DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s amendments to the claims and arguments filed on October 10, 2025 have been received and entered. Claim 1 has been amended, while claim 6 has been canceled. Claims 1-5, 7-20 are pending.
Election/Restrictions
Applicant’s election of claims 1-10 (group I) in the reply filed on March 5, 2025 was acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Applicant’s election of species (ii), causing caleific AS by GFS1 hyperactivation predominantly in the at least one transgenic mouse mediated by increased activation of SMAD2, SMADS, SMADISU/5/9 and p38 MAPK;and decreased activation of pERK 1/2 MAPK signaling pathways as set forth in claim 7 is acknowledged. Upon further consideration, species set forth in claim 6 is hereby rejoined with the elected species as set forth in claim 7. Claim 8 reads on non-elected species and therefore is withdrawn from consideration.
Claims 8, 11-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 5, 2025.
Priority
This application is a 371 of PCT/US2020/058148 filed on 10/30/2020, which claims priority from a US provisional 62/954,884 filed on 12/30/2019.
Claims 1-5, 7, 9 and 10 are under consideration.
Maintained-Claim Objections
Claim 1 remains objected to because of the following informalities: In the instant case, claim 1 recites multiple notations (such as aTGFfb1TG, a Peri Cre Tg or Tgfb1TG:PostnCre) for specific genotype of the mouse. It is suggested that applicant should specify the genotype of the mouse associated with the recited notations in the body of the independent claim. Appropriate correction is required.
Absent any amendments and/or rebuttal, previous objection is maintained for the reasons of record.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7, 9 and 10 remain rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for A transgenic TGF beta1 +/+, Postn Cre mouse whose genome comprises a nucleic acid encoding bioactive TGF beta 1, wherein said mouse overexpresses bioactive TGF beta 1 predominantly in the cardiac outflow tract endocardial cushion cells and adult valve interstitial cell, wherein the transgenic TGF beta1 +/+, Postn Cre mouse is produced by: crossing (i) a mouse whose genome comprises CAG promoter driving expression of a loxP-flanked EGFP/polyA cassette upstream of a constitutively active HA tagged porcine transforming growth factor, beta 1 (Tgfb1) cDNA, with (ii) a transgenic mouse whose genome comprises a nucleic acid encoding Cre recombinase under the control of Postn promoter, wherein said TGF beta1 +/+, Postn Cre mouse is born with three aortic valve leaflets wherein right and left coronary cusps of an aortic valve fuse at a base and form a raphe as the mouse grows;
does not reasonably provide enablement for a model for any other disease or disorder, using a mouse genotype that exhibits TGF-b1 expression not dependent on or not influenced by the recombination of loxP sites, using a TGFb1 cDNA that has been mutated in any way to prevent assembly of at least one latent associated peptide a broadly claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
In determining whether Applicant’s claims are enabled, it must be found that one of skill in the art at the time of invention by applicant would not have had to perform “undue experimentation” to make and/or use the invention claimed. Such a determination is not a simple factual consideration, but is a conclusion reached by weighing at least eight factors as set forth in In re Wands, 858 F.2d at 737, 8 USPQ 1400, 2d at 1404. Such factors are: (1) The breadth of the claims; (2) The nature of the invention; (3) The state of the art; (4) The level of one of ordinary skill in the art; (5) The level of predictability in the art; (6) The amount of direction and guidance provided by Applicant; (7) The existence of working examples; and (8) The quantity of experimentation needed to make and/or use the invention.
The office has analyzed the specification in direct accordance to the factors outlines in In re Wands. MPEP 2164.04 states: “[W]hile the analysis and conclusion of a lack of enablement are based on factors discussed in MPEP 2164.01(a) and the evidence as whole, it is not necessary to discuss each factor in written enablement rejection.” These factors will be analyzed, in turn, to demonstrate that one of ordinary skill in the art would have had to perform “undue experimentation” to make and/or use the invention and therefore, applicant’s claims are not enabled.
