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
Applicant’s amendment to the claims filed February 14, 2023 is acknowledged. Claims 6, 14-15, 18, and 20-22 were cancelled. Claims 1-5, 7-13, 16-17, 19, and 23-27 are pending and under examination herein.
Nucleotide and/or Amino Acid Sequence Disclosures
REQUIREMENTS FOR PATENT APPLICATIONS CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCE DISCLOSURES
Items 1) and 2) provide general guidance related to requirements for sequence disclosures.
37 CFR 1.821(c) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) must contain a "Sequence Listing," as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.821 - 1.825. This "Sequence Listing" part of the disclosure may be submitted:
In accordance with 37 CFR 1.821(c)(1) via the USPTO patent electronic filing system (see Section I.1 of the Legal Framework for Patent Electronic System (https://www.uspto.gov/PatentLegalFramework), hereinafter "Legal Framework") as an ASCII text file, together with an incorporation-by-reference of the material in the ASCII text file in a separate paragraph of the specification as required by 37 CFR 1.823(b)(1) identifying:
the name of the ASCII text file;
ii) the date of creation; and
iii) the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(1) on read-only optical disc(s) as permitted by 37 CFR 1.52(e)(1)(ii), labeled according to 37 CFR 1.52(e)(5), with an incorporation-by-reference of the material in the ASCII text file according to 37 CFR 1.52(e)(8) and 37 CFR 1.823(b)(1) in a separate paragraph of the specification identifying:
the name of the ASCII text file;
the date of creation; and
the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(2) via the USPTO patent electronic filing system as a PDF file (not recommended); or
In accordance with 37 CFR 1.821(c)(3) on physical sheets of paper (not recommended).
When a “Sequence Listing” has been submitted as a PDF file as in 1(c) above (37 CFR 1.821(c)(2)) or on physical sheets of paper as in 1(d) above (37 CFR 1.821(c)(3)), 37 CFR 1.821(e)(1) requires a computer readable form (CRF) of the “Sequence Listing” in accordance with the requirements of 37 CFR 1.824.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed via the USPTO patent electronic filing system as a PDF, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the PDF copy and the CRF copy (the ASCII text file copy) are identical.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed on paper or read-only optical disc, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the paper or read-only optical disc copy and the CRF are identical.
Specific deficiencies and the required response to this Office Action are as follows:
Specific deficiency - This application contains sequence disclosures in accordance with the definitions for nucleotide and/or amino acid sequences set forth in 37 CFR 1.821(a)(1) and (a)(2). However, this application fails to comply with the requirements of 37 CFR 1.821 - 1.825 because no Sequence Listing has been filed. The sequence disclosures are located in paragraphs [0092], [0094], and [0123].
Required response – Applicant must provide:
A "Sequence Listing" part of the disclosure, as described above in item 1); as well as
An amendment specifically directing entry of the "Sequence Listing" part of the disclosure into the application in accordance with 1.825(b)(2);
A statement that the "Sequence Listing" includes no new matter in accordance with 1.825(b)(5); and
A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(b)(4).
If the "Sequence Listing" part of the disclosure is submitted according to item 1) a) or b) above, Applicant must also provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
A copy of the amended specification without markings (clean version); and
A statement that the substitute specification contains no new matter;
If the "Sequence Listing" part of the disclosure is submitted according to item 1) b), c), or d) above, Applicant must also provide:
A replacement CRF in accordance with 1.825(b)(6); and
Statement according to item 2) a) or b) above.
Specification
The specification is objected to because of the following informalities:
The use of terms which are trade names or marks used in commerce has been noted in this application, e.g., “MethoCult” ([0079], [0098]), “Lymphoprep,” “StemSpan” ([0088]), “SuperScript” ([0094]). Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. The terms should be accompanied by the generic terminology; furthermore, the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the terms.
Appropriate correction is required.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed provisional application, Application No. 63/065,922, filed August 14, 2020, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for claims 25-27 of this application. The first disclosure of the limitations of claims 25-27, specifically, “compounds to enhance engraftment,” contacting primary stem cells within “24 hours of isolation,” and a “method of enhancing engraftment,” is in Application No. 63/152,601, filed February 23, 2021. Claims 1-5, 7-13, 16-17, 19, and 23-24 find support in Application No. 63/065,922, filed August 14, 2020. Accordingly, the effective filing date of claims 1-5, 7-13, 16-17, 19, and 23-24 is August 14, 2020, and the effective filing date of claims 25-27 is February 23, 2021.
