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 .
This action is in response to the amendment filed 03/17/2026, in which claims 1, 4-6 and 11 were amended, claims 3, 10, 13-16 and 20 were previously presented and claims 2, 7-9, 12 and 17-19 were canceled. Claims 1, 3-6, 10, 11, 13-16 and 20 are currently pending.
Applicant’s arguments have been thoroughly reviewed, but are not persuasive for the
reasons that follow. Any rejection and objections not reiterated in this action have been
withdrawn. This action is FINAL.
Claim Objections
The previous claim objections of claims 1 and 4-6 has been withdrawn in view of Applicant’s amendments to the claims filed on 03/17/226.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the present instance, claim 1 recites the narrow limitation of “Cas9-sgRNA complexes”, however, claims 4-6 recite the broad limitation of “a CRISPR-Cas9 gene editing system or agent”. Therefore, the limitation of claim 1 is narrower than the limitation of claims 4-6. Claims 4-6 fail to include all of the limitations of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Amendments - Claim Rejections - 35 USC § 112
The previous rejection of claims 1-9 and 11-20 under 35 U.S.C. 112(a) has been withdrawn in view of Applicant’s amendments to the claims filed on 03/17/2026.
The previous rejection of claims 8 and 18 under 35 U.S.C. 112(b) has been withdrawn in view of Applicant’s amendments to the claims filed on 03/17/2026.
Claim Rejections - 35 USC § 102
The previous rejection of claims 1, 7-11 and 17-20 under 35 U.S.C. 102(a)(1) has been withdrawn in view of Applicant’s amendments to the claims filed on 03/17/2026.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claims 1, 3, 10, 11, 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al (Sci Adv. 2017 Jul 12;3(7): e1701620; Pgs 1-9) in view of Turocy et al (Cell, 184(6), 1561–1574; 2021) and Ma et al (Nature 548, 413–419 (2017)). This is a NEW Rejection to address the amendments to the claims filed on 03/17/226.
Regarding claims 1 and 3, Shin teaches K652 cell stably expressing a genomically integrated BFP reporter with nucleofection of Cas9-sgRNA (Cas9 RNP) complexes targeting BFP resulting in the loss of the BFP fluorescence (Page 2, Column 2). Shin teaches that addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics (Page 3, Column 2). Shin teaches timed addition of AcrIIA4 can significantly abolish off-target editing and greatly increase the fidelity of Cas9RNP at both HBB and VEGFA loci and off-target editing at all sites were greatly reduced by timed addition of AcrIIA4 regardless of their frequency (Page 4, Column 1).
Shin does not teach the method within an embryo.
Turocy teaches a primary limitation of all gene-editing approaches is the ability to prevent mosaicism and by restricting the activity of gene editors to the first cell cycle then mosaicism could be avoided (Page 1565, Column 1). Turocy suggests that delayed addition of the anti-Crispr protein AcrIIA4 inhibits off-target cleavage in somatic cells while still allowing on target activity showing promise to reduce on target and off-target mosaicism in human embryos (Page 1565, Column 1).
Ma teaches mechanisms responsible for mosaicism in embryos were also investigated and a proposed solution to minimize their occurrence developed—namely the co-injection of sperm and CRISPR–Cas9 components into metaphase II (MII) oocytes (Page 414, Column 1). Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism (Page 415, Column 2 bridging Page 416, Column 1; and Page 416, Fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Shin to include the administration CRISPR-Cas9 complex injected into metaphase II (MII) oocytes eliminates mosaicism by Ma because Shin teaches it is within the ordinary skill in the art to use teaches timed addition of AcrIIA4 can significantly abolish off-target editing of Cas9 RNP, Turocy teaches restricting the activity of gene editors to the first cell cycle by allowing Cas9-sgRNA editing within the first cell cycle and then administering a CRISPR-Cas inhibitor timed after the completion of the first cell cycle and Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism.
