DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/23/2025 has been entered.
3. In view of applicant’s amendments filed 05/23/2025, the rejection of claims 1, 3, 7-8, 10, 11, and 15-19 under 35 U.S.C. 112(b), set forth in the 02/26/2025 office action is withdrawn because the amended claim 1 specifies method for measuring cytokine potency and clarifies that NK cell selection is based on pre-determined potency level required for therapeutic use. Additionally, amended claim 1 recites all required steps of the claimed method and is no longer indefinite for omitting necessary steps. Therefore, previous rejections of claims 1, 3, 7-8, 10, 11, and 15-19 under 35 U.S.C. 112(b), set forth in the 02/26/2025 office action are withdrawn.
4. In view of applicant’s amendments filed 05/23/2025, the claims rejected under 35 U.S.C. 112(a), for failing to comply with the enablement requirement, set forth in the 02/26/2025 office action are withdrawn because the K562 cells of the presently claimed method are readily available to the public via commercial vendors and are commonly used by persons of ordinary skill in the art, as was explained to examiners during the applicant interview on 05/15/2025.
5. In view of applicant’s amendments filed 05/23/2025, the claims 1, 3, 7-8, 15-17, 20-22 and 24 rejected under 35 U.S.C. 103 and claim 19, rejected under 35 U.S.C. 103, as set forth in the 02/26/2025 office action are withdrawn. As amended, claim 1 recites “50 µg/mL to 190 µg/mL” of the exosome purified from K562 cells transfected with membrane-bound IL-21 and 4-1BBL, which is used for contacting and stimulating NK cells in vitro. Therefore, claim 1 amends around the 200 µg/mL concentration taught by the secondary reference document COPIK et al (US 20170333479 A1, of record). For this reason, previous rejections of claims 1, 3, 7-8, 15-17, 20-22 and 24 rejected under 35 U.S.C. 103 and claim 19, also rejected under 35 U.S.C. 103, as set forth in the 02/26/2025 office action are withdrawn.
6. Claims 1, 3, 7-8, 10, 11, 15-16, and 18-22, provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 8, 26, 31, and 34-39 of copending Application No. 17/431,276 (‘276) in view of COPIK et al (US 20170333479 A1, of record), as set forth in the 02/26/2025 office action are withdrawn because amendments to the claims of application 17/431,276 filed 05/21/2025, now recite limitations to the downregulation of Pentraxin-2 (PTX2) and Chitinase-3 like 1 (Chi3l1) in expanded NK cells compared to “fresh” or newly obtained NK cells. These amendments to the reference application renders the previous nonstatutory double patenting rejection moot; there appears to be no prior art teaching to suggest downregulation of PTX2 or Chi3l1 in activated NK cells. Therefore, the provisional nonstatutory double patenting rejection issued in the office action filed 02/26/2025 is withdrawn.
7. Claims 2, 4-7, 9, 12-14 and 23 are canceled.
Claims 1, 3, 8, 10-11, 15-22 and 24-25 are pending.
Claims 1, 3, 8, 10-11, 15-22 and 24-25 are currently under examination.
8. Applicant' s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. This application is a national stage entry of PCT/US2020/018384 filed on the 14 February 2020 and claiming priority benefit of PRO application no. 62/805,359 filed on 14 February 2019. Receipt is acknowledged of certified copies of papers required by 37 CPR 1.55. Claims 1, 3, 8, 10-11, 15-22 and 24-25 have an effective filing date of 02/14/2019.
Claim Objections
9. Applicant is advised that should claim 21 be found allowable, claim 22 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
10. Claim 20 is objected to because of the following informalities: claim 20 recites “contacting an the NK cells…” in subclaim section (b). The article “an” appears to be a typographical error. Appropriate correction is required.
Claim Rejections - 35 USC § 103
11. 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.
12. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
13. Claims 1, 3, 8, 10-11, 15-22 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over GOODWIN et al. (US 5569585 A; of record) in view of COPIK et al. (WO 2014005072 A1; referred to as COPIK-2 in subsequent sections to differentiate this prior art document with the COPIK (US 20170333479 A1) document cited as prior art in previous office actions filed 10/09/2024 and 02/26/2025).
