DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, Claims 1-15, in the reply filed on 6/19/2025 is acknowledged.
Claims 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6/19/2025.
Applicant elected the following species:
NDV species: SEQ ID NO: 10.
Spike protein species: SEQ ID NO: 6.
Claims 1-15 are under examination on the merits.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 8/12/2022 is in compliance with 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code on p. 117. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01. The examiner suggests replacing each “.” in the hyperlink with “_” to render the hyperlink non-browser executable.
Claim Objections
Claims 5 and 6 are objected to because of the following informalities: claims 5 and 6 bear a typographical mistake where they recite “AMPV5” rather than “APMV5”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: line 2 of claim 5 has a typographical mistake where “encoding” or “that encodes” is missing after “a nucleic acid” and before “a chimeric F protein”. Appropriate correction is required.
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.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 refers to “the nucleic acid” on lines 7 and 8, but it is unclear which “nucleic acid” is being referred to, because the claim previously mentions multiple nucleic acids. Claims 2-5 depend from claim 1 but do not resolve the lack of clarity, and thus are also indefinite.
Claim 13 recites the limitation "the therapeutic agent" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries 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 6, 9, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Schrier et al. (PGPub US20130084264A1, published 4/4/2013, filed 6/9/2011; hereinafter referred to as “Schrier), in view of Cheng et al. (PGPub US20160208222A1, published 7/21/2016, priority date 9/2/2014; hereinafter referred to as “Cheng”).
The claimed invention encompasses an engineered Newcastle Disease Virus (NDV) vector comprising a nucleic acid having a nucleic acid sequence encoding an L protein having a stabilizing segment, a chimeric F protein, and a chimeric HN protein, wherein the chimeric F protein comprises avian paramyxovirus 5 (APMV5) F protein segment thereof at the N-terminus and an NDV F protein segment at the C-terminus, and wherein the chimeric HN protein comprises an NDV HN protein segment at the N-terminus and an HN protein segment at the C-terminus, as recited in claim 6. Another embodiment of the claimed invention encompasses an immunogenic composition, oncolytic agent, or vaccine comprising the engineered NDV vector, as recited in claim 15.
In another embodiment, the nucleic acid further comprises at least one heterologous nucleic acid segment encoding a therapeutic agent operably linked to a promoter capable of expressing the segment in a host cell, as recited in claim 12. Alternatively, the chimeric F protein comprises at the C-terminus 53 amino acids of NDV F protein from amino acid positions 501 to 553 of SEQ ID NO: 28, or the chimeric HN protein comprises at the N-terminus 53 amino acids of NDV HN protein from amino acid positions 1 to 53 of SEQ ID NO: 34, as recited in claim 9.
The Prior Art
Schrier teaches pharmaceutical compositions comprising Avian Paramyxovirus (APMV) for use in the treatment of a tumor in a mammal (Abstract). Schrier discloses that Newcastle disease virus (NDV) is a member of the avian paramyxo viruses (APMV1) that exhibits anti-tumor effects, in addition to its use as a vaccine vector (paras. [0001-0002]). Schrier further discloses that other APMV types, including APMV 1, 3, 4, 5, 6, 7, 8, and 9, have anti-tumor effects (para. [0005]). Schrier also teaches chimeric NDV that bear mutated HN and/or F proteins, or HN and/or F proteins from a different APMV type (paras. [0021] & [0026-0032]).
However, Schrier does not teach chimeric F protein with APMV5 F protein at the N-terminus and NDV F protein segment at the C-terminus, nor does it teach chimeric HN protein comprising NDV HN protein segment at the N-terminus and AMPV5 HN protein segment at the C-terminus.
