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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/2/2025 has been entered.
Amended claims 1, 4, 8, 11, 13, 16, 23-24, 31, 33, 39 and new claims 43-49 are pending in the present application.
Applicant elected previously the following species: (i) intravitreal administration; (ii) an anti-VEGF antibody; (iii) macular degeneration; (iv) a lipid-based nanoparticle; (v) cKK-E12, cholesterol and DOPE as a specific combination of a cationic lipid, a cholesterol-based lipid and a non-cationic lipid; and (vi) modified mRNA.
Claims 31 and 33 were withdrawn previously from further considerations because they are directed to non-elected species. However, in light of currently amended claim 31 that has been amended to recite elected species (cKK-E12, DOPE, cholesterol and DMG-PEG2K), the examiner has decided to rejoin and examine claim 31 together with previously examined claims.
Accordingly, amended claims 1, 4, 8, 11, 13, 16, 23-24, 31, 39 and 43-49 are examined on the merits herein with the above elected species.
Claim Rejections - 35 USC § 112 (New Matter)
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.
Amended claims 1, 4, 8, 11, 13, 16, 23, 39 and 45-49 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new ground of rejection necessitated by Applicant’s amendment.
Currently amended independent claim 1 recites the new limitation “wherein the PEG-modified lipid comprises a molar ratio of about 5% or more of the total lipid present in the nanoparticle”. The claims encompass a method of treating an eye disease, disorder or condition recited in the Markush group of currently amended independent claim 1, the method comprising intravitreally injecting into an eye of a subject in need of delivery a composition comprising an mRNA encoding a protein, wherein the mRNA is codon-optimized, having a length of 0.5 kb to 5 kb and is encapsulated within a nanoparticle, wherein the nanoparticle comprises a cationic lipid, a helper lipid, a cholesterol-based lipid, and a PEG-modified lipid, wherein the PEG-modified lipid comprises a molar ratio of about 5% or more (e.g., 4%, 5%, 10%, 15%, 20% or more) of the total lipid in the nanoparticle. The as-filed specification does not have a written support for this new limitation.
As an initial matter, amended claims 1, 4, 8, 11, 13, 16, 23-24, 39 and 45-49 have been introduced at first in the Amendment dated 07/17/2024, so the claims themselves are not part of the original disclosure. 37 CFR § 1.115(a)(2). “New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. . . . While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. . . . The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed.” MPEP § 2163, part (I)(B); see also MPEP § 2163.02. In this case, the original specification does not convey the particular invention recited in amended claims 1, 4, 8, 11, 13, 16, 23-24, 39 and 45-49 with reasonable clarity to skilled artisans. “The trouble is that there is no such disclosure, easy though it is to imagine it.” MPEP § 2163.05, part (II) (quoting In re Ruschig, 379 F.2d 990, 995, 154 USPQ 118, 123 (CCPA 1967)).
In the Amendment filed on 05/23/2025 (page 6, first paragraph), Applicant cited at least paragraphs [0055], [0056], [0108], [0111], [0116], [0125], [0126]; Figure 6 and originally filed claims and specification as an alleged written support for the above new limitation. Upon careful examination of these cited paragraphs, Figure 6 and originally filed claims, the examiner noted that paragraph [0108] stated explicitly “The PEG-modified phospholipid and derivatized lipids of the present invention may comprise a molar ratio from about 0% to about 15%, about 0.5% to about 15%, about 1% to about 15%, about 4% to about 10%, or about 2% of total lipid present in the liposome”. Additionally, paragraph [0111] also stated clearly “[t]he ratio of cationic lipid (e.g., cKK-E12, C12-200, etc.) to non-cationic lipid (e.g., DOPE, etc.) to cholesterol-based lipid (e.g., cholesterol) to PEGylated lipid (e.g., DMG-PEG2K) may be between 30-60:20-35:20-30:1-15, respectively”. None of other cited paragraphs, Figure 6 and originally filed claims teach or suggest using PEG-modified lipid at a molar ratio in excess of 15% (e.g., 20%, 25% or more) of the total lipid in a nanoparticle as encompassed broadly by currently amended claims. Thus, the present application does not have a written support for the new limitation “wherein the PEG-modified lipid comprises a molar ratio of about 5% or more of the total lipid present in the nanoparticle”.
The fact that the person of ordinary skill in the art could have carried out the claimed invention without undue experimentation based on applicants’ disclosure is inadequate to meet this requirement. “The Federal Circuit has pointed out that, under United States law, a description that merely renders a claimed invention obvious may not sufficiently describe the invention for the purposes of the written description requirement of 35 U.S.C. 112.” MPEP § 2163, part (I)(A).
Therefore, given the lack of sufficient guidance provided by the originally filed specification, it would appear that Applicants did not contemplate or have possession of invention as now claimed at the time the application was filed.
Claim Rejections - 35 USC § 103
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.
Amended claims 1, 4, 8, 11, 13, 16, 23-24, 39 and 43-47 are rejected under 35 U.S.C. 103 as being unpatentable over Guild et al (WO 2012/170930; IDS) in view of Naash et al (US 2009/0011040; IDS), Hoerr et al (WO 2008/083949; IDS) and Constable et al (US 9,943,573; IDS). This is a modified rejection.
