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 .
Response to Amendment
Receipt of the amendment and arguments filed on 05/26/2026 is acknowledged. Claims 54,55,57,58,67,68,71,73,75 and 77 were amended. Claims 1-53 were cancelled previously, and claims 69 and 74 are canceled herein. Claims 54-68,70-73 and 75-79 are pending.
Election/Restrictions
Applicant's election with traverse of Group II (claims 67-69,71 and 73-79) in the reply filed on 05/26/2026 is acknowledged. The traversal is on the ground(s) that the claims have been amended to add “wherein the 5’ annealing region further comprises a 5’ non-complementary region that has between 2 and 50 ribonucleotides and is located 5’ to the 5’ complementary region; and wherein the 3’ annealing region further comprises a 3’ non-complementary region that has between 2 and 50 ribonucleotides and is located 3’ to the 3’ complementary region; and wherein the 5’ non-complementary region and the 3’ non-complementary region have between 0% and 50% sequence complementary”, and therefore Flagship does not disclose or suggest a construct with these features in the claimed configuration or specific arrangement, and does not disclose non-complementary region located between the ribozymes sequences and the complementary regions. Applicant argues that the non-complementary regions provide a technical contribution and cites paragraph 0154 of the specification and that the cited art does not teach or suggest the claimed combinations and features and Groups I, II and III as amended relate to a single general inventive concept.
This is not found persuasive because the shared technical feature of the claims as instantly recited in the claims as amended is not a special technical feature as it does not make a contribution over the prior art in view of Flagship (WO 2020181013, Published 10 Sept 2020), previously cited, in view of Carmona (“Circular RNA: Design Criteria for Optimal Therapeutic Utility”, Harvard University, Jan 2019, 130 pages), cited on an IDS.
Flagship teaches eukaryotic cells: “In some embodiments, the rolling circle translation of the circular polyribonucleotide leads to generation of polypeptide product that is translated from more than one round of translation of the circular polyribonucleotide…. In some embodiments, the amount ratio is tested in an in vivo translation system, such as a eukaryotic cell or a prokaryotic cell, a cultured cell or a cell in an organism” (paragraph 0280), and “the translation of at least a region of the circular polyribonucleotide takes place in vitro, such as rabbit reticulocyte lysate. In some embodiments, the translation of the at least a region of the circular polyribonucleotide takes place in vivo, for instance, after transfection of a eukaryotic cell” (paragraph 0388).
Regarding part (a), Flagship teaches a linear polyribonucleotide molecule in paragraphs 0016 and 0063. “As used herein, the terms “linear RNA” or “linear polyribonucleotide” or “linear polyribonucleotide molecule” are used interchangeably and mean polyribonucleotide molecule having a 5’ and 3’ end. One or both of the 5’ and 3’ ends may be free ends or joined to another moiety. As used herein, a linear RNA has not undergone circularization (e.g., is pre-circularized) and can be used as a starting material for circularization through, for example, splint ligation, or chemical, enzymatic, ribozyme- or splicing-catalyzed circularization methods” (paragraph 0063).
Regarding elements (A) and (E), Flagship teaches 5’ and 3’ self-cleaving ribozymes in the linear polyribonucleotide, “either the 5'-or 3 '-end of the linear circular polyribonucleotide can encode a ligase ribozyme sequence such that during in vitro transcription, the resultant linear circular polyribonucleotide includes an active ribozyme sequence capable of ligating the 5'-end of the linear circular polyribonucleotide to the 3 '-end of the linear circular polyribonucleotide” (paragraph 0229), and “In one embodiment, the linear circular polyribonucleotide may comprise a ribozyme RNA sequence near the 5' terminus and near the 3' terminus” (paragraph 0232), and “A ribozyme (from ribonucleic acid enzyme, also called RNA enzyme or catalytic RNA) is a RNA molecule that catalyzes a chemical reaction. Some non-limiting examples of ribozymes include hammerhead ribozyme, VL ribozyme, leadzyme, hairpin ribozyme” (paragraph 0309).
Regarding elements (B) and (D), Flagship teaches a 5’ annealing region comprising a 5’ complementary region and a 3’ annealing region comprising a 3’ complementary region: “In some embodiments, linear circular polyribonucleotides may include complementary sequences, including either repetitive or nonrepetitive nucleic acid sequences within individual introns or across flanking introns. Repetitive nucleic acid sequence are sequences that occur within a segment of the circular polyribonucleotide. In some embodiments, the circular polyribonucleotide includes a repetitive nucleic acid sequence….In some embodiments, the circular polyribonucleotide includes at least one repetitive nucleic acid sequence that hybridizes to a complementary repetitive nucleic acid sequence in another segment of the circular polyribonucleotide, with the hybridized segment forming an internal double strand. In some embodiments, repetitive nucleic acid sequences and complementary repetitive nucleic acid sequences from two separate circular polyribonucleotides hybridize to generate a single circularized polyribonucleotide, with the hybridized segments forming internal double strands. In some embodiments, the complementary sequences are found at the 5’ and 3’ ends of the linear circular polyribonucleotides” (paragraph 0241).
Regarding element (C), Flagship teaches a polyribonucleotide cargo, “the circular polyribonucleotide molecules comprise one or more expression sequences” (paragraph 0017), “As used herein, the term“ expression sequence” is a nucleic acid sequence that encodes a product, e.g., a peptide or polypeptide, or a regulatory nucleic acid”(paragraph 0061); “In some embodiments, the circular polyribonucleotide comprises at least one expression sequence that encodes a peptide or polypeptide” (paragraph 0245), and includes that the expression sequence encodes a therapeutic protein (paragraph 0248).
Flagship teaches “Cleavage occurs at a site in the bulge region, generating characteristic fragments with terminal 5 '-hydroxyl group and 2', 3'-cyclic phosphate. Circularization proceeds by nucleophilic attack of the 5'-OH group onto the 2', 3 '-cyclic phosphate of the same molecule forming a 3', 5'-phosphodiester bridge” (paragraph 0238).
