DETAILED ACTION
Final Rejection
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statements (IDS) submitted on 01/13/2022 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of the Claims
3. Claims 1-4, 9, 12-23 and 25-33 as amended and filed on 02/04/2026 are pending.
4. Claims 7-8 and 11 are cancelled by the applicant, without prejudice or disclaimer.
5. Claims 1, 12 and 17 are amended by the applicant in the claim listing dated 02/04/2026.
6. Claims 1-4, 9, 12-23 and 25-33 are under examination in this office action.
Priority
7. This application is a national stage filing under 35 U.S.C. 371 of International Patent Application Serial No. PCT/US2020/028277, filed on April 15, 2020, which claims the benefit of the filing date of U.S. Provisional Application No. 62/833,908, filed on April 15, 2019, under 35 U.S.C. 119(e).
Withdrawn Claim Rejections -Under 35 USC § 102
8. Withdrawn rejection of claims 1-3, 7 and 9-10 under 35 U.S.C. 102(a)(1)/(a)(2) in view of the applicant’s amendment of the claim 1.
Claim Rejections - 35 USC § 103 (Modified)
9. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
10. Claims 1, 2-4, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017) and further in view of Swift et al 2001 (Current Protocols in Immunology, 2001, Chapter 10, Unit 10-17), Guo et al 2017 (Saudi J Biol Sci 2017 Mar;24(3):622-629), Moreau-Gaudry et al 2001 (published in Blood 2001 Nov 1;98(9):2664-72), Nasimuzzaman et al 2016 (Molecular Therapy — Methods & Clinical Development (2016) 3, 16004), Gélinas et al 2017 (Scientific Reports, 7:10198, p. 1-12), McCarron et al 2017 (Cell & Gene Therapy Insights - IDOI: 10.18609/cgti.2017.072), Tang et al 2015 (Oncology Letters, 9: 55-62, 2015), Truran et al 2016 (EP2307551B1 published 12/14/2016), Kang et al 2011 (published US7875446B2 published 01/25/2011), Hrinda et al 1997 (US5661023A published 08/26/1997), and as evidenced by Lindemann 2019 (EP3822346A1 published 05/19/2021 with a filing date 11/14/2019).
Claim 1. A method of producing retroviral particles, comprising:
(a) preparing a culture medium containing retroviral particles comprising the steps of:
(i) transfecting host cells with a retroviral vector(s) in the presence of polyethylenimine (PEI);
(ii) culturing the transfected host cells in a first culture medium; and
(iii) harvesting the first culture medium 32-48 hours post transfection producing the culture medium containing retroviral particles, wherein step (iii) is performed only once;
(b) loading the culture medium containing retroviral particles onto an ion-exchange column to allow for binding of the retroviral particles to the ion-exchange column; and
(c) eluting the retroviral particle from the ion-exchange column with an elution buffer comprising one or more salts to form a first solution, wherein the elution buffer has a total salt concentration of about 400 mM to 800 mM, and wherein the first solution comprises the retroviral particles;
wherein in step (i), the host cells are cultured in a second culture medium, which is replaced with the first culture medium 4-8 hours post transfection prior to step (ii),
wherein the retroviral vector carries a gene of interest, and
wherein the gene of interest encodes a gamma-globin protein.
Regarding Claim 1: Boudeffa et al 2017 (US20170002332A1) discloses and is directed to a method of purifying enveloped viruses or viral vectors, a retrovirus, or a lentivirus (See, abstract and claim 36), viral vector, retroviral vectors, lentiviral vector, retroviral particle, lentiviral particle (See [0012]-[0013]), comprising:
(a) preparing a culture medium containing retroviral particles comprising the steps of:
(i) transfecting host cells with a retroviral vector(s) in the presence of polyethylenimine (PEI);
(ii) culturing the transfected host cells in a first culture medium; by disclosing: the host cell allowing production of an enveloped virus is selected from a human cell (HEK293, HEK293T, HEK293FT, Te671, HT1080, CEM), a muridae cell (NIH-3T3), a mustelidae cell (Mpf), a canid cell (D17) (See, para 0017]). The cells are cultivated in a medium suitable for cultivation of mammal cells and for producing an enveloped virus. The medium used may notably comprise serum or be serum-free. The culture media for mammal cells are well known in the field. As such mention may be made of DMEM (Dulbecco's Modified Eagle's medium) medium, RPMI1640 or a mixture of various culture media, including for example DMEM/F12, or a serum-free medium like optiMEM®, optiPRO®, optiPRO-SFM®, CD293®, Freestyle F17® (Life Technologies) or Ex-Cell® 293 (Sigma-Aldrich) (See, para [0018]). The transfection of cells with plasmids in presence of calcium phosphate or polyethyleneimine, although other agents may be contemplated by one skilled in the art, the conditions (notably amount of plasmid(s), ratio between the plasmids, ratio between the plasmid(s) and the transfection agent, the type of medium, etc.) and the transfection time may be adapted by one skilled in the art according to the characteristics of the produced virus and/or of the transgene introduced into the transfer plasmid. (See, para [0019]).
(iii) harvesting the first culture medium 32-48 hours post transfection producing the culture medium containing retroviral particles; by disclosing the enveloped virus is then harvested from the supernatant of the culture according to methods well known in the field (See, para [0020]). The harvesting of the vectors is made after 24 hours of having changed the culture medium. (See, para [0075]); the harvest is made after 48 hours post-transfection; the supernatant is filtered on a 0.45 μm filter in cellulose acetate (See, para [0074], claim 25-26).
(b) loading the culture medium containing retroviral particles onto an ion- exchange column to allow for binding of the retroviral particles to the ion-exchange column;
(c) eluting the retroviral particle from the ion-exchange column with an elution buffer comprising one or more salts to form a first solution, wherein the elution buffer has a total salt concentration of about 400 mM to 800 mM, and wherein the first solution comprises the retroviral particles, by disclosing loading of the viral vector sample on ion-exchange column and binding to ion-exchange column and wash of column (See [0082]-[0084]); elution of the viral vector steps are performed (See, [0084]) and further exclusion chromatography is performed to remove the contaminating salts and proteins eluted with the vectors at 650 mM of NaCl (See [0085]-[0087]); elution of the retroviral particle from the ion-exchange column with an elution buffer contains between 450 to 800 mM of NaCl concentration (See, [0042]-[0043]); the development and the establishment of a novel purification protocol for lentiviral vectors derived from HIV-1 or from other retroviruses produced by transient transfection or with stable and pseudotyped producing cells with different envelope glycoproteins, is essentially, but not exclusively, based on three purification techniques: TFF (tangential flow filtration), anion exchange chromatography and exclusion chromatography (See, [0093], claims 20, 23, 25, 27, 37, 38).
Boudeffa et al 2017 (US20170002332A1) teaches, wherein step (iii) is performed only once by disclosing viral vectors derived from HIV-1, cell culture, transfection of cells with quadri-transfection plasmid vectors, after 16 hours the transfection medium supernatant is replaced with fresh medium to allow production of viral vector, the harvest of viral vector is made after 48 hours post-transfection and the supernatant is filtered on a 0.45 μm filter in cellulose acetate (CA) 1 L (See, [0074]- [0075]). Boudeffa et al 2017 (US20170002332A1) discloses step (iii) is performed only once because the viral vector harvest is filtered after harvesting (See, [0074] last 3 lines).
Boudeffa et al 2017 (US20170002332A1) teaches the enveloped virus (retroviral vector) contain a transgene (gene) of interest introduced into its genome depending on the specific use for which the enveloped viral vector is intended (See, [0014]).
Boudeffa et al 2017 (US20170002332A1) does not teach the amended claim 1 step, (c) wherein in step (i), the host cells are cultured in a second culture medium, which is replaced with the first culture medium 4-8 hours post transfection prior to step (ii).
Swift et al 2001 is directed to production of retroviral vectors in mammalian 293T cells, and teaches the amended claim 1 step, (c) wherein in step (i), the host cells are cultured in a second culture medium, which is replaced with the first culture medium 4-8 hours post transfection prior to step (ii), by disclosing culture of 293T cells and transfection of the cells with the plasmids required for production of retroviral vector. After adding transfection mixture drop-wise, the dishes with the cells are incubated in an incubator at a predetermined temperature for 4 to 8 hours (See, Swift et al 2001, steps 1-11). Then the medium is removed from the dishes with the cells and fresh medium (second culture medium) and cells are incubated for production of retroviral vector (See, step 12). Swift et al 2001 teaches a calcium phosphate–mediated transfection method for efficiently introducing retroviral vector plasmid DNA into the cells and generating high yields of virion-containing supernatant.
Both, Boudeffa et al 2017, and Swift et al 2001 does not teach added limitation (sub-steps) of instant amended claim 1, (c) limitation, wherein the gene of interest encodes a gamma-globin protein.
Moreau-Gaudry et al 2001 is in the art and teaches high-level erythroid-specific gene expression in primary human and murine hematopoietic cells with self-inactivating lentiviral vectors for gene therapy for red blood cell (RBC) disorders, particularly for hemoglobinopathies, using retroviral vectors, lentiviral vector, SIN-lentiviral vectors and expression of hybrid gamma globulin (hybrid human beta/gamma globin gene led to 43% to 113% human gamma-globin expression) using SIN lentiviral vectors with high erythroid-specific expression in cell lines primary human CD34+ cells and in vivo in the murine bone marrow (BM) transplantation model (See, abstract, entire prior art).
