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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/04/2026 has been entered.
Status of the Claims
Claims 1, 3, 22-26, 31-33, 36, 53-54, 59, 62-63, and 65-66 are pending.
Claims 1, 3, 23, 26, and 65 are newly amended.
Claim 66 is newly added
Claim 53-54 and 59 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 08/04/2025 and made FINAL.
Claims 1, 3, 22-26, 31-33, 36, 62-63, and 65-66 have been examined on their merits.
Withdrawn Objections & Rejections
The objections and rejections presented herein represent the full set of objections and rejections currently pending in the application. Any objections or rejections not specifically reiterated are hereby withdrawn.
The previous rejection of claims 1, 3-4, 22-23, 25-27, 31, 33, 36, and 64 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited) are withdrawn in order to address the claimed as amended.
The previous rejection of claim 24 under 35 U.S.C. 103 as being unpatentable over Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited) in view of Chen et al. (Advanced Drug and Delivery Reviews, 2013, previously cited) is withdrawn in order to address the claimed as amended.
The previous rejection of claim 32 under 35 U.S.C. 103 as being unpatentable over Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited) is withdrawn in order to address the claimed as amended.
The previous rejection of claim 62 under 35 U.S.C. 103 as being unpatentable over Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited) in view of Jahrsdorfer et al. (Immunobiology, 2010, previously cited) is withdrawn in order to address the claimed as amended.
The previous rejection of claim 63 under 35 U.S.C. 103 as being unpatentable over Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited) in view of Jahrsdorfer et al. (Immunobiology, 2010, previously cited) as applied to claims 1 and 62 above, and further in view of Boivin et al. (Laboratory Investigation, 2009) is withdrawn in order to address the claimed as amended.
The previous rejection of claim 65 under 35 U.S.C. 103 as being unpatentable over Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited) in view of Huang et al. (Nature Communications, 2017) and Mircetic et al. (Small Methods, 2017) is withdrawn in order to address the claimed as amended.
Claim Rejections - 35 USC § 112(b)
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 3 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 3 contains the trademark/trade name TALEN. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the genetic engineering tool Transcription Activator-Like Effector Nuclease and, accordingly, the identification/description is indefinite.
It is noted that simply removing the abbreviated term would be ameliorative.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 22-26, 31-33, 36, 62-63, and 65-66 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 1 encompasses a genus of Granzyme B “or a functional fragment or variant thereof.”
While the instant specification asserts “a variant thereof or a fragment thereof” (paragraph [0144]), and broadly claims fragments with size ranges of at least 10 amino acids, and fragment percentages of at least 10% of the protein (paragraph [0161]) the specification only identifies Granzyme B (see Examples 1-5, paragraphs [0297-0334], and neither identifies nor tests for any particular fragment or variant.
As evidenced by Creative Enzymes (Retrieved from internet 06/10/2026) Granzyme B consists of 247 amino acids. With a minimum of 10 amino acids, this results in at least 28,411 possible (contiguous) fragments (a fragment of length 10 can start at any point from 0 to 237 yielding 247 – 10 + 1 = 238 fragments; total fragments = (n(n +1)/2; thus, 238 x (238 + 1)/2 = 28,441).
Under the written description guidelines (see MPEP 2163) the Examiner is directed to determine whether one skilled in the art would recognize that the Applicant was in possession of the claimed invention as a whole at the time of filing. The following considerations are critical to this determination.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
Accordingly, to satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63, 19 USPQ2d 1111 (Fed. Cir. 1991). See also MPEP 2163.
Actual Reduction to Practice
In regards to claims 1, 3, 22-26, 31-33, 36, 62-63, and 65-66, while as above, a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). While the instant specification asserts Granzyme B or a functional fragment or variant thereof, the specification only identifies Granzyme B, and neither identifies nor tests for any particular fragment or variant.
Accordingly, Applicant has not demonstrated the full genus of a Granzyme B functional fragment or variant thereof, nor demonstrated identifying characteristics as evidenced by other descriptions of the invention that are sufficiently detailed to show that Applicant was in possession of the claimed genus of compositions.
