DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-28 are pending.
Preliminary Amendment
Applicant’s preliminary amendment filed on 11/13/2023 is acknowledged. The specification was amended to add the “Reference to a sequence listing” section.
Election/Restrictions
Applicant’s election without traverse of Group I and the species of SEQ ID NOs: 1 (1st guide nucleotide sequence) and 2 (2nd guide nucleotide sequence), relating to mir-7-5p, in the reply filed on 01/06/2026 is acknowledged.
The reply filed on 01/06/2026 indicates that claims 1-20 are readable upon the election, however, claims 10-17 are not readable upon the sequence of SEQ ID NO: 1 or 2.
Claim(s) 21-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/06/2026.
Claim(s) 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/06/2026.
Claims 1-9 and 18-20 are under consideration.
Priority
Acknowledgement is made of Applicant’s claim for priority based on a provisional application filed as 63/380,520 on 10/21/2022. All claims are given the priority date of 10/21/2022.
Information Disclosure Statement
Receipt of the information disclosure statement on 10/10/2023 is acknowledged. The signed and initialed PTO-1449 form(s) has been mailed with this action.
Specification
Acknowledgement is made of Applicants substitute specification, marked up specification, clean specification, and statement regarding no addition of new matter, filed on 11/13/2023. The substitute specification has been entered.
Claim Objections
Claim 4 is objected to because of the following informalities: there is no abbreviated form of deoxyguanosine in parenthesis. All other listed nonchemical modifications have their abbreviated form after their full name, it would be remedial to add “(dG)” after deoxyguanosine for consistency within the claim.
Appropriate correction is required.
Claim Interpretation
Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms (MPEP 2173.01 I paragraph 2).
Claim 19 recites “A vector or viral particle comprising the microRNA, or mimic thereof, of claim 1”. To interpret the breadth of “vector” or “viral particle” one must first look to the specification for any special definition as coined by the Applicant for a “vector” or “viral particle”.
As defined by the specification at paragraph [0045], “As used herein, a "vector" is a composition of matter which can be used to deliver a nucleic acid of interest to the interior of a cell, including a nucleic acid molecule capable of transporting another nucleic acid to which it has been linked. Numerous vectors are known in the art including, but not limited to, linear polynucleotides, polynucleotides associated with ionic or amphiphilic compounds, plasmids, and viruses. Thus, the term "vector" includes an autonomously replicating plasmid or a virus. Examples of viral vectors include, but are not limited to, adeno-associated virus (AAV) vectors, retroviral vectors, lentiviral vectors, adenoviral vectors, and the like. An expression construct can be replicated in a living cell, or it can be made synthetically. Vectors capable of directing the expression of genes to which they are operatively linked are often referred to as "expression vectors."
Furthermore, “viral particle” as defined by the specification at paragraph [0090], “A selected nucleic acid sequence can be inserted into a vector (a vector genome) and packaged in viral particles using techniques known in the art (e.g., an rAAV vector packaged in rAAV particles, Vesicular Stomatitis Virus (VSV) G-pseudotyped lentivirus, etc.). The recombinant virus can then be isolated and delivered to cells of the subject.”
Thus, for the purposes of broadest reasonable interpretation “vector” will be interpreted as any composition of matter which can be used to deliver a nucleic acid of interest to the interior of a cell, and a viral particle will be interpreted as a nucleic acid sequence inserted into a vector (defined above as a species of “A vector” wherein a nucleic acid molecule is capable of transporting another nucleic acid to which it has been linked) and packaged into viral particles such as an rAAV.
Claim 20 recites the limitation of “A nanoparticle comprising the microRNA, or mimic thereof, of claim 1.” To interpret the breadth of “nanoparticle” one must first look to the specification for any special definition as coined by the Applicant.
As defined by the specification at paragraph [0098], “In general, nanoparticles contemplated include any compound or substance with a high loading capacity for a nucleic acid (e.g., pre-miR-7) as described herein, including for example and without limitation, a metal, a semiconductor, and an insulator particle composition, and a dendrimer (organic versus inorganic). … Nanoparticles as described herein include those that are available commercially (e.g., Nanohybrids), as well as those that are synthesized, e.g., produced from progressive nucleation in solution (e.g., by colloid reaction) or by various physical and chemical vapor deposition processes.”
Thus, for the purposes of broadest reasonable interpretation, “A nanoparticle” will be interpreted as any compound or substance with high loading capacity for a nucleic acid in nanometer range.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim(s) 1-4, 7-9 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more.
Claim 1 recites, “A microRNA, or a mimic thereof, for the therapeutic treatment of nervous system dysfunction in a patient in need thereof.” Claim 1 recites the limitation, “for the therapeutic treatment of nervous system dysfunction in a patient in need thereof,” which is an intended use that does not further modify the structure of the recited microRNA. Claim 2 recites, “wherein the microRNA, or mimic thereof, comprises a double-stranded oligonucleotide RNA structure further comprising a first guide RNA nucleotide strand and a second passenger RNA nucleotide strand.” Claim 2 depends on claim 1. Claim(s) 1 and 2 are not markedly different from the product’s naturally occurring counterpart in the natural state because Starega-Roslan et al (The role of the precursor structure in the biogenesis of microRNA, Cell. Mol. Life Sci. Vol 68, pages 2859-2871, published May 24th, 2011) teaches miRNA. More specifically, Starega-Roslan et al teaches, wherein the microRNA is double stranded and comprises a guide strand and passenger strand, “Once Dicer has cleaved the pre-miRNA, only one miRNA strand (guide strand) of the duplex is loaded onto AGO to form the programmed RISC (referred to as the miRISC); the other strand (passenger strand or miRNA*) is released and degraded.”, (Page 2860, column 1 paragraph 1 to column 2 paragraph 1; and (see Fig. 1)). Fig. 1 is displayed below.
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pre-miRNA is a single-strand that forms a double-stranded structure, and once pri-miRNA is cleaved by Dicer, the miRNA is made up of two strands, a guide (miRNA) and passenger strand (miRNA*). Thus, the product of claim(s) 1-2 are not markedly different than their naturally occurring counterpart in nature.
Claim 3 recites, “wherein the microRNA, or mimic thereof, contains one or more chemical or nonchemical modifications.” Claim 3 depends on claim 1. Claim 3 is not markedly different from the product’s naturally occurring counterpart in the natural state because Ghildiyal and Zamore (Small silencing RNAs: an expanding universe, nature reviews genetics, volume 10, page 94-108, published February 2009) teach that, “Release of the passenger strand after its cleavage converts pre-RISC to mature RISC, which contains only single-stranded guide RNA. In flies, the guide strand is 2′-O-methylated at its 3′ end by the S-adenosyl methionine-dependent methyltransferase HEN1 (also known as piRNA methyltransferase, PIMET), completing RISC assembly. In plants, both miRNAs and siRNAs are terminally methylated, a modification that is crucial for their stability.”, (page 95, column 2, paragraph 1). Thus, the product of claim 3 is not markedly different than its naturally occurring counterpart in nature.
Claim 3 recites, “wherein the microRNA, or mimic thereof, contains one or more chemical or nonchemical modifications.” Claim 4 depends on claim 3 and limits the microRNA or mimic thereof to one that “contains one or more chemical or nonchemical modifications, “wherein the nonchemical modifications comprise the addition of one or more deoxyribonucleotides, selected from deoxythymidine (dT), deoxyadenosine (dA), deoxycytidine (dC), and deoxyguanosine.” Claim 4 reads on an embodiment where the nonchemical modification is selected. Thus, the product of claim 4 is not markedly different than its naturally occurring counterpart in nature for the same reasons give above with regard to claim 3.
