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 response of 01/05/2026, including a substitute specification, has been received and entered into the application file.
It is noted that the amendment to the claims filed on 01/05/2025 does not comply with the requirements of 37 CFR 1.121(c) because not all changes to the claims are appropriately marked. At amended instant claim 1, the components of the claimed construct are listed as “(i),” “(ii),” and so on and so forth. The prior claim set filed 12/22/2022 listed the components of the claimed construct as “i),” “ii),” and so on and so forth. This typographical change is not appropriately marked in the amended claim set filed 01/05/2026. However, in the interest of compact prosecution, the amendment to the claims has been entered.
Claims 1-7, 9-10, 12-14, 16-17, 21-22, and 29-30, were amended in the claim set filed 01/05/2026.
Claims 11 and 27 were cancelled in the claim set filed 01/05/2026.
Accordingly, claims 1-10, 12-26, and 29-30 are pending and under consideration.
Information Disclosure Statement
Receipt of an information disclosure statement on 01/05/2026 is acknowledged. The signed and initialed PTO-1449 has been mailed with this action.
Status of Prior Objections/Rejections
RE: Specification
►The disclosure was previously objected to because for minor informalities.
The substitute specification filed 01/05/2026 has obviated the basis of the objections of record. Accordingly, the objections of record are hereby withdrawn.
RE: Claim Objections
►Claims 1, 2, 7, 9, 22, and 30 were previously objected to for minor informalities.
The amendments to the instant claim set filed 01/05/2026 have obviated the basis of the objections of record. Accordingly, the objections of record are hereby withdrawn.
RE: Claim Rejections - 35 USC § 112(a)
►Claim 30 was previously 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.
Applicant has traversed the rejection of record, asserting that the specification as filed provides sufficient examples which would have allowed one of skill in the art to understand that Applicant was in possession of the claimed invention at the time of filing. Applicant points to paragraph [0167] of the instant specification to support this assertion.
In response, this is found persuasive. The instant specification provides sufficient examples to demonstrate possession of the claimed invention as recited at amended instant claim 30. The rejection of record is hereby withdrawn.
►Claims 27, 29, and 30 were previously rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for in vivo administration of an MECP2 transgene construct of the instant invention to ameliorate Rett-like phenotypes in mice modeling Rett syndrome, as well as in vivo regulation of a UBE3A transgene construct of the instant invention (both delivered via AAV vectors), does not reasonably provide enablement for treating any disorder, any monogenic disorder, or any disorder associated with the genes recited in instant claim 30 by providing a transgene construct of the instant invention to a subject.
The cancellation of claim 27 renders the rejection thereof moot.
Applicant has traversed the rejection of record, asserting that Applicant has demonstrated controlled expression of MECP2, UBE3A, CDKL5, FXN, SMN1, SYNGAP1, and INS, which are related by diseases including Rett syndrome, Angelman syndrome, Syngap-related intellectual disabilities, CDKL5 deficiency, Fredrich’s ataxia, Spinal muscular dystrophy, and diabetes.
In response, this is not found persuasive. While instant claims 29 and 30 have been amended to more narrowly limit the treated monogenic disorder and associated gene, the claims nonetheless still embrace a wider scope than is supported by the instant specification. As previously set forth, instant claim 29 broadly encompasses treatment of any monogenic disorder. While the amendments to instant claim 29 more narrowly limit the treated monogenic disorder to Rett Syndrome, Angelman syndrome, Syngap-related intellectual disability, CDK15 deficiency, Fredrich’s ataxia, Spinal muscular dystrophy, and Diabetes, this narrower limitation is preceded by “optionally” and is therefore not required by the claim. Thus, amended instant claim 29 still encompasses treatment of any monogenic disorder. Additionally, while amended instant claim 30 has been more narrowly limited to treatment by expression of a gene selected from the list comprising MECP2, UBE3A, CDKL5, FXN, SMN1, SYNGAP1, and INS, as previously set forth, while the specification envisions treatment of a number of disorders such as monogenic disorders, including Rett syndrome, Fragile X syndrome, Angelmann syndrome, and Syngap-related intellectual disability (page 25, lines 29-34; page 28, lines 1-4) using the transgene constructs taught therein, it only discloses production of and experimentation with MECP2 transgene constructs to treat mice modeling Rett syndrome and delivered in an AAV vector (Examples 1-7). While the specification also discloses production of and experimentation with UBE3A transgene constructs delivered in vivo via an AAV vector to assess regulation of its expression, the specification is silent as to the construction and utilization of any other therapeutic transgene constructs to treat any other disorder (monogenic or otherwise) in a subject.
Furthermore, amended instant claim 30 directly depends from amended instant claim 29, which, as set forth above, embraces treatment of any monogenic disorder. However, not every monogenic disorder is treatable by expressing one of the seven genes recited at amended instant claim 30. For example, as reviewed in Inusa et al., 2019 (hereinafter Inusa), sickle cell disease (SCD) is a monogenetic disorder resulting from a single base-pair point mutation in the β-globin gene resulting in the substitution of the amino acid valine for glutamic acid in the β-globin chain (abstract).
Accordingly, claims 29 and 30 stand rejected under 35 U.S.C. 112(a), with updated grounds of rejection necessitated by amendment are set forth in greater detail below.
RE: Claim Rejections - 35 USC § 112(b)
►Claims 4, 10, and 21 were previously 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.
The amendments to the instant claim set have obviated the basis of the rejections of record. Accordingly, the rejections of record are hereby withdrawn. However, new grounds of rejection necessitated by amendment are set forth in detail below.
RE: Claim Rejections - 35 USC § 102
►Claims 1, 2, 4, and 26 were previously rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022).
Applicant has traversed the rejection of record, asserting that Lillacci fails to teach the limitations of amended instant claim 1, from which claims 2, 4, and 26 depend.
In response, this is found persuasive. The rejections of record are hereby withdrawn. However, new grounds of rejection necessitated by amendment are set forth in detail below.
RE: Claim Rejections - 35 USC § 103
►Claim 3 was previously rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022) as applied to claim 1, and further in view of Hausser et al., 2013.
►Claims 5 and 7 were previously rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022) as applied to claim 1, and further in view of Muljo et al., 2010 and Rupaimoole and Slack, 2017.
►Claim 6 was previously rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022) as applied to claim 1, and further in view of WO 2020/034986 A1 (hereinafter Zhang; as cited in the IDS filed 12/22/2022).
►Claims 8, 15, 22-25, 27, 29, and 30 were previously rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022) as applied to claim 1, and further in view of WO 2018/226785 A1 (hereinafter Esteves).
