DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
This action is in response to the papers filed on 01/05/2026. Claims 1, 3, 4, 6-8, 10, 12-19, 21-24, 27, 30-33, 46, 51, and 52 are currently pending as per claims filed on 09/05/2023. Claims 2, 5, 9, 11, 20, 25, 26, 28, 29, 34-45, 47-50, 53-56 have been canceled by Applicants’ amendment filed on 09/05/2023.
Applicant's election with traverse of Group 1, claims 1, 3, 4, 6-8, 10, 12-19, 21-24, 27, 30, and 46 in the reply filed on 01/05/2026 is acknowledged. Applicant timely traversed the election requirement in the reply filed on 01/05/2026.
Response to Applicants' arguments in relation to restriction requirements
Applicant’s traversal arguments are essentially that Group IV (claim 31; Rodent embryo) and Group I (claim 1,3, 4, 6-8, 10, 12-19, 21-24, 27, 30, 46) are interdependent and interrelated as they share a key feature, by virtue of dependency of claim 31 from claim 23, the humanized Clec9a gene. Furthermore, applicant argues there would not be a search burden to search both Group I and Group IV. With respect to Group I, II, and III applicant argues that disclosure of the entire invention (i.e. the product, its use, and method of making), is necessary due to 35 U.S.C §112, thus Group II and III should be examined with Group I claims.
These arguments have been fully considered and not found persuasive.
In relation to Applicant’s requested rejoining of Groups I and IV, claim 31 is directed to a genus of rodent embryos comprising the rodent stem cell isolated from the claimed genetically modified mouse or rat of Group I. Group IV does not require that the genome of the claimed rodent embryo comprises the nucleic acid construct comprising a humanized Clec9a gene as required in claim 1. In other words, the claimed rodent embryo of claim 31 may contain only one cell having in its genome a humanized Clec9a gene while the other rodent embryo cells do not contain said construct. Examination of both groups IV and I together will create undue burden. Applicants provide no explanation how a search for a genetically modify rodent animal comprising the claimed construct would also provide an exhaustive search for a genus of rodent embryos. Clearly different searches and issues are involved with each group involving the need to search different classes/subclasses or electronic resources, or employing different search queries, and/or the different inventions raising different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Regarding Applicant’s requirement for rejoining of Groups II-III and I, Applicants’ arguments are not persuasive because Groups I, II, and III are directed to a product (rodent, cells, tissues, and constructs), method of using the product, and method of making the product, respectively, which are related to distinct inventions. The rationale for restricting Groups is explained in the 11/03/2025 requirement for restriction office action. This restriction does pose a search burden to the examiner. As previously noted, the method claims of Groups II and III would be subject to rejoinder if product (used in the methods) claims are found allowable.
Claims 31-33, 51, and 52 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups of inventions, there being no allowable generic or linking claim. Reinstatement of claims drawn to non-elected inventions will be withdrawn during prosecution. The requirement is still deemed proper and is therefore made FINAL.
Please note that after a final requirement for restriction, the Applicants, in addition to making any response due on the remainder of the action, may petition the Commissioner to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested. (See § 1.181.).
Therefore, claims 1, 3, 4, 6-8, 10, 12-19, 21-24, 27, 30, and 46 are currently under examination to which the following grounds of rejection are applicable.
Priority
Applicant’s claim for the benefit of a prior-filed application 63/355,948 filed 06/27/2022 under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Thus, the earliest possible priority for the instant application is 06/27/2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/27/2023 and 11/08/2023 were filed before the mailing date of the current office action. The submission is in compliance with the provisions of 37 CPR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
Claim interpretation
Claim 46 recites a targeting nucleic acid construct comprising a human CLEC9A nucleic acid sequence to be integrated into a rodent Clec9a gene at an endogenous rodent Clec9a locus, flanked by a 5’ nucleotide and a 3’ nucleotide sequence that are homologous to nucleotide sequences at the rodent Clec9a locus. The recitation of “to be integrated” indicates a method step and the recitation of “flanked by” provides structure. Moreover, the recitation of “homologous” is synonymous to “similar”, therefore the structure of the product claim is interpreted as “a targeting nucleic acid construct comprising a human CLEC9A nucleic acid sequence flanked by a 5’ nucleotide and a 3’ nucleotide sequence that are homologous/similar to nucleotide sequences at the rodent Clec9a locus”.
