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 .
DETAILED ACTION
Amendments and Election/Restriction
In the reply filed on 12/01/2025, Applicant has amended claims 9 and 14.
Applicant has elected the species of a cell surface-expressing ligand or receptor as species of the marker proteins in claims 5-6 and 19.
Rejoinder
The species election requirement for the marker proteins, as set forth in the Office action mailed on 10/01/2025, has been reconsidered in view of the prior art. A fluorescent protein in claim 7 is rejoined as a species of marker protein.
Claim Status
Claims 1-20 are pending and are considered on the merits.
Priority
This application is a 371 of PCT/JP2021/035150 (filed on 09/24/2021), which claims benefit from foreign application JAPAN JP2020-160252 (filed on 09/24/2020). The priority claim of the instant application has been granted and the earliest benefit date is 09/24/2020 from the application JP2020-160252.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/27/2023, 12/03/2024, 12/19/2024, 03/28/2025 and 07/29/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner. The corresponding signed and initialed PTO forms 1449 have been mailed with this action.
Claim Objections
Claims 9, 11 and 14-15 are objected to because of the following informalities:
Claim 9, line 3, recites the phrase “each comprising a gene encoding different desired protein”. Claim 11, line 2-3, recites the phrase “each comprising a gene encoding different desired protein”. Claim 14, both line 2 and the last line, recite the phrase “each expressing different protein”. Claim 15, line 5, recites the phrase “each comprising a gene encoding different protein”, and the last line recites the phrase “each expressing different protein”. In the above phrases, it is recommended to change the term “different” to “a different”.
Claim 15, line 3, recites the phrase “a cassette tape gene”. It should be changed to “the cassette tape gene”.
Appropriate correction is required.
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 1-13 and 15-20 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.
Claims 1-4, 9 and 16 recite the term “desired”. Claims 5-6 and 19 recite the term “known”. The terms “desired” and “known” render the claims indefinite because they are subjective terms. A claim that requires the exercise of subjective judgment without restriction may render the claim indefinite. See MPEP § 2173.05(b). Claims 5-8, 10-13 and 17-20 are rejected as being directly or indirectly dependent on claim 1 but not resolving the ambiguity.
Claim 2, claim 10 and claim 15 recite the phrase “the recombinase”. There is insufficient antecedent basis for this limitation in the claims because the respective base claims are silent on a recombinase. It is recommended to change the phrase to “a recombinase recognizing the recombinase target sequences”.
Claim 4 recites the phrase “the step of selecting”. There is insufficient antecedent basis for this limitation in the claim because the base claim 1 does not recite a step of selecting. It is recommended to change to “a step of selecting”.
Claim 10 recites the phrase “the cassette tape gene” in line 1. There is insufficient antecedent basis for this limitation in the claim because the base claim 9 recites more than one cassette tape genes (e.g., the cassette tape gene in line 1-2, and multiple cassette tape genes in line 3), thus it is unclear which cassette tape gene the phrase in claim 10 is referring to.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim 3, claim 11 and claim 16 recite the limitation “means of genome editing”. This limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, and is limited by the description in the specification (page 14, [0046]; page 23, line 8; and page 35, section (2) “Knocking-in of the TCR by genome editing with CRISPR/Cas9”), which recites the means of genome editing are CRISPR/Cas9 or TALEN.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claims 1-2, 4-7, 12-13 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Gong et al., (CN105316362A, published on 2016, English translation provided in IDS 07/27/2023).
With respect to claim 1, Gong teaches a method for producing tumor antigen-specific T cells expressing a tumor antigen-specific TCR molecule using Dual-RMCE (dual-recombinase mediated cassette exchange) technology (see e.g. abstract), thus teaches a method for producing effector cells which express a desired protein.
