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
Applicant’s election without traverse of claims 1-18 (Group I) in the reply filed on 06/15/2026 is acknowledged.
Claims 19 and 20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 06/15/2026.
Accordingly, claims 1-18 are pending and under consideration.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. The earliest effective filing date to which the instant application is entitled is 04/15/2021.
Information Disclosure Statement
Receipt of information disclosure statements on 01/08/2024 and 05/07/2025 is acknowledged. The signed and initialed PTO-1449‘s have been mailed with this action.
Drawings
The replacement drawing sheets filed 02/29/2024 are accepted.
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.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 18 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
With regard to claim 18, which recites “a cell comprising the vector of claim 16,” the broadest reasonable interpretation of the term “cell” embraces a human having the cell. The instant specification envisions a eukaryotic cell such as a human cell in vivo (paragraphs [20], [21], and [150]). Therefore, under broadest reasonable interpretation of the claim language and in view of the disclosure of the instant specification, the term “cell” in claim 18 embraces a human having the cell. It would be remedial to amend the instant claim to recite “an isolated cell…” (bolded emphasis added) to avoid the claim embracing a human organism.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7, 8, and 13-18 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 2012/0245220 A1 (hereinafter Garcia), as evidenced by Furuyama and Bruzik, 2002 (hereinafter Furuyama).
With regard to claim 1, which recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule,”
Garcia discloses methods and compositions for generating novel nucleic acid molecules through targeted splicesosome mediated simple or double trans-splicing, said compositions including pre-trans-splicing molecules (PTM) designed to interact with a target precursor messenger RNA molecule for purposes of mediating a simple or double trans-splicing reaction resulting in the generation of a novel chimeric RNA molecule via the ExChange approach (abstract; paragraphs [0013], [0014], and [0075]). These molecules utilized in the ExChange approach comprise a replacing exon (which reads on (a)), flanked by artificial intronic sequences with intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) (which reads on (b)), which are connected to antisense sequences designed to anneal the target mRNA (which reads on (c)) (paragraphs [0019], [0020], [0073], [0091], and [0143]; Figure 3). The replacing exon of Garcia is explicitly disclosed to correct Duchenne Muscular Dystrophy genetic defects (paragraphs [0002] and [0003]). Thus, Garcia discloses each and every limitation of instant claim 1.
With regard to claim 2, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of adenine (A), uracil (U), cytosine (C) and guanine (G);
X5 is selected from the group consisting of adenine (A), cytosine (C), uracil (U) and guanine (G); and
X6 is selected from the group consisting of adenine (A), uracil (U) and guanine (G),” as set forth above, Garcia discloses PTMs that anticipate instant claim 1. Garcia further discloses that the PTM molecules taught therein comprise intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) sequences in the introns flanking the therapeutic exon taught therein and set forth above (Figure 3; paragraphs [0019] and [0020]). These ISE and DISE sequences respectively correspond to SEQ ID NOs: 26 and 27 (paragraphs [0072] and [0073]), which respectively comprise 5’-GGGAAG-3’ and 5’-ATGGGT-3’, both of which read on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every limitation of instant claim 2.
With regard to claim 3, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of adenine (A), uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia discloses PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every limitation of instant claim 3.
With regard to claim 4, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia discloses PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every limitation of instant claim 4.
With regard to claim 5, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is adjacent to RNA motifs that further increase trans-splicing efficiency,” as set forth above, Garcia discloses PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the intronic sequences taught therein comprise a strong conserved yeast branch point sequence, a polypyrimidine tract, a 3’ acceptor site, and a 5’ donor site (paragraphs [0015-0018] and [0069]; Figures 1 and 2). These sequences are known to be involved in splicing and thus are considered to read on the instantly claimed “RNA motifs that further increase trans-splicing efficiency.” Thus, Garcia anticipates each and every limitation of instant claim 5.
With regard to claim 7, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 5’ splice site of the trans-splicing nucleic acid,” as set forth above, Garcia discloses PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the spacer separating the 5’ splice donor site and the 3’ end target binding domain comprises between 10 and 100 nucleotides and comprises the DISE sequence (i.e. SEQ ID NO: 27, which is 24 nucleotides in length) (paragraph [0091]). Given that the spacer separating the 5’ splice donor site and the 3’ target binding domain is disclosed to be between 10 and 100 nucleotides and further that it comprises the DISE sequence, the DISE sequence must be located less than 300 bases from a 5’ splice site, as instantly claimed. Thus, it is considered that Garcia discloses each and every limitation of instant claim 7.
With regard to claim 8, which recites “each of the one or more intronic domains [of the composition of claim 1] comprises 2 or more trans-splicing enhancer sequences,” as set forth above, Garcia discloses PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 26 comprises 5’-GGGAAG-3’ and 5’-GAGGGA-3’, both of which read on the trans-splicing enhancer sequences recited at instant claim 2. Furthermore, SEQ ID NO: 27 comprises 5’-ATGGGT-3’ and 5’-GGGTTG-3’, both of which read on the trans-splicing enhancer sequences recited at instant claims 2 and 3. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process. Accordingly, it is considered that Garcia anticipates each and every limitation of instant claim 8.
With regard to claim 13, which recites “the composition of claim 1, further comprising an RNA-binding protein that strengthens the interaction between the trans-splicing nucleic acid and the target RNA molecule and increases trans-splicing efficiency,” as set forth above, Garcia anticipates the composition of instant claim 1. Garcia further discloses that the compositions taught therein may include splicing enhancers such as transacting splicing factors, including SR proteins, which have been shown to interact with exonic splicing enhancers and modulate splicing (paragraph [0072]). As taught in Furuyama and known to those of ordinary skill in the art, SR proteins are RNA-binding proteins (abstract). Thus, it is considered that Garcia anticipates each and every limitation of instant claim 13.
With regard to claim 14, which recites “the trans-splicing nucleic acid [of the composition of claim 1] is RNA, DNA, a DNA/RNA hybrid, a nucleic acid analog, a chemically-modified nucleic acid, or a chimera composed of two or more nucleic acids or nucleic acid analogs,” as set forth above, Garcia anticipates the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the nucleic acid molecules taught therein are DNA molecules transcribed into RNA molecules that perform the trans-splicing reactions disclosed therein (paragraphs [0094], [0122], [0124], [0136], and [0139]). Thus, it is considered that Garcia anticipates each and every limitation of instant claim 14.
With regard to claim 15, which recites “the trans-splicing nucleic acid [of the composition of claim 1] further comprises a heterologous promoter,” as set forth above, Garcia anticipates the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the constructs taught therein may comprise constitutive promoters such as the CMV promoter, the SV40 early promoter region, or the human gonadotropin-P promoter, amongst others (paragraph [0094]), all of which read on the instantly claimed “heterologous promoter.” Accordingly, it is considered that Garcia anticipates each and every limitation of instant claim 15.
With regard to claims 16 and 17, which respectively recite “a vector comprising or encoding the composition of claim 1,” wherein “the vector is selected from the group consisting of: adeno-associated virus, retrovirus, lentivirus, adenovirus, nanoparticle, micelle, liposome, lipoplex, polymersome, polyplex, and dendrimer,” as set forth above, Garcia anticipates the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the nucleic acid molecules taught therein may be delivered to cells via various delivery systems, including encapsulation in liposomes or construction of a nucleic acid as part of an adeno-associated viral vector (paragraph [0096]). Thus, Garcia anticipates each and every limitation of instant claims 16 and 17.
