DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 3-5, 12, 66-67, and 70-72 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 September 2025 has been entered.
Status of the Application
Applicant’s response and amendment filed 16 September 2025 are acknowledged and entered.
Applicant has amended Claims 1, 4, 12, 66, and 71. Applicant has added Claim 72. Applicant has cancelled Claims 2,14, 17-18, 21-22, and 68-69.
Response to Amendment
Applicant has amended Claims 1 and 12; the objections to the claims are withdrawn.
Applicant has cancelled Claim 2 and amended Claim 71 to overcome the 112(b) rejections; the 112(b) rejections are withdrawn.
Applicant has amended Claim 66 to overcome the 112(d) rejection; the 112(d) rejection is withdrawn.
Applicant has amended Claim 1 to overcome the 103 rejection; the 103 rejection is amended in response to the claim amendments.
Claims 1, 3-5, 12, 66-67, and 70-72 are examined.
Arguments applicable to newly applied rejections to amended or newly presented claims are addressed below. Arguments that are no longer relevant are not addressed.
Rejections not reiterated here are withdrawn.
Claim Interpretation
The claims recite a method of selectively killing a cancer cell. The term selectively killing is interpreted as killing a cancer cell but not a noncancerous cell. That interpretation is based on the Spec. defining “selectively” (see p. 81 L15-25).
Claim 1 recites:
A method of selectively killing a cancer cell in a subject having a cancer or in need of a cancer treatment, the method consisting of: contacting a nucleic acid comprising a nucleic acid rearrangement junction with a first inactive gRNA-guided nuclease, a second inactive gRNA-guided nuclease, a first gRNA, and a second gRNA, wherein the cancer cell comprises the nucleic acid and the cancer is caused by the nucleic acid rearrangement junction… an active nuclease that produces a double stranded break in said nucleic acid, thereby inducing selective killing of the cancer cell comprising the nucleic acid. [emphasis added.]
Those claims recite a nucleic acid comprising a nucleic acid rearrangement junction and a first gRNA, and a second gRNA and refer to the nucleic acid. The recitation the nucleic acid is interpreted as referring to the nucleic acid comprising a nucleic acid rearrangement junction.
Claim 72 recites …at least approximately 50%. The Spec. defines the term “approximately” on p. 13 L15-25:
…the terms "about'', "approximately", "substantially'', and "significantly" are understood by persons of ordinary skill in the art and will vary to some extent on the context in which they are used. If there are uses of these terms that are not clear to persons of ordinary skill in the art given the context in which they are used, "about" and "approximately" mean plus or minus less than or equal to 10%...
Therefore Claim 72 is interpreted as reciting …at least 50% ± 10% (i.e., at least 40%).
REJECTIONS NECESSITATED BY AMENDMENT
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 67 and 70 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “plurality” in Claims 67 and 70 is used by the claim to mean “1 or more,” while the accepted meaning is “more than 1.” The term is indefinite because the specification does not clearly redefine the term.
In the interest of compact prosecution Claims 67 and 70 are interpreted as requiring the cancer cell comprises at least two nucleic acid rearrangement junctions. Amending Claim 70 to recite: …comprises 2-10, 2-20, 2-50, or 2-100 nucleic acid rearrangement junctions, as appropriate, could obviate this rejection of Claim 70.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 67 and 70 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 67 and 70 recite:
A method of selectively killing a cancer cell in a subject having a cancer or in need of a cancer treatment, the method consisting of: contacting a nucleic acid comprising a nucleic acid rearrangement junction with a first inactive gRNA-guided nuclease, a second inactive gRNA-guided nuclease, a first gRNA, and a second gRNA, wherein the cancer cell comprises the nucleic acid and the cancer is caused by the nucleic acid rearrangement junction… an active nuclease that produces a double stranded break in said nucleic acid, thereby inducing selective killing of the cancer cell comprising the nucleic acid, wherein said cancer cell comprises a plurality of nucleic acid rearrangement junctions or …. wherein said plurality of nucleic acid rearrangement junctions comprises 1-10, 1-20, 1-50, or 1-100 nucleic acid rearrangement junctions. [emphasis added.]