Guild et al already taught at least methods for delivery of mRNA gene therapeutic agents to one or more target cells that lead to the production of therapeutically effective levels of secreted proteins via a “depot effect” in vivo or in a subject for management and treatment of a large number of diseases (e.g., ophthalmoparesis, autosomal dominant and recessive progressive external ophthalmoplegia with mitochondrial deletions), wherein the mRNA gene therapeutic agents are loaded in lipid nanoparticles (Abstract; page 3, last 3 paragraphs; section titled “Lipid nanoparticle” on pages 21-28; page 28, second paragraph; page 32, last third of the single paragraph; Examples 1-2), and wherein the target cells include ocular cells such as photoreceptor cells (e.g., rods and cones) and retinal pigmented epithelial cells (page 28, second paragraph, and at page 29, last sentence of first paragraph). Guild et al also disclosed that the nanoliposomal transfer vehicle used to facilitate mRNA delivery to the target cell may comprise one or more cationic lipids, non-cationic lipids, and/or PEG-modified lipids; and the transfer vehicle comprises one of the following lipid formulations: C12-200, DOPE, chol, DMG-PEG2K at a molar ratio of 40:30:25:5; DODAP, DOPE, cholesterol, DMG-PEG2K at a molar ratio of 18:56:20:6; HGT5000, DOPE, chol, DMG-PEG2K at a molar ratio of 40:20:35:5; and HGT5001, DOPE, chol, DMG-PEG2K at a molar ratio of 40:20:35:5 (paragraph bridging pages 4-5; last paragraph on page 25 continues to second paragraph on page 26). Guild et al also disclosed that the percentage of PEG-modified lipid in the lipid nanoparticle may be greater than 1%, greater than 2%, greater than 5%, greater than 10%, or greater than 20% (page 26, last sentence of first paragraph); and the size of the transfer vehicle is within the range of about 25 to 250nm, preferably less than 250nm, 175nm, 150nm, 125nm, 100nm, 75nm, 50nm, 25nm or 10nm (page 27, last sentence of third complete paragraph). Guild et al stated “[t]he secreted protein is produced by the target cell for sustained amounts of time. For example, the secreted protein may be produced for more than one hour, more than four, more than six, more than 12, more than 24, more than 48 hours, or more than 72 hours after administration…In some embodiments, the level of detectable polypeptide is from continuous expression from the mRNA composition over periods of time of more than one, more than four, more than six, more than 12, more than 24, more than 48 hours, or more than 72 hours after administration” (paragraph bridging pages 5-6); “Upon transfection, a natural mRNA in the compositions of the invention may decay with a half-life of between 30 minutes and several days….In some embodiments of the invention, the activity of the mRNA is prolonged over an extended period of time. For example, the activity of the mRNA may be prolonged such that the composition of the present invention is administered to a subject on a semi-weekly or bi-weekly basis, or more preferably on a monthly, bi-monthly, quarterly or an annual basis” (page 13, first full paragraph); and “In one embodiment of the present invention, the transfer vehicles of the present invention are capable of delivering large mRNA sequences (e.g., mRNA of at least 1kDa, 1.5kDa, 2kDa, 2.5kDa, 5kDa, 10kDa, 12kDa, 15kDa, 20kDa, 25kDa, 30kDa, or more)” (page 18, second last complete sentence). The last statement suggests at least the use of mRNA sequences of the length in the range of 1kDa to 5kDa. Guild et al also taught that the mRNA in the compositions of the invention may comprise at least one modification which confers increased or enhanced stability to the nucleic acid (e.g., alterations in one or more nucleotides of a codon such that the codon encodes the same amino acid but is more stable than the codon found in the wild-type version of the mRNA (also known as codon-optimization); incorporation of non-nucleotide linkages or modified nucleotides such as pseudouridines (enhancing stability and translational capacity, as well as reducing immunogenicity in vivo) into the mRNA sequences; and the alteration of the 3’UTR or the 5’UTR) (pages 13-18). Guild et al further taught that the single mRNA may be engineered to encode more than one subunit of a heterodimer such as a single-chain Fv antibody or the mRNA may encode a functional monoclonal antibody or polyclonal antibody, including anti-vascular endothelial growth factor (VEGF) antibodies useful for treatment of VEGF-mediated diseases, such as cancer (page 33, first paragraph). Guild et al also disclosed various routes of administrations that include intraocular injections (e.g., intravitreally injection) for the disclosed compositions (page 34, third full paragraph; page 35, lines 3-4 of first paragraph; second last sentence of second paragraph). Guild et al further disclosed numerous advantages for using RNA as a gene therapy agent with respect to DNA-based gene therapy, that include: (1) RNA does not involve the risk of being stably integrated into the genome of the transfected cell, thus eliminating the concern that the introduced genetic material will disrupt the normal functioning of an essential gene, or cause a mutation that results in deleterious or oncogenic effects; (2) extragenous promoter sequences are not required for effective translation of encoded protein, and thereby avoiding possible deleterious die effects; (3) RNA is devoid of immunogenic CpG motifs such that anti-RNA antibodies are not generated; (4) any deleterious effects that do result from mRNA based gene therapy would be of limited duration due to the relatively short half-life of RNA; and (5) mRNA is not required to enter the nucleus to perform its function while DNA must overcome this major barrier (page 2, second paragraph).
Guild et al do not teach specifically at least a method of treating macular degeneration (elected species) in a subject by administering into an eye of the subject via intravitreal injection of a lipid nanoparticle encapsulating a codon-optimized mRNA encoding an anti-VEGF antibody (elected species).