Cheng teaches methods for inducing regression of tumors in human subjects, the methods utilizing a modified strain of NDV, which is non-pathogenic to poultry (lentogenic), but exhibits oncolytic properties (Abstract). Cheng’s recombinant NDV may contain chimeric F and/or HN genes (para. [0065], Fig. 12). Cheng specifically teaches chimeric NDV genomic DNA produced by replacing F and HN of NDV with those of another paramyxovirus PPMV-1, where the C-terminal coding sequence for the cytoplasmic tail and transmembrane portion of NDV F (amino acid residues 503 to 553) was joined with the ectodomain F protein coding sequence of PPMV-1 (residues 1 to 502), the N-terminal coding sequences of the NDV HN (amino acid sequence residues 1 to 45) was fused with the HN (residues 46 to 577) with the HN by overlapping PCR reactions (para. [0174]). XbaI is one of the endonuclease used in inserting heterologous NA sequences (see also, paras. [0005, 7, 10, 65]; working examples 11 and 19; figs. 2-5). Additionally, Cheng discloses the NDV has a polynucleotide sequence that is a transgene encoding a polypeptide that enhances the oncolytic properties of the virus, a cytokine, cell surface ligand, and/or chemokine (para. [0005]).
It would have been obvious to one of ordinary skill in the art to modify the recombinant NDV vector featuring APMV5 components of Schrier to incorporate use of the chimeric F and HN proteins, as taught by Cheng. Schrier teaches that both NDV and APMV5 exhibit anti-tumor effects, and that NDV vectors may bear mutated or HN and/or F proteins, or HN and/or F proteins from a different APMV type. Cheng teaches NDV wherein F and HN of NDV are replaced with those of another paramyxovirus, where the C-terminal coding sequence for the cytoplasmic tail and transmembrane portion of NDV F (amino acid residues 503 to 553) was joined with the ectodomain F protein coding sequence of PPMV-1 (residues 1 to 502), the N-terminal coding sequences of the NDV HN (amino acid sequence residues 1 to 45) was fused with the HN (residues 46 to 577) with the HN, but does not specifically teach use of APMV5 F and HN protein segments as the other portion of the chimera. Notably, the claimed amino acid segments appear to correlate to the ectodomains of the chimeric F protein and HN protein in the instant claim 9. One of ordinary skill in the art would have been motivated to combine the teachings of Schrier and Cheng to make an oncolytic or vaccine vector, since Schrier discloses APMV5 and NDV each exhibit anti-tumor effect. Therefore, claims 6, 9, 12 and 15 were prima facie obvious before the priority date of the instant invention.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng (PGPub US20160208222A1, published 7/21/2016, priority date 9/2/2014; hereinafter referred to as “Cheng”) in further view of Jang et al. (US 11,179,459 B2, issued 11/23/2021, priority date 1/28/2021; hereinafter referred to as “Jang” ), Murphy et al. (PGPub US20080096264A1, published 4/24/2008; hereinafter referred to as “Murphy”), and Palese (PGPub US20200061184A1, published 2/27/2020, priority date of 5/11/2018; hereinafter referred to as “Palese”).
The claimed invention encompasses an engineered Newcastle Disease Virus (NDV) vector comprising a nucleic acid having a nucleic acid sequence that is at least 95% or 100% identical to the nucleic acid sequence of any one of SEQ ID NO: 10, wherein the nucleic acid comprises or further comprises at least one heterologous nucleic acid segment encoding a therapeutic agent operably linked to a promoter capable of expressing the segment in a host cell, wherein the nucleic acid comprises a nucleic acid sequence encoding an L protein having a stabilizing segment, and wherein the nucleic acid comprises XbaI and MluI restriction endonuclease sites between nucleic acid sequence encoding phosphoprotein and matrix protein, as recited in claim 1. In a specific embodiment, the vector comprises a nucleic acid having a nucleic acid sequence that is at least 95% or 100% identical to the nucleic acid sequence of SEQ ID NO: 10, as recited in claim 2.
The Prior Art
The teachings of Cheng are described above. However, Cheng does not teach a nucleic acid sequence that is at least 95% identical to SEQ ID NO: 10, nor does it teach a nucleic acid comprising XbaI and MluI restriction endonuclease sites between nucleic acid sequence encoding phosphoprotein and matrix protein.
Jang teaches vaccine compositions including a recombinant Newcastle disease virus on the surface of which the SARS-CoV-2 RBD protein is expressed for use as a vaccine for treating SARS-CoV-2 infection (Abstract). Jang also teaches nucleotide insertions into the genomes of recombinant NDV utilizing the restriction site MluI (Table 1). Additionally, Jang discloses insertion of transgenic cassette sequences between the P and M genes (LVP-K2 clone, Fig. 1A).
