Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
Applicant’s election of the inventions of Group I (claims 1, and 40-58) , drawn to a composition for targeted insertion of a nucleic acid comprising a sequence of equivalent coding potential to the 3’ portion of the 5’ portion of an endogenous gene of cell and an exogenous transgene, without traverse, is acknowledged.
Applicant elects the invention of Group I and the following species: T-cell receptor alpha chain constant (TRAC) as the endogenous gene.
Claims 42, 43, and 44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected species, reciting different endogenous genes. Applicant newly add claims 40-41 and 45-59 and provides support for the newly added claims in the specification. Election was made without traverse in the reply filed on 4/9/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Application Status
The action is written in response to applicant’s correspondence received on 4/9/2026. Claims 1, 40-41, and 45-58 are currently pending in the instant application.
Priority
This application claims priority to provisional application 63/107,401, filed on 10/29/2020.
Claim Rejections – Improper Markush Group
Claim 49 is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of claim 49 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
The species, listed in claim 49, pertain to a broad genus of cancer cell-associated targets. These cancer cell associated- targets are encoded by different genes, each with its own DNA sequence, thus the alternatively recited species do not all share a significant structural similarity, that is a significantly similar DNA sequence.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 57 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.
Claim 57 recites the limitation "the one or more 2A sequences". There is insufficient antecedent basis for this limitation in the claim as claim 57 is dependent on claim 1, and claim 1 does not recite any limitation regarding 2A sequences. Applicant can overcome this rejection by amending claim 57 to be dependent on claim 56, which is further dependent on claim 1, which does introduce the proper antecedent basis for “one or more 2A sequences”.
Claim 58 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: one or more 2A sequences. In paragraph 0106 of the instant specification, applicant recites the nucleic acid comprises one or more 2A sequences to facilitate co-translation of two or more protein products. In the instant dependent claim 58 and the composition of claim 1, there is no mention of 2A sequences as a structural limitation which is deemed to be a critical element of the composition, as evidence in the instant specification (see paragraph 0106).
Applicant can overcome this rejection by amending the claim language to include this missing critical element.
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 1, 40-41, 45-54, 56, and 58 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sadelain et al. (WO 2017/180989 A2, published 10/19/2017).
Regarding claim 1, Sadelain teaches an invention which provides a T cell with one or more therapeutic transgenes integrated within the genome of the cell such that the expression of the transgene is under control of an endogenous promoter of the T cell (see abstract). Sadelain teaches a transgene is integrated at a first site within the genome of the T cell by targeted homologous recombination, carried out by a method using CRISPR/Cas9 (see paragraph 0031). Sadelain discloses Fig. 7A-7G which shows CRISPR/Cas9 mediated CAR gene targeting into the TRAC locus, which includes TRAC gRNA (see paragraph 0173) and depending on the cassette design, the method can be used to disrupt, or not, the expression of the endogenous gene (see paragraph 0192). In the preferred embodiment, the integration of the CAR-encoding nucleic acid sequences disrupts the expression of an endogenous gene encoding a protein required for a function T cell receptor complex (see paragraph 0192). Sadelain further teaches Fig. 1A, which shows the tailored nuclease being inserted into the 5’ portion of the endogenous TRAC gene and an embodiment where the T cell lacks a functional TCR complex, and the targeting construct contains the exogenous transgene flanked by homology sequences (see paragraph 0165). Finally, Sadelain teaches an integration and targeting construct which can contain a P2A directly 5’ of the transgene, allowing the expression of the transgene at a desired location in the cell without being fused to the gene product of the endogenous gene. Such a construct provides for expression of both the transgene and the endogenous gene at the site of integration. (see paragraph 0217).
Regarding claim 40 and 41, Sadelain teaches Fig. 1A-1E, wherein the tailored nuclease is targeted into the TCR alpha constant (TRAC) locus (see paragraph 0167).
Regarding claim 45, Sadelain teaches where a therapeutic transgene encodes a non-coding RNA such as miRNA, siRNA, antisense RNA, etc. (see paragraph 0308).
Regarding claim 46 and 47, Sadelain teaches where the extracellular domain of a CAR can be fused to a leader or signal peptide that directs the nascent protein into the endoplasmic reticulum and subsequent translocation to the cell surface (see paragraph 0280). It is understood that the domain of polypeptides described herein can be used in a cancer antigen CAR, as useful to provide a desired function such as a signal peptide, antigen binding domain, transmembrane domain, etc. (see paragraph 0285).
Regarding claim 48, Sadelain teaches where in certain embodiments of a T cell, a transgene is integrated at a first site within the genome of the T cell as described above, the transgene encodes a molecule selected from the group consisting of a CAR (see paragraph 0024).
Regarding claim 49, Sadelain teaches suitable cancer antigens include, but are not limited to, CD19, CD22, CD30, CD33, etc. (see paragraph 0270).
Regarding claim 50-52, Sadelain teaches where the T cells of the invention are immune cells of the lymphoid lineage. T cells useful as immune cells of the invention can be CD4+ or CD8+ T cells (see paragraph 0193).
Regarding claim 53, a method of generating a T cell that expresses a CAR and lacks a function TCR complex comprises of homologous recombination systems such as Cas9 (see paragraph 0162).