Nature of the Invention:
Claims are directed to a mouse model comprising: at least one transgenic Tgfb1 TG; Postn Cre mouse bred from aTGFfb1TG, female mouse and a Peri Cre Tg+ male mouse; and wherein the at least one transgenic Tgfb1TG:PostnCre mouse overexpresses bioactive TGFb1. Dependent claims limit the TGFB1 cDNA of the Tgfb1 TG; Postn Cre mouse to be mutated to prevent assembly of at least one latent associated peptide. Claim 6 limits the mouse model, wherein mouse genetic sequence 1 is changed to mouse genetic sequence 2. Claims 7, 9 and 10 recite the resulting phenotype of the transgenic mouse of the invention.
Breadth of the claims
The independent claim recites a mouse model, however, the breadth encompasses mouse being model for anything that require overexpression of bioactive TGFb1. The claim as written does not recite genotype that could be directly attributed to a resulting phenotype in the mouse to be considered as a model. The phrase model in mice is interpreted as a representation of a human disease or syndrome. Dependent claims limit the TGFb1 cDNA that has been mutated in any way to prevent assembly of at least one latent associated peptide subsequently limiting to model, wherein mouse genetic sequence 1 is changed to mouse genetic sequence 2 (also see indefinite rejection).
Guidance of the Specification and The Existence of Working Examples
The specification discloses calcific aortic valve disease (CAVD) affects 25% of the population over 65 years of age. CAVD is a progressive disease ranging from aortic valve (AoV) sclerosis to AoV stenosis (AS). The specification teaches mouse of the invention was generated by mating Tgbl+/- female mice to Tgb1 Tg+; Peri CreTg,+ male. In the transgenic mice, Tgfbl cDNA contained a fully bioactive hemagglutinin (HA) epitope tag which distinguished the transgenic bioactive TGFB1 from the endogenous TGFB1. The Tgfbl transgene expression requires Cre-mediated deletion of an intervening floxed enhanced green fluorescent protein (EGFP) gene in order for a ubiquitous B-actin promoter to transcribe constitutively active HA tagged Tgf 1 cDNA. Postn Cre mice express the Cre recombinase predominantly in the cardiac outflow tract endocardial cushion cells (E10.0) and adult VIC. The western blotting of dissected AV using TGFb1 and HA epitope- tagged antibodies confirmed the predominant ectopic expression of cleaved mature peptide and unprocessed pro-peptide of transgenically produced TGFB1 (via anti-HA tag), and combined endogenously and transgenically produced mature and pro- peptides of TGF81 in both male and female Tgfb1TG; PostnCre mice at 15 months of age (FIG. 11B and FIG. 23). The levels of expressed HA-tagged total TGFB1 (cleaved mature peptide + 80 unprocessed pro-peptide) were 2.4-fold higher in AV from males than female transgenic mice. It is further disclosed that histological analysis revealed severe AV calcification and thickened AV in 15-20-month-old male Tgfb1TG; PostnCre mice (FIG. 11C). The female Tgfb1TG; Postn Cre mice developed mild CAVD, showed less AV calcification and AV thickening compared to the age-matched male Tgfb1TG; Postn Cre mice (FIG. 11E). The specification further discloses microcomputed tomography shows that the higher AV calcification in vivo in adult male compared to female Tgfb1TG; Postn Cre mice (FIGS. 11D, 11F, 11J). AV calcification was predominantly seen in the right and left coronary leaflets, which were fused. The non-coronary AV leaflet was not affected in Tgfb1TG; PostnCre mice up to the age of 24-months. Aortic valve hemodynamics, as assessed by echocardiography in a longitudinal study was consistent with the presence of AS in 20-month-old Tgfb1TG; Postn Cre mice (FIGS. 11G and 11H).