Duplicate Claim Warning
Applicant is advised that should claim 2 be found allowable, claim 3 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Objections
Claims 4-13, 16-17, 19, 23-24, and 26 are objected to because of the following informalities:
Claims 4-13, 16-17, 19, and 23-24 recite “The method of claim 1” and it would be preferable to amend the claims to recite “The method of claim 1,” with a comma separating this clause.
Claim 5 recites “wherein applying comprises applying a pulse electrical field comprising at least 35 Volts across the cells.” Although the wording differs from claim 1, it is clear that the limitations of claim 5 are attempting to further limit the voltage of the previously recited pulsed electrical field. It is recommended that claim be amended to recite the following, so that the terminology is consistent with claim 1: “wherein the pulsed electrical field comprises
Claim 7 recites “at least 1*107/cm2,” which should be amended to recite “1*107[[107]]/cm2[[cm2]]” using superscripts.
Claim 26 recites “a plurality of nanostraws,” which clearly refers to the previously recited plurality of nanostraws in claim 1. It would be preferable to amend the claim to recite “[[a]] the plurality of nanostraws,” accordingly.
Appropriate correction is required.
Claim Rejections - 35 USC § 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.
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 1-5, 7-13, 16-17, 19, and 23-27 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 and 27 recite “wherein the plurality of nanostraws extend through a substrate and a distance beyond the substrate that is between 200 nm and 1100 nm.” It is not clear based on this phrase what element must be “between 200 nm and 1100 nm” – the “substrate,” the “distance beyond the substrate,” or the combination of the “substrate” and the “distance.” The scope of the claimed method is unclear, therefore, because the substrate and/or distance through which the nanostraws must extend is structurally unclear.
Claims 2-5, 7-13, 16-17, 19, and 23-26 are rejected for depending from claim 1 and failing to remedy the indefiniteness.
Claims 1 and 27 recite “so that at least 80% of the cells are viable and at least 20% of the cells take up the biologically relevant cargo.” It is not clear whether the recited elements are sufficient to achieve this results-oriented limitation, or whether the limitation is intended to impose further limitations on the recited elements. For example, based on the specification, at least the features of the pulsed electrical field, the nanostraw length, cargo size, and subsequent steps (i.e., cellular media replacement) influence percent cell viability and/or transfection efficiency (“when using stem cells… if longer nanostraws are used and/or if lower voltages are used, the viability and/or number of cells that take up the cargo (e.g., cargo between 5 and 2000 kDa, such as siRNA), falls off dramatically,” [0010]; [0075]-[0076]; [0106]-[0107]). Claims 1 and 27 do not explicitly limit the overall length of the nanostraws, or the cargo size, or include a media replacement step. The claim indicates that the pulsed electrical field is “at least 30 volts,” but it is not clear whether the generic application of at least 30 volts is sufficient to achieve the results, particularly, because the specification exemplifies only one specific electrical field protocol encompassed by the claim (“40 V, 40 Hz, 200 µs, 3x40s,” [0089]). Taken together, it is not clear what further limitations, if any, are required by the phrase “so that at least 80% of the cells are viable and at least 20% of the cells take up the biologically relevant cargo,” which renders the claim indefinite.
Claims 2-5, 7-13, 16-17, 19, and 23-26 are rejected for depending from claim 1 and failing to remedy the indefiniteness. Hereinafter, the elements recited in claims 1 and 27 are interpreted as being sufficient to achieve the recited results.
Claim 3 recites “the driving step,” but it is not clear to which of the previously recited steps in claim 1 “the driving step” refers, i.e., the step in which the primary stem cells are “drive[n]” into contact with the plurality of nanostraws, or the step in which cargo is “driv[en]” from the nanostraws into an intracellular volume of the cells. This ambiguity renders the claim indefinite.
Claims 7 and 8 recite “the membrane,” but no such membrane is explicitly recited in claim 1. It is not clear whether this term is referring to a previously unrecited element, the previously recited “substrate,” which could encompass a membrane, or a membrane of the primary stem cells. Because it is not clear what claims 7-8 are attempting to further limit, the claims indefinite.
Claims 9-11 recite “wherein the nanostraws have a diameter” less than 500 nm, less than 200 nm, or between 50 nm-200 nm, respectively. Claim 1 recites that the “nanostraws… have an inner diameter of between 5 nm-500 nm.” Although the values recited in claims 9-11 appear to correspond to the previously recited range, because the term “diameter” is unmodified, it is not clear whether the term intends to refer to the inner diameter or the overall diameter of the nanostraws. The structural requirements of the nanostraws in claims 9-11 are, therefore, unclear.
