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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 44-60 in the reply filed on 11/7/2025 is acknowledged. The traversal is on the ground(s) that Inventions I-III are not independent inventions. Specifically, Inventions I and II are directed to related processes with overlapping operational procedures and that Invention II is implemented on the basis of Invention I. Inventions I and III are related to process of making and product made and Inventions II and III are both relate to non-human mammals. Applicants continues that the three Inventions share a common specific technical feature, which a person skilled in the art could not have readily derived from the prior art. This is not found persuasive because while Groups I-III share a “special technical feature”, this instant application was not restricted under 371 practice and thus a special technical feature is not considered regarding the separation of inventions. Further, while the Groups are each related to each other, they are each distinct inventions that would require a separate and burdensome search in the art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 61-63 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/7/2025.
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 44-60 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for:
a method for making knockout (KO) mouse whose genome comprises a homozygous deletion of a nucleotide sequence encoding a CH1 domain of an IgM heavy chain constant region and homozygous deletion of a nucleotide sequence encoding a CH1 domain of an IgG heavy chain constant region, wherein the method comprises:
electroporating a fertilized mouse egg with a sgRNA and Cas9 protein or Ca9 mRNA, wherein the sgRNA targets the nucleotide sequence encoding the CH1 domain of the IgM and IgG heavy chain constant regions,
implanting the fertilized egg obtained from step (i) into a surrogate female mouse,
obtaining a chimeric mouse,
breeding the chimeric mouse with a wild-type mouse to obtain F1 progeny that are heterozygous for a deletion of a nucleotide sequence encoding a CH1 domain of an IgM heavy chain constant region and deletion of a nucleotide sequence encoding a CH1 domain of an IgG heavy chain constant region,
breeding a male mouse of said F1 progeny with a female mouse of said F1 progeny to obtain F2 progeny that are homozygous for a deletion of a nucleotide sequence encoding a CH1 domain of an IgM heavy chain constant region and deletion of a nucleotide sequence encoding a CH1 domain of an IgG heavy chain constant region, wherein said knockout mouse produces an immunoglobulin which does not express the CH1 domain of the IgM and IgG heavy chains in response to an antigen,
does not reasonably provide enablement for:
preparing any species of non-human mammal other than mouse.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
While determining whether a specification is enabling, one considers whether the claimed invention provides sufficient guidance to make and use the claimed invention, if not, whether an artisan would have required undue experimentation to make and use the claimed invention and whether working examples have been provided. When determining whether a specification meets the enablement requirements, some of the factors that need to be analyzed are: the breadth of the claims, the nature of the invention, the state of the prior art, the level of one of ordinary skill, the level of predictability in the art, the amount of direction provided by the inventor, the existence of working examples, and whether the quantity of any necessary experimentation to make or use the invention based on the content of the disclosure is ''undue'' (In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)). Furthermore, USPTO does not have laboratory facilities to test if an invention will function as claimed when working examples are not disclosed in the specification, therefore, enablement issues are raised and discussed based on the state of knowledge pertinent to an art at the time of the invention, therefore skepticism raised in the enablement rejections are those raised in the art by artisans of expertise.
The breadth of the claims encompasses preparing any species of non-human mammal, other than mouse, by making a CH1 domain of an IgM and IgG heavy chain constant region not expresses or incorrectly expressed.
Whereas the nature of the invention is the targeted deletion of the nucleotide sequence encoding the CH1 domain the IgG and IgM heavy chain constant regions via targeted sgRNA to the mouse CH1 genes, the specification does not enable the claimed invention for its entire breadth.
Working Examples
The specification teaches in Example 9 starting on pg. 32 the preparation of homozygous mice. Specifically, the specification teaches that in order to knock out the nucleotide sequence encoding the CHI domain in the mouse Ighm gene, targets were selected on the upstream and downstream portions of the first exon in the mouse Ighm gene. Targeting sequences (SEQ ID NO: 1 and SEQ ID NO: 2) for sgRNA were selected on the upstream portion of the first exon of the Ighm gene in the mouse, targeting sequences (SEQ ID NO: 5 and SEQ ID NO: 6) for sgRNA were selected on the downstream portion of the first exon of Ighm in the mouse, and sgRNA sequences were designed according to the targeting sequences.
The specification continues that the mice were subjected to ovulation induction and in-vitro fertilization, and the obtained fertilized eggs were cultivated. Then, the sgRNA and Cas9 proteins (or Cas9 mRNA) were mixed and electroporated the fertilized eggs of the mice or injected together into the fertilized eggs of the mice by means of a microinjection method.
