DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Application Status
This action is written in response to applicant’s correspondence received on 2/12/2026. Claims 1, 3-6, 9-11, and 14-15 are pending. Claims 1 and 9 have been amended. Claims 2, 7-8, and 12-13 have been cancelled. All pending claims are currently under examination.
Any rejection of record in the previous office actions not addressed herein is withdrawn. New grounds of rejection are presented herein that were not necessitated by applicant’s amendment of the claims since the office action mailed 11/18/2025. Therefore, this action is not final.
Claim Rejections - 35 USC § 112 – New Rejection Necessitated by Amendment
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 9, claim 9 depends from claim 1 which requires that the Cas protein comprises SEQ ID NO: 1 or SEQ ID NO: 1 with possibly two mutations at residues 203 or 569. Claim 9 recites that the modified Cas protein comprises SEQ ID NO: 8, 19, or 22. However, SEQ ID NOs 8, 19, and 22 do not comprise SEQ ID NO: 1 because they do not comprise the portion of SEQ ID NO: 1 encoded by the residues “AAALEKRPAATKKAGQAKKKKSTPPPPPLRSGC,” (i.e., residues 1298-1330 of SEQ ID NO: 1). SEQ ID NOs 8, 19, and 22 therefore do not include all the limitations of claim 1. Claim 9 is therefore rejected under 112(d) because the recited sequences of claim 9 do not comprise SEQ ID NO: 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103 - New Rejection Not Necessitated by Amendment
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.
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, 3-6, 9-11, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (WO 2018/213708 A1, published 11/22/2018, of record, note that due to the size of this file it has been uploaded as four separate documents) in view of Choe (WO2020032711-A1, published 2/13/2020, English Translation and Original provided, original copy is of record, additional English translation supplied with new sequence alignment), and further in view of Yoon (WO 2019/123014 A1, published 6/27/2019). The rejection is further evidenced by Feng (Feng MJ et al. Acta Crystallogr Sect F Struct Biol Cryst Commun. 2011 Jan 1;67(Pt 1):76-8). Note that Choe overlaps in inventors presently recited but also lists other inventors and an additional applicant; Choe therefore qualifies as prior art.
Regarding claim 1, Zhang teaches a modified Cas12a protein comprising a Cas12a protein with an NLS tag (e.g., Figure 1, where “Cpf1” is synonymous with Cas12a). Zhang teaches that such NLS sequences can comprise the amino acid sequence PAAKRVKLD (paragraph 266). Zhang therefore teaches that the NLS sequence is 100% identical to instant SEQ ID NO: 4 (alignment shown below):
PAAKRVKLD (Zhang NLS at paragraph 266)
PAAKRVKLD (instant SEQ ID NO: 4)
Zhang teaches that in a preferred embodiment the NLS is attached to the C-terminus of the Cas protein (final two lines of paragraph 267). Zhang further teaches that multiple copies of NLS sequences can be added at the C-terminus, from 2-10 copies (paragraph 267).
Zhang does not explicitly teach that the modified Cas12a protein is SEQ ID NO: 1, or SEQ ID NO: 1 with K203R and/or D569R substitutions as recited in claim 1.
As an initial matter, the composition of SEQ ID NO: 1 will be described. SEQ ID NO: 1 comprises components of the pet28 vector used for purification at its N-terminus (residues 1-34), followed by an mgCas12a sequence (residues 35-1297) and a C-terminal NLS/tag (residues 1298-1330).
With regards to the Cas12a portion of SEQ ID NO:1, Choe teaches SEQ ID NO: 1, which is 100% identical to the Cas12a portion of instantly recited SEQ ID NO: 1 (see alignment on page 1 of Choe, from residues 35-1297 of instant SEQ ID NO: 1). SEQ ID NO: 1 of Choe differs from SEQ ID NO: 1 in that it does not comprise N-terminal elements of the pet28 vector or the C-terminal NLS/tag or instant SEQ ID NO:1. However, Choe further teaches that such modified Cas12a proteins are encoded into pet28 vectors (page 4 of English translation, paragraph 7).
