DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claims 1-21 are pending.
Claims 1-11 are withdrawn.
Claims 12-21 are currently under examination.
This office action is in response to the amendment filed on 10/9/2025.
All previous rejection not reiterated in this office action are withdrawn.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim(s) 12-21 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Doudna et al (US 2014/0068797, effective filing date of 5/25/2012, IDS).
Regarding claims 12-15, Doudna et al teach a method of integrating an exogenous sequence into a chromosomal sequence of a eukaryotic cell, comprising a) introducing into the eukaryotic cell (i) a Cas9 protein or polynucleotide encoding Cas9, (ii) a DNA targeting RNA (guide RNA), or a DNA polynucleotide encoding the same, wherein the DNA targeting RNA comprises a first segment comprising a nucleotide sequence that is complementary to a sequence in a chromosomal DNA, and a second segment that interacts with Cas9, and (iii) a donor polynucleotide that differs from the chromosomal DNA, such as by inclusion of an exogenous sequence; and b) maintaining the cell under conditions permissive for cleavage of the chromosomal DNA to form a double stranded break, which is repaired by homology directed repair with the donor polynucleotide (paragraphs [0021], [0025], [0139], [0150], [0258]-[0260] and [0273]). Doudna et al teach the method where the Cas9 comprises a nuclear localization signal (NLS) for targeting to the nucleus (paragraphs [0241], [0264] and [0456]).
Regarding claim 16, Doudna et al teach the method where the guide RNA coding sequence is operably linked to a human U6 promoter (paragraph [0105]).
Regarding claim 17, Doudna et al teach the method wherein the double stranded breaks are repaired by NHEJ (paragraph [0258] and [0259]).
Regarding claims 18 and 19, Doudna et al teach the method where the donor polynucleotide comprises a non-homologous sequence flanked by two regions of homology, sufficient for homology-directed repair between the target DNA region and the two flanking sequences ([0300]). Doudna et al teach that sufficient homology is at least 70%, 80%...100% identity with sequences flanking the cleavage site (paragraphs [0299]-[0300]).
Regarding claim 20, claim 64, 74-79 from Doudna et al teach the method of introducing a donor polynucleotide into the cell, wherein the donor polynucleotide, a portion or a copy integrates into the target DNA under conditions that are permissive for nonhomologous end joining or homology directed repair (claim 78 and 79).
Regarding claim 21, Doudna et al. teach the method where the cell is a human cell or a cell from a mammal, or an embryonic stem cell (paragraphs [0273][0274]).
Response to Arguments
In response to the rejection, Applicant argues that Doudna patent application cites priority to four provisional application, 61/652,086 filed 25 May 2012 (P1); 61/716,256 filed 19 Oct. 2012 (P2); 61/757,640 filed 28 Jan. 2013 (P3) and 61/765,576 filed 15 Feb.2013 (P4). Applicant alleges Doudna provided no disclosure of an NLS in P1 and P2, and the first disclosure of NLS is in P3, which has a filing date of 28 January 2013, more than one month after the priority date of the presently pending application. Applicant alleges that Doudna ‘797 cannot be prior art over claim 12 and dependent claims of present application.
