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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6-26-26 has been entered.
Claims 2-4, 13, 14, 16 have been canceled. Claims 1, 5-12, 15, 17-19 remain pending and under consideration.
Applicant's arguments filed 6-26-26 have been fully considered but they are not persuasive.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Reference to Fig. 8B in claim 1 is unacceptable. The claim must be complete in and of itself (see 112/2nd rejection).
Claim 1 can be written more clearly as ---A genetically modified albino tilapia whose genome comprises a homozygous inactivated slc45a2 gene---.
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.
Claims 1, 5-12, 15, 17-19 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.
Reference to Fig. 8B in claim 1 makes the claim indefinite. The claim must be complete in and of itself. Those of skill would not be able to determine the metes and bounds of the claim because they cannot necessarily refer to Fig. 8B. It is also unclear whether the claim encompasses any amount of redness or is limited to a certain amount of redness. If applicants are attempting to say the eye has a certain amount of redness, then that amount is not in the claim, and the limit of redness that needs to be achieved cannot be determined. Therefore, those of skill would not be able to determine when they were infringing on the claim.
Claim Rejections - 35 USC § 103
Claims 1, 5-12, 15, 17-19 remain rejected under 35 U.S.C. 103 as being unpatentable over Edvardson (PLoS, 2014, Vol. 9, No. 9, e108622, pg 1-7), Shiraki (Scientific Reports, 2018, Vol. 8, No. 13366, pg 1-15), Li (Genetics, 2014, Vol. 197, pg 591-599), Zhu (Scientific Reports, 2016, Vol. 6, No. 31347, pg 1-12), Bian (Marine Drugs, 2019, Vol. 17, No. 386, pg 1-14).
Edvardson taught a genetically modified founder salmon whose genome comprises an inactivated slc45a2 gene (abstract, materials and methods, discussion). The salmon had a “graded phenotype ranging from complete lack of pigmentation to partial loss and normal pigmentation” (abstract) with red eyes (pg 3, Fig. 1A). The founder salmon were bred to homozygosity (pg 2, line 2). The “complete lack of pigmentation” with red eyes or the “partial loss” of pigmentation and red eyes is equivalent to “a heritable albino-red phenotype characterized by a red eye and skin phenotype and complete absence of black/grey pigmentation in skin, peritoneum and eyes”. Edvardson and Shiraki bred the fish for numerous generations (see citations above) so the mutation is “heritable” as required in claim 4. Edvardson bred the fish for numerous generations (see citations above) so the mutation is “heritable” as required in claim 1.
Shiraki taught a genetically modified founder zebrafish whose genome comprises an inactivated slc45a2 gene (abstract, materials and methods, discussion). The zebrafish were albino (e.g. pg 9, “Fluorescence imaging in the head of Tg-albino”) with red eyes (pg 8, Fig. 6F, 6G). Shiraki founder zebrafish were bred to homozygosity (pg 9, last partial paragraph). The “complete lack of pigmentation” with red eyes is equivalent to “a heritable albino-red phenotype characterized by a red eye and skin phenotype and complete absence of black/grey pigmentation in skin, peritoneum and eyes”. Shiraki bred the fish for numerous generations (see citations above) so the mutation is “heritable” as required in claim 1.
The transgenic slc45a2 founder fish of Edvardson and Shiraki are “hybrid” fish as required in claim 1 because the cells of the fish have different genomes – the germ cells have the transgene in their genome, but not all somatic cells have the transgene in their genome. They do not have “said mutation [ ] in a homozygous form” as required in claim 1.
The homozygous slc45a2 transgenic fish of Edvardson and Shiraki are “hybrid” fish as required in claim 1 because they have endogenous DNA and exogenous DNA in their genome. They have “said mutation [ ] in a homozygous form” as required in claim 1 because ALL cells of the homozygous transgenic fish have the transgene in their genome.
Edvardson and Shiraki did not teach inactivating the slc45a2 gene in tilapia as required in claim 1.
However, the means for inactivating a variety of target genes by identifying gRNA target sequences, making Cas9 mRNA, and microinjecting gRNA and Cas9 mRNA into tilapia embryos, and obtaining tilapia with knocked out genes was well known as shown by Li (pg 592, “gRNA design…”, “Cas9 messenger mRNA…”, “Microinjection, genomic DNA extraction, and mutation detection assay”; pg 593, Table 1, nanos2, nanos3, dmrt1, foxl2). A transcriptome analysis of genes (including slc45a2) related to skin color in tilapia was described by Zhu (throughout; pg 6, halfway down; pg 7, 2nd full para). The genome sequence of tilapia was well-known as shown by Bian (“Whole genome sequencing of the blue tilapia…” - title).