The Spec. discloses (p. 5): In some embodiments, the plurality of nucleic acid rearrangement junctions (e.g., chromosome rearrangement junctions (CRJ), extrachromosomal circle junctions, etc.) comprises 1-10, 1-20, 1-50, or 1-100 nucleic acid rearrangement junctions (e.g., 1, 2…). Since the Spec. indicates that plurality can include as few as one nucleic acid rearrangement junction, Claims 67 and 70 do not necessarily limit Claim 1. Note that the text in the Spec. does not set forth a special definition for plurality but indicates that the term can encompass even a single nucleic acid rearrangement junction.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 1, 3-5, 12, 66-67, and 70-71 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication No. US 2016/0237455 (published 18 August 2016, “App455”, of record on IDS filed 28 November 2022) as evidenced by Wikipedia (version of page saved 13 April 2019. “Cas9”. Available online at Wikipedia.org, “Wikipedia”, of record) and further in view of Huhn (et al. 2013. Targeting DNA double-strand break signaling and repair: recent advances in cancer therapy. Swiss Med Wkly. 143:w13837, “Huhn”, of record) and Guilinger (et al. 2014. Fusion of catalytically inactive Cas9 to Fokl nuclease improves the specificity of genome modification. Nat. Biotechnol. 32(6):577-582, “Guilinger”, of record on IDS filed 28 November 2022). All references are of record. This rejection is modified in response to the 16 September 2025 claim amendments.
App455 discloses (¶5) an adapted CRISPR/Cas system that introduces double strand breaks (DSB) and can regulate a targeted gene using an enzymatically active or enzymatically inactive Cas9 (i.e., a catalytically dead Cas9).
Regarding Claim 1: App455 teaches (¶6-9) their methods use an enzymatically active or inactive Cas9 molecule complexed with a gRNA molecule to target a specific location in a target DNA and edit it or (¶14) form a DSB. App455 discloses (¶23-25, ¶37) embodiments wherein first and second gRNA molecules mediate breaks at different sites in the target, including flanking the target. App455 discloses (¶42-43, ¶46, ¶49) embodiments wherein the composition comprises a second Cas9 molecule and that each Cas9 can be enzymatically active (i.e., “eaCas9”, see ¶603) or enzymatically inactive (i.e., “eiCas9”, see ¶611).
Regarding the claimed gRNAs that target a chromosome rearrangement junction: Although App455 teaches (¶5) target sequence alteration, it also teaches (¶1466-1468) embodiments wherein the guide RNA (“gRNA”) is used to target and destroy cells comprising a chromosome rearrangement:
gRNA molecules can be used to target a cell by virtue of sequence specific interaction with a target nucleic acid comprising a selected genomic signature. This provides for targeted destruction of cells having a selected genomic signature. Method and compositions disclosed herein can be used to treat disorders characterized by a selected genomic signature… complementarity between the targeting domain of a gRNA molecule and the target sequence of a target nucleic acid mediates target sequence-specific interaction of the Cas9 molecule/gRNA molecule complex with the target sequence. This allows targeting of specific sequences or genomic signatures, e.g., rearrangements, e.g., translocations, insertions, deletions, and inversions, and other mutations. [emphasis added.]
Since App455 discusses various kinds of mutations, an artisan would understand that a genomic signature can comprise more than one rearrangement.
App455 discloses (¶1468) embodiments in which the Cas9–gRNA complex promotes cell death upon recognition of the target genomic sequence, an embodiment wherein an enzymatically active Cas9–gRNA complex cleaves the target nucleic acid, an embodiment wherein the Cas9–gRNA complex does not deliver a payload, and that endogenous cellular elements, e.g., elements of the DNA damage apoptosis signaling cascade promote apoptosis in these embodiments. (App455 also discloses [¶1469] alternative embodiments wherein the Cas9–gRNA complex delivers a payload that promotes apoptosis.) App455 discloses that their invention can be used to target cancer cells: (¶1472-1479) discuss that the Cas9–gRNA complex targets a sequence that includes or is near the breakpoint or junction of a rearrangement that confers unwanted properties on the cell, including unwanted proliferation, and that the cell can be a cancer cell.
