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
In the reply filed on 09/02/2026, Applicant has amended claims 26, 33, 40, 42, 50 and 55, has newly canceled claims 1, 5, 15, 19, 20, 170, and 172, and has added new claims 176-181.
Claim Status
Claims 26, 29-30, 33, 40, 42, 44, 50, 55, 86-87, 110, 129, 146 and 176-181 are pending and are considered on the merits.
Claims 26, 33, 40 and 55 are independent claims.
Withdrawn Specification Objections
The prior objection to the disclosure because of embedded hyperlink and/or other form of browser-executable code is withdrawn in light of Applicant’s amendment to the specification to remove the codes.
Withdrawn Claim Objections
The prior objection to claim 42 because of a typographical error is withdrawn in light of Applicant’s amendment to the claim.
New Claim Objections
Claim 181 is objected to because of the following informalities:
Claim 181 recites the phrase “the N/P ratio”. An abbreviation (i.e., N/P) should be preceded in its first occurrence by the specific identity of the entity which said abbreviation is intended to represent. Thereafter, the use of the abbreviation in the claims will be understood.
Appropriate correction is required.
Withdrawn Claim Rejections - 35 USC § 112
The prior rejection of claim 33 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for insufficient antecedent basis is withdrawn in light of Applicant’s amendment to claim 33.
Withdrawn Claim Rejections - 35 USC § 102
The prior rejection of claims 26, 40, 42, 44 and 87 under 35 U.S.C. 102 (a)(1) as being anticipated by Ju et al., (Biomaterials.2019;217:119298, p. 1-14, IDS 03/07/2025) is withdrawn in light of Applicant’s amendment to claims 26 and 40 to recite new limitations that the cell is a human T cell or a human NK cell, which is not taught by Ju.
The prior rejection of claim 33 under 35 U.S.C. 102 (a)(1) as being anticipated by Shang et al., (Laboratory Investigation. 2004; 84: 332-341) is withdrawn in light of Applicant’s amendment to claim 33 to recite new limitations that the cell is a human T cell or a human NK cell, which is not taught by Shang.
Withdrawn Claim Rejections - 35 USC § 103
The prior rejection of claims 26, 29, 30, 40, 42, 44, 50, 55, 86, 87, 110, 129 and 146 under 35 U.S.C. 103 as being unpatentable over Kalaitzidis et al., (WO 2019/097305 A2, published May 2019, cited in IDS 07/10/2025) in view of Ho et al., (WO 2019/067999, published on April 4, 2019, cited in IDS 03/07/2025) is withdrawn in light of Applicant’s amendment to claims 26 and 40 to recite new limitations that “the cell is a human T cell or a human NK cell”, and amendment to claim 55 to recite new limitation an in vitro-cultured “human” T cell because the new limitations have not been previously examined.
New 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 26, 29-30, 40, 42, 44, 50, 55, 86-87, 110, 129, 146, 176 and 178-181 are rejected under 35 U.S.C. 103 as being unpatentable over Kalaitzidis et al., (WO 2019/097305 A2, published May 2019, cited in IDS 07/10/2025) in view of Billingsley et al., (Nano Lett. 2020 January 17; 20: 1578-1589, cited in IDS 02/01/2024) and Ho et al., (WO 2019/067999, published on April 4, 2019, cited in IDS 03/07/2025).
With respect to independent claims 26, 40 and 55, it is noted that under the broadest reasonable interpretation, the limitations of contacting the human T cells with at least a first LNP composition and a second LNP composition or additional LNP compositions in claim 26 (a), claim 40 (a) and claim 55 (a) and (c), encompass the scope of contacting the cells with a mixture of LNP compositions. Furthermore, it is noted that the claims merely recite the limitation “comprising the steps of”, thus encompass the steps being carried out in any order and being carried out simultaneously. Accordingly, claim 55 is examined as the method comprising performing step (b) first, and then steps (a) and (c) simultaneously thereafter, and step (d) the last. It is noted that since steps (a) and (c) are carried out simultaneously, i.e., contacting the activated T cell with two LNP compositions recited in (a) and two recited in (c), steps (a) and (c) in claim 55 are examined as contacting the activated T cell with a mixture of four LNP compositions.
Kalaitzidis teaches a method of producing multiple genome edits in an in vitro-cultured human T cell or a population of human T cells (e.g., p. 35, section “Human Cells”, also see e.g., abstract and the figure in the front page), thus teaches the preamble of claims 26, 40 and 55.
In regard to step (b) of claim 55 directed to activating the T cell in vitro, Kalaitzidis teaches primary human T cells are isolated and incubated with Human T-Activator CD3/CD28 Dynabeads (Example 2, p. 153, last para), thus teaches activating the T cell in vitro.
In regard to step (a) in claim 26, step (a) in claim 40, and steps (a) & (c) in claim 55, directed to contacting the activated T cell with a mixture of four compositions comprising different gRNAs, Kalaitzidis teaches the activated T cells are electroporated with ribonucleoproteins (RNPs) comprising Cas9 and sgRNAs (see Example 2, p. 154, para 2). Kalaitzidis teaches for the knockout of 2 or more genes and their protein products in the same cell (multiplex editing), each of Cas9 pre-complexed individually with sgRNAs is added to the nucleofection mix (p. 160, Example 6 “Multiplex editing in cells), and teaches the gRNAs are directed to multiple targets including TRAC, B2M, CD3ε, CD52, CIITA and AAVS1, and exemplifies a triple gene knockout TRAC, B2M, and CIITA (Example 6, p. 160-161). Thus, Kalaitzidis teaches or suggests a step of contacting the activated T cell with a mixture of four RNP compositions comprising four different gRNAs targeting four different genes.
However, Kalaitzidis does not exemplify lipid nanoparticle compositions to deliver the genome editing compositions in the working examples.
Nevertheless, Kalaitzidis teaches polynucleotides, such as guide RNA, sgRNA and mRNA encoding an endonuclease, and endonuclease polypeptide, may be delivered to a cell by a lipid nanoparticle (LNP) (e.g., p. 82, para 2 and para 4 – p. 83), and teaches “In some embodiments, Cas9 mRNA, sgRNA targeting one or two loci in target gene, and donor DNA is each separately formulated into lipid nanoparticles, or are all co-formulated into one lipid nanoparticle, or co-formulated into two or more lipid nanoparticles” (e.g., p. 85), thus suggests LNPs may be used to deliver the genome editing compositions to the T cells.