In regard to step (1), Gong teaches mouse embryonic stem cells (ES14.1 cells) are electroporated with an integration vector pMP71-LGFPF plasmid (p. 11, [0053]), thus teaches step (1) providing material cells (i.e., ES cells) that have a cassette deck structure (i.e., the integration vector) with a cassette tape gene comprising a gene encoding a marker protein (i.e., the GFP marker protein) in their genome. Gong teaches in vivo differentiation of TCR-ES cells into T cells ([0070]-[[0073], see Fig 7), and teaches the T cells express the exogenous TCR incorporated by cassette exchange in place of the marker protein (see [0073] and Fig 7), thus teaches the material cells (i.e., the ES cells) can be differentiated into the effector cells (i.e., T cells), and the marker protein can be expressed in the effector cells when the material cells are differentiated into the effector cells (evidenced by the T cells expressing the exogenous TCR. It is noted that the exogenous TCR is under the same promoter as the marker protein after cassette exchange, thus the marker protein can be expressed in the differentiated T cells if the cassette exchange is not performed).
In regard to step (2), Gong teaches the mouse embryonic stem cells are cultured in a specific medium (see e.g., [0041], from line 337, and see Fig 2 for low-copy clones of ES cells after electroporation of the integration vector), thus teaches step (2) proliferating the material cells.
In regard to step (3), as stated supra, Gong teaches in vivo differentiation of TCR-ES cells into T cells (Example 3, [0070]-[[0073], see Fig 7), and also teaches both in-vivo and in-vitro cell differentiation technology can be used to produce a large amount of tumor antigen specific T cells (see e.g., abstract). Thus, Gong teaches step (3) differentiating the material cells (i.e., the ES cells) into the effector cells (i.e., the T cells).
In regard to step (4), Gong teaches the monoclonal cells comprising the integration vector are electroporated with a replacement vector pDRAV-3-LTCRF and a plasmid encoding Cre and FlpO recombinase (e.g., [0057], line 461) and after 10 days, cells fully express CD3 (from exogenous TCR) and do not express EGFP, indicating that the EGFP gene is completely replaced by the TCR gene (e.g., [0059], from line 488). Thus, Gong teaches step (4) replacing the gene encoding the marker protein (i.e., the EGFP gene) with a gene encoding the desired protein (i.e., the TCR gene).
It is clear that Gong teaches all the steps recited in instant claim 1, the only difference between Gong and the instant invention is that Gong’s replacing the marker gene with the desired gene happens in the ES cells before differentiating (see e.g., [0069], last line “3 ES cell clones also successfully underwent Dual-RMCE), while in the instant step (4) the replacing is in the effector cells after differentiating the ES cells.
However, since performing the step of replacing with the desired gene either before (i.e., Gong), or after differentiating the ES cells (i.e., instant invention) would lead to the same result, i.e., producing effector cells expressing the desired protein, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have performed the step of replacing the marker gene with the desired gene in the effector cells, after differentiating the ES cells into the effector cells with a reasonable expectation of success. One of ordinary skill in the art would have had a reason to do so since MPEP 2144.04, section IV (C) directed to the order of steps citing In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) states that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results; and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) states that selection of any order of mixing ingredients is prima facie obvious.
Furthermore, since Gong has reduced to practice performing the step of replacing in effector cells (see RMCE performed in Jurkat76 cells which is a T cell line, e.g. [0059]), one of ordinary skill in the art would have had a reasonable expectation of success in performing the step of replacing the marker gene with the desired gene in the effector cells.
With respect to claim 2, Gong teaches the upstream and downstream of the gene encoding the marker protein are flanked by a pair of recombinase target sequences (i.e., LoxP and FRT sites flanking the EGFP gene, see e.g., Fig 1A, C), and teaches in the replacement vector (i.e., the claimed cassette tape exchange vector) the TCR gene is also flanked by the same recombinase target sequences (i.e., LoxP and FRT sites flanking the TCR gene, see e.g., Fig 1B, C). Gong also teaches the cells comprising the integration vector are electroporated with the replacement vector and a plasmid encoding Cre and FlpO recombinase (e.g., [0057], line 461) and after 10 days, cells fully express CD3 (from exogenous TCR) and do not express EGFP, indicating that the EGFP gene is completely replaced by the TCR gene (e.g., [0059], line 488).
With respect to claim 4, as stated supra, Gong teaches after 10 days, cells fully express CD3 (from exogenous TCR) and do not express EGFP, indicating that the EGFP gene is completely replaced by the TCR gene (e.g., [0059], from line 488), thus teaches the method further comprising a step of selecting the effector cells that are negative for the marker protein so that the effector cells expressing the desired protein are selected.
