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 .
Status of Claims
Claims 1-17, 19, 21, and 23 are pending.
Priority
Claims 1-17, 19, 21, and 23 are a 371 of PCT/CN 2021/093495 filed on May 13 2021, which has priority to CN 2020 1042053.1 filed on May 13, 2020.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on March 1, 2023, was filed before the mailing of the First Office Action on August 20, 2025. The Non-Patent Literature is in compliance with the provisions of 37 CFR 1.97 and are being considered by the examiner.
Drawings
The drawings are objected to because:
Fig. 3A – script is too small and is not legible.
Fig. 3B – script is too small and is not legible.
Fig. 3C – script is too small and is not legible.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 21 and 23 are directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because:
Step 1: Is the claim to a process, machine, manufacture, or composition of matter? No, Claims 21 or 23 do not recite a process, machine, manufacture, or composition of matter. Both claims merely recite the “use of the lentiviral expression vector according to Claim 1, in the preparation of lentiviral particles”, which is framed as a purpose of intended application rather than a process with defined steps or a composition,
Based on the above analysis, Claims 21 and 23 are not directed to a statutory category under 35 U.S.C. §101 and is therefore considered non-patentable subject matter.
Claim Rejections - 35 USC § 112
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 5-10, 12, 16, and 17 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.
Claim 5 uses the generic statement “at least 80% identity to the nucleotide sequence” as it relates to a SEQ ID NO in reference to a P2A linker sequence that comprises the nucleotide sequence of SEQ ID NO: 5.
Claim 6 uses the generic statement “at least 80% identity to the nucleotide sequence” as it relates to a SEQ ID NO in reference to a EFS promoter region incorporated into a modified PLVX-Puro lentiviral vector.
Claim 7 uses the generic statement “at least 80% identity to the nucleotide sequence” as it relates to a SEQ ID NO in reference to a P2A linker sequence incorporated into a modified PLVX-Puro lentiviral vector.
Claim 8 uses the generic statement “at least 80% identity to the nucleotide sequence” as it relates to a SEQ ID NO in reference to a CMV enhancer sequence incorporated into a modified PLVX-Puro lentiviral vector.
Claim 9 uses the generic statement “at least 80% identity to the nucleotide sequence” as it relates to a SEQ ID NO in reference to a 5’ truncated LTR sequence incorporated into a modified PLVX-Puro lentiviral vector.
Claim 10 uses the generic statement “at least 80% identity to the nucleotide sequence” as it relates to a SEQ ID NO in reference to a 3’ LTR sequence with a partially deleted U3 region that is incorporated into a modified PLVX-Puro lentiviral vector.
Claim 12 uses the generic statement “at least 80% identity to the nucleotide sequence” as it relates to a SEQ ID NO in reference to a Blasticidin resistance gene sequence incorporated into a modified PLVX-Puro lentiviral vector.
Claim 16 uses the generic statement “at least 80% identity to the nucleotide sequence” as it relates to a SEQ ID NO in reference to a CMV promoter, EFS promoter, and P2A linker sequence being incorporated into a modified PLVX-Puro lentiviral vector.
Claim 17 uses the generic statement “at least 80% identity to the nucleotide sequence” as it relates to a SEQ ID NO in reference to a CMV enhancer, truncated 5’ LTR region, and 3’ LTR region with a partially deleted U3 region incorporated into a modified PLVX-Pure lentiviral vector.
The specification provides antecedent basis for “at least 80% identity to the nucleotide sequence” relating to the SEQ ID NOs as stated in the claims [¶ 11, 12, 13, 029].