Together, those teachings indicate that App455 contemplated using their Cas9–gRNA system to cleave a target nucleic acid at or around a chromosome rearrangement junction that causes cancer, and that doing so would result in endogenous cellular elements promoting apoptosis of the cancer cell. As discussed, App455 teaches (¶42-43, ¶46, ¶56) using two Cas9 molecules and two gRNAs to target the region around a target nucleic acid, (¶127-128) the target nucleic acid can be a rearrangement (including in a cancer cell), (¶17, ¶25) their system can induce a DSB, and (¶23) each of two gRNAs can mediate breaks at different sites in a target nucleic acid, including flanking the target nucleic acid or target (¶1474) within 5 nt of a mutation or rearrangement breakpoint, which an artisan would reasonably interpret as meaning “adjacent to the rearrangement breakpoint”. Since App455 teaches targeting a rearrangement or junction, the full teachings of the reference disclose a system comprising two gRNAs wherein each gRNA is complementary to a target sequence around a nucleic acid rearrangement junction (i.e., flanking opposite sides of the nucleic acid rearrangement junction) or adjacent to the rearrangement junction. Therefore App455 discloses limitations of Claims 3-5.
Regarding Claims 66 and 71: App455 discloses (¶104-111) a method of altering a cell comprising contacting the cell with a composition comprising (a) a gRNA molecule or combination of gRNA molecules (e.g., a gRNA molecule and a second gRNA molecule) and (b[1]) a Cas9 molecule or combination of Cas9 molecules (e.g., an eaCas9 molecule and a second eaCas9 molecule) or (b[2]) a nucleic acid encoding a Cas9 molecule or combination of Cas9 molecules. App455 also discloses (§ starts at ¶850) nucleic acids encoding enzymatically inactive Cas9 molecules and (PDF p. 241, item 125-2a-2b) a composition comprising one or more gRNA molecules and one or more nucleic acids encoding one or more Cas9 molecules. App455 discloses (¶1479) treating a subject for a disorder characterized by a cell having a problematic genomic signature, e.g., a cancer…. Those teachings indicate that App455 contemplated contacting a cell with or administering to a patient either (1) gRNAs and nucleases or (2) gRNAs and nucleic acids encoding nucleases. Therefore App455 teaches limitations of Claims 66 and 71.
Regarding Claims 67 and 70, App455 discloses (¶1467) their invention allows for targeting specific sequences including rearrangements, translocations, insertions, deletions, inversions, and other mutations. That § uses all plural terms. That indicates App455 contemplated the target cell could comprise a plurality of nucleic acid rearrangements (which includes at least two junctions). In addition, App455 teaches (¶1112) mutations associated with cancer can be in DNA repair genes that are involved in repair of double strand breaks. App455 teaches (¶1178) using their method to remove or reduce the number of cells that have a modified or undesired phenotype: cells that exhibit an undesired effect, e.g., an off-target effect or a cancer phenotype, e.g., caused by editing o f a nucleic acid in an undesired genomic location or cell type, can be removed. Those teachings and the discussion (¶1467) of targeting specific sequences or genomic signatures [plural] indicate that it would have been obvious that cancer cells comprise multiple rearrangement junctions. Therefore App455 discloses or makes obvious limitations of Claims 67 and 70.
Altogether, App455 discloses gRNAs that target a specific location in a target genome and methods of promoting cell death in cells, including cancer cells, comprising targeting a specific target nucleic acid sequence that can be a genomic rearrangement or rearrangements. App455 discloses administering compositions that comprise two gRNAs and two Cas9 molecules that can be active or inactive. App455 teaches methods of inducing DSB. App455 discloses the gRNAs target a region flanking a target nucleic acid sequence (which can be a genomic rearrangement) or adjacent to that target nucleic acid sequence. App455 discloses methods of contacting a cell with the compositions or administering them to a subject. App455 discloses limitations of Claims 3-5, 66, and 70-71 as discussed in the preceding ¶.
