DETAILED ACTION
This action is in reply to papers filed 5/22/2026. Claims 1-6 are pending and examined herein.
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 .
Examiner’s Note
All paragraph numbers throughout this office action, unless otherwise noted, are from the US PGPub of this application US20220249698A1, Published 8/11/2022.
Reopening of Prosecution
Finality is withdrawn. Prosecution is reopened. This Office Action is made Non-Final.
Withdrawn Rejections
The 112 (a) lack of enablement rejection of claims 1-6 is withdrawn in view of Applicant’s arguments. Specifically, Applicant notes that the end of the AcGFP gene sequence (SEQ ID NO: 12) contains a stop codon.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method for treating autosomal dominant retinitis pigmentosa caused by a dominant gene mutation in the Rhodopsin gene of a mouse in need thereof, wherein the method comprises administering a therapeutic agent to the mouse such that said therapeutic agent is expressed in rod photoreceptor cells of said mouse, wherein the therapeutic agent comprises a full length Rhodopsin gene having a stop codon positioned at its end, a first reverse target DNA that is located upstream of the Rhodopsin gene and that is cleaved by a designer nuclease, a second reverse target DNA that is located downstream of the Rhodopsin gene and that is cleaved by the designer nuclease, where the first reverse target DNA and the second reverse target DNA each mean a sequence obtained by inverting a target sequence that is present in the genome of the mouse and that is cleaved by the designer nuclease and wherein the target sequence is present between the dominant gene mutation and a promoter sequence operably linked to the dominant gene mutation in the genome of said mouse
does not reasonably provide enablement for any other method. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make/ the invention commensurate in scope with these claims.
Enablement is considered in view of the Wands factors (MPEP 2164.01 (a)). The court in Wands states that “Enablement is not precluded by the necessity for some experimentation such as routine screening. However, experimentation needed to practice the invention must not be undue experimentation. The key word is ‘undue.’ Not ‘experimentation;” (Wands, 8 USPQ2d 104). Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighting many factual considerations.” (Wands, 8 USPQ2d 1404). The factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation required is “undue” include, but are not limited to:
• (A) The breadth of the claims;
• (B) The nature of the invention;
• (C) The state of the prior art;
• (D) The level of one of ordinary skill;
• (E) The level of predictability in the art;
• (F) The amount of direction provided by the inventor;
• (G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
Furthermore, the USPTO does not have laboratory facilities to test if an invention will function as claimed when working examples are not disclosed in the specification. Therefore, enablement issues are raised and discussed based on the state of knowledge pertinent to an art at the time of the invention. And thus, skepticism raised in the enablement rejections are those raised in the art by artisans of expertise.
All of the Wands factors have been considered with regard to the instant claims, with the most relevant factors discussed below.
The Nature of the Invention: The inventive concept in the instant application is a method for treating autosomal dominant retinitis pigmentosa due to a P23H Rhodopsin mutation in a mouse model.
The Breadth of the Claims: The breadth of the claims is excessive with regard to treating any subject having any disease caused by any dominant gene mutation.
Amount of Direction Provided by Inventor/Working Examples: The specification discloses six examples. Example 1 is drawn to the ‘Study of Efficiency of Knock-In by gRNA to be used’. Example 2 is drawn to the ‘Study of Efficiency of Knock-In by Configuration of Expression Vector’. Example 3 is drawn to the ‘ Study of Knock-In Efficiency in Viral Delivery’. Example 4 is drawn to the ‘Gene Therapy for Rhop23h Retinitis Pigmentosa Model Mouse’. Example 5 is drawn to the ‘Verification of Gene Therapy for Human Rhodopsin Gene’ and Example 6 is drawn to the ‘Verification of Gene Therapy for Gene which is Different from Rhodopsin Gene and in which Dominant Mutation Occurs’. Pertinent to the claimed method of treating are Examples 4 and 6.