State of the Art
In regards to claims 1, 3, 22-26, 31-33, 36, 62-63, and 65-66, while as evidenced by Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited), while reduction to practice of fusion proteins comprising Granzyme B were known in the art (see Examples 3, paragraph [0080]), reduction to practice of fragments or Granzyme B the art is silent as to the reduction to practice of the broad genus of fragments or variants.
Conclusion
In regards to claims, 1, 3, 22-26, 31-33, 36, 62-63, and 65-66, the claims require the broad limitation of a genus of Granzyme B “or a functional fragment or variant thereof”, yet the instant specification provides no guidance nor description of the claimed fragments or variants. While it was known in the art that Granzyme B could be used in fusion proteins, the art is not well established as to the genus of possible fragments or variant.s
Therefore, the Examiner concludes that there is insufficient written description of the instantly claimed genus of fragments or variants as limited in claim 1.
Specifically, there no description of functional fragment or variants or Granzyme B, and the art does not adequately describe the genus of possible fragments or variants, and a person of ordinary skill in the art would find that the specification inadequately described the claimed genus of compositions.
Claims 3, 22-26, 31-33, 36, 62-63, and 65-66 are rejected under 35 USC 112(a) for their dependence on claim 1.
Claim Rejections - 35 USC § 102 or in the alternative 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1, 22-23, 26, 31, 33, and 36 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited).
In regards to claims 1 and 26, Holt discloses methods for delivering therapeutic proteins of interest to the cytoplasm of a target cell comprising contacting the target cell with an engineered (modified) lymphocyte (leukocyte) (claims 1 and 21; Fig. 1; paragraph [0027]).
Holt discloses that the modified leukocyte comprises a fusion (chimeric) protein comprising Granzyme B and a therapeutic protein (polypeptide) (claims 1, 10-12, and 16; Fig. 1; paragraphs [0005, 0009]). Holt also discloses that Granzyme B is inactivated by genetic mutation in order eliminate its cytotoxic function in regards to the granzyme-perforin pathway (Fig. 1; claims 1 and 21; paragraphs [0029, 0033, 0065]). Therefore, Granzyme B is inactivated, the fusion protein is “non-lytic.”
In regards to knocking out the endogenous Granzyme B, Holt discloses that the endogenous granzyme and secondary cytotoxic mechanisms may be knocked out by gene editing technologies such as CRISPR, etc. in order to not damage or destroy the target cell during contact with the delivery lymphocyte (paragraphs [0033, 0065]). Holt discloses that this is advantageous because in embodiments where a cytotoxic lymphocyte is used to deliver a predetermined protein to repair a disease state in a cell, the endogenous cytotoxic activity of the delivery cytotoxic lymphocyte is clearly at odds with the therapy; thus, in such in embodiments the cytotoxic functions of the delivery cells are genetically turned off, or otherwise attenuated (paragraph [0065]).
Continuing, Holt explicitly teaches that in an embodiment designed to deliver beneficial compounds to target cells, “all of the endogenous effector mechanisms of the delivery lymphocytes are . . . knocked out entirely using programmable nucleases (ZFNs, CRISPR etc)” (paragraph [0065]), which broadly includes Granzyme B, which Holt not only identifies as a best characterized granzyme-perforin pathway cytotoxic effector mechanism (paragraph [0023]), but also discusses the knocking out of in the same paragraph [i.e., paragraph [0065], “the effector agent (e.g. granzyme B) portion of a fusion protein used to deliver the payload may be inactivated . . . by either mutating the full length . . . to make it incapable of killing the target cell”). Therefore, a person of ordinary skill in the art would have immediately envisioned endogenous Granzyme B as an effector mechanism to be knocked out (see MPEP 2131.02(III), reference disclosure can anticipate a claim when the reference describes the limitations but “‘d[oes] not expressly spell out’ the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
However, even if Holt’s broad disclosure of “all of the endogenous effector mechanisms” as above, does not necessarily imply specific knock-out of endogenous Granzyme B, it would still have been prima facie obvious to knock out endogenous Granzyme B based on the disclosure of Holt.
