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 .
Priority
The instant application is a national stage entry under 35 U.S.C. § 371 of PCT/US2022/025724 (filed 04/21/2022). Acknowledgement is made of Applicants’ claim for benefit of U.S. Application 63/177,806 (filed 04/21/2021).
Election/Restrictions
Applicants’ elections with traverse are acknowledged, the elections being: Group II (claims 11-25) in the reply filed on 06/29/2026; and SEQ ID NO: 27 (claim 15) for species (i), SEQ ID NO: 2 (claim 16) for species (ii), and SEQ ID NO: 8 (claim 18) for species (iii). The traversal is on the ground(s) that there would be no burden on the examiner in examining all of the claims at once, relying on M.P.E.P. §802.02.
Chapter 800, however, is limited to a discussion of the subject of restriction and double patenting under Title 35 of the United States Code and Title 37 of the Code of Federal Regulations as it relates to national applications filed under 35 U.S.C. 111(a). The discussion of unity of invention under the Patent Cooperation Treaty Articles and Rules as it is applied as an International Searching Authority, International Preliminary Examining Authority, and in applications entering the National Stage under 35 U.S.C. 371 as a Designated or Elected Office in the U.S. Patent and Trademark Office is covered in M.P.E.P. §1850 and is dictated by PCT Rules 13.1 and 13.2. See M.P.E.P. §801. Burden is not a consideration in a finding of lack of inventive unity; rather, according to M.P.E.P. §1850, the only consideration is whether the inventions share a special technical feature.
Thus, the requirement is still deemed proper and is therefore made FINAL.
Claims 1-38 are pending in the instant application, with claims 1-10 and 26-38 withdrawn as directed to inventions nonelected. Claims 11-25 read on the elected invention and are examined on the merits herein.
Claim Interpretation
The following comments are made to establish broadest reasonable interpretation for the record.
Regarding claim 20: This claim recites, “…wherein the second transgene comprises an IRES DNA or a P2A DNA…”. The term IRES is interpreted as referring to an internal ribosome entry site; this is supported by par. 00122 of the instant specification. As evidenced by Tang, et al. (Vet Res. 2016), the term P2A refers to a “self-cleaving” 2A sequence of picornavirus (Abstract).
Claim Objections
Claim 20 is objected to because of the following informalities:
Line 2 of claim 20 appears to contain a typographical error, reciting, “…an IRES DNA or a P2A DNA locates between…”; locates should read located.
Appropriate correction is required.
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 15-16, 18-19, and 21 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 claims under rejection are directed to sequences. For instance, claim 15 recites, “…wherein the light sensing protein DNA sequence comprises at least one of SEQ ID NOs: 21, 26-27, and 33-35 or an equivalent DNA of at least one of SEQ ID NOs: 21, 26-27, and 33-35.” The instant claims all recite the an equivalent DNA limitation in regards to their respective recited sequences.
The issue at present is the scope covered by the an equivalent DNA limitation recited in these claims. In giving the term equivalent DNA its broadest reasonable interpretation, the number of DNA molecules which can be considered equivalent to the respective sequences of the instant claims is extraordinarily large. For instance, claim 18 is directed to a therapeutic agent DNA comprising one of SEQ ID Nos: 8-20, 28, 31, 32, and 37; Applicants elected SEQ ID No: 8 for examination, which, as evidenced by the instant specification, is directed to a GLP-1 molecule, along with SEQ ID Nos: 9 and 10 (par. 00173). The specification also recites, “…‘equivalent DNA’ refers to DNA that includes a sequence of nucleotides that is sufficiently similar to another such sequence to form stable hybrids, with each other or a reference sequence, under specified conditions” (par. 0106). However, this definition is so broad as to effectively encompass all e.g. GLP-1 molecules. What constitutes a reference sequence? The instant disclosure seemingly teaches three GLP-1 reference sequences itself; it is easy to envisage just how many GLP-1 reference sequences may be found in the prior art. Thus, equivalent DNA of each sequence in the claims under rejection (e.g., equivalent DNA of each of the seventeen individual sequences recited in claim 18) is considered a genus of molecules.
To satisfy the written description aspect of 35 U.S.C. 112(a) for a claimed genus of molecules, it must be clear that: (1) the identifying characteristics of the claimed molecules have been disclosed, e.g., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed cor-relation between function and structure, or by a com-bination of such identifying characteristics; or (2) a representative number of species within the genus must be disclosed. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
Regarding (1): A review of the specification fails to provide clear guidance of what structural characteristics an equivalent DNA molecule must possess in order to form stable hybrids. Further, Applicants have not identified any particular core chemical structure or function (along with a correlation between function and a specific conserved structure) which must be shared by each of the equivalent DNA molecules covered by the instant claims. Continuing with SEQ ID NO: 8 of claim 18 for illustrative purposes, which nucleotides of SEQ ID NO: 8 must a reference sequence possess in order to be considered an equivalent DNA?