The fertilized egg cells were implanted into surrogate mother mice, and F0-gencration chimeric mice are produced. Individuals in which knockout occurred among the F0-generation mice were detected by extracting mouse tail genomic DNA and performing PCR detection. The knockout mice were sequenced so as to confirm that target sequences were deleted. F0-generation chimeric mice in which genes were correctly knocked out were selected for subsequent propagation and identification. the F0-gencration mice in which target genes were knocked out were mated with wild-type mice to obtain F1-generation mice, and by extracting genomes of mouse tails and performing PCR detection, Fl-generation positive heterozygous knockout mice that can be stably inherited were selected. Then, the Fl-generation heterozygous mice were mated with each other to obtain F2-gencration positive homozygous knockout mice to obtain homozygous mice.
Unpredictability of Any Non-Human Mammal
The claimed method teaches a method making knockout mice using specific sgRNA that target genes encoding mouse CH1 of IgG and IgM heavy chain constant regions. The specification does not teach any other means by which to prepare the knockout mouse of the claimed invention. Only through sgRNA specific to mouse nucleotide sequences and Ca9 modification can the knockout mouse of the claimed invention be prepared. The specification does not teach any other nucleotide sequences for sgRNA that would guide the skilled artisan to practice the claimed method in any other non-human mammal species other than mouse.
One of skill in the art would find the method unpredictable to practice in non-mouse species since the nature of sgRNA is highly specific and prone to off target genetic modification. In this regard, Zheng et al. (2016, Scientific Reports, Vol. 7, pgs. 1-8) teaches that “Targeting specificity is an essential issue in the development of CRISPR-Cas technology” (Abstract line 1) and that off target genetic modification is an inherent problem in the design and use of sgRNA (pg. 1 parag. 1). Specifically, Zheng teaches:
“Under certain scenarios, sgRNA may guide Cas9 to recognize and cleave imperfectly matched DNAs, this leads to so called “off-target” cleavage. As a major concern in the development of CRISPR-Cas9 technology, off-target activity can cause genome instability and disruption of normal gene functions. Initial studies revealed that imperfectly matched DNAs with up to 6 mismatches were efficiently cleaved, causing evident off-targeting effects4,5. Using a battery of endogenous loci-targeting sgRNA, recent studies reported that while some mismatched genome loci were cleaved as efficiently as that of perfectly matched target6,7, many single-nucleotide mismatched targets however resist cleavage by an active sgRNA8,9. Besides revealing widespread off-target effects, these studies also demonstrated that some mismatches are not tolerated by CRISPR-Cas system” (pg. 1 parag. 1 lines 6-15).
Complementing the teachings of Zheng are those of Guo et al. (2023, Front. Bioeng. Biotechnol., Vol. 11, pgs. 1-11) who teaches that:
“the sequence of sgRNAs is a crucial factor affecting on-target and off target efficiency. Different sgRNAs targeting the same gene locus can have distinct outcomes, thus it is important to screen for a suitable sgRNA for the interested gene locus before further experiment” (pg. 7 col. 2 parag. 2 lines 2-6).
As Guo teaches that even among sgRNA targeted to the same gene locus that different outcomes can occur, the skilled artisan would find that the sgRNA of the claimed invention, which only targets the nucleotide sequence encoding mouse CH1 expressed in the IgG and IgM heavy chain constant regions, would not work in any other species of non-human mammal other than mouse. The specification does not guide the skilled artisan to find other sgRNA sequences that could target the nucleotide sequence encoding CH1 any other non-mouse species.
Thus, the claimed invention is not enabled for practice in any species of non-human mammal, but rather only mice are enabled to practice the claimed invention and the skilled artisan would require an undue amount of experimentation without a predictable degree to practice the claimed invention. Thus, limiting the claimed invention to the scope set forth above is proper.
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 58 and 60 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 58 and 60 are unclear. Both claims recite the limitation that the preparation method of claim 47 “adopts” an “sgRNA composition” and a “knockout vector” respectively. However, it is unclear what the metes and mounds are regarding the limitation “adopt” and it is unclear how the preparation method adopts a product, either an sgRNA or a knockout vector.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 44-49 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ge et al. (WO2019184014, published 3/10/2019, WIPO English Machine Translation Attached).
Claim Interpretation: Ge et al. does not recite the phrase “constant region”, but rather the term “C-region” throughout their specification. It is thus interpreted that the recitation of C-region in Ge is the same as constant region as instantly claimed.
Regarding claims 44 and 47, Ge et al. teach a method of preparing a knockout mouse whose genome comprises a deletion of the CH1 domain of an IgM heavy chain constant region and a deletion of the CH1 domain of the IgG heavy chain constant region (parags. 8, 11, 39, 97-98).
Regarding claims 45 and 49, Ge teaches that only the CH1 domain is deleted and that CH2, CH3 and CH4 remain intact (parag. 11).
Regarding claim 46, Ge teaches that the modification to not express CH1 can occur in the first gene (parag. 66 and Figs. 6-7).
Regarding claim 48, Ge does not teach disruption of the λ light chain.
Thus the teachings of Ge clearly anticipate the invention of claims 44-49.
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.