Lindemann 2019 (EP3822346A1) is in the art and provides evidence that production of high titer viral vector supernatants of recombinant virus particles that comprise foamy virus envelope glycoprotein (FV Env), for example for nucleic acid transfer applications, requires the use of a special protocol. This protocol employs transient transfection of mammalian packaging cells using cationic polymer-based transfection reagents such as polyethylenimine (PEI). Transfection protocols using standard non-cationic transfection reagents such as calcium phosphate (CaPO) result in 10-fold to 100-fold lower viral vector supernatant titers compared to cationic polymer-based transfection reagents (See, para [0021]). In contrast, transfection reagents based on cationic polymers like PEI or Polyfect (Qiagen) yield up to 100-fold higher FV Env-comprising viral vector titers, whereas no significant difference in vector titers is observed for lentiviral VSV-G pseudotypes (See, pata [0176]).
The prior arts recited below provide additional evidence of teachings and motivation and reasonable expectation of success for use of polyethylenimine (PEI) as a preferred transfection agent.
Gélinas et al 2017 is in the art and teaches lentiviral vector production by transient transfection, production and titration protocols by transfection of Human Embryonic Kidney 293T cells (HEK 293T) with a ‘transfection mix’ of the five plasmids complexed with polyethylenimine (PEI) (See, p. 3, Fig 1 legend).
Nasimuzzaman et al 2016 is in the art and teaches production and purification of high-titer foamy virus vector for the treatment of leukocyte adhesion deficiency. Process development improvements included use of polyethylenimine-based transfection, use of a codon-optimized gag, heparin affinity chromatography, tangential flow filtration, and ultracentrifugation, which reproducibly resulted in 5,000-fold concentrated and purified virus, an overall yield of 19 ± 3%, and final titers of 1–2 × 109 IU/ml. Transfected cells were cultured for ~48 hours and subsequently treated with 50 Units/ml of Benzonase endonuclease (Millipore, Bellerica, MA) in media containing 10 mmol/l MgCl2 at 37 °C for ~16 hrs to digest residual plasmid, genomic DNA, and RNA. FV supernatants were harvested and clarified by passing through a leukocyte reduction filter, FV were purified immediately using POROS heparin affinity chromatography. Bound FV vector particles were eluted from the heparin column in 25 mmol/l Tris–HCl containing 600 mmol/l NaCl (See, abstract, material and methods p.7 col 1, vector production and purification, Fig. 1, 5). Nasimuzzaman et al 2016 further recited/teaches that PEI-mediated transfection of FV plasmids into HEK293T cells significantly increases the titers over those achieved with calcium phosphate, PEI has the ability to avoid trafficking to degradative lysosomes and its buffering capacity leads to osmotic swelling and rupture of endosomes, resulting in release of the vector particles into the cytoplasm and subsequently to the culture medium. PEI has a high cationic charge density at physiological pH due to partial protonation of the amino groups in every third position. These amino groups form noncovalent complexes with negatively charged DNA, which leads to condensation and shielding of the negative charges, thereby allowing endocytosis into the cells, resulting in efficient transfection of vector producer cells.
McCarron et al 2017 is in the art and has reviewed and teaches scale-up of lentiviral vectors for gene therapy: advances and challenges. The transfection reagent polyethylenimine (PEI) does not require tight regulation of transfection conditions, most economically feasible transfection reagents for use in largescale production, post-transfection media change is not necessary. PEI has also proven to be effective for the transfection of both adherent and suspension cultures and can be used in either the presence or absence of serum (See, abstract, p. 721, col 1-2).
Tang et al 2015 is in the art and teaches optimization of lentiviral vector production using polyethylenimine (PEI) mediated transfection of 293T cells and the results were compared with CaPO4‑mediated transfection method. Despite using less DNA the PEI-mediated transfection method resulted in viral titers that were the same as those achieved using the CaPO₄-mediated method (See, p.59, Fig 7). be faster than the standard methods but equally as sensitive. Optimization of the production method for LvVs was achieved using PEI-mediated transient transfections. Serum-free Opti-MEM® was used to directly produce LvVs that could be harvested 48 h after transfection. Furthermore, a cell density of 15×106 cells/10-cm plate and a DNA concentration of 1X were selected for the optimum production of LvVs. The optimized LvV titration method was simple and direct; it involved LvVs carrying fluorescent reporters, which proved to be faster than the standard methods but equally as sensitive. In conclusion, a scalable process for production of LvVs by PEI-mediated transfection was established and optimized. The optimized PEI-mediated transfection method was easy to use, as well as providing greater reliability with a higher degree of reproducibility and consistency (See, abstract, entire article).
Truran et al 2016 (EP2307551B1) is in the art and teaches a process for retroviral vector production by transfection of HEK293T cells expanded in tissue culture flasks, into 10-layer cell factories (CFs) and purification of a retroviral vector comprising the steps recited/claimed in instant claim 1 comprising anion exchange membrane chromatography, using a stepwise elution gradient of sodium chloride for purification of retroviral vectors (See, para [0220]- [0221], claims 1-5).
Kang et al 2011 (US7875446B2) is in the virology art and teaches purifying vesicular stomatitis virus (VSV) from cell culture fluid of a mammalian cell culture infected with VSV, the process comprising: clarifying the cell culture fluid by low-speed centrifugation and recovering the VSV in the supernatant; filtering the supernatant through a 0.45 μm filter and recovering the VSV in the filtered solution; loading the VSV filtered solution onto a anion exchange membrane adsorber equilibrated with a first pH buffered salt solution, eluting the VSV from the anion exchange membrane adsorber with a second pH buffered salt solution and recovering the eluted VSV fractions (See, abstract, claims 1-8).
Hrinda et al 1997 (US5661023A) is in the art and teaches production and purification of retroviral particles by passing a solution comprising the retroviral particles and contaminants through an anion exchange resin and eluting the retroviral particles from the resin. The preferred exchange resin is a tentacle anion exchange resin (See, McCarron et al 2017).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prior art teachings of Boudeffa et al 2017 and incorporate the teachings of Swift et al 2001, Guo et al 2017, Moreau-Gaudry et al 2001, Nasimuzzaman et al 2016, Gélinas et al 2017, McCarron et al 2017, Tang et al 2015, Truran et al 2016, Kang et al 2011, Hrinda et al 1997, and as evidenced by Lindemann 2019, as recited supra, to arrive at the invention of claim 1. The motivation would be the transfection reagent polyethylenimine (PEI) does not require tight regulation of transfection conditions, post-transfection media change is not necessary, PEI has also proven to be effective for the transfection of both adherent and suspension cultures and can be used in either the presence or absence of serum, requires less plasmid DNA than calcium phosphate transfection, most economically feasible transfection reagents for use in largescale production (See, abstract, p. 721, col 1-2), direct loading on ion exchange chromatography (for purification) of the culture fluid containing retroviral particle would reduce purification time and manipulation of the retroviral particle to different physical and salt and pH condition to preserve infectivity of the retroviral vector carrying a gene of interest, the gene gamma-globin, encoding a gamma-globin protein for gene therapy and would overall would lead to recombinant retroviral vector encoding gamma-globin gene for a commercial success. Another motivation would be to remove the transfection reagent comprising cell culture medium and replace with a new medium to make the medium environment less toxic to cells (See, Guo et al 2017, abstract) and the transfection require shorter time of 4-8 hours (See, Swift et al 2001). There would be a reasonable expectation of success for transfection of the plasmid vectors in 293T cells to generate retroviral vector/particles based on the well-established protocol of Swift et al 2001. One of the ordinary skills I the art would have a reasonable expectation of success to arrive at the invention of claim 1 given the applied prior art teachings as recited supra. It is similar to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention in claim 1. See, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), examples of rationales, A-G.
The combined prior art teachings of Boudeffa et al 2017 and other applied prior arts renders obvious the claim 1 as recited supra. The additional teachings of Boudeffa et al 2017 when combined with the prior art teachings applied to claim 1 teaches claims 2-4, and 9 as recited below:
Claim 2: Boudeffa et al 2017 (US20170002332A1) disclosed added limitation instant claim 2, wherein the retroviral particle is a lentiviral particle, a gamma retroviral particle, or foamy viral particle (See, [0013], [0066], [0097], [0099]; [0012], [0016]).
Claims 3-4: Boudeffa et al 2017 (US20170002332A1) disclosed added limitation instant claim 3, wherein salt comprises Sodium Chloride, the elution buffer contains between 450 to 800 mM of NaCl (See, [0042]-[0043]). Boudeffa et al 2017 (US20170002332A1) discloses added limitation instant claim 4, wherein salt concentration of the elution buffer contains between 450 to 800 mM of Sodium chloride (See, [0042]-[0043]).
Claim 9: The method of claim 1, wherein the process further comprises passing the harvested first culture medium through a leukocyte reduction filter, a 0.45 µm filter, or a combination thereof.
Boudeffa et al 2017 (US20170002332A1) teaches added limitation of instant claim 9 by disclosing the retroviral vector production first harvest culture medium at 48 hours post-transfection, the supernatant is filtered on a 0.45 μm filter in cellulose acetate (See, [0074]).
The above-recited Boudeffa et al. (and additional PEI references) differ by from instant claim 4 (recited below) by failing to explicitly teach total salt elution buffer concentration of the elution buffer is about 600mM.
However, Boudeffa et al 2017 (US20170002332A1) discloses salt concentration of the elution buffer used for retroviral vector purification last step elution the buffer contains between 450 to 800 mM of Sodium chloride (See, [0042]-[0043]). The total salt concentration range of Sodium chloride 450 to 800 mM comprise the elution buffer is about 600mM total salt concentration and thus teachings of Boudeffa et al 2017 renders obvious the added limitation of instant claim.