Regarding claim 54, Sadelain discloses Fig. 7A-7G which shows CRISPR/Cas9 mediated CAR gene targeting into the TRAC locus. Though Sadelain does not directly disclose the Cas9 is an active endonuclease or a nickase, it is very well known in the art (as evidenced by Anders et al. ) that Cas9 is an RNA-guided endonuclease. If Cas9 mediates the targeted expression of an exogenous transgene (disclosed in Fig. 7 of Sadelain), then inherently, it is an active endonuclease.
Regarding claim 56, the preferred embodiment has a nucleic acid sequence encoding a self-cleaving porcine teschovirus 2A (see paragraph 0165).
Regarding claim 58, Sadelain teaches an integration and targeting construct which can contain a P2A directly 5’ of the transgene, allowing the expression of the transgene at a desired location in the cell without being fused to the gene product of the endogenous gene. Such a construct provides for expression of both the transgene and the endogenous gene at the site of integration. (see paragraph 0217).
In view of the foregoing, claims 1, 40-41, 45-54, 56, and 58 are rejected under U.S.C. 102(a)(1) as being anticipated by Sadelain.
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.
Claim 57 is rejected under 35 U.S.C. 103 as being unpatentable over Sadelain (WO 2017/180989 A2, published 10/19/2017) in view of Kim et al. (High Cleavage Efficiency of a 2A Peptide Derived from Porcine Teschovirus-1 in Human Cell Lines, Zebrafish, and Mice, PLOS One, Volume 6, Issue 4, Published 2011) and Mauro et al. (A critical analysis of codon optimization in human therapeutics, Cell Press, Volume 20, Issue 11, pgs. 604-613, published 11/2014).
With regards to claim 57, Sadelain teaches the composition of claim 1, a composition for the targeted insertion of a nucleic acid in the coding region of an endogenous gene. Furthermore, Sadelain teaches where the nucleic acid comprises of one or more 2A sequences (see paragraph 0165).
Regarding claim 57, Sadelain does not teach wherein the 2A sequences are encoded by the sequences set forth in SEQ ID NO: 14 and 15.
Regarding claim 57, Kim teaches the comparison of 2A peptides derived from porcine teschovirus-1 in different cell lines to determine their efficiency. Kim also teaches the amino acid sequences encoding the 4 types of 2A peptides: 1) P2A indicates porcine teschovirus-1 2A, 2) T2A indicates Thoseaasigna virus 2A, 3) E2A indicates equine rhinitis A virus 2A, and 4) F2A indicates Foot Mouth Disease 2A, as shown below (see Fig. 1B). Furthermore, Kim teaches that P2A was deemed to be the most efficient in HEK239T, HT1080, and HeLa cells (see Fig. 2A/B, 3A/B, and 4A/B), followed by T2A, E2A, and F2A. However, the byproducts did not appear in the lysate of cells transfected with the plasmid that does not have 2A sequences, raising the possibility that their production may be related to 2A mediated ‘cleavage’ activity (see results).
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SEQ ID NOs: 14 and 15 were put into Expasy to yield amino acid translations. The following is the translated amino acid sequences based off different open reading frames for SEQ ID NO: 14 and 15.
SEQ ID NO: 14
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SEQ ID NO: 15
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As evidenced by the translation of SEQ ID NO: 14 and 15, the amino acid sequence encoded by SEQ ID NO: 14 of the instant application has 100% identity with the T2A amino acid sequence disclosed in Kim after SGSG sequence which corresponds with a GSG linker that can be added to the N-terminus of certain 2A variants to improve translation efficiency (see discussion section). The amino acid sequence encoded by SEQ ID NO: 15, with the GSG linker, has 100% identity with the F2A amino acid sequence. Therefore, SEQ ID NOs: 14 and 15 encode for T2A and F2A sequences, that were well known in the art.
Regarding claim 57, Mauro teaches that codon optimization describes gene engineering approaches that use synonymous codon changes to increase protein production (see abstract).
It would have been obvious, to one with ordinary skill in the art, to combine the prior arts listed above to arrive at the instantly claimed invention of claim 57. One would expect a reasonable chance of success as Sadelain teaches a construct using a P2A sequence to express one or more transgene and an endogenous gene (see Fig. 1 of Sadelain). Kim teaches the sequences of T2A and F2A, which are examples of the four types of 2A sequences, known to those skilled in the art, that can be used to simultaneously express one or more genes with a single plasmid (see introduction of Kim). Furthermore, Kim investigates P2A, T2A, E2A, and F2A activity, showing that the different 2A sequences may be used interchangeably to facilitate tandem gene expression.
One would be motivated to combine the said arts to arrive at a 2A peptide encoded by nucleotide sequence SEQ ID NO: 14 or 15. Kim teaches that there is a possibility that the production of 2A sequences is related to 2A mediated ‘cleavage’ activity. Therefore, through routine codon optimization taught by Mauro, one would arrive at SEQ ID NO: 14 or 15, which is a nucleotide sequence that encodes a T2A or F2A which may exhibit greater protein expression, and thus possibly enhancing 2A activity.
In view of the foregoing, claims 56 and 57 are rejected under 35 U.S.C. 103 as being prima facie obvious, before the effective filing date.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID YU whose telephone number is (571)272-1118. The examiner can normally be reached Monday-Friday 7:30 am -5 pm.
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/D.T.Y./Examiner, Art Unit 1635
/RAM R SHUKLA/Supervisory Patent Examiner, Art Unit 1635
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