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 response to restriction requirement filed on September 4, 2025 have been received and entered. Claims 1-4, 7, 37-40, 42, 72-75, 77-78 and 81 are pending in the instant application.
Election/Restrictions
Applicant's election with traverse of claims 37-40, 42 (group II) in the reply filed on September 4, 2025 is acknowledged. The traversal is on the ground(s) that instant invention provides constructs comprising any number of V gene segments linked to identical full-length leader peptide sequences. Lonberg, in contrast, discloses a (possibly prophetic) description of a method that would not lead to a common (identical) leader peptide sequence before each V gene segment. Applicant assert that Lonberg misunderstood the genomic structure of the relevant V-gene encoding regions, since the human genome had not been fully sequenced as of its priority filing dates in 1990. Applicant assert that such constructs from Lonberg would provide a library of hybrid leader peptide sequence, not the common leader sequence of the present invention. The present invention provides constructs, that has identical leader peptide encoding sequences, for all V gene segments. This is not found persuasive because the special technical feature linking the invention of group I-V is a polynucleotide comprising two (plurality) human heavy chain leader/V gene segment comprising identical leader peptide encoding sequence. There is no requirement for identical leader peptide encoding sequences, for all V gene segments as argued by the applicant. Further, claims as presented do not require any specific sequence for the common leader sequence, Applicant in part agree that Lonberg possibly unsuccessfully teaches a prophetic description of a method for a common (identical) leader peptide sequence before each V gene segment. In view of foregoing, it is apparent that concept of using a common leader sequence of the present invention was suggested in prior art. This is further evident from the teaching of Grawunder (US 20060052585, dated 3/9/2006) who reported a polynucleotide containing a common leader exon located at 5’ of each of the plurality of human heavy chain variable gene segment (see para. 313). Therefore, special technical feature linking invention of group I-V does not contribute over prior art.
Applicant should note that examiner has required restriction between product claims and process claims. Since applicant elected, claims directed to the product, therefore once all product claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product claims would be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of the allowable product claim. The requirement is still deemed proper and is therefore made FINAL.
Claims 1-4, 7, 72-75, 77-78 and 81 are 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. Applicant timely traversed the restriction (election) requirement in the reply filed on September 4, 2025.
Claims 37-40 and 42 are under consideration.
Priority
This application is a 371 of PCT/US2020/065450 filed on 12/17/2020, which claims priority from US provisional application no 62/949,707 filed on 12/18/2019.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/22/2022 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Rejections - 35 USC § 112-scope of enablement
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 37-40 and 42 are 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 mouse whose genome comprises in its germline: (i) a homozygous immunoglobulin heavy chain (IgH) locus comprising (i) a plurality of human heavy chain leader/V gene segments at an endogenous IgH locus, upstream of an endogenous constant (C) region, wherein each of the human heavy chain leader/V gene segments comprises the same first leader peptide-encoding sequence and (ii) a homozygous immunoglobulin kappa light chain (IgH) locus comprising (i) a plurality of human kappa light chain leader/V gene segments at an endogenous Ig kappa light chain locus, upstream of an endogenous kappa constant (C) region, wherein each of the human kappa light chain leader/V gene segments comprises the same the same second leader peptide-encoding,
wherein said transgenic mouse is functional to express chimeric immunoglobulin heavy and kappa light chain polypeptide, and wherein said transgenic mouse is capable of producing an antibody comprising a chimeric Ig heavy/kappa light chain variable region following immunization with an antigen,
does not reasonably provide enablement for a non-human animal of any species other than a mouse, insertion of plurality of human heavy/light chain leader/V gene segments at any other genomic locus or a non-human animal with no phenotype to make and use the invention. 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:
The claims are directed to a transgenic non-human animal comprising in its genome a plurality of human heavy chain leader/V gene segments, wherein each of the human heavy chain leader/V gene segments comprises the same first leader peptide-encoding sequence. Dependent claim limits the transgenic nonhuman animal, wherein no additional human heavy chain leader/V gene segments are present in the genome of the non- human transgenic animal other than the plurality of human heavy chain leader/V gene segments comprising the same first leader peptide-encoding sequence. Claim 39 is directed to the nonhuman animal of independent claim further comprising in its genome a plurality of human light chain leader/V gene segments, wherein each of the human light chain leader/V gene segments comprises the same second leader peptide-encoding sequence, subsequently limiting the first leader peptide-encoding sequence is not the same as the second leader peptide-encoding sequence.
