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 .
Claim status
In the office action, examiner is pursuing the claims filed on 10/07/2025. Therefore, claims 1-27 are herein pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16, drawn to a method of making sterile diploid organisms in the reply filed on 07 October 2025 is acknowledged.
Claims 17-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Therefore, claims 1-16 are herein under current examination.
Priority
This application was filed 03/22/2023 and is a 371 application of PCT/US2021/ 052374 filed on 09/28/2021, which claims benefit to the foreign application 63084683 filed on 09/29/2020. Thus, the earliest possible priority for the instant application is 09/29/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/22/2023, and 10/27/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner and the signed and initialed PTO Forms 1449 are mailed with this action.
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 of this title, 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.
Claims 1-3, 5-6, and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kyrou et al., (Nature Biotechnology, Vol. 36; 2018; pages 1062-1066; cited in IDS filed 03/22/2023; hereinafter “Kyrou”)) in view of Kmiec et al. (WO2018132390A1; cited in IDS filed 03/22/2023; hereinafter “Kmiec”)
Regarding claims 1 and 15, Kyrou discloses a method of making sterile diploid organisms comprising mating a first population of single knock-in diploid organisms and a second population of single knock-in diploid organisms, wherein the first population of single knock-in diploid organisms are heterozygous organisms expressing a first marker inserted into a gene required for fertility (abstract; "the gene doublesex (Agdsx) encodes two alternatively spliced transcripts, dsx-female (AgdsxF) and dsx-male (AgdsxM), that control differentiation of the two sexes. The female transcript, unlike the male, contains an exon (exon 5) whose sequence is highly conserved in all Anopheles mosquitoes so far analyzed. Kyrou teaches that CRISPR Cas9-targeted disruption of the intron 4-exon 5 boundary aimed at blocking the formation of functional AgdsxF did not affect male development or fertility, whereas females homozygous for the disrupted allele showed an intersex phenotype and complete sterility (p. 1063 col 1 para 2, Fig. 1); injected A. gambiae embryos with a source of Cas9 and a single-guide RNA (sgRNA) designed to recognize and cleave a sequence overlapping the intron 4-exon 5 boundary, in combination with a template for homology directed repair (HOR) to insert an eGFP transcription unit. Transformed individuals were intercrossed to generate homozygous and heterozygous mutants among the progeny."), wherein introduction of the first marker disrupts the function of the gene required for fertility creating a first mutant allele of the gene required for fertility (abstract; p.1063 col 1 para 2).
Although Kyrou discloses introduction of a Y-linked second fluorescent tag to mark maleness (p. 1063 col 1 para 2), Kyrou does not specifically generate a second population of single knock-in diploid organisms are heterozygous organism expressing a second marker inserted into the gene required for fertility, wherein introduction of the second marker disrupts expression of the gene required for fertility creating a second mutant allele of the gene required for fertility, and wherein the first and second markers are distinct.
However, since Kyrou Indicates that the Agdsx gene has a conserved male specific region in the 3' terminal region of the gene (p. 1062 col 2 para 2 to p. 1063 col 1 para 1; In A. gambiae, dsx (Agdsx) consists of seven exons, distributed over an 85-kb region on chromosome 2R, a gene structure similar to that of Drosophila melanogaster dsx (Dmdsx) and other insect orthologs, and is alternately spliced to produce the female and male transcripts AgdsxF and AgdsxM, respectively. The female transcript consists of a 5' segment common with that of males, a highly conserved female-specific exon (exon 5) and a 3' common region: while the male transcript comprises only the 5'and 3' common segments. The male-specific isoform contains an additional domain at the C terminus that is transcribed as a noncoding 3' untranslated region in females") and sorting offspring produced from the mating based on their expression of the first and/or second markers and isolating the sterile diploid organisms (p. 1063 col 1 para 2).
