DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/04/2026 has been entered.
Applicant’s amendments to the claims and arguments filed on March 4, 2026 have been received and entered. Claims 1, 21 and, 38 have been amended, while claims 2-3, 6-16, 20, 22-37, 39-50, 52 and 53 have been canceled. Claims 1, 4-5, 17-19, 21, 38 and 51 are pending in the instant application.
Election/Restrictions
Applicant’s election of claims 1-10, 12, 17-19, 38 and 51 in the reply filed on March 4, 2025 was acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Applicant’s election of a nucleic acid encoding at least one of human M-CSF, human IL-3, human GM-CSF, human SIRPA, human TPO, or a combination thereof as species in the reply filed on March 4, 2025 was acknowledged. Upon further consideration, restriction requirement between elected invention of group I and group II-IV (claims 13, 15, 17-19) were withdrawn and all the previously withdrawn claims drawn to invention of group II-IV were rejoined with the elected invention. Claims 1-10, 12-13, 15-19, 38 read on the elected invention.
Claims 21 and 51 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 4, 2025.
Claims 1, 4-5, 17-19, 21 and 38 are under consideration.
Priority
This application is a 371 of PCT/US20/42475 filed on 07/17/2020 that claims priority from US provisional application 62/875,108 filed on 07/17/2019.
New-Claim Rejections - 35 USC § 112-scope of enablement
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 1-10, 12-13, 15-19 and 38 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) a genetically modified Rag2-/- IL-2Rγ.-/- Fah-/- c-Kit w41/w41 or Rag2-/- IL-2Rγ.-/- Fah-/- c-Kit wv/wv immunodeficient mouse whose genome comprises:
a homozygous null mutation in IL2rg gene,
a homozygous null mutation in Rag2 gene; ,
a homozygous null mutation in fumarylacetoacetate hydrolase (Fah) gene,
a replacement of a mouse M-CSF gene with a nucleic acid encoding a human M-CSF polypeptide at a mouse M-CSF gene locus,
a replacement of a mouse IL-3 gene with a nucleic acid encoding a human IL-3 polypeptide at a mouse IL-3 gene locus,
a replacement of a mouse GM-CSF gene with a nucleic acid encoding a human GM-CSF polypeptide at a mouse GM-CSF gene locus,
an insertion of a nucleic acid encoding a human SIRPA polypeptide,
a replacement of a mouse TPO gene with a nucleic acid encoding a human TPO polypeptide at a mouse TPO gene locus, and
a cKitw41 mutation or a cKitWV mutation;
wherein each of the nucleic acids encoding the human M-CSF polypeptide, the human IL-3 polypeptide, the human GM-CSF polypeptide, the human SIRPA polypeptide, and the human TPO polypeptide is operably linked to a promoter, wherein the mouse expresses the human M-CSF polypeptide, the human IL-3 polypeptide, the human GM-CSF polypeptide, the human SIRPA polypeptide, and the human TPO polypeptide, wherein the mouse does not express Rag-2, IL2 receptor gamma chain and Fah (Rag2-/-, gc-/-, Fah-/-), wherein the mouse comprises a human hepatocyte and human hematopoietic stem cell and wherein the mouse exhibits circulating human red blood cells in peripheral blood,
does not reasonably provide enablement for any mouse whose genome comprises a multi cistron vector encoding the five cytokines each under the control of a promoter or mouse whose genome comprises both mouse and human cytokine or human cytokine inserted randomly into the genome of the mouse to express human cytokine or corresponding mouse cytokines resulting in mouse exhibiting the recited phenotype (mouse comprises a human hepatocyte and exhibits circulating human red blood cells in peripheral blood. 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 and use the invention commensurate in scope with these claims.
In determining whether Applicant’s claims are enabled, it must be found that one of skill in the art at the time of invention by applicant would not have had to perform “undue experimentation” to make and/or use the invention claimed. Such a determination is not a simple factual consideration, but is a conclusion reached by weighing at least eight factors as set forth in In re Wands, 858 F.2d at 737, 8 USPQ 1400, 2d at 1404. Such factors are: (1) The breadth of the claims; (2) The nature of the invention; (3) The state of the art; (4) The level of one of ordinary skill in the art; (5) The level of predictability in the art; (6) The amount of direction and guidance provided by Applicant; (7) The existence of working examples; and (8) The quantity of experimentation needed to make and/or use the invention.