Applicant’s specification states “comprises at least 80% identity” as it relates to various nucleotide sequences associated with a modified PLVX-Puro lentivirual vector [¶ 11]. The specification claims, aside from the entire SEQ ID NO, the “at least 80%...” for several components not limited to the truncated 5’ LTR region, the P2A linker sequence, the CMV enhancer, CMV promoter, etc. [pg. 3 – 19]. However, the specification only provides examples where the entirety of the nucleotide sequences of the SEQ ID NOs were used [Pg. 31, line 15]. This is the case for all SEQ ID NOs 1-12 [pgs. 31-39]. Additionally, Liu et al. discusses how polycistronic constructs are highly sensitive to both the position of genes and the specific 2A peptides used [Systematic comparison of 2A peptides for cloning multi-genes in a polycistronic vector, Scientific Reports, 2017, Abstract]. The researchers further observed downstream gene expression decreased when positioned later in the construct, and that different 2A arrangements affected protein ratios and functional outcomes. Despite the study not specifically testing for deletions or insertions, these findings support the conclusion that even small changes or variations in 2A sequence, such as a 20% nucleotide difference, could significantly impact protein expression [Id.]. Because of this, it would be difficult for an Artisan to ascertain as to what can or cannot be deleted while still retaining the desired function as it relates to a PLVX-Puro modified lentiviral vector.
Given the generic scope of “at least 80% identity of the nucleotide sequence…” as it relates to various SEQ ID NO nucleotide sequences incorporated into a modified PLVX-Puro lentiviral vector, and the absence of teachings as to what portions of the various SEQ ID NO nucleotide sequences must be present, an Artisan would not understand Applicant to be in a possession of a lentiviral vector comprising various components with nucleotide sequences that are at least 80% identical to the respective SEQ ID NOs.
Claim 23 is 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.
Claim 23 uses the generic statement “…preparing a gene or cell therapy drug” in reference to a modified PLVX-Puro lentiviral vector containing a CMV that is upstream from a 5’ LTR, an EFS promoter sequence, and a P2A peptide linker that is downstream of the multiple cloning site.
The specification provides antecedent basis for “preparing a gene or cell therapy drug” related to a modified PLVX-Puro lentiviral vector [¶ 0002, 0034].
Applicant’s specification states “…so lentiviruses have become a particularly important tool for gene therapy and cell therapy” [¶ 0003]. The specification further states “Insertion of an exogenous target gene into a lentiviral expression vector can be applied to the preparation of a gene therapy drug or a cell therapy drug” [¶ 0034]. The specification further states the improved lentiviral expression vector can be transfected into a eukaryotic cell for use in preparing a gene or cell therapy” [Id.]. There are no more references to gene therapy preparation or cell therapy drug references throughout the specification. However, the development of gene therapy and/or cell therapy drugs using lentiviral expression vectors requires extensive considerations that include transgene selection, vector backbone design, production methods, transduction efficiency, and integration site safety [Milone & O’Doherty, Clinical use of lentiviral vectors, Leukemia, 2018, Abstract]. Based on this and the lack of disclosure in the specification, an Artisan would find it difficult to determine what combinations or variations would allow the modified PLVX-Puro lentiviral expression vector to be used as a gene or cell therapy drug. Additionally, an Artisan would find it difficult to determine in what capacity would this modified lentiviral expression vector be used or how in relation to types of disease.
Based on the generic statement “preparing a gene or cell therapy drug” in relation to a modified PLVX-Puro lentiviral expression vector as it relates to being used as a therapeutic agent, and the absence of teachings as to what or how the modified lentiviral expression vector is produced or combined with and to what specific diseases the modified expression vector would be used for, an Artisan would not understand Applicant to be in possession of a modified PLVX-Puro lentiviral expression vector capable of being used for gene therapy or in a cell therapy drug given the specification does not teach how what the modified lentiviral vector would be combined with and what diseases would be targeted.
Claims 4 and 10 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.
Claim 4 uses the generic phrase “further comprising a 3’ LTR sequence with a partially deleted U3 region” as it relates to a modified lentiviral expression vector derived from a PLVX-Puro vector. The same generic scope of “further comprising a 3’ LTR sequence with a partially deleted U3 region” is present in each of the dependent claims, i.e. 10.
Claim 10 uses the generic phrase “3’ LTR sequence with a partially deleted U3 region” as it relates to a modified lentiviral expression vector derived from a PLVX-Puro vector.
The specification provided antecedent basis for “3’ LTR sequence with a partially deleted U3 region” as it relates to a modified lentiviral vector [pg. 8 Ln. 22].