►Claim 9 was previously rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022) as applied to claim 1, and further in view of WO 2019/222413 A1 (hereinafter Gao).
►Claim 16 was previously rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022) as applied to claim 1, and further in view of US 2019/0233500 A1 (hereinafter Jantz).
►Claim 17 was previously rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022) as applied to claim 1, and further in view of US 2019/0134118 A1 (hereinafter Chatterjee).
►Claim 18 was previously rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022) as applied to claim 1, and further in view of Zufferey et al., 1999.
►Claim 19 was previously rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022) and Zufferey et al., 1999 as applied to claim 18, and further in view of US 10,363,269 B2 (hereinafter Tareen).
►Claim 20 was previously rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022) as applied to claim 1, and further in view of US 2003/0224508 A1 (hereinafter Ill).
►Claim 21 was previously rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (as cited in the IDS filed 12/22/2022) as applied to claim 1, and further in view of Geisler et al., 2013.
The cancellation of claim 27 renders the rejection thereof moot.
Applicant has traversed the rejections of record, asserting that Lillacci fails to teach the construct of amended claim 1, which is required by all other claims in the instant claim set. Applicant further asserts that none of the cited art remedies this deficiency.
In response, this is found persuasive. The rejections of record are hereby withdrawn. However, new grounds of rejection necessitated by amendment are set forth in detail below.
New/Maintained Grounds of Objection/Rejection
Claim Objections
Claim 1-4 and 6 are objected to because of the following informalities:
Amended instant claims 1-4 all recite a “mammalian derived transgene.” While this recitation is not strictly improper, such terms typically include a dash, such as “mammalian-derived transgene” (bolded and underlined emphasis added). For purposes of clarity, it would be remedial to amend the instant claims such that they recite a “mammalian-derived transgene.”
Amended instant claim 3 recites “the non-mammalian miRNA binding site(s) is provided within the mammalian derived transgene” (bolded emphasis added), which does not comport with standard grammatical and/or linguistic conventions. The recited “binding site(s)” encompass(es) both singular and plural forms, which require associated singular and plural verb conjugations. It would be remedial to amend the instant claim language such that it comports with standard grammatical and/or linguistic conventions, for example by reciting “the non-mammalian miRNA binding site(s) is/are provided within the mammalian derived transgene” (bolded emphasis added). This is merely an example set forth by the Examiner and is not intended to be limiting.
With regard to amended instant claim 6, the recitation of “the non-mammalian miRNA [of the construct of claim 1] is expressed in an intron having SEQ ID NO: 5 or SEQ ID NO: 6” (bolded emphasis added) does not comport with standard grammatical and/or linguistic conventions. It would be remedial to amend the instant claim language such that it comports with standard grammatical and/or linguistic conventions, for example by reciting “the non-mammalian miRNA [of the construct of claim 1] is expressed in an intron comprising SEQ ID NO: 5 or SEQ ID NO: 6” (bolded emphasis added). This is merely an example set forth by the Examiner and is not intended to be limiting.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
Claims 29 and 30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for in vivo administration of an MECP2 transgene construct of the instant invention to ameliorate Rett-like phenotypes in mice modeling Rett syndrome, as well as in vivo regulation of a UBE3A transgene construct of the instant invention (both delivered via AAV vectors), does not reasonably provide enablement for treating any monogenic disorder by providing a transgene construct of the instant invention to a subject. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
It is noted that the instant disclosure does not provide literal or inherent support for the prior art methods addressed herein.
Enablement is considered in view of the Wands factors (MPEP 2164.01(A)). These include: the breadth of the claims, the nature of the invention, the state of the prior art, the level of one of ordinary skill, the level of predictability in the art, the amount of direction provided by the inventor, the existence of working examples, and the quantity of experimentation needed to make or use the invention. All of the Wands factors have been considered with regard to the instant claims, with the most relevant factors discussed below.
Nature of the invention: Independent claim 29 is drawn to a method of treating any monogenic disorder in any subject, said method comprising administering a transgene construct of the instant invention to a subject. While said monogenic disorder is further limited to Rett Syndrome, Angelman syndrome, Syngap-related intellectual disability, CDK15 deficiency, Fredrich’s ataxia, Spinal muscular dystrophy, and Diabetes, this is an optional limitation as recited at amended instant claim 29. Therefore, it is not a required limitation and does not narrow the scope of treatment recited therein. While dependent claim 30 has been amended to recite therapeutic expression of a limited list of genes (MECP2, UBE3A, CDKL5, FXN, SMN1, SYNGAP1, and INS), the recitation of instant claim 30 requires that these genes must be capable of treating any monogenic disorder, as instant claim 30 directly depends from instant claim 29 and therefore inherits all of its limitations.
Breadth of the claims: The claims broadly encompass treatment of any monogenic disorder via administration of any transgene construct that satisfies the limitations of instant claim 1 (i.e. comprising a promoter, at least one non-mammalian or synthetic miRNA, a transgene, at least one non-mammalian or synthetic miRNA binding site, and a polyadenylation signal).
The complex nature of the subject matter of this invention is greatly exacerbated by the breadth of the claims.
Guidance of the specification and existence of working examples: While the specification envisions treatment of a number of disorders such as monogenic disorders, including Rett syndrome, Fragile X syndrome, Angelmann syndrome, and Syngap-related intellectual disability (page 25, lines 29-34; page 28, lines 1-4) using the transgene constructs taught therein, it only discloses production of and experimentation with MECP2 transgene constructs to treat mice modeling Rett syndrome and delivered in an AAV vector (Examples 1-7). While the specification also discloses production of and experimentation with UBE3A transgene constructs delivered in vivo via an AAV vector to assess regulation of its expression, the specification is silent as to the construction and utilization of any other therapeutic transgene constructs to treat any other monogenic disorder in a subject.
Predictability and state of the art: As set forth in the instant specification, although the concept of gene therapy is well-established, there are significant practical considerations preventing its widespread therapeutic use, including gene expression dosage sensitivity (page 1, lines 11-21). These hurdles are also disclosed in the literature. For example, Lillacci et al., 2018 (of record; as cited in the IDS filed 12/22/2022) teaches that current systems to induce gene expression often exhibit unpredictable behavior and performance shortcomings, including high sensitivity to transactivator dosage and excessive consumption of cellular resources (abstract). To overcome these unpredictable shortcomings, Lillacci et al., 2018 discloses the production of four cybergenetic circuits for controlling inducible gene expression in mammalian cells: an open loop circuit, a negative feedback controller circuit, an incoherent feedforward only controller circuit, and a negative feedback/incoherent feedforward only hybrid controller circuit (figure 1). These different cybergenetic circuits are disclosed to have different properties that are useful in different situations based on the desired expression pattern of the output gene of interest, as tested in cell lines in vitro (page 9862, column 1, paragraph 1). This level of fine-tune control is disclosed to be crucial to keep expression levels in transgenic constructs as finely regulated as those of the endogenous pathways (page 9861, column 2, paragraph 4). Thus, the disclosure of Lillacci et al., 2018 establishes that different gene regulatory circuits are useful in different situations for different gene expression patterns. The instant specification discloses only one type of gene regulatory circuit, which, based on the disclosure of Lillacci et al., 2018, would not reasonably be predicted to be useful in establishing different gene expression patterns in different situations as necessary.