Furthermore, according to section 2144.05 of the MPEP, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Boudeffa et al 2017 recites successful purification of retroviral vector using a buffer comprising total salt concentration range of Sodium chloride 450 to 800 mM (See, [0042]-[0043]). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined prior art teachings as applied to claim 1 as recited supra and incorporate the additional teachings of Boudeffa et al 2017 to arrive at the invention of claims 2-4, and 9. The motivation would be large scale purification and optimal salt concentration in elution buffer for high yield purification of the claimed wherein the retroviral particle is a lentiviral particle, a gamma retroviral particle, or foamy viral particle (instant claim 2) or a retroviral vector carries a gene of interest, and wherein the gene of interest encodes a gamma-globin protein (instant claim 1) to preserve infectivity that would overall lead to a commercial success. One of the ordinary skills I the art would have a reasonable expectation of success to arrive at the inventions of claims 2-4, and 9 given the applied prior art teachings as recited supra. It is similar to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention in claims 2-4, and 9. See, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), examples of rationales, A-G.
11. Claims 12, 15-16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over combined prior art teachings of Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017), Swift et al 2001 (Current Protocols in Immunology, 2001, Chapter 10, Unit 10-17), Guo et al 2017 (Saudi J Biol Sci 2017 Mar;24(3):622-629), Moreau-Gaudry et al 2001 (published in Blood 2001 Nov 1;98(9):2664-72), Nasimuzzaman et al 2016 (Molecular Therapy — Methods & Clinical Development (2016) 3, 16004), Gélinas et al 2017 (Scientific Reports, 7:10198, p. 1-12), McCarron et al 2017 (Cell & Gene Therapy Insights - IDOI: 10.18609/cgti.2017.072), Tang et al 2015 (Oncology Letters, 9: 55-62, 2015), Truran et al 2016 (EP2307551B1 published 12/14/2016), Kang et al 2011 (published US7875446B2 published 01/25/2011), Hrinda et al 1997 (US5661023A published 08/26/1997), and as evidenced by Lindemann 2019 (EP3822346A1 published 05/19/2021 with a filing date 11/14/2019) ) (hereafter also referred as modified Boudeffa et al 2017) applied to claims 1, 2-4, and 9 as above, and further in view of Malik et al 2017 (US20170145077A1, published 25 May 2017).
Claims 12, 15-16, and 18: The modified Boudeffa et al 2017 teaches claim 1 as recited supra, however, does not teach the added limitation of instant claims 12, 15-16, and 18.
Malik et al 2017 teaches a mutant human gamma-globin protein sequence, SEQ ID NO: 1 (Db) that has an amino acid substation at position G17D as compared to the instant claim 15 claimed SEQ ID NO: 2 (Qy), as shown below (only partial sequence alignment is shown):
Query Match 100.0%; Score 766; Length 147;
Best Local Similarity 100.0%;
Matches 147; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MGHFTEEDKATITSLWGKVNVEDAGGETLGRLLVVYPWTQRFFDSFGNLSSASAIMGNPK 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MGHFTEEDKATITSLWDKVNVEDAGGETLGRLLVVYPWTQRFFDSFGNLSSASAIMGNPK 60
Malik et al 2017 is directed to an improved fetal hemoglobin for genetic correction of sickle cell disease using retroviral/lentiviral expression vectors encoding mutated human gamma globulin (See, Malik et al 2017, claims 3-4 and 11, [0005], [0071]- [0072]).
Malik et al 2017 teaches a mutant human gamma-globin protein sequence, SEQ ID NO: 1 (Db) that has 100% identity match with the instant claim 16 claimed SEQ ID NO: 3 (Qy).
Query Match 100.0%; Score 766; Length 147;
Best Local Similarity 100.0%;
Matches 147; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MGHFTEEDKATITSLWDKVNVEDAGGETLGRLLVVYPWTQRFFDSFGNLSSASAIMGNPK 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MGHFTEEDKATITSLWDKVNVEDAGGETLGRLLVVYPWTQRFFDSFGNLSSASAIMGNPK 60
Qy 61 VKAHGKKVLTSLGDAIKHLDDLKGTFAQLSELHCDKLHVDPENFKLLGNVLVTVLAIHFG 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 VKAHGKKVLTSLGDAIKHLDDLKGTFAQLSELHCDKLHVDPENFKLLGNVLVTVLAIHFG 120
Qy 121 KEFTPEVQASWQKMVTAVASALSSRYH 147
|||||||||||||||||||||||||||
Db 121 KEFTPEVQASWQKMVTAVASALSSRYH 147
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the combined prior art teachings of the modified Boudeffa et al 2017 as applied to claim 1 above and incorporate teachings of Malik et al 2017 on mutated human gamma globulin to arrive at the invention of claims 12 and 15-16. One of ordinary skills in the art would have been motivated to further modify the combined prior art teachings of the modified Boudeffa et al 2017 as applied to claim 1 above to incorporate the mutated human gamma globulin of Malik et al 2017 into the retroviral vector for human gene therapy of red blood cell (RBC) disorders, particularly for hemoglobinopathies because the Glycine17Aspartic acid (G17D) amino acid mutation is known to improve its affinity for a-globin without altering its functional properties, so that HbF is formed at higher efficiency than HbS in RBCs and the mutation also improved the lifespan of the RBCs by reducing sickling, despite the similar levels of HbF. Thus, the engineered mutated gamma globin vector also produces a superior anti-sickling HbF, improving RBC quality and lifespan. (See, para [0241], [0244] of Malik et al 2017 (US20170145077A1, and abstract and claims). There would be a motivation for commercial success as well. There would be a reasonable expectation of success to arrive at the invention of claims 12 and 15-16 given the combined prior art teachings as applied to the claims 12 and 15-16 as recited supra. It is similar to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention in claims 12 and 15-16. See, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), examples of rationales, A-G.
Claim 18: Malik et al 2017 teaches the added limitation of claim 18, wherein the retroviral vector is a self-inactivated (SIN) retroviral vector by disclosing modified SIN lentiviral expression vector and gamma-retroviral vector (See, [0003], [0005], claim 6). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined teachings of modified Boudeffa et al 2017 as applied to claim 1 and incorporate additional teachings of Malik et al 2017 on self-inactivating (SIN) retrovirus vector for expression to arrive at the invention of claim 18. One of ordinary skills in the art would have been motivated to incorporate the teachings of Malik et al regarding “SIN” for increasing a viral titer because gamma-retroviral vectors and lentiviral vectors have been modified to a self-inactivating (SIN) design to delete ubiquitously active enhancers in the U3 region of the long terminal repeats (LTR) that increase retrovirus vector titer (See, [0003] and for commercial success. There would be a reasonable expectation of success to arrive at the invention of claim 18 given the combined prior teachings as applied to claim 18 as recited supra. It is similar to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention in claim 18. See, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), examples of rationales, A-G.
12. Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over combined prior art teachings of Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017), Swift et al 2001 (Current Protocols in Immunology, 2001, Chapter 10, Unit 10-17), Guo et al 2017 (Saudi J Biol Sci 2017 Mar;24(3):622-629), Moreau-Gaudry et al 2001 (published in Blood 2001 Nov 1;98(9):2664-72), Nasimuzzaman et al 2016 (Molecular Therapy — Methods & Clinical Development (2016) 3, 16004), Gélinas et al 2017 (Scientific Reports, 7:10198, p. 1-12), McCarron et al 2017 (Cell & Gene Therapy Insights - IDOI: 10.18609/cgti.2017.072), Tang et al 2015 (Oncology Letters, 9: 55-62, 2015), Truran et al 2016 (EP2307551B1 published 12/14/2016), Kang et al 2011 (published US7875446B2 published 01/25/2011), Hrinda et al 1997 (US5661023A published 08/26/1997), and as evidenced by Lindemann 2019 (EP3822346A1 published 05/19/2021 with a filing date 11/14/2019), Malik et al 2017 (US20170145077A1, published 25 May 2017) applied to claims 12, 15-16, and 18 as above, and further in view of Venter et al 2004 (US6812339B1, published 02 November 2004).
Claim 13. The method of claim 12, wherein the human gamma-globin protein is a wild-type human gamma-globin protein.
Claim 14: The method of claim 13, wherein the wild-type human gamma-globin protein comprises the amino acid sequence of MGHFTFFDKATITSLWGKVNVEDAGGETLGRLLV VYPWTQRFFDSFGNLSSASAIMGNPKVKAHGKKVLTSLGDAIKHLDDLKGTFAQLSELHCDKLHVDPFNFKLLGNVLVTVLAIHFGKFFTPFVQASWQKMVTAVASALSSRYH (SEQ ID NO: 2).
The combined teachings of Boudeffa et al 2017 and other prior arts renders obvious claim 12 as recited supra, however, does not teach added limitation of instant claim 13-14.
Venter et al 2004 is in the sickle cell anemia genetic disease art and is directed to a polymorphism in known genes associated with human disease and uses thereof including genetic disease include sickle cell anemia (See, Venter et al 2004, US6812339B1, abstract, and Col 2, lines 40-42). Venter et al 2004 teaches a wild-type human gamma-globin protein sequence, SEQ ID NO: 5957 that has 100% identity match with the instant claim 14 claimed SEQ ID NO: 2.