Before the effective filing date of the present application (03/24/2014), Naash et al already taught successfully a method of using compacted nucleic acid nanoparticles for non-viral gene transfer to various tissues of the human eye or eyes of other mammals (e.g., an eyeball including the anterior and posterior segment of the eye, the vitreous cavity, the choroid, the subretinal space, the conjunctiva, the intracorneal space, the macula, the retina and the optic nerve) for treating an ocular disease/disorder/condition (e.g., acute macular degeneration, non-exudative age related macular degeneration and exudative age related macular degeneration, ocular tumors, glaucoma, diabetic uveitis, proliferative vitreoretinopathy, dry eye syndromes), wherein in an embodiment the nanoparticles comprise a neutrally-charged complex containing a single molecule of plasmid DNA compacted with PEG-substituted polylysine peptides, which complexes are stable in saline and serum, and are found to be non-toxic (see at least the Abstract; particularly paragraphs [0020]-[0031], [0053]-[0054], [0089]-[0092], [0115]-[0119], [0123]; and claims 1-14). Naash et al stated clearly “The term “nucleic acid” as used herein means either DNA or RNA, or molecules which contain both ribo- and deoxyribonucleotides…The nucleic acid may be double stranded, single stranded, or contain portions of both double stranded or single stranded sequence….Alternatively, if the nucleic acid is single or double-stranded RNA, an RNA derivative, or siRNA, such nucleic acids may be directly compacted with polycationic polymers to form nanoparticles. The therapeutic nanoparticle may contain one or more genes, cDNAs, RNAs, shRNA moieties, or siRNAs” (paragraphs [0030]-[0031]). Naash et al also disclosed that the number of nucleic acids encapsulated within the nanoparticle may vary from one, two, three to many, depending on the disease being treated; the exogenous nucleic acid of the nanoparticle preferably encodes a protein to be expressed and useful to treat an ocular disease (paragraphs [0032]-[0033]); and nucleic acids are naturally occurring or non-naturally occurring deoxyribonucleotides or ribonucleotides (paragraph [0030]-[0031]). Naash et al taught the compacted nanoparticles are administered into a patient via various routes of administration, including intravitreal injection (paragraph [0041]), subretinal injection (paragraph [0053]-[0054]), or subconjuctival or suprachoroidal placement (paragraph [0123]).
Additionally, Hoerr et al also disclosed an antibody-coding, non-modified or modified RNA (e.g., including encoded antibody against tumor antigen VEGF), and preferably in the form of mRNA for gene therapy without the risks associated with the use of DNA for treatment of tumors and cancer diseases, cardiovascular diseases, infectious diseases, auto-immune diseases, virus diseases and monogenetic diseases (see at least the Abstract; page 6, first paragraph continues to first paragraph on page 7; page 20, last paragraph continues to first paragraph on page 21; page 41, second paragraph; Table 1 on page 17; Table 3 on page 26 listing Bevacizumab (Avastatin) targeting VEGF for treating proliferative diabetic retinopathy). Hoerr et al taught that the RNA can be introduced directly into an organism or being in the naked form or as a complex with suitable carriers (e.g., liposomes) or can have modifications (of the RNA) (page 20, last paragraph; page 41, second paragraph); and that an antibody-coding RNA has a length of from 50 to 15,000 nucleotides, more preferably a length of from 500 to 10,000 nucleotides (e.g., 500-7,000 nucleotides or 500-5,000 nucleotides) (page 6, fourth paragraph). Hoerr et al noted that the use of DNA as an agent in gene therapy elicits a formation of anti-DNA antibodies, the possible persistence of foreign DNA in the organism can lead to a hyperactivation of the immune system, and foreign DNA can interact with the host genome to cause mutations by integration into the host genome (page 5, second paragraph). Hoerr et al also noted that in medical uses, in many cases antibodies can be employed directly only with difficulty since they usually have only a very short half-life in vivo, and therefore possibly cannot reach their target antigen at all; which requires either high active compound concentrations of the desired antibody or alternative methods which are suitable for providing large amounts of antibodies in vivo (page 4, fourth paragraph).
Moreover, Constable et al already disclosed successfully a method for treating ocular neovascularization such as age-related macular degeneration (AMD) in a human subject, comprising administering to an eye of the human subject a single dose of a pharmaceutical composition comprising a recombinant virus encoding a soluble Fms-related tyrosine kinase-1 (sFLT-1) protein, and about 5 to 10 days prior to the administration of the pharmaceutical composition a first intravitreal injection of an antibody against VEGF such as bevacizumab or ranibizumab is administered into the eye of the subject (see at least the Background of the Disclosure; Summary of the disclosure; Fig. 13 and issued claims 1-17). Constable et al also stated “Recent data suggest that VEGF is the principal angiogenic growth factor in the pathogenesis of the wet form of AMD” (col. 15, lines 26-28”).
Accordingly, it would have been obvious for an ordinary skilled artisan to modify the teachings of Guild et al by also using the disclosed lipid/liposome-based nanoparticles to encapsulate a codon-optimized mRNA encoding anti-VEGF antibody for intravitreally injection into an eye of a subject in need of treatment for macular degeneration such as age-related macular degeneration (AMD), in light of the teachings of Naash et al, Hoerr et al and Constable et al as presented above.