With respect to claim 5 and claim 6 directed to the marker protein being a TCR, although Gong does not specifically teach the marker protein being a TCR, Gong teaches after dual-RMCE, the TCR gene is exchanged with the EGFP gene in the cassette integrated in the cells (see e.g., Fig 1C attached). It is noted that the new cassette comprises a pair of recombinase target sequences flanking the TCR gene, in
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the same manner as that in the integration vector flanking the EGFP gene.
Since the cassette comprising an EGFP gene and the cassette comprising a TCR gene have the same flanking recombinase target sequences and can be used for the same purpose (i.e., as a starting cassette deck structure for dual-RMCE), these cassettes are art-recognized obvious equivalents to each other. Therefore, it would have been obvious for one of ordinary skill in the art to have substituted the cassette comprising a TCR gene for the cassette comprising an EGFP gene so as to use the TCR gene as a marker gene to perform dual-RMCE. See MPEP 2144.06.
With respect to claim 7, as stated supra, Gong teaches the marker protein is a fluorescent protein (i.e., an EGFP protein, see e.g., Fig 1A).
With respect to claim 12 and claim 13, as stated supra, Gong teaches the material cell is an embryonic stem cell (e.g., [0053]) and induced pluripotent stem cell (iPS) (e.g., [0009] and [0028]).
With respect to claim 17 and claim 18, as stated supra, Gong teaches in vivo differentiation of the ES cells into T cells (e.g., [0070]-[0073], see Fig 7), thus teaches the effector cells is an immune cell, and specifically, a T cell.
With respect to claim 19 directed to the gene encoding the marker protein being a gene encoding a TCR, as stated supra, it would have been obvious for one of ordinary skill in the art to have substituted the cassette comprising a TCR gene for the cassette comprising an EGFP gene so as to use the TCR gene as a marker gene to perform dual-RMCE. See MPEP 2144.06.
With respect to claim 20, as stated supra, Gong teaches producing tumor antigen-specific T cells expressing a tumor antigen-specific TCR molecule (see e.g. abstract), thus teaches the desired protein is a TCR.
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Gong et al., (CN105316362A, published on 2016, English translation provided in IDS 07/27/2023) in view of Eyquem et al., (Nature. 2017; 543(7643): 113-117).
Claim 3 is directed to the step (4) introducing the desired gene into the effector cells by means of genome editing, as stated supra, this limitation of “means of genome editing” is limited by the description in the specification as CRISPR/Cas9 or TALEN.
However, Gong is silent on using CRISPR/Cas9 technology in introducing the desired gene into the effector cells.
Eyquem teaches a method of targeted integration of exogenous CAR into effector cells by CRISPR/Cas9 technology (see e.g., abstract). Eyquem teaches their results demonstrate the high efficiency and precision of gene targeting offered by CRISPR/Cas9 (p. 114, para 1) and teaches their findings underscore the potential of CRISPR/Cas9 genome editing to advance immunotherapies (abstract).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for producing effector cells expressing a tumor antigen-specific TCR for immunotherapies disclosed by Gong, by substituting the recombinase-mediated cassette exchange with CRISPR/Cas9-mediated gene targeting as taught by Eyquem with a reasonable expectation of success. Since Gong teaches the replacement efficiency is about 5% (see e.g., [0062]), and since Eyquem teaches CRISPR/Cas9 offers highly efficient gene targeting with a knock-in efficiency exceeding 40% (p. 113, last para and Fig 1B), one of ordinary skill in the art would have had a reason to substitute with CRISPR/Cas9-mediated gene targeting as taught by Eyquem in order to obtain highly efficient introduction of the gene encoding the desired protein (i.e., TCR) to obtain a large amount of therapeutic T cells.
Claim 8 is directed to the material cells comprising only one cassette deck structure in the genome per one material cell.
Gong teaches multiple copies of the displacement substrate may reduce the displacement efficiency, and a low/single-copy retrovirus cell line is selected to improve the efficiency of Dual-RMCE (e.g., [0059]). Gong teaches using limiting dilution to obtain monoclonal cells with low/single-copy exchange components (i.e., low copies or one copy of cassette deck structure in the genome per one material cell, see e.g., [0059], [0063]).
