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 .
Application Status
This action is written in response to applicant’s correspondence received on 1/23/2023. Claims 1-19 are pending. All pending claims are currently under examination.
Nucleotide and/or Amino Acid Sequence Disclosures
REQUIREMENTS FOR PATENT APPLICATIONS CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCE DISCLOSURES
Items 1) and 2) provide general guidance related to requirements for sequence disclosures.
37 CFR 1.821(c) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) must contain a "Sequence Listing," as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.821 - 1.825. This "Sequence Listing" part of the disclosure may be submitted:
In accordance with 37 CFR 1.821(c)(1) via the USPTO patent electronic filing system (see Section I.1 of the Legal Framework for Patent Electronic System (https://www.uspto.gov/PatentLegalFramework), hereinafter "Legal Framework") as an ASCII text file, together with an incorporation-by-reference of the material in the ASCII text file in a separate paragraph of the specification as required by 37 CFR 1.823(b)(1) identifying:
the name of the ASCII text file;
ii) the date of creation; and
iii) the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(1) on read-only optical disc(s) as permitted by 37 CFR 1.52(e)(1)(ii), labeled according to 37 CFR 1.52(e)(5), with an incorporation-by-reference of the material in the ASCII text file according to 37 CFR 1.52(e)(8) and 37 CFR 1.823(b)(1) in a separate paragraph of the specification identifying:
the name of the ASCII text file;
the date of creation; and
the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(2) via the USPTO patent electronic filing system as a PDF file (not recommended); or
In accordance with 37 CFR 1.821(c)(3) on physical sheets of paper (not recommended).
When a “Sequence Listing” has been submitted as a PDF file as in 1(c) above (37 CFR 1.821(c)(2)) or on physical sheets of paper as in 1(d) above (37 CFR 1.821(c)(3)), 37 CFR 1.821(e)(1) requires a computer readable form (CRF) of the “Sequence Listing” in accordance with the requirements of 37 CFR 1.824.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed via the USPTO patent electronic filing system as a PDF, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the PDF copy and the CRF copy (the ASCII text file copy) are identical.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed on paper or read-only optical disc, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the paper or read-only optical disc copy and the CRF are identical.
Specific deficiencies and the required response to this Office Action are as follows:
Specific deficiency - The Incorporation by Reference paragraph required by 37 CFR 1.821(c)(1) is missing or incomplete. See item 1) a) or 1) b) above.
Required response – Applicant must provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
A copy of the amended specification without markings (clean version); and
A statement that the substitute specification contains no new matter.
Drawings
The drawings are objected to because the figures are not properly labeled.
37 CFR 1.84 (u)(1) states “The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG." Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.”
The drawings are objected to because Figures 2-3 and 5-6 are improperly labeled. Figures 2-3 and 5-6 contain partial views on separate sheets. For example, Figure 2 spans two separate sheets and is labeled “Figure 2” and “Figure 2 (continued)” but should be labeled “Figure 2A” and “Figure 2B”. The same is true for figures 3 and 5-6.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding independent claims 1 and 11, these claims recite “for use in treatment or prevention of heart disease.” Thus, claims 1 and 11 are “use” claims which are indefinite as it is not clear how the combination of nucleic acids (claim 1) or the expression construct (claim 11) will be used for such treatment and prevention. The metes and bounds of independent claims 1 and 11 are therefore not properly defined.
Claims 2-10, 13-14, and 16-19 depend from claim 1, and claims 12 and 15 depend from claim 11. Claims 2-10 and 12-19 do not resolve the 112(b) issues raised in independent claims 1 and 11 and are therefore also rejected under 112(b).
Furthermore, each of claims 2-10 and 12-19 individually recite the phrase “for use in treatment or prevention of heart disease” and are therefore also rejected for being indefinite “use” claims, where the metes and bounds of such use claims is not clearly defined as it is unclear how such molecules are to be used in treatment and prevention of heart disease.
Regarding claims 3 and 6-7, these claims recite the phrase “comprises, or essentially consists of.” This phrase is unclear because the metes and bounds of the claim are not clearly defined. Firstly, it is unclear if the recited molecules are required to “comprise” or “consist” of the limitations recited because both are recited in the claims. Furthermore, it is unclear what the phrase “essentially consists of” is meant to encompass, as it is unclear what elements would be “essential” in order to read on the phrase “essentially consists of” as presently recited.
Regarding claim 4, claim 4 recites a list of possible nucleic acid types (e.g., sgRNA and siRNA) and furthermore recites “particularly each nucleic acid agent is an siRNA.” This claim language is confusing because it is unclear if the recited nucleic acids are required to be siRNA (i.e., “particularly each nucleic acid agent is an siRNA”) or if the nucleic acids can be other RNA types as recited. Recitation of “particularly” is exemplary language and renders the claim indefinite and unclear.