Murphy teaches recombinant genomes of parainfluenza viruses and their use as vaccines (Abstract). Murphy further teaches insertion of nucleic acid sequences using restriction endonucleases into multiple cloning sites under the control of transcription signals (para. [0162]), and discloses XbaI and MluI restriction sites (Fig. 3; paras. [0132, [0385]).
Palese teaches chimeric NDV comprising a genome encoding interleukin-12 for the treatment of cancer (Abstract). Palese specifically teaches SEQ ID NO: 21, which is 99% identical in sequence to the instant SEQ ID NO: 10 (para. [0476]; Fig. 21).
It would have been obvious to one of ordinary skill in the art to modify the methods and compositions of Cheng to incorporate use of the chimeric NDV genome that is 99% identical in sequence to the instant SEQ ID NO: 10, and to utilize a nucleic acid comprising XbaI and MluI restriction endonuclease sites between nucleic acid sequence encoding phosphoprotein and matrix protein, as taught by Murphy and Jang. Palese teaches that its chimeric NDV genome for the treatment of cancer which is 99% identical in sequence to the instant SEQ ID NO: 10. Murphy teaches recombinant genomes of parainfluenza viruses and use of restriction endonucleases into multiple cloning sites, and the restriction sites XbaI and MluI. Jang teaches the insertion of transgenic cassette sequences between the P and M genes of NDV. One of ordinary skill in the art would have been motivated to generate a recombinant NDV vector for cancer treatment. Therefore, claims 1-2 were prima facie obvious before the priority date of the instant invention.
Claims 1-3, 6-9, 11-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Schrier (supra) and Cheng (supra) in view of Jang (supra), Murphy (supra), and Palese (supra).
The claimed invention encompasses an engineered Newcastle Disease Virus (NDV) vector comprising a nucleic acid having a nucleic acid sequence that is at least 95% or 100% identical to the nucleic acid sequence of any one of SEQ ID NO: 10, wherein the nucleic acid comprises or further comprises at least one heterologous nucleic acid segment encoding a therapeutic agent operably linked to a promoter capable of expressing the segment in a host cell, wherein the nucleic acid comprises a nucleic acid sequence encoding an L protein having a stabilizing segment, and wherein the nucleic acid comprises XbaI and MluI restriction endonuclease sites between nucleic acid sequence encoding phosphoprotein and matrix protein, as recited in claim 1. In a specific embodiment, the vector comprises a nucleic acid having a nucleic acid sequence that is at least 95% or 100% identical to the nucleic acid sequence of SEQ ID NO: 10, as recited in claim 2.
In another embodiment, the claimed invention encompasses an engineered Newcastle Disease Virus (NDV) vector comprising a nucleic acid having a nucleic acid sequence encoding an L protein having a stabilizing segment, a chimeric F protein, and a chimeric HN protein, wherein the chimeric F protein comprises avian paramyxovirus 5 (APMV5) F protein segment thereof at the N-terminus and an NDV F protein segment at the C-terminus, and wherein the chimeric HN protein comprises an NDV HN protein segment at the N-terminus and an HN protein segment at the C-terminus, as recited in claim 6. Another embodiment of the claimed invention encompasses an immunogenic composition, oncolytic agent, or vaccine comprising the engineered NDV vector, as recited in claim 15.
In another embodiment, the nucleic acid further comprises at least one heterologous nucleic acid segment encoding a therapeutic agent operably linked to a promoter capable of expressing the segment in a host cell, as recited in claim 12. Alternatively, the chimeric F protein comprises at the C-terminus 53 amino acids of NDV F protein from amino acid positions 501 to 553 of SEQ ID NO: 28, or the chimeric HN protein comprises at the N-terminus 53 amino acids of NDV HN protein from amino acid positions 1 to 53 of SEQ ID NO: 34, as recited in claim 9.