As evidenced by Feng, the pet28 vector comprises an N-terminal His tag sequence which is identical to the first 35 residues of instant SEQ ID NO: 1 (page 77, left column, first paragraph of Feng, see below):
MGSSHHHHHHSSGLVPRGSHMASMTGGQQMGRGS (Feng, page 77, left column, first paragraph)
MGSSHHHHHHSSGLVPRGSHMASMTGGQQMGRGS (Residues 1-35 of SEQ ID NO: 22)
Thus, as evidenced by Feng, a Cas12a which is cloned into a pet28 vector as taught by Choe also comprises the N-terminal His tag taught by Feng (above).
Furthermore, Yoon is a patent document which focuses on producing functional Cas12a variants for site-specific targeting (Title, Abstract, and throughout). Yoon, Zheng, and Choe therefore directly overlap is subject matter and field of endeavor. Furthermore, Yoon teaches NLS and end tags which are useful tags for Cas12a fusion proteins (e.g., Figure 2). Yoon teaches embodiments of such C-terminal tags, one of which is shown below in alignment with residues 1298-1330 of instant SEQ ID NO: 1:
AAALEKRPAATKKAGQAKKKKSTPPPPPLRSGC – C-terminal tag, Table 7, final line of page 208 of Yoon)
AAALEKRPAATKKAGQAKKKKSTPPPPPLRSGC – Final residues of instant SEQ ID NO: 1, residues 1298-1330
Thus, as shown above, Yoon teaches that terminal tags such as the final residues of instant SEQ ID NO: 1 are already known with 100% identity where tags are useful tags that have been reduced to practice in Cas12a fusion applications, per Yoon.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the Cas12a proteins comprising multiple C-terminal myc-NLS sequences, as taught by Zhang, with the Cas12a protein of SEQ ID NO: 1 of Choe, to arrive at the presently recited invention, as such a combination is the simple substitution of one known prior art element for another with predictable results. In the present case, a practitioner would simply substitute the Cas12a proteins of Zhang for that taught by Choe, where furthermore the vectors of Zhang could be substituted for the well-known pet28 vector, also taught by Choe. Such a substitution would yield SEQ ID NO: 1 given further tagging as taught by Yoon to attach the known C-terminal tag. Additionally, the two minor point mutations between Choe’s SEQ ID NO: 1 and the modifications to instant SEQ ID NO: 1 recited in claim 1 (residues 203 and 563) do not appear to generate any noticeable effect; thus, such mutations are not viewed as inventive because they do not appear to carry any unexpected results or overall change in functionality. Additionally, an arginine/lysine mutation as presently recited in claim 1 at position 203 is a conservative mutation, and thus would reasonably be predicted to function. As such, the point mutations recited are predictable.
Regarding claim 3, Zhang teaches that protein domains are linked using suitable linkages such as peptide linkers (paragraph 59).
Regarding claims 4-5, Zhang teaches that their Cas12a proteins can comprise 2-10 heterologous NLS copies, to include 6 (paragraph 267).
Regarding claim 6, Zhang teaches that such linkers can be the commonly known “GGS” linker (paragraph 59).
Regarding claim 9, Zhang teaches Cas12a proteins which can be modified with C-terminal myc-NLS sequences which are identical to the instantly recited SEQ ID NO: 4 in claim 1 (Figure 1, where “Cpf1” is synonymous with Cas12a, paragraph 266, and final two lines of paragraph 267, see alignment in the rejection of claim 1). Furthermore, Zhang teaches GGS linkers (paragraph 59). Zhang further teaches that multiple copies of NLS sequences can be added at the C-terminus, from 2-10 copies, including 6 copies (paragraph 267).
Zhang does not explicitly teach that the modified Cas12a protein is SEQ ID NO: 22.
As an initial matter, the composition of SEQ ID NO: 22 will be described. SEQ ID NO: 22 comprises components of the pet28 vector used for purification at its N-terminus, followed by a Cas12a sequence, and finally six repeats of myc-NLS (i.e., SEQ ID NO: 4) spaced with GGS linkers at its C-terminus (residues 1298-1373).
With regards to the Cas12a portion of SEQ ID NO:22, Choe teaches SEQ ID NO: 1, which is 99.8% identical to the Cas12a portion of instantly recited SEQ ID NO: 22 (see alignment on page 3 of Choe, from residues 35-1297 of SEQ ID NO: 22). SEQ ID NO: 1 of Choe differs from SEQ ID NO: 22 in that it does not comprise N-terminal elements of the pet28 vector or the C-terminal 6x myc-NLS repeats with GGS linkers. Additionally, Choe’s SEQ ID NO: 1 contains a conservative “R to K” mutation at residue 203 and a non-conservative “D to R” mutation at residue 563, with respect to SEQ ID NO: 22. Choe further teaches that such modified Cas12a proteins are encoded into pet28 vectors (page 4 of English translation, paragraph 7).