Regarding claim 7, claim 7 recites “wherein one of said nucleic acid agents comprises or essentially consists of, particularly wherein all of said nucleic acid agents comprise or essentially consist of.” This phrase is unclear because 1) the metes and bounds are unclear because “comprising” and “essentially consisting of” are mutually exclusive, where “essentially consisting of” does not “comprise” the same limitations and 2) recitation of the phrase beginning with “particularly” is exemplary language; it is unclear if the phrase “particularly…essentially consists of” is a requirement of the claim. Furthermore, it is unclear if “one” or “all” of the nucleic acid agents are required to comprise LNAs or PNAs because both limitations are recited in the claim, where both “one” and “all” are mutually exclusive. Claim 7 further recites “essentially consist of locked nucleic acid (LNA) moieties,” where recitation of “essentially consist of” is unclear for the reasons given above.
Similarly, claim 8 recites “wherein one of said nucleic acid agents comprises, particularly wherein all of said nucleic acid agents comprise one or several thiophosphate linkages.” This phrase is unclear because it is unclear if “one” or “all” of the nucleic acid agents comprises thiophosphate linkages, where furthermore the term “particularly” is exemplary language which renders the metes and bounds of the claim unclear.
Regarding claim 9, claim 9 recites “wherein one of said nucleic acid agents comprises a LNA moiety connected to an adjacent by a thiophosphate bond, particularly wherein one of said nucleic acid agents comprises 2, 3 or 4 LNA moieties connected by thiophosphate bonds on either end of the nucleic acid agent.” The phrase “comprises a LNA moiety connected to an adjacent by a thiophosphate bond” is unclear because it is unclear what is being “connected to an adjacent” because no noun is recited after the word “adjacent.” Furthermore, the term “particularly” is exemplary language which renders the claim indefinite because it is unclear if the limitations following the term “particularly” are required by the claim.
Regarding claim 10, claim 10 recites “wherein one of said nucleic acid agents is, particularly wherein all of said nucleic acid agents are.” This claim language is unclear because the term “particularly” is exemplary language which does not clearly define the metes and bounds of the claim as it is unclear if the additional limitations following “particularly” are required by the claim. Furthermore, recitation of both “one” and “all,” where “one” is understood to be limited to a single nucleic acid, is mutually exclusive with the term “all.”
Regarding claim 13, claim depends from claim and recites “said expression construct.” However, no “expression construct” is previously recited in either claims 1 or 13. Recitation of “said expression construct” therefore lacks proper antecedent basis.
Claim 14 depends from claim 13 and does not resolve this 112(b) issue and is therefore also rejected for the reasons given above.
Regarding claim 15, claim 15 recites “said promoter is a heart-tissue-specific RNA Polymerase 2 promoter, particularly a promoter selected from Myosin Light Chain 2v (MLC2v) promoter, cardiac Troponin T (cTnT) promoter, Myosin Heavy Chain alpha (MHCa) promoter, and Titin (Ttn) promoter.” Recitation of “particularly” renders the claim indefinite because it is exemplary language; if is unclear if recitation of the “particular” promoter types recited in claim 15 are required limitations of the claim.
Regarding claim 16, claim 16 recites “said heart disease is characterized by a loss of cardiomyocytes, particularly said heart disease is heart failure characterized by a loss of cardiomyocytes, more particularly said heart failure is a result of myocardial infarction, stenosis, congenital disease, inflammation and/or sepsis.” Recitation of both “particularly” and “more particularly” render the claim unclear because such terms are exemplary language. It is unclear if the limitations following “particularly” and “more particularly” are required elements of the claim, or if the claim is meant to be limited by such terms.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 18 and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 18, claim 18 recites a pharmaceutical composition comprising the elements of claim 1. The broadest reasonable interpretation of claim 18 is that it is drawn to the elements of claim 1 because recitation of “a pharmaceutical composition” does not add structural significance to the claim, where the claim is recited to simply comprise the components of claim 1. Claim 18 therefore does not further limit the claim from which it depends (claim 1).
Regarding claim 19, claim 19 recites the composition of claim 18, where the composition is “administered to the heart.” However, claim 19 is ultimately drawn to a product claim and not a method claim, and is therefore drawn to the composition of claim 18, and not where/how it is administered. Claim 19 therefore does not further limit claim 18 and is therefore rejected under 112(d).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
112(a) – Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
MPEP 2163.II.A.3.(a).i) states, “Whether the specification shows that applicant was in possession of the claimed invention is not a single, simple determination, but rather is a factual determination reached by considering a number of factors. Factors to be considered in determining whether there is sufficient evidence of possession include the level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention”.
For claims drawn to a genus, MPEP § 2163 states the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. See Regents of the University of California v. Eli Lilly & Co, 119 F.3d at 1568, 43 USPQ2d at 1406.
Regarding independent claims 1 and 11, claims 1 and 11 are directed to nucleic acid agents (claim 1) and expression constructs (claim 11) which target gene groups consisting of RARa, TCF7L2, E2F6 and LEF1 or RARa, TCF7L2, E2F7, and NFYb, where furthermore the targeting of such genes using nucleic acids/expression constructs is recited with the functionality of being used to “treat” or “prevent” heart disease. Thus, the claims broadly encompass nucleic acids/constructs with a specific function and structure, where the nucleic acids/constructs target one of two groups of four genes and treat or prevent heart disease. This claim language is problematic because it does not reflect the scope and teachings of the specification.