Claim(s) 7-9 recite, “wherein the microRNA, or mimic thereof, comprises a microRNA selected from the group comprising miRNA-7, miRNA-1 53, miRNA- 34b, miRNA-34c, and miRNA-155.”, (claim 7, with the elected species of miRNA-7); “wherein the microRNA, or mimic thereof, comprises a first guide nucleotide sequence having at least 90% identity to SEQ ID NO: 1 or comprising SEQ ID NO: 1.”, (claim 8, with the elected species of SEQ ID NO: 1); and “wherein the microRNA, or mimic thereof, comprises a second passenger sequence having at least 90% identity to a nucleic acid sequence selected from SEQ ID NOs: 2-6 or comprising a nucleotide sequence selected from SEQ ID NOs: 2-6.”, (claim 9, with the elected species of SEQ ID NO: 2). Claim(s) 7-9 depend on claim 1. Claim(s) 7-9 are not markedly different from the product’s naturally occurring counterpart in the natural state because Gajda et al (The Role of miRNA-7 in the Biology of Cancer and Modulation of Drug Resistance, Pharmaceuticals (Basel), Vol 12, Issue 2, Pages 1-23, Published February 12th, 2021) teaches, “MiRNA-7 (miR-7, hsa-miRNA-7) was first reported in Drosophila melanogaster, nevertheless, the sequence of the guide strand is strongly conserved across different species, which highlights its importance. In humans, miR-7 originates from three precursors: pri-miR-7-1, pri-miR-7-2, and pri-miR-7-3 (Figure 2). They are encoded by the MIR7-1, MIR7-2, and MIR7-3 genes located on three chromosomes: 9q21, 15q26, and 19q13, respectively. Pri-miR-7-1 and pri-miR-7-3 lie within introns of the heterogeneous nuclear ribonucleoprotein K-encoding gene (HNRNPK) and pituitary specific factor 1 gene (PIT1), respectively. The pri-miR-7-2-encoding gene is placed in the intergenic region of chromosome 15. Originally, miR-7 referred to miR-7-5p, since it seemed to be the only mature miRNA from all three precursors that affects cellular pathways. However, other biologically significant miRNAs, miR-7-1-3p and miRNA-7-2-3p, have also been reported. There are slight changes within the sequence of nucleotides between the miRNAs.”, (page 3, paragraph 3). Gajda et al discloses miR-7 and both SEQ ID NOs: 1 and 2, in Figure 2C. Figure 2C is expanded below. Thus, the product(s) of claim(s) 7-9 are not markedly different from their naturally occurring counterparts in nature.
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Claim 18 recites, “A pharmaceutical composition comprising the microRNA, or mimic thereof, of claim 1.” The limitation of a “pharmaceutical composition” is not an affirmative limitation because it merely indicates how the claimed invention might be used (see MPEP 2106.04(d)(2) – paragraph 4). The product of claim 18 is not markedly different than a product of nature for the same reasons given above with regard to claim 1.
Claim(s) 19-20 recites, “A vector or a viral particle comprising the microRNA, or mimic thereof, of claim 1.”, and “A nanoparticle comprising the microRNA, or mimic thereof, of claim 1.” As defined by the specification, a “vector” is a composition of matter which can be used to deliver a nucleic acid of interest to the interior of a cell, including a nucleic acid molecule capable of transporting another nucleic acid to which it has been linked.”, (see paragraph [0045]). Claim(s) 19 and 20 depend on claim 1 and are not markedly different from the product’s naturally occurring counterpart in the natural state because Zhang et al (Exosome and Exosomal MicroRNA: Trafficking, Sorting, and Function, Genomics Proteomics Bioinformatics, Vol 13, Pages 17-24, published February 24th, 2015) teaches exosomes. More specifically, Zhang et al teaches, “Exosomes are 40–100 nm nano-sized vesicles that are released from many cell types into the extracellular space. Such vesicles are widely distributed in various body fluids. Recently, mRNAs and microRNAs (miRNAs) have been identified in exosomes, which can be taken up by neighboring or distant cells and subsequently modulate recipient cells.”, (Abstract). Thus, the product(s) of claim(s) 19 and 20 are not markedly different than their naturally occurring counterpart in nature.
Therefore, this judicial exception is not integrated into a practical application because claim(s) 1-4, 7-9, and 18-20 do not include any element in addition to the judicial exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed invention does not have any elements in addition to the judicial exception. Thus, the claims are directed to a product of nature without significantly more.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 18 recites, A pharmaceutical composition comprising the microRNA, or mimic thereof, of claim 1. “A pharmaceutical composition” does not further limit the microRNA of claim 1. The only required component of the composition is the microRNA or mimic thereof. No further limitation is added to the product of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112(a) – 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(s) 1-9 and 18-20 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 fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, Applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64, 19 USPQ2d at 1117.
Claim(s) 1-6 and 18-20 are drawn to a genus of microRNA for therapeutic treatment of nervous system dysfunction in a patient in need thereof. The rejected claims thus comprise a genus of microRNA and are defined as belonging to the broad class of microRNA(s) and as having the function of treating nervous system dysfunction in a patient in need thereof.
Claim 7 limits the microRNA to a microRNA selected from the group comprising miRNA-7 (elected species). Accordingly, claim 7 is drawn to a genus of microRNA with limited structural definition that must function as a therapeutic treatment of nervous system dysfunction in a patient in need thereof.
Claim 8 limits the microRNA to a first guide nucleotide sequence having at least 90% identity to SEQ ID NO: 1 or comprising SEQ ID NO: 1 (elected species). Accordingly, claim 8 is drawn to a subgenus defined by percent identity to SEQ ID NO: 1 that must function as a therapeutic treatment of nervous system dysfunction in a patient in need thereof.
Claim 9 limits the microRNA to a second passenger sequence having at least 90% identity to SEQ ID NO: 2 (elected species) or comprising the nucleotide sequence of SEQ ID NO: 2. Accordingly, claim 9 is drawn to a subgenus defined by percent identity SEQ ID NO: 2 that must function as a therapeutic treatment of nervous system dysfunction in a patient in need thereof.
To satisfy the written description requirement, MPEP §2163 states, in part “… a patent
specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.” Moreover, the written description requirement for a genus may be satisfied through sufficient description of a representative number of species 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 functional and structure, or by a combination of such
identifying characteristics, sufficient to show the applicant was in possession of the claimed genus.”
The specification envisions the microRNA as the following:
[0009] In this aspect, the microRNA, or mimic thereof, comprises a double-stranded oligonucleotide RNA structure, further comprising a first guide RNA nucleotide strand and a second passenger RNA nucleotide strand.
[0010] In certain embodiments, these modifications may be at the 5' end, 3' end, or both, of one or more of the RNA nucleotide strands. In certain embodiments, these modifications may comprise the addition of one or more deoxyribonucleotides, selected from deoxythymidine (dT), deoxyadenosine (dA), deoxycytidine (dC), and deoxyguanosine (dG). In preferred embodiments, five deoxyribonucleotides are added to one or more of the RNA strands. In preferred embodiments, the modification, including the one or more deoxyribonucleotides, are added to the 3' end of the passenger RNA strand.
[0011] In yet another set of embodiments, the double-strand miRNA comprises a microRNA selected from the group comprising miRNA-7, miRNA-153, miRNA-34b, miRNA-34c, and miRNA-155.
