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
1. Applicant’s amendment and response filed 12/29/25 is acknowledged and has been entered.
Claim 17 is an independent claim.
2. Applicant is reminded of Applicant's election of Group II and species of mature human T cells derived from cord blood in Applicant’s amendment and response filed 9/9/25.
Claims 17-22 and newly added claims 25-34 are presently being examined as they read upon the elected species mature of human T cells derived from cord blood and upon peripheral blood mature T cells.
3. 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.
4. Claims 17-22 and 25-34 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
This is a new ground of rejection necessitated by Applicant’s amendment filed 12/29/2025.
a) Claim 20 recites “wherein in step (2”), the CAR molecule comprises the signal peptide, the extracellular antigen recognition domain, the transmembrane region, and the intracellular costimulatory domain”. These limitations lack antecedent basis in instant base claim 17 as the said base claim does not recite a signal peptide, an extracellular antigen recognition domain, a transmembrane region, or an intracellular costimulatory domain. Applicant may wish to amend the claim to replace the indicated recitations of “the” with ‘a’ or ‘an’.
b) Claim 25 recites the limitation “wherein in step (1”), the T cell is activated through incubation of magnetic beads coated with the anti-human CD3 antibody, the anti-human CD28 antibody, and the anti-human CD2 antibody”. These limitations lack antecedent basis in instant base claim 17 because there is no prior recitation of an anti-human CD3 antibody, an anti-human CD28 antibody, or an anti-human CD2 antibody in base claim 17. Applicant may wish to amend the claim to replace the indicated recitations of “the” with ‘an’.
c) Claim 17 is indefinite in the recitation of “a nucleic acid encoding a CAR molecule expressing a tumor-associated antigen” because it is not clear what is meant, i.e., how a CAR (a protein) can express a tumor-associated antigen. Applicant may wish to amend the claim to recite “a nucleic acid molecule encoding a CAR molecule that targets a tumor-associated antigen”. See page 4 of the instant specification at lines 8-11 for support.
5. 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.
6. For the purpose of prior art rejections, the filing date of the instant claims is deemed to be the filing date of PCT/CN2020/118265, i.e., 9/28/20, as China 201911382947.2 is not in the English language.
7. 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.
8. Claims 17-22, 25-27 and 30-34 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (Science. 2010 Jul 2;329(5987): 85-89, IDS reference) in view of Ying et al. (Nature Medicine, 2019, 25: 947-953, of record), Green, L (Bioscience Horizons, 2014, 7: 1-10, of record), Boissel et al. (Leukemia Research, 2009, 33: 1255-1259, of record), Hosokawa et al. (Nature Immunology, 2018, 19: 1427-1440, of record), and Su et al. (Nature.com/Scientific Reports, 2015, 6:20070, DOI: 10.1038/srep20070, pages 1-13), as evidenced by admissions in the specification at Examples 1-8, page 5 at lines 1-2, page 5 at lines 3-6, page 5 at lines 9-12 and page 5 at lines 19-22, and by Jiang et al. (Biomarker Research, 2022, 10:13, pages 1-22, IDS reference).
This is a new ground of rejection necessitated by Applicant’s amendment filed 12/29/2026. Applicant has amended instant base claim 17 and has added new claims.
Independent claim 17 recites: A method for preparing an engineered immune killer cell the cell according to claim 1, comprising:(1") activating a human T cell; (2") transfecting the activated human T cell with a nucleic acid molecule encoding a CAR molecule expressing a tumor-associated antigen or a nucleic acid molecule encoding a tumor-specific TCR molecule along with or followed by performing BCL1lB gene knockout; and (3") culturing the cell obtained in step (2") in a T cell culture mediums wherein the engineered immune killer cell expresses functional TCR, CD3, and NKp30;and wherein the engineered immune killer cell downregulates expression of transcription factors LEF1 and TCF7 and upregulates expression of NOTCH, AP1, ID2, TBX21, and NFIL3 compared with the T cell from which the engineered immune killer cell is derived.
Claim interpretation: The instant specification discloses throughout that a T cell culture medium includes IL-2 (e.g., page 6 at line 13), so this said limitation is being interpreted as a culture medium comprising IL-2 (which was known in the art prior to the filing date of the claimed invention to be T cell growth factor). As claim 17 is indefinite in the recitation of “transfecting the activated human T cell with a nucleic acid molecule encoding a CAR expressing a tumor-associated antigen” as is enunciated above in this office action, in the interest of compact prosecution, the said limitation is being interpreted as meaning transfecting the activated human T cell with a nucleic acid molecule encoding a CAR (chimeric antigen receptor) having specificity for a tumor-associated antigen. The “wherein” clauses recited in instant base claim 17 and in dependent claims 31-33 that recite cell phenotype are being interpreted as the phenotype that is inherently induced by performing the method steps recited in instant base claim 17 as per the disclosure in the instant specification and figures.
Li et al. teach that when Bcl11b gene was deleted (knocked-out) in mouse T cells from all developmental stages, these T cells acquired NK cell properties (especially page 86 at the paragraph spanning columns 2-3). Li et al. also teach that they named these killer cells that were reprogrammed from T cells “induced T-to-natural killer” or “ITNK” cells (paragraph spanning pages 85-86). Li et al. further teach that ITNKs could be produced from mature T cells, including CD4+T cells, CD8+T cells, and gd T cells, and many ITNKs (NKp46+) were found growing in CD8+T cell cultures which retained TCRb on the cell surface (e.g., page 85 at the middle column starting at the full paragraph, paragraph spanning pages 85-86). Li et al. teach that these induced T-to-natural killer (ITNK) cells were morphologically and genetically similar to conventional NK cells, were able to kill tumor cells in vitro, and effectively prevented tumor metastasis in vivo in well-established models for studying experimental cancer therapies (Abstract, Fig. 3E, 3F, and page 89 at column 1 at the first full paragraph).
Li et al. teach that NK cell-based therapies hold promise in cancer treatment. The ITNK cells that are produced by reprogramming T cells can be extensively expanded but are not malignantly transformed, killed tumor cells in vitro and eliminated metastatic cells in mice, but did not attack normal cells (last paragraph of reference). Li et al. teach that these ITNK cells can serve as a new cell source for cancer immunotherapy and other cell-based therapies (last paragraph of reference). Li et al. teach that because T cells are much easier to obtain from human patients than NK cells, deletion of BCl11b in T cells may provide a source of easy-to-grow NK cells for cell-based anti-tumor therapies (abstract) (i.e., an inherent teaching of reprogramming human T cells in vitro). Li et al. teach that ITNKs could be produced from mature T cells, that many ITNKs were found growing in CD8+ T cell cultures which effectively killed stromal cells, retained TCRb on their surface, had lost both BCL11b alleles and had unique rearranged TCR b loci. Li et al. teach that IL-2 was clearly able to promote proliferation of ITNKs and such culturing was able to produce 10X more ITNK cells than were present without IL-2 (last two paragraphs on page 86). See entire reference.