Additionally, as set forth above, Lillacci et al., 2018 only discloses in vitro experimentation of delivering transgene constructs to cell lines. While the instant specification discloses in vitro and in vivo administration of the transgene constructs taught therein, in vivo administration is only disclosed to be accomplished with an AAV vector. However, instant claims 29 and 30 do not require delivery via an AAV vector and thus necessarily embrace non-viral delivery of transgene constructs. While non-viral transgene delivery has improved, it is a developing area of the art that still suffers from reduced transfection efficiency and increased toxicity (reviewed in Al-Dosari and Gao, 2009 (of record)). The instant application is silent as to using any non-viral delivery methods to provide therapeutic transgene constructs in vivo.
Furthermore, as set forth above, the amendments to instant claim 29 only optionally limit the treated monogenic disorder and therefore, claim 29 encompasses treatment of any monogenic disorder. However, the amendments to instant claim 30 limit the therapeutic gene to a limited number of species. Therefore, instant claim 30 requires that any monogenic disorder be treated by controlled expression of one of the corrective genes recited therein, as recited at amended instant claim 29. This is not supported by the state of knowledge in the field, as there are many known monogenic disorders that are not treatable by controlled expression of one of the corrective genes recited at instant claim 30. For example, sickle cell disease (SCD) is a monogenic disorder resulting from a single base-pair point mutation in the β-globin (reviewed in Inusa et al., 2019). None of the genes recited at amended instant claim 30 are impacted in SCD, which is a monogenic disorder, as recited at amended instant claim 29.
Amount of experimentation necessary: The quantity of experimentation needed to carry out the full scope of the claimed method is large. One could not rely upon guidance provided in the instant disclosure or in the prior art. First, one would be required to determine the optimal therapeutic transgene expression pattern of any given gene of interest, with different gene expression patterns in different situations requiring different regulatory circuits, as reviewed in Lillacci et al., 2018. The optimal therapeutic transgene expression pattern of any given gene of interest would not necessarily be consistent with the expression pattern of any other given gene of interest; thus, experimentation would be required for each claimed gene of interest to establish its optimal expression pattern for therapeutic effects. Additionally, one would be required to develop a robust in vivo non-viral transgene delivery system. As reviewed in Al-Dosari and Gao, 2009, non-viral transgene delivery systems exhibit reduced transfection efficiency and increased toxicity, at least both of which would need to be addressed and overcome via experimentation and inventive effort. Accordingly, a large amount of inventive effort would be required to carry out the claimed invention of treating any monogenic disorder in a subject by administering therapeutic transgene constructs.
In view of the breadth of the claims and the lack of guidance provided by the specification as well as the unpredictability of the art, the skilled artisan would have required an undue amount of experimentation to make and/or use the claimed invention. Therefore, claims 29 and 30 are not considered to be fully enabled by the instant disclosure.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regard to claim 4, the term “relatively stable” in claim 4 is a relative term which renders the claim indefinite. The term “relatively stable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In the absence of any definition as to the bounds of “relatively stable,” one of ordinary skill in the art would not reasonably be apprised of the variation(s) in expression level(s) that would infringe upon the claimed invention. It would be remedial to clearly limit the bounds of “relatively stable” expression. To ensure clarity of the record, the Examiner notes that the word “relatively” is the specific relative term which renders the claim indefinite. The recitation of “relatively stable” is indefinite for the same reasons that the recitation of “relatively fixed” was previously rejected as being indefinite. The bounds of the variation(s) in expression level(s) must be clearly defined/limited such that one of ordinary skill in the art would be reasonably apprised of the bounds of protection sought in the instant claim set.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, 5, 8, 15, 22-25, 26, 29, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (hereinafter Lillacci; of record; as cited in the IDS filed 12/22/2022), in view of Rupaimoole and Slack, 2017 (hereinafter Rupaimoole; of record), Muljo et al., 2010 (hereinafter Muljo; of record), Li and Rana, 2014 (hereinafter Li), and WO 2018/226785 A1 (hereinafter Esteves; of record).
With regard to amended instant claim 1, which recites “a construct comprising: (i) a promoter; (ii) at least one non-mammalian microRNA (miRNA) derived from an insect miRNA expressed within an intron; (iii) a mammalian derived transgene; (iv) at least one non-mammalian miRNA binding site(s) complementary to the insect miRNA which controls the expression of the mammalian derived transgene; and (v) a polyadenylation signal,” as previously set forth, Lillacci discloses four gene expression control systems designed to address the unpredictable behavior and performance shortcomings of tunable induction of gene expression (abstract). One such cybergenetic gene expression circuit is the feedback/feedforward hybrid construct of Lillacci, which comprises a promoter (PTRE), at least one synthetic miRNA expressed within an intron (miR-FF4), a transgene (DsRed), a synthetic miRNA binding site (TFF4), and terminated by a polyadenylation signal (Figure 1; supplemental section S7.1; page 9858, column 1, paragraph 1). Thus, Lillacci discloses a tunable gene expression construct for use in mammalian cells, said construct comprising a promoter and a polyadenylation signal. While Lillacci does disclose the role of miRNA and binding sites thereof in controlling transgene expression (page 9855; column 2, paragraph 2; Figure 1), they do not disclose that the miRNA is an insect miRNA expressed within an intron (with corresponding binding site) or that the transgene expressed from said construct is a mammalian-derived transgene. However, these deficiencies are cured by Muljo, Rupaimoole, Li, and Esteves, as set forth below.