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 1, 3, 4, 6-8, 10, 12-19, 21-24, 27, 30, and 46 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.
Claims 1 and 22 are indefinite in their recitation of an ectodomain at least 90% identical in sequence to the ectodomain of a human CLEC9A protein, as the human CLEC9A protein is not identified with a sequence identifier, it is unclear how to interpreted a sequence that is at least 90% identical to a human CLEC9A protein.
Claims 4 and 27 are indefinite in their recitation of a cytoplasmic transmembrane sequence at least 90% identical in sequence to the cytoplasmic transmembrane sequence of a rodent Clec9a protein, as the rodent Clec9a protein is not identified with a sequence identifier, it is unclear how to interpreted a sequence that is at least 90% identical to the cytoplasmic transmembrane sequence of a rodent Clec9a protein.
Claim 4 is indefinite in its recitation of “the humanized Clec9a protein”. There is not proper antecedent bases for “the humanized Clec9a protein“ in the claim.
Claim 6, 10, 13 are indefinite in its recitation of the term “endogenous”. The term "endogenous " is not defined by the claim. The specification does not provide any closed definition as to what is meant by “endogenous” and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear if the endogenous rodent Clec9a protein is the genetically altered version of a rodent Clec9a or wildtype version of a rodent Clec9a. Appropriate action is required.
Claim 8 recites the term “and/or” in line 24. It is unclear what the metes and bounds of this term, as “and” could be interpreted to include the rodent Clec9a nucleic acid sequence comprises exons 1 and 2 and the 3’ untranslated region of exon 6, or, “or” would imply that the two sequence regions are in the alternative. Appropriate correction is required. Claim 10 is included in the rejection as they directly or indirectly depend on claim 8.
Claim 46 is indefinite in its recitation of the relative term “substantially”. The term "substantially " is not defined by the claim. The specification does not provide any closed definition as to what is meant by “substantially” and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate action is required.
Claims 3, 4, 6-8, 10, 12-19, and 21 are rejected insofar as they depend on claim 1.
Claim Rejections - 35 USC § 112 Written Description
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.
Claim 1, 3, 4, 6-8, 10, 12-19, 21-24, 27, 30, and 46 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.
M.P.E.P. § 2163 recites, “The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A), above), reduction to drawings (see i)(B), above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus (see i)(C), above). See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.” Further, the written description inquiry is limited to that which is contained within the four corners of the specification, not the extent to which the skilled artisan, given his or her knowledge of the art, would have considered it to expand with only routine experimentation. See Ariad Pharms. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also id. at 1352 (“[I]t is the specification itself that must demonstrate possession A description that merely renders the invention obvious does not satisfy the requirement.").
Claim 1 is directed to a vast genus of genetically modified mice or rats and tissues or cells of said mice or rats (claim 22) comprising in its genome a humanized Clec9a gene comprising a rodent Clec9a nucleic acid sequence and a human CLEC9A nucleic acid sequence wherein the humanized Clec9a gene encodes a humanized Clec9a polypeptide comprising an ectodomain at least 90% identical in sequence to the ectodomain of a human CLEC9A protein and a cytoplasmic- transmembrane sequence at least 90% identical in sequence to the cytoplasmic- transmembrane sequence of a rodent Clec9a protein. Claim 46 is also directed to a targeting nucleic acid construct comprising any human CLEC9A nucleic acid sequence to be integrated into a rodent Clec9a gene and result in a humanized Clec9a polypeptide with an ectodomain substantially identical with the ectodomain of a human CLEC9A protein.
The claims broadly encompass any genetic modifications e.g., genetic modifications by culture, UV light, selective cross breeding, CRISPR and others, wherein the modification are within the genome of the rodent, and wherein the genus of genetic modifications may involve changing a single base pair, deleting an exon, adding a new region of DNA, deleting an intron or deleting the Clec9a such that the genetically modified rodent comprises in its genome a humanized Clec9a gene. Thus, the claims are directed to a large genus of genetic modifications of the Clec9a gene in the rodent genome resulting in the rodent expressing the humanized Clec9a polypeptide having an ectodomain having at least 90% identical in sequence to the ectodomain of a human CLEC9A protein, which can be a mouse or a rat.