Regarding part (b), Flagship teaches an RNA ligase, “In some embodiments, enzymatic methods of circularization may be used to generate the circular polyribonucleotide. In some embodiments, a ligation enzyme, e.g., DNA or RNA ligase, may be used to generate a template of the circular polyribonuclease or complement, a complementary strand of the circular polyribonuclease, or the circular polyribonuclease” (paragraph 0243).
Flagship does not teach wherein the 5’ annealing region further comprises a 5’ non-complementary region that has between 2 and 50 ribonucleotides and is located 5’ to the 5’ complementary region; and wherein the 3’ annealing region further comprises a 3’ non-complementary region that has between 2 and 50 ribonucleotides and is located 3’ to the 3’ complementary region; and wherein the 5’ non-complementary region and the 3’ non-complementary region have between 0% and 50% sequence complementarity.
However, Carmona taught design criteria of circular RNA for optimal therapeutic activity. Carmona taught in order for T4 RNA ligase 1 to function well, the 5’ and 3’ end of the RNA molecule must be in close proximity to each other and a certain level of freedom at the 5’ and 3’ terminal nucleotides, and therefore aimed to design a motif that could be appended to either end of RNA that would promote optimal positioning well-suited for single-stranded RNA ligation. This motif would require a stretch of complementary nucleotides with a melting temperature above physiological levels to ensure the two ends are efficiently annealed when inside cells. Secondly, the terminal ends would need to be free of base-pairing to prevent any steric hindrance that could block the ligase from its function. If this motif functions well it would provide advantages over the existing method of RNA ligation as sequence-specific splint optimization and secondary structure considerations would not cause hindrances to workflow (pages 11-12). Carmona taught the design of this sequence named a complement-reverse complement (CRC) motif, contained a 20-nucleotide length of complementary nucleotides at the 5’ and 3’ ends of molecule (called the “complementary regions”) followed by 10 free and random nucleotides at either end of the molecules (called the “non-complementary regions”) (Figure 2A).
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Figure 2: CRC motif enhances single-stranded RNA ligation efficiency. (A) A diagram of the complement-reverse complement (CRC) motif. It is comprised of 2 parts: the complementary region responsible for bringing the two ends of the RNA molecule together and the non-complementary region that provides the single-stranded, free ends necessary for ssRNA T4 Ligase functionality. Above the diagram is a linear representation of an mRNA containing the CRC motif, with the black boxes representing the non-complementary region and the blue boxes representing the complementary regions of the CRC motif.
Carmona taught designing nanoluciferase-encoded RNAs with different CRC motifs, and the CRC motifs contained “complementary regions” that were 10, 20, or 30 NT in length and “non-complementary regions” that were 10, 15, or 20 NT in length. The non-complementary regions were comprised either fully of adenosines (denoted by an “A” in figures) or a random assortment of non-base paired nucleotides (Figure 3A). Head-to-head comparison of ligation efficiencies showed that a 20 nucleotide long “complementary region” provided maximal contributions to ligation efficiency as constructs with 30 NT complementary regions showed no added benefit to ligation efficiency (Figure 3B). With regards to the non-complementary region, the RNAs comprised of a random assortment of free ends showed a reduction in ligation efficiency as the length of these regions increased. This same trend was not observed from the constructs containing adenosine stretches in their non-complementary region.
Figure 3A:
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Carmona taught there was a particular portion of the panel that enhanced translation efficiency, specifically the RNAs containing a 10 NT long complementary region, a non-complementary region containing only adenosines. These same constructs showed very little induction of IFNb in HeLa cells compared to constructs containing longer CRC motifs (Figure 3E). We concluded that a shorter CRC motif comprised of an adenosine non-complementary region was best suited for use in our circRNA constructs as these characteristics enhanced ligation without negatively effecting translation or immunity.
It would have been obvious to one of ordinary skill in art to have modified the eukaryotic cell comprising the linear polyribonucleotide of Flagship with the complementary-non-complementary (CRC) motif of Carmona with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to do so because Carmona taught in order for T4 RNA ligase 1 to function well, the 5’ and 3’ end of the RNA molecule must be in close proximity to each other and a certain level of freedom at the 5’ and 3’ terminal nucleotides and therefore designed a CRC motif which contained a 20-nucleotide length of complementary nucleotides at the 5’ and 3’ ends of molecule (called the “complementary regions”) followed by 10 free and random nucleotides at either end of the molecules (called the “non-complementary regions”) and that the CRC motif enhances single-stranded RNA ligation efficiency (Figure 2A)., and taught a particular portion of the panel that enhanced translation efficiency, specifically the RNAs containing a 10 NT long complementary region, a non-complementary region containing only adenosines. These same constructs showed very little induction of IFNb in HeLa cells compared to constructs containing longer CRC motifs (Figure 3E), and Carmona concluded that a shorter CRC motif comprised of an adenosine non-complementary region was best suited for use in our circRNA constructs as these characteristics enhanced ligation without negatively effecting translation or immunity.
Therefore, Flagship in view of Carmona teach all of the elements of the recited technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 54-66,70 and 72 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 05/26/2026.
Claims 67,68,71,73 and 75-79 are under examination.
Priority
This application is a 371 of PCT/US2022/021861, filed 03/25/2022 which claims benefit of 63/189,619, filed 05/17/2021 and claims benefit of 63/166,467, filed 03/26/2021.
63/166,467 provides support for the instant amendments to the claims regarding the non-complementary regions in paragraphs 0016,0141-0143, and therefore the instant claims receive the priority date of 03/26/2021.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01. See at least paragraphs 0030, 0185 and 0284 reciting www. and paragraphs 0132-0150 and 0260 reciting http://.
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.
The factual inquiries 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.