As previously set forth, Rupaimoole discloses that while miRNA therapeutics are in clinical development due to the level of targeting specificity they can achieve (i.e. in specifically targeting cancer cells) (abstract; page 213, column 2, paragraph 3), challenges to miRNA-based therapeutics must be considered and include the possibility of off-target effects, which are to be avoided (page 217, column 2, paragraph 4). This disclosure is consistent with the teachings of Esteves, which discloses AAV vectors capable of self-regulating expression levels of a mammalian-derived transgene (i.e. MeCP2) by utilizing miRNAs and their associated binding sites to simultaneously regulate transgene expression levels and de-target transgene expression in peripheral organs (page 6, lines 15-25; page 6, line 29-page 7, line 2). Esteves explicitly teaches that the miRNA regulatory elements disclosed therein impart tissue-specific gene expression capabilities (page 22, lines 15-25), thereby avoiding off-target transgene activity (page 1, line 22). Based on these disclosures, one of ordinary skill in the art would have been aware that miRNAs and their associated binding sites can be used to regulate mammalian-derived transgene expression levels in specific tissues and to avoid off-target transgene activity and further that therapeutics involving miRNAs must consider the possibility of miRNAs causing off-target effects. Therefore, one of ordinary skill in the art would have been motivated to utilize an miRNA (and associated binding sites) with the lowest possible potential for off-target activity.
However, endogenous mammalian (i.e. human) miRNAs mostly belong to miRNA families with similar seed regions (reviewed in Li: page 630, column 1, paragraph 3), meaning they may lack the requisite degree of target specificity for controlling therapeutic transgene expression, as set forth above. The constructs disclosed in Lillacci comprise synthetic miRNAs and binding sites (Figure 1; supplemental section S7.1; page 9858, column 1, paragraph 1). Given that synthetic miRNAs and their associated binding sites are not naturally-occurring, one of ordinary skill in the art would know that they are unlikely to interfere with endogenous miRNA binding and/or function. Given that one of ordinary skill in the art is also a person of ordinary creativity (per MPEP § 2141(II)(C)), it is considered that one of ordinary skill in the art would have been motivated to test the utility of other miRNA-based constructs controlled by other miRNA species that would also not be expected to interfere with endogenous miRNA binding and/or function, thereby facilitating specific targeting and expression of the therapeutic transgene.
As previously set forth, Muljo discloses that in a three-way comparison between nematodes, insects, and vertebrates, only five miRNA-target relationships are preserved across all lineages and further that there are a large number of unique miRNAs detected in mammals with poor conservation of their interactions with their intended targets (page 7, paragraph 3; page 8, paragraph 2). Given that there is poor conservation of miRNA-target interactions in mammals and that only five such relationships are preserved across nematode, insect, and vertebrate lineages, one of ordinary skill in the art would reasonably predict that miRNAs from each lineage are unlikely to target RNA from any other lineage (i.e. an insect miRNA is unlikely to target a mammalian RNA target), thereby facilitating specific targeting and expression of the therapeutic transgene, as with the synthetic miRNA constructs taught in Lillacci.
Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1.
With regard to amended instant claim 2, which recites “the miRNA binding site(s) [of the construct of claim 1] which provide for control of the expression of the mammalian derived transgene are provided within the 3’ untranslated region (UTR), or the 5’ UTR,” as previously set forth Lillacci discloses that the miRNA binding sites of the constructs taught therein are located in the 3’ UTR (page 9858, column 1, paragraph 1), as instantly claimed. Furthermore, Esteves discloses controlled expression of a mammalian derived transgene (i.e. MeCP2) using miRNAs and their associated binding sites (page 6, lines 15-25; page 6, line 29-page 7, line 2). Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 2.
With regard to amended instant claim 4, which recites “the construct [of claim 1] provides a single gene circuit to provide a relatively stable level of expression of the mammalian derived transgene across one or more cells comprising the construct, wherein the one or more cells receive a different number of copies of the construct, each cell comprises the same relatively stable level of expression of the mammalian derived transgene, thereby providing dosage-insensitivity,” as set forth above, Lillacci discloses four gene expression control systems designed to address the unpredictable behavior and performance shortcomings of tunable induction of gene expression, with DsRed as an exemplary single transgene (abstract; Figure 1). One of these hurdles that is addressed with the constructs of Lillacci is disclosed to be high sensitivity to transactivator dosage (abstract). Additionally, given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1, as set forth above, both the instantly claimed and collectively disclosed constructs must be structurally identical and therefore must necessarily have identical functions. See MPEP § 2114 and § 2173.05(g). Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 4.
With regard to amended instant claim 5, which recites “the at least one non-mammalian miRNA [of the construct of claim 1] exhibits no off-target binding effects,” as set forth above, Rupaimoole discloses that challenges to miRNA-based therapeutics include the possibility of off-target effects, which are to be avoided (page 217, column 2, paragraph 4). Furthermore, Muljo discloses that in a three-way comparison between nematodes, insects, and vertebrates, only five miRNA-target relationships are preserved across all lineages and further that there are a large number of unique miRNAs detected in mammals with poor conservation of their interactions with their intended targets (page 7, paragraph 3; page 8, paragraph 2). Given that there is poor conservation of miRNA-target interactions in mammals and that only five such relationships are preserved across nematode, insect, and vertebrate lineages, one of ordinary skill in the art would reasonably predict that miRNAs from each lineage are unlikely to target RNA from any other lineage (i.e. an insect miRNA is unlikely to target a mammalian RNA target). Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 5.
With regard to claim 8, which recites “there are a plurality of miRNA binding sites provided in the construct [of claim 1],” Esteves discloses self-regulating AAV vectors comprising a recombinant nucleic acid MeCP2 transgene that are useful for treating diseases and disorders associated with a loss of function mutation (i.e. Rett syndrome) (abstract). The vectors and recombinant nucleic acids of Esteves are self-regulating due to certain combinations of miRNA regulatory elements, such as miRNA binding sites associated with gene expression negative feedback loops and miRNA binding sites that de-target transgene expression from non-target tissues, which enable tunable transgene expression within a narrow range compatible with normal protein function and avoidance of off-target transgene toxicity (page 1, lines 18-25). Esteves discloses that these constructs may comprise one or more miRNA binding sites, for example 1, 2, 3, 4, 5, 6, 7, 8, 9, or 10 miRNA binding sites (page 9, lines 17-27) that may each bind the same miRNA, or different miRNA (page 9, lines 29-30). Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of instant claim 8.
With regard to claim 15, which recites “the promoter [of the construct of claim 1] is selected from a constitutive or conditional promoter, optionally wherein the promoter is tissue-specific,” as set forth above, Esteves discloses self-regulating AAV vectors comprising a recombinant nucleic acid MeCP2 transgene that are useful for treating diseases and disorders associated with a loss of function mutation (i.e. Rett syndrome) (abstract). The vectors of Esteves are further disclosed to comprise additional tissue-specific regulatory sequences, such as tissue-specific promoters to impart tissue-specific gene expression (page 21, line 26-page 22, line 12). Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of instant claim 15.
