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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/31/2025 has been acknowledged. Applicant' s amendment and response filed on 10/31/2025 has been received and entered into the case.
Amendments
In the reply filed on 10/31/2025, Applicant has amended claims 180, 182, 186-187, 189, 200, and 202-203, newly canceled claims 190 and 201, and added new claim 204.
Claim Status
Claims 180-184, 186-189, 200 and 202-204 are pending and are considered on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/31/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. The corresponding signed and initialed PTO form 1449 has been mailed with this action.
New Claim Objections
Claims 186-187 are objected to because of the following informalities:
Claims 186 and 187 recite the phrase “the second gene-editing, ” in line 2. It is recommended to change to “the second gene-editing protein, ”.
Appropriate correction is required.
Withdrawn Claim Rejections - 35 USC § 112(a)
The prior rejection of claims 200 and 202-203 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 for reciting new matter “the engineered hematopoietic stem cell is differentiated into an engineered immune cell”, has been withdrawn in light of Applicant’s amendment to the claims and arguments filed on 10/31/2025 (p. 5).
Withdrawn Claim Rejections - 35 USC § 103
The prior rejections of claims 180-184, 186-189, 200 and 202-203 under 35 U.S.C. 103 set forth in the prior Office action mailed on 05/02/2025 have been withdrawn in light of Applicant’s amendment to claim 180 to recite new limitations.
New 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.
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.
Claims 180-181 and 186-187 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al., (WO 2016/069283 A1, published May 6, 2016) in view of Sadelain et al., (US 11,377,637 B2, effectively filed on Apr. 15, 2016 as provisional application No. 62/323,623).
With respect to claim 180, Zhao teaches a method for generating a modified T cell (e.g., abstract), thus teaches the preamble a method of cell engineering.
In regard to (a), Zhao teaches Cas9 mRNA and gRNAs targeting PD1 and TCR α chain are transferred into T cells by electroporation (e.g., p. 77, para 2 “Generation of universal CART cells), thus teaches (a) introducing into a hematopoietic cell (i.e., a T cell) a non-viral, cell-free composition (i.e., electroporating Cas9 mRNA and gRNAs) comprising a first synthetic RNA encoding a first gene-editing protein (i.e., Cas9 mRNA), which creates a double strand break (see p. 38, para 1) in a gene encoding an immune checkpoint molecule (i.e., PD1).
In regard to (b), under the broadest reasonable interpretation, the second and the first synthetic RNAs are interpreted as a mixture of synthetic RNAs. As stated supra, Zhao teaches (b) introducing into the hematopoietic cell (i.e., the T cell) a second synthetic RNA encoding a second gene editing protein (i.e., the Cas9 mRNA), which generates a break in a genomic target site (i.e., TCR α chain (TRAC) genomic site).
In regard to (c), Zhao teaches combing the lentiviral transduction of CD19 or PSCA CAR with the RNA electroporation of CRISPR/gRNAs (e.g., p. 77, para 2 “Generation of universal CART cells), thus teaches (c) introducing into the hematopoietic cell a nucleic acid sequence encoding a chimeric antigen receptor (CAR), thereby generating an engineered hematopoietic cell (i.e., a universal CART cell).
However, Zhao is silent on the nucleic acid sequence encoding the CAR being inserted at the break in the genomic target site.
Sadelain teaches a method for generating universal CAR T cells using a two-in-one genome editing strategy (see e.g., [0082]-[0083]). Sadelain teaches tailored nucleases (TALEN and CRISPR/cas9) were designed targeting the first exon of the TRAC gene and an AAV vector was used to promote integration of the CAR in frame with the TRAC gene by homologous directed repair (HDR) ([0083]). Thus, Sadelain teaches introducing into a T cell a synthetic RNA encoding a gene-editing protein (i.e., mRNA encoding TALEN or CRISPR/cas9, see e.g., [0090] for synthesizing TALEN mRNA and Cas9 mRNA) and a TRAC gRNA (e.g., [0085]), and teaches (c) introducing a repair template comprising a nucleic acid sequence encoding a CAR (i.e., an AAV vector comprising the CAR, see e.g., [0091]), that results in targeted integration of the CAR in the TRAC genomic locus (see e.g., [00100] and Fig 1).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for engineering a universal CART cell disclosed by Zhao, by substituting the lentiviral CAR with a repair template comprising the CAR for targeted integration as suggested by Sadelain with a reasonable expectation of success. Since Sadelain teaches targeted integration provides highly homogeneous and stable CAR expression, improved persistence, and higher in vitro and in vivo tumor lysis activity, proliferation and persistence than retrovirally transduced CART cells ([00103]), one of ordinary skill in the art would have had a reason to make this substitution in order to make targeted integrated universal CAR T cells with the advantages taught by Sadelain (e.g., [00103]).