Example 4 discloses a knock-in mouse with RhoP23H was used as a retinitis pigmentosa model mouse, and the RhoP23H is the most frequently observed in human Rho mutations. The specification teaches In the knock-in mouse, the 23rd proline residue of the exon 1 of an Rho gene has been replaced with a histidine residue. In the knock-in mouse, retinal degeneration occurs due to endoplasmic reticulum stress that is caused because Rhodopsin protein is not folded into a correct structure.
The specification teaches a knock-in solution (1) used in Example 2 was used to introduce an expression vector into one of the eyes of a RhoP23H/P23H mouse at P0. The other of the eyes was not subjected to electroporation and served as a control. Table 2 discloses solution (1) comprises pLeaklessIII-Rho-HITI-Donor, pU6-gRNA1, pRho2k-Cas9 and pCAG-mcherry. The specification teaches that as illustrated in FIG. 14, at P14, the ONL of the retina into which the normal Rhodopsin gene had been knocked in had a thickness equal to the thickness of the ONL of the retina serving as the control. However, at P21 and P50, in the retina into which the normal Rhodopsin gene had been knocked in, a cell expressing the AcGFP was present, thinning of the ONL was suppressed, and Rhodopsin expression was observed in the outer segment part. In contrast, the ONL of the retina of the control was thinned. That is, knock-in of the normal Rhodopsin gene suppressed degeneration of the rod photoreceptor cell in the RhoP23H/P23H mouse. The specification teaches this suggests that (i) occurrence of knock-in of the normal Rhodopsin gene and knock-out of P23H Rhodopsin and (ii) expression of the normal Rhodopsin resulted in avoidance of photoreceptor cell death.
At para. 282, the specification teaches two 1-month-old Rho+/P23H mice were prepared, and the recombinant AAV8 virus used in Test Example 2 of Example 3 was injected into the left eye of each of the mice. The AAV8 virus was not injected into the right eye of each of the mice, and the right eye served as a control. AcGFP fluorescence was observed by fluorescein fundus angiography at 1 month after infection.. A view in the upper row of FIG. 15 shows a fluorescent image of the right eye, and a view in the lower row of FIG. 15 shows a fluorescent image of the left eye. A view in the left column of FIG. 15 shows a fluorescent image obtained in a case where the AAV8 virus was injected into a wild type mouse and fluorescein fundus angiography was carried out at 1 month after infection. As illustrated in FIG. 15, though there was an individual difference between the two Rho+/P23H mice, the mice each had a cell expressing the AcGFP. That is, it is suggested that normal Rhodopsin is expressed instead of P23H mutated Rhodopsin in these photoreceptor cells due to knock-in of the normal Rhodopsin gene.
Next, at 3 months after infection, a quantitative optomotor response (qOMR) was used to carry out an optokinetic response test and quantify an optokinetic response of the right eye and the left eye. In sum, the specification teaches that in the wild type mouse, both the left eye and the right eye exhibited the highest response in the striped pattern of 0.2 cyc/deg, and a correct response rate (mean optomotor response) of approximately 2.0 was obtained. In contrast, as shown in FIG. 16, in the untreated Rho+/P23H mouse (left view), both the left eye and the right eye exhibited the highest response in the striped pattern of 0.2 cyc/deg as in the case of the wild type mouse, but a correct response rate of approximately 1.5, which is lower than that of the wild type mouse, was obtained. Meanwhile, in the two Rho+/P23H mice in each of which the AAV8 virus had been injected into the left eye (the central view and the right view), the left eye had a significantly high correct response rate than the right eye. These results have made it clear that knock-in of the normal Rhodopsin gene suppressed functional degradation of a rod photoreceptor cell of the Rho+/P23H mouse. This seems to be because (i) occurrence of knock-in of the normal Rhodopsin gene and knock-out of P23H Rhodopsin and (ii) expression of the normal Rhodopsin gene resulted in visual function recovery, or prevented or reduced visual function degradation.
