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 .
Claim Status
Claims 1, 4 and 24-25 are pending.
Claims 1, 4 and 24-25 are under examination.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9th, December, 2025 has been entered.
Moot Claim Rejections - 35 USC § 112(a)
Enablement
The rejection of claim 57 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement is rendered moot in view of the cancellation of this claim.
Claim Rejections - 35 USC § 112(a)
Enablement
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, 4 and 24-25 remain rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Wands Factors
The factors to be considered in determining whether undue experimentation is required are summarized In re Wands 858 F.2d 731, 8 USPQ2nd 1400 (Fed. Cir, 1988). The Court in Wands states: “Enablement is not precluded by the necessity for some 'experimentation.'” Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. “Whether undue experimentation is needed is not a single simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” (Wands, 8 USPQ2d 1404). The factors to be considered in determining whether undue experimentation is required include: (1) the quantity of experimentation necessary, (2) the amount or direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. While all of these factors are considered, a sufficient amount for a prima facie case is discussed below.
Nature of the Invention
Instant claims are drawn to a method for increasing expression of a fetal hemoglobin in a cell comprising contacting the cell with a small molecule inhibitor of CUL3 wherein the inhibitor is a small molecule selected from the group consisting of MLN4924, suramin, and D1-591.
Breadth of the Claims
Instant claims encompass methods comprising contacting cells with an inhibitor of a
target protein that functions to regulate HbF expression, “wherein the inhibitor is a CUL3 small molecule inhibitor selected from the group consisting of MLN4924, suramin, and DI-591.”
This encompasses specifically the small molecules of MLN4924, suramin, and DI-591.
Additionally, the instantly claimed method requires the functional result of increasing expression of a fetal hemoglobin (HbF) in a cell, which encompasses all possible cell types in vitro or in vivo.
Direction of Guidance Presented
While contemplating methods of contacting cells with small molecule CUL3 inhibitors MLN4924, suramin, and DI-591 (para. [0082]), Applicant provides limited guidance for said methods.
Present Working Examples
Example 3 (pg. 40-72)
This example merely identifies target proteins, and does not provide any guidance regarding method steps including CUL3 small molecule inhibitors including MLN4924, suramin, and DI-591.
Bioinformatic analyses was performed to identify proteins and protein complexes that are involved in HbF upregulation obtained from CRISPR library screens in Examples 1-2. Identified targets are shown in Tables 3 and 4.
The top molecular pathways enriched with multiple targets were overlapped with Kegg pathways maps. Top pathways are shown in Table 5.
An additional library of targets was screened by using another set of CRISPR screening libraries. Hits are shown in Table 6.
Identified Hits were further screened based on their expression in blood tissue using GTEx gene expression data.
To focus on erythroid lineage, hits were further screened based on the expression of lineage specific molecules identified by the DMEP project. Hits with specific induction pattern in erythroid lineage are shown in Table 8.
Example 4 (pg. 73-75)
The example involves non-elected species of RNP complexes and shRNA which are structurally distinct methods and does not provide any guidance regarding method steps including CUL3 small molecule inhibitors including MLN4924, suramin, and DI-591.
In Example 4, the target protein CUL3 was analyzed.
CRISPR-Cas9 was used to inhibit CUL3 via Cas9 RNP complexes with specific guide RNA for CUL3 (SEQ ID NO: 94-96).
shRNA was used to inhibit aCUL3 with specific sequences (SEQ ID NO: 101-103).
Inhibition of CUL3 using shRNA or the Cas9-RNP showed increased on HbF expression (Figures 8B, C, D and E).
The impact on HbF levels was studied in vitro in differentiated CD34+ cells.
Absent Working Examples
Importantly, there are no working examples of elected small molecule inhibitors of CUL 3 including MLN4924, suramin, and DI-591.
State of the Art and Unpredictability of the Art
MLN4924
Regarding MLN4924, Applicant is directed to the art of Tong et al. (Sci Rep. 2017 Jul 17;7(1):5599.; henceforth “Tong”). Tong evidences a method of contacting a cell (human ccRCC cells; abstract; Figure 1) with MLN4924. Although Tong evidences MLN4924 inhibits Cullins (pg. 2 last para.), Tong is silent to any effect on HbF. Further, Tong evidences that MLN4924 blocks Cullins neddylation and inactivates CRLs and, in turn, triggers cell-cycle arrest, apoptosis, senescence and autophagy (abstract).