An ordinary skilled artisan would have been motivated to carry out the above modifications because: (i) Naash et al demonstrated successfully a method of using compacted nucleic acid (DNA or RNA) nanoparticles for non-viral gene transfer to various tissues of the human eye or eyes of other mammals to treat an ocular disease/disorder/condition, including via intravitreal injection; (ii) Hoerr et al also taught using non-modified or modified antibody-coding mRNA for gene therapy without the risks associated with the use of DNA in gene therapy (e.g., avoid formation of anti-DNA antibodies, hyperactivation of the host immune system and causing mutations in the host); and (iii) Constable et al taught that VEGF is the principle angiogenic growth factor in the pathogenesis of the wet form of AMD, and they also taught successfully at least a method for treating ocular neovascularization such as AMD in a human subject comprising a first intravitreal injection of an antibody against VEGF (e.g., bevacizumab or ranibizumab) into an eye of the subject. Please noting that the primary Guild reference taught explicitly at least a method for delivery of mRNA gene therapeutic agents to one or more target cells (e.g., ocular cells such as photoreceptor cells (e.g., rods and cones) and retinal pigmented epithelial cells) that lead to the production of therapeutically effective levels of secreted proteins using exemplary nanoparticles comprising one of the following lipid formulations: C12-200, DOPE, chol, DMG-PEG2K at a molar ratio of 40:30:25:5; DODAP, DOPE, cholesterol, DMG-PEG2K at a molar ratio of 18:56:20:6; HGT5000, DOPE, chol, DMG-PEG2K at a molar ratio of 40:20:35:5; and HGT5001, DOPE, chol, DMG-PEG2K at a molar ratio of 40:20:35:5; via intraocular injections such as intravitreally injection; and wherein the mRNA may encode a functional monoclonal antibody or polyclonal antibody, including anti-vascular endothelial growth factor (VEGF) antibodies useful for treatment of VEGF-mediated diseases such as cancer.
An ordinary skilled artisan would have a reasonable expectation of success in light of the teachings Guild et al, Naash et al, Hoerr et al and Constable et al; coupled with a high level of skill for an ordinary skilled artisan in the relevant art.
The modified method resulting from the combined teachings of Guild et al, Naash et al, Hoerr et al and Constable et al as set forth above is indistinguishable and encompassed by the present claimed method.
Therefore, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
Claims 48-49 are rejected under 35 U.S.C. 103 as being unpatentable over Guild et al (WO 2012/170930; IDS) in view of Naash et al (US 2009/0011040; IDS), Hoerr et al (WO 2008/083949; IDS) and Constable et al (US 9,943,573; IDS) as applied to claims 1, 4, 8, 11, 13, 16, 23-24, 39 and 43-47 above, and further in view of Knopov et al (WO 2013/064911).
The combined teachings of Guild et al, Naash et al, Hoerr et al and Constable et al were presented above. However, none of the cited references teach or suggest the nanoparticle has a polydispersity index (PDI) of below 0.2 (claim 49), preferably the nanoparticle has a PDI of 0.14 (claim 49).
Before the effective filing date of the present application (03/24/2014), Knopov et al already disclosed a method for sterilely preparation of lipid-nucleic acid nanoparticles (e.g., a nanoparticle comprising a lipid mixture consisting of a cationic lipid, DOPE, cholesterol and PEG-conjugated lipid at a respective molar ratio of 40-60%:10-30%:20-40%:1-10%), wherein the produced nanoparticles are monodisperse with a polydispersity index (PDI) of less than 0.2 (see at least Summary; particularly page 4, first full paragraph; page 19, fourth paragraph; page 22, third paragraph) with several exemplary lipid nanoparticles having PDI = 0.14 (see at least Tables 1 and 8-9).
Accordingly, it would have been obvious for an ordinary skilled artisan to further modify the combined teachings of Guild et al, Naash et al, Hoerr et al and Constable et al by also producing monodisperse lipid nanoparticles having a polydispersity index (PDI) of below 0.2, including the lipid nanoparticles having a PDI of 0.14, in light of the teachings of Knopov et al as presented above.
An ordinary skilled artisan would have been motivated to further carry out the above modification because Knopov et al already taught successfully a method for sterilely preparation of monodisperse lipid-nucleic acid nanoparticles with a polydispersity index (PDI) of less than 0.2 with several exemplary lipid nanoparticles having PDI = 0.14.
An ordinary skilled artisan would have a reasonable expectation of success in light of the teachings Guild et al, Naash et al, Hoerr et al, Constable et al and Knopov et al; coupled with a high level of skill for an ordinary skilled artisan in the relevant art.
The modified method resulting from the combined teachings of Guild et al, Naash et al, Hoerr et al, Constable et al and Knopov et al as set forth above is indistinguishable and encompassed by the present claimed method.
Therefore, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
Claims 23 (cKK-E12 embodiment), 24 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Guild et al (WO 2012/170930; IDS) in view of Naash et al (US 2009/0011040; IDS), Hoerr et al (WO 2008/083949; IDS) and Constable et al (US 9,943,573; IDS) as applied to claims 1, 4, 8, 11, 13, 16, 23-24, 39 and 43-47 above, and further in view of Dong et al (US 9,512,073; IDS).
The combined teachings of Guild et al, Naash et al, Hoerr et al and Constable et al were presented above. However, none of the cited references teach or suggest using the cationic lipid cKK-E12; or at least the nanoparticle comprising cKK-E12, DOPE, cholesterol and DMG-PEG2K at a ratio of 40:30:25:5.