Eyquem teaches a method of targeted integration (e.g., the TRAC locus) of exogenous CAR into effector cells by CRISPR/Cas9 (see e.g., abstract). It is noted that by targeted integration into a specific gene locus, there would be only one copy of exogenous sequence in the genome per one material cell. Eyquem teaches targeted integration provides a safer therapeutic T cell by minimizing the risks of insertional oncogenesis and a better defined T cell by avoiding position-effect variegation and vector copy number variation (p. 117, para 1).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for producing effector cells expressing a tumor antigen-specific TCR for immunotherapies disclosed by Gong, by substituting the retrovirus-mediated random integration with targeted integration as taught by Eyquem with a reasonable expectation of success. Since Gong acknowledges viral transduction (for introducing the cassette deck structure) is a process of multi-copy and random integration (e.g., [0007]) that may reduce the exchange efficiency, and teaches selecting low/single-copy cell clones to improve the efficiency of Dual-RMCE (e.g., [0059], [0063]), and since Eyquem teaches targeted integration provides a safer therapeutic T cell and a better defined T cell by avoiding position-effect variegation and vector copy number variation (p. 117, para 1), one of ordinary skill in the art would have had a reason to substitute with targeted integration into a specific gene locus as taught by Eyquem so as to obtain material cells comprising only one cassette deck structure in the genome per one material cell in order to obtain a safer and better defined cell with improved efficiency of Dual-RMCE.
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Gong et al., (CN105316362A, published on 2016, English translation provided in IDS 07/27/2023) in view of Eyquem et al., (Nature. 2017; 543(7643): 113-117), as applied to claims 1, 3 and 8 above, and further in view of Cao et al., (ClinicalTrials.gov ID NCT02903810, posted date 2016-10-12, p. 1-9).
As stated supra, Gong makes obvious the cassette tape gene in the cassette deck structure in the effector cells is exchanged with one cassette tape gene encoding a desired protein (i.e., TCR) to produce effector cells expressing the desired protein, related to claim 9 (see above). Gong teaches the cassette tape gene comprises a pair of recombinase target sequences in its upstream and downstream (see e.g., Fig 1A) and teaches the effector cells are electroporated with a replacement vector and a plasmid encoding the recombinase in claim 10 (e.g., [0057). Furthermore, Gong and Eyquem make obvious using CRISPR/Cas9 technology (i.e., means of genome editing) to introduce the desired cassette tape gene into the effector cells in claim 11 (see above).
However, Gong and Eyquem are silent on exchanging the marker gene with multiple genes encoding different desired proteins at the same time in claims 9-11.
Nevertheless, Gong teaches there are multiple tumor-associated antigens (e.g., [0005]), and a series of high-affinity tumor antigen-specific TCR genes have been isolated for use in tumors such as B-cell lymphoma (e.g., [0006]).
Cao teaches a clinical trial using combination transfer of two chimeric antigen receptor (CAR)-T cells for B cell hematologic malignancy treatment (see p. 1, Brief summary). Cao teaches because of the heterogeneity of the tumor, the patient often carries tumor cells with various positive target antigens, thus Cao proposes an infusion of a mixed population of CAR-T cells (CD19-41BB and CD22-41BB two CAR-T cells) to eliminate tumor burden and inhibit the recurrence of tumor heterogeneity at the same time (see p. 1, Brief summary).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for producing effector cells expressing one tumor antigen-specific TCR by exchanging the marker gene with one desired TCR gene as suggested by Gong and Eyquem, by combining multiple desired cassette tape genes each encoding a different TCR to produce effector cells expressing different TCRs at the same time as suggested by Gong and Cao with a reasonable expectation of success. Since Gong teaches multiple tumor-associated antigens in tumors and isolation of a series of high-affinity tumor antigen-specific TCR genes for use in tumors such as B-cell lymphoma (e.g., [0005-0006]), and since Cao teaches treating B-cell malignancy with a mixed population of T cells expressing different CARs (i.e., CD19- and CD22-CAR-T cells) to eliminate tumor burden and inhibit the recurrence of tumor heterogeneity at the same time (see p. 1, Brief summary), one of ordinary skill in the art would have had a reason to replace the marker gene with multiple desired cassette tape genes each comprising a different TCR so as to produce a mixed population of TCR-T cells that express different TCRs at the same time in order to use for eliminating tumor burden and inhibiting the recurrence of tumor heterogeneity at the same time.