Claim Interpretation
Regarding claims 71 and 79, the preamble recites “a formulation”, while the body of the claim recites “comprising the eukaryotic cell of claim 67” or “comprising the eukaryotic system of claim 73”, respectively, followed by optional “wherein statements”. Therefore, as the body of the claim sets forth all of the required structure, art the teaches the eukaryotic cell of claim 67 or the eukaryotic system of claim 73 also teaches the limitations of claims 71 and 79.
Claim 77 is being considered a product by process claim, as the preamble is to the eukaryotic system of claim 73 (a product), followed by wherein the linear polynucleotide is provided to the eukaryotic cell by: (a); (b); or (c). See MPEP 2173.05(p). See also MPEP 2113: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The MPEP also indicates that “the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). “In determining validity of a product-by-process claim, the focus is on the product and not the process of making it.” Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1369 (Fed.Cir.2009). The process of making is only relevant “if the process by which a product is made imparts ‘structural and functional differences’ distinguishing the claimed product from the prior art” Greenliant Systems, Inc. v. XicorLLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012).
Claims 67,68,71,73 and 75-79 are rejected under 35 U.S.C. 103 as being obvious over Cornell (WO 2018237372, Published 27 Dec 2018) in view of Carmona (“Circular RNA: Design Criteria for Optimal Therapeutic Utility”, Harvard University, Jan 2019, 130 pages) both cited on an IDS.
See claim interpretation above.
Regarding claims 67,68,71,73,75,76 and 79, Cornell recites a RNA molecule comprising: a first ribozyme; a first ligation sequence; an effector molecule; a second ligation sequence; and a second ribozyme, wherein each of the first ribozyme and the second ribozyme comprises a sequence that may be cleaved to produce a 5'-OH end and a 2',3'- cyclic phosphate end (claim 3), wherein each of the first and the second ribozyme is independently selected from the group consisting of Hammerhead, Hairpin, Hepatitis Delta Virus ("HDV"), Varkud Satellite ("VS"), Vgl, glucosamine-6-phosphate synthase ("glmS"), Twister, Twister Sister, Hatchet, Pistol ribozymes, engineered synthetic ribozymes, or derivatives thereof (claim 4). The instant specification discloses the 5' self-cleaving ribozyme is a ribozyme selected from Hammerhead, Hairpin, Hepatitis Delta Virus ribozyme (HDV), Varkud Satellite (VS), glmS ribozyme, Twister, Twister sister, Hatchet, and Pistol ribozymes. In some embodiments, the 5' self-cleaving ribozyme is a Hammerhead ribozyme (paragraph 0012) and the 3' self-cleaving ribozyme is a ribozyme selected from Hammerhead, Hairpin, Hepatitis Delta Virus ribozyme (HDV), Varkud Satellite (VS), glmS ribozyme, Twister, Twister sister, Hatchet, and Pistol ribozymes. In some embodiments, the 3' self-cleaving ribozyme is a hepatitis delta virus (HDV) ribozyme (paragraph 0014). Therefore, Cornell recites and teaches the same ribozymes that the instant specification discloses as self-cleaving ribozymes.
Cornell recites wherein each of the first ligation sequence and the second ligation sequence are substrates for an RNA ligase (claim 7). Cornell recites a cell comprising the vector encoding the RNA molecule of any of claims 1-20, wherein the cell comprises an endogenous RNA ligase and wherein the endogenous RNA ligase has the ability to catalyze the circularization of a ribonucleic acid molecule having a 5’-OH and a 2’,3’-cyclic phosphate (claim 28). Cornell teaches contacting a cell with the RNA molecule of the present invention (paragraph 0095) and teaches the cell may be a eukaryotic cell. Exemplary eukaryotic cells include a yeast cell, an insect cell, a fungal cell, a plant cell, and an animal cell (e.g., a mammalian cell)” (paragraph 0096).
Cornell teaches the RNA ligase is contained in the cell. In one embodiment, the cell is engineered to express (or overexpress) RNA ligase (paragraph 0083). Cornell teaches the RNA molecules of the present invention are linear (i.e. have a 5’ end and a 3’ end) and are further processed to form circular RNA (paragraph 0055).
Cornell teaches the RNA molecule of the present invention may circularize. For example, after it is acted upon by the RNA ligase, there are no termini, because all nucleotides are contiguously connected by covalent bonds. In one embodiment, 5' and 3 ' ends are no longer present due to the activity of the RNA ligase (paragraph 0057).
Regarding the instant claimed 5’ annealing region comprising a 5’ complementary region and the 3’ annealing region comprising a 3’ complementary region, Cornell teaches that “ligation sequence” refers to a sequence complementary to another sequence, which enables the formation of Watson-Crick base pairing to form suitable substrates for ligation by a ligase, e.g., an RNA ligase (paragraph 0042). Cornell teaches the ligation sequences are believed to help draw proper 5' and 3 ' ends of the RNA molecule closer to each other to assist in the circularization of the RNA molecule (paragraph 0044), and therefore teaches the limitation of claim 76, “wherein the 3’ annealing region and the 5’ annealing region promote association of the 3’ and 5’ ends of the linear polyribonucleotide”.
Cornell teaches “effector molecule” refers to “an RNA sequence that binds a protein; an RNA sequence that is complementary to a microRNA or siRNA; an RNA sequence that has partial complementarity to a microRNA or siRNA or piRNA; an RNA sequence that hybridizes completely or partially to a cellularly expressed microRNA, siRNA, piRNA, mRNA, IncRNA, ncRNA, or other cellular RNA; a hairpin structure that is a substrate for DICER or endogenous nucleases; a sequence that binds to viral proteins; an antisense RNA, an antagomir, a microRNA, an siRNA, an anti-miRNA, a ribozyme, a decoy oligonucleotide, an RNA activator, an immunostimulatory oligonucleotide, an aptamer, an RNA device; and an RNA molecule encoding a peptide sequence” (paragraph 0045). Therefore, the effector molecule of Cornell reads on a polyribonucleotide cargo of the instant claims.