State of the Art and Predictability of the Art and the Amount of Experimentation Necessary:
The independent claim recites a mouse model, however, the breadth encompasses mouse being model for anything that require overexpression of bioactive TGFb1. The claim does not recite genotype that could be directly attributed to a resulting phenotype in the mouse to be considered as a model mouse. The state of the art summarizes by the reference of Jian et al. compared the levels of TGFβ1 in aortic valve tissues obtained from patients with CAVD and normal aortic valve tissues obtained from autopsy controls. This result shows that both latent and active TGFβ1 was highly expressed within the VICs and the extracellular matrix of calcified valves compared to only focal expression of TGFβ1 within the VICs of healthy valves (Jian et al., Ann Thorac Surg 2003, 75:457–66). The phrase model in mice is interpreted as a representation of a human disease or syndrome. One of ordinary skill in the art would have to perform undue experimentation to make use of a mouse overexpressed TGFb1 in any cells other than VIC.
The claims are drawn to a mouse model comprising: at least one transgenic Tgfb1 TG; Postn Cre mouse bred from aTGFfb1TG, female mouse and a Peri Cre Tg+ male mouse, wherein at least one Tgfb1 TG; Postn Cre mouse is born with three aortic valve leaflets wherein right and left coronary cusps of an aortic valve fuse at a base and form a raphe as the at least one mouse grows. The specification teaches Tgfl transgene expression requires Cre-mediated deletion of an intervening floxed enhanced green fluorescent protein (EGFP) gene in order for a ubiquitous B-actin promoter to transcribe constitutively active HA tagged Tgf 1 cDNA. However, none of the claim require any one of these features wherein TGF-b1 expression is dependent on the recombination of loxP sites within the construct. Prior to effective filing date of instant application, Gomez-Stallons (Arterioscler Thromb Vasc Biol. 2016;36:1398-1405) PostnCre is active in aortic VICs, but not in endothelial cells, and is expressed robustly throughout the AoV (see page 1401, col. 2, last para.). Thus, the mouse as claimed would encompass a method of using a Cre expressing line wherein the regulation of Cre is performed by 3.9 Postn promoter expressed by the cushion mesenchymal derived-VICs. The specification uses a Cre-recombinase driven by Postn promoter to remove EGFP, resulting in expression of TGFb1 in VIC of the mouse leading to ossification and multiple nodule formation in the aortic valves phenotype. However, the specification does not disclose any other promoter to express Cre. It is unclear what level of Cre expression is necessary with any other promoter to express TGFb1 gene function to cause disclosed phenotype in VIC. Ryding et al (Journal of Endocrinology, 2001: 171, 1–14) state Cre expression within a particular cell type or tissue is rarely uniform, leading to mosaic recombination inconsequential. Ryding et al further state that determining the extent of recombination is essential for interpreting experiments (pp 9, column 1 last paragraph). Song et al (Trends Genet. 2018 Jan 11;34(5):333–340) also indicate that germline recombination and transient expression of Cre recombinase in the germline or during development can lead to unexpected expression, which often goes undetected (see page 8 under highlights) Due to unpredictability in the art of making transgenic animals, it would not be clear how Cre recombinase expression driven by any promoter or fragment of a VIC specific other than Postn-Cre promoter that is active in the three AV leaflets during cardiac outflow tract development would result in same phenotype as disclosed. Furthermore, it would require one of skill in the art at the time invention was made, undue experimentation to determine how much Cre- recombinase expression is required with other promoters resulting in claimed phenotype. An artisan would have to perform undue experimentation to make and use the invention, without reasonable expectation of success.