An artisan of ordinary skill in the art would have recognized that the 3' conserved region of the male specific isoform of Agdsx disclosed by Kyrou could have been engineered with a second marker (e.g., RFP fusion), in a manner similar to the female specific isoform (as indicate above; using CRISPR) to generate an RFP fluorescently tagged male isoform of Agdsx, where the first and second markers are distinct, without out undue difficulty and a high probability of success. wherein the sterile diploid organisms are heteroallelic diploid organisms expressing the first marker in the first mutant allele and the second marker in the mutant second allele of the gene required for fertility in light of the Supreme Court' s KSR decision (see MPEP 2143 Exemplary Rationale (A)).
Consequently, it would have been obvious to combine all claim limitations using the disclosure of Kyrou to generate sterile diploid organisms are heteroallelic diploid organisms expressing the first marker in the first mutant allele and the second marker in the mutant second allele of the gene required for fertility.
Regarding claim 2, Kyrou discloses that the diploid organism is an arthropod, specifically an insect (abstract; Anopheles gambiae).
Regarding claim 3, Kyrou discloses that the first and second marker are inserted into the gene required for fertility at the same position (as set forth in the discussion of claim 1); wherein the first and second marker are inserted into the gene required for fertility to limit or prevent genetic recombination between the inserted (p. 1063 col 1 para 2), such as each marker is inserted within the exons or regulatory regions of the gene (p. 1062 col 2 para 2 to p. 1063 col 1 para 1).
Regarding claim 5, Kyrou discloses that the insect comprises an insect of the genus Anopheles (abstract; Anopheles gambiae).
Regarding claim 6, Kyrou discloses that the insect Anopheles gambiae (abstract; Anopheles gambiae).
Regarding claim 10, Kyrou further disclosed that the gene required for fertility in the arthropod is a gene that has a sterile phenotype when mutated in the arthropod (abstract).
Regarding claim 11, Kyrou further discloses that the gene required for fertility in the arthropod [can be] Zero Population growth (p. 1063 col 2 para 1).
Regarding claim 12, Kyrou further discloses that the first and second markers comprise a fluorescent protein marker (p. 1063 col 1 para 2; eGFP and RFP, respectively).
Regarding claim 13, Kyrou further discloses that the first and second marker comprise fluorescent proteins, and sorting comprises FACS sorting (p. 1064 Fig 2).
With respect to claim 14, Kyrou discloses the first and second marker comprise fluorescent markers (p. 1063 col 1 para 2; eGFP and RFP, respectively). Still, Kyrou does not disclose that the first and second marker comprise antibiotic resistance markers. However, such was known in the prior art.
Kmiec discloses use of antibiotic resistance markers in CRISPR-engineered cells and organisms (p. 27 In 31 to p. 38 In 2).
MPEP 2143 (A) states that combining prior art elements according to known methods to yield predictable results. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395. An artisan of ordinary skill in the art would have recognized that the fluorescent markers disclosed by Kyrou, could have been include with antibiotic resistance markers, for instance, as taught by Kmiec, without undue effort, and a high probability of success. Consequently, it would have been obvious for one of ordinary skill in the art to combine first and second markers, as disclosed by Kyrou, with the first and second marker comprise antibiotic resistance markers, as disclosed by Kmiec, because it would have enabled a means of selection (p. 9 lns 18-20).
Hence, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
Allowable Subject Matter
Claims 4, 7-9 and 16 are objected to as being dependent upon a rejected base claim 1, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim 4, 7-9 and 16 are is objected because art does not teach or reasonably suggest the method of making sterile diploid organisms according to claim 1, which comprising isolating offspring expressing the first marker only to provide a fertile first population of single knockin organisms, isolating offspring expressing the second marker only to provide a fertile second population of single knock-in organisms
Conclusion
No claims are allowed.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MASUDUR RAHMAN whose telephone number is (571)272-0196. The examiner can normally be reached M-F 8-5 (EST).
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/MASUDUR RAHMAN/ Patent Examiner, Art Unit 1633
/JEREMY C FLINDERS/ Primary Examiner, Art Unit 1684