Although Li et al. teach reprogramming of human T cells involving deletion of the BCL11B gene in vitro, they do not teach pre-activating human T cells in vitro, nor subsequently transfecting them with a nucleic acid encoding a CAR or a TCR having specificity for a tumor-associated antigen, nor subsequently to both the step of T cell activation and the step of nucleic acid encoding CAR transfection or subsequently to the step of T cell activation concurrently performing the BCL11B knockout via a targeted method involving CRISPR/Cas9 along with the said nucleic acid encoding CAR transfection.
Ying et al. teach making CAR-T cells from mature human T cells, wherein the CAR advantageously confers specificity for a tumor-associated antigen. Ying et al. teach making the CAR-T cells by isolating peripheral blood cells comprising mature human T cells or by isolating mature human T cells from PBMCs, pre-activating them using anti-CD3/anti-CD28 Dynabeads (i.e., magnetic beads) in medium supplemented with IL-2 (e.g., Fig. 1 legend and CAR T cell manufacture section), then transducing them with a vector encoding the CAR, wherein the CAR comprises an anti-CD19 scFv (i.e., an extracellular antigen recognition domain specific for a tumor-associated antigen), a transmembrane domain and an intracellular costimulatory domain in N-terminal-to-C-terminal order (e.g., Fig. 1 and legend). Ying et al. teach that their study demonstrates an improved version of CD19-BBz CAR T cells that are effective in treatment of refractory BCL that do not cause neurological toxicity or severe CRS (cytokine release syndrome), representing a safe and potent anti-CD19 CAR T cell therapy (last paragraph). Note that CARs inherently comprise a signal peptide for cell surface trafficking. See entire reference.
Green teaches using an anti-CD2/anti-CD3/anti-CD28 bead based T cell proliferation assay, and the use of the said bead resulted in efficient T cell proliferation with a bead to cell ratio of 1:2, wherein the beads coated with all three antibodies delivered a stronger proliferative signal through the CD3 and CD28 co-receptors. Green further teaches that the antibodies/beads were comprised in the Miltenyi Biotec kit as MACSiBeadTM. (see entire reference, especially page 4 at the first full paragraph and page 7 at the paragraph spanning columns 1-2).
Boissel et al. teach transfecting mRNA encoding an anti-CD19 CAR comprising an N-terminal signal sequence, an anti-CD19 scFv (i.e., an antibody fragment that targets a tumor-associated antigen), a CD8 transmembrane domain, and a CD3 zeta intracellular signaling domain into NK cells for treatment of CLL (chronic lymphocytic leukemia). Note that the CAR-NK cells were cultured in IL-2. Boissel et al. teach in general, genetically engineering NK cells to express CARs that recognize specific antigens on the tumor surface, thereby triggering the release of cytotoxic molecules. Boissel et al. also teach retargeting NK cytolytic activity to the ErbB2 (i.e., Her2/neu) tumor antigen on cancer cells (reference 10) (e.g., abstract, methods, see entire reference).
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to have used the beads taught by Green, including at a bead to cell ratio of 1:2 as taught by Green, or a magnetic bead version of the three antibody specificities (anti-human CD3, anti-human CD28, and anti-human CD2 antibodies) in medium comprising human IL-2 thereof similar to that taught by Ying et al. to activate and expand human T cells.
One of ordinary skill in the art would have been motivated to do this in order to activate and expand the T cells as a source of activated human mature T cells for subsequent CAR-encoding nucleic acid transfection, and with a reasonable expectation of success in doing so, particularly given the teaching of Ying et al. of activating the T cells prior to transfecting them with a nucleic acid molecule encoding a CAR.
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to have made a CAR-T cell having specificity for a tumor associated antigen using the activated T cells such as is taught by Ying et al.
One of ordinary skill in the art would have been motivated to do this, and with a reasonable expectation of doing so, in order to obtain CAR-T cells that can target a specific tumor-associated antigen on a tumor.
Hosokawa et al. teach the use of CRISPR/Cas9 system to mediate targeted deletion of the Bcl11b gene in murine pro-T cells using an sgBcl11b (Fig. 5a). Hosokawa et al. teach the acute effects of Cas9-dependent deletion of Bcl11b (Supplementary Figure 8). (See entire reference.)
Su et al. teach that the CRISPR-Cas9 genome editing is advantageous to use for gene knockout, including in human primary T cells intended for adoptive T cell transfer therapy of cancer, including CAR-T cells or TCR-T cells, as it is targeted, demonstrated as an easy-handle, highly specific, efficient approach for engineering eukaryotic genomes (see entire reference, especially page 2 at the first two paragraphs and discussion section).
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to have used the CRISPR/Cas9 technology taught by Hosokawa et al. and Su et al. in order to perform the knockout of the BCL11b gene in the activated human mature T cells, either concurrently with the step of nucleic acid (encoding a CAR or encoding a TCR that targets a tumor-associated antigen) transfection, or subsequently thereto.
One of ordinary skill in the art would have been motivated to do this, and with a reasonable expectation of success in doing so, in order to employ a suitable method for knocking out a gene, particularly one such as CRISPR/Cas9 technology that is taught by Su et al. to be advantageous to use for gene knockout, including in mature human primary T cells intended for adoptive T cell transfer therapy of cancers, as it is a targeted technique and demonstrated to be an easy, highly specific, and efficient approach for engineering eukaryotic genomes. One of ordinary skill in the art would have been motivated to do this in order to make an anti-CD19 CAR-expressing induced T-to-natural killer (ITNK) cells or to make a TCR-T ITNK cell from easily obtained human peripheral blood T cells that are morphologically and genetically similar to conventional NK cells and that are able to target to and kill CD19-expressing tumor cells, and with a reasonable expectation of success in doing so, particularly since the primary art reference teaches the advantage of the Bcl11b knockout cells are that they derive from T cells that are more easily obtained than are human NK cells, and particularly in light of the teaching of the primary art reference that as T cells are much easier to obtain from human patients than NK cells, deletion of Bcl11b in T cells may thus provide a source of easy-to-grow NK cells for cell-based antitumor therapies.”
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to have cultured the T cell in a medium that comprises IL-2 after the BCL11b gene knockout and transfection with the nucleic acid molecule encoding the CAR. One of ordinary skill in the art would have been motivated to do this in order to maintain the cells and since IL-2 was known in the art as a T cell growth factor, because the CAR-NK cells taught by Boissell et al. were also cultured in IL-2, and because the primary art reference teaches that IL-2 was clearly able to promote proliferation of ITNKs and such culturing was able to produce 10X more ITNK cells than were present without IL-2.