Regarding (2): For the light sensing protein, Applicants have disclosed a single species of melanopsin (SEQ ID NO: 21); two species of SOUL (SEQ ID NOs: 26 and 27); a single species of PhyB (SEQ ID NO: 33); a single species of PIF6 (SEQ ID NO: 34); and a single species of EL222 (SEQ ID NO: 35). For the light sensing protein activated promoter, Applicants have disclosed a single species of NFAT promoter (SEQ ID NO: 2); a single species of PIR3_HSP70min promoter (SEQ ID NO: 30); and a single species of C120 promoter (SEQ ID NO: 36). For the therapeutic agent, Applicants have disclosed three species of GLP-1 (SEQ ID NOs: 8, 9, and 10); a single species of Exendin-4 (SEQ ID NO: 11); five species of HCRT (SEQ ID NOs: 12, 13, 14, 15, and 16); two species of ACTH (SEQ ID NOs: 17 and 18); two species of Leptin (SEQ ID NOs: 19 and 20); a single species of SEAP (SEQ ID NO: 28); a single species of TNF (SEQ ID NO: 31); a single species of IL-4 (SEQ ID NO: 32); and a single species of BDNF (SEQ ID NO: 37). Applicants have disclosed a single species for each of the following elements: IRES (SEQ ID NO: 4); P2A (SEQ ID NO: 3); and reporter agent EGFP (SEQ ID NO: 7).
These disclosures do not constitute a representative number for such broad genera as is encompassed by the breadth of the instant claims. The sheer scope of these claims is further compounded by the guidance noted above, which clearly states equivalent DNA encompasses sequences sufficiently similar to another such sequence to form stable hybrids, with each other; this seemingly encompasses all double-stranded DNA which encodes one of the claimed molecules, as a double-stranded DNA molecule which has been denatured to separate the strands will, during the annealing phase, rehybridize to form the same molecule (assuming a pure solution free of contaminating nucleotides). Therefore, Applicants have not disclosed a representative number of species as would be required to support description and to show possession of each of the genera encompassed by the claims under rejections.
Thus, one of ordinary skill in the art, in looking to the instant specification, would not be able to determine that Applicants were in possession of the invention, as claimed, at the time the invention was made. Accordingly, the claims are considered to lack sufficient written description and are properly rejected under 35 USC 112(a).
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 15-16, 18-19, 21, and 23 is 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.
Regarding claims 15-16, 18-19, 21, 23: For the same reasons set forth above in the rejections of the instant claims for failing to comply with the written description requirement, the metes and bounds of these claims are not clearly or precisely defined, rendering the claims indefinite.
Regarding claim 23: Line 2 of the instant claim recites, “…comprising a fourth transgene…”. As claim 23 depends from claim 11, which recites only two transgenes, there is insufficient antecedent basis for the fourth transgene limitation.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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 11-12, 14, 17-21, and 25 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Ye, et al. (CN 108728326), as evidenced by Tian and Zhou (J Biol Chem. 2021).
Ye, et al. (hereinafter Ye) teaches a far-red light-regulated gene expression loop control system (Abstract). The Ye disclosure is in the original Chinese language; a translation is provided, with citations thereto.
Regarding claims 11-12: Ye teaches an engineered host cell transfected with an expression vector comprising a far-red light-regulated gene expression loop control system (pars. 0027-0028). In an embodiment, the expression vector comprises a vector containing a far-red light photoreceptor encoding gene, a vector containing a processor encoding gene, and a vector containing an effector encoding gene (par. 0030); the vector comprising a far-red light photoreceptor encoding gene reads on the first transgene limitation recited in claim 11.
In an embodiment, the effector vector comprises a PFRL promoter and target gene reporter, referred to as the PFRL-reporter (par. 0017); the PFRL-reporter comprises a dimerized IRF3-recognized and bound DNA sequence and a weak promoter sequence that initiates gene expression (par. 0018). In an embodiment, the target gene reporter encodes a protein that serves as a reporter gene (e.g., SEAP, EGFP, luciferase) and a drug protein or small peptide for treating diseases; e.g., insulin, GLP-1 (par. 0020). As evidenced by Tian and Zhou, the PFRL promoter is a far-red light-inducible promoter (pg. 11; col. 1, par. 2); thus, the effector vector comprising the PFRL-reporter reads on the second transgene limitation recited in claim 11.
Therefore, the engineered host cell of Ye anticipates:
the engineered cell expressing a therapeutic agent and a reporter agent, the engineered cell comprising: a first transgene comprising a light sensing protein DNA sequence encoding a light sensing protein; and a second transgene comprising a light sensing protein activated promoter, a therapeutic agent DNA encoding a therapeutic agent, and a reporter agent DNA encoding a reporter agent limitations recited in claim 11; and
the wherein the light sensing protein activated promoter is configured to control the expression of the therapeutic agent and the reporter agent limitation recited in claim 12.
Regarding claim 14: Following the above discussion, Ye teaches the photoreceptor comprises phytochrome diguanylate synthase BphS, which converts GTP to c-di-GMP under far-red light conditions (par. 0013). The processor comprises a CMV promoter and immune signaling molecule STING which, when expressed in mammalian cells, binds c-di-GMP to its C-terminal domain (CTD) to form a complex, thus activating STING; activated STING recruits and activates TBK1, which phosphorylates IRF3, allowing IRF3 to dimerize and enter the nucleus (par. 0016); when the dimerized IRF3 (i.e., of the PFRL-reporter) enters the nucleus, it recognizes and binds to specific sequences in the effector molecule to activate transcriptional gene expression (par. 0023).
