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 .
Applicant’s amendment filed on 05/06/2026 has been entered.
Amended claims 1, 3, 5-7, 13, 18-20, 28-30, 33-35 and 42-45 are pending in the present application.
Applicant elected previously without traverse of Group I, which is drawn to a T cell, wherein Ryr2 gene is deleted in the T cell.
Applicant also elected previously without traverse the species of exon 7 of the Ryr2 gene is deleted.
Claims 6-7, 13, 18-20, 28-30, 33-35 and 44-45 were withdrawn previously from further consideration because they are directed to non-elected inventions. Additionally, claims 3 and 42-43 were also withdrawn previously from further consideration because they are drawn to non-elected species.
Accordingly, amended claims 1 and 5 are examined on the merits herein.
Response to Amendment
1. The rejection under 35 U.S.C. 102(a)(1) as being anticipated by Takeshima et al (EMBO J. 17:3309-3316, 1998) and evidenced by Rudd (Annu. Rev. Immunol. 38:229-247, 2020) was withdrawn in light of currently amended independent claim 1, particularly with the new limitation “wherein exon 7 of Ryr2 gene is deleted in T cell, T cells that delete exon 7 of the ryr2 gene have immune suppressive function”.
2. The rejection under 35 U.S.C. 103 as being unpatentable over Takeshima et al (EMBO J. 17:3309-3316, 1998) and evidenced by Rudd (Annu. Rev. Immunol. 38:229-247, 2020) was also withdrawn in light of currently amended independent claim 1 for the same reason set forth above.
Claim Objections
Claim 1 is objected to because the phrase “T cells that delete exon 7 of the ryr2 gene have immunosuppressive function” is awkward. This is because T cells normally do not delete anything. Additionally, please be consistent with the capitalization of the term “ryr2 gene”.
Claim Rejections - 35 USC § 103
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.
Amended claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Takeshima et al (EMBO J. 17:3309-3316, 1998) in view of Kannankeril et al (PNAS 103:12179-12184, 2006) and evidenced by Rudd (Annu. Rev. Immunol. 38:229-247, 2020). This is a modified rejection necessitated by Applicant’s amendment.
The instant claims encompass a T cell in vitro or in vivo, preferably a Tconv cell (a conventional T cell), wherein exon 7 of Ryr2 gene is deleted in the T cell, T cells that delete exon 7 of the ryr2 gene have immunosuppressive function.
Takeshima et al already disclosed at least E8.5, E9.5 mouse embryos homozygous for crrm2 and mouse neonates heterozygous for crrm2, wherein in the crrm2 allele the first protein coding sequence of 48 base pairs and the partial sequence of the first intron are deleted from the RyR-2 gene (page 3310, right column, bottom of first paragraph; Fig. 1 and Table 1). With respect to the E9.5 mouse embryos homozygous for crrm2, Takeshima et al stated “[i]n the E9.5 mutant embryos, we could not detect clear histological abnormalities in the developing neural tubule, blood vessels or primitive digestive organs, that contain immature neurons or smooth muscle cells” (page 3311, right column, bottom of second full paragraph). Takeshima et al also disclosed that morphological and physiological experiments revealed no significant differences were observed between wild type and +/crrm2 mice (page 3311, left column, last sentence of first paragraph). Although Takeshima et al did not explicitly mention T cells or Tconv cells, it would also have been obvious for an ordinary skill in the art to recognize that at least the disclosed mouse neonates heterozygous for crrm2 comprise T cells, including conventional T cells, whose genomes having a deleted RyR-2 gene in an allele; and the existence of CD4+ and CD8+ T cells in neonates is evident by the Rudd review (Abstract).
Takeshima et al did not teach specifically the generation and characterization of knockout mice lacking RyR-2 by targeting exon 7 of the mouse RyR-2 gene instead of the first exon of the mouse RyR-2 gene.
Before the effective filing date of the present application (05/15/2020), Kannakeril et al already disclosed that a genomic clone containing exons 7 and 8 of the mouse RyR2 gene was isolated, and a targeting vector derived from said genomic clone was constructed to introduce the human disease-associated RyR2 mutation R176Q mutation into knock-in mice (Abstract; particularly section titled “Generation of knockin mice with the RyR2 R176Q mutation” at page 12183; and Fig. 1A).
