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 .
Election/Restrictions
Applicant’s election without traverse of Group I and the species of claim 3 (i), AaCas12b, Claim 9 (i), Claim 10 (i), and SEQ ID NOs: 13 and 14 in the reply filed on 11 March 2026 is acknowledged. For the purposes of examination, the species of SEQ ID NOs: 11-12 and 15-16 have been reintroduced into examination.
Claims 15-20, 46, 58, and 62 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11 March 2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 8-10, 21, and 31-34 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.
Regarding claim 1, the claim is directed towards a set of two polypeptides (i.e., an N-terminal portion and a C-terminal portion) of a split Cas12b protein, wherein the two polypeptides are capable of associating with each other, alongside a guide RNA comprising a guide sequence, to form a CRISPR complex that specifically binds to a target nucleic acid.
Therefore, the claims are broadly directed to a split Cas12b protein that have the functional limitation that the first and second polypeptides are capable of associating with each other to form a CRISPR complex. According to the broadest reasonable interpretation of the claim, there is no additional requirement for the split Cas12b protein in terms of any additional protein domain that is attached to each of the N terminal or C terminal Cas12 portions. Therefore, the claims broadly encompass a split Cas12b protein that is essentially unassisted in associating or dimerizing.
The critical feature, therefore, is whether the claimed composition (i.e., the claimed structure) encompassed by the claimed engineered system of claim 1 is capable of spontaneously associating or dimerizing.
The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the application. These include "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. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would leave one of skill in the art to the conclusion that the applicant was in possession of the claimed species is sufficient." MPEP 2163. A claimed genus may be satisfied through sufficient descriptions of a representative number of species or disclosure of relevant, identifying characteristics such as functional characteristics coupled with known or disclosed correlation between function and structure. MPEP 2163(3)a(II). The number of species that describe the genus must be adequate to describe the entire genus; if there is substantial variability, a large number of species must be described.
The analysis for adequate written description considers (a) actual reduction to practice, (b) disclosure of drawings or structural chemical formulas, (c) sufficient relevant identifying characteristics in the way of complete/partial structure or physical and/or chemical properties or functional characteristics when coupled with known or disclosed correlation with structure, and (d) representative number of samples.
With regard to the split Cas12b protein that can spontaneously associate, as discussed above, the claim is directed to the use of a two Cas12b polypeptides, N-terminal and C-terminal fragments of the Cas12b protein that each comprise specific protein domains, that must possess the function of being able to spontaneously associate or dimerize with one another, and a guide RNA in order to facilitate binding to a target nucleic acid. Thus, the claimed split Cas12b protein is drawn towards an extremely large genus of N-terminal and C-terminal Cas12b polypeptides that can spontaneously associate with one another and a guide nucleic acid to facilitate binding to a target nucleic acid.
While claiming a structure by a function is not prohibited, there must be sufficient structure-function relationship described in the specification such that the claimed genus was represented by a representative number of species or the teachings of the specification, or, the prior art can be used support a well-known structure-function relationship.
In the instant case, the instant specification does not support the claimed structure-function relationship that the claimed N-terminal and C-terminal of a split Cas12b protein, that each comprise their respectively claimed protein domains, can spontaneously associate or dimerize with one another. Further, the art does not support a clear well-defined structure-function relationship between split Cas12b proteins that would predictably result in a functioning set of polypeptides that can spontaneously associate or dimerize with one another.
Prior Art
The prior art does not support that split Cas12b proteins comprising the claimed protein domains were able to spontaneously associate with one another. Rather, a review of the literature for generating functional split Cas12b proteins demonstrates that the known ways to create a utilize a split Cas12b protein were through the use of inducible dimers and that associating or dimerizing the split Cas12b polypeptides spontaneously was unpredictable and not a known function of the split Cas12b protein.