One would have been motivated to make such a modification in order to receive the expected benefit of delayed addition of the anti-Crispr protein AcrIIA4 inhibits off-target cleavage while still allowing on target activity in embryos and administration of CRISPR-Cas9 complex injected into metaphase II (MII) oocytes eliminates mosaicism as taught by Turocy and Ma, respectively.
Regarding claim 10, Shin teaches that addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics (Page 3, Column 2).
Regarding claim 11, Shin teaches K652 cell stably expressing a genomically integrated BFP reporter with nucleofection of Cas9-sgRNA (Cas9 RNP) complexes targeting BFP resulting in the loss of the BFP fluorescence (Page 2, Column 2). Shin teaches that addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics (Page 3, Column 2). Shin teaches timed addition of AcrIIA4 can significantly abolish off-target editing and greatly increase the fidelity of Cas9RNP at both HBB and VEGFA loci and off-target editing at all sites were greatly reduced by timed addition of AcrIIA4 regardless of their frequency (Page 4, Column 1).
Shin does not teach the method within an embryo.
Turocy teaches a primary limitation of all gene-editing approaches is the ability to prevent mosaicism and by restricting the activity of gene editors to the first cell cycle then mosaicism could be avoided (Page 1565, Column 1). Turocy suggests that delayed addition of the anti-Crispr protein AcrIIA4 inhibits off-target cleavage in somatic cells while still allowing on target activity showing promise to reduce on target and off-target mosaicism in human embryos (Page 1565, Column 1).
Ma teaches mechanisms responsible for mosaicism in embryos were also investigated and a proposed solution to minimize their occurrence developed—namely the co-injection of sperm and CRISPR–Cas9 components into metaphase II (MII) oocytes (Page 414, Column 1). Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism (Page 415, Column 2 bridging Page 416, Column 1; and Page 416, Fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Shin to include the administration CRISPR-Cas9 complex injected into metaphase II (MII) oocytes eliminates mosaicism by Ma because Shin teaches it is within the ordinary skill in the art to use teaches timed addition of AcrIIA4 can significantly abolish off-target editing of Cas9 RNP, Turocy teaches restricting the activity of gene editors to the first cell cycle by allowing Cas9-sgRNA editing within the first cell cycle and then administering a CRISPR-Cas inhibitor timed after the completion of the first cell cycle and Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism.
One would have been motivated to make such a modification in order to receive the expected benefit of delayed addition of the anti-Crispr protein AcrIIA4 inhibits off-target cleavage while still allowing on target activity in embryos and administration of CRISPR-Cas9 complex injected into metaphase II (MII) oocytes eliminates mosaicism as taught by Turocy and Ma, respectively.
Regarding claims 13 and 20, Shin does not teach the method administered within an embryo and therefore does not teach the sgRNA are introduced in a ribonucleoprotein complex by intracytoplasmic sperm injection with sperm into an oocyte and the anti-CRISPR agent is introduced into the embryo using microinjection.
Turocy teaches administering genome editing techniques of embryos by taking oocytes and injecting sperm to create the embryo and then administering CRISPR-Cas9 genome editing systems to the embryo (Page 1567, Figure 3). Turocy teaches anti-CRISPR proteins may well enable such temporal control through timed injection of the anti-CRISPR protein relative to Cas9 (Page 1565, Column 1).
Ma teaches mechanisms responsible for mosaicism in embryos were also investigated and a proposed solution to minimize their occurrence developed—namely the co-injection of sperm and CRISPR–Cas9 components into metaphase II (MII) oocytes (Page 414, Column 1). Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism (Page 415, Column 2 bridging Page 416, Column 1; and Page 416, Fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Shin to include the administration CRISPR-Cas9 complex injected into metaphase II (MII) oocytes eliminates mosaicism by Ma because Shin teaches it is within the ordinary skill in the art to use teaches timed addition of AcrIIA4 can significantly abolish off-target editing of Cas9 RNP, Turocy teaches restricting the activity of gene editors to the first cell cycle by allowing Cas9-sgRNA editing within the first cell cycle and then administering a CRISPR-Cas inhibitor timed after the completion of the first cell cycle and Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism.