In another embodiment of the claimed invention, the therapeutic agent comprises a SARS-CoV-2 spike protein, as recited in claim 3. In a different embodiment, the vector comprises a nucleic acid having a nucleic acid sequence of a chimeric F protein and a chimeric HN protein, wherein the chimeric F protein comprises avian paramyxovirus 5 (APMV5) F protein segment thereof at the N-terminus and an NDV F protein segment at the C-terminus, and wherein the chimeric HN protein comprises an NDV HN protein segment at the N-terminus and an AMPV5 HN protein segment at the C-terminus, as recited in claim 5. In a specific embodiment, the nucleic acid comprises XbaI and MluI restriction endonuclease sites between nucleic acid sequence encoding phosphoprotein and matrix protein, as recited in claim 7. In a specific embodiment, the stabilizing segment comprises an amino acid sequence as set forth in SEQ ID NO: 20, or comprises an amino acid sequence encoded by a nucleic acid comprising a nucleic acid sequence as set forth in SEQ ID NO: 35, as recited in claim 8. Alternatively, the NDV vector is lentogenic, and the nucleic acid comprises a nucleic acid sequence of SEQ ID NO: 25, as recited in claim 11. In another embodiment, the therapeutic agent comprises a SARS-CoV-2 spike protein, as recited in claim 13.
The Prior Art
The teachings of Schrier and Cheng are described above. However, they do not teach a nucleic acid sequence that is at least 95% identical to SEQ ID NO: 10, nor do they teach a nucleic acid comprising XbaI and MluI restriction endonuclease sites between nucleic acid sequence encoding phosphoprotein and matrix protein, or wherein the therapeutic agent comprises a SARS-CoV-2 spike protein.
Jang teaches vaccine compositions including a recombinant Newcastle disease virus on the surface of which the SARS-CoV-2 RBD protein is expressed for use as a vaccine for treating SARS-CoV-2 infection (Abstract). Jang also teaches nucleotide insertions into the genomes of recombinant NDV utilizing the restriction site MluI (Table 1). Additionally, Jang discloses insertion of transgenic cassette sequences between the P and M genes (LVP-K2 clone, Fig. 1A).
Murphy teaches recombinant genomes of parainfluenza viruses and their use as vaccines (Abstract). Murphy further teaches insertion of nucleic acid sequences using restriction endonucleases into multiple cloning sites under the control of transcription signals (para. [0162]), and discloses XbaI and MluI restriction sites (Fig. 3; paras. [0132, [0385]).
Palese teaches chimeric NDV comprising a genome encoding interleukin-12 for the treatment of cancer (Abstract). Palese specifically teaches SEQ ID NO: 21, which is 99% identical in sequence to the instant SEQ ID NO: 10 (para. [0476]; Fig. 21). Palese’s SEQ ID NO: 21 also comprises the instant SEQ ID NO: 25 and SEQ ID NO: 35.
It would have been obvious to one of ordinary skill in the art to modify the recombinant NDV vector featuring APMV5 components of Schrier to incorporate use of the chimeric F and HN proteins, as taught by Cheng. Schrier teaches that both NDV and APMV5 exhibit anti-tumor effects, and that NDV vectors may bear mutated or HN and/or F proteins, or HN and/or F proteins from a different APMV type. Cheng teaches NDV wherein F and HN of NDV are replaced with those of another paramyxovirus, where the C-terminal coding sequence for the cytoplasmic tail and transmembrane portion of NDV F (amino acid residues 503 to 553) was joined with the ectodomain F protein coding sequence of PPMV-1 (residues 1 to 502), the N-terminal coding sequences of the NDV HN (amino acid sequence residues 1 to 45) was fused with the HN (residues 46 to 577) with the HN, but does not specifically teach use of APMV5 F and HN protein segments as the other portion of the chimera. Notably, the claimed amino acid segments appear to correlate to the ectodomains of the chimeric F protein and HN protein in the instant claim 9. One of ordinary skill in the art would have been motivated to combine the teachings of Schrier and Cheng to make an oncolytic or vaccine vector, since Schrier discloses APMV5 and NDV each exhibit anti-tumor effect.