Before the effective filing date of the present application (03/24/2014), Dong et al already disclosed amino acid-, peptide-, and polypeptide-lipids (APPLs), including cKK-E12, that are deemed useful for a variety of applications such as improved nucleotide delivery and/or for treatment of various diseases, disorders, or conditions (Abstract and Summary of the Invention; particularly col. 6, lines 1-24, lines 41-60; and col. 7, lines 29-39). Dong et al also taught a composition comprising the disclosed APPLs such as cKK-E12, and an agent such as a nucleic acid (e.g., DNA or RNA such as RNAi, dsRNA, siRNA, shRNA, miRNA), wherein the composition is in the form of a particle such as a nanoparticle that encapsulates the agent (col. 6, lines 41-60) Dong et al also disclosed an exemplary siRNA formulation comprised of cKK-E12, cholesterol, DSPC and mPEG2000-DMG at a molar ratio of 50:10:38.5:1.5 in the form of a particle with a dimeter of 60-70 nm with approximately 65% siRNA entrapment (col. 243, lines 46-50); and in evaluating for the siRNA silencing effects they concluded “cKK-E12 was the most potent material and was selected for further exploration” (col. 245, lines 62-63).
Accordingly, it would have been obvious for an ordinary skilled artisan to further modify the combined teachings of Guild et al, Naash et al, Hoerr et al and Constable et al by also selecting cKK-E12 as a cationic lipid to be used at least in combination with DOPE, cholesterol and DMG-PEG2K at a respective molar ratio of 40:30:25:5 for forming lipid/liposome-based nanoparticles to encapsulate a codon-optimized mRNA encoding anti-VEGF antibody for intravitreally injection into an eye of a subject in need of treatment for macular degeneration such as age-related macular degeneration (AMD), in light of the teachings of Dong et al as presented above.
An ordinary skilled artisan would have been motivated to further carry out the above modification because Dong et al already disclosed amino acid-, peptide-, and polypeptide-lipids (APPLs), including cKK-E12 which is the most potent material among APPLs tested, that are deemed useful for a variety of applications such as improved nucleotide delivery and/or for treatment of various diseases, disorders, or conditions; and cKK-E12 has been used successfully in an exemplary lipid nanoparticle formulation comprised of cKK-E12, cholesterol, DSPC and mPEG2000-DMG. Please noting that the primary Guild reference already taught explicitly at least a method for delivery of mRNA gene therapeutic agents to one or more target cells (e.g., ocular cells such as photoreceptor cells (e.g., rods and cones) and retinal pigmented epithelial cells) that lead to the production of therapeutically effective levels of secreted proteins using exemplary nanoparticles with the exemplary lipid formulation of C12-200, DOPE, chol, DMG-PEG2K at a molar ratio of 40:30:25:5; via intraocular injections such as intravitreally injection; and wherein the mRNA may encode a functional monoclonal antibody or polyclonal antibody, including anti-vascular endothelial growth factor (VEGF) antibodies useful for treatment of VEGF-mediated diseases such as cancer. Additionally, the primary Guild reference also stated explicitly “[t]he percentage of cationic lipid in the lipid nanoparticle may be greater than 10%, greater than 20%, greater than 30%, greater than 40%, greater than 50%, greater than 60%, or greater than 70%. The percentage of non-cationic lipid in the lipid nanoparticle may be greater than 5%, greater than 10%, greater than 20%, greater than 30%, or greater than 40%. The percentage of cholesterol in the lipid nanoparticle may be greater than 10%, greater than 20%, greater than 30%, or greater than 40%. The percentage of PEG-modified lipid in the lipid nanoparticle may be greater than 1%, greater than 2%, greater than 5%, greater than 10%, or greater than 20%” (page 26, bottom of first paragraph).
An ordinary skilled artisan would have a reasonable expectation of success in light of the teachings Guild et al, Naash et al, Hoerr et al, Constable et al and Dong et al; coupled with a high level of skill for an ordinary skilled artisan in the relevant art.
The modified method resulting from the combined teachings of Guild et al, Naash et al, Hoerr et al, Constable et al and Dong et al as set forth above is indistinguishable and encompassed by the present claimed method.
Therefore, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
Claims 23 (cKK-E12 embodiment), 24 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Guild et al (WO 2012/170930; IDS) in view of Naash et al (US 2009/0011040; IDS), Hoerr et al (WO 2008/083949; IDS) and Constable et al (US 9,943,573; IDS) as applied to claims 1, 4, 8, 11, 13, 16, 23-24, 39 and 43-47 above, and further in view of Heartlein et al (US 2015/0110859).
The combined teachings of Guild et al, Naash et al, Hoerr et al and Constable et al were presented above. However, none of the cited references teach or suggest using the cationic lipid cKK-E12; or at least the nanoparticle comprising cKK-E12, DOPE, cholesterol and DMG-PEG2K at a ratio of 40:30:25:5.