Claim 23 recites “wherein less than 5% of genes in control primary stem cells are nonspecifically activated when compared with untreated primary stem cells.” While claim 1 recites “primary stem cells,” claim 1 does not explicitly recite or imply the presence of any “control” population of primary stem cells. It is not clear how or if these “control” primary stem cells are related to the primary stem cells required of claim 1. Furthermore, because the skilled artisan would consider “untreated” primary stem cells to be a control population, the phrase itself is confusing because it seems to require comparison of two control populations of primary stem cells, and it is not clear how or if this further limits the method of claim 1.
Claim 24 recites “further wherein the primary stem cells maintain substantially normal gene expression activity as measured.” The phrasing of the claim (i.e., “as measured”) makes it unclear whether I) the claim is incomplete, such that it intended to specify a means of measuring gene expression, or II) the claim is referring to a measuring step, which is not previously recited in claim 1. In addition, it is not clear what level of gene expression activity would be considered “substantially normal” because no metric is provided in the specification or claim to ascertain the scope of “normal” or “substantially normal” gene expression activity.
Claims 25 and 27 recite “one or more compounds to enhance engraftment.” In the absence of an explicit definition in the specification, the phrase “enhance engraftment” is interpreted as increasing the implantation, viability, function, etc., of transplanted cells. The specification provides that compounds to enhance engraftment encompass, for example, “cell penetrating peptides, proteins, mRNA, siRNA, miRNA, sugars, DNA, small molecules, and cardiac specific transcription factors” ([0108]). This definition reads on virtually any compound, within which, the skilled artisan would understand are many compounds which would not be considered engraftment enhancers. The specification does not clearly or distinctly indicate which compounds within the broad scope would “enhance engraftment.” Furthermore, the example in the specification which exemplifies the instantly claimed methods shows that primary stem cells delivered GFP mRNA via nanostraws have enhanced engraftment ([0083]; Fig. 3). GFP mRNA meets the scope outlined in paragraph [0108], but would not typically be considered a compound which enhances engraftment. This example, when coupled with the absence of a clear indication of which compounds within the broad scope “enhance engraftment,” makes it unclear what, if any, structural limitations are imposed by the phrase “to enhance engraftment,” or whether any compound will meet the claims’ scope. Hereinafter, the “one or more compounds to enhance engraftment” will be interpreted as in paragraph [0108].
Notice to Joint Inventors
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 Rejections - 35 USC § 103 – Melosh in view of Tay
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.
Claims 1-3, 5, 7-11, 13, 16-17, and 23-27 are rejected under 35 U.S.C. 103 as being unpatentable over Melosh (Melosh et al., 5 December 2019, US 2019/0365803 A1) in view of Tay (Tay, A., 6 July 2020, ACS Nano 2020, 14, pg. 7714-7721).
Regarding claim 1, Melosh teaches a method of delivering a biological relevant cargo, comprising centrifuging primary cells (i.e., cells isolated directly from tissue) to drive the cells into contact with a plurality of hollow nanostraws (“methods and apparatuses for delivering a load into cells using nanostraws,” [0047]; “Nanostraws are hollow,” [0009]; “cells may take up the cargo by receiving the cargo into the intracellular space… the force may be applied… by… centrifuging the suspension of cells to drive the cells into contact with the plurality of nanostraws,” [0021]; [0015]; “rapidly removing cells from the patient, transferring biologically relevant cargo into the cells using nanostraws, and returning the cells back to the patient,” [0007]). Melosh teaches the cells may be “embryonic stem cells,” which the skilled artisan would understand as an example of “primary stem cells,” because they are isolated from embryonic tissue (“methods that allow nanostraws… to gain intracellular access into non-adherent cells,” [0010]; “FIG. 2 schematically illustrates… the type of cells,” [0058]; “embryonic stem cells,” Fig. 2).