Claims are directed to a mouse model that overexpresses bioactive TGFb1. Dependent claims limit the TGFb1 cDNA of the mouse that has been mutated to prevent assembly of at least one associate protein. The DNA sequences of all the TGFb1 cDNA that has been mutated to prevent assembly of at least one associate protein, other than the cysteine residues that is located in the pro region of the (TGF-β1 precursor at amino acid positions 223, and 225 to serine residue, encompassed within the plurality of TGFb1 cDNA of the mouse that has been mutated to prevent assembly of at least one associate protein have not been disclosed. Based upon the prior art there is expected to be sequence variation among the species of DNA sequences of other mutation to prevent assembly of one associated protein. Samuel et al (The EMBO Journal, 11, 4, 1599 - 1605, 1992) reported TGF-b1 is released by platelets as a latent high molecular weight complex. Activation of rTGF-b1 can be achieved by acidification. Both TGF-b1 and TGFb1 S33 were >90% biologically inactive prior to acidification, whereas TGF-b1S223 and TGF-b1S225 were 280% inactive. However, TGFb1S223/225 was at least 70% active without acid treatment, and in separate experiments (data not shown) levels of activity before and after acidification were equal. This suggests that the pro region of the TGF-b1 precursor is necessary to confer latency of rTGF-b1 (see page 13663, col. 1, para. 3). The specification has provided the description of TGFb1 as set forth in SEQ ID NO: 1 that could be changed to TGFb1 sequence as set forth in SEQ ID NO: 2 via changing Cysteine at 223 and 225 to Serine (see page 4 and 5 of the specification). The specification however has not disclosed the sequences of any of the other TGFb1 cDNA that has been mutated to prevent assembly of at least one associate protein as embraced by the claims. There is no evidence on the record of a relationship between the structures of the DNA molecules as set forth in SEQ ID NO: 2 provide any reliable information about the structure of DNA molecules within the genus of other mutation in TGFb1 to prevent assembly of at least one associate protein. In view of foregoing, it is apparent that one of ordinary skill in the art would have to perform undue experimentation to determine the TGFb1 cDNA containing other mutation that could prevent assembly of at least one associate protein as embraced by the breadth of the claims to make and use the invention, without reasonable expectation of success.
In conclusion, in view of breadth of the claims and absence of a strong showing by Applicant, in the way of specific guidance and direction, and/or working examples demonstrating the same, such invention as claimed by Applicant is not enabled commensurate with full scope. An artisan of skill would have required undue experimentation to practice the invention without reasonable expectation of success.
Response to arguments
Absent any amendments and/or rebuttal, previous rejection is maintained for the reasons of record. It is emphasized that previous office action explicitly disclosed that instant specification enables only to a transgenic TGF beta1 +/+, Postn Cre mouse that is produced by: crossing (i) a mouse whose genome comprises CAG promoter driving expression of a loxP-flanked EGFP/polyA cassette upstream of a constitutively active HA tagged porcine transforming growth factor, beta 1 (Tgfb1) cDNA, with (ii) a transgenic mouse whose genome comprises a nucleic acid encoding Cre recombinase under the control of Postn promote. It was indicated that claims are not enabled for using a DNA sequences of all the TGFb1 cDNA that has been mutated to prevent assembly of at least one associate protein, other than the cysteine residues that is located in the pro region of the (TGF-β1 precursor at amino acid positions 223, and 225 to serine residue (set forth in SEQ ID NO: 2), encompassed within the plurality of TGFb1 cDNA of the mouse that has been mutated to prevent assembly of at least one associate protein have not been disclosed. In absence of any amendments and/or rebuttal, previous rejection is maintained for the reasons of record.
Withdrawn-Claim Rejections - 35 USC § 112
Claim 6 was 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. Applicants’ cancellation of claim 6 renders their rejections moot.
Maintained-Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 7, 9 and 10 remain rejected under 35 U.S.C. 102(a)(1) as being anticipated by Al-Sammarraie, N. (Fall 2019). Tissue-Specific Roles of Transforming Growth Factor Beta Ligands in Cardiac Outflow Tract Malformations and Calcific Aortic Valve Disease. (Doctoral dissertation). Retrieved from https://scholarcommons.sc.edu/etd/5539) as evidenced by Hall et al (Laboratory Investigation (2010) 90, 543–555).