Specifically, a person of ordinary skill in the art would have been motivated to specifically knock-out endogenous Granzyme B in order to eliminate its cytotoxic effects and in order to not counteract the effects of the Granzyme B fusion protein.
Furthermore, because as above, Holt explicitly teaches that endogenous granzymes may be knocked out and identifies Granzyme B as a well characterized species, it could have been done with predictable results and a reasonable expectation of success.
In regards to claims 22, Holt discloses that granzyme B at least, which is part of the chimeric protein, comprises a signal peptide (paragraph [0023]).
In regards to claim 23, Holt discloses that the granzyme (Granzyme B) is conjugated to the payload (therapeutic polypeptide) by a protein linker sequence (GS) (Figs. 2A and 3).
In regards to claim 31, Holt discloses that the lymphocyte is activated, causing expression of the therapeutic protein and thus production of the modified leukocyte (Abstract; Fig. 1; claim 1).
In regards to claim 33, Holt discloses that the leukocytes can be concentrated in a pharmaceutically acceptable container (a composition) for administration (to a patient) (paragraph [0072]).
In regards to claim 36, Holt discloses that the leukocytes may be obtained (extracted) from patients which can be activated to express the protein of interest, and readministered to the patient (paragraph [0030]).
Therefore, Holt either anticipates or in the alternative renders the invention unpatentable as claimed.
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 3, 25, and 65-66 are rejected under 35 U.S.C. 103 as being unpatentable over Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited) in view of Huang et al. (Nature Communications, 2017, previously cited) and Mircetic et al. (Small Methods, 2017, previously cited) as evidenced by Josephs et al. (Nucleic Acid Research, 2015).
Holt anticipates or renders obvious claim 1 as discussed above.
In regards to claims 3 and 65, while Holt teaches that the therapeutic polypeptide (fusion protein) can comprise Cre enzyme (paragraph [0059]) (which is a well-known genome editing protein), Holt does not explicitly teach the genome editing proteins as in claim 65 (including CRISPR-associated (Cas) nuclease, etc.).
However, a person of ordinary skill in the art would have been motived to use a gene editing protein such as CRISPR-associated (Cas) nuclease, because Huang teaches that while CRISPR-Cas9 and Cre recombinase technology produce similar cells, CRISPR-Cas9 can be used to do so more rapidly and with fewer costs (Abstract, p1; Introduction, p1).
Furthermore, because as above Holt teaches that the therapeutic polypeptide (the granzyme fusion protein) can comprise a genome editing protein and because as taught by Mircetic it was known in the art that Cas9 fusion proteins can be made (Abstract, p1), it could have been done with predictable results and a reasonable expectation of success.
In regards to claim 25, Holt teaches that the therapeutic protein can comprise a nuclear localization sequence (paragraph [0063]).
In regards to claim 66, as above, in specific embodiments, Holt teaches that the therapeutic polypeptide is Cre enzyme (paragraph [0059]).
It is well known in the art that cre enzyme has a molecular weight of approximately 36-38 kDa, and is therefore, smaller than the claimed weight of at least 100 kDa.
However, as discussed above, a person of ordinary skill in the art would have been motived to use a gene editing protein such as CRISPR-associated (Cas) nuclease, because Huang teaches that while CRISPR-Cas9 and Cre recombinase technology produce similar cells, CRISPR-Cas9 can be used to do so more rapidly and with fewer costs (Abstract, p1; Introduction, p1).
Furthermore, because as above Holt teaches that the therapeutic polypeptide (the granzyme fusion protein) can comprise a genome editing protein and because as taught by Mircetic it was known in the art that Cas9 fusion proteins can be made (Abstract, p1), it could have been done with predictable results and a reasonable expectation of success.
Additionally, as evidenced by Josephs, CAS (CAS9) is a 160 kDa protein (Results and Discussion, p8929), and therefore, the therapeutic polypeptide as modified to be CAS would be 160 kDa which overlaps with the claimed weight of at least 100 kDa.