In view of the indefiniteness above, the limitation “between 200 nm and 1100 nm” is interpreted as applying to the distance the nanostraws extend beyond a substrate. Melosh teaches the nanostraws extend between “2 nm and 50 µm” ([0019]), e.g., 1000 nm (“1 um,” Fig. 3C) beyond a substrate, which meets the limitations of claim 1. Melosh teaches the nanostraws have an inner diameter of between “5 nm-1500 nm” ([0019]). Melosh also teaches exemplary nanostraws with diameters of 100 nm (“100 nm nanostraw,” Fig. 3C) and 200 nm (“Cas9 protein into Jurkat cells centrifuged onto 200x1200 nm nanostraws,” [0052]). Melosh does not explicitly state whether the diameter in these examples refers to the “inner” diameter; however, the skilled artisan would understand that the inner diameter of the exemplary nanostraws would fall within the instantly claimed range given their maximum possible diameters and the lower limit of the inner diameter range taught by Melosh (i.e., 5 nm).
Melosh teaches driving the cargo from the nanostraws into an intracellular volume of the cells with a pulsed electrical field comprising “15-25 V” ([]; [0053]; [0072]). Melosh teaches that at least 20% of the cells take up the biologically relevant cargo (“so that at least some (e.g., 20%, 25%, 30%...) of the cells take up the biologically relevant cargo,” [0019]). Melosh teaches that the methods result in “high cell viability,” ([0008]). Melosh teaches that “[h]igher voltage can be used” ([0053]), which “can give higher transfection efficiency” ([0072]). However, Melosh does not teach that the pulsed electrical field is “at least 30 volts across the cells.”
Tay provides guidance regarding the electrical field applied across cells when using nanostructures, e.g., nanostraws, to deliver cargo (pg. 7715-7716; Table 1; Fig. 3). Tay teaches that parameters such as electric field intensities must be optimized in order to ensure cell viability (Table 1, “Physical,” “Cell Viability”). Tay teaches that 30 volts has been used to successfully transfect cells via nanostructures (“NEI (30V, 2 min),” Fig. 1 and description; pg. 7716).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the voltage of the pulsed electrical field in view of Melosh and Tay, to arrive at a pulsed electrical field of at least 30 volts. It would have amounted to routine optimization of a known parameter in a known method, by known means to yield predictable results. MPEP 2144.05 (II)(A) provides that ““[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” Based on Melosh’s teaching that “higher voltage can be used” and Tay’s explicit teaching that electrical field parameters must be optimized, as well as Tay’s teaching that a 30 volt electrical field has been used in similar methods to that of Melosh, it is reasonable to conclude that the skilled artisan could have arrived at the claimed voltage through routine optimization. The skilled artisan would have had a reasonable expectation of success in using a pulsed electrical field of at least 30 volts, because the range is sufficiently close to Melosh’s range, and “higher voltage can” and has been “used” as evidenced by both Melosh and Tay.
Regarding claims 2-3, Melosh teaches the cells are driven into contact with the plurality of nanostraws, and rapidly transferred back to the patient, e.g., within 3 hours or less (“the method may be very quick. For example, the steps of withdrawing, placing, applying and transferring are performed continuously over a period of less than 3 hours (e.g., less than 2 hours, less than 1 hour, etc.),” [0035]; [0007]). Melosh teaches that the method may include “separating the cells from the nanostraws; for example, separating the cells from the nanostraws may comprise flowing a solution over the cells,” ([0023]). However, neither Melosh nor Tay teach that a cellular media is replaced within 20 minutes of applying the pulsed electrical field.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced a cellular media of the cells within 20 minutes of applying the pulsed electrical field in view of Melosh. It would have amounted to optimizing the timing of a known step within a known method, by known means to yield predictable results. MPEP 2144.05 (II)(A) provides that ““[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” Based on Melosh’s timeframe for performing the method (i.e., less than 3 hours to isolate the cells, contact with nanostraws, deliver cargo via pulsed electrical field, and transfer back to the patient), and Melosh’s step of separating the cells from the nanostraws by flowing a solution over the cells, it is reasonable to conclude that the skilled artisan could have arrived at replacing a cellular media of the cells within 20 minutes of applying the pulsed electrical field, which is well within the timeframe taught by Melosh. The skilled artisan would have had a reasonable expectation of success in performing the method with a step of replacing a cellular media within 20 minutes of applying the pulsed electrical field based on the Melosh’s teaching that the method can include such a step, and the timeline taught by Melosh for performing the method.
Regarding claim 5, the obviousness of optimizing the voltage of the pulsed electrical field from the range recited by Melosh in view of Tay is described above, and applied herein as to claim 5 which requires “at least 35 Volts across the cells.”