With regard to claim 18, which recites “a cell comprising the vector of claim 16,” as set forth above, Garcia anticipates the vector of claim 16. Garcia further discloses cells comprising the recombinant vector comprising the PTM taught therein (paragraph [0097]). Thus, Garcia anticipates each and every limitation of instant claim 18.
Claims 1, 5, 9, and 14-18 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by WO 2020/214973 A1 (hereinafter Fisher), as evidenced by Boukis and Bruzik, 2001 (hereinafter Boukis; as cited in Applicant IDS).
With regard to claim 1, which recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule,”
Fisher discloses a nucleic acid trans-splicing molecule that can replace an exon in a targeted mammalian ocular gene carrying a defect or mutation causing an ocular disease with an exon having the naturally-occurring sequence without the defect or mutation (abstract). The nucleic acid trans-splicing molecule of Fisher is specifically disclosed to comprise three main elements: a coding sequence configured to be trans-spliced onto the target gene, which can replace one or more mutated exons in the target gene, thereby providing therapeutic benefit; a linker sequence comprising a splicing domain with a splicing enhancer and a 3’ or 5’ splice site (i.e. an intron); and a binding domain that confers specificity by tethering the trans-splicing molecule to its target gene (abstract; page 3, lines 12-31; page 11, lines 19-27). These elements are respectively considered to read on the instantly claimed one or more replacement domains, one or more intronic domains, and one or more antisense domains. Regarding the “splicing enhancer” of Fisher and the “trans-splicing enhancer” of the instant application, Boukis teaches that splicing enhancers are known to be able to effect a large increase in trans-splicing efficiency (abstract). Accordingly, those of ordinary skill in the art would be aware that splicing enhancers are known to enhance trans-splicing efficiency, as instantly claimed. Thus, it is considered that Fisher anticipates each and every limitation of instant claim 1.
With regard to claim 5, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is adjacent to RNA motifs that further increase trans-splicing efficiency,” as set forth above, Fisher discloses a nucleic acid trans-splicing molecule, said molecule comprising a coding sequence, a linker sequence comprising a splicing domain with a splicing enhancer and a 3’ or 5’ splice site, and a binding domain (abstract; page 3, lines 12-31; page 11, lines 19-27). However, the construct of Fisher may also include a spliceosome recognition motif (splice donor) configured to initiate spliceosome-mediated trans-splicing (page 3, lines 22-23) after said linker sequence (which reads on the instantly claimed intronic sequence and comprises the trans-splicing enhancer sequence as set forth above). Accordingly, Fisher anticipates each and every limitation of instant claim 5.
With regard to claim 9, which recites “the composition of claim 1, further comprising a 3’ untranslated region that increases trans-splicing efficiency,” as set forth above, Fisher discloses the composition of instant claim 1. Fisher further discloses that the nucleic acid trans-splicing molecule taught therein comprises a 3’ UTR sequence (page 36, lines 16-17). Thus, Fisher anticipates each and every limitation of instant claim 9.
With regard to claim 14, which recites “the trans-splicing nucleic acid [of the composition of claim 1] is RNA, DNA, a DNA/RNA hybrid, a nucleic acid analog, a chemically-modified nucleic acid, or a chimera composed of two or more nucleic acids or nucleic acid analogs,” as set forth above, Fisher anticipates the trans-splicing nucleic acid of instant claim 1. Fisher further discloses that the nucleic acid molecules taught therein consist of DNA, RNA, or DNA/RNA hybrid molecules (page 36, line 31-page 37, line 2), as instantly claimed. Thus, Fisher anticipates each and every limitation of instant claim 14.
With regard to claim 15, which recites “the trans-splicing nucleic acid [of the composition of claim 1] further comprises a heterologous promoter,” as set forth above, Fisher anticipates the trans-splicing nucleic acid of instant claim 1. Fisher further discloses that the composition taught therein may be packaged into an rAAV vector that further comprises a promoter (that may be either constitutive or inducible) to express the selected transgene in the desired target cell (page 40, lines 14-29). Fisher explicitly discloses that the promoter may be a native promoter or a non-native promoter such as a rod opsin promoter, a red-green opsin promoter, a rhodopsin promoter, or another promoter (page 40, line 30-page 41, line 10). Given that Fisher explicitly discloses that the promoter may be a native promoter or a species other than a native promoter, it is considered that Fisher discloses each and every limitation of instant claim 15.
With regard to claims 16 and 17, which respectively recite “a vector comprising or encoding the composition of claim 1,” wherein “the vector is selected from the group consisting of: adeno-associated virus, retrovirus, lentivirus, adenovirus, nanoparticle, micelle, liposome, lipoplex, polymersome, polyplex, and dendrimer,” as set forth above, Fisher anticipates the trans-splicing nucleic acid of instant claim 1. Fisher further discloses that the nucleic acid molecules taught therein may be delivered to target cells in need of treatment by means of an adeno-associated virus vector (page 38, lines 4-12). Thus, Fisher anticipates each and every limitation of instant claims 16 and 17.
With regard to claim 18, which recites “a cell comprising the vector of claim 16,” as set forth above, Fisher anticipates the vector of claim 16. Fisher further discloses that the adeno-associated viral vectors carrying the trans-splicing nucleic acid molecules taught therein may be delivered to target cells, thereby generating a cell comprising said vector (page 13, lines 17-28). Thus, Fisher anticipates each and every limitation of instant claim 18.
Claims 1, 6, 7, and 14 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by WO 2014/011050 A1 (hereinafter De Boer).
With regard to claim 1, which recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule,”
De Boer discloses the use of stabilized artificial RNA molecules for trans-splicing reactions to replace mutated exons with corrected exons for purposes of treating genetic diseases (abstract). These molecules are depicted at Figure 1 of De Boer and include terminal base pairing domains flanking an exon, which is itself flanked by an intronic splicing enhancer that enhances trans-splicing efficiency (page 4, lines 16-17), a branch point, a polypyrimidine tract, and a 3’ splice site at the 5’ end and a 5’ splice site and an intronic splicing enhancer at the 3’ end. The exon of De Boer is explicitly envisioned for replacement of a mutated exon to treat genetic disorders or diseases such as Mucopolysaccharidosis, Muscular Dystrophy, Spinal Muscular Atrophy, and others (page 3, lines 2-28). Thus, it is considered that the exon of De Boer reads on (a). Furthermore, the sequence flanking said exon at the 5’ end is considered to read on (b), as said sequence comprises canonical intronic features such as a branch point, a polypyrimidine tract, and a 3’ splice site in addition to the trans-splicing enhancer sequence of an intronic splicing enhancer (page 4, lines 16-17; Figure 1). Finally, the terminal base pairing domains are disclosed to base-pair with parts of the introns that surround the exon that will be replaced (page 1, lines 18-21; page 4, lines 10-12) and are therefore considered to read on (c). Thus, it is considered that De Boer discloses each and every limitation of instant claim 1.
