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 .
Applicant's amendments to the claims filed on 01-30-2026 have been received and entered. Claim 1-2 have been amended. Claim 4 has been canceled. Claims 1-3, 5-20 are pending in the instant application
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-2, 4-8, 11-12, 14, 16 and 18, in the reply filed on 09-13-2024 is acknowledged.
Claims 3, 9-10, 13, 15, 17 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09-13-2024.
Claims 1-2, 5-8, 11-12, 14, 16 and 18 are under consideration.
Priority
This application is a CON of PCT/US2019/061270 filed on 11/13/2019 which claims priority from US provisional application no. 62/760,630 filed on 11/13/2018.
New-Claim Objections- Necessitated by amendments
Claims 1-2 are objected to because of the following informalities:
Claims 1-2 recite the phrase “wherein each gene modification comprises an insertion, deletion, inversion, duplication, or substitution of one or more nucleotides”. Claims 1-2 recite improper Markush language. When materials recited in a claim are so related as to constitute a proper Markush groups, they may be recited in the conventional manner, or alternatively. For example, either of the following is acceptable:
wherein each gene modification is selected from the group consisting of an insertion, deletion, inversion, duplication, and substitution of one or more nucleotides.
wherein each gene modification is an insertion, deletion, inversion, duplication, or substitution of one or more nucleotides.
Appropriate correction is required.
Maintained in modified form -Claim Rejections - 35 USC § 101- Necessitated by amendments
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, 5-8, 11-12, 14, 16 and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Are the claims to a process, machine, manufacture or composition of matter?
The claims recite a method for identifying genes associated with the human cell growth pathogenesis of a disorder. Here, because the method is a process, the claims are directed to at least one statutory category of invention (Step 1: YES).
Step 2(A), Prong 1: Do the claims recite an abstract idea, law of nature or natural phenomenon?
Under the broadest reasonable interpretation, the terms of the claims are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. See MPEP 2111. The claims recite abstract ideas which are mental processes: “comparing the first and second frequencies of each gene modification” ( step f of claim 1)and “comparing the frequency of each gene modification among two or more differentiated cell types” ( step d of claim 2). These steps of comparing the first and second frequencies of each gene modification and comparing the frequency of each gene modification among two or more differentiated cell types are mental steps of analyzing data and comparing the frequency of each gene modification based on data analysis. Therefore, the instant claims are reasonably considered as reciting mental steps that are judicial exceptions (Step 2A, Prong I: YES).
Step 2(A), Prong 2: Do the claims recite additional elements that integrate the judicial exception into a practical application?
In view of foregoing analysis, it is apparent that the claims recite judicial exceptions that are abstract ideas which are mental processes. While the claims would still be patent-eligible if “the claims as a whole integrate the recited judicial exceptions (Abstract ideas) into a practical application of the exception”, the additional limitations recited in the instant claims do not integrate the judicial exceptions into a practical application of the recited judicial exceptions. For example, claim 1 is directed to a method for identifying genes associated with the human cell growth pathogenesis of a neurodevelopmental disorder, comprising: (a) providing a pooled human pluripotent stem cell (hPSC) population comprising two or more hPSC lines, wherein each hPSC line comprises a different gene modification, and wherein each gene modification comprises an insertion, deletion, inversion, duplication,
or substitution of one or more nucleotides; (b) differentiating the hPSC population to a disorder-related cell population comprising two or more disorder-related cell lines; (c) measuring a first frequency of each gene modification in the disorder-related cell population; (d) growing the disorder-related cell population; (e) measuring a second frequency of each gene modification in the disorder-related cell population; and (f) comparing the first and second frequencies of each gene modification. Claim 2 is directed to a method for identifying genes associated with the human cell differentiation pathogenesis of a neurodevelopmental disorder, comprising: (a) providing a pooled pluripotent human stem cell (hPSC) population comprising two or more hPSC lines, wherein each hPSC line contains comprises a different gene modification, and wherein each gene modification comprises an insertion, deletion, inversion, duplication, or substitution of one or more nucleotides; (b) differentiating the hPSC population to a disorder-related cell population, wherein the disorder-related cell population comprises two or more differentiated cell types; (c) measuring a frequency of each gene modification presented in each of the differentiated cell types; and (d) comparing the frequency of each gene modification among two or more differentiated cell types. Claim 5 specifies that the method of claim 1, the gene modification is generated by a genetic engineering system. Claim 6 specifies that the method of claim 1, the frequency of each gene modification in the disorder-related cell population is measured by a polymerase chain reaction (PCR) method, a digital PCR method, or a droplet digital PCR (ddPCR). Claim 7 specifies the method of claim 2, wherein the step (c) further comprises isolating the differentiated cell types from the disorder-related cell population. Claim 8 specifies the method of claim 7, wherein the differentiated cell types are isolated by flow cytometry. Claim 11 specifies the method of claim 1, wherein the hPSCs are induced human pluripotent stem cells (ihPSCs). Claim 12 specifies the method of claim 2, wherein the PSCs are induced human pluripotent stem cells (ihPSCs). Claim 14 specifies the method of claim 2, wherein each of the two or more hPSC lines comprise different gene modifications. Claim 16 specifies the method of claim 2, wherein the gene modification is generated by a genetic engineering system. Claim 18 specifies the method of claim 2, wherein the frequency of each gene modification in the disorder-related cell population is measured by a polymerase chain reaction (PCR) method, a digital PCR method, or a droplet digital PCR (ddPCR).
In summary, each of the additional elements recited in the rejected claims are merely data gathering steps, including limitations regarding the types of cells used and assays used in the claimed screening methods. There are no additional steps where the information gained from the recited steps is applied in a practical manner. Thus, there are no additional elements recited in the claims, considered individually or in combination, that integrate the judicial exception of abstract ideas into a practical application of the judicial exceptions, and the claims are therefore considered to be directed to the judicial exceptions recited in claims 1 and 2. (Step 2A, Prong II: NO).
Step 2(B): Do the claims recite additional elements that amount to significantly more than the judicial exception?