Regarding claims 7-8, in view of the indefiniteness described above, the claims are interpreted hereinafter as referring to the density of the plurality of nanostraws on the substrate. Melosh teaches densities between about 104 to 1012 nanostraws/cm2 (“between about 104 to 1012 nanostraws/cm2,” [0051]). Melosh teaches that “nanostraw geometry, methods of manufacturing nanostraws, and nanostraw compositions” were known in the prior art ([0051]). However, neither Melosh nor Tay teach the densities in instant claims 7-8, i.e., “at least 1*10[7]/cm[2]” or “between 2*107/cm2 and 4*107/cm2.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the densities of the plurality of nanostraws on the substrate, to arrive at nanostraw densities at least 1*107/cm2 or between 2*107/cm2 and 4*107/cm2. It would have amounted to routine optimization of a known parameter in a known method, by known means to yield predictable results. MPEP 2144.05 (II)(A) provides that ““[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” Based on Melosh’s teachings that densities of nanostraws “between about 104 to 1012 nanostraws/cm2” are suitable for the method, and that methods of manufacturing nanostraws and compositions were known, it is reasonable to conclude that the skilled artisan could have arrived at the instantly claimed densities which are within the prior art range, through routine optimization. The skilled artisan would have had a reasonable expectation of success in using the substrates with the instantly claimed nanostraw densities because the densities are within the prior art range, and methods of manufacturing nanostraws and compositions were known as evidenced by Melosh.
Regarding claims 9-11, in view of the indefiniteness described above, the claims are interpreted hereinafter as referring to the diameter in general. Melosh teaches nanostraws with diameters which meet the limitations of claims 9-11, e.g., 100 nm (“100 nm Nanostraw,” Fig. 3C) and 200 nm (“Cas9 protein into Jurkat cells centrifuged onto 200x1200 nm nanostraws,” [0052])
Regarding claims 13 and 16, Melosh teaches cargo comprising nucleic acid, protein, or mRNA (“use nanostraws to deliver biologically relevant molecules (cargo) such as DNA, RNA, proteins etc., into cells (including non-adherent cells) such as immune cells,” [0008]; “transferring a biologically relevant cargo, as mentioned above (e.g., a polynucleotide, such as DNA, mRNA, plasmid, etc.),” [0033]).
Regarding claim 17, Melosh teaches delivering the stem cells to a human patient (see at least “transferring biologically relevant cargo into the cells using nanostraws, and returning the cells back to the patient,” [0007]; Fig. 1; Fig. 4).
Regarding claim 23, in view of the indefiniteness described above, the claim is interpreted as requiring less than 5% of assayed genes in the primary stem cells to be nonspecifically activated when compared with untreated primary stem cells (“assaying for non-specific effects may include assaying expression for a group of genes (e.g., 1-1000, 1-100, 1-50, 1-10, 1-5, 1-3 genes)… Expression of genes in treated cells vs untreated cells can be undetectable, fewer than 1% different… fewer than 5% different,” ([0068]). Based on the phrasing of the claim, i.e., “further wherein,” the positively recited steps in claim 1 are assumed to achieve the intended result of nonspecifically activating fewer than 5% of assayed genes in the primary stem cells when compared with untreated primary stem cells. See MPEP 2111.04(I). This interpretation is supported by the specification, which illustrates that a nanostraw delivery method encompassed by the instant claims “does not perturb gene expression” ([0080]-[0082]).
Regarding claim 24, in view of the indefiniteness described above, the claim is interpreted as being equivalent to claim 23, which provides a standard which may meet the scope of “substantially normal gene expression activity.” Thus, claim 24 is obvious for the reasons described above as for claim 23.
Regarding claim 25, in view of the indefiniteness described above, the claim is interpreted as encompassing compounds within the scope outlined in paragraph [0108], i.e., “cell penetrating peptides, proteins, mRNA, siRNA, miRNA, sugars, DNA, small molecules, and cardiac specific transcription factors.” Melosh teaches cargos which meet this scope (“use nanostraws to deliver biologically relevant molecules (cargo) such as DNA, RNA, proteins etc., into cells (including non-adherent cells) such as immune cells,” [0008]; “transferring a biologically relevant cargo, as mentioned above (e.g., a polynucleotide, such as DNA, mRNA, plasmid, etc.),” [0033]).
Regarding claim 26, Melosh teaches the cells are driven into contact with the plurality of nanostraws within 24 hours of isolation (“the method may be very quick. For example, the steps of withdrawing, placing, applying and transferring are performed continuously over a period of less than 3 hours (e.g., less than 2 hours, less than 1 hour, etc.),” [0035]; [0007]).
