DETAILED ACTION
Status of the Claims
Claims 1, 3-5, 17, 19-22, and 24-30 are currently pending.
Claims 2, 6-16, 18, and 23 have been canceled.
Claims 1, 3, and 17 are currently amended.
Claims 1, 3-5, 17, 19-22, and 24-30 are the subject of this Office Action.
The following Office Action is in response to Applicant’s communication dated 05/22/2026. Rejection(s) and/or objection(s) not reiterated from previous office actions are hereby withdrawn. The following rejection(s) and/or objection(s) are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
As an initial matter, claim 1 now recites step (c) “isolating a cell comprising edits at two or more target loci”, however, the rest of the claim has been newly amended to recite six target loci. It is unclear if this was an oversite and was intended to instead recite “isolating a cell comprising edits at six or more target loci”. In the interest of compact prosecution, Applicant is respectfully requested to clarify if this should be two or six loci.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Withdrawn Claim Objection(s) and/or Rejection(s)
The objections to claims 3 and 9 for not ending in a period are withdrawn in light of amendments made to claim 3 adding a period and in light of claim 9 being canceled.
The rejection of claims 1-30 under 35 U.S.C. 103 as being unpatentable over Hoellerbauer et al. in view of Lee et al. is withdrawn in light of amendments made by Applicant to claims 1 and 17 and canceling of claims 2, 6-16, 18, and 23.
The non-statutory type double patenting rejections of claims 7-16 are withdrawn in light of these claims being canceled.
New Claim Rejections - 35 USC § 112(b) – Indefiniteness
Necessitated by Amendments
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-5, 17, 19-22, and 24-30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1 and 17 each have been newly amended to comprise the limitations of “serially transfecting a population of cells with the RNP until at least about 10% indel formation is achieved at each target locus” and “serially transfected with the RNP until at least about 85% indel formation is achieved at each target locus”, however, as per MPEP § 2173.05(c)(I), “[u]se of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible.” In the present case, it is unclear if both limitations are required to meet the claims. Accordingly, the metes and bounds of the claim are unascertainable. In the interest of compact prosecution, the claims will be interpreted as requiring a minimum of 85% indel formation to satisfy the claims.
Claims 3-5, 19-22, and 24-30 depend from claims 1 and 17 and are therefore similarly rejected.
As per MPEP 2173: It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter. Therefore, claims that do not meet this standard must be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph as indefinite. Further, as per MPEP 2173.02: If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112, second paragraph, would be appropriate. As currently written, the metes and bounds of the rejected claims are unascertainable for the reasons set forth above, thus the above claim(s) and all dependent claims are rejected under 35 USC 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
New Claim Rejections - 35 USC § 112(d)
Necessitated by Amendments
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 and 20-21 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. Claims 4 and 20-21 recite serial transfecting the cells until a minimum percentage of indel formation of 10% or 20% is achieved, which appears to conflict with the limitations of claims 1 and 17, from which they depend. 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.
New Claim Rejections – 35 U.S.C. 112(a) – Written Description
Necessitated by Amendments
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1, 3-5, 17, 19-22, and 24-30 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per MPEP 2163(I), "[T]he ‘essential goal’ of the description of the invention requirement is to clearly convey the information that an applicant has invented the subject matter which is claimed." In re Barker, 559 F.2d 588, 592 n.4, 194 USPQ 470, 473 n.4 (CCPA 1977). To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116.
As per MPEP 2163.02, the courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997); Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (one must define a compound by "whatever characteristics sufficiently distinguish it").
Finally, MPEP 2163.04 describes the burden on the examiner with regard to the Written Description requirement, stating that in rejecting a claim, the examiner must set forth express findings of fact which support the lack of written description conclusion. These findings should:
(A) Identify the claim limitation(s) at issue; and
(B) Establish a prima facie case by providing reasons why a person skilled in the art at the time the application was filed would not have recognized that the inventor was in possession of the invention as claimed in view of the disclosure of the application as filed.
In the present case, all claims recite a method of “transfecting” cells, which comprises an array of chemical, viral, and physical methods of introducing foreign nucleic acids (and proteins) into eukaryotic cells (See Table 1 of Kim et al., Anal Bioanal Chem, 2010, 397:3173-3178). However, the specification as filed only provides sufficient written description support for electroporation. Specifically, this is the sole method recited in the Examples (e.g., the use of a NeonTM Transfection System as per the Synthetic gRNA target design and screening section on p. 71). In fact, no other form of cell transfection is identified in the disclosure. While several transfection methods are common and well-known in the art (e.g., as evidenced by Kim et al.), they are also well-known to vary greatly in efficiency (e.g., also as per Kim et al.) and there is no indication or reasoning presented that any form of transfection can achieve the minimum about 85% indel formation as now required by the claims. Therefore, while Applicant has shown possession of serial electroporation of CHO cells, they were clearly not in possession of the entire genus of serial transfection as of the effective filing date.
New Claim Rejections – 35 U.S.C. 103(a)
Necessitated by Amendments
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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Lee et al., Koh et al., and Wang et al.
Claims 1, 3-5, 17, 19-22, and 24-30 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (ACS Synth. Biol., 2016, 5:1211−1219, of record) in view of Koh et al. (Am J Respir Cell Mol Biol, 2020, Vol 62, Issue 3, pp 373–381) and Wang et al. (Journal of Genetics and Genomics, 2016, 43:319e327) as evidenced by Kim et al. (Appl. Microbiol. Biotechnol., 2012, 93:917-930, of record).