The office has analyzed the specification in direct accordance to the factors outlines in In re Wands. MPEP 2164.04 states: “[W]hile the analysis and conclusion of a lack of enablement are based on factors discussed in MPEP 2164.01(a) and the evidence as whole, it is not necessary to discuss each factor in written enablement rejection.” These factors will be analyzed, in turn, to demonstrate that one of ordinary skill in the art would have had to perform “undue experimentation” to make and/or use the invention and therefore, applicant’s claims are not enabled.
Nature of the Invention:
Claims are directed to a genetically modified mouse comprising: a) a genome comprising a nucleic acid encoding human M-CSF, human IL-3, human GM-CSF, human SIRPA, and human TPO, wherein each of the nucleic acid encoding the human M-CSF, human IL-3, human GM-CSF, human SIRPA, and human TPO is operably linked to a promoter; and b) a nucleic acid encoding cKit or a mutant thereof and fumarylacetoacetate hydrolase (Fah) or a mutant thereof,; wherein the mouse is an immunodeficient mouse; wherein the mouse does not express Rag-2 and does not express IL2 receptor gamma chain (Rag-2-/- gamma chain/-); wherein the mouse expresses human M-CSF, human IL-3, human GM-CSF, human SIRPA, and human TPO; wherein the mouse does not express Fah (Fah-/-); wherein the mouse comprises a cKitw41 mutation or a cKitWV mutation; wherein the mouse comprises a human hepatocyte; and, wherein the mouse exhibits circulating human red blood cells in the peripheral blood.. Claims are also directed to a genetically modified immunodeficient mouse having a genome comprising a nucleic acid encoding at least one of the group consisting of human M-CSF, human IL-3, human GM-CSF, human SIRPA, and human TPO, wherein each of the nucleic acid encoding the human M-CSF, human IL-3, human GM-CSF, human SIRPA, and human TPO are operably linked to a promoter, wherein the immunodeficient mouse expresses at least one polypeptide selected from the group consisting of human M-CSF, human IL-3, human GM-CSF, human SIRPA, and human TPO; wherein the mouse does not express Rag-2, does not express IL2 receptor gamma chain, and does not express Fah (Rag-2⁻/-, gamma chain⁻⁴, Fah⁻); wherein the mouse comprises a cKitw41 mutation or a cKitWV mutation; and wherein the mouse comprises a a human hepatocyte; wherein the mouse exhibits circulating human red blood cells in the peripheral blood.
Breadth of the claims:
The claims broadly embrace genetic modification of an immunodeficient mouse whose genome comprises a nucleic acid encoding human M-CSF, human IL-3, human GM-CSF, human SIRPA, and human TPO, wherein each of the nucleic acid encoding the human M-CSF, human IL-3, human GM-CSF, human SIRPA, and human TPO is operably linked to any promoter inserted any wherein the genome of the mouse exhibiting circulating human red blood cells in the peripheral blood phenotype.
