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 .
The amendment filed July 8, 2026, has been received and entered.
Claims 1, 2, 4, 5, and 21-24 are cancelled.
Claims 3 and 6-20 are pending. Claims 18-20 are withdrawn.
Claims 3 and 6-17 are examined on the merits.
Notice Re: Prior Art Available Under Pre-AIA and AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3 and 6-17 are rejected under 35 U.S.C. 103 as being unpatentable over Cabaniols (WO 2018/007263. Previously cited) in view of Dev (US 2002/0099323) and Dzekunov (US 2004/0115784. Previously cited).
Cabaniols discloses a method for introducing genetic modifications at different loci of a primary immune cell comprising (a) subjecting said primary immune cell to a first electroporation step to introduce at least a first sequence-specific reagent into the immune cell; (b) cultivating said primary immune cell thereby enabling said first sequence-specific reagent to modify its genome at a first locus; (c) subjecting said primary immune cell to at least a second electroporation step to introduce at least a second sequence-specific reagent into the cell (claim 1 of Cabaniols). Cabaniols discloses their invention as sequential gene editing of cells (page 4, lines 17-22). Thus, in addition to being directed to an electroporation method (meeting a limitation of instant claim 3), the method of Cabaniols is also directed to a ‘method of serially editing cell genes,’ meeting a limitation of instant claim 6. For the electroporation steps, Cabaniols indicates that in general, the suspension of cells undergoes one or more pulsed electric fields (page 19, lines 7-8). Therefore, step (a) of Cabaniols is directed to subjecting a sample comprising one or more intact cells (the primary immune cell) to a ‘first electrical pulse’ which inherently has a ‘first field strength’ and a ‘first pulse duration’ sufficient to load the cells with a first agent (the first sequence specific reagent) according to a first protocol; and step (c) of Cabaniols is directed to subjecting the sample (the primary immune cell) to a ‘second electrical pulse’ which inherently has a ‘second field strength’ and a ‘second pulse duration’ sufficient to load the cells with a second agent (the second sequence-specific reagent) according to a second protocol, meeting limitations of the first and third steps of instant claims 3 and 6.
Cabaniols also teaches that in step (b) the primary immune cell is cultivated from 12 to 72 hours, preferably 24 to 48 hours (claim 2 of Cabaniols). As indicated in the instant specification, “Recovering the sample or allowing the sample to recover means culturing the cells of the sample in any of the cell-culture vessels and cell culture media disclosed herein under conditions such as those disclosed herein that are appropriate and sufficient to facilitate restoration or return of the cells to an improved or desired state or condition” (paragraph [144]). Since Cabaniols teaches culturing cells for 12 to 72 hours, preferably 24 to 48 hours, which are ranges that encompass periods of time falling in the claimed range of ‘at least about 24 hours’ of the instant claims, then restoration or return of the cells to an improved or desired state or condition is necessarily facilitated. Therefore, step (b) of Cabaniols renders obvious the second step of instant claims 3 and 6 of ‘allowing the sample to recover for at least about 24 hours.’
Cabaniols differs from the claimed invention in that Cabaniols does not expressly disclose:
the first pulse duration is different from the second pulse duration, and the first field strength is greater than the second field strength; and
the first electrical pulse or the second electrical pulse is delivered by an electroporation system comprising: a chamber having at least two electrodes separated by a spacer, a first port for allowing the sample to enter the chamber, and a second port for allowing the sample to exit the chamber.
Regarding difference (1) (Cabaniols does not expressly disclose that the first pulse
duration is different from the second pulse duration, and the first field strength is greater than the second field strength):
Dev discloses the use of pulsed electric field to deliver therapeutic agents into cells (abstract). Various parameters of the electric pulse, including electric field strength and pulse duration, may depend upon the type of cells and the type of molecules that are to enter the cells via electroporation (paragraph [0113]). Also, Dev points out that excessive field strength results in lysing of cells, whereas a low field strength results in reduced efficacy (paragraph [0112]).
Dzekunov also discusses electroporation as a technique for introducing material into biological cells (paragraph [0005]). Dzekunov points out that effective electroporation occurs when an optimal set of conditions, which depend on the sample being electroporated, exist (paragraph [0005]). The magnitude and duration of the pulse applied to the electrodes is chosen to maximize electroporation of the cells (paragraph [0005]).