Regarding claim 1, GOODWIN, in the field of assays measuring the degree of immune cell activation (see title), teaches methods of detecting and quantifying the in vitro activity (e.g., cytokine production) of stimulated immune cells, wherein the level of immune cell activity is evaluated for clinical outcomes for the therapeutic use of the activated cells (abstract). The method of GOODWIN uses peripheral blood mononuclear cells (PBMCs), which are heterogenous population of white blood cells including NK cells; GOODWIN further specifies that the assay is amenable for assaying NK cells (column 7, beginning line 19). GOODWIN teaches that the resting or in-active cells are stimulated with exogenous molecules (such as phorbol myristate acetate (PMA)) (beginning column 8, line 58). GOODWIN further establishes that the immune cells should be incubated with stimulating agent for a time sufficient for immune cell stimulation to have reached a maximal effect, from 0.5 to 150 hours (column 9, lines 38-46). GOODWIN explicitly states that the primary use of the assay is to correlate the degree of activity of non-resting immune cells as stimulated by the stimulant with in vivo potency in a clinical outcome for a particular therapy. Therefore, GOODWIN teaches a method of assaying the potency of a natural killer (NK) cell by contacting the NK cell with an effective amount of an exogenous stimulating factor for more than 4 hours, followed by measuring the amount of cytokine in said cell using an immunoassay and comparing the amount of cytokine produced in said NK cell to the amount of cytokine required for use in cellular immune therapy and selecting said potent NK cell based on the potency requirements.
The teachings of GOODWIN differ from instant claim 1 by not reciting the use of an effective amount of a plasma membrane particle, a liposome, or 50 – 190 µg/mL of an exosome purified from K562 cells transfected with membrane-bound IL-21 and 4-1BBL.
COPIK-2, in the field of compositions and methods comprising natural killer (NK) cells (title), discloses methods for the in vivo or in vitro stimulation and expansion of NK cells (¶0002), using plasma membrane vesicles comprising NK cell effector agents including IL-21 and 41BBL (¶0009). Specifically, the methods of COPIK-2 involve administering to a cell population an effective amount of a composition comprising a plasma membrane vesicle comprising at least one NK cell effector agent, wherein the cell population comprises NK cells, wherein the plasma membrane vesicle can be purified from NK cell feeder cells, including K562 cells transfected with membrane bound IL-21 and 41BBL (PM-mb21-41BBL) (¶0030). COPIK shows that cells treated with a range of increasing concentrations of PM-mb21-41BBL were capable of varying levels of NK cell stimulation and proliferation (see example 1, pg. 32-33); the concentration of PM-mb21-41BBL treatments for the stimulation of NK cells ranged from 40 µg/mL to 200 µg/mL (pg. 33, lines 1-5; see also FIG. 5).
GOODWIN et al. and COPIK et al. (COPIK-2) are both directed to compositions and methods of stimulating NK cells for use in immunotherapy. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was filed, to modify the methods of GOODWIN with the NK cell stimulation protocol using PM-mb21-41BBL exosomes taught by COPIK-2 to achieve the predictable result of obtaining a therapeutic composition suitable for immunotherapy based on cytokine production. One of ordinary skill in the art would have been motivated to do so because COPIK-2 teaches that the cross-presentation of membrane bound IL-21, as would occur via interactions with normal dendritic cells, induces NK cell stimulation and expansion more potently than the soluble form of these cytokines (¶0062, lines 1-3). Moreover, one of ordinary skill in the art would have been motivated to combine these teachings because COPIK-2 teaches that under such stimulation conditions, only a low concentration of soluble IL-2 is required for NK cell survival, thus allowing for selective expansion of NK cells within a PBMC mixture without observable proliferation of T cells (¶0062, lines 3-5); and stimulation with membrane bound IL-21 was found to stimulate continuous propagation of NK cells over countless generations allowing for continuous expansion of NK cells (¶0062, lines 13-15). Therefore, claim 1 is obvious over GOODWIN et al. in view of COPIK et al. (COPIK-2).
Regarding claims 3 and 8, GOODWIN in view of COPIK-2 disclose the method of instant claim 1 (see above). Additionally, the GOODWIN method includes the detection of a plurality of cytokines, including IFNγ, GM-CSF, TNFα, TNFβ and IL-6 following NK cell stimulation (see column 16, lines 34-41; table 1). Each of these cytokines are members of the genus of cytokines recited in instant claim 8. Therefore, claims 3 and 8 are obvious over GOODWIN in view of COPIK-2.
