DETAILED ACTION
Receipt of Arguments/Remarks filed on June 2 2026 is acknowledged. Claims 5-7, 10-12, 14-15, 17, 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, 57 and 97 were amended. Claims 1-4, 8-9, 13, 16, 18-22, 24-25, 29-30, 33, 37-43, 52-57, 59, 66, 77, 97, 109 and 127-129 are pending. Claims 16, 77, 97, 109 and 128-129 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 15 2025. Claims 1-4, 8-9, 13, 18-22, 24-25, 29-30, 33, 37-43, 52-57, 59, 66 and 127 are directed to the elected invention.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 2 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Rejections
The amendments filed June 1 2026 are sufficient to overcome the rejection of claim 57 under 35 USC 112(b). The claim is not interpreted as being open to any patient.
The amendments filed June 1 2026 are sufficient to overcome the rejection of claims 1-4, 8-9, 13, 24-25, 29-30, 33, 52-56, 59 and 127 under 35 U.S.C. 102(a)(1) as being anticipated by Lim et al. (eLife, 2019, cited on PTO Form 1449). The amendments incorporate limitations from previously presented claim 17 which was not included in the rejection as Lim et al. does not expressly teach the incorporation of an electroporation enhancer.
Modified Rejection Based on Amendments in the reply filed on June 2 2026
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, 18-20, 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) in view of Jacobi et al. (Methods, 2017, cited on PTO Form 1449).
Applicant Claims
The instant application claims a method for genetic modification of a myeloid cell, the method comprising transfecting the myeloid cel by electroporation with 1) an electroporation enhancer and b) a gene editing reagent targeting a genetic site of interest, wherein the myeloid cell is not transduced with a viral vector.
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)
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).
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 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 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 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 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.
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.
Claims 21-22, 41 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, 18-20, 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).
Claim 57 is 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, 18-20, 24-25, 29-30, 33, 37-40, 42-43, 52-56, 59 and 127 above and in further 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. and Jacobi 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., Jacobi 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.
Response to Arguments
Applicants’ arguments filed June 2 2026 have been fully considered but they are not persuasive.
Applicants argue that a person of skill would not have been motivated to combine Lim et al. and Jacobi et al. as alleged because the unenhanced editing efficiency of Lim et al. was significantly higher than either the enhanced or unenhanced editing efficacy of Jacobi et al. Lim et al. teaches that their protocol as providing efficient gene knockdown. The editing efficiencies achieved by the method of Jacobi et al. does not come close to Lim et al. and therefore one would not have been motivated to combine the electroporation enhancer of Jacobi et al. to further improve their editing efficiencies. It is argued that there was no reasonable expectation that the electroporation enhancer of Jacobi et al. would improve the editing efficiency of Lim et al. The vast difference in starting editing efficiencies would not have led a person of ordinary skill in the art to contemplate addition of the electroporation enhancer. Jacobi makes it clear that the magnitude of improvement which can be achieved from addition of electroporation enhancer varies with the electroporation protocol and cell type and in some cases no additional benefit is seen with its use.
Regarding Applicants’ argument, Applicants are correct that the magnitude of improvement which can be achieved from the addition of an electroporation enhancer varies with the electroporation protocol and cell type and in some cases no additional benefit is seen with its use. But this is not the end of the statement, the last sentence of section 2.2 states “We have not found any disadvantage from use of the electroporation enhancer and thus include it in all electroporation experiments”. Therefore, while it is true that magnitude of its effect might vary and there might be no additional benefit because there are no disadvantages from its use, its incorporation is obvious because one would want to always include an enhancer in order to potentially achieve any benefit. It is not necessary to show that a combination is the best option, only that it be a suitable option. Note: MPEP 2144.07; Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373 (Fed. Cir. 2023). Therefore, while Lim et al. might teach efficient editing in certain situations, this does not mean that in all situations that the editing efficiency is as efficient as desired. This is where the teachings of Jacobi et al. are applicable as Jacobi et al. teaches that since there are no disadvantages to including the enhancer it can be used in all electroporation experiments. The examiner cannot agree that there isn’t a reasonable expectation of success. It is not a requirement that in all situations editing efficiency is increased just that there is a reasonable expectation that efficiency could increase or there is a benefit to including the enhancer. The examiner is of the position that Jacobi et al. makes it clear there is a benefit to including the enhancer.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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/ABIGAIL VANHORN/ Primary Examiner, Art Unit 1636
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