DETAILED ACTION
Election/Restrictions
Applicant’s election of Group I, electroporation, CRISPR-Cas system and single stranded DNA in the reply filed on September 15 2025 is 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 § 818.03(a)).
Claims 5-7, 10-12, 14-15, 23, 26-28, 31-32, 34-36, 44-51, 58, 60-65, 67-76, 78-96, 98-108 and 110-126 were/stand cancelled. Claims 1-4, 8-9, 13, 16-22, 24-25, 29-30, 33, 37-43, 52-57, 59, 66, 77, 97, 109 and 127-129 are pending in the application. Claims 16, 77, 97, 109 and 128-129 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 15 2025. The examiner notes that the restriction requirement included claim 77 in both group I and II. This appears to be a typo as the response filed September 15 2025 clearly withdrew claim 77. For the sake of clarity, the examiner is addressing the typo. Group I is directed to a method for genetic modification and a genetically modified cell made by the method whereas group II is directed to the system and composition. Since the restriction was not traversed, the grouping is deemed proper and the restriction requirement is made final. Accordingly, claims 1-4, 8-9, 13, 17-22, 24-25, 29-30, 33, 37-43, 52-57, 59, 66 and 127 are being examined on the merits herein.
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 .
Priority
This application is a CON of PCT/US2021/019488 (02/24/2021) which claims benefit of 62/983,568 (02/28/2020) and claims benefit of 63/010,476 (04/15/2020) as reflected in the filing receipt issued on May 23 2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on November 21 2022 and April 26 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement filed May 1 2025 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because NPL 1 and 3 are not legible. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Claim Rejections - 35 USC § 112
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.
Claim 57 is 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.
Claim 57 depends from claim 33. Claim 33 is directed to a method for genetic modification of a plurality of myeloid cells. Claim 57 recites “wherein at least 70% of the transfected cells are administered to a patient in need thereof”. It isn’t clear who the patient in need thereof is referring to. Typically a patient in need thereof is associated with a particular disease/disorder. Here, the claim depends from a claim that is performing some sort of genetic modification. The claim does not specify the scope of the patient to clearly define who the cells are administered to. Since claim 33 never refers to a patient, but merely refers to modification of cells, claim 57 fails to clearly identify who is being administered the cells. The recitation “in need thereof” appears to indicate that the administration is not merely to any patient but someone in need of something but never states what is that something.
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.
Claim(s) 1-4, 8-9, 13, 24-25, 29-30, 33, 52-56, 59 and 127 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lim et al. (eLife, 2019, cited on PTO Form 1449).
The instant application claims a method for genetic modification of a myeloid cell, the method comprising transfecting the myeloid cell with a gene editing reagent targeting a genetic site of interest, wherein the myeloid cell is not transduced with a viral vector.
Lim et al. exemplify a gene editing protocol. Specifically primary monocytes from the bone marrow (i.e. primary myeloid cells) were electroporated (transfected) with recombinant Cas9 complexed with gene-specific guide RNAs, reading on CRISPR-Cas system comprising a Cas protein (i.e. Cas9) and a guide RNA. Locus-specific crRNAs were annealed with tracrRNA followed by complexing with recombinant Cas9 to generate the RNP complex. Cells were resuspended in solution and RNP complex added. The mixture was electroporated. Following electroporation, cells were grown in non-tissue culture treated dishes (page 18; Gene editing).
Regarding claims 1, 33, 59 and 127, Lim et al. expressly teaches the same method step of transfecting myeloid cell(s) with the same editing reagent wherein the cell is not transduced with a viral vector and thus suggest the same genetically modified myeloid cell. Since the guide is gene-specific, Lim et al. clearly teaches a gene editing reagent targeting a genetic site of interest.
Regarding claim 2-3, primary monocytes from the bone marrow are utilized reading on primary myeloid cell and monocyte.
Regarding claim 4, electroporation is expressly taught.
Regarding claim 8 and 59, the instant specification, paragraph 102, states a selection step may be a positive or negative selection for a phenotype of interest, for example, antibiotic resistance. This same paragraph states that enrichment is a process that enriches or expands a population of cells of interest or cells obtained from a selection step. The presence of the “and/or” in the claim is interpreted as indicating one (either selection or enrichment) can be present if the other is not or that both are not present. Lim et al. does not teach a selection step. It does not appear that Lim et al. also teaches an enrichment step, but even if growing cells in a non-tissue culture is interpreted as an enrichment step, Lim et al. does not teach a selection step and therefore anticipates claim 8.