Therefore, the combined teachings of Holt, Huang, and Mircetic renders the invention unpatentable as claimed.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited) in view of Chen et al. (Advanced Drug and Delivery Reviews, 2013, previously cited).
In regards to claim 24, as discussed above, Holt teaches that the granzyme is conjugated to the payload (therapeutic polypeptide) by a protein linker sequence, which in specific embodiment is a GS linker (Figs. 2A and 3).
While GS linkers are considered in the art to be stable linkers, a person of ordinary skill in the art would have been motivated to use a cleavable linker because Chen teaches that cleavable linkers have better efficacy in vivo (p11) and can be used in particular for drug targeting (p12).
Furthermore, because Chen teaches that cleavable linkers can target fusion (chimeric) proteins to specific sites in vivo (p11-12) and because Holt teaches that other sequences within the construct can contain cleavable sequences (2A sequences, Fig. 3), it could have been done with predictable results and a reasonable expectation of success.
Therefore, the combined teachings of Holt and Chen renders the invention unpatentable as claimed.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited).
Holt anticipates or renders obvious claims 1 and 31 as discussed above.
In regard to claim 32, Holt teaches that the lymphocyte is activated, causing expression of the therapeutic protein and thus production of the modified leukocyte and contacted with a target cell (Abstract; Fig. 1; claim 1).
While Holt is silent on the number of days between activation and contacting, Holt teaches that lymphocytes produce chimeric proteins no later than 48 hours (2 days) after transfection (paragraphs [0085-0086]; Fig 6).
A person of ordinary skill in the art would have been motivated to perform the contacting step after 2 days, which is less that the timing of not more than 5 days, because it would more quickly change the cellular behavior of a target cells, which could then more quickly be delivered to patients. Furthermore, because Holt indicates that transfected cells produce protein by at least 48 hours, it could have been done with predictable results and a reasonable expectation of success.
Therefore, the teachings of Holt render the invention unpatentable as claimed.
Claim 62 is rejected under 35 U.S.C. 103 as being unpatentable over Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited) in view of Jahrsdorfer et al. (Immunobiology, 2010, previously cited).
Holt anticipates or renders obvious claim 1 as discussed above.
In regards to claim 62, Holt teaches that the leukocyte is a lymphocyte (Claim 1).
However, a person of ordinary skill in the art would have been motivated to use a myeloid cell as the type of lymphocyte because Jahrsdorfer teaches that dendritic cells (a myeloid cell type) are an abundant source of granzymes, inhibits T cells proliferation in a granzyme dependent manner, and may contribute to an improvement in prophylactic and therapeutic vaccinations (Abstract, p1156; pDC-derived active GrB is delivered to T cells and inhibits T-cell proliferation, 1160; Discussion, p1163, last paragraph).
Furthermore, because Jahrsdorfer teaches that it is known the dendritic cells secrete granzymes, and because Holt and Jahrsdorfer are both in the same technical field of using cell-derived granzymes to target cells, it could have been done with predictable results and a reasonable expectation of success.
Therefore, the combined teachings of Holt and Jahrsdorfer render the invention unpatentable as claimed.
Claim 63 is rejected under 35 U.S.C. 103 as being unpatentable over Holt (US20170182096A1, 2017, on IDS 06/27/2025, previously cited) in view of Jahrsdorfer et al. (Immunobiology, 2010, previously cited) as applied to claims 1 and 62 above, and further in view of Boivin et al. (Laboratory Investigation, 2009).
In regards to claim 63, while the type of myeloid cell as taught by Jahrsdorfer is a dendritic cell, not a macrophage specifically.
However, Boivin teaches that granzymes (granzyme B specifically) are excreted by a range of immune cells including macrophages (Introduction, p1195-1196). Boivin also teaches that these granzyme-secreting macrophages accumulate at sites of disease, such as in the lungs of smoking patients with COPD (Table 2, 1202).
