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 without traverse in the reply filed on 8/3/2026 is acknowledged:
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Claims 18, 19, 21-25, 31, 37-39, 41-43, 46-49 cover the elected invention and are treated on the merits, below. Claims 20, 40, 44 and 45 are withdrawn from consideration as exclusively covering a non-elected invention.
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 18, 19, 21-25, 31, 37-39, 41-43, 46-49 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 claim(s) contains 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The rejected claims cover an engineered cell configured to treat the disease state; and compounds comprising an immune modulator or pharmaceutically acceptable salt thereof attached, via a linker, to a folate ligand.
To satisfy the written-description requirement, the specification must describe every element of the claimed invention in sufficient detail so that one of ordinary skill in the art would recognize that the inventor possessed the claimed invention at the time of filing. Vas-Cath, 935 F.3d at 1563; see also Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that “the inventor invented the claimed invention”); In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989) (“the description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed”).
With regard to the recited genus of cells and compounds, the following applies:
Ariad Pharmaceuticals Inc. v. Eli Lilly & Co., 94 USPQ2d 1161 (Fed. Cir. 2010) states that “...a generic claim may define the boundaries of a vast genus of chemical compounds...the question may still remain whether the specification, including the original claim language, demonstrates that the applicant invented species sufficient to support a claim to a genus”. See page 1171.
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
See also Fujikawa v. Wattanasin, 93 F.3d 1559, 1571, 39 USPQ2d 1895, 1905 (Fed. Cir. 1996) (a “laundry list” disclosure of every possible moiety does not constitute a written description of every species in a genus because it would not “reasonably lead” those skilled in the art to any particular species.
Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) states that “it is well established in our law that conception of a chemical compound requires that the inventor be able to define it so as to distinguish it from other materials, and to describe how to obtain it”.
A description of a genus may be achieved by means of a recitation of a representative number of species falling within the scope of the genus or structural features common to the members of the genus, which features constitute a substantial portion of the genus, so that one of skill in the art can “visualize or recognize” the members of the genus (Emphasis added). Regents of the University of California v. Eli Lilly & Co., 119 F3d 1559, 1569, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997).
A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure “indicates that the patentee has invented species sufficient to constitute the gen[us].” See Enzo Biochem, 323 F.3d at 966, 63 USPQ2d at 1615; Noelle v. Lederman, 355 F.3d 1343, 1350, 69 USPQ2d 1508, 1514 (Fed. Cir. 2004) (Fed. Cir. 2004)(“[A] patentee of a biotechnological invention cannot necessarily claim a genus after only describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated.”). “A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when ... the evidence indicates ordinary artisans could not predict the operability in the invention of any species other than the one disclosed.” In re Curtis, 354 F.3d 1347, 1358, 69 USPQ2d 1274, 1282 (Fed. Cir. 2004).
In Regents of the University of California v. Eli Lilly (43 USPQ2d 1398-1412), the court held that a generic statement which defines a genus of nucleic acids by only their functional activity does not provide an adequate written description of the genus. The court indicated that, while applicants are not required to disclose every species encompassed by a genus, the description of the genus is achieved by the recitation of a representative number of species falling within the scope of the claimed genus. At section B(i), the court states, "An adequate written description of a DNA ... requires a precise definition, such as by structure, formula, chemical name, or physical properties, not a mere wish or plan for obtaining the claimed chemical invention."
Courts have stated that “[i]n claims involving [non-genetic] chemical materials, generic formulae usually indicate with specificity what the generic claims encompass. One skilled in the art can distinguish such a formula from others and can identify many of the species that the claims encompass. Accordingly, such a formula is normally an adequate description of the claimed genus.” Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089 (1998). (emphasis added).
There is no such specificity here, nor could one skilled in the art identify particular cells or compounds encompassed by the claims. Specifically, Applicant fails to disclose any other cells or compounds, besides those covered by the specification and claims, and in relation to the above, these disclosed species or subgenre do not represent the substantial variety covered by the genus of cells and compounds.
With regard to the functional definition of configured to treat the disease state; or immune modulator targeting a pattern recognition receptor, the specification does not clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed (see Vas-Cath at page 1116) because the specification contains almost no information by which a person of ordinary skill in the art would understand that the inventors possessed the all of the recited compounds. At best, it simply indicates that one should test an inordinate number of cells or compounds to see if the cells or compounds can perform the required functions. In this connection, the specification contains no generic structural characteristics of those cells or compounds which satisfy the recited criteria. See In re ’318 Patent Infringement Litigation, 583 F.3d 1317, 1327 (Fed. Cir. 2009) (“[A]t the end of the day, the specification, even read in light of the knowledge of those skilled in the art, does no more than state a hypothesis and propose testing to determine the accuracy of that hypothesis. That is not sufficient.”).