With regards to the guidance provided in the specification, the specification offers Examples 1-5, as well as a list of Materials and Methods used in the examples. Example 1 details an approach to identify transcription factors which are responsive to various levels of glucose in primary rat cardiomyocytes in vitro (page 17, fourth paragraph). In Example 2, the Applicants identify TFs which are relevant to cardiomyocyte proliferation by cross-referencing genome-wide RNA-seq single-cell datasets (page 17, final paragraph). The Applicants screened 34 potential TFs, targeted the TFs using siRNAs, and determined which TFs were associated with cardiomyocyte proliferation in primary rat cardiomyocytes by removing individual siRNAs (Example 2). Through this analysis, the Applicants identified 6 potential TFs associated with proliferation of cardiomyocytes (RARa, TCF7L2, E2F6 and LEF1, E2F7, and NFYb). In Example 3, the Applicants tested various combination (63 combinations total) of the six TFs that they identified in Example 2 in rat cardiomyocytes. From these experiments, the Applicants identified two combinations which significantly increased cardiomyocyte proliferation in in vitro rat cardiomyocytes, namely, the two combinations recited in claims 1 and 11 (see Figure 6). In Example 4, the Applicants tested human induced pluripotent stem cell derived cardiomyocytes (hIPSC-MC) and determined that exposure of hiPSC-MCs to the combinations of siRNAs increased proliferation of the induced cardiomyocytes (Example 4, Figure 7). In Example 5, the Applicants tested the sirRNA combination knockdown of RARa, TCF7L2, LEF1, and E2F6 in mouse HL-1 cells (Example 5, Figure 8), where knockdown of the four TFs showed an increase in proliferation (Figure 8).
The Applicants have not demonstrated any tests within the specification in an animal model for heart disease, nor shown any data in vivo which would shown possession of the claim that the siRNAs they tested can either “treat” or “prevent” heart disease. Furthermore, treating or preventing heart disease using such methods as the introduction of pro-proliferation drugs or molecules is known to be an uncharacterized and unpredictable endeavor, as discussed further below.
As an initial matter, the terms “treat” and ‘prevent” comprise separate 112(a) issues, and as such will addressed separately. To begin with, the art teaches that “prevention” of heart disease is inherently unpredictable and uncharacterized in relation to the application of nucleic acid agents and/or constructs with the aim of “prevention” of heart disease. For instance, Sun (Sun R et al. Cell Biochem Biophys. 2015 Jul;72(3):857-60) is a review article that focuses on congenital heart disease (Title, Abstract, and throughout). Sun teaches that:
The congenital heart disease includes abnormalities in heart structure that occur before birth. Such defects occur in the fetus while it is developing in the uterus during pregnancy… 1 in every 100 children has defects in their heart due to genetic or chromosomal abnormalities, such as Down syndrome. The excessive alcohol consumption during pregnancy and use of medications, maternal viral infection, such as Rubella virus, measles (German), in the first trimester of pregnancy, all these are risk factors for congenital heart disease in children, and the risk increases if parent or sibling has a congenital heart defect,” (Abstract).
Thus, Sun teaches that heart disease can be caused by congenital conditions such as chromosomal abnormalities, where furthermore congenital heart diseases can be caused by environmental factors of newborns including alcohol consumption of the mother during pregnancy, viral infections, and the use of medications (Abstract). The present application has not demonstrated how the introduction of siRNAs which promote cellular proliferation would work to “prevent” heart disease including congenital heart disease, which is known to be caused by chromosomal abnormalities, nor is it likely that such siRNAs would correct such abnormalities.
Furthermore, Lu (Lu L et al. Cell Biochem Biophys. 2015 Jul;72(3):851-5) is a review article focused on heart disease such as inflammatory hearth diseases and their causes (Title, Abstract, and throughout). Lu teaches that:
“The inflammation of the heart muscles, such as myocarditis, the membrane sac which surrounds the heart called as pericarditis, and the inner lining of the heart or the myocardium, heart muscle as endocarditis are known as the inflammatory heart diseases. Inflammation of heart is caused by known infectious agents, viruses, bacteria, fungi or parasites, and by toxic materials from the environment, water, food, air, toxic gases, smoke, and pollution, or by an unknown origin,” (Abstract).
Thus, Lu teaches the heart disease myocarditis, which is caused by inflammation of the heart as a result of environmental and exogenous agents such as viral infection, exposure to toxic materials, and pollutants of “unknown origin,” (Abstract). Thus, Lu teaches that heart disease can be caused by environmental factors and viral infections. The present application does not teach any product or nucleic acid which could prevent a heart disease such as myocarditis as caused by a viral infection, nor is it realistic that the siRNAs which the Applicant’s teach would be effective at “preventing” a viral infection.
Additionally, Vos (Vos MB et al. A Scientific Statement From the American Heart Association. Circulation. 2017 May 9;135(19):e1017-e1034) is a research article focused on causes of cardiovascular disease (Title, Abstract, and throughout). Vos teaches that:
“Efforts to reduce the prevalence of CVD and its associated conditions (obesity, hypertension, type II diabetes mellitus, and nonalcoholic fatty liver disease [NAFLD]) have focused attention on the role of diet and the growing evidence that atherosclerosis starts in childhood. Accumulating evidence implicates dietary sugars, particularly those added to processed foods or used in the preparation of foods and beverages,” (Abstract).
