DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
The responses and amendments to the claims submitted on 09/24/2025 and 09/22/2025 are acknowledged.
Claims 1-2, 4, 7-8, and 10 are pending.
Claims 7-8 were previously withdrawn.
Claims 1-2, 4, and 10 are currently being examined.
All previous objections and rejections not set forth below have been withdrawn in view
of applicant’s amendments to the claims.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Republic of Korea on 07/21/2020. It is noted that the applicant submitted the WIPO publication on 20 January 2023. However, there is no certified English translation of the foreign application.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Claim Rejections - 35 USC § 103
Claims 1-2, 4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over
Jansing et al. (CRISPR/Cas9-mediated knockout of six glycosyltransferase genes in Nicotiana benthamiana for the production of recombinant proteins lacking β-1,2-xylose and core α-1,3-fucose. 2019. Plant Biotechnology Journal, 17:350–361) and Steinkellner et al. (US 2020/0080100 A1), and in view of Kikuchi et al. (Collection, mapping, and annotation of over 28,000 cDNA clones from japonica rice, Science, 2003, 301:376-9), for reasons of record stated on pages 4-9 in the Office action dated 03/21/2025.
Claims 1-2 are drawn to a vector for editing rice N-glycosylation gene(s) comprising a polycistronic guide RNA targeting different endogenous genes encoding β1,2-xylosyltransferase (β1,2-XylT); β 1,3-galactosyltransferase (β1,3-GalT); α1,3-fucosyltransferase (αl,3-FucT); α1,4-fucosyltransferase (αl,4-FucT); and hexosaminidase (1-4) proteins.
Jansing et al. teaches an easily scalable alternative platform for the production of Pharmaceutical or therapeutic proteins by using a multiplex CRISPR/Cas9 based genome editing to generate tobacco (Nicotiana benthamiana) plants deficient in plant-specific α-1,3-fucosyltransferase and β-1,2-xylosyltransferase activity by mutating six different target genes (page 350, summery). It also teaches transformation of tobacco plants (page 358, left column, para 3) using expression vectors comprising polycistronic guide RNAs for editing genes involved in N-glycosylation (page 358, left column, para 3-4). Jansing et al. teaches a method by aligning exon sequences in different target genes to identify regions of homology that could be targeted by the same guide RNAs (gRNA) to knockout the target genes (page 351, right column, para 2). Using that method, Jansing et al. produces vectors containing 3-7 synthetic polycistronic gRNAs to achieve multiplex knockout of six genes (page 351, right column, para 2) encoding different isoforms of the enzymes viz. β-1,2-xylosyltransferase (XylT) and α-1,3-fucosyltransferase (FucT), involved in production of β-1,2-xylose and α-1,3-fucose in the plant. Jansing et al. also describes transforming the plants lacking N-glycosylation with a vector containing a gene encoding a monoclonal antibody 2G12 (summery; page 355, left column, para 2, line 1-3), which reads on to “a target protein”, as recited in claim 10.
However, Jansing et al. does not teach mutating or knocking out the genes in rice; or a polycistronic guide RNA expressing the nucleotide sequences of SEQ ID NOS: 1, 3, 5, 7, 9, 11, 13, and 15; or SEQ ID NOS: 1, 2, 3, 4, 5, 6, 7, and 8.
Steinkellner et al. (US 2020/0080100 A1) describes mutating in plant N-glycosylation genes encoding β1,2 – Xylosyltransferase; β1,3-Galactosyltransferases; α1,3-Fucosyltransferase; α1,4-Fucosyltransferase; and β Hexosaminidases (HEXOs) (page 6, para 0086). It also teaches use of CRISPR/Cas9 based gene editing system (page 6, para 0087, line 18-21) to introduce mutations in those genes to reduce or even abolish plant specific N-glycosylation (and resulting N-glycans) (page 6, para 0087, line 1-4). It also teaches use of rice plants (Oryza sativa) (page 23, para 0107) and rice cells for the invention (page 8, para 0107, line 5).