Before the effective filing date of the claimed invention, it would have been obvious through routine experimentation to have varied the electric field strength and the electric pulse duration of the pulsed electric fields of the first and second electroporation steps when practicing the invention of Cabaniols, as they are results-effective parameters affecting the introduction the reagents into the cell and cell viability, based on Dev and Dzekunov. It would have been obvious to vary the electric field strength and the electric pulse duration through routine experimentation, including selecting a first pulse duration (for the first electroporation step) different from the second pulse duration (for the second electroporation step) and selecting a first field strength (for the first electroporation step) greater than the second field strength (for the second electroporation step), because electric field strength and pulse duration depend on the type of cells and the type of molecules that are being introduced into cells, indicative of being optimizable parameters. Moreover, Dev recognizes optimization of electric pulses for electroporation, citing the advantage of one particular pulse wave form as being the ease of optimization over a broad range of voltages (paragraph [0113]), and Dzekunov also indicates choosing pulse magnitude and duration to maximize electroporation of cells. Given that it has been established in the prior art (as in Dev and Dzekunov) to optimize the electric field strength and electric pulse duration for the purpose of electroporation for delivery of agents into cells, then it would have been an obvious matter of routine optimization to select a first pulse duration different from a second pulse duration and a first field strength greater than a second field strength when practicing the invention of Cabaniols. It is noted that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding difference (2) (the first electrical pulse or the second electrical pulse is delivered by an electroporation system comprising: a chamber having at least two electrodes separated by a spacer, a first port for allowing the sample to enter the chamber, and a second port for allowing the sample to exit the chamber):
Dzekunov discloses techniques for streaming electroporation and electroporation apparatus (abstract; paragraph [0030]). The method and apparatus are suitable for the electrical treatment of cells or particles, especially for the introduction of biologically active substances into various types of living cells by means of electrical treatment (paragraph [0003]). The electroporation apparatus includes a channel, an inlet, an outlet, and a pair of electrodes (paragraph [0030]). A suspension comprising particles can be introduced into the flow channel through the inlet flow portal, and the suspension can be withdrawn from the flow channel through the outlet flow portal (paragraph [0063]). See Figures 3, 4, and 4A. Referring to Figures 4, 4A, and 4B, the electrodes 12 and 14 are typically separated by one or more electrode gap spacers 18 and 20. The electroporation apparatus of Dzekunov is directed to the claimed electroporation system since it comprises a chamber (flow channel) having at least two electrodes separated by a spacer (the gap spacer), a first port (the inlet flow portal) for allowing the sample to enter the chamber, and a second port (the outlet flow portal) for allowing the sample to exit the chamber.
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to use the electroporation apparatus of Dzekunov to apply the first pulsed electric field (i.e., first electrical pulse) of the first electroporation step or the second pulsed electric field (i.e., second electrical pulse) of the second electroporation step, when performing the method rendered obvious by Cabaniols in view of Dev and Dzekunov. It would have been an obvious matter of simple substitution of one known means for applying electric pulses to cells for another for the predictable result of introducing reagents into cells by electroporation. Since the electroporation apparatus of Dzekunov is suitable for electroporation of cells for the purpose of introducing biologically active substances into cells, there would have been a reasonable expectation of applying at least one of the pulsed electric fields (the pulsed electric field of the first electroporation step and/or the pulse electric field of the second electroporation step) of the method rendered obvious by Cabaniols in view of Dev and Dzekunov.
Therefore, Cabaniols in view of Dev and Dzekunov renders obvious instant claim 3 and 6.
Regarding instant claim 7, the references differ from the claimed invention in that Cabaniols does not expressly disclose that the first and second sequence-specific reagents are the same agent. However, it would have been prima facie obvious to repeat steps, including introducing the same sequence-specific reagent, to ensure that the cells are genetically modified by the sequence-specific reagent. Therefore, instant claim 7 is rendered obvious.
Regarding instant claim 8, Example 2 of Cabaniols teaches sequential transfection of cells at a 40 hour interval with two TALEN mRNA which are mRNA encoding TRAC TALEN® and PD1 TALEN® either simultaneously or sequentially (page 43, lines 9-21; page 44, lines 1-5). These two mRNA are directed to first and second agents that are different agents. See also Example 3, in which sequential TALEN electroporation is performed including experiments in which different genes are transfected into the cells on different days (e.g. Day 4 (D4), Day 5 (D5)) (page 44, line 25 through page 45, line 3; Table 2 on page 45). Thus, instant claim 8 is rendered obvious.
