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 .
Claim Status
Claims 1-16 are pending.
Claims 11-13, and 15-16 are withdrawn.
Claims 1-10, and 14 are under examination.
Maintained Rejections
Claim interpretation
Claim 1 recites the terms “ the large polypeptide subunit of a split luciferase” and “ the small peptide subunit of the split luciferase”. Upon reviewing the specification, it is noted that that “the large” and “the small” subunits of the split luciferase is a known and well recognized terms in the art, referring to the two-subunits system of the NanoLuc luciferase, which are referred to as LgBiT (i.e. the large subunit) and SmBiT/HiBiT (i.e. the small subunit with either low affinity (SmBiT) or high affinity (HiBiT) for the LgBiT). ( See pages 11-13 of instant specification).
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.
Claims 1-5,7,9, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al (Amino Acids, 2018), in view of Mishra et al (WO 2018/213731 A1),and Mansi et al ( European Journal of Nuclear Medicine and Molecular Imaging, 2011).
Regarding claims 1, 9, and 14, Hu et al utilize the Nanoluc complementation technology to study ligand-receptor interactions, wherein the Nanoluc system comprises of the large polypeptide subunit of the split luciferase (LgBiT) and the small peptide subunit of the split luciferase (SmBiT). As such, Hu et al utilize the complementation pairs LgBiT and SmBiT to develop a ligand binding assay for relaxin family receptors 3 and 4 (RXFP3 and RXFP 4). The ligand binding assay of Hu et al comprises of a gene expression construct and a reporter peptide, wherein the gene expression construct comprises of a polynucleotide encoding the LgBiT subunit fused to either FXFP3 or RXFP 4, and the reporter peptide comprising of the SmBiT subunit fused to a synthetic agonist (R3/I5). Hu et al demonstrate that when the ligand binds to the receptor, this brings the small subunit in close proximity to the large subunit, allowing the two fragments to complement each other and reconstitute an active luciferase enzyme capable of producing luminescence in the presence of its substrate. ( See abstract, and Figure.1).
Hu et al do not teach a fusion protein comprising of the LgBiT subunit and a transmembrane domain, or a radiolabel reporter peptide.
Mishra et al, teach a method for anchoring an IL-12 polypeptide to a cell membrane by delivering an mRNA encoding an IL-12 polypeptide fused to a transmembrane domain and a signal peptide. The method of Mishra et al involves constructing a polynucleotide encoding for a fusion protein comprising a human interleukin-12 (IL-12) polypeptide operably linked to a membrane domain, optionally via a linker. ( See claim1). Mishra et al also teach that the transmembrane domain could be derived from a Platelet-Derived Growth Factor Receptor (PDGFR). ( See claim 4).
Mansi et al. teach a method for imaging gastrin-releasing peptide (GRPr) receptor, which are highly expressed on major human cancers such as the prostate, breast, and gastrointestinal tract. The method involves radiolabeling the GRPr antagonist RM2 (a 14 amino acid peptide) with either 111In or 68Ga, and then imaging nude mice bearing prostate tumors utilizing PET and SPECT imaging. Mansi et al also teach that the radionucleotide is attached to the tracer peptide (i.e. RM2) via a chelator and a linker, wherein the chelator is DOTA, and the linker (referred to it as a spacer by Mansi et al) is 4-amino-1-carboxymethyl piperidine. ( See abstract, and Figs. 5-6).
Taken together, claim 1 is combining prior art elements according to known methods to yield predictable results, namely the predictable result being the generation of a reporter system comprising a radiolabeled reporter peptide and a gene construct expressing LgBiT fused to a transmembrane domain. Because Hu et al teach a reporter system comprising a polynucleotide encoding for a LgBiT fused to either RXFP3 or RXFP4, as well as a reporter peptide comprising the SmBiT, but fail to teach a LgBiT that is fused to a transmembrane domain or a radiolabeled SmBiT. Mishra et al teach a method for targeting and anchoring an IL-12 polypeptide to a cell membrane by generating a gene construct encoding for IL-12 fused to a transmembrane domain, and accordingly provides a simple and direct method step for tethering a polypeptide of interest to the cell membrane. Mansi et al teach a method of radiolabeling a peptide with a radionuclide to facilitate imaging tumor cells using PET/SPECT imaging. Therefore, one with ordinary skill in the art at the time the invention was filed, who had reviewed Hu et al, could have come across Mishra and Mansi et al and immediately noticed the strong possibility of using the transmembrane domain of Mishra to tether the LgBiT subunit of Hu et al to the cell membrane, and to use the method of Mansi et al to radiolabel the SmBiT subunit to allow for the implementation of PET/SPECT imaging as the two subunit complement each other. The use of a complementation pairs in which the LgBiT is fused to a transmembrane domain and the reporter peptide is radiolabeled with a radionuclide would have the predictable result of generating a complementation pairs that can be visualized by PET/SPECT imaging. It has been held that "a person with ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." See KSR International Co. v Teleflex, Inc. 82 USPQ2d 1385 at 1390.