Regarding claim 27, it is noted that no engrafting (i.e., transplantation) step is actually required of the claim. The phrase “A method of enhancing engraftment” is interpreted as encompassing methods which enhance engraftment potential of primary stem cells relative to another method of preparing primary stem cells intended to be used for engraftment purposes (e.g., isolation and expansion ex vivo, general electroporation, or transduction). The example in the specification which exemplifies the instantly claimed method demonstrates that primary stem cells delivered GFP mRNA via nanostraws have enhanced engraftment (as assessed by number of cells 4 months post transplantation) relative to cells delivered GFP mRNA via conventional electroporation ([0083]; Fig. 3). Thus, based on the specification, nanostraw delivery of a cargo encompassed by the scope of “one or more compounds to enhance engraftment” as interpreted above in paragraph 34, e.g., GFP mRNA, is sufficient to generate the outcome of the method, i.e., “enhancing engraftment.” The method rendered obvious over Melosh and Tay meets each limitation of claim 27 for the reasons described above. Accordingly, the obvious method is assumed to generate the outcome of the method, i.e., “enhancing engraftment.”
Claim Rejections - 35 USC § 103 – Melosh and Tay in further view of Humbert
Claims 4, 12, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Melosh (Melosh et al., 5 December 2019, US 2019/0365803 A1) and Tay (Tay, A., 6 July 2020, ACS Nano 2020, 14, pg. 7714-7721) as applied to claims 1-3, 5, 7-11, 13, 16-17, and 23-27, in further view of Humbert (Humbert et al., 31 July 2019, Science Translational Medicine, 11, eaaw3768 (2019), pg. 1-13).
The teachings of Melosh and Tay are described above and applied as to claims 1-3, 5, 7-11, 13, 16-17, and 23-27 above. As described therein, in Melosh’s method, cells are isolated from a human patient, delivered cargo from nanostraws via a pulsed electrical field, and then transferred back to the patient (see at least [0007]; Fig. 1; Fig. 4). Melosh also teaches the use of primary blood cells (see at least Abstract, Fig. 2; “cells may be any appropriate cell type (e.g., blood cells),” [0034]; [0055]). Tay also teaches that “[n]anostructures can serve as a universal delivery tool for diverse cell types because their mechanism does not depend on highly biological specific machineries” (pg. 7716-7717). Tay teaches that “the nanostraw electroporation platform” has been used successfully to “transfect[] primary cells such as stem cells” (pg. 7717, left col,; Fig. 2B). Tay also teaches that nanostructures are “agnostic to cargo types and are cable of delivering multiple cargo species simultaneously” (pg. 7717, right col.). Tay teaches that nanostructures “offer better efficiency and lower cell perturbation than conventional viral, biochemical, and electroporation transfection techniques” (Abstract).
Neither Melosh nor Tay teach that the primary stem cells are hematopoietic stem cells, or CD34+ hematopoietic stem cells as required of instant claims 4 and 12, respectively, or that the cells are delivered to the bone marrow of a human patient as required of instant claim 19. It is noted that “delivering… to the bone marrow” is interpreted as any method of delivery which results in the cells reaching the bone marrow, e.g., systemic injection (“mice were injected… into the tail vein. Bone marrow and peripheral blood were analyzed for engraftment,” [0101]).
Humbert teaches a method designed to treat hemoglobinopathies, wherein the method comprises isolating CD34+ hematopoietic stem cells from a patient, delivering a biologically relevant cargo (i.e., CRISPR-Cas9 RNP) to the cells via conventional electroporation, and then transferring the engineered CD34+ cells back to the patient so that the cells reach the bone marrow (“we used a nonhuman primate (NHP) autologous transplantation model to assess the curative potential of this approach for hemoglobinopathies using gene editing of hematopoietic stem and progenitor cells,” pg. 1, right col.; “we transplanted a first cohort of three rhesus macaques with CRISPR-Cas9-treated bone marrow (BM)-enriched CD34+ HSPCs. Autologous CD34+ cells were electroporated with CRISPR-Cas9 RNPs as described above.” pg. 3, left col.; “We sampled the BM of transplanted animals infused with CRISPR-Cas9-modified CD34+… cells about 6 months after treatment… the gene-edited CD34+ population… are capable of homing and repopulation the BM stem cell compartment,” pg. 5). Humbert teaches that their method should “help facilitate the clinical translation of HSPC-based editing approaches for hemoglobinopathies and other genetic disease” (pg. 1, right col.).