With regard to claim 6, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 3’ splice site of the trans-splicing nucleic acid,” as set forth above, De Boer anticipates the molecule of instant claim 1, as depicted at Figure 1 therein, which includes the intronic splicing enhancer directly adjacent to the branch point and the polypyrimidine tract, which themselves are directly adjacent to the 3’ splice site. Furthermore, De Boer discloses that the branch point may comprise sequences such as SEQ ID NO: 2 (10 nucleotides in length) or SEQ ID NO: 3 (5 nucleotides in length), among others (page 4, lines 20-22). The polypyrimidine tract is disclosed to have the consensus sequence of SEQ ID NO: 4 (19 nucleotides in length) or SEQ ID NO: 5 (10 nucleotides in length), or another sequence (page 4, lines 22-25). Per Figure 1 of De Boer, these sequences are the only sequences that separate the intronic splicing enhancer that increases trans-splicing efficiency from the 3’ splice site. When considering the disclosed sequences of De Boer, it is clear that the intronic splicing enhancer that increases trans-splicing efficiency is less than 300 bases from the 3’ splice site of the same trans-splicing nucleic acid, as summing the lengths of the disclosed sequences is markedly less than 300 bases. Notably, while De Boer discloses that there may be a spacer sequence between the base pairing region and the neighboring element (page 4, lines 15-16), no such spacer sequence is disclosed between any of the other construct elements. Thus, it is considered that De Boer discloses each and every limitation of instant claim 6.
With regard to claim 7, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 5’ splice site of the trans-splicing nucleic acid,” as set forth above, De Boer anticipates the molecule of instant claim 1, as depicted at Figure 1 therein, which includes the intronic splicing enhancer directly adjacent to the 5’ splice site. This direct juxtaposition requires that the intronic splicing enhancer sequence that increases trans-splicing efficiency is less than 300 bases from the 5’ splice site of the therapeutic molecule taught therein (see Figure 1). Thus, it is considered that De Boer discloses each and every limitation of instant claim 7.
With regard to claim 14, which recites “the trans-splicing nucleic acid [of the composition of claim 1] is RNA, DNA, a DNA/RNA hybrid, a nucleic acid analog, a chemically-modified nucleic acid, or a chimera composed of two or more nucleic acids or nucleic acid analogs,” as set forth above, De Boer anticipates the trans-splicing nucleic acid of instant claim 1, as depicted at Figure 1 therein. De Boer further discloses that the trans-splicing molecules taught therein may be delivered as DNA molecules, which are subsequently transcribed into trans-splicing RNA molecules (page 2, lines 12-13). De Boer also discloses that the nucleic acid molecule taught therein is preferably an artificial RNA stabilized to improve its survival in the body and in cells, for example by comprising 2’-O-Me or 2’-F modified RNA nucleotides or LNAs (page 5, line 30-page 6, line 3). Thus, it is considered that De Boer discloses each and every limitation of instant claim 14.
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.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0245220 A1 (hereinafter Garcia), as evidenced by Furuyama and Bruzik, 2002 (hereinafter Furuyama), as applied to claim 1 above, and further in view of Mansfield et al., 2003 (hereinafter Mansfield), Herai and Yamagishi, 2009 (hereinafter Herai), and Hinnebusch et al., 2016 (hereinafter Hinnebusch).
The disclosure of Garcia is described above and applied as before (see section Claim Rejections - 35 USC § 102). However, this disclosure does not teach the 3’ or 5’ UTRs of instant claims 9 and 10.
With regard to claims 9 and 10, which respectively recite “the composition of claim 1, further comprising a 3’ untranslated region…” or “…further comprising a 5’ untranslated region that increases trans-splicing efficiency,” as set forth above, Garcia discloses the composition of instant claim 1. While Garcia discloses that the compositions taught therein preserve regulatory sequences in the 5’ and 3’ UTRs (paragraph [0011]), Mansfield discloses therapeutic trans-splicing reactions targeting both the 5’ and 3’ ends of mRNA (abstract), wherein 3’ replacement constructs comprise a 3’ UTR to effectively target that region, resulting in acquisition of the native 5’ UTR and replacement of the 3’ UTR (page 1295, column 2, paragraph 1). As disclosed in Herai, trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement 3’ UTRs (as disclosed in Mansfield) that increase trans-splicing efficiency, as instantly claimed.
Mansfield further discloses that the 5’ region of the replacement constructs can be modified to increase translation of the therapeutic construct inserted by said constructs (page 1295, column 2, paragraph 1). As is known to those of ordinary skill in the art and reviewed in Hinnebusch, the 5’ UTR is critical for ribosome recruitment to the mRNA and start codon choice and plays a major role in the control of translation efficiency and shaping the cellular proteome (abstract), thereby establishing that the 5’ UTR is critical for improving translation/expression. Furthermore, as set forth above, Herai discloses that trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement 5’ UTRs (as disclosed in Mansfield and Hinnebusch) that increase trans-splicing efficiency, as instantly claimed.
Given that Garcia discloses the composition of instant claim 1 (as set forth above, see section Claim Rejections - 35 USC § 102), that Mansfield discloses replacement of either the 3’ and 5’ UTR via trans-splicing, that Hinnebusch discloses that the 5’ UTR is critical for translation efficiency, and that Herai discloses that both the 5’ and 3’ UTRs have been linked to trans-splicing events, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Garcia such that the native 5’ and 3’ UTRs are not preserved by introducing replacement 5’ and 3’ UTRs as per Mansfield, thereby influencing trans-splicing events (as disclosed in Herai) and improving translation of the therapeutic construct therein (as disclosed in Hinnebusch). One of ordinary skill in the art would have been motivated to practice routine experimentation to optimize the 5’ and 3’ UTRs to optimize the trans-splicing reaction and expression of the therapeutic construct therein based on these disclosures. Based on these modifications, one of ordinary skill in the art would reasonably predict that replacing native 5’ and 3’ UTRs via trans-splicing (as per Mansfield) with such optimized sequences would predictably replace the native 5’ and 3’ UTRs via trans-splicing at a higher efficiency, as well as more strongly expressing the therapeutic construct therein. One would have been motivated to make such a modification in order to receive the expected benefit of facilitating robust trans-splicing reactions resulting in robust expression of the gene of interest.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0245220 A1 (hereinafter Garcia), as evidenced by Furuyama and Bruzik, 2002 (hereinafter Furuyama), as applied to claim 1 above, and further in view of Tornabene et al., 2019 (hereinafter Tornabene) and Loeb et al., 1999 (hereinafter Loeb).
The disclosure of Garcia is described above and applied as before (see section Claim Rejections - 35 USC § 102). However, this disclosure does not teach the gene expression-enhancing element of instant claims 11 and 12.
With regard to claims 11 and 12, which respectively recite “the one or more replacement domains [of the composition of claim 1] each comprises a gene expression-enhancing element,” such as “a sequence derived or isolated from the group consisting of: Woodchuck Hepatitis Virus (WHV) Posttranscriptional Regulatory Element (WPRE), triplex from MALAT1, the PRE of Hepatitis B virus (HPRE), and an iron response element,” as set forth above, Garcia discloses the composition of instant claim 1. Garcia further discloses that the trans-splicing cassettes taught therein were produced by subcloning the sequences into a plasmid comprising WPRE (paragraph [0154]), detected via PCR (paragraph [0158]). Thus, while it is considered that Garcia discloses trans-splicing cassettes comprising WPRE (paragraph [0161]), Garcia does not explicitly disclose that said WPRE is a component of the one or more replacement domains taught therein (merely that the trans-splicing nucleic acid comprises a WPRE) or that WPRE enhances gene expression. This deficiency is cured by Tornabene, which discloses inclusion of WPRE to increase transgene expression in trans-splicing constructs (abstract; page 4, column 1, paragraph 1).