With regard to amended instant claim 22, which recites “a vector comprising the construct of claim 1,” as set forth above, Esteves discloses self-regulating AAV vectors comprising a recombinant nucleic acid MeCP2 transgene that are useful for treating diseases and disorders associated with a loss of function mutation (i.e. Rett syndrome) (abstract). Additionally, the vectors disclosed in Esteves share structural and functional similarities to the constructs of both Lillacci et al., 2018 and of the instant invention in that the vectors and recombinant nucleic acids of Esteves are self-regulating due to certain combinations of miRNA regulatory elements, such as miRNA binding sites associated with gene expression negative feedback loops and miRNA binding sites that de-target transgene expression from non-target tissues, which enable tunable transgene expression within a narrow range compatible with normal protein function and avoidance of off-target transgene toxicity (page 1, lines 18-25). Esteves further discloses that the recombinant nucleic acids taught therein may be packaged into a viral vector such as an AAV vector or a lentiviral vector (page 3, lines 3-6). Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the vector of amended instant claim 22.
With regard to claim 23, which recites “the vector [of claim 22] is an AAV or lentiviral vector,” as set forth above, Esteves further discloses that the self-regulating recombinant nucleic acids taught therein may be packaged into a viral vector such as an AAV vector or a lentiviral vector (page 3, lines 3-6), as instantly claimed. Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the vector of instant claim 23.
With regard to claim 24, which recites “the vector of claim 22, packaged into a virion,” Esteves not only discloses that the self-regulating recombinant nucleic acids taught therein may be packaged into a viral vector such as an AAV vector or a lentiviral vector (page 3, lines 3-6) (as set forth above), but also that the recombinant nucleic acids taught therein may be contained within a virion (page 11, lines 3-9), as instantly claimed. Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the vector of instant claim 24.
With regard to claim 25, which recites “the vector of claim 22, formulated in a nanoparticle,” Esteves not only discloses that the self-regulating recombinant nucleic acids taught therein may be packaged into a viral vector such as an AAV vector or a lentiviral vector (page 3, lines 3-6) (as set forth above), but also that the compositions taught therein (including the vectors comprising the recombinant nucleic acids taught therein) may be delivered via a nanoparticle delivery vehicle (page 31, lines 17-21), as instantly claimed. Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the vector of instant claim 25.
With regard to claim 26, which recites “a method of using the construct of claim 1 to express a transgene in a specific mammalian cell type or types,” as set forth above, Lillacci discloses four gene expression control systems designed to address the unpredictable behavior and performance shortcomings of tunable induction of gene expression (abstract). These constructs are considered to read on the instantly claimed construct when combined with the disclosures of Muljo, Rupaimoole, Li, and Esteves, as set forth above. As shown in Figure 1 of Lillacci, each cybergenetic circuit for controlling inducible gene expression in mammalian cells is designed to express a transgene (DsRed), as instantly claimed. Furthermore, as set forth above, the vectors of Esteves are disclosed to comprise additional tissue-specific regulatory sequences, such as tissue-specific promoters to impart tissue-specific gene expression (page 21, line 26-page 22, line 12). Given that tissues are known to comprise specific, specialized cell types, it is considered that the instantly claimed “specific mammalian cell type or types” reasonably reads on a tissue, which is comprised of specific mammalian cell types, as set forth above. Thus, the tissue-specific expression of Esteves is considered to read on the instantly claimed expression in specific cell types. Therefore, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the method of instant claim 26.
With regard to claim 29, which recites “the disorder [of the method of claim 27] is any monogenic disorder in which controlled expression of the corrective gene is desired, optionally wherein the monogenic disorder is selected from the group consisting of Rett syndrome…,” as set forth above, Esteves explicitly discloses a method of treating Rett syndrome in a subject, said method comprising administering to the subject an effective amount of a recombinant nucleic acid as taught therein, an rAAV as taught therein, or a composition as taught therein (page 5, lines 1-4), as instantly claimed. The AAV vectors taught therein are self-regulating AAV vectors comprising a recombinant nucleic acid MeCP2 transgene that are useful for treating diseases and disorders associated with a loss of function mutation (i.e. Rett syndrome) (abstract). Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the method of amended instant claim 29.
With regard to claim 30, which recites “the disorder [of the method of claim 27] is treated by expression of a gene selected from the list comprising” numerous gene species, including “MECP2 [and] CDKL5,” not only does Esteves explicitly disclose a method of treating Rett syndrome in a subject, said method comprising administering to the subject an effective amount of a recombinant nucleic acid as taught therein, an rAAV as taught therein, or a composition as taught therein (page 5, lines 1-4), as set forth above, but Esteves also discloses that the “product” taught therein refers to a nucleic acid, a peptide, protein, or polypeptide that is transcribed and/or translated from a nucleic acid sequence encoding a protein associated with a disease caused by a loss of function mutation, such as in MeCP2 or CDKL5 (page 7, line 22-page 8, line 8), as instantly claimed. Thus, it is considered that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the method of amended instant claim 30.
Given that Lillacci discloses a feedback/feedforward hybrid construct comprising a promoter (PTRE), at least one synthetic miRNA expressed within an intron (miR-FF4), a transgene (DsRed), a synthetic miRNA binding site (TFF4), and terminated by a polyadenylation signal that controls transgene expression in a specific and tunable manner; that Rupaimoole and Li disclose that miRNA-based therapeutics must consider the possibility of off-target effects, especially given that endogenous mammalian miRNAs can promiscuously target different binding sites, in order to safely achieve tissue-specific expression of therapeutic transgenes (such as the mammalian transgene MeCP2 taught in Esteves); and that Muljo discloses that there is poor conservation of miRNA-target interactions in mammals and further that only five such relationships are preserved across nematode, insect, and vertebrate lineages, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to utilize a non-mammalian miRNA such as an insect miRNA, along with its associated binding sites, (as disclosed in Muljo et al., 2010) in place of the synthetic miRNA of the construct of Lillacci et al., 2018 to predictably avoid miRNA off target effects (as motivated in Rupaimoole and Li) when expressing therapeutic, mammalian-derived transgenes (as taught in Esteves) due to the divergence of miRNA-target interactions between mammalian and insect lineages (as disclosed in Muljo). One would have been motivated to make such a modification in order to receive the expected benefit of avoiding miRNA off target effects for therapeutic applications, as contemplated in Lillacci and disclosed in Esteves
Furthermore, given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1 (as set forth above) and that Esteves further discloses self-regulating AAV vectors (or virions) that may be delivered via vehicles such as nanoparticles for purposes of treating diseases and disorders associated with a loss of function mutation (i.e. in MeCP2 or CDKL5) and comprise a recombinant nucleic acid transgene, multiple miRNA binding sites, and a tissue-specific promoter, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the construct set forth above to further comprise the features taught in Esteves (i.e. packaging into vectors or virions, multiple miRNA binding sites, tissue-specific promoters, and nanoparticle-driven delivery) to predictably treat monogenic diseases and disorders associated with a loss of function mutation. One would have been motivated to make such a modification in order to receive the expected benefit of treating diseases and disorders associated with a loss of function mutation.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (hereinafter Lillacci; of record; as cited in the IDS filed 12/22/2022), in view of Rupaimoole and Slack, 2017 (hereinafter Rupaimoole; of record), Muljo et al., 2010 (hereinafter Muljo; of record), Li and Rana, 2014 (hereinafter Li), and WO 2018/226785 A1 (hereinafter Esteves; of record), as applied to claim 1 above, and further in view of Hausser et al., 2013 (hereinafter Hausser; of record).