Breadth of the claims:
The breadth of claims embraces any non-human animal comprising in its genome at any genomic locus a plurality of human heavy/light chain leader/V gene segments, wherein each of the human heavy/light chain leader/V gene segments comprises the same first/second leader peptide-encoding sequence. Dependent claims limit the nonhuman animal , wherein the first leader peptide- encoding sequence is not the same as the second leader peptide-encoding sequence. The term nonhuman animal broadly includes, but is not limited to, vertebrates such as nonhuman primates, sheep, dogs, rabbits, rodents such as mice, rats and guinea pigs, avian species such as chickens, amphibians, and reptiles. In preferred embodiments, the subject is a mammal such as a nonhuman primate, sheep, dog, cat, rabbit, ferret or rodent (see page 19, lines 22-26). Additionally, none of the claim recite any specific human heavy chain leader/V gene segments comprising the common leader peptide-encoding sequence.
The breadth of claims embraces a transgenic nonhuman animal that allows for a targeted in situ insertion of the plurality of human heavy/light chain leader/V gene segments, wherein each of the human heavy/light chain leader/V gene segments comprises the same first/second leader peptide-encoding sequence. As such, claims encompass gene targeting for insertions and/or deletions of more than several kb that would at any genomic locus involving extensive genetic manipulation of nonhuman embryonic stem cells from different species in order to produce transgenic nonhuman animal including use of multiple selection markers through several rounds of genetic manipulation.
It is relevant to further note that none of the claims recite any resulting phenotype and therefore, one of skill in the art would not know how to use the nonhuman animal as encompassed by the claims without a phenotype (emphasis added). Given the breadth encompassed by the claims and lack of any resulting phenotype, the skilled artisan would find that even species of rodents such as mice or rats are unpredictable to be modified to be transgenic as embraced by the claims. As detailed below, the art teaches there is significant unpredictability even for the creation of transgenic mice as well as predicted phenotypes in mice.
Guidance of the Specification and the Existence of Working Examples:
The instant specification prophetically contemplates providing a non-human animal with a humanized heavy chain immunoglobulin locus for use in producing human antibodies, wherein the humanized heavy chain immunoglobulin locus comprises a plurality of human heavy chain leader/V gene segments all comprising the same leader peptide-encoding sequence. Fig. 1 of the specification teaches a schematic representation of a human immunoglobulin heavy chain variable domain locus as found in current transgenic animals used to generate human antibodies. All leader/V gene segment boxes represent both the V gene sequence and the naturally associated leader peptide-encoding sequence immediately upstream thereof. Leader/V gene segments are shown as boxes with different fill patterns to represent distinct leader-peptide encoding sequences for each leader/V gene segment, rather than the different V gene sequence. Figure 2 shows that leader/V gene segment boxes represent both the V gene sequence and the common leader peptide-encoding sequence immediately upstream thereof. All leader/V gene segments are the same color (black) to indicate that they comprise the same leader peptide-encoding sequence, even though each leader/V gene segment comprises a different V gene sequence. Example 1 teaches initial panel of potential leader peptide sequences are selected based on conservation and consensus of the sequence within the group of all leader sequences, frequency and usage in human antibody repertoire, and to maximize sequence diversity across the initial panel. The specification discloses that the heavy chain leader peptide-encoding sequence for IGHV 3-23 (SEQ ID NOs: 16 and 136), which encode SEQ ID NO: 86, were selected for heavy chains in the methods, constructs and mice of the present invention, as was light chain leader peptide-encoding sequence for IGKV 3-20 (SEQ ID NOs: 49 and 137), which encode SEQ ID NO: 112 (see para. 103). Example 2 selection of heavy and light chain V gene segments. The specification teaches the heavy chain leader peptide-encoding sequence for IGHV 3-23 (SEQ ID NOs: 16 and 136), which encode SEQ ID NO: 86, were selected for heavy chains in the methods, constructs and mice of the present invention, as was light chain leader peptide-encoding sequence for IGKV 3-20 (SEQ ID NOs: 49 and 137), which encode SEQ ID NO: 112. The disclosure of instant specification is prophetic and there is no evidence on record that a transgenic nonhuman animal comprising a plurality of human heavy/light chain leader/V gene segments with the identical leader sequence can be even generated that is capable of mounting a normal immune response upon immunization to make and use the invention,
State of the Art and Predictability of the Art & Amount of Experimentation Necessary:
Unpredictability of Any Genetically Modified Non-Human Animal
The claims broadly embrace any transgenic non-human animal species, where non-human animals comprise an extremely large genus of animal species including "animal" includes any member of the animal kingdom, including, for example, any of mouse, rat, rabbit or chicken species and includes such locus of the same species. The breadth of non-human animal includes, for example, but is not limited to, vertebrates such as nonhuman primates, sheep, dogs, rabbits, rodents such as mice, rats and guinea pigs, avian species such as chickens, amphibians, and reptiles. In preferred embodiments, the subject is a mammal such as a nonhuman primate, sheep, dog, cat, rabbit, ferret or rodent (see page 19, lines 22-26).