Furthermore, Loeb discloses that the woodchuck hepatitis virus posttranscriptional regulatory element (WPRE) is an effective tool for increasing the long-term expression of transgenes in gene therapy when located in cis with the transgene of interest (abstract). This increase in long-term expression improves the prospects for generating and maintaining therapeutic levels of transgene expression using available gene delivery technologies (page 2295; column 1, paragraph 1). Thus, it is considered that Tornabene and Loeb disclose and/or motivate each and every additional limitation of instant claims 11 and 12.
Given that Garcia discloses the composition of instant claim 1 (as set forth above, see section Claim Rejections - 35 USC § 102), wherein said composition further comprises a WPRE at an unspecified position, and that Tornabene and Loeb both disclose that inclusion of the WPRE in cis with the transgene of interest (i.e. the replacement domain of the instant composition) increases long-term expression of said transgene, thereby improving therapeutic outcomes, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the trans-splicing molecule of Garcia to further comprise a WPRE element in the coding sequence configured to be trans-spliced onto the target gene (i.e. the exonic replacement domain) to predictably enhance therapeutic expression of the transgene coding sequence. One would have been motivated to make such a modification in order to receive the expected benefit of enhancing proper therapeutic expression of the transgene coding sequence.
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.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 7, 9, 10, 11, and 13 of U.S. Patent No. 12,152,239 B2 (as cited in Applicant IDS) in view of US 2012/0245220 A1 (hereinafter Garcia), WO 2014/011050 A1 (hereinafter De Boer), Tornabene et al., 2019 (hereinafter Tornabene), and Loeb et al., 1999 (hereinafter Loeb), as evidenced by Furuyama and Bruzik, 2002 (hereinafter Furuyama).
MPEP 804 II B 1 states:
The specification can be used as a dictionary to learn the meaning of a term in the patent claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)… Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970).
The following rejections are in view of the decision of the Court of Appeals for the Federal Circuit in Pfizer Inc, v Teva pharmaceuticals USA Inc., 86 USPQ2d 1001, at page 1008 (March 2008), which indicates that there is no patentable distinction between claims to a product and a method of using that product disclosed in the specification of the application and that the preclusion of such a double patenting rejection under 35 USC 121 does not apply where the present application is other than a divisional application of the patent application containing such patentably indistinct claims.
Patented claim 1 is drawn to a method of delivering an exonic sequence to a cell, said method comprising bringing the cell in contact with a composition comprising an engineered trans-splicing nucleic acid, said nucleic acid comprising an exonic sequence, an intronic domain, and an antisense domain, wherein said antisense domain is complementary to a target RNA molecule in the cell (also recited at patented claim 13).
In comparison, instant claim 1 recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule.”
Thus, patented claim 1 reads on each and every limitation of instant claim 1, with the exception of a trans-splicing enhancer sequence in the one or more intronic domains claimed therein. This deficiency is cured by Garcia. As set forth above, Garcia discloses methods and compositions for generating novel nucleic acid molecules through targeted splicesosome mediated simple or double trans-splicing, said compositions including pre-trans-splicing molecules (PTM) designed to interact with a target precursor messenger RNA molecule for purposes of mediating a simple or double trans-splicing reaction resulting in the generation of a novel chimeric RNA molecule via the ExChange approach (abstract; paragraphs [0013], [0014], and [0075]). These molecules utilized in the ExChange approach comprise a replacing exon (which reads on (a)), flanked by artificial intronic sequences with intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) (which reads on (b)), which are connected to antisense sequences designed to anneal the target mRNA (which reads on (c)) (paragraphs [0019], [0020], [0073], [0091], and [0143]; Figure 3). The replacing exon of Garcia is explicitly disclosed to correct Duchenne Muscular Dystrophy genetic defects (paragraphs [0002] and [0003]). Thus, Garcia and patent ‘239 collectively anticipate each and every limitation of instant claim 1.
Patented claim 2 further limits the method of claim 1, reciting “wherein the composition comprises a vector comprising the engineered nucleic acid encoding the RNA trans-splicing nucleic acid.” Patented claim 11 further limits said vector to an adeno-associated virus, retrovirus, lentivirus, adenovirus, nanoparticle, micelle, liposome, lipolex, polymersome, polyplex, and dendrimer. In comparison, instant claims 16 and 17 are also drawn to a vector such as an adeno-associated virus, retrovirus, lentivirus, adenovirus, nanoparticle, micelle, liposome, lipolex, polymersome, polyplex, and dendrimer, wherein said vector comprises the instantly claimed composition. Thus, patented claim 2 and instant claims 16 and 17 are not patentably distinct.
Patented claim 7 further limits the engineered nucleic acid claimed therein to nucleic acid species such as RNA, DNA, a DNA/RNA hybrid, a nucleic acid analog, or a chemically-modified nucleic acid, as is also recited at instant claim 14. Thus, patented claim 7 and instant claim 14 are not patentably distinct.
Patented claims 9 and 10 further limit the engineered nucleic acid claimed therein to further comprise a 5’ or a 3’ untranslated region, respectively, as is also recited and instant claims 9 and 10. Thus, patented claims 9 and 10 are not patentably distinct from instant claims 9 and 10.
Regarding the remainder of the instant claims, the various secondary references set forth above collectively disclose each and every limitation thereof.
With regard to claim 2, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of adenine (A), uracil (U), cytosine (C) and guanine (G);
X5 is selected from the group consisting of adenine (A), cytosine (C), uracil (U) and guanine (G); and
X6 is selected from the group consisting of adenine (A), uracil (U) and guanine (G),” as set forth above, Garcia and patent ‘239 collectively disclose PTMs that anticipate instant claim 1. Garcia further discloses that the PTM molecules taught therein comprise intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) sequences in the introns flanking the therapeutic exon taught therein and set forth above (Figure 3; paragraphs [0019] and [0020]). These ISE and DISE sequences respectively correspond to SEQ ID NOs: 26 and 27 (paragraphs [0072] and [0073]), which respectively comprise 5’-GGGAAG-3’ and 5’-ATGGGT-3’, both of which read on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 2.
With regard to claim 3, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of adenine (A), uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and patent ‘239 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 3.
With regard to claim 4, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and patent ‘239 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 4.
With regard to claim 5, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is adjacent to RNA motifs that further increase trans-splicing efficiency,” as set forth above, Garcia and patent ‘239 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the intronic sequences taught therein comprise a strong conserved yeast branch point sequence, a polypyrimidine tract, a 3’ acceptor site, and a 5’ donor site (paragraphs [0015-0018] and [0069]; Figures 1 and 2). These sequences are known to be involved in splicing and thus are considered to read on the instantly claimed “RNA motifs that further increase trans-splicing efficiency.” Thus, Garcia anticipates each and every additional limitation of instant claim 5.
With regard to claim 6, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 3’ splice site of the trans-splicing nucleic acid,” De Boer also discloses trans-splicing molecules, as depicted at Figure 1 therein, which includes the intronic splicing enhancer directly adjacent to the branch point and the polypyrimidine tract, which themselves are directly adjacent to the 3’ splice site. Furthermore, De Boer discloses that the branch point may comprise sequences such as SEQ ID NO: 2 (10 nucleotides in length) or SEQ ID NO: 3 (5 nucleotides in length), among others (page 4, lines 20-22). The polypyrimidine tract is disclosed to have the consensus sequence of SEQ ID NO: 4 (19 nucleotides in length) or SEQ ID NO: 5 (10 nucleotides in length), or another sequence (page 4, lines 22-25). Per Figure 1 of De Boer, these sequences are the only sequences that separate the intronic splicing enhancer that increases trans-splicing efficiency from the 3’ splice site. When considering the disclosed sequences of De Boer, it is clear that the intronic splicing enhancer that increases trans-splicing efficiency is less than 300 bases from the 3’ splice site of the same trans-splicing nucleic acid, as summing the lengths of the disclosed sequences is markedly less than 300 bases. Notably, while De Boer discloses that there may be a spacer sequence between the base pairing region and the neighboring element (page 4, lines 15-16), no such spacer sequence is disclosed between any of the other construct elements. Thus, it is considered that De Boer discloses each and every additional limitation of instant claim 6.