Koon (PG Pub No. WO 2016/205749 A1) is drawn towards an invention concerned with engineered DNA or RNA-targeting systems (Abstract). Koon teaches the use of an inducible "split-C2c1" system (i.e., a split Cas12b system (Instant specification; [0084])) comprising (a) a first C2cl fusion construct attached to a first half of an inducible dimer and (b) a second C2c1 fusion construct attached to a second half of the inducible dimer, wherein contact with an inducer energy source brings the first and second halves of the inducible dimer together, wherein bringing the first and second halves of the inducible dimer together allows the first and second C2c1 fusion constructs to constitute a functional C2c1 CRISPR-Cas system that comprises (c) a guide RNA (gRNA) that can bind to and enable editing of a target nucleic acid of interest in a cell ([00407]). Koon teaches that the split C2c1 protein may be derived from Alicyclobacillus acidoterrestris, Alicyclobacillus contaminans, Desulfovibrio inopinatus, Desulfonatronum thiodismutans, Opitutaceae bacterium TAV5, Tuberibacillus calidus, Bacillus thermoamylovorans, Brevibacillus sp. CF112, Bacillus sp. NSP2.1, Desulfatirhabdium butyrativorans, Alicyclobacillus herbarius, Citrobacter freundii, Brevibacillus agri, and Methylobacterium nodulans ([0063]).
Further, Liu ("C2c1-sgRNA complex structure reveals RNA-guided DNA cleavage mechanism." Molecular cell 65.2 (2017): 310-322) is directed towards a study concerned with the structure of CRISPR-AaC2c1 proteins and their mechanisms of RNA-guided DNA cleavage (Abstract). Liu teaches the use of (c) an AaC2c1 protein (i.e., a Alicyclobacillus acidoterrestris C2c1 protein) that comprises, from the N-terminus to the C-terminus, a WED-I domain, a REC-I domain, a WED-II domain, a RuvC-I domain, a BH domain, a REC-II domain, a RuvC-II domain, a Nuc-I domain, a RuvC-III domain, and a Nuc-II domain (pg. 311; see Fig. 1).
Thus, the prior art shows that utilizing a split Cas12b protein requires the use of at least an inducible dimer pair in order to associate the split Cas12b polypeptides together and that generating split Cas12b proteins that spontaneously associate or dimerize with one another is unpredictable. The prior art also shows that split Cas12b proteins are not known to spontaneously associate with one another. Rather, the prior art shows that Cas12b proteins comprising the claimed protein domains required the use of inducible protein dimers in order to facilitate the association of the split N-terminal and C-terminal fragments.
Working Examples
With regard to working examples, the specification provides little evidence on the possession of a sufficient number of species which are encompassed by the claimed genus. The specification describes two instances of generating an “auto-inducing” split dCas12b construct that must comprise a specific structure wherein each terminal side is flanked by either VP64 or KRAB domains such that the split Cas12b can spontaneously associate with one another and had editing activity comparable to full-length Cas12b ([0248], [0260]-[0262]; see FIG. 7-8 and 13). The instant specification teaches that the “auto-inducing” split Cas12b constructs must comprise the VP64 or KRAB domains in order to associate with one another, otherwise the split Cas12b domains must comprise inducible FRB-FKBP dimers in order to associate or dimerize ([0251]-[0259]; see Example 2 and Figs. 5-6 and 12). Further, the specification does not describe any specific mutation of a Cas12b that facilitates spontaneous association of the split Cas12b protein.
However, as discussed above, according to the broadest reasonable interpretation of the claim, there is no additional requirement for the split Cas12b protein in terms of any additional protein domain that is attached to each of the N terminal or C terminal Cas12 portions.
Therefore, the instant specification does not disclose a representative number of species that fall within the claimed genus.
Conclusion
The specification does not identify a structure-function relationship between a split Cas12b’s terminal fragments comprising the claimed protein domains and the function of spontaneous association or dimerization of the split Cas12b protein without additional protein domains sufficient to show the applicant was in possession of the claimed genus. Further, the prior art shows that utilizing split Cas12b proteins requires the use of dimer pairs and that the ability of a split Cas12b protein to spontaneously associate with one another was unknown. Taken together, the skilled artisan would not have reasonably concluded at the time of the invention that applicant was in possession of the invention as claimed.
Regarding claims 3, 8-10, 21, and 31-34, as the claims are ultimately dependent on claim 1 and do not rectify the 35 USC 112(a) rejection above, the claims are also rejected under 35 USC 112(a).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1, 3, 8, 22-23, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koon (PG Pub No. WO 2016/205749 A1) in view of Liu ("C2c1-sgRNA complex structure reveals RNA-guided DNA cleavage mechanism." Molecular cell 65.2 (2017): 310-322) and Teng ("Repurposing CRISPR-Cas12b for mammalian genome engineering." Cell discovery 4.1 (2018): 63).