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Gong et al., (CN105316362A, published on 2016, English translation provided in IDS 07/27/2023) in view of Eyquem et al., (Nature. 2017; 543(7643): 113-117) and Cao et al., (ClinicalTrials.gov ID NCT02903810, posted date 2016-10-12, p. 1-9).
With respect to claim 14, Gong teaches a method for producing tumor antigen-specific T cells expressing a tumor antigen-specific TCR molecule using Dual-RMCE (dual-recombinase mediated cassette exchange) technology (see e.g. abstract), thus teaches a method for producing effector cells which express a desired protein.
Gong teaches Jurkat76 cells (a human T-lymphocyte cell line, and thus effector cells) are transduced with retrovirus comprising an integration vector (e.g., [0053]). Gong teaches multiple copies of the displacement substrate may reduce the displacement efficiency, and low/single-copy retrovirus cell clones are selected to improve the efficiency of Dual-RMCE (e.g., [0059]). Gong teaches using limiting dilution to obtain monoclonal cells with low/single-copy exchange components (i.e., low copies or one copy of cassette deck structure, see e.g., [0059], [0063]).
In regard to obtaining effector cells comprising one exogenous sequence in its genome, Eyquem teaches a method of targeted integration (e.g., the TRAC locus) of exogenous CAR into effector cells by CRISPR/Cas9 (see e.g., abstract). It is noted that by targeted integration into a specific gene locus, there would be only one copy of exogenous sequence in the genome per one cell. Eyquem teaches targeted integration provides a safer therapeutic T cell by minimizing the risks of insertional oncogenesis and a better defined T cell by avoiding position-effect variegation and vector copy number variation (p. 117, para 1).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for producing effector cells expressing a tumor antigen-specific TCR for immunotherapies disclosed by Gong, by substituting the retrovirus-mediated random integration with targeted integration as taught by Eyquem with a reasonable expectation of success. Since Gong acknowledges viral transduction (for introducing the cassette deck structure) is a process of multi-copy and random integration (e.g., [0007]) that may reduce the exchange efficiency, and teaches selecting low/single-copy cell clones to improve the efficiency of Dual-RMCE (e.g., [0059], [0063]), and since Eyquem teaches targeted integration provides a safer therapeutic T cell and a better defined T cell by avoiding position-effect variegation and vector copy number variation (p. 117, para 1), one of ordinary skill in the art would have had a reason to substitute with targeted integration into a specific gene locus as taught by Eyquem so as to obtain effector cells comprising only one cassette deck structure in the genome per one cell in order to obtain a safer and better defined cell with improved efficiency of Dual-RMCE.
Gong teaches integration vector comprises an EGFP gene (see e.g., Fig 1A) and after transduction, the expression of EGFP is close to 100% positive (Figure 2K) ([0055]), thus teaches the cassette deck structure (i.e., the integration vector) comprises a cassette tape gene comprising a gene encoding a marker protein (i.e., an EGFP) in the manner that the marker protein can be expressed in the cells.
Although Gong teaches a neomycin gene (i.e., an exogenous drug resistant gene) is comprised in the cassette deck structure (see e.g., Fig 1A), one of ordinary skill in the art would have understood that the drug resistance gene in the cassette would be neither necessary for the function of the cassette tape gene, nor sufficient for producing any unexpected results. Thus, omission of the exogenous drug resistant gene is obvious in the absence of any showing of unexpected results or criticality.
Gong teaches the cells comprising the integration vector are electroporated with a replacement vector and a plasmid encoding Cre and FlpO recombinase (e.g., [0057], line 461) and after 10 days, cells fully express CD3 (from exogenous TCR) and do not express EGFP, indicating that the EGFP gene is completely replaced by the TCR gene (e.g., [0059], from line 488), thus teaches exchanging the gene encoding the marker protein (i.e., the EGFP gene) in the effector cells with a gene encoding protein (i.e., the TCR gene) to produce effector cells expressing the protein.
However, Gong and Eyquem are silent on exchanging the marker gene with multiple genes encoding different proteins at the same time in claims 14-16.
