top). Ramanathan teaches, “From human osteosarcoma U-2 OS cells, a cytoplasmic capping complex composed of RNGTT, a 5monophosphate kinase and Nck1 has been found to recap 5monophosphate RNA in vitro (3,24,25) (Table 1).” (page 7513, 1st column bottom). Ramanathan teaches, “In metazoans, the RNA triphosphatase is independent of divalent metal ions and invariably physically linked to the GTase activity in a bifunctional protein (Mce1 in mice; generally known as RNA guanylyltransferase and 5-triphosphatase RNGTT in mammals).” (page 7516, 1st column 3rd full paragraph). Ramanathan also teaches there is viral RNA capping (7518-7519).
Martins (THE JOURNAL OF BIOLOGICAL CHEMISTRY Vol. 276, No. 49, Issue of December 7, pp. 45522–45529, 2001) teaches the baculoviral capping enzyme Lef4 has different pH dependency depending on the divalent cation in the buffer (figure 2) and activity is dependent on divalent cation and mutation (table 1).
Laishram (FEBS Letters (2014) volume 588, pages 2185-2197) teaches there are multiples types of human poly-A- polymerases with different functions (figure 1, table 1). Laishram teaches, “In humans, pre-mRNAs are polyadenylated in several different ways due to the existence of more than one polyadenylation site, allowing a single gene to encode multiple mRNA transcripts” (page 2186, 2nd column, bottom)
May et al (Science (1988) volume 241, page 1441) teaches there are millions of known taxonomic species in each kingdom (table 3). May further teaches there are at least 4,500 known mammalian species (table 3).
Racaniello (Virology blog (2013)) states, “ Statistical methods were then used to estimate that P. giganteus likely harbor 58 different viruses, of which 55 were identified in this study. If the 5,486 known mammalian species each harbor 58 viruses, there would be ~320,000 unknown viruses that infect mammals. This is likely to be un under-estimate as only 9 viral families were targeted by the study. In addition, the PCR approach only detects viruses similar to those that we already know. Unbiased approaches, such as deep DNA sequencing, would likely detect more. Let’s extend this analysis to additional species, even though it might not be correct to do so. If we assume that the 62,305 known vertebrate species each harbor 58 viruses, the number of unknown viruses rises to 3,613,690 – over three times more than Dr. Morse’s estimate. The number rises to 100,939,140 viruses if we include the 1,740,330 known species of vertebrates, invertebrates, plants, lichens, mushrooms, and brown algae. This number does not include viruses of bacteria, archaea, and other single-celled organisms. Considering that there are 1031 virus particles in the oceans – mostly bacteriophages – the number is likely to be substantially higher.”
Terns (Role of nuclear Poly(A) Polymerase in the 3‘-end processing of Precursor messenger RNA (1990)) teaches, “Substrates containing hexamer point mutations (AAUAAA to AACAAA) or size-controlled transcripts which lacked entirely poly(A) signals did not support the assembly of active complexes and were also not polyadenylated.” (223-224)
Qui(Virology 316 (2003) 313–324) teaches
PNG
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492
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Greyscale
While the specification references a single species of guanylate transferase and 2-O’methyltransferase for capping and the use of poly A polymerase for the tailing. The specification does not provide which species any of these enzymes are from or any other conditions. Merely citing a class of enzymes such as guanylate transferase, 2-O’methyltransferase for capping, guanylyl transferase, poly A polymerase which are vary in structure sequence and activity in different species does not provide adequate written description for capping, guanylyl transferase, poly A polymerase. The art demonstrates both capping and tailing enzymes encompass a genus of enzymes which have different functions and conditions and would not inherently provide for the functional outcomes using the “optimized conditions” asserted to be the novelty of the claims. Thus the claims lack adequate written description.
The independent claim provide no structural limitation on the enzymes required for the capping activity and tailing activity. Thus the claims encompass any enzymatic means of capping and tailing. This is an enormous genus. The teachings of the specification are limited to capping generic recitations with respect to using 2O’-methyltransferase and guanylyl transferase and tailing using poly-A polymerase with only CFTR and DNAH5 mRNA.