Regarding LNPs effectively delivering nucleic acids to human T cells, Billingsley teaches a method for ionizable lipid nanoparticle (LNP)-mediated mRNA delivery for human CAR T cell engineering (e.g., title, abstract). Billingsley teaches to formulate LNPs, ionizable lipids having polyamine cores (i.e., amine lipid) are combined with cholesterol, dioleoylphosphatidylethanolamine (DOPE) and lipid-anchored polyethylene glycol (C14-PEG) (p. 1580, right col) and then are mixed with mRNA (e.g., luciferase mRNA or CAR mRNA) to deliver the mRNAs to human T cell line cells and human primary T cells (e.g., p. 1581, right col. - p. 1583). Billingsley teaches LNPs deliver CAR mRNA as effectively as electroporation to human primary T cells with lower cytotoxicity (see e.g., p. 1584 and see Fig 5A, 5E for expression and tumor killing and Fig 5D for higher viability). Thus, Billingsley teaches LNPs can effectively deliver exogenous nucleic acids to human T cells with lower cytotoxicity than electroporation.
Regarding LNPs delivering CRISPR-Cas9 complex to human cells, Ho teaches an in vitro method of delivering genome editing compositions using lipid nanoparticles and teaches the disclosure relates to modifying a gene sequence using a CRISPR-Cas9 complex (e.g., RNP complex) that is delivered by lipid nanoparticles (e.g., abstract and example of LNP delivering Cas9 mRNAs and sgRNA to human CD34+ bone marrow cells in p. 65). Ho teaches the LNP transfection may reduce HSPC or CD34+ cell death as compared to known technologies like electroporation, and post-transfection cell survival is at least 60%, 70%, 80%, 90%, or 95% ([0023]).
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 multiple genome edits in in vitro-cultured human T cells by electroporation-mediated delivery of genome editing compositions exemplified by Kalaitzidis, by substituting the electroporation technology with lipid nanoparticle-mediated delivery of CRISPR-Cas9 compositions as suggested by Kalaitzidis, Billingsley and Ho with a reasonable expectation of success. Since Kalaitzidis suggests LNPs may be used to deliver the genome editing compositions to the T cells (see above), since Billingsley teaches LNPs can effectively deliver exogenous nucleic acids to human T cells with lower cytotoxicity than electroporation (see above), and since Ho teaches LNPs may deliver genome editing compositions such as CRISPR-Cas9 complex to human suspension cells with reduced cell death and higher post-transfection cell survival being up to 95% ([0023]), one of ordinary skill in the art would have had a reason to substitute LNP-mediated delivery of genome editing compositions for electroporation to human T cells in order to effectively deliver genome editing compositions to human T cells with reduced cytotoxicity and increased post-transfection cell survival.
In regard to step (b) in claim 26, step (b-1) in claim 40, and step (d) in claim 55, directed to expanding the T cells in vitro, Kalaitzidis teaches the BCMA-CAR-T cells that are TCR and B2M double knockout (TCR-/B2M-/CAR+) are expanded in cell culture medium in the presence of cytokines (see Fig. 53 and p. 17 Fig. 53 legend), thus teaches the T cells are expanded thereby producing multiple genome edits in the T cell.
With respect to claim 29 directed to the genome editing tool comprising a nucleic acid encoding an RNA-guided DNA binding agent, and claim 176 directed to the genome editing tool comprising a nucleic acid encoding a base editor, Kalaitzidis teaches mRNA (or DNA) encoding an endonuclease (i.e., a base editor, see e.g., p. 74, para 3; p. 76, para 2) and teaches mRNA encoding an endonuclease may be delivered to a cell by a LNP (p. 82, para 4). Ho teaches LNP compositions that include a Cas nuclease mRNA (e.g., [0042]). Thus, both Kalaitzidis and Ho teach one of the nucleic acid genome editing tools comprises a nucleic acid (e.g., mRNA) encoding an RNA-guided DNA binding agent or a base editor (i.e., a Cas nuclease).
With respect to claim 30 directed to a donor nucleic acid for insertion in a target sequence, claim 86 directed to the genome editing tool comprising a donor nucleic acid, and claim 110 directed to contacting the cell with a donor nucleic acid that comprises regions having homology with corresponding regions of a TRAC locus, Kalaitzidis teaches the method comprises delivering to a T cell a composition comprising a RNA-guided nuclease, a gRNA targeting a TRAC gene, a gRNA targeting a B2M gene, and a vector comprising a donor template that comprises a nucleic acid encoding a CAR, wherein the nucleic acid encoding the CAR is flanked by left and right homology arms to the TRAC gene locus (e.g., p. 4, para 2, reference claim 66, and Fig 13B “KO TCR/KI CAR”), thus teaches a donor nucleic acid (a CAR template) for insertion in a target sequence (e.g., the TRAC locus) in claim 30, the genome editing tool comprises a donor nucleic acid in claim 86 and the donor nucleic acid has flanking homology arms in claim 110.
With respect to claim 42 directed to the genome editing tool comprising a guide RNA, claim 44 directed to the LNP compositions comprising an RNA-guided DNA binding agent, and claim 87 directed to the genome editing tool comprising an RNA-guided DNA binding agent, as stated supra, Kalaitzidis teaches the T cells are transfected with ribonucleoproteins comprising Cas9 (i.e., an RNA-guided DNA binding agent) and sgRNAs (Example 2, p. 154, para 2).
With respect to claim 50, as stated supra, both Kalaitzidis and Billingsley teach the human T cell in the LNP-mediated gene delivery (e.g., Kalaitzidis, Example 2, p. 154, para 2 and Billingsley, p. 1581, right col. - p. 1583).
With respect to claim 129 directed to the cells being T cells and at least 95% of the cells comprising a genome edit of an endogenous TCR, as stated supra, Kalaitzidis teaches the cells are T cells (Example 2, p. 154, para 2), and in one embodiment, Figure 51 shows flow cytometry graphs demonstrating that 95.5% of the gene edited cells are TCR negative before further enrichment (Figure 51 and legend in p. 17). Billingsley teaches LNPs deliver CAR mRNA as effectively as electroporation to human primary T cells with lower cytotoxicity (see e.g., p. 1584 and see Fig 5A, 5E for comparable CAR expression and tumor killing). Thus, one of ordinary skill in the art would have expected that LNP-mediated delivery to human T cells would result in at least 95% of the human T cells comprising a genome edit of an endogenous TCR.