Applicant’s specification states that in some embodiments the 3’ LTR sequence has a partially deleted U3 region [¶ 0010]. The specification further states on page 12 that the original 3’ LTR is replaced with the 3’ LTR sequence that has a partially deleted U3 region [¶ 0023]. This is stated again in paragraph [0025]. The specification goes on to state that a LTR refers to a base pair domain located at the end of retroviral DNA which contains a U3, R and U5 region. However, the specification is silent as to the reason for the U3 partial deletion [pg. 33 (showing SEQ ID NO: 7)]. However, the specification does not disclose the presence or purpose of a second 3’ truncated LTR in addition to the canonical 3’ LTR of PLVX-Puro. Lentiviral vectors typically contain a single 3’ LTR region which can then be modified in the U3 region to obtain self-inactivation or alter transcriptional regulation. For example, Dull et al., discussing HIV-derived vectors, discloses only a single 3’ LTR [Abstract, A third-generation lentivirus vector with a conditional packaging system, J Virol., 1998]. Dull et al. further discloses that the existing 3’ LTR has been modified with a deletion from -418 to -18 relative to the U3/R border [Materials and Methods ¶ 5]. Deleting the U3 region in the 3’ LTR creates the self-inactivating lentiviral vector that reduces the risk on unintended transcription and insertional mutagenesis, thereby enhancing biosafety [Discussion ¶ 8]. Given this, a person of ordinary skill would not understand the metes and bounds of Claims 4 and 10 as written based on under broadest reasonable interpretation a person of ordinary skill would understand that the truncated 3’ LTR of Claim 4 is in addition to the existing 3’ LTR of the PLVX-Puro vector.
Given the generic scope of “further comprising a 3’ LTR sequence with a partially deleted U3 region” as it relates to a modified PLVX-Puro vector, and the absence of teaching that in fact the modified vector includes a 3’ LTR in addition to the existing 3’LTR, an Artisan would not understand Applicant to be in possession of the generic scope of “further comprising a 3’ LTR sequence with a partially deleted U3 region”.
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 1-17, 19, 21, and 23 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 recites “A lentiviral expression vector improved on the basis of PLVX-Puro…”. “on the basis of” is unclear on what relationship is required between the claimed vector and PLVX-Puro. For example, is it derived from PLVX-Puro? Does it only contain certain elements of PLVX-Puro or does it contain all of the features of PLVX-Puro with additional modifications? A person of ordinary skill would not understand what is meant by “on the basis of” a PLVX-Puro.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “at least one”, and the claim also recites “at least two or three” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites “downstream of a multiple cloning site”. As written, is the P2A linker immediately adjacent to the multiple cloning site? Is the P2A linker merely located at any point 3’ of the site or is it in frame with a gene inserted into the site to produce a fusion protein? A person of ordinary skill in the art would not be able to determine the location of the P2A linker relative to the multiple cloning site if it is only downstream of the multiple cloning site. As pLVX-puro is a plasmid, is there a downstream and upstream? In circling itself, you make any point in the point both upstream and downstream from every other element.
Claim 1 recites the limitation "upstream of 5’ LTR" in Line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites “a CMV promoter sequence upstream of 5’ LTR”. However, the claim is drawn to a lentiviral expression vector which exists in a circular DNA configuration prior to integration. In a circular configuration, the 5’ LTR is not fixed linearly, and therefore the sequence is both “upstream” and “downstream” relative to the 5’ LTR depending on the chosen reference point.
Claim 2 recites the limitation "upstream of the 5’ LTR" in Line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites “a CMV enhancer sequence upstream of the CMV promoter upstream of 5’ LTR”. However, the claim is drawn to a lentiviral expression vector which exists in a circular DNA configuration prior to integration. In a circular configuration, the 5’ LTR is not fixed linearly, and therefore the sequence is both “upstream” and “downstream” relative to the 5’ LTR depending on the chosen reference point.
Claim 3 recites the limitation "upstream of the 5’ LTR" in Line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites “further comprising a 3’ LTR sequence with a partially deleted U3 region”. It is unclear whether this language is referencing a modification to an existing 3’ LTR in the parent vector or is the an additional 3’ LTR sequence that includes a partially deleted U3 region. Because of this, one of ordinary skill would not understand what structural features are being claimed.
Claim 10 is also rejected based on its dependency to Claim 4.