Suramin
Regarding Suramin, Applicant is directed to the art of Jennings et al. (Parasitol Int
. 2002 Dec;51(4):381-8.). Jennings evidences a method of contacting cells (protozoan parasites
Trypanosoma brucei) (abstract; pg. 382 col. 1) with Suramin. Jennings evidences contacting the cells (Trypanosoma brucei), kills the cells (“eliminate the parasites”; abstract). Jennings is entirely silent to HbF expression.
DI-591
Regarding DI-591, Applicant is directed to the art of Zhou et al. (Nat Commun. 2017 Oct 27;8(1):1150.; see IDS filed 6th, December, 2021; henceforth “Zhou”). Zhou evidences a method of contacting cells with DI-591 (KYSE70 esophageal cancer cells and THLE2 immortalized liver cells; Figure 5). Zhou is entirely silent to any effect on HbF.
Cell Types and Expression
Applicant’s claims are merely drawn to contacting all possible cell types with small molecule inhibitors of CUL 3 including MLN4924, suramin, and DI-591. However, it is not possible for all possible cell types to express HbF and therefore have the result of increased HbF. Further, the claimed cells must be able to express CUL3 for contacting with CUL3 inhibitor to have an effect. Specifically, Applicant’s claim recites “optionally a eukaryotic cell,” but CUL3 is a eukaryotic and specifically usually a mammalian protein, so most non-eukaryotic cells would not be affected by applying inhibitors of CUL 3 including MLN4924, suramin, and DI-591 because they do not have the CUL3 protein. Applicant is directed to the art of Sarikas et al. (Genome Biol. 2011 Apr 28;12(4):220.; henceforth “Sarikas”). Sarikas evidences cullins are a mammalian protein family (summary). Specifically, Applicant is directed to Figure 1 of Sarikas which evidences Cullin 3 is not present in A. thaliana, S. cerevisiae, or S. pombe. Accordingly, because not all cell types express Cullin 3, Applicant is not enabled for methods comprising contacting all possible cell types with small molecule inhibitors of CUL 3 including MLN4924, suramin, and DI-591 because the pathway these act upon is not present.
Collectively, the arts of Tong, Jennings, and Zhou evidence the state of the art provides no nexus between the claimed small molecule inhibitors and the functional effect of HbF expression. The instant specification does not remedy this deficiency because it provides minimal guidance and no working examples of the claimed small molecule inhibitors of CUL 3 including MLN4924, suramin, and DI-591 in methods of contacting cells and increasing HbF expression.
Therefore, regarding small molecule inhibitors of CUL 3 including MLN4924, suramin, and DI-591 because the art is silent to any effects these inhibitors have on HbF, and because not all cells express CUL3 or HbF, the state of the art evidences that methods of contacting cells with small molecule inhibitors of CUL 3 including MLN4924, suramin, and DI-591 are not predictable and Applicant is not enabled for such methods.
Small Molecule Inhibitors as compared to RNAi methods
As set forth above, Applicant’s claim encompasses specific small molecule inhibitors of MLN4924, suramin, and D1-591 while Applicant has no working example with specific small molecule inhibitors of MLN4924, suramin, and D1-591. Applicant’s working Examples encompass distinct alternative methods, including shRNA which is a type of RNA interference (RNAi) methods. The state of the art evidences that inhibition by RNAi is not predictably translatable to small molecule inhibition. Specifically, Applicant is directed to the prior art of Weiss et al. (Nat Chem Biol. 2007 Dec;3(12):739–744.; henceforth “Weiss”). Weiss teaches while siRNA and shRNA molecules can be obtained quickly and reasonably affordably, the generation of small-molecule inhibitors for specific proteins requires a more substantial investment (pg. 2 3rd para.). Weiss teaches that while pharmacological approaches have been quite successful for identifying potent inhibitors of classes of proteins that have a well-defined substrate and/or cosubstrate these approaches have been more challenging for the identification of agents that disrupt other aspects of protein function (pg. 2 4th para.). Importantly, Weiss teaches the biology of RNAi does not parallel the biology of small-molecule inhibition, the biological readouts using both siRNA and small-molecule approaches can be independently correct, and there is no reason to assume that they should always be aligned (pg. 7 4th para.). Wiess further teaches failure of concordance between siRNA and inhibitor studies can occur, and as important implications in biology (pg. 8 3rd para.).