Regarding claim 1, Koon is drawn towards an invention concerned with engineered DNA or RNA-targeting systems (Abstract). Koon teaches the use of an inducible "split-C2c1" system comprising (a) a first C2cl fusion construct attached to a first half of an inducible dimer and (b) a second C2c1 fusion construct attached to a second half of the inducible dimer, wherein contact with an inducer energy source brings the first and second halves of the inducible dimer together, wherein bringing the first and second halves of the inducible dimer together allows the first and second C2c1 fusion constructs to constitute a functional C2c1 CRISPR-Cas system that comprises (c) a guide RNA (gRNA) that can bind to and enable editing of a target nucleic acid of interest in a cell ([00407]). Koon teaches that utilizing a split C2c1 is advantageous because it allows for the expression of the full-length protein to be inducible, allowing for temporal control, alongside the benefit of allowing for different localization sequences to be used in each of the fusion constructs to reduce background activity from auto-assembled complexes ([00456]). Koon teaches that an advantageous split site is a split site that keeps the two fusion constructs roughly the same length in order to maintain stoichiometry between both fusion constructs ([00499]). Koon teaches that ideally the split position should occur wherein an interruption of the amino acid sequence does not result in the partial or full destruction of a structural feature that includes alpha-helixes or beta-sheets ([00493]). Koon teaches that the C2c1 may be derived from Alicyclobacillus acidoterrestris ([0063]).
Koon does not teach or suggest that the reference Cas12b protein comprises from N-terminus to C-terminus a WED-I domain, a REC-I domain, a WED-II domain, a RuvC-I domain, a BH domain, a REC-II domain, a RuvC-II domain, a Nuc-I domain, a RuvC-III domain, and a Nuc-II domain (Claim 1). Koon does not teach or suggest that the N-terminal portion comprises the WED-I, REC-I, and WED-II domains, wherein the C-terminal portion of the reference Cas12b protein comprises the RuvC-II, Nuc-I, RuvC-III, and Nuc-II domains, and wherein the RuvC-I, BH, and Rec-II domains are split between the N-terminal portion and the C-terminal portion of the reference Cas12b protein (Claim 1).
Liu is directed towards a study concerned with the structure of CRISPR-C2c1 proteins and their mechanisms of RNA-guided DNA cleavage (Abstract). Liu teaches the use of (c) an AaC2c1 protein (i.e., a Alicyclobacillus acidoterrestris Cas12b protein) that comprises, from the N-terminus to the C-terminus, a WED-I domain, a REC-I domain, a WED-II domain, a RuvC-I domain, a BH domain, a REC-II domain, a RuvC-II domain, a Nuc-I domain, a RuvC-III domain, and a Nuc-II domain (pg. 311; see Fig. 1). Liu teaches that the AaCas12b protein is 1,129 amino acids in length (pg. 311; see Fig. 1). Liu teaches that the BH domain’s C-terminus is located at position 658 of the protein sequence (pg. 311; see Fig. 1). Liu teaches that AaC2c1 exhibits a bi-lobed architecture consisting of a REC and NUC lobe that are required for DNA recognition and cleavage (pg. 319-320).
Teng is directed towards a study concerned with repurposing CRISPR-Cas12b/C2c1 for mammalian genome engineering (Abstract). Teng teaches the use of (c) an AaCas12b protein (i.e., a Alicyclobacillus acidoterrestris Cas12b protein) that comprises, from the N-terminus to the C-terminus, a WED-I domain, a REC-I domain, a WED-II domain, a RuvC-I domain, a BH domain, a REC-II domain, a RuvC-II domain, a Nuc-I domain, a RuvC-III domain, and a Nuc-II domain (pg. 7; see Fig. 4). Teng teaches that the AaCas12b protein is 1,129 amino acids in length (pg. 1). Teng teaches that the AaCas12b protein comprises an alpha-helix domain (i.e., “α18”) that bridges amino acids 640-657 (see Supplementary Figure 7).
Therefore, one of ordinary skill in the art would have recognized that the α18 alpha-helix of Teng is present within the BH domain and ends at amino acid 657 of the AaCas12b protein of Liu
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the specific claimed split site because it would have merely amounted to a simple combination of prior art elements according to known methods to yield predictable results. Because Koon teaches that the Cas12b split position is functional and ideally has the following characteristics: 1) it keeps the two fusion constructs roughly the same length; and 2) the split position does not result in the partial or full destruction of a structural feature that includes alpha-helixes, while both Liu and Teng teach that the specific claimed split site meets both of Koon’s requirements, then one would have had a reasonable expectation of success in splitting the Cas12b of Koon at the claimed split site and producing a functional split AaCas12b. And because Liu teaches that splitting a Cas12b and connecting each split portion to an inducible dimer allows for inducible temporal control over the AaCas12b’s gene editing abilities, one would have been motivated to do so.