With regard to claim 7, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 5’ splice site of the trans-splicing nucleic acid,” as set forth above, Garcia and patent ‘239 collectively disclose PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the spacer separating the 5’ splice donor site and the 3’ end target binding domain comprises between 10 and 100 nucleotides and comprises the DISE sequence (i.e. SEQ ID NO: 27, which is 24 nucleotides in length) (paragraph [0091]). Given that the spacer separating the 5’ splice donor site and the 3’ target binding domain is disclosed to be between 10 and 100 nucleotides and further that it comprises the DISE sequence, the DISE sequence must be located less than 300 bases from a 5’ splice site, as instantly claimed. Thus, it is considered that Garcia discloses each and every additional limitation of instant claim 7.
With regard to claim 8, which recites “each of the one or more intronic domains [of the composition of claim 1] comprises 2 or more trans-splicing enhancer sequences,” as set forth above, Garcia and patent ‘239 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 26 comprises 5’-GGGAAG-3’ and 5’-GAGGGA-3’, both of which read on the trans-splicing enhancer sequences recited at instant claim 2. Furthermore, SEQ ID NO: 27 comprises 5’-ATGGGT-3’ and 5’-GGGTTG-3’, both of which read on the trans-splicing enhancer sequences recited at instant claims 2 and 3. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process. Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 8.
With regard to claims 11 and 12, which respectively recite “the one or more replacement domains [of the composition of claim 1] each comprises a gene expression-enhancing element,” such as “a sequence derived or isolated from the group consisting of: Woodchuck Hepatitis Virus (WHV) Posttranscriptional Regulatory Element (WPRE), triplex from MALAT1, the PRE of Hepatitis B virus (HPRE), and an iron response element,” as set forth above, Garcia and patent ‘239 collectively disclose the composition of instant claim 1. Garcia further discloses that the trans-splicing cassettes taught therein were produced by subcloning the sequences into a plasmid comprising WPRE (paragraph [0154]), detected via PCR (paragraph [0158]). Thus, while it is considered that Garcia discloses trans-splicing cassettes comprising WPRE (paragraph [0161]), Garcia does not explicitly disclose that said WPRE is a component of the one or more replacement domains taught therein (merely that the trans-splicing nucleic acid comprises a WPRE) or that WPRE enhances gene expression. This deficiency is cured by Tornabene, which discloses inclusion of WPRE to increase transgene expression in trans-splicing constructs (abstract; page 4, column 1, paragraph 1).
Furthermore, Loeb discloses that the woodchuck hepatitis virus posttranscriptional regulatory element (WPRE) is an effective tool for increasing the long-term expression of transgenes in gene therapy when located in cis with the transgene of interest (abstract). This increase in long-term expression improves the prospects for generating and maintaining therapeutic levels of transgene expression using available gene delivery technologies (page 2295; column 1, paragraph 1). Thus, it is considered that Tornabene and Loeb disclose and/or motivate each and every additional limitation of instant claims 11 and 12.
With regard to claim 13, which recites “the composition of claim 1, further comprising an RNA-binding protein that strengthens the interaction between the trans-splicing nucleic acid and the target RNA molecule and increases trans-splicing efficiency,” as set forth above, Garcia and patent ‘239 collectively anticipate the composition of instant claim 1. Garcia further discloses that the compositions taught therein may include splicing enhancers such as transacting splicing factors, including SR proteins, which have been shown to interact with exonic splicing enhancers and modulate splicing (paragraph [0072]). As taught in Furuyama and known to those of ordinary skill in the art, SR proteins are RNA-binding proteins (abstract). Thus, it is considered that Garcia anticipates each and every additional limitation of instant claim 13.
With regard to claim 15, which recites “the trans-splicing nucleic acid [of the composition of claim 1] further comprises a heterologous promoter,” as set forth above, Garcia and patent ‘239 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the constructs taught therein may comprise constitutive promoters such as the CMV promoter, the SV40 early promoter region, or the human gonadotropin-P promoter, amongst others (paragraph [0094]), all of which read on the instantly claimed “heterologous promoter.” Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 15.
With regard to claim 18, which recites “a cell comprising the vector of claim 16,” as set forth above, patent ‘239 anticipates the vector of claim 16, while Garcia and patent ‘239 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses cells comprising the recombinant vector comprising the PTM taught therein (paragraph [0097]). Thus, Garcia anticipates each and every additional limitation of instant claim 18.
Given that patent ‘239 recites each and every component of the instantly claimed composition, with the exception of trans-splicing enhancer sequences in the intronic domain(s) claimed therein, that Garcia and DeBoer also discloses a nucleic acid trans-splicing molecule, wherein said molecule comprises a domain that reads on the instantly claimed intronic domain(s) comprising at least one trans-splicing enhancer sequence, and that Tornabene and Loeb disclose that inclusion of the WPRE enhances transgene expression, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of patent ‘239 such that the intronic domain(s) claimed therein further comprise at least one trans-splicing enhancer sequence to predictably enhance trans-splicing efficiency, as well as to supply the elements taught by the prior art and set forth above (i.e. a WPRE) to predictably enhance expression of the transgene delivered via the system. One would have been motivated to make such a modification in order to receive the expected benefit of enhancing trans-splicing efficiency and increasing transgene expression.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 32, 34-38, 40-44, 46, and 48-51 of copending Application No. 18/189,896 (corresponds to US 2023/0340469 A1; as cited in Applicant IDS) in view of US 2012/0245220 A1 (hereinafter Garcia), WO 2014/011050 A1 (hereinafter De Boer), Tornabene et al., 2019 (hereinafter Tornabene), and Loeb et al., 1999 (hereinafter Loeb), as evidenced by Furuyama and Bruzik, 2002 (hereinafter Furuyama).
MPEP 804 II B 1 states:
The specification can be used as a dictionary to learn the meaning of a term in the patent claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)… Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970).
The following rejections are in view of the decision of the Court of Appeals for the Federal Circuit in Pfizer Inc, v Teva pharmaceuticals USA Inc., 86 USPQ2d 1001, at page 1008 (March 2008), which indicates that there is no patentable distinction between claims to a product and a method of using that product disclosed in the specification of the application and that the preclusion of such a double patenting rejection under 35 USC 121 does not apply where the present application is other than a divisional application of the patent application containing such patentably indistinct claims.
Claims 32 and 46 of copending application ‘896 are both drawn to a trans-splicing nucleic acid, said trans-splicing nucleic acid comprising one or more replacement domains that encode a therapeutic sequence, one or more intronic domains, wherein the one or more intronic domains comprise one or more RNA-binding protein sites configured to promote tissue-specific splicing patterns, and one or more antisense domains that promote binding to a target RNA molecule. Claim 38 (and dependent claim 44) of copending application ‘896 is drawn to a method of using said trans-splicing nucleic acid to modify a target RNA in a cell.
In comparison, instant claim 1 recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule.”