The claims as a whole do not include additional elements that are sufficient to amount to
significantly more than the judicial exception of abstract ideas. In the instant case, the method steps recited in the claims all appear to be data-gathering steps that are all well-understood, routine, and conventional activity in the art:
Wang et al ( herein after Wang-1, Molecular Autism (2015) 6:55, DOI 10.1186/s13229-015-0048-6). Wang-1 teaches “CRISPR/Cas9-mediated heterozygous knockout of the autism gene CHD8 and characterization of its transcriptional networks in neurodevelopment” (title), and Wang-1 designed two separate CRISPR sgRNA sequences to target the N-terminal of CHD8 protein to generate truncated mutations (Fig. 1a). iPSCs derived from a healthy male subject were transduced with CRISPR/Cas9 vectors containing each of the two target sequences (Page 5, right column, 1st para.). Wang-1 teaches neuronal differentiation: “Neurons were generated from iPSC-derived NPCs …. the protocol leads to a mixed population of glutamatergic and GABAergic neurons, from which RNA was extracted and sent for sequencing”(Page 3, right column). Wang-1 teaches the CHD8+/- iPSC lines were used to generate NPCs and early differentiating neurons for RNA-seq analysis, together with samples prepared from the parental WT clones, for a total of eight samples (two biological replicates of WT and CHD8+/- at two neurodevelopmental stages) (Page 6, left column, 1st para.). Wang-1 teaches validating targeted deletions and assessing off-targets using RNA-seq reads: examined if CHD8 was targeted and edited precisely according to their CRISPR sgRNA design. A 2-bp deletion in chr14:21899785 (hg19) and a 10-bp deletion in chr14:21899722 (hg19) were identified in a proportion of RNA-seq reads that mapped to targeted regions of the two CRISPR sgRNAs in CHD8+/- samples (KO1 and KO2, respectively). This was confirmed by DNA sequencing, and called short indels (supported by at least five RNA-seq reads) from RNA-seq reads by samtools (Page 3, right column, last para to page 4). Wang-1 teaches Human iPSCs were cultured and fed daily in mTeSR1 (Stem Cell technologies) on Matrigel (BD)-coated plates at 37°C/ 5% CO2/ 85 % in a humidified incubator (Page 3, left column). Wang-1 teaches validating targeted deletions and assessing off-targets using RNA-seq reads(Page 3, right column, last para to page 4). Wang-1 carried out transcriptomic and bioinformatic analyses of neural progenitors and neurons derived from the CHD8 mutant iPSCs, and transcriptome profiling revealed that CHD8 hemizygosity (CHD8+/-) affected the expression of several thousands of genes in neural progenitors and early differentiating neurons (Abstract).
Thus, Wang-1 demonstrate methods for identifying genes associated with the human cell growth/ differentiation pathogenesis of a disorder were well-understood, routine and conventional in the art at the time of the effective filing date of the claimed invention.
Therefore, it is reasonable to conclude based on the available prior art that the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the “abstract idea” itself. Therefore, the answer to step 2B of the 101 Subject Matter Eligibility Test is “No” (Step 2B: NO).
Conclusion: Given the analysis above, it is reasonable to conclude that claims 1-2, 5-8, 11-12, 14, 16 and 18 encompass embodiments that are not directed to patent-eligible subject matter.
Response to Arguments
Applicant's arguments filed on 01-30-2026 have been fully considered but they are not persuasive.
Applicants argue that “[a]nother consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two and whether a claim recites significantly more in Step 2B is whether the claim effects a transformation or reduction of a particular article to a different state or thing ….. If such a transformation exists, the claims are likely to be significantly more than any recited judicial exception or to integrate any recited judicial exception into a practical application”. See MPEP 2106.05(c) (emphasis added). As the claims require such a transformation of the hPSC cell population (e.g., "differentiating the hPSC population to a disorder-related cell population comprising two or more disorder-related cell lines" as recited in claim 1) (Remarks, page 6-7).
Response to Arguments:
The claims recite abstract ideas which are mental processes: “comparing the first and second frequencies of each gene modification” ( step f of claim 1) and “comparing the frequency of each gene modification among two or more differentiated cell types” ( step d of claim 2). These steps of comparing the first and second frequencies of each gene modification and comparing the frequency of each gene modification among two or more differentiated cell types are mental steps of analyzing data and comparing the frequency of each gene modification based on data analysis. The claims recitations are merely data gathering steps, including limitations regarding the types of cells used and assays used in the claimed screening methods. There are no additional steps where the information gained from the recited steps is applied in a practical manner. Thus, there are no additional elements recited in the claims, considered individually or in combination, that integrate the judicial exception of abstract ideas into a practical application of the judicial exceptions.
Applicants argue that the claims require a transformation of the hPSC cell population (e.g., “differentiating the hPSC population to a disorder-related cell population comprising two or more disorder-related cell lines” as recited in claim 1). This transformation of the hPSC cell population is well-understood, routine, and conventional activity in the art as described above and summarized here: Wang-1 teaches CRISPR/Cas9-mediated heterozygous knockout of the autism gene CHD8 and characterization of its transcriptional networks in neurodevelopment (title) and neuronal differentiation: “Neurons were generated from iPSC-derived NPCs …. the protocol leads to a mixed population of glutamatergic and GABAergic neurons, from which RNA was extracted and sent for sequencing”(Page 3, right column).
Therefore, the mental steps recited in the claims are not integrated into a practical application and the claims do not recite additional elements that amount to significantly more than the judicial exception. Thus, claims 1-2, 5-8, 11-12, 14, 16 and 18 encompass embodiments that are not directed to patent-eligible subject matter.