Claim 5 recites the limitation "upstream of the 5’ LTR" in Line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites “wherein the CMV promoter sequence is upstream of the 5’ LTR…”. However, the claim is drawn to a lentiviral expression vector which exists in a circular DNA configuration prior to integration. In a circular configuration, the 5’ LTR is not fixed linearly, and therefore the sequence is both “upstream” and “downstream” relative to the 5’ LTR depending on the chosen reference point.
Claims 2-12, 19, 21, and 23 are also rejected based on dependency to Claim 1.
Claim 12 recites the limitation "resistance" in Line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites “A lentiviral expression vector improved on the basis of PLVX-Puro…”. “on the basis of” is unclear on what relationship is required between the claimed vector and PLVX-Puro. For example, is it derived from PLVX-Puro? Does it only contain certain elements of PLVX-Puro or does it contain all of the features of PLVX-Puro with additional modifications? A person of ordinary skill would not understand what is meant by “on the basis of” a PLVX-Puro.
Claim 13 recites the limitation "upstream of 5’ LTR" in Line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites “adding a CMV promoter sequence to the upstream of 5’ LTR”. However, the claim is drawn to a lentiviral expression vector which exists in a circular DNA configuration prior to integration. In a circular configuration, the 5’ LTR is not fixed linearly, and therefore the sequence is both “upstream” and “downstream” relative to the 5’ LTR depending on the chosen reference point.
Claims 14, 15, 16, and 17 are also rejected based on dependency to Claim 13.
Claim 14 recites the limitation "upstream of the 5’ LTR" in Line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "replacing original 3’ LTR" in Line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites “adding a CMV promoter sequence to the upstream of the 5’ LTR”. However, the claim is drawn to a lentiviral expression vector which exists in a circular DNA configuration prior to integration. In a circular configuration, the 5’ LTR is not fixed linearly, and therefore the sequence is both “upstream” and “downstream” relative to the 5’ LTR depending on the chosen reference point.
Claim 17 recites the limitation "upstream of the 5’ LTR" in Line 4 and 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "replacing original 3’ LTR" in Line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites “Use of the lentiviral expression vector…”. “Use” is indefinite given that it does not specify how the vector is used. The claim goes on to recite “in preparation of lentiviral particles”. However, the claim fails to specify the purpose or condition of such use. Additionally, the claim fails to identify the statutory category of the invention, i.e. composition, machine, manufacture, or process).
Claim 23 recites “Use of the lentiviral expression vector…”. “Use” is indefinite given that it does not specify how the vector is used. The claim goes on to recite “in preparation of lentiviral particles”. However, the claim fails to specify the purpose or condition of such use. Additionally, the claim fails to identify the statutory category of the invention, i.e. composition, machine, manufacture, or process).
Claim 23 recites “for preparing a gene or cell therapy drug”. The term “gene” as used in the context of the claim is unclear. Is it referring to a nucleotide sequence that is not a therapeutic composition, or is it claiming the use of a naked nucleic acid molecule? As written, a person of ordinary skill would not understand the metes and bounds given the term “gene”.
Claim Rejections - 35 USC § 102
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.
Under the broadest reasonable interpretation, the claims being directed to a lentiviral expression vector, in which the viral DNA exists in a circular configuration prior to integration into the host genome. Because the DNA is circular, the 5’ LTR does not have a fixed linear position, and therefore any given sequence may be considered both “upstream” and “downstream” relative to the 5’ LTR depending on the chosen reference point along the circular molecule.
For purposes of examination under the broadest reasonable interpretation (BRI), the phrase “a nucleotide sequence” is being interpreted to encompass any sequence of nucleotides, including as few as two base pairs. This interpretation reflects the USPTO’s practice of reading claim language broadly to determine the metes and bounds of the claimed invention.
Claim 1-3, 5-6, 8-9, and 11-12 is rejected under 35 U.S.C. §102(a)(1) as being anticipated by Lin et al. [Cloning vector pLeni-EF1a-dCas9-DNMT3B (E697A)-2A-bla, complete sequence, Giga Science, 2018],
Regarding Claim 1, Lin et al. teaches a lentiviral expression vector [Addgene Full Sequence Map for pLenti-EF1alpha-SPdCas9-DNMT3B (E697A)-2A-Blast] improved on the basis of PLVX-Puro, wherein the vector comprises at least one, at least two or three of the following improved element sequences:
a CMV promoter sequence upstream of 5’ LTR [Addgene Full Sequence Map for pLenti-EF1alpha-SPdCas9-DNMT3B (E697A)-2A-Blast],
an EFS promoter sequence as a target gene promoter, and
a P2A linker sequence downstream of a multiple cloning site.