With respect to claim 181 directed to the immune checkpoint molecule being PD-1, as stated supra, Zhao teaches gRNAs targeting PD1 (e.g., p. 77, para 2 “Generation of universal CART cells).
With respect to claim 186 directed to the gene-editing protein being CRISPR-associated protein (Cas) or a transcription activator-like effector nuclease (TALEN), and claim 187 directed to the gene-editing protein comprising a nuclease domain and a plurality of artificial transcription activator-like (TAL) effector repeat sequences, as stated supra, Zhao teaches both Cas9 and TALEN (e.g., p. 84, last 2 para) and reduces to practice Cas9 mRNA (e.g., p. 77, para 2), and Sadelain teaches and reduces to practice both Cas9 mRNA and TALEN mRNA (see e.g., [0090] for synthesizing TALEN mRNA and Cas9 mRNA). It is noted that TALEN comprises a nuclease domain (for cleaving DNA) and a plurality of artificial transcription activator-like (TAL) effector repeat sequences (for targeting, see e.g., Sadelain, [0088]-[0089]).
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Claims 182-184 and 188 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al., (WO 2016/069283 A1, published May 6, 2016) in view of Sadelain et al., (US 11,377,637 B2, effectively filed on Apr. 15, 2016 as provisional application No. 62/323,623), as applied to claims 180 and 187 above, and further in view of Li et al. (Bioconjugate Chem. February 24, 2016; 27: 849-853, cited in IDS 08/05/2024) and Angel et al. (WO 2014/071219, cited in IDS 08/05/2024).
Claim 182 is directed to the synthetic RNA comprising one or more non-canonical nucleotides that avoid substantial cellular toxicity. Claim 183 is directed to the non-canonical nucleotides comprising 5-methoxyuridine. Claim 184 is directed to the non-canonical nucleotides further comprising one such as pseudouridine.
However, Zhao and Sadelain are silent on non-canonical nucleotides comprising 5-methoxyuridine and pseudouridine to avoid cell toxicity in claims 182-184.
Regarding non-canonical nucleotides comprising 5-methoxyuridine and pseudouridine in synthetic mRNAs, Li teaches chemical modifications of mRNAs with 5-methoxyuridine (5moU) and pseudouridine are able to significantly improve protein expression and are among the top 3 modifications in multiple cell lines tested, and consequently, 5moU and pseudouridine are promising nucleotides for chemical modification of mRNAs (abstract; p. 849, last para; p. 850; p. 851, left col, para 1; see Fig 2 and Fig 3A&3D), related to claims 182-184. Li teaches mRNAs are utilized in T cells for adoptive T-cell therapy and to make nucleases for gene engineering (p. 849, left col, para 1).
Regarding the non-canonical nucleotides avoiding cellular toxicity in claim 182, Angel teaches non-canonical nucleotide members, such as pseudouridine, when incorporated into synthetic RNA, increase the translation efficiency of the synthetic RNA and decrease the toxicity of the synthetic RNA (e.g. p, 12, last para).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for engineering a universal CAR-T cell by synthetic RNA encoding a gene-editing protein suggested by Zhao in view of Sadelain, by substituting with non-canonical nucleotides such as 5-methoxyuridine and pseudouridine that avoid substantial cellular toxicity as taught by Li and Angel with a reasonable expectation of success. Since Li teaches non-canonical nucleotides such as 5-methoxyuridine and pseudouridine are able to significantly improve protein expression and are promising nucleotides for chemical modification of mRNAs (abstract) and since Angel teaches non-canonical nucleotide members, such as pseudouridine, when incorporated into synthetic RNA, increase the translation efficiency and decrease the toxicity of the synthetic RNA (e.g. p, 12, last para), one of ordinary skill in the art would have had a reason to substitute with non-canonical nucleotides such as 5-methoxyuridine and pseudouridine as taught by Li and Angel in the synthetic mRNA of Zhao and Sadelain in order to increase the translation efficiency and to decrease the toxicity of the synthetic RNA as taught by Li and Angel.
Claim 188 is directed to the length of the artificial TAL effector repeat sequences and a GabG sequence at the C-terminus.
However, Zhao and Sadelain are silent on the TALE repeat sequence being 36-39 amino acids in length, or teach the TALE repeat sequence comprising a GabG sequence at the C-terminus.