Query Match 100.0%; Score 766; Length 147;
Best Local Similarity 100.0%;
Matches 147; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MGHFTEEDKATITSLWGKVNVEDAGGETLGRLLVVYPWTQRFFDSFGNLSSASAIMGNPK 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MGHFTEEDKATITSLWGKVNVEDAGGETLGRLLVVYPWTQRFFDSFGNLSSASAIMGNPK 60
Qy 61 VKAHGKKVLTSLGDAIKHLDDLKGTFAQLSELHCDKLHVDPENFKLLGNVLVTVLAIHFG 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 VKAHGKKVLTSLGDAIKHLDDLKGTFAQLSELHCDKLHVDPENFKLLGNVLVTVLAIHFG 120
Qy 121 KEFTPEVQASWQKMVTAVASALSSRYH 147
|||||||||||||||||||||||||||
Db 121 KEFTPEVQASWQKMVTAVASALSSRYH 147
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined prior art teachings of Boudeffa et al 2017, Gélinas et al 2017, McCarron et al 2017, Truran et al 2016, Kang et al 2011, Hrinda et al 1997, Moreau-Gaudry et al 2001 and Malik et al 2017 as recited supra and incorporate teachings of Venter et al 2004 on wild-type human gamma-globin protein sequence to comprise in the retroviral vector to arrive at the invention of claims 13-14. One of ordinary skills in the art would have been motivated to incorporate the wild type human gamma globulin of Venter et al 2004 into the retroviral vector to treat sickle cell disease in human (See, Venter et al 2004 and Malik et al 2017) for commercial success. There would be a reasonable expectation of success to arrive at the invention of claims 13-14 given the combined prior art teachings applied to the claims 13-14 as recited supra. It is similar to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention in claims 13-14. See, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), examples of rationales, A-G.
13. Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over combined prior art teachings of Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017), Swift et al 2001 (Current Protocols in Immunology, 2001, Chapter 10, Unit 10-17), Guo et al 2017 (Saudi J Biol Sci 2017 Mar;24(3):622-629), Moreau-Gaudry et al 2001 (published in Blood 2001 Nov 1;98(9):2664-72), Nasimuzzaman et al 2016 (Molecular Therapy — Methods & Clinical Development (2016) 3, 16004), Gélinas et al 2017 (Scientific Reports, 7:10198, p. 1-12), McCarron et al 2017 (Cell & Gene Therapy Insights - IDOI: 10.18609/cgti.2017.072), Tang et al 2015 (Oncology Letters, 9: 55-62, 2015), Truran et al 2016 (EP2307551B1 published 12/14/2016), Kang et al 2011 (published US7875446B2 published 01/25/2011), Hrinda et al 1997 (US5661023A published 08/26/1997), and as evidenced by Lindemann 2019 (EP3822346A1 published 05/19/2021 with a filing date 11/14/2019) ) (hereafter also referred as modified Boudeffa et al 2017) applied to claims 1, 2-4, and 9 as above, and further in view of Emery et al 1999 (published in Human Gene Therapy, 10: 877-888).
Claim 17. The method of claim 11, wherein the gene of interest encoding the gamma globin protein comprises one or more intron sequences.
The combined teachings of Boudeffa et al 2017 and other prior arts as applied and recited supra renders obvious claim 1 as recited supra, however, does not teach added limitation of instant claim 17.
Emery et al 1999 teaches human gamma globulin expression optimization in retrovirus vectors and discloses diminished expression of human gamma globulin after complete deletion of first or second introns.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined teachings of the prior arts applied to claim 1 (as recited supra) on the retrovirus vector expression of human gamma globulin and incorporate teachings of Emery et al 1999 to comprise one or more intron sequences in the human gamma globulin expression cassette to arrive at the invention of claim 17. One of ordinary skills in the art would have been motivated to incorporate the teachings on the introns to obtain develop a retrovirus vector construct with optimized human gamma globulin gene for efficient and enhanced expression (See, Emery et al 1999, abstract) and for commercial success. There would be a reasonable expectation of success to arrive at the invention of claim 17 given the combined prior art teachings applied to claim 17 as recited supra. It is similar to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention in claim 17. See, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), examples of rationales, A-G.
14. Claims 19-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over combined teachings of Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017), Swift et al 2001 (Current Protocols in Immunology, 2001, Chapter 10, Unit 10-17), Guo et al 2017 (Saudi J Biol Sci 2017 Mar;24(3):622-629), Moreau-Gaudry et al 2001 (published in Blood 2001 Nov 1;98(9):2664-72), Nasimuzzaman et al 2016 (Molecular Therapy — Methods & Clinical Development (2016) 3, 16004), Gélinas et al 2017 (Scientific Reports, 7:10198, p. 1-12), McCarron et al 2017 (Cell & Gene Therapy Insights - IDOI: 10.18609/cgti.2017.072), Tang et al 2015 (Oncology Letters, 9: 55-62, 2015), Truran et al 2016 (EP2307551B1 published 12/14/2016), Kang et al 2011 (published US7875446B2 published 01/25/2011), Hrinda et al 1997 (US5661023A published 08/26/1997), as evidenced by Lindemann 2019 (EP3822346A1 published 05/19/2021 with a filing date 11/14/2019) ) (hereafter also referred as modified Boudeffa et al 2017), and Malik et al 2017 (US20170145077A1, published 25 May 2017)
as applied to claims 18 above, and further in view and Schambach et al 2007 (published in Molecular Therapy vol. 15 no. 6).
Claim 19: The method of claim 18, wherein the SIN retroviral vector comprises:
(a) a 5'-LTR region and a 3'-LTR region, wherein the 3'-LTR comprises an upstream polyadenylation (polyA) enhancer signal sequence;
(b) one or more copies of a heterologous poly A signal sequence downstream from the 3' LTR; and
(c) one or more chromatin insulator elements.
The combined teachings of the prior arts as applied above teaches and renders obvious claim 18. The added limitations of claim 19 are taught by additional teachings of Boudeffa et al 2017, Malik et al 2017 and Schambach et al 2007 as follow:
Boudeffa et al 2017, inter alia, teaches required elements for producing a lentiviral vector, and one of the recited elements is a lentiviral LTR-5′ and a lentiviral LTR-3′ required for insertion of an expression cassette of a transgene (foreign gene, example gamma globulin gene) of interest, and the transgene is inserted between a lentiviral LTR-5′ and a lentiviral LTR-3′ (See, [0015]).
Schambach et al 2007 is in the retrovirus vector art and teaches incorporation of seven upstream polyadenylation enhancer elements (or upstream sequence elements, USEs) to improve 3’ end processing of transcript into the 3’ U3 region of gamma-retroviral and lentiviral SIN vectors (See, abstract).
Malik et al 2017 teaches one or more copies of a heterologous poly A signal sequence downstream from the 3' LTR (See, [0013], [0015], claim 6).
Malik et al 2017 teaches one or more chromatin insulator elements (See, abstract, para [0003], [0006], [0075]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined prior art teachings as applied to claim 18 above and incorporate additional teachings of Boudeffa et al 2017, and Malik et al 2017 and Schambach et al 2007 to arrive at the invention of claim 19. One of ordinary skills in the art would have been motivated to incorporate 3'-LTR comprises an upstream polyadenylation (polyA) enhancer signal sequence to improve 3’ end processing of transcript into the 3’ U3 region of gamma-retroviral and lentiviral SIN vectors (See, Schambach et al 2007, abstract), chromatin insulator elements to prevent the spread of heterochromatin and silencing of genes, reduce chromatin position effects (See, Malik et al 2017 para [0075]), and lentiviral LTR-5′ and a lentiviral LTR-3′ required for insertion of an expression cassette of a transgene (See, Boudeffa et al 2017 para [0015]). The modifications to the retroviral/lentiviral expression vectors for increasing a viral titer and various methods for increasing such titers as well as expression vectors capable of enhancing such titers (See, Malik et al 2017, abstract) and for commercial success. There would be a reasonable expectation of success to arrive at the invention of claim 19 given the combined prior art teachings applied to claim 19 as recited supra. It is similar to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention in claim 19. See, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), examples of rationales, A-G.
Claims 20-21 and 23 (dependent on claim 19): The combined teachings of prior arts as applied above teaches claim 19 as recited supra.
Malik et al 2017 et al teaches additional limitations of claims 20-21 and 23 as follow:
Claim 20: Malik et al 2017 et al teaches added limitation of claim 20, wherein the upstream polyA enhancer signal sequence is an upstream sequence element (USE) derived from an SV40 late polyA signal sequence (See, US20170145077A1 para [0071]).
Claim 21: Malik et al 2017 et al teaches added limitation of claim 21, wherein the one or more chromatin insulator elements include one or more chicken hypersensitive site-4-elements (cHS4s) or a foamy viral insulator (See, Malik et al 2017, abstract, para [0003]).
Claim 23. Malik et al 2017 et al teaches added limitation of claim 23, wherein the retroviral vector further comprises an erythroid lineage specific enhancer element (See, Malik et al 2017, abstract, para [0013], [0015], claims 9 and 15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined prior art teachings as applied to claim 19 and further incorporate additional teachings of Malik et al to arrive at the inventions of claims 20-21 and 23. One of ordinary skills in the art would have been motivated to incorporate 3'-LTR comprises an upstream polyadenylation (polyA) enhancer signal sequence to improve 3’ end processing of transcript into the 3’ U3 region of retroviral SIN vector (claim 20), (See, Schambach et al 2007, abstract); CHS4 chromatin insulator-derived functional insulator sequences to help increase the safety of integrating vectors and to increase expression (claim 21), (See, Malik et al 2017 para [0003]); and erythroid lineage specific enhancer element (claim 23) because the risk of insertional oncogenesis (observed with randomly integrating vectors has been shown to be lower with a lentivirus vector than a gamma-retrovirus vector), the risk would be further lowered when the enhancer element is active only in a restricted erythroid lineage (See, Malik et al 2017 para [0232]) and would have commercial success interest. There would be a reasonable expectation of success to arrive at the inventions of claims 21-22 and 23 given the combined teachings of the prior arts as applied to the claims 21-22 and 23. It is similar to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention in claims 21-22 and 23. See, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), examples of rationales, A-G.