Cornell does not teach wherein the 5’ complementary region and the 3’ complementary region have a free energy of binding of less than -5 kcal/mol recited in claims 67 and 73, or wherein the 5’ annealing region further comprises a 5’ non-complementary region that has between 2 and 50 ribonucleotides and is located 5’ to the 5’ complementary region; and wherein the 3’ annealing region further comprises a 3’ non-complementary region that has between 2 and 50 ribonucleotides and is located 3’ to the 3’ complementary region; and wherein the 5’ non-complementary region and the 3’ non-complementary region have between 0% and 50% sequence complementarity.
Carmona taught design criteria of circular RNA for optimal therapeutic activity. Carmona taught in order for T4 RNA ligase 1 to function well, the 5’ and 3’ end of the RNA molecule must be in close proximity to each other and a certain level of freedom at the 5’ and 3’ terminal nucleotides, and therefore aimed to design a motif that could be appended to either end of RNA that would promote optimal positioning well-suited for single-stranded RNA ligation. This motif would require a stretch of complementary nucleotides with a melting temperature above physiological levels to ensure the two ends are efficiently annealed when inside cells. Secondly, the terminal ends would need to be free of base-pairing to prevent any steric hindrance that could block the ligase from its function. If this motif functions well it would provide advantages over the existing method of RNA ligation as sequence-specific splint optimization and secondary structure considerations would not cause hindrances to workflow (pages 11-12). Carmona taught the design of this sequence named a complement-reverse complement (CRC) motif, contained a 20-nucleotide length of complementary nucleotides at the 5’ and 3’ ends of molecule (called the “complementary regions”) followed by 10 free and random nucleotides at either end of the molecules (called the “non-complementary regions”) (Figure 2A).
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Figure 2: CRC motif enhances single-stranded RNA ligation efficiency. (A) A diagram of the complement-reverse complement (CRC) motif. It is comprised of 2 parts: the complementary region responsible for bringing the two ends of the RNA molecule together and the non-complementary region that provides the single-stranded, free ends necessary for ssRNA T4 Ligase functionality. Above the diagram is a linear representation of an mRNA containing the CRC motif, with the black boxes representing the non-complementary region and the blue boxes representing the complementary regions of the CRC motif.
Carmona taught designing nanoluciferase-encoded RNAs with different CRC motifs, and the CRC motifs contained “complementary regions” that were 10, 20, or 30 NT in length and “non-complementary regions” that were 10, 15, or 20 NT in length. The non-complementary regions were comprised either fully of adenosines (denoted by an “A” in figures) or a random assortment of non-base paired nucleotides (Figure 3A). Head-to-head comparison of ligation efficiencies showed that a 20 nucleotide long “complementary region” provided maximal contributions to ligation efficiency as constructs with 30 NT complementary regions showed no added benefit to ligation efficiency (Figure 3B). With regards to the non-complementary region, the RNAs comprised of a random assortment of free ends showed a reduction in ligation efficiency as the length of these regions increased. This same trend was not observed from the constructs containing adenosine stretches in their non-complementary region.
Figure 3A:
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Carmona taught there was a particular portion of the panel that enhanced translation efficiency, specifically the RNAs containing a 10 NT long complementary region, a non-complementary region containing only adenosines. These same constructs showed very little induction of IFNb in HeLa cells compared to constructs containing longer CRC motifs (Figure 3E). We concluded that a shorter CRC motif comprised of an adenosine non-complementary region was best suited for use in our circRNA constructs as these characteristics enhanced ligation without negatively effecting translation or immunity.
Therefore, regarding the limitation in claims 67 and 73, “wherein the 5’ complementary region and the 3’ complementary region have a free energy of binding of less than -5 kcal/mol”, the instant specification discloses in paragraph 0019 that the 5’ annealing region and the 3’ annealing region each include a complementary region, and the 5’ complementary region is between 2 and 50 ribonucleotide and the 3’ annealing region includes a 3’ complementary region having between 2 and 50 ribonucleotides. Therefore, as Carmona taught CRC motifs contained “complementary regions” that were 10, 20, or 30 NT in length which fall within the range disclosed in the instant specification cited above, the 5’ complementary region and 3’ complementary region of Carmona would have the same property of having a free energy of binding of less than -5 kcal/mol.
Regarding claim 77(a), Cornell teaches contacting a cell with an RNA molecule of the present invention by introducing an RNA molecule into a cell, and the cell may be a eukaryotic cell (paragraphs 0095-0096). Therefore, Cornell teaches the limitations of claim 77(a).
Regarding claim 78, Cornell teaches exemplary eukaryotic cells include a yeast cell, an insect cell, a fungal cell, a plant cell, and an animal cell (e.g., a mammalian cell)”. Suitable mammalian cells include, for example without limitation, human, non-human primate, cat, dog, sheep, goat, cow, horse, pig, rabbit, and rodent cells (paragraph 0096).
It would have been obvious to one of ordinary skill in art to have modified the eukaryotic cell comprising the linear RNA of Cornell with the complementary-non-complementary (CRC) motif of Carmona with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to do so because Carmona taught in order for T4 RNA ligase 1 to function well, the 5’ and 3’ end of the RNA molecule must be in close proximity to each other and a certain level of freedom at the 5’ and 3’ terminal nucleotides and therefore designed a CRC motif which contained a 20-nucleotide length of complementary nucleotides at the 5’ and 3’ ends of molecule (called the “complementary regions”) followed by 10 free and random nucleotides at either end of the molecules (called the “non-complementary regions”) and that the CRC motif enhances single-stranded RNA ligation efficiency (Figure 2A), and taught a particular portion of the panel that enhanced translation efficiency, specifically the RNAs containing a 10 NT long complementary region, a non-complementary region containing only adenosines. Carmona concluded that a shorter CRC motif comprised of an adenosine non-complementary region was best suited for use in our circRNA constructs as these characteristics enhanced ligation without negatively effecting translation or immunity.