There is not structure/function correlation for the claimed genus of genetic modification (somatic or genomic genetic modifications by culture, UV light, selective cross breeding CRISPR and others for the claimed genus of an ectodomain and cytoplasmic-transmembrane domain at least 90% identical to that of human and mouse CLEC9a, respectively. Rather, the only structure/function correlation present is for 100% identical to that of human of SEQ ID NO: 4 and mouse CLEC9a at the respective regions . Moreover, the modification is only shown to be achieved via BAC homologous recombination, wherein the genetically modified comprises a “humanized” CLEC9A gene that is engineered so that the mouse ectodomain is replaced with the human sequence (exons 3–6 of human CLEC9A), while the rodent’s own cytoplasmic and transmembrane domains (exons 1–2) are retained resulting in the humanized Clec9a polypeptide of SEQ ID NO:7.
Thus, the specification teaches a genetically modified mouse wherein genomic mouse Clec9a exon 3 through stop codon 6 is replaced with equivalent human CLEC9a exon 3 through 6 resulting in expression of a “humanized” Clec9a gene wherein ectodomain surface expression of a humanized Clec9a polypeptide of SEQ ID NO: 7 in a dendritic cell and can be targeted by an antibody to elicit strong CD4+ T-cell responses in vivo. (para 0001-0008, Fig 6-8). The specification teaches the strategy of humanization of the mouse Clec9a gene specifically with replacement of the ectodomain of the mouse Clec9a gene with the human equivalent ectodomain of the human CLEC9a gene, thus generating a targeting construct (Fig 1A-D).
However, the specification does not disclose a reduction to practice of a genetically modified rodent animal comprising a genus of genetic modifications that generate a humanize Clec9a polypeptide wherein the ectodomain is less than 100% identical to the human sequence of the ectodomain of CLEC9a polypeptide or less than 100% identical to the mouse transmembrane-cytoplasmic domain. Figures below show the 100% sequence alignment of the ectodomain of the human CLEC9A protein and SEQ ID NO:7 humanized Clec9a polypeptide as well as the 100% sequence alignment of the cytoplasmic-transmembrane domain of the mouse CLEC9A protein and SEQ ID NO:7 humanized Clec9a polypeptide.
PNG
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399
589
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Greyscale
Top sequence (Qy) = SEQ ID #7 (i.e. humanized Clec9a polypeptide)
Bottom sequence (Db) = CLEC9a Human Protein Sequence
Red box indicates 100% alignment of the ectodomain
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388
601
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Greyscale
Top sequence = SEQ ID #7 (i.e. humanized Clec9a polypeptide)
Bottom sequence = CLEC9a Mouse Protein Sequence
Green box indicates 100% alignment of the cytoplasmic-transmembrane domain
The Specification is silent about any ectodomain fragments that are less than 100% identical to the human ectodomain and fragments that are less than 100 % identical to the mouse cytoplasmic-transmembrane domain comprising the amino acid of SEQ ID NO: 7 that are functional. Moreover, it does not disclose if the phenotype of the humanized Clec9a polypeptide would be expressed on dendritic cells and have the required function of being targeted by an antibody-antigen fusion which elicits a CD4 T cell response in vivo, as indicated by Fig 6-8 and para 0077-0080. Therefore, it is unclear if sequence identity to the respective CLEC9a protein of human and mouse that is less than 100% in the humanized Clec9a of SEQ ID NO: 7 will provide the same function as the disclosed invention.
Applicant were referred to the guidelines for Written Description Requirement published January 5, 2001 in the Federal Register, Vol.66, No.4, pp.1099-1110 (see http://www.uspto.gov). The disclosure of a single species is rarely, if ever, sufficient to describe a broad genus, particularly when the specification fails to describe the features of that genus, even in passing. (see In re Shokal 113USPQ283(CCPA1957); Purdue Pharma L. P. vs Faulding Inc. 56 USPQ2nd 1481 (CAFC 2000). The possession may be shown by actual reduction to practice, clear depiction of the invention in a detailed drawing, or by describing the invention with sufficient relevant identifying characteristics (as it relates to the claimed invention as a whole) such that a person skilled in the art would recognize that the inventor had possession of the claimed
invention. See, e.g., Pfaff v. WellsElectronics, Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406; Amgen, Inc. v. Chugai Pharmaceutical, 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991).