With regard to the phenotype recited in instant base claim 17 as well as the phenotype upregulation of the full complement of markers recited in instant dependent claims 31- 33, although the art references do not explicitly teach these said phenotypes, these phenotypes are expected properties of the engineered immune killer cells as is further evidenced below since the method of making the mature human BCL11b knockout cells is the same as that recited in the instant claims (absent the transfection of the encoding nucleic acid for a CAR), and the instant specification discloses that mature human T BCL11b knockout cells (without transfection of encoding nucleic acid molecule for CAR expression) possess these said phenotypes (see Examples 1-8 of the instant specification that disclose phenotype prior to CAR-encoding nucleic acid molecule transfection); that is, the instant specification evidences that the recited cell phenotype is a result of the T cell activation and subsequent BCL11b knockout.
Although the reference is silent about the said phenotypes, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories 58 USPQ2d 1508 (CAFC 2001). “{i}t is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 201 USPQ 658 (CCPA 1979). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145.
The admission in the specification at page 5 at lines 1-2 is that the reprogrammed immune killer lymphocytes express the NK cell markers CD11c, NKG2D, and CD161 when made by the method disclosed in Examples 1-8 of the specification, i.e., a method comprising activating mature human T cells with magnetic beads coated with anti-human CD3, anti-human CD28, and anti-human CD2 antibodies mixed with T cells, knocking out BCL11B (by CRISPR/CAS9), and culturing the activated cells in a T cell culture medium, including wherein the activation is performed using an anti-human CD3 antibody, and anti-human CD28 antibody and an anti-human CD2 antibody, followed by a culturing step wherein the medium contains IL-2. This is the same method that is recited in the instant claims.
The admission in the specification at page 5, lines 3-6 is that the reprogrammed immune killer lymphocyte downregulates expression of transcription factors LEF1 and TCF7 and upregulates expression of NOTCH, AP1, mTOR, ID2, TBX21, and NFIL3 as compared with the nonprogrammed T cell upon the method disclosed in said Examples 1-8. (The downregulated phenotype recited in instant base claim 17 is the same as disclosed in the instant specification using the same method that is recited in the claims and taught by the art, while the upregulated phenotype recited in instant base claim 17 is a subset of these (i.e., NOTCH, AP1, IDS, TBX21, and NFIL3).
The admission in the specification at page 5 at lines 9-12 is that the reprogrammed immune killer lymphocyte upregulates gene expression of CSF2, FOS, MAPK12, MAP3K8, IFNg, NFKBIA, MAPK11, IL-10, and TEC which are associated with the TCR-mediated signal transduction. This is the same phenotype recited in instant dependent claim 32.
The admission in the specification at page 5 at lines 19-22 is that the reprogrammed immune killer lymphocyte upregulates gene expression of PRF1, CSF2, ICAM1, CD244, PLCG2, IFNG, FCER1G, GZMB, NCR2, NCR1, KIR2DL4and SYK which are associated with the NK killing toxicity-associated signal transduction. This is the same phenotype recited in instant dependent claim 33.
The admission in said Examples 1-8 of the specification is that the mature human T cell BCL11b knockout cells that have not been transfected with a nucleic acid molecule encoding a CAR possess these said phenotypes recited in the instant claims; that is, the instant specification evidences that the recited cell phenotypes are a result of the activation of the T cells (using bead bound magnetic beads coated with anti-human CD3, anti-human CD28 and anti-human CD2 antibodies mixed with T cells and culture medium comprising human IL-2) and knockout of BCL11b (not the transfection with encoding nucleic acid molecule encoding a CAR).
In addition, evidentiary reference Jiang et al. (Biomarker Research, 2022, 10:13, pages 1-22, IDS reference that lists a subset of the present inventors as the authors) teaches that human mature induced-T-to-NK cells retain a functional TCR and that subtypes also express CD8, CD3, NKp46, NKp30, NKp44 or CD4, CD3, Nkp30, gdTCR+ subgroup that is also NKp30+ through the same method of activation (minus the anti-CD2 stimulation) and the BCL11b knockout using CRISPR-Cas9 (i.e., the cells possess functional TCR and NK cell receptors, e.g., last paragraph of reference, introduction, page 10 at column 1, Figure 4A, page 10 at column 1). Jiang et al. also teach that the ITNKs downregulated LEF1 and TCF7 (abstract). (see entire reference).
Therefore, the claimed method appears to be similar to the method of the prior art absent a showing of unobvious differences. Since the Patent Office does not have the facilities for examining and comparing the method of the instant invention to those of the prior art, the burden is on Applicant to show an unobvious distinction between the method of the instant invention and that of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Instant dependent claim 34 is included in this rejection for the same reasons, and because the primary art reference teaches that induced T-to-natural killer or ITNK cells could be produced from mature T cells, including CD4+T cells, CD8+T cells, and gd T cells, and many ITNKs (NKp46+) were found growing in CD8+T cell cultures, and due to the teachings of evidentiary reference Jiang et al. who evidence two of the recited phenotypes recited in claim 34 using the same method steps as those recited in the instant claims.
Instant dependent claim 30 is included in this rejection because the culturing step(s) in the instant rejection comprise medium, not cells.
Instant dependent claims 26 and 27 are included in this rejection because CD19 is a tumor-associated antigen that is a tumor surface antigen in the B cell chronic lymphocytic leukemia taught by the secondary art references above (and is also expressed on normal B cells) (note that claim 26 recites “wherein the tumor-associated antigen is a tumor surface antigen” and dependent claim 27 recites “wherein the tumor-associated antigen is CD19”).
Instant dependent claim 26 is also included in this rejection because Boissel et al. teach the retargeting of NK cell cytolytic activity to ErbB2 tumor antigen-expressing cancer cells; thus it would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to have made and transfected a CAR or a TCR having a targeting region/specificity for ErbB2 tumor antigen. One of ordinary skill in the art would have been motivated to do this in order to engineer an immune killer cell with specificity to target an ErbB2-expressing tumor, and with a reasonable expectation of success in doing so.
Applicant’s arguments (of record in the amendment and response filed 12/29/25 on pages 9-12) have been fully considered but are not persuasive. Applicant’s arguments are directed to the prior rejection of record. However, the Examiner will address Applicant’s arguments to the extent they pertain to the instant rejection.
