DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/10/2026 has been entered.
The amendment to the claims filed on 7/10/2026, does not comply with the requirements of 37 CFR 1.121(c) because the status is not properly listed for all claims. Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states (emphasis added):
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being cancelled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “cancelled” or “not entered” may be aggregated into one statement (e.g., Claims 1–5 (cancelled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn—currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
The amendment under consideration herein fails to comply with 37 CFR 1.121 because amended claim 4 is marked as being previously presented. The amendment could be therefore considered non-responsive. In the interest of compact prosecution, the amendment at issue will not be considered non-responsive, however, any future responses failing to comply with 37 CFR 1.121 will be held non-responsive and will not be considered.
Claims 1-8, 11, 17-18, 23, 29-33, 37-38, and 48-50, of record 7/10/2026, are pending and subject to prosecution. Claims 1, 4, and 7 are amended.
Status of Prior Rejections/Response to Arguments
RE: Rejection of claims 1-3, 11, 30, 48, and 50 under 35 U.S.C. 103 over Cotta-Ramusino et al. (WO 2019152519 A1) in view of Kim et al. (Scientific Reports, 2017), Davies et al. (Stem Cells, 2016), and Ju et al. (Biomaterials, 2019):
RE: Rejection of claims 1-8, 11, 17-18, 23, 29-30, 32-33, 37-38, 48, and 50 under 35 U.S.C. 103 over Cotta-Ramusino et al. (WO 2019152519 A1) in view of Kim et al. (Scientific Reports, 2017), Davies et al. (Stem Cells, 2016), and Ju et al. (Biomaterials, 2019), further in view of Rezvani et al. (WO 2018195339 A1):
RE: Rejection of claims 1-3, 11, 30-31, 48, and 50 under 35 U.S.C. 103 over Cotta-Ramusino et al. (WO 2019152519 A1) in view of Kim et al. (Scientific Reports, 2017), Davies et al. (Stem Cells, 2016), and Ju et al. (Biomaterials, 2019), further in view of Lange et al. (Journal of Cellular Physiology, 2007):
RE: Rejection of claims 1-3, 11, 30, and 48-50 under 35 U.S.C. 103 over Cotta-Ramusino et al. (WO 2019152519 A1) in view of Kim et al. (Scientific Reports, 2017), Davies et al. (Stem Cells, 2016), and Ju et al. (Biomaterials, 2019), further in view of Lawson et al. (Biochemical Engineering Journal, 2017):
The applicant asserts that the rejection of record fundamentally mischaracterizes the teachings of Davies et al. and Ju et al. (Applicant Remarks, page 8-10). Davies et al. teach BMSCs as therapeutic agents for inflammatory and autoimmune diseases, wherein PD-L1- and PD-L2-mediated T cell suppression would be desirable, thereby teaching away from knocking out these genes (Applicant Remarks, page 8-9). Ju et al. perform PD-L1 and PD-L2 knockout only in cancer cells and do not suggest deleting PD-L1/PD-L2 in MSCs or the immunological consequences of doing so (Applicant Remarks, page 9-10). The applicant also asserts that the combined teachings of the prior art fail to provide motivation to knock out PD-L1 and PD-L2 in MSCs in an anti-cancer context and that the combination is the product of impermissible hindsight reconstruction (Applicant Remarks, page 10-12).
The applicant’s arguments have been fully considered but are not found persuasive. 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). As previously set forth, the prior art references encompass of the claimed limitations and provide motivation for their combination.
Cotta-Ramusino et al. teach methods for editing cells, such as MSCs, by CRISPR in order to modulate chromosomal rearrangement, and the cells can be isolated from subjects suffering diseases including cancer (See Abstract and ¶7-8, 436-436, and 443). Kim et al. provide a basis for the use of early-passage MSCs due to the accumulation of mutations over time (See Abstract). The teachings of Davies et al. are relied upon for showing that secretion of soluble PD-L1 and PD-L2 by MSCs suppresses T cell activation and promotes irreversible hyporesponsiveness (See Abstract and fig. 2 and 4). While immunological disorders such as GvHD, diabetes, and ALS are mentioned in passing (See page 766, col. 2, ¶1), none of the experiments performed by Davies et al. in the study actually directly relate to or limit the findings to application only in such disorders. Further, the Significance Statement (reproduced in full) speaks in general terms about the effects of MSC-expressed PD-L1/PD-L2 on T cell activity:
Mesenchymal stromal cells (MSCs) exert immunomodulatory effects via contact-dependent and independent mechanisms. Here we report a novel mechanism for MSC suppression of T cells, through the secretion of programmed death 1 ligands (PD-L) 1 and 2. Licensing of MSCs to an anti-inflammatory phenotype, by exposure to pro-inflammatory cytokines, upregulates cell surface and secreted forms of both ligands. Blocking experiments confirm their role in suppressing T cell proliferation, interleukin-2 secretion, inducing hyporesponsiveness and cell death. We conclude that soluble PD-1 ligands play an important role in modulating MSC effects on T cell behavior and peripheral tolerance. (See Davies et al., page 766)
Regarding cancer and PD-L1/PD-L2, specifically, Ju et al. teach that the “PD-1/PD-L1 signaling pathway plays crucial roles in tumor immune escape by inhibiting the proliferation, survival and effector functions of T lymphocyte[s]” (See page 1, col. 1, ¶1), which would serve as sufficient motivation for one of ordinary skill in the art to prevent PD-L1/PD-L2 gene expression in engineered MSCs used in cancer therapy in order to avoid aiding immune escape. The rejections of record are therefore maintained.