The “written description” requirement may be satisfied by using such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. See Noelle v. Lederman, 355 F.3d 1343, 1349, 69 USPQ2d 1508, 1514 (Fed. Cir. 2004) and Lockwood v. American Airlines, Inc., 107 F.3d at 1572, 41 U.S.P.Q.2d at 1966. A definition by function alone “does not suffice” to sufficiently describe a coding sequence “because it is only an indication of what the gene does, rather than what it is.” Regents of the University of California v. Eli Lilly & Co., 119 F.3 at 1568, 43 USPQ2d at 1406 (Fed. Cir. 1997) (discussing Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 U.S.P.Q.2d 1016 (Fed. Cir. 1991)). In Fiers v. Ravel, 984 F.2d at 1169-71, 25 U.S.P.Q.2d at 1605-06 (1993), the CAFC found that “a mere wish or plan for obtaining the claimed chemical invention” is not sufficient to
describe a chemical invention (discussed in Eli Lilly at 1404).
In the instant application, only one version of a humanized Clec9a polypeptide is disclosed wherein said polypeptide has 100% sequence identity to the ectodomain of human CLEC9a and 100% sequence identity to the cytoplasmic-transmembrane region of the mouse Clec9a sequence comprising the amino acid sequence of SEQ ID NO:7. Therefore, the limited disclosure in the specification is not deemed sufficient to reasonably convey to one skilled in the art that the applicants were in possessions of the huge genera recited in the claims at the time the application was filed. Thus, it is concluded that the written description requirement is not satisfied for the claimed genera.
Scope of Enablement
Claim 1, 3, 4, 6-8, 10, 12-19, 21-24, 27, 30, and 46 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for
A genetically modified rodent animal and tissue/cell of said rodent animal and targeting nucleic acid construct, comprising in its genome: a humanized Clec9a gene comprising: a rodent Clec9a nucleic acid sequence, and a human CLEC9A nucleic acid sequence, wherein the humanized Clec9a gene encodes the amino acid sequence of SEQ ID NO:7 , and wherein the rodent animal is a mouse and,
a targeting nucleic acid construct comprising a nucleic acid sequence encoding the amino acid of SEQ ID NO:7, wherein the mouse ectodomain is replaced with the human sequence (exons 3–6 of human CLEC9A), while the rodent’s own cytoplasmic and transmembrane domains (exons 1–2) are retained,
does not reasonably provide enablement for (1) a genus of genetic modifications (somatic or genomic genetic modifications by culture, UV light, selective cross breeding, CRISPR and others), (2) a humanized Clec9a polypeptide with an ectodomain that is less than 100% identical in sequence to the ectodomain of a human CLEC9A protein and a cytoplasmic-transmembrane sequence less than 100% identical in sequence to the cytoplasmic transmembrane sequence of a rodent Clec9a protein comprising the amino acid of SEQ ID NO:7 , and (3) a targeting nucleic acid construct comprising any human CLEC9A nucleic acid sequence to be integrated into a rodent Clec9a gene and result in a humanized Clec9a polypeptide with an ectodomain substantially identical with the ectodomain of a human CLEC9A protein. Moreover, the specification does not reasonably provide enablement for any rodent animal other than a mouse. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The factors to be considered in determining whether undue experimentation is required are summarized in In re Wands, 858 F.2d 731, 737, 8 U.S.P.Q.2d 1400, 1404 (Fed. Cir. 1988) (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
While all of these factors are considered, a sufficient number are discussed below so as to create a prima facie case.
the breadth of the claims; the nature of the invention:
The claims are directed to a vast genus of genetically modified mice or rats and tissues or cells of said mice or rats comprising in its genome a humanized Clec9a gene comprising a rodent Clec9a nucleic acid sequence and a human CLEC9A nucleic acid sequence wherein the humanized Clec9a gene encodes a humanized Clec9a polypeptide comprising an ectodomain at least 90% identical in sequence to the ectodomain of a human CLEC9A protein and a cytoplasmic- transmembrane sequence at least 90% identical in sequence to the cytoplasmic- transmembrane sequence of a rodent Clec9a protein. The claims are also directed to a targeting nucleic acid construct comprising any human CLEC9A nucleic acid sequence to be integrated into a rodent Clec9a gene and result in a humanized Clec9a polypeptide with an ectodomain substantially identical with the ectodomain of a human CLEC9A protein.