Applicant argues that the retained TCRb on the cell surface is an observational finding not the pursued technical effect. However, the primary art reference indicates that the TCRb chain was expressed at the cell surface and that chain was rearranged (as in a functional TCR). In addition, the art cited in this rejection (i.e., Ying et al. and Boisell et al.) indicates that a CAR comprising a CDR3 zeta intracellular signaling domain (that is present and involved in TCR signaling) would signal in either of a T cell or an NK cell. The art references perform the same steps as are recited in the instant claims, so the art TCR must necessarily also be functional. (Even if this latter point were not so, the teaching of a rearranged and cell surface expressed TCRb chain and a functional CDR3 zeta intracellular signaling domain indicate, more likely than not, that the TCR is functional.) The instant rejection aims to use T cells as a source for cells with NK-like activity after BCL11b knockout, while the antigen-binding region of the CAR confers the anti-tumor specificity onto the CAR-transfected cells (or the TCR confers the anti-tumor specificity onto the TCR-transfected cells). As is enunciated in the instant rejection, the instant invention does not purport to guarantee that a BCL11b knockout cell maintains “robust T cell identity” (which is wholly undefined) as argued by Applicant, just to use the mature human T cells as a readily available source to generate cells having NK-like characteristics consistent with the teaching of the primary art reference; as is stated above, the art teaches the same method as is recited in the claims, so the cell phenotype recited in the instant claims (including a functional TCR) must also inherently follow. (If it is not the case that the method steps inherently produce the recited phenotypes, then the instant method is missing critical non-recited steps.) These points also address Applicant’s further argument that the NK-like cell may have an incomplete or functionally impaired TCR/CD3 pathway, since the pathway functions in the context of a CAR and would more likely than not, also function in TCR signaling. In addition, both the instant specification and evidentiary reference Jiang et al. teach that performing the same method steps results in an ITNK cell having a functional TCR (as well as the recited cell phenotypes).
In arguing Ying et al. or Boissell et al., Applicant is arguing the references separately, as the said secondary references Ying et al. and Boisell et al. teach transfecting either of a T cell or an NK cell with nucleic acid molecule encoding a CAR having a tumor-associated antigen specificity, while Li et al. teach reprogramming of human T cells involving deletion of the BCL11B gene in vitro. Motivation is provided by the references to transfect a nucleic acid molecule encoding a CAR into either of a T cell or an NK cell. The aim of Ying et al. is to provide a T cell with a particular antibody specificity through a chimeric antigen receptor in order to target it to a tumor.
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant’s assertion ---that combining an engineered mature T cell with a BCL11b knockout with transfection of a nucleic acid molecule encoding a CAR is “risky”--- is an unsubstantiated allegation that does not define what is meant by “risky”. Applicant’s position constitutes an assertion without evidence. Attorney arguments cannot take the place of evidence. “The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). See MPEP 2145 generally for case law pertinent to the consideration of Applicant’s rebuttal arguments." MPEP 716.01(c) [R-2]. Also, instant base claim 17 recites that the transfection step may precede or be concurrent with performing the BCL11b gene knockout.
With regard to Applicant’s further argument that the present application achieves unexpected technical effects vis-a-vis, utilizing CAR for specific targeting while employing the acquired NK cell mechanisms to provide co-stimulation and enhanced killing, this said argument is not persuasive, as the primary art reference teaches the superiority of the acquired NK cell mechanisms through BCL11b knockout of the T cells and directs one of ordinary skill in the art to produce a human T cell version thereof ex vivo for adoptive therapy, while the secondary art references pertaining to CARs teach the advantages of imparting redirected anti-tumor specificity to T cells or NK cells through introduction of a CAR (or a TCR) having an extracellular binding domain specific for a tumor-associated antigen. These said features are therefore not unexpected.
With regard to Applicant’s arguments pertaining to the 1:2 ratio of antibodies to T cells taught by Green et al., this said argument is also not persuasive. First of all, Applicant is alleging without explicitly stating criticality this said ratio (and note that this ratio only appears in dependent claim 25). Applicant argues that Green et al. only evaluate the protocol in conventional T cell proliferation assays but not within the specific technical context of the present application---where cells must first be activated and then withstand the dual stress of CAR transfection and BCL11b knockout---selecting an activation protocol that balances activation strength, cell survival rate, and creating an optimal starting state for subsequent reprogramming requires inventive effort, and due to these considerations is non-obvious. The allegation that the activation protocol differs from the art protocol is not persuasive. Applicant is arguing non-recited limitations, and the said ratio constitutes routine optimization well within the purview of one of ordinary skill in the art to determine. Applicant further argues that regarding claim 30 (no co-culture with OP9-DL1) illustrates that the method of the present application does not rely on traditional stromal cell support systems and can achieve cell reprogramming and expansion under simpler conditions more suitable for clinical translation. However, this said limitation only appears in dependent claim 30, the instant rejection does not propose to culture with OP9-DL1 cells but rather with culture medium that does not comprise cells, and the cited art teaches magnetic bead/antibody stimulation of starting T cells.
Applicant again argues that the prior art does not reveal the recited cell phenotypes. However this argument has been rebutted above---the method taught by the art is the same method as is recited in the claims, so the phenotype of the cell produced must necessarily be the same. As is also stated above, if Applicant does not consider this to be the case, then the claimed method is missing critical method steps that are not recited therein. Applicant argues unexpected results based on the phenotype and possession of features of both T cells and NK cells. However, this argument has also been addressed above. The art teaches and provides motivation for a method that makes the same cells. The art taught advantages are specificity through the antigen binding region of the CAR (or a TCR)5, NK-like cell killing activity, and a ready source of NK-like cells for adoptive transfer for treating tumors (unlike the small numbers of NK cells in human PBLs), not possession of both T cell and NK phenotype markers. The fact that Applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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).
9. Claims 17-22, 25-28 and 30-34 are rejected under 35 U.S.C. 103 as being unpatentable over CN 111607569A (publication date 9/1/2020, priority date 6/1/2020) in view of Green, L (Bioscience Horizons, 2014, 7: 1-10, of record), Boissel et al. (Leukemia Research, 2009, 33: 1255-1259, of record), and Hosokawa et al. (Nature Immunology, 2018, 19: 1427-1440, of record), as evidenced by the English language translation of CN 111607569A (25 pages), and as evidenced by admissions in the specification at Examples 1-8, page 5 at lines 1-2, page 5 at lines 3-6, page 5 at lines 9-12 and page 5 at lines 19-22, and by Jiang et al. (Biomarker Research, 2022, 10:13, pages 1-22, IDS reference).
This is a new ground of rejection necessitated by Applicant’s amendment filed 12/29/2026. Applicant has amended instant base claim 17 and has added new claims.
Independent claim 17 recites: A method for preparing an engineered immune killer cell the cell according to claim 1, comprising:(1") activating a human T cell; (2") transfecting the activated human T cell with a nucleic acid molecule encoding a CAR molecule expressing a tumor-associated antigen or a nucleic acid molecule encoding a tumor-specific TCR molecule along with or followed by performing BCL1lB gene knockout; and (3") culturing the cell obtained in step (2") in a T cell culture mediums wherein the engineered immune killer cell expresses functional TCR, CD3, and NKp30;and wherein the engineered immune killer cell downregulates expression of transcription factors LEF1 and TCF7 and upregulates expression of NOTCH, AP1, ID2, TBX21, and NFIL3 compared with the T cell from which the engineered immune killer cell is derived.