Therefore, a person of ordinary skill in the art would have been motivated to choose macrophages in order to treat diseases (such as COPD) in the niches in which they are found (the lungs of smoking patients). Furthermore, because Boivin teaches that macrophages express granzyme B and are a significant source of granzyme B at sites of injury (Introduction, p1195-1196; Table 2, 1202), it could have been done with predictable results and a reasonable expectation of success.
Therefore, the combined teachings of Holt, Jahrsdorfer, Boivin renders the invention unpatentable as claimed.
Response to Arguments
Applicant argues that Holt does not anticipate the invention as claimed (Remarks, p-8). Specifically, Applicant argues that Holt does not teach the elements of requiring that the fusion protein contain Granzyme B and that the cell comprises a genetic knockout of endogenous Granzyme B (Remarks, p7-8).
While Applicant admits that Holt discloses that Granzyme B is part of the chimeric protein, the requirement that the endogenous granzyme B has been genetically knocked out is absent in Holt (Remarks, p8).
Applicant argues that, while Holt teaches inactivation of the cytotoxic effects of exogenous granzyme B in the chimeric protein, Holt teaches the inactivation of endogenous cytotoxic effects in general terms, and does not specifically teach the inactivation of endogenous granzyme B (Remarks, p8).
Applicant also argues that the inactivation is carrier out by “genetic knockout” (Remarks, p8).
Applicant’s arguments filed 02/10/2026 have been fully considered by are not found persuasive.
As discussed above, Holt discloses methods for delivering therapeutic proteins of interest to the cytoplasm of a target cell comprising contacting the target cell with an engineered (modified) lymphocyte (leukocyte) (claims 1 and 21; Fig. 1; paragraph [0027]).
Holt discloses that the modified leukocyte comprises a fusion (chimeric) protein comprising Granzyme B and a therapeutic protein (polypeptide) (claims 1, 10-12, and 16; Fig. 1; paragraphs [0005, 0009]). Holt also discloses that Granzyme B is inactivated by genetic mutation in order eliminate its cytotoxic function in regards to the granzyme-perforin pathway (Fig. 1; claims 1 and 21; paragraphs [0029, 0033, 0065]). Therefore, Granzyme B is inactivated, the fusion protein is “non-lytic.”
In regards to knocking out the endogenous Granzyme B, Holt discloses that the endogenous granzyme and secondary cytotoxic mechanisms may be knocked out by gene editing technologies such as CRISPR, etc. in order to not damage or destroy the target cell during contact with the delivery lymphocyte (paragraphs [0033, 0065]). Holt discloses that this is advantageous because in embodiments where a cytotoxic lymphocyte is used to deliver a predetermined protein to repair a disease state in a cell, the endogenous cytotoxic activity of the delivery cytotoxic lymphocyte is clearly at odds with the therapy; thus, in such in embodiments the cytotoxic functions of the delivery cells are genetically turned off, or otherwise attenuated (paragraph [0065]).
Continuing, Holt explicitly teaches that in an embodiment designed to deliver beneficial compounds to target cells, “all of the endogenous effector mechanisms of the delivery lymphocytes are . . . knocked out entirely using programmable nucleases (ZFNs, CRISPR etc)” (paragraph [0065]), which broadly includes Granzyme B, which Holt not only identifies as a best characterized granzyme-perforin pathway cytotoxic effector mechanism (paragraph [0023]), but also discusses the knocking out of in the same paragraph [i.e., paragraph [0065], “the effector agent (e.g. granzyme B) portion of a fusion protein used to deliver the payload may be inactivated . . . by either mutating the full length . . . to make it incapable of killing the target cell”). Therefore, a person of ordinary skill in the art would have immediately envisioned endogenous Granzyme B as an effector mechanism to be knocked out (see MPEP 2131.02(III), reference disclosure can anticipate a claim when the reference describes the limitations but “‘d[oes] not expressly spell out’ the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
However, even if Holt’s broad disclosure of “all of the endogenous effector mechanisms” as above, does not necessarily imply specific knock-out of endogenous Granzyme B, it would still have been prima facie obvious to knock out endogenous Granzyme B based on the disclosure of Holr.