Maintained in modified form-Claim Rejections - 35 USC § 112- Necessitated by amendments
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 1-2, 5-8, 11-12, 14, 16 and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for:
a method for identifying genes associated with the human cell growth or differentiation pathogenesis of a disorder, comprising: (a) providing a human pluripotent stem cell (PSC) population comprising two or more PSC lines, wherein each human PSC line contains a human autism gene mutation; (b) differentiating the human PSC population to a autism spectrum disorder (ASD) -related cell population comprising two or more autism spectrum disorder (ASD) -related cell lines; (c) measuring a first allele frequency of each human autism gene mutation in the autism spectrum disorder (ASD) -related cell population; (d) growing the autism spectrum disorder (ASD) -related cell population; (e) measuring a second frequency of each human autism gene mutation in the autism spectrum disorder (ASD) -related cell population; and (f) comparing the first and second frequency of each human autism gene mutation;
does not reasonably provide enablement for:
a method for identifying genes associated with the human cell growth or differentiation pathogenesis of any neurodevelopmental disorder, comprising: (a) providing a pooled human pluripotent stem cell (hPSC) population comprising two or more hPSC lines, wherein each of the hPSC line comprises a different gene modification wherein each gene modification comprises an insertion, deletion, inversion, duplication, or substitution of one or more nucleotides; (b) differentiating the PSC population to any other disorder -related cell population comprising two or more any disorder -related cell lines; (c) measuring a first frequency of gene with any modification in the disorder -related cell population; (d) growing the disorder -related cell population; (e) measuring a second frequency of any gene with the modification in the disorder -related cell population; and (f) comparing the first and second frequency of each the gene with the modification.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
In determining whether Applicant's claims are enabled, it must be found that one of skill in the art at the time of invention by applicant would not have had to perform "undue experimentation" to make and/or use the invention claimed. Such a determination is not a simple factual consideration, but is a conclusion reached by weighing at least eight factors as set forth in In re Wands, 858 F.2d at 737, 8 USPQ 1400, 2d at 1404. Such factors are: (1) The breadth of the claims; (2) The nature of the invention; (3) The state of the art; (4) The level of one of ordinary skill in the art; (5) The level of predictability in the art; (6) The amount of direction and guidance provided by Applicant; (7) The existence of working examples; and (8) The quantity of experimentation needed to make and/or use the invention.
The office has analyzed the specification in direct accordance to the factors outlines in In re Wands. MPEP 2164.04 states: "[W]hile the analysis and conclusion of a lack of enablement are based on factors discussed in MPEP 2164.0l(a) and the evidence as whole, it is not necessary to discuss each factor in written enablement rejection." These factors will be analyzed, in tum, to demonstrate that one of ordinary skill in the art would have had to perform "undue experimentation" to make and/or use the invention and therefore, applicant's claims are not enabled.
Nature of the Invention:
Claims are directed to a method for identifying genes associated with the cell growth (or differentiation ) pathogenesis of a disorder, comprising: (a) providing a pluripotent stem cell (PSC) population comprising two or more PSC lines, wherein each PSC line contains a gene modification; (b) differentiating the PSC population to a disorder-related cell population comprising two or more disorder-related cell lines; (c) measuring a first frequency of each gene modification in the disorder-related cell population; (d) growing the disorder-related cell population; (e) measuring a second frequency of each gene modification in the disorder-related cell population; and (f) comparing the first and second frequencies of each gene modification, wherein each of the two or more PSC lines comprise different gene modifications, e.g., genetic mutations, wherein the gene modification is generated by a genetic engineering system, wherein the PSCs are human PSCs (hPSCs) or induced pluripotent stem cells (iPSCs), wherein the PSCs are human PSCs (hPSCs) or induced pluripotent stem cells (iPSCs), wherein each of the two or more PSC lines comprise different gene modifications, wherein the gene modification is generated by a genetic engineering system.
Breadth of the claims:
The claims are broadly directed to a method for identifying genes associated with the cell (of any species) growth or differentiation pathogenesis of a disorder, comprising: (a) providing pluripotent stem cell (PSC) population of any species comprising two or more PSC lines (from any species and they can be the same or different species), wherein each of the PSC line contains any insertion, deletion, inversion, duplication, or substitution of one or more nucleotides modification of any gene; (b) differentiating the PSC population to any neurodevelopmental disorder -related cell population comprising two or more any disorder -related cell lines; (c) measuring a first frequency of any gene with the modification in the any neurodevelopmental disorder -related cell population; (d) growing the any disorder -related cell population; (e) measuring a second frequency of the modification of any gene in the any neurodevelopmental disorder -related cell population; and (f) comparing the first and second frequency of each of the modification of any gene.
Guidance of the Specification and The Existence of Working Examples:
The specification provides guidance of a multiplex human pluripotent stem cell platform defines molecular and functional subtypes of autism. An hPSC-based multiplex platform was designed in which multiple disease lines are pooled and differentiated into disease-relevant cell types. CRISPR/Cas9 was used to construct an isogenic disease library of high-confidence autism mutations from a 46XY founder hPSC line. While autism patients harbor heterozygous mutations, the library consists of both monoallelic and biallelic mutations. While all mutations selected for hPSC engineering were based on mimicking the specific mutations of patients with autistic traits, some of those patients may suffer from broader developmental defects that may also contribute to in vitro disease phenotypes. Three independent 30-line mixtures were made by pooling all lines at the pluripotent stage. A platform was presented to study 30 isogenic hPSC lines in parallel, including 27 lines representing high-confidence de novo autism mutations. All hPSC lines are pooled in a single dish and differentiated into disease-relevant cell types of prefrontal cortex (PFC) identity. Cell line specific genetic markers are used to test early developmental hypotheses of autism for each individual mutation across all hPSC lines.
The level of skill in the art:
The level of skill is high that require a researcher with an advanced degree.