Maintained Rejections
Claim Rejections - 35 USC § 103
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.
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 1-3, 11, 30, 48, and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Cotta-Ramusino et al. (WO 2019152519 A1), of record, in view of Kim et al. (Scientific Reports, 2017), of record, Davies et al. (Stem Cells, 2016), and Ju et al. (Biomaterials, 2019).
Regarding claims 1-3, 11, and 48: Cotta-Ramusino et al. teach methods for modulating chromosomal rearrangements using editing systems (See Abstract). Cells can be edited from subjects in need of gene alteration and having a disease such as cancer (See ¶121, 164, and 443). A cell can be edited at two or more target nucleic acids (which reads on “two or more endogenous genes”) by RNA-guided nucleases and gRNAs (which reads on “one or more guide RNAs for each of the two or more genes”) in RNP complexes (See ¶7-8, 10-12, and 42). The RNA-guided nuclease can be Cas9 or Cpf1 (See ¶172-173 and 176-177 and table 2). The cell can be an MSC (See ¶436-437). Nucleic acids encoding the genome editing system components and/or RNPs can be delivered to cells by electroporation (See ¶452 and 458-460). The RNP complexes can be delivered sequentially in any order (which reads on “two electroporation steps” and “a first delivering step comprises delivering guide RNAs that target one or more genes and a second delivering step comprises delivering guide RNAs that target one or more genes that are different from the one or more genes in the first delivering step”) (See ¶8, 10-12, 14, and 42). Oligonucleotide donor templates for repairing nuclease-mediated DNA breaks can comprise one or more stop codons (which reads on “disrupt expression”) (See ¶42 and 81). Cotta-Ramusino et al. do not expressly teach editing of the cells within a first, second, third, or fourth passage or the endogenous genes as being PD-L1 and PD-L2.
Kim et al. teach the accumulation of somatic mutations in MSCs during in vitro culture (which reads on “expansion”) (See Abstract). Kim et al. demonstrate that the abundance of mutations increases after passage 4 in two MSC lines during ex vivo expansion (See fig. 3A).
Davies et al. teach that expression and secretion of PD-L1 and PD-L2 by MSCs suppress T cell activation, downregulate IL-2 secretion, and induce hyporesponsiveness and cell death (See Abstract). Antibody blockade of PD-1 interaction with forms of PD-L1 and PD-L2 prevented anergy, suppression of proliferation, and apoptosis (See page 774, col. 1, full ¶1, and fig. 2 and 4).
Ju et al. teach methods and reagents for the CRISPR/Cas9-mediated simultaneous disruption of PD-L1/PD-L2, the expression of which is associated with tumor immune escape (See Abstract; page 1, col. 1, ¶1; and fig. 2 and 4-7). Ju et al. teach their approach as an alternative to blocking the interaction of PD-1 and PD-L1/PD-L2 with antibodies, which can have low target specificity, very long half-life, and a risk of autoimmune response in systemic administration (See page 2, col. 1, full ¶1).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method of Cotta-Ramusino et al. to comprise modification of the cells at an early passage, i.e., passage 1-4. One would be motivated to make this modification because Kim et al. teach that mutation numbers increase in at least one MSC line starting with passage 5 and that genomic instability may be responsible for malignant transformation in future in vivo use (See page 1, full ¶1 and fig. 3A). There would be a reasonable expectation of success in making this modification because the MSCs in the method of Cotta-Ramusino et al. could be readily modified during an early passage of expansion.