Claim interpretation: The instant specification discloses throughout that a T cell culture medium includes IL-2 (e.g., page 6 at line 13), so this said limitation is being interpreted as a culture medium comprising IL-2 (which was known in the art prior to the filing date of the claimed invention to be T cell growth factor). As claim 17 is indefinite in the recitation of “transfecting the activated human T cell with a nucleic acid molecule encoding a CAR expressing a tumor-associated antigen” as is enunciated above in this office action, in the interest of compact prosecution, the said limitation is being interpreted as meaning transfecting the activated human T cell with a nucleic acid molecule encoding a CAR (chimeric antigen receptor) having specificity for a tumor-associated antigen. The “wherein” clauses recited in instant base claim 17 and in dependent claims 31-33 that recite cell phenotype are being interpreted as the phenotype that is inherently induced by performing the method steps recited in instant base claim 17 as per the disclosure in the instant specification and figures.
CN 111607569A teaches a method comprising activating human mature peripheral blood T cells using a MACS activation kit comprising magnetic beads (e.g., translation of document at [0045], page 3 at item “(2)”), inducing T cells to NK cells (ITNKs) by electroporating an RNP complex comprising crRNA, tracrRNA, and Cas9 protein (e.g., [0046], [0076], claim 1 on page 2, lines 1-4 on page 4, [0002], [0005], [0011]) wherein the target gene of the crRNA is BCL11b gene (for BCL11b gene knockout) (e.g., claim 5 on page 2, [0015]), and wherein the crRNA is for example one of SEQ ID NO: 7 and 9 of the art reference (that comprise sequences that are disclosed in the instant specification as SEQ ID NO: 1 and 3 and that are used to knockout at the second exon of BCL11b as is evidenced at Table 1 of the instant specification), and followed by culturing in complete (cell-free) culture medium comprising IL2 (e.g., claim 7 on page 3).
CN 111607569A teaches that the method reprograms T cells based on CRISPR/Cas9, has relatively simple operation steps, high reprogramming efficiency, and can obtain ITNK cells with good amplification ability and high efficiency in killing tumor cells ([0008]), benefitting clinical patients when the cells are administered (abstract, [0005]). CN 111607569A teaches that the reprogrammed cells expressed both T cell markers CD3 and CD8 and NK cell markers NKp46 and NKp30 (e.g., [0052], [0080], [0083]). See entire reference.
CN 111607569A does not teach wherein the activated human T cells were transfected with a nucleic acid molecule encoding a CAR molecule that targets a tumor-associated antigen along with or followed by performing BCL11b gene knockout, nor do they explicitly teach what the antibody specificities of the T cell activation kit are, nor do they teach the 1:2 ratio of activation beads to cells.
Ying et al. teach making CAR-T cells from mature human T cells, wherein the CAR advantageously confers specificity for a tumor-associated antigen. Ying et al. teach making the CAR-T cells by isolating peripheral blood cells comprising mature human T cells or by isolating mature human T cells from PBMCs, pre-activating them using anti-CD3/anti-CD28 Dynabeads (i.e., magnetic beads) in medium supplemented with IL-2 (e.g., Fig. 1 legend and CAR T cell manufacture section), then transducing them with a vector encoding the CAR, wherein the CAR comprises an anti-CD19 scFv (i.e., an extracellular antigen recognition domain specific for a tumor-associated antigen), a transmembrane domain and an intracellular costimulatory domain in N-terminal to C-terminal order (e.g., Fig. 1 and legend). Ying et al. teach that their study demonstrates an improved version of CD19-BBz CAR T cells that are effective in treatment of refractory BCL that do not cause neurological toxicity or severe CRS (cytokine release syndrome), representing a safe and potent anti-CD19 CAR T cell therapy (last paragraph). Note that CARs inherently comprise a signal peptide for cell surface trafficking. See entire reference.
Green teaches using an anti-CD2/anti-CD3/anti-CD28 bead based T cell proliferation assay, and the use of the said bead resulted in efficient T cell proliferation with a bead to cell ratio of 1:2, wherein the beads coated with all three antibodies delivered a stronger proliferative signal through the CD3 and CD28 co-receptors. Green further teaches that the antibodies/beads were comprised in the Miltenyi Biotec kit as MACSiBeadTM. (see entire reference, especially page 4 at the first full paragraph and page 7 at the paragraph spanning columns 1-2).
Boissel et al. teach transfecting mRNA encoding an anti-CD19 CAR comprising an N-terminal signal sequence, an anti-CD19 scFv (i.e., an antibody fragment that targets a tumor-associated antigen), a CD8 transmembrane domain, and a CD3 zeta intracellular signaling domain into NK cells for treatment of CLL (chronic lymphocytic leukemia). Note that the CAR-NK cells were cultured in IL-2. Boissel et al. teach in general, genetically engineering NK cells to express CARs that recognize specific antigens on the tumor surface, thereby triggering the release of cytotoxic molecules. Boissel et al. teach retargeting NK cytolytic activity the ErbB2 (i.e., Her2) tumor antigen on cancer cells (reference 10) (e.g., abstract, methods, see entire reference).
It would have been prima facie obvious to one of ordinary skill in the art to have transduced a nucleic acid sequence encoding a tumor-targeting CAR into the activated T cells taught by the primary art reference either concurrently with or prior to the BCL11b gene knockout step.
One of ordinary skill in the art would have been motivated to do this, and with a reasonable expectation of success in doing so, in order to produce a retargeted ITNK cell with a particular anti-tumor targeting portion such as anti-CD19 that is taught by both Ying et al. and Boissel et al.
It would have been prima facie obvious to one of ordinary skill in the art to have activated the T cells of the primary art reference with magnetic beads as is taught by the primary art reference, having the specificity of anti-CD2, anti-CD3, and anti-CD28 at the 1:2 ratio of beads to cells that is taught by Green.
One of ordinary skill in the art would have been motivated to do this, and with a reasonable expectation of success in doing so, because the primary art reference is silent as to the antigen specificity/specificities of the T cell activating magnetic beads, while Green teaches the advantages of using the anti-CD2, anti-CD3, and anti-CD28 at the 1:2 ratio of beads to cells includes delivering a strong proliferative signal.
With regard to the phenotype recited in instant base claim 17 as well as the phenotype upregulation of the full complement of markers recited in instant dependent claims 31- 33, although the art references do not explicitly teach these said full phenotypes (the primary art reference teaches expression of CD3 and NKp30), these said phenotypes are expected properties of the engineered immune killer cells as is further evidenced below since the method of making the mature human BCL11b knockout cells is the same as that recited in the instant claims (absent the transfection of the encoding nucleic acid for a CAR), and the instant specification discloses that mature human T BCL11b knockout cells (without transfection of encoding nucleic acid molecule for CAR expression) possess these said phenotypes (see Examples 1-8 of the instant specification that disclose phenotype prior to CAR-encoding nucleic acid molecule transfection); that is, the instant specification evidences that the recited cell phenotype is a result of the T cell activation and subsequent BCL11b knockout.
Although the reference is silent about the said phenotypes, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories 58 USPQ2d 1508 (CAFC 2001). “{i}t is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 201 USPQ 658 (CCPA 1979). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145.