Before the effective filing date of the present application (03/24/2014), Heartlein et al already taught using at least a liposome comprising the combination of cKK-E12, DOPE, cholesterol and DMG-PEG2K in the respective molar ratio of 40:30:25:5 or 40:30:20:10 to encapsulate an mRNA encoding argininosuccinate synthetase (ASS1) for treating Arginiosuccinate Synthetase Deficiency (ASD) in a subject in need thereof, wherein the liposome has a size less than about 100 nm, 90 nm, 80 nm, 70 nm or 60 nm (see at least Abstract; Summary of the Invention; particularly paragraphs [0012], [0016]-[0019]; Example 3; Figure 8 and Table 2). Heartlein et al also demonstrated in Example 3 that both cationic lipid nanoparticle formulations containing the cKK-E12 cationic component (cKK-E12(1) and cKK-E12(2) formulations having 3% and 5% PEG lipid, respectively) resulted in more efficient ASS1 protein expression in vivo relative to lipid nanoparticle formulations containing other cationic lipids such as ICE, C12-2000 and HGT4003 (paragraphs [0220]-0221]; Table 2 and FIG. 8).
Accordingly, it would have been obvious for an ordinary skilled artisan to further modify the combined teachings of Guild et al, Naash et al, Hoerr et al and Constable et al by also selecting cKK-E12 as a cationic lipid to be used at least in combination with DOPE, cholesterol and DMG-PEG2K at a respective molar ratio of 40:30:25:5 for forming lipid/liposome-based nanoparticles to encapsulate a codon-optimized mRNA encoding anti-VEGF antibody for intravitreally injection into an eye of a subject in need of treatment for macular degeneration such as age-related macular degeneration (AMD), in light of the teachings of Heartlein et al as presented above.
An ordinary skilled artisan would have been motivated to further carry out the above modification because Heartlein et al already taught using at least a lipid nanoparticle comprising the combination of cKK-E12, DOPE, cholesterol and DMG-PEG2K in the respective molar ratio of 40:30:25:5 or 40:30:20:10 to encapsulate an mRNA encoding argininosuccinate synthetase (ASS1) for treating Arginiosuccinate Synthetase Deficiency (ASD) in a subject in need thereof; and demonstrated that both cationic lipid nanoparticle formulations containing the cKK-E12 cationic component (cKK-E12(1) and cKK-E12(2) formulations having 3% and 5% PEG lipid, respectively) resulted in more efficient ASS1 protein expression in vivo relative to lipid nanoparticle formulations containing other cationic lipids such as ICE, C12-2000 and HGT4003.
An ordinary skilled artisan would have a reasonable expectation of success in light of the teachings Guild et al, Naash et al, Hoerr et al, Constable et al and Heartlein et al; coupled with a high level of skill for an ordinary skilled artisan in the relevant art.
The modified method resulting from the combined teachings of Guild et al, Naash et al, Hoerr et al, Constable et al and Heartlein et al as set forth above is indistinguishable and encompassed by the present claimed method.
Therefore, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
Response to Argument
Applicant’s arguments related to the above modified 103 rejections in the Amendment filed on 02/25/2025 (pages 7-10) have been fully considered, but they are respectfully not found persuasive for the reasons discussed below.
A. Applicant argued basically that an ordinary skill in the art would not arrive at the instant claims based on the cited references (Guild, Naash, Hoerr, Constable and Dong) with a reasonable expectation of success. Applicant also argued that the present application is based on the “surprising” discovery that despite unique challenges posed by the anatomy and physiology of the eye, mRNA can be effectively delivered to target cells in the eye when encapsulated in 4-component liposomes. Specifically, Applicant demonstrated measurable enzymatic activity and quantifiable levels of a mRNA-encoded protein could be achieved in Examples 2-3, Table 1 and Figures 1-6 of the present application. This is particular surprising because unlike plasmid DNA, mRNA is particularly susceptible to nuclease degradation and has a short half-life inside cells; and the mRNAs recited in the instant claims have a size of 0.5 kb to 5 kb, and thus they are a much larger target for degradation by nucleases compared to siRNA or RNA oligonucleotides. Additionally, Applicant argued that the larger size of mRNA relative to siRNA results in a greater number of interactions with the liposome, which makes it more difficult to achieve efficient release from the encapsulated liposome to enter to the cytoplasm to be translated into proteins.
First, please refer to the above modified 103 rejections for details, including the provided motivations for combining the cited references.