With respect to claims 146 and 178-181 directed to the LNP compositions and molar percentages, Kalaitzidis teaches the LNPs may be made from cationic, anionic, or neutral lipids, and that neutral lipids, such as DOPE or cholesterol, may be included in LNPs as 'helper lipids' to enhance transfection activity and nanoparticle stability (p. 82, lines 24-26). Kalaitzidis teaches examples of cationic lipids such as DLin-MC3-DMA which is an amine lipid, and teaches examples of PEG-modified lipids such as PEG-DMG, thus teaches a PEG lipid (p. 83, para 1). Thus, Kalaitzidis suggests the LNP composition comprising an amine lipid, a helper lipid and a PEG lipid in claim 146. Billingsley teaches to formulate LNPs, ionizable lipid (i.e., an amine lipid), 1,2-distearoyl-snglycero-3-phosphoe-thanolamine (DOPE) (i.e., a neutral lipid), cholesterol (i.e., a helper lipid), and lipid-anchored polyethylene glycol (PEG) (i.e., a PEG lipid) components are combined at a molar ratio of 35%, 16%, 46.5%, and 2.5%, respectively (e.g., p. 1585, left col, para “Lipid Nanoparticle (LNP) Formulation”, within the claimed molar ratios), thus teaches claims 146 and 180. Ho teaches an LNP composition comprising the mRNA, an amine lipid, a helper lipid, a neutral lipid, and a PEG lipid (e.g., p. 3, para 1), related to claim 146. Ho teaches in certain compositions, the amine lipid is Lipid A, the helper lipid is cholesterol, the stealth lipid is PEG2k-DMG (e.g., [00159], thus teaches claim 178), the neutral lipid is DSPC (e.g., [00159], thus teaches claim 179). Ho teaches in one embodiment, the mol-% of the amine lipid may be from about 30 mol-% to about 60 mol-% (e.g., [00160]), the mol-% of the neutral lipid may be from about 5 mol-% to about 15 mol-% (e.g., [00161]), the mol-% of the helper lipid may be from about 20 mol-% to about 60 mol-% (e.g., [00162]), the mol-% of the PEG lipid may be from about 2 mol-% to about 4 mol-% and may be about 2.5 mol-% (e.g., [00163]), overlapping, encompassing or within the claimed range in claim 180. Ho teaches in some embodiments, the N/P ratio is about 3 to 10, about 5-7 and may be 6 (e.g., [00165]), thus teaches claim 181.
Accordingly, one of ordinary skill in the art would have chosen the taught components in the taught molar ratios as suggested by Kalaitzidis, Billingsley and Ho with a reasonable expectation of success. One of ordinary skill in the art would have had a reason to do so since Kalaitzidis suggests LNPs with the claimed components may be used to deliver the genome editing compositions to the T cells (see above), since Billingsley reduced to practice an LNP with the claimed components in the claimed molar ratios that can effectively deliver exogenous nucleic acids to human T cells with lower cytotoxicity (see above), and since Ho reduced to practice an LNP with the claimed components and overlapping the claimed molar ratios that may deliver genome editing compositions such as CRISPR-Cas9 complex to human cells with reduced cell death and higher post-transfection cell survival being up to 95% ([0023]). Regarding the molar ratio ranges in claim 180, notably, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It is a routine procedure to optimize component amounts to arrive at an optimal product that is superior for its intended use, since it has been held where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See M.P.E.P. §2144.05.
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.
Response to Traversal:
Applicant’s arguments filed on 09/02/2026 are acknowledged.
Applicant argues that (1) Ju does not disclose editing of human cells, thus amended claims 26 and 40, and claims 42, 44, and 87, which depend from claim 26 or 40, are all novel over Ju (Remarks, p. 9).
Applicant’s argument has been fully considered and it is persuasive. Therefore, the prior rejection by Ju has been withdrawn. However, as necessitated by amendment, a new ground of rejection has been made over Kalaitzidis in view of Billingsley and Ho, as discussed above.
Applicant argues that (2) Applicant disagree with the prior 103 rejection, but solely to expedite prosecution and without acquiescing to the propriety of the rejection, claim 26 is amended to recite new limitations that "the cell is a human T cell or a human NK cell," claim 40 is amended to recite new limitations that "the cells comprise human T cells or human NK cells," and claim 55 is amended to recite new limitation "an in vitro-cultured ‘human’ T cell." (Remarks, p. 11). It is noted that the new limitations have not been previously examined.
Applicant’s argument has been fully considered and it is persuasive. Therefore, the prior rejection over Kalaitzidis in view of Ho has been withdrawn. However, as necessitated by amendment, a new ground of rejection has been made over Kalaitzidis in view of Billingsley and Ho, as discussed above.
Applicant argues that (3) neither Kalaitzidis nor Ho provides motivation to substitute electroporation with LNPs or reasonable expectation of success because Ho is directed to LNP transfection in stem cells such as HSPCs. One of ordinary skill in the art would have been concerned that transfection methods and outcomes are cell type specific (Remarks, p. 11-12).
Applicant’s argument has been fully considered but it is not persuasive.
Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, as stated in the prior and instant rejection, primary reference Kalaitzidis teaches “the principle targets for gene editing are human cells. For example, primary human T cells” (p. 35), and teaches polynucleotides, such as guide RNA, sgRNA and mRNA encoding an endonuclease, and endonuclease polypeptide, may be delivered to a cell by a lipid nanoparticle (LNP) (e.g., p. 82, para 2 and para 4 – p. 83), and teaches “In some embodiments, Cas9 mRNA, sgRNA targeting one or two loci in target gene, and donor DNA is each separately formulated into lipid nanoparticles, or are all co-formulated into one lipid nanoparticle, or co-formulated into two or more lipid nanoparticles” (e.g., p. 85). It is noted that Kalaitzidis uses almost two pages (p. 82, para 2 – p. 83 and last two full paragraphs of p. 85) describing LNPs (and components and molar ratios) in delivering genome editing tools to target cells, i.e., T cells. Thus, Kalaitzidis alone suggests LNPs may be used to deliver the genome editing compositions to the T cells. One of ordinary skill in the art would have chosen LNPs to deliver the compositions to the T cells as suggested by Kalaitzidis with a reasonable expectation of success. Ho is cited to reduce to practice an LNP to deliver genome editing compositions to suspension cells (e.g., HSPCs) with reduced cell death and increased cell survival as compared to electroporation-mediated delivery (exemplifies in Kalaitzidis). Thus, one of ordinary skill in the art would have substituted the electroporation approach that is exemplified in Kalaitzidis, with LNP-mediated delivery to T cells to obtain reduced cell death as suggested by Kalaitzidis and Ho with a reasonable expectation of success.
Furthermore, as necessitated by amendment, a new ground of rejection has been made over Kalaitzidis in view of Billingsley and Ho, as discussed above. Specifically, Billingsley reduces to practice a method for ionizable lipid nanoparticle (LNP)-mediated mRNA delivery for human CAR T cell engineering and teaches LNPs deliver CAR mRNA as effectively as electroporation to human primary T cells with lower cytotoxicity (see above). Thus, one of ordinary skill in the art would have had a reason to substitute the electroporation approach that is exemplified in Kalaitzidis, with LNP-mediated delivery to human T cells to obtain effective delivery with lower cytotoxicity as suggested by Kalaitzidis, Billingsley and Ho with a reasonable expectation of success.
Applicant argues that (4) Example 3 of the instant application discloses results that demonstrate unexpected reductions in target-to-target translocations and a significant improvement in expansion potential compared to cells edited using electroporation (Remarks, p. 12-13).