Regarding claim 2, the reporter system of Hu et al comprises of the large polypeptide and the small peptide subunit of the split luciferase. Hu et al also teach that the split luciferase is the NanoLuc. ( See the right column, 2nd paragraph on page 1112).
Regarding claim 3, Hu et al demonstrate that the two subunits associate with Kd between 0.70 to 2.77 nM for RXFP3 and RXFP4, respectively. ( See the right column on page 1116).
Regarding claim 4, Hu et al teach a SmBiT comprising of 11 amino acids. ( See Fig.1C)
Regarding claim 5, Hu et al teach a LgBiT subunit with a 99.4% sequence identity to SEQ ID NO: 48 of instant claim, and with an association constant of 0.70 to 2.77 nM. (See alignment below, Supplementary materials, and the right column on page 1116).
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Regarding claim 7, Following the discussion of claim 1 above. Hu in view of Mishra et al render obvious a fusion protein comprising of the LgBiT and a transmembrane domain, wherein the transmembrane domain is derived from the PDGFR. Mishra et al teach SEQ ID NO. 102 that share 100% sequence identity with SEQ ID NO:1 of instant claim.
Claims 1-7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al (Amino Acids, 2018), in view of Mishra et al and Mansi et al , as applied to claims 1-5, and 7 above, and further in view of Sasaki et al ( Virus Research, 2018).
Regarding claims 6, and 10, the teachings of Hu and Mishra are set forth above. Neither Hu nor Mishra teach a SmBiT subunit comprising the sequence of SEQ ID NO: 28. Hu et al, also teach a gene construct comprising a polynucleotide encoding for a LgBiT fused to either RXFP3 or RXFP4. However, Hu et al do not teach a viral vector comprising the gene construct.
Sasaki et al teach a method for studying the entry and release steps of viral life cycles in a cell using a reporter system comprising the Nanoluc luciferase complementation technology. The reporter system of Sasaki et al comprises of LgBiT of the split luciferase and a small subunit of the split luciferase that binds to LgBiT with a high affinity. It is noted that in the art the high affinity small subunit is referred to as HiBiT. Sasaki et al utilize a HiBiT subunit that shares a 100% sequence identity with SEQ ID NO: 28 of instant claim 6. ( See Materials and methods section 2.2.). Sasaki et al generate viral particles (i.e. SVPs and VLPs) containing gene construct encoding HiBiT, which they termed SVP-HiBiT and VLP-HiBiT, respectively. Sasaki et al also teach constructing a lentiviral vector comprising a gene construct encoding for the LgBiT, which was then utilized to generate cells that stably express LgBiT. The method of Sasaki et al involves exposing LgBiT-expressing cells to viral particles expressing HiBiT and then measuring the emitted luminescence as the two subunits complement each other , for example, as the SVP-HiBiT and VLP-HiBiT bud in and out of the cell membrane. ( See abstract, and Fig.4). Taken together, claims 6 and 10 is combining prior art elements according to known methods to yield predictable results, namely the predictable result being the use of a lentiviral vector expressing the LgBiT to produce cells that stably express LgBiT subunit. Hu et al teach a reporter system comprising a polynucleotide encoding for a LgBiT fused to either RXFP3 or RXFP4 and a plasmid containing the same, but fail to teach a viral vector comprising the gene construct. Sasaki et al teach that a viral vector harboring the LgBiT of the split luciferase can be used for cell transformation, producing cells that are stably expressing LgBiT. A person with ordinary skill in the art who had reviewed Hu et al could have come across Sasaki et al and quickly recognized the strong possibility of using the lentiviral vector of Sasaki to produce cells that stably express Hu et al’s LgBiT. The use of a viral vector, rather than of a plasmid for the delivery of the LgBiT, would have the predictable result of generating cells express LgBiT stably.
Claims 1-5,7-9, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al, in view of Mishra et al and Mansi et al, as applied to claims 1-5, 7,9, and 14 above, and further in view of Li et al (CN106317228). CN106317228A is in the Chinese language. A machine translation is provided herewith. Citations are made to the machine translation.
Regarding claim 8, the teachings of Hu, Mishra, and Mansi are set forth above. Hu et al, in view of Mishra et al, render obvious a fusion protein for membrane targeting comprising of LgBiT and a transmembrane domain. Mishra et al also teach that a signal peptide (i.e. a leader peptide) can be incorporated in the fusion protein, thereby facilitating membrane targeting. Mishra et al teach the utilization of a signal peptide that is derived from the IgK molecule; however the sequence of Mishra’s signal peptide differs from SEQ ID NO:12. ( See Mishra et al, the last paragraph on page 71, and the 3rd paragraph on page 244). Neither Hu, Mishra, or Mansi teach a fusion protein that further comprises a leader peptide with a sequence comprising of SEQ ID NO:12.