Second, there is nothing that is surprising/unexpected regarding mRNA being effectively delivered to the eye and/or a measurable enzymatic activity and detectable levels of a mRNA-encoded protein could be achieved within a treated eye as reported in Examples 2-3, Table 1 and Figures 1-6 of the present application. With respect to Figure 6, the instant specification simply stated “As depicted in Figure 6, treatment of rats via direct intravitreal injection with ASS1 mRNA-loaded lipid nanoparticles (20 micrograms, based on encapsulated mRNA) resulted in detectable levels of human ASS1 protein within the treated eye” (paragraph [0139]). There is also nothing that is “surprising/unexpected” in Figure 5 showing human ASS1 protein detected in eyeballs of treated wt mice via intravitreal injection of ASS1 lipid nanoparticles relative to negative controls (Formulation 2 (STOP) and Saline). Particularly, before the effective filing date of the present application (03/24/2014) the prior art in the form of the Hoge reference (WO 2014/152211 with the effective filing date of 03/14/2013 of the provisional application 61/782,716) already demonstrated positive expression of mCherry modified mRNA was seen in the eyes of rats that were intravitreally injected with modified mCherry mRNA lipoplexed with RAIMAX (paragraph [001501] and Example 67 on pages 584-585), let alone the use of mRNA-encapsulated lipid nanoparticles taught by the primary Guild reference. The primary Guild reference already demonstrated successfully the use of mRNA-encapsulated lipid nanoparticles in various lipid formulations (e.g., C12-200, DOPE, chol, DMG-PEG2K at a molar ratio of 40:30:25:5; DODAP, DOPE, cholesterol, DMG-PEG2K at a molar ratio of 18:56:20:6; HGT5000, DOPE, chol, DMG-PEG2K at a molar ratio of 40:20:35:5; and HGT5001, DOPE, chol, DMG-PEG2K at a molar ratio of 40:20:35:5) as a depot source for the production of various proteins (e.g., human erythropoietin (hEPO), human alpha-galactosidase hGLA), human alpha-1 antitrypsin (hA1AT) and human Factor IX (hFIX)) in multiple sites within the body (e.g., liver, kidney, spleen, lung and muscle) via intravenous and/or intranasal delivery (see Examples 1-2). Guild et al also taught that the target cells include ocular cells such as photoreceptor cells (e.g., rods and cones) and retinal pigmented epithelial cells (page 28, second paragraph, and at page 29, last sentence of first paragraph); and the percentage of PEG-modified lipid in the lipid nanoparticle may be greater than 1%, greater than 2%, greater than 5%, greater than 10%, or greater than 20% (page 26, last sentence of first paragraph). There was no reported problem/issue associated with nuclease degradation and/or release of encapsulated mRNA from the disclosed lipid nanoparticles for translation into proteins at multiple sites within a body in the Guild reference. Moreover, Heartlein et al (US 2015/0110859 with the effective filing date of 10/22/2013 of the provisional application 61/894,294) also taught using at least a liposome comprising the combination of cKK-E12, DOPE, cholesterol and DMG-PEG2K in the respective molar ratio of 40:30:25:5 or 40:30:20:10 to encapsulate an mRNA encoding argininosuccinate synthetase (ASS1) for treating Arginiosuccinate Synthetase Deficiency (ASD) in a subject in need thereof, wherein the liposome has a size less than about 100 nm, 90 nm, 80 nm, 70 nm or 60 nm (see at least Abstract; Summary of the Invention; particularly paragraphs [0012], [0016]-[0019]; Example 3; Figure 8 and Table 2). Please note the standard under 35 U.S.C. 103 is a “reasonable” expectation of success.
B. Applicant argued that none of the cited references cited by the Examiner teach a 4-component liposome composed of a cationic lipid, a helper lipid, a cholesterol-based lipid and a PEG-modified lipid could be used to successfully deliver a protein-encoding mRNA via intravitreal administration resulting in expression and/or enzymatic activity of a therapeutic protein encoded by the mRNA in the eye as surprisingly demonstrated in the instant application. Nor any of the cited references teach or suggest that increasing the molar ratio of the PEG-modified lipid to about 5% or more of the total lipid present in the nanoparticle would result in increased mRNA-encoded protein expression in the eye after intravitreal injection. With respect to the primary Guild reference Applicant argued that none of the examples in the reference relate to intraocular or intravitreal administration; and the reference also fails to teach or disclose that liposomes comprising about 5% or more of a PEG-modified lipid would result in increased mRNA-encoded protein expression in the eye after intravitreal injection. Naash, Hoerr, Constable and Dong do not cure the deficiencies of Guild because they do not teach treating an eye disease, disorder or condition comprising administering into an eye of a subject an mRNA encoding a protein; nor do they disclose encapsulating mRNA in a 4-component liposome composed of a cationic lipid, a helper lipid, a cholesterol-based lipid and a PEG-modified lipid, and/or liposomes comprising about 5% or more of a PEG-modified lipid would result in increased mRNA-encoded protein expression in the eye after intravitreal injection. With respect to the Hoge reference (WO 2014/152211) that the examiner cited to demonstrate that before the effective filing date of the present application (03/24/2014) Hoge et al already demonstrated positive expression of mCherry modified mRNA was seen in the eyes of rats that were intravitreally injected with modified mCherry mRNA lipoplexed with RNAiMAX; Applicant argued that the Hoge reference was published on September 24, 2014 which is after the effective filing date of the present application, and Hoge et al disclosed the use of mCherry mRNA lipoplexed with RNAiMAX which is a mixture of two lipids (i.e., DOSPA and DOPE), and not mRNA encapsulated in a 4-component liposome of the present application. Accordingly, Applicant concluded that the instant claims are not obvious over the cited references.
First, once again since each of the above rejections was made under 35 U.S.C. 103 none of the cited references individually has to teach every limitation of the instant claims. For example, the primary Guild reference does not have to teach a method of treating macular degeneration (an elected species) in a subject via intravitreal injection of a lipid nanoparticle having the recited components, that encapsulates a codon-optimized mRNA encoding a protein (preferably the elected anti-VEGF antibody). Similarly, none of the Hoerr, Naash, and Constable references have to disclose an mRNA being capsulated in a lipid nanoparticle comprising the recited components. It appears that Applicant considered each of the cited references in total isolation one from the others without considering at least the specific combination of Guild, Naash, Hoerr and Constable; or Guild, Naash, Hoerr, Constable and Dong as set forth above. Please refer to the above modified rejections for details.
Second, there is no legal requirement whatsoever that any of the cited references has to provide experimental data (a working example) for the claimed treatment method. It is noted that the as-filed specification also does not disclose a working example for the elected embodiment of using a lipid nanoparticle comprises the combination of cKK-E12, cholesterol, DOPE and PEG-modified lipids, that encapsulates an mRNA encoding anti-VEGF antibody to treat macular degeneration in a subject in need thereof.