The claim invention encompasses any species of nonhuman animal to be made via modification of ES cells (see page 33 of the specification ). In this regard, the art teaches that creating genetically modified animals from any species of animal using ES cells is unpredictable in a variety of animal (particularly non-human mammal) species. It is further noted that the specification prophetically contemplates generating a variable domain array. The array is then assembled onto additional synthetic or germline IGH or IGK sequence to generate a targeting vector. The targeting vector includes positive drug selection, homology arms, and/or recombination sequences and is electroporated into embryonic stem cells along with recombinase or nuclease constructs. It is disclosed that the drug selection is performed using standard procedure and individual clones are screened by internal and external PCR, TLA Sequencing, or genome wide sequencing to confirm site specific integration. Pups are genotyped to confirm integration by any of the following techniques: PCR, southern blot, TLA Sequencing, or genome wide sequencing to confirm integration. Progeny are maintained at heterozygous or homozygous and intercrossed with relevant alleles for downstream use (see page 33, para. 1). However, the specification fails to provide any guidance as to other species of embryonic stem cells capable of contributing to the germline of a nonhuman animal as embraced by the breadth of the claims. Before the effective filing date, the skilled artisan did not consider the generation of knock-out or knock-in non-human animals other than the mouse as routine or predictable. As noted above, the specification only provides prophetic guidance for using mouse embryonic stem cells to generate a transgenic mouse. The specification provides no additional guidance for making any species of nonhuman animals. Before the effective filing date of the instant invention, the technology to produce animals with a gene-targeted knock-in and/or knock-out was considered limited to transgenic mice because the technology uses homologous recombination in embryonic stem (ES) cells. As the art teaches below, there is significant unpredictability in isolating, characterizing and using ES cells isolated from non-mouse species, and that pluripotency has not been validated or verified in any species of animal other than the mouse. Regarding ES cells, the art teaches that while mouse ES cells have been established, no validated porcine ES cells are available (Brevini et al., 2010, Theriogenology, Vol. 74, pgs. 544-550, see Abstract). Brevini continues to teach that conflicting data regarding the expression of pluripotency markers in porcine ESCs further complicates the understanding and establishment of a porcine ESC cell line (pg. 548 col. 2 para. 4). Brevini concludes by teaching that “Many factors, some of which are briefly discussed in the present manuscript, make the establishment of ESC lines in the pig, and in animal species other than mouse and human, a very slow process.” (pg. 548 col. 2 para. 5 lines 1-4). Brevini continues to teach that “Compared with the large number of studies exploring the appropriate culture conditions for mouse and human ESCs, there is a minimal amount of data available for domestic species ESC. That limited information is mainly based on mouse ESC culture systems. As a result, such conditions did not appear to be effective for maintaining stable undifferentiated ESC lines in domestic animals. We are convinced that a major goal at present is to develop better culture formulations in order to obtain homogenous pluripotent outgrowths from pig embryos and identify the best in vitro environment that would facilitate derivation of stable pESC culture” (pg. 546 col. 1 para. 2 bridge col. 2 para. 1). Regarding equine ES cells, Paris et al. (2010, Theriogenology, Vol. 74, pgs. 516-524) teach that a golden rule in the characterization of ESCs is that their behavior should recapitulate what occurs naturally in vivo and that markers for pluripotency in ESCs should only be expressed in cells destined to form the embryonic ICM (pg. 519 col. 2 para. 2 lines 1-5). Paris continues to teach that SSEA1, SSEA3, and SSEA4 are all cell surface antigens associated with pluripotent stem cells, but their precise functions in the maintenance of pluripotency is not known, thus, none of these markers can be used in isolation as a cross-species definitive indicator of pluripotency because there are considerable between-species differences in their expression in both ESCs and embryos (pg. 519 col. 2 para. 2 lines 5-10). Paris concludes by teachings that while several lines of stem cells have been isolated from the horse, the absence of any data verifying in vivo pluripotency of the cells means that the cells cannot yet be definitively classified as ESCs (pg. 519 col. 1 para. 2 lines 7-10).