Thus, it would have been obvious to those of ordinary skill in the art at the time of filing to inactivate an slc45a2 gene in a fish as described by Edvardson and Shiraki in tilapia as described by Li. Those of ordinary skill in the art at the time of filing would have been motivated to do so to understand how the slc45a2 gene affects the color pattern in tilapia.
Edvardson taught injecting 2-3 hour old fertilized eggs and allowed them to develop into a fish (pg 2, col. 2, “Injection procedures”). Shiraki taught injecting one-cell fertilized eggs (pg 12, “generation of transgenic albino (Tg-albino) fish”) and allowed them to develop. Li injected one-cell stage embryos (pg 592, col. 2, “Microinjection…”) and allowed them to develop into a fish. This is equivalent to “introducing into a zygote [ ] a DNA editing agent” into a zygote and allowing them to develop into a fish as required in claim 5.
Edvardson, Shiraki, and Li all taught how to identify whether the desired inactivation occurred (see citations above) which is equivalent to “identify[ing] said [tilapia] comprising the loss-of-function mutation” as required in claim 5.
Edvardson, Shiraki, and Li all bred a founder fish with the desired inactivation (see citations above) which is equivalent to “breeding the fish [ ] with a second fish [ ] to produce a third fish” as required in claim 5.
Edvardson, Shiraki, and Li inbred F1 fish with the desired inactivation (see citations above) which is equivalent to “the first fish and the second fish both carry at least one allele with a loss-of-function mutation” as required in claim 5.
Edvardson, Shiraki, and Li inbred F1 fish to obtain F2 fish with a homozygous disruption of the desired inactivation (see citations above) which is equivalent to “the third fish is homozygous for the loss-of-function mutation” as required in claim 5.
Edvardson, Shiraki, and Li all taught deletions (see citations above) as required in claim 10.
Edvardson, Shiraki, and Li all taught deletions (see citations above) that span a number of introns and exons which is equivalent to “two or more mutations” as required in claim 11.
Claim 12 has been included because while SEQ ID NO: 9-12 correspond to SEQ ID NO: 1, they are deleted from the genome of the fish, so they do not exist in the fish. If applicants are attempting to further limit the target sequences for gRNA, then much clarification is required. Claim 9 has also been included because SEQ ID NO: 9 was part of the genome of numerous fish:
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The starting fish described by Edvardson, Shiraki, and Li are all purebred as required in claim 15. The F2 homozygous fish described by Edvardson, Shiraki, and Li are also “purebred” because they are homozygous for the inactivated target gene.
Claim 17 has been included because Edvardson taught targeting two gRNA sequences:
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and Shiraki taught targeting two gRNA sequences:
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Edvardson, Shiraki, and Li all taught “progeny” of the genetically modified fish as required in claim 18.
Any of the fish described by Edvardson, Shiraki, and Li are “feed or food product” as required in claim 19.
Response to arguments
Applicants argue the references do not teach every limitation. Applicants’ argument is not persuasive for reasons set forth above.
Applicants argue the phenotype in albino was unexpected. Applicants’ argument is not persuasive because the exact phenotype claimed was obtained in two other types of fish by inactivating a slc45a2 gene. Applicants’ argument is also not persuasive because it is flawed. It fails to acknowledge what was expected as the basis of the argument, i.e. two types of transgenic fish with an inactivated slc45a2 gene had the phenotype claimed. It fails to account for any secondary considerations, i.e. transgenic tilapia were well-known. It fails to properly compare what was expected to applicants results. Therefore, the “unexpected results” argument is legally, logically, and scientifically flawed.
Applicants argue “Zhu et al. directly contradicts the claimed invention by teaching that slc45a2 contributes to BLACK coloration in red tilapia, specifically stating: "The expression level of tyrosinase-related protein 1 (tyrpl), sex determining region Y-box 10 (sox10), premelanosome protein (pmel/silv), solute carrier family 24 (sodium/potassium/calcium exchanger) member 5 (slc24a5), solute carrier family 45 member 2 (slc45a2) and tyrosinase (tyr) were up-regulated in PB skin, implying that these genes play a key role in the contribution to black coloration in red tilapia in the eumelanin synthesis pathway." Critically, only one of three red tilapia strains (PB - pink with scattered black spots) showed slc45a2 upregulation, while the other two red strains tested showed no such upregulation, demonstrating that slc45a2 is not consistently associated with red coloration in tilapia.” Applicants’ argument is not persuasive because Edvardson used salmon which are red and made them albino.
Conclusion
No claim is allowed.
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Michael C. Wilson
/MICHAEL C WILSON/
Primary Examiner, Art Unit 1638
Prosecution Insights