Therefore, because Weiss evidences that results from RNAi do not predictably align with small molecular inhibition results, Applicant’s specification, which has a working example for RNAi (shRNA), but no working examples with the claimed small molecule inhibitors, is also not predictable, and therefore is not enabled.
Small Molecule Inhibitors as compared to CRISPR Methods
As set forth above, Applicant’s claim encompasses specific small molecule inhibitors of MLN4924, suramin, and D1-591 while Applicant has no working example with specific small molecule inhibitors of MLN4924, suramin, and D1-591. Applicant’s working Examples encompass distinct alternative methods, including RNP complexes which are a type of CRISPR Method. The state of the art evidences that the effects of inhibition by CRISPR-Cas 9 does not predictably align with small molecular inhibition. Specifically, Applicant is directed to the post-filing art of DeWeirdt et al. (Nat Commun. 2020 Feb 6;11(1):752.; henceforth “DeWeirdt”) which evidences that CRISPR knockouts are not predictably translatable to small molecule inhibition even post-filing and therefore cannot be predictable at the time of filing. The art of DeWeirdt teaches that by comparing acute CRISPR-based knockout, single cell clones, and small-molecule inhibition, while the approaches provide largely overlapping information, differences emerge, highlighting an important consideration when employing genetic screens to identify and characterize potential drug targets (abstract). DeWeirdt teaches that outliers were observed when comparing a CRISPR genetic knockout with small-molecule inhibition (pg. 8 col. 1 3rd para.; Figure 6a). DeWeirdt teaches there are differences when the protein is present in a cell but inhibited by a small molecule, compared to the complete loss of protein, and that there may be compensation by other similar proteins (pg. 8 col. 1 3rd para.). DeWeirdt teaches that although small-molecule inhibition can phenocopy genetic knockout, exceptions can arise (pg. 8 col. 1 3rd para.).
Therefore, because DeWeirdt evidences that results from CRISPR knockout do not predictably align with small molecular inhibition results, Applicant’s specification, which has a working example for CRISPR, but no working examples with the claimed small molecule inhibitors, is also not predictable, and therefore is not enabled.
Unpredictability of the Art and the Quantity of Experimentation Necessary
As the State of the Art above demonstrates, the obstacles that hinder the use of the claimed methods with small molecule inhibitors of CUL 3 including MLN4924, suramin, and DI-591 are not easy tasks to be done or solely routine experimentation to enabled particular embodiments of the claimed method. The type of experimentation would require new methodologies. This level of experimentation goes beyond what would be routine optimization know at the time of filing. As such, the amount of experimentation would be undue.
The physiological art is recognized as unpredictable (MPEP 2164.03). As set forth in In re Fisher, 166 USPQ 18 (CCPA 1970), compliance with 35 USC 112(a) requires: “That scope of claims must bear a reasonable correlation to scope of enablement provided by specification to persons of ordinary skill in the art; in cases involving predictable factors, such as mechanical or electrical elements, a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific laws; in cases involving unpredictable factors, such as most chemical reactions and physiological activity, scope of enablement varies inversely with degree of unpredictability of factors involved.” Moreover, the courts have also stated that reasonable correlation must exist between scope of exclusive right to patent application and scope of enablement set forth in the patent application (27 USPQ2d 1662 Ex parte Maize!.). In view of the foregoing, due to the lack of sufficient guidance provided by the specification regarding the issues set forth above, the state of the relevant art, and the breadth of the claims, it would have required undue experimentation for one skilled in the art to practice the instant broadly claimed invention.
Conclusion
In conclusion, the claims lack enablement because the specification provides no working examples of contacting cells with small molecule inhibitors of CUL 3 including MLN4924, suramin, and DI-591. The art at the time of effective filing fail to provide specific guidance that supplement to shortcomings of the specification and further teaches that the breadth of claims cannot predictably be performed. Further, a great deal of new methodology would need to be developed to enable the full breadth of the claims and this level of experimentation is undue.
Response to Arguments
Applicant’s arguments, filed 9th, December, 2025, have been fully considered but are not found persuasive.
Applicant argues “The skilled artisan would not have been burdened with undue experimentation to practice the full scope of the claims as amended. While all Wands factors are considered, certain factors weigh heavily in favor of the enablement of the claimed invention” (pg. 4-5).