Regarding feline pluripotent stem cells, the art teaches that while cat ES cells have been identified, they were not truly pluripotent. For example, Gomez et al. (2010, Theriogenology, Vol. 74, pgs. 498-515) teaches “In the present study, cat primary colonies and cESL cell lines 1) were generated with in vitro derived blastocysts, 2) were characterized by their cell morphology and expression of pluripotent markers, and 3) spontaneously differentiated into fibroblasts, cardiomyocytes and embryoid bodies. Nonetheless, the cells lost their self-renewal capacity and did not exhibit true pluripotency. Obtaining cells that do not exhibit all of the characteristics necessary to be categorized as ESCs, but, are nevertheless able to maintain some pluripotent characteristics that allow their use as donor nuclei for nuclear transfer may improve the efficiency of interspecies-nuclear transfer for preserving endangered cats.” (page 513, col. 2 parag. 2 lines 1-13).
Ezashi et al (Annu. Rev. Anim. Biosci. 2016. 4:223–53) reviewed the state of the art and states “papers reporting ESC derivation from swine, cow, and dog significantly outnumber those for sheep, goat, and cat (Figure 2, orange bars), but authentic ESC homologous to those described for rodent have not been established conclusively in any of these species (see page 227, para.1). Ezashi et al continue to teach that “the persistent failure in generating ESC from these same species may stem from a shared problem, namely, instability of the gene networks necessary to maintain pluripotency under the culture conditions employed” (see page 231, para. 1).
Hong et al. (Stem Cells and Development, 2012, Vol. 21(9), pgs. 1571-1586) teaches that there is unpredictability even among ES cells from different strains of rat (see abstract). Specifically, Hong teaches that while ES cells from either F344 or dark agouti rats could contribute to generate a chimera, only ES cells from dark agouti (DA) were determined to be germline competent (see Abstract and pg. 1584 col. 2 para. 2). Further Hong teaches that "In other laboratories, F344 ESCs have not produced chimeric rats after an injection into DA or SD blastocysts [references therein]. Further, Tong et al. (2010, Nature, Vol. 467(7312), pgs. 211-213) teaches: "Failure of mouse ES cells to contribute to the germline is often caused by chromosomal abnormalities in ES cells. This is also likely to be true for rat ES cells. In the instant case, Tong et al or any other prior art do not provide information about the PCR primer sequences by which a rat or any other nonhuman animal genomic library can be screened for BACs containing the relevant sequences. One of skill in the art would require more information and undue experimentation to identify suitable BAC clones, to make and use the invention in rat ES cells, without reasonable expectation of success. The disclosure of the specification is prophetic and provides no actual nonhuman animal whose genome comprises plurality of human heavy chain leader/V gene segments, wherein each of the human heavy chain leader/V gene segments comprises the same first leader peptide-encoding sequence. It is unclear performing ES cell clones through multiple rounds of manipulation would results in maintaining the germ line potential of the rat or other nonhuman ES cell line (see Liu et al Developmental Dynamics, 1997, 209, 85-91). No such data is presented to show that a transgenic nonhuman whose genome comprises either insertion and/or replacement of endogenous VH sequence with plurality of human heavy chain leader/V gene segments, wherein each of the human heavy chain leader/V gene segments comprises the same first leader peptide-encoding sequence. as broadly claimed. The evidence in prior art clearly establishes the fact that use of nonhuman animal ES cells other than making transgenic mouse was still evolving and unpredictable before the effective filing date of the claimed invention. The guidance provided in the specification is entirely prophetic and therefore, it would require undue experimentation for an Artisan to make and “use” the claimed invention, without reasonable expectation of success.