15. Claims 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over combined teachings of Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017), Swift et al 2001 (Current Protocols in Immunology, 2001, Chapter 10, Unit 10-17), Guo et al 2017 (Saudi J Biol Sci 2017 Mar;24(3):622-629), Moreau-Gaudry et al 2001 (published in Blood 2001 Nov 1;98(9):2664-72), Nasimuzzaman et al 2016 (Molecular Therapy — Methods & Clinical Development (2016) 3, 16004), Gélinas et al 2017 (Scientific Reports, 7:10198, p. 1-12), McCarron et al 2017 (Cell & Gene Therapy Insights - IDOI: 10.18609/cgti.2017.072), Tang et al 2015 (Oncology Letters, 9: 55-62, 2015), Truran et al 2016 (EP2307551B1 published 12/14/2016), Kang et al 2011 (published US7875446B2 published 01/25/2011), Hrinda et al 1997 (US5661023A published 08/26/1997), and as evidenced by Lindemann 2019 (EP3822346A1 published 05/19/2021 with a filing date 11/14/2019) as applied to claims 1, 2-4, and 9 as above, and further in view of Sheu et al 2015 (Molecular Therapy — Methods & Clinical Development (2015) 2, 15020), Kuroda et al 2009 (Journal of Virological Methods 157 (2009) 113–121), Sigma-Aldrich (2012) and Gibco-Invitrogen (2003).
The combined prior art teachings of Boudeffa et al 2017 and other prior art teachings renders obvious claim 1 as recited supra and the teachings are incorporated here in entirety.
The added limitations of claims 25-30 are taught by Sheu et al 2015, Truran et al 2016, Kuroda et al 2009, Boudeffa et al 2017, Nasimuzzaman et al 2016, Tang et al 2015, Sigma-Aldrich (2012) and Gibco-Invitrogen (2003) as recited below:
Claim 25: Sheu et al 2015 teaches the added limitation of claim 25 (method of claim 1), wherein the transfecting step (i) and the culturing step (ii) are performed in a 10-layer cell stack or in a bioreactor by disclosing large-scale production of lentiviral vector in a closed system hollow fiber bioreactor, HEK-293T cells were seeded into CF10s at 7 × 108 cells per stack in approximately 1.3 l of D10 media (See, page 6, col 1, para 1, para 3 last 3 lines) and experimentation with polyethylenimine as an alternative transfection reagent, which has been in use since the mid-1990s and polyethylenimine could also have an effect on the resulting lenti-vector’s transduction efficiency (See, p. 4, col 2 para 2, abstract).
Truran et al 2016 (EP2307551B1) is in the art and teaches a process for retroviral vector production by transfection of HEK293T cells expanded in tissue culture flasks, into 10-layer cell factories (CFs) and purification of a retroviral vector (See, p. 20 col 1 para [0220]).
Claim 26: Kuroda et al 2009 teaches the added limitation of claim 26 (the method of claim 1), wherein steps (i)-(iii) are performed in the absence of chloroquine by disclosing a simplified lentivirus vector production in protein-free media using polyethylenimine-mediated transfection in absence of chloroquine or presence of chloroquine and the titers were also compared between lentiviral vectors produced in the presence/absence of chloroquine during transfection (See, abstract, p. 115 col 2 para 2). Chloroquine addition resulted in reduced titers when the PEI-mediated transfections were performed in DMEM medium with or without serum present (See, p. 119 col 1 para 3, Fig 2).
Claim 27. The method of claim 1, wherein the cells are not cultured in a conditioned medium.
Boudeffa et al 2017 (See, abstract, claims and specification), Nasimuzzaman et al 2016 (See, abstract, p.6-7 materials and methods) and Tang et al 2015 (See abstract, p. 56-57, materials and methods) teaches instant claim 27 added limitation by disclosing HEK 293T transfection and retroviral vector production without addition of a conditioned medium to the cultured cells prior, during transfection or in production stage of retrovirus.
Claim 30. The method of claim 1, wherein the first medium is a serum free medium.
Tang et al 2015 teaches instant claim 30 added limitation by disclosing optimization of the production method for lentivirus vector (LvVs) was achieved using PEI-mediated transient HEK 293T cell transfections. Serum-free Opti-MEM® was used to directly produce LvVs that could be harvested 48 h after transfection (See, abstract and p.56, col 2 para 1).
Claim 28: The method of claim 1, wherein the first culture medium contains about 1% to about 6% fetal bovine serum (FBS).
Regarding claim 28: Sigma-Aldrich (2012) teaches added limitation of claim 28 by disclosing HEK 293 cell culture and virus production using DMEM medium supplemented 5% FBS (See, p.1 col 2, methods, p.2 col 1 para 3).
Claim 29. The method of claim 28, wherein the first culture medium contains about 3% FBS.
Regarding claim 29: Gibco-Invitrogen (2003) teaches added limitation of claim 29 by disclosing culture of different human and mammalian cell line in advanced DMEM medium supplemented with 1-2% FBS (See, p. 1, Advanced Media D-MEM, Fig. 1, p.2 Table- Advanced D-MEM Applications, Fig. 3, p.3 Fig 4).
It would have been prima facie obvious to optimize the parameters of the FBS concentration to culture host cells (293T) in a first culture medium 1% to 6% or 3% to produce retroviral vector as that would have been a routine optimization, according to section 2144.05 of the MPEP, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined prior teachings as applied to claim 1 by incorporating the teachings of Sheu et al 2015, Kuroda et al 2009, Nasimuzzaman et al 2016, Sigma-Aldrich (2012) and Gibco-Invitrogen (2003) to arrive at the inventions of claims 25-30. The motivation would be to produce large quantity of retroviral vector at a high titer. There would be a reasonable expectation of success given the combined prior art teachings as applied to the claims. It is similar to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention in claims 25-30. See, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), examples of rationales, A-G.
16. Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over combined teachings of Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017), Swift et al 2001 (Current Protocols in Immunology, 2001, Chapter 10, Unit 10-17), Guo et al 2017 (Saudi J Biol Sci 2017 Mar;24(3):622-629), Moreau-Gaudry et al 2001 (published in Blood 2001 Nov 1;98(9):2664-72), Nasimuzzaman et al 2016 (Molecular Therapy — Methods & Clinical Development (2016) 3, 16004), Gélinas et al 2017 (Scientific Reports, 7:10198, p. 1-12), McCarron et al 2017 (Cell & Gene Therapy Insights - IDOI: 10.18609/cgti.2017.072), Tang et al 2015 (Oncology Letters, 9: 55-62, 2015), Truran et al 2016 (EP2307551B1 published 12/14/2016), Kang et al 2011 (published US7875446B2 published 01/25/2011), Hrinda et al 1997 (US5661023A published 08/26/1997), as evidenced by Lindemann 2019 (EP3822346A1 published 05/19/2021 with a filing date 11/14/2019) ) (hereafter also referred as modified Boudeffa et al 2017), Malik et al 2017 (US20170145077A1, published 25 May 2017), Schambach et al 2007 (published in Molecular Therapy vol. 15 no. 6), as applied to claim 21 above, and further in view of Goodman et al 2017 (Journal of Virology, Volume 92 Issue 1 e01639-17, manuscript posted online 18 October 2017).
Claim 22. The method of claim 21, wherein the foamy viral insulator comprises the nucleic acid sequence of SEQ ID NO:1.
The combined prior art teachings as recited supra teaches claim 21, however, do not teach added limitation of instant claim 22.
Goodman et al 2017 is in the retrovirus vector art and discloses a Foamy virus 36 base strong insulator (See, Goodman et al 2017, abstract page 20, para 2-3, entire article) that has 100% nucleic acid sequence with identity match as follow:
Query Match 100.0%; Score 36; DB 1; Length 36;
Best Local Similarity 100.0%;
Matches 36; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 AAGGGAGACATCTAGTGATATAAGTGTGAACTACAC 36
||||||||||||||||||||||||||||||||||||
Db 1 AAGGGAGACATCTAGTGATATAAGTGTGAACTACAC 36
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to modify the combined prior teachings as applied to claim 21 above and incorporate additional teachings of Goodman et al 2017 to arrive at the invention of claim 22. One of ordinary skills in the art would have been motivated to incorporate 36 bp nucleotide sequence of foamy viral insulator in the claimed invention of retroviral vector because retroviral vector comprising the 36 base foamy virus insulator of Goodman et al 2017 contributes to reduced insertional genotoxicity and improves safety. The reduced genotoxicity effect is mediated by a 36-bp insulator located in the foamy virus long terminal repeat (LTR) that has high-affinity binding to the CCCTC-binding factor (See, Goodman et al 2017, abstract) and would have commercial interest. There would been a reasonable expectation of success to arrive at the invention of claim 22 given the combined teachings of prior arts applied to the claim 22 as recited supra. It is similar to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention in claim 22. See, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), examples of rationales, A-G.
17. Claims 31-33 are rejected under 35 U.S.C. 103 as being unpatentable over combined teachings of Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017), Swift et al 2001 (Current Protocols in Immunology, 2001, Chapter 10, Unit 10-17), Guo et al 2017 (Saudi J Biol Sci 2017 Mar;24(3):622-629), Moreau-Gaudry et al 2001 (published in Blood 2001 Nov 1;98(9):2664-72), Nasimuzzaman et al 2016 (Molecular Therapy-Methods & Clinical Development (2016) 3, 16004), Gélinas et al 2017 (Scientific Reports, 7:10198, p. 1-12), McCarron et al 2017 (Cell & Gene Therapy Insights - IDOI: 10.18609/cgti.2017.072), Tang et al 2015 (Oncology Letters, 9: 55-62, 2015), Truran et al 2016 (EP2307551B1 published 12/14/2016), Kang et al 2011 (published US7875446B2 published 01/25/2011), Hrinda et al 1997 (US5661023A published 08/26/1997), as evidenced by Lindemann 2019 (EP3822346A1 published 05/19/2021 with a filing date 11/14/2019) as applied to claims 1, 2-4, and 9 as above, and further in view of, and further in view of Malik et al 2017 (US20170145077A1, published 25 May 2017) and Hauber et al 2018 (Human Gene Therapy Methods, 2018, 20 (2) 104-113).