Regarding claims 9 and 13, Lim et al. teaches a CRISPR-Cas system comprising a Cas9 protein and a guide RNA.
Regarding claim 24, the instant specification, paragraph 0110, states that myeloid cells may be activated by exposure of the cells to various factors, including viruses. Lim et al. does not teach activating the myeloid cells. Lim et al. teaches suspending cells in nucleofector solution P3 but this does not appear to fall within the scope of activator.
Regarding claim 25, Lim et al. teaches locus-specific crRNAs were annealed with tracrRNAs at a 1:1 stoichiometric ratio followed by complexing with recombinant Cas9 at a 3 µL:1 µL gRNA:Cas9 ratio per guide RNA to generate the RNP complex. Two guide RNAs were combined per gene (page 18; Gene editing).
Regarding claim 29, as shown in supplementary file 2 in Lim et al., the guide RNAs are sgRNA.
Regarding claim 30, as shown in supplementary file 2 of Lim et al., the guide RNAs target multiple genetic sites of interest.
Regarding claims 52-56, Lim et al. teaches a 3:1 ratio of gRNA:Cas9. This reads on not only about 3:1 but also “about” 2:1. While paragraph 0034 of the instant specification indicates that term about “preferably” means the value may vary by +/- 10%, this is not a limiting definition as signified by the term preferably.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 8-9, 13, 17-20, 24-25, 29-30, 33, 37-40, 42-43, 52-56, 59 and 127 are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al. (eLife, 2019, cited on PTO Form 1449) as applied to claims 1-4, 8-9, 13, 24-25, 29-30, 33, 52-56, 59 and 127 above in view of Jacobi et al. (Methods, 2017, cited on PTO Form 1449).
Applicant Claims
The instant application claims the myeloid cell is contacted with an electroporation enhancer during transfection.
The instant application claims the ratio of guide RNA to ribonucleoprotein (RNP) is about 2:1.
The instant application claims the site of interest is modified in at least 70% of the plurality of myeloid cells.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Lim et al. are set forth above. Lim et al. teaches editing of myeloid cells with CRISPR via electroporation.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Lim et al. does not expressly teach the incorporation of an electroporation enhancer, a ratio of 2:1 and the site of interest is modified at least 70%. However, these deficiencies are cured by Jacobi et al.
Jacobi et al. is directed to simplified CRISPR tools for efficient genome editing and streamlined protocols for their delivery into mammalian cells and mouse zygotes. Electroporation of Cas9 ctRNP complexes is taught. Taught is the addition of the Alt-RTM Cas9 electroporation enhancer reagent, which is a single stranded oligonucleotide with no homology to human, mouse or rat genomes, during electroporation which increase efficiency of indel (insertion/deletion) formation through stimulation of error-prone repair pathways and possibly also by improving RNP uptake; the magnitude of benefit varies with the electroporation protocol and cell type. No disadvantages from the use of the electroporation enhancer was found (section 2.2). Total genome editing was estimated to have occurred at around 70% when the electroporation enhancer was used. Without the enhancer, efficiency was reduced. The inclusion of the electroporation enhancer often improves efficiency of NHEJ gene disruption in Cas9 ctRNP genome editing applications but only when electroporation is employed (section 3.2). Systematic optimization of electroporation protocols can dramatically improve Cas9 ctRNP delivery and cell viability. Results for the optimal condition have both very high editing efficiency and high cell viability (section 3.3).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Lim et al. and Jacobi et al. and utilize an electroporation enhancer. One skilled in the art would have been motivated to utilize an electroporation enhancer in order to increase editing efficiency as taught by Jacobi et al. Since Lim et al. and Jacobi et al. are both directed to electroporation of Cas9 RNP complexes there is a reasonable expectation of success.
Regarding claims 17-20, as taught by Jacobi et al., Alt-RTM Cas9 electroporation enhancer reagent is a single stranded oligonucleotide with no homology to human, mouse or rat genomes. This is taught as a ssDNA (section 2.3.3).
