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 .
Amendments
In the reply filed 11/14/2025, Applicant has amended Claims 1-2, 4-5, 12-15, 20, 27-29, 32-33, canceled claim 3, and added new claims, Claims 50-51.
Claims 1-2, 4-17, 20, 22-29, 31-33 and 50-51 are under consideration.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/21/2025 was filed after the mailing date of the non-final Office action on 8/18/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn 35 USC § 112
The prior rejection of Claims 5-6, 12-15, and 27-28 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in light of Applicant’s amendments of Claim 5 to describe the guide RNAs, arguments for Claim 6 to define about, amendments of Claims 12-15 to describe the delivery steps, amendments of Claims 13-15 to describe the electroporation steps, and amendments of Claim 27 to describe the gene.
New Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-11, and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 10 and 11 recite the limitation "the third time period" in regard to Claim 1. There is insufficient antecedent basis for this limitation in the claims because Claim 1 is silent to a third time period, thereby rendering instant claims indefinite.
Claim 22 recites the limitation "(b1) or (b2)" in regard to Claim 1. There is insufficient antecedent basis for this limitation in the claims because Claim 1 is silent to these substeps, thereby rendering instant claims indefinite.
Appropriate correction is required.
Withdrawn 35 USC § 103
The prior rejection of Claims 1-2, 8, 10-11, 16, 22-29, 31-33 under 35 U.S.C. 103 as being unpatentable over Rezvani et al. (WO2018/195339, filed 4/19/2018, published 10/25/2018, see IDS filed 8/09/2022) is withdrawn in light of Applicant’s amendment of Claim 1 to limit the second time period to 1-4 days, and the cell number to at least 10^9 modified NK cells for step c, which are limitations Rezvani are silent to.
The prior rejection of Claims 4-7 under 35 U.S.C. 103 as being unpatentable over Rezvani et al. (WO2018/195339, filed 4/19/2018, published 10/25/2018, see IDS filed 8/09/2022), in view of Cotta-Ramusino et al., (US 12,359,223, filed 1/30/2019, patented 7/15/2025) is withdrawn in light of Applicant’s amendment of Claim 1.
The prior rejection of Claim 9 under 35 U.S.C. 103 as being unpatentable over Rezvani et al. (WO2018/195339, filed 4/19/2018, published 10/25/2018, see IDS filed 8/09/2022), in view of Uherek et al. (Blood, 2002, 100:1265-1273) is withdrawn in light of Applicant’s amendment of Claim 1.
The prior rejection of Claims 12-15 under 35 U.S.C. 103 as being unpatentable over Rezvani et al. (WO2018/195339, filed 4/19/2018, published 10/25/2018, see IDS filed 8/09/2022), in view of Moriarity et al., (US2020/0208111, filed 6/09/2017, published 7/2/2020) is withdrawn in light of Applicant’s amendment of Claim 1.
The prior rejection of Claims 17 and 20 under 35 U.S.C. 103 as being unpatentable over Rezvani et al. (WO2018/195339, filed 4/19/2018, published 10/25/2018, see IDS filed 8/09/2022), in view of Shah et al. (PLoS One, 2013, 8:e776781) is withdrawn in light of Applicant’s amendment of Claim 1.
New 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-2, 8-16, 22-29, 31-33 and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Rezvani et al. (WO2018/195339, filed 4/19/2018, published 10/25/2018, see IDS filed 8/09/2022) in view of Uherek et al. (Blood, 2002, 100:1265-1273, prior art of record) and Moriarity et al., (US2020/0208111, filed 6/09/2017, published 7/2/2020, prior art of record).
Rezvani (WO2018) teaches in vitro methods for producing engineered NK cells.
In regard to claim 1, step (a), Rezvani (WO2018) teaches the NK cells are expanded for a first time period comprising an effective amount of artificial APCs and IL-2 [0096].
In regard to claim 1, step (b), Rezvani (WO2018) teaches the NK cells are modified by transduction to express a heterologous antigen receptor such as CAR that recognized the tumor antigen CS1 ([0020, 0028, 0106, 00260], See Example 1, and Fig. 1).
In regard to claim 1, step (c), Rezvani (WO2018) teaches the CAR modified NK cells are gene edited by CRISPR to disrupt expression of an inhibitory gene such as TGFbeta receptor 2 [0025, 0029, 0265], see Example 3, and Fig. 6).
However, Rezvani (WO2018) is silent to a preferred embodiment of a method for producing engineered NK cells in vitro including all three steps (a) to (c) in that order.