Regarding instant claim 10, GOODWIN and COPIK-2 disclose the method of claim 1 (see above), and as previously discussed, COPIK-2 teaches a range of stimulatory exosome concentrations between 50 and 400 µg/mL (see above). Therefore, claim 10 is obvious over GOODWIN in view of COPIK-2.
Regarding claim 11, GOODWIN teaches all the components of the in vitro immune cell activation assay being configured into a kit, including appropriate containers and nutritive media for in vitro cell culture, as well as reagents for immune cell activation (column 14, lines 4-25). GOODWIN differs from instant claim 11 by not reciting that the NK cell effector/activator includes 50 – 500 µg/mL of an exosome purified from K562 cells transfected with membrane-bound IL-21 and membrane-bound 4-1BBL.
As previously discussed, the NK cell activating agent of COPIK-2 is plasma membrane vesicles purified from K562 cells transfected with membrane bound IL-21 and 41BBL (PM-mb21-41BBL) (¶0030), used at various concentrations up to 200 µg/mL (previously discussed; e.g., pg. 33, lines 1-5; see also FIG. 5). COPIK-2 teaches kits (¶00146-00147) comprising effective amounts of an NK cell effector or expansion agent, plasma membrane particles and components for preparing plasma membranes (¶00147). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the kit of GOODWIN to include the plasma membrane particle effector molecules as taught by COPIK-2 to achieve the predictable result of obtaining a kit suitable for assaying PM-mb21-41BBL stimulated NK cell potency based on cytokine production. One of ordinary skill in the art would have been motivated to do so because COPIK-2 teaches it is advantageous for use in a variety of clinical settings because use of particle technology eliminates the need for stimulator cells, thereby reducing the cost and complexity of performing said assay (e.g., ¶0065, ¶0066). One of ordinary skill would have been further motivated to combine the teachings because COPIK-2 explains that current NK cell expansion protocols require the use of high concentrations of IL-2 for cell stimulation, which results in rapid apoptosis of NK cells following cytokine withdrawal (¶0067). Therefore, claim 11 is obvious over GOODWIN in view of COPIK-2.
Regarding claim 15, GOODWIN and COPIK-2 disclose the method of claim 1 (see above); and as previously discussed, GOODWIN also discloses that the primary use of the assay is to correlate the degree of activity of the stimulated immune cells with the in vivo potency in a clinical outcome for a particular therapy (column 5, lines 29-32). GOODWIN explains that assaying the degree of activation of a sample of activated immune cells prior to infusion of the cells into a patient, it is possible to predict the clinical outcome of ex vivo therapy using the primed immune cells (column 5, lines 32-35). GOODWIN explicitly states that the assay is useful adoptive immunotherapy by processing immune cells to treat cancers, infectious diseases, autoimmune diseases or immune deficiency diseases (column 14, lines 1-3). While the working examples of GOOWIN are primarily drawn to a mixed population of immune cells (e.g., see column 17, example 5 titled ‘Phenotypic Characterization of Ex Vivo Activated (EVA) Cells’) GOODWIN discloses that the assay is easily amenable to specific subsets of the immune cell population, including NK cells (column 7, line 18-23). It is clear that the central purpose of the GOODWIN assay is to administer therapeutically effective immune cells based on cytokine potency, thus, claim 15 is obvious over GOODWIN in view of COPIK-2.
Regarding claim 16, GOODWIN and COPIK-2 disclose the method of claim 15 (see above). GOODWIN further discloses that the sample of immune cells used in the assay may be obtained from multiple sources, including a human patient or a human doner (column 7, lines 64-67). As the method is drawn to assaying cells for immunotherapeutic potency, GOODWIN explains that immune cells will most typically be autologous, although allogeneic or syngeneic immune cells may also be used; If allogeneic cells are used for immunotherapy, then the cells should be matched for HLA and MHC compatibility with the host patient's cells prior to infusion (column 8, lines 12-16). Therefore, claim 16 is obvious over GOODWIN in view of COPIK-2.
Regarding claim 17, GOODWIN and COPIK-2 disclose the method of claim 15 (see above). COPIK-2 explicitly discloses methods for expanding NK cells with plasma membrane vesicle (exosome) comprising membrane bound IL-21 and 41BBL (e.g., ¶0093), thus, claim 17 is obvious over GOODWIN in view of COPIK-2.