Claims are directed to a mouse model comprising: at least one transgenic Tgfb1 TG; Postn Cre mouse bred from aTgfb1 Tg female mouse and a Peri CreTg+ male mouse; and wherein the at least one transgenic Tgfb1TG: PostnCre mouse overexpresses bioactive TGFbeat1.
With respect to claims 1-3, 6, Sammarraie teaches a Tgfb1Tg, Postn-Cre Tg that is produced by breeding Tgfb1Tg female mice, harboring a constitutively active Tgfb1 transgene, to Postn-CreTg male mice which express Cre recombinase in the cushion mesenchyme-derived valve interstitial cells (see page 31, section 2.2, fig. 2.5), wherein said mouse expresses TGB1 (see fig. 2.13). It is noted that the Tgfb1T mouse was obtained from Jax lab deposited and disclosed in Hall (page 31) that conditionally overexpresses bioactive TGF-b1 upon genomic recombination by Cre recombinase in a cell specific manner as evidenced by (Hall who deposited the mouse to Jax labs). Hall teaches a method of making transgenic mouse whose genome comprises from 5' to 3' the CAG promoter (containing a CMV-IE enhancer/beta-actin promoter), a loxP-flanked enhanced green fluorescent protein (EGFP) and polyA signal, a hemagglutinin (HA)-tagged porcine transforming growth factor, beta 1 (Tgfb1) cDNA. The Tgfb1 cDNA is from porcine that is modified to be constitutively active by missense mutations of two cysteine residues (C223 and C225) to serine (see page 544, col. 1, last para to col. 2, para. 1, see Hall)
Regarding claim 4-5, Sammarraie teaches Tgfb1Tg; Postn-Cre Tg mice show that the aortic valve has three nearly equal sized cusps that anchored separately to the annulus (Figure 2.19). The histological analysis of 1-year old mice showed extensive fibrocalcific changes at the hinge and base regions of the leaflets with partial fusion of two adjacent leaflets into a raphe (seam-like fusion) with severe narrowing of the aortic valve lumen, resembles aortic valve stenosis, and dilation of aortic root in the double transgenic male mice. This partial fusion of two adjacent leaflets into a raphe is an acquired phenotype and is not a congenital malformation (Figure 2.20).
With respect to claims 7, 9-10, Sammarraie teaches calcific aortic stenosis in the Tgfb1Tg; Postn-Cre Tg mice and expression of bioactive TGFb1. Therefore, any phenotype resulting from the valve-interstitial cell- specific overexpression of the constitutively activated form of TGFB1 in the transgenic mouse that exhibits CAVD as disclosed in would inherently activate of SMAD2, 3 and 1/5/9 and mitogen-activated protein kinases (see fig. 1.3, page 18) and develop in CAS. Accordingly, Sammarraie anticipates claims 1-5, 7, 9 and 10.
Response to argument
Applicant disagrees with the rejection arguing Nadia Al-Sammarraie was a PhD student for one of the inventors who did initial and preliminary characterization of the model as part of her PhD thesis. Afterwards, the inventors performed extensive experiments that were presented in the application to establish the Applicant’s findings, which were necessary and were not part of her thesis. Applicants’ arguments have been fully considered, but are not found persuasive.
In response, it is noted that applicant in part agree that cited art of Nadia Al-Sammarraie teaches the mouse model as claimed. Applicant has not pointed out how the claimed mouse model is any different from the mouse model disclosed in prior art. It is emphasized that applicant’s further experimentation on the mouse of prior art and other disclosure in the instant application is not relevant to the claimed invention. To the extent, the mouse of prior art teaches that same genotype and also exhibits same phenotype of extensive fibrocalcific changes at the hinge and base regions of the leaflets with partial fusion of two adjacent leaflets into a raphe (seam-like fusion) with severe narrowing of the aortic valve lumen, resembling in aortic valve stenosis in the one year old mouse, it is applicable to the rejection. MPEP 2112.01 states Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In the instant case, applicant fails to point the distinguishing feature of the claimed mouse from one disclosed in prior art. Therefore, instant rejection is maintained for the reasons of record.