Applicant’s argument has been fully considered but it is not persuasive.
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Regarding the significant improvement in expansion potential than electroporation, as stated supra, Billingsley teaches LNPs deliver CAR mRNA as effectively as electroporation to human primary T cells with lower cytotoxicity (see e.g., p. 1584 and see Fig 5D attached for higher viability). Thus, one of ordinary skill in the art would have expected that the higher viability in LNP groups (about 2.5-fold higher than the electroporation (EP) group) would lead to significant improvement in fold expansion than electroporation as suggested by Billingsley. Accordingly, the significant improvement in expansion potential argued by Applicant would be expected by the prior art Billingsley.
Regarding the purported unexpected reductions in target-to-target translocations, as a first matter, MPEP § 2145 states that a showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997) (conclusory statements that claimed compound possesses unusually low immune response or unexpected biological activity that is unsupported by comparative data held insufficient to overcome prima facie case of obviousness). In the instant case, although Applicant sums the mean translocations from Table 16B (see Table in Remarks, p. 13), it is noted that (1) there is no statistical analysis on the data, thus Applicant does not provide factually supported objective evidence showing the difference in translocations (sum or individual) is statistically significant; and (2) the electroporation (EP) group only comprises mixture of RNPs (thus is simultaneous editing) but does not comprise electroporating individual RNP sequentially, thus Applicant’s argument regarding sequentially edited groups BF2.5 LNP, BF5 LNP, and AF LNP (Remarks, p. 13) is unsupported due to lack of side-by-side comparative data regarding sequential editing.
Furthermore, MPEP 716.02(d), states that unexpected results must be commensurate in scope with the claimed invention. In the instant case, the purported unexpected reductions in target-to-target translocations presented by the Applicant were studies performed with specific LNPs with specific lipid components in specific molar ratios ([00446]) mixed with specific gRNAs targeting a specific locus (TRAC or TRBC) in combination with AAV comprising specific homology arms homologous to TRAC locus ([00459]), and applying the LNPs and AAVs in a specific regimen to human T cells (see Table 11 attached below).
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This is not commensurate in scope with the claimed method of contacting the human T cell or human NK cell with at least a first LNP and a second LNP (comprising any lipid components in any molar ratios) that comprise different gRNAs (any gRNAs targeting any genes or loci) and a genome editing tool (without a donor sequence, or with any donor sequence comprising homology arms to any locus in any delivering construct), and applying the contacting in any order with any interval to produce multiple genome edits in the cell.
Claims 33 and 177 are rejected under 35 U.S.C. 103 as being unpatentable over Kalaitzidis et al., (WO 2019/097305 A2, published May 2019, cited in IDS 07/10/2025) in view of Billingsley et al., (Nano Lett. 2020 January 17; 20: 1578-1589, cited in IDS 02/01/2024).
With respect to claim 33, Kalaitzidis teaches a method of producing multiple genome edits in a population of in vitro-cultured human T cells (e.g., p. 35, section “Human Cells”, also see e.g., abstract and the figure in the front page). Kalaitzidis teaches polynucleotides, such as guide RNA, sgRNA and mRNA encoding an endonuclease, and endonuclease polypeptide, may be delivered to a cell by a lipid nanoparticle (LNP) (e.g., p. 82, para 2 and para 4 – p. 83). Thus, Kalaitzidis suggests a method of delivering LNP compositions to in vitro-cultured human T cells.
Kalaitzidis teaches “In some embodiments, Cas9 mRNA, sgRNA targeting one or two loci in target gene, and donor DNA is each separately formulated into lipid nanoparticles” (e.g., p. 85, suggesting individual LNP composition comprising each of Cas9 mRNA, sgRNA or donor DNA), and teaches “the site-directed polypeptide and genome-targeting nucleic acid may each be administered separately to a cell” (e.g., p. 83, para 3, suggesting Cas9, sgRNA and donor DNA are administered separately, which is equivalent to being administered sequentially to a cell). Thus, Kalaitzidis suggests the method comprises the steps of a) contacting the population of cells in vitro with a first LNP composition comprising a first nucleic acid (e.g., Cas9 mRNA), thereby producing a contacted population of cells, b) culturing the contacted population of cells in vitro (e.g., culturing the cells before administering another composition), thereby producing a population of cultured contacted cells, c) contacting the population of cultured contacted cells of step b) in vitro with at least a second LNP composition comprising a second nucleic acid (e.g., a sgRNA or a donor DNA), wherein the second nucleic acid is different from the first nucleic acid (e.g., a sgRNA vs. Cas9 mRNA).
However, Kalaitzidis does not exemplify using LNP compositions to deliver the genome editing compositions to human T cells in the working examples.
Billingsley teaches a method for ionizable lipid nanoparticle (LNP)-mediated mRNA delivery for human CAR T cell engineering (e.g., title, abstract). Billingsley teaches formulated LNPs are mixed with mRNA (e.g., luciferase mRNA or CAR mRNA) to deliver the mRNAs to human T cell line cells and human primary T cells (e.g., p. 1581, right col. - p. 1583). Billingsley teaches LNPs deliver CAR mRNA as effectively as electroporation to human primary T cells with lower cytotoxicity (see e.g., p. 1584 and see Fig 5A, 5E for expression and tumor killing and Fig 5D for higher viability). Thus, Billingsley teaches LNPs can effectively deliver exogenous nucleic acids to in vitro-cultured human T cells with lower cytotoxicity than electroporation.
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 multiple genome edits in in vitro-cultured human T cells by electroporation-mediated delivery of genome editing compositions exemplified by Kalaitzidis, by substituting the electroporation technology with lipid nanoparticle-mediated sequential delivery of genome editing compositions as suggested by Kalaitzidis and Billingsley with a reasonable expectation of success. Since Kalaitzidis suggests LNPs may be used to deliver the genome editing compositions to the human T cells sequentially (see above), and since Billingsley teaches LNPs can effectively deliver exogenous nucleic acids to human T cells with lower cytotoxicity than electroporation (see above), one of ordinary skill in the art would have had a reason to substitute LNP-mediated delivery of genome editing compositions for electroporation to human T cells in order to effectively deliver genome editing compositions to human T cells with reduced cytotoxicity.
In regard to the wherein clause in (i) directed to at least 70% of the cells are viable 24 hours after contact with an LNP composition, it must be noted that this wherein clause does not recite an active step in the claimed method, but only the results of contacting the population of cells with an LNP composition as suggested by Kalaitzidis and Billingsley. MPEP 2111.04 I states a whereby clause (or a wherein clause) “in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Therefore, this wherein clause does not provide any patentable weight in determining patentability of the claimed method. Nevertheless, Billingsley teaches LNPs deliver CAR mRNA to human primary T cells with lower cytotoxicity (see e.g., p. 1584 and see Fig 5D attached above for viability of at least 75%), thus makes obvious at least 70% of the human T cells are viable 24 hours after contact with an LNP composition.