It also would have been obvious to modify the method of Cotta-Ramusino et al. to comprise CRISPR/Cas9-mediated editing of genes for knocking out expression of PD-L1 and PD-L2. One would have been motivated to make this modification because Davies et al. teach that PD-L1 and PD-L2 suppress T cell activation, downregulate IL-2 secretion, and induce hyporesponsiveness and cell death, which can be reduced by blocking the interaction of PD-1 with PD-L1 and PD-L2 (See Abstract; page 774, col. 1, full ¶1; and fig. 2 and 4-7). Additionally, Ju et al. teach that the use of antibodies for blocking this interaction can have low target specificity, very long half-life, and a risk of autoimmune response in systemic administration (See page 2, col. 1, full ¶1). There would be a reasonable expectation of success in making this modification because Ju et al. teach that expression of PD-L1 and PD-L2 can be successfully suppressed using CRISPR (See Abstract and fig. 2 and 4).
Regarding claim 30: Following the discission of claims 1-3, 11, and 48, Cotta-Ramusino et al. teach that the cells can be stored for later use following ex vivo modification (which reads on “the cells are expanded prior to… storage”) (See ¶439).
Regarding claim 50: Following the discussion of claims 1-3, 13, and 48, Cotta-Ramusino et al., modified by Kim et al., Davies et al., and Ju et al., do not expressly teach or suggest passaging the MSCs at least five times.
However, Kim et al. demonstrate that MSCs can be passaged about 6-8 times before population doubling time greatly increases and somatic mutations accumulate at a greater rate (See fig. 2-4). The results of Kim et al. suggest that, while MSCs start exhibiting deleterious effects after passage 4, they could still be readily passaged one or several additional times before the effects of passaging take a significant toll on cell genotype and phenotype.
Claims 1-8, 11, 17-18, 23, 29-30, 32-33, 37-38, 48, and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Cotta-Ramusino et al. (WO 2019152519 A1), of record, in view of Kim et al. (Scientific Reports, 2017), of record, Davies et al. (Stem Cells, 2016), of record, and Ju et al. (Biomaterials, 2019), of record, further in view of Rezvani et al. (WO 2018195339 A1), of record.
The teachings of Cotta-Ramusino et al., Kim et al., Davies et al., and Ju et al. are set forth in the rejection above and are incorporated herein in their entirety.
Regarding claims 4-8, 18, 23, 29, 32-33, and 37-38: Following the discussion of claims 1-3, 11, 30, 38, and 50, Cotta-Ramusino et al., modified by Kim et al., Davies et al., and Ju et al., render obvious the delivery of PD-L1- and PD-L2-targeting gRNAs and a gene editing nuclease to early-passage MSCs. Cotta-Ramusino et al. teach that one or more nucleic acid molecules other than the RNA-guided nuclease and gRNAs of the gene editing system can be delivered by a vector before or after one or more components of the editing system (which reads on “the steps of (b1) and (c1)” and “the steps of (b2) and (c2)” (See ¶458). Cotta-Ramusino et al. teach that the nucleic acid molecules can encode therapeutic proteins but do not teach the delivery of a vector encoding a heterologous antigen receptor or cytokine (See ¶458).
Rezvani et al. teach cells, which can be MSCs, engineered to express hIL-15 (which reads on “one or more heterologous cytokines”) and at least two antigen receptors that are CARs and/or TCRs (which read on “one or more heterologous antigen receptors”) (See ¶0006-0007, 0079, and 0097). The modified cells can be administered in an effective amount to a subject for treating an immune disorder (which reads on “immune-related disorder”) such as cancer (See ¶0014-0015). Rezvani et al. teach that cells expressing antigen receptors can be assessed for efficacy of killing target cells by cytotoxicity assays (which reads on “the cells are expanded prior to… analysis by one or more functional assays”) (See ¶00266).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method of Cotta-Ramusino et al., modified by Kim et al., Davies et al., and Ju et al., to comprise delivery of nucleic acids encoding hIL-15 and two antigen receptors, as taught by Rezvani et al., for treating cancer. One would be motivated to make this modification because Rezvani et al. teach that expression of IL-15 and multiple antigen receptors can reduce the risk of antigen-negative tumor escape (See ¶0028). There would be a reasonable expectation of success in doing so because Cotta-Ramusino et al. teach that the therapeutic protein-encoding nucleic acids can be delivered to cells before or after CRISPR components (See ¶458) and because Rezvani et al. teach that MSCs are appropriate for expressing such anti-cancer proteins (See ¶0007, 0079, and 0097).
It also would have been obvious to modify the method of Cotta-Ramusino et al., modified by Kim et al., Davies et al., and Ju et al., to incorporate the cytotoxicity assays taught by Rezvani et al. following modification of the cells. One would be motivated to make this modification because Rezvani et al. teach that the efficacy of killing target cells can be measured this way (See ¶00266), and such a modification could be readily made.