State of the Art and Predictability of the Art:
The state of the art at the time of the invention and post-filing teaches that differentiating the hPSC population to any disorder-related cell population comprising two or more any disorder -related cell lines carrying any gene with any modification was unpredictable before the effective filing date of the claimed invention due to the ability of hPSC differentiation was unpredictable under various modifications on any gene with or without relationship with any disease/disorder from hPSC population. Specifically, the claims encompass differentiation of two or more PSC cell lines, each containing gene modification with or without relationship with any disease/disorder from hPSC population. However, the ability of hPSC differentiation (cell fate decision) with any mutation on any gene occurring in the cell genome was unpredictable before the effective filing date of the claimed invention. It is unpredictable to mutate any gene and achieve any target differentiated cell type for identifying genes associated with the human cell growth/differentiation pathogenesis of a neurodevelopmental disorder. Thus, identifying genes associated with the human cell growth/differentiation pathogenesis of a neurodevelopmental disorder was unpredictable before the effective filing date of the claimed invention: Puigdevall et al (Cell Genomics 3, 100280, April 12, 2023, Doi: 10.1016/j.xgen.2023.100280) teaches somatic mutations alter the differentiation outcomes of iPSC-derived neurons (Title). The use of induced pluripotent stem cells (iPSC) as models for development and human disease , and a remaining challenge in developing reliable models is our limited understanding of the factors driving irregular differentiation of iPSCs, particularly the impact of acquired somatic mutations. Puigdevall et al leveraged data from a pooled dopaminergic neuron differentiation experiment of 238 iPSC lines profiled with single-cell RNA and whole-exome sequencing to study how somatic mutations affect differentiation outcomes. Puigdevall et al found that deleterious somatic mutations in key developmental genes, notably the BCOR gene, are strongly associated with failure in dopaminergic neuron differentiation and a larger proliferation rate in culture. Puigdevall et al further identified broad differences in cell type composition between incorrectly and successfully differentiating lines, as well as significant changes in gene expression contributing to the inhibition of neurogenesis. Puigdevall et al work calls for caution in interpreting differentiation-related phenotypes in disease-modeling experiments (Abstract).
The claims also encompass “gene modification” for any gene that also encompass modifications on an epigenetic gene caused by environmental exposures, or “tags,” such as DNA methylation and histone modification which can alter DNA accessibility and chromatin structure, thereby regulating patterns of gene expression without affecting DNA sequence. The relationship between epigenetic genes modifications and etiology of various disorders was unpredictable before the effective filing date of the claimed invention. Tseng et al (Biological Psychiatry June 1, 2022; 91:922–933, Doi: 10.1016/j.biopsych.2021.11.021) teaches that the epigenetic enzymes HDACs stand at the intersection between environment and genes and are associated with the core symptoms of autism spectrum disorder (ASD), genetic neurodevelopmental disorders that share symptoms with ASD, and common ASD comorbidities. Moreover, postnatal HDAC inhibition in environmental and genetic models leads to amelioration of ASD-associated phenotypes. Whether we will be able at some point to leverage therapeutic targeting of the epigenome to mitigate symptoms that affect the lives of individuals with ASD is currently unknown (Page 929, left column). Environmental risk factors for ASD include parental age, maternal stress, suboptimal maternal nutrition, maternal obesity, prenatal or early-life immune challenges, and exposure to toxic substances or HDAC inhibitors in utero. Notably, these factors have also been shown to alter histone acetylation or HDAC expression/activity, although to date, this is largely limited to preclinical and in vitro studies and remains to be further investigated (Page 923, left column). Waye et al (Psychiatry and Clinical Neurosciences 2018; 72: 228–244, doi:10.1111/pcn.12606) teaches that Environmental toxins or toxicants, such as those present in pollutants, cigarette smoke, heavy metal, drugs, and plastics, during fetal and childhood development or infection in a mouse model system have been shown to lead to abnormal DNA modifications. The study of epigenetics is more complicated than that of genetics because epigenetics of any tissue could change over time and varies with different tissues collected for the study. Ideally, autism research would involve studying the epigenome of brain tissue; however, such samples are rare and often, when available, the phenotypes are not as well characterized. While blood samples could be collected more easily, this technique has heterogeneity problems and these findings need confirmation in the brain. Activation of the maternal immune system could also lead to remodeling of some chromosomal regions and lead to changes in gene expression in the brain of the offspring. Dysregulation of micro-RNA could also lead to abnormal gene methylation and change in expression of an autism-related gene (Page 232, left column). Waye et al concluded that despite the progress made in the discovery of a few genes that are well established as having important associations with autism (Fragile X, SHANK3, CASPR2), it does not explain the majority of cases of autism or ASD, and many unknown genetic factors remain to be discovered, thus hampering the progress of clinical testing as a diagnostic test for autism. Reduction in environmental pollutants might be an important strategy in the prevention of autism; however, the studies are relatively more difficult (and may include gene-related effect) compared with those of genetic studies (Page 238, right column).
The claims also encompass any neurodevelopmental disorder; however, neurodevelopmental disorders can be caused by environmental factors unrelated to genetic factors like stress, infection, limited calorie intake, toxins, and drugs of abuse. Thus, it is unpredictable to for PSC line containing any gene modification that may be related to any neurodevelopmental diseases/disorders before the effective filing date of the claimed invention. Bolte et al (Cellular and Molecular Life Sciences (2019) 76:1275–1297, Doi: 10.1007/s00018-018-2988-4) teaches that Autism spectrum disorder (ASD) is a neurodevelopmental condition of heterogeneous etiology. While it is widely recognized that genetic and environmental factors and their interactions contribute to autism phenotypes, their precise causal mechanisms remain poorly understood (Abstract). In the presence a plethora of existing agents, evidence regarding the impact of environmental toxins on human health and development in general, and autism in particular, is lacking. Although the generalizability of animal studies to humans remains relatively unknown, animal models have yielded many intriguing insights into the effects and mechanisms of inflammation and immune activation, as well as the role of toxic agents, in inducing autism-like behaviors in rodent and other species. Overall, understanding the role of environmental exposures in the etiology of ASD is a broad and complex field, still largely in its infancy with many current limitations, but also with many future opportunities (Page 1287, right column, 2nd para).
In conclusion, in view of breadth of the claims and absence of a strong showing by Applicant, in the way of specific guidance and direction, and/or working examples demonstrating the same, such invention as claimed by Applicant is not enabled for the claimed inventions. An artisan of skill would have required undue experimentation to practice the invention because the art of differentiating the PSC population from any species to any neurodevelopmental disorder-related cell population comprising two or more any neurodevelopmental disorder -related cell lines that can carry any gene with any modification related to any diseases was unpredictable at the time of filing of this application as supported by the observations in the art of record.
Response to Arguments
Applicant's arguments filed on 01-30-2026 have been fully considered but they are not persuasive.