Thus while the claims encompass a genus the teachings are limited to capping and tailing of a single mRNA using a specific enzyme. This does not provide adequate written description of the breadth of the claims.
New Matter
MPEP 2163 IB New or amended claims section II
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP §§ 714.02 and 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04
Claim 31 has been added by amendment and recites, “The method of claim 1, wherein: (i) capping the in vitro transcribed purified mRNA has an efficiency of 80% or more assessed by ultra-performance liquid chromatography (UPLC)/ mass spectrometry (MS) by quantifying a percentage of capped mRNA present in a final in vitro transcribed purified capped and tailed mRNA preparation; (ii) tailing the in vitro transcribed purified mRNA has an efficiency of 75% or more assessed by a capillary electrophoresis fragment analyzer as the percentage of capped and tailed mRNA having a tail length within a target range; and (iii) the mRNA integrity, assessed by the capillary electrophoresis fragment analyzer after capping and tailing as the percentage of the main peak area relative to the total peak area, is at least 65%.”
Review and searching of the specification did not reveal antecedent basis for the limitations. The specification ultra performance liquid chromatography once and does not provide it in the context of 80% efficiency(page 51). The specification teaches capillary electrophoresis and discusses in 0017 with respect to CGE smear and 0129 with respect to RNA integrity and thus does not appear to teach the limitation with respect to 75% efficiency. Further the specification does not recite, “main peak area” and “total peak area.” Thus the amendment appears to be new matter.
Response to Arguments
The response traverses the rejection in view of arguments with respect to commercially available enzymes. These arguments are not persuasive as the claims are not limited to commercially available enzymes.
The response further provides arguments with respect to the declaration. These arguments are not persuasive for the reasons of record.
The response provides traverses the rejection asserting, “the type of mRNA, the amount of enzymes, the amount of mRNA, and the duration of the reaction would have been known to a person of ordinary skill in the art based on the skilled artisan's knowledge as well as routine experimentation, as it was common practice in the technical field. “First, MPEP 716.01(c) makes clear that "The arguments of counsel cannot take the place of evidence in the record. In re Schulze , 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long - felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant."
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, 2, 4, 8-11, 16-17, 23-25, 29-30-37 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 1 recites, “ comprising enzymatically capping and tailing the in vitro transcribed purified mRNA in a reaction mixture comprising a reaction buffer comprising 0.1 mM to 1.0 mM MgCl2 and having a pH of 7.5, wherein capping the in vitro transcribed purified mRNA is performed by a 2'O- methyltransferase and a guanylyl transferase, and wherein tailing the in vitro transcribed purified mRNA is performed by a poly A polymerase;.” The metes and bounds are unclear if the reaction buffer encompasses a working concentration of the MgCl2 or encompasses a stock solution which is diluted for use. Moreover it is unclear based on the context of the claim if the capping and tailing enzymes are done at the same time or sequentially. The claim should be clarified that the skilled artisan is adequately apprised of what is inside and outside the scope of the claim, so as to avoid infringement.
Claim 30 recites, “wherein the reaction buffer further comprises salt at a concentration ranging from 0.1 mM to 100 mM.” The independent claim requires MgCl2, which is a salt. Thus it is unclear if or how the MgCl2 (salt) concentration is related to the recited range.
Claim 31 recites, “in a final in vitro transcribed purified capped and tailed mRNA preparation.” The metes and bounds are unclear how “a final in vitro transcribed purified capped and tailed mRNA preparation” relates to the product of claim 1. Specifically it is unclear if the product of claim 1 is the a final in vitro transcribed purified capped and tailed mRNA preparation or if the recitation allows for purification prior to the determination of efficiencies of claim 31.
Further claim 31 recites, “the percentage of the main peak area relative to the total peak area.” The claims doe not previously recite, “percentage, main peak area, total peak area. Thus it is unclear to what these limitations refer.