Thus, under broadest reasonable interpretation, the light sensing protein (i.e., BphS) activates the PFRL-reporter for transcription of e.g. GLP-1 via STING; this anticipates the wherein the light sensing protein activates the light sensing protein activated promoter which drives production of the therapeutic agent and the reporter agent in the engineered cell limitation recited in claim 14.
Regarding claim 17: Following the above discussion, Ye teaches for the expression of GLP-1, the transfection of host cells comprises using 0.01 µg pGY45 (plasmid expressing luciferase) and 0.1 µg pWS152 (plasmid expressing GLP-1) (par. 0093); under broadest reasonable interpretation, this reads on the wherein the therapeutic agent and the reporter agent are expressed at a substantially fixed ratio limitation recited in claim 17.
Regarding claim 18: Following the above discussion, Ye is silent in regards to a nucleotide sequence encoding the GLP-1 molecule, instead only disclosing an embodiment wherein the GLP-1 molecule is a GLP-1-Fc molecule comprising GenBank Accession No. AY311599; i.e., the Fc sequence (par. 0020). However, the GLP-1 molecule is necessarily encoded by a nucleotide sequence; thus, Ye implicitly discloses a DNA sequence encoding GLP-1. As evidenced by the instant specification, SEQ ID NO: 8 encodes GLP-1 (par. 00185); thus, under broadest reasonable interpretation, the implicit disclosure of a DNA sequence encoding the GLP-1 molecule reads on the equivalent DNA of SEQ ID No: 8 limitation recited in claim 18.
Regarding claim 19: Following the above discussion, Ye teaches an embodiment wherein the reporter gene is EGFP, wherein the nucleotide sequence encoding EGFP has GenBank Accession No. KY002200 (par. 0020). As evidenced by the instant specification, SEQ ID NO: 7 is directed to EGFP (par. 00188); thus, under broadest reasonable interpretation, the EGFP molecule of Ye reads on the equivalent DNA of SEQ ID No: 7 limitation recited in claim 19.
Regarding claims 20-21: Following the above discussion, Ye teaches an embodiment wherein the PFRL-reporter comprises a self-cleaving 2A peptide sequence or an internal ribosome entry site (IRES) sequence in between the reporter gene and drug protein or small peptide (pars. 0020-0021); this anticipates the wherein the second transgene comprises an IRES DNA located between the therapeutic agent DNA and the reporter agent DNA limitation recited in claim 20.
In an embodiment, the nucleotide sequence of the self-cleaving 2A peptide is SEQ ID NO: 3 (par. 0021), which shares 77.27% sequence identity with instant SEQ ID NO: 3 (please see end of Office action for all sequence alignments); under broadest reasonable interpretation, the self-cleaving 2A peptide of Ye reads on the equivalent DNA of SEQ ID No: 3 limitation recited in claim 21 as well as the P2A DNA limitation recited in claim 20.
Regarding claim 25: Following the above discussion, Ye teaches an embodiment wherein the host cells are HEK-293T cells (par. 0024); this anticipates the wherein the engineered cell is a HEK293T cell transfected by the first and second transgenes limitation recited in claim 25.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 11-14, 17-18, 20-21, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Grayburn and Chen (US 2016/0263017) in view of Motta-Mena, et al. (Nat Chem Biol. 2014).
Grayburn and Chen (hereinafter Grayburn) teaches methods and compositions useful for an individual in need of treatment of a cardiac-related medical condition (Abstract).
Motta-Mena, et al. (hereinafter Motta-Mena) teaches an optogenetic gene expression system using an engineered version of EL222.
Regarding claims 11-14, 25: Grayburn teaches a host cell comprising a GLP-1 nucleic acid (par. 0095). In an embodiment, the nucleic acid is DNA (see e.g. pars. 0096, 100-101); this reads on the therapeutic agent of the second transgene limitation of claim 11. The disclosure does not teach the remaining limitations of the instant claims.
However, Motta-Mena teaches a vector comprising a pVP-EL222 plasmid comprising EL222 DNA and a vector comprising a pGL4-C120-Fluc plasmid, wherein the latter comprises a C120 promoter sequence and firefly luciferase ORF (pg. 203; col. 1, par. 1). EL222 is a light-oxygen-voltage protein which binds DNA when illuminated with blue light (Abstract); thus, the pVP-EL222 plasmid reads on the first transgene limitation of claim 11. The C120 promoter is specific for EL222 (pg. 199; col. 2, par. 2); thus, the C120 promoter sequence reads on the light sensing protein activated promoter of the second transgene limitation of claim 11. The firefly luciferase ORF reads on the reporter agent DNA of the second transgene limitation of claim 11.