Kikuchi et al. teaches annotated cDNA sequences having 100% sequence identity to instant SEQ ID NOs: 1-9, 11, 13, and 15. Kikuchi et al. describes a cDNA clone (J013071F22, GenBank Accession No. AK099681) having 100% identity to SEQ ID NO: 1-2. The table below indicates cDNA clone numbers and GenBank Accession numbers, as taught by Kikuchi et al., having 100% sequence identity with specific SEQ ID NOs of this instant application.
SEQ ID NO.
Clone No. (Kikuchi et al.)
GenBank Accession No.
1
J013071F22
AK099681
2
J013071F22
AK099681
3
J033075J17
AK101954
4
J033075J17
AK101954
5
J013089J22
AK067033
6
J013089J22
AK067033
7
J023056D08
AK070606
8
J023056D08
AK070606
9
J023002J15
AK069009
11
J033108O18
AK121985
13
J023055K01
AK070632
15
J033093O08
AK102449
Before the effective filing date of this application, it would be obvious to one with ordinary skill in the art to make a plant expression vector to transform and mutate or knockout different genes involved N-glycosylation in a commercially important rice plant (as recited in claim 4) using CRISPR/Cas9 based gene editing system comprising a polycistronic guide RNA, as taught by Jansing et al., by using the cDNA sequences, as taught by Kikuchi et al., to target endogenous genes encoding β1,2-Xylosyltransferase; β1,3-Galactosyltransferases; α1,3-Fucosyltransferase; α1,4-Fucosyltransferase; and β-Hexosaminidases (HEXOs), as taught by Steinkellner et al., with a realistic expectation to develop an easily scalable platform for the production of pharmaceutical proteins in rice wherein the plant-produced proteins would lack any plant specific N-glycosylation and no plant specific glycan. Genomic DNA sequence within the 1st or subsequent exon(s) of the target genes involved in N-glycosylation, viz. β1,2- Xylosyltransferase; β1,3-Galactosyltransferases; α1,3-Fucosyltransferase; α1,4-Fucosyltransferase; and β-Hexosaminidases (HEXOs) in rice, as taught by Kikuchi et al. would have enabled an ordinarily skilled artisan to design suitable polycistronic gRNAs to mutate or knocking-out the target genes to develop an easily scalable platform for the production of N-glycosylation deficient rice plants or rice cell lines. It is known in the art since last couple of decades that plants offer a cost effective, safe, and easy to store and transport therapeutic proteins including vaccines.1 It is also known in the art that rice plants especially rice suspension-cultured cell system has been very useful to produce heterologous proteins2.
Before the effective filing date, an ordinarily skilled artesian would have been motivated to make a plant expression vector to mutate or knockout various genes involved in N-glycosylation including genes encoding β1,2– Xylosyltransferase; β1,3-Galactosyltransferases; α1,3-Fucosyltransferase; α1,4-Fucosyltransferase; and β-Hexosaminidases (HEXOs) proteins in rice using a polycistronic guide RNA (gRNA) as part of CRISPR/Cas9 gene editing technique with a realistic expectation to develop an easily scalable platform for the production of pharmaceutical proteins in plants wherein the plant-produced proteins would lack any plant specific N-glycosylation and no plant specific glycan.
Response to Applicant’s Arguments
The argument set forth in the Applicant’s replies on 09/24/2025 and 09/22/2025 has been fully considered but is not found persuasive.
The Applicant argues that “both of Jansing et al. and US 2020/0080100 A1 (Steinkellner et al.) corrects the glycosylation pattern in tobacco (Nicotiana benthamiana), not in rice (Oryza sativa)” (response, page 6, para 5). The opinion of the Applicant is not supported by any evidence that the method described by Jansing et al. and Steinkellner et al.(US 2020/0080100 A1) would not work in rice. Applicant’s opinion cannot take the place of evidence (MPEP 716.01(c)(II),
The Applicant continues to argue that “US 2020/0080100 A1 fails to provide any working examples in which these 5 genes were mutated at the same time, but merely uses N. benthamiana ΔXTFT strain having β1,2-XyIT and α1,3-FucT knockouts. That is US 2020/0080100 A1 theoretically discusses the potential for simultaneous mutation of five genes but lacks experimental demonstration of this approach.” (response, page 7, para 1-2). The Applicant argues that the instant invention “completely removes plant-specific glycans” (response, page 4, para 4) while “Jansing et al. and US 2020/0080100 A1 only mutated
β
1,2-XylT and α1,3-FucT genes, there is a possibility that other plant-specific glycans may remain” (response, page 5, para 3) and “double knock-out of both OsXylT and OsFucT might be not enough to humanize N-glycan structure in rice (Response, page 6, para 2).