Applicant argues “the disclosure that MLN4924 and suramin can cause cell death does not preclude a working concentration of these small molecule CUL3 inhibitors for the upregulation of HbF. The skilled artisan would know how to optimize working concentrations for the specific inhibitors recited in the claims by implementing routine experimental techniques known in the art” (pg. 5).
In response, the prior arts above evidence that known methods encompassing the active method step of instant claims, contacting the cells with the claimed small molecule inhibitors, are silent to the claimed result. The issues cited above with respect to enablement do not include optimization of specific concentrations of the inhibitors. Although routine optimization by known methods is known in the art, the claims are still not enabled for the reasons set forth above. Specifically, the state of the art teaches that when cells were contacted with the claimed inhibitors, the claimed effect was not specifically observed, and the state of the art further evidences that the examples of Applicant’s specification are not predictably translatable to small molecule methods.
Applicant argues “Example 4 and FIGS. 8A-8E show upregulation of HbF when CUL3 expression is genetically perturbed. Therefore, the skilled artisan would believe that any CUL3 inhibitor, including MLN4924, suramin, and D1-59 encompassed by the amended claims, would result in upregulation of HbF” (pg. 6).
In response this is not found persuasive because the art indicates that results are not predictably translatable from genetic perturbation of a protein as compared to small-molecule inhibition. As discussed above, the art of Weiss evidences RNAi methods are not predictably translatable to small molecule inhibition and the art DeWeirdt evidences CRISPR knockout is not predictably translatable to small molecule inhibition. Because the methods are not predictably translatable, Applicant’s disclosure of structurally distinct genetic perturbation methods cannot enable the instant claims.
Applicant is directed to MPEP 2164.06(b) (I) which cites Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 52 USPQ2d 1129 (Fed. Cir. 1999). In Enzo Biochem the court held that two patents with claims directed to genetic antisense technology (which aims to control gene expression in a particular organism), were invalid because the breadth of enablement was not commensurate in scope with the claims. Both specifications disclosed applying antisense technology in regulating three E. coli genes. Despite the limited disclosures, the specifications asserted that the "[t]he practices of this invention are generally applicable with respect to any organism containing genetic material which is capable of being expressed … such as bacteria, yeast, and other cellular organisms." Thus, the court construed the claims to encompass the application of antisense methodology in a broad range of organisms. Ultimately, the court relied on the fact that (1) the amount of direction presented and the number of working examples provided in the specification were very narrow compared to the wide breadth of the claims at issue, (2) antisense gene technology was highly unpredictable, and (3) the amount of experimentation required to adapt the practice of creating antisense DNA from E. coli to other types of cells was quite high, especially in light of the record, which included notable examples of the inventor’s own failures to control the expression of other genes in E. coli and other types of cells. Thus, the teachings set forth in the specification provided no more than a "plan" or "invitation" for those of skill in the art to experiment using the technology in other types of cells.
In the instant case, analogous to Enzo Biochem, Inc. v. Calgene, the teachings set forth in the specification provided no more than a "plan" or "invitation" for those of skill in the art to experiment with the claimed small molecule inhibitors because the state of the art evidences that small molecule inhibition is not predictably translatable from RNAi or CRISPR methods, and Applicant provides no specific guidance or method steps for the claimed method other than contacting the cell, undue experimentation would be required to arrive at the claimed invention from Applicant’s disclosure.
New 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, 4 and 24-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a method for increasing expression of a fetal hemoglobin (HbF) in a cell, optionally a eukaryotic cell” which contacts the cell with an inhibitor of Cul3 selected from the group consisting of MLN4924, suramin, and D1-591. However, Cul3 is a eukaryotic protein. Therefore, it is unclear how the cell could be prokaryotic (the other cell type option), because Cul3, the required target protein, is not expressed in prokaryotic cells. Therefore, the scope of the claim is indefinite because it is not clear how the eukaryotic cell type is optional.
By nature of their ultimate dependency on claim 1, claims 4 and 24-25 are also rejected because they do not clarify the issue.
Conclusion
No claim is allowable.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIANA N EBBINGHAUS whose telephone number is (703)756-4548. The examiner can normally be reached M-F 9:30 AM to 5:30 PM ET.
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/BRIANA N EBBINGHAUS/Examiner, Art Unit 1632 /VALARIE E BERTOGLIO/Primary Examiner, Art Unit 1632
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