Guidance of the Specification and The Existence of Working Examples:
The specification discloses repopulation of human hepatocytes that is achieved in MISTERG-FAI-l- mice. It is relevant to note that MISTRG is an acronym for the 7 modified genes in the genome of a mice: M-CSFh/h IL-3/GM-CSFh/h SIRPah/h TPOh/h RAG2-/- IL2Rg-/- (see Rongvaux (Nature Biotech, 2014, 32, 364- 372)). The specification teaches MISTRG mice are generated via knock-in technology to express non-cross reactive, human cytokines from the corresponding murine loci in the hu SIRPuRag-/-g-/-- background (see page 5, lines 8-14, fig. 5). The specification discloses the genetically modified non-human animal that expresses a human nucleic acid also expresses the corresponding non-human animal nucleic acid, In other embodiments, the genetically modified non-human animal that expresses a human nucleic acid does not also express the corresponding non-human animal nucleic acid (see page 39, line 15-20)
The specification discloses that liver humanization abolishes the sequestration of human RBCs in the liver. Further, the MISTERG-FAH- mouse model does not need clodronate treatment. Thus, the MISTERG-FAH-/ mouse model is ideal for both liver and blood stage infection with P. vivax and P. falciparum (example 1, fig. 1). However, the specification teaches that the lifespan of MISTERG-FAH mice is a major limitation for the liver/blood dual stage infection that was no different from the commonly engrafted MISTRG family mice, suggesting anemia still contributes substantially to the shortened lifespan (see example 1). The specification further discloses adult PBSC engraftment in MISTRGW4I confirming efficient overall engraftment without irradiation (Figure7A) and robust erythropoiesis (Figure 7B3)
State of the Art and Predictability of the Art and the Amount of Experimentation Necessary:
The specification has not disclosed a use for a genetically modified mouse that expresses both human and mouse M-CSF, IL-3, GM-CSF, SIRPA, and TPO I. It is relevant to note that the uses of the claimed genetically modified mouse are contemplated to be engraftment of human cells such as hematopoietic cells. Human hepatocyte in mice that express IL IL-3, TPO, GM-CSF and M-CSF (examples). However, all of these uses for engraftment were demonstrated in mice that were immunodeficient and produced via knock-in technology to express non-cross reactive, human cytokines from the corresponding murine loci in the hu Rag-/-g-/-- background. . The instant claims however are not all limited to mice that are generated via knock-in technology to express non-cross reactive, human cytokines (-CSF, IL-3, GM-CSF, SIRPA, and TPO) by inserting human cytokines to replace the corresponding endogenous murine loci. The specification has failed to teach engraftment of any human cells in mouse that express cross reactive mouse cytokine. The art teaches human cytokines provided by constitutive, transgene-driven expression in the NSG-SGM3 model (overexpressing human stem cell factor (SCF), granulocyte-monocyte-colony-stimulating factor (GM-CSF), and interleukin-3 (IL3) from a cytomegalovirus promoter), improve myeloid differentiation and cellular proliferation, yet stem cell maintenance is impaired. Song (Nature Communication, 2019, 10:366, 1-14) states that “MISTRG mice are engineered to express key non-cross reactive human cytokines from the endogenous murine loci in place of their murine counterparts (emphasis added), thereby providing temporally and spatially physiologic expression of human cytokines (emphasis added). In addition, lack of murine cytokines reasonably provides additional benefit to human hematopoiesis by rendering the stem and progenitor niches in the BM less hospitable to murine HSPC. This is likely to be particularly critical to adult HSCs that have markedly lower proliferative and self-renewal capacity than their fetal liver and umbilical cord blood counterparts (emphasis added) (see page 10, col. 1, para. 2). In the instant case, the specification demonstrates that the MISTRG mouse that would not express mouse M-CSF, GM- CSF, IL-3, and TPO, as opposed to other mouse exhibits claimed properties and in particular resulting in human RBCs, but not mouse RBCs are selectively trapped in the liver vasculature. The claims are not limited to MISTRG mice that are generated via knock-in technology to express non-cross reactive, human cytokines from the corresponding murine loci in the hu SIRPuRag-/-g-/-- background (emphasis added). In view of foregoing, it is apparent that the MISTRG mice lack expression of mouse M-CSF, IL-3, GM-CSF, and TPO due to the knock-in of the human gene. The claimed mice are not limited to this embodiment, and it is unclear the resulting phenotype observed in the instant specification with MISTRG mice could be extended to phenotype resulting from a mouse also exhibiting expression of mouse cytokines in addition to human cytokines in terms of pre- conditioning irradiation requirements, hematopoietic, myelopoiesis, and human hepatocyte engraftment. An artisan would have to perform undue experimentation to make and use the invention, without reasonable expectation of success.