As evidenced by Feng, the pet28 vector comprises an N-terminal His tag sequence which is identical to the first 35 residues of SEQ ID NO: 22 (page 77, left column, first paragraph of Feng, see below):
MGSSHHHHHHSSGLVPRGSHMASMTGGQQMGRGS (Feng, page 77, left column, first paragraph)
MGSSHHHHHHSSGLVPRGSHMASMTGGQQMGRGS (Residues 1-35 of SEQ ID NO: 22)
Thus, as evidenced by Feng, a Cas12a which is cloned into a pet28 vector as taught by Choe also comprises the N-terminal His tag taught by Feng (above).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the Cas12a proteins comprising multiple C-terminal myc-NLS sequences, including six spaced with GGS spacers as taught by Zhang, with the Cas12a protein of SEQ ID NO: 1 of Choe, to arrive at the presently recited SEQ ID NO: 22, as such a combination is the simple substitution of one known prior art element for another with predictable results. In the present case, a practitioner would simply substitute the Cas12a proteins of Zhang for that taught by Choe, where furthermore the vectors of Zhang could be substituted for the well-known pet28 vector, also taught by Choe. Such a substitution would yield SEQ ID NO: 22 given that Zhang also teaches multiple repeats of the myc-NLS at the C-terminus. Additionally, the two minor point mutations between Choe’s SEQ ID NO: 1 and SEQ ID NO: 22 (residues 203 and 563) do not appear to generate any noticeable effect; thus, such mutations are not viewed as inventive because they do not appear to carry any unexpected results or overall change in functionality of the protein, and are therefore regarded as the simple substitution of one known residue for another with predictable results.
Regarding claim 10, Zhang further teaches that such a composition can comprise a guide RNA comprising a sequence which can hybridize with a target sequence (e.g., Figure 1).
Regarding claim 11, Zhang teaches that their composition and proteins can be expressed or encoded in vectors, which can further comprise regulatory elements comprising enhancers (paragraphs 386-389).
Regarding claim 14, Zhang/Choe/Yoon render obvious the modified Cas proteins of claims 1 and 10. Zhang teaches a method of genome editing in a cell comprising introducing a composition such as that rendered obvious by Zhang/Choe/Yoon into the cell (e.g., Figure 11, paragraphs 52 and 1095).
Regarding claim 15, Zhang teaches a method of producing a transformant by introducing a composition such as that of claim 10 into an isolated cell (e.g., Figure 11, paragraphs 52 and 1095).
Response to Arguments and Remarks
The Applicant’s remarks filed 2/12/2026 have been reviewed but are not persuasive to place the claims in condition for allowance. In the present case, SEQ ID NO: 1 was previously indicated as being allowable subject matter. Upon a new search and reconsideration, the indication of SEQ ID NO: 1 as allowable subject matter is withdrawn, and the present office action is issued as a non-final action because the rejection of SEQ ID NO: 1 could have been made in the previous office action.
The Applicant argues that the incorporation of the limitations of claims 2 and 7-8 into claim 1 render the 102 rejection moot. This argument is persuasive, and the 102 rejection is withdrawn.
The Applicant argues that the incorporation of limitations from claims 2 and 7-8 render the invention non-obvious. This argument is not found to be persuasive because, as discussed in the new 103 rejection above, the combination of Zhang/Choe/Yoon teach each of the recited limitations of claim 1, as Choe teaches the same mgCas12a protein which is encoded into a pet28 vector which comprises the N-terminal tag of SEQ ID NO: 1, where furthermore, Yoon teaches the C-terminal tag associated with SEQ ID NO: 1. Thus, each of the components or claim 1 are known and predictably function together, as each are known to function and be useful for the expression of Cas12a proteins.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS CHARLES RYAN whose telephone number is (571)272-8406. The examiner can normally be reached M-F 8AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ram Shukla can be reached at (571)-272-0735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.C.R./Examiner, Art Unit 1635
/RAM R SHUKLA/Supervisory Patent Examiner, Art Unit 1635
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