Nevertheless, Gong teaches there are multiple tumor-associated antigens (e.g., [0005]), and a series of high-affinity tumor antigen-specific TCR genes have been isolated for use in tumors such as B-cell lymphoma (e.g., [0006]).
Cao teaches a clinical trial using combination transfer of two chimeric antigen receptor (CAR)-T cells for treating B cell malignancy (p. 1, Brief summary). Cao teaches because of the heterogeneity of the tumor, patients often carry tumor cells with various positive target antigens, thus Cao proposes infusion of a mixed population of CAR-T cells (CD19- and CD22-CAR-T cells) to eliminate tumor burden and inhibit the recurrence of tumor heterogeneity at the same time (see p. 1, Brief summary).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for producing effector cells expressing one tumor antigen-specific TCR by exchanging the marker gene with one desired TCR gene as suggested by Gong and Eyquem, by combining multiple desired cassette tape genes each encoding a different TCR to produce effector cells expressing different TCRs at the same time as suggested by Gong and Cao with a reasonable expectation of success. Since Gong teaches multiple tumor-associated antigens in tumors and isolation of a series of high-affinity tumor antigen-specific TCR genes for use in tumors such as B-cell lymphoma (e.g., [0005-0006]), and since Cao teaches treating B-cell malignancy with a mixed population of T cells expressing different CARs (i.e., CD19- and CD22-CAR-T cells) to eliminate tumor burden and inhibit the recurrence of tumor heterogeneity at the same time (see p. 1, Brief summary), one of ordinary skill in the art would have had a reason to exchange the marker gene with multiple desired genes each encoding a different TCR so as to produce multiple types of TCR-T cells each expressing a different TCR at the same time in order to use for eliminating tumor burden and inhibiting the recurrence of tumor heterogeneity at the same time.
With respect to claim 15, Gong teaches the cassette tape gene comprises a pair of recombinase target sequences in its upstream and downstream (i.e., LoxP and FRT sites flanking the EGFP gene, see e.g., Fig 1A, C), and in the replacement vector the TCR gene is also flanked by the same recombinase target sequences (see e.g., Fig 1B, C). Gong teaches the cells comprising the integration vector are electroporated with the replacement vector and a plasmid encoding Cre and FlpO recombinase (e.g., [0057], line 461) and after 10 days, cells fully express CD3 (from exogenous TCR) and do not express EGFP, indicating that the EGFP gene is completely replaced by the TCR gene (e.g., [0059], line 488).
Claim 16 is directed to the step of exchanging being carried by means of genome editing. As stated supra, this limitation of “means of genome editing” is limited by the description in the specification as CRISPR/Cas9 or TALEN.
However, Gong is silent on using CRISPR/Cas9 technology in introducing the desired genes into the effector cells in claim 16.
Eyquem teaches a method of targeted integration of exogenous CAR into effector cells by CRISPR/Cas9 technology (see e.g., abstract). Eyquem teaches their results demonstrate the high efficiency and precision of gene targeting offered by CRISPR/Cas9 (p. 114, para 1) and teaches their findings underscore the potential of CRISPR/Cas9 genome editing to advance immunotherapies (abstract).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for producing effector cells expressing tumor antigen-specific TCRs for immunotherapies suggested by Gong in view of Eyquem and Cao, by substituting the recombinase-mediated cassette exchange with CRISPR/Cas9-mediated gene targeting as taught by Eyquem with a reasonable expectation of success. Since Gong teaches the replacement efficiency is about 5% (see e.g., [0062]), and since Eyquem teaches CRISPR/Cas9 offers highly efficient gene targeting with a knock-in efficiency exceeding 40% (p. 113, last para and Fig 1B), one of ordinary skill in the art would have had a reason to substitute with CRISPR/Cas9-mediated gene targeting as taught by Eyquem in order to obtain highly efficient exchange with genes encoding desired proteins to obtain a large amount of therapeutic TCR-T cells.
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Provisional Double Patenting Rejections
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending claims 25, 4, 19, 26-29, 36 and 38-40 of copending Application No. 17/262,400 in view of Gong et al., (CN105316362A, published on 2016, English translation provided in IDS 07/27/2023) and Cao et al., (ClinicalTrials.gov ID NCT02903810, posted date 2016-10-12, p. 1-9). Although the claims at issue are not identical, they are not patentably distinct from each other.