Thus, copending claims 32, 38, and 46 read on each and every limitation of the construct of instant claim 1, with the exception of a trans-splicing enhancer sequence in the one or more intronic domains claimed therein. This deficiency is cured by Garcia. As set forth above, Garcia discloses methods and compositions for generating novel nucleic acid molecules through targeted splicesosome mediated simple or double trans-splicing, said compositions including pre-trans-splicing molecules (PTM) designed to interact with a target precursor messenger RNA molecule for purposes of mediating a simple or double trans-splicing reaction resulting in the generation of a novel chimeric RNA molecule via the ExChange approach (abstract; paragraphs [0013], [0014], and [0075]). These molecules utilized in the ExChange approach comprise a replacing exon (which reads on (a)), flanked by artificial intronic sequences with intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) (which reads on (b)), which are connected to antisense sequences designed to anneal the target mRNA (which reads on (c)) (paragraphs [0019], [0020], [0073], [0091], and [0143]; Figure 3). The replacing exon of Garcia is explicitly disclosed to correct Duchenne Muscular Dystrophy genetic defects (paragraphs [0002] and [0003]). Thus, Garcia and application ‘896 collectively anticipate each and every limitation of instant claim 1.
Copending claims 34, 35, 40, 41, 48, and 49 respectively recite the addition of 3’ and 5’ UTRs to the constructs (and constructs of the methods) claimed therein. Instant claims 9 and 10 also recite the addition of 3’ and 5’ UTRs to the instantly claimed construct. Thus, copending claims 34, 35, 40, 41, 48, and 49 are not patentably distinct from instant claims 9 and 10.
Copending claims 36, 42, and 50 are all collectively drawn to further limitations of the trans-splicing nucleic acid claimed therein (or method of using the same claimed therein), wherein said trans-splicing nucleic acid further comprises an RNA-binding protein that strengthens the interaction among the trans-splicing nucleic acid molecule and the target RNA molecule, thereby increasing a trans-splicing efficiency of the trans-splicing nucleic acid to the target RNA, as is also recited at instant claim 13. Thus, copending claims 36, 42, and 50 are not patentably distinct from instant claim 13.
Finally, copending claims 37, 43, and 51 are all collectively drawn to further limitations of the trans-splicing nucleic acid claimed therein (or method of using the same claimed therein), wherein the trans-splicing nucleic acid comprises RNA, DNA, a DNA/RNA hybrid, a nucleic acid analog, a chemically-modified nucleic acid, or a chimera composed of two or more nucleic acids or nucleic acid analogs, as is also recited at instant claim 14. Thus, copending claims 37, 43, and 51 are not patentably distinct from instant claim 14.
Regarding the remainder of the instant claims, the various secondary references set forth above collectively disclose each and every limitation thereof.
With regard to claim 2, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of adenine (A), uracil (U), cytosine (C) and guanine (G);
X5 is selected from the group consisting of adenine (A), cytosine (C), uracil (U) and guanine (G); and
X6 is selected from the group consisting of adenine (A), uracil (U) and guanine (G),” as set forth above, Garcia and application ‘896 collectively disclose PTMs that anticipate instant claim 1. Garcia further discloses that the PTM molecules taught therein comprise intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) sequences in the introns flanking the therapeutic exon taught therein and set forth above (Figure 3; paragraphs [0019] and [0020]). These ISE and DISE sequences respectively correspond to SEQ ID NOs: 26 and 27 (paragraphs [0072] and [0073]), which respectively comprise 5’-GGGAAG-3’ and 5’-ATGGGT-3’, both of which read on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 2.
With regard to claim 3, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of adenine (A), uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘896 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 3.
With regard to claim 4, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘896 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 4.
With regard to claim 5, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is adjacent to RNA motifs that further increase trans-splicing efficiency,” as set forth above, Garcia and application ‘896 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the intronic sequences taught therein comprise a strong conserved yeast branch point sequence, a polypyrimidine tract, a 3’ acceptor site, and a 5’ donor site (paragraphs [0015-0018] and [0069]; Figures 1 and 2). These sequences are known to be involved in splicing and thus are considered to read on the instantly claimed “RNA motifs that further increase trans-splicing efficiency.” Thus, Garcia anticipates each and every additional limitation of instant claim 5.
With regard to claim 6, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 3’ splice site of the trans-splicing nucleic acid,” De Boer also discloses trans-splicing molecules, as depicted at Figure 1 therein, which includes the intronic splicing enhancer directly adjacent to the branch point and the polypyrimidine tract, which themselves are directly adjacent to the 3’ splice site. Furthermore, De Boer discloses that the branch point may comprise sequences such as SEQ ID NO: 2 (10 nucleotides in length) or SEQ ID NO: 3 (5 nucleotides in length), among others (page 4, lines 20-22). The polypyrimidine tract is disclosed to have the consensus sequence of SEQ ID NO: 4 (19 nucleotides in length) or SEQ ID NO: 5 (10 nucleotides in length), or another sequence (page 4, lines 22-25). Per Figure 1 of De Boer, these sequences are the only sequences that separate the intronic splicing enhancer that increases trans-splicing efficiency from the 3’ splice site. When considering the disclosed sequences of De Boer, it is clear that the intronic splicing enhancer that increases trans-splicing efficiency is less than 300 bases from the 3’ splice site of the same trans-splicing nucleic acid, as summing the lengths of the disclosed sequences is markedly less than 300 bases. Notably, while De Boer discloses that there may be a spacer sequence between the base pairing region and the neighboring element (page 4, lines 15-16), no such spacer sequence is disclosed between any of the other construct elements. Thus, it is considered that De Boer discloses each and every additional limitation of instant claim 6.
With regard to claim 7, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 5’ splice site of the trans-splicing nucleic acid,” as set forth above, Garcia and application ‘896 collectively disclose PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the spacer separating the 5’ splice donor site and the 3’ end target binding domain comprises between 10 and 100 nucleotides and comprises the DISE sequence (i.e. SEQ ID NO: 27, which is 24 nucleotides in length) (paragraph [0091]). Given that the spacer separating the 5’ splice donor site and the 3’ target binding domain is disclosed to be between 10 and 100 nucleotides and further that it comprises the DISE sequence, the DISE sequence must be located less than 300 bases from a 5’ splice site, as instantly claimed. Thus, it is considered that Garcia discloses each and every additional limitation of instant claim 7.
With regard to claim 8, which recites “each of the one or more intronic domains [of the composition of claim 1] comprises 2 or more trans-splicing enhancer sequences,” as set forth above, Garcia and application ‘896 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 26 comprises 5’-GGGAAG-3’ and 5’-GAGGGA-3’, both of which read on the trans-splicing enhancer sequences recited at instant claim 2. Furthermore, SEQ ID NO: 27 comprises 5’-ATGGGT-3’ and 5’-GGGTTG-3’, both of which read on the trans-splicing enhancer sequences recited at instant claims 2 and 3. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process. Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 8.
With regard to claims 11 and 12, which respectively recite “the one or more replacement domains [of the composition of claim 1] each comprises a gene expression-enhancing element,” such as “a sequence derived or isolated from the group consisting of: Woodchuck Hepatitis Virus (WHV) Posttranscriptional Regulatory Element (WPRE), triplex from MALAT1, the PRE of Hepatitis B virus (HPRE), and an iron response element,” as set forth above, Garcia and application ‘896 collectively disclose the composition of instant claim 1. Garcia further discloses that the trans-splicing cassettes taught therein were produced by subcloning the sequences into a plasmid comprising WPRE (paragraph [0154]), detected via PCR (paragraph [0158]). Thus, while it is considered that Garcia discloses trans-splicing cassettes comprising WPRE (paragraph [0161]), Garcia does not explicitly disclose that said WPRE is a component of the one or more replacement domains taught therein (merely that the trans-splicing nucleic acid comprises a WPRE) or that WPRE enhances gene expression. This deficiency is cured by Tornabene, which discloses inclusion of WPRE to increase transgene expression in trans-splicing constructs (abstract; page 4, column 1, paragraph 1).
