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 .
Restriction/Elections
Applicant’s election without traverse of Group 1, claims 1-9, 11-18, and 20-28, in the reply filed on 12/03/2025 is acknowledged. Applicant further elected a species directed to a method of making a modified neutrophil, encompassing claims 20-28.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 04/03/2023 and 12/03/2025 have been considered by the examiner.
Status of Claims
Claims 1-36 are pending in this application. Claims 1-19 and 29-36 are withdrawn from consideration as being directed to a nonelected invention. Claims 20-28 are under consideration.
Claim Objections
Claim 24 is objected to because of the following informalities: “…a nuclease selected from a meganuclease, ZFNs, TALENs…” should read “…a nuclease selected from a meganuclease, ZFN, TALEN…” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 23 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 23 recites the limitation "gene editing" in the first line of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 24 recites the limitation "the gene editing method" in the first line of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 24 attempts to claim a use of a nuclease for a gene editing method without setting forth any steps involved in the process. The claim is indefinite because it merely recites using the nuclease for a gene editing method of claim 22 without any active, positive steps delimiting how this use is practiced. See MPEP 2173.05(q). Removing the phrase “the use of” would be remedial.
Claim 25 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 25 recites the limitation "the nuclease" in the first line of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 27 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 27 recites the limitation "the ETV-induced HPCs" in the first line of the claim. There is insufficient antecedent basis for this limitation in the claim. Editing the phrase to read “the ETV-induced HEPs” would be remedial.
Claim 27 recites the limitation "steps (c) and (d) comprising" in the first line of the claim. There is insufficient antecedent basis for this limitation in the claim. Editing the phrase to read “step (c) comprises” would be remedial.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20-28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The MPEP discusses the written description requirement in more detail starting at § 2163. The following guidance is more thoroughly expounded upon therein. But in summary, the analysis of whether the specification complies with the written description requirement calls for the examiner to compare the scope of the claim with the scope of the description to determine whether applicant has demonstrated possession of the claimed invention. Such a review is conducted from the standpoint of one of skill in the art at the time the application was filed (see, e.g., Wang Labs. v. Toshiba Corp., 993 F.2d 858, 865, 26 USPQ2d 1767, 1774 (Fed. Cir. 1993)).
For claims drawn to a genus, the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
A “representative number of species” means that the species which are adequately described are representative of the entire genus, and is an inverse function of the skill and knowledge in the art. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. Satisfactory disclosure of a “representative number” depends on whether one of skill in the art would recognize that the applicant was in possession of the necessary common attributes or features of the elements possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. If a representative number of adequately described species are not disclosed for a genus, the claim to that genus must be rejected as lacking adequate written description under 35 U.S.C. 112, para. 1.
Claim 20 recites “human pluripotent stem cells having inhibited expression of SIRPα” in step (a) of the claim. The claim does not recite the method of inhibiting SIRPα expression, but rather broadly embraces human pluripotent stem cells having inhibited expression of SIRPα that are obtained by any method.
The dependent claim 22 recites that the expression of SIRPα is inhibited in the human pluripotent stem cells by gene mutation, RNA-mediated inhibition, RNA editing, DNA gene editing, or base editing. Claims 24-25 and paragraph 0017 of the specification also recite that use of a nuclease such as Cas9 is a particular gene editing method useful for inhibiting expression of SIRPα. Paragraph 0126 of the specification provides the methodology and reagents required for generating SIRPα-knockout iPSCs using Cas9 protein and sgRNAs. Figure 1A provides a schematic of CRISPR/Cas9 driven knockout of SIRPα at exon 3 using two sgRNAs. The specification does not reduce to practice any additional methods of inhibition of SIRPα expression.
An adequate written description of “human pluripotent stem cells having inhibited expression of SIRPα” as broadly claimed requires more than a statement that it is part of the invention and a method for generating it. It is not sufficient to define a genus of human pluripotent stem cells having inhibited expression of SIRPα solely by its desired biological property, i.e. inhibition of SIRPα expression, because it is simply a wish to know the identity of the genetic modification and reagents (such as TALEN or ZFN pairs) that are capable of causing the desired genetic modification. Also, naming a type of material generically known to exist, in the absence of knowledge as to what that material consists of, is not a description of that material. The discovery of all genetic modifications to the SIRPα gene would necessarily require the screening and testing of a vast number of genetic modifications and reagents (such as TALEN or ZFN pairs) for their ability to reduce SIRPα expression in a cell by trial and error experimentation. Experimentation would also be required to discover all biologically relevant small molecules or cell culture methods that would inhibit SIRPα expression in human pluripotent stem cells.
The information provided in the instant case is not deemed sufficient to reasonably convey to one skilled in the art that the Applicant is in possession of the broad genus of methods of producing human pluripotent stem cells having inhibited expression of SIRPα at the time the application was filed. Dependent claims 21-28 are included in the basis of the rejection because they do not correct the deficiencies of the claim upon which they depend.
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.
Claims 20-28 are rejected under 35 U.S.C. 103 as being unpatentable over Brok-Volchanskaya et al. (Stem Cell Reports, 2019; hereinafter Brok), and further in view of Zen et al. (Nature Communications, 2013; hereinafter Zen) and Dannenmann et al. (Methods in Molecular Biology, 2020; hereinafter Dannenmann).