Motta-Mena teaches HEK 293T cells were transfected with the pVP-EL222 plasmid and pGL4-C120-Fluc plasmid (pg. 203; col. 1, par. 5), wherein the optogenetic system per se (i.e., the vectors comprising the plasmids set forth above) is hereinafter referred to as EL222-based optogenetic system. This system confers high-level, blue light-sensitive control of transcriptional initiation to human cell lines (pg. 200; col. 2, par. 2); Motta-Mena discloses such optogenetic gene expression systems regulate gene expression with previously unattainable spatiotemporal control (pg. 196; col. 1, par. 1).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have modified the host cell of Grayburn by using the HEK 293T cell comprising the EL222-based optogenetic system of Motta-Mena. This conclusion of obviousness is based on the ‘teaching, suggestion, or motivation rationale’; one would be motivated to use the HEK 293T cell comprising the EL222-based optogenetic system of Motta-Mena for the high-level, blue light-sensitive, spatiotemporal control of transcriptional initiation disclosed by the same (pgs. 196, 200). Further, Grayburn discloses the GLP-1 polynucleotide may be contained in an expression vector (see e.g., pars. 0009, 0132-0133), as well an embodiment wherein the vector is a plasmid vector (par. 0161); disclosed examples of suitable eukaryotic host cells include [HEK] 293 cells (par. 0220). Thus, one of ordinary skill in the art would have more than a reasonable expectation of success in said modification.
Now, as to the placement of the GLP-1 DNA, it would have been prima facie obvious to a person having ordinary skill in the art to have inserted the GLP-1 DNA of Grayburn into the pGL4-C120-Fluc plasmid of Motta-Mena. This conclusion of obviousness is based on the ‘obvious to try rationale’. There are only two possible plasmids for the GLP-1 DNA; therefore, it would have been obvious for the skilled artisan to try both arrangements. Thus, as both the Grayburn and Motta-Mena disclosures evidence techniques for incorporating coding DNA into a plasmid are well known in the art, this rationale aligns with choosing from a finite number of identified, predictable solutions with a reasonable expectation of success; see MPEP 2143(I)(E).
Therefore, the modified host cell of Grayburn set forth above renders obvious:
the engineered cell expressing a therapeutic agent and a reporter agent, the engineered cell comprising: a first transgene comprising a light sensing protein DNA sequence encoding a light sensing protein; and a second transgene comprising a light sensing protein activated promoter, a therapeutic agent DNA encoding a therapeutic agent, and a reporter agent DNA encoding a reporter agent limitations recited in claim 11;
the wherein the light sensing protein activated promoter is configured to control the expression of the therapeutic agent and the reporter agent limitation recited in claim 12;
the wherein the light sensing protein comprises EL222 limitation recited in claim 13;
the wherein the light sensing protein activates the light sensing protein activated promoter which drives production of the therapeutic agent and the reporter agent in the engineered cell limitation recited in claim 14; and
the wherein the engineered cell is a HEK293T cell transfected by the first and second transgenes limitations recited in claim 25.
Regarding claim 17: Following the above discussion, both Grayburn (par. 0256) and Motta-Mena (pg. 203; col. 1, par. 4) evidence the art recognizes the ratio of vector components, and thus the ratio of expression of the products encoded thereby, is an optimizable variable. Therefore, the ratio of GLP-1 and firefly luciferase expression would have been routinely optimized by one having ordinary skill in the art, rendering obvious the limitation recited in the instant claim. See MPEP 2144.05(II)(A).
Regarding claim 18: Following the above discussion, Grayburn discloses an embodiment wherein GLP-1 is encoded by SEQ ID NO: 1 (par. 0051); under broadest reasonable interpretation, this reads on the equivalent DNA of SEQ ID No: 8 limitation recited in claim 18.
Regarding claim 20: Following the above discussion, Grayburn discloses an embodiment wherein internal ribosome entry sites (IRES) elements are used to create multigene constructs (par. 0144); this renders obvious the wherein the second transgene comprises an IRES DNA located between the therapeutic agent DNA and the reporter agent DNA limitation recited in claim 20.
Regarding claim 21: Following the above discussion, Grayburn is silent in regards to the nucleotide sequence of the IRES element (par. 0144). However, the IRES element is necessarily encoded by a nucleotide sequence; thus, Grayburn implicitly discloses a DNA sequence encoding said IRES element. Under broadest reasonable interpretation, the implicit disclosure of a DNA sequence encoding the IRES element reads on the equivalent DNA of SEQ ID No: 4 limitation recited in claim 21.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Grayburn and Chen (US 2016/0263017) in view of Motta-Mena, et al. (Nat Chem Biol. 2014), further in view of Gong, et al. (Neuron. 2020) and Feng, et al. (US 2023/0241166).
The teachings of Grayburn and Motta-Mena are set forth above.
Gong, et al. (hereinafter Gong) teaches a step-function opsin with ultra-high light sensitivity (Abstract).
Feng, et al. (hereinafter Feng) teaches compositions and methods for minimally invasive optogenetic stimulation (Abstract).
Regarding claim 15: Following the above discussion, neither Grayburn nor Motta-Mena teaches the limitations recited in the instant claim.