[0057] MicroRNAs (miRNAs) are a class of endogenous 17-24 base-long single-stranded, non-coding RNAs that regulate gene expression in a sequence-specific manner in plants and animals.
Table 1 discloses microRNA sequences.
[00105] The miRNA sequence that can be used as an active ingredient of the composition for treating nervous system dysfunction provided by the present disclosure is a sequence derived from the human genome. However, a miRNA sequence derived from the genome of another animal can also be used without limiting the genome of the miRNA.
[00106] The miRNA can be used in the form of various miRNA derivatives (miRNA mimics) that generate the bioequivalence efficacy of miRNAs and can be modified miRNAs containing miRNA sequences containing the same seed region. At this time, the length of either miRNA strand can be reduced, and a short derivative consisting of about 12-15 nucleotides can also be used.
[00107] The miRNA can be used in the form of precursor miRNA or primary miRNA (pri miRNA) and can be synthesized by a chemical method or delivered in the form of a plasmid to cells which express the same. According to the present disclosure, methods for delivering miRNAs to cells cultured on culture dishes include, but are not limited to, mixing with cationic lipids, using electrical stimulation, and using viruses.
[00131] As used herein, the phrases "nucleic acid," "polynucleotide," "oligonucleotide," and "nucleic acid molecule" are used interchangeably to refer to a polymer of DNA and/or RNA, which can be single-stranded, double-stranded, or multi-stranded, synthesized or obtained (e.g., isolated and/or purified) from natural sources, which can contain natural, non-natural, and/or altered nucleotides, and which can contain natural, non-natural, and/or altered internucleotide linkages including, but not limited to phosphoroamidate linkages and/or phosphorothioate linkages instead of the phosphodiester found between the nucleotides of an unmodified oligonucleotide.
There are no examples provided for, in the specification, that meet the claim limitations of the rejected claims in regard to structure and function. The lack of results for a singular microRNA and its therapeutic efficacy in an art accepted model of any nervous system dysfunction proves to be not predictive of any/all microRNA capable of therapeutic treatment of nervous system dysfunction in a patient in need thereof. Thus, it is impossible for one to extrapolate that the microRNA would necessarily meet the structural/functional characteristics of the rejected claims.
The prior art does not appear to offset the deficiencies of the instant specification in that it does not describe a set of “microRNA” capable of therapeutic treatment for nervous system dysfunction in a patient in need thereof.
Looking to a three review articles on microRNA and therapeutics:
Venneri and Passantino (MiRNA: what clinicians need to know, European Journal of Internal Medicine, Vol 113, pages 6-9, published May 20, 2023) teach on microRNA.
“Approximately 2500 miRNA genes have been discovered in the human genome. An individual miRNA can modulate the expression and function of hundreds of mRNAs; in contrast, each mRNA can be regulated by multiple miRNAs. The interaction between miRNAs and their mRNA targets involves base-pairing of 6–8 nucleotide sequences. As much as 60% of the human transcriptome is considered to be negatively regulated by miRNA activity.”, (page 6, column 1, paragraph 2).
“Functions of miRNAs. MiRNAs are involved in many biological functions, specifically the following.
• Developmental regulation: miRNAs are involved in regulating gene expression during development, including cell differentiation and organogenesis.
• Cellular homeostasis: miRNAs play roles in maintaining cellular homeostasis by regulating various cellular processes, such as proliferation, apoptosis, and stress responses.
• Immune response: miRNAs are involved in regulating immune responses by controlling the expression of genes involved in innate and adaptive immunity.
• Metabolic regulation: miRNAs play roles in the regulation of metabolic processes such as glucose and lipid metabolism.
• Neurological function: miRNAs are abundant in the central nervous system and have crucial roles in neuronal development, including neurogenesis, synapse formation, neural plasticity, and axon guidance.
• Cardiovascular function: miRNAs participate in both heart development and heart function, including cardiac development, angiogenesis, and vascular remodeling.
• Epigenetic regulation: miRNAs regulate epigenetic modifications such as DNA methylation and histone modifications.”, (page 6, column 1 paragraph 5 to column 2 paragraph 1).
Sun et al (MicroRNA-based therapeutics in central nervous system injuries, Journal of Cerebral Blood Flow & Metabolism, Vol 38, Issue 7, Pages 1125-1148, 2018) teaches current miRNA-based therapeutic applications in stroke, TBI and SCI.
“For miRNA mimics, the “guide strand” must be identical to mature miRNA, and position-specific chemical modifications are made to the “passenger strand” to ensure that only the “guide strand” is loaded onto the RISC. To enhance the stability but not interfere with the recognition by the RISC, only limited chemical modifications can be made to the “guide strand”. The 2′-sugar modification, such as 2′-O-methyl and 2′-fluoro (2′-F), helps to protect against nucleases, which improve the potency and stability of the guide strand without interfering with RISC loading. Strategies to improve the cellular uptake, such as cholesterol conjugation, can also result in off-target effects. Currently, commercially available miRNA mimics are normally modified by methylation of the “passenger strand” for increased stability, though vendors often do not disclose their chemical modifications.”, (page 1128, column 2, paragraph 4).
“Several chemical modifications have improved the stability, permeability and specificity of miRNA inhibitors. Current modifications include phosphorothioate containing oligonucleotides, addition of 2′-O-methyl (2′-O-methyl) to phosphorothioate nucleotides, 2′-O-methoxyethyl-Oligonucleotides (2′-O-MOE, which are also called antagomirs), locked nucleic acid (LNA) modified antimiRs, fluorine derivatives (2′deoxy-2′-fluoro-RNA), peptide nucleic acids modified antimiRs or mixed modifications among these approaches. As a traditional and non-specific modification, cholesterol conjugation at the 3′ end of the strand can improve tissue distribution and cellular uptake. Novel chemical modifications are continuing to be developed like a pH low insertion peptide-modified antimiR to inhibit miR-155 in lymphoma.”, (page 1128, column 2, paragraph 5 to page 1129, column 1, paragraph 1).
“MiRNA mimics that have neuroprotective role in experimental SCI models include miR-124, miR-23b, miR-210, miR-20a, miR-27a, miR-126, miR-199, miR-320a, miR-21, miR-497, miR-133b and miR-494.”, (page 1132, column 1, paragraph 4).
“A major problem in the miRNA therapeutics field is potential off-target effects. Some of these occur because commercially available miRNA mimics can produce unexpected off-target effects induced by the “passenger-strand” of the mimics. Another explanation for “off-target” effects is that though a given miRNA may regulate one or several target genes to improve functional outcomes following stroke, TBI and SCI, the miRNA may act on other target genes to produce unwanted side effects or even activate pathways that counteract the protective effects. Ways of increasing specificity of miRNA effects to selected target genes and blocking off-target effects are needed. Such differential effects on different target genes might explain studies where a miR-20a inhibitor improved neural cell survival following SCI in one study, whereas miR-20a mimics improved neuronal survival via an anti-apoptotic pathway in another study. The time course of miRNA effects on their targets must be carefully considered. For example, early administration of miR-124 mimic to ischemic brain significantly increased neuronal survival, whereas later administration did not.”, (page 1136, column 2, paragraph 4).
“In stroke therapies, numerous neuroprotective agents have been proven effective in various preclinical animal studies. Unfortunately, none of them yield translational efficacy in clinical trials. Most large vessel ischemic stroke patients have permanent occlusion and could not restore the blood flow to allow effective concentration of neuroprotectants in the affected brain areas might account for this mismatch. Currently, none of miR-based drugs have been advanced to the development of clinical stroke therapies. If following the traditional way for previously tested neuroprotectants to evaluate miR-based drugs for stroke therapy, there may be a long way to go for the success in clinical trials.”, (page 1138, column 1, paragraph 2).