Regarding claim 3, Koon, Liu, and Teng renders obvious the use of an N-terminal portion of the reference Cas12b protein comprises the WED-I, REC1, WED-II, RuvC-I, and BH domains of the reference Cas12b protein, and wherein the C-terminal portion of the reference Casl2b protein comprises the REC2, RuvC-II, Nuc-I, RuvC-III, and Nuc-II domains of the reference Cas12b protein.
Regarding claim 8, Koon, Liu, and Teng renders obvious the use of an AaCas12b protein.
Regarding claims 22-23, Koon teaches that the first C2cl fusion construct can be attached to a first half of an inducible dimer and the second C2c1 fusion construct can be attached to a second half of the inducible dimer, wherein contact with an inducer energy source brings the first and second halves of the inducible dimer together, wherein bringing the first and second halves of the inducible dimer together allows the first and second C2c1 fusion constructs to constitute a functional C2c1 CRISPR-Cas system ([00407]).
Regarding claim 31, Koon does not teach that the reference Cas12b protein is enzymatically inactive (Claim 31).
Teng teaches that the AaCas12b protein can be inactivated with mutations at positions D570A, R785A, R911A, and D977A in order to turn the AaCas12b protein into a deactivated nuclease (i.e., dAaCas12b) that could induce targeted gene activation via the use of an sgRNA comprising an MS2 RNA hairpin that could recruit a VP64 transcriptional activator that was fused to an MCP protein to a target genomic region of interest (pg. 7; see Fig. 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the requirements of the enzymatically inactive Cas12b because it would have merely amounted to a simple combination of prior art elements according to known methods to achieve predictable results. Because Koon teaches using an AaCas12b for the same reasons as Teng, namely the editing of a target nucleic acid of interest within a cell, then one would have had a reasonable expectation of success in making the specific mutations in the AaCas12b of Koon in order to perform the same function. And because Teng teaches that enzymatically inactivating the AaCas12b allows for the targeted activation of a gene of interest through the use of a transcriptional activator, one would have been motivated to do so.
Claim(s) 9-10 and 32-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koon (PG Pub No. WO 2016/205749 A1) in view of Liu ("C2c1-sgRNA complex structure reveals RNA-guided DNA cleavage mechanism." Molecular cell 65.2 (2017): 310-322) as evidenced by, and in view of, Teng ("Repurposing CRISPR-Cas12b for mammalian genome engineering." Cell discovery 4.1 (2018): 63) as applied to claims 1, 3, 8, 22-23, and 31 above, and further in view of CN 109337904 A (English Translation; published 15 February 2019).
Regarding claim 3, Koon, Liu, and Teng renders obvious claims 1, 3, 8, 22-23, and 31 as described above. It is noted that the instant specification teaches the use of a reference AaCas12b comprising the claimed SEQ ID NO: 33 that can be split into two terminal portions selected from SEQ ID NOs: 3-4 at position 658 (pg. 29-30 and 37-38).
Koon, Liu, and Teng do not teach or suggest that the amino acid numbering is according to SEQ ID NO: 33 (Claim 9). Koon, Liu, and Teng do not teach or suggest that the N-terminal portion comprises a sequence with about 85% identity to the claimed SEQ ID NO: 3 and wherein the C-terminal portion comprises a sequence with about 85% identity to the claimed SEQ ID NO: 4 (Claim 10).
CN 109337904 A is directed towards an invention concerned with genome editing systems based on C2c1 nucleases (Abstract). CN 109337904 A teaches the use of an AaC2c1 protein that has 100% identity to the claimed SEQ ID NO: 33 and is 1,129 amino acids in length (pg. 1-2, see Claim 4; see SEQ ID NO: 1 in attached sequence alignment).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the requirements of the claimed reference Cas12b amino acid residues are according to SEQ ID NO: 33 such that the N-terminal portion has at least 85% identity to SEQ ID NO: 3 and the C-terminal portion has at least 85% identity to the claimed SEQ ID NO: 4 because it would have merely amounted to a simple combination of prior art elements according to known methods to achieve predictable results. Because Koon, Liu, and Teng render obvious a split AaCas12b at position 658 for a similar purpose as CN 109337904 A, namely genome editing, then one would have had a reasonable expectation of success in applying the knowledge of making a split AaCas12b to a known AaCas12b sequence that has 100% identity to the claimed SEQ ID NO: 33. And because Liu teaches that splitting a Cas12b and connecting each split portion to an inducible dimer allows for inducible temporal control over the AaCas12b’s gene editing abilities, one would have been motivated to do so.