The art is clear that in the production of transgenic animals whose genome contains a randomly integrated transgene was unpredictable because of gene silencing, insertion into require coding sequences and the uncontrolled random nature of the insertion. Gama Sosa discussed transgene expression in transgenic animals as a problem due to integration site and formation of heterochromatin (Gama Sosa et al Brain Struct Funct (2010) 214:91–109, page 94, col. 1, para. 1, lines 1-10., art of record) The issues of transgene insertion site, copy number and silencing are not new, but have been issues concerning transgenesis for years. The specification does not teach producing a genetically modified nonhuman animal by random insertion of transgene comprising a human gene. The art teaches that random nature of transgene insertion, resulting founder mice can contain the transgene at a different chromosomal site, and that the position of the transgene effects expression, and thus the observed phenotype (Sigmund Arteroscler Throm Vasc Biol 20:1426, col 1, par 1, lines 1-7, 2000, art of record) The art teaches that “[t]he rules of the genome are not fully understood, nor are the full phenotypic consequences of creating mice with human genomic DNA” and “the design of a humanization strategy is far from routine. ( Zhu, F Nature communications 10.1 (2019): 1-13, page 7, col. 2, para. 3). It is relevant to note that Zhu explicitly states that the “The phenotype of a genetic mouse model— transgenic or gnomically humanized—is not always predictable, but when unexpected outcomes arise, such models can provide valuable insight from studying the mechanism of why the observed outcome is different from expectation. As an example, to model myotonic dystrophy, the 3' end of the Dmpk gene was humanized, including the addition of 84 CTG repeats in the 3'-UTR, which leads to pathology in humans. In Dmpk- humanized mice, however, this repeat number failed to produce a pathogenic phenotype. (Zhu, page 9; emphasis added). Similarly, in larger-scale humanizing of the introns and exons of a gene, the mouse environment (chromosomal or cellular) causes unexpected phenotypes. Currently, this is unpredictable and must be assessed on a case-by-case basis, but does not preclude working with such animals. (Zhu, page 10). Absent specific guidance, one skilled in the art before the effective filing date of the claimed invention would have to perform undue experimentation to determine how to make/use a mouse whose genome comprises different human gene encompassing a nucleic acid sequence encoding human M-CSF, IL-3, GM-CSF, SIRPA and TPO each under control of a promoter inserted anywhere in the gnome and also expressing mouse M-CSF, IL-3, GM-CSF, and TPO showing the contemplated phenotype, without reasonable expectation of success. Further, it is not always clear how far one should extend genomic humanization in order to most faithfully recapitulate human gene expression in a mouse context. The art further teaches genomic humanization studies have shown that phenotypes could range from relatively mild to apparently no different from wild-type mice (see page 6, col. 2, last para.). Given that differences in the expression of a transgene, particularly when taken with the lack of guidance in the specification for the genus of gene segments modification at any site other than corresponding endogenous locus, it would have required undue experimentation to the levels of the transgene product, the consequences of that product, and therefore, the resulting phenotype. The specification fails to provide teachings or specific guidance to overcome the above described unpredictabilities to use a transgenic nonhuman animal with a specific phenotype, and as such, the claims are not enabled commensurate with full scope. An artisan would have to perform undue experimentation to make and use the invention, without reasonable expectation of success.
In conclusion, in view of breadth of the claims and absence of a strong showing by Applicant, in the way of specific guidance and direction, and/or working examples demonstrating the same, such invention as claimed by Applicant is not enabled commensurate with full scope. An artisan of skill would have required undue experimentation to practice the invention without reasonable expectation of success.
Maintained-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.
Claims 1, 4-5, 18-19 and 38 remain rejected under 35 U.S.C. 103 as being unpatentable over Flavell et al (USP or USPGPUB 20150208622, 7/30/2015 or US 9820476)/Rongvaux (Nature Biotech, 2014, 32, 364- 372), Vaughan et al (The Journal of Clinical Investigation, 2012, 122, 3618-3628), and McIntosh et al (Stem Cell Reports, 2015, 4, 171-180).