The admission in the specification at page 5 at lines 1-2 is that the reprogrammed immune killer lymphocytes express the NK cell markers CD11c, NKG2D, and CD161 when made by the method disclosed in Examples 1-8 of the specification, i.e., a method comprising activating mature human T cells with magnetic beads coated with anti-human CD3, anti-human CD28, and anti-human CD2 antibodies mixed with T cells, knocking out BCL11B (by CRISPR/CAS9), and culturing the activated cells in a T cell culture medium, including wherein the activation is performed using an anti-human CD3 antibody, and anti-human CD28 antibody and an anti-human CD2 antibody, followed by a culturing step wherein the medium contains IL-2. This is the same method that is recited in the instant claims.
The admission in the specification at page 5, lines 3-6 is that the reprogrammed immune killer lymphocyte downregulates expression of transcription factors LEF1 and TCF7 and upregulates expression of NOTCH, AP1, mTOR, ID2, TBX21, and NFIL3 as compared with the nonprogrammed T cell upon the method disclosed in said Examples 1-8. (The downregulated phenotype recited in instant base claim 17 is the same as disclosed in the instant specification using the same method, while the upregulated phenotype recited in instant base claim 17 is a subset of these (i.e., NOTCH, AP1, IDS, TBX21, and NFIL3).
The admission in the specification at page 5 at lines 9-12 is that the reprogrammed immune killer lymphocyte upregulates gene expression of CSF2, FOS, MAPK12, MAP3K8, IFNg, NFKBIA, MAPK11, IL-10, and TEC which are associated with the TCR-mediated signal transduction. This is the same phenotype recited in instant dependent claim 32.
The admission in the specification at page 5 at lines 19-22 is that the reprogrammed immune killer lymphocyte upregulates gene expression of PRF1, CSF2, ICAM1, CD244, PLCG2, IFNG, FCER1G, GZMB, NCR2, NCR1, KIR2DL4and SYK which are associated with the NK killing toxicity-associated signal transduction. This is the same phenotype recited in instant dependent claim 33.
The admission in said Examples 1-8 of the specification is that the mature human T cell BCL11b knockout cells that have not been transfected with a nucleic acid molecule encoding a CAR possess these phenotypes; that is, the instant specification evidences that the phenotype is a result of the activation of the T cells (using bead bound magnetic beads coated with anti-human CD3, anti-human CD28 and anti-human CD2 antibodies mixed with T cells and culture medium comprising human IL-2) and knockout of BCL11b (not the transfection with encoding nucleic acid molecule encoding a CAR).
In addition, evidentiary reference Jiang et al. (Biomarker Research, 2022, 10:13, pages 1-22, IDS reference) teaches that human mature induced-T-to-NK cells retain a functional TCR and subtypes also express CD8, CD3, NKp46, NKp30, NKp44 or CD4, CD3, Nkp30, gdTCR+ subgroup that is also NKp30+ through the same method of activation (minus the anti-CD2 stimulation) and the BCL11b knockout using CRISPR-Cas9 (i.e., functional TCR and NK cell receptors, e.g., last paragraph of reference, introduction, page 10 at column 1, Figure 4A, page 10 at column 1). Jiang et al. also teach that the ITNKs downregulated LEF1 and TCF7 (abstract). (see entire reference).
Therefore, the claimed method appears to be similar to the method of the prior art absent a showing of unobvious differences. Since the Patent Office does not have the facilities for examining and comparing the method of the instant invention to those of the prior art, the burden is on Applicant to show an unobvious distinction between the method of the instant invention and that of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Instant dependent claim 34 is included in this rejection for the same reasons and due to the teachings of evidentiary reference Jiang et al. who evidence two of the phenotypes recited in claim 34 using the same method steps as those recited in the instant claims.
Instant dependent claim 30 is included in this rejection because the culturing step(s) in the instant rejection comprise medium, not cells.
Instant dependent claims 26 and 27 are included in this rejection because CD19 is a tumor-associated antigen that is a tumor surface antigen in the B cell chronic lymphocytic leukemia taught by the secondary art references above (and is also expressed on normal B cells) (note that claim 26 recites “wherein the tumor-associated antigen is a tumor surface antigen” and dependent claim 27 recites “wherein the tumor-associated antigen is CD19”).
Instant dependent claim 26 is also included in this rejection because Boissel et al. teach the retargeting of NK cell cytolytic activity to ErbB2 tumor antigen-expressing cancer cells; thus it would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to have made and transfected a CAR having a targeting region for ErbB2 tumor antigen. One of ordinary skill in the art would have been motivated to do this in order to engineer an immune killer cell with specificity to target an ErbB2-expressing tumor, and with a reasonable expectation of success in doing so.
Applicant is directed to the Examiner’s rebuttal above pertaining to the three secondary references used in both art rejections.
10. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
11. Court rulings have been quite clear that ONLY DIVISIONAL applications are entitled to the shield from double patenting under 35 USC 121. Indeed, in AMGEN INC v. HOFFMANN LA ROCHE LTD GMBH LA (Nos. 2009-1020, 2009-1096) the court discusses this issue at length and states:
Turning to the legislative history, the court observed that a House Report also referred specifically to “divisional application[s].” Id. Notably absent from the legislative history, in the court's view, was a suggestion “that the safe-harbor provision was, or needed to be, directed at anything but divisional applications.” Id. at 1361. From there, the court “conclude^] that the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.” Id. at 1362. Accordingly, the court decided that the § 121 safe harbor did not apply to the patent before it, which issued from a continuation-in-part application. Id.
We are persuaded by the reasoning in Pfizer that the § 121 safe harbor provision does not protect continuation applications or patents descending from only continuation applications. The statute on its face applies only to divisional applications, and a continuation application, like a continuation-in-part application, is not a divisional
application.
Given that Applicant chose to file the 17/639,237 case as a separate unrelated application, not as a DIV of the instant application, the instant rejection has been set forth.
Claims 17-22 and 25-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 and 20 of copending Application No. 17/639,237 in view of Ying et al. (Nature Medicine, 2019, 25: 947-95e, of record), Boissel et al. (Leukemia Research, 2009, 33: 1255-1259, of record), and Green, L (Bioscience Horizons, 2014, 7: 1-10, of record).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Changes in this rejection are necessitated by Applicant’s amendment filed 12/29/25 (and by amendment of the claims of 17/639,237).
Claim interpretation: The instant specification discloses throughout that a T cell culture medium includes IL-2 (e.g., page 6 at line 13), so this said limitation is being interpreted as a culture medium comprising IL-2 (which was known in the art prior to the filing date of the claimed invention to be T cell growth factor). As claim 17 is indefinite in the recitation of “transfecting the activated human T cell with a nucleic acid molecule encoding a CAR expressing a tumor-associated antigen” as is enunciated above in this office action, in the interest of compact prosecution, the said limitation is being interpreted as meaning transfecting the activated human T cell with a nucleic acid molecule encoding a CAR (chimeric antigen receptor) having specificity for a tumor-associated antigen. The “wherein” clauses recited in instant base claim 17 and in dependent claims 31-33 that recite cell phenotype are being interpreted as the phenotype that is inherently induced by performing the method steps recited in instant base claim 17 as per the disclosure in the specification and figures.