Furthermore, Loeb discloses that the woodchuck hepatitis virus posttranscriptional regulatory element (WPRE) is an effective tool for increasing the long-term expression of transgenes in gene therapy when located in cis with the transgene of interest (abstract). This increase in long-term expression improves the prospects for generating and maintaining therapeutic levels of transgene expression using available gene delivery technologies (page 2295; column 1, paragraph 1). Thus, it is considered that Tornabene and Loeb disclose and/or motivate each and every additional limitation of instant claims 11 and 12.
With regard to claim 15, which recites “the trans-splicing nucleic acid [of the composition of claim 1] further comprises a heterologous promoter,” as set forth above, Garcia and application ‘896 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the constructs taught therein may comprise constitutive promoters such as the CMV promoter, the SV40 early promoter region, or the human gonadotropin-P promoter, amongst others (paragraph [0094]), all of which read on the instantly claimed “heterologous promoter.” Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 15.
With regard to claims 16 and 17, which respectively recite “a vector comprising or encoding the composition of claim 1,” wherein “the vector is selected from the group consisting of: adeno-associated virus, retrovirus, lentivirus, adenovirus, nanoparticle, micelle, liposome, lipoplex, polymersome, polyplex, and dendrimer,” as set forth above, Garcia and application ‘896 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the nucleic acid molecules taught therein may be delivered to cells via various delivery systems, including encapsulation in liposomes or construction of a nucleic acid as part of an adeno-associated viral vector (paragraph [0096]). Thus, Garcia anticipates each and every additional limitation of instant claims 16 and 17.
With regard to claim 18, which recites “a cell comprising the vector of claim 16,” as set forth above, Garcia discloses the vector of claim 16, while Garcia and patent ‘239 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses cells comprising the recombinant vector comprising the PTM taught therein (paragraph [0097]). Thus, Garcia anticipates each and every additional limitation of instant claim 18.
Given that application ‘896 recites each and every component of the instantly claimed composition, with the exception of trans-splicing enhancer sequences in the intronic domain(s) claimed therein, that Garcia and DeBoer also discloses a nucleic acid trans-splicing molecule, wherein said molecule comprises a domain that reads on the instantly claimed intronic domain(s) comprising at least one trans-splicing enhancer sequence, and that Tornabene and Loeb disclose that inclusion of the WPRE enhances transgene expression, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of application ‘896 such that the intronic domain(s) claimed therein further comprise at least one trans-splicing enhancer sequence to predictably enhance trans-splicing efficiency, as well as to supply the elements taught by the prior art and set forth above (i.e. a WPRE) to predictably enhance expression of the transgene delivered via the system. One would have been motivated to make such a modification in order to receive the expected benefit of enhancing trans-splicing efficiency and increasing transgene expression.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/858,155 (corresponds to US 2025/0270553 A1) in view of US 2012/0245220 A1 (hereinafter Garcia), WO 2014/011050 A1 (hereinafter De Boer), WO 2020/214973 A1 (hereinafter Fisher), Tornabene et al., 2019 (hereinafter Tornabene), Mansfield et al., 2003 (hereinafter Mansfield), Herai and Yamagishi, 2009 (hereinafter Herai), Hinnebusch et al., 2016 (hereinafter Hinnebusch), and Loeb et al., 1999 (hereinafter Loeb), as evidenced by Furuyama and Bruzik, 2002 (hereinafter Furuyama).
Claim 2 of copending application ‘155 is drawn to a composition comprising a trans-splicing RNA, said RNA comprising one or more replacement domains that encode a therapeutic sequence operably linked to one or more intronic domains that promote RNA splicing of the replacement domain and one or more antisense domains that promote binding to a target RNA molecule.
In comparison, instant claim 1 recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule.”
Thus, copending claim 2 reads on each and every limitation of the construct of instant claim 1, with the exception of a trans-splicing enhancer sequence in the one or more intronic domains claimed therein. This deficiency is cured by Garcia. As set forth above, Garcia discloses methods and compositions for generating novel nucleic acid molecules through targeted splicesosome mediated simple or double trans-splicing, said compositions including pre-trans-splicing molecules (PTM) designed to interact with a target precursor messenger RNA molecule for purposes of mediating a simple or double trans-splicing reaction resulting in the generation of a novel chimeric RNA molecule via the ExChange approach (abstract; paragraphs [0013], [0014], and [0075]). These molecules utilized in the ExChange approach comprise a replacing exon (which reads on (a)), flanked by artificial intronic sequences with intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) (which reads on (b)), which are connected to antisense sequences designed to anneal the target mRNA (which reads on (c)) (paragraphs [0019], [0020], [0073], [0091], and [0143]; Figure 3). The replacing exon of Garcia is explicitly disclosed to correct Duchenne Muscular Dystrophy genetic defects (paragraphs [0002] and [0003]). Thus, Garcia and application ‘155 collectively anticipate each and every limitation of instant claim 1.
Regarding the remainder of the claims, all of the claimed elements were known in the prior art, as set forth below.
With regard to claim 2, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of adenine (A), uracil (U), cytosine (C) and guanine (G);
X5 is selected from the group consisting of adenine (A), cytosine (C), uracil (U) and guanine (G); and
X6 is selected from the group consisting of adenine (A), uracil (U) and guanine (G),” as set forth above, Garcia and application ‘155 collectively disclose PTMs that anticipate instant claim 1. Garcia further discloses that the PTM molecules taught therein comprise intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) sequences in the introns flanking the therapeutic exon taught therein and set forth above (Figure 3; paragraphs [0019] and [0020]). These ISE and DISE sequences respectively correspond to SEQ ID NOs: 26 and 27 (paragraphs [0072] and [0073]), which respectively comprise 5’-GGGAAG-3’ and 5’-ATGGGT-3’, both of which read on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 2.
With regard to claim 3, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of adenine (A), uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘155 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 3.
With regard to claim 4, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘155 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 4.
With regard to claim 5, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is adjacent to RNA motifs that further increase trans-splicing efficiency,” as set forth above, Garcia and application ‘155 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the intronic sequences taught therein comprise a strong conserved yeast branch point sequence, a polypyrimidine tract, a 3’ acceptor site, and a 5’ donor site (paragraphs [0015-0018] and [0069]; Figures 1 and 2). These sequences are known to be involved in splicing and thus are considered to read on the instantly claimed “RNA motifs that further increase trans-splicing efficiency.” Thus, Garcia anticipates each and every additional limitation of instant claim 5.
