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/Restriction
Applicant’s election of the species Natural Killer cells and the cytokine IL-15, with traverse in the reply filed on 4/2/2026, is acknowledged, but not found persuasive. In the traversal response, Applicant argues the species under election are linked by a common inventive concept, therefore, there is no search burden. However, applicant does not provide any reasoning as to why the species should be considered to share a common inventive concept or how broad said inventive concept should be. Though search burden is not an applicable rationale to break unity of invention in a PCT application, the election of species is maintained because under PCT Rule 13.1 and 13.2, because the species lack unity of invention of not having a special technical feature that makes a contribution over the prior art and the species do not share a common structure.
Unity of invention is not present as under PCT Rule 13.1, the species listed need to relate to a single general inventive concept. Under PCT Rule 13.2, the species do not share a general inventive concept or a special technical feature if the technical feature does not make a contribution over the prior art or if they do not share a common core structure.
Natural killer cells, specifically CD56+ NK cells, are shown in Lee et al. (WO 2019/118475 A1, published 2019) to be silenced through the delivery of Cas9-RNP via electroporation (see pg. 45, line 9). As a result, the species election is proper because they lacky unity of invention for not making a contribution over the prior art, as evidence by Lee et al.
Regarding the elected species of cytokines, interleukin cytokines, DLL1, stem cell factor, FLT3 ligand, thrombopoietin, etc. are all proteins encoded by different nucleotide and corresponding amino acid sequences and exhibit different functions. For example, thrombopoietin is a hormone produced by the liver and kidneys that stimulate the production of platelets in bone marrow, while interleukins are a diverse group of cytokines playing a role in immune response and cell signaling. Given there is no shared core nucleotide or amino acid sequence, the species are determined as not having a common core structure, and the election is deemed proper. As a result, the election of species will be upheld without traverse.
Applicant elects the following species: Natural Killer cells and IL-15.
Claims 11 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention. Though claims 14 and 15 are dependent on withdrawn claim 11, for the purpose of compact prosecution, claims 14 and 15 will be examined as being dependent on claim 13, which recites the method of claim 11 with the elected species of Natural Killer cells.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Application Status
This action is written in response to applicant’s correspondence received 4/2/2026. Claims 1-10 and 13-15 are currently pending in the instant application.
Priority
This application claims priority to provisional application 63/122,553, filed on 12/8/2020.
Claim Objections
Claims 1, 2, 13, and 14 are objected to because of the following informalities:
With regards to claim 1, the word “and” should be added between embodiment (a) and (b). Furthermore, applicant recites “a pulse width of width”. It is likely the applicant intended to write “a pulse width of…”.
With regards to claim 14, the claim recites “the method of claim 11, wherein the wherein electroporation…”. It is likely that the applicant intended to write ”wherein the electroporation”.
Appropriate correction is required.
Claim Rejections – Improper Markush Groups
Claims 4, 5, and 15 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush groupings of claims 5 and 15 are improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
The cytokines recited in claims 5 and 15 such as interleukin cytokines, DLL1, stem cell factor, FLT3 ligand, thrombopoietin, etc. are all proteins encoded by different nucleotide and corresponding amino acid sequences and exhibit different functions. For example, thrombopoietin is a hormone produced by the liver and kidneys that stimulate the production of platelets in bone marrow, while interleukins are a diverse group of cytokines playing a role in immune response and cell signaling. Given there is no shared core nucleotide or amino acid sequence, the species are determined as not having a single structural similarity nor do they share a common use as indicated by their perceived functions.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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, 2, 3, 9, and 13 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 1 and 13 are indefinite as the use of relative terminology renders the metes and bounds of the claimed invention unclear given that there are no clear definitions for the relative terminology in the specification, please see MPEP 2173.05. Claim 1 recites “about” 1700-2000 volts and a pulse width of at least about 20-30 milliseconds. Claim 13 also recites the term “about”. the specification does not provide any guidance of what is encompassed by the term “about” and the art does not provide any definition for the term “about.”
Claim 2 is indefinite because the claim recites “the method of claim 2”, therefore, the claim is dependent on itself.
Claims 3 and 13 are indefinite because applicant recites “leukocytes are at least partially purified into one or more groups (claim 3) and “collecting leucocytes from an individual; partially purifying the leucocytes” (claim 13). It is unclear what are the metes and bounds of the phrase “to partially purify leucocytes”. The instant specification does not provide any guidance on the definition of “partially” purifying.
Claim 9 is indefinite because applicant recites the term “such as” when providing examples of a mobilization agent (plerixafor, filgrastim, or a combination thereof). It is unclear whether the agents provided are examples, such as plerixafor or filgrastim, and not part of the recited claim, or if the agents listed are claimed embodiments of the invention.
Claim Rejections - 35 USC § 102
(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Marson et al. (WO 2016/123578 A1, published 8/4/2016).