However, Gong teaches a novel step-function opsin with ultra-high light sensitivity (SOUL) for minimally invasive optogenetics via external optical stimulation; SOUL has extremely high light sensitivity that can undergo photoactivation under conditions of significantly attenuated light power (pg. 39; col. 1, par. 3). SOUL knock-in mice (pg. 39; col. 2) were injected with adeno-associated viruses (AAVs) encoding parental opsin SSFO or SOUL into the mediodorsal thalamus (MD) in opposite hemispheres of the same mice; neuronal spiking activity was recorded while delivering non-invasive transcranial optical stimulations through an optical fiber positioned above the midline of the intact skull (Fig. 3A); upon transcranial photostimulation, MD neurons in the SOUL expressing hemisphere showed a significant increase in firing rate that scaled with light power, whereas MD neurons in the SSFO-expressing hemisphere were not significantly activated (pg. 40; col. 2, par. 1).
Gong states the superior photosensitivity of SOUL allows several improvements in the application of optogenetics methods: the noninvasiveness of transcranial optogenetic stimulation conveys the advantage of minimizing the requirements for surgical procedures and avoiding physical and inflammatory damage of neural tissues, and because SOUL can be activated by lower-power light, neural tissue heating by light delivery is minimized (pg. 46; col. 2, par. 2).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have further modified the host cell of Grayburn by using SOUL instead of EL222 in the optogenetic system of Motta-Mena. This conclusion of obviousness is based on the ‘teaching, suggestion, or motivation rationale’. One would be motivated to do so for the superior photosensitivity of SOUL, as disclosed by Gong (pgs. 39-40, 46). Additionally, as both the SOUL of Gong (pg. 41; col. 2, par. 1) and the EL222 of Motta-Mena (pg. 203; col. 2, par. 7) are activated by blue light, one would have more than a reasonable expectation of success.
Gong teaches the SOUL construct was created by introducing a T159C mutation into SSFO DNA (“Method Details”; pg. e2), but does not disclose a specific cDNA sequence. However, Feng teaches an SSFO DNA molecule having the sequence as set forth in SEQ ID NO: 2 (par. 0096), which shares 99.25% sequence identity to instant SEQ ID NO: 27 (please see end of Office action for all sequence alignments). As evidenced by instant specification, SEQ ID NO: 27 is directed to a SOUL molecule (par. 00195).
Therefore, it would have been obvious to a person having ordinary skill in the art to have used SEQ ID NO: 2 of Feng as the basis for the SOUL DNA, with a modification for incorporating a T159C mutation into the final amino acid sequence, as taught by Gong. This conclusion of obviousness is based on the ‘teaching, suggestion, or motivation rationale’. One would be motivated to do so based on the “Method Details” of Gong (pg. e2); further, as Gong evidences such a modification is well within the purview of the skilled artisan, one would have more than a reasonable expectation of success.
This renders obvious the equivalent DNA of SEQ ID NO: 27 limitation recited in the instant claim.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Grayburn and Chen (US 2016/0263017) in view of Motta-Mena, et al. (Nat Chem Biol. 2014), further in view of Klingemann, et al. (US 2020/0038441), as evidenced by Wang, et al. (Quant Biol. 2017).
The teachings of Grayburn and Motta-Mena are set forth above.
Klingemann, et al. (hereinafter Klingemann) teaches modified NK-92® cells comprising one or more nucleic acids (Abstract).
Regarding claim 16: Following the above discussion, neither Grayburn nor Motta-Mena teaches the limitations recited in the instant claim.
As evidenced by the specification, instant SEQ ID NO: 2 is directed to an NFAT promoter (par. 00188). Klingemann teaches an NFAT promoter having a nucleotide sequence as set forth in SEQ ID NO: 6 (par. 0176), which shares 100% sequence identity to instant SEQ ID NO: 2. (please see end of Office action for all sequence alignments).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have further modified the host cell of Grayburn by substituting the NFAT promoter of Klingemann for the C120 promoter in the optogenetic system of Motta-Mena. This conclusion of obviousness is based on the ‘substitution rationale’. As evidenced by Wang, NFAT is responsive to blue light (Fig. 2); thus, the use of the NFAT promoter in place of the C120 promoter is a predictable use of prior art elements according to their established functions as promoters compatible with blue light-inducible optogenetic gene expression systems, leading to the predictable result of a host cell which expresses GLP-1 in response to blue light stimulation. This rationale aligns with the principle of a simple substitution of one known element for another to obtain predictable results; see MPEP 2143(I)(B).
This renders obvious the wherein the light sensing protein activated promoter comprises SEQ ID NO: 2 limitation recited in claim 16.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Grayburn and Chen (US 2016/0263017) in view of Motta-Mena, et al. (Nat Chem Biol. 2014), further in view of Ye, et al. (CN 108728326).
The teachings of Grayburn, Motta-Mena, and Ye are set forth above.
Regarding claim 19: Neither Grayburn nor Motta-Mena teach the limitations recited in the instant claim.