Accordingly, it would have been obvious for an ordinary skilled artisan to modify the teachings of Takeshima et al by also targeting exon 7 of the mouse RyR-2 gene to generate mice lacking RyR-2 (homozygous and/or heterozygous knockout RyR-2 gene) for the characterization of the mutant mice, in light of the teachings of Kannakeril et al as set forth above.
An ordinary skilled artisan would have been motivated to carry out the above modification because a genomic clone containing exons 7 and 8 of the mouse RyR2 gene was already isolated by Kannakeril et al for constructing a targeted vector, and in this instance a knockout targeted vector. Please note that the primary Takeshima reference already taught that a genomic DNA clone carrying the first exon of the mouse RyR-2 gene was first isolated to construct a targeting vector for the generation of mice lacking RyR-2. An ordinary skilled artisan would have a reasonable expectation of success in light of the teachings of Takeshima et al and Kannakeril et al; coupled with a high level of skill for an ordinary skilled artisan in the relevant art.
The modified teachings resulting from the combined teachings of Takeshima et al and Kannakeril et al as set forth above would result in the generation of mouse embryos homozygous for a deletion in exon 7 of the Ryr2 gene and mouse neonates heterozygous for a deletion in exon 7 of the Ryr2 gene; and at least the mouse neonates comprise T cells whose genomes having a deleted exon 7 of the RyR-2 gene in an allele, and such T cells are indistinguishable and encompassed by the claimed T cell of the present application. With respect to the new limitation “T cells that delete exon 7 of the ryr2 gene have immunosuppressive function”, since T cells whose genomes having a deleted exon 7 of the RyR-2 gene in an allele in mouse neonates heterozygous for a deletion in exon 7 of the Ryr2 gene are indistinguishable and encompassed by the claimed T cell of the present application, such T cells are necessarily have immunosuppressive function. Please, also note that where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke. Whether the rejection is based on "inherency" under 35 USC 102, or "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
Therefore, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
Response to Argument
Applicant’s arguments related to the above 35 U.S.C. 103 rejection in the Amendment filed on 05/06/2026 (pages 6-9) have been fully considered, but they are respectfully not found persuasive for the reason discussed below.
Applicant argued basically that the prior art does not teach deleting exon 7 of the Ryr2 gene in T cells, nor could the prior art have reasonably expected that T cells with exon 7 of the Ryr2 gene deleted would be useful for treating infectious diseases or inflammation. Specifically, Applicant argued that Takeshima contains no disclosure whatsoever related to T cells, particularly Takeshima describes that Ryr2 is predominantly expressed in cardiac muscle and is directed to studying the relationship between Ryr2 and cardiac muscle, without any teaching and/or suggestion of deleting Ryr2 gene in T cells, let alone deletion of exon 7 of Ryr2 gene. Rudd simply discloses that T cells are present in neonatal mice. As to the heterozygous embryos produced by Takeshima, Applicant argued that Takeshima did not examine or confirm whether the deletion of Ryr2 gene existed in T cells after birth. Thus, Takeshima does not teach the deletion of Ryr2 gene in T cells, particularly the deletion of exon 7 of Ryr2 gene. With respect to Kannankeril reference, Applicant argued that the reference does not teach or suggest that targeting exon 7 of the RYR2 gene is superior to targeting exon 1 of the Ryr2 gene. On the contrary, Applicant argued that for a more complete knockout, a person skilled in the art would ordinarily prefer to target an early exon near the 5’ end (such as exon 1 or 2) since exons located more downstream are more vulnerable to splicing skipping which may lead to residual function. Applicant also cited the following statements “4) The binding site of sgRNA should be as close to the coding region in the downstream of ATG s possible to induce frameshift mutation, the first or second exon is better” in the provided Evidence 1 (Genemedi Adenovirus CRISPR User Manual; at page 5); “The core of a knockout strategy is to maximize the chance of inducing a disruptive frameshift. For protein-coding loci, this is best achieved by targeting the earliest exons, ideally those encoding the N-terminus because an indel here will almost certainly shift the reading frame, produce a truncated, non-functional protein, and