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 .
DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found
in a prior Office action.
This application is in response to the papers filed on May 30, 2025. Pursuant to the amendment filed on May 30, 2025, claims 1-6, 8-10, 13-14, 16, 21, 26-27, 29, 31, 37, 40 and 48 are currently pending. Claims 1, 31, 37, 40, and 48 have been amended in Applicant’s amendment filed on May 15, 2024.
Claims 10, 13-14, 16, 21, 26-27, 29 and 31 were previously withdrawn in the Office Action dated March 13, 2025, whereby the restriction requirement between Groups I-IV was previously made FINAL.
The examiner acknowledges receiving an executed Declaration under 37 C.F.R. § 1.132 by Dr. George Wu signed on May 28, 2025 (“Wu Decl. ”), and filed on May 30, 2025.
Therefore, claims 1-6, 8-9, 37, 40, 48 are currently under examination to which the following grounds of rejection are applicable.
Response to Arguments
Declaration of Dr. George Wu Pursuant to 37 C.F.R. § 1.132 (“Wu Decl.”)
The Wu Decl. has provided additional data and figures, one of which was mistakenly omitted in the provisional and utility applications, as filed. Suppl. Fig. 3 is of particular interest as it depicts the full composition of claim 1 which is the mitochondria and TF-PL complex, by showing the combination resulted an increase of mitochondria delivery to hepatocytes when complexed with TF-PL in comparison to the mitochondria control. This outcome was described to not occur at the low temperature of 4 C based on endocytosis being inhibited at such low temperatures. Furthermore, the outcome was more than doubled than the mitochondria control. Lastly, the Wu Decl. describes the charges of the protein conjugate as seen in Fig. 13 wherein poly-L-lysine is shown to have a positive charge, transferrin having a negative charged, and the complex moving slightly towards the positive electrode. The Wu Decl. shows there is sufficient support for the claimed composition of claim 1.
Withdrawn Objections/Rejections in response to Applicants’ arguments or amendments:
Drawings
In view of Applicants’ Replacement Drawings filed on May 30, 2025, the objection to the Drawing have been withdrawn.
Specification
In view of Applicants’ Amendment to the Specification filed on May 30, 2025, the objection to the Specification has been withdrawn.
Claim Rejections - 35 USC § 112
In view of Applicants’ amendment to the claims dated May 30, 2025, wherein claims 37 and 40 have been amended, the rejection to claims 37 and rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, are withdrawn. The withdrawn claims are in view of the amended claims removing the language of “composition.”
Claim Rejections - 35 USC § 102
In view of Applicants’ amendment to the claims dated May 30, 2025, wherein claims 1, 31, 37, 40, and 48 have been amended, the rejection to claims 1, 3, 4-6, 8-9, 37, 40, 48 rejected under 35 U.S.C.102(a)(1) as being anticipated by Wu et al. (WO 2016/138420), are withdrawn. The withdrawn rejections are due to the amended claim 1 now specifying the claimed mitochondrial-protein complex as no longer comprising isolated mitochondria; and asialoorosomucoid-poly-L-lysine (AsOR-PL) conjugate or transferrin-poly-L-lysine (Tf- PL) conjugate, but rather isolated mitochondria; and transferrin-poly-L-lysine (Tf- PL) conjugate. The Wu reference does not teach a transferrin-polycation polypeptide, and for this reason no longer anticipates the claimed invention.
Applicants’ arguments are moot in view of the withdrawn rejection.
Claim Rejections - 35 USC § 103
In view of Applicants’ amendment to the claims dated May 30, 2025, wherein claims 1, 31, 37, 40, and 48 have been amended, the rejection to claims 1, and rejected under 35 U.S.C. 103 as being unpatentable over Wu et al (US-10,537,594-B2), in view of Farah et al. (Journal of clinical and translational hepatology 7.1 (2019): 46.), is withdrawn. The withdrawn rejection is due to the amended claim 1 now specifying the claimed mitochondrial-protein complex as no longer comprising isolated mitochondria; and asialoorosomucoid-poly-L-lysine (AsOR-PL) conjugate or transferrin-poly-L-lysine (Tf- PL) conjugate, but rather isolated mitochondria; and transferrin-poly-L-lysine (Tf- PL) conjugate. The Wu reference does not teach a transferrin-polycation polypeptide, and for this reason no longer anticipates the claimed invention.
Applicants’ arguments are moot in view of the withdrawn rejection.