The claims broadly encompass any genetic modifications e.g., genetic modifications by culture, UV light, selective cross breeding, CRISPR and others, wherein the modification are within the genome of the rodent, and wherein the genus of genetic modifications may involve changing a single base pair, deleting an exon, adding a new region of DNA, deleting an intron or deleting the Clec9a such that the genetically modified rodent comprises in its genome a humanized Clec9a gene. The claims are also directed to a genus of nucleotide sequences having 90% sequence identity with the ectodomain and cytoplasmic transmembrane sequence of SEQ ID NO: 7. Thus, the claims are directed to a large genus of genetic modifications of the Clec9a gene in the rodent genome resulting in the rodent expressing the humanized Clec9a polypeptide.
Claim 46 broadly encompasses targeting nucleic acids comprising a human CLEC9A nucleic acid sequence integrated into a rodent Clec9a gene, resulting in a humanized Clec9a gene which encodes an ectodomain substantially identical with the ectodomain of a human CLEC9A protein. The targeting nucleic acid could thus be used to integrate, at any region of the rodent Clec9a locus corresponding to the ectodomain, any fragment (including the entire fragment), a human CLEC9a nucleic acid sequence. However, the specification describes only a specific construct wherein the construct results in integration of exon 3 through 6 of a human CLEC9a gene sequence at the locus of a mouse Clec9a gene sequence such that the human CLEC9a gene sequence replaces exon 3 through the stop codon of exon 6 of the mouse Clec9a locus.
the amount of direction provided by the inventor; the existence of working examples:
However, the specification does not disclose a reduction to practice of a genetically modified rodent, other than a mouse, and its tissue or cells which comprises in its genome a humanized Clec9a gene encoding a humanized Clec9a polypeptide comprising a cytoplasmic-transmembrane region less than 100% identity to mouse Clec9 protein and an ectodomain region less than 100% identity to human CLEC9A protein. The specification provides guidance on methods to generate a genetically modified mouse wherein the method uses a targeting vector which is specifically designed for mouse Clec9a gene modification (FIG 1B, para 0026) and wherein the modification is a deletion of the ectodomain of the mouse Clec9a gene at exon 3 through the stop codon of exon 6 and insertion of exon 3 through 6 of human CLEC9A gene. The specification does not disclose if genetically modified mice other than having 100% identity match to the respective region of the Clec9a human and mouse sequence would confer the phenotype of the humanized Clec9a polypeptide being expressed correctly on dendritic cells and have the corresponding function of eliciting strong T-cell responses when exposed to anti-Clec9a antibody-antigen fusion proteins. Outside of this scope of enablement, there is no minimal or maximal physiological or phenotypic result which would necessarily tell a skilled artisan the genetically modified rodent has relevant expression and function of the humanized Clec9a polypeptide.
the state of the prior art; the level of predictability in the art:
Generation of a humanized knockin mice and several strategies for humanization was well known in the art at the time of filing of this application, however the prior art does not provide guidance regarding specifically generation of genetically modified mice as claimed, wherein a nucleotide sequence comprising human and mouse sequences is inserted in the endogenous mouse Clec9a locus comprising the amino acid of SEQ ID NO:7 such that the human sequence is inserted at the ectodomain region. Devoy et al describes strategies and methods used for humanization of mouse genome, particularly via BAC vector introduction and homologous recombination (FIG 1, Page 15 - BAC vector homologous recombination). While applicant provides details in the specification related to generating a genetically modified mouse with humanized Clec9a mRNA and protein expression using a specific location/targeting construct, Devoy describes that the extent to which the human DNA sequence is cor-rectly and efficiently read by the mouse transcriptional machinery remains in question (page 19, column 1, Conclusion). Moreover, Mogi describes how it is well established that genetic modification techniques in animals can lead to mosaicism in which expression of target transgene is not in all cells and tissues of the body, including the germline (i.e. sperm and egg) and this can occur in BAC transgenic mice (page 7, left column, para 2). Hence, expression of the transgene of interest in the correct cell type is not guaranteed.