Copending claims recite a method for producing a cell that express an exogenous rearranged TCR or CAR, which comprises the steps of altering a non-rearranged TCR locus in a material cell genome so that it comprises a drug resistant gene, a reporter gene or a known TCR or CAR gene (i.e., the instantly claimed marker gene in instant claims 1, 5-6 and 19-20), and replacing the gene with the exogenous TCR or CAR gene (reference claim 25, related to instant claims 1 and 14), the exogenous gene is introduced in the material cell by means of RMCE or genome editing method (reference claim 4, related to instant claims 3, 11 and 16), the drug resistant cassette comprises two target sequences for a recombinase and apply the recombinase (references claim 26 and 36, related to the upstream and downstream recombinase target sequences in instant claims 2, 10 and 15), the method further comprises the step of differentiating the obtained cells into a T cell (reference claim 38, related to instant claims 1, 17, 18, ), and further comprises a step of removing the cell which was unsuccessfully exchanged with the TCR or CAR gene by an antibody (reference claim 40, related to instant claim 4). It is noted that since copending claims recite integration to a non-rearranged TCR locus, the material cell would have only one cassette structure in the genome per one material cell (related to instant claims 8 and 14).
However, the copending claims are silent on the reporter being a fluorescent protein in instant claim 7, the material cell being an ESC in instant claims 12-13, nor recite multiple cassette genes for exchange to produce multiple types of effector cells in instant claims 9 and 14.
Gong teaches a method for producing tumor antigen-specific T cells expressing a tumor antigen-specific TCR using Dual-RMCE (see e.g. abstract). Gong teaches mouse embryonic stem cells are electroporated with an integration vector that comprises a fluorescent marker protein ([0053]) and the TCR-ES cells can be differentiated into T cells ([0070]-[[0073], see Fig 7). Thus, Gong teaches the reporter marker protein being a fluorescent protein in instant claim 7 and the material cell being an ESC in instant claims 12-13. Gong teaches there are multiple tumor-associated antigens (e.g., [0005]), and a series of high-affinity tumor antigen-specific TCR genes have been isolated for use in tumors such as B-cell lymphoma (e.g., [0006]).
Cao teaches a clinical trial using combination transfer of two chimeric antigen receptor (CAR)-T cells for treating B cell malignancy (p. 1, Brief summary). Cao teaches because of the heterogeneity of the tumor, patients often carry tumor cells with various positive target antigens, thus Cao proposes infusion of a mixed population of CAR-T cells (CD19- and CD22-CAR-T cells) to eliminate tumor burden and inhibit the recurrence of tumor heterogeneity at the same time (see p. 1, Brief summary).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have recited the method for producing T cells expressing exogenous TCRs or CARs, and have chosen fluorescent protein as marker protein and an ESC as a material cell for differentiating into T cells as taught by Gong, and have combined multiple genes each encoding a different TCR or CAR to produce multiple types of effector cells as suggested by Gong and Cao with a reasonable expectation of success. Since Gong reduces to practice a fluorescent marker protein and an ESC to differentiate into T cells, and teaches multiple tumor-associated antigens as well as a series of high-affinity tumor antigen-specific TCR genes for use in tumors such as B-cell lymphoma (e.g., [0005-0006]), and since Cao teaches treating B-cell malignancy with a mixed population of T cells expressing different CARs (i.e., CD19- and CD22-CAR-T cells) to eliminate tumor burden and inhibit the recurrence of tumor heterogeneity at the same time (see p. 1, Brief summary), one of ordinary skill in the art would have had a reason to choose a fluorescent marker protein and an ESC as a material cell as taught by Gong, and to combine multiple desired genes each encoding a different TCR or CAR so as to produce multiple types of T cells each expressing a different TCR or CAR at the same time in order to use for eliminating tumor burden and inhibiting the recurrence of tumor heterogeneity at the same time.
Since the instant application claims are obvious over cited application claims, in view of Gong and Cao, said claims are not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims in the copending application have not in fact been patented.
Conclusion
No claims are allowed.
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/JIANJIAN ZHU/Examiner, Art Unit 1631