Applicants argue that the instant claims now specify, inter alia, that the methods relate to identifying genes associated with a "neurodevelopmental disorder", that hPSC population is differentiated "in the presence of FGF8", and "wherein each gene modification comprises an insertion, deletion, inversion, duplication, or substitution of one or more nucleotides" (Remarks, page 7-8).
Response to Arguments:
It is noted that there is no limitation of “in the presence of FGF8”. The base claims 1-2 read on modification of any gene leading to any mutation(s) with or without relationship with any neurodevelopmental disease/disorder from hPSC population. However, the ability of hPSC differentiation (cell fate decision) with any mutation on any gene occurring in the cell genome was unpredictable before the effective filing date of the claimed invention. It is unpredictable to mutate any gene and achieve any target differentiated cell type for identifying genes associated with the human cell growth/differentiation pathogenesis of a neurodevelopmental disorder. Thus, identifying genes associated with the human cell growth/differentiation pathogenesis of a neurodevelopmental disorder was unpredictable before the effective filing date of the claimed invention.
The claims also encompass “gene modification” for any gene that also encompass modifications on an epigenetic gene caused by environmental exposures, or “tags,” such as DNA methylation and histone modification which can alter DNA accessibility and chromatin structure, thereby regulating patterns of gene expression without affecting DNA sequence. The relationship between epigenetic genes modifications and etiology of various disorders was unpredictable before the effective filing date of the claimed invention.
The claims also encompass any neurodevelopmental disorder; however, neurodevelopmental disorders can be caused by environmental factors unrelated to genetic factors like stress, infection, limited calorie intake, toxins, and drugs of abuse. Thus, it is unpredictable to for PSC line containing any gene modification that may be related to any neurodevelopmental diseases/disorders before the effective filing date of the claimed invention.
Maintained in modified form-Claim Rejections - 35 USC § 103- Necessitated by amendments
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-2, 5, 11-12, 14, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al ( herein after Wang-1 Molecular Autism (2015) 6:55, DOI 10.1186/s13229-015-0048-6) in view of Wang et al-2 (herein after Wang-2, Pub. No .: US 2021/0254049 A1, provisional application No. 62/660,577, filed on Apr. 20 , 2018 .)
Claim interpretation:
The specification of the claimed invention teaches that any methods known in the art for measuring a gene modification can be used with the methods disclosed herein. Non-limiting exemplary methods for measuring the frequency of a gene modification is real-time polymerase chain reaction (Real-Time PCR), digital PCR (dPCR), droplet digital PCR (ddPCR), DNA sequencing, e.g., capture-based exome sequencing or whole genome sequencing, targeted multiplex PCR based sequencing, RNA sequencing, single cell RNA sequencing (Page 39, lines 11-16). Any methods known in the art can be used to generate gene modifications in the PSC lines, e.g., hPSC lines. In certain embodiments, genome editing technique can be used to generate gene modifications in the PSC lines. For example, but not by way of limitation, a CRISPR/Cas9 system is employed to modify the genes (see page 36, lines 15-20). Therefore, Therefore, the term “frequency” is interpreted as encompassing embodiments featuring “allele frequencies” of the mutations, which can be measured by RNA sequencing for targeted deletions mediated by Crispr-Cas9.
The specification of the claimed invention teaches generation of multiplex library and hPSC maintenance, Pooling, and storage by designing guide RNAs (gRNAs) to target exons in which indels or single nucleotide variant (SNV) mutations have been found in patients for generation of pooled human pluripotent stem cell (see Page 55-56). Thus, the limitation of “pooled human pluripotent stem cells” is interpreted as encompassing embodiments where the different mutations within the pooled population of cells were generated by different gRNAs (or sgRNAs).
The limitation “a pooled human pluripotent stem cell (hPSC) population comprising two or more hPSC lines” is interpreted as product by process as directed to mixed/pooled genetically modified human pluripotent stem cell populations in which each hPSC line with different gene modification. MPEP 2113: [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
Regarding to the preamble of claim 1, Wang-1 generated heterozygous disruptions that better mimic the germline mutations in ASD patients and allows for the study of long-term effects of CHD8 disruption in neurogenesis in vitro (Page 14, right column). Wang-1 carried out transcriptomic and bioinformatic analyses of neural progenitors and neurons derived from the CHD8 mutant iPSCs (Abstract). CHD8 gene is involved in extracellular matrix formation, neuronal differentiation, and skeletal system development (Page 2, right column, 2nd para.). Wang-1 teach that CHD8 regulates multiple genes involved in cell communication, extracellular matrix and neurogenesis that are critical for brain development, and provide evidence that the transcription targets of autism spectrum disorders (ASDs) genes converge on a set of genes and pathways (Page 16, left column, 2nd para.).
Regarding to step (a) of claim 1, Although Wang-1 teach that heterozygous CHD8 knockout (KO) disrupted the expression of many genes involved in extracellular matrix formation, neuronal differentiation, and skeletal system development (Page 2, right column, 2nd para.) by using two separate CRISPR sgRNA sequences to target the N-terminal of CHD8 protein to generate truncated mutations (Fig. 1a) (Page 5, right column, 1st para.), Wang-1 do not teach “a pooled human pluripotent stem cell (hPSC) population comprising two or more hPSC lines, wherein each hPSC line comprises a different gene modification”. Wang-2 cures the deficiency.