A person of ordinary skill in the art would readily recognize that a method of applying a gRNA or gRNAs that target a chromosome rearrangement to cleave a target nucleic acid sequence (without delivering a payload) and which utilizes endogenous cellular elements of the DNA damage apoptosis signaling cascade to promote apoptosis in cancer cells would selectively kill a cancer cell bearing the target nucleic acid sequence. An artisan of ordinary skill would understand that a gRNA–Cas9 complex is specific for only a target sequence and would not induce a DSB at any other location. In addition, a person of ordinary skill would recognize that a gRNA binds to a gRNA-guided nuclease by virtue of the structure of each; therefore a gRNA-guided nuclease would bind to a gRNA and form a first ribonucleoprotein and a second gRNA-guided nuclease would bind to a second gRNA and form a second ribonucleoprotein. Altogether, App455 discloses most of the limitations of Claim 1.
App455 teaches their method induces apoptosis in cancer cells but does not explicitly teach that the method induces double strand breaks (DSB) to kill cancer cells. However, Wikipedia teaches (¶3) the Cas9 protein has been heavily utilized as a genome engineering tool to induce site-directed double strand breaks in DNA. Those teachings indicate that applying the method of App455 using Cas9 would necessarily induce site-directed DSB at the site directed by the two gRNAs.
App455 as evidenced by Wikipedia does not teach why their method kills cancer cells.
However, the art of Huhn, drawn to a review of recent advances in cancer therapy comprising targeting DNA double-strand break signaling and repair, teaches (§Introduction ¶3-4) DNA DSBs are considered to be the most hazardous lesions, since a single unrepaired DSB may trigger cell death, and the cytotoxicity of DSBs is exploited in conventional cancer treatment with radiation therapy and chemotherapeutic drugs such as DNA crosslinkers and topoisomerase inhibitors. Huhn teaches (same §) although those agents induce DSBs in all cells, hyperproliferating cancer cells are much more susceptible to killing than normal (i.e., noncancerous) cells, but that off-target effects still occur. That indicates there is a need to specifically target cancer cells.
Altogether, the art of App455, Wikipedia, and Huhn teaches that the method of App455 would induce DSBs, which can trigger cell death. The teachings of App455, Wikipedia, and Huhn would have indicated to an artisan that such DSBs would be introduced in a site-specific manner to cancer cells comprising a nucleic acid rearrangement junction. The art would have indicated that because App455 and Wikipedia each teach that Cas9 can be used to inflict DSBs, because App455 teaches using gRNA-guided Cas nuclease to (¶1466-1468, ¶1473-1479) inflict lesions at specific locations, and because Huhn teaches DSBs are dangerous lesions that, if unrepaired, can trigger cell death as well as that (§Abstract ¶2) cancer cells often have abnormalities in DNA damage response which renders them sensitive to DSBs.
Therefore, it would have been obvious to an artisan of ordinary skill before the effective filing date of the claimed invention to modify the teachings about using gRNA-guided ribonucleo-Cas9 proteins to induce site-specific DSBs around a genomic nucleic acid rearrangement or breakpoint of App455 with the teachings about DSBs being the most hazardous chromosomal lesion and particularly hazardous to cancer cells of Huhn for the benefit of inducing DSBs in specifically cancer cells comprising nucleic acid rearrangements that cause cancer. One would have been motivated to do so with a reasonable expectation of success because Huhn teaches a single unrepaired DSB may trigger cell death, and the cytotoxicity of DSBs is exploited in conventional cancer treatment with radiation therapy and chemotherapeutic drugs. One would have been motivated to do so with a reasonable expectation of success because Huhn teaches (§Abstract) that unlike normal cells, cancer cells are often characterized by abnormalities in the DNA damage response including defects in cell cycle checkpoints and/or DNA repair, rendering them particularly sensitive to the induction of DSBs and because Huhn further teaches (same §) new anticancer agents designed to exploit these vulnerabilities are becoming promising drugs for enhancing the specificity and efficacy of future cancer therapies.