Accordingly, the limitations of claims 67,68,71,73 and 75-79 would have been prima facie obvious to one of ordinary skill in the art before the effective filing date.
Claims 67,68,71,73 and 75-79 are rejected under 35 U.S.C. 103 as being obvious over Flagship (WO 2020181013, EFD 04 March 2019) in view of Carmona (“Circular RNA: Design Criteria for Optimal Therapeutic Utility”, Harvard University, Jan 2019, 130 pages) both cited on an IDS.
The applied reference (WO 2020181013) has a common applicant 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. 103 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); 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 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. See generally MPEP § 717.02.
See claim interpretation above.
Regarding claims 67,68,71,73,75,76 and 79, Flagship teaches eukaryotic cells: “In some embodiments, the rolling circle translation of the circular polyribonucleotide leads to generation of polypeptide product that is translated from more than one round of translation of the circular polyribonucleotide…. In some embodiments, the amount ratio is tested in an in vivo translation system, such as a eukaryotic cell or a prokaryotic cell, a cultured cell or a cell in an organism” (paragraph 0280), and “the translation of at least a region of the circular polyribonucleotide takes place in vitro, such as rabbit reticulocyte lysate. In some embodiments, the translation of the at least a region of the circular polyribonucleotide takes place in vivo, for instance, after transfection of a eukaryotic cell” (paragraph 0388).
Regarding part (a) of claims 67 and 73, Flagship teaches a linear polyribonucleotide molecule in paragraphs 0016 and 0063. “As used herein, the terms “linear RNA” or “linear polyribonucleotide” or “linear polyribonucleotide molecule” are used interchangeably and mean polyribonucleotide molecule having a 5’ and 3’ end. One or both of the 5’ and 3’ ends may be free ends or joined to another moiety. As used herein, a linear RNA has not undergone circularization (e.g., is pre-circularized) and can be used as a starting material for circularization through, for example, splint ligation, or chemical, enzymatic, ribozyme- or splicing-catalyzed circularization methods” (paragraph 0063).
Regarding elements (A) and (E), Flagship teaches 5’ and 3’ self-cleaving ribozymes in the linear polyribonucleotide, “either the 5'-or 3 '-end of the linear circular polyribonucleotide can encode a ligase ribozyme sequence such that during in vitro transcription, the resultant linear circular polyribonucleotide includes an active ribozyme sequence capable of ligating the 5'-end of the linear circular polyribonucleotide to the 3 ' -end of the linear circular polyribonucleotide” (paragraph 0229), and “In one embodiment, the linear circular polyribonucleotide may comprise a ribozyme RNA sequence near the 5' terminus and near the 3' terminus” (paragraph 0232), and “A ribozyme (from ribonucleic acid enzyme, also called RNA enzyme or catalytic RNA) is a RNA molecule that catalyzes a chemical reaction. Some non-limiting examples of ribozymes include hammerhead ribozyme, VL ribozyme, leadzyme, hairpin ribozyme” (paragraph 0309).
Regarding elements (B) and (D), Flagship teaches a 5’ annealing region comprising a 5’ complementary region and a 3’ annealing region comprising a 3’ complementary region: “In some embodiments, linear circular polyribonucleotides may include complementary sequences, including either repetitive or nonrepetitive nucleic acid sequences within individual introns or across flanking introns. Repetitive nucleic acid sequence are sequences that occur within a segment of the circular polyribonucleotide. In some embodiments, the circular polyribonucleotide includes a repetitive nucleic acid sequence….In some embodiments, the circular polyribonucleotide includes at least one repetitive nucleic acid sequence that hybridizes to a complementary repetitive nucleic acid sequence in another segment of the circular polyribonucleotide, with the hybridized segment forming an internal double strand. In some embodiments, repetitive nucleic acid sequences and complementary repetitive nucleic acid sequences from two separate circular polyribonucleotides hybridize to generate a single circularized polyribonucleotide, with the hybridized segments forming internal double strands. In some embodiments, the complementary sequences are found at the 5’ and 3’ ends of the linear circular polyribonucleotides” (paragraph 0241). Flagship teaches an RNA ligase may be used to enzymatically link a 5’-phosphorylated nucleic acid molecule (e.g., a linear circular polyribonucleotide) to the 3’- hydroxy group of a nucleic acid forming a new phosphodiester linkage. The ligation reaction may occur in the presence of a linear nucleic acid capable of base-pairing with both the 5’ and 3’ region in juxtaposition to assist the enzymatic ligation reaction (paragraph 0227). Therefore, Flagship teaches the limitation of claim 76, “wherein the 3’ annealing region and the 5’ annealing region promote association of the 3’ and 5’ ends of the linear polyribonucleotide”.
Regarding element (C), Flagship teaches a polyribonucleotide cargo, “the circular polyribonucleotide molecules comprise one or more expression sequences” (paragraph 0017), “As used herein, the term“ expression sequence” is a nucleic acid sequence that encodes a product, e.g., a peptide or polypeptide, or a regulatory nucleic acid”(paragraph 0061); “In some embodiments, the circular polyribonucleotide comprises at least one expression sequence that encodes a peptide or polypeptide” (paragraph 0245), and includes that the expression sequence encodes a therapeutic protein (paragraph 0248).
Flagship teaches “Cleavage occurs at a site in the bulge region, generating characteristic fragments with terminal 5 '-hydroxyl group and 2', 3'-cyclic phosphate. Circularization proceeds by nucleophilic attack of the 5'-OH group onto the 2', 3 '-cyclic phosphate of the same molecule forming a 3', 5'-phosphodiester bridge” (paragraph 0238).