These arguments are not found persuasive. The rejected claims are directed to nuclear localization signals that are defined solely by function, which is the ability to localize to the nucleus. The protein transduction domains were known in the art before the effective filing date of the instant application to localize to the nucleus. See the art cited on the record, including the following references: Han et al. Efficient intracellular delivery of GFP by homeodomains of Drosophila Fushi-Tarazu and Engrailed proteins. Molecules and Cells, Vol. 10, No. 6, pages 728-732, 2000, cited on an IDS filed 4/4/2022 #29, which shows that penetratin and Tat(49-57), disclosed in '086 at paragraph [00179], is able to transport GFP protein to the nucleus (e.g., paragraph bridging pages 729-730); Zhang et al. MDV-1 VP22,: a transporter that can selectively deliver proteins into cells. Archives of Virology, Vol. 154, No. 7, pages 1027-1034, June 2009, cited on IDS filed on 4/4/2022 #32, which shows VP22, disclosed at '086 at paragraph [00115], is able to transport proteins to the nucleus (e.g., Abstract; page 1029, paragraph bridging columns); Noguchi et al. Recent advances in protein transduction technology. Cell Transplantation, Vol. 19, pages 649-654, June 2010, cited on an IDS filed 4/4/2022 #10, which shows that as of 2010 protein transduction domains had been used for 15 years to successfully delivery proteins and peptides to cells and tissues both in vitro and in vivo (e.g., Abstract); Dynan et al. US Patent Application Publication No. 2005/02200796 A1, cited on an IDS filed 4/4/2022 #11, especially paragraph [0037], which shows that the RKKRRQRRR sequence disclosed at '086 at paragraph [00115] is known to function as a nuclear localization signal sequence; Jarver et al. The use of cell-penetrating peptides as a tool for gene regulation. Drug Discovery Today, Vol. 9, No. 9, pages 395-402, May 2004, cited as reference 13 on an IDS filed 4/4/2022 #34, which teaches that cell penetrating peptides, including those disclosed by '086 at paragraphs [00115] and [00179], have proven to be a reliable transport system for several bioactive molecules including proteins that are transported to the nucleus (e.g., pages 397-398, Protein delivery for gene regulation; page 401, Summary; Table 1). Thus, the prior art supports the predictable use of the peptides disclosed by Doudna et al to transport proteins to the nucleus of a cell. Doudna et al teach that the optimal site for the domain will be determined by routine experimentation (e.g., '086 at paragraph [00179]). Other art teaches the predictable function of nuclear localization signal sequences and the use of routine experimentation to test for activity after adding a nuclear localization signal sequence (e.g., Rozwadowski et al. US Patent No. 7,947,874 B2, cited on IDS filed on 4/1/2022 #7, especially Example 2). Considering the high skill of the ordinary skilled artisan and objective evidence present in the teachings of the prior art, it would have required no more than routine experimentation to use a PTD to transport Cas9 into the nucleus of a eukaryotic cell. No undue experimentation would be required. See also paragraph [0186] of the Grounds for Opposition to European Patent No. EP3138910, filed by George William Schlich on 20 June 2018, 65 pages (cited on an IDS filed 4/1/2022 #32): [186] Paragraph [00115] of the first priority document of WO 2013/176772 (D13) also discloses the presence of an NLS using alternative language. This paragraph refers to a "Protein Transduction Domain" or "PTD" "that facilitates traversing a lipid bilayer, micelle, cell membrane, organelle membrane, or vesicle membrane." Such a PTD can be linked to the amino terminus of an exogenous polypeptide including a site-directed modifying polypeptide (a term used in the first priority document of WO 2013/176772 (D13) to refer to Cas9). Accordingly, this priority document discloses the use of a domain that facilitates the direction of Cas9 across an organelle membrane, which of course includes the nuclear membrane. In other words, this passage describes the use of at least one NLS as part of the RNA-guided endonuclease Cas9. The same disclosure is also present in the second priority document of WO 2013/176772 (D13) at paragraph [00152] and at paragraph [00211] of WO 2013/176772 (D13) itself. See also the Grounds for Opposition to European Patent No. EP3138910, filed by Vossius & Partner mbB, on 20 June 2018, 67 pages, cited on an IDS filed 4/1/2022 #24, specifically at section 1.1.1.4. See also the Grounds for Opposition to European Patent No. EP3138910, filed by Colm Damien Murphy on 20 June 2018, 34 pages, cited on an IDS filed 4/1/2022 #31, specifically at section 4. Therefore, the priority document P1 61/652,086 provides sufficient teaching, at least in paragraph [0178]-[0179], a nuclear localization sequence (NLS), and Doudna ‘797 is prior art based on the effective filing date of 25 May 2012.
Conclusion
THIS ACTION IS MADE FINAL. 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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/CELINE X QIAN/ Primary Examiner, Art Unit 1637