With respect to claims 1-2, and 38, Flavell/ Rongvaux teaches a genetically modified mouse whose genome comprises
a nucleic acid encoding a human M-CSF polypeptide, a nucleic acid encoding a human IL-3 polypeptide, a nucleic acid encoding a human GM-CSF polypeptide, a nucleic acid encoding a human SIRPA polypeptide and a nucleic acid encoding a human TPO polypeptide, wherein nucleic acid knock in is accomplished by genetic replacement of multiple cytokines in MISTRG creates a microenvironment in which human hematopoiesis can almost completely displace mouse hematopoiesis in the bone marrow, and obviate the need for pathology-inducing irradiation (see para. 108).
wherein each of the nucleic acids encoding the human M-CSF polypeptide, the human IL-3 polypeptide, the human GM-CSF polypeptide, the human SIRPA polypeptide and the human TPO polypeptide is operably linked to an endogenous mouse promoter at the respective gene locus (claim 1 of ‘476),
and wherein the animal expresses the human M-CSF polypeptide, the human IL-3 polypeptide, the human GM-CSF polypeptide, the human SIRPA polypeptide and the human TPO polypeptide (see claims 1, 8 of ‘622 and page 1 col.1 of publication supplement). Flavell teaches that mouse does not express recombination activating gene 2 (Rag-2--) and IL2 receptor gamma chain (gamma chain-/-) (see claims 4-6 of ‘622, page 1 col.1 of publication supplement). Flavell/ Rongvaux teaches the mouse further comprising human hematopoietic cells (see claims 9-10 of ‘622, page, col., 1 and para. 3 and page 2, col. 1, para. 5 of publication supplement).
Regarding claim 4, Flavell/ Rongvaux teaches that the mouse is immunodeficient and express human IL-6 (see claim 3 of ‘622 and para. 110, page 1 col.1 of publication supplement).
Flavell/ Rongvaux teaches two major limitations of the MISTREG mouse that includes (i) suboptimal development and survival of both mouse and human RBCs and (ii) relatively weak adaptive immune responses, with low cytotoxic and humoral immune responses (page 371, col., 1 para. 5 and 6). Flavell differs from claimed invention by not disclosing that mouse does not express not express Fah (Fah-/-); and comprises cKitw41 mutation or cKit WV mutation.
Vaughan cures the deficiency by disclosing an immunocompromised and fumaryl acetoacetate hydrolase–deficient mouse (Fah–/–, Rag2–/–, Il2rg–/–, termed the FRG mouse) is capable of engraft with human hepatocytes (FRG huHep) that supported vigorous, quantifiable P. falciparum LS development that culminated in complete maturation of liver stage at approximately 7 days after infection. It is further disclosed that FRG mice backcrossed to the NOD background and repopulated with huHeps and human red blood cells supported reproducible transition from LS infection to blood-stage infection. Thus, these mice constitute reliable models to study human LS directly in vivo and demonstrate utility for studies of LS–to–blood-stage transition of a human malaria parasite (abstract, page 3625, col. 2, para. 2). Vaughan teaches drugs that target the P. falciparum LS will be metabolized in huHeps and the treatment will measure in vivo effects against the relevant human parasites (See page 3625, col. 2, para. 1) (limitation of claims 18 and 19). The combination of references differs from claimed invention by not disclosing mouse comprising cKitw41 mutation or cKit WV mutation,
Mcintosh discloses a humanized mouse model used for the production of human cord blood that supports human HSC engraftment (Abstract). Mcintosh teaches unconditioned NBSGW strain supported levels of human chimerism in peripheral blood that was 9-fold higher as compared with the unconditioned NSG strain (see page 173, col., 1 to col. 2). It is disclosed that KitW41/41 mutation when combined with immunodeficient NSG mice yield the highest level of human hematopoietic chimerism obtained in any mouse strain (see page 178 col 2 para 1) (limitation of claims 1 and 38). Mcintosh emphasizes that given the increasingly restricted access to radiation sources, NBSGW mice are broadly enabling, allowing laboratories without access to radiation to accelerate human hematopoietic engraftment and/or research. The NBSGW model and other homozygous mice possessing the KitW41 allele are significant steps toward providing a standardized framework and an improved understanding of human HSC biology (see page 178, col. 1, last para.).