Detailed Office 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 .
Status of the Claims
Acknowledgement is hereby made of receipt and entry of the communication filed 13 October, 2023. Claims 1-27 are pending in the instant application.
37 C.F.R. § 1.98
The information disclosure statement filed 03 August, 2023, has been placed in the application file and the information referred to therein has been considered.
37 C.F.R. § 1.84
The drawings filed 12 April, 2023, have been reviewed and are acceptable.
35 U.S.C. § 112(b)
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.
Claims 1-27 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention. Two separate requirements are set forth under this statute: (1) the claims must set forth the subject matter that applicants regard as their invention; and (2) the claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent grant.
Claim 1 references a method for measuring the relative potency of a test sample comprising a first recombinant virus comprising a transgene encoding glucocerebrosidase (GCase), the method comprising:
a) transducing a first plurality of cells with the test sample;
b) incubating the transduced first plurality of cells under conditions sufficient to express GCase;
c) harvesting a first cell lysate from the transduced first plurality of cells;
d) combining the first cell lysate with resorufin-beta-D-glucopyranoside;
e) imaging the first cell lysate to obtain a first fluorescence reading;
f) transducing a second plurality of cells with a reference standard comprising a second recombinant virus comprising a transgene encoding GCase;
g) incubating the transduced second plurality of cells under conditions sufficient to express GCase;
h) harvesting a second cell lysate from the transduced second plurality of cells;
i) combining the second cell lysate with resorufin-beta-D-glucopyranoside;
j) imaging the second cell lysate to obtain a second fluorescence reading; and
k) comparing the first fluorescence reading with the second fluorescence reading using parallel line analysis to calculate the relative potency of the test sample.
The preamble is directed toward a method for measuring the potency of a test sample which is confusing. The term potency generally references the measurement of a drug’s biological activity expressed in terms of the dose required to achieve a given pharmacological effect. However, the claimed method does not appear to measure the potency of any given drug. None of the recited method steps involve the administration of a drug, and, in fact, they appear to involve the same steps (i.e., the expression of GCase from a viral vector in cells and the addition of a glucopyranoside). Thus, it is not readily manifest how these steps measure potency. Moreover, the recited method steps also fail to distinguish between GCase and other glycoside hydrolases. The claims simply recite the expression of GCase in two different samples followed by the administration of a substrate to assess glycoside hydrolase activity in the cells of interest. Perusal of the disclosure appears to identify an in vitro cell assay wherein the relative titer of a recombinant adeno-associated virus (rAAV) expressing GCase (PR001) was determined. The method appears to use PR001 as an internal standard to compare the expression level or titer of other rAAVs expressing GCase. However, none of these objectives or steps are recited in the claims. Appropriate correction is required.
Claims 9, 10, and 12 reference limitations directed toward a first plurality of cells or a second plurality of cells. For example, in claim 9 the first plurality of cells may comprise HEK-293/-293T cells or the second plurality of cells may comprise HEK-293/-293T cells. However, the claimed method requires a direct comparison between both the first and second plurality of cells. Thus, it is not readily manifest how the skilled artisan could perform an accurate analysis if these two cell populations are different. Amendment of the claim language to clearly set forth the appropriate limitations in both cell populations is suggested (e.g., wherein the first and second plurality of cells are HEK-293 cells).
Claims 12, 14, 15, 24, and 25 contain the phrase about which renders the claims vague and indefinite because the precise upper and lower limits encompassed by the claim language cannot be readily ascertained. For example, claim 12 references a plurality of cells that are seeded at about 20,000 cells per well. However, the skilled artisan cannot readily ascertain the upper and lower limits of this value. Amendment of the claims to remove the term about is suggested.
35 U.S.C. § 112(a)
The following is a quotation 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.
Enablement
Claims 1-27 are rejected under 35 U.S.C. § 112(a), as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 1 references a method for measuring the relative potency of a test sample comprising a first recombinant virus comprising a transgene encoding glucocerebrosidase (GCase), the method comprising:
a) transducing a first plurality of cells with the test sample;
b) incubating the transduced first plurality of cells under conditions sufficient to express GCase;
c) harvesting a first cell lysate from the transduced first plurality of cells;
d) combining the first cell lysate with resorufin-beta-D-glucopyranoside;
e) imaging the first cell lysate to obtain a first fluorescence reading;
f) transducing a second plurality of cells with a reference standard comprising a second recombinant virus comprising a transgene encoding GCase;
g) incubating the transduced second plurality of cells under conditions sufficient to express GCase;
h) harvesting a second cell lysate from the transduced second plurality of cells;
i) combining the second cell lysate with resorufin-beta-D-glucopyranoside;
j) imaging the second cell lysate to obtain a second fluorescence reading; and
k) comparing the first fluorescence reading with the second fluorescence reading using parallel line analysis to calculate the relative potency of the test sample.