Zhang et al (The Risks of miRNA Therapeutics: In a Drug Target Perspective, Drug Design, Development and Therapy, pages 721-733, published February 22nd, 2021) provides guidance on miRNA risks in therapeutics.:
“As expected, Figure 2A showed a flexible complementary ratio of miRNA with target sequence (within the range 20–90%) and none with complete complementation…”, (see page 722, column 2, paragraph 2; and Figure 2A).
“…All ten miRNA drugs had tens and hundreds of unapproved targets…”, (see Figure 3A, and page 727, column 1, paragraph 1).
“TMTME (“too many targets for miRNA effect”) is a typical and inevitable property of miRNA molecules, which is caused by incomplete complementation with the target sequence. TMTME leads to that miRNA could bind to various sequences suitable for the interaction (including protein-coding genes, lncRNA, circRNA, etc), which is different from all approved drugs (including siRNA drugs) with only a few targets… Therefore, both introduction and removal of miRNA in humans can lead to changes of a wide series of pathways and some of them are unknown, even unpredictable, probably triggering disorders of physiological function or the occurrence of additional disease.”, (Page 729, column 1, paragraph 2 to column 2, paragraph 1). Lastly, “Moreover, due to instability of unprotected miRNAs, delivering miRNAs required chemical modifications to avoid rapid degradation in serum, which may impair specificity of miRNAs and lead to off-target effects… Another challenge is that exogenous artificial miRNAs will trigger competition and saturation effect, a competition among exogenous and the endogenous miRNAs for the intracellular machinery, and thus affecting unexpected gene expression and leading to untoward side effects.”, (page 730, column 1, paragraph 1).
The instant specification fails to describe and/or disclose:
(1) A set of microRNAs representative of the genus for targeting nervous system dysfunction. As taught by Venneri and Passantino, there are about 2500 microRNAs with functions ranging from regulation of cell differentiation and organogenesis to proliferation and apoptosis to glucose and lipid metabolism to DNA methylation and histone modification, all outside the function prescribed by the claimed invention of therapeutic treatment for nervous system dysfunction. Claiming “microRNA” is not predictive of all the microRNA(s) ability to therapeutically treat nervous system dysfunction;
(2) The miRNA of the claimed invention as an identical “guide” stand to the mature miRNA, which is a characteristic necessary for the appropriate function of a microRNA or mimic thereof as taught by Sun et al;
(3) Which chemical modifications are made to which sugar position or backbone. Sun et al teaches that position-specific chemical modifications are made to the “passenger strand” to ensure that only the “guide strand” is loaded onto the RISC. This is to enhance the stability but not interfere with the recognition by the RISC, only limited chemical modifications can be made to the “guide strand”. Zhang et al teaches that due to instability of unprotected miRNAs, chemical modifications are required. It is acknowledged that the Applicant included nonchemical modifications to the passenger strand, however, Applicant elected SEQ ID NOs: 1 and 2, which do not contain any non-chemical modifications disclosed in table 1 of the instant specification; and
(4) Any of the miRNAs associated with SCI or neuroprotective effects, i.e., miR-124, miR-23b, miR-210, miR-20a, miR-27a, miR-126, miR-199, miR-320a, miR-21, miR-497, miR-133b and miR-494, as taught by Sun et al.
Therefore, the art does not appear to offset the deficiencies of the specification. Merely describing a “microRNA” capable of therapeutic treatment of nervous system dysfunction in a patient in need thereof without sufficient detail relating to the genus of microRNA in therapeutic treatment of nervous system dysfunction does not allow the skilled artesian to reasonably conclude that the Applicants were in possession of the claimed invention in claim(s) 1-9 and 18-20.
Claim Rejections - 35 USC § 112 (Enablement)
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(s) 1-9 and 18-20 are 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 microRNA or mimic thereof, comprising a first guide nucleotide sequence having at least 90% identity to SEQ ID NO: 1 and a second passenger sequence having at least 90% identity to SEQ ID NO:2, for the therapeutic treatment of nervous system dysfunction in a patient in need thereof (of claim 1), does not reasonably provide enablement for A microRNA, or mimic, for the therapeutic treatment of nervous system dysfunction in a patient in need thereof. As well as the specification being enabling for A recombinant adeno-associated virus (rAAV) vector comprising the microRNA, or mimic thereof, of claim 1 (claim 19), does not reasonably provide enablement for A vector or a viral particle comprising the microRNA, or mimic thereof, of claim 1. 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 the invention commensurate in scope with these claims. Claimed subject matter is a microRNA or mimic, for the therapeutic treatment of nervous system dysfunction in a patient in need thereof (of claim 1) and A vector or viral particle comprising the microRNA, or mimic thereof, of claim 1 (claim 19).
Enablement is considered in view of the Wands factors (MPEP 2164.01(A)). These include: the breadth of the claims, the nature of the invention, the state of the prior art, the level of one of ordinary skill, the level of predictability in the art, the amount of direction provided by the inventor, the existence of working examples, and the quantity of experimentation needed to make or use the invention. All of the Wands factors have been considered with regard to the instant claims, with the most relevant factors discussed below.
Nature of the invention:
Claim 1 is drawn to a microRNA, or mimic thereof, for the therapeutic treatment of nervous system dysfunction in a patient in need thereof. The nature of the invention is complex in that the microRNA must be capable of therapeutic treatment of nervous system dysfunction in a patient in need thereof.
Claim 19 is drawn to a vector or viral particle comprising the microRNA or mimic thereof, of claim 1. The nature of the invention is complex in that “a “vector” is a composition of matter which can be used to deliver a nucleic acid of interest to the interior of a cell, including a nucleic acid molecule capable of transporting another nucleic acid to which it has been linked.”, (see paragraph [0045]); and that a viral particle is formed by “A selected nucleic acid sequence can be inserted into a vector (a vector genome) and packaged in viral particles using techniques known in the art (e.g., an rAAV vector packaged in rAAV particles, Vesicular Stomatitis Virus (VSV) G-pseudotyped lentivirus, etc.)”, (paragraph [0090]).
Breadth of the claims:
The broadest reasonable interpretation of claim 1 is that the invention is drawn to any/all microRNA and mimics thereof for the therapeutic treatment of any/all nervous system dysfunction in a patient in need thereof. The claims broadly encompass microRNA, where the microRNA is defined solely or primarily by function.
The broadest reasonable interpretation of claim 19 is that the invention is drawn to any composition of matter which can deliver a nucleic acid of interest to the interior of a cell and/or a nucleic acid molecule capable of transporting another linked nucleic acid molecule to the interior of a cell, and/or said nucleic acid molecule linked to another nucleic acid molecule packaged into a viral particle, wherein the nucleic acid of interest to be delivered is any/all microRNA(s) and mimics thereof for the therapeutic treatment of any/all nervous system dysfunction in a patient in need thereof.
The complex nature of the subject matter of this invention is greatly exacerbated by the breadth of the claims.
Guidance of the specification and existence of working examples:
Looking to the specification for (a) microRNA(s), (b) therapeutic treatment, (c) nervous system dysfunction, (d) a patient, (e) vector, and (f) viral particle
(a) [0057] “MicroRNAs (miRNAs) are a class of endogenous 17-24 base-long single-stranded, non-coding RNAs that regulate gene expression in a sequence-specific manner in plants and animals. miRNAs are encoded within the genome as independent genomic transcription units or as introns of protein-coding genes and require multiple processing steps that take place in both the nucleus and the cytoplasm.”