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to combine the teachings of prior art to modify the genetically modified mouse of Flavell/ Rongvaux by incorporating c-kit mutation and Fah–/– as disclosed in Vaughan and Mcintosh expressing human polypeptides in the immunodeficient mouse, to provide humanized mouse model that is capable generating human erythropoiesis including human RBCs, as instantly claimed, with a reasonable expectation of success, before the effective filing of the instant invention. Said modification amounting to combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would be motivated to do so as because (i) Vaughan provide explicitly motivation to use Fah–/– in immunodeficient mouse to repopulate with huHeps and human red blood cells and while Mcintosh(ii) suggest immunodeficient mouse comprising KitW41/41 mutation yield the highest level of human hematopoietic chimerism (see above). One of skill in the art would have been expected to have a reasonable expectation of success in incorporating c-kit mutation and Fah–/– in the immunodeficient mouse of Flavell/ Rongvaux because the art teaches successful (i) engraftment of hepatocyte in Fah–/–, Rag2–/–, Il2rg–/–, termed the FRG mouse that supported vigorous, quantifiable P. falciparum LS development as evident from Vaughan and (ii) human hematopoietic chimerism in an immunodeficient mouse comprising KitW41/41 mutation. It should be noted that the KSR case forecloses the argument that a specific teaching, suggestion, or motivation is required to support a finding of obviousness See the recent Board decision Ex parte Smith, --USPQ2d--, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007) (citing KSR, 82 USPQ2d at 1396) (available at http: www. uspto.gov/web/offices/dcom/bpai/prec/fd071925.pdf).
Claims 1, 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Flavell et al (USP or USPGPUB 20150208622, 7/30/2015)/Rongvaux (Nature Biotech, 2014, 32, 364- 372), Vaughan et al (The Journal of Clinical Investigation, 2012, 122, 3618-3628), and McIntosh et al (Stem Cell Reports, 2015, 4, 171-180) and Flavell (2, USPGPUB 20140134662, 5/15/2014).
The teaching of Flavell/Rongvaux, Vaughan and McIntosh have been described above and relied in same manner here. The combination of references differs from claimed invention by not disclosing the mouse further comprises a genome comprising a nucleic acid encoding human IL-6.
Flavell(2) teaches an immunodeficient genetically modified non-human animal that comprises: a nucleic acid encoding human IL-6 operably linked to an IL-6 promoter, and at least one additional nucleic acid selected from the group consisting of: i) a nucleic acid encoding human SIRPa operably linked to a SIRPa promoter, wherein the nucleic acid is randomly integrated into the genome of the non-human animal; ii) a nucleic acid encoding human M-CSF operably linked to a M-CSF promoter; iii) a nucleic acid encoding human IL-3 operably linked to an IL-3 promoter; iv) a nucleic acid encoding human GM-CSF operably linked to a GM-CSF promoter; and v) a nucleic acid encoding human TPO operably linked to a TPO promoter, wherein the IL-6 promoter is the non-human animal IL-6 promoter, and the nucleic acid encoding human IL-6 is operably linked to the non-human animal IL-6 promoter at the non-human animal IL-6 locus, wherein the nonhuman animal is a mouse (see claim 25-28, 35 of ‘662 ). Regarding claim 16, Flavell teaches engrafting the human hematopoietic cell that is CD34+ cell obtained from a human fetal liver, bone marrow, cord blood, peripheral blood, or spleen (se para. 154).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to combine the teachings of prior art to modify the genetically modified mouse of Flavell/ Rongvaux, Vaughan and Mcintosh by further incorporating a nucleic acid encoding IL6 as suggested in Flavell (2), to provide an improved humanized mouse model that is capable generating human erythropoiesis, as instantly claimed, with a reasonable expectation of success, before the effective filing of the instant invention. Said modification amounting to combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would be motivated to do so as because prior art reported IL-6 playing a central role in hematopoiesis, in immune responses and in acute phase reactions for the final maturation of B cells into antibody secreting cells (ASC), especially for the expansion of plasmablasts during the germinal center reaction in the T-dependent (TD) antibody response (see above). One of skill in the art would have been expected to have a reasonable expectation of success in incorporating a nucleic acid encoding IL-6 in the immunodeficient mouse of Flavell (1)/ Rongvaux because the art teaches successful (i) incorporation of human IL-6 at an endogenous IL-6 locus as evident from the teaching of Flavell (1). It should be noted that the KSR case forecloses the argument that a specific teaching, suggestion, or motivation is required to support a finding of obviousness See the recent Board decision Ex parte Smith, --USPQ2d--, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007) (citing KSR, 82 USPQ2d at 1396) (available at http: www. uspto.gov/web/offices/dcom/bpai/prec/fd071925.pdf).
