DETAILED ACTION
Non-Final Rejection
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s election without traverse of Group I in the reply filed on 08/22/2025 is acknowledged and entered.
Species election: A molecule according to formula I (as recited in claims 1-2):
wherein the R1 is -C(O)N(Ra)2,
Ra is hydrogen, and X is N.
Claims 1-6, 11-13, 16, 64, 65 and 71 that read on the elected species.
The applicant’s election of invention of Group I and the species election is entered and made final.
Status of Claims
3. Claims 1-2, 16, 35, 38-40, 49, 54-58, 64, 69, 71 and 82 as amended and filed in claim listing on 01/20/2026 are pending.
4. Claims 64, 69, 71 and 82 are withdrawn from consideration due to election/restriction.
5. Claims 3-6, 11-13, 32, and 65 are cancelled by the applicant on 01/20/2026 without prejudice or disclaimer.
6. Claims 1-2, 16, 35, 38-40, 49 and 54-58 are under examination in this office action.
Priority
7. The present application is a U.S. national stage application, filed under 35 U.S.C. § 371, of International Application No. PCT/US2021/022396, filed on March 15, 2021, which claims the benefit of and priority to U.S. Provisional Application No. 62/990,099, filed on March 16, 2020.
Claim Interpretation (Modified)
8. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art.
The instant claim 1 is directed to a method of producing recombinant adeno-associated virus (rAAV) comprising 1 mM to 10 mM niacinamide or niacin or methyl nicotinate.
The instant claim 2 and claim 35 (dependent on claim 1) is directed to a method of producing recombinant rAAV comprising 1 mM to 10 mM niacinamide or niacin or methyl nicotinate to increase rAAV virus titer yield.
Withdrawn Rejections
9. Withdrawn rejection of claims 1-6, 11-13, 16, 32, 35, 38-40, 49 and 54-58 under 35 U.S.C. 112(a) in view of amendment to the claims as filed on 01/20/2026.
10. Withdrawn rejection of claims 1-6, 11-13, 16, 35, 38-40, 49 and 54-55, and 57 under 35 U.S.C. 102(a)(1)/(a)(2) in view of amendment to the claims as filed on 01/20/2026.
Examiner’s Note
11. In the non-final rejection office action (mailed on 10/20/2025) the claim 32 was rejected by reciting teachings of prior art by Atkinson et al 2003 (US6566118B1, See Table 2). The examiner inadvertently calculated the Niacinamide concentration in the prior art to 16.5 mM in error reading the prior art taught Niacinamide 2.0185 gm/L (16.5 mM) of medium instead of correct 2.0185 mg/L (0.0165 mM), the error is corrected in this office action. However, the examiner’s 35 U.S.C. 103 obviousness rejection encompassing motivation and obviousness analysis on optimization of the optimal effective concentration in the prior office action recited remains similar irrespective of the Niacinamide concentration 0.0165 mM, 0.04913 mM and 0.0328 mM taught by Atkinson et al 2003 as recited below in the office action.
Claim Rejections - 35 USC § 103 (Modified)
12. 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.
13. Claims 1-2, 16, 35, 38-40, 49 and 54-58 are rejected under 35 U.S.C. 103 as being unpatentable over Girard et al 2019 (WO2019195729A1, published 10/10/2019)
as applied to claim 1 above, and further in view of Atkinson et al 2003 (US6566118B1 published 05/20/2003), Izdebska et al 2018 (Adv Clin Exp Med. 2018;27(3):367–378), Meng et al 2018 (Stem Cell Reports, Vol. 11, 1347–1356, December 11, 2018), Kwak et al 2015 (Mol Cells. 2015 Mar;38(3):229-35) Lock et al 2019 (US20190055523A1 published 02/21/2019) and Mathur et al 2021 (WO2021030125A1 published 02/18/2021, earlier priority to application US62/884,827 filed on 08/09/2019).