Thus, Vos teaches that heat disease is associated with poor diet and other conditions such as NAFLD and hypertension (Abstract). The Applicants have not characterized or shown possession of a preventative treatment of heart disease, where heart disease is known to be associated with factors such as poor diet as taught by Vos (above). It is furthermore not realistic that the siRNAs taught by the Applicants would be effective at preventing heart disease caused by factors such as poor diet, as there is no mechanistic connection between how such siRNAs would counteract heart disease caused by hypertension and poor diet.
Given that it is known in the art that heart disease can be caused by a myriad number of factors including congenital chromosomal defects, viral infection, and lifestyle, it is unpredictable and unlikely that the siRNAs reduced to practice by the Applicant would prevent such onset of heart disease because no functional-structural relationship has been established between how such siRNAs as those identified by the Applicant would work to prevent heart disease caused by chromosomal abnormalities, viral infection, or poor diet. The Applicant was therefore not in possession of “prevention” in the broad genus of “heart disease,” as presently recited.
Furthermore, the Applicant is also reciting nucleic acids and constructs which can be used to “treat” heart disease. The Applicant was also not in possession of any treatments of heart disease, as they have not tested or offered any in vivo data or evidence concerning the feasibility or efficacy of such a treatment. Furthermore, as discussed further below, the translation of potential cell proliferation treatments in cardiomyocytes is known to be an unpredictable and uncharacterized endeavor.
For instance, Wintruba (Wintruba KL et al. Curr Treat Options Cardiovasc Med. 2025;27(1):42) is a research article that focuses on the discovery of drugs specifically used in cardiomyocyte proliferation (Title, Abstract, and throughout). Wintruba teaches that:
“One of the primary challenges in drug discovery is the difficulty in translating candidate compounds into effective therapies. Targeting a single molecular pathway often fails to elicit functional regeneration, as a complex interplay of signaling networks governs cardiac repair. Additionally, promoting cardiomyocyte proliferation presents inherent risks, including the potential for uncontrolled cell growth or off-target effects. Further complicating the process, in vitro models lack the structural and cellular complexity of native cardiac tissue, while animal models do not fully recapitulate human physiology, limiting both reproducibility and translational relevance,” (page 1, second paragraph).
Thus, Wintruba teaches that actual therapies which would lead to effective proliferation of cardiomyocytes in vivo are not reliably predicted from in vitro modeling because such 2D models of cell culture such as those recited in the present application lack the structural and cellular complexity of native cardia tissue (above). Furthermore, Wintruba teaches that animal models do not offer reproducible translational relevance to actual human physiology. Thus, the teachings of Wintruba cast doubt on the efficacy of the Applicant’s approach as a treatment of heart disease based on cardiomyocyte proliferation because the Applicant has only shown in vitro cell modeling, where furthermore it is unknown if such in vitro cell modeling applies to actual human physiological conditions.
Furthermore, Liang (Liang J et al. Pediatr Discov. 2024 Sep;2(3):e2501) is a research article specifically focused on cardiomyocyte proliferation and regeneration approaches to treating heart disease (Title, Abstract, and throughout). Liang teaches that:
“Despite promising approaches, cardiomyocyte proliferation therapy faces limitations related to efficiency and specificity (safety) that require further investigation in regenerative medicine. Current proliferation stimulation approaches remain insufficient to fully regenerate the diseased heart. Additionally, newly regenerated cardiomyocytes could be heterogeneous and possess immature structural and functional properties, potentially hindering integration with existing tissue. It is crucial to control cell proliferation to prevent unwanted consequences such as increased heart mass or arrhythmias. Encouragingly, transient and cardiomyocyte‐specific delivery of cell cycle inducers is a promising tool to safely induce cardiomyocyte proliferation without the development of cardiac arrhythmias or systemic tumorigenesis. Therefore, developing cardiac subtype‐specific targeted vectors could address the safety limitations of cardiomyocyte proliferation therapy. Furthermore, single‐nucleus RNA sequencing offers a comprehensive view of cardiac cell phenotypes, paving the way for personalized treatments for CHD. Thus, rigorous clinical trials and continued research are necessary to fully elucidate the efficacy and safety of targeted cardiomyocyte proliferation therapy,” (page 10, left column, second paragraph).
Thus, Liang teaches that within the field of cardiomyocyte proliferation therapy, limitation such as safety, efficiency, and efficacy exist with such potential therapies (above). While Liang teaches that transient, cardiomyocyte-specific delivery of cell-cycle inducers could be a promising safety tool for treatments and to address safety concerns, “rigorous clinical trials” and continued research are still required to elucidate the efficacy and safety of targeted cardiomyocyte proliferation therapy (above). The Applicants have not characterized such cardiac subtype-specific targeted vectors for the delivery of proliferation targets, and have instead only reduced to practice in vito cell testing which has not been reduced to practice or targeted to specific cardiomyocytes in vivo, where furthermore safe and successful delivery of such vectors still requires “rigorous” trials and research, per Liang. The Applicants have therefore not demonstrated possession of the recited nucleic acids to be used to “treat” heart disease, as presently recited, as they have not shown possession of the feasibility of treating heart disease in vivo using the recited nucleic acids/constructs.