Regarding Claim 2, Lin et al. teaches the lentiviral expression vector according to claim 1
[Addgene Full Sequence Map for pLenti-EF1alpha-SPdCas9-DNMT3B (E697A)-2A-Blast], further comprising a CMV enhancer sequence upstream of the CMV promoter sequence upstream of the 5’ LTR.
Regarding Claim 3, Lin et al. teaches the lentiviral expression vector according to claim 1, wherein the 5’ LTR is a truncated PLVX-Puro 5’ LTR [5’ truncated LTR with 100% homology at positions 835-1015 [Sequence, 5’ LTR (truncated)].
Regarding Claim 5, Lin et al. teaches the lentiviral expression vector according to claim 1, wherein the CMW promoter sequence upstream of the 5’ LTR comprises a nucleotide sequence shown in SEQ ID NO: 2 or a nucleotide sequence that has at least 80% identity to the nucleotide sequence shown in SEQ ID NO: 2 and has a promoter activity [CMW promoter where positions 618-820 have 100% homology shown in SEQ ID NO: 2 (Sequences, CMV promoter)].
Regarding Claim 6, Lin et al. teaches the lentiviral expression vector according to claim 1, wherein the EFS promoter sequence comprises a nucleotide sequence shown in SEQ ID NO: 4 or a nucleotide sequence that has at least 80% identity to the nucleotide sequence shown in SEQ ID NO: 4 and has a promoter activity [close to 100% homology for an EFS (EF1α) promoter at positions 2663-2918 (Sequence, EF1α)].
Regarding Claim 8, Lin et al. teaches the lentiviral expression vector according to claim 2, wherein the CMV enhancer sequence comprises a nucleotide sequence shown in SEQ ID NO: 1 or a nucleotide sequence that has at least 80% identity to the nucleotide sequence shown in SEQ ID NO: 1 and has an enhancer activity [CMV enhancer that has 100% homology to the CMV enhancer nucleotide sequence shown in SEQ ID NO: 1 (Sequence, CMV enhancer)].
Regarding Claim 9, Lin et al. teaches the lentiviral expression vector according to claim 3, wherein the truncated 5’ LTR sequence comprises the nucleotide sequence shown in SEQ ID NO: 3 or a nucleotide sequence that has at least 80% identity to the nucleotide sequence shown in SEQ ID NO: 3 and can function as the 5’ LTR [5’ truncated LTR with 100% homology at positions 835-1015 (Sequence, 5’ LTR (truncated))].
Regarding Claim 11, Lin et al. teaches the lentiviral expression vector according to claim 1, wherein the vector further comprises a Blasticidin resistance gene sequence in place of a Puro resistance gene sequence [Diagram 1].
Regarding Claim 12, Lin et al. teaches the lentiviral expression vector according to claim 11, wherein the Blasticidin resistance gene sequence comprises a nucleotide sequence shown in SEQ ID NO: 6 or a nucleotide sequence that has at least 80% identity to the nucleotide sequence shown in SEQ ID NO: 6 and has resistance [Diagram 1].
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.
For purposes of examination under the broadest reasonable interpretation (BRI), the phrase “a nucleotide sequence” is being interpreted to encompass any sequence of nucleotides, including as few as two base pairs. This interpretation reflects the USPTO’s practice of reading claim language broadly to determine the metes and bounds of the claimed invention.
Claims 4, 7, and 10 are rejected under 35 U.S.C. §103 as being unpatentable over Lin et al. [Cloning vector pLeni-EF1a-dCas9-DNMT3B (E697A)-2A-bla, complete sequence, Giga Science, 2018], in view of Dull et al. [A third-generation lentivirus vector with a conditional packaging system, Journal of Virology, 1998], in view of Fan [Plasmids 101: multicistronic vectors, Addgene Blog, 2014], in view of Liu et al. [Systematic comparison of 2A peptides for cloning multi-genes in a polycistronic vector, Scientific Reports, 2017].