Wang-2 teach methods and systems are utilized to identify gene targets and guide RNAs to differentiate stem cells (e.g., iPSC) into neurons, and the methods disclosed may generally be applied to
any starting cell type to produce any target phenotype ([0186], page 25). Once cells with the target phenotype are selected, the gRNAs targeting loci of the genome may be identified, and the methods may be used to identify targets that can be activated , inhibited, or altered to produce cells of any target phenotype from any starting cell type. Through the application of the disclosed methods, stem cells can be transformed into specific cell types that may serve as , or may produce, useful therapeutic agents for the treatment of diseases ([0011], page 2). When the starting cells for screening are from an existing iPS cell line, recombinant dCas9 -VPR ribonucleoproteins (RNPs) complexed with the barcoded sgRNA library may be directly delivered to the iPSCs either in pooled or individually arrayed format, and in this approach, any iPS cell line can be used as the starting cell type for screening ([0162], page 25). In another approach, all sgRNAs are pooled and delivered to a whole population of cells ([0193], page 26). Also, CRISPRa/i is used with one or more single guide RNAs (sgRNAs) that target within -300 to +0 base pairs of the transcription start site (TSS) per target gene in stable cell lines ([0180], page 20). The sgRNAs may be delivered to these stable cell lines with nanoparticle -based transfection or other physical delivery methods ([0043], page 5). The complexes introduced can have various activities in the stem cells to cause cell differentiation into a desired cell type ([0052], page 6). For the purpose of generating the desired neuronal cells, dCas9 -VPR iPSCs were plated and selected with puromycin to select for cells successfully transduced with lentiviral sgRNAs. More mature cells were then collected as depicted in the timeline in FIG . 9 ([0191], page 26).
Note: As mentioned above, the limitation “a pooled human pluripotent stem cell (hPSC) population comprising two or more hPSC lines” is interpreted as product by process. In the instant case, Wang-2 teach a genetically modified iPSCs population generated by one or more single guide RNAs (e.g., pooled sgRNAs library as described above) in iPSCs stable cell lines. Thus, a person of ordinary skill in the art would recognize that the genetically modified iPSCs populations as taught by Wang-2 is identical/similar to the iPSCs populations of the claimed invention in which both comprise plurality of different gene modification by different gRNA.
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the rejected claims to combine the teachings of prior art to modify the method of Wang-1 by using pooled/mixed population of genetically human pluripotent stem cell by one or more sgRNA as taught by Wang-2 as instantly claimed, with a reasonable expectation of success. Said modification amounting to combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would have been motivated to do so because Wang-2 teach that recombinant dCas9 -VPR ribonucleoproteins (RNPs) complexed with barcoded sgRNA may be directly delivered to the iPSCs either in pooled or individually arrayed format and this approach provides the advantage of temporal control in targeting multiple genes across a time frame (e.g., a few days to a few weeks) to determine the effects of their collective input on producing the desired target phenotype ([0194], page 26). Additionally, Wang-1 suggested “ it will be valuable to carry out gene expression profiling using ASD-specific iPSCs to see how our current findings can be recapitulated in additional iPSC-derived NPCs and neurons” (Page 15, left column, last para to page 16). Thus, one of ordinary skill in the art would be motivated to perform expression profiling using multiple ASD-specific iPSCs with additional different modified genes in modified iPSCs population. One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Wang-2 were successful in generating genetically modified iPSCs populations by using pooled sgRNA with detailed instruction, working examples and data.
Regarding to step (b) of claim 1, Wang-1 teaches Neuronal differentiation: Neurons were generated from iPSC-derived NPCs (Page 3, right column). Wang-1 teaches the CHD8+/- iPSC lines were used to generate NPCs and early differentiating neurons for RNA-seq analysis, together with samples prepared from the parental WT clones, for a total of eight samples (two biological replicates of WT and CHD8+/- at two neurodevelopmental stages) (Page 6, left column, 1st para.)
Regarding to step (c) of claim 1, Wang-1 teaches validating targeted deletions and assessing off-targets using RNA-seq reads: examined if CHD8 was targeted and edited precisely according to their CRISPR sgRNA design. A 2-bp deletion in chr14:21899785 (hg19) and a 10-bp deletion in chr14:21899722 (hg19) were identified in a proportion of RNA-seq reads that mapped to targeted regions of the two CRISPR sgRNAs in CHD8+/- samples (KO1 and KO2, respectively). This was confirmed by DNA sequencing, also called short indels (supported by at least five RNA-seq reads) from RNA-seq reads by Samtools (Page 3, right column, last para to page 4).
Regarding to step (d) of claim 1, Wang-1 teaches Human iPSCs were cultured and fed daily in mTeSR1 (Stem Cell technologies) on Matrigel (BD)-coated plates at 37°C/ 5% CO2/ 85 % in a humidified incubator (Page 3, left column).
Regarding to step (e) of claim 1, Wang-1 teaches validating targeted deletions and assessing off-targets using RNA-seq reads(Page 3, right column, last para to page 4). Wang-1 carried out transcriptomic and bioinformatic analyses of neural progenitors and neurons derived from the CHD8 mutant iPSCs …... Transcriptome profiling revealed that CHD8 hemizygosity (CHD8+/-) affected the expression of several thousands of genes in neural progenitors and early differentiating neurons… (Abstract).
Regarding to step (f) of claim 1, Wang-1 teaches Examination of the RNA-seq reads mapped to the CHD8 exons confirmed the 2-bp and 10-bp deletion (Fig. 1d), indicating that both the WT and KO CHD8 copies were expressed in NPCs and neurons, with fewer reads from the KO copy than the WT (Page 6, left column, 2nd para)…..The fact that many more DEGs were detected in neurons than NPCs indicates that persistent CHD8 hemizygosity could have continuous and amplified effects in neurodevelopment, i.e., genes with altered expression in NPCs would directly affect the expression of additional sets of genes in the differentiating neurons (Page 6, right column, 1st para.).
Although the sequential order of the steps taught by Wang-1 is different from the claim , it would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the rejected claims to combine the teachings of prior art to modify the method of Wang-1 to provide two or more PSC lines, differentiating the PSC population, measuring a first frequency, growing the disorder-related cell population, measuring a second frequency, and comparing the first and second frequencies. Said modification amounting to using elements according to the teaching of Wang-1 to yield predictable results. One of ordinary skill in the art would have been motivated to do so because Wang-1 provide all the limitations as required by the claims as well as motivation for using multiple ASD-specific iPSCs for carrying out gene expression profiling (bridging last para. in right column on page 15 to page 16). Wang-1 also provide examples with teachings of two or more pluripotent stem cell lines of CHD8+/- populations, cell culture and differentiation conditions, genome editing via Crispr Cas9 to generate gene modification, RNAseq analysis for determining mutations at the edited gene, RNAseq analysis for genes affected by the gene modification. One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Wang-1 provide detailed instructions for performing the steps of identifying genes associated with the pathogenesis of a disorder.