Regarding part (b) of claims 67 and 73, Flagship teaches an RNA ligase, “In some embodiments, enzymatic methods of circularization may be used to generate the circular polyribonucleotide. In some embodiments, a ligation enzyme, e.g., DNA or RNA ligase, may be used to generate a template of the circular polyribonuclease or complement, a complementary strand of the circular polyribonuclease, or the circular polyribonuclease” (paragraph 0243).
Flagship does not teach wherein the 5’ complementary region and the 3’ complementary region have a free energy of binding of less than -5 kcal/mol recited in claims 67 and 73, or wherein the 5’ annealing region further comprises a 5’ non-complementary region that has between 2 and 50 ribonucleotides and is located 5’ to the 5’ complementary region; and wherein the 3’ annealing region further comprises a 3’ non-complementary region that has between 2 and 50 ribonucleotides and is located 3’ to the 3’ complementary region; and wherein the 5’ non-complementary region and the 3’ non-complementary region have between 0% and 50% sequence complementarity.
Carmona taught design criteria of circular RNA for optimal therapeutic activity. Carmona taught in order for T4 RNA ligase 1 to function well, the 5’ and 3’ end of the RNA molecule must be in close proximity to each other and a certain level of freedom at the 5’ and 3’ terminal nucleotides, and therefore aimed to design a motif that could be appended to either end of RNA that would promote optimal positioning well-suited for single-stranded RNA ligation. This motif would require a stretch of complementary nucleotides with a melting temperature above physiological levels to ensure the two ends are efficiently annealed when inside cells. Secondly, the terminal ends would need to be free of base-pairing to prevent any steric hindrance that could block the ligase from its function. If this motif functions well it would provide advantages over the existing method of RNA ligation as sequence-specific splint optimization and secondary structure considerations would not cause hindrances to workflow (pages 11-12). Carmona taught the design of this sequence named a complement-reverse complement (CRC) motif, contained a 20-nucleotide length of complementary nucleotides at the 5’ and 3’ ends of molecule (called the “complementary regions”) followed by 10 free and random nucleotides at either end of the molecules (called the “non-complementary regions”) (Figure 2A).
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Figure 2: CRC motif enhances single-stranded RNA ligation efficiency. (A) A diagram of the complement-reverse complement (CRC) motif. It is comprised of 2 parts: the complementary region responsible for bringing the two ends of the RNA molecule together and the non-complementary region that provides the single-stranded, free ends necessary for ssRNA T4 Ligase functionality. Above the diagram is a linear representation of an mRNA containing the CRC motif, with the black boxes representing the non-complementary region and the blue boxes representing the complementary regions of the CRC motif.
Carmona taught designing nanoluciferase-encoded RNAs with different CRC motifs, and the CRC motifs contained “complementary regions” that were 10, 20, or 30 NT in length and “non-complementary regions” that were 10, 15, or 20 NT in length. The non-complementary regions were comprised either fully of adenosines (denoted by an “A” in figures) or a random assortment of non-base paired nucleotides (Figure 3A). Head-to-head comparison of ligation efficiencies showed that a 20 nucleotide long “complementary region” provided maximal contributions to ligation efficiency as constructs with 30 NT complementary regions showed no added benefit to ligation efficiency (Figure 3B). With regards to the non-complementary region, the RNAs comprised of a random assortment of free ends showed a reduction in ligation efficiency as the length of these regions increased. This same trend was not observed from the constructs containing adenosine stretches in their non-complementary region.
Figure 3A:
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Carmona taught there was a particular portion of the panel that enhanced translation efficiency, specifically the RNAs containing a 10 NT long complementary region, a non-complementary region containing only adenosines. These same constructs showed very little induction of IFNb in HeLa cells compared to constructs containing longer CRC motifs (Figure 3E). We concluded that a shorter CRC motif comprised of an adenosine non-complementary region was best suited for use in our circRNA constructs as these characteristics enhanced ligation without negatively effecting translation or immunity. Therefore, regarding the % complementarity of the 5’ non—complementary region and the 3’ non-complementary region in claims 67,68,73 and 75, the teachings of Carmona regarding the non-complementary region containing only adenosines are considered as teaching these limitations, as there would be 0% complementarity between the 5’ non-complementary region and the 3’ non-complementary region.
Therefore, regarding the limitation in claims 67 and 73, “wherein the 5’ complementary region and the 3’ complementary region have a free energy of binding of less than -5 kcal/mol”, the instant specification discloses in paragraph 0019 that the 5’ annealing region and the 3’ annealing region each include a complementary region, and the 5’ complementary region is between 2 and 50 ribonucleotide and the 3’ annealing region includes a 3’ complementary region having between 2 and 50 ribonucleotides. Therefore, as Carmona taught CRC motifs contained “complementary regions” that were 10, 20, or 30 NT in length which fall within the range disclosed in the instant specification cited above, the 5’ complementary region and 3’ complementary region of Carmona would have the same property of having a free energy of binding of less than -5 kcal/mol.
Regarding claim 77, Flagship teaches the linear circular polyribonucleotide may be cyclized within a cell (paragraph 0225), and therefore teaches the limitations of claim 77 (a).
Regarding claim 78(b), Flagship teaches the translation of at least a region of the circular polyribonucleotide takes place in vitro, such as rabbit reticulocyte lysate (paragraphs 0280,0388), and therefore teaches the cell comprising the system is from a multicellular eukaryote, which is a vertebrate animal.