Claims 1, 17 remain rejected under 35 U.S.C. 103 as being unpatentable over Flavell et al (USP or USPGPUB 20150208622, 7/30/2015)/Rongvaux (Nature Biotech, 2014, 32, 364- 372), Vaughan et al (The Journal of Clinical Investigation, 2012, 122, 3618-3628), and McIntosh et al (Stem Cell Reports, 2015, 4, 171-180) and Hayakawa (Cell Transplantation, 2019, 19, 1465-1473).
The teaching of Flavell/Rongvaux, Vaughan and McIntosh have been described above and relied in same manner here. The combination of references differs from claimed invention by not disclosing the mouse has a sickle cell disease.
Hayakawa teaches a immunodeficient mouse whose genome comprises IL2Rgamma -/- modification, that further comprise sickle cell disease (abstract - NOD/LtSz-scid/IL2Rg null (NOD/SCID IL2Rg null). It is disclosed that the mouse represents a significantly improved xenograft model allowing high levels of human leukocyte engraftment over extended follow up...nearly all nucleated cells of human origin and approximately 60% human GPA or CD71 positive. Hayakaw teaches transplanting cord blood CD34+ cells...G-CSF mobilized peripheral blood CD34+ cells from a sickle cell trait subject in this mouse model...establishing the sickle cell trait phenotype”. Given that Mcintosh discloses the use of NOD-SCID mice and CD34+ cells from human cord blood in their genetically modified non-human animal (Abstract ), without irradiation, the resulting NBSGW strain with human cord blood CD34+ cells.").
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to combine the teachings of prior art to modify the genetically modified mouse of Flavell/ Rongvaux, Vaughan and Mcintosh by further engrafting cells from the sickle cell disease as suggested in Hayakawa, to provide an improved humanized mouse model to study human disease and therapeutic treatments, as instantly claimed, with a reasonable expectation of success, before the effective filing of the instant invention. Said modification amounting to combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would be motivated to do so in order to test strategies for genetic manipulation of erythroid progeny and the study of hemoglobin switching (see Hauakawa). One of skill in the art would have been expected to have a reasonable expectation of success in producing sickle cell disease model because prior art successfully reported establishing the sickle cell trait phenotype by engrafting CB derived HPC to the immunodeficient mouse . It should be noted that the KSR case forecloses the argument that a specific teaching, suggestion, or motivation is required to support a finding of obviousness See the recent Board decision Ex parte Smith, --USPQ2d--, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007) (citing KSR, 82 USPQ2d at 1396)(available at www. uspto.gov/web/offices/dcom/bpai/prec/fd071925.pdf).