Regarding to the preamble of claim 2, Wang-1 applied CRISPR/Cas9 technology to knockout one copy of CHD8 in induced pluripotent stem cells (iPSCs) to better mimic the loss-of-function status that would exist in the developing human embryo prior to neuronal differentiation and carried out transcriptomic and bioinformatic analyses of neural progenitors and neurons derived from the CHD8 mutant iPSCs (Abstract). CHD8 gene is involved in extracellular matrix formation, neuronal differentiation, and skeletal system development (Page 2, right column, 2nd para.).
Regarding to step (a) of claim 2 Although Wang-1 teach that heterozygous CHD8 knockout (KO) disrupted the expression of many genes involved in extracellular matrix formation, neuronal differentiation, and skeletal system development (Page 2, right column, 2nd para.) by using two separate CRISPR sgRNA sequences to target the N-terminal of CHD8 protein to generate truncated mutations (Fig. 1a) (Page 5, right column, 1st para.), Wang-1 do not teach “a pooled human pluripotent stem cell (hPSC) population comprising two or more hPSC lines, wherein each hPSC line comprises a different gene modification”. Wang-2 cures the deficiency.
Wang-2 teach methods and systems are utilized to identify gene targets and guide RNAs to differentiate stem cells (e.g., iPSC) into neurons, and the methods disclosed may generally be applied to
any starting cell type to produce any target phenotype ([0186], page 25). Once cells with the target phenotype are selected, the gRNAs targeting loci of the genome may be identified, and the methods may be used to identify targets that can be activated , inhibited, or altered to produce cells of any target phenotype from any starting cell type. Through the application of the disclosed methods, stem cells can be transformed into specific cell types that may serve as , or may produce, useful therapeutic agents for the treatment of diseases ([0011], page 2). When the starting cells for screening are from an existing iPS cell line, recombinant dCas9 -VPR ribonucleoproteins (RNPs) complexed with the barcoded sgRNA library may be directly delivered to the iPSCs either in pooled or individually arrayed format, and in this approach, any iPS cell line can be used as the starting cell type for screening ([0162], page 25). In another approach, all sgRNAs are pooled and delivered to a whole population of cells ([0193], page 26). Also, CRISPRa/i is used with one or more single guide RNAs (sgRNAs) that target within -300 to +0 base pairs of the transcription start site (TSS) per target gene in stable cell lines ([0180], page 20). The sgRNAs may be delivered to these stable cell lines with nanoparticle -based transfection or other physical delivery methods ([0043], page 5). The complexes introduced can have various activities in the stem cells to cause cell differentiation into a desired cell type ([0052], page 6). For the purpose of generating the desired neuronal cells, dCas9 -VPR iPSCs were plated and selected with puromycin to select for cells successfully transduced with lentiviral sgRNAs. More mature cells were then collected as depicted in the timeline in FIG . 9 ([0191], page 26).
Regarding to step (b) of claim 2, Wang-1 teaches Neuronal differentiation: Neurons were generated from iPSC-derived NPCs (Page 3, right column). Wang-1 teaches the CHD8+/- iPSC lines were used to generate NPCs and early differentiating neurons for RNA-seq analysis, together with samples prepared from the parental WT clones, for a total of eight samples (two biological replicates of WT and CHD8+/- at two neurodevelopmental stages) (Page 6, left column, 1st para.)
Regarding to step (c) of claim 2, Wang-1 teaches validating targeted deletions and assessing off-targets using RNA-seq reads (Page 3, right column, last para to page 4). Wang-1 also carried out transcriptomic and bioinformatic analyses of neural progenitors and neurons derived from the CHD8 mutant iPSCs …... Transcriptome profiling revealed that CHD8 hemizygosity (CHD8+/-) affected the expression of several thousands of genes in neural progenitors and early differentiating neurons… (Abstract).
Regarding to step (d) of claim 2, Wang-1 teaches Examination of the RNA-seq reads mapped to the CHD8 exons confirmed the 2-bp and 10-bp deletion (Fig. 1d), indicating that both the WT and KO CHD8 copies were expressed in NPCs and neurons, with fewer reads from the KO copy than the WT (Page 6, left column, 2nd para), and the fact that many more DEGs were detected in neurons than NPCs indicates that persistent CHD8 hemizygosity could have continuous and amplified effects in neurodevelopment, i.e., genes with altered expression in NPCs would directly affect the expression of additional sets of genes in the differentiating neurons (Page 6, right column, 1st para.).
Regarding to claims 5, 14, 16, Wang-1 designed two separate CRISPR sgRNA sequences to target the N-terminal of CHD8 protein to generate truncated mutations (Fig. 1a). iPSCs derived from a healthy male subject were transduced with CRISPR/Cas9 vectors containing each of the two target sequences, and the CHD8+/- iPSC lines were used to generate NPCs and early differentiating neurons for RNA-seq analysis, together with samples prepared from the parental WT clones, for a total of eight samples (two biological replicates of WT and CHD8+/- at two neurodevelopmental stages) (Page 5, right column to page 6 left column).
Regarding to claim 11-12, Wang-1 teaches that to further understand the molecular links between CHD8 functions and ASD, we have applied the CRISPR/Cas9 technology to knockout one copy of CHD8 in induced pluripotent stem cells (iPSCs) to better mimic the loss-of-function status that would exist in the developing human embryo prior to neuronal differentiation (Abstract).
Claims 7, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Wang-1 (Molecular Autism (2015) 6:55, DOI 10.1186/s13229-015-0048-6) in view of Wang-2 (Pub. No .: US 2021/0254049 A1, provisional application No. 62/660,577, filed on Apr. 20 , 2018 .) as applied to claims 1-2, 5, 11-12, 14, 16 above, and further in view of Testa et al (WO 2016/083458 A1, 2 June 2016).
The teachings of Wang-1 and Wang -2 are as described above and are incorporated herein in their entirety.