In addition to the 112(a) issues recited above, the Applicant is broadly claiming nucleic acids and constructs which are capable of inhibiting the expression of the recited genes. This claim language is problematic because the Applicant has only characterized siRNAs which directly target the genes recited in the claims (Examples 1-5). However, as discussed further below, cellular networks are incredibly complex, comprising interconnected relationships between proteins such as transcription factors. The Applicant has not identified nucleic acids which could “inhibit the expression” of the proteins indirectly. For instance, the Applicants have not characterized the regulatory network of genes associated with the expression of RARa, for instance, by identifying upstream regulators/transcription factors which may be responsible for influencing the expression of RARa. The Applicants have only directly targeted RARa and the other recited proteins/genes using siRNA, but have not identified what other “nucleic acids” or “constructs” exist with the functional-structural relationship of inhibiting the expression of the recited proteins when targeted.
Regarding the complexity and unpredictability in the art, it is known that transcription networks and cellular networks are highly complex and interconnected. For instance, Maclellan (MacLellan WR et al. Nat Rev Cardiol. 2012 Jan 10;9(3):172-84) is a review article that focuses on the complexity of cardiovascular disease, and systems-based approaches to understand networks in cardiovascular disease (Title, Abstract, and throughout). Maclellan teaches that:
“Common cardiovascular diseases, such as atherosclerosis and congestive heart failure, are exceptionally complex, involving a multitude of environmental and genetic factors that often show nonlinear interactions as well as being highly dependent on sex, age, and even the maternal environment. Although focused, reductionistic approaches have led to progress in elucidating the pathophysiology of cardiovascular diseases,” (Abstract).
Maclellan therefore teaches that systems cardiovascular diseases are highly complex and comprise a multitude of genetic factors (above). Furthermore, Maclellan teaches that transcription factor networks, such as the transcription factors presently recited, are part of incredibly complex and intricate networks involving potentially thousands of transcription factors/genes:
“signaling pathways initiate a cellular program that leads to the differential
expression of over 1,000 genes, including hundreds of transcription factors. Although these differentially expressed genes were known, the network of interactions between transcription factors and mRNA levels has proved difficult to address for several reasons,” (page 5, final paragraph).
Thus, Maclellan teaches that transcription factors are involved in complex networks of genes and proteins, and are therefore interdependent. The key issue with what the Applicant is presently claiming is that they are claiming the broad genus of “nucleic acid” or “construct” which could inhibit the expression of, for instance, RARa. However, the Applicant has not identified, other than by directly targeting RARa using siRNA, other nucleic acids which could inhibit the expression of RARa, such as potential upstream transcriptional pathways which could influence the expression of RARa. In other words, the Applicant has not identified any other nucleic acids or constructs aside from siRNAs directly targeting RARa (and the other proteins recited in claims 1 and 11) which would have the effect of inhibiting the expression of RARa and other genes recited in claims 1 and 11.
Claims 2-10 and 12-19, which ultimately depend from claims 1 and 11, do not address the 112(a) issues above, and are therefore also rejected.
Claim Rejections - 35 USC § 112 - Enablement
Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Factors to be considered in determining whether a disclosure meets the enablement requirement of 35 U.S.C. 112, first paragraph, have been described by the court in In re Wands, 8 USPQ2d 1400 (Fed. Cir. 1988). Wands states, on page 1404:
Factors to be considered in determining whether a disclosure would require undue experimentation have been summarized by the board in Ex parte Forman. They include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of these in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.
Nature of the Invention/Breadth of Claims
Regarding independent claims 1 and 11, claims 1 and 11 are directed to nucleic acid agents (claim 1) and expression constructs (claim 11) which target gene groups consisting of RARa, TCF7L2, E2F6 and LEF1 or RARa, TCF7L2, E2F7, and NFYb, where furthermore the targeting of such genes using nucleic acids/expression constructs is recited with the functionality of being used to “treat” or “prevent” heart disease. Thus, the claims broadly encompass nucleic acids/constructs with a specific function and structure, where the nucleic acids/constructs target one of two groups of four genes and treat or prevent heart disease. This claim language is problematic because the specification does not provide enablement for the scope of what is being claimed as discussed further below.