Li et teach the utilization of a signal peptide derived from IgK to generate a T cell expressing a chimeric antigen receptor (CAR) molecule. Li et al also disclose a method of constructing a chimeric antigen receptor molecule (CAR). According to Li et al , the CAR comprises of: an extracellular domain, a transmembrane domain, and an intracellular domain, which are sequentially connected in series. (See claim 1). Li et al, also teach that the CAR molecule further contain a signal peptide (i.e. leader sequence). According to Li et al, adding the signal peptide would enhance the secretion/targeting of the fusion protein (i.e. CAR) to the cell membrane. It should be noted that the signal peptide taught by Li et al shares 100% sequence identity with SEQ ID NO 12 of instant claim. ( See the 6th paragraph on page 2). Taken together, claim 8 is also combining prior art elements according to known methods to yield predictable results, namely the predictable result being the use of a fusion protein comprising LgBiT, a transmembrane domain, and a signal peptide to tether the LgBiT subunit at the cell membrane. Hu et al teach a reporter system comprising a polynucleotide encoding for a LgBiT fused to either RXFP3 or RXFP4 and a plasmid containing the same, but fail to teach a LgBiT that is fused to a transmembrane domain and a signal peptide. Mishra et al teach a method for targeting and anchoring an IL-12 polypeptide to a cell membrane by generating a gene construct encoding for IL-12 fused to a transmembrane domain and a signal peptide, and accordingly provides a simple and direct method step for tethering a polypeptide of interest to the cell membrane. Mishra et al, also clearly suggest that the addition of a signal peptide to a fusion protein would facilitate its targeting to the targeted location. Li et al teach constructing a CAR molecule comprising a leader sequence for targeting the CAR to the cell membrane. Therefore, one with ordinary skill in the art at the time the invention was filed, who had reviewed Hu et al could have come across Mishra and Li et al and immediately noticed the strong possibility of using the transmembrane domain of Mishra and the signal peptide of Li et al to enable efficient membrane targeting of Hu et al’s LgBiT subunit. It has been held that "a person with ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." See KSR International Co. v Teleflex, Inc. 82 USPQ2d 1385 at 1390.
Response to Argument
Applicant's arguments filed 11/17/2025 have been fully considered but they are not persuasive.
Applicants argue that the claims are not rendered obvious by the cited art, and that “the
Office is seeking to combine teachings from various references without any suggestion or motivation in said art to do so or of how such a combination would be done”.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves OR in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Hu et al utilized the Nanoluc complementation technology, which comprises of the LgBiT subunit fused to either the relaxin family receptor FXFP3 or RXFP 4, and the reporter peptide comprising of the SmBiT subunit fused to a synthetic agonist (R3/I5). It is submitted that Hu et al do not teach LgBiT subunit fused to a transmembrane domain, or radiolabeled SmBiT. However, the teachings that LgBiT can be fused to a relaxin family receptor provides an ordinary skill in the art with the knowledge that the LgBit subunit can be fused to another polypeptide using basic molecular biology techniques while maintaining its proposed function. Furthermore, Mishra et al’s teachings, which demonstrate a method of anchoring a polypeptide to a cell membrane by fusing the polypeptide to a transmembrane domain and a signal peptide, provide an ordinary skill in the art with the experimental basis to easily envision using the transmembrane domain of Mishra to tether the LgBiT subunit of Hu et al to the cell membrane rather than using the relaxin family receptor of Hu et al. Moreover, an ordinary skill in the art who reviewed Hu et al, could have come across Mansi et al and immediately noticed the strong possibility of using the method of Mansi et al to radiolabel the SmBiT subunit, producing a reporter system that can be imaged by SPECT. Therefore, while Hu et al disclose a NanoBiT-based ligand binding assay rather than a reporter system for in vivo imaging, combining the teachings of prior art would produce a modified NanoBiT that can be successfully used for in vivo imaging. Thus, the Office maintains that the current invention is basically combining known molecular biology techniques according to known methods to yield predictable results. While the office agrees with Applicants that there was no clear suggestion or motivation to combine the teachings in the recited prior arts , yet it has been held that "a person with ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." See KSR International Co. v Teleflex, Inc. 82 USPQ2d 1385 at 1390.
Applicants also argue that the invention provides surprising technical advantages that could not have been predicted from the teachings of the cited art. In response to said argument, the fact that the the inventor has recognized another advantage that would flow naturally from following the combined teachings of the prior art , cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FATIMAH KHALAF MATALKAH whose telephone number is (703)756-5652. The examiner can normally be reached Monday-Friday,7:30 am-4:30 pm EST.
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/FATIMAH KHALAF MATALKAH/Examiner, Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
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