Claim 31. The method of claim 1, further comprising subjecting the first solution collected from step (c) to a 1:1 dilution to form a second solution.
As recited supra the claim 1 is taught by combined teachings as applied to claim 1 and as recited supra. Additional teachings recited in Boudeffa et al 2017 renders obvious added limitation of instant claim 31 as follow:
Boudeffa et al 2017 teaches a method for production and purification of retroviral vector, as recited supra. The first solution collected from step (c) comprises purified and concentrated retroviral vector (See, para [0040]- [0044] and [0049]). The retroviral vector purification and concentration method (See, para [0044]) comprises a single elution step of retroviral vector for the anion exchange chromatography and the retroviral vectors purified by the recited methods have high titers as shown in the ranges (See, para [095], tables 1, 3-5 TU- Transduction Unit) and therefore dilution of the retroviral vector solution from step (c) to a 1:1 to form a second solution would be required for downstream applications for therapeutic treatment of a cell or a subject and it would need to be achieved by contacting the hemopoietic cells (CD34+ cells are isolated from blood from the umbilical cord) with an optimal MOI of the retroviral vector as taught by adding a 100 μl of vectors (10 adding a 100 μl of vectors (106 TU) purified retroviral vector to the cells (See, Boudeffa et al 2017, para [0089]) or transduction of CD34+ HSC cells taught by Hauber et al 2018 by disclosing CD34+ hemopoietic stem cells (HSCs) were counted and 1 x 106 HSC cells were transduced with lentiviral vectors using different vector multiplicity of infection (MOI) (See, Hauber et al 2018 , page 106, col 1, Transduction of CD34+ HSC).
Furthermore, according to section 2144.05 of the MPEP, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”). Boudeffa et al 2017 and Hauber et al 2018 diluted retroviral vectors to various MOIs and each was sufficient to infect cells. Therefore, finding optimal suitable or workable dilutions is routine experimentation.
Claim 32. The method of claim 31, further comprising contacting the second solution with host cells to deliver the retroviral particles to the host cells.
Claim 33. The method of claim 32, wherein the host cells are human hematopoietic cells. Malik 5077A1-abstract, claim 3
As recited supra the claim 31 is taught by the combined prior teachings as applied to claim 31 as recited supra, however, does not teach added limitations of claim 32 and 33.
Hauber et al 2018 delivery (transduction) of retroviral particles to the host cells by contacting the retroviral particles with the host cells, wherein and the host cells are human hematopoietic cells. The CD34+ hematopoietic cells were isolated from human peripheral blood mononuclear cells of G-CSF from donors, and cord blood cells CD34+ selection kit. The retroviral vector where titers were determined using 293 cells, and then human CD34+ hematopoietic cells were transduced by using a required multiplicity of infection (MOI) by contacting the cells (See, abstract, page 106-108 methods). Malik et al 2017 teaches lentiviral vector and human CD34+ hematopoietic cell transduction (See, para [077], [0222] and [0230] and claim 3-4) that includes lentiviral vector carrying a transgene (mutated human gamma-globin gene) transduction to human CD34+ hematopoietic cell transplantation autologous hematopoietic stem cells.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined prior teachings of Boudeffa et al 2017 and other prior arts as applied to claim 1 and incorporate the additional teachings of Hauber et al 2018 and Malik et al 2017 on transduction of human CD34+ hematopoietic cell with the claimed retroviral vector to arrive at the inventions of claims 31-33. One of the ordinary skills in the art would have been motivated to perform the modification to develop a gene therapy for the desired genetic disease of human because human CD34+ hematopoietic cells are pluripotent and a first choice for gene therapy to treat the genetic diseases (See, Hauber et al 2018 and Malik et al 2017) and for commercial success. There would be a reasonable expectation of success to arrive at the invention of claims 31-33 given the combined teachings as applied to claims 31-33 as recited supra. It is similar to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention in claims 31-33. See, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), examples of rationales, A-G.
Response to Arguments
Applicant's arguments filed on 02/04/2026 regarding the non-final rejection office action of 08/06/2025 have been fully considered but they are not persuasive.
Applicant’s arguments: Rejections Under 35 U.S.C. 102(a)(1)/102(a)(2):
Rejection of claims 1-3, 7, 9 and 10 under 35 U.S.C. 102(a)(1)/102(a)(2) are withdrawn in response to applicant’s amendment.
Applicant’s arguments: Rejections Under 35 U.S.C. 103:
Claims 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Boudeffa et al. in view of Nasimuzzaman et al. (2026), Gelinas et al. (2017), McCarron et al. (2017), Tang et al. (2015), Truran et al. (2026), Kang et al. (2011), Hrinda et al. (1997) and as evidenced by Lindemann (2019).
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Boudeffa et al. in view of Nasimuzzaman et al., Gelinas et al., McCarron et al., Tang et al., Truran et al., Kang et al., Hrinda et al., as evidenced by Lindemann, further in view of Swift et al. (2001) and Guo et al. (2017).
Claims 11, 12, 15, 16 and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Boudeffa et al. in view of Nasimuzzaman et al., Gelinas et al., McCarron et al., Tang et al., Truran et al., Kang et al., Hrinda et al., as evidenced by Lindemann, further in view of Moreau- Gaudry et al. (2001) and Malik et al. (2017).
Claims 13 and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over
Boudeffa et al. in view of Nasimuzzaman et al., Gelinas et al., McCarron et al., Tang et al., Truran et al., Kang et al., Hrinda et al., as evidenced by Lindemann, Moreau-Gaudry et al. and Malik et al. further in view of Venter et al. (2004).
Claim 17 is rejected under 35 U.S.C. § 103 as being unpatentable over Boudeffa et al. in view of Nasimuzzaman et al., Gelinas et al., McCarron et al., Tang et al., Truran et al., Kang et al., Hrinda et al., as evidenced by Lindemann, Moreau-Gaudry et al. and Malik et al. further in view of Emery et al. (1999).
Claims 19-21 and 23 are rejected under 35 U.S.C. § 103 as being unpatentable over Boudeffa et al. in view of Nasimuzzaman et al., Gelinas et al., McCarron et al., Tang et al., Truran et al., Kang et al., Hrinda et al., as evidenced by Lindemann, Moreau-Gaudry et al. and Malik et al. further in view of Schambach et al. (2007).
Claims 25-30 are rejected under 35 U.S.C. § 103 as being unpatentable over Boudeffa et al. in view of Nasimuzzaman et al., Gelinas et al., McCarron et al., Tang et al., Truran et al., Kang et al., Hrinda et al., as evidenced by Lindemann, Moreau-Gaudry et al. and Malik et al. further in view of Sheu et al. (2015), Kurudo et al. (2009), Sigma-Aldrich (20212 and Gibco- Invitrogen (2003).
Claim 22 is rejected under 35 U.S.C. § 103 as being unpatentable over Boudeffa et al. in view of Nasimuzzaman et al., Gelinas et al., McCarron et al., Tang et al., Truran et al., Kang et al., Hrinda et al., as evidenced by Lindemann, Moreau-Gaudry et al. and Malik et al. further in view of Schambach et al. (2007) and Goodman et al. (2017).
Claims 31-33 are rejected under 35 U.S.C. § 103 as being unpatentable over Boudeffa et al. in view of Nasimuzzaman et al., Gelinas et al., McCarron et al., Tang et al., Truran et al., Kang et al., Hrinda et al., as evidenced by Lindemann, Moreau-Gaudry et al. and Malik et al. further in view of further in view of Hauber et al. (2018).
These rejections are respectfully traversed.
First, as mentioned above, claim 1 has been amended to include the features of previously pending claims 7, 8 and 11. The Applicant submits that at least the first two obviousness rejections are moot in view of these amendments.
Second, the Applicant submits that the invention of the amended claims exhibits unexpected results which obviate the remaining obviousness rejections.
The Applicant reminds the Examiner that Office personnel should consider all rebuttal arguments and evidence presented by the Applicant. See, e.g., Soni, 54 F.3d at 750, 34 USPQ2dat 1687. Rebuttal evidence may include evidence of "secondary considerations such as "commercial success, long felt but unsolved needs, [and] failure of others." Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 4459, 467. See also, e.g., In re Piasecki, 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success). Rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. Office personnel should avoid giving evidence no weight, except in rare circumstances. Id. See also In re Alton, 76 F.3d 1168, 1174-75, 37 USPQ2d 1578, 1582-83 (Fed. Cir. 1996)
With this in mind, the Applicant submits that the method of the amended claims derives improved results from the use of PEI. The unexpected results of the method are shown through the data of the specification. The Applicant directs the Examiner's attention to at least Example 1 of the specification where it is demonstrated that viral vector transfection using PEI yielded high quality lentiviral particles as compared with transfection using calcium phosphate. This Example compares the yields and quality of lentiviral particles produced by transfecting host cells with lentiviral vectors via the calcium phosphate approach and the PEI approach. Further, the results described in Example 4 show that the particles provide little or no toxicity with efficient gene transfer both in vivo and in vitro.
Concentrated and unconcentrated lentiviral particles produced from the PEI and calcium approaches of Example 1 were titered on murine erythroleukemia (MEL) cells. Infectious titers were determined based on the proportion of HbF expressing MEL cells from the different serial dilutions of lentiviral particles. The results are shown in FIG. 1B and FIG. 1C (reproduced below).