Response to Arguments’
The previous grounds of tejection have been withdrawn. This is a new ground of rejection.
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 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.
Claim(s) 1, 2, 4, 8, 10-11, 16-17, 23-25, 29-30-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weissman (Peter M. Rabinovich (ed.), Synthetic Messenger RNA and Cell Metabolism Modulation: Methods and Protocols, Methods in Molecular Biology, vol. 969, DOI 10.1007/978-1-62703-260-5_3, © Springer Science+Business Media New York 2013), CellScript ( ScriptCap™ m7 G Capping System Cat. Nos. C-SCCE0610 and C-SCCE0625 (2014) ), CellScript ScriptCap™ 2'-O-Methyltransferase KitCat. Nos. C-SCMT0610 and C-SCMT0625 (2014)), Cell scrip (A-Plus™ Poly(A) Polymerase Tailing Kit Cat. No. C-PAP5104(2014) , Michael Terns (Role of nuclear Poly(A) Polymerase in the 3‘-end processing of Precursor messenger RNA (1990), , Stevens (MOLECULAR AND CELLULAR BIOLOGY. May1988.p.2005-2010), ZHELKOVSKY (MOLECULAR AND CELLULAR BIOLOGY, Oct. 1998, p. 5942–5951), Lough (US patent 7071380), Manoharan (US20110282044)
The claim requires capping and tailing mRNA in a reaction buffer comprising 0.1 mM to 1.0 mM MgCl2 and having pH of 7.5. The claims encompass capping and tailing a purified in vitro transcribed RNA. The comprising language allows for additional elements or conditions (MPE 2111.03 I)
Further claim 1 recites, “ comprising enzymatically capping and tailing the in vitro transcribed purified mRNA in a reaction mixture comprising a reaction buffer comprising 0.1 mM to 1.0 mM MgCl2 and having a pH of 7.5, wherein capping the in vitro transcribed purified mRNA is performed by a 2'O- methyltransferase and a guanylyl transferase, and wherein tailing the in vitro transcribed purified mRNA is performed by a poly A polymerase;.” It is unclear if the reaction buffer encompasses a working concentration of the MgCl2 or encompasses a stock solution which is diluted for use. Moreover it is unclear based on the context of the claim if the capping and tailing enzymes are done at the same time or sequentially.
Weissman teaches, “Multiple methods of purification from transcription or associated reactions (capping and poly(A)-tailing) to produce efficiently translated mRNA have been described, including precipitation either with alcohol (isopropanol, ethanol) in the presence of monovalent cations or with high concentration of LiCl that are supplied in commercial in vitro transcription kits, size exclusion columns, and matrices based on silica and other compounds that bind RNA. Each of these procedures removes free nucleotides, proteins, salt, and short RNA oligos with varying efficiencies, but none are capable of removing long RNA contaminants or contaminants bound to the RNA of interest. Preparative denaturing polyacrylamide gel electrophoresis is commonly used to purify in vitro transcribed RNA; however, this method is suitable only for short RNAs. (page 44).
Weissman teaches, “HPLC purification of RNA can be performed before or after the posttranscriptional addition of a 5 ‘ cap with or without methylation (ScriptCap m7G capping system and ScriptCap 2 ‘-O-methyltransferase kit, CELLSCRIPT) ( see Note 8 ) or addition of poly(A) tail with poly(A) polymerase. The in vitro transcription reaction with or without DNase treatment or associated posttranscriptional modification reactions can be directly added to the HPLC column or any standard method of initial purification can be used before application to the HPLC column.” (page (46, bottom))
While Weismann teaches in vitro transcribed RNA can be purified prior to capping and tailing, Weissman does not specifically teach use of buffer for poly adenylation at pH of 7.5 comprising 0.1 mm to 1 mM of MgCl2.