Angel teaches a TALE repeat sequence has a length of about 36 amino acids (p. 17, line 5). Angel teaches novel repeat sequences exhibiting lower off-target activity and high on-target activity contain the amino-acid sequence: GabG, where "a" and "b" is each independently selected from the group: H and G, and is present at the C-terminus of the repeat sequence (p. 16-17, also see p. 69 Example 58 reciting “High-efficiency gene editing was observed in cells expressing gene-editing proteins containing one or more 36 amino acid-long repeat sequences. Gene-editing efficiency was highest in cells expressing gene-editing proteins containing one or more repeat sequences containing the amino-acid sequence: GHGG”), thus teaches claim 188.
Accordingly, it would have been obvious for one of ordinary skill in the art to have chosen the length of the repeat sequences being 36-39 amino acids and have combined GabG, where "a" and "b" each independently selected from the group: H and G, and present at the C-terminus of the repeat sequence as taught by Angel in the TALE repeat sequences of Zhao and Sadelain with a reasonable expectation of success. Since Angel teaches high-efficiency gene editing was observed in cells expressing gene-editing proteins containing one or more 36 amino acid-long repeat sequences (p. 69, Example 58) and teaches the repeat sequences containing the amino-acid sequence: GabG at the C-terminus exhibit lower off-target activity and high on-target activity (p. 16-17), one of ordinary skill in the art would have had a reason to choose the length of 36 amino acids and combine GabG sequence at the C-terminus as taught by Angel in order to obtain high efficiency gene-editing with lower off-target activity and high on-target activity (Angel, p. 16-17, p. 69, Example 58).
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Claims 189 and 200 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al., (WO 2016/069283 A1, published May 6, 2016) in view of Sadelain et al., (US 11,377,637 B2, effectively filed on Apr. 15, 2016 as provisional application No. 62/323,623), as applied to claim 180 above, and further in view of Gschweng et al. (Immunol Rev. 2014; 257(1): 237-249, renumbered as p. 1-20 in the previously attached version, prior art of record).
Claim 189 is directed to the hematopoietic cell being a hematopoietic stem cell, and claim 200 is directed to the method further comprising differentiating the HSC thereby generating an engineered differentiated cell.
Sadelain teaches precursor cells of T cells, such as hematopoietic stem and/or progenitor cells that can differentiate into T cells, can be used to recombinantly express a CAR ([0015]).
However, Zhao and Sadelain are silent on the motivation to choose HSC.
Gschweng summarizes studies on using hematopoietic stem cells engineered with a TCR or a CAR for cancer immunotherapy (abstract). Gschweng teaches CAR-engineered HSC engrafts are differentiated into myeloid and NK cells in addition to T cells expressing the CAR, providing broader anti-tumor activity that arises quickly after transplant (abstract, p. 4, 2nd full para and p. 8). Thus, Gschweng suggests engineering an HSC with a CAR, related to claim 189, and teaches a method for differentiating the HSC to generate engineered differentiated cells (i.e., myeloid, NK cells and T cells), related to claim 200.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for engineering a universal CAR T cell or a CAR-HSC as suggested by Zhao in view of Sadelain, by choosing engineering HSC with a CAR as suggested by Gschweng with a reasonable expectation of success. Since Gschweng teaches TCR- or CAR-engineered HSCs produce myeloid and NK cells in addition to T cells expressing the TCR or CAR that provide broader anti-tumor activity and arises quickly after transplant (abstract, p. 4, 2nd full para and p. 8), one of ordinary skill in the art would have had a reason to choose engineering an HSC with a CAR and to combine differentiating the HSC to generate engineered differentiated cells as suggested by Gschweng in the method of Zhao in view of Sadelain in order to produce multiple types of immune cells like myeloid and NK cells in addition to T cells expressing the CAR to provide broader anti-tumor activity as taught by Gschweng.
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Claims 202 and 203 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al., (WO 2016/069283 A1, published May 6, 2016) in view of Sadelain et al., (US 11,377,637 B2, effectively filed on Apr. 15, 2016 as provisional application No. 62/323,623) and Gschweng et al. (Immunol Rev. 2014; 257(1): 237-249, renumbered as p. 1-20 in the previously attached version, prior art of record), as applied to claims 200, 189 and 180 above, and further in view of Rowley et al., (Eur. J. Immunol. 2009. 39: 491-506. Prior art of record).
Claim 202 is directed to the method further comprising introducing into the engineered differentiated cell a synthetic RNA encoding an interleukin (IL). Claim 203 is directed to the interleukin being IL-15.
However, Zhao, Sadelain and Gschweng are silent on introducing into the engineered differentiated cell a synthetic RNA encoding an IL-15 in claims 202-203.