Response to arguments
Applicant disagree with the rejection arguing that the rejection in part could only be made with hindsight bias and ex post reasoning. Applicant argues that combination of reference individually do not teach each and every element of the claimed invention and do not provide any expectation of success at arriving at such as a mouse. Applicant has previously argued that he invention is based, in part, on the discovery that humanization of the liver allows for the survival of hRBCs in the peripheral blood (PB). This discovery was only made possible because the inventors demonstrated that fluorescently labeled huRBCs were preferentially cleared over mouse RBCs (muRBCs) (Figure 10A) and that huRBCs, but not muRBCs, were selectively trapped in the liver vasculature (Figure 10B and Figure 10C). The inventors thus deleted Fah in MISTRG mice and subsequently repopulated the mouse liver with human hepatocytes (HuHep) (see page 12 of the applicant’s argument filed on 6/27/2025). Applicants’ arguments have been fully considered, but are not found persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). It should be noted that the ultimate goal of the humanized mouse is that it should be capable of supporting the engraftment of human hematopoietic cell/hepatocytes. As previously indicated, Flavell/Rongvaux teaches a MISTRG mouse that does not express Rag-2, or IL2 receptor gamma chain. It is further disclosed that MISTRG mouse further comprises human hematopoietic cells or a human cancer cell (see claims 9-10 of '622, page, col., 1 and para. 3 and page 2, col. 1, para. 5 of publication supplement). Vaughan provide explicitly motivation to use Fah-/- immunodeficient mouse to repopulate with huHeps and human red blood cells and while Mcintosh(ii) suggested immunodeficient mouse comprising KitW41/41 mutation yields the highest level of human hematopoietic chimerism. These levels are equivalent to those reported by mouse disclosed by Rongvaux (see page 177, col. 1, para. 1.). Thus, McIntosh. cure the deficiency in Flavell/Rongvaux by suggesting to incorporate c-kit mutation in the immunodeficient mouse of Flavell/ Rongvaux. To the extent that McIntosh describe incorporating c-kit mutation in an immunodeficient mouse to increase engraftment of HPC, the rejection is applicable to the instant case. Applicants' selective reading of Flavell/ Rongvaux ignores the teachings of the reference of McIntosh and Vaughan. There is no requirement for Flavell/ Rongvaux. to teach that which is clearly taught by McIntosh and Vaughan.
In response to applicant’s argument pertaining to unexpected phenotype, it is noted that unexpected results have to be commensurate with the scope of the invention. "Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)." Examples disclosed in the instant specification teaches humanization of liver all disclose use of MISTG mouse. The MISTRG mouse is a Fah-/-RAG2-/-IL2-Ry-/- mouse whose genome comprises targeted knock-in of human M-CSF, GM- CSF, IL-3, and TPO genes into their endogenous mouse gene counterparts, and the insertion of a transgene encoding human SIPRA. The specification demonstrates that the MISTRG mouse that would not express mouse M-CSF, GM- CSF, IL-3, and TPO (emphasis added), as opposed to other mouse exhibits claimed properties and in particular resulting in human RBCs, but not mouse RBCs are selectively trapped in the liver vasculature. The claims are not limited to MISTRG mice that are generated via knock-in technology to express non-cross reactive, human cytokines from the corresponding murine loci in the hu SIRPuRag-/-g-/-- background (emphasis added). In view of foregoing, the MISTRG mice lack expression of mouse M-CSF, IL-3, GM-CSF, and TPO due to the knock-in of the human gene. The claimed mice are not limited to this embodiment, and it is unclear the phenotype observed in the instant specification could be extended to phenotype resulting from a mouse also exhibiting expression of mouse cytokines in addition to human cytokines in terms of pre- conditioning irradiation requirements, hematopoietic, myelopoiesis, and human hepatocyte engraftment. Thus, applicant's evidence of unexpected result is limited to the MISTRG mouse are thus are not commensurate in scope with the claims as written. Therefore, the evidence of unexpected superior results is not persuasive in overcoming the rejection of record.
On pages 9-10 of the applicant's argument, applicant re-iterates and rely on their previous arguments pertaining that have been discussed in preceding section. The arguments are substantially the same as those addressed in the foregoing response.
Therefore, in view of the fact patterns of the instant case, and the ground of rejection outlined by the examiner, applicants' arguments are not compelling and do not overcome the rejection of record.
Conclusion
No claims allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Griner et al (Am J Path, 1995, 146, 888-902) teaches successful engraftment of human spleen cells into a non-human animal.
Yurino (Stem Cell Reports j Vol. 7 j 425–438 j September 13, 2016) teaches C57BL/6.Rag2nullIl2rgnullNOD-Sirpa KitWv/Wv (BRGSKWv/Wv) mice show significantly higher levels of human cell chimerism and long-term multi-lineage reconstitution compared with BRGS mice.
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/ANOOP K SINGH/ Primary Examiner, Art Unit 1632
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