Regarding claim 17: Following the discussion of claims 1-8, 11, 18, 23, 29-30, 32-33, 37-38, 48, and 50, Cotta-Ramusino et al., modified by Kim et al., Davies et al., Ju et al., and Rezvani et al., render obvious the delivery of CRISPR components and nucleic acids for expression of IL-15 and antigen receptors to MSCs but do not expressly teach the origin of the MSCs.
Rezvani et al. teach that MSCs for modification can be obtained from bone marrow (See ¶0007, 0049, and 0079).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date to further modify the method of Cotta-Ramusino et al., modified by Kim et al., Davies et al., Ju et al., and Rezvani et al., to comprise bone marrow-derived MSCs, such as are taught by Rezvani et al. One would be motivated to make this modification because Rezvani et al. teach such cells as suitable for genetic modification (See ¶0007, 0049, and 0079), and such a modification could be readily made.
Claims 1-3, 11, 30-31, 48, and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Cotta-Ramusino et al. (WO 2019152519 A1), of record, in view of Kim et al. (Scientific Reports, 2017), of record, Davies et al. (Stem Cells, 2016), of record, and Ju et al. (Biomaterials, 2019), of record, further in view of Lange et al. (Journal of Cellular Physiology, 2007), of record.
The teachings of Cotta-Ramusino et al., Kim et al., Davies et al., and Ju et al. are set forth in the rejection above and are incorporated herein in their entirety.
Regarding claim 31: Following the discussion of claims 1-3, 11, 30, 48, and 50, Cotta-Ramusino et al., modified by Kim et al., Davies et al., and Ju et al., render obvious the delivery of PD-L1- and PD-L2-targeting gRNAs and a gene editing nuclease to early-passage MSCs but do not teach the MSCs as expanded in media comprising platelet lysate, L-glutamine, and/or heparin.
Lange et al. teach methods for expanding hMSCs wherein one medium (M3) comprises glutamine (which reads on “L-glutamine”), heparin, and platelet lysate (See page 19, col. 1, ¶5).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to further modify the method of Cotta-Ramusino et al., modified by Kim et al., Davies et al., and Ju et al., to comprise the medium taught by Lange et al. One would be motivated to make this modification because Lange et al. teach this medium as capable of supporting MSC expansion (See fig. 3-4), and such a modification could be readily made.
Claims 1-3, 11, 30, and 48-50 are rejected under 35 U.S.C. 103 as being unpatentable over Cotta-Ramusino et al. (WO 2019152519 A1), of record, in view of Kim et al. (Scientific Reports, 2017), of record, Davies et al. (Stem Cells, 2016), of record, and Ju et al. (Biomaterials, 2019) of record, further in view of Lawson et al. (Biochemical Engineering Journal, 2017), of record.
The teachings of Cotta-Ramusino et al., Kim et al., Davies et al., and Ju et al. are set forth in the rejection above and are incorporated herein in their entirety.
Regarding claim 49: Following the discussion of claims 1-3, 11, 30, 48, and 50, Cotta-Ramusino et al., modified by Kim et al., Davies et al., and Ju et al., render obvious the delivery of PD-L1- and PD-L2-targeting gRNAs and a gene editing nuclease to early-passage MSCs but do not teach expansion of the MSCs to at least 109 cells.
Lawson et al. teach the expansion of hMSCs in a 50 L bioreactor using microcarriers (See Abstract and page 50, col. 2, full ¶1-2). Thawed hMSCs were cultured for two passages as monolayers prior to bioreactor seeding (See page 51, col. 1, full ¶1). The bioreactor was inoculated with 1.5 × 104 cells/ml in 20 L (See page 51, col. 1, full ¶1), or 3 × 108 cells. Yields up to 1.29 ×1010 total cells (which reads on “large-scale expansion”) could be achieved per run (which reads on “passage) (See fig. 6A).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method of Cotta-Ramusino et al., modified by Kim et al., Davies et al., and Ju et al., to comprise the use of a bioreactor, as taught by Lawson et al., for expanding MSCs. One would be motivated to make this modification because Lawson et al. teach that hMSC therapies require larger-scale processing in order to generate the doses needed (See page 49, col. 2, ¶1). There would be a reasonable expectation of success in doing so because Lawson et al. teach that large amounts of MSCs can be produced from single runs (See fig. 6A), and because the cells in the method of Cotta-Ramusino et al., modified by Kim et al., Davies et al., and Ju et al., could be readily expanded in such a manner at low passage numbers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER S SPENCE, whose telephone number is 571-272-8590. The examiner can normally be reached M-F 8:30-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher M Babic, can be reached at 571-272-8507. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER S SPENCE/Examiner, Art Unit 1633
Prosecution Insights