Claims 14-18 of 17/639,237 are drawn to a method for preparing the immune killer lymphocytes according to claim 1 (i.e., Immune killer lymphocytes induced by reprogramming of human T cells which retain markers and functions of human T cells from which the immune killer lymphocytes are derived and have markers and functions of NK cells, wherein the reprogramming of the human T cells involves knocking out a BCL11b gene) by knocking out a recited target sequence of the BCL11b gene, the method comprising in successive order, the steps of activating human T cells, performing BCL11b gene knockout on the activated human T cells, including by CRISPER/CAS9 (claim 12 of ‘237), and culturing the cells with a T cell culture medium (base claim 14), including IL-2 (claim 18). The cells are mature human T cells or a population comprising mature human T cells (claim 15), activation is performed using the antibodies (as recited in instant dependent claim 19, anti-human CD3, anti-human CD28 and anti-human CD2 antibodies)(claim 16 of ‘237), the BCl11b gene knockout is performed by CRISPR/CAS9 (as is recited in instant dependent claim 21), and the culture medium recited in claim 18 of 17/639,237 is the same as that recited in instant dependent claim 22. Note that the target sequences recited in base claims 1 and 14 of ‘237 comprise second, third, or fourth exon sequences (as is evidenced by the specification of ‘237 at Table 1, pages 12-14; note that second exon and third exon knockouts are recited in instant dependent claims 28 and 29, respectively).
Claims 1-9 of 17/639,237 are drawn to immune killer lymphocytes induced by reprogramming of human T cells which retain markers and functions of human T cells from which the immune killer lymphocytes are derived and have markers and functions of NK cells, wherein a recited target sequence is knocked out from BCL11b gene of the human T cells (clam 1), wherein the T cells are mature human T cells or a population comprising mature human T cells (claim 2), and express functional TCR, CD3 and NKp30 (claim 3 of ‘237, and the same phenotype recited at part “3” of instant base claim 17), express CD11c, NKG2D and CD161 markers of NK cells (claim 4, that are also recited in instant dependent claim 31), express upregulated expression of NOTCH (claim 5), downregulate expression of LEF1 and TCR7 and upregulate expression of NOTC, AP1, IDS, TBX21, and NFIL3 (claim 6, and this phenotype is also recited in instant base claim 17), and comprise the same cell subsets as are recited in instant claim 34 (claim 9 of ‘237). .
Claim 20 of 17/639,237 is drawn to a method for treating tumors, AIDS and infectious diseases comprising administering an effective amount of the immune killer lymphocytes according to claim 1 to a subject in need thereof.
In more detail, the claims of ‘237 recite a method of producing immune killer lymphocytes according to claim 1 (i.e., which retain markers and functions of human T cells from which the immune killer lymphocytes are derived and have markers and functions of NK cells) wherein the cells are BCL11b gene knockout human T cells that were knocked out at one of the recited target sequences (that include exons 2 and/or 3). The immune killer lymphocytes are mature human T cells or a cell population comprising mature human T cells (claim 2 of ‘237); they express functional TCR, CD3 and NKp30 (claim 3 of ‘237, markers recited in instant base claim 17) and express a marker of NK cells selected from the group consisting of CD11c, NKG2D and CD161 (claim 4 of ‘237, markers recited in instant dependent claim 31), and have up-regulated NOTCH (claim 5 of ‘237, a marker recited in instant base claim 17), have down-regulated levels of LEF1 and TCF7 and up-regulated levels of NOTCH, AP1, IDS, TBX21 and NFIL3 (claim 6 of ‘237, markers recited in instant base claim 17), comprise the same cell subsets recited in instant dependent claim 34 (claim 9 of ‘237). Thus, the immune killer lymphocytes that are BCL11b knockouts of mature human T cells have the same downregulated and upregulated marker expressions as are recited in instant base claim 17, by virtue of the said knockout. The immune killer lymphocytes of ‘237 are made by a method comprising activating mature human T cells, knocking out BCL11B, including by CRISPR/CAS9, and culturing the activated cells in a T cell culture medium, including wherein the activation is performed using an anti-human CD3 antibody, and anti-human CD28 antibody and an anti-human CD2 antibody, and including wherein in the culturing step, the medium comprises IL-2 (claims 10-18), i.e., the same method recited in the instant claims. The cells recited in the claims of ‘237 differ only in the transfection of the activated, human T cell with a nucleic acid molecule encoding a CAR having specificity for a tumor-associated antigen.
The claims of 17/639,237 differ from the instant method claims in that the claims of 17/639,237 do not recite that the activated human T cell is transfected with an encoding nucleic acid molecule for a CAR that is specific for a tumor associated antigen.
Ying et al. teach making CAR-T cells by isolating peripheral blood human T cells, activating them using anti-CD3/anti-CD28 Dynabeads (i.e., magnetic beads) in medium supplemented with IL-2 (e.g., Fig. 1 legend and CAR T cell manufacture section), then transducing them with a vector encoding the CAR, wherein the CAR comprises an anti-CD19 scFv (i.e., an extracellular antigen recognition domain specific for a tumor associated antigen), a transmembrane domain and an intracellular costimulatory domain in N-terminal to C-terminal order (e.g., Fig. 1 and legend). Ying et al. teach that their study demonstrates an improved version of CD19-BBz CAR T cells that are effective in treatment of refractory BCL that do not cause neurological toxicity or sever CRS (cytokine release syndrome), representing a safe and potent anti-CD19 CAR T cell therapy (last paragraph). Note that CARs inherently comprise a signal peptide for cell surface trafficking. Ying et al. teach See entire reference.
Boissel et al. teach transfecting mRNA encoding an anti-CD19 CAR comprising an N-terminal signal sequence-an anti-CD19 scFv, a CD8 transmembrane domain and a CD3 zeta intracellular signaling domain into NK cells for treatment of CLL (chronic lymphocytic leukemia) (e.g., abstract, see entire reference).
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to have modified the method recited in the claims of 17/639,237 to have transduced the viral vector or to have transfected an mRNA encoding version of the anti-CD19 CAR taught by Ying et al. or other suitable anti-CD19 CAR (such as one comprising a signal peptide as taught by Boissel et al..), prior to culturing the cell in an IL-2 containing medium as taught by the primary art reference.
One of ordinary skill in the art would have been motivated to do this in order to make an anti-CD19 CAR-expressing induced T-to-natural killer (ITNK) that are able to target to and kill CD19-expressing tumor cells, and with a reasonable expectation of success in doing so, particularly since the claims of 17/639,237 also recite a method of treating tumors comprising administering the immune killer lymphocytes.