One would have been motivated to make such a modification in order to receive the expected benefit of delayed addition of the anti-Crispr protein AcrIIA4 inhibits off-target cleavage while still allowing on target activity in embryos and administration of CRISPR-Cas9 complex injected into metaphase II (MII) oocytes eliminates mosaicism as taught by Turocy and Ma, respectively.
Claims 4-6 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al (Sci Adv. 2017 Jul 12;3(7): e1701620; Pgs 1-9) in view of Turocy et al (Cell, 184(6), 1561–1574; 2021) and Ma et al (Nature 548, 413–419 (2017)) as applied to claims 1, 3, 10, 11, 13 and 20 and further in view of Matsumoto et al (Commun Biol 3, 601, pgs. 1-10; 2020). This is a NEW Rejection to address the amendments to the claims filed on 03/17/226.
The teachings of Shin, Turocy and Ma are described and applied as above.
Regarding claim 4, Shin teaches timed addition of AcrIIA4 can significantly abolish off-target editing and greatly increase the fidelity of Cas9RNP at both HBB and VEGFA loci and off-target editing at all sites were greatly reduced by timed addition of AcrIIA4 regardless of their frequency (Page 4, Column 1). Shin teaches that addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics (Page 3, Column 2).
Shin, Turocy and Ma do not teach the introduction of the anti-CRISPR agent is about 24 hours or about 16 to about 18 hours after the introduction of gene editing system or agent into the embryo.
Matusmoto teaches that when SpyCas9 is coexpressed with AcrIIA4-Cdt1 in the cells, SpyCas9 activity is inhibited during the G1 phase, and is regained when AcrIIA4-Cdt1 is degraded in the S/G2 phases therefore, time-delayed transfection would allow for SpyCas9 activity in G1 phase and inhibition in S/G2 phase (Page 3, Column 1). Matsumoto teaches 293A cells were first transfected with an episomal vector encoding Cas9 (Page 8, Column 1). Matsumoto teaches that 24 hours after the cells were administered the Cas9 they were transfected with a second plasmid containing the AcrIIA4-Cdt1 (Page 8, Column 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Shin and Turocy to include the time-delayed administration of the AcrIIA4 protein as taught by Matsumoto because Shin teaches it is within the ordinary skill in the art to use Shin teaches timed addition of AcrIIA4 can significantly abolish off-target editing and greatly increase the fidelity of Cas9RNP and that the addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics, Turocy teaches Cas9 activity at off-target sites appears to occur with a delay relative to the on-target site in human embryos and while the majority of on-target sites were modified within the first cell cycle of embryo development, most off-target genetic change occurred in later cell cycles and were mosaic, Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism and Matusmoto teaches when Cas9 and AcrIIA4 are co-expressed there is a loss of AcrIIA4 within the first cell cycle due to degradation which does not help with the inhibition of Cas9 and thus the downstream effects, however, time-delayed administration of 24 hours of the AcrIIA4 protein, effectively after or at the end of the first cell cycle phase, inhibited Cas9 and prevented unwanted off-targeting effects.
One would have been motivated to make such a modification in order to receive the expected benefit of inhibition of Cas9 after the first cell cycle phase to reduce off-target effects as taught by Matusmoto.
Regarding claims 5 and 6, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP § 2144.05 (I)).
Shin teaches timed addition of AcrIIA4 can significantly abolish off-target editing and greatly increase the fidelity of Cas9RNP at both HBB and VEGFA loci and off-target editing at all sites were greatly reduced by timed addition of AcrIIA4 regardless of their frequency (Page 4, Column 1). Shin teaches that addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics (Page 3, Column 2).
Shin does not teach the introduction of the anti-CRISPR agent is about 16 to about 18 hours after the introduction of gene editing system or agent into the embryo.