The Examiner acknowledges that a working example or exemplified embodiment is not necessarily a requirement for description. However, where a generic claim term is present in a claim, as in the present application, and defined only by functional characteristics, the specification must convey enough information, e.g., via sufficient representative examples, to indicate invention of species sufficient to constitute the genus. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 967 2 (Fed. Cir. 2002). The written description requirement “requires a description of an invention, not an indication of a result that one might achieve if one made that invention.” Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997); see also Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1350 (Fed. Cir. 2013) (“A patent...‘is not a reward for the search, but compensation for its successful conclusion.’ ... For that reason, the written description requirement prohibits a patentee from ‘leaving it to the ... industry to complete an unfinished invention.’” (citations omitted)).
Accordingly, the specification lacks adequate written description for the recited engineered cell configured to treat the disease state and compounds comprising an immune modulator or pharmaceutically acceptable salt thereof attached, via a linker, to a folate ligand.
Claims 18, 19, 21-25, 31, 37-39, 41-43, 46-49 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 methods of treating cancer, does not reasonably provide enablement for prevention or treating any disease. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
“The standard for determining whether the specification meets the enablement requirement [in accordance with the statute] was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Accordingly, even though the statute does not use the term "undue experimentation," it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988). See also United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) ("The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation."). A patent need not teach, and preferably omits, what is well known in the art. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987); and Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984). Determining enablement is a question of law based on underlying factual findings. In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991); Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984).” See M.P.E.P. § 2164.
Here, the nature of the invention is treating cancer with a combination of CART cells and a TLR/folate conjugate.
In this regard, determining the pharmacology of this particular combination is not routine and the level of ordinary skill in the art of treating cancer is high, as an ordinary artisan in this art needs specialized knowledge of the complex nature of cancer. Applicant is reminded of the heightened enablement for these type of inventions: Specifically, the amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). The "amount of guidance or direction" refers to that information in the application, as originally filed, that teaches exactly how to make or use the invention. The more that is known in the prior art about the nature of the invention, how to make, and how to use the invention, and the more predictable the art is, the less information needs to be explicitly stated in the specification. In contrast, if little is known in the prior art about the nature of the invention and the art is unpredictable, the specification would need more detail as to how to make and use the invention in order to be enabling. [I]n the field of chemistry generally, there may be times when the well-known unpredictability of chemical reactions will alone be enough to create a reasonable doubt as to the accuracy of a particular broad statement put forward as enabling support for a claim. This will especially be the case where the statement is, on its face, contrary to generally accepted scientific principles. Most often, additional factors, such as the teachings in pertinent references, will be available to substantiate any doubts that the asserted scope of objective enablement is in fact commensurate with the scope of protection sought and to support any demands based thereon for proof. [Footnote omitted.].
Therefore, either the state of the art or the specification needs to establish that the recited combination can prevent disease and treat any disease.
The prior art teaches treating cancer with cytotoxic lymphocytes expressing chimeric antigen receptors (CAR) that target and bind small conjugate molecules (SCM). The small conjugate molecules (SCMs) are a bridge between cytotoxic lymphocytes and targeted cancer cells, see U.S. Publication No. 20170290900.
Therefore, the use of the instant combination for treatment of cancer may be characterized as “known”, but use of such methods to treat other diseases or prevent cancer, e.g., vaccines, is not predictable. For instance, there is no nexus between the use of this method and prevention. Thus, it is unpredictable whether the instant combination therapy used for cancer treatment can also be used to prevent cancer, since there doesn’t appear to be a link between cancer treatment and prevention with the instant CART cells/connugates.
The specification fails to remedy the state of the art. Here the specification shows activity of the instant methods against cancer cells. Therefore, a nexus may be established between the results and the treatment of cancer. The specification does not provide any additional examples or guidance on how to use the recited methods to prevent cancer or treat other diseases. Thus, the specification provides sufficient teachings only for the enablement of treatment of cancers. The prior art provides no compensatory guidance, and it would require undue experimentation to practice the invention for prevention of cancer or treatment of diseases, generally. The amount of experimentation would be undue because it would require determining how to use the instant methods to prevent cancer. Specifically, as outlined above, it is not routine to determine how a CAR and the instant conjugates will act on complex biochemistry to treat different conditions. In the instant case, it is only known that the instant combinations have cytotoxic activity against cancer cells. This means that significant experimentation would be required to determine how the combination can be used to prevent cancer cells, as opposed to kill cancer cells, or treat non-cancerous diseases. Those of ordinary skill in the art cannot extrapolate between the anti-cancer activity of the instant combinations of CART cells and conjugates and cancer prevention. Moreover, there is little guidance, in both the prior art and the specification, with respect to the use of such combination as anti-cancer vaccines or treat non-cancer diseases.