Regarding claim 10, it is noted that the claimed SEQ ID NOs: 3-4 are directed towards an N-terminal fragment (i.e., SEQ ID NO: 3) and a C-terminal fragment (i.e., SEQ ID NO: 4) of the claimed SEQ ID NO: 33 when the claimed SEQ ID NO: 33 is split at position 658 (Instant specification; [0236]-[0237]; pg. 29, 37-38; see Fig. 3). Accordingly, as discussed above and as applied to claim 9, Koon in view of Liu, Teng, and CN109227904A renders obvious the use of N-terminal and C-terminal portions of the split Cas12b protein, wherein the N-terminal portion has at least 85% identity to the claimed SEQ ID NO: 3 and the C-terminal portion has at least 85% identity to the claimed SEQ ID NO: 4.
Regarding claim 32, the teachings regard the claimed mutations and the obviousness of mutating the claimed Cas12b at those positions in order to arrive at a deactivated Cas12b is discussed above as applied to claim 31.
Regarding claims 33-34, Koon teaches that the C-terminal domain may be fused to a functional domain ([00471]). Koon teaches that the functional domain may be a VP64 transcriptional activator ([00387]).
Allowable Subject Matter
Claim 61 is 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.
Regarding claim 61, it is noted that the claimed SEQ ID NO: 11 consists of, 5’ to 3’, an NLS sequence consisting of SEQ ID NO: 34 (Instant specification; [0148]), an AaCas12b sequence consisting of SEQ ID NO: 1 (Instant specification; [0118]), a linker sequence consisting of SRGGSGSSGGSGGSGGSG, an FRB domain consisting of SEQ ID NO: 32 (Instant specification; [0127]), and an NLS sequence consisting of SEQ ID NO: 35 (Instant specification; [0148]) (Instant specification; [0239]).
It is noted that the claimed SEQ ID NO: 12 consists of, 5’ to 3’, an NLS sequence consisting of SEQ ID NO: 34 (Instant specification; [0148]), an FKBP domain consisting of SEQ ID NO: 31 (Instant specification; [0127]), a linker domain consisting of SEQ ID NO: 71 ([0139]), an AaCas12b sequence consisting of SEQ ID NO: 2 (Instant specification; [0113]), and an NLS sequence consisting of SEQ ID NO: 35 ([0148]) ([0239]).
It is noted that the claimed SEQ ID NO: 13 consists of, 5’ to 3’, an NLS sequence consisting of SEQ ID NO: 34 (Instant specification; [0148]), an AaCas12b sequence consisting of SEQ ID NO: 3 (Instant specification; [0113]), an FRB domain consisting of SEQ ID NO: 32 (Instant specification; [0127]), a linker sequence consisting of SRGGSGSSGGSGGSGGSG, and an NLS sequence consisting of SEQ ID NO: 35 (Instant specification; [0148]) (Instant specification; [0239]).
It is noted that the claimed SEQ ID NO: 14 consists of, 5’ to 3’, an NLS sequence consisting of SEQ ID NO: 34 (Instant specification; [0148]), an FKBP domain consisting of SEQ ID NO: 31 (Instant specification; [0127]), a linker domain consisting of SEQ ID NO: 71 ([0139]), an AaCas12b sequence consisting of SEQ ID NO: 4 (Instant specification; [0113]), and an NLS sequence consisting of SEQ ID NO: 35 ([0148]) ([0239]).
It is noted that the claimed SEQ ID NO: 15 consists of, 5’ to 3’, an NLS sequence consisting of SEQ ID NO: 34 (Instant specification; [0148]), an AaCas12b sequence consisting of SEQ ID NO: 5 (Instant specification; [0116]), an FRB domain consisting of SEQ ID NO: 32 (Instant specification; [0127]), a linker sequence consisting of SRGGSGSSGGSGGSGGSG, and an NLS sequence consisting of SEQ ID NO: 35 (Instant specification; [0148]) (Instant specification; [0239]).