Regarding instant claims 9, 10, and 12-15, Cabaniols discloses that in a preferred embodiment of the invention, the sequence-specific reagent is under the form of nucleic acids, more preferably under DNA or RNA form (page 19, lines 11-12). This meets the ‘nucleic acid’ embodiment of instant claim 9, as well as being directed to the first and second agents ‘comprising RNA’ of instant claim 12, and the first and second agents ‘comprising DNA’ of instant claim 13. Furthermore, Cabaniols teaches that the first and/or second sequence-specific reagent is a polynucleotide or polypeptide encoding a rare-cutting endonuclease (claims 6 and 7 of Cabaniols). Also, the endonuclease reagent, which is the sequence-specific reagents of Cabaniols (page 14, lines 6-9), can be RNA (more particularly mRNA), proteins, or complexes mixing proteins and nucleic acids (e.g. ribonucleoproteins) (page 14, lines 17-21). Therefore, the sequence-specific reagents of Cabaniols are also directed to a polypeptide or protein of instant claim 9, mRNA of instant claim 10, the first and second agents ‘comprising one or more proteins’ of instant claim 14, and the first and second agents ‘comprising a ribonucleoprotein’ of instant claim 15. As such, instant claims 9 (nucleic acid, polypeptide, protein), 10 (mRNA), and 12-15 are rendered obvious.
Regarding instant claim 11, Cabaniols also teaches an embodiment in which the first and/or second sequence-specific reagent is a conjugate of RNA guide and a Cas9 polypeptide (claim 8 of Cabaniols). This is directed to a ribonucleoprotein comprising a Cas9 protein and a guide RNA. Thus, instant claim 11 is rendered obvious.
Regarding instant claim 16, the references differ from the claimed invention in that Cabaniols does not expressly disclose that the first and second sequence-specific reagents that is RNA (see discussion above regarding instant claim 12) are the same agent. However, it would have been prima facie obvious to repeat steps, including introducing the same sequence-specific reagent that is RNA, to ensure that the cells are genetically modified by the sequence-specific reagent. Therefore, instant claim 16 is rendered obvious.
Regarding instant claim 17, Example 2 of Cabaniols teaches sequential transfection of cells at a 40 hour interval with two TALEN mRNA which are mRNA encoding TRAC TALEN® and PD1 TALEN® either simultaneously or sequentially (page 43, lines 9-21; page 44, lines 1-5). These two mRNA are directed to first and second agents that are RNA and are different agents. See also Example 3, in which sequential TALEN electroporation is performed including experiments in which different genes, specifically mRNA, are transfected into the cells on different days (e.g. Day 4 (D4), Day 5 (D5)) (page 44, line 25 through page 45, line 3; Table 2 on page 45). Thus, instant claim 17 is rendered obvious.
Response to Arguments
Applicant’s arguments, filed July 8, 2026, with respect to the rejection under 35 U.S.C. 103 over Beebe in view of Dzekunov have been fully considered and are persuasive. Beebe discloses a first electroporation pulse that is a long pulse for opening the plasma membrane, whereas a second electroporation pulse, a nanosecond pulsed electric field (nsPEF) pulse, is a short pulse for opening the nucleus (paragraph [0078]), wherein the second pulse has a higher voltage than the first pulse (paragraph [0080]). The second pulse (directed to a second electrical pulse having a second pulse duration different from the first pulse duration but a second field strength greater than the first field strength, thus failing to meet the claimed limitation of ‘the first field strength is greater than the second field strength’) is for facilitating transfer of the desired agent into the nucleus of the cell after the desired agent had been passed through the plasma membrane by the first electroporation pulse (paragraphs [0040] and [0074]); thus, the cells had already been loaded with the desired agent prior to applying the second pulse, with the second pulse serving the purpose of transferring the loaded agent into the nucleus of the cells. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 in view of the previously cited reference Cabaniols in view of newly cited reference Dev and previously cited reference Dzekunov, as necessitated by the amendments to the claims.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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Sef
/SUSAN E. FERNANDEZ/Examiner, Art Unit 1651