The applied reference has a common assignee of the University of California San Diego, with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, Marson teaches a method of delivering Cas9 and Cas9 ribonucleoproteins to cells, including primary hematopoietic cells and primary hematopoietic stem cells, through electroporation (see abstract and Fig. 1A). Marson teaches where the present invention provides a method of editing the genome of a primary hematopoietic cell with the method comprising a) providing a reaction mixture comprising a Cas9 nuclease domain and b) introducing the Cas9 nuclease domain inside the cell (see paragraph 0004) through electroporation (see paragraph 0006) by applying a voltage potential from about 1.7 to 2 kV (see paragraph 0076) and a pulse width or length from about 5 to 100 milliseconds (see paragraph 0008).
Regarding claim 10, Marson teach where the voltage potential can be applied as a pulse once or multiple times. In some cases, from 1 to 10 times (see paragraph 0078).
In view of the foregoing, claims 1 and 10 are clearly anticipated by Marson.
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 2, 3, 4, 7, 8, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Marson et al. (WO 2016/123578 A1, published 8/4/2016) in view of Lee et al. (WO 2021/087466 A1, Published 5/6/2021, with a filing date of 11/2/2020).
Regarding claim 2, of which is interpreted to depend on the limitations of claim 1, Marson teaches a method of delivering Cas9 and Cas9 ribonucleoproteins to cells, including primary hematopoietic cells and primary hematopoietic stem cells, through electroporation (see abstract and Fig. 1A), as described above.
Regarding claim 3, Marson teaches the method of claim 2 as described above. Marson also teach human T cell isolation and culture were derived from whole blood samples provided by human donors (see paragraph 0155).
Regarding claim 4, Marson teaches where hematopoietic stem cell can refer to CD34+ HSCs (see paragraph 0041) and where the phrase T cell can refer to natural killer T cells (see paragraph 0043).
Regarding claim 5, Marson teaches the method of claim 3 as described above.
Regarding claim 6, Marson teaches the method of claim 3 as described above.
Regarding claim 7, Marson teaches a method of gene editing using Cas9:single guide-RNA ribonucleoprotein delivery to primary human cells for genome editing (Cas9 RNP) (see Fig. 1 and paragraph 0053) wherein the methods described are modified for Cas9 ribonucleoprotein delivery (see paragraph 0077). This method of delivery can be electroporation (see paragraph 0073). Regarding claim 8, Marson teaches wherein the electroporation of the CIRPSR ribonucleoprotein complex into hematopoietic stem cells include the template nucleic acid encoding a stop codon, or frame shift, as compared to the target genomic region prior to cleavage and HDR. Such a template nucleic acid can be useful for knocking out or inactivating a gene or portion thereof (see paragraph 0103). Though Marson does not specifically teach the inactivation of a gene, it is obvious to one with ordinary skill in the art, to acknowledge that the introduction of a stop codon, or frameshift mutation, would result in the inactivation of a gene.
Regarding claim 13, Marson teaches a method of electroporating a CRISPR ribonucleoprotein complex comprising 0.9 to 1.8 uM of Cas9 complexed with 0.9 to 1.8 uM of sgRNA into human hematopoietic stem cells, which can be a T cell, specifically natural killer cells (see introduction, paragraph 0043, and paragraph 0044). The method described in Marson teaches collecting T cells from an individual, partially purifying to generate a population of cells enriched for CD4+ T cells (see paragraph 0155) and combining the CRISPR ribonucleoprotein complex with the enriched population of cells (see paragraph 0004) with electroporation using a voltage range from 0.5 to 2.5 kV with a pulse width of 1 to 100 milliseconds (see paragraph 0076 and paragraph 0079).
Regarding claim 14, Marson teaches wherein the electroporation of the CIRPSR ribonucleoprotein complex into hematopoietic stem cells include the template nucleic acid encoding a stop codon, or frame shift, as compared to the target genomic region prior to cleavage and HDR. Such a template nucleic acid can be useful for knocking out or inactivating a gene or portion thereof (see paragraph 0103). Though Marson does not specifically teach the inactivation of a gene, it is obvious to one with ordinary skill in the art, to acknowledge that the introduction of a stop codon, or frameshift mutation, would result in the inactivation of a gene.
Regarding claim 15, Marson teaches where the cells can be stimulated or under stimulated prior to one of the Cas9 or Cas9 RNP introduction methods described herein (e.g. electroporation). In some cases, the cells can be stimulated with an appropriate cytokine (e.g. IL-2) can be contacted with the cells prior to mixing the Cas9 or Cas9 RNP introduction reagents (e.g. electroporation buffer), or contacted with the cells after Cas9 or Cas9 RNP introduction (see paragraph 0089). Though Marson does not specifically teach the elected IL-15 cytokine, it would have been obvious to replace IL-2 with IL-15 as a cytokine used to stimulate cells prior to electroporation.
Regarding all claims, which is interpreted to depend on the method of claim 2, Marson does not teach wherein the concentration of the CRISPR ribonucleoprotein complex and sgRNA comprises from 40 to 100 pmol and 120 to 300 pmol, respectively (recited in claim 2 and subsequent dependent claims).