For Claims 1-3, 5-6, 8-9, and 11-12, Lin et al. teaches each and every element. However, Lin et al. does not teach the limitations in Claim 4, 7, or 10.
For Claim 4 where the 3’ LTR has a partially deleted U3 region, Dull et al. discloses the 3’ LTR region relative to the U3/R border have been deleted [Materials and Methods: Transfer vector constructs ¶ 5]. Based on this, there is a reasonable expectation of success to combine the teachings of Lin et al. with the additional teachings of Dull et al. where deleting the U3 region in the 3’ LTR creates the self-inactivating lentiviral vector that reduces the risk on unintended transcription and insertional mutagenesis, thereby enhancing biosafety [Discussion ¶ 8].
For Claim 7 where the P2A linker sequence comprises a nucleotide sequence as shown in SEQ ID NO: 5, Liu et al. discloses a P2A linker sequence [Fig. 1 Part B]. Additionally, Fan discloses P2A as one of the four common 2A peptides employed by scientists. Because of this, there is a reasonable expectation of success that an Artisan would combine the teachings of Liu et al. with the additional teachings of Fan, based on need, to replace the T2A peptide with a P2A peptide as disclosed in Fan. And, because P2A is one of four common 2A peptides employed by scientists, it would have been prima facie obvious to a person of ordinary skill replace the T2A of Lin et al.
For Claim 10 where the 3’ LTR has a partially deleted U3 region as shown in SEQ ID NO: 7, Dull et al. discloses the 3’ LTR region relative to the U3/R border have been deleted [Materials and Methods: Transfer vector constructs ¶ 5].
Here, it would have been prima facie obvious to a person of ordinary skill in the art prior to the filing of the claimed invention to modify the systems and methods of Lin et al. that discloses a modified lentiviral vector that includes the limitations as stated in claims 1-3, 5-6, 8-9, and 11-12 with the teachings of Dull et al. that discloses the use of 3’ LTR with a partially deleted U3 region with the additional teachings of Liu et al. and Fan that disclose P2A being one of four 2A peptides that are routinely used in the art for purposes of saving space and ensures the therapeutic protein and marker are made together. Therefore, there is a reasonable expectation of success to that combining the teachings of Lin et al. with the additional teachings of Dull et al., Liu et al., and Fan, a person of ordinary skill would have a foundational lentiviral expression vector combined with the teachings of Dull et al. where a partially deleted U3 region in a 3’ LTR is a well-known modification used to promote biosafety with Liu et al. and Fan where they disclose a P2A peptide that is well known in the art and is used for enabling co-expression of multiple proteins from a single transcript.
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.
For purposes of examination under the broadest reasonable interpretation (BRI), the phrase “a nucleotide sequence” is being interpreted to encompass any sequence of nucleotides, including as few as two base pairs. This interpretation reflects the USPTO’s practice of reading claim language broadly to determine the metes and bounds of the claimed invention.
Claims 13-17, 19, 21, and 23 are rejected under 35 U.S.C. §103 as being unpatentable over Clontech Labratories (Hereinafter Clontech) [PLVX-Puro Vector Information, 2010], in view of Lin et al. [Cloning vector pLeni-EF1a-dCas9-DNMT3B (E697A)-2A-bla, complete sequence, Giga Science, 2018], in view of Dull et al. [A third-generation lentivirus vector with a conditional packaging system, Journal of Virology, 1998], in view of Fan [Plasmids 101: multicistronic vectors, Addgene Blog, 2014], in view of Hong et al. [Functional analysis of various promoters in lentivirual vectors at different stages of the in vitro differentiation of mouse embryonic stem cells, Molecular Therapy, 2007], in view of Liu et al. [Systematic comparison of 2A peptides for cloning multi-genes in a polycistronic vector, Scientific Reports, 2017].
For Claim 13, Clontech Laboratories (Hereinafter Clontech), discussing PLVX-Puro is an HIV-1 based, lentiviral expression vector, teaches that a lentiviral particle derived from the vector allows expression of the gene of interest in virtually any cell type [Description ¶ 1].