Nevertheless, it would have been obvious to one having ordinary skill in the art at the time the invention was made to practice said method steps (a) to (c) to produce engineered NK cells in vitro because each of the individual steps of the instant claim are independently presented by Rezvani (WO2018) as embodiments and are taught that they can be combined in various embodiments; therefore a combination of all the steps into a single embodiment would be apparent to an artisan skilled in cell therapy in light of the Supreme Court’s KSR decision (see MPEP 2143 Exemplary Rationale (A)). Regarding the rationale for combining prior art elements according to known methods to yield predictable results, all of the claimed steps were known in the prior art and one skilled in the art could have combined the steps as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of filing of the invention. Each of the steps (i.e., (a) expanding NK cells before modification to generate sufficient numbers for modification [0096], (b) transduction of CARs to modify the NK cells, and (c) followed by gene editing with delivery of Cas9 and gRNAs to disrupt genes ([0025], see Fig. 6) are taught by Rezvani (WO2018) and further they are taught in various combinations and are shown to be used in a method for producing CAR modified and gene edited NK cells in vitro. It would be therefore predictably obvious to use a combination of these three steps (a) to (c), in that order, in said method.
However, in regard to the gene editing step (c), although Rezvani (WO2018) teaches (b) first transducing the expanded NK cells with the CAR in a retroviral vector, and then (c) delivering Cas9 and gRNAs to disrupt the gene, they are silent to a time period of about 2 days between retroviral transduction and delivery of Cas9 and gRNAs.
With respect to claim 1 step (c), Uherek teaches method of producing engineered CAR NK cells. Specifically, Uherek teaches the method steps of transducing the NK cells with a CAR in a retroviral vector for a period of time of 48 hours before selection and sorting (p. 1266, Material and Methods, 2nd and 3rd para.).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to practice a method of producing engineered NK cells comprising first transducing with a CAR in retroviral vector and second disruption of an inhibitory gene by CRISPR Cas9 as taught by Rezvani, and include a period of time of about 2 days after retroviral vector transduction as taught by Uherek with a reasonable expectation of success. The ordinary skilled artisan would have been motivated to do so as taught by Uherek because the 48 hour waiting period allowed homogenous surface expression of the CAR at very high levels (p. 1267, Results, 1st para.).
However, in regard to the gene editing step (c), although Rezvani (WO2018) teaches electroporation as a delivery method in general [0185], they are silent to an electroporation method for delivery of Cas9 and gRNAs, and as many as 10^9 NK cells to be gene edited.
With respect to instant claim 1 step (c), Moriarity teaches methods for producing engineered NK cells. Specifically, Moriarity teaches methods of delivering Cas9 and gRNA to NK cells by electroporation, and provides working examples wherein the number of NK cells to be electroporated are about 3x10^6 (p. 14, Examples 2A-2D, [0238]). Nevertheless, Moriarity provides alternative examples, wherein the number of NK cells to be electroporated in a single batch range from about 3x10^5 to 1x10^6 with varying effects on cell viability (p. 14, Table 3). Thus, Moriarity establishes cell number as a results effective variable.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to practice a method of producing gene edited NK cells comprising delivering Cas9 and gRNAs to NK cells as taught by Rezvani (WO2018), and choose electroporation of about 3x10^6 NK cells as taught by Moriarity with a reasonable expectation of success. The ordinary skilled artisan would have been motivated to do so since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
However, in regard to as many as 10^9 NK cells to be gene edited in step (c), Rezvani (WO2018) teaches the effective dose of cells to treat a human subject is between 3.8x10^9 and 3.8x10^10 [0230]. Accordingly, it would have been obvious to conduct the electroporation steps for delivery of Cas9 as taught by Moriarity until as many as 10^9 NK cells were gene edited so as to have “clinically relevant numbers (up to 1010)” of CAR modified gene edited NK cells suitable for human applications [0139]. Note that the phrase “as many as” does not appear to require 10^9 NK cells, nor that 10^9 NK cells be gene edited in a single electroporation step.
In regard to claim 2 as per steps (b) and (c), as stated supra, Rezvani (WO2018) teaches producing gene edited NK cell by (b) transducing the expanded NK cells with the CAR, and then (c) delivering Cas9 and gRNAs to disrupt the TGFBR2 gene.
In regard to claim 8, as per step (a), Rezvani (WO2018) teaches the NK cells are expanded by aAPCs and IL-2 for 7 days [0096, 0140].
In regard to claim 9, as per step (c), as stated supra, Rezvani (WO2018) in view of Uherek make obvious to include a period of time of about 2 days after retroviral vector transduction of step (b).
In regard to claims 12-15, as stated supra in regard to step (c), both Rezvani (WO2018) and Moriarity teach electroporation as the delivery method, and Rezvani (WO2018) in view of Moriarity make obvious deliveries as many as 10^9 cells in batches of electroporation using about 10^5-10^6 cells.