Regarding claims 37-40, 42-43, 54 and 56, as taught by Jacobi et al. systematic optimization of electroporation protocols can dramatically improve Cas9 ctRNP delivery and cell viability. Therefore, based on the express teachings in Jacobi et al. one skilled in the art would manipulate the electroporation protocols in order to optimize the electroporation and achieve the optimal high editing efficiency and cell viability. This would include optimization of the Cas9:gRNA ratio.
Claims 21-22, 41-43 and 66 are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al. in view of Jacobi et al. as applied to claims 1-4, 8-9, 13, 17-20, 24-25, 29-30, 33, 37-40, 42-43, 52-56, 59 and 127 above and in further view of Chistiakov et al. (Immunobiology 2015) as evidenced by Poltorak et al. (Frontiers in Immunology, 2015).
Applicant Claims
The instant application claims the myeloid cell is differentiated into a dendritic cell.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Lim et al. and Jacobi et al. are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Lim et al. suggests myeloid cells, Lim et al. does not teach the myeloid cells are differentiated into a dendritic cell. However, this deficiency is cured by Chistiakov et al.
Chistiakov et al. is directed to myeloid dendritic cells: development, functions and role in atherosclerotic inflammation. Dendritic cells (DCs) comprise a heterogeneous population of blood-borne professional antigen-presenting cells characterized by ability to catch, process and present antigens to T cells, which in turn recognize the antigen and induce the antigen-specific immune response. Therefore, DCs are key players in induction of immune response and linked together innate and humoral immunity (page 834, first paragraph). Myeloid DCs are a plastic lineage capable to acquire regulator or stimulatory properties depending on the stimuli coming from the local microenvironment (Fig. 2).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Lim et al., Jacobi et al. and Chistiakov et al. and utilize myeloid dendritic cells. One skilled in the art would have been motivated to utilize these cells are they are capable of acquiring regulator or stimulatory properties depending on the stimuli. One skilled in the art would have a reasonable expectation of success as Lim et al. teaches myeloid cells. Myeloid dendritic cells are a specific type of myeloid cells. Since they are a similar cell type and Jacobi et al. teaches that electroporation can be used in a variety of cell types.
Regarding the claimed differentiation, as evidenced by Poltorak et al., DCs develop from monocytes (Fig 1).
Claims 1-4, 8-9, 13, 24-25, 29-30, 33, 52-57, 59 and 127 are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al. (eLife, 2019, cited on PTO Form 1449) as applied to claims 1-4, 8-9, 13, 24-25, 29-30, 33, 52-56, 59 and 127 above in view of Gundry et al. (Cell Rep, 2016).
.
Applicant Claims
The instant application claims at least 70% of the transfected cells are administered to a patient in need thereof, without selection or enrichment of the cells.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Lim et al. are set forth above. Lim et al. teaches electroporation of myeloid cells with a CRISPR-Cas system.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Lim et al. does not expressly teach administration of the cells to a patient. However, this deficiency is cured by Gundry et al.
Gundry et al. is directed to highly efficient genome editing of murine and human hematopoietic progenitor cells by CRISPR/Cas9. Taught is electroporation of HL-60 cells (myeloid cells) with a Cas9-sgRNP (page 5, efficient gene disruption in human HSPCs). Taught is transplantation of Cas9/sgRNP edited cells into NSG mice (page 6). The results establish that the method allows for efficient gene disruption (page 7).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Lim et al. and Gundry et al. and administer the transfected cells of Lim et al. to a NSG mouse (i.e. patient). One skilled in the art would have been motivated to administer the transfected cells in order to provide for gene disruption as taught by Gundry et al. The examiner notes that while claim 57 is indefinite, the recitation to a patient in need thereof is interpreted to being directed to any in vivo administration.
Regarding the claimed “at least 70% of the transfected cells are administered”, the desire of administering the cells is to allow for efficient gene disruption. Therefore, one skilled in the art would have been motivated to manipulate the amount of transfected cells in order to achieve the desired level of gene disruption. The amount of a specific ingredient in a composition is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results. The amount of an active ingredient is a parameter that a person of ordinary skill in the art would routinely optimize based on the condition being treated, severity of the condition and desired dosing frequency, among other factors.
It would have been obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). NOTE: MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABIGAIL VANHORN whose telephone number is (571)270-3502. The examiner can normally be reached M-Th 6 am-4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neil Hammell can be reached on 571-270-5919. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABIGAIL VANHORN/Primary Examiner, Art Unit 1636