Wang-1 and Wang -2 do not specifically teach differentiated cell types are isolated by flow cytometry. However, Testa et al cures the deficiency.
Regarding to claim 7 and 8, Testa et al teaches iPSC produced from fibroblast obtained from a subject affected by a neurodevelopmental disorder entailing intellectual disability (ID) and/or a disorder belonging to the Autism Spectrum Disorder (ASD) and/or Schizophrenia (SZ) and uses thereof (Abstract). Testa et al teaches example 9: An approach to isolate iPSC-derived FOXG1-expressing cortical progenitors. The proof of principle of experiments aimed at isolating cortical progenitors by selection and FACS sorting (flow cytometry) is described in Fig. 8 (Page 62, lines 1-5).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the rejected claims to combine the teachings of prior art to modify the method of Wang-1 and Wang -2 by using an approach to isolate iPSC-derived cell by selection and FACS sorting (flow cytometry) as taught by Testa et al, as instantly claimed, with a reasonable expectation of success. Said modification amounting to combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would have been motivated to do so because Testa et al provide explicit advantage of using FACS sorting for cell isolation iPSC-derived cells. One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Testa et al provides proof of principle of experiments aimed at isolating cortical progenitors by selection and FACS sorting.
Claims 6, 18 are rejected under 35 U.S.C. 103 as being unpatentable over Wang-1 (Molecular Autism (2015) 6:55, DOI 10.1186/s13229-015-0048-6) in view of Wang-2 (Pub. No .: US 2021/0254049 A1, provisional application No. 62/660,577, filed on Apr. 20 , 2018 .) as applied to claims 1-2, 5, 11-12, 14, 16 above, and further in view of Woodbury-Smith et al (Molecular Autism (2017) 8:59, DOI 10.1186/s13229-017-0175-3)
The teachings of Wang-1 and Wang -2 are as described above and are incorporated herein in their entirety. Wang-1 and Wang -2 do not specifically teach gene modification is measured by a polymerase chain reaction (PCR) method, a digital PCR method, or a droplet digital PCR (ddPCR). However, Woodbury-Smith et al cures the deficiency.
Regarding to claim 6 and 18, Woodbury-Smith et al teaches Mutations in RAB39B in individuals with intellectual disability, autism spectrum disorder, and macrocephaly (Title). Mutant-induced pluripotent stem cells engineered for an exon 2 nonsense mutation were generated and differentiated into cortical neurons for expression and pathway analyses (Abstract). Genomic DNA was extracted and droplet digital PCR (ddPCR) was performed to determine the absolute quantification of mutant alleles in each well (Page 3, right column, last para.).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the rejected claims to combine the teachings of prior art to modify the method of Wang-1 and Wang -2 by using droplet digital PCR to determine the absolute quantification of mutant alleles as taught by Woodbury-Smith et al. Said modification amounting to combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would have been motivated to do so because Woodbury-Smith et al provide detailed description of the impact of an exon 2 mutation of RAB39B on gene expression in differentiated neurons using CRISPR/Cas for studying Autism spectrum disorder (ASD) (title and abstract). One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Woodbury-Smith et al provide detailed instruction with working data for determining the absolute quantification of mutant alleles by droplet digital PCR.
Response to Arguments
Applicant's arguments filed on 01-30-2026 have been fully considered but they are not persuasive.
Applicants argue that claims 1 and 2 now recite "wherein each gene modification comprises an insertion, deletion, inversion, duplication, or substitution of one or more nucleotides", and Wang-1 does not teach or even suggest the use of a pooled human pluripotent stem cell (PSC) population as recited in the claims. Wang-2 cannot cure this deficiency because it is silent with respect to the DNA base change modifications as recited in the pending claims. Wang-2 is directed to the use of dCas9 (an inactivated form of Cas9), which one of skill in the art would understand does not produce gene modifications as recited in the pending claims.
Applicants cited Wang-2 to say that “The changes produced by dCas9 are reversible”. See Wang-2 at paragraph [0034]. Accordingly, the modified iPSCs population of Wang-2 are not "identical/similar" to the hPSC lines in the pending claims. As Wang-I and Wang-2, along or in combination, offer no suggestion to perform methods employing pooled populations comprising the recited gene modifications, they provide an insufficient basis for the instant rejection and therefore withdrawal of the instant rejection is respectfully requested (Remarks, page 8-9).
Response to Arguments:
It appears that Applicant is arguing that the cited references do not expressly suggest the claimed invention. However, it is well established in case law that a reference must be considered not only for what it expressly teaches, but also for what it fairly suggests. In re Burkel, 201 USPQ 67 (CCPA 1979). Furthermore, in the determination of obviousness, the state of the art as well as the level of skill of those in the art are important factors to be considered. The teaching of the cited references must be viewed in light of these factors. It also appears that applicant is attempting to attack each reference individually. However, in a 103 rejection the references must be considered as a whole.
In the instant case, it appears applicants have engaged in selective reading of the teachings of Wang-2 of “The changes produced by dCas9 are reversible” to formulate the grounds for being insufficient basis for the instant rejection; however, this is only one of many embodiments taught by Wang-2. It is noted that Wang-2 also teach “A Cas9 that is catalytically active cleaves DNA via its HNH and RuvC nuclease domains . When the Cas9 nuclease has two functional domains and both of these domains are active , the Cas9 causes a double stranded break in the DNA . Thus, a Cas protein may be targeted to a specific location by forming a complex with a gRNA that includes a -20 -bp guide sequence that is substantially complementary to a genetic locus” ([0099], page 9); “It is appreciated that any Cas protein that forms a complex with and is guided by the gRNA may be used, for example, Class II Cas proteins such as Cas9 and Cpfl” ([0100], page 9). Wang-2 also teach FIG . 1 diagrams steps of a screening method ([0061], page 8). Thus, Wang-1 and Wang-2 in combination suggest performing methods employing pooled populations comprising the recited gene modifications.
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Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/KHOA NHAT TRAN/Examiner, Art Unit 1632
/PETER PARAS JR/Supervisory Patent Examiner, Art Unit 1632
Prosecution Insights