the quantity of experimentation needed to make or use the invention based on the content of the disclosure:
The skilled artisan would be required to perform under levels of experimentation in order to practice the claimed invention. The instant specification does not reduce to practice the claimed invention; the instant specification does not provide guidance on how to reasonably predict a region of the Clec9a gene that should be mutated in a genome of a rodent other than a mouse such that the mutation is an insertion of an orthologous human Clec9a gene fragment which corresponds to the ectodomain of the human CLEC9A protein. While the specification does provide details of the relevant rat Clec9a sequences (Table 1: summary of sequences), it does not provide details on the relevant targeting construct required for use in rats or corresponding human-rat hybrid protein sequence that would result. Furthermore, the specification only demonstrates generation of a genetically modified mouse with a humanized Clec9a gene that comprises 100% sequence identity match in the cytoplasmic-transmembrane domain and ectodomain to mouse and human, respectively. Thus, the skilled artisan would be forced to 1) identify modifications, e.g, point mutations, deletions, additions and others, in the various regions of the rodent Clec9a gene using various genetic modification methods such as UV light, selective crossbreeding, CRISPR/Cas9 etc., and 2) generate a genetically modified rodent for each gene modification (ranging from a modification leading to 90%-99% identity to respective regions of human and/or mouse CLEC9A), determining whether any phenotypic effects were due to how the transgene was mutated, how it is expressed, etc. for the expression of the humanized Clec9a polypeptide to be on dendritic cells and function correctly, let alone any isolated tissue or cell such as an embryonic stem cell or a germ cell.
the level of one of ordinary skill:
The level of one of ordinary skill is a PhD holder.
Conclusion
When all of the Wands factors are considered together, they establish a prima facie case that the specification is not enabling for the claims. The Specification only provides details for generating a genetically modified mouse comprising a humanized Clec9a gene comprising a mouse and human Clec9a gene wherein the humanized Clec9a polypeptide comprises specifically the removal of exon 3 through stop codon 6 of the endogenous mouse Clec9a gene and insertion of exon 3 through 6 of the human CLEC9A gene resulting in a 100% sequence match of the ectodomain to the ectodomain of human CLEC9A protein and 100% sequence match of the cytoplasmic-transmembrane domain to the cytoplasmic-transmembrane domain of mouse Clec9a protein comprising the amino acid of SEQ ID NO 7. The specification additionally provides details of the corresponding targeting nucleic acid construct to generate said genetically modified mouse. Data presented in the specification indicate expression of humanized Clec9a gene in circulating dendritic cells of the mouse, but data do not indicate applicant can achieve the genetic modification in a rat as there are no working examples of the genetic modification in a rat.
While a lack of a working embodiment cannot be a sole factor in determining
enablement, the lack of any working examples, in light of the unpredictable nature of the art and the lack of direction applicants present, provides additional weight to the lack of
enablement in consideration of the Wands factors as a whole. Thus, one of ordinary skill
in the art would not have had a reasonable expectation of success in making or using
the claimed invention.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.
Claims 1, 3, 4, 6-8, 10, 12-19, 21-24, 27, 30, and 46 are rejected under 35 U.S.C. 103 as being unpatentable over MacDonald et al (US Patent Application No. 20130111616 A1) and further in view of Herndler-Brandstetter (PNAS, 2017, pages E9626–E9634), Yan et al (Oncotarget, 2016, pages 40437-40450), Devoy et al (Nature Review Genetics, 2012, pages 14-20), NCBI Human CLEC9a gene (NM_207345.4 (mRNA); NP_997228.1 (protein)) and NCBI Mouse Clec9a gene (NM_172732.3 (mRNA); NP_766320.2 (protein)).
The applied MacDonald reference has a common applicant (Regeneron Pharmaceuticals Inc) 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)(1). The publication dated for MacDonald is May 2, 2013. The earliest effective filing date of the instant application is June 27, 2022. Therefore rejection under 35 U.S.C. 103 CANNOT 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. Because the reference qualifies as prior art under 102(a)(1), the provisions of MPEP 717.02 do not apply.
Regarding claim 1, 3, 4, 6, 7, 8, 10, 12-19, 21-24, 27, and 30 MacDonald teaches a mouse, as well as its embryos, cells, and tissues, comprising a nucleic acid sequence encoding a chimeric human/non-human (i.e. mouse) MHCIIα polypeptide (i.e. a humanized version of gene) wherein a human portion of the chimeric polypeptide comprises a human MHC IIα extracellular domain (claim 1 of MacDonald), rendering obvious a genetically modified mouse, as well as its tissues, cells, embryonic stem cells and germ cells, comprising a humanized polypeptide comprising an ectodomain with identity to human protein.