In regard to claims 16 and 22, Rezvani (WO2018) teaches the NK cells before and after expansion steps are CD3-depleted [0096].
In regard to claim 23, Rezvani (WO2018) teaches the NK cells in step (a) are derived from cord blood [0020, 0096].
In regard to claims 24-26, as stated supra, Rezvani (WO2018) teaches the heterologous antigen receptor is a CAR that recognizes the tumor antigen CS1.
In regard to claims 27 and 28, as stated supra, Rezvani (WO2018) teaches disruption of the inhibitory gene TGFBR2.
In regard to claims 10-11 and 50, as per after step (c), Rezvani (WO2018) teaches following genetic modification the cells are expanded for a third time period comprising an effective amount of artificial APCs and IL-2 [0140], and makes obvious doing so in order to have sufficient numbers suitable for human application [0139]. In regard to the expansion time, Rezvani (WO2018) teaches the NK cells are expanded by aAPCs and IL-2 for 7 days [0096, 0140].
In regard to claims 29 and 31, Rezvani (WO2018) teaches that after the expansion step, the expanded and CD3-depleted cells are further characterized to determine the percentage of CD56+ NK cells [0096]. Furthermore, Rezvani (WO2018) teaches flow cytometry for determining the percentage of CD56+ NK cells (Fig. 1). Accordingly, it would have been obvious to perform a CD56+ flow cytometry analysis after a third period of time, so as to determine the percentage of CD56+ for infusion.
In regard to claims 32 and 33, Rezvani (WO2018) teaches that after propagation, the genetically modified NK cells are cryopreserved for later infusion [0139, 0140].
Hence, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
RESPONSE TO ARGUMENTS
Applicant's arguments filed on 11/14/2025 are acknowledged.
First, Applicant argues that the claimed method is directed to large scale production of at least 10^9 modified and gene edited NK cells, wherein there is a period of time of 1-4 days between the modification and gene editing steps. Applicant argues that Rezvani does not teach this high-throughput editing of NK cells or the periods of time. Furthermore, Applicant argues that large scale editing of NK cells is technically challenging, and the inventors achieved high levels of both modified and edited NK cells, without killing large quantities of cells. Applicant argues that Rezvani does not provide a reasonable expectation of success in practicing a method that gene edits at least 10^9 NK cells with the claimed periods of time.
In addition, Applicant argues that in regard to the gene edits at least 10^9 NK cells, Moriarity only teaches electroporation of only 3x10^6 NK cells, and does not explore scaling a single electroporation to 10^9 NK cells.
Second, Applicant argues that in regard to period of time, the secondary reference of Uherek would fundamentally compromise the clinical applicability of Rezvani’s method because Uherek uses a NK-92 cell line, that must be irradiated prior to clinical application with a limited in vivo persistence and therapeutic application.
Applicant's arguments have been fully considered but they are not persuasive.
In response to Applicant's first argument, as a first matter, if the references fail to show certain features of Applicant’s invention, it is noted that the features upon which Applicant relies (i.e., large scale electroporation of 10^9 NK cells in a single step) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As a second matter, the electroporation of about 10^5-10^6 NK cells to make as many as 10^9 gene modified NK cells was well within the purview of a person of ordinary skill in the art based on the teachings of Moriarity. Furthermore, absolute certainty of success is not required in a case of obviousness, only that there was a reasonable expectations of success of gene modification of as many NK cells as Moriarity in the hands of Rezvani.
In response to Applicant’s second argument, a 35 U.S.C. § 103(a) based test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In instant case, although Rezvani does contemplate the use of the NK-92 cell line, the working examples of Rezvani use primary NK cells derived from cord blood that are clinically relevant. Accordingly, a person of ordinary skill would have understood that when following the direction of Uherek to wait a period of time of about 2 days after lentiviral transduction of NK cells to ensure maximum CAR expression, they would NOT have substituted the clinically relevant lentiviral transduced primary NK cells of Rezvani for the lentiviral transduced NK-92 cell line of Uherek.
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Rezvani et al. (WO2018/195339, filed 4/19/2018, published 10/25/2018, see IDS filed 8/09/2022) in view of Uherek et al. (Blood, 2002, 100:1265-1273, prior art of record) and Moriarity et al., (US2020/0208111, filed 6/09/2017, published 7/2/2020, prior art of record), as applied to claim 1, in further view of Cotta-Ramusino et al., (US 12,359,223, filed 1/30/2019, patented 7/15/2025, prior art of record)
As discussed previously, Rezvani (WO2018) teaches methods of producing engineered NK cells comprising a transduced CAR and disruption of an inhibitory gene by CRISPR Cas9.