Claim(s) 44, 47, 50-52 and 54-56 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ge et al. (WO2019184014, published 3/10/2019, WIPO English Machine Translation Attached) in view of Fontaine et al. (2016, Diabetes, Vol. 65, pgs. 25-33).
Claim Interpretation: Ge et al. does not recite the phrase “constant region”, but rather the term “C-region” throughout their specification. It is thus interpreted that the recitation of C-region in Ge is the same as constant region as instantly claimed.
Regarding claims 44 and 47, Ge et al. teach a method of preparing a knockout mouse whose genome comprises a deletion of the CH1 domain of an IgM heavy chain constant region and a deletion of the CH1 domain of the IgG heavy chain constant region (parags. 8, 11, 39, 97-98).
Regarding the limitations of claims 50, 51, 52, 54, 55, 56, Ge teaches that the IgM and IgD heavy chain constant regions encode an antibody, that the nucleotide sequence encoding CH1 from region from IgG3 to IgG2c is deleted and that the mouse comprises a complete gene encoding the λ light chain (parags. 44, 46, 66 and Figs. 1, 3 and 6-7).
Ge does not teach:
using the C57BL/6 mouse.
Regarding the C57BL/6 mouse in claims 50-52, 54, 55, Fontaine et al. teach that
“For study of the role specific genes, knockout mouse technology is often used. One of the most widely used laboratory mouse strains is the C57BL/6 mouse” (pg. 25 col. 1 parag. 1 lines 3-5).
Thus at the time of filing the ordinary artisan would have found it prima facie obvious to combine the teachings of Ge regarding a method of preparing a knockout mouse with the teachings of Fontaine regarding the C57BL/6 mouse to arrive at the claimed invention.
One or ordinary skill in the art would have been motivated to make such a combinations since Fontaine teaches that the C57BL/6 mouse is one of the most widely used strains for generating knockout mice.
There would have been a reasonable expectation of success that the C57BL/6 mouse of Fontaine could work in the method of Ge since Fontaine teaches that the C57BL/6 mouse is widely used for the study of genes via their disruption, i.e. knockout.
Thus the cited art provides the requisite teaching and motivations to make and use the invention as claimed.
Claim(s) 58 and 60 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ge et al. (WO2019184014, published 3/10/2019, WIPO English Machine Translation Attached) in view of Fontaine et al. (2016, Diabetes, Vol. 65, pgs. 25-33) as applied to claims 44, 47, 50-52 and 54-56 above, and further in view of Ghassemi et al. (2019, Analytical Biochemistry, Vol. 568, pgs. 31-40).
Ge and Fontaine are relied upon above in teaching a method of preparing a knockout mouse.
Ge and Fontaine do no teach:
dual sgRNA to target a gene for knocking out.
Regarding claim 58 and 60, Ghassemi et al. teach a knockout vector comprising
dual sgRNA for targeting a gene of interest for deletion (see Fig. 1, partially reproduced).
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Specifically, Ghassemi teaches that “we provide a precise protocol for generation of a knockout mouse model for β-thalassemia by targeted deletion of exons 2 and 3 in mouse Hbb-bs gene using CRISPR/Cas9.” (pg. 32 col. 1 last parag. lines 1-3).
Ghassemi continues to teach that “traditional methods for gene targeting in mouse using
embryonic stem cells (ESCs) are laborious and time consuming. Recently, CRISPR has been developed to facilitate and improve genomic modifications in mouse or isogenic cell lines. Applying CRISPR to gene modification eliminates the time consuming steps of traditional approach including selection of targeted ESC clones and production of chimeric mouse.” (Abstract lines 3-7).
Thus at the time of filing the ordinary artisan would have found it prima facie obvious to combine the teachings of Ge and Fontaine regarding a method of preparing a knockout mouse with the teachings of Ghassemi regarding dual sgRNA to generate a knockout mouse to arrive at the claimed invention.
One or ordinary skill in the art would have been motivated to use the dual sgRNA of Ghassemi in the method of Ge since Ghassemi teaches that their use of a dual sgRNA avoids the steps of selected a targeted ESC clone and producing a chimeric mouse. Further the use of a dual sgRNA allows the targeting of multiple exons simultaneously as demonstrated by Ghassemi.
There would have been a reaonsable expectation of success that the knockout vector comprising dual sgRNA of Ghassemi would work in the method of Ge since Ghassemi teaches that their knockout vector can be applied to delete any targeted gene or region.
Thus the cited art provides the requisite teachings and motivations to make and use the invention as claimed.
Conclusion
No claims are allowed. SEQ ID NOs: 9-16 are free of the prior art. It should be noted for the record that all of claim limitations regarding SEQ ID NOs: 1-8 are optional and not required by the pending claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID A MONTANARI whose telephone number is (571)272-3108. The examiner can normally be reached M-Tr 8-6.
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/DAVID A MONTANARI/Examiner, Art Unit 1632
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