Maintained-Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 6 and 7 remain rejected under 35 U.S.C. 103 as being unpatentable over Dutta et al (Curr Cardiol Rep (2018) 20: 21, 1-13) as evidenced by Jian et al (The Annals of Thoracic Surgery, 2003, 75, 457-465), Hall et al (Laboratory Investigation (2010) 90, 543–555), Gomez-Stallons et al (Arterioscl, Thrombosis and Vascular Biology, 2016, 36, 1396-1405) as evidenced by Shi (Cell, 2003 113(6), 685-700).
Claims are directed to a mouse model comprising: at least one transgenic Tgfb1 TG; Postn Cre mouse bred from aTGFfb1TG, female mouse and a Peri Cre Tg+ male mouse; and wherein the at least one transgenic Tgfb1TG: PostnCre mouse overexpresses bioactive TGF61.
Claim 1 is directed to product by process.
With respect to claim 1, Dutta teaches a genetically modified mouse model of calcific aortic valve disease that is optionally combined with special diet (see table 1). Dutta further teaches the role of TGF-beta on valve interstitial cells (VIC) activation and calcification (page 5, col. 2). This is further supported by Jian who teaches the role of TGF-b1 on VIC and in particular on the calcification of said cells (see, page459). The teaching of Dutta and Jian provide requisite motivation to one of ordinary skill in the art to overexpress TGF-b1 in VIC of heart in order to induce calcification of VIC an in vivo animal model. Dutta differs from claimed invention by not disclosing overexpressing TGFb1 in VIC cells of a transgenic mouse.
Hall teaches a method to create a transgenic mouse that conditionally overexpresses bioactive TGF-b1 upon genomic recombination by Cre recombinase in a cell specific manner. Hall teaches a method of making transgenic mouse whose genome comprises from 5' to 3' the CAG promoter (containing a CMV-IE enhancer/beta-actin promoter), a loxP-flanked enhanced green fluorescent protein (EGFP) and polyA signal, a hemagglutinin (HA)-tagged porcine transforming growth factor, beta 1 (Tgfb1) cDNA. The Tgfb1 cDNA is from porcine that is modified to be constitutively active by missense mutations of two cysteine residues (C223 and C225) to serine (see page 544, col. 1, last para to col. 2, para. 1) (limitation of claims 3 and 6). Hall teaches the use of a global promoter for ubiquitous expression of the TGF-b1 cDNA, but its transcription is blocked by the placement of an intervening floxed EGFP gene. Using the Cre recombinase, however, the EGFP gene can be excised to juxtapose the promoter and the TGF-b1 cDNA together to thereby activate its expression (see page 545, col. 2, para. 3). The combination of reference differs from claimed invention by not disclosing the disclosing the a PostnCre genetic system for the activation or inhibition of genes specifically in VIC cell.
Gomez-Stallons cure the deficiency by disclosing a PostnCre recombinase genetic system for the activation or inhibition of genes specifically in VIC (see page 1402). It is disclosed that PostnCre22 is active in aortic VICs, but not in endothelial cells, and is expressed robustly throughout the AoV (See page 1401, col. 2l, last para).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art seeking to overexpress human TGF1 in VIC cell of a mouse as disclosed in Dutta would be motivated to modify the mouse disclosed in Hall by using PostnCre recombinase genetic system disclosed in Gomez-Stallons, with a reasonable expectation of success, to selectively overexpress bioactive TGFb1 in VIC cells, before the effective filing date of the instant invention. Said modification amounting to combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would be motivated to do so in order to study the role of overexpression of TGFb1 in VIC in calcification of VIC as suggested in Dutta (see above). The limitation of claim 7 would be implicit in view Shi to a mouse resulting from the valve-interstitial cell- specific overexpression of the constitutively activated form of TGFB1. Absent evidence of unexpected results, one of skill in the art would have been expected to have a reasonable expectation of success in crossing TGF1 overexpressing mouse disclosed in Hall with PostnCre recombinase mouse disclosed in Gomez-Stallons to express bioactive TGFb1 in VIC of the mouse as suggested in Dutta and Jian, with a reasonable expectation of success as prior art successfully reported conditional expression of the TGF-b1 cDNA upon genomic recombination by Cre recombinase in a cell specific manner. It should be noted that the KSR case forecloses the argument that a specific teaching, suggestion, or motivation is required to support a finding of obviousness See the recent Board decision Ex parte Smith, --USPQ2d--, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007) (citing KSR, 82 USPQ2d at 1396) (available at http: www. uspto.gov/web/offices/dcom/bpai/prec/fd071925.pdf).