Regarding claims 4 and 12, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the method rendered obvious over Melosh and Tay to primary CD34+ hematopoietic stem cells in view of Humbert. It would have amounted to substituting the primary stem cell type of Melosh for another known primary stem cell type, by known means to yield predictable results. The skilled artisan would have had a reasonable expectation of success in applying the obvious method to primary CD34+ hematopoietic stem cells because Tay teaches that nanostructures are universal for diverse cell types and agnostic with respect to cargo, and both Melosh and Tay provide evidence that the method can be used on primary stem cells. Furthermore, Humbert demonstrates that conventional electroporation can be used to produce engineered primary CD34+ hematopoietic stem cells capable of engrafting in the bone marrow of a patient. Thus, the skilled artisan would reasonably predict that the obvious method would work on the cells of Humbert, given its many benefits relative to conventional electroporation taught by Tay. The skilled artisan would have recognized the therapeutic value of using primary CD34+ hematopoietic stem cells based on Humbert, and also would have recognized that the obvious method could potentially “offer better efficiency and lower cell perturbation than conventional viral, biochemical, and electroporation transfection techniques,” thereby motivating the use of the cells in the obvious method.
Regarding claim 19, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have delivered the cells in the method rendered obvious above to the bone marrow of a patient in view of Humbert. It would have amounted to delivering cells to a known location relevant for therapeutic purposes, by known means to yield predictable results. The skilled artisan would have had a reasonable expectation of success in delivering the cells to the bone marrow of a patient because the means to successfully deliver cells to the bone marrow were known as evidenced by Humbert. The skilled artisan would have recognized the therapeutic value of delivering primary CD34+ hematopoietic stem cells to the bone marrow based on Humbert, thereby motivating use of Humbert’s delivery location.
Double Patenting
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
U.S. Patent No. 10,815,499 B2
Claims 1-3, 5, 7-11, 13, 16-17, and 23-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,815,499 B2 in view of Melosh (Melosh et al., 5 December 2019, US 2019/0365803 A1) and Tay (Tay, A., 6 July 2020, ACS Nano 2020, 14, pg. 7714-7721).
Patented claim 1 recites “A method of delivering a biologically relevant cargo into non-adherent cells, the method comprising: applying an external force to drive a suspension of cells into contact with a plurality of nano straws, wherein the plurality of nanostraws extend through a substrate and a distance beyond the substrate that is between 2 nm and 50 μm, further wherein the plurality of nano straws are hollow and have an inner diameter of between 5 nm -1500 nm; and driving the cargo from the nanostraws into an intracellular volume of the cells so that at least 20% of the cells take up the biologically relevant cargo.”
Patented claim 3 recites that “the external force comprises centrifuging.”
Patented claim 5 recites that “driving the cargo comprises apply a pulsed electrical field.”
Patented claim 13 recites “A method of delivering a biologically relevant cargo into non-adherent cells, the method comprising: applying an external force to drive a suspension of cells into contact with a plurality of nano straws, wherein the plurality of nanostraws extend through a porous structure and a distance beyond the porous structure that is between 2 nm and 50 μm, further wherein the plurality of nano straws are hollow and have an inner diameter of between 5 nm-1500 nm; applying a pulsed electrical field to drive the cargo from the nanostraws into an intracellular volume of the cells so that at least 25% of the cells take up the biologically relevant cargo; and separating the cells from the nanostraws.”
The patented and instant claims are directed to methods of delivering a biologically relevant cargo into cells, wherein an external force, e.g., centrifugation, drives the cells into contact with a plurality of nanostraws, and driving the cargo from the nanostraws to an intracellular volume of the cells, e.g., via a pulsed electrical field, wherein at least 20% of the cells take up the cargo.
Relative to instant claims 1-3, 5, 7-11, 13, 16-17, and 26, the patented claims are generic. Specifically, the patented claims recite ranges which encompass, but do not explicitly recite, I) the distance through which the nanostraws must extend through the substrate, and II) the inner diameter or overall diameter of the nanostraws. The patented claims are also silent as to the voltage of the pulsed electrical field used in the method. The patented claims recite “non-adherent cells,” but do not recite “primary stem cells” as required of the instant claims. The patented claims while reciting that the cells are separated from the nanostraws by “flowing a solution over the cells,” do not state that a cellular media (i.e., a “solution”) is changed within 20 minutes of applying the electrical field. The patented claims do not recite a density for the nanostraws on the substrate. The patented claims do not recite performing the method within 24 hours of isolating the cells, or delivering the cells to an animal or human patient. The patented claims, while reciting that the cargo comprises “nucleic acids or proteins,” do not recite that the cargo may be “mRNA or siRNA.”