At para. 301, Example 6 discloses that the possibility of gene treatment for a gene which is different from the Rhodopsin gene and in which a dominant mutation occurs was verified. Specifically, knock-in efficiency of a normal peripherin (Peripherin, Prph2) gene was studied in a mouse. A dominant mutation peripherin gene is a causative gene of retinitis pigmentosa and macular dystrophy, and not less than 90 types of different disease mutations have been reported so far. The specification teaches an expression vector for any of the gRNA4 to the gRNA6 (pU6-gRNA4, pU6-gRNA5, or pU6-gRNA6), an expression vector for the normal peripherin gene (pLeaklessIII-mPrph2-HITI-Donor [gRNA4], pLeaklessIII-mPrph2-HITI-Donor [gRNA5], or pLeaklessIII-mPrph2-HITI-Donor [gRNA6]), an expression vector for the Cas9 (pRho2k-Cas9), and an expression vector for the mCherry (pCAG-mCherry) were mixed at a ratio similar to that in Example 1 so that three types of knock-in solutions were prepared.
Into the retinas of mice (4 mice) at postnatal day 0 (P0), 0.3 to 0.4 μL of a knock-in solution was injected so that the expression vector was introduced into a cell by an electroporation method. At P21, four eyeballs were collected and fixed in a 4% paraformaldehyde solution. As illustrated in FIG. 23, green fluorescence was observed in a case where the gRNA4 was used and in a case where the gRNA6 was used. This result suggests that use of the gRNA 4 or the gRNA 6 allows the normal peripherin gene to be knocked in. Furthermore, as illustrated in the lower row of FIG. 23, an AcGFP-expressing cell was observed only in an outer nuclear layer (ONL) in which a rod photoreceptor cell was localized. In contrast, an mCherry-expressing cell was also observed in an inner nuclear layer (INL) in which a horizontal cell, a bipolar cell, and an amacrine cell were distributed. The Example concludes by teaching this result shows that knock-in of the normal peripherin gene specifically occurred in the rod photoreceptor cell. Examiner’s emphasis.
On Pg. 7 in the ‘Remarks’ filed 9/30/2025, Applicant stated the following:
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Example 4 explicitly discloses knock-in of the normal Rhodopsin gene and knock-out of the P23H Rhodopsin mutant gene in a Retinitis Pigmentosa model mouse. However, no such disclosure is made in Example 6. Indeed, although Example 6 is titled ‘Verification of Gene Therapy for Gene which is Different from Rhodopsin Gene and in which Dominant Mutation Occurs’, no such knock-in of the normal non-Rhodopsin gene and knock-out of the non-Rhodopsin mutant gene iis observed. The specification only teaches that the normal peripherin gene was knocked in in the photoreceptor cells. Consequently, and absent evidence to the contrary, unlike Example 4, the specification does not verify a gene therapy in Example 6. As argued by Applicant above, a knock in of the ‘normal gene’ and a knock out of the ‘mutated gene’ is required for treatment. Consequently, and in the context of the claimed invention, the only gene enabled by the specification is Rhodopsin.
The State of the Prior Art: On background, Onishi et al. (Investigative Ophthalmology & Visual Science November 2024) teach that in individuals harboring a recessive mutation, gene therapy, also known as replacement therapy, is frequently used to introduce a normal gene from an external source. On the other hand, dominant mutations constitute a type of inheritance (heterozygous) in which a mutation in one of the two alleles precipitates disease development. Symptoms resulting from these mutations emerge in two primary ways: haploinsufficiency and dominant inhibition. Haploinsufficiency arises when the gene product expressed from one of the remaining alleles cannot sustain the original function, which thereby compromises the overall function because of reduced gene product levels. Dominant inhibition involves inhibition of the function of the WT gene or protein expressed by a mutated gene allele, which thereby disrupts normal cellular processes. Gene therapy for diseases caused by dominant mutations requires the supplementation of normal genes and repair of causal gene mutations (Examiner’s emphasis) (Pg. 2, Col. 1, para. 1). It is noted that Onishi is a co-inventor of instant application.
Here, Onishi et al. concurs with Applicant’s own statement regarding the requirement for both knock-in of the normal gene and knock-out of the mutated gene for a therapeutic benefit to be realized.