App455 discloses enzymatically inactive Cas nucleases.
App455 (as evidenced by Wikipedia) and Huhn do not teach the method wherein the first and second gRNA-guided ribonucleoproteins dimerize to produce an active nuclease that induces a DSB in the nucleic acid, thereby inducing selective killing of the cancer cell comprising the nucleic acid comprising the nucleic acid rearrangement junction (the sole remaining limitation of Claim 1), or wherein both the first and second gRNA-guided nucleases are dCas9-Fok1 proteins (Claim 12).
However, Guilinger, drawn to the fusion of catalytically inactive Cas9 to Fok1 nuclease to improve enzyme specificity, teaches (§Abstract) Cas9 can cause off-target effects and to improve cleavage specificity they generated fusions of catalytically inactive Cas9 and Fok1 nuclease (called “fCas9”). Guilinger teaches (same §) DNA cleavage by fCas9 requires association of two fCas9 monomers that simultaneously bind target sites ~15 or 25 base pairs apart. Guilinger teaches (same §) their fCas9 was at least four-fold more specific than paired nickases. Guilinger teaches that (same §) target sites that meet the substrate requirements of fCas9 occur on average every 34 bp in the human genome which means their enzyme is versatile and useful for highly specific editing throughout the genome. Guilinger teaches (§Main text ¶3) their approach increases the specificity of DNA cleavage relative to wild-type Cas9 because it requires double the number of specified target bases and the more stringent spatial requirements for assembly of a Fok1-dCas9 dimer.
Regarding Claims 1 and 12, Guilinger teaches (§Main text ¶3) DNA cleavage by Fok1-dCas9 requires simultaneous binding of two distinct Fok1-dCas9 monomers because monomeric Fok1 nuclease domains are not catalytically competent. That indicates that Guilinger’s strategy results in two gRNA-guided nucleases that must form a dimer and they call their fCas9 a dimer at the end of §Main text ¶3 (i.e., Claim 1). Guilinger’s Fig. 1A (modified excerpt shown below) shows that their system comprises two gRNA-guided nucleases:
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That shows Guilinger’s system teaches limitations of Claim 1. The caption for Fig. 1 teaches that only adjacently bound Fok1-dCas9 monomers can assemble a catalytically active Fok1 nuclease dimer, triggering dsDNA cleavage. That indicates that Guilinger’s fCas9 produces a DSB in a DNA site (i.e., Claim 1). The excerpt of Fig. 1 (above) shows the gRNA-guided nucleases are both dCas9-Fok1 (i.e., Claim 12).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of App455 (as evidenced by Wikipedia) and Huhn with the split dCas9-Fok1 of Guilinger for the benefit of improving the specificity of the system. One would have been motivated to do so with a reasonable expectation of success because Guilinger teaches that (cited above) their system is at least four-fold higher than a system utilizing paired nickases that are not dCas9-Fok1. One would have wanted to use a system that is very specific to cancer cells when administering DSB-inducing compounds to a human body because one would not want to cause off-target effects or induce more nucleic acid rearrangements (which could exacerbate cancer). Modifying the method of App455 and Huhn with the dCas9-Fok1 of Guilinger would have produced all of the limitations of Claims 1, 3-5, 12, 66-67, and 70-71.
Claim(s) 1, 3-5, 12, 66-67, and 70-72 are rejected under 35 U.S.C. 103 as being unpatentable over App455 as evidenced by Wikipedia, Huhn, and Guilinger as applied to 1, 3-5, 12, 66-67, and 70-71 above, and further in view of Lips (and Kaina. 2001. DNA double-strand breaks trigger apoptosis in p53-deficient fibroblasts. Carcinogenesis 22[4]:579-585, “Lips”) and Saleh (et al. 2012. Induction and repair of DNA double-strand breaks using constant-field gel electrophoresis and apoptosis as predictive markers for sensitivity of cancer cells to cisplatin. Biomed. Pharmacother. 66:554-562, “Saleh”). This rejection is necessitated by the 16 September 2025 claim amendments.