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As can be seen in the results shown in FIGS. 1B and 1C, the infectious titers of both unconcentrated (FIG. 1B) and concentrated (FIG. 1C) of lentiviral particles produced by the PEI transient transfection method are substantially greater than those produced by the calcium- phosphate transient transfection. The VPF and Malik PEI approaches produced comparable viral infectious titers. Both approaches were superior to the calcium phosphate transfection method.
In addition, the Applicant directs the Examiner's attention to Example 4. In this Example, the inventors studied in vitro and in vivo activity of the lentiviral particles as prepared in the present application. As shown in FIG. 8A and FIG. 8B, the vector copy number derived in vitro was found stable in vivo, including VCN in whole bone marrow and in human CD34+ HSPC cells isolated from bone marrow of the recipient mice 4-5 months after the transplant, even when HSPC were injected in limited numbers, and the VCN increased as with increasing vector MOI, similar to the results seen in vitro. These data confirm that there was no toxicity to the long-term repopulating stem cells with increasing vector MOI and gene transfer in vitro recapitulated that seen in vivo in animals 4-5 months following transplant from three distinct stem cell donors.
In sum, the results obtained from this study demonstrate that the lentiviral particles
prepared by the method disclosed herein, involving PEI transfection, low salt elution, and one harvest, exhibited a number of superior features, including little or no toxicity to host stem cells and stable and high gene transfer efficiency both in vivo and in vitro in HSPC and their progeny, as evidenced by the VCN value in host cells. These results are unexpected in view of the cited prior art.
The Applicant submits that the results shown in the specification obviate any obviousness rejection the Examiner has set forth with the cited references. The claims are not obvious over any combination of the cited references for not only failing to teach or suggest every element of the amended claims but because the superior results shown in the specification obviate any obviousness rejection that could be established.
For these reasons, the invention of the amended claims is clearly patentable over any
combination of the cited references. Therefore, reconsideration and withdrawal of this rejection are respectfully requested in view of the amended claims and above remarks.
In Response:
Applicant’s arguments summarized above were considered, but deemed nonpersuasive
The claims 1-4, 7-23 and 25-33 that were pending on 08/06/2025 were rejected under 35 U.S.C 103 in a non-final rejection office action on 08/06/2025. Applicant is in error has argued that claims 4, 7-23 and 25-33 (applicant excluded claims 1-3) were rejected under 35 U.S.C 103.
The applicant cancelled claims 7, 8 and 11 without prejudice or disclaimer. Applicant amended the instant claim 1 by incorporating the limitations of the cancelled claims 7, 8 and 11.
The amended claims 1-4, 9, 12-23 and 25-33 under examination in this office action are rejected under 35 U.S.C 103 obviousness rejection without introducing new prior arts, because the applicant introduced the claim limitations from cancelled claims 7, 8 and 11. As recited supra, in the nonfinal rejection office action the claims 1-4, 7-23 and 25-33 that were pending on 08/06/2025 were rejected in entirety under 35 U.S.C 103 on 08/06/2025.
Applicant’s argument that the “Applicant submits that the invention of the amended claims exhibits unexpected results which obviate the remaining obviousness rejections”. The argument is not persuasive because claim 1 is amended by introducing limitations from cancelled claims 7, 8 and 11. Please refer to the non-final rejection of 08/06/2025 that recites all the pending claims rejection under 35 U.S.C 103. The presentation of amended claim 1 and the dependent claims (claim listing filed on 02/04/2026) does not distinguish the claims over the prior art of record.
The Examiner has considered all rebuttal arguments and evidence presented by Applicant including: secondary considerations, "commercial success, long felt but unsolved needs, rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties, the method of the amended claims derives improved results from the use of PEI, the unexpected results of the method are shown through the data of the specification, results in Example 1 of the specification (as included by the chart in the argument) that viral vector transfection using PEI yielded high quality lentiviral particles as compared with transfection using calcium phosphate. This Example compares the yields and quality of lentiviral particles produced by transfecting host cells with lentiviral vectors via the calcium phosphate approach and the PEI approach.
Applicant argues that the results described in Example 4 show that the particles provide little or no toxicity with efficient as can be seen in the results shown in FIGS. 1B and 1C, the infectious titers of both unconcentrated (FIG. 1B) and concentrated (FIG. 1C) of lentiviral particles produced by the PEI transient transfection method are substantially greater than those produced by the calcium- phosphate transient transfection. The VPF and Malik PEI approaches produced comparable viral infectious titers. Both approaches were superior to the calcium phosphate transfection method.
In addition, the Applicant argues and has directed the Examiner's attention to Example 4, and associated arguments relating to Example 4 and data in FIG. 8A and FIG. 8B. The applicant finally argues that “For these reasons (read as in remarks/arguments), the invention of the amended claims is clearly patentable over any combination of the cited references. Therefore, reconsideration and withdrawal of this rejection are respectfully requested in view of the amended claims and above remarks.
The applicant’s arguments and secondary evidence including unexpected or superior results is not persuasive in view of the applied 35 U.S.C. 103 obviousness rejections based on the combined prior art (closest prior arts combined) teaching based rejection reciting polyethylenimine (PEI) transfection-based method(s) of retroviral vector production and purification as recited supra.
The applicant is arguing and showing unexpected or superior results based on:
Incomplete comparison of the prior art invention reported calcium- phosphate transient transfection method and the claimed invention based on polyethylenimine (PEI) transient transfection method. Applicant is arguing and claiming an “orange” to “apple” comparison and superiority. To be fair in comparing the chemistry of transfection, applicant is required to compare the methods of retroviral vector production based on polyethylenimine (PEI) transfection in the prior art with the applicants instant claimed methods of retroviral vector production based on polyethylenimine (PEI) transfection.
The VPF method of retroviral vector production based on polyethylenimine (PEI) transfection. Applicant in the specification on page number 1 (Summary of invention) recited that the present disclosure is based, at least in part, on the development of improved methods for preparing retroviral particles (e.g., lentiviral particles), which can be used, for example, in gene therapy. On the page number 21 of the specification the applicant recites that “The VPF (The Vector Production Facility) and Malik PEI approaches (instant claimed method(s) produced comparable viral infectious titers. Both approaches (The VPF PEI and Malik PEI) were superior to the calcium phosphate transfection method. The specification does not provide details, or the method developed by the VPF (The Vector Production Facility) or described the method in sufficienct detail so as to support applicant’s argument of unexpected results. Thus, it is difficult for the Examinerto compare the method developed by the VPF with Malik PEI approaches.
Applicant has shown that “The VPF (The Vector Production Facility) PEI method and Malik PEI method (instant claimed method(s) produced comparable retroviral infectious titers. This is an apple to apple or orange to orange comparison. Therefore, the applicant is unable to demonstrate superior results over “The VPF (The Vector Production Facility) PEI method”. See, MPEP 716.02, Any differences between the claimed invention and the prior art may be expected to result in some differences in properties, The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See, MPEP 716.02(a) I-IV. "A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness.
The claimed method improvement as argued in the remarks is also subject to disclosure of VPF PEI method of production of retroviral vector against which the instant claimed method is compared.
The applicant’s arguments and secondary evidence against the applied prior art based 35 U.S.C. 103 obviousness rejection as recited supra is maintained.
Double Patenting (Maintained)
18. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
19. Claims 18-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 27-28, 32 and 34 of copending Application No. 18/737201 (filing 06/07/2024) in view of Malik et al 2017 (US20170145077A1, published 25 May 2017), Boudeffa et al 2017 (US20170002332A1), Nasimuzzaman et al 2016 (Molecular Therapy-Methods & Clinical Development (2016) 3, 16004), and Schambach et al 2007 (published in Molecular Therapy vol. 15 no. 6).
The reference co-pending patent application is the later filed (filing 06/07/2024) application.
Two-way test for nonstatutory double patenting is applied.
Both the instant claims 18-23 and copending reference claims 27-28, 34 of copending application No. 18/737201 are directed to self-inactivating (SIN) retroviral/lentiviral vector comprising the regulatory elements 5’-LTR, 3’-LTR, poly A enhancer sequence, USE, cHS4s, chromatin insulator element.
The instant claims 18-19 limitations and reference claims 27-28 and 32 are obvious over each other.
The instant claims 20-21 limitations and reference claim 34 are obvious over each other.
It would have been obvious to one of the ordinary skills in the art before the effective filing date of the claimed invention to modify the instant claims 18-21 in view of the copending claims 27-28, 32, and 34 by applying the prior art teachings of Malik et al 2017 (US20170145077A1), Boudeffa et al 2017 (US20170002332A1), Nasimuzzaman et al 2016, and Schambach et al 2007 as applied to instant claims 18-21 recited supra and all the prior art teachings applied to the instant claim 1 (recited supra) are incorporated here the teachings, motivations and reasonable expectations of success in entirety to arrive at the instant claims 18-21.
This is a provisional nonstatutory double patenting rejection.
20. Claims 1 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. US11066678B2 (Van Der Loo et al 2021) in view of Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017), Nasimuzzaman et al 2016 (Molecular Therapy — Methods & Clinical Development (2016) 3, 16004), and Sheu et al 2015 (Molecular Therapy-Methods & Clinical Development (2015) 2, 15020).
The instant claims 1 and 25 are directed to a method of producing retroviral particles by transfecting retroviral vectors in host cells using a PEI transfection reagent and purification of retrovirus using ion-exchange chromatography, use of 10-layer cell stack or a bioreactor to culture host cells and production of retrovirus.
The patented claims 1 and 6 are directed to a high titer mammalian cells transfection using plasmid DNA comprising a lentiviral vector expression plasmids and lentiviral vector production, capturing the lentiviral vectors from the cell-free supernatant of the transfected, re-seeded cells using an anion-exchange caps, and the culture vessel is a 5-layer cell stack vessel.