The combined disclosures of Lillacci, Rupaimooole, Muljo, Li, and Esteves are described above and applied as before. However, these disclosures do not teach the synthetic miRNA binding site(s) within the transgene of instant claim 3.
With regard to amended instant claim 3, which recites “the non-mammalian miRNA binding site(s) [of the construct of claim 1] is[/are] provided within the mammalian derived transgene,” as set forth above, Lillacci, Rupaimooole, Muljo, Li, and Esteves collectively disclose the construct of claim 1. However, they do not disclose that the synthetic miRNA binding site(s) may be provided within the transgene itself. This deficiency is cured by Hausser, which discloses that miRNA binding sites located within coding regions are potent in inhibiting translation of the targeted gene (abstract; figure 5).
Given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1 (as set forth above), and that Hausser discloses that miRNA binding sites located within coding regions are potent in inhibiting translation of the targeted gene, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to design the collectively disclosed therapeutic transgene construct set forth above to comprise miRNA binding site(s) within the transgene coding region to predictably inhibit translation of the targeted gene (i.e. the transgene), as disclosed in Hausser. One would have been motivated to make such a modification in order to receive the expected benefit of potently inhibiting translation of the transgene within the construct, thereby controlling its expression.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (hereinafter Lillacci; of record; as cited in the IDS filed 12/22/2022), in view of Rupaimoole and Slack, 2017 (hereinafter Rupaimoole; of record), Muljo et al., 2010 (hereinafter Muljo; of record), Li and Rana, 2014 (hereinafter Li), and WO 2018/226785 A1 (hereinafter Esteves; of record), as applied to claim 1 above, and further in view of WO 2020/034986 A1 (hereinafter Zhang; as cited in the IDS filed 12/22/2022; of record).
The combined disclosures of Lillacci, Rupaimooole, Muljo, Li, and Esteves are described above and applied as before. However, these disclosures do not teach the intronic sequence of instant claim 6.
With regard to amended instant claim 6, which recites “the non-mammalian miRNA [of the construct of claim 1] is expressed in an intron having SEQ ID NO: 5 or SEQ ID NO: 6,” Zhang discloses the sequence of the first intron of human EF1αI (SEQ ID NO: 13; page 22, lines 15-20), which is 100% identical to instant SEQ ID NO: 5, as shown in Appendix I. Zhang further discloses that this sequence functions as a transcriptional regulatory element that is capable of increasing the expression of a heterologous protein (page 22, lines 15-28).
Given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1 (as set forth above), and that Zhang discloses the sequence of the first intron of human EF1αI, which functions as a transcriptional regulatory element that is capable of increasing the expression of a heterologous protein and is 100% identical to instant SEQ ID NO: 5, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to utilize the intronic sequence disclosed in Zhang as the intron in the collectively disclosed therapeutic transgene construct set forth above to predictably increase the expression of the heterologous protein encoded by the transgene. One would have been motivated to make such a modification in order to receive the expected benefit of increasing the expression of the heterologous protein encoded by the transgene.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (hereinafter Lillacci; of record; as cited in the IDS filed 12/22/2022), in view of Rupaimoole and Slack, 2017 (hereinafter Rupaimoole; of record), Muljo et al., 2010 (hereinafter Muljo; of record), Li and Rana, 2014 (hereinafter Li), and WO 2018/226785 A1 (hereinafter Esteves; of record), as applied to claim 1 above, and further in view of Jin et al., 2013 (hereinafter Jin).
The combined disclosures of Lillacci, Rupaimooole, Muljo, Li, and Esteves are described above and applied as before. However, these disclosures do not teach that the non-mammalian miRNA of the construct is capable of specifically binding to a firefly luciferase (ffluc1) miRNA binding site.
With regard to amended instant claim 7, which recites “the non-mammalian miRNA [of the construct of claim 1] is capable of specifically binding to a firefly luciferase (ffluc1) miRNA binding site,” as set forth above, Lillacci, Rupaimooole, Muljo, Li, and Esteves collectively disclose the construct of amended instant claim 1. While the cited art does not disclose that the insect (i.e. non-mammalian miRNAs) addressed therein are capable of specifically binding to an ffluc1 miRNA binding site, this is known in the art. Jin discloses methods of evaluating miRNA targeting sites and assessing transcriptional activity in intact cells, said methods comprising the firefly luciferase reporter gene assay (page 118, paragraph 3). In this assay, the firefly luciferase gene is incorporated into a construct and is engineered to contain predicted miRNA targeting sequences from the queried gene of interest (page 118, paragraph 3), which read on the instantly claimed miRNA binding site targeted by the non-mammalian miRNA of the construct of claim 1. As detailed in section 3.3 of Jin, monitoring of firefly luciferase activity serves as a readout of the expression of the queried gene of interest.
Given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1 (as set forth above), and that Jin discloses that firefly luciferase is routinely engineered to contain predicted miRNA targeting sequences from the queried gene of interest to monitor its expression, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to further engineer the transgene expression construct/system set forth above to simultaneously function in a firefly luciferase reporter gene assay wherein the miRNA associated with the construct also binds to firefly luciferase, thereby predictably facilitating monitoring and analysis of expression of the gene of interest (i.e. the transgene) from the construct. One would have been motivated to make such a modification in order to receive the expected benefit of monitoring and analyzing expression of the therapeutic transgene of interest from the construct.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (hereinafter Lillacci; of record; as cited in the IDS filed 12/22/2022), in view of Rupaimoole and Slack, 2017 (hereinafter Rupaimoole; of record), Muljo et al., 2010 (hereinafter Muljo; of record), Li and Rana, 2014 (hereinafter Li), and WO 2018/226785 A1 (hereinafter Esteves; of record), as applied to claim 1 above, and further in view of WO 2019/222413 A1 (hereinafter Gao; of record).