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 18, 19, 21-25, 31, 37-39, 41-43, 46-49 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.
It is unclear what functions of the recited cells qualify as treating the disease state.
The required configurations of the cell to treat a disease state are not defined.
The intended structures of a “folate ligand” are not defined.
It is unclear what structures of the folate ligand Applicant intends to cover by functional fragments or analogs.
The claims do not define how the structures in claims 19 and 21 are structurally integrated into the instant compounds or conjugates since these claims do not define a point of attachment to the linker or the rest of the conjugate.
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 18, 19, 21-25, 31, 37-39, 41-43, 46-49 are rejected under 35 U.S.C. 103 as being unpatentable over Cervantes et al., Blood (2019) 134 (Supplement_1): 4438, downloaded 31 August 2016 from https://doi.org/10.1182/blood-2019-122752
(Cervantes) in view of U.S. Publication No. 20190216935 based on an application by Low et al. (Low).
Cervantes teaches that CAR T cells are genetically modified with an extracellular scFv, transmembrane domain, and intracellular costimulatory and CD3ζ domains. Two treatments received the approval from the FDA for the treatment of acute lymphoblastic leukemia and diffuse large B cell lymphoma. However, CAR T cell persistence remains a problem. A reason for this may be that myeloid cells such as myeloid derived suppressor cells (MDSCs) may be contributing to the reduced persistence of CAR T cells. MDSCs originate from myeloid cells and have been implicated in the suppression of the immune system in the tumor microenvironment.
Cervantes shows that MDSCs can suppress CAR T cell function when present during production as well as CAR stimulation.
Cervantes may fail to explicitly teach CAR T therapy with a small conjugate molecules with an immune modulator. However, these conjugates were known in the art for targeting MDSCs using folate receptor binding ligands linked to a drug via a linker. It is for that proposition that the rejection joins Low. Specifically, Low teaches that Myeloid-derived supressor cells (MDSCs) are associated with tumors and can enhance immunosuppression in the tumor environment by suppressing such cells as T cells, NK cells, DC macrophages, and NKT cells. Thus, MDSCs can promote tumor growth, angiogenesis, and metastasis. The abundance of these cells in the tumor environment correlates negatively with cancer patient survival. Thus, therapies that deplete MDSCs would be useful.
In this direct connection, Low teaches methods that deplete MDSC’s. Specifically, Low teaches that tumors that express the folate receptor, or that do not express the folate receptor in sufficient numbers, or at all, can be treated by targeting drugs to MDSCs because MDSCs express the folate receptor β. Low teaches methods for treating cancers by targeting MDSCs using folate receptor binding ligands linked to a drug via a linker. MDSCs can be targeted using folate as the targeting ligand to deliver drugs to MDSCs to deplete or inhibit MDSCs and to treat a host animal with a cancer, whether or not the cancer expresses the folate receptor.
The instant conjugates are taught:
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In this way, those of ordinary skill could have applied the instant conjugates in the manner required and in a predictable fashion for the purposes of providing the instant CAR T/conjugate therapy. As outlined above, Cervantes teaches that myeloid derived suppressor cells (MDSCs) contribute to reduced persistence of CAR T cells. Low is added for the proposition that the instant conjugates are directly applicable to this problem of CAR T cell persistence. Specifically, Low teaches that the particular known technique of targeting MDSCs with the instant conjugates was recognized as part of the ordinary capabilities of one skilled in the art. In this manner, those of ordinary skill would have recognized that applying the known technique of depleting MDSCs to CAR T therapy would have yielded predictable results. Accordingly, using the instant conjugates to deplete MDSCs for the purposes of augmenting CAR T therapy would have been prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARL J PUTTLITZ whose telephone number is (571)272-0645. The examiner can normally be reached on Monday to Friday from 9 a.m. to 5 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Gregory Emch, can be reached at telephone number 571-272-8149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARL J PUTTLITZ/ Primary Examiner, Art Unit 1646
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