Unpredictability of Transgenesis and Expected Phenotypes in Transgenic nonhuman animal
Regarding the unpredictability of transgenesis, the art teaches that even in mice, the strain of the mouse significantly impacts the phenotype observed when expressing an exogenous gene. none of the claims recite any resulting phenotype and therefore, one of skill in the art would not know how to use an animal as encompassed by the claims without a phenotype (emphasis added). There is no guidance provided to show that any nonhuman animal can produce chimeric antibodies or are able to undergo productive recombination and class switching. It is noted that gerbils have a relatively small number of functional germ line V-genes that imposes constraints in the generation of antibody diversity as compared with animals such as humans and mice that possess a large pool of divergent VDJ genes that cause significant diversity. Thus, it is not clear that a human antibody locus would undergo rearrangement and develop even immature B-cells under the mechanism found in the or that that B-cells maturation would occur responsive to a particular antigen. In humans, B-cells are made in the bone marrow and travel to the lymph nodes for maturation into particular antibody secreting cells. The B-cells reaching the lymph node are committed to a certain antibody lineage. Since the B-cell maturation process is so very different from that found in humans, it is very likely that antibody diversity would not be found or that no antibodies would be produced. As indicated above, the claims are very broad and encompass many different possible genetic alterations (i.e., insertion and/or replacement or chromosomal inversions). However, the specific effect of the chromosomal inversion is not disclosed. That is, there is no specific phenotype disclosed that is the result of the engineered chromosomal inversion. It is acknowledged that the disclosed method could be used to create mice have chromosomal inversions such that inversion was engineered to disrupt specific target genes by making the break points of the inversion in specific target genes. However, the prior art teaches that disrupting specific target genes does not always result in the expected phenotypic outcome. The specification fails to provide an enabling disclosure for using any non-human transgenic animal. In the case of delivering the transgene to an adult nonhuman, unless the transgene specifically targets and is taken up by immature B cells prior to rearrangement of the endogenous Ig loci, the skilled artisan would not have considered it predictable or even possible for the transgene to rearrange. Productive rearrangement of Ig loci gene segments occurs at a very specific time in B cell development and requires B cell specific recombination proteins and accessory molecules (see Butler Rev Scientifique et Technique Office International Des Epizooties. 1998, 17, 1, 43-70, page 45, Figure 1).
Thus, a transgenic nonhuman animal comprising the transgene in non-B cells, or in B cells which have past the point of heavy chain rearrangement, would not be capable of rearranging the transgene and expressing an encoded chimeric heavy or light chain. The specification’s specific guidance is for making a transgenic rodent is limited solely to selection of progeny in which the transgene is integrated into the germline such that the transgene is present in all B cells at every point in development. Therefore, based on the art recognized requirements for productive immunoglobulin gene rearrangement leading to heavy chain gene expression, which requires the presence of the gene segments in B cells at a specific time in B cell development, the lack of guidance provided by the specification for methods to introduce the transgenes into any animal such that B cells at the appropriate developmental stage are targeted other than a transgenic nonhuman animal as embraced by the breadth of the claims, it would have required undue experimentation to make and use the scope of transgenic nonhuman animal. The specification further fails to provide an enabling disclosure for transgenes capable of productively rearranging and expressing antibody in any and all nonhuman animal. The primary antibody repertoire is produced by recombining V, (D), and J gene segments. In mice and humans, the germline loci of the light and heavy immunoglobulin chains undergo rearrangement of V, (D), and J elements resulting in considerable diversity as hundreds of VDJ genes are randomly recombined and genes are imprecisely joined together. However, in other types of nonhuman animal diversity of the primary repertoire is generated through templated gene conversion between different variable region genes and non-templated hypermutation (Butler, supra, pages 43-70). Since the mechanism for producing heavy and light chain genes from germline sequence is different in animals such as pigs, sheep, cows, and chickens, from that used in mice and humans, the skilled artisan would not have been able to predict without undue experimentation whether a human immunoglobulin V, genes segments would undergo successful rearrangement in a gene conversion animal to produce functional human antibodies. The specification contemplates providing any nonhuman animal whose genome comprises plurality of human heavy/light chain leader/V gene segments, it is not enabled for its full scope because based on the limited teaching of the specification, it is not predictable whether such animal, other than mouse whose genome comprises multiple human VDJ gene segments under the control of a mouse switch are able to undergo productive recombination and class switching. The specification provides no guidance or evidence for the expression of a human variable region-non-human constant region chimeric heavy or light chain in any non-human animal other than a transgenic mouse as discussed above. Therefore, in view of the art recognized substantial differences in the production of rearranged heavy and light chain genes between mice and humans, and other nonhuman animal, which result in a high level of unpredictability in expressing chimeric heavy or light chain as claimed in nonhuman animal (eg chicken, bird) that use gene conversion, the limited guidance provided by the specification for human variable heavy or light chain gene rearrangement in any nonhuman animal other than a mouse, and the breadth of the claims, it would have required undue experimentation at the time of filing to use the breadth of transgenes as claimed or to make and use the breadth of transgenic nonhuman animal as claimed.