The teachings of Melosh and Tay are described above and applied hereinafter. Regarding instant claims 1-3, 5, 7-11, 13, 16-17, and 26, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the nanostraw-based delivery method of the patented claims, with the parameters of the prior art for substantially identical methods taught by Melosh and Tay. It would have amounted to modifying a known method, by known means to yield predictable results. As described in the preceding paragraphs, the parameters of the instant claims are taught or obvious over Melosh’s and Tay’s teachings regarding substantially identical methods to the patented claims. Thus, the skilled artisan could have applied the parameters of the prior art to the patented claims with a reasonable expectation of success. The skilled artisan would have been motivated to apply the parameters of the prior art to the patented claims because the patented claims are generic; the skilled artisan would apply parameters taught or obvious over the prior art in order to practice nanostraw-based delivery methods which, based on Tay, provide advantages over many other delivery means available in the art.
Regarding instant claims 23-24, as described above, claim 23 is interpreted as requiring less than 5% of assayed genes in the primary stem cells to be nonspecifically activated when compared with untreated primary stem cells (“assaying for non-specific effects may include assaying expression for a group of genes (e.g., 1-1000, 1-100, 1-50, 1-10, 1-5, 1-3 genes)… Expression of genes in treated cells vs untreated cells can be undetectable, fewer than 1% different… fewer than 5% different,” ([0068]). Claim 24 is interpreted as being equivalent to claim 23, which provides a standard which may meet the scope of “substantially normal gene expression activity.”
Based on the phrasing of the claims, i.e., “further wherein,” the positively recited steps in claim 1 are assumed to achieve the intended result of nonspecifically activating fewer than 5% of assayed genes in the primary stem cells when compared with untreated primary stem cells. See MPEP 2111.04(I). This interpretation is supported by the specification, which illustrates that a nanostraw delivery method encompassed by the instant claims “does not perturb gene expression” ([0080]-[0082]).
Regarding instant claim 25, the patented claims recite cargo which meet the scope of “compounds to enhance engraftment” as interpreted in paragraph 34 above
Regarding instant claim 27, as described above, no engrafting (i.e., transplantation) step is actually required of the claim. The phrase “A method of enhancing engraftment” is interpreted as encompassing methods which enhance engraftment potential of primary stem cells relative to another method of preparing primary stem cells intended to be used for engraftment purposes (e.g., isolation and expansion ex vivo, general electroporation, or transduction). The example in the specification which exemplifies the instantly claimed method demonstrates that primary stem cells delivered GFP mRNA via nanostraws have enhanced engraftment (as assessed by number of cells 4 months post transplantation) relative to cells delivered GFP mRNA via electroporation ([0083]; Fig. 3). Thus, based on the specification, nanostraw delivery of a cargo encompassed by the scope of “one or more compounds to enhance engraftment” as interpreted above in paragraph 34, e.g., GFP mRNA, is sufficient to generate the outcome of the method, i.e., “enhancing engraftment.” The method rendered obvious over the patented claims in view of Melosh and Tay meets each limitation of the instant claims for the reasons described above. Accordingly, the obvious method is assumed to generate the outcome of the instant claim, i.e., “enhancing engraftment.”
Claims 4, 12, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,815,499 B2 in view of Melosh (Melosh et al., 5 December 2019, US 2019/0365803 A1) and Tay (Tay, A., 6 July 2020, ACS Nano 2020, 14, pg. 7714-7721), in further view of Humbert (Humbert et al., 31 July 2019, Science Translational Medicine, 11, eaaw3768 (2019), pg. 1-13).
The patented claims do not recite hematopoietic stem cells, or CD34+ hematopoietic stem cells as required of instant claims 4 and 12, respectively, or that the cells are delivered to the bone marrow of the human patient as required of instant claim 19.
The teachings of Melosh, Tay, and Humbert are described above and applied hereinafter. The obviousness of applying the method rendered obvious above over the patented claims, Melosh, and Tay, to primary CD34+ hematopoietic stem cells in view of Humbert, is described above in paragraph 41 and applied hereinafter. The obviousness of delivering the cells in the obvious method to the bone marrow of a patient in view of Humbert is described above in paragraph 42 and applied hereinafter.
Conclusion
No claims are allowed.
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/JENNA L PERSONS/Examiner, Art Unit 1637
/Soren Harward/Primary Examiner, TC 1600