Guidance in the Specification
With regards to the guidance provided in the specification, the specification offers Examples 1-5, as well as a list of Materials and Methods used in the examples. Example 1 details an approach to identify transcription factors which are responsive to various levels of glucose in primary rat cardiomyocytes in vitro (page 17, fourth paragraph). In Example 2, the Applicants identify TFs which are relevant to cardiomyocyte proliferation by cross-referencing genome-wide RNA-seq single-cell datasets (page 17, final paragraph). The Applicants screened 34 potential TFs, targeted the TFs using siRNAs, and determined which TFs were associated with cardiomyocyte proliferation in primary rat cardiomyocytes by removing individual siRNAs (Example 2). Through this analysis, the Applicants identified 6 potential TFs associated with proliferation of cardiomyocytes (RARa, TCF7L2, E2F6 and LEF1, E2F7, and NFYb). In Example 3, the Applicants tested various combination (63 combinations total) of the six TFs that they identified in Example 2 in rat cardiomyocytes. From these experiments, the Applicants identified two combinations which significantly increased cardiomyocyte proliferation in in vitro rat cardiomyocytes, namely, the two combinations recited in claims 1 and 11 (see Figure 6). In Example 4, the Applicants tested human induced pluripotent stem cell derived cardiomyocytes (hIPSC-MC) and determined that exposure of hiPSC-MCs to the combinations of siRNAs increased proliferation of the induced cardiomyocytes (Example 4, Figure 7). In Example 5, the Applicants tested the sirRNA combination knockdown of RARa, TCF7L2, LEF1, and E2F6 in mouse HL-1 cells (Example 5, Figure 8), where knockdown of the four TFs showed an increase in proliferation (Figure 8).
The Applicants have not demonstrated any tests within the specification in an animal model for heart disease, nor shown any data in vivo which would demonstrate enablement of the claim that the siRNAs they tested can either “treat” or “prevent” heart disease. Furthermore, treating or preventing heart disease using such methods as the introduction of pro-proliferation drugs or molecules is known in the art to be an uncharacterized and unpredictable endeavor, as discussed further below.
State of the Art/Unpredictability in the Art
As an initial matter, the terms “treat” and ‘prevent” comprise separate 112(a) issues, and as such will addressed separately. To begin with, the art teaches that “prevention” of heart disease is inherently unpredictable and uncharacterized in relation to the application of nucleic acid agents and/or constructs with the aim of “prevention” of heart disease. For instance, Sun (Sun R et al. Cell Biochem Biophys. 2015 Jul;72(3):857-60) is a review article that focuses on congenital heart disease (Title, Abstract, and throughout). Sun teaches that:
The congenital heart disease includes abnormalities in heart structure that occur before birth. Such defects occur in the fetus while it is developing in the uterus during pregnancy… 1 in every 100 children has defects in their heart due to genetic or chromosomal abnormalities, such as Down syndrome. The excessive alcohol consumption during pregnancy and use of medications, maternal viral infection, such as Rubella virus, measles (German), in the first trimester of pregnancy, all these are risk factors for congenital heart disease in children, and the risk increases if parent or sibling has a congenital heart defect,” (Abstract).
Thus, Sun teaches that heart disease can be caused by congenital conditions such as chromosomal abnormalities, where furthermore congenital heart diseases can be caused by environmental factors of newborns including alcohol consumption of the mother during pregnancy, viral infections, and the use of medications (Abstract). The present application has not demonstrated how the introduction of siRNAs which promote cellular proliferation would work to “prevent” heart disease including congenital heart disease, which is known to be caused by chromosomal abnormalities, nor is it likely that such siRNAs would correct such abnormalities.
Furthermore, Lu (Lu L et al. Cell Biochem Biophys. 2015 Jul;72(3):851-5) is a review article focused on heart disease such as inflammatory heart diseases and their causes (Title, Abstract, and throughout). Lu teaches that:
“The inflammation of the heart muscles, such as myocarditis, the membrane sac which surrounds the heart called as pericarditis, and the inner lining of the heart or the myocardium, heart muscle as endocarditis are known as the inflammatory heart diseases. Inflammation of heart is caused by known infectious agents, viruses, bacteria, fungi or parasites, and by toxic materials from the environment, water, food, air, toxic gases, smoke, and pollution, or by an unknown origin,” (Abstract).
Thus, Lu teaches the heart disease myocarditis, which is caused by inflammation of the heart as a result of environmental and exogenous agents such as viral infection, exposure to toxic materials, and pollutants of “unknown origin,” (Abstract). Thus, Lu teaches that heart disease can be caused by environmental factors and viral infections. The present application does not teach any product or nucleic acid which could prevent a heart disease such as myocarditis as caused by a viral infection, nor is it realistic that the siRNAs which the Applicant’s teach would be effective at “preventing” a viral infection.
Additionally, Vos (Vos MB et al. A Scientific Statement From the American Heart Association. Circulation. 2017 May 9;135(19):e1017-e1034) is a research article focused on causes of cardiovascular disease (Title, Abstract, and throughout). Vos teaches that:
“Efforts to reduce the prevalence of CVD and its associated conditions (obesity, hypertension, type II diabetes mellitus, and nonalcoholic fatty liver disease [NAFLD]) have focused attention on the role of diet and the growing evidence that atherosclerosis starts in childhood. Accumulating evidence implicates dietary sugars, particularly those added to processed foods or used in the preparation of foods and beverages,” (Abstract).
Thus, Vos teaches that heat disease is associated with poor diet and other conditions such as NAFLD and hypertension (Abstract). The Applicants have not characterized or shown possession of a preventative treatment of heart disease, where heart disease is known to be associated with factors such as poor diet as taught by Vos (above). It is furthermore not realistic that the siRNAs taught by the Applicants would be effective at preventing heart disease caused by factors such as poor diet, as there is no mechanistic connection between how such siRNAs would work to not only counteract but prevent heart disease caused by hypertension and poor diet.