With respect to claim 177 directed to the steps (a), (b) and (c) being performed sequentially, as stated supra, Kalaitzidis suggests Cas9, sgRNA and donor DNA are administered separately, which is equivalent to being administered sequentially to a cell (see above).
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.
Response to Traversal:
Applicant’s arguments filed on 09/02/2026 are acknowledged.
Applicant argues that Shang does not disclose editing of human cells, thus amended claim 33 is novel over Shang (Remarks, p. 10).
Applicant’s argument has been fully considered and it is persuasive. Therefore, the prior rejection by Shang has been withdrawn. However, as necessitated by amendment, a new ground of rejection has been made over Kalaitzidis in view of Billingsley, as discussed above.
Withdrawn Double Patenting Rejections
The prior rejection of claims 26, 29, 30, 33, 40, 42, 44, 50, 55, 86, 87, 110, 129 and 146 on the ground of nonstatutory double patenting as being unpatentable over claims 27-38 and 52-53 of US Patent No. 12,037,583 B2 (‘583) in view of Ho et al., (WO 2019/067999, published on April 4, 2019, cited in IDS 03/07/2025) is withdrawn in light of Applicant’s amendment to independent claims 26, 33, 40 and 55 to recite new limitations that have not been previously examined.
The prior provisional rejection of claims 26, 29, 30, 33, 40, 42, 44, 50, 55, 86, 87, 110, 129 and 146 on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 7-9, 11-14, 16, 18, 23, 26, 31, 33, 71, 76, 80 and 82 of US Application No. 18/980,643 (‘643) in view of Kalaitzidis et al., (WO 2019/097305 A2, published May 2019, cited in IDS 07/10/2025) and Ho et al., (WO 2019/067999, published on April 4, 2019, cited in IDS 03/07/2025) is withdrawn in light of Applicant’s amendment to independent claims 26, 33, 40 and 55 to recite new limitations that have not been previously examined.
The prior provisional rejection of claims 26, 29, 30, 33, 40, 42, 44, 50, 55, 86, 87, 110, 129 and 146 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 60, 63, 65, 67, 75, 94, 116 and 130 of US Application No. 18/287,239 (‘239) in view of Kalaitzidis et al., (WO 2019/097305 A2, published May 2019, cited in IDS 07/10/2025) is withdrawn in light of Applicant’s amendment to independent claims 26, 33, 40 and 55 to recite new limitations that have not been previously examined.
The prior provisional rejection of claims 26, 29, 30, 33, 40, 42, 44, 50, 55, 86, 87, 110, 129 and 146 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 51, 62, 65, 67, 69, 74, 76, 77 and 118 of US Application No. 18/287,229 (‘229) in view of Kalaitzidis et al., (WO 2019/097305 A2, published May 2019, cited in IDS 07/10/2025) is withdrawn in light of Applicant’s amendment to independent claims 26, 33, 40 and 55 to recite new limitations that have not been previously examined.
New 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 26, 29-30, 33, 40, 42, 44, 50, 55, 86-87, 110, 129, 146 and 176-181 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 27-38 and 52-53 of US Patent No. 12,037,583 B2 (‘583) in view of Billingsley et al., (Nano Lett. 2020 January 17; 20: 1578-1589, cited in IDS 02/01/2024) and Ho et al., (WO 2019/067999, published on April 4, 2019, cited in IDS 03/07/2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
Patented claims of ‘583 recite a method of altering a target sequence of a cell, comprising contacting the cell with a gRNA and a Cas9 molecule or a nucleic acid encoding a Cas9 molecule (reference claim 27), and if present, the one or more additional gRNA molecule(s) and template nucleic acid are introduced into the cell by electroporation (reference claim 29, related to multiple genome edits in instant claims 26, 29, 33, 40, 42, 44, 55, 87 and 176, and donor nucleic acid in instant claims 30, 86 and 110), the cell is a human cell (reference claim 30), the cell is a T cell (reference claim 32, related to instant claims 26, 33, 40, 55, 50 and 129), a method of modifying cells by reducing or eliminating expression of TCR and B2M and expanding said cells, and further eliminating CIITA (reference claims 52-53, related to instant claims 26, 33, 40 and 55, and claims 110 and 129). It is noted that the multiple genome edits recited in reference claims 29 and 52-53 encompass the scope of contacting the cells with multiple genome editing compositions and encompass the scope of contacting different compositions sequentially as being encompassed in instant claims 33, 55 and 177).
However, reference claims are silent on using lipid nanoparticles to deliver the genome editing compositions to the human T cells in instant independent claims 26, 33, 40 and 55, nor teach the composition of the lipid nanoparticles in instant claims 146 and 178-181.
Billingsley teaches a method for ionizable lipid nanoparticle (LNP)-mediated mRNA delivery for human CAR T cell engineering (e.g., title, abstract). Billingsley teaches formulated LNPs are mixed with mRNA (e.g., luciferase mRNA or CAR mRNA) to deliver the mRNAs to human T cell line cells and human primary T cells (e.g., p. 1581, right col. - p. 1583). Billingsley teaches LNPs deliver CAR mRNA as effectively as electroporation to human primary T cells with lower cytotoxicity (see e.g., p. 1584 and see Fig 5A, 5E for expression and tumor killing and Fig 5D for higher viability). Thus, Billingsley teaches LNPs can effectively deliver exogenous nucleic acids to in vitro-cultured human T cells with lower cytotoxicity than electroporation, related to instant claims 26, 33, 40 and 55. Billingsley teaches to formulate LNPs, ionizable lipid (i.e., an amine lipid), 1,2-distearoyl-snglycero-3-phosphoe-thanolamine (DOPE) (i.e., a neutral lipid), cholesterol (i.e., a helper lipid), and lipid-anchored polyethylene glycol (PEG) (i.e., a PEG lipid) components are combined at a molar ratio of 35%, 16%, 46.5%, and 2.5%, respectively (e.g., p. 1585, left col, para “Lipid Nanoparticle (LNP) Formulation”, within the claimed molar ratios), thus teaches instant claims 146 and 180.