Claims 1-2, 16, 35, 38-40, 49 and 54-58: Girard et al 2019 is in the art and teaches a method of production of a recombinant AAV (rAAV) in a mammalian cell culture HEK293 MCB wherein the cell culture medium, inter alia, comprise Niacinamide for production of rAAV virus (See, abstract, claim 9, para [012]), and the method using this medium leads to an improvement in the yield of rAAV obtained of 1.5-2 fold (instant claims 2 and 35 limitations) (See, Fig. 15 for AAV2 construct yield analysis using HEK293 MCB control Exp 1 and Exp 2, para [32]). The HEK293 MCB cells (Instant claim 40 limitation) were used to produce the first clinical batch was generated from cells optimized AAV2 production (See, para [0412]). In para [322], the presence of a vector plasmid containing the transgene between inverted terminal repeat sequences, an AAV helper plasmid that contains the AAV2-Rep and Cap sequences and a helper plasmid encoding adenovirus genes E2A, E4 and VA is disclosed. Examples are provided with HEK293 cells, the transfection occurs in 2 L culture for 24 hours (See, par. [226-227]).
Girard et al 2019 does not teach the final concentration of Niacinamide (also known as Nicotinamide) (elected species) in the cell culture medium is between 1 mM and 10 mM.
Atkinson et al 2003 is in the art and teaches methods for generating high titer helper-free preparations of released recombinant AAV vectors. Different concentrations of Niacinamide were used in the AAV production suspension cell (293 N3S and HeLa S3 are suspension variants of the 293-1 human embryonic kidney and HeLa human epitheloid carcinoma cell lines) culture medium (Example 4). Niacinamide final concentration 0.016528 mM (2.0185 mg/L, Table 2, and 13), 0.04913 mM (6 mg/L Table 5 Niacinamide is also known as Nicotinamide), 0.0328 mM (4 mg/L, Table 7). However, Atkinson et al 2003 does not Niacinamide concentration 1 mM and 10 mM.
Izdebska et al 2018 is in the Niacinamide art and teaches the protective effect of niacinamide on CHO AA8 cell line against ultraviolet radiation. Cell culture UV irradiation and treatment with 1 and 10 mM niacinamide indicated that 10 mM Niacinamide was highly beneficial against UV exposure for 15 min as compared with cells that were exposed to UV for 15 min but not treated with Niacinamide (Table 2, last row; Figures 2-3 and legends, entire article). Niacinamide specifically induces reorganization of main cytoskeleton proteins such as F-actin, vimentin and ß-tubulin, resulting in the protection against UV irradiation-induced apoptosis in CHO AA8 cell line. In contrast, UV radiation (without Niacinamide treatment) results in the decrease of cell survival and the increase in the percentage of apoptotic cells (See, page 376 col 1 para 3).
Meng et al 2018 teaches Nicotinamide (also known as Niacinamide) promotes cell survival and differentiation as kinase inhibitor in human pluripotent stem cells. The effect of nicotinamide was dose dependent. Nicotinamide promoted survival of individualized cells at 5 and 10 mM, but at 25 mM showed significant toxicity to hESCs (See, Fig 1A). Examination of cell apoptosis during passage found that 10 mM nicotinamide significantly reduced the Annexin V-positive and propidium iodide-negative cells. Nicotinamide suppressed apoptosis, and the observation was consistent with the improved cell survival by nicotinamide (See, page 1348, section on Results, entire article).
Kwak et al 2015 teaches 5 mM concentration of Nicotinamide (also known as Niacinamide) exerts potent antioxidative effects on senescent cells (See, Fig 1-6, methods). Nicotinamide has been shown to suppress reactive oxygen species (ROS) production in primary human fibroblasts, thereby extending their replicative lifespan when added to the medium during long-term cultivation. Two different cellular models: MCF-7 cells undergoing senescence progression and human fibroblasts in a state of replicative senescence. In both models, Nicotinamide treatment substantially decreased ROS levels. In addition, Nicotinamide attenuated the expression of the assessed senescence phenotypes, excluding irreversible growth arrest. N-acetyl cysteine, a potent ROS scavenger, did not have comparable effects in the tested cell types (See, abstract, entire article).