The combined disclosures of Lillacci, Rupaimooole, Muljo, Li, and Esteves are described above and applied as before. However, these disclosures do not teach the plurality of non-mammalian miRNAs of instant claim 9.
With regard to amended instant claim 9, which recites “there are a plurality of non-mammalian miRNAs expressed in [the construct of claim 1],” Gao discloses recombinant AAV vectors engineered to express a transgene and comprising an inhibitory nucleic acid such as an artificial miRNA (abstract). Gao further discloses that the nucleic acids encoding a transgene taught therein may be engineered to express one or more inhibitory nucleic acids, such as an miRNA (page 6, lines 7-12).
Given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1 (as set forth above), and that Gao discloses recombinant AAV vectors engineered to express a transgene and comprising multiple inhibitory nucleic acids such as miRNAs, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the construct set forth above to further comprise the multiple miRNAs disclosed in Gao to predictably control transgene expression. One would have been motivated to make such a modification in order to receive the expected benefit of controlling transgene expression.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (hereinafter Lillacci; of record; as cited in the IDS filed 12/22/2022), in view of Rupaimoole and Slack, 2017 (hereinafter Rupaimoole; of record), Muljo et al., 2010 (hereinafter Muljo; of record), Li and Rana, 2014 (hereinafter Li), and WO 2018/226785 A1 (hereinafter Esteves; of record), as applied to claim 1 above, and further in view of US 2019/0233500 A1 (hereinafter Jantz; of record).
The combined disclosures of Lillacci, Rupaimooole, Muljo, Li, and Esteves are described above and applied as before. However, these disclosures do not teach the promoter sequence of instant claim 16.
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With regard to amended instant claim 16, which recites “the promoter [of the construct of claim 1] is selected from SEQ ID NO: 68, SEQ ID NO: 69, or SEQ ID NO: 76” Jantz discloses nucleic acid sequences encoding co-stimulatory domains useful for treating diseases (abstract). Jantz discloses SEQ ID NO: 32, which is a JeT promoter (paragraph [0095]) and is 100% identical to instant SEQ ID NO: 69, as shown in the alignment below. Jantz further discloses that the JeT promoter is a synthetic promoter suitable for driving expression from expression cassettes (paragraph [0173]).
Given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1 (as set forth above), and that Jantz discloses the sequence of a synthetic promoter suitable for driving expression from expression cassettes and 100% identical to instant SEQ ID NO: 69, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to utilize the promoter sequence disclosed in Jantz as the promoter in the construct set forth above to predictably drive expression of the heterologous protein encoded by the transgene. One would have been motivated to make such a modification in order to receive the expected benefit of driving expression of the heterologous protein encoded by the transgene.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (hereinafter Lillacci; of record; as cited in the IDS filed 12/22/2022), in view of Rupaimoole and Slack, 2017 (hereinafter Rupaimoole; of record), Muljo et al., 2010 (hereinafter Muljo; of record), Li and Rana, 2014 (hereinafter Li), and WO 2018/226785 A1 (hereinafter Esteves; of record), as applied to claim 1 above, and further in view of US 2019/0134118 A1 (hereinafter Chatterjee; of record).
The combined disclosures of Lillacci, Rupaimooole, Muljo, Li, and Esteves are described above and applied as before. However, these disclosures do not teach the polyA sequence of instant claim 17.
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With regard to amended instant claim 17, which recites “the polyA sequence [of the construct of claim 1] is selected from SEQ ID NOs: 70-72,” Chatterjee discloses AAV compositions for correcting a mutation in a beta globin gene, said AAV compositions comprising editing elements comprising at least a portion of a beta globin coding sequence and a polyadenylation sequence such as the SV40 polyadenylation sequence defined as SEQ ID NO: 79, which is 100% identical to instant SEQ ID NO: 70, as shown in the alignment below (abstract; paragraph [0097]; page 91).
Given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1 (as set forth above), and that Chatterjee discloses nucleic acid editing elements for correcting a mutation in a beta globin gene by providing at least a portion of a beta globin coding sequence and an SV40 polyadenylation sequence such as SEQ ID NO: 79 (which is 100% identical to instant SEQ ID NO: 70), it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to utilize the polyadenylation sequence disclosed in Chatterjee as the polyadenylation signal in the construct set forth above to predictably drive expression of the heterologous protein encoded by the transgene. One would have been motivated to make such a modification in order to receive the expected benefit of driving expression of the heterologous protein encoded by the transgene.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (hereinafter Lillacci; of record; as cited in the IDS filed 12/22/2022), in view of Rupaimoole and Slack, 2017 (hereinafter Rupaimoole; of record), Muljo et al., 2010 (hereinafter Muljo; of record), Li and Rana, 2014 (hereinafter Li), and WO 2018/226785 A1 (hereinafter Esteves; of record), as applied to claim 1 above, and further in view of Zufferey et al., 1999 (hereinafter Zufferey; of record).
The combined disclosures of Lillacci, Rupaimooole, Muljo, Li, and Esteves are described above and applied as before. However, these disclosures do not teach the stability element of instant claim 18.
With regard to claim 18, which recites “the construct of claim 1, further compris[es] a stability element, wherein the stability element is located in the 3’ UTR,” Zufferey discloses that placement of the woodchuck hepatitis virus posttranscriptional regulatory element in the 3’ UTR enhances expression of the associated encoded gene (abstract). While Zufferey does not explicitly disclose that the woodchuck hepatitis virus posttranscriptional regulatory element is a stability element per se, the instant specification discloses that stability elements may be the woodchuck hepatitis virus posttranscriptional regulatory element (page 48, lines 6-13). Thus, it is considered that the woodchuck hepatitis virus posttranscriptional regulatory element capable of enhancing expression of the associated encoded gene when placed in the 3’ UTR disclosed in Zufferey reads on the instantly claimed stability element located in the 3’ UTR.
Given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1 (as set forth above), and that Zufferey discloses that placement of the woodchuck hepatitis virus posttranscriptional regulatory element in the 3’ UTR enhances expression of the associated encoded gene, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to place woodchuck hepatitis virus posttranscriptional regulatory element in the 3’ UTR (as disclosed in Zufferey) of the construct set forth above to predictably enhance expression of the associated encoded gene. One would have been motivated to make such a modification in order to receive the expected benefit of enhancing expression of the associated encoded gene.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (hereinafter Lillacci; of record; as cited in the IDS filed 12/22/2022), in view of Rupaimoole and Slack, 2017 (hereinafter Rupaimoole; of record), Muljo et al., 2010 (hereinafter Muljo; of record), Li and Rana, 2014 (hereinafter Li), WO 2018/226785 A1 (hereinafter Esteves; of record), and Zufferey et al., 1999 (hereinafter Zufferey; of record), as applied to claim 18 above, and further in view of US 10,363,269 B2 (hereinafter Tareen).