Rowley teaches introducing into antigen-specific CD8+ T cells a synthetic mRNA encoding an IL-15 fusion protein enhances the proliferation and cytotoxic potential of the E7 tumor antigen-specific CD8+ T cells (abstract, p. 500, left col, section “Proliferation and IFN-γ response of E7 tumor antigen-specific CD8+ T cells transfected with IL-15/IL-15RA, see Fig 7B for enhanced proliferation and Fig 7D-7E for enhanced IFN-γ production), thus teaches claims 202-203.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method suggested by Zhao in view of Sadelain and Gschweng, by combining introducing into the engineered differentiated immune cell a synthetic RNA encoding an IL-15 as taught by Rowley with a reasonable expectation of success. Since Rowley teaches introducing into antigen-specific CD8+ T cells a synthetic mRNA encoding an IL-15 fusion protein enhances their proliferation and cytotoxic potential (abstract, p. 500, left col, last section), one of ordinary skill in the art would have had a reason to combine a synthetic RNA encoding an IL-15 as taught by Rowley for introducing into the engineered differentiated immune cell suggested by Zhao in view of Sadelain and Gschweng in order to enhance their proliferation and cytotoxic activity.
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Claim 204 is rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al., (WO 2016/069283 A1, published May 6, 2016) in view of Sadelain et al., (US 11,377,637 B2, effectively filed on Apr. 15, 2016 as provisional application No. 62/323,623) and Gschweng et al. (Immunol Rev. 2014; 257(1): 237-249, renumbered as p. 1-20 in the previously attached version, prior art of record), as applied to claims 189 and 180 above, and further in view of Angel et al. (WO 2014/071219, cited in IDS 08/05/2024).
Claim 204 is directed to the method further comprising delivering into a somatic cell one or more nucleic acids encoding one or more reprogramming factors thus reprogramming the somatic cell into the hematopoietic stem cell.
However, Zhao, Sadelain and Gschweng are silent on reprogramming a somatic cell into the HSC.
Angel teaches a personalized cell-replacement therapy comprising genetically editing and reprogramming patient’s skin cells into CD34+/CD90+/Lin- hematopoietic stem cells for transplanting (Example 12 using methods in Examples 5, 2 and 1, p. 58). In Example 5, Angel teaches the somatic cells are transfected with RNAs encoding Oct4, Sox3, Klf4, c-Myc-2 (T58A), and Lin28 (i.e., reprogramming factors, see Examples 1 and 2, p. 49). Thus, Angel teaches delivering into a somatic cell nucleic acids encoding reprogramming factors to reprogram the somatic cell into the hematopoietic stem cell in claim 204.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method suggested by Zhao in view of Sadelain and Gschweng, by combining delivering into a somatic cell nucleic acids encoding reprogramming factors to reprogram the somatic cell into the HSC as taught by Angel with a reasonable expectation of success. Since Angel teaches a method of personalized cell-replacement therapy by reprogramming patient’s skin cells into HSCs for transplantation (Example 12), one of ordinary skill in the art would have had a reason to combine a step of reprogramming a somatic cell of the patient into the HSC as taught by Angel in the method of Zhao in view of Sadelain and Gschweng in order to provide a personalized cell-replacement therapy to the patient in combination with an immunotherapy for treating hematologic malignancies.
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Response to Traversal:
Applicant’s arguments filed on 10/31/2025 are acknowledged.
Applicant first argues that none of the previous cited references disclose the amended method of inserting the CAR-encoding gene into the hematopoietic cell. Neither of the art disclose a method comprising (1) a repair template encoding a CAR, nor (2) that the sequence encoding the CAR can be inserted in a break generated by a gene-editing protein. Further, there is no motivation to modify the teachings of the cited references to arrive at the claimed method (Remarks, p. 6-7).
Applicant’s arguments have been fully considered and they are persuasive. Therefore, the prior rejection has been withdrawn. However, as necessitated by amendment, a new ground of rejection has been made over Zhao in view of Sadelain as discussed above. Specifically, Sadelain teaches targeted integration of the CAR in the TRAC genomic locus in the T cells.
Applicant further argues that the claimed method requires the activity of two gene-editing proteins in one cell (p. 7, para 2).
Applicant’s arguments have been fully considered but they are not persuasive. As stated supra, under the broadest reasonable interpretation, the first and the second synthetic RNAs are interpreted as a mixture of synthetic RNAs, and the first and the second gene-editing proteins are interpreted as a mixture of the same gene-editing protein.
Conclusion
No claims are allowed.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jianjian Zhu whose telephone number is (571)272-0956. The examiner can normally be reached M - F 8:30AM - 4PM (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Douglas (Doug) Schultz can be reached on (571) 272-0763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIANJIAN ZHU/Examiner, Art Unit 1631