Ho teaches an in vitro method of delivering genome editing compositions using lipid nanoparticles and teaches the disclosure relates to modifying a gene sequence using a CRISPR-Cas9 complex that is delivered by lipid nanoparticles (e.g., abstract and example of LNP Transfection of Human CD34+ Bone Marrow Cells in p. 65). Ho teaches the LNP transfection may reduce HSPC or CD34+ cell death as compared to known technologies like electroporation, and post-transfection cell survival is at least 60%, 70%, 80%, 90%, or 95% ([0023]). Ho teaches an LNP composition comprising the mRNA, an amine lipid, a helper lipid, a neutral lipid, and a PEG lipid (e.g., p. 3, para 1), related to claim 146. Ho teaches in certain compositions, the amine lipid is Lipid A, the helper lipid is cholesterol, the stealth lipid is PEG2k-DMG (e.g., [00159], thus teaches claim 178), the neutral lipid is DSPC (e.g., [00159], thus teaches claim 179). Ho teaches in one embodiment, the mol-% of the amine lipid may be from about 30 mol-% to about 60 mol-% (e.g., [00160]), the mol-% of the neutral lipid may be from about 5 mol-% to about 15 mol-% (e.g., [00161]), the mol-% of the helper lipid may be from about 20 mol-% to about 60 mol-% (e.g., [00162]), the mol-% of the PEG lipid may be from about 2 mol-% to about 4 mol-% and may be about 2.5 mol-% (e.g., [00163]), overlapping, encompassing or within the claimed range in claim 180. Ho teaches in some embodiments, the N/P ratio is about 3 to 10, about 5-7 and may be 6 (e.g., [00165]), thus teaches claim 181.
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 multiple genome edits in in vitro-cultured human T cells by electroporation-mediated delivery of genome editing compositions as recited in reference claims, by substituting the electroporation technology with lipid nanoparticle-mediated delivery of CRISPR-Cas9 complex as suggested by Billingsley and Ho with a reasonable expectation of success. Since Billingsley teaches LNPs can effectively deliver exogenous nucleic acids to in vitro-cultured human T cells with lower cytotoxicity than electroporation (see above) and since Ho teaches the LNP transfection may reduce cell death as compared to known technologies like electroporation with post-transfection cell survival being up to 95% ([0023]), one of ordinary skill in the art would have had a reason to substitute with LNP-mediated delivery of genome editing compositions to human T cells in order to reduce cell death and promote post-transfection cell survival. Furthermore, it would have also been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have performed the contacting cells with genome editing compositions sequentially as encompassed by reference claims since it is one of the only two options (sequentially or simultaneously), thus one of ordinary skill in the art would have immediately envisioned the taught option of sequentially contacting the cells with the compositions among the limited genus of options as encompassed by the reference claims.
Since the instant application claims are obvious over cited patent claims, in view of Billingsley and Ho, said claims are not patentably distinct.
New Provisional Double Patenting Rejections
Claims 26, 29-30, 33, 40, 42, 44, 50, 55, 86-87, 110, 129, 146 and 176-181 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 7-9, 11-14, 16, 18, 23, 26, 31, 33, 71, 76, 80 and 82 of US Application No. 18/980,643 (‘643) in view of Kalaitzidis et al., (WO 2019/097305 A2, published May 2019, cited in IDS 07/10/2025), Billingsley et al., (Nano Lett. 2020 January 17; 20: 1578-1589, cited in IDS 02/01/2024) and Ho et al., (WO 2019/067999, published on April 4, 2019, cited in IDS 03/07/2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
Copending claims in ‘643 recite a method of genetically modifying a cell, comprising (a) contacting the cell with a first genome editing tool comprising a first genomic editor and a gRNA that targets a genomic locus, and (b) contacting the cell with a second genome editing tool comprising a second genomic editor and a gRNA that targets a genomic locus, thereby producing at least two genomic edits in the cell (reference claim 1), the genomic editor comprising a cleavase, a nickase (reference claim 5), being Cas9 (reference claims 23, 26) the method further comprising contacting the cell with a nucleic acid encoding an exogenous gene (reference claim 8), further comprising culturing the cell thereby producing a population of cells comprising at least two genomic edits per cell (reference claim 12), the gRNA comprising at least two, at least three, at least four, at least five gRNAs that target different genomic loci (reference claim 33), the genomic editor and one, two, three, four, five or six of the at least one gRNA are contained in the same lipid nanoparticles (LNP). It is noted that the contacting a cell with different genome editing tools encompasses the scope of contacting different compositions sequentially as being encompassed in instant claims 33 and 55. Furthermore, it would have been obvious for one of ordinary skill in the art to have prepared separate lipid nanoparticles containing the genomic editor and each gRNA for the convenience of mixing and matching.
However, the copending claims are silent on the cell being a human T cell in instant independent claims 26, 33, 40 and 55, or the composition of the LNP in instant claims 146 and 178-181.
Nevertheless, copending claims cited a method for treating cancer by administering to a subject the cell of claim 76.
Kalaitzidis teaches a method of producing multiple genome edits in in vitro-cultured human T cells for universal cancer immunotherapy (see e.g., abstract and the figure in the front page), related to instant claims 26, 33, 40 and 55.
Billingsley teaches a method for ionizable lipid nanoparticle (LNP)-mediated mRNA delivery for human CAR T cell engineering (e.g., title, abstract). Billingsley teaches formulated LNPs are mixed with mRNA (e.g., luciferase mRNA or CAR mRNA) to deliver the mRNAs to human T cell line cells and human primary T cells (e.g., p. 1581, right col. - p. 1583). Billingsley teaches LNPs deliver CAR mRNA as effectively as electroporation to human primary T cells with lower cytotoxicity (see e.g., p. 1584 and see Fig 5A, 5E for expression and tumor killing and Fig 5D for higher viability). Thus, Billingsley teaches LNPs can effectively deliver exogenous nucleic acids to in vitro-cultured human T cells with lower cytotoxicity than electroporation, related to instant claims 26, 33, 40 and 55. Billingsley teaches to formulate LNPs, ionizable lipid (i.e., an amine lipid), 1,2-distearoyl-snglycero-3-phosphoe-thanolamine (DOPE) (i.e., a neutral lipid), cholesterol (i.e., a helper lipid), and lipid-anchored polyethylene glycol (PEG) (i.e., a PEG lipid) components are combined at a molar ratio of 35%, 16%, 46.5%, and 2.5%, respectively (e.g., p. 1585, left col, para “Lipid Nanoparticle (LNP) Formulation”, within the claimed molar ratios), thus teaches instant claims 146 and 180.