Given that it is known in the art that heart disease can be caused by a myriad number of factors including congenital chromosomal defects, viral infection, and lifestyle, it is unpredictable and unlikely that the siRNAs reduced to practice by the Applicant would prevent such onset of heart disease because no functional-structural relationship has been established between how such siRNAs as those identified by the Applicant would work to prevent heart disease caused by chromosomal abnormalities, viral infection, or poor diet. The specification is therefore not enabling for “preventing” heart disease by using the recited nucleic acids and constructs which target specific genes.
Furthermore, the Applicant is also reciting nucleic acids and constructs which can be used to “treat” heart disease. The specification is not enabling for treatments of heart disease, as they have not tested or offered any in vivo data or evidence concerning the feasibility or efficacy of such a treatment. Furthermore, as discussed further below, the translation of potential cell proliferation treatments in cardiomyocytes is known to be an unpredictable and uncharacterized endeavor.
For instance, Wintruba (Wintruba KL et al. Curr Treat Options Cardiovasc Med. 2025;27(1):42) is a research article that focuses on the discovery of drugs specifically used in cardiomyocyte proliferation (Title, Abstract, and throughout). Wintruba teaches that:
“One of the primary challenges in drug discovery is the difficulty in translating candidate compounds into effective therapies. Targeting a single molecular pathway often fails to elicit functional regeneration, as a complex interplay of signaling networks governs cardiac repair. Additionally, promoting cardiomyocyte proliferation presents inherent risks, including the potential for uncontrolled cell growth or off-target effects. Further complicating the process, in vitro models lack the structural and cellular complexity of native cardiac tissue, while animal models do not fully recapitulate human physiology, limiting both reproducibility and translational relevance,” (page 1, second paragraph).
Thus, Wintruba teaches that actual therapies which would lead to effective proliferation of cardiomyocytes in vivo are not reliably predicted from in vitro modeling because such 2D models of cell culture such as those recited in the present application lack the structural and cellular complexity of native cardia tissue (above). Furthermore, Wintruba teaches that animal models do not offer reproducible translational relevance to actual human physiology. Thus, the teachings of Wintruba cast doubt on the efficacy of the Applicant’s approach as a treatment of heart disease based on cardiomyocyte proliferation because the Applicant has only shown in vitro cell modeling, where furthermore it is unknown if such in vitro cell modeling applies to actual human physiological conditions.
Furthermore, Liang (Liang J et al. Pediatr Discov. 2024 Sep;2(3):e2501) is a research article specifically focused on cardiomyocyte proliferation and regeneration approaches to treating heart disease (Title, Abstract, and throughout). Liang teaches that:
“Despite promising approaches, cardiomyocyte proliferation therapy faces limitations related to efficiency and specificity (safety) that require further investigation in regenerative medicine. Current proliferation stimulation approaches remain insufficient to fully regenerate the diseased heart. Additionally, newly regenerated cardiomyocytes could be heterogeneous and possess immature structural and functional properties, potentially hindering integration with existing tissue. It is crucial to control cell proliferation to prevent unwanted consequences such as increased heart mass or arrhythmias. Encouragingly, transient and cardiomyocyte‐specific delivery of cell cycle inducers is a promising tool to safely induce cardiomyocyte proliferation without the development of cardiac arrhythmias or systemic tumorigenesis. Therefore, developing cardiac subtype‐specific targeted vectors could address the safety limitations of cardiomyocyte proliferation therapy. Furthermore, single‐nucleus RNA sequencing offers a comprehensive view of cardiac cell phenotypes, paving the way for personalized treatments for CHD. Thus, rigorous clinical trials and continued research are necessary to fully elucidate the efficacy and safety of targeted cardiomyocyte proliferation therapy,” (page 10, left column, second paragraph).
Thus, Liang teaches that within the field of cardiomyocyte proliferation therapy, limitation such as safety, efficiency, and efficacy exist with such potential therapies (above). While Liang teaches that transient, cardiomyocyte-specific delivery of cell-cycle inducers could be a promising safety tool for treatments and to address safety concerns, “rigorous clinical trials” and continued research are still required to elucidate the efficacy and safety of targeted cardiomyocyte proliferation therapy (above). The Applicants have not characterized such cardiac subtype-specific targeted vectors for the delivery of proliferation targets, and have instead only reduced to practice in vito cell testing which has not been reduced to practice or targeted to specific cardiomyocytes in vivo, where furthermore safe and successful delivery of such vectors still requires “rigorous” trials and research, per Liang. The specification is therefore not enabling for the recited nucleic acids to be used to “treat” heart disease, as presently recited, as they have not shown demonstrated the feasibility of treating heart disease in vivo using the recited nucleic acids/constructs.