Regarding claim 18, GOODWIN and COPIK-2 disclose the method of claim 15 (see above); also previously discussed, COPIK-2 directs the obtained NK cells (part of the population of PBMCs) to the specified antigens IL-21 and 41BBL, both of which are inserted as membrane bound proteins in the K562 derived plasma membrane particles (exosomes) (previously discussed). Therefore, claim 18 is obvious over GOODWIN in view of COPIK-2.
Regarding claim 25, GOODWIN and COPIK-2 disclose the method of claim 1 (see above); as previously discussed, GOODWIN also discloses that the plurality of cytokines are detected and quantified using an enzyme linked immunosorbent assay (ELISA), which is a type of immunoassay well known in the art (column 10, lines 45-59). Therefore, claim 25 is obvious over GOODWIN in view of COPIK-2.
14. Claim 20-22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over GOODWIN et al. (US 5569585 A; of record) in view of COPIK et al. (WO 2014005072 A1; referred to as COPIK-2 in subsequent sections to differentiate this prior art document with the COPIK (US 20170333479 A1) document cited as prior art in previous office actions filed 10/09/2024 and 02/26/2025).
Regarding claim 20, as previously discussed, GOODWIN discloses assays for measuring the degree of immune cell activation in vitro, which is particularly useful for adoptive immunotherapy, by processing immune cells to treat cancer and other diseases. While many of the working examples in GOODWIN are directed to T lymphocytes, GOODWIN explains that the assay is amenable for assaying NK cells (column 7, beginning line 19). GOODWIN further expands on the context of the assay, describing examples of autolymphocyte therapy for the treatment of kidney cancer by processing a cancer patient’s natural killer (NK) cells with interleukin-2 (IL-2), thereby stimulating them to proliferate, prior to reinfusing the cells back into the cancer patient (column 1, lines 60-67). As previously discussed, the method disclosed in GOODWIN involves obtaining a mixed-population of immune cells (peripheral mononuclear blood cells (PBMCs) which includes NK cells) and exposing them to an exogenous stimulating factor in vitro; GOODWIN discloses that the stimulating factor may include an antigen, phytohemagglutinin (PHA), cytokines, antibodies, allogenic cells or other foreign cells (column 5, lines 9-13). Following stimulation GOODWIN discloses several methods for quantifying the immunotherapeutic potency of the activated immune cells, including cytokine production (discussed above, see also section titled ‘Enhanced Cytokine Production Assay’ in column 10, beginning line 45). GOODWIN establishes the assays utility for characterizing the identity, purity and potency of stimulated NK cells prior to immunotherapeutic administration for several reasons, including to comply with FDA and other regulatory agency regulations (beginning column 12, line 54). Further, GOODWIN discloses how the assay is used for establishing standards for predicting clinical outcomes for patients in need based on the potency or degree of immune cell activation, prior to infusing the stimulated immune cells back into patients during immunotherapy; specifically GOODWIN recites that establishing a standard minimum degree of immune cell activation, based on cytokine potency, would allow practitioners to select appropriate potency levels for therapeutic use (beginning column 13, line 3). GOODWIN provides further rationale for this stating, “In this way, the activation level of a particular sample of ex vivo activated cells could be compared to the previously determined standard value representing clinical efficacy; based on the comparison, appropriate decisions could be made as to whether or not to infuse the cells into the patient or whether to further process the cells” (column 5, lines 39-45).
GOODWIN differs from instant claim 20 by not reciting a step of contacting the NK cells with an effective amount of a plasma membrane particle, a liposome, or an exosome purified from K562 cells transfected with membrane-bound IL-21 and 4-1BBL.
COPIK-2, in the field of compositions and methods comprising natural killer (NK) cells (title), discloses methods for the in vivo or in vitro stimulation and expansion of NK cells (¶0002), using plasma membrane vesicles comprising NK cell effector agents including IL-21 and 41BBL (¶0009). Specifically, the methods of COPIK-2 involve administering to a cell population an effective amount of a composition comprising a plasma membrane vesicle comprising at least one NK cell effector agent, wherein the cell population comprises NK cells, wherein the plasma membrane vesicle can be purified from NK cell feeder cells, including K562 cells transfected with membrane bound IL-21 and 41BBL (PM-mb21-41BBL) (¶0030).