The claims of 17/639,237 differ from the instant method claims in that the claims of 17/639,237 do not recite the ratio of the anti-CD2/anti-CD3/anti-CD28 antibodies to T cells, nor that the antibodies are disposed on beads (such as is recited in instant dependent claim 19 and 25).
Green teaches using an anti-CD2/anti-CD3/anti-CD28 bead based T cell proliferation assay, and the use of the said bead resulted in efficient T cell proliferation with a bead to cell ratio of 1:2, wherein the beads coated with all three antibodies delivered a stronger proliferative signal through the CD3 and CD28 co-receptors (see entire reference, especially page 4 at the first full paragraph and page 7 at the paragraph spanning columns 1-2).
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to have used the beads taught by Green in the method of the claims of ‘237 in view of Ying et al. and Boissel et al., including a magnetic bead version thereof similar to that taught by Ying et al.
One of ordinary skill in the art would have been motivated to do this in order to activate the T cells, and with a reasonable expectation of success in doing so, particularly in view of the advantage taught by Green et al. of adding a third specificity for better activation.
With regard to the limitations recited in instant dependent claims 28 and 29, i.e., wherein the gene knockout is performed at a second or third exon, respectively, of the BCL11b gene, note that the target sequences recited in claim 10 of ‘237 comprise targets in the second and third exons of BCL11B as evidenced by an admission in the specification of ‘237 at Table 1 (SEQ ID NO: 1, 4, 7, 10, 13 and 16 are second exon sequences, whereas SEQ ID NO: 19, 22, and 25 are third exon sequences). With regard to the upregulation of the full complement of markers recited in instant claims 32 and 33, although the claims of ‘237 do not recite these markers, these phenotypes are expected properties of the cells since the method of making the mature human BCL11b knockout cells is the same as that recited in the instant claims (absent the transfection of the encoding nucleic acid for a CAR), and the instant specification discloses that pre-activated, non-CAR mature human BCL11b knockout cells (without transfection of encoding nucleic acid molecule for CAR expression) possess these phenotypes (see examples 1-8 in the instant specification that provide disclosure of phenotype prior to CAR-encoding nucleic acid molecule transfection), that is, there evidence that the phenotype is a result of the activation and knockout, and there is no evidence of record that the transfection of the encoding nucleic acid molecule for CAR expression is responsible for the recited phenotype of the knockout T cell. Therefore, the claimed method appears to be similar to the method of the prior art absent a showing of unobvious differences. Since the Patent Office does not have the facilities for examining and comparing the method of the instant invention to those of the prior art, the burden is on Applicant to show an unobvious distinction between the method of the instant invention and that of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Instant dependent claim 18 is included in this rejection because a peripheral blood derived mature human T cell is an obvious art-known variant of a mature human T cell. Instant dependent claim 30 is included in this rejection because the combination of the claims of ‘237 in view of the cited art references does not include a cell in the co-culturing step. Instant dependent claims 26 and 27 are included in this rejection because CD19 is a tumor-associated antigen that is a tumor surface antigen in the B cell chronic lymphocytic leukemia taught by the secondary art references above (and is also expressed on normal B cells) (note that claim 26 recites “wherein the tumor-associated antigen is a tumor surface antigen” and dependent claim 27 recites “wherein the tumor-associated antigen is CD19”).
Applicant’s arguments (of record in the amendment and response filed 12/29/25 on pages 12-13) have been fully considered but are not persuasive.
As is stated above in the instant rejection, the claims of ‘237 recite a method of producing immune killer lymphocytes according to claim 1 (i.e., which retain markers and functions of human T cells from which the immune killer lymphocytes are derived and have markers and functions of NK cells) wherein the cells are BCL11b gene knockout human T cells that was knocked out at one of the recited target sequences. The immune killer lymphocytes are mature human T cells or a cell population comprising mature human T cells (claim 2 of ‘237); they express functional TCR, CD3 and NKp30 (claim 3 of ‘237, markers recited in instant base claim 17) and express a marker of NK cells selected from the group consisting of CD11c, NKG2D and CD161 (claim 4 of ‘237, markers recited in instant dependent claim 31), and have up-regulated NOTCH (claim 5 of ‘237, a marker recited in instant base claim 17), have down-regulated levels of LEF1 and TCF7 and up-regulated levels of NOTCH, AP1, IDS, TBX21 and NFIL3 (claim 6 of ‘237, markers recited in instant base claim 17), comprise the same cell subsets recited in instant dependent claim 34 (claim 9 of ‘237). Thus, the immune killer lymphocytes that are BCL11b knockouts of mature human T cells have the same downregulated and upregulated marker expressions as are recited in instant base claim 17, by virtue of the said knockout. The immune killer lymphocytes of ‘237 are made by a method comprising activating mature human T cells, knocking out BCL11B, including by CRISPR/CAS9 (claim 12 of ‘237), and culturing the activated cells in a T cell culture medium, including wherein the activation is performed using an anti-human CD3 antibody, and anti-human CD28 antibody and an anti-human CD2 antibody, and including wherein in the culturing step, the medium comprises IL-2 (claims 10-18), i.e., the same method recited in the instant claims. The cells recited in the claims of ‘237 differ in the transfection of the activated, human T cell with a nucleic acid molecule encoding a CAR having specificity for a tumor-associated antigen.
These considerations rebut Applicant’s argument that the expression of functional TCR, CD3 and NKp30 and the downregulation of LEF1/TCF7 and upregulation of NOTCH, AP1, ID2, TBX21 and NFIL3) are not possessed by the cell recited in the claims of ‘237 (including that claims 3 and 4 of ‘237 recite functional TCR as well as the phenotypic markers that are also recited in instant base claim 17). These considerations also rebut Applicant’s further argument that the present application is an integrated technical scheme that encompasses the synergistic interaction of CAR/TCR transfection and BCL11b knockout and defines the resulting novel cell product with unique attributes and possesses non-obvious distinctions from the invention protected by the ‘237 application. Also note that instant base claim 17 recites transfecting the activated human T cell with a nucleic acid molecule encoding a CAR molecule along with or followed by performing BCL11b gene knockout. As is stated in the instant rejection, the secondary references provide teachings that it was obvious to transfect a T cell or an NK cell with a nucleic acid molecule encoding a CAR having anti-tumor-associated antigen specificity.
12. Claim 26 is objected to because of the following informality: “cytokine secreted by the cell” should be recited as ‘cytokine secreted by said cell’ at line 3.
Appropriate correction is required.
13. No claim is allowed.
14. 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.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIANNE DIBRINO whose telephone number is (571)272-0842. The examiner can normally be reached on M, T, Th, F.
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/Marianne DiBrino/
Marianne DiBrino, Ph.D.
Patent Examiner
Group 1640
Technology Center 1600
/MISOOK YU/Supervisory Patent Examiner, Art Unit 1641
Prosecution Insights