Response to arguments
Applicant argues that Tgfb 1/periCre transgenic mice presented in the application overcome many limitations of these previous animal models and recapitulate homan CAVD. This article reinforces the gaps that are filled by Applicants Tgfb1/Pericre mouse model. Applicant argues that Jian et al, shows that TGFb1 is elevated in surgically removed aortic valves from CAVD patients. This study does not establish if elevated TGFb1 is a cause or effect of CAVD. By overexpression Tgfb1 in valves our Tgfb1/periCre transgenic mice we have shown that increased TGFb1 resulted in CAVD and therefore our application establishes a causative role of TGFb1 in age-dependent CAVD development and progression. Gomez-Stallons the authors used Klotho knockout (K1-/-) mice in this study. The K1-/- mice die within few weeks after birth due to multiple complications, including severe wasting and kidney disease. Thus, K1-/- mice does not recapitulate age-dependent development and progression of human CAVD. Hall et al made TGFb1-stop-flox transgenic mice (commercially available from The Jackson Lab (Strain #:018393 ) that Applicant used in its application and in combination with PeriCre mice. Applicant showed that TGFb1Tg/PeriCreTg mice when combined developed CAVD, which is novel and highly innovative and very significant finding in the field of CAVD. For Shi et al, the authors reviewed the literature on TGFb signaling. Most of this pathway information came from cancer field and not from cardiovascular disease. None of the information presented in the review article highlights the role of TGFb1 in CAVD. Applicants’ arguments have been fully considered, but are not found persuasive.
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). Applicants have further engaged in selective reading of the teachings of Dutta as evidenced by Jian to formulate the grounds for teaching away or not teaching the invention. As previously indicated, Dutta and Jian both provide guidance that calcific aortic stenosis cusps characteristically contained within the extracellular matrix qualitatively higher levels of TGF-1 than noncalcified cusps (see Jian abstract). In view of foregoing, it is apparent that prior art provides requisite motivation to one of ordinary skill in the art to overexpress TGF-b1 in VIC of heart in order to study induction of calcification of VIC an in vivo animal model. Hall teaches a method to create a transgenic mouse that conditionally overexpresses bioactive TGF-b1 upon genomic recombination by Cre recombinase in a cell specific manner. Hall teaches a method of making transgenic mouse whose genome comprises from 5' to 3' the CAG promoter (containing a CMV-IE enhancer/beta-actin promoter), a loxP-flanked enhanced green fluorescent protein (EGFP) and polyA signal, a hemagglutinin (HA)-tagged porcine transforming growth factor, beta 1 (Tgfb1) cDNA. The Tgfb1 cDNA is from porcine that is modified to be constitutively active by missense mutations of two cysteine residues (C223 and C225) to serine (see page 544, col. 1, last para to col. 2, para. 1). A variety of recombinase genetic system suitable for this purpose are well-known in the art, including one disclosed in Gomez-Stallons who discloses a PostnCre recombinase genetic system for the activation or inhibition of genes specifically in VIC (see page 1402). It is disclosed that PostnCre22 is active in aortic VICs, but not in endothelial cells, and is expressed robustly throughout the AoV (See page 1401, col. 2l, last para). Thus, one of ordinary skill in the art seeking to overexpress human TGF1 in VIC cell of a mouse as disclosed in Dutta would be motivated to modify the mouse disclosed in Hall by using PostnCre recombinase genetic system disclosed in Gomez-Stallons, with a