The legal considerations that govern enablement determinations pertaining to undue experimentation have been clearly set forth. Enzo Biochem, Inc., 52 U.S.P.Q.2d 1129 (C.A.F.C. 1999). In re Wands, 8 U.S.P.Q.2d 1400 (C.A.F.C. 1988). Ex parte Forman 230 U.S.P.Q. 546 (PTO Bd. Pat. App. Int., 1986). The courts concluded that several factual inquiries should be considered when making such assessments including the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in that art, the predictability or unpredictability of the art and the breadth of the claims. In re Rainer, 52 C.C.P.A. 1593, 347 F.2d 574, 146 U.S.P.Q. 218 (1965).
The claimed invention suffers from a number of deficiencies. First, the claimed method fails to recite method steps that actually measure the potency of a compound. The term potency generally references the measurement of a drug’s biological activity expressed in terms of the dose required to achieve a given pharmacological effect. However, the claimed method does not appear to measure the potency of any given drug. None of the recited method steps involve the administration of a drug, and, in fact, they appear to involve the same steps (i.e., the expression of GCase from a viral vector in cells and the addition of a glucopyranoside). Thus, it is not readily manifest how these steps measure potency.
Second, the method steps do not appear to take into consideration the presence of other glycoside hydrolases present in any given cell population. It has been well-documented that one of the many technical challenges within the field is directed toward the lack of simple and robust methods to assay GCase activity in tissue samples. Measuring GCase activity in vitro generally relies on the use of simple fluorogenic substrates such as resorufin β-D-glucopyranoside (Res-Glc, Figure 1) or 4-methylumbelliferyl β-D glucopyranoside(4-MU-Glc). However, the presence of other functionally related β-glucosidases, such as GBA212 (GH116) and GBA313 (GH1), which also cleave these substrates complicates such assays (Berrin et al., 2003, Substrate (aglycone) specificity of human cytosolic β-glucosidase, Biochem. J. 373:41-48; Körschen et al., 2013, The Non-lysosomal β-Glucosidase GBA2 Is a Non-integral Membrane-associated Protein at the Endoplasmic Reticulum (ER) and Golgi, J. Biol. Chem. 288(5):3381-3393; Deen et al., 2020, Selective Fluorogenic β‑Glucocerebrosidase Substrates for Convenient Analysis of Enzyme Activity in Cell and Tissue Homogenates, ACS Chem. Biol. 15:824-829).
Third, the disclosure fails to demonstrate that resorufin-β-D-glucopyranoside is specfic for GCase. As previously set forth, current assays generally lack the use of selective substrates for GCase over GBA2 and GBA3. It was emphasized that the shortage of selective GCase substrates creates a problem that is common to most mammalian glycoside hydrolases. Moreover, the identification of suitable GCase-specific substrates has proved challenging. One study attempted to identify suitable substrates and observed that O-alkylation of the O-6 position of Glc-Res provided favorable results. However, other modifications were not successful (Deen et al., 2020).
Fourth, the disclosure fails to provide any working embodiments. It appears that an in vitro cellular assay was used to assess the activity of different dilutions of a rAAV9 encoding GCase. However, no additional assay steps were described, including the inclusion of appropriate controls. The assay simply measured GCase levels and did not take into consideration, inter alia, the contribution from non-specific glycoside hydrolases.
Accordingly, when all the aforementioned factors are considered in toto, the skilled artisan would reasonably conclude that undue experimentation would be required to practice the claimed invention.
Correspondence
Any inquiry concerning this communication should be directed to Jeffrey S. Parkin, Ph.D., whose telephone number is (571) 272-0908. The Examiner can normally be reached Monday through Friday from 10:00 AM to 6:00 PM. A message may be left on the Examiner's voice mail service. 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 are unsuccessful, the Examiner's supervisor, Michael Allen, Ph.D., can be reached at (571) 270-3497. Direct general status inquiries to the Technology Center 1600 receptionist at (571) 272-1600.
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Respectfully,
/JEFFREY S PARKIN/Primary Examiner, Art Unit 1671 07 February, 2026