However, Ye teaches reporter gene EGFP, wherein the nucleotide sequence encoding EGFP has GenBank Accession No. KY002200 (par. 0020). As evidenced by the instant specification, SEQ ID NO: 7 is directed to EGFP (par. 00188); thus, under broadest reasonable interpretation, the EGFP molecule of Ye reads on the equivalent DNA of SEQ ID No: 7 limitation recited in claim 19.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have further modified the host cell of Grayburn by substituting the EGFP reporter gene of Ye for the luciferase firefly reporter in the optogenetic system of Motta-Mena. This conclusion of obviousness is based on the ‘substitution rationale’. Ye discloses use of the EGFP reporter gene in a far-red light-regulated gene expression loop control system (pars. 0027-0028); thus, the use of the EGFP reporter in place of the luciferase firefly is a predictable use of prior art elements according to their established functions as fluorescent molecules compatible with light-inducible optogenetic gene expression systems, leading to the predictable result of a host cell which expresses a fluorescent molecule when stimulated with light. This rationale aligns with the principle of a simple substitution of one known element for another to obtain predictable results; see MPEP 2143(I)(B).
This renders obvious the equivalent DNA of SEQ ID No: 7 limitation recited in claim 19.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Grayburn and Chen (US 2016/0263017) in view of Motta-Mena, et al. (Nat Chem Biol. 2014), further in view of Dominguez, et al. (Nat Rev Mol Cell Biol. 2015) and Shao, et al. (PNAS. 2018).
The teachings of Grayburn and Motta-Mena are set forth above.
Dominguez, et al. (hereinafter Dominguez) teaches nuclease-deactivated Cas9 (dCas9) for RNA-guided genomic transcription regulation (Abstract).
Shao, et al. (hereinafter Shao) teaches a far-red light-activated CRISPR-dCas9 effector device (Abstract).
Regarding claim 22: Following the above discussion, neither Grayburn nor Motta-Mena teaches the limitations recited in the instant claim.
However, Dominguez teaches dCas9, an engineered nuclease-deficient Cas9, which enables targeting genomic DNA without cleaving it (pg. 5; col. 2, par. 1); it is unable to cleave DNA but retains the ability to specifically bind to DNA when guided by sgRNA, allowing for direct manipulation of the transcription process without genetically altering the DNA sequence (pg. 6; col. 2, par. 1).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have further modified the host cell of Grayburn by incorporating a third vector into the EL222-based optogenetic system of Motta-Mena, said vector comprising a C120 promoter sequence and a nucleotide sequence encoding a dCas9 gene, as taught by Domiguez. This conclusion of obviousness is based on the ‘teaching, suggestion, or motivation rationale’. One would be motivated to include the dCas9 gene for the direct manipulation of the transcription process without the need for genetically altering the DNA sequence of the GLP-1 DNA, as taught by Dominguez (pg. 6). Further, as Shao discloses a far-red light (FRL)-activated CRISPR-dCas9 effector (FACE) system based on dCas9 and the bacterial phytochrome BphS (pg. 6722; col. 2, par. 1), one of ordinary skill in the art would have a reasonable expectation of success incorporating dCas9 into other optogenetic systems.
This renders obvious the further comprising a third transgene comprising a light sensing protein activated promoter and a dCas9 DNA encoding a dCas9 protein limitation recited in claim 22.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Grayburn and Chen (US 2016/0263017) in view of Motta-Mena, et al. (Nat Chem Biol. 2014), further in view of Gargett and Brown (Front Pharmacol. 2014) and Senova, et al. (Sci Rep. 2017).
The teachings of Grayburn and Motta-Mena are set forth above.
Gargett and Brown (hereinafter Gargett) teaches an inducible Caspase 9 “safety switch” (Abstract).
Senova, et al. (hereinafter Senova) teaches the spatial distribution of light, potential damage, and non-physiological effects in vivo, in anesthetized rat brains, on large brain volumes, following repeated high irradiance photo-stimulation (Abstract).
Regarding claim 23: Following the above discussion, neither Grayburn nor Motta-Mena teaches the limitations recited in the instant claim.
However, Gargett teaches a suicide gene system comprising an inducible caspase 9 (iCasp9) gene and a small-molecule, bio-inert, chemical induction of dimerization (CID) drug, AP1903, wherein the iCasp9 gene contains the intracellular portion of the human caspase9 protein, a pro-apoptotic molecule, fused to a drug-binding domain derived from human FK506-binding protein; intravenous administration of AP1903 produces cross-linking of the drug-binding domains of this chimeric protein, which in turn dimerizes caspase9 and activates the downstream executioner caspase 3 molecule, resulting in cellular apoptosis (pg. 3; col. 2, par. 3).
