DETAILED ACTION
Applicant’s amendment and Arguments/Remarks received on 19 February 2026 have been entered. Claims 1-16 were previously pending in the application. Claims 7 and 16 have been cancelled, and no new claims have been added by Applicant. Claims 1-6 and 8-15 are currently pending in the application. Claim 1 is an independent claim.
The following election of species remains in effect in the instant application:
1) nucleases: a. benzonase.
Claims 1-6 and 8-15 are currently pending and under examination in the instant application. An action on the merits follows.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
The present application claims priority to US Provisional Application Nos. 63/322,796, filed 23 March 2022, and 63/398,622, filed 17 August 2022.
Thus, the earliest possible priority for the instant application is 23 March 2022.
Specification
The objection to the specification of the disclosure for reciting trade names and/or marks used in commerce without the appropriate symbol and/or generic terminology is withdrawn in view of the amendment to the specification. The amendment to the specification of the disclosure filed 19 February 2026 has been entered.
Claim Objections
The objection to amended claims 4-6 for reciting abbreviations without first writing out the term(s) for which they are abbreviated is withdrawn in view of the amendment to claims 4-6.
Claim Rejections - 35 USC § 112(b)
The rejection of amended, original, and cancelled claims 1-16 under 35 U.S.C. 112(b) as failing to particularly point out and distinctly claim the subject matter which the inventor(s) regards as the invention for multiple issues of indefiniteness is withdrawn over cancelled claims 7 and 16 and maintained over amended and original claims 1-6 and 8-15. Applicant's amendments to the claims and arguments have been fully considered but have not been found persuasive in overcoming the rejection for reasons of record as discussed in detail below.
Applicant’s amendments to the claims have overcome the issues of indefinites associated with recitation of “by” in amended claim 1 and recitation of “encodes” in amended claims 4-6.
However, Applicant amended independent claim 1 to recite, “water-based hypotonic lysing of the cell culture” in line 3, which is still a relative term which renders the claim indefinite. The term “hypotonic” is still not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Neither the claim nor the specification define what the lysing is hypotonic with respect to, such as with respect to the cytoplasm of the cells of the cell culture. As such, the metes and bounds of the claim still cannot be determined.
Applicant additionally amended claim 1 to recite, “isolating the supernatant from the crude cell lysate to obtain a virus pellet comprising rAAV particles” in lines 7-8, which is still indefinite because it is still unclear in what way isolating a supernatant comprising rAAV particles from a crude cell lysate results in obtaining a virus pellet comprising rAAV particles. For example, it is still unclear whether the rAAV particles in the supernatant and the rAAV particles in the virus pellet are meant to be the same rAAV particles or whether the supernatant and the pellet are meant to be separate fractions of rAAV particles.
Additionally, “isolating the supernatant from the crude cell lysate” is now further indefinite because the supernatant itself is the clarified cell lysate obtained from filtering the crude cell lysate.
As such, the metes and bounds of the claim still cannot be determined.
Applicant amended each of claims 2-6 to recite “the rAAV particles” and left claim 15 in its original form. There is still insufficient antecedent basis for this limitation in the claim. Each of claims 2-6 and 15 dependent from claim 1. As discussed above, it is unclear whether each of the recitations of “rAAV particles” in claim 1 in lines 1, 3-4, 6, 7, and 8 are referring to the same rAAV particles. Therefore, it is still unclear to which rAAV particles “the rAAV particles” are referring. As such, the metes and bounds of the claim still cannot be determined.
Applicant amended claim 14 to recite “Benzonase®” in line 2, which still contains the trademark/trade name Benzonase®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a recombinant nonspecific endonuclease derived from Serratia marcescens and, accordingly, the identification/description is indefinite.
MPEP 608.01(v)(I) states, “A mark as defined by 15 U.S.C. 1127 (i.e., trademark, service mark,
collective mark, or certification mark) or trade name may be used in a patent application to identify an
article or product, service, or organization if:
(A) its meaning is established by an accompanying definition in the specification which is
sufficiently descriptive, enabling, precise and definite such that a claim including the mark or
trade name complies with the requirements of 35 U.S.C. 112, or
(B) its meaning is well-known to one skilled in the relevant art and is satisfactorily defined in the
literature.
See, e.g., United States Gypsum Co. v. National Gypsum Co., 74 F.3d 1209, 1214 n.6, 37 USPQ2d 1388,
1392 n. 6 (Fed. Cir. 1996). Condition (A) or (B) must be met at the time of filing of the complete
application.