It is noted that the claimed SEQ ID NO: 16 consists of, 5’ to 3’, an NLS sequence consisting of SEQ ID NO: 34 (Instant specification; [0148]), an FKBP domain consisting of SEQ ID NO: 31 (Instant specification; [0127]), a linker domain consisting of SEQ ID NO: 71 ([0139]), an AaCas12b sequence consisting of SEQ ID NO: 6 (Instant specification; [0116]), and an NLS sequence consisting of SEQ ID NO: 35 ([0148]) ([0239]).
Regarding the closest prior art, the teachings of Koon in view of Liu as evidenced by, and in view of, Teng are discussed above as applied to claim 1. Koon further teaches that the N-terminal portion of the split C2c1 may be arranged 5’-NLS-(N’ terminal C2c1 part)-linker-(first half of the dimer)-NLS-3’ and the C-terminal portion may be arranged 5’-NES-(second half of the dimer)-linker-(C’ terminal C2c1 part)-NES-3’ ([00451]).
Further, Wantanabe (PG Pub No. US 2014/0335539 A1) is directed towards an invention concerned with inducible protein dimers (Abstract). Wantanabe teaches the use of an FRB domain consisting of the claimed SEQ ID NO: 32 ([0194]; see SEQ ID NO: 22 in attached sequence alignment) that could interact with an FKBP domain that consists of the claimed SEQ ID NO: 31 ([0196]; see SEQ ID NO: 24 in attached sequence alignment) ([0052]).
However, neither Koon in view of Lu and Teng nor the prior art teaches or suggests the use of an NLS sequence consisting of SEQ ID NOs: 34-35 (Claim 61). Further, neither Koon in view of Lu and Teng nor the prior art teaches or suggests the use of a linker sequence consisting of SRGGSGSSGGSGGSGGSG or a linker sequence consisting of SEQ ID NO: 71 (Claim 61).
Regarding the claimed NLS sequences, the closest prior art is Koon (PG Pub No. WO 2016/205749 A1). The teachings of Koon are discussed above as applied to claim 1 and Kon further teaches the use of a SV40 linker sequence that consists of the amino acid sequence PKKKRKV (i.e., a linker sequence that comprises 77.78% sequence identity with the claimed SEQ ID NOs: 34-35) ([00186]).
However, neither Koon nor the prior art teaches the use of an NLS sequence consisting of PKKKRKVPG (SEQ ID NO: 34) or ASPKKKRKV (SEQ ID NO: 35), as claimed and described in the instant specification. The prior art does not teach or suggest adding a PG motif to the 3’ end of the SV40 linker sequence nor the addition of an AS motif to the 5’ end of the linker sequence in order to arrive at linker sequences consisting of SEQ ID NOs: 34-35.
Regarding the claimed linker sequences, the closest prior art is Rosmalen ("Tuning the flexibility of glycine-serine linkers to allow rational design of multidomain proteins." Biochemistry 56.50 (2017): 6565-6574). Rosmalen is drawn towards a review study concerned with the flexibility of glycine-serine linkers and how they allow for the rational design of multidomain proteins (Abstract). Rosmalen teaches that many different glycine-serine linkers, and their repeated glycine-serine motifs, were known in the art to be able to serve as linkers between protein domains (pg. 6568; see Table 1).
However, neither Rosmalen nor the prior art teaches or suggests the specific combination of glycines and serines present in the claimed SEQ ID NO: 71 (i.e., GGSGGSGGGSGGG) nor the addition of an LK motif on the 3’ end of the linker in order to arrive at a glycine serine linker consisting of the claimed SEQ ID NO: 71: GGSGGSGGGSGGGLK. Additionally, neither Rosmalen nor the prior art teaches or suggests the specific combination of glycines and serines present in the claimed linker consisting of the sequence SRGGSGSSGGSGGSGGSG nor the addition of an SR motif at the 5’ end of the linker.
Therefore, Claim 61 is 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE T REGA whose telephone number is (571)272-2073. The examiner can normally be reached M-R 8:30-4:30, every other F 8:30-4:30 (EDT/EST).
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, Neil Hammell can be reached at 571-270-5919. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KYLE T REGA/ Examiner, Art Unit 1636
/NEIL P HAMMELL/ Supervisory Patent Examiner, Art Unit 1636
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