The claims recite using a polynucleotide comprising a plurality of human heavy chain leader/V gene segments, wherein each of the human heavy chain leader/V gene segments comprises the same first leader peptide-encoding sequence, and plurality of human light chain leader/V gene segments, and wherein each leader/V gene segment comprises the same second leader peptide-encoding sequence. The specification teaches a heavy chain leader peptide-encoding sequence for a specific IGHV 3-23 (SEQ ID NOs: 16 and 136), which encode SEQ ID NO: 86, that is selected for heavy chains in the methods, constructs and mice of the present invention, as was light chain leader peptide-encoding sequence specific for IGKV 3-20 (SEQ ID NOs: 49 and 137), which encode SEQ ID NO: 112 (see para. 103). The specification is silent on making and producing any nonhuman animal that is capable of producing an antibody in response to an antigen. In the instant case, neither instant specification nor prior art teaches use any specific combination of polynucleotides of the invention to make and use a transgenic nonhuman animal with a phenotype. The art teaches a single-nucleotide polymorphisms in gene leader regions are position-sensitive and can functionally reverse or alter downstream variable gene expression, thereby impacting how the gene is regulated or produces protein (see Zhu et al Journal of Genetics and Genomics 48 (2021) 936-945, abstract and page 938, col. ,2, last para and page 939, col. 1). One of skill in the art would have to perform undue experimentation to optimize a specific combination of plurality of human heavy/light chain leader/V gene segments to make and use the nonhuman animal, without reasonable expectation of success.
Applicant should note that “case law requires that the disclosure of an application shall inform those skilled in the art how to use applicants’ alleged discovery, not to find out how to use it for themselves.” In re Gardner 166 USPQ 138 (CCPA) 1970. Given such species differences in the expression of a transgene, particularly when taken with the lack of guidance in the specification for any transgenic nonhuman animal whose genome comprises plurality of human heavy chain leader/V gene segments, wherein each of the human heavy chain leader/V gene segments comprises the same first leader peptide-encoding sequence that are able to undergo productive recombination and class switching, it would have required undue experimentation to predict the results achieved in any nonhuman animal comprising and expressing any human IgH/L, the levels of the transgene product, the consequences of that product, and therefore, the resulting phenotype upon antigen challenge. An artisan would have to perform undue experimentation to make and use the invention without reasonable expectation of success.
Therefore, undue experimentation would be required for one of skill in the art to make and/or use the transgenic nonhuman animal because the specification does not provide guidance for predictably using a transgenic nonhuman animal, such invention as claimed by applicant is not enabled commensurate with full scope for the claimed inventions.
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 37-40 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Murphy (PNAS, 2014, 111, 14, 5153-5158, IDS)/Buelow et al (WO2005007696, dated 01/27/2005, IDS), Campbell et al (Molecular Immunology, 1992, 193-203) as evidenced by Song (WO2014028389, dated 4/17/2014, IDS) and Grawunder (US20060052585, dated 3/9/2006).
Claims are directed to a transgenic non-human animal comprising in its genome a plurality of human heavy chain leader/V gene segments, wherein each of the human heavy chain leader/V gene segments comprises the same first leader peptide-encoding sequence.
Claim interpretation: Claims as presented neither require any specific phenotype nor any specific sequence for the first and second leader peptide encoding sequence, therefore claims are interpreted as any leader sequence that is based on leader primers designed that could be used to amplify diverse human Ig VH gene segment that are conserved across plurality of V gene segments.
With respect to claims 37, 39, Murphy teaches a transgenic mouse whose genome comprises a i) a homozygous immunoglobulin heavy chain (IgH) locus comprising (i) a plurality of human heavy chain leader/V gene segments at an endogenous IgH locus, upstream of an endogenous constant (C) region, and (ii) a homozygous immunoglobulin kappa light chain (IgH) locus comprising (i) a plurality of human kappa light chain leader/V gene segments at an endogenous Ig kappa light chain locus, upstream of an endogenous kappa constant (C) region (see fig. 1). It is relevant to note that Murphy teaches replacement of entire mouse endogenous heavy/kappa light chain gene segment with corresponding human heavy/light chain variable gene segment upstream of endogenous constant region.