[0060] “miRNAs have been suggested to play important roles in diverse biological phenomena including development, oncogenesis, and brain functions. Some miRNAs are specifically expressed and enriched in the brain, and have been associated with memory, neuronal differentiation and synaptic plasticity. Several studies have implicated miRNAs in brain diseases. For example, a mutation in the target site of miR-189 in the human SLITRK1 gene has been shown to be associated with Tourette's syndrome. In addition, conditional deletion of Dicer in murine post-mitotic Purkinje cells resulted in progressive loss of miRNAs, cerebellar degeneration and ataxia. miRNAs regulate the expression of ataxinl, amyloid precursor protein (APP) and BACEl, and have been suggested to contribute to neurodegenerative disorders. Interestingly, miR-133b, which is specifically expressed in midbrain dopaminergic neurons and controls their maturation and function through its effect on the homeodomain transcription factor Pitx3, is deficient in PD brains, suggesting that miR-133b is essential for the maintenance of these neurons and could therefore play a role in PD pathogenesis.
[0061] Additionally, miR-7, which is a brain-enriched miRNA, binds to the 3'UTR of a-Syn mRNA in a sequence dependent manner and significantly inhibits its translation. GenBank BLAST search revealed that miR-7 is found in human, mouse, rat, zebra fish and fly, suggesting that it regulates biological functions conserved between vertebrates and invertebrate. Antisense inhibition of miR-7 has been found to down-regulate cell growth and increase apoptosis, suggesting that miR-7 has a protective role. The latter finding is consistent with observation that miR-7 suppresses a-Syn mediated cell death. In contrast, miR-7 can also have tumor suppressor- like characteristics in glioblastomas. It potently down-regulates the EGF receptor (EGFR) as well as upstream players of the Akt pathway. Additionally, miR-7 is down-regulated in human glioblastoma tissue relative to surrounding normal brain. The apparent discrepancy between the anti- and pro- cell death activity of miR-7 might reflect the complex regulatory role of this microRNA, requiring additional investigations into its biology in different cellular contexts.
[0062] miR-7 is transcribed from three loci in the human genome and one locus of the mouse genome. miR-7-1 is located within an intron of the HNRNPK gene on chromosome 9, which encodes a ribonucleoprotein. Profiling microRNA expression in various tissues has found miR-7 highly expressed in the pituitary gland, presumably because miR-7-3 is transcribed from an intron of pituitary gland-specific factor la (PGSF1) gene.
Table 1 provides sequences of the microRNA(s) guide and passenger strand, along with the passenger strand nonchemical modifications at the 3’ end.
(b) [0037] “As used herein the term "treating" includes abrogating, substantially inhibiting, slowing, or reversing the progression of a condition, substantially ameliorating clinical or aesthetical symptoms of a condition, substantially preventing the appearance of clinical or aesthetical symptoms of a condition, and protecting from harmful or annoying stimuli.”
(c) [0028] “In certain non-limiting embodiments, the nervous system dysfunction may result from a neurodegenerative disease. In certain embodiments, the neurodegenerative disease may be associated with alpha-synuclein pathology. In certain embodiments, the alpha-synuclein pathology may be Parkinson's Disease, Dementia with Lewy Bodies, Parkinson's Disease Dementia, or Multiple System Atrophy.”
[0029] “In different non-limiting embodiments, the nervous system dysfunction may result from SCI, TBI, Multiple Sclerosis, Optic Neuritis, Transverse Myelitis, Neuromyelitis Optica (NMO), Acute Disseminated Encephalomyelitis, Ischemic Stroke, Amyotrophic Lateral Sclerosis, and Autism Spectrum Disorders (ASD).”
(d) [0035] “As used herein, the term "patient" refers to a mammal, human or otherwise, suffering from a disease or condition.”
The specification includes two prophetic working examples that disclose how to (1) validate specific microRNAs in vivo and (2) evaluate the effects of viral mediated delivery of microRNAs (pages 37 to 39).
(e) [0045] “As used herein, a "vector" is a composition of matter which can be used to deliver a nucleic acid of interest to the interior of a cell, including a nucleic acid molecule capable of transporting another nucleic acid to which it has been linked. Numerous vectors are known in the art including, but not limited to, linear polynucleotides, polynucleotides associated with ionic or amphiphilic compounds, plasmids, and viruses. Thus, the term "vector" includes an autonomously replicating plasmid or a virus. Examples of viral vectors include, but are not limited to, adeno-associated virus (AAV) vectors, retroviral vectors, lentiviral vectors, adenoviral vectors, and the like. An expression construct can be replicated in a living cell, or it can be made synthetically. Vectors capable of directing the expression of genes to which they are operatively linked are often referred to as "expression vectors."
(f) [0090] “In some embodiments in which a nucleic acid sequence encoding pre-miRNA is included within a gene therapy vector, it is typically contained with a viral vector. The vectors may be episomal, or may be integrated into the target cell genome, through homologous recombination or random integration. Any suitable viral vector can be used. Viruses are naturally evolved vehicles which efficiently deliver their genes into host cells and therefore are desirable vector systems for the delivery of therapeutic nucleic acids. Preferred viral vectors exhibit low toxicity to the host cell and produce/deliver therapeutic quantities of the nucleic acid of interest (in some embodiments, in a tissue-specific manner). A number of viral vector-based systems have been developed for gene transfer into mammalian cells. For example, AAV provide a convenient platform for gene delivery systems. As another example, retroviruses provide a convenient platform for gene delivery systems. In yet other examples, adenovirus vectors, retrovirus vectors, herpesvirus vectors, alphavirus vectors, or lentivirus vectors are used. A selected nucleic acid sequence can be inserted into a vector (a vector genome) and packaged in viral particles using techniques known in the art (e.g., an rAAV vector packaged in rAAV particles, Vesicular Stomatitis Virus (VSV) G-pseudotyped lentivirus, etc.). The recombinant virus can then be isolated and delivered to cells of the subject.”
The specification states in paragraph [0061], in regard to microRNA-7 biology, “The apparent discrepancy between the anti- and pro- cell death activity of miR-7 might reflect the complex regulatory role of this microRNA, requiring additional investigations into its biology in different cellular contexts.” The specification fails to provide any working example to support the “apparent discrepancy” between miR-7’s role and/or any role of any/all microRNA for the therapeutic treatment of nervous system dysfunction in a patient in need thereof.
Predictability and state of the art:
Venneri and Passantino (MiRNA: what clinicians need to know, European Journal of Internal Medicine, Vol 113, pages 6-9, published May 20, 2023) teach on any microRNA.
“Approximately 2500 miRNA genes have been discovered in the human genome. An individual miRNA can modulate the expression and function of hundreds of mRNAs; in contrast, each mRNA can be regulated by multiple miRNAs. The interaction between miRNAs and their mRNA targets involves base-pairing of 6–8 nucleotide sequences. As much as 60% of the human transcriptome is considered to be negatively regulated by miRNA activity.”, (page 6, column 1, paragraph 2).
“Functions of miRNAs. MiRNAs are involved in many biological functions, specifically the following.
• Developmental regulation: miRNAs are involved in regulating gene expression during development, including cell differentiation and organogenesis.
• Cellular homeostasis: miRNAs play roles in maintaining cellular homeostasis by regulating various cellular processes, such as proliferation, apoptosis, and stress responses.
• Immune response: miRNAs are involved in regulating immune responses by controlling the expression of genes involved in innate and adaptive immunity.