Ho teaches an in vitro method of delivering genome editing compositions using lipid nanoparticles and teaches the disclosure relates to modifying a gene sequence using a CRISPR-Cas9 complex that is delivered by lipid nanoparticles (e.g., abstract and example of LNP Transfection of Human CD34+ Bone Marrow Cells in p. 65). Ho teaches the LNP transfection may reduce HSPC or CD34+ cell death as compared to known technologies like electroporation, and post-transfection cell survival is at least 60%, 70%, 80%, 90%, or 95% ([0023]). Ho teaches an LNP composition comprising the mRNA, an amine lipid, a helper lipid, a neutral lipid, and a PEG lipid (e.g., p. 3, para 1), related to claim 146. Ho teaches in certain compositions, the amine lipid is Lipid A, the helper lipid is cholesterol, the stealth lipid is PEG2k-DMG (e.g., [00159], thus teaches claim 178), the neutral lipid is DSPC (e.g., [00159], thus teaches claim 179). Ho teaches in one embodiment, the mol-% of the amine lipid may be from about 30 mol-% to about 60 mol-% (e.g., [00160]), the mol-% of the neutral lipid may be from about 5 mol-% to about 15 mol-% (e.g., [00161]), the mol-% of the helper lipid may be from about 20 mol-% to about 60 mol-% (e.g., [00162]), the mol-% of the PEG lipid may be from about 2 mol-% to about 4 mol-% and may be about 2.5 mol-% (e.g., [00163]), overlapping, encompassing or within the claimed range in claim 180. Ho teaches in some embodiments, the N/P ratio is about 3 to 10, about 5-7 and may be 6 (e.g., [00165]), thus teaches claim 181.
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 multiple genome edits in in vitro-cultured cells by LNP-mediated delivery of genome editing compositions for cancer therapy as recited in reference claims, by choosing human T cells and the LNP with instantly recited compositions as suggested by Kalaitzidis, Billingsley and Ho with a reasonable expectation of success. Since Kalaitzidis teaches a method of producing multiple genome edits in in vitro-cultured human T cells for universal cancer immunotherapy (see e.g., abstract and the figure in the front page), Billingsley teaches LNPs can effectively deliver exogenous nucleic acids to in vitro-cultured human T cells with lower cytotoxicity, and since Ho reduces to practice the LNP with the instantly recited compositions may reduce cell death and promote cell survival, one of ordinary skill in the art would have had a reason to choose human T cells to have genome edits for using as universal cancer immunotherapy as suggested by Kalaitzidis and Billingsley and choose the LNP of Ho in order to reduce cell death and promote cell survival.
Since the instant application claims are obvious over cited application claims, in view of Kalaitzidis, Billingsley and Ho, 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.
Claims 26, 29-30, 33, 40, 42, 44, 50, 55, 86-87, 110, 129, 146 and 176-181 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 8, 10, 12, 13, 16-18, 21-24, 26-27, 30, 32, 37, 51, 60, 63, 65, 67, 75, 94, 116 and 130 of US Application No. 18/287,239 (‘239) in view of Kalaitzidis et al., (WO 2019/097305 A2, published May 2019, cited in IDS 07/10/2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
The reference claims recite a lipid nanoparticle (LNP) composition comprising an amine lipid, a helper lipid, a neutral lipid, and a PEG lipid (reference claim 1), the LNP comprises lipid components in molar ratios and N/P ratio (reference claims 4, 8, 10, 12, 13, 16-18, 21-24, 26-27, 30, 32, 37, 51, related to instant claims 146 and 178-181), further comprising mRNA encoding an RNA-guided DNA-binding agent Cas9 (reference claims 60, 63), a guide RNA (reference claim 65), a method of gene editing, a method of delivering a bioactive agent to a cell comprising contacting the cell with the lipid composition (reference claim 75), the cell is an immune cell (reference claim 94, it is noted that one of ordinary skill in the art would have immediately envisioned a T cell as an immune cell, and a human T cell as a related species for human patients), a method of producing multiple genome edits in a cell or a population of cells comprising contacting the cell in vitro with at least a first lipid composition and a second lipid composition, that each comprises a gRNA and a genome editing tool thereby producing multiple genome edits in the cell or the population of cells. It is noted that the contacting a cell with different genome editing tools encompasses the scope of contacting different compositions sequentially as being encompassed in instant claims 33, 55 and 177.
However, reference claims are silent on a donor nucleic acid for insertion into the immune cell in a target locus in instant claims 30, 86 and 110.
Kalaitzidis teaches a method of producing multiple genome edits in an in vitro-cultured human T cells for universal cancer immunotherapy (see e.g., abstract and the figure in the front page). Kalaitzidis teaches the method comprises delivering to a T cell a composition comprising a RNA-guided nuclease, a gRNA targeting a TRAC gene, a gRNA targeting a B2M gene, and a vector comprising a donor template that comprises a nucleic acid encoding a CAR, wherein the nucleic acid encoding the CAR is flanked by left and right homology arms to the TRAC gene locus (e.g., p. 4, para 2, Kalaitzidis claim 66, and Fig 13B “KO TCR/KI CAR”), thus teaches a donor nucleic acid (a CAR template) for insertion in a target sequence (e.g., the TRAC locus) in instant claim 30, the genome editing tool comprises a donor nucleic acid in instant claim 86, and the donor nucleic acid has flanking homology arms in instant claim 110. Kalaitzidis teaches that Figure 51 shows flow cytometry graphs demonstrating that 95.5% of the gene edited cells are TCR negative (Figure 51 and legend in p. 17), thus teaches at least 95% of the cells comprising a genome edit of an endogenous TCR in instant claim 129.
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 multiple genome edits in in vitro-cultured immune cells by LNP-mediated delivery of genome editing compositions as recited in reference claims, by choosing human T cells and by combining a donor nucleic acid such as a CAR for insertion into the TRAC locus as suggested by Kalaitzidis with a reasonable expectation of success. Since Kalaitzidis teaches a method of producing multiple genome edits in in vitro-cultured human T cells for universal cancer immunotherapy by inserting CAR into TRAC locus (see e.g., abstract and the figure in the front page), one of ordinary skill in the art would have had a reason to choose human T cells and to combine a CAR as a donor being inserted into the TRAC locus in order to obtain universal cancer immunotherapy as suggested by Kalaitzidis.
Since the instant application claims are obvious over cited application claims, in view of Kalaitzidis, 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.
Claims 26, 29-30, 33, 40, 42, 44, 50, 55, 86-87, 110, 129, 146, 176-177 and 179-181 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 10-12, 15, 17, 19, 22, 24, 27, 29, 32, 34, 38, 51, 53, 62, 65, 67, 69, 74, 76, 77 and 118 of US Application No. 18/287,229 (‘229) in view of Kalaitzidis et al., (WO 2019/097305 A2, published May 2019, cited in IDS 07/10/2025) and Billingsley et al., (Nano Lett. 2020 January 17; 20: 1578-1589, cited in IDS 02/01/2024). Although the claims at issue are not identical, they are not patentably distinct from each other.
The reference claims recite a lipid nanoparticle composition comprising an amine lipid, a helper lipid, a neutral lipid, and a PEG lipid in claimed molar ratios (reference claims 1, 8, 10-12, 15, 17, 19, 22, 24, 27, 29, 32, 34, 38, 53, related to instant claims 146 and 179-181), in the form of LNPs (reference claims 51 and 76), further comprising mRNA encoding an RNA-guided DNA-binding agent Cas9 (reference claims 62, 65), a guide RNA (reference claims 67, 74), a method of gene editing, a method of delivering a bioactive agent to a cell comprising contacting the cell with the lipid composition (reference claim 77), a method of producing multiple genome edits in a cell or a population of cells comprising contacting the cell in vitro with at least a first lipid composition and a second lipid composition, that each comprises a gRNA and a genome editing tool thereby producing multiple genome edits in the cell or the population of cells (reference claim 118). It is noted that the contacting a cell with different genome editing tools encompasses the scope of contacting different LNP compositions sequentially as being encompassed in instant claims 33, 55 and 177.