Senova teaches the incorporation of exogenous DNA into humans carries safety concerns, such as the risks of long term expression, the effect of over expression, and immunogenicity (pg. 1; par. 2); other concerns include the potential occurrence of damage or non-physiological effects due to illumination and resulting heat from sustained stimulation with red light (pg. 2; par. 2).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have further modified the host cell of Grayburn by incorporating another vector into the EL222-based optogenetic system of Motta-Mena, said vector comprising a nucleotide sequence encoding the iCasp9 gene, as taught by Gargett. This conclusion of obviousness is based on the ‘teaching, suggestion, or motivation rationale’. One would be motivated to include the iCasp9 gene as it acts as a “suicide gene” for the targeted deletion of transduced cells (pg. 3; col. 2, pars. 1-3); the skilled artisan would recognize the value of its inclusion for the reasons disclosed by Senova, namely the risks of long term and over expression, immunogenicity, and damage or other effects due to light exposure and resulting heat from sustained light stimulation (pgs. 1-2). Further, as Gargett discloses the iCasp9/CID system has been successfully translated to clinical settings (pg. 4; col. 2, par. 2), and as the inclusion of another transgene is well within the purview of the skilled artisan (as evidenced by the Grayburn and Motta-Mena disclosures), one of ordinary skill in the art would have a reasonable expectation of success.
This renders obvious the further comprising a fourth transgene comprising a CASP9 DNA encoding an iCaspase9 protein leading to cell death limitation recited in claim 23.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Grayburn and Chen (US 2016/0263017) in view of Motta-Mena, et al. (Nat Chem Biol. 2014), further in view of Schnichels, et al. (Prog Retin Eye Res. 2021).
The teachings of Grayburn and Motta-Mena are set forth above.
Schnichels, et al. (hereinafter Schnichels) teaches in vitro and ex vivo models for age-related macular degeneration, glaucoma, and diabetic neuropathy (Abstract).
Regarding claim 24: Following the above discussion, Grayburn does not teach the limitations recited in the instant claim.
However, Schnichels teaches the ARPE-19 cell line (pg. 9; par. 3.1.1).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have substituted the HEK 293T modified host cell of Grayburn with the ARPE-19 cell taught by Schnichels. This conclusion of obviousness is based on the ‘substitution rationale’. As Grayburn discloses many eukaryotic host cells are available and known to the skilled artisan for use with the invention of the disclosure (par. 0220), the use of the ARPE-19 cell in place of the HEK 293T cell is a predictable use of prior art elements according to their established functions of suitable cell types for expression of GLP-1 in an optogenetic system, leading to the predictable result of a host cell expressing GLP-1 under blue light stimulation. This rationale aligns with the principle of a simple substitution of one known element for another to obtain predictable results; see MPEP 2143(I)(B).
This renders obvious the wherein the engineered cell is an ARPE-19 cell transfected by the first and second transgenes limitation recited in claim 24.
Claims 11-12, 14, 17-22, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Ye, et al. (CN 108728326) in view of Dominguez, et al. (Nat Rev Mol Cell Biol. 2015) and Shao, et al. (PNAS. 2018), as evidenced by Tian and Zhou (J Biol Chem. 2021).
The teachings of Ye are set forth above; claims 11-12, 14, 17-21, and 25 are anticipated by the same.
Dominguez, et al. (hereinafter Dominguez) teaches nuclease-deactivated Cas9 (dCas9) for RNA-guided genomic transcription regulation (Abstract).
Shao, et al. (hereinafter Shao) teaches a far-red light-activated CRISPR-dCas9 effector device (Abstract).
Regarding claim 22: Following the above discussion, Ye does not teach the limitations recited in the instant claim.
However, Dominguez teaches dCas9, an engineered nuclease-deficient Cas9, which enables targeting genomic DNA without cleaving it (pg. 5; col. 2, par. 1); it is unable to cleave DNA but retains the ability to specifically bind to DNA when guided by sgRNA, allowing for direct manipulation of the transcription process without genetically altering the DNA sequence (pg. 6; col. 2, par. 1).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have modified the engineered host cell of Ye by incorporating a third vector into the far-red light-regulated gene expression loop control system, said vector comprising a PFRL promoter and a nucleotide sequence encoding a dCas9 gene, as taught by Domiguez. This conclusion of obviousness is based on the ‘teaching, suggestion, or motivation rationale’. One would be motivated to include the dCas9 gene for the direct manipulation of the transcription process without the need for genetically altering the DNA sequence of the therapeutic gene, as taught by Dominguez (pg. 6). Further, as Shao discloses a far-red light (FRL)-activated CRISPR-dCas9 effector (FACE) system based on dCas9 and the bacterial phytochrome BphS (pg. 6722; col. 2, par. 1), one of ordinary skill in the art would have a reasonable expectation of success.
This renders obvious the further comprising a third transgene comprising a light sensing protein activated promoter and a dCas9 DNA encoding a dCas9 protein limitation recited in claim 22.
Claims 11-12, 14, 17-21, 23, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Ye, et al. (CN 108728326) in view of Gargett and Brown (Front Pharmacol. 2014) and Senova, et al. (Sci Rep. 2017), as evidenced by Tian and Zhou (J Biol Chem. 2021).
The teachings of Ye are set forth above; claims 11-12, 14, 17-21, and 25 are anticipated by the same.
Gargett and Brown (hereinafter Gargett) teaches an inducible Caspase 9 “safety switch” (Abstract).
Senova, et al. (hereinafter Senova) teaches the spatial distribution of light, potential damage, and non-physiological effects in vivo, in anesthetized rat brains, on large brain volumes, following repeated high irradiance photo-stimulation (Abstract).
Regarding claim 23: Following the above discussion, Ye does not teach the limitations recited in the instant claim.