It would have been obvious to one of the ordinary skills in the art before the effective filing date of the claimed invention to modify the patented claims 1 and 6 to arrive at the inventions of claims 1 and 25 with the teachings of the Boudeffa et al 2017 (US20170002332A1), Nasimuzzaman et al 2016 (PEI transfection of retroviral vectors), and Sheu et al 2015 (large scale production of lentiviral vector, bioreactor cell culture, CF 10s cell stacks also called 10-layer cell stacks) as recited supra. The prior art teachings, motivations and reasonable expectations of success as applied to instant claims 1 and 25 above are incorporated here in entirety to arrive at the instant claims 1 and 25.
21. Claims 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. US10072067B2 (Malik, patented 11/09/2018) in view of Malik et al 2017 (US20170145077A1, published 25 May 2017), Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017), and Nasimuzzaman et al 2016 (Molecular Therapy-Methods & Clinical Development (2016) 3, 16004).
The instant claims 15-16 are taught by patented claim 1 directed to a mutated human gamma-globin gene, wherein the mutated human gamma-globin gene encodes a protein comprising SEQ ID NO: 1, and patented claim 2 the mutated human gamma-globin gene, wherein the mutated human gamma-globin gene has a sequence identity of 70% or greater to SEQ ID NO: 2.
Qy = Instant claim 16, SEQ ID NO: 3 amino acid sequence and Db = Patented claim 1, SEQ ID NO: 1 has 100% full length amino acid match.
Query Match 100.0%; Score 766; DB 1; Length 147;
Best Local Similarity 100.0%;
Matches 147; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MGHFTEEDKATITSLWDKVNVEDAGGETLGRLLVVYPWTQRFFDSFGNLSSASAIMGNPK 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MGHFTEEDKATITSLWDKVNVEDAGGETLGRLLVVYPWTQRFFDSFGNLSSASAIMGNPK 60
Qy 61 VKAHGKKVLTSLGDAIKHLDDLKGTFAQLSELHCDKLHVDPENFKLLGNVLVTVLAIHFG 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 VKAHGKKVLTSLGDAIKHLDDLKGTFAQLSELHCDKLHVDPENFKLLGNVLVTVLAIHFG 120
Qy 121 KEFTPEVQASWQKMVTAVASALSSRYH 147
|||||||||||||||||||||||||||
Db 121 KEFTPEVQASWQKMVTAVASALSSRYH 147
Malik et al 2017 teaches a mutant human gamma-globin protein sequence, SEQ ID NO: 1 (Db) that has 100% identity match with the instant claim 16 claimed SEQ ID NO: 3 (Qy).
It would have been obvious to one of the ordinary skills in the art before the effective filing date of the claimed invention to modify the patented claims 1 and 2 to arrive at the inventions of instant claims 15 and 16 with the teachings of Malik et al 2017 (US20170145077A1), Boudeffa et al 2017 (US20170002332A1), Nasimuzzaman et al 2016 (PEI transfection of retroviral vectors), and Sheu et al 2015 (large scale production of lentiviral vector, bioreactor cell culture, CF 10s cell stacks also called 10-layer cell stacks) as recited supra. The prior art teachings, motivations and reasonable expectations of success as applied to claims 15-16 above are incorporated here in entirety to arrive at the instant claims 15 and 16.
22. Claims 16, 18-21, 23 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-9, 10, 14-15, 21 and 23 of U.S. Patent No. US11345740B2 (Malik, patented 05/31/2022) in view of Malik et al 2017 (US20170145077A1, published 25 May 2017), Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017), Nasimuzzaman et al 2016 (Molecular Therapy-Methods & Clinical Development (2016) 3, 16004) and Hauber et al 2018 (Human Gene Therapy Methods, 2018, 20 (2) 104-113).
Both the co-pending claims 16, 18-21, 23 and 33 and patented claims 1-3, 5-9, 10, 14-15, 21 and 23 are directed retroviral vector comprising the mutated human gamma-globulin protein, SIN retroviral vector comprising regulatory elements, the retroviral vector comprising an erythroid lineage specific enhancer element, the host cells are human hematopoietic cells.
The instant claim 16 SEQ ID NO: 3 is taught by patented claim 3 SEQ ID NO: 1 showing full length 100% amino acid sequence.
Qy = Instant claim 16 SEQ ID NO: 3 amino acid sequence and Db = patented claim 3 SEQ ID NO: 1 (applicable to patented claims 1-4) has 100% full length amino acid match.
Query Match 100.0%; Score 766; DB 1; Length 147;
Best Local Similarity 100.0%;
Matches 147; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MGHFTEEDKATITSLWDKVNVEDAGGETLGRLLVVYPWTQRFFDSFGNLSSASAIMGNPK 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MGHFTEEDKATITSLWDKVNVEDAGGETLGRLLVVYPWTQRFFDSFGNLSSASAIMGNPK 60
Qy 61 VKAHGKKVLTSLGDAIKHLDDLKGTFAQLSELHCDKLHVDPENFKLLGNVLVTVLAIHFG 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 VKAHGKKVLTSLGDAIKHLDDLKGTFAQLSELHCDKLHVDPENFKLLGNVLVTVLAIHFG 120
Qy 121 KEFTPEVQASWQKMVTAVASALSSRYH 147
|||||||||||||||||||||||||||
Db 121 KEFTPEVQASWQKMVTAVASALSSRYH 147
Instant claims 18-21 are taught by patented claims 5-9, 10.
Instant claim 23 (erythroid lineage specific promoter) is taught by patented claims 14-15.
Instant claim 33 (host cells are hematopoietic cells) is taught by patented claims 21, 23.
It would have been obvious to one of the ordinary skills in the art before the effective filing date of the claimed invention to modify the patented claims 1-3, 5-9, 10, 14-15, 21 and 23 to arrive at the inventions of instant claims 16, 18-21, 23 and 33 with the teachings of Malik et al 2017 (US20170145077A1), Boudeffa et al 2017 (US20170002332A1), Nasimuzzaman et al 2016 (PEI transfection of retroviral vectors), and Hauber et al 2018 as recited supra. The prior art teachings, motivations and reasonable expectations of success as applied to claims 16, 18-21, 23 and 33 above are incorporated here in entirety to arrive at the instant claims 16, 18-21, 23 and 33.
23. Claims 10 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-8, 11-18 of U.S. Patent No. US11970707B2 (Malik, patented 04/30/2024) in view of Malik et al 2017 (US20170145077A1, published 25 May 2017), Boudeffa et al 2017 (US20170002332A1, published on 05 January 2017), Nasimuzzaman et al 2016 (Molecular Therapy-Methods & Clinical Development (2016) 3, 16004) and Schambach et al 2007 (published in Molecular Therapy vol. 15 no. 6).
The instant claims 10 and 19 are directed to a retroviral vector carrying a gene of interest and insulator elements for retroviral vector.
The patented claims 1, 4-8, 11-18 teaches insulator element for a retroviral vector SEQ ID NO: 2 and gene of interest
Instant claims 10 “gene of interest” and claim 19 “insulator elements” are taught by patented claim 1, 4-8, 11-18.
It would have been obvious to one of the ordinary skills in the art before the effective filing date of the claimed invention to modify the patented claims 1, 4-8, 11-18 to arrive at the inventions of instant claims 10 and 19 with the teachings of Malik et al 2017 (US20170145077A1), Boudeffa et al 2017 (US20170002332A1), Nasimuzzaman et al 2016 (PEI transfection of retroviral vectors), and Schambach et al 2007 as recited supra. The prior art teachings, motivations and reasonable expectations of success as applied to claims 10 and 19 above are incorporated here in entirety to arrive at the instant claims 10 and 19.
Response to Arguments
Applicant's arguments filed on 02/04/2026 regarding Double Patenting Rejection have been fully considered but they are not persuasive.
Applicant’s Arguments: Double Patenting Rejection:
The Examiner has provisionally rejected claims 18-21 on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 27, 28, 32 and 34 of U.S. Application No. 18/737,201 in view of Mailk et al., Boudeffa et al., Nasimuzzaman et al. and Schambach et al. Further, claims 1 and 25 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. 11,066,678 in view of Boudeffa et al., Nasimuzzaman et al. and Sheu et al. Still further, claims a5 and 16 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 10,072,067 in view of Malik et al., Boudeffa et al., and Nasimuzzaman et al. Claims 16, 18-21, 23 and 33 are rejected on the ground of non- statutory obviousness-type double patenting as being unpatentable over claims 1-3, 5-9, 10,14, 15, 21 and 23 of U.S. Patent No. 11,345,740 in view of Malik et al, Boudeffa et al., Nasimuzzaman et al. and Hauber et al. Finally, claims 10 and 19 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 4-8 and 11-18 of U.S. Patent No. 11,970,707 in view of Mailk et al., Boudeffa et al., Nasimuzzaman et al. and Schambach et al.
The Applicant submits the amended claims are not obvious in view of any of the claims of the cited patents and patent applications for the same reasons as set forth above in the obviousness rejections. Therefore, reconsideration with withdrawal of each of the double patenting rejections are respectfully requested.
Closing Remarks
Therefore, in view of the foregoing amendments and remarks, it is submitted that each of the grounds of objection and rejection set forth by the Examiner has been overcome, and that the application is in condition for allowance. Such allowance is solicited.
In Response: Applicant’s arguments and remarks in regard to the double patenting rejections have been considered and were found non-persuasive in view of the prior non-statutory double patenting rejections. The rejections as recited supra are maintained.
Conclusion
24. No claim is allowed.
25. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
26. 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.
27. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMADHAN J JADHAO whose telephone number is (703)756-1223. The examiner can normally be reached M-F 8:00-5:00.
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/SAMADHAN JAISING JADHAO/Examiner, Art Unit 1672
/BENNETT M CELSA/Primary Examiner, Art Unit 1600