However, ScriptCap™ m7 G Capping System Cat. Nos. C-SCCE0610 and C-SCCE0625 teaches, “The ScriptCap m7 G Capping System offers an alternative to making capped RNA by co-transcriptional capping during an in vitro transcription (IVT) reaction in which a dinucleotide cap analog (e.g., m7G(5')ppp(5')G) is included in place of a portion of the GTP.2 Provided that the 5' terminus of the RNA is not structured, the capping efficiency using the ScriptCap m7G Capping System can approach 100%. In contrast, since the cap analog competes with GTP for initiation of transcription by the RNA polymerase, co-transcriptional capping efficiency is limited by the concentration of the cap analog and the ratio of its concentration to that of the GTP. Thus, the percentage of RNA that is capped using a cap analog in a transcription reaction is always less than 100%.” (page 1, bottom)
ScriptCap™ m7 G Capping System Cat. Nos. C-SCCE0610 and C-SCCE0625 teaches,
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ScriptCap™ m7 G Capping System teaches “Provided that the 5' terminus of the RNA is not structured, the capping efficiency using the ScriptCap m7G Capping System can approach 100%.”(page 1, bottom)
CellScript ScriptCap™ 2'-O-Methyltransferase teaches, “Cap 1 RNA can also be synthesized from uncapped RNA in a single reaction mixture that contains both the ScriptCap m7G Capping System and ScriptCap 2'-O-Methyltransferase plus SAM.” (page 1).
CellScript ScriptCap™ 2'-O-Methyltransferase teaches simultaneously capping and methylation with buffers having pH of about 7.5 and about 0.5 mM MgCl2 (10 microliters of 12.5 mM MgCl2 in 27 .5 microliters added to 72.5 ). . (page 2 and 4).
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CellScript ScriptCap™ 2'-O-Methyltransferase and ScriptCap™ m7 G Capping System Cat. Nos. C-SCCE0610 and C-SCCE0625 both teach poly A tailing with polyA polymerase (4)
Cell script (A-Plus™ Poly(A) Polymerase Tailing Kit Cat. No. C-PAP5104(2014) teaches the use of buffer with a pH of about 7.5 and about 0.5 mM MgCl2 (10 microliters of 100 mM MgCl2 in 24 .5 microliters added to 75.5 microliter RNA for total volume of 100 microliters ).
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Terns is a dissertation about the role of Poly A on 3’ processing of mRNA. Terns teaches polyadenylation reaction buffer (8 mM Hepes pH 7.9, 40 mM KC1, 1mM MgCl2 0.1 mM.” EDTA, and freshly added 0.2 mM DTT and 1 mM ATP (page 79) with a poly A polymerase activity. Terns teaches over 90% of preMRNA is converted to Poly(A)+ products (224).
Zhelkovsky teaches PAP assays done at pH7.5 (pap Assays).
Lough teaches PAP polyadentylation at ph 7.5 (column 44).
Manoharan teaches, “ Guanylyltransferase: Reaction mixtures (20 uL) containing 50 mM Tris-HCl, pH 7.5, 5 mM DTT, 1.25 mM MgCl.sub.2, 25 uM [.alpha.-.sup.32P] GTP (9900 cpm/.mu.mol), 39 .mu.mol (of 5' ends) triphosphate-terminated RNA oligonucleotide” (205)
As stated in the MPEP, 2144.05 II:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
1Therefore it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claims to maximize enzymatic capping efficiencies, tailing efficiencies and RNA integrity for in vitro transcribed mRNA in which include 0.1 to 1.0 mm MgCl2 and a pH of 7.5 in a reaction buffer. The artisan would be motivated to optimize capping efficiencies as ScriptCap™ m7G Capping System teaches capping approaching 100%. The artisan would be motivated to improve tailing efficiencies as Tern suggest 90% or greater. The artisan would be motivated to optimize the buffers for capping and tailing to provide the greatest amount of intact mRNA with caps and tails, as capping and tailing increases translation and stability of the mRNA for use in therapies. The artisan would have a reasonable expectation of success as the artisan is merely using known reagents at known concentrations taught by the art.