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Further, Murphy teaches 3 constant specific primers paired with pooled leader primers for each family of human variable regions for both the heavy chain and kappa light chain that are separately used to produce the purified product that is cloned using TOPO cloning system. Murphy teaches each sequence was assembled into contigs and aligned to human Ig sequences using the IMGT V-Quest (2) search function. Murphy further teaches these sequences are compared with germ-line sequences for somatic hypermutation and recombination junction analysis (see supplementary information, page, 1, col. 1, last para. to col. 2). Likewise, Buelow teaches a transgenic mouse (see page whose genome comprises a whose genome comprises a i) a homozygous immunoglobulin heavy chain (IgH) locus comprising (i) a plurality of human heavy chain leader/V gene segments at an endogenous IgH locus, upstream of an endogenous constant (C) region, and (ii) a homozygous immunoglobulin kappa light chain (IgH) locus comprising (i) a plurality of human kappa light chain leader/V gene segments at an endogenous Ig kappa light chain locus, upstream of an endogenous kappa constant (C) region (see example 10-11: figures 1, 4, 5,6 and 10).
Murphy/ Buelow teaches different leader sequences linked to the human heavy/light chain V gene segments. Murphy differs from claimed invention by not disclosing wherein each of the human heavy/kappa chain leader/V gene segments comprises the same first/second leader peptide-encoding sequence.
Before the effective filing date of instant application, it was generally known in art that leader sequence-based primers could be used to amplify diverse human Ig VH gene segment since leader sequences are conserved across variable gene families than internal FR region. This would allow broader and less biased detection of rearranged V genes. Campbell designed a set of six, non-degenerate oligonucleotide primers, corresponding to the 5' leader regions of each of the six human VH gene families. The references provide a general strategy for family specific polymerase chain reaction amplification using these primers and a conserved 3' primer corresponding to frame work3, JH, or constant region. This strategy is used to isolate and sequence novel human germline VH genes belonging to the VH2 and VH4 families. Campbell shows that targeting the leader region facilitates broad repertoire of germline VH gene segment (see entire abstract). Song provided requisite heavy chain and light chain leader sequence by identifying several highly conserved amino acids sequence for heavy chain and light chain leader sequence (see claim 9 and 21 of ‘389). Campbell and Song differs from claimed invention by not disclosing/demonstrating using common leader exon, located 5' of each VH, DJH and VLJL gene segments.
Grawunder cure the deficiency by disclosing a vector comprising human IgH and IgL chains containing all the coding regions and control elements for human antibody expression. It is disclosed that the coding regions for the variable domains contain a common leader exon, located 5' of each VH, DJH and VLJL rearranged exon (FIG. 15) (limitation of claim 38, 40) that is required for the proper transport of IgH and IgL chains through the endoplasmatic reticulum, the trans Golgi network and eventually to the cell surface (see para. 312).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to combine the teachings of prior art to modify the transgenic mouse of Murphy/Buelow by substituting different leader sequences linked to the human heavy/light chain V gene segments with common leader exon, located 5' of each of the heavy/light chain variable gene segment as suggested in Grawunder by using the leader sequence-based primers to amplify diverse human Ig VH/VL gene segment disclosed in Campbell, as instantly claimed, with a reasonable expectation of success, to produce transgenic mouse that facilitates broad repertoire of germline VH gene segment, before the effective filing date of instant application. 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 use a common leader sequence that are conserved across variable gene families than internal FR region because this would allow broader and less biased detection of rearranged V genes (See Campbell). Other limitation of using first leader encoding sequence that is different from a second leader encoding sequence (limitation of claim 42) would be obvious modification as to design common leader sequences that are conserved across variable gene families of human heavy and kappa light chain variable gene segment respectively and therefore different between the distinct heavy and light chain gene families. Absent evidence of any superior result or use of any specific common leader sequence, one of skill in the art would have been expected to have a reasonable expectation of success because prior art successfully used a common leader exon, located 5' of each heavy and/or light chain variable gene segment for proper transport of IgH and IgL chains that is eventually expressed to the cell surface. 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) (KSR, 82 USPQ2d at 1396) (http: www. uspto.gov/web/offices/dcom/bpai/prec/fd071925.pdf).
Conclusion
No claims allowed.
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/ANOOP K SINGH/ Primary Examiner, Art Unit 1632