For the Claim 13 limitation where the CMV promoter is added upstream of the 5’ LTR, Lin et al., showing a diagram of the lentiviral vector, shows the CMV promoter region upstream of the 5’ truncated LTR region [Diagram where CMV promoter precedes CMV-F followed by 5’ truncated LTR region].
For the Claim 13 limitation where the CMV promoter is replaced with an EFS (EF1α) promoter sequence, Hong et al., discussing how the EFS promoter resulted in robust transgene expression at every stage of mouse embryonic stem cell differentiation, discloses that EF1α drove the highest level of GFP expression, followed by the CAG promoter, and then the PGK promoter [Reporter gene expression levels by SIN lentiviral vectors in undifferentiated ES and EB cells ¶ 1].
For the Claim 13 limitation where the PGK promoter downstream of the multiple cloning site is replaced with a P2A linker, Clontech provides a general diagram showing the PGK promoter region downstream of the multiple cloning site [Diagram pg. 1]. Lin et al., in the diagram of vector discloses a T2A peptide region that is downstream of the multiple cloning site that is immediately upstream from the blasticidin resistance gene and the WPRE regulatory element. Again, Although Lin et al. teaches the use of T2A, Fan discloses several 2A peptides that are considered common to researchers [Plasmids 101: Multicistronic Vectors, 2A peptides Table].
Given this, it would have been prima facie obvious to a person ordinary skill in the art prior to the filing of the claimed invention to modify the systems and methods of Clontech where it discussed the practicality of PLVX-Puro given it is capable of expressing in virtually any cell type, including primary cells, with the teachings of Lin et al. that discloses a lentiviral vector diagram that includes a CMV promoter region that is upstream of the 5’ truncated LTR, the inclusion of an EF1α region, and T2A peptide, with the additional teachings of Fan that discussed the 4 different 2A peptides that are routinely used in multicistronic vector along with the teachings of Hong et al. that discussed the benefits of using an EF1α. Here, there is a reasonable expectation of success to combine the teachings of Clontech with the additional teachings of Lin et al. in order to develop a PLVX-Puro lentiviral vector where the CMV is upstream of the 5’ LTR in order to initiate transcription with the further teachings of Lin et al. given that EF1α is capable of working in different cell types, and the additional teachings of both Lin et al. with Fan given that a person of ordinary skill could substitute the T2A with a P2A peptide based on both are well known in the art. There is also a reasonable expectation of success to replace the PGK promoter region with an EF1α promoter region based on the additional teachings of Hong et al. given that EF1α provided the highest level of expression compared to other promoters, including the PGK promoter.
For the Claim 14 limitation where the CMV enhancer is sequence is upstream of the 5’ LTR, Dull et al. discloses a CMV enhancer/promoter orientation [Introduction ¶ 4].
For the Claim 14 limitation where the 5’ LTR region is truncated, Lin et al. discloses the use of a truncated 5’ LTR region that is downstream of the CMV promoter [Diagram 1].
For the Claim 14 limitation where original 3’ LTR is replaced with a 3’ LTR sequence with a partially deleted U3 region, Dull et al. discloses the 3’ LTR region relative to the U3/R border have been deleted [Materials and Methods: Transfer vector constructs ¶ 5].
For Claim 15 where the puro resistance gene is replaced with a Blasticidin resistance gene, Lin et al. discloses the presence of a Blasticidin resistance gene immediately downstream of the T2A promoter region [Diagram 1].
Here it is prima facie obvious to a person of ordinary skill in the art prior to the filing of the claimed invention to modify the systems and methods of Clontech that discussed the general structure of PLVX-Puro lentiviral vector with the additional teachings of Dull et al. that disclosed the use of a CMV enhancer/promoter region with the additional teachings of Lin et al. that disclosed a truncated 5’ LTR region used in the lentiviral vector disclosed in Diagram 1 with the additional teachings of Dull et al. that discussed deleting the U3 region from the 3’ LTR region. Because of this, there is a reasonable expectation of success to modify the teachings of Clontech’s disclosure with the additional teachings of Lin et al. and Dull et al. in order to develop a lentiviral vector that exhibits blasticidin resistance that incorporates a truncated 5’ region and 3’ LTR region with a partially deleted U3 region in order to given the 3’ LTR will be copied into the 5’ LTR during reverse transcription resulting in a reduced risk of mutagenesis, gives control of strength and stability of expression.