Matusmoto teaches that when SpyCas9 is coexpressed with AcrIIA4-Cdt1 in the cells, SpyCas9 activity is inhibited during the G1 phase, and is regained when AcrIIA4-Cdt1 is degraded in the S/G2 phases therefore, time-delayed transfection would allow for SpyCas9 activity in G1 phase and inhibition in S/G2 phase (Page 3, Column 1). Matsumoto teaches 293A cells were first transfected with an episomal vector encoding Cas9 (Page 8, Column 1). Matsumoto teaches that 24 hours after the cells were administered the Cas9 they were transfected with a second plasmid containing the AcrIIA4-Cdt1 (Page 8, Column 2).
Due to Shin teaching the administration after 6 hours and Matsumoto teaching after 24 hours, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Shin and Turocy to include the time-delayed administration of the AcrIIA4 protein between 6 to 24 hours after the initial administration of Cas9 because Shin teaches it is within the ordinary skill in the art to use Shin teaches timed addition of AcrIIA4 can significantly abolish off-target editing and greatly increase the fidelity of Cas9RNP and that the addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics, Turocy teaches Cas9 activity at off-target sites appears to occur with a delay relative to the on-target site in human embryos and while the majority of on-target sites were modified within the first cell cycle of embryo development, most off-target genetic change occurred in later cell cycles and were mosaic, Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism and Matusmoto teaches when Cas9 and AcrIIA4 are co-expressed there is a loss of AcrIIA4 within the first cell cycle due to degradation which does not help with the inhibition of Cas9 and thus the downstream effects, however, time-delayed administration of 24 hours of the AcrIIA4 protein, effectively after or at the end of the first cell cycle phase, inhibited Cas9 and prevented unwanted off-targeting effects.
One would have been motivated to make such a modification in order to receive the expected benefit of inhibition of Cas9 after the first cell cycle phase to reduce off-target effects as taught by Matusmoto.
Regarding claim 14, Shin teaches timed addition of AcrIIA4 can significantly abolish off-target editing and greatly increase the fidelity of Cas9RNP at both HBB and VEGFA loci and off-target editing at all sites were greatly reduced by timed addition of AcrIIA4 regardless of their frequency (Page 4, Column 1). Shin teaches that addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics (Page 3, Column 2).
Shin does not teach the introduction of the anti-CRISPR agent is about 16 to about 18 hours after the introduction of gene editing system or agent into the embryo.
Matusmoto teaches that when SpyCas9 is coexpressed with AcrIIA4-Cdt1 in the cells, SpyCas9 activity is inhibited during the G1 phase, and is regained when AcrIIA4-Cdt1 is degraded in the S/G2 phases therefore, time-delayed transfection would allow for SpyCas9 activity in G1 phase and inhibition in S/G2 phase (Page 3, Column 1). Matsumoto teaches 293A cells were first transfected with an episomal vector encoding Cas9 (Page 8, Column 1). Matsumoto teaches that 24 hours after the cells were administered the Cas9 they were transfected with a second plasmid containing the AcrIIA4-Cdt1 (Page 8, Column 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Shin and Turocy to include the time-delayed administration of the AcrIIA4 protein as taught by Matsumoto because Shin teaches it is within the ordinary skill in the art to use Shin teaches timed addition of AcrIIA4 can significantly abolish off-target editing and greatly increase the fidelity of Cas9RNP and that the addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics, Turocy teaches Cas9 activity at off-target sites appears to occur with a delay relative to the on-target site in human embryos and while the majority of on-target sites were modified within the first cell cycle of embryo development, most off-target genetic change occurred in later cell cycles and were mosaic, Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism and Matusmoto teaches when Cas9 and AcrIIA4 are co-expressed there is a loss of AcrIIA4 within the first cell cycle due to degradation which does not help with the inhibition of Cas9 and thus the downstream effects, however, time-delayed administration of 24 hours of the AcrIIA4 protein, effectively after or at the end of the first cell cycle phase, inhibited Cas9 and prevented unwanted off-targeting effects.