It would have been obvious to one of ordinary skill in art to have modified the eukaryotic cell comprising the linear polyribonucleotide of Flagship with the complementary-non-complementary (CRC) motif of Carmona with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to do so because Carmona taught in order for T4 RNA ligase 1 to function well, the 5’ and 3’ end of the RNA molecule must be in close proximity to each other and a certain level of freedom at the 5’ and 3’ terminal nucleotides and therefore designed a CRC motif which contained a 20-nucleotide length of complementary nucleotides at the 5’ and 3’ ends of molecule (called the “complementary regions”) followed by 10 free and random nucleotides at either end of the molecules (called the “non-complementary regions”) and that the CRC motif enhances single-stranded RNA ligation efficiency (Figure 2A). Carmona taught a particular portion of the panel that enhanced translation efficiency, specifically the RNAs containing a 10 NT long complementary region, a non-complementary region containing only adenosines, and Carmona concluded that a shorter CRC motif comprised of an adenosine non-complementary region was best suited for use in the circRNA constructs as these characteristics enhanced ligation without negatively effecting translation or immunity. With regard to the functional limitation pertaining to “wherein the 5’ complementary region and the 3’ complementary region have a free energy of binding of less than -5 kcal/mol” in claims 67 and 73, Flagship and Carmona discloses the same claimed 5’ complementary and 3’ complementary regions. Note MPEP 2112.01: "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Accordingly, the limitations of claims 67,68,71,73 and 75-79 would have been prima facie obvious to one of ordinary skill in the art 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).
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Claims 67,68,71,73 and 75-79 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18,19,21,23,24,27,28 and 30 of copending Application No. 18/283,257 (‘257) in view of Cornell (cited above).
Instant claims 67,68,71,73 and 75-79 recite a eukaryotic cell or system comprising:(a) a linear polyribonucleotide having the formula 5'-(A)-(B)-(C)-(D)-(E)-3', wherein the elements (A), (B), (C), (D), and (E) are operably linked, and wherein:(A) comprises a 5' self-cleaving ribozyme; (B) comprises a 5' annealing region comprising a 5' complementary region; (C) comprises a polyribonucleotide cargo; (D) comprises a 3' annealing region comprising a 3' complementary region; and (E) comprises a 3' self-cleaving ribozyme; wherein the 5' complementary region and the 3' complementary region have a free energy of binding of less than -5 kcal/mol, wherein the 5' annealing region further comprises a 5' non-complementary region that has between 2 and 50 ribonucleotides and is located 5' to the 5' complementary region; and wherein the 3' annealing region further comprises a 3' non-complementary region that has between 2 and 50 ribonucleotides and is located 3' to the 3' complementary region; and wherein the 5' non- complementary region and the 3' non-complementary region have between 0% and 50% sequence complementarity; wherein cleavage of the 5' self-cleaving ribozyme produces a free 5'-hydroxyl group on the 5' end of the linear polyribonucleotide, and wherein cleavage of the 3' self-cleaving ribozyme produces a free 2',3'-cyclic phosphate group on the 3' end of the linear polyribonucleotide, resulting in a ligase-compatible linear polyribonucleotide; and (b) an RNA ligase, wherein the RNA ligase is capable of ligating the 5' end and the 3' end of the ligase-compatible linear polyribonucleotide in the eukaryotic cell to produce a circular RNA.
Claims 18,19,21,24,27 and 28 of ‘257 recite a linear polyribonucleotide comprising the following, operably linked in a 5' to 3' orientation:(a) a 5' self-cleaving ribozyme; (b) a 5' annealing region comprising a 5' complementary region; (c) a polyribonucleotide cargo; (d) a 3' annealing region comprising a 3' complementary region; and (e) a 3' self-cleaving ribozyme; wherein the 5' complementary region and the 3' complementary region have a free energy of binding of less than -5 kcal/mol, and/or wherein the 5' complementary region and the 3' complementary region have a Tm of binding of at least 10°C, with claim 23 reciting that the 5’ annealing region further comprises a 5' non-complementary region that has between 5 and 50 ribonucleotides and is located 5' to the 5' complementary region; and wherein the 3' annealing region further comprises a 3' non-complementary region that has between 5 and 50 ribonucleotides and is located 3' to the 3' complementary region; and wherein: (a) the 5' non-complementary region and the 3' non-complementary region have between 0% and 50% sequence complementarity; and/or (b) the 5' non-complementary region and the 3' non-complementary region have a free energy of binding of greater than -5 kcal/mol; and/or (c) the 5' non-complementary region and the 3' non-complementary region have a Tm of binding of less than 10°C.
Claim 30 of ‘257 recites a cell free system for generating circular RNA comprising a solution that comprises the linear polyribonucleotide (as recited above) and a ligase, wherein conditions of the solution are suitable for cleavage of the 5' self-cleaving ribozyme and the 3' self-cleaving ribozyme and ligation of the 5' and 3' ends of the resulting ligase-compatible linear polyribonucleotide by the ligase, thereby generating a circular RNA.
‘257 does not recite a eukaryotic cell or eukaryotic system comprising the linear polyribonucleotide.
Cornell cures this deficiency. The teachings of Cornell have been described above in the 103 rejection.
It would have been obvious to one of ordinary skill in the art before the effective filing date, to have modified the claims of ‘257 based on the teachings of Cornell and arrive at the instant claims with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to do so as an alternative method of producing a circular RNA from the linear polyribonucleotide in the eukaryotic cell of Cornell, as Cornell recites a cell comprising the vector encoding the RNA molecule of any of claims 1-20, wherein the cell comprises an endogenous RNA ligase and wherein the endogenous RNA ligase has the ability to catalyze the circularization of a ribonucleic acid molecule having a 5’-OH and a 2’,3’-cyclic phosphate (claim 28). Cornell teaches contacting a cell with the RNA molecule of the present invention (paragraph 0095) and teaches the cell may be a eukaryotic cell. Exemplary eukaryotic cells include a yeast cell, an insect cell, a fungal cell, a plant cell, and an animal cell (e.g., a mammalian cell)” (paragraph 0096). Cornell teaches the RNA ligase is contained in the cell. In one embodiment, the cell is engineered to express (or overexpress) RNA ligase (paragraph 0083). Cornell teaches the RNA molecules of the present invention are linear (i.e. have a 5’ end and a 3’ end) and are further processed to form circular RNA (paragraph 0055).