reasonable expectation of success, to selectively overexpress bioactive TGFb1 in VIC cells. Applicants' selective reading of Dutta and Jian. ignores the teachings of the Hall and Gomez-Stallons. There is no requirement for Dutta to teach that which is clearly taught by Hall and Gomez-Stallons. Absent evidence of unexpected results, one of skill in the art would have been expected to have a reasonable expectation of success in crossing TGF1 overexpressing mouse disclosed in Hall with PostnCre recombinase mouse disclosed in Gomez-Stallons to express bioactive TGFb1 in VIC of the mouse as suggested in Dutta and Jian, with a reasonable expectation of success as prior art successfully reported conditional expression of the TGF-b1 cDNA upon genomic recombination by Cre recombinase in a cell specific manner.
In response to applicant’s argument that disclosed TGF1/periCre transgenic mice presented in the application overcome many limitations of these previous animal models and recapitulate human CAVD, it is noted claim are not commensurate with the scope of the invention. The specification teaches a transgenic TGF beta1 +/+, Postn Cre mouse whose genome comprises a nucleic acid encoding bioactive TGF beta 1, wherein said mouse overexpresses bioactive TGF beta 1 predominantly in the cardiac outflow tract endocardial cushion cells and adult valve interstitial cell, wherein the transgenic TgfblTG;POStnCre mouse develops age appropriate aortic valve calcification and calcific aortic valve stenosis, and wherein the transgenic TGF beta1 +/+, Postn Cre mouse is produced by: crossing (i) a mouse whose genome comprises CAG promoter driving expression of a loxP-flanked EGFP/polyA cassette upstream of a constitutively active HA tagged porcine transforming growth factor, beta 1 (Tgfb1) cDNA as set forth in SEQ ID NO: 2, with (ii) a transgenic mouse whose genome comprises a nucleic acid encoding Cre recombinase under the control of Postn promoter, wherein said TGF beta1 +/+, Postn Cre mouse is born with three aortic valve leaflets wherein right and left coronary cusps of an aortic valve fuse at a base and form a raphe as the mouse grows. However, the independent claim is not so limited. Dependent claims limit the TGFb1 cDNA of the mouse that has been mutated to prevent assembly of at least one associate protein. There is no evidence that DNA sequences of all the TGFb1 cDNA that has been mutated to prevent assembly of at least one associate protein, other than the cysteine residues that is located in the pro region of the (TGF-β1 precursor at amino acid positions 223, and 225 to serine residue as set forth in SEQ ID NO: 2, encompassed within the plurality of TGFb1 cDNA of the mouse that has been mutated to prevent assembly of at least one associate protein have not been disclosed. The art teaches activation of rTGF-b1 can be achieved by acidification. Both TGF-b1 and TGFb1 S33 were >90% biologically inactive prior to acidification, whereas TGF-b1S223 and TGF-b1S225 were 80% inactive (see scope rejection above). However, TGFb1S223/225 was at least 70% active without acid treatment suggesting it is critical limitation and instant independent claim is not so limited.
Therefore, in view of the fact patterns of the instant case, and the ground of rejection outlined by the examiner, applicants’ arguments are not compelling and do not overcome the rejection of record.
Conclusion
No claims allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANOOP K. SINGH whose telephone number is (571)272-3306. The examiner can normally be reached Monday-Friday, 8AM-5PM.
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, Peter Paras can be reached at (571)272-4517. 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.
/ANOOP K SINGH/ Primary Examiner, Art Unit 1632