trigger nonsense-mediated decay (NMD)” in the provided Evidence 2 (Sanjeet Singh et al; second paragraph of the section titled “Overview of gRNA selection” at page 2). Applicant also argued that the mutation R176Q in Kannakeril is located in exon 8, not exon 7; with Kannankeril developed knockin mice with the human disease-associated RyR2 mutation R176Q while Takeshima deleted the coding sequence of exon 1 and the first intron of the Ryr2 gene. None of these references teaches the function of Ryr2 in T cells, nor teaches the deletion of Ryr2 in T cells, particularly the deletion of exon 7. Applicant further argued that Takeshima only revealed mice with heterozygous knockout of the single allele of Ryr2, while ES cells with homozygous knockout of the double allele of Ryr2 died during embryonic development and did not form mice; while in the embodiment of the present application it is verified that the Ryr2 homozygous knockout T cells have the function of treating inflammation and infectious diseases. Accordingly, there are substantial differences between the scheme disclosed in the present application and Takeshima in terms of gene modification methods, cell types, and phenotypic effects, and the existing technology cannot predict the technical effects of this application. Applicant concluded that this application, by specifically knocking out Ryr2 (especially exon 7) in T cells, obtains T cells with immunosuppressive functions and effectively treats infection diseases, and inflammation (Examples 5-7 and 9) is completely opposite to the pathogenic conclusions of the cited prior arts and constitutes an “unexpected technical effect”.
First, the instant claims encompass a T cell in vitro or in vivo, preferably a Tconv cell (a conventional T cell), wherein exon 7 of Ryr2 gene is deleted (homozygous or heterozygous knockout) in the T cell, T cells that delete exon 7 of the ryr2 gene have immunosuppressive function.
Second, please refer to the above modified 103 rejection for details along with the provided motivation for combining the cited references. Since the rejection was made under 35 U.S.C. 103 none of the cited references individually has to teach every limitation of the instant claims. It is also apparent that Applicant considered each of the cited references in total isolation one from the other. Please note that Kannakeril et al already disclosed that a genomic clone containing exons 7 and 8 of the mouse RyR2 gene was isolated; and such available genomic clone would be suitable for an ordinary skill in the art to construct a targeting vector for the generation of mice lacking RyR-2 as taught by Takeshima et al. With respect to the new limitation “T cells that delete exon 7 of the ryr2 gene have immunosuppressive function”, since T cells whose genomes having a deleted exon 7 of the RyR-2 gene in an allele in mouse neonates heterozygous for a deletion in exon 7 of the Ryr2 gene are indistinguishable and encompassed by the claimed T cell of the present application, such T cells are necessarily have immunosuppressive function. Please, also note that where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke. Whether the rejection is based on "inherency" under 35 USC 102, or "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
Third, as set forth in the above 103 rejection although Takeshima et al did not explicitly mention T cells or Tconv cells, it would have been obvious for an ordinary skill in the art to recognize that at least the disclosed mouse neonates heterozygous for crrm2 comprise T cells, including conventional T cells, whose genomes having a deleted RyR-2 gene in an allele; and the existence of CD4+ and CD8+ T cells in neonates is evident by the Rudd review (Abstract). Although RyR2 is abundantly expressed in cardiac muscle cells, before the effective filing date of the present application (05/15/2020) Hosoi et al (J. Immunol. 167:4887-4894, 2001) already disclosed that RYR2 was detected in CD3+ T cells; and stated “Induction of RYRs in response to chemokines and TGF-β suggest roles in regulating Ca2+-mediated cellular responses during the immune response” (Abstract). Additionally, Thakur et al (J. Biol. Chem. 287:37233-37244, 2012; IDS) also disclosed that RyR1, RyR2, and RyR3 transcripts were detected in human T cells (Abstract). Applicant has not provided any rationale why mouse neonates heterozygous for crrm2 would not comprise T cells with a genome having a deleted RyR-2 allele; and requires the Takeshima reference to confirm the deletion of Ryr2 gene existed in T cells after birth. Please note that the standard under 35 U.S.C. 103 is a “reasonable” expectation of success; and not certainty.