The relationship between a mark or trade name and the product, service, or organization it
identifies is sometimes indefinite, uncertain, and arbitrary. For example, the formula or characteristics of a product may change from time to time and yet it may continue to be sold under the same mark or
trade name. In patent specifications, the details of the product, service, or organization identified by a
mark or trade name should be set forth in positive, exact, intelligible language, so that there will be no
uncertainty as to what is meant. Arbitrary marks or trade names which are liable to mean different
things at the pleasure of the owner do not constitute such language. Ex Parte Kattwinkle, 12 USPQ 11
(Bd. App. 1931).”
In the instant case, the specification merely refers to the trade name “benzonase” as a nuclease [0022], as a potential impurity in the rAAV preparation [0025], and as an additive to degrade DNA and RNA [0050]. As such, the meaning of the trade name “Benzonase®” has not been described in the specification sufficiently to establish its meaning by an accompanying definition in the specification which is sufficiently descriptive, enabling, precise and definite such that a claim including the mark or trade name complies with the requirements of 35 U.S.C. 112. Further, the meaning of the mark is not sufficiently well-known and described in the relevant art nor satisfactorily defined in the literature in a way to precisely define the structure claimed and to preclude any product changes over time.
As such, the metes and bounds of the claim still cannot be determined.
Applicant argues that the pending claims, as amended, satisfy the requirements of 112 and requests that the rejections under 112 be withdrawn. However, this is not agreed.
As discussed above, the amendments to the claims have not sufficiently clarified the claims to overcome the rejection under 35 U.S.C. 112(b), and as such, the metes and bounds of the claims still cannot be determined.
Accordingly, Applicant’s arguments do not overcome a finding of indefiniteness under 35 U.S.C. 112(b), and the rejection is maintained.
Claim Rejections - 35 USC § 103
The rejection of amended, original, and cancelled claims 1-16 under 35 U.S.C. 103 as being unpatentable over Wright et al. [2005, Molecular Therapy, 12(1), 171-178]; in view of Potter [US20170130208A1, published 11 May 2017]; Gallicano et al. [2022, Gene Therapy, 29, 304-311, published online 12 November 2020]; Pushparaj et al. [2008, Journal of Dental Research, 87(11), 992-1003]; ThermoFisher [2015, Nuclease-Free Water, archived 22 December 2015, retrieved on 15 November 2025 from the Internet: <https://web.archive.org/web/20151222001504/https://www.thermofisher.com/us/en/home/life-science/dna-rna-purification-analysis/rna-extraction/rna-extraction-products/nuclease-free-tubes-tips-and-buffers/nuclease-free-water.html>]; ThermoScientific [2009, Tech Tip #40, Convert between times gravity (xg) and centrifuge rotor speed (RPM), retrieved on 15 November 2025 from the Internet:<https://documents.thermofisher.com/TFS-Assets/LSG/Application-Notes/TR0040-Centrifuge-speed.pdf>]; Leighton [2021, Re: Speed to concentrate virus by ultracentrifugation?. Retrieved on 15 November 2025 from the Internet: <https://www.researchgate.net/post/Speed_to_concentrate_virus_by_ultracentrifugation/610367b2fe956500fb0dabfd/citation/download>]; and Crosson et al. [2018, Molecular Therapy: Methods and Clinical Development, 10, 1-7]; is withdrawn over cancelled claims 7 and 16 and maintained over amended and original claims 1-6 and 8-15. Applicant's amendments to the claims and arguments have been fully considered but have not been found persuasive in overcoming the rejection for reasons of record as discussed in detail below.
Applicant amended the claims to address issues of indefiniteness. Additionally, Applicant incorporated limitations from cancelled claims 7 and 16 into independent claim 1. No new limitations have been introduced into the claims to alter the scope of the claims sufficiently to overcome a finding of obviousness under 35 U.S.C. 103 over Wright, Potter, Gallicano, Pushparaj, ThermoFisher, ThermoScientific, Leighton, and Crosson.
Applicant argues that:
Wright fails to disclose or suggest a method of purifying rAAV particles which meets every limitation of amended claim 1;
the secondary references fail to cure the deficiencies of Wright in that Potter fails to disclose or suggest a method of purifying rAAV particles comprising, inter alia, the purified rAAV particles comprise a viral titer of from about 5.0 x 103 vg/mL to about 3.0 x 1015 vg/mL; and
methods claimed in the present application surprisingly yield AAV particles purified via water-based hypotonic lysis that are comparable in viral titer, sample purity, and transduction efficiency to those purified via freeze-thaw lysis methods.