Marson also does not teach where CD56+ Natural Killer cells were cultured for at least 3-17 days prior to electroporation or where leukocytes are combined with following collection and prior to electroporation, wherein the cytokines is IL-15 (recited in claim 5, 6, and 13).
Regarding claims 2, 5, 6 and 13, Lee teaches a method of genetically modifying Natural Killer cells comprising a knockout of the CD38 gene. In Figures 8A-8D, Lee shows successful CD38 knockout of NK cells (CD3-/CD56+) using Cas9 ribonucleoprotein complexes (see pg. 43, line 8). Lee teaches where methods of genetically modifying a NK cell comprises of obtaining guide RNA and introducing it with a Cas9/RNP through electroporation (see pg. 3, line 23). Lee also teaches where the Cas9/RNP complex was formed by incubating 122 pmol of Cas9 nuclease with 400 pmol of gRNA (see pg. 45, line 9). Finally, Lee teaches where prior to electroporation, NK cells can be incubated in the presence of IL-2 for 4-7 days prior to electroporation (pg. 4, line 1) and/or cultured with media that supports the propagation of NK cells for 1-14 days (see pg. 22, line 7).
It would have been obvious to one with ordinary skill in the art, at the time of the invention, to combine the teachings above in order to arrive at a method of electroporating a CRISPR RNP complex into human CD56+ Natural Killer cells for genome editing. It would have been obvious to combine prior art elements according to known methods to yield predictable results as Lee shows that 122 pmol of Cas9 RNP and 400 pmol of sgRNA was sufficient for genome editing of NK cells (see pg. 45, line 9). Though the range of Cas9 RNP and sgRNA claimed in the instant application is not disclosed, routine experimentation and optimization between concentrations of Cas9 RNP and sgRNA disclosed in Lee would have arrived at the range provided in the instant application. Lee teaches that prior to electroporation, the Cas9 RNP complex is resuspended with cytokines, which can be selected from IL-2, IL-12, IL-15, IL-18, etc. (see pg.22 line 7). Furthermore, Lee also incubates NK cells for 1-14 days prior to electroporation. Through routine experimentation, one would arrive at the range claimed in the instant application (3-17 days).
One would be motivated to combine the prior art elements as Lee teaches genetically modified T-cells are excellent examples of engineered immune cells successfully deployed in cancer immunology (see background). Therefore, by modifying the method presented in Marson with the elements taught in Lee, one would arrive at the claimed instant invention which relates to a method of electroporation to deliver a Cas9 RNP into NK cells.
In view of the foregoing, claims 2-8, and 13-15 are rejected under 35 U.S.C. 103 as being prima facie obvious before the effective filing date.
Though it is not recited in the claim rejections, please consider Lee et al. (WO 2019/118475 A1, published 6/20/2019) as prior art which supports genetic modification of T cells through the electroporation of a Cas9 RNP complexed with sgRNA (measured concentration in pmol), wherein T cells can be stimulated with cytokines such as IL-15.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Marson et al. (WO 2016/123578 A1, published 8/4/2016) in view of Levesque et al. (WO 2014/132100 A1, published 6/4/2014).
Regarding claim 9, Marson teaches the method of claim 3 as described above.
Marson does not teach the leukocytes are collected from an individual by a method comprising of administering to the individual a mobilization agent such as plerixafor, filgrastim, or a combination thereof, so that leukocytes present in the bone marrow in the individual are mobilized into the peripheral blood, and collecting the leukocytes from peripheral blood of the individual.
Levesque teaches methods of mobilizing hematopoietic stem cells and/or progenitor cells from bone marrow into peripheral blood using Filgrastim and Plerixafor (see paragraph 0010, 0122, and 0396).
It would have been obvious to one with ordinary skill in the art, at the time of the invention, to combine the teachings above in order to arrive at a method of collecting leukocytes from an individual.
One would have been motivated to do so and would have expected predictable results as Levesque discloses the use of mobilizing agents with an agent that increases the activity of hypoxia-inducible factor α yields high numbers of hematopoietic stem cells and/or progenitor cells in peripheral blood when compared to administration of stem cell mobilizers alone (see paragraph 10). Therefore, the introduction of mobilizing agents results in a yield increase which is important when trying to extract samples from peripheral blood of a human or subject, in order to generate a population of cells enriched for CD56+ Natural Killer cells and to electroporate these cells with CRISPR ribonucleoprotein, in order to inactivate a gene of interest.
In view of the foregoing, claim 9 is rejected under 35 U.S.C. 103 as being prima facie obvious before the effective filing date.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 13-15 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/729,647. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application recites a broad method of electroporation where in the CRISPR RNP complex sgRNA can target any sequence or gene of interest. Although the preamble of the claims may differ, the recited method steps, such as the active steps a) and b) in claim 1 of the instant application and claim 2 of the copending application is indifferent from both applications except the target gene being FLI1. However, given the broadness of the instant claims with regards to a gene target, the species target of FLI1 falls under the broad genus of any target presented in claim 2 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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/D.T.Y./Examiner, Art Unit 1635
/RAM R SHUKLA/Supervisory Patent Examiner, Art Unit 1635
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