Accordingly, the limitations of claims 67,68,71,73 and 75-79 would have been prima facie obvious to one of ordinary skill in the art before the effective filing date.
This is a provisional nonstatutory double patenting rejection.
Claims 67,68,71,73 and 75-79 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 67-69,71 and 73-79 of copending Application No. 18/283,262 (‘262) in view of Cornell (cited above).
Instant claims 67,68,71,73 and 75-79 recite a eukaryotic cell or system comprising:(a) a linear polyribonucleotide having the formula 5'-(A)-(B)-(C)-(D)-(E)-3', wherein the elements (A), (B), (C), (D), and (E) are operably linked, and wherein:(A) comprises a 5' self-cleaving ribozyme; (B) comprises a 5' annealing region comprising a 5' complementary region; (C) comprises a polyribonucleotide cargo; (D) comprises a 3' annealing region comprising a 3' complementary region; and (E) comprises a 3' self-cleaving ribozyme; wherein the 5' complementary region and the 3' complementary region have a free energy of binding of less than -5 kcal/mol, wherein the 5' annealing region further comprises a 5' non-complementary region that has between 2 and 50 ribonucleotides and is located 5' to the 5' complementary region; and wherein the 3' annealing region further comprises a 3' non-complementary region that has between 2 and 50 ribonucleotides and is located 3' to the 3' complementary region; and wherein the 5' non- complementary region and the 3' non-complementary region have between 0% and 50% sequence complementarity; wherein cleavage of the 5' self-cleaving ribozyme produces a free 5'-hydroxyl group on the 5' end of the linear polyribonucleotide, and wherein cleavage of the 3' self-cleaving ribozyme produces a free 2',3'-cyclic phosphate group on the 3' end of the linear polyribonucleotide, resulting in a ligase-compatible linear polyribonucleotide; and (b) an RNA ligase, wherein the RNA ligase is capable of ligating the 5' end and the 3' end of the ligase-compatible linear polyribonucleotide in the eukaryotic cell to produce a circular RNA.
Claims 67-69,71 and 73-79 of ‘262 recite a prokaryotic cell comprising:(a) a linear polyribonucleotide having the formula 5'-(A)-(B)-(C)-(D)-(E)-3', wherein the elements (A), (B), (C), (D), and (E) are operably linked, and wherein:(A) comprises a 5' self-cleaving ribozyme;(B) comprises a 5' annealing region comprising a 5' complementary region;(C) comprises a polyribonucleotide cargo;(D) comprises a 3' annealing region comprising a 3' complementary region; and (E) comprises a 3' self-cleaving ribozyme; wherein the 5' complementary region and the 3' complementary region have a free energy of binding of less than -5 kcal/mol, and/or wherein the 5' complementary region and the 3' complementary region have a Tm of binding of at least 10°C; wherein cleavage of the 5' self-cleaving ribozyme produces a free 5'-hydroxyl group on the 5' end of the linear polyribonucleotide, and wherein cleavage of the 3' self-cleaving ribozyme produces a free 2',3'-cyclic phosphate group on the 3' end of the linear polyribonucleotide, resulting in a ligase-compatible linear polyribonucleotide; and (b) an RNA ligase, wherein the RNA ligase is capable of ligating the 5' end and the 3' end of the ligase-compatible linear polyribonucleotide to produce a circular RNA.
Claim 68 of ‘262 recites wherein the 5' annealing region further comprises a 5' non-complementary region that has between 5 and 50 ribonucleotides and is located 5' to the 5' complementary region; and wherein the 3' annealing region further comprises a 3' non-complementary region that has between 5 and 50 ribonucleotides and is located 3' to the 3' complementary region; and wherein:(a) the 5' non-complementary region and the 3' non-complementary region have between 0% and 50% sequence complementarity; and/or (b) the 5' non-complementary region and the 3' non-complementary region have a free energy of binding of greater than -5 kcal/mol; and/or (c) the 5' non-complementary region and the 3' non-complementary region have a Tm of binding of less than 10°C.
‘262 does not recite a eukaryotic cell or eukaryotic system comprising the linear polyribonucleotide.
Cornell cures this deficiency. The teachings of Cornell have been described above in the 103 rejection.
It would have been obvious to one of ordinary skill in the art before the effective filing date, to have substituted the prokaryotic cell and system of ‘262 with the eukaryotic cell and system of Cornell and arrive at the instant claims with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to do so as an alternative method of producing a circular RNA from the linear polyribonucleotide in the eukaryotic cell of Cornell, as Cornell recites a cell comprising the vector encoding the RNA molecule of any of claims 1-20, wherein the cell comprises an endogenous RNA ligase and wherein the endogenous RNA ligase has the ability to catalyze the circularization of a ribonucleic acid molecule having a 5’-OH and a 2’,3’-cyclic phosphate (claim 28). Cornell teaches contacting a cell with the RNA molecule of the present invention (paragraph 0095) and teaches the cell may be a eukaryotic cell. Exemplary eukaryotic cells include a yeast cell, an insect cell, a fungal cell, a plant cell, and an animal cell (e.g., a mammalian cell)” (paragraph 0096). Cornell teaches the RNA ligase is contained in the cell. In one embodiment, the cell is engineered to express (or overexpress) RNA ligase (paragraph 0083). Cornell teaches the RNA molecules of the present invention are linear (i.e. have a 5’ end and a 3’ end) and are further processed to form circular RNA (paragraph 0055).
Accordingly, the limitations of claims 67,68,71,73 and 75-79 would have been prima facie obvious to one of ordinary skill in the art before the effective filing date.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Claims 67,68,71,73 and 75-79 are rejected.
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/STEPHANIE L SULLIVAN/Examiner, Art Unit 1635
/ABIGAIL VANHORN/Primary Examiner, Art Unit 1636
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