The Examiner disagrees. Plant specific N-glycosylation is widely studied in the art. The enzymes and the genes encoding those enzymes are also known in the art, as taught by Kikuchi et al., before the effective filing date of the invention. Making vectors for various purposes including CRISPR-Cas based genome editing technique comprising suitable gRNA to make knockout mutants removing one or more specific genes is also a standard practice in the art3, which can be used to mutate or remove one of more genes involved in N-glycosylation in plants including in both rice and tobacco, is a routine standard process in the art. Moreover, not all therapeutic proteins need all different types of N-glycosylation present in a plant to produce a biologically active therapeutic protein when produced in a plant including in either rice or tobacco. There will be many therapeutic proteins (e.g. antibody 2G12), which would be biologically active in absence of just β-1,2-xylose and α-1,3-fucose in the plant producing the protein, as described by Jansing et al.
There is no significant and unexpected result in this invention. Moreover, the Applicant is reminded that the burden is on Applicant to establish results that are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
Steinkellner et al. (US 2020/0080100 A1) describes mutations in genes encoding β1,2 – Xylosyltransferase; β1,3-Galactosyltransferases; α1,3-Fucosyltransferase; α1,4-Fucosyltransferase; and all the β Hexosaminidases (HEXOs) in the plant that silence/inhibit/ reduce their enzymatic activity (page 6, para 0086). It describes abolishing all plant specific N-glycans (page 6, para 0087, line 24-27). It teaches that the invention is equally applicable to rice plants (Oryza sativa) (page 23, para 0107) and rice cells (page 8, para 0107, line 5). Actual reduction to practice is not needed. Moreover, none of the claims recite anything to the effect of “completely removes plant-specific glycans” or “humanize N-glycan structure in rice”. Considering the growing importance to use various plant based production platforms to produce growing number of therapeutic proteins with diverse glycosylation pattern, an ordinarily skilled artisan would have been motivated to mutate/knockout one or more specific gene(s) encoding one or more specific corresponding enzyme(s) involved in plant specific N-glycosylation to produce specific type of therapeutic proteins possessing required biological activity.
Applicant is reminded that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
No claim is allowed.
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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY CHATTERJEE whose telephone number is (703)756-1329. The examiner can normally be reached (Mon - Fri) 8.30 am to 5.30 pm..
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Jay Chatterjee
Patent Examiner
Art Unit 1662
/Jay Chatterjee/Examiner, Art Unit 1662
/BRATISLAV STANKOVIC/Primary Examiner, Art Unit 1663
1Hefferon, KL. (Chapter 2: Transgenic Plants Expressing Vaccine and Therapeutic Proteins, 2009, in Biopharmaceuticals in Plants: Toward the Next Century of Medicine (1st ed.). CRC Press) provides the evidence of the benefits of using plants to produce therapeutic proteins.
2Huang et al. (Efficient Secretion of Recombinant Proteins from Rice Suspension-Cultured Cells Modulated by the Choice of Signal Peptide, 2015, PLoS ONE 10:e0140812) provides the evidence that rice suspension-cultured cell system is very useful to produce heterologous proteins.
3Cui et al. (Review of CRISPR/Cas9 sgRNA Design Tools, 2018, Interdisciplinary Sciences: Computational Life Sciences, 10:455–465) provides the evidence that CRISPR-Cas based genome editing technique comprising suitable gRNA to make knockout mutants removing one or more specific genes is a standard practice in the art.