However, reference claims are silent on the cell being a human T cell in instant independent claims 26, 33, 40 and 55, or a donor nucleic acid for insertion into the cell in a target locus instant claims 30, 86 and 110.
Kalaitzidis teaches a method of producing multiple genome edits in an in vitro-cultured human T cells for universal cancer immunotherapy (see e.g., abstract and the figure in the front page), related to instant claims 26, 33, 40 and 55. Kalaitzidis teaches the method comprises delivering to a T cell a composition comprising a RNA-guided nuclease, a gRNA targeting a TRAC gene, a gRNA targeting a B2M gene, and a vector comprising a donor template that comprises a nucleic acid encoding a CAR, wherein the nucleic acid encoding the CAR is flanked by left and right homology arms to the TRAC gene locus (e.g., p. 4, para 2, Kalaitzidis claim 66, and Fig 13B “KO TCR/KI CAR”), thus teaches a donor nucleic acid (a CAR template) for insertion in a target sequence (e.g., the TRAC locus) in instant claim 30, the genome editing tool comprises a donor nucleic acid in instant claim 86, and the donor nucleic acid has flanking homology arms in instant claim 110. Kalaitzidis teaches Figure 51 shows flow cytometry graphs demonstrating that 95.5% of the gene edited cells are TCR negative before further enrichment (Figure 51 and legend in p. 17), thus teaches at least 95% of the cells comprising a genome edit of an endogenous TCR in instant claim 129.
Billingsley teaches a method for ionizable lipid nanoparticle (LNP)-mediated mRNA delivery for human CAR T cell engineering (e.g., title, abstract). Billingsley teaches formulated LNPs are mixed with mRNA (e.g., luciferase mRNA or CAR mRNA) to deliver the mRNAs to human T cell line cells and human primary T cells (e.g., p. 1581, right col. - p. 1583). Billingsley teaches LNPs deliver CAR mRNA as effectively as electroporation to human primary T cells with lower cytotoxicity (see e.g., p. 1584 and see Fig 5A, 5E for expression and tumor killing and Fig 5D for higher viability). Thus, Billingsley teaches LNPs can effectively deliver exogenous nucleic acids to in vitro-cultured human T cells with lower cytotoxicity than electroporation, related to instant claims 26, 33, 40 and 55.
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 multiple genome edits in in vitro-cultured cells by LNP-mediated delivery of genome editing compositions as recited in reference claims, by choosing human T cells and by combining a donor nucleic acid such as a CAR for insertion into the TRAC locus as suggested by Kalaitzidis and Billingsley with a reasonable expectation of success. Since Kalaitzidis teaches a method of producing multiple genome edits in an in vitro-cultured T cell or a population of T cells for universal cancer immunotherapy by inserting CAR into TRAC locus (see e.g., abstract and the figure in the front page), and since Billingsley teaches LNPs deliver CAR mRNA as effectively as electroporation to human primary T cells with lower cytotoxicity, one of ordinary skill in the art would have had a reason to choose human T cells and to combine a CAR inserted into the TRAC locus in order to obtain universal cancer immunotherapy as suggested by Kalaitzidis and Billingsley.
Since the instant application claims are obvious over cited application claims, in view of Kalaitzidis and Billingsley, 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.
Response to Traversal:
Applicant’s arguments filed on 09/02/2026 are acknowledged.
Applicant argues that (1) solely to expedite prosecution and without acquiescing to the propriety of the rejection, claim 26 is amended to recite new limitations that "the cell is a human T cell or a human NK cell," claim 33 is amended to recite that "the cells comprise human T cells or human NK cells," claim 40 is amended to recite new limitations that "the cells comprise human T cells or human NK cells," and claim 55 is amended to recite new limitation "an in vitro-cultured ‘human’ T cell." (Remarks, p. 15-16). It is noted that the new limitations have not been previously examined.
Applicant’s argument has been fully considered and it is persuasive. Therefore, the prior rejections over patent 12,037,583 in view of Ho, application 18/980,643 in view of Kalaitzidis and Ho, application 18/287,239 in view of Kalaitzidis and application 18/287,229 in view of Kalaitzidis have been withdrawn. However, as necessitated by amendment, new grounds of rejections have been made over patent and applications as discussed above.
Applicant argues that (2) Ho fails to provide any reason or motivation for one of ordinary skill in the art to substitute the LNPs applied to stem cells in Ho into the T cell electroporation method of the reference claims (Remarks, p. 15-17).
Applicant’s argument has been fully considered but it is not persuasive.
As necessitated by amendment, new grounds of rejections have been made over patent 12,037,583 in view of Billingsley and Ho, and over application 18/980,643 in view of Kalaitzidis, Billingsley and Ho, and over application 18/287,229 in view of Kalaitzidis and Billingsley, as discussed above. Specifically, Billingsley reduces to practice a method for ionizable lipid nanoparticle (LNP)-mediated mRNA delivery for human CAR T cell engineering and teaches LNPs deliver CAR mRNA as effectively as electroporation to human primary T cells with lower cytotoxicity. Thus, one of ordinary skill in the art would have had a reason to substitute the electroporation approach that is recited in reference claims, with LNP-mediated delivery to human T cells to obtain effective delivery with lower cytotoxicity as suggested by Billingsley with a reasonable expectation of success.
Applicant argues that (3) at least Example 3 of the instant specification provides evidence that the amended claims 26, 33, 40, and 55 achieve notable and unexpected reductions in target-to-target translocations and a significant improvement in expansion potential compared to gene editing using electroporation, as described in detail above (Remarks, p. 15 and 17).
Applicant’s argument has been fully considered but it is not persuasive as discussed above.
Applicant requests that (4) the provisional double patenting rejections for applications 18/287,239 and 18/287,229 be held in abeyance until other issues of patentability are resolved (Remarks, p. 17).
This is not found persuasive. Applicant is reminded that a complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer. Such a response is required even when the nonstatutory double patenting rejection is provisional. See MPEP 804.I.B.1. As necessitated by amendment, new grounds of rejections have been made over applications 18/287,239 and 18/287,229 as discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
No claims are allowed.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jianjian Zhu whose telephone number is (571)272-0956. The examiner can normally be reached M - F 8:30AM - 4PM (EST).
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/JIANJIAN ZHU/Examiner, Art Unit 1631