Regarding claims 1, 4-5, 20-22, and 25-26, Lee discloses a method of producing a cell comprising edits at multiple target loci (e.g., multiple gRNA targets in CHO cells as per Fig. 2 and the paragraph bridging pp. 1214-1215):
combining multiple guide RNAs (gRNAs) capable of directing CRISPR/Cas9-mediated indel formation at respective target loci with Cas9 protein to form a ribonucleoprotein complex (RNP) that comprises said multiple gRNAs, wherein said multiple gRNAs comprises at least one gRNA for each of said multiple target loci (e.g., “a knockout library was generated by treating sgRNA mixtures for the selected genes with Cas9 protein” as per the paragraph bridging pp. 1214-1215);
transfecting a population of cells with the RNP until at least 10% indel formation is achieved at each target loci (e.g., as per Fig. 2); and
isolating a cell comprising edits at multiple target loci by single cell cloning of the cell from the population of transfected cells.
However, it is noted that Lee is silent as to “the population of cells is serially transfected with the RNP until at least about 85% indel formation is achieved at each target locus”, as well as the details of the “efficiency screen”, as set forth in claim 1.
Koh similarly discloses methods of transfecting mammalian cells with CRISPR-Cas9 RNPs as a means to introduce indels/knockouts (e.g., as per the Abstract). Specifically, Koh discloses serially transfecting the cells in order to increase efficiency. As per the Optimizing Genome Targeting in Human Primary Bronchial Epithelial Cells section, Koh states “addition of a second round of electroporation, performed 3 days after the first electroporation, substantially increased efficiency” (e.g., as per the left column of p. 375) and “delivery of sgRNA resulted in a higher targeting efficiency (up to 97% with two electroporations; Figure 1D)” (e.g., as per the middle column of p. 375).
Furthermore, regarding the “efficiency screen” of claim 1, Koh discloses “in cases where one gRNA was used per sample, PCR products were analyzed by Sanger sequencing” in the Measuring Targeting Efficiency section at pp. 374-375.
In addition, Wang similarly discloses the advantages of multiple rounds of electroporation in delivering CRISPR-Cas9 RNPs to mammalian cells (e.g., as per the Abstract and the Delivery of Cas9 protein through a series of electroporation dramatically increased the HDR efficiency section on p. 320, reporting percentages of 60%, 71.43%, 81.33%, and 100% efficiency using 1, 4, 6, and 8 rounds of electroporation, respectively).
Kol et al. (Nat. Comm., 2020, 11:1908) discloses the creation of CHO cell lines wherein they used multiplex CRISPR-Cas9 transfections to knock out 6, 11, or 14 genes, as a means to increase biotherapeutic protein production (e.g., as per the Abstract), which would be of particular interest to Lee, and would provide the motivation to direct CRISPR/Cas9-mediated indel formation at six or more loci in CHO cells.
It is noted that none of the applied references specifically recite simultaneous transfection of RNPs targeting six or more loci at about 85% or more efficiency as required by the claims.
It would have been prima facie obvious to a person of ordinary skill in the art prior to the effective filing date of the application to perform serial transfections (e.g., multiple electroporations) as per Koh in the CHO genome engineering as per Lee. One of ordinary skill in the art would have been motivated to do so since Koh specifically shows that multiple electroporations “substantially increased efficiency” and “up to 97%” as detailed above.
One of ordinary skill in the art would have had a reasonable expectation of success as of the application’s effective filing date in combining the teachings of the prior art references to arrive at the invention as presently claimed since such serial CRISPR-Cas9 RNP transfection/nucleofection was all performed with commercially available equipment and reagents, and further since Lee notes at p. 1214 that the efficiency they see in CHO cells “is also comparable to RNP mediated target mutagenesis in human cells including fibroblast and pluripotent stem cells”, suggesting that the data from Koh and Wang would translate well to the CHO cells of Lee.
Regarding the limitations of combining six or more guide RNAs capable of directing CRISPR/Cas9-mediated indel formation by serially transfecting with RNPs until at least about 85% indel formation is achieved, it would have been obvious to one of ordinary skill in the art to optimize the number of serial transfections/electroporations, RNP amount, gRNA sequences, Cas9:gRNA ratios, and other electroporation parameters to maximize the indel formation efficiency and since increasing such efficiency increases the probability of isolating a clone with all the desired edits. Such an endpoint therefore represents optimization of known result-effective variables through routine experimentation. See MPEP § 2144.05(II)(A), which states that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 17 and 27-30, Lee discloses methods of "DNA-free RNA-guided Cas9 nuclease mediated genome editing facilitates the rational design of the CHO cell genome for efficient production of high quality therapeutic proteins" such as monoclonal antibodies (e.g., as evidenced by Kim cited by Lee), as per the Abstract.
Regarding claims 3 and 19, which recites a ratio of moles of RNP to number of transfected cells between about 0.1 pmol per 106 cells to about 5 pmol per 106 cells, Applicant is directed to In re Aller, Lacey, and Hall, 105 USPQ 233 (C.C.P.A. 1955), where the court found
"More particularly, where the general conditions
of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable
ranges by routine experimentation."
Routine optimization is not considered inventive and no evidence has been presented that the selection of the ratio of RNPs to cells was other than routine or that the results should be considered unexpected in any way as compared to the closest prior art.
***
Response to Arguments
The 05/22/2026 remarks argue: not all elements are taught.
Applicant's arguments have been fully considered but they are not persuasive for at least the following reasons.
The obviousness rejection herein has been altered to address all of the claim amendments present in the reply of 05/22/2026.
Conclusion
No claims are 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 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.
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/JEREMY C FLINDERS/Primary Examiner, Art Unit 1684
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