For Claim 16 where the CMV promoter sequence comprises a nucleotide sequence shown in SEQ ID NO: 2, the EFS promoter sequence has a nucleotide sequence as shown in SEQ ID NO: 4, and a P2A linker sequence as shown in SEQ ID NO: 5, Lin et al. discloses a CMW promoter where positions 618-820 have 100% homology shown in SEQ ID NO: 2 [Sequences, CMV promoter]. Lin et al. also discloses the use of a EF1α promoter region prior to the nucleoplasmin NLS region [Diagram Addgene full sequence map]. Liu et al. discloses a P2A linker sequence [Fig. 1 Part B]. Additionally, Fan discloses P2A as one of the four common 2A peptides employed by scientists. Because of this, there is a reasonable expectation of success that an Artisan would combine the teachings of Liu et al. with the additional teachings of Fan, based on need, to replace the T2A peptide with a P2A peptide as disclosed in Fan. And, because P2A is one of four common 2A peptides employed by scientists, it would have been prima facie obvious to a person of ordinary skill replace the T2A of Lin et al. It would have further been prima facie obvious to combine the teachings of Lin et al. where a CMV promoter and EFS promoter where combined with the teachings of Liu et al. to incorporate a P2A peptide in place of the T2A peptide as taught by Lin et al. given that P2A and T2A are two of the 4 common 2A peptides that are routinely used by researchers.
For Claim 17 where the CMV enhancer sequence comprises the nucleotide sequence in SEQ ID NO: 1, the truncated 5’ LTR region comprises the nucleotide sequence in SEQ ID NO: 3, or the 3’ LTR region with a partially deleted U3 region comprises a nucleotide sequence shown in SEQ ID NO: 7, Lin et al. teaches a CMV enhancer that has 100% homology to the CMV enhancer nucleotide sequence shown in SEQ ID NO: 1 [Sequence, CMV enhancer]. Lin et al. teaches a 5’ truncated LTR with 100% homology at positions 835-1015 [Sequence, 5’ LTR (truncated)]. Dull et al. discloses the 3’ LTR region relative to the U3/R border have been deleted [Materials and Methods: Transfer vector constructs ¶ 5].
For Claim 19 where a eukaryotic cell is transfected with the lentiviral expression vector, Dull et al. discloses vectors were produced by transient transfection into 293T cells [Materials and Methods, Right Col. ¶ 2].
For Claim 21 where the use of the lentiviral expression vector, Dull et al. discloses intracerebral injection of vectors on rats [Intracerebral injection of vectors].
For Claim 23 where the use of the lentiviral expression vector is used as a cell therapy, Dull et al. discloses that the HIV based vectors described are good candidates for clinical trials of lentivirus vectors in human gene therapy [Discussion ¶ 11].
It is prima facie obvious to a person of ordinary skill in the art prior to the filing of the current invention to modify the systems and methods of Clontech that described the general structural components of a PLVX-Puro lentiviral vector with the further teachings of Lin et al. and Dull et al. where both described modified lentiviral vectors that included a truncated 5’ LTR region, a partially deleted U3 region located on the 3’ LTR, and a CMV enhancer that was disclosed as immediately upstream of the CMV promoter where the modified lentiviral vector was then transfected into a eukaryotic cell for purposes of being expressed in order to determine potential efficacy as a therapeutic agent. Because of this, there is a reasonable expectation of success that a person of ordinary skill in the art would recognize the teachings of Clontech with the further teachings of both Lin et al. and Dull et al. to develop a modified lentiviral vector expressing Blasticidin resistance for the purpose of being administered as a therapeutic agent.
The Supreme court has acknowledged:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable varition..103 likely bars its patentability…if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions…
…the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (see KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 U.S. 2007) emphasis added.
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court reaffirmed "the conclusion that when a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976)). The Supreme Court also emphasized a flexible approach to the obviousness question, stating that the analysis under 35 U.S.C. § 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418; see also id. at 421 ("A person of ordinary skill is... a person of ordinary creativity, not an automaton.").
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims allowed.
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/JOHN DAVID MOORE/Examiner, Art Unit 1638
/ROBERT M KELLY/Primary Examiner, Art Unit 1638