With regards to claim 2, ScriptCap™ m7 G Capping System teaches a capping buffer with KCl (page 2).
With regards to claim 4, CellScript kits, Terns and Stevens render obvious MgCl2 of 1mM.
The specification teaches, “ [0029] Approximately or about: As used herein, the term "approximately" or "about," as applied to one or more values of interest, refers to a value that is similar to a stated reference value. In certain embodiments, the term "approximately" or "about" refers to a range of values that fall within 25%, 20%, 19%, 18%, 17%, 16%, 15%, 14%, 13%, 12%, 11%, 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, or less in either direction (greater than or less than) of the stated reference value unless otherwise stated or otherwise evident from the context (except where such number would exceed 100% of a possible value).”
With regards to claims 10-11, 23-25 Terns teaches, “Both magnesium and manganese-dependent reactions, catalyzing addition of 200-250 and 400-800 adenylic acid residues respectively” (abstract).
With regards to claims 12-13, Terns teaches over 90% of preMRNA is converted to Poly(A)+ products (224).
With regards to claims 14-15, ScriptCap™ m7 G Capping System teaches “Provided that the 5' terminus of the RNA is not structured, the capping efficiency using the ScriptCap m7G Capping System can approach 100%.”(page 1, bottom)
Claims 16-17, 23-25, 31-37 provide limitations with respect to the intended outcome of the claim. The claim provide no limitations which inherently or explicitly alter the active steps of the claims.
The specification teaches, “ [0029] Approximately or about: As used herein, the term "approximately" or "about," as applied to one or more values of interest, refers to a value that is similar to a stated reference value. In certain embodiments, the term "approximately" or "about" refers to a range of values that fall within 25%, 20%, 19%, 18%, 17%, 16%, 15%, 14%, 13%, 12%, 11%, 10%, 9%, 8%, 7%, 6%, 5%, 4%, 3%, 2%, 1%, or less in either direction (greater than or less than) of the stated reference value unless otherwise stated or otherwise evident from the context (except where such number would exceed 100% of a possible value).”
With regards to claims 1, 16-17,31-37, Stevens teaches intact RNA with integrity of greater than 65% and efficiency of greater than about 80%.
Further it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claims to purify the in vitro transcribed, tailed and capped mRNA to provide mRNA of the greatest purity (highest capping efficiency, tailing efficiency and integrity). The artisan would be motivated to purify the tailed and capped mRNA to eliminate contaminants that might provide artifacts or other discrepancies in further experiments. The artisan would have a reasonable expectation of success as the artisan is merely purifying a known mRNA by known methods.
With regards to claim 29, ScriptCap™ m7 G Capping System teaches incubating with RNA for 30 minutes (page 3). A-Plus™ Poly(A) Polymerase Tailing Kit teaches tailing for 60 minutes (page 3).
Therefore it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claims that combined the two reactions would be approximately 90 minutes. The artisan would be motivated to cap and poly A tail mRNA to allow for greater translation and mRNA stability. The artisan would have a reasonable expectation of success as the artisan is merely using known methods.
With regards to claim 30, Tern teaches use of the capping buffer comprising 60 mM KCl in concentrations of 0.1 mM to 100mM (procedures).
Response to Arguments
The response beings traversing the rejection by providing arguments to the concentration of the MgCl2 in the 10X buffers of the Capping and tailing buffers of Cell script. This argument has been thoroughly reviewed but is not considered persuasive as the cell script teachings demonstrate the buffers and diluted more than 10X. Further the is no evidence the MgCl2 concentration is anything more than routine optimization of reaction conditions for capping and tailing enzymes.
The response continues by providing arguments about the prior art teaching conditions close to those of the claims with respect to pH and MgCl2 concentations, but not specifically teaching ph 7.5 and the recited conditions. This argument has been thoroughly reviewed but is not considered persuasive as the MPEP, 2144.05 II:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only chang