The teachings of App455, Huhn, and Guilinger as applicable to Claim(s) 1, 3-5, 12, 66-67, and 70-71 have been described in the 103 rejection above. App455, Huhn, and Guilinger teach: a method of selectively killing a cancer cell in a subject who has cancer caused by a nucleic acid rearrangement junction, wherein the method comprises administering first and second gRNA-guided ribonucleoproteins that dimerize to produce an active nuclease that induces a DSB in the regions around or in the nucleic acid rearrangement junction, thereby inducing a DSB which ultimately kills the cancer cell.
App455, Huhn, and Guilinger do not teach the method decreases the survival rate of a cancer cell by at least 40% (see §Claim interpretation).
However, Regarding Claim 72, the method of App455, Huhn, and Guilinger would have produced a method of inducing DSB and inducing apoptosis in specifically cancer cells. By inducing DSB, such a method would have inherently decreased cancer cell survival rate by at least 40-50%. The method would have decreased cancer cell survival rate by at least 40-50% because the method of App455, Huhn, and Guilinger would have possessed the property of inducing DSB and, therefore, apoptosis in specifically cancer cells. Therefore the outcome of Claim 72 (i.e., decreasing the survival rate of a cancer cell by at least 40-50%) would have been an outcome of using the method of App455, Huhn, and Guilinger.
In addition, Lips teaches (§Abstract) DSB are induced by various agents and DSB ultimately cause cell death. Lips teaches (§Abstract) they induced DSBs using a non-Cas9 restriction enzyme and found that it drastically increases the rate of apoptosis. Lips teaches (§Introduction ¶3) restriction enzymes are an ideal instrument for elucidating the role of DSBs in apoptosis because restriction enzymes are not likely to damage other cellular constituents. Lips teaches (same § and ¶) their data demonstrate that DSBs trigger apoptosis. Lips teaches (§Correlation between DSBs and apoptosis ¶1) the restriction enzyme they used was much more efficient in inducing DSBs and apoptosis than γ-rays. Lips teaches (§Discussion ¶1) DSBs are the primary trigger of the signaling cascade resulting in apoptosis.
In addition, Saleh teaches (§Abstract) using the chemotherapeutic agent cisplatin to induce DSBs in cancer cells. Saleh teaches (same §) DSB induction in cancer cells—but not residual DSB—exhibited a significant correlation with apoptotic response to cisplatin. Saleh teaches (same §) their analysis found that 67% of HeLa cells shift to sub-G1 phase after incubation with cisplatin, which indicates that the treatment induced apoptosis in those cells. Saleh teaches (§5.Discussion ¶3) DNA DSBs play a major role in determining the ultimate fate of the cell.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the method of treating cancer by inducing DSB of App455, Huhn, and Guilinger in view of the teachings about DSB induction causing apoptosis of Lips and Saleh for the benefit of predicting what level of cancer cell killing the method would be expected to provide. One would have been motivated to do so with a reasonable expectation of success because the method of App455, Huhn, and Guilinger is drawn to killing cancer cells by inducing cancer cell-specific DSB and Lips and Saleh are drawn to killing cells or killing cancer cells by inducing DSB. Additionally, one would have expected that the method of App455, Huhn, and Guilinger would induce DSB in target cells and would induce apoptosis in at least 40-50% of those cells because Lips and Saleh teach that inducing DSB kills cells and Saleh teaches that inducing DSBs in HeLa cells resulted in 67% of them apoptosing. In addition, App455 teaches their method, which includes (App455 ¶25) inducing DSB in a target nucleic acid sequence, (App455 ¶1466-1468, ¶1473-1479) promotes apoptosis via endogenous mechanisms, Huhn teaches (§Introduction ¶3-4) DSBs induce apoptosis in cancer cells, and both Lips and Saleh teach that (§Abstracts) induction of DSBs induces apoptosis. Therefore the limitations of Claim 72 would have been obvious in view of App455, Huhn, Guilinger, Lips, and Saleh.