However, this is not agreed.
In response to Applicant’s arguments against the references individually, it is noted that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). 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). Further, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In addition, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Specifically, regarding Applicant’s argument 1), Wright was not cited for teaching every limitation of the claimed invention. Wright was cited for teaching a method of purifying recombinant adeno associated virus (rAAV) particles from an AAV-producing cell culture, the method comprising:
lysing of the cell culture to produce a crude lysate comprising rAAV particles [column 11 ¶ 4-column 12 ¶ 1];
clarifying the crude cell lysate to produce a supernatant comprising rAAV particles by centrifugation [column 11 ¶ 4-column 12 ¶ 1];
isolating the clarified supernatant by precipitation and centrifugation to obtain a virus pellet comprising rAAV particles [column 11 ¶ 4-column 12 ¶ 1]; and
resuspending the virus pellet with a buffer to obtain purified rAAV particles [column 11 ¶ 4-column 12 ¶ 1].
Wright further teaches filtering another crude cell lysate and thereby clarifying the crude cell lysate to produce a supernatant comprising rAAV particles (e.g., filtration through 0.65 µm and 0.2 µm filters) [column 11 ¶ 4-column 12 ¶ 1]. Wright was also cited for teaching achieving titers of 6.7 x 1013 vg/mL [column 13 ¶ 1, Table 2], which is within the range of titers of from about 5.0 x 103 vg/mL to about 3.0 x 1015 vg/mL newly recited in independent claim 1.
Further, Potter was cited for teaching a method of purifying recombinant adeno associated virus (rAAV) particles from an AAV-producing cell culture, the method comprising: hypotonic lysing of the cell culture to produce a crude lysate comprising rAAV particles [0019, 0052, 0109, claim 15-16] followed by clarifying the crude lysate by either centrifugation or filtration to produce a supernatant comprising rAAV particles [0009-0011, 0015, 0053, claim 9]. Potter additionally teaches that the cell lysate may be produced by microfluidization, sonication, freeze-thawing, or hypotonic lysis of cells comprising rAAV particles [0052], and that the protocol could be simplified even further by substituting microfluidization with hypotonic lysis in H2O [0109].
Note also that a lack of freeze-thaw cycles is not a required limitation of the claims as written, nor is any particular impurity profile.
Regarding Applicant’s argument 2), Potter was not cited for teaching the claimed range of titers. As described above, Wright was cited for teaching achieving titers of 6.7 x 1013 vg/mL [column 13 ¶ 1, Table 2], which is within the range of titers of from about 5.0 x 103 vg/mL to about 3.0 x 1015 vg/mL newly recited in independent claim 1.
Regarding Applicant’s argument 3), Applicant asserts that the data presented in the disclosure comparing hypotonic lysis to freeze-thaw lysis is evidence of surprising results in that the hypotonic lysis produced viral titers, sample purity, and transduction efficiencies comparable to those obtained via freeze-thaw lysis. Applicant refers to Figure 2 as an example of the comparison, which shows comparable titers for the two lysis methods.
Firstly, note that, as discussed above, Wright teaches viral titers which are in the range recited in independent claim 1. Potter also teaches achieving viral titers of about 1 x 1014 vg total using a simplified purification protocol which yields exceptionally pure vector preparations [0109, Figure 3F, 5E-F]. Additionally, Potter teaches that using hypotonic lysis simplifies purification protocols such that “the protocol could be simplified even further by substituting microfluidization with sonication, or freeze/thawing of the cell pellet, or even hypotonic lysis in H20 [0109], thereby teaching an exchangeability of freeze/thaw lysis and hypotonic lysis. Applicant has provided evidence of the comparability of the methods in Figures 2-4 of the instant drawings, as taught by Potter, but has not provided evidence that such comparability would have been surprising or unexpected at the time of filing.