The instant claim 1 and dependent claims 16, 38-40, 49 and 54-58 although recites Niacinamide 1-10 mM final concentration in the medium, does not have limitation directed to increased rAAV titer.
The instant independent claim 2; and claim 35 (dependent on claim 1) recites limitation on increased rAAV titer. Girard et al 2019 teaches rAAV production in a medium comprising Niacinamide without being explicit about concentration of Niacinamide but teaches an improvement in the yield of rAAV by 1.5 to 2-fold as recited supra.
Claims 38-39, 49: Girard et al 2019 teaches the presence of a vector plasmid containing the transgene between inverted terminal repeat sequences, an AAV helper plasmid that contains the AAV2-Rep and Cap sequences and a helper plasmid encoding adenovirus genes E2A, E4 and VA is disclosed (See, para [322]). Examples are provided with HEK293 cells transfected with amount of PEI mix is transferred in the DNA mix to form the PEI -DNA complex, the transfection occurs in 2 L of cultures for 24 hrs and medium is replaced with DMEM Glutamax (a production medium) (See, para [226-227]). In addition, a longer incubation time following plasmid transduction of cells was used to produce AAV2- Construct; 72 hours from cell feeding until harvest compared to 23 hours for the cells used to produce AAV2-Construct (See, para [0447], para [0311] Table 6).
Instant Claim 39: Girard et al 2019 teaches Harvesting and purification of rAAV (See, claim 2, para [05]-[07], claims 1-2, 22).
Claims 54-55: Girard et al 2019 teaches cell culture medium that comprise Niacinamide. The medium is also used to produce rAAV in cell culture and thus the medium is a production medium (See, para [0011]-[012], claims 1, and 9).
Claim 56: Lock et al 2019 (US20190055523A1) teaches added limitation of instant claim 56, comprising culturing the host cell in a suspension culture (See, para [0062]).
Claim 57: Girard et al 2019 teaches adherent cell culturing HEK293 cells into 1 T75 flask: (See, claim 2, para [0329]- [0332], claims 1-2, 22).
Claim 58: Lock et al 2019 (US20190055523A1) teaches added limitation of instant claim 58, comprising culturing the host cell in a bioreactor (See, para [0009], [0062]). Mathur et al 2021 (WO2021030125A1) also teaches added limitation of instant claim 58 by disclosing production of rAAV in mammalian cell culture HEK293 cells, COS cells contacting with DMEM or F17 medium (See, para [0280]), or Sf9 insect cells (See, para [0346]). Bioreactor vessel volume may range in size from about 500 ml to about 2 L, from about 2 L to about 5 L, from about 5 L to about 20 L, from about 20 L to about 50 L, from about 50 L to about 100 L, from about 100 L to about 500 L, from about 500 L to about 2,000 L, from about 2,000 L to about 10,000 L, from about 10,000 L to about 20,000 L, from about 20,000 L to about 50,000 L, or more than 50,000 L. Vessel bottoms may be rounded or flat (See, para [0357]).
The prior art by Lock et al 2019 (US20190055523A1) disclosed the added limitations of following claims:
Claims 1-2, and 35: Lock et al 2019 teaches instant claims 1-2 by disclosing a method of production and increasing the titer of rAAV by disclosing the method of production of rAAV contacting a mammalian host cell with a medium comprising Niacinamide (elected species of compound) (See, para [0057], claims 1-25). The increase in rAAV titer (yield) can be two-fold (50% to 100%) (See, Example 4, para [0084], table 1) and virus production in mammalian cell lines HeLa, a HEK 293 cells (See, para [37]). The instant claim 35 has claimed in presence of Niacinamide 1.2- fold greater total quantity of rAAV virus secreted into the supernatant (See, para [0028], claim 26).