• Metabolic regulation: miRNAs play roles in the regulation of metabolic processes such as glucose and lipid metabolism.
• Neurological function: miRNAs are abundant in the central nervous system and have crucial roles in neuronal development, including neurogenesis, synapse formation, neural plasticity, and axon guidance.
• Cardiovascular function: miRNAs participate in both heart development and heart function, including cardiac development, angiogenesis, and vascular remodeling.
• Epigenetic regulation: miRNAs regulate epigenetic modifications such as DNA methylation and histone modifications.”, (page 6, column 1 paragraph 5 to column 2 paragraph 1).
Looking to the art for guidance on miRNA and therapeutics, Zhang et al (The Risks of miRNA Therapeutics: In a Drug Target Perspective, Drug Design, Development and Therapy, pages 721-733, published February 22nd, 2021) covers miRNA risks in therapeutics.
Zhang et al discloses, “Only 10 obtainable miRNA drugs have been in clinical trials with none undergoing phase III…”, (abstract). Zhang et al goes on to disclose, “Inherently, miRNA is endogenously produced and siRNA is exogenously designed. Designers can exactly endow siRNA giving them the purpose of gene silencing, while endogenous miRNA seemed more complicated because nobody assigned them specific tasks.”, (see parge 722, column 2, paragraph 2).
“As expected, Figure 2A showed a flexible complementary ratio of miRNA with target sequence (within the range 20–90%) and none with complete complementation…”, (see page 722, column 2, paragraph 2; and Figure 2A). “…All ten miRNA drugs had tens and hundreds of unapproved targets…”, (see Figure 3A, and page 727, column 1, paragraph 1).
Moreover, Zhang et al teaches, “TMTME (“too many targets for miRNA effect”) is a typical and inevitable property of miRNA molecules, which is caused by incomplete complementation with the target sequence. TMTME leads to that miRNA could bind to various sequences suitable for the interaction (including protein-coding genes, lncRNA, circRNA, etc), which is different from all approved drugs (including siRNA drugs) with only a few targets… Therefore, both introduction and removal of miRNA in humans can lead to changes of a wide series of pathways and some of them are unknown, even unpredictable, probably triggering disorders of physiological function or the occurrence of additional disease.”, (Page 729, column 1, paragraph 2 to column 2, paragraph 1).
Looking to the art for miR-7 based therapy, Leedman et al (US 9,795,626 B2) discloses combining miR-7-5p with at least one of a BRAF inhibitor, an IGF1R inhibitor and a DNA alkylating agent (column 2, lines 43-50; claim 1). Leedman et al discloses, “The miR-7-5p miRNA may be hsa-miR-7-5p and may comprise the nucleotide sequence set forth in SEQ ID NO:1. The miR-7-5p miRNA precursor may be selected from hsa-miR-7-1, hsa-miR-7-2 and hsa-miR-7-3, and may comprise a sequence as set forth in any one of SEQ ID Nos: 2 to 4.”, (column 2, lines 55-58).
Looking to the art for delivery of miR-7, the ‘266 patent (US 9,255,266 B2) teaches viral vectors harboring pre-miR-7, “Viral vectors harboring pri-miR-7 cDNA sequence (using Sanger miRbase database) will be constructed with AAV vector. Plasmids will be constructed with a cassette containing chicken β-actin-promoter/cytomegalovirus enhancer (CAG promoter) that gives high expression in neuronal cells. As a negative control, we will clone scrambled sequence that does not inhibit any gene expression into this viral vector. To monitor miR-7 expression easily in the mouse brain, we will insert Internal Ribosome Entry Sequence (IRES)-GFP expression unit downstream of miR-7 cDNA, thereby miR-7 and GFP will be expressed bicistronically from a single mRNA. Subsequently, the plasmid DNA, pAAV-miR-7, or pAAV-scramble will be co-transfected with plasmids pHelper and Pack2/1 into HEK293T cells using a standard calcium phosphate method, and 48 hours post-transfection the virus will be harvested, Briefly, crude rAAV supernatants obtained by repeated freeze/thaw cycles will be processed for gradient ultracentrifugation.”, (column 11, section: generation of rAAV-miR-7).
Thus, one of skill in the art would appreciate the unpredictability of any/all microRNAs for the therapeutic treatment of nervous system dysfunction in patient(s) in need thereof. The art teaches that both the introduction and/or removal of miRNA in humans can lead to changes of a wide series of pathways (some unknown, some unpredictable). The art teaches that miRNA does not bind with 100% complementarity and has tens to hundreds of targets. The art teaches a composition comprising hsa-miR-7-1 (SEQ ID NO:2 of Leedman et al), and that miR-7 can be packaged in an rAAV vector.
Amount of experimentation necessary:
The quantity of experimentation required to carry out the scope of the invention is large. One would be required to screen random microRNA(s) that cover the various functions of the broad genus of microRNAs for the ability to therapeutically treat a genus of nervous system dysfunction covering the broad class of neurodegenerative diseases and their associated etiologies. Success with one microRNA would not guarantee success with any other microRNA. This type of experimentation is not routine in the art and would require a large amount of inventive effort. Further considering that any positive results (e.g., successful therapeutic treatment of nervous system dysfunction with a microRNA) would amount to a significant advancement in the state of the art, additional experimentation required is considered undue.
In view of the breadth of the claims and the lack of guidance provided by the specification as well as the unpredictability of the art, the skilled artisan would have required an undue amount of experimentation to make the claimed invention.
Therefore, claims 1-9 and 18-20 are scoped to be enabled for A microRNA or mimic thereof, comprising a first guide nucleotide sequence having at least 90% identity to SEQ ID NO: 1 and a second passenger sequence having at least 90% identity to SEQ ID NO:2, for the therapeutic treatment of nervous system dysfunction in a patient in need thereof (of claim 1), as well as A recombinant adeno-associated virus(rAAV) vector comprising the microRNA, or mimic thereof, of claim 1 (of claim 19), does not reasonably provide enablement for A vector or a viral particle comprising the microRNA, or mimic thereof, of claim 1.
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.
Claim(s) 1, 7-9, and 19-20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by ‘266 (US Patent 9,255,266 B2, published 02/09/2016).
Independent claim 1 recites, “for the therapeutic treatment of nervous system dysfunction in a patient in need thereof.” The recitation of the intended use does not result in a structural difference between the claimed invention and prior art. Applicant has elected miRNA-7 and instant SEQ ID NOs: 1 and 2.
Regarding claim 1 and 7, ‘266 discloses, “In other embodiments, the present invention is directed to a method for treating a neurodegenerative disease comprising administering an effective amount of a miRNA or a mimic thereof to a patient in need thereof, wherein the miRNA is selected from the group consisting of miRNA-7…”, (see column 1, paragraph (7)).
Regarding claim(s) 8-9, ‘266 discloses sequences in Figure 1A and SEQ ID NOs: 1 and 2 that read on instant SEQ ID NOs: 1 and 2 of claims 8 and 9.
Regarding claim 19, “a vector” is being interpreted as any composition of matter which can be used to deliver a nucleic acid of interest to the interior of a cell (see claim interpretation above).
Regarding claim 20, “a nanoparticle” is being interpreted as any compound or substance with a high loading capacity for a nucleic acid in nanometer range.