Herndler-Brandstetter teaches that “humanized mice represent a promising model for studying human immune function and diseases in vivo and could be used to screen and identify highly effective combinations of cancer therapeutics. However, the poor interspecies cross-reactivity of factors that are essential for the physiological and functional development of human immune cells in humanized mice highlights the need to improve the currently available humanized mice” (page E9626, col 1, para 3).
Yan teaches that Clec9a is selectively expressed on dendritic cells and is a very promising target to the dendritic cell vaccines for anti-tumor use (via activation of T cell response), antigen targeting dendritic cells via Clec9a could strongly enhance anti-tumor immunity, and targeting Clec9a+ dendritic cells can promote humoral and cellular immunity (page 40437, col 1 and 2, para 1 and 2). Yan also teaches that Clec9a is part of the recognition, up-taking, and processing of antigens on dendritic cells for T cell engagement (page 40444-40445, para 1, Discussion).
MacDonald, Herndler-Brandstetter, and Yan do not teach that the rodent animal comprises specifically humanized Clec9a nucleic acid sequence comprising: a rodent Clec9a nucleic acid sequence, and a human CLEC9A nucleic acid sequence, wherein the humanized Clec9a gene encodes a humanized Clec9a polypeptide comprising an ectodomain at least 90% identical in sequence to the ectodomain of a human CLEC9A protein.
However, sequences for both the human and mouse CLEC9A gene were publicly available from NCBI on Apr 20, 2004 for NM_207345.4 (mRNA); NP_997228.1 (protein) (Human CLEC9a) and Dec 24, 2002 for NM_172732.3 (mRNA); NP_766320.2 (protein) (Mouse Clec9a). These sequences show the location of each exon in these genes and topology of the protein. More specifically, the locations of exon 3-6 encoding the extracellular region of the corresponding protein are indicated by the aforementioned gene and protein sequences.
It would have been prima facie obvious to one of ordinary skill, in the art at the time of the effective filing date, to modify the teachings of a genetically modified mouse wherein the mouse comprises a genome comprising a humanized gene, specifically where the human nucleic acid sequence confers a protein with a humanized ectodomain/extracellular domain from MacDonald with the teachings of the human and mouse Clec9a gene sequences from NCBI to generate a genetically modified mouse (and its cells and tissues) with, instead of a humanized MHC IIα gene, it is a humanized Clec9a gene in its genome. Indeed, the localization of exon 3-6 of the human and mouse Clec9 gene sequence and corresponding topology both being of the extracellular domain would motivate one to generate a genetically modified mouse model that expresses Clec9a comprising a human extracellular version of the protein on the surface of dendritic cells. By having a humanized extracellular domain for Clec9a, the rodent model could be used for screen and identify highly effective combinations of therapeutics for humans, as taught by Herndler-Brandstetter. Moreover, since Yan teaches that Clec9a is a promising target for anti-tumor T-cell response use and is part of the recognition, up-taking, and processing of antigens on dendritic cells for T cell engagement, one would be further motivated to generate a mouse model with humanized Clec9a, specifically wherein the extracellular domain is humanized, for development of medical therapies using dendritic cells. Indeed, the technique and method of using and making humanized mouse models for research purposes in developing medical therapies for immune response was well known in the art, as described in Herndler-Brandstetter and Devoy, therefore one would have a reasonable expectation of success.
Regarding claim 46, MacDonald teaches a targeting nucleic acid construct with 5’ to 3’ homology arms comprising a DNA fragment comprising human HLA-DRα and β chain sequences and mouse homology arms that are homologous to mouse MHC II genomic sequence (para 0079-0082), wherein the 5’ and 3’ arms are of mouse genomic sequence (para0083), resulting in a replacement at the endogenous mouse MHC II locus, a nucleotide sequence encoding a chimeric human/mouse MHC II complex (i.e. the targeting nucleic acid construct), rendering obvious a targeting nucleic acid construct, comprising a human nucleic acid sequence to be integrated into a rodent gene at an endogenous rodent locus, flanked by a 5' nucleotide sequence and a 3' nucleotide sequence that are homologous to nucleotide sequences at the rodent locus, wherein integration of the human nucleic acid sequence into the rodent gene results in a replacement of a rodent genomic DNA with the human nucleic acid sequence thereby forming a humanized gene.