GOODWIN et al. and COPIK et al. (COPIK-2) are both directed to compositions and methods of stimulating NK cells for use in immunotherapy. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was filed, to modify the methods of GOODWIN with the NK cell stimulation protocol using PM-mb21-41BBL exosomes taught by COPIK-2 to achieve the predictable result of obtaining a therapeutic composition suitable for immunotherapy based on cytokine production. One of ordinary skill in the art would have been motivated to do so because COPIK-2 teaches that the cross-presentation of membrane bound IL-21, as would occur via interactions with normal dendritic cells, induces NK cell stimulation and expansion more potently than the soluble form of these cytokines (¶0062, lines 1-3). Moreover, one of ordinary skill in the art would have been motivated to combine these teachings because COPIK-2 teaches that under such stimulation conditions, only a low concentration of soluble IL-2 is required for NK cell survival, thus allowing for selective expansion of NK cells within a PBMC mixture without observable proliferation of T cells (¶0062, lines 3-5); and stimulation with membrane bound IL-21 was found to stimulate continuous propagation of NK cells over countless generations allowing for continuous expansion of NK cells (¶0062, lines 13-15). Therefore, claim 20 is obvious over GOODWIN in view of COPIK-2.
Regarding claims 21 and 22, GOODWIN in view of COPIK-2 disclose the method of claim 20. GOODWIN further discloses that the sample of immune cells used in the assay may be obtained from multiple sources, including a human patient or a human doner (column 7, lines 64-67). As the method is drawn to assaying cells for immunotherapeutic potency, GOODWIN explains that immune cells will most typically be autologous, although allogeneic or syngeneic immune cells may also be used; If allogeneic cells are used for immunotherapy, then the cells should be matched for HLA and MHC compatibility with the host patient's cells prior to infusion (column 8, lines 12-16). Therefore, claims 21 and 22 are obvious over GOODWIN in view of COPIK-2.
Regarding claim 24, GOODWIN in view of COPIK-2 disclose the method of claim 20. COPIK-2 explicitly discloses methods for expanding NK cells with plasma membrane vesicle (exosome) comprising membrane bound IL-21 and 41BBL (e.g., ¶0093), thus, claim 24 is obvious over GOODWIN in view of COPIK-2.
15. Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over GOODWIN et al. (US 5569585 A; of record) in view of COPIK et al. (WO 2014005072 A1; referred to as COPIK-2 in subsequent sections to differentiate this prior art document with the COPIK (US 20170333479 A1) document cited as prior art in previous office actions filed 10/09/2024 and 02/26/2025) as applied to claims 1, 3, 8, 10-11, 15-18, 20-22 and 24-25 above, and further in view of BRENTJENS et al. (US 20160045551 A1; of record).
Regarding claim 19, GOODWIN and COPIK-2 disclose the method of claim 18 (see above). GOODWIN and COPIK-2 do not disclose that the NK cells are genetically altered to present a chimeric antigen receptor.
BRENTJENS in the field of compositions and methods for immunotherapy (title), teaches methods and compositions drawn to genetically engineering immune cells, specifically including NK cells, to express a chimeric antigen receptor via a gene expression vector ex vivo (e.g., ¶ 0007-0009; ¶0139). Additionally, BRENTJENS teaches that the CAR-directed immune cells secrete cytokines (¶0037).
GOODWIN, COPIK-2 and BRENTJENS are all directed to immunotherapy and immunotherapeutic compositions comprising NK cells. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, at the time the invention was filed, to modify the immunotherapy method taught by GOODWIN and COPIK with methods for engineering the multiple NK cells to express a chimeric antigen receptor, as taught by BRENTJENS to achieve the predictable result of obtaining a composition suitable for antigen-specific targeting of the potent NK cells during cellular immunotherapy. One of ordinary skill in the art would have been motivated to do so because BRENTJENS teaches that targeting cellular therapies to specific sites (i.e. tumors) is advantageous for enhancing the immunostimulatory activity of the cell therapy and/or advantageous for directing cellular therapies capable of resisting immunosuppression of the tumor microenvironment (¶0146-0148).
Conclusion
16. No claim is allowed.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES L MCLELLAN whose telephone number is (703)756-1906. The examiner can normally be reached Monday - Thursday 7:30 am - 5:30 pm. *Compressed day off on first Friday of each Bi-week.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Misook Yu can be reached at (571) 272-0839. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES LYLE MCLELLAN/Examiner, Art Unit 1641
/MISOOK YU/Supervisory Patent Examiner, Art Unit 1641
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