In regard to claims 4-7, although Rezvani (WO2018) teaches that more than one gene is to be disrupted, such as the inhibitory gene TGFbR2 and the immune checkpoint gene CISH [0009, 0029], they are silent to the method steps wherein the gRNA targeting the first gene (e.g., TGFBR2) are delivered in a first step, and then the gRNAs targeting the second gene (e.g., CISH) are delivered in a second step, and the first and second delivery steps are separated by at least about 2-3 days.
In regard to claims 4 and 5, Cotta-Ramusino teaches the sequential gene editing of immune cells, including NK cells, comprising first delivery step comprising delivering by nucleofection (i.e., electroporation) a first gRNA that targets one gene, waiting a period of time sufficient for repair of the first cleavage site, followed by a second delivery step comprising delivering a second guide RNA that targets a different gene (col 3, col 10, , col 25, lines 41 & 61, col 26, last para., col 112-113, see Example 3). In regard to claims 6 and 7, Cotta-Ramusino teaches the period of time between delivery steps is at least about 48-72 hours (col 3, lines 55-56, col 10, line 29, Claims 6 and 9 of Cotto-Ramusino, see also Example 3)
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have practice the method of producing gene modified NK cells with two CRISPR Cas9 mediated gene disruptions by electroporation as taught by Rezvani (WO2018) in view of Moriarity, and to have performed the two gene disruptions by two delivery steps, where there was about 2-3 days after the first delivery step as taught by Cotta-Ramusino with a reasonable expectation of success. The ordinary skilled artisan would have been motivated to do so for several reasons. First, the genus of options for generating a double modified cells are either sequential or parallel. Since the size of this genus is so small, one of ordinary skill in the art would have immediately envisioned the sequential option. Furthermore, Cotta-Ramusino teaches a 2-3 day waiting period after CRISPR modification of cells in order to allow repair of the first cleavage site. Importantly, Cotta-Ramusino teaches that this reduces the reduces the risk of unwanted translocation events (Summary, col 2, Example 3, col 113, see Fig. 8).
Hence, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
RESPONSE TO ARGUMENTS
Applicant's arguments filed on 11/14/2025 are acknowledged and have been addressed above.
Claims 17, 20 and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Rezvani et al. (WO2018/195339, filed 4/19/2018, published 10/25/2018, see IDS filed 8/09/2022) in view of Uherek et al. (Blood, 2002, 100:1265-1273, prior art of record) and Moriarity et al., (US2020/0208111, filed 6/09/2017, published 7/2/2020, prior art of record), as applied to claims 1 and 50, in further view of Shah et al. (PLoS One, 2013, 8:e776781).
As discussed previously, Rezvani (WO2018) teaches methods of producing engineered NK cells comprising a transduced CAR and disruption of an inhibitory gene by CRISPR Cas9.
In regard to claims 17, 20 and 51, although Rezvani (WO2018) teaches the NK cells are expanded for a first time period comprising an effective amount of artificial APCs and IL-2 [0096], they are silent to the ratio of APCs to NK cells, as well as the concentration of IL-2.
Nevertheless, Rezvani (WO2018) cites the methods of Shah et al. (2013) for stimulation of the NK cells [0096]
In regard to claims 17, 20 and 51, Shah teaches a multi-stage method for expanding NK cells from cord blood mononuclear cell fraction (MNCs) with artificial APCs and IL-2, wherein the ratio of aAPC to MNC is 2:1 and the concentration of IL-2 is 100u/ml.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to practice a method of producing engineered NK cells comprising expanded the NK cells for a first time period comprising an effective amount of aAPCs and IL-2 as taught by Rezvani (WO2018), and use a ratio of aAPC to NK cells of 2:1 and the concentration of IL-2 of 100u/ml as taught by Shah with a reasonable expectation of success. The ordinary skilled artisan would have been motivated to do so for several reasons. First, as stated supra, Resvani (WO2018) explicitly cites the prior method of Shah for methods of expanding NK cells with aAPCs and IL-2. Second, although Shah teaches a 2:1 ratio of aAPCs to MNC, at the end of the expansion and depletions steps, Shah teaches that about 96% of the cells were CD56+ NK cells (p. 4, 2nd para.). Thus, Shah effectively teaches a 2:1 ratio of aAPCs to NK cells.
Hence, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
RESPONSE TO ARGUMENTS
Applicant's arguments filed on 11/14/2025 are acknowledged and have been addressed above.
Conclusion
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 extension fee 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 date of this final action.
No claims are allowed.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARTHUR S LEONARD whose telephone number is (571)270-3073. The examiner can normally be reached on Mon-Fri 9am-5pm.
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/ARTHUR S LEONARD/Examiner, Art Unit 1631