Double Patenting
In view of Applicants’ amendment to the claims dated May 30, 2025, wherein claims 1, 31, 37, 40, and 48 have been amended, the Double Patenting rejection has been withdrawn. The withdrawn rejection is due to the amendment of claim 1 wherein the mitochondrial-protein complex no longer comprises asialoglycoprotein.
New Grounds of Rejection:
Claim Rejections - 35 USC § 103
Claims 1, 3, 4-6, 8-9, 37, 40, 48 are newly rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (WO 2016/138420, publication date September 1, 2016) in view of Wagner et al. (Proceedings of the National Academy of Sciences 87.9 (1990): 3410-3414).
Citations are from the National Stage U.S. Patent No. 10,537,594-B2. The National Stage is deemed an English language translation of the PCT. This is a new rejection necessitated by Applicants’ amendments to the claims in the response filed on May 30, 2025.
The applied Wu reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). The publication dated for Wu is Sep 1, 2016. The earliest effective filing date of the instant application is May 7, 2021. Therefore, the disclosure was made 1 year before the effective filing date of the instant invention.
Therefore, rejection under 35 U.S.C. 103 CANNOT be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02. Because the reference qualifies as prior art under 102(a)(1), the provisions of MPEP 717.02 do not apply.
Claim 1 is directed to a mitochondrial-protein complex comprising: isolated mitochondria; and transferrin-poly-L-lysine (Tf- PL) conjugate.
Wu teaches functional mammalian mitochondria complexed with AsG-PL electrostatically, wherein the asialoglycoprotein (AsG) comprises asialoorosomucoid (AsOR) that is covalently attached to a polycation, specifically poly-L-lysine (Example 1; col 10, line 29-49; Fig. 8, 16). Figure 1 depicts receptor-mediated endocytosis on liver cells wherein asialoglycoproteins (AsG) are recognized by the asialoglycoprotein receptors, stating, “Binding of AsG to its receptor triggers an invagination of the cell surface membrane and eventually isolating the receptor-glycoprotein complex in an intracellular membrane-limited vesicle, an endosome. Endosomes fuse with lysosomes containing degradative enzymes, resulting in breakdown of the glycoprotein. The asialoglycoprotein receptor system represents a natural mechanism by which substances outside cells can gain access to the interior of cell.” (col 5, par 5).
Wu further describes that AsG can be used as a carrier targetable to deliver substances to the liver when bound. Furthermore, mitochondria are described as “delicate organelles which can be damaged by chemicals” that are negatively charged. The reference teaches creating a highly positively charged glycoprotein by linkage with polylysine (PL), consisting of polymer of the positively charged amino acid, lysine wherein by mixing this protein conjugate with mitochondria, the conjugate could bind to mitochondria in a strong, but non-damaging electrostatic (charge-charge) interaction forming protein-mitochondrial complexes (col 9, par 1; Fig. 2).
Wu does not teach the glycoprotein conjugate as transferrin, but rather asialoglycoproteins.
Wagner teaches transferrin-polycation conjugates as carriers for DNA to be uptaken by cells (title). The reference describes that the transferrin-iron complex being ubiquitous to all cells by means of receptor mediated endocytosis. The reference further describes the similarity of Polylysine- asialoglycoprotein conjugates have been used similarly to target DNA to liver cells (p 3410, par 2). Lastly, Wagner similarly states the protein conjugate with polylysine has cationic properties/positive charge that allows for a strong interaction with a negatively charge substance, e.g. DNA (Wagner), mitochondria (Wu).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the glycoprotein taught by Wu, i.e. asialoglycoprotein, with the glycoprotein taught by Wagner, i.e. transferrin, to arrive at the claimed invention of a mitochondrial-protein complex comprising: isolated mitochondria; and transferrin-poly-L-lysine (Tf-PL) conjugate. There would have been obvious motivation in doing so based on Wagner teaching the AsG-PL conjugates have been used similarly to target DNA to liver cells, and then showing the same with Tf-PL, and therefore it would obvious to use this conjugate with mitochondria that has been shown with AsG-PL by Wu. This is further supported by both glycoprotein receptors being found on the surface of cells that can be targeted by the respective glycoprotein for receptor-mediated endocytosis, and the use of PL to create a highly positive charged polypeptide to bind to a negative molecule which mitochondria are as taught by Wang. Altogether, it would have been clearly obvious to substitute AsG with the expectation that TF would perform similarly as it was shown prior, but with binding to DNA as opposed to mitochondria.