Regarding claim(s) 19 and 20, ‘266 discloses, “Pre-miRNA-7 and miRNA-7 inhibitor were purchased from Ambion. Transfections were performed using Lipofectamine 2000 reagent (invitrogen) according to the supplier's instructions. For luciferase assay, cells were co-transfected with luciferase reporter constructs and internal control construct pSV-β-galactosidase in the absence or presence of miR-7 or pre-miR-7 at the indicated concentrations. After cell lysis, luciferase activity was measured with Steady-Glo Luciferase Assay System (Promega) using Luminometer (Victor2, Perkin Elmer). β-Galactosidase activity was measured with the D-Galactosidase Enzyme Assay System (Promega) and used to normalize luciferase activity. Experiments were performed in triplicates.”, (see column 9, lines 1-14).
Thus, claim(s) 1, 7-9, and 19-20 are anticipated by ‘266.
Claim(s) 1-2, 7-9, and 18-20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Leedman et al (US 9,795,626 B2, publication date October 24th, 2017).
Independent claim 1 recites, “for the therapeutic treatment of nervous system dysfunction in a patient in need thereof.” The recitation of the intended use does not result in a structural difference between the claimed invention and prior art. Applicant has elected miRNA-7 and instant SEQ ID NOs: 1 and 2.
Regarding claim(s) 1 and 7, Leedman et al discloses, “Compositions for the treatment of cancers expressing the type 1 insulin-like growth factor receptor (IGF1R) or a constituent of an IGF1R signaling pathway, in particular melanoma, using the microRNA miR-7-5p.”, (see column 1, lines 12-15).
Regarding claim 2, Leedman et al discloses “MicroRNAs (miRNAs) are a class of highly conserved, small (typically 21-25 nucleotides) non-coding RNAs that regulate both mRNA degradation and translation, at least partially through their ability to bind to the 3′-UTR of target genes via a ‘seed region’ of the miRNA. miRNAs are generated from RNA precursors (pri-miRNAs) that usually contain several hundred nucleotides transcribed from regions of non-coding DNA. Pri-miRNAs are processed in the nucleus by RNase III endonuclease to form stem-loop precursors (pre-miRNAs) of approximately 70 nucleotides. Pre-miRNAs are actively transported into the cytoplasm where they are further processed into short RNA duplexes, typically of 21-23 nucleotides. The functional miRNA strand dissociates from its complementary non-functional strand and locates within, the RNA-induced-silencing-complex (RISC). (Alternatively, RISC can directly load pre-miRNA hairpin structures.) miRNAs bind the 3′UTRs of target mRNAs and important in this binding is a ‘seed region’ of approximately 6-7 nucleotides near the 5′ end of the miRNA (typically nucleotide positions 2 to 8). miRNA-induced regulation of gene expression is typically achieved by translational repression, either degrading proteins as they emerge from ribosomes or ‘freezing’ ribosomes, and/or promoting the movement of target mRNAs into sites of RNA destruction.”, (Column 2, lines 1-25). Wherein functional miRNA strand reads on “guide” strand, and non-functional reads on “passenger” strand.
Regarding claim(s) 8 and 9, Leedman et al discloses SEQ ID NO: 2, which comprises both SEQ ID NO: 1 (of claim 8) and SEQ ID NO: 2 (of claim 9) (see alignments below).
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Regarding claim 18, Leedman et al discloses, “The therapeutic agent and the miRNA may be administered in a single composition, formulated together with pharmaceutically acceptable carriers, excipients or adjuvants or may be administered in separate compositions.”, (column 3, lines 13-16).
Regarding claim 19, “a vector” is being interpreted as any composition of matter which can be used to deliver a nucleic acid of interest to the interior of a cell (see claim interpretation above).
Regarding claim 20, “a nanoparticle” is being interpreted as any compound or substance with a high loading capacity for a nucleic acid in nanometer range.
Regarding claim(s) 19 and 20, Leedman et al discloses, “Optimal cell numbers were transfected using Lipofectamine 2000 (Invitrogen) with miR-7-5p (SEQ ID NO: 1; synthesised by Ambion) or miR-NC precursor molecules (hereinafter “miR-NC”; Ambion AM17110) at final concentrations ranging from 1-30 nM. For siRNA transfections, Silencer Select siRNAs (Invitrogen) Negative Control No. 1 (si-NC; 4390843), si-IRS-2 #1 (s16486), si-IRS-2 #2 (s16487) were transfected using Lipofectamine 2000 (Invitrogen) according to the manufacturer's protocol. Cells were harvested 24 hours later for RNA or 2-3 days after transfection for protein extraction.”, (see column 16, lines 49-59).
Thus, claims 1-2, 7-9, and 18-20 are anticipated by Leedman et al.
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.
Claim(s) 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Leedman et al as applied to claim(s) 1-2, 7-9, and 18-20 above, and further in view of Kadekar et al (Synthetic Design of Asymmetric miRNA with an Engineered 3’ Overhang to Improve Strand Selection, Molecular Therapy: Nucleic Acids, Vol 16, published June 2019; NPL #1 on IDS filed 10/10/2023).
Leedman et al does not teach, (claim 3) one or more chemical or nonchemical modifications, (claim 4) nonchemical modifications selected from one or more deoxyribonucleotides, (claim 5) the deoxyribonucleotides added to the 3’ end of one or more of the RNA strands, and (claim 6) that the 3’-modified RNA strand is the passenger strand.
Kadekar et al teaches, “It is generally believed that, similar to RISC loading of siRNA, miRNA loading is based on the thermodynamic asymmetry of the two ends of the duplex. The strand having the less stable 5’ end is more likely to be selected as a guide strand, whereas the other strand, with the more stable 5’ end, serves as the passenger strand that is degraded.”, (see page 598, column 1, paragraph 2).
Regarding claim(s) 3-6, Kadekar et al teaches, “To the best of our knowledge, our strand engineering strategy is the first report of improved strand selection of a desired miRNA strand by RISC without using any chemical modifications or mismatches. We believe that such structural modifications of miR34a could mitigate some of the off-target effects of miRNA therapy and would also allow a better understanding of sequence-specific gene regulation. Such a design could also be adapted to other miRNAs to enhance their therapeutic potential.”, (abstract). More specifically, Kadekar et al teaches, “To design asymmetric miRNAs, we incorporated extra deoxythymine nucleotides (dTs) at the 3’ end of both the miR (5p) and miR* (3p) strands (Figure 1A). Modifying the 3’ end is expected to influence duplex stability because it can destabilize the stacking interaction with the nearest neighbor. To facilitate selective destabilization of the duplex to improve miR strand selection within the RISC complex, we added extra nucleotides at the 3’ end of the miR* strand. To reverse the strand selection and favor miR* strand selection, the extra nucleotides were added to the 3’ end of the miR strand (Figure1A). Because natural miR-34a has a 2-nt overhang at the 3’ end on the miR* strand, we increased the overhang length to 5 and 7 nt by adding 3 and 5 dT nucleotides, respectively. Because the 3’ end of miR strand of miR-34a has a single nucleotide overhang, we increased the overhang length to five and seven by adding four and six dT nucleotides, respectively (Figure 1A).”, (see page 598, column 1, paragraph 3 to column 2, paragraph 1).
Lastly, Kadekar et al teaches, “Of note, our modified miRNA had a better therapeutic effect compared with the commercially available mimics. Because we employed natural nucleotides for modifying miRNA, it would also limit any undesired toxicity that may arise from modified nucleotides generally used in commercial mimics. Such a design could be adapted to other clinically relevant miRNAs, which could address some of the off-target effects associated with the recruitment of undesired strands. We believe that our design strategy will also open new avenues for researchers to study individual strand activity of different miRNAs.”, (page 601, column 1, paragraph 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify SEQ ID NO: 2 as disclosed by Leedman et al with nonchemical modifications, such as deoxythymine (also known as thymidine) at the 3’ end of the passenger strand (SEQ ID NO: 2 nucleotides 66-87) to yield the predictable benefits of limiting undesired toxicity and off-target effects, as taught by Kadekar et al.