Diakatou et al. (Int J Mol Sci. 2019 May 23;20(10):2542.) teach that amongst inherited retinal dystrophies (IRDs), retinitis pigmentosa (RP) is in itself a large and genetically heterogeneous group of disorders. In this review, of almost 29 autosomal dominant RP (adRP) causative genes, Diakatou focuses on the most prevalent mutations (RHO, PRPF31, RP1, PRPH2, IMPDH1, NR2E3, SNRPN200 and CRX) (Pg. 8, para. 3) and discusses potential targeted therapeutic strategies.
Diakatou teaches the majority of RHO mutations that cause adRP are gain-of-function mutations that have been previously treated with supplementation of wt RHO. However, Diakatou notes that such studies have observed too low or too high levels of exogenous Rhodopsin which can lead to cell toxicity and retinal degeneration. Consequently, Diakatou teaches more emphasis has been given to supplementing exogenous Rhodopsin while silencing the endogenous gene (Pg. 9-10).
Diakatou teaches the pre-mRNA splicing factor, PRPF31, is the second most prevalent gene to cause adRP, accounting for up to 10% of all cases. As the onset of symptoms seems to correlate with protein levels, the mode of action of PRP31 mutations appears to be haploinsufficiency. Diakatou teaches that it seems that there are multiple mechanisms that regulate the expression of PRPF31, and that the amount of protein production is determinant for the development of the clinical signs. Consequently, Diakatou teaches there are theoretically two suitable approaches to treat the disease by gene therapy. The first is gene supplementation but surprisingly, as of around the time of filing of instant application (May 2019), Diakatou teaches there have been no such studies for PRPF31. The second approach would be to specifically correct the mutant allele by genome editing (Pg. 10-11).
Diakatou teaches RP1 is another highly prevalent gene for RP, whose prevalence differs geographically but can account for up to 10% of adRP cases. Diakatou teaches haploinsufficiency has been excluded because carriers of null alleles are mostly asymptomatic, whereas homozygous individuals present with the disease . The mechanism of action of RP1 mutations is considered to be dominant-negative. Mice homozygous for a dominant nonsense RP1 mutation show outer segment disorganization and photoreceptor degeneration. However, this phenotype can be prevented by the expression of exogenous wild type RP1. Diakatou teaches that it must be noted though that, like for Rhodopsin, the levels of wild type protein need to be within a specific range, as too much RP1 will also result in degeneration. Despite the high prevalence of this gene, Diakatou teaches that as of around the time of filing of instant application (May 2019), there have been little relevant gene therapy studies reported to date. Diakato presumes that all three approaches of gene therapy (correction of the mutant allele, invalidation of the mutant allele and/or wild type supplement) could be candidates for adRP associated with class II RP1 mutations (Pg. 11).
Diakatou teaches the peripherin-2 gene, PRPH2, also known as retinal degeneration slow (RDS), accounts for 5%–10% of adRP cases. Diakatou teaches not all PRPH2 mutations have the same mode of action. Some of the mutations that cause adRP have a clear haploinsufficiency effect. Other mutations in PRPH2 exhibit more complicated mechanisms of action. Diakatou teaches there are cases of gain-of-function mutations that behave in a dominant-negative fashion, such as the p.Pro216Leu (P216L) mutation. Diakatou teaches it has been shown in vivo that the amount of mutant P216L protein is only 8% of the wild type, and that it promotes degradation not only of the mutant but also of the wild type protein. The resulting low levels of protein lead to a phenotype similar to haploinsufficiency. It has been suggested that in the case of loss-of-function mutations, such as C214S, a gene augmentation approach can be appropriate. However, the fact that the levels of PRPH2 need to be finely tuned makes this approach challenging. Furthermore, Diakatou teaches gene augmentation is probably not sufficient for treating gain-of-function mutations with dominant-negative effects. Instead, Diakatou teaches the safest approach would probably be targeted gene therapy by either gene invalidation or gene correction (Pg. 11-12).
Diakatou teaches mutations in IMPDH1 are found in 2.5%–3.5% of all adRP cases.