Secondly, it is also noted that any evidence of unexpected results must be commensurate in scope with the claimed invention, and that a greater, or greater than additive, effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected MPEP 716.02 (a) and (d). Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Figure 2, as referenced by Applicant, presents a comparison of a hypotonic lysis protocol and a freeze-thaw lysis protocol, which protocols are described in the Examples. Specifically, the water based hypotonic lysis method comprises:
“[0049] Following the desired incubation, cells were washed twice with nuclease-free water, and 1 mL of nuclease-free water supplemented with 1X protease inhibitor mixture cocktail was added. For hypotonic cell swelling, cells were incubated at 37 °C for 10 minutes. Following incubation, cells were pipetted rigorously 10 times to induce lysis (FIG. 1). Then, 100 µl of 10X PBS were added promptly to each well. The lysates were transferred to 1.5 mL microcentrifuge tubes, passed through 0.45 µM syringe filters, and processed for virus purification as described herein.”
The freeze-thaw hypotonic lysis method used as a comparison comprises:
“[0050] The cell monolayers were scrapped, suspended in 1 mL PBS supplemented with 30 µl 5 M NaCI and 10 µl protease inhibitor cocktail, and transferred to a 1.5 mL microcentrifuge tube. The samples were freeze-thawed thrice with at least 3 hrs of freezing time and 15 minutes thawing. Following the third freeze-thaw, cells were sonicated for 15 seconds to lyse the remaining unlysed cells and shear genomic DNA. 1 µL of 100 mM benzonase (to degrade DNA and RNA) was added and incubated in a 37 °C hot water bath for 2 hours. Freeze-thaw samples and the PEG precipitated virus culture supernatants were centrifuged at 6000 rpm for 10 minutes. Supernatant from FT-lysis and the pellet from the PEG precipitate were mixed and passed through a 0.45 µM syringe filter to remove any cellular debris and further processed for virus purification.”
Therefore, Applicant provides two examples of lysis protocols, wherein one protocol has been referred to as “water-based” as recited in the claim. However, “water-based” is not defined in the claim nor the specification, and as such, has been interpreted to indicate any aqueous solution. Additionally, “hypotonic” has not been defined in the claim nor the specification and has been interpreted to indicate the use of any solution which is hypotonic to any other solution.
Note that Applicant refers to the first method as “water based” hypotonic lysis presumably due to the use of nuclease-free water in the lysis process. However, the specification additionally refers to the second method as hypotonic lysis, wherein the cells are suspended in 1 mL of PBS supplemented with 30 µl of 5 M NaCl and 10 µl of a protease inhibitor cocktail, without specifying what composition is meant to by hypotonic to what other composition. The specification additionally recites, “In one embodiment, the cell lysate may be produced by hypotonic lysis, such as freeze-thaw lysis of cells comprising rAAV particles.” [0020]. Also, PBS is a water based/ aqueous solution. Therefore, it is unclear in what way Applicant intends for the recited “water based” hypotonic lysing to differentiate among alternative methods which all use aqueous solutions to resuspend the cells for lysis and which generally comprise solutions which are hypotonic relative to some other solution.
As described above, Applicant has provided two examples of lysis protocols, each with a single lysis solution, which do not encompass the full scope of the claim, which as written encompasses lysis using any aqueous solution which is hypotonic to any other solution and does not preclude additional steps, such as sonication, microfluidization, freeze-thaw cycles, and so forth. The scope of the claim as written also encompasses any filtering method to obtain a clarified supernatant, any isolating method to obtain a virus pellet, and resuspending in any buffer of any volume. Note further that the claimed viral titer is a relative titer in viral genomes / mL, and as such is highly dependent on the volume of pellet used to resuspend the virus pellet in the final step recited in claim 1. Therefore, Applicant’s data provided as putative evidence of surprising/unexpected results is not commensurate in scope with the claim as written.
Accordingly, Applicant’s amendments to the claims and arguments do not overcome a finding of obviousness under 35 U.S.C. 103 over Wright, Potter, Gallicano, Pushparaj, ThermoFisher, ThermoScientific, Leighton, and Crosson, and the rejection is maintained.
Conclusion
No claim is allowed.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. KATIE L PENNINGTON whose telephone number is (703)756-4622. The examiner can normally be reached M-Th 8:30 am - 5:30 pm, Friday 8:30 am - 12:30 pm CT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria G. Leavitt can be reached at (571) 272-1085. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
DR. KATIE L. PENNINGTON
Examiner
Art Unit 1634
/KATIE L PENNINGTON/Examiner, Art Unit 1634
Dr. A.M.S. Wehbé
/ANNE MARIE S WEHBE/Primary Examiner, Art Unit 1634
Prosecution Insights