Response to Arguments
Applicant's arguments filed 16 September 2025 have been fully considered but they are not persuasive. Each rejection is addressed below. Arguments that are no longer relevant are not addressed.
112b
The 112b rejections are applied in response to the claim amendments because some of the claims are unclear because they use the term plurality in a way that conflicts with its plain meaning.
112d
The 112d rejection is applied because the scope of Claims 67 and 70 does not further limit Claim 1.
103
Applicant’s arguments with respect to the 103 rejection of claim(s) 1, 3-5, 12, 66-67, and 70-72 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s other arguments (i.e., those unrelated to the previously applied reference WO098) against the 103 rejection are on pp. 8-9. Applicant’s argument that it was not predictable that a dimerizable ribonucleoprotein targeting a nucleic acid rearrangement junction would kill cancer cells by producing a double-strand break with specificity is not persuasive because the newly applied reference App455 discusses an invention comprising (¶25) two gRNAs that target a target nucleic acid (¶127-128) the target nucleic acid can be in a cell characterized by an unwanted genomic component (such as a rearrangement or rearrangements) that causes unwanted proliferation (such as a cancer cell). Furthermore, App455 discusses (¶1466-1468, ¶1473-1479) a Cas9–gRNA complex that does not deliver a payload but promotes cell death upon recognition of its target genomic sequence and that it does so by promoting apoptosis via endogenous cellular mechanisms.
Evidence from Wikipedia was presented to substantiate the fact that Cas9 can induce DSBs. An artisan would understand that DSB induce cell death because the rejection discusses that Huhn teaches (§Introduction ¶3-4) DNA DSBs are considered to be the most hazardous lesions, since a single unrepaired DSB may trigger cell death, and the cytotoxicity of DSBs is exploited in conventional cancer treatment with radiation therapy and chemotherapeutic drugs. The rejection explains that it is the teachings of App455, Wikipedia, and Huhn in combination that would have indicated to an artisan that such DSBs (as described in App455) would be introduced in a site-specific manner to cancer cells comprising a nucleic acid rearrangement junction because App455 and Wikipedia each teach that Cas9 can be used to inflict DSBs, because App455 teaches using gRNA-guided Cas nuclease to induce DSB and promote cell death, and because Huhn teaches DSBs are dangerous lesions that, if unrepaired, can trigger cell death as well as that (§Abstract ¶2) cancer cells often have abnormalities in DNA damage response which renders them sensitive to DSBs. In addition, Guilinger teaches using inactive Cas9-FokIs that dimerize to produce an active nuclease that inflicts DSB provides benefits, namely increased specificity.
The rejection is based on synthesis of teachings that were well known in the art because a person of ordinary skill in the art is a person of ordinary creativity and synthesizing well known teachings is standard in the art.
"A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR, 550 U.S. at 421, 82 USPQ2d at 1397. "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396.
In addition to the factors above, Office personnel may rely on their own technical expertise to describe the knowledge and skills of a person of ordinary skill in the art. The Federal Circuit has stated that examiners and administrative patent judges on the Board are "persons of scientific competence in the fields in which they work" and that their findings are "informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art." In re Berg, 320 F.3d 1310, 1315, 65 USPQ2d 2003, 2007 (Fed. Cir. 2003). In addition, examiners "are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art ." PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 86 USPQ2d 1385 (Fed. Cir. 2008) (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1360, 220 USPQ 763, 770 (Fed. Cir. 1984). See MPEP § 2141.03 for a discussion of the level of ordinary skill.
MPEP §2141(II)(c)
Therefore the claimed invention would have been obvious to a person of ordinary skill in the art.
Conclusion
Claims 1, 3-5, 12, 66-67, and 70-72 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUTHIE S ARIETI whose telephone number is (571)272-1293. The examiner can normally be reached M-Th 8:30AM-4PM, alternate Fridays 8:30AM-4PM (ET).
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RUTHIE S ARIETI
Examiner (Ruth.Arieti@uspto.gov)
Art Unit 1635
/RUTH SOPHIA ARIETI/Examiner, Art Unit 1635
/NANCY J LEITH/Primary Examiner, Art Unit 1636