One would have been motivated to make such a modification in order to receive the expected benefit of inhibition of Cas9 after the first cell cycle phase to reduce off-target effects as taught by Matusmoto.
Regarding claims 15 and 16, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP § 2144.05 (I)).
Shin teaches timed addition of AcrIIA4 can significantly abolish off-target editing and greatly increase the fidelity of Cas9RNP at both HBB and VEGFA loci and off-target editing at all sites were greatly reduced by timed addition of AcrIIA4 regardless of their frequency (Page 4, Column 1). Shin teaches that addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics (Page 3, Column 2).
Shin does not teach the introduction of the anti-CRISPR agent is about 16 to about 18 hours after the introduction of gene editing system or agent into the embryo.
Matusmoto teaches that when SpyCas9 is coexpressed with AcrIIA4-Cdt1 in the cells, SpyCas9 activity is inhibited during the G1 phase, and is regained when AcrIIA4-Cdt1 is degraded in the S/G2 phases therefore, time-delayed transfection would allow for SpyCas9 activity in G1 phase and inhibition in S/G2 phase (Page 3, Column 1). Matsumoto teaches 293A cells were first transfected with an episomal vector encoding Cas9 (Page 8, Column 1). Matsumoto teaches that 24 hours after the cells were administered the Cas9 they were transfected with a second plasmid containing the AcrIIA4-Cdt1 (Page 8, Column 2).
Due to Shin teaching the administration after 6 hours and Matsumoto teaching after 24 hours, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Shin and Turocy to include the time-delayed administration of the AcrIIA4 protein between 6 to 24 hours after the initial administration of Cas9 because Shin teaches it is within the ordinary skill in the art to use Shin teaches timed addition of AcrIIA4 can significantly abolish off-target editing and greatly increase the fidelity of Cas9RNP and that the addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics, Turocy teaches Cas9 activity at off-target sites appears to occur with a delay relative to the on-target site in human embryos and while the majority of on-target sites were modified within the first cell cycle of embryo development, most off-target genetic change occurred in later cell cycles and were mosaic, Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism and Matusmoto teaches when Cas9 and AcrIIA4 are co-expressed there is a loss of AcrIIA4 within the first cell cycle due to degradation which does not help with the inhibition of Cas9 and thus the downstream effects, however, time-delayed administration of 24 hours of the AcrIIA4 protein, effectively after or at the end of the first cell cycle phase, inhibited Cas9 and prevented unwanted off-targeting effects.
One would have been motivated to make such a modification in order to receive the expected benefit of inhibition of Cas9 after the first cell cycle phase to reduce off-target effects as taught by Matusmoto.
Response to Arguments - Claim Rejections - 35 USC § 103
The previous rejection of claims 1, 3-6, 10, 11, 13-16 and 20 under 35 U.S.C. 103 has been withdrawn and a NEW Rejection to address the amendments made to the claims filed on 03/17/2026 was written.
Applicant’s arguments have been fully considered but are not found to be persuasive.
Applicant argues that Turocy does not teach the claimed invention such as all claims directly or indirectly require that the methods reduce, eliminate, or prevent mosaicism of the targeted locus or allele which has been edited. Applicant continues that Turocy is not a primary teaching of any specific investigation but instead a review article. Applicant argues Turocy is merely suggesting a possibility that is not yet taught or supported by empirical evidence; specifically, Turocy specifies that "[a] primary limitation of all gene-editing approaches is the ability to prevent mosaicism." Page 1565, first column and Turocy theorizes that "[b]y restricting the activity of gene editors to the first cell cycle, and potentially in advance of the replication of the targeted locus, mosaicism could potentially be avoided." Page 1565, first column.