With regard to Claims 20-21 and 26-28, Brok teaches a method of producing neutrophils from pluripotent stem cells, comprising transiently transfecting human induced pluripotent stem cells (hiPSCs) with ETV2. Brok teaches that the day after transfection (day 1), the medium was changed with 1 mL of Stemline II, a serum-free and xeno-free medium, supplemented with 20 ng/mL of human FGF2 for direct programming of the hiPSCs into ETV2-induced hematoendothelial progenitors (ETV2-induced HEPs). On day 3, the medium was changed and 1 mL of Stemline II supplemented with FGF2 (20 ng/mL), GM-CSF (25 ng/mL), and UM171 (50 nM) were added to differentiate the ETV2-induced HEPs into myeloid progenitors. This medium was added daily up to days 8 to 12. On days 8 to 12, floating myeloid progenitor cells were gently harvested and used for terminal neutrophil differentiation. To induce neutrophil terminal differentiation, floating cells were cultured in StemSpanH300 medium, supplemented with GlutaMAX 100X, ExCyte 0.2%, human granulocyte-colony stimulating factor (G-CSF; 150 ng/mL), Am580 retinoic acid agonist (2.5 μM), and gentamycin (1,000×) at 5 × 105 cells/mL density. After 4 days, 2 mL of the same medium with all components and cytokines was added on the top of existing culture. Mature neutrophils were gently harvested from the supernatant after 6–8 days of culture, leaving the adherent macrophages, and filtered through a 70-μM mesh. Brok teaches that this method significantly expedites generation of neutrophils, with the first batch of neutrophils available as soon as 14 days after initiation of differentiation and allows the generation of up to 1.7 × 107 neutrophils from 106 hiPSCs. See, for example, the abstract; page 1099, right column, lines 12-25; page 1101, left column, lines 1-3; page 1107, right column, lines 47-51; and page 1108, left column, lines 1-21 of Brok. Brok also teaches that the described method in conjunction with CRISPR/Cas9 gene editing technologies can already be used for disease modeling and interrogation of molecular mechanisms involved in neutrophil development and function. See page 1107, right column, lines 3-10 of Brok.
Brok does not teach that the hiPSCs have inhibited expression of SIRPα.
Zen teaches that SIRPα is an immunoreceptor tyrosine-based inhibitory motif (ITIM)-containing receptor, SIRPα cytoplasmic signaling ITIMs in neutrophils are cleaved during active inflammation, and the loss of SIRPα ITIMs enhances the neutrophil inflammatory response. Zen further teaches that cleavage of SIRPα in neutrophils but not monocytes occurs at the post-acute stage of inflammation and correlates with increased neutrophil recruitment to inflammatory loci. The results taught by Zen demonstrate a SIRPα-based mechanism that dynamically regulates neutrophil inflammatory responses. See, for example, the abstract of Zen.
Dannenmann teaches a stepwise protocol for CRISPR/Cas9 genome editing of human iPSCs followed by hematopoietic/neutrophilic differentiation. See, for example, the abstract, and page 474 of Dannenmann. Dannenmann also teaches that the use of CRISPR/Cas9-based gene correction or knockout in human iPSCs with subsequent in vitro hematopoietic differentiation is a valuable tool to delineate the role of the gene of interest on hematopoietic differentiation in a fast, efficient, and reproducible manner. See, for example, page 471, lines 10-13 and page 472, lines 1-3 of Dannenmann.
Prior to the effective filing date of the instantly claimed invention, it would have been prima facie obvious to one of ordinary skill in the art to combine the method of producing neutrophils from human iPSCs of Brok and the teachings demonstrating the role of SIRPα in regulating neutrophil inflammatory function of Zen additionally supported by the protocol provided by Dannenmann to develop a method of producing modified neutrophils from human iPSCs having inhibited expression of SIRPα. One of ordinary skill in the art would have been motivated to make such a combination with a reasonable expectation of success, because Brok teaches that the method of producing neutrophils from iPSCs comprising transfection with ETV2 can already be used in conjunction with CRISPR/Cas9 gene editing technologies to interrogate molecular mechanisms involved in neutrophil function and Zen teaches the role of SIRPα in regulating neutrophil inflammatory function. One of ordinary skill in the art would understand that producing SIRPα-deficient neutrophils from human iPSCs using CRISPR/Cas9 gene editing would allow for quicker, more efficient, and reproducible interrogation of the role of SIRPα in neutrophil function.
With regard to claims 22-25, as stated above, Brok teaches a method of producing neutrophils from human iPSCs which can be combined with CRISPR/Cas9 DNA gene editing technology to knock out expression of genes involved in neutrophil development and function, and Zen teaches the role of SIRPα in neutrophil function. Therefore, it would have been prima facie obvious to one of ordinary skill in the art to combine the teachings of Brok and Zen, further supported by the protocol of Dannenmann, to use of CRISPR/Cas9 DNA gene editing to knock out SIRPα expression in human iPSCs and produce SIRPα-deficient neutrophils.
Therefore, the combined prior art references render claims 20-28 obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH PHILIPOSE whose telephone number is (571)272-9562. The examiner can normally be reached Monday-Friday 7:30am-5pm.
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/H.P./Examiner, Art Unit 1631
/JAMES JOSEPH GRABER/Examiner, Art Unit 1631
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