The combined disclosures of Lillacci, Rupaimooole, Muljo, Li, Esteves, and Zufferey are described above and applied as before. However, these disclosures do not teach the stability element sequence of instant claim 19.
With regard to claim 19, which recites “the stability element [of the construct of claim 18] is selected from SEQ ID NO: 74 or SEQ ID NO: 75,” Tareen discloses polynucleotides containing a modified post-transcriptional regulatory element, such as a woodchuck hepatitis virus posttranscriptional regulatory element, to express a recombinant protein (column 1, line 65-column 1, line 12). One sequence corresponding to a post-transcriptional regulatory element such as a woodchuck hepatitis virus posttranscriptional regulatory element is disclosed to be SEQ ID NO: 216 (column 7, lines 24-46), which is 100% identical to instant SEQ ID NO: 74, as
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shown in the alignment below.
Given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1 (as set forth above), that Zufferey discloses that placement of the woodchuck hepatitis virus posttranscriptional regulatory element in the 3’ UTR enhances expression of the associated encoded gene, and that Tareen discloses the sequence of a woodchuck hepatitis virus posttranscriptional regulatory element (SEQ ID NO: 216, which is 100% identical to instant SEQ ID NO: 74) to express a recombinant protein, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to utilize the woodchuck hepatitis virus posttranscriptional regulatory element sequence (SEQ ID NO: 216) taught in Tareen as the woodchuck hepatitis virus posttranscriptional regulatory element placed in the 3’ UTR (as disclosed in Zufferey) of the construct set forth above to predictably enhance expression of the associated encoded gene. One would have been motivated to make such a modification in order to receive the expected benefit of enhancing expression of the associated encoded gene.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (hereinafter Lillacci; of record; as cited in the IDS filed 12/22/2022), in view of Rupaimoole and Slack, 2017 (hereinafter Rupaimoole; of record), Muljo et al., 2010 (hereinafter Muljo; of record), Li and Rana, 2014 (hereinafter Li), and WO 2018/226785 A1 (hereinafter Esteves; of record), as applied to claim 1 above, and further in view of US 2003/0224508 A1 (hereinafter Ill).
The combined disclosures of Lillacci, Rupaimooole, Muljo, Li, and Esteves are described above and applied as before. However, these disclosures do not teach the Kozak sequence of instant claim 20.
With regard to claim 20, which recites “the construct [of claim 1] further comprises the Kozak sequence GCCACCATGG (SEQ ID NO: 73),” Ill discloses liver specific expression vectors designed for expression of blood coagulation factor proteins that comprise an optimized translation initiation site (SEQ ID NO: 8) to optimize gene construct expression (abstract; paragraphs [0105] and [0109]). SEQ ID NO: 8 of Ill is 100% identical to instant SEQ ID NO: 73, as shown in the alignment below.
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Given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1 (as set forth above), and that Ill discloses expression vectors that comprise an optimized translation initiation site (i.e. Kozak sequence SEQ ID NO: 8, which is 100% identical to instant SEQ ID NO: 73) to optimize expression of the gene construct, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to engineer the construct set forth above to further comprise the optimized translation initiation site (i.e. Kozak sequence) disclosed in Ill to predictably optimize expression of the heterologous protein encoded by the transgene. One would have been motivated to make such a modification in order to receive the expected benefit of optimizing expression of the heterologous protein encoded by the transgene.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Lillacci et al., 2018 (hereinafter Lillacci; of record; as cited in the IDS filed 12/22/2022), in view of Rupaimoole and Slack, 2017 (hereinafter Rupaimoole; of record), Muljo et al., 2010 (hereinafter Muljo; of record), Li and Rana, 2014 (hereinafter Li), and WO 2018/226785 A1 (hereinafter Esteves; of record), as applied to claim 1 above, and further in view of Geisler et al., 2013 (hereinafter Geisler; of record).
The combined disclosures of Lillacci, Rupaimooole, Muljo, Li, and Esteves are described above and applied as before. However, these disclosures do not teach the altered miRNA binding site of instant claim 21.
With regard to amended instant claim 21, which recites “the miRNA binding site [of the construct of claim 1] has been designed to partially reduce miRNA binding,” Geisler discloses the development of a new skeletal muscle and liver-specific silenced cardiotropic AAV9 vector, the expression of which is controlled by miRNA binding to its target sequence (abstract). Geisler further discloses that site-directed engineering of miRNA target sites can be applied to differentiate the binding behavior of members of one miRNA family by interfering with sequence complementarity; for example, miRNA-mediated suppression of a transgene can be improved by use of imperfectly complementary miRNA target sites, thereby increasing the specificity of gene therapy vectors (page 930, column 2, paragraph 4).
Given that Lillacci, Muljo, Rupaimoole, Li, and Esteves collectively disclose the construct of amended instant claim 1 (as set forth above), and that Geisler discloses that the specificity of gene therapy vectors can be increased by using imperfectly complementary miRNA target sites to differentiate the binding behavior of members of one miRNA family, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to mutate the miRNA target sites of the construct set forth above as disclosed in Geisler to predictably increase the specificity of gene therapy vectors, such as those disclosed in Lillacci. One would have been motivated to make such a modification in order to receive the expected benefit of increasing the specificity of gene therapy vectors.
Allowable Subject Matter
Claims 10 and 12-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to instant claims 10, 12, and 14, the sequences claimed therein are determined to be free of the prior art upon searching and reviewing both patent and non-patent literature.
With regard to instant claim 13, SEQ ID NO: 34 claimed therein is found in SEQ ID NO: 99 of US 2005/0026278 A1 (of record). However, SEQ ID NO: 99 is only disclosed as a luciferase gene, not as an miRNA binding site. Therefore, the claimed sequences of instant claim 13 are also determined to be free of the prior art upon searching and reviewing both patent and non-patent literature.
Conclusion
Claims 1-9, 15-26, and 29-30 are rejected.
Claims 1-4, 6, 10, and 12-14 are objected to.
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 Sarah E Allen whose telephone number is (571)272-0408. The examiner can normally be reached M-Th 8-5, F 8-12.
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, Jennifer Dunston can be reached at 571-272-2916. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH E ALLEN/ Examiner, Art Unit 1637
/J. E. ANGELL/ Primary Examiner, Art Unit 1637
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Appendix I: Instant SEQ ID NO: 5 vs Zhang SEQ ID NO: 13
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