Specifically, a person of ordinary skill in the art would have been motivated to specifically knock-out endogenous Granzyme B in order to eliminate its cytotoxic effects and in order to not counteract the effects of the Granzyme B fusion protein.
Furthermore, because as above, Holt explicitly teaches that endogenous granzymes may be knocked out and identifies Granzyme B as a well characterized species, it could have been done with predictable results and a reasonable expectation of success.
Applicant argues that the instant application demonstrates surprising results, and specifically, that knockout of endogenous granzyme B enhances protein transport when the chimeric protein comprises granzyme B which would not have been expected by the teachings of Holt (Remarks, p8-9; citing Fig. 3C of the Drawings).
Applicant’s arguments filed 02/10/2026 have been fully considered by are not found persuasive.
In regards to Applicant’s allegations of unexpected results, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (see MPEP 716.02(d)).
In the instant case, the claims do not require any specific result.
Furthermore, according to MPEP 716.02(a), not only must the evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength “are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration.”), but also, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) (Evidence showing greater than additive sweetness resulting from the claimed mixture of saccharin and L-aspartyl-L-phenylalanine was not sufficient to outweigh the evidence of obviousness because the teachings of the prior art lead to a general expectation of greater than additive sweetening effects when using mixtures of synthetic sweeteners.).
Additionally, as discussed above, Holt explicitly teaches that the endogenous granzyme and secondary cytotoxic mechanisms (which may be Granzyme B as discussed above) may be knocked out in order to not damage or destroy the target cell during contact with the delivery lymphocyte and that this is advantageous because in embodiments where a cytotoxic lymphocyte is used to deliver a predetermined protein to repair a disease state in a cell, the endogenous cytotoxic activity of the delivery cytotoxic lymphocyte is clearly at odds with the therapy; thus, in such in embodiments the cytotoxic functions of the delivery cells are genetically turned off, or otherwise attenuated (paragraph [0065]).
Therefore, because target cells are surviving contact with chimeric cells, an increase in protein transport would be the expected result.
Applicant argues that claim 3 as amended requires CRISPR or TALEN as a gene editing protein (Remarks, p9). Specifically, Applicant asserts that in comparison to CRE, CRISPR and TALEN are larger proteins, and in particular, Applicant asserts that CRISPR/CAS proteins are known to be very difficult to transfer and deliver to cells, have poor stability, and tend to aggregate and degrade in the endosomes, which causes difficulty as it results in an even larger complex which does not transport (Remarks, p9).
Specifically, Applicant argues that according to Nguyen et al. (2020, it is noted that Nguyen has not been cited in the Office Action), aggregation of CAS9 forms aggregates of 200 nm size or larger, but that as taught by Holt, the total size of the fusion protein is limited by the size of the perforin pores of approximately 20 nm through which the fusion protein is delivered to the target cells (Remarks, p9).
Therefore, Applicant argues that because there is no indication that the inclusion of Granzyme in the fusion protein would interfere with CAS aggregation, in light of the teachings of Holt regarding the size limitation on protein selection, a person of ordinary skill in the art would not have a reasonable expectation of success in regards to including CRISPR nucleases in the chimeric protein (Remarks, p9-10).
Applicant likewise asserts that TALEN proteins are also large and known to aggregate (Remarks, p10).
Applicant’s arguments filed 02/10/2026 have been fully considered by are not found persuasive.
In regards to Nguyen et al. (2020), if Applicant would like this reference considered then it needs to be included on an IDS.
Moreover, this is contradicted by Josephs who evidences that the CAS (CAS9) has a size of 10 nm x 10 nm x 5 nm (Results and Discussion, p8929), and therefore would fit within a 20 nm perforin pore.
Furthermore, Applicant’s arguments are not commensurate in scope with the claims. The claims do not suggest anything about the aggregation of CAS, and the therapeutic protein is not limited to a specific size.