Thus, claims 3-6 are unpatentable over Leedman et al in view of Kadekar et al.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim(s) 1, 7-9, and 19-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 9,255,266 B2 (herein ‘266). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of the ‘266 patent is drawn to “The method for “treating Parkinson's disease in a patient in need thereof comprising administering to said patient an effective amount of a composition comprising miRNA-7 (SEQ ID NOs. 1-2)”, wherein the composition comprising miRNA-7 is administered through a delivery system, and wherein the delivery system comprises at least one of a viral vector, a liposome, a microparticle, capsules, and combinations thereof.”
A method for treating Parkinson’s disease in a patient in need thereof (claim 8 of the ‘266 patent) anticipates the function therapeutic treatment of nervous system dysfunction in a patient in need thereof of instant claim 1. A composition comprising miRNA-7 (SEQ ID NOs. 1-2) (claim 8 of the ‘266 patent) anticipates microRNA (of instant claim 1), miRNA-7 (of instant claim 7), SEQ ID NO: 1 (of instant claim 8), and SEQ ID NO: 2 (of instant claim 9). A viral vector and liposome (claim 8 of the ‘266 patent) anticipates viral vector (of instant claim 19), and nanoparticle (of instant claim 20), respectively.
Thus, claim(s) 1, 7-9, and 19-20 are anticipated over claim 8 of ‘266.
Claim(s) 2-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. ‘266 in view of Kadekar et al (Synthetic Design of Asymmetric miRNA with an Engineered 3’ Overhang to Improve Strand Selection, Molecular Therapy: Nucleic Acids, Vol 16, published June 2019; NPL #1 on IDS filed 10/10/2023
Claim 8 of ‘266 is drawn to “The method for “treating Parkinson's disease in a patient in need thereof comprising administering to said patient an effective amount of a composition comprising miRNA-7 (SEQ ID NOs. 1-2)”, wherein the composition comprising miRNA-7 is administered through a delivery system, and wherein the delivery system comprises at least one of a viral vector, a liposome, a microparticle, capsules, and combinations thereof.”
Claim 8 of the ‘266 application does not require, wherein the miRNA “comprises a double-stranded oligonucleotide RNA structure further comprising a first guide RNA nucleotide strand and a second passenger RNA nucleotide strand.”, (of instant claim 2); “contains one or more chemical or nonchemical modifications.”, (of instant claim 3); “wherein the nonchemical modifications comprise the addition of one or more deoxyribonucleotides, selected from deoxythymidine (dT), deoxyadenosine (dA), deoxycytidine (dC), and deoxyguanosine.”, (of instant claim 4, which depends on instant claim 3); “wherein the one or more deoxyribonucleotides are added at the 3' end of one or more of the RNA strands in the microRNA, or mimic thereof.”, (of instant claim 5, which depends on instant claim 4); and “wherein the 3'-modified RNA strand is the passenger strand.”, (of instant claim 6, which depends on claim 5).
Regarding instant claim 2, Kadekar et al teaches, “It is generally believed that, similar to RISC loading of siRNA, miRNA loading is based on the thermodynamic asymmetry of the two ends of the duplex. The strand having the less stable 5’ end is more likely to be selected as a guide strand, whereas the other strand, with the more stable 5’ end, serves as the passenger strand that is degraded.”, (see page 598, column 1, paragraph 2; see Figure 1). Also, Kadekar et al teaches, “We therefore termed modified double-stranded miR-34a with selectivity for miR or the guide strand “modmiR” (5p selection), whereas the sequence that showed selectivity for the miR* strand was termed “modmiR*” (3p selection). We also designed dual strand-modified miR-34a with 7-nt overhangs on both the miR and miR* strands (termed “modmiRmiR*”) (Figure 1A).”, (see page 598, column 2, paragraph 2).
Regarding instant claims 3-6, Kadekar et al teaches, “To the best of our knowledge, our strand engineering strategy is the first report of improved strand selection of a desired miRNA strand by RISC without using any chemical modifications or mismatches. We believe that such structural modifications of miR34a could mitigate some of the off-target effects of miRNA therapy and would also allow a better understanding of sequence-specific gene regulation. Such a design could also be adapted to other miRNAs to enhance their therapeutic potential.”, (abstract). More specifically, Kadekar et al teaches, “To design asymmetric miRNAs, we incorporated extra deoxythymine nucleotides (dTs) at the 3’ end of both the miR (5p) and miR* (3p) strands (Figure 1A). Modifying the 3’ end is expected to influence duplex stability because it can destabilize the stacking interaction with the nearest neighbor. To facilitate selective destabilization of the duplex to improve miR strand selection within the RISC complex, we added extra nucleotides at the 3’ end of the miR* strand. To reverse the strand selection and favor miR* strand selection, the extra nucleotides were added to the 3’ end of the miR strand (Figure1A). Because natural miR-34a has a 2-nt overhang at the 3’ end on the miR* strand, we increased the overhang length to 5 and 7 nt by adding 3 and 5 dT nucleotides, respectively. Because the 3’ end of miR strand of miR-34a has a single nucleotide overhang, we increased the overhang length to five and seven by adding four and six dT nucleotides, respectively (Figure 1A).”, (see page 598, column 1, paragraph 3 to column 2, paragraph 1).
Lastly, Kadekar et al teaches, “Of note, our modified miRNA had a better therapeutic effect compared with the commercially available mimics. Because we employed natural nucleotides for modifying miRNA, it would also limit any undesired toxicity that may arise from modified nucleotides generally used in commercial mimics. Such a design could be adapted to other clinically relevant miRNAs, which could address some of the off-target effects associated with the recruitment of undesired strands. We believe that our design strategy will also open new avenues for researchers to study individual strand activity of different miRNAs.”, (page 601, column 1, paragraph 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the miR-7 sequence (SEQ ID NO: 2) of claim 8 as disclosed by ‘266, with nonchemical modifications, such as deoxythymine (also known as thymidine) at the 3’ end to yield the predictable benefits of limiting undesired toxicity and off-target effects, as taught by Kadekar et al.
Thus, claims 2-6 are unpatentable over ‘266 in view of Kadekar et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Junn et al (Repression of α-synuclein expression and toxicity by microRNA-7, PNAS, Vol 106, Issue 31, Pages 13052-13057, Published August 4th, 2009).
Junn et al discloses, “… we show that microRNA-7 (miR-7), which is expressed mainly in neurons, represses α-synuclein protein levels through the 3’-untranslated region (UTR) of α-synuclein mRNA. Importantly, miR-7-induced down-regulation of α -synuclein protects cells against oxidative stress. Further, in the MPTP-induced neuro-toxin model of PD in cultured cells and in mice, miR-7 expression decreases, possibly contributing to increased α-synuclein expression. These findings provide a mechanism by which α-synuclein levels are regulated in neurons, have implications for the pathogenesis of PD, and suggest miR-7 as a therapeutic target for PD and other α -synucleinopathies.”, (see abstract page 13052).
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Fig. 1A discloses sequences that read on SEQ ID NOs: 1 and 2.
No claims are allowed.
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/L.M.T./Examiner, Art Unit 1637
/Jennifer Dunston/Supervisory Patent Examiner, Art Unit 1637