However, Gargett teaches a suicide gene system comprising an inducible caspase 9 (iCasp9) gene and a small-molecule, bio-inert, chemical induction of dimerization (CID) drug, AP1903, wherein the iCasp9 gene contains the intracellular portion of the human caspase9 protein, a pro-apoptotic molecule, fused to a drug-binding domain derived from human FK506-binding protein; intravenous administration of AP1903 produces cross-linking of the drug-binding domains of this chimeric protein, which in turn dimerizes caspase9 and activates the downstream executioner caspase 3 molecule, resulting in cellular apoptosis (pg. 3; col. 2, par. 3).
Senova teaches the incorporation of exogenous DNA into humans carries safety concerns, such as the risks of long term expression, the effect of over expression, and immunogenicity (pg. 1; par. 2); other concerns include the potential occurrence of damage or non-physiological effects due to illumination and resulting heat from sustained stimulation with red light (pg. 2; par. 2).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have modified the engineered host cell of Ye by incorporating another vector into the far-red light-regulated gene expression loop control system, said vector comprising a nucleotide sequence encoding the iCasp9 gene, as taught by Gargett. This conclusion of obviousness is based on the ‘teaching, suggestion, or motivation rationale’. One would be motivated to include the iCasp9 gene as it acts as a “suicide gene” for the targeted deletion of transduced cells (pg. 3; col. 2, pars. 1-3); the skilled artisan would recognize the value of its inclusion for the reasons disclosed by Senova, namely the risks of long term and over expression, immunogenicity, and damage or other effects due to light exposure and resulting heat from sustained light stimulation (pgs. 1-2). Further, as Gargett discloses the iCasp9/CID system has been successfully translated to clinical settings (pg. 4; col. 2, par. 2), and as the inclusion of another transgene is well within the purview of the skilled artisan (as evidenced by the Ye and Gargett disclosures), one of ordinary skill in the art would have a reasonable expectation of success.
This renders obvious the further comprising a fourth transgene comprising a CASP9 DNA encoding an iCaspase9 protein leading to cell death limitation recited in claim 23.
Claims 11-12, 14, 17-21, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Ye, et al. (CN 108728326) in view of Schnichels, et al. (Prog Retin Eye Res. 2021), as evidenced by Tian and Zhou (J Biol Chem. 2021).
The teachings of Ye are set forth above; claims 11-12, 14, 17-21, and 25 are anticipated by the same.
Schnichels, et al. (hereinafter Schnichels) teaches in vitro and ex vivo models for age-related macular degeneration, glaucoma, and diabetic neuropathy (Abstract).
Regarding claim 24: Following the above discussion, Ye does not teach the limitations recited in the instant claim.
However, Schnichels teaches the ARPE-19 cell line (pg. 9; par. 3.1.1).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have substituted the HEK-293T host cell of Ye with the ARPE-19 cell taught by Schnichels. This conclusion of obviousness is based on the ‘substitution rationale’. As Ye discloses the host cells can be any type of mammalian cell (par. 0024), the use of the ARPE-19 cell in place of the HEK-293T cell is a predictable use of prior art elements according to their established functions of suitable cell types for the far-red light-regulated gene expression loop control system, leading to the predictable result of a host cell comprising said system. This rationale aligns with the principle of a simple substitution of one known element for another to obtain predictable results; see MPEP 2143(I)(B).
This renders obvious the wherein the engineered cell is an ARPE-19 cell transfected by the first and second transgenes limitation recited in claim 24.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
SEQ ID NOs: 4 (directed to an IRES element), 7 (directed to EGFP), and 8-10 (directed to GLP-1) are free from the prior art prior to the effective filing date of the instant application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GINA PRONZATI whose telephone number is (571)270-5725. The examiner can normally be reached Monday - Friday 9:00a - 5:00p ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CHRISTOPHER BABIC can be reached at (571)272-8507. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GINA PRONZATI/Examiner, Art Unit 1633
/ALLISON M FOX/Primary Examiner, Art Unit 1633
SEQUENCE ALIGNMENTS
Instant SEQ ID NO: 3 vs. SEQ ID NO: 3 of Ye, et al. (CN 108728326); as determined by Clustal Omega Multiple Sequence Alignment (MSA) Tool
PNG
media_image1.png
190
860
media_image1.png
Greyscale
PNG
media_image2.png
103
356
media_image2.png
Greyscale
Instant SEQ ID NO: 3 vs. SEQ ID NO: 3 of Ye, et al. (CN 108728326); as determined by Automated Biotechnology Sequence Search (ABSS) Tool
PNG
media_image3.png
381
702
media_image3.png
Greyscale
Instant SEQ ID NO: 27 vs. SEQ ID NO: 2 of Feng, et al. (US 2023/0241166); as determined by Clustal Omega MSA Tool
PNG
media_image4.png
963
859
media_image4.png
Greyscale
PNG
media_image5.png
88
867
media_image5.png
Greyscale
PNG
media_image6.png
488
872
media_image6.png
Greyscale
PNG
media_image7.png
95
356
media_image7.png
Greyscale