While all IMPDH1 mutations are dominant, the mechanism of pathogenesis is unclear. There are different hypotheses on how these variants give rise RP, all of them related to decreased DNA binding. In the absence of further evidence, Diakatou teaches it would be safer to treat adRP-causing IMPDH1 mutations either by correction of the mutant allele or by invalidation of both alleles and gene supplementation (Pg. 12).
Diakatou teaches there is only one mutation in the NR2E3 gene, c.166G>A (p.Gly56Arg; G56R), that has conclusively been linked to adRP. This one mutation is the second most common mutation for adRP (after the RHO P23H mutation).The G56R variant thus represents a gain-of-function mutation. As the mechanism of action seems to be gain-of-function, invalidation of the mutant allele, with or without gene supplementation, or specific correction of the mutant allele would be appropriate therapeutic approaches (Pg. 12-13).
Diakatou teaches SNRPN200 is responsible for approximately 2.5% of all adRP cases.
The mechanism of pathogenicity of SNRNP200 mutations is not clear but haploinsufficiency can probably be excluded as it has been reported that missing one allele is not pathogenic. As of May 2019, Diakatou teaches no studies on gene therapy for this gene exist to date. Lacking more information, the safest therapeutic approach would be correction of the mutant allele (Pg. 13).
Diakatou teaches late onset CRX-related adRP cases have also been identified, which comprise 1.5% of all adRP. Although there is variability in pathogenicity, it seems that CRX mutations are dominant-negative, gain-of-function or both. Haploinsufficiency does not seem to be the cause of disease as a carrier of a null allele was reported to have a normal clinical phenotype. Diakatou teaches in order to treat the adRP-related CRX missense mutations, either invalidation or correction of the mutant allele would be the strategy of choice. For the reported deletion, invalidation of both alleles, followed by gene supplementation, would be the only approach (Pg. 13-14).
The teachings of Diakatou are relevant to the instant rejection because Diakatou teaches that even within a singular disease- adRP- the treatment for adRP caused by one gene cannot be wholly applied to adRP caused by another gene. Indeed, while Diakatou teaches supplementing exogenous rhodopsin while silencing the endogenous gene in adRP caused by RHO mutations, Diakatou suggests targeted gene therapy by either gene invalidation or gene correction for adRP caused by PRPH2 mutations. Moreover, as of around the time of filing of instant application, Diakatou teaches there has been little to no relevant gene therapy studies reported for some causative genes. As a consequence, a specific implication of the teachings of Diakatou on the instant application is that the extent to which the findings of Example 4 of instant application can be applied to adRP caused by non-RHO genes is limited. A broader implication of the teachings of Diakatou on the instant application is that the extent to which the findings of Example 4 can be applied to any disease caused by a dominant gene mutation is practically non-existent. This is because Diakatou teaches that even within the same disease, the method of treatment for one causative gene of adRP cannot, without undue experimentation, be applied to the method treatment for another causative gene of adRP.
With respect to the limiting of the treated subject to mice, Onishi et al. teach that whereas their results in mouse models are promising, it is crucial to acknowledge the limitations in directly extrapolating these findings to human applications. Onishi teaches the efficiency of HITI-mediated gene insertion in human photoreceptors will require extensive further investigation. Future studies would focus on validating these approaches in human induced pluripotent stem cell (iPSC)-derived retinal organoids and explanted human retinal tissue (Pg. 11, Col. 2, last paragraph).
The level of Predictability in the Art/Conclusion: The test of enablement is not whether any experimentation is necessary, but whether, if experimentation is necessary, it is undue. Due to the large quantity of experimentation necessary to establish the claimed method treats any disease caused by dominant gene mutation, the breadth claims which encompasses treating any subject, the state of the art which establishes unpredictability in extrapolating treatment findings within the same disease having more than one causative gene, the lack of guidance or evidence in the specification for treating any non-adRP disease, it would have required undue experimentation for one skilled in the art at the time of the invention to practice over the full scope of the invention claimed. Thus, limiting the claimed invention to the scope above would be proper.
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Conclusion
No claim is allowed.
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/TITILAYO MOLOYE/ Primary Examiner, Art Unit 1632
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