In addition to the 112(a) issues recited above, the Applicant is broadly claiming nucleic acids and constructs which are capable of inhibiting the expression of the recited genes. This claim language is problematic because the Applicant has only characterized siRNAs which directly target the genes recited in the claims (Examples 1-5). However, as discussed further below, cellular networks are incredibly complex, comprising interconnected relationships between proteins such as transcription factors. The Applicant has not identified nucleic acids which could “inhibit the expression” of the proteins indirectly. For instance, the Applicants have not characterized the regulatory network of genes associated with the expression of RARa, for instance, by identifying upstream regulators/transcription factors which may be responsible for influencing the expression of RARa. The Applicants have only directly targeted RARa and the other recited proteins/genes using siRNA, but have not identified what other “nucleic acids” or “constructs” exist with the functional-structural relationship of inhibiting the expression of the recited proteins when targeted.
Regarding the complexity and unpredictability in the art, it is known that transcription networks and cellular networks are highly complex and interconnected. For instance, Maclellan (MacLellan WR et al. Nat Rev Cardiol. 2012 Jan 10;9(3):172-84) is a review article that focuses on the complexity of cardiovascular disease, and systems-based approaches to understand networks in cardiovascular disease (Title, Abstract, and throughout). Maclellan teaches that:
“Common cardiovascular diseases, such as atherosclerosis and congestive heart failure, are exceptionally complex, involving a multitude of environmental and genetic factors that often show nonlinear interactions as well as being highly dependent on sex, age, and even the maternal environment. Although focused, reductionistic approaches have led to progress in elucidating the pathophysiology of cardiovascular diseases,” (Abstract).
Maclellan therefore teaches that systems in cardiovascular diseases are highly complex and comprise a multitude of genetic factors (above). Furthermore, Maclellan teaches that transcription factor networks, such as the transcription factors presently recited, are part of incredibly complex and intricate networks involving potentially thousands of transcription factors/genes:
“signaling pathways initiate a cellular program that leads to the differential
expression of over 1,000 genes, including hundreds of transcription factors. Although these differentially expressed genes were known, the network of interactions between transcription factors and mRNA levels has proved difficult to address for several reasons,” (page 5, final paragraph).
Thus, Maclellan teaches that transcription factors are involved in complex networks of genes and proteins, and are therefore interdependent. The key issue with what the Applicant is presently claiming is that they are claiming the broad genus of “nucleic acid” or “construct” which could inhibit the expression of, for instance, RARa. However, the Applicant has not identified, other than by directly targeting RARa using siRNA, other nucleic acids which could inhibit the expression of RARa, such as potential upstream transcriptional pathways which could influence the expression of RARa. In other words, the Applicant has not identified any other nucleic acids or constructs aside from siRNAs directly targeting RARa (and the other proteins recited in claims 1 and 11) which would have the effect of inhibiting the expression of RARa and other genes recited in claims 1 and 11.
Undue Experimental Burden
With regards to the undue experimental burden of the presently recited claims, a practitioner would be burdened with discovering a way in which nucleic acids targeting genes such as RARa would be capable of preventing, for instance, environmental or congenital heart diseases. This is experimentally burdensome because at the outset it does not seem to be realistic, as there is no known mechanistic underpinning where targeting a gene such as RARa would pre-emptively correct or “prevent” a chromosomal abnormality. The practitioner is therefore saddled with excessive experimental burden for the simple reason that the causes of heart disease are known to be myriad, where preventing such diseases is not directly associated with the recited genes of the claims.
Regarding the limitation of “treating,” the practitioner is burdened with undue experimentation, as they would be required to translate the in vitro data to an in vivo animal, where such translation of in vitro data is known to be unreliable as 2D cell modeling does not accurately reflect the 3D tissue structure of cardiac muscle, animal models themselves do not accurately reflect human physiology, and numerous obstacles exist with administering such proliferation drugs as those recited including the development of sub-type specific vectors in order to obviate efficacy and safety concerns. Thus, a practitioner suffers undue experimental burden, as such physiological and delivery obstacles are known to exist with regards to translating potential treatments using proliferative drugs into actual treatments, where the specification itself does not address or resolve these known obstacles.
Lastly, regarding the broad claim language of “nucleic acid” and construct which can inhibit the expression of the recited proteins, the Applicant has only directly targeted the genes themselves using siRNA. The Applicant has not identified other nucleic acids that could inhibit the expression of the recited targets, where genes and transcription factors are known to be part of complex regulatory and cellular networks. The Applicant has not identified what other pathways or transcription factors could be targeted to inhibit, for instance, RARa. Thus, a practitioner would suffer experimental burden because they would be required to elucidate for themselves complex cellular networks in order to identify other genes which could be targeted in order to inhibit the expression of the presently recited genes with no guidance provided in the specification as to how to identify such targets.
Owing to the lack of in vivo testing demonstrating either the treatment or prevention of heart disease, as well as the lack of identification of other nucleic acids which could target and inhibit the expression of the recited genes, the specification is not enabled for the claimed subject matter, as the practitioner would be burdened with undue experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS CHARLES RYAN whose telephone number is (571)272-8406. The examiner can normally be reached M-F 8AM - 5PM.
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/D.C.R./Examiner, Art Unit 1635
/RAM R SHUKLA/Supervisory Patent Examiner, Art Unit 1635
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