Regarding claim 3, dependent on claim 1, Wu teaches wherein the isolated mitochondria are extracted from mammalian cells (“The mitochondria can be obtained from any mammalian source, including from human cells and from rat cells. The mitochondria can be obtained from a cell from a healthy donor or isolated from a mammalian cell or tissue. In certain embodiments, the mammalian cell is a hepatocyte, white blood cell, stem cell or tissue.” (col 6, line 61-64)).
Regarding claims 4-6, all dependent on claim 6, the rejection to claim 3 above is applied herein as it describes the wherein the mammalian cells are liver cells (claim 4), wherein the mammalian cells are rodent cells (claim 5 and 6).
Regarding claim 8, dependent on claim 1, Wu teaches the mitochondrial complex as being part of a pharmaceutical composition (“Any suitable pharmaceutical compositions and formulations, as well as suitable methods for formulating and suitable route(s) and suitable site(s) of administration, are within the scope of this invention.” (col 7, line 13-15)).
Regarding claim 9, dependent on claim 1, Wu teaches wherein the pharmaceutical composition comprises one or more pharmaceutically acceptable excipients (“The pharmaceutical compositions can include a pharmaceutically acceptable carrier (i.e., an excipient)” (col 7, line 19-20)).
Regarding claim 37, dependent on claim 1, Wu teaches the mitochondrial-protein complex of claim 1 further comprising an endosomolytic escape protein (“To facilitate endosomal escape of internalized mitochondria into the cytoplasm prior lysosomal digestion, advantage was taken of a bacterial protein, listeriolysin 0 (LLO), which produces pores in endosomal membranes under conditions that exist in endosomes. … To target LLO to hepatocyte endosomes, an AsOR-LLO conjugate, AsOR was chemically coupled to LLO using a disulfide linker to allow cleavage under reducing conditions of endosomes, FIG. 12.” (col 20, line 64- col 21, line 5).
Regarding claim 40, dependent on claim 37, the rejection to claim 37 above is applied herein as it describes the composition comprising listeriolysin.
Regarding claim 48, Wu teaches a method of preparing a mitochondrial-protein complex comprising mixing isolated mitochondria; and asialoorosomucoid-poly-L-lysine (AsOR-PL) conjugate or transferrin-poly-L-lysine (Tf-PL) conjugate (Abstract, Claims 15-17). The claim 1 rejection above makes obvious the glycoprotein being transferrin.
Claim 2 is newly rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (WO 2016/138420, publication date September 1, 2016; of record) in view of Wagner et al. (Proceedings of the National Academy of Sciences 87.9 (1990): 3410-3414), as applied to claim 1 above, and further in view of Farah et al. (Journal of clinical and translational hepatology 7.1 (2019): 46; of record IDS).
Citations are from the National Stage U.S. Patent No. 10,537,594-B2. The National Stage is deemed an English language translation of the PCT. This is a new rejection necessitated by Applicants’ amendments to the claims in the response filed on May 30, 2025.
Regarding claim 1, the disclosure of Wu in view of Wagner is applied as in the 103 rejections above, the content of which is incorporated above, in its entirety.
Claim 2 is directed to the mitochondrial-protein complex of claim 1, having a mean particle
diameter of about 500 nm.
Wu teaches teach particle size of the mitochondria alone has a mean diameter of 700±57.8 nm, while the purified Fl-AsOR-PL-mitochondrial complexes had a mean diameter 1000±62 nm. The mean diameter of mitochondria increased by approximately 300 nm when complexed with AsOR-PL(Fig. 8; col 10, line 39-49).
Wu does not teach a mean particle diameter of about 500 nm, and furthermore the protein being transferrin.
Farah teaches a method for preparation of uniform and functional mitochondria from liver wherein the yield and purity is improved. This method teaches the mean particle sizes of mitochondria changes with centrifugation and filtration steps as seen in Table 1 (provided below). The mean diameter of mitochondria has been reported to be between 500 and 1000 nm, and the sequential filtration of the restrictive 1.2m and 0.8m filters increased the purity of preparations by maximizing the elimination of debris larger than mitochondria resulting in the size of 520 nm sized mitochondria (p 49, par 3).
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It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed to the purification and filtration method of Farah in order to obtain a uniform product of mitochondria. There is a reasonable expectation, that by using such method, one would arrive at the claimed invention of a mitochondria complex with an approximate diameter of 500 nm.
Conclusion
Claims 1-6, 8-9, 37, 40, 48 are rejected. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A RIGA whose telephone number is (571)270-0984. The examiner can normally be reached Monday-Friday (8AM-6PM).
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/MICHAEL ANGELO RIGA/Examiner, Art Unit 1634
/MARIA G LEAVITT/Supervisory Patent Examiner, Art Unit 1634