Moreover, MacDonald teaches “the nucleotide sequence encoding the chimeric human/mouse MHC II complex comprises a first nucleotide sequences encoding an extracellular domain of a human MHC IIα chain (e.g., HLA-DR4α chain) and transmembrane and cytoplasmic domains of a mouse MHC IIα chain” (para 0085), rendering obvious wherein the humanized gene encodes a humanized polypeptide comprising an ectodomain substantially identical with the ectodomain of a human protein.
However, MacDonald does not teach a targeting nucleic acid construct, comprising specifically a human CLEC9A nucleic acid sequence to be integrated into a rodent Clec9a gene at an endogenous rodent Clec9a locus, flanked by a 5' nucleotide sequence and a 3' nucleotide sequence that are homologous to nucleotide sequences at the rodent Clec9a locus, wherein integration of the human CLEC9A nucleic acid sequence into the rodent Clec9a gene results in a replacement of a rodent Clec9a genomic DNA with the human nucleic acid sequence thereby forming a humanized Clec9a gene.
However, sequences for both the human and mouse CLEC9A gene were publicly available from NCBI on Apr 20, 2004 for NM_207345.4 (mRNA); NP_997228.1 (protein) (Human CLEC9a) and Dec 24, 2002 for NM_172732.3 (mRNA); NP_766320.2 (protein) (Mouse Clec9a). These sequences show the location of each exon in these genes and topology of the protein.
Devoy teaches that “targeted integration of a human sequence into the equivalent region of the mouse genome in ESCs is the most precise method of humanization, enabling a single copy of human sequence to reside at a natural site for its expression while simultaneously replacing the corresponding mouse sequence” (page 15, col 1, Targeted genomic integration, para 1). Yan teaches that Clec9a is selectively expressed on dendritic cells and is a very promising target to the dendritic cell vaccines for anti-tumor use, antigen targeting dendritic cells via Clec9a could strongly enhance anti-tumor immunity and targeting Clec9a+ dendritic cells can promote humoral and cellular immunity (page 40437, col 1 and 2, para 1 and 2).
It would have been prima facie obvious to one of ordinary skill, in the art at the time of the effective filing date, to modify the teachings of designing a targeting nucleic acid construct with 5’ to 3’ homology arms comprising a human HLA-DRα and β chain DNA fragment and homology arms that are homologous to mouse MHC II genomic sequence from MacDonald with the teachings of the human and mouse Clec9a gene sequences from NCBI, in view of the teachings of Clec9a being a promising target for anti-tumor therapies from Yan, to design a targeting nucleic acid construct comprising, instead of gene sequences for human HLA-DRα and β and mouse MHC IIα, gene sequences for human and mouse Clec9a such that the human CLEC9a sequence replaces the mouse Clec9a sequence. One would be motivated to do so to generate a targeting nucleic acid construct that can be used to in generating transgenic mouse models with humanized regions of the Clec9a gene for purposes of developing anti-tumor therapies for humans. Moreover, as Devoy teaches that integration of human DNA sequences into equivalent regions of the mouse genome is known technique in the art for forming targeting nucleic acid constructs, one would have a reasonable expectation of success.
NOTE: Regarding claim 46, although the claim recites “human CLEC9A nucleic acid sequence…that are homologous to nucleotide sequences at the rodent Clec9a locus”, which raises a possible rejection under 35 USC § 101 or 102 as unpatentable by a product of nature or published NCBI gene sequences, respectively, patentable weight has been giving to the recitation of “wherein the humanized Clec9a gene encodes a humanized Clec9a polypeptide comprising an ectodomain substantially identical with the ectodomain of a human CLEC9a”. Therefore, a rejection under 35 USC § 101 or 102 is not being considered.
Conclusion
Claims 1, 3, 4, 6-8, 10, 12-19, 21-24, 27, 30, and 46 are rejected.
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/JULIANA IRENE CANDELARIA/ Examiner, Art Unit 1634
/MARIA G LEAVITT/ Supervisory Patent Examiner, Art Unit 1634