Applicant continues to argue that Turocy continues exploring the theoretical, stressing the uncertainty reciting "The discovery of anti-CRISPR proteins ... may well enable such temporal control through timed injection of the anti-CRISPR protein relative to Cas9." Page 1565, first column and Turocy notes that "[a] large body of work will be needed to better understand the endogenous embryo repair machinery and increase the frequency of desired repair outcomes." Page 1565, first column. Applicant argues that Turocy concludes that "[a]nti-Crispr proteins have promise to reduce on-target and off-target mosaicism but have not as yet been tested in human embryos." Page 1565, first column and Turocy's disclosure does not rise to the level of certainty required to be considered to "disclose or suggest" at least this claimed feature required by every pending claim, especially as amended and focused only on on-target mosaicism. Applicant finishes their arguments with the assertion that Turocy clearly does not provide or profess such an expectation of success with regard to on-target mosaicism, instead stressing the uncertainty of the theory and with regard to both on-target and off-target results.
In response to applicant's arguments against the references individually, 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). The rejection of independent claim 1 is rejected using the primary reference of Shin which teaches K652 cell stably expressing a genomically integrated BFP reporter with nucleofection of Cas9-sgRNA (Cas9 RNP) complexes targeting BFP resulting in the loss of the BFP fluorescence (Page 2, Column 2). Shin teaches that addition of AcrIIA4 6 hours after Cas9 RNP reduced editing by ~50%, demonstrating the use of inhibitors in revealing in vivo gene editing kinetics (Page 3, Column 2).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, 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 this case, Shin does not teach the method within an embryo, Turocy is relied on for the suggestion and motivation of the systems success within an embryo and Ma is relied on for the administration CRISPR-Cas9 complex injected into metaphase II (MII) oocytes eliminates mosaicism.
Specifically, Turocy teaches a primary limitation of all gene-editing approaches is the ability to prevent mosaicism and by restricting the activity of gene editors to the first cell cycle then mosaicism could be avoided (Page 1565, Column 1). Ma teaches mechanisms responsible for mosaicism in embryos were also investigated and a proposed solution to minimize their occurrence developed—namely the co-injection of sperm and CRISPR–Cas9 components into metaphase II (MII) oocytes (Page 414, Column 1). Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism (Page 415, Column 2 bridging Page 416, Column 1; and Page 416, Fig. 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Shin to include the administration CRISPR-Cas9 complex injected into metaphase II (MII) oocytes eliminates mosaicism by Ma because Shin teaches it is within the ordinary skill in the art to use teaches timed addition of AcrIIA4 can significantly abolish off-target editing of Cas9 RNP, Turocy teaches restricting the activity of gene editors to the first cell cycle by allowing Cas9-sgRNA editing within the first cell cycle and then administering a CRISPR-Cas inhibitor timed after the completion of the first cell cycle and Ma teaches CRISPR–Cas9 was mixed with the sperm suspension and co-injected into 75 MII oocytes during ICSI; no difference was observed in the survival, fertilization and cleavage rates between CRISPR–Cas9-injected and intact control oocytes; allowing genome editing to occur when a sperm contains a single mutant copy and eliminates mosaicism. One would have been motivated to make such a modification in order to receive the expected benefit of delayed addition of the anti-Crispr protein AcrIIA4 inhibits off-target cleavage while still allowing on target activity in embryos and administration of CRISPR-Cas9 complex injected into metaphase II (MII) oocytes eliminates mosaicism as taught by Turocy and Ma, respectively.
Applicant continues to argue that due to the previous arguments outlined above in regards to the independent claim, the rejection of claims 4-6 and 14-16 should also be withdrawn.
As outlined in the response to the arguments above, the rejection is deemed proper and maintained and therefore, Applicant’s arguments are not found persuasive.
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 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 ALEXANDRA ROSE LIPPOLIS whose telephone number is (703)756-5450. The examiner can normally be reached Monday-Friday, 8:00am to 5:00pm EST.
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, JENNIFER A DUNSTON can be reached at (571) 272-2916. 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.
/ALEXANDRA ROSE LIPPOLIS/Examiner, Art Unit 1637
/Jennifer Dunston/Supervisory Patent Examiner, Art Unit 1637
Prosecution Insights