Claim 40: Lock et al 2019 teaches added limitation of instant claim 40, wherein the host cell is a mammalian cell by disclosing desirable host cells are selected from among any mammalian species, including, without limitation, cells such as A549, WEHI, 3T3, 10T1/2, BHK, MDCK, COS 1, COS 7, BSC 1, BSC 40, BMT 10, VERO, WI38, HeLa, a HEK 293 cell (which express functional adenoviral E1), Saos, C2C12, L cells, HT1080, HepG2 and primary fibroblast, hepatocyte and myoblast cells derived from mammals including human, monkey, mouse, rat, rabbit, and hamster (See, para [00037]).
The Niacinamide concentration in mM as taught by Atkinson et al 2003 (Niacinamide concentration 0.0165 mM, 0.04913 mM and 0.0328 mM taught by Atkinson et al 2003) as recited supra was sufficient to make a medium that had the desired properties for production of increased titer of rAAV as per Niacinamide concentration 1 mM to 10 mM (instant claims 1-2 and 35, and other dependent claims). Therefore, determining or adjusting concentration based on requirement for optimal performance by adjusting pH fall under routine laboratory process. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Furthermore, according to section 2144.05 of the MPEP, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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, 456, 105 USPQ 233, 235 (CCPA 1955). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”).
It would have been obvious to one of the ordinary skills in the art before the effective filing date of the claimed invention to modify the prior art teachings of Girard et al 2019 with additional teachings of Atkinson et al 2003 on different concentrations of Niacinamide, and Izdebska et al 2018 on Niacinamide concentration range 1-10 mM with 10 mM concentration treatment being beneficial against UV exposure damage, and Meng et al 2018 teachings on 5-10 mM Niacinamide concentration promoting cell survival and differentiation in human pluripotent stem cells and 25 mM concentration being toxic to arrive at the inventions of claims 1-2. Kwak et al 2015 teachings that 5 mM concentration of Nicotinamide (also known as Niacinamide) exerts potent antioxidative effects on senescent cells. Izdebska et al 2018, Meng et al 2018 and Kwak et al 2015 although does not teach a rAAV or virus production, they teach beneficial effects of 5-10 mM Niacinamide to prevent apoptosis, cell survival and cell growth phase/cycle or antioxidative effect that suppress reactive oxygen species (ROS) production. The viruses in general are dependent on cell metabolism and therefore a healthy cell culture comprising the claimed concentration of Niacinamide is reasonably expected to result in higher virus titer production, absent any evidence to the contrary. One of the ordinary skills would have been motivated to increase the titer of rAAV by comprising Niacinamide in the medium at 1-10 mM concentration in the cell culture as recited supra to increase the rAAV titer for gene therapy and commercial success. Additional combined teachings of Girard et al 2019, Atkinson et al 2003, Izdebska et al 2018, Meng et al 2018, Kwak et al 2015, Lock et al 2019 and Mathur et al 2021 would results in arrival at the invention of claims 38-40, 49, 54-58. The motivation to use the bioreactor and suspension culture of mammalian or insect cells would be to produce rAAV at large scale for gene therapy for commercial success. There would have been a reasonable expectation of success given the applied prior art teachings in the art as recited supra. This is analogous to some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the invention as claimed in claims 1-2, 16, 35, 38-40, 49 and 54-58. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) (see MPEP § 2143, example of rationales, A-G).
Response to Arguments
14. Applicant’s arguments filed on 01/20/2026 with respect to claims 1-2, 16, 35, 38-40, 49 and 54-58 have been fully considered but are moot because the new ground of rejection does not rely only on the reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Additional new references and teachings were recited in the office action to render obvious the amended claims 1-2, 16, 35, 38-40, 49 and 54-58 (elected Group I) filed on 01/20/2026.
Conclusion
15. No claim is allowed.
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMADHAN J JADHAO whose telephone number is (703)756-1223. The examiner can normally be reached M-F 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas J Visone can be reached at 571-270-0684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMADHAN JAISING JADHAO/Examiner, Art Unit 1672
/THOMAS J. VISONE/Supervisory Patent Examiner, Art Unit 1672
Prosecution Insights