Thus, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a therapeutic polypeptide comprising a CAS or TALEN protein greater than 20 nm) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Holt does not teach a therapeutic polypeptide of a molecular weight of at least 100kDa (Remarks, p10). Applicant also argues that in light of Holt’s teachings about the need to pass through a 20 nm perforin pores a person, a person of ordinary skill in the art would not have expected such a large protein to be transferrable (Remarks, p10).
Applicant’s arguments filed 02/10/2026 have been fully considered by are not found persuasive.
As discussed above, in regards to claim 66, as above, in specific embodiments, Holt teaches that the therapeutic polypeptide is Cre enzyme (paragraph [0059]).
It is well known in the art that cre enzyme has a molecular weight of approximately 36-38 kDa, and is therefore, smaller than the claimed weight of at least 100 kDa.
However, as discussed above, a person of ordinary skill in the art would have been motived to use a gene editing protein such as CRISPR-associated (Cas) nuclease, because Huang teaches that while CRISPR-Cas9 and Cre recombinase technology produce similar cells, CRISPR-Cas9 can be used to do so more rapidly and with fewer costs (Abstract, p1; Introduction, p1).
Furthermore, because as above Holt teaches that the therapeutic polypeptide (the granzyme fusion protein) can comprise a genome editing protein and because as taught by Mircetic it was known in the art that Cas9 fusion proteins can be made (Abstract, p1), it could have been done with predictable results and a reasonable expectation of success.
Additionally, as evidenced by Josephs, CAS (CAS9) is a 160 kDa protein (Results and Discussion, p8929), and therefore, the therapeutic polypeptide as modified to be CAS would be 160 kDa which overlaps with the claimed weight of at least 100 kDa. Moreover, as further evidenced by Josephs, the CAS (CAS9) has a size of 10 nm x 10 nm x 5 nm (Results and Discussion, p8929), and therefore would fit within a 20 nm perforin pore.
In regards to claim 62, Applicant argues that the claim as amended requires the use of a myeloid cell to transfer a therapeutic protein to the cytoplasm of a target cell (Remarks, p10-11). Continuing, Applicant argues that since Holt teaches that the lytic granule is essential for transfer to the cytoplasm and as it is known that dendritic cells do not have lytic granules, a skilled artisan would not have a reasonable expectation of success in replacing the lymphocytes of Holt with the myeloid cells of Jahrsdorfer (Remarks, p10-11).
Applicant’s arguments filed 02/10/2026 have been fully considered by are not found persuasive.
As discussed above, Holt discloses that therapeutic molecules may be delivered to the cytoplasm (paragraph [0027]).
In regards to Applicant’s assertions that Holt teaches that the lytic granule is essential for transfer to the cytoplasm, as discussed in the Office Action on 12/19/2025, contrary to Applicant’s assertions, while Holt discloses that granzymes are sequestered in lytic granules, Holt only indicates that this is a method of their release into the cytoplasm, not that it is required as alleged by Applicant.
Furthermore, it is noted that Applicant asserts but does not point to any specific teaching in Holt that suggests that lytic granules are “required” as alleged by Applicant.
Indeed, Holt explicitly teaches that “In some embodiments, such engineering comprises expressing toxin-effector agent fusion proteins which are sequestered in lytic granules followed by delivery to target cells” (paragraph [0027]). Therefore, the use of lytic granules is only an embodiment, and the disclosure does not necessarily require their use,
Additionally, as explicitly admitted by Applicant, “Jahrsdorfer was published 7 years before Holt and so Holt was certainly aware that granzyme could be transferred without lytic granules” (see Remarks on 12/01/2025).
Therefore, it was long known in the art that lytic granules are not required for the transferring of granzymes.
As a result, because Jahrsdorfer teaches that it is known the dendritic cells secrete granzymes, because Holt and Jahrsdorfer are both in the same technical field of using cell-derived granzymes to target cells, and because, as noted by Applicant it is long-known granzymes may be secreted without lytic granules, a person of ordinary skill in the art could have modified the method of Holt and used myeloid cells with predictable results and a reasonable expectation of success.
Conclusion
No claims are allowed.
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/JOSEPH PAUL MIANO/Examiner, Art Unit 1631
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