Third, the primary Guild reference already demonstrated successfully the use of mRNA-encapsulated lipid nanoparticles in various lipid formulations (e.g., C12-200, DOPE, chol, DMG-PEG2K at a molar ratio of 40:30:25:5; DODAP, DOPE, cholesterol, DMG-PEG2K at a molar ratio of 18:56:20:6; HGT5000, DOPE, chol, DMG-PEG2K at a molar ratio of 40:20:35:5; and HGT5001, DOPE, chol, DMG-PEG2K at a molar ratio of 40:20:35:5) as a depot source for the production of various proteins (e.g., human erythropoietin (hEPO), human alpha-galactosidase hGLA), human alpha-1 antitrypsin (hA1AT) and human Factor IX (hFIX)) in multiple sites within the body (e.g., liver, kidney, spleen, lung and muscle) via intravenous and/or intranasal delivery (see Examples 1-2). Moreover, before the effective filing date of the present application (03/24/2014) Hoge et al (WO 2014/152211 with the effective filing date of 03/14/2013 of the provisional application 61/782,716) already demonstrated positive expression of mCherry modified mRNA was seen in the eyes of rats that were intravitreally injected with modified mCherry mRNA lipoplexed with RAIMAX (paragraph [001501] and Example 67 on pages 584-585), let alone the use of mRNA-encapsulated lipid nanoparticles taught by the primary Guild reference. Thus, there is nothing that is “unexpected” about mRNA is effectively delivered to the eye and/or a measurable enzymatic activity and detectable levels of a mRNA-encoded protein could be achieved within a treated eye as reported in Examples 2-3, Table 1 and Figures 1-6 of the present application. There is nothing that is “surprising/unexpected” in Figure 5 showing human ASS1 protein detected in eyeballs of treated wt mice via intravitreal injection of ASS1 lipid nanoparticles relative to negative controls (Formulation 2 (STOP) and Saline). It is also noted that there is a significant change in the level of human ASS1 protein detected in eyeballs of treated mice and rats via intravitreal injection of ASS1 lipid nanoparticles with reported 3750 pg/mg total protein and 1250 pg/mg of total protein, respectively (see Figures 5-6).
Fourth, Fig. 6 of the present application simply showed human ASS1 protein detected in eyeballs of treated rats via intravitreal injection of ASS1 lipid nanoparticles with 1250 pg/mg of total protein and 400 pg/mg of total protein for Formulation 1 and Formulation 2, respectively; wherein DMG-PEG-2K in Formulation 1 is 5% while DMG-PEG-2K in Formulation 2 is 3% (A 2-point data set). However, there is no evidence in Fig. 6 or elsewhere in the specification indicating or suggesting that a Formulation with DMG-PEG-2K at 4% molar ratio would yield an ASS1 protein expression level that is intermediate between those of Formulations 1-2; or Formulations with 10% and 15% DMG-PEG-2K molar ratios have progressively increasing ASS1 protein expression levels relative to those of Formulations 1 and 2. Nevertheless, with respect to the instant claims it is irrelevant whether an ordinary skill in the art recognizes that increasing the molar ratio of the PEG-modified lipid to about 5% or more of the total lipid present in the nanoparticle would result in increased mRNA-encoded protein expression in the eye after intravitreal injection, this is because the primary Guild reference already disclosed that the nanoliposomal transfer vehicle used to facilitate mRNA delivery to the target cell may comprise one or more cationic lipids, non-cationic lipids, and/or PEG-modified lipids; and the transfer vehicle comprises one of the following lipid formulations: C12-200, DOPE, chol, DMG-PEG2K at a molar ratio of 40:30:25:5; DODAP, DOPE, cholesterol, DMG-PEG2K at a molar ratio of 18:56:20:6; HGT5000, DOPE, chol, DMG-PEG2K at a molar ratio of 40:20:35:5; and HGT5001, DOPE, chol, DMG-PEG2K at a molar ratio of 40:20:35:5 (paragraph bridging pages 4-5; last paragraph on page 25 continues to second paragraph on page 26); and that the percentage of PEG-modified lipid in the lipid nanoparticle may be greater than 1%, greater than 2%, greater than 5%, greater than 10%, or greater than 20% (page 26, last sentence of first paragraph). Additionally, Heartlein et al (US 2015/0110859 with the effective filing date of 10/22/2013 of the provisional application 61/894,294) also taught using at least a liposome comprising the combination of cKK-E12, DOPE, cholesterol and DMG-PEG2K in the respective molar ratio of 40:30:25:5 or 40:30:20:10 to encapsulate an mRNA encoding argininosuccinate synthetase (ASS1) for treating Arginiosuccinate Synthetase Deficiency (ASD) in a subject in need thereof, wherein the liposome has a size less than about 100 nm, 90 nm, 80 nm, 70 nm or 60 nm (see at least Abstract; Summary of the Invention; particularly paragraphs [0012], [0016]-[0019]; Example 3; Figure 8 and Table 2).
Fifth, please note the standard under 35 U.S.C. 103 is a “reasonable” expectation of success.
Conclusions
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Quang Nguyen, Ph.D., at (571) 272-0776.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s SPE, James Douglas (Doug) Schultz, Ph.D., may be reached at (571) 272-0763.
To aid in correlating any papers for this application, all further correspondence regarding this application should be directed to Group Art Unit 1631; Central Fax No. (571) 273-8300.
Any inquiry of a general nature or relating to the status of this application or