In addition, it would have been obvious to one of ordinary skill in the art to modify the methods and compositions of Schrier and Cheng to incorporate use of the chimeric NDV genome that is 99% identical in sequence to the instant SEQ ID NO: 10, and to utilize a nucleic acid comprising XbaI and MluI restriction endonuclease sites between nucleic acid sequence encoding phosphoprotein and matrix protein, as taught by Murphy and Jang. Palese teaches that its chimeric genome which is 99% identical in sequence to the instant SEQ ID NO: 10. Murphy teaches recombinant genomes of parainfluenza viruses and use of restriction endonucleases into multiple cloning sites, and the restriction sites XbaI and MluI. Jang teaches the insertion of transgenic cassette sequences between the P and M genes of NDV. One of ordinary skill in the art would have been motivated to generate NDV vaccines vectors against SARS-CoV-2 or for anti-tumor treatments. Therefore, claims 1-3, 6-9, 11-13 and 15 were prima facie obvious before the priority date of the instant invention.
Claims 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Schrier, Cheng, Jang, Murphy, and Palese as applied to claims 1-3, 6-9, 11-13 and 15 above, and further in view of Zsolt et al. (US Patent No. 10,973,909 B1, issued 4/13/2021, priority date of 4/7/2020; hereinafter referred to as “Zsolt”).
In another embodiment of the claimed invention, the therapeutic agent comprises a SARS-CoV-2 spike protein that comprises an amino acid sequence having at least 95% identity to the amino acid sequence of SEQ ID NO: 6, as recited in claims 4 & 14.
The Prior Art
The teachings of Schrier, Cheng, Murphy, Jang, and Palese are described above. However, they do not teach a SARS-CoV-2 spike protein that comprises an amino acid sequence having at least 95% identity to the amino acid sequence of SEQ ID NO: 6.
Zsolt teaches polypeptides, vaccines, and pharmaceutical compositions for prevention or treatment of coronaviridae or SARS-CoV-2 infection, and discloses SEQ ID NO: 122, which is a spike protein amino acid sequence that is 100% identical to the instant SEQ ID NO: 6. See alignment below.
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It would have been obvious to one of ordinary skill in the art to modify the teachings of Schrier, Cheng, Jang, Murphy, and Palese to incorporate use of the SARS-CoV-2 spike protein taught by Zsolt. One of ordinary skill in the art would have been motivated to vaccinate against SARS-CoV-2. Therefore, claims 4 and 14 were prima facie obvious before the priority date of the instant invention.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Schrier and Cheng (supra) as applied to claims 6, 9, 12 and 15 above, and further in view of Cho et al. (PGPub US20100183664A1, published 7/22/2010, priority 9/27/2006; hereinafter referred to as “Cho”).
In another embodiment of the claimed invention, the L protein comprises an amino acid sequence having at least 95% identity to the amino acid sequence as set forth in SEQ ID NO: 11, the chimeric F protein comprises an amino acid sequence having at least 95% identity to the amino acid sequence of SEQ ID NO: 12, and/or the chimeric HN protein comprises an amino acid sequence having at least 95% identity to the amino acid sequence of SEQ ID NO: 13, as recited in claim 10.
The Prior Art
The teachings of Schrier and Cheng were previously described above. However, they do not teach an L protein that comprises an amino acid sequence having at least 95% identity to the amino acid sequence as set forth in SEQ ID NO: 11.
Cho teaches recombinant NDV vaccine vectors, with a surface antigen of pathogenic NDV strain placed in an attenuated NDV strain genome (Abstract). Cho further teaches SEQ ID NO: 7, which is an NDV F protein amino acid sequence that is 99.8% identical to the instant SEQ ID NO: 11. Cho discloses that its recombinant NDV vectors, which are novel vaccine strains result in safe NDV vaccine strains with antigenicity similar to that of a field strain (para. [0022]).
It would have been obvious to one of ordinary skill in the art to modify the NDV vector of Schrier and Cheng by incorporating the L protein taught by Cho. One of ordinary skill in the art would have been motivated to do so to create NDV vaccine vectors that are safe but have antigenicity similar to that of field strains. Therefore, claim 10 was prima facie obvious to one of ordinary skill in the art before the priority date of the instant application.
Conclusion
No claim is allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY MARK SIFFORD whose telephone number is (571)272-7289. The examiner can normally be reached 8:30 a.m. - 5:30 p.m. ET with alternating Fridays off.
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/JEFFREY MARK SIFFORD/Examiner, Art Unit 1671 /BENJAMIN P BLUMEL/Primary Examiner, Art Unit 1671