Fourth, an ordinary skilled artisan would have been motivated to modify the teachings of Takeshima et al by also targeting exon 7 of the mouse RyR-2 gene to generate mice lacking RyR-2 (homozygous and/or heterozygous knockout RyR-2 gene) because a genomic clone containing exons 7 and 8 of the mouse RyR2 gene was already isolated by Kannakeril et al for constructing a targeted vector, and in this instance a knockout targeted vector. Please note that the primary Takeshima reference already taught that a genomic DNA clone carrying the first exon of the mouse RyR-2 gene was first isolated to construct a targeting vector for the generation of mice lacking RyR-2. It is not necessary that targeting exon 7 of the RyR2 gene has to be superior than targeting exon 1 of the RyR2 gene as Applicant argued for an ordinary skill in the art to modify the teachings of Takeshima et al as set forth above at least as an alternative strategy.
Fifth, once again please note that the claims are not necessarily limited to a T cell having a homozygous deletion of Ryr2 exon 7. Therefore, it is not required to have a more complete knockout. With respect to Evidence 1 provided by Applicant, the statement “4) The binding site of sgRNA should be as close to the coding region in the downstream of ATG s possible to induce frameshift mutation, the first or second exon is better” does not exclude using a knockout vector targeting exon 7 of a large RyR2 gene which is comprised of 105 exons that encode 4,967 amino acids, with exon 7 encodes a 5’ portion of the N-terminal domain comprised of amino acids 77-466 (Medeiros-Domingo et al; J. Amer. Coll. Cardiol. 54:2065-2074; 2009; left column, first full paragraph at page 2066; and Figure 1). Moreover, targeting exon 7 of a large RyR2 gene is also consistent with the statements cited by Applicant in Evidence 2 “The core of a knockout strategy is to maximize the chance of inducing a disruptive frameshift. For protein-coding loci, this is best achieved by targeting the earliest exons, ideally those encoding the N-terminus because an indel here will almost certainly shift the reading frame, produce a truncated, non-functional protein, and trigger nonsense-mediated decay (NMD)”.
Sixth, once again the Kannerkeril reference was cited primarily to demonstrate that a genomic clone containing exons 7 and 8 of the mouse RyR2 gene was isolated; and such available genomic clone would be suitable for an ordinary skill in the art to construct a targeting vector for the generation of mice lacking RyR-2 as taught by Takeshima et al.
Seventh, with respect to any “unexpected technical effect” it must be commensurate with the scope of the claims. In this instance, once again the instant claims simply encompass a T cell in vitro or in vivo, preferably a Tconv cell (a conventional T cell), wherein exon 7 of Ryr2 gene is deleted (homozygous or heterozygous knockout) in the T cell, T cells that delete exon 7 of the ryr2 gene have immunosuppressive function. Once again, the modified teachings resulting from the combined teachings of Takeshima et al and Kannakeril et al as set forth above would result in the generation of mouse embryos homozygous for a deletion in exon 7 of the Ryr2 gene and mouse neonates heterozygous for a deletion in exon 7 of the Ryr2 gene; and at least the mouse neonates comprise T cells whose genomes having a deleted exon 7 of the RyR-2 gene in an allele, and such T cells are indistinguishable and encompassed by the claimed T cell of the present application. With respect to the new limitation “T cells that delete exon 7 of the ryr2 gene have immunosuppressive function”, since T cells whose genomes having a deleted exon 7 of the RyR-2 gene in an allele in mouse neonates heterozygous for a deletion in exon 7 of the Ryr2 gene are indistinguishable and encompassed by the claimed T cell of the present application, such T cells are necessarily have immunosuppressive function. Please, also note that where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke. Whether the rejection is based on "inherency" under 35 USC 102, or "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yoshimoto et al (Blood 119:5706-5714, 2012) demonstrated the existence of T cell-restricted progenitors in the E9.5 extra-embryonic yolk sac (YS) in the mouse embryo, that directly engraft in recipient immunodeficient mice (Abstract).
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Quang Nguyen, Ph.D., at (571) 272-0776.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s SPE, James Douglas (Doug) Schultz, Ph.D., may be reached at (571) 272-0763.
To aid in correlating any papers for this application, all further correspondence regarding this application should be directed to Group Art Unit 1631; Central Fax No. (571) 273-8300.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to (571) 272-0547.
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/QUANG NGUYEN/Primary Examiner, Art Unit 1631
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