With regard to claim 6, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 3’ splice site of the trans-splicing nucleic acid,” De Boer also discloses trans-splicing molecules, as depicted at Figure 1 therein, which includes the intronic splicing enhancer directly adjacent to the branch point and the polypyrimidine tract, which themselves are directly adjacent to the 3’ splice site. Furthermore, De Boer discloses that the branch point may comprise sequences such as SEQ ID NO: 2 (10 nucleotides in length) or SEQ ID NO: 3 (5 nucleotides in length), among others (page 4, lines 20-22). The polypyrimidine tract is disclosed to have the consensus sequence of SEQ ID NO: 4 (19 nucleotides in length) or SEQ ID NO: 5 (10 nucleotides in length), or another sequence (page 4, lines 22-25). Per Figure 1 of De Boer, these sequences are the only sequences that separate the intronic splicing enhancer that increases trans-splicing efficiency from the 3’ splice site. When considering the disclosed sequences of De Boer, it is clear that the intronic splicing enhancer that increases trans-splicing efficiency is less than 300 bases from the 3’ splice site of the same trans-splicing nucleic acid, as summing the lengths of the disclosed sequences is markedly less than 300 bases. Notably, while De Boer discloses that there may be a spacer sequence between the base pairing region and the neighboring element (page 4, lines 15-16), no such spacer sequence is disclosed between any of the other construct elements. Thus, it is considered that De Boer discloses each and every additional limitation of instant claim 6.
With regard to claim 7, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 5’ splice site of the trans-splicing nucleic acid,” as set forth above, Garcia and application ‘155 collectively disclose PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the spacer separating the 5’ splice donor site and the 3’ end target binding domain comprises between 10 and 100 nucleotides and comprises the DISE sequence (i.e. SEQ ID NO: 27, which is 24 nucleotides in length) (paragraph [0091]). Given that the spacer separating the 5’ splice donor site and the 3’ target binding domain is disclosed to be between 10 and 100 nucleotides and further that it comprises the DISE sequence, the DISE sequence must be located less than 300 bases from a 5’ splice site, as instantly claimed. Thus, it is considered that Garcia discloses each and every additional limitation of instant claim 7.
With regard to claim 8, which recites “each of the one or more intronic domains [of the composition of claim 1] comprises 2 or more trans-splicing enhancer sequences,” as set forth above, Garcia and application ‘155 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 26 comprises 5’-GGGAAG-3’ and 5’-GAGGGA-3’, both of which read on the trans-splicing enhancer sequences recited at instant claim 2. Furthermore, SEQ ID NO: 27 comprises 5’-ATGGGT-3’ and 5’-GGGTTG-3’, both of which read on the trans-splicing enhancer sequences recited at instant claims 2 and 3. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process. Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 8.
With regard to claim 9, which recites “the composition of claim 1, further comprising a 3’ untranslated region that increases trans-splicing efficiency,” Fisher also discloses trans-splicing nucleic acid molecules. Fisher further discloses that the nucleic acid trans-splicing molecule taught therein comprises a 3’ UTR sequence (page 36, lines 16-17). Thus, Fisher anticipates each and every additional limitation of instant claim 9.
With regard to claim 10, which recites “the composition of claim 1, further comprising a 5’ untranslated region that increases trans-splicing efficiency,” as set forth above, Garcia and application ‘155 collectively disclose the composition of instant claim 1. While Garcia discloses that the compositions taught therein preserve regulatory sequences in the 5’ and 3’ UTRs (paragraph [0011]), Mansfield discloses therapeutic trans-splicing reactions targeting both the 5’ and 3’ ends of mRNA (abstract), wherein 3’ replacement constructs comprise a 3’ UTR to effectively target that region, resulting in acquisition of the native 5’ UTR and replacement of the 3’ UTR (page 1295, column 2, paragraph 1). As disclosed in Herai, trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement UTRs (as disclosed in Mansfield) that increase trans-splicing efficiency, as instantly claimed.
Additionally, Mansfield further discloses that the 5’ region of the replacement constructs can be modified to increase translation of the therapeutic construct inserted by said constructs (page 1295, column 2, paragraph 1). As is known to those of ordinary skill in the art and reviewed in Hinnebusch, the 5’ UTR is critical for ribosome recruitment to the mRNA and start codon choice and plays a major role in the control of translation efficiency and shaping the cellular proteome (abstract), thereby establishing that the 5’ UTR is critical for improving translation/expression. Furthermore, as set forth above, Herai discloses that trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement 5’ UTRs (as disclosed in Mansfield and Hinnebusch) that increase trans-splicing efficiency, as instantly claimed.
Thus, it is considered that the cited art collectively anticipates each and every additional limitation of instant claim 10.
With regard to claims 11 and 12, which respectively recite “the one or more replacement domains [of the composition of claim 1] each comprises a gene expression-enhancing element,” such as “a sequence derived or isolated from the group consisting of: Woodchuck Hepatitis Virus (WHV) Posttranscriptional Regulatory Element (WPRE), triplex from MALAT1, the PRE of Hepatitis B virus (HPRE), and an iron response element,” as set forth above, Garcia and application ‘155 collectively disclose the composition of instant claim 1. Garcia further discloses that the trans-splicing cassettes taught therein were produced by subcloning the sequences into a plasmid comprising WPRE (paragraph [0154]), detected via PCR (paragraph [0158]). Thus, while it is considered that Garcia discloses trans-splicing cassettes comprising WPRE (paragraph [0161]), Garcia does not explicitly disclose that said WPRE is a component of the one or more replacement domains taught therein (merely that the trans-splicing nucleic acid comprises a WPRE) or that WPRE enhances gene expression. This deficiency is cured by Tornabene, which discloses inclusion of WPRE to increase transgene expression in trans-splicing constructs (abstract; page 4, column 1, paragraph 1).
Furthermore, Loeb discloses that the woodchuck hepatitis virus posttranscriptional regulatory element (WPRE) is an effective tool for increasing the long-term expression of transgenes in gene therapy when located in cis with the transgene of interest (abstract). This increase in long-term expression improves the prospects for generating and maintaining therapeutic levels of transgene expression using available gene delivery technologies (page 2295; column 1, paragraph 1). Thus, it is considered that Tornabene and Loeb disclose and/or motivate each and every additional limitation of instant claims 11 and 12.
With regard to claim 13, which recites “the composition of claim 1, further comprising an RNA-binding protein that strengthens the interaction between the trans-splicing nucleic acid and the target RNA molecule and increases trans-splicing efficiency,” as set forth above, Garcia and application ‘155 collectively anticipate the composition of instant claim 1. Garcia further discloses that the compositions taught therein may include splicing enhancers such as transacting splicing factors, including SR proteins, which have been shown to interact with exonic splicing enhancers and modulate splicing (paragraph [0072]). As taught in Furuyama and known to those of ordinary skill in the art, SR proteins are RNA-binding proteins (abstract). Thus, it is considered that Garcia anticipates each and every additional limitation of instant claim 13.
With regard to claim 14, which recites “the trans-splicing nucleic acid [of the composition of claim 1] is RNA, DNA, a DNA/RNA hybrid, a nucleic acid analog, a chemically-modified nucleic acid, or a chimera composed of two or more nucleic acids or nucleic acid analogs,” as set forth above, Garcia and application ‘155 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the nucleic acid molecules taught therein are DNA molecules transcribed into RNA molecules that perform the trans-splicing reactions disclosed therein (paragraphs [0094], [0122], [0124], [0136], and [0139]). Thus, it is considered that Garcia anticipates each and every additional limitation of instant claim 14.
With regard to claim 15, which recites “the trans-splicing nucleic acid [of the composition of claim 1] further comprises a heterologous promoter,” as set forth above, Garcia and application ‘155 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the constructs taught therein may comprise constitutive promoters such as the CMV promoter, the SV40 early promoter region, or the human gonadotropin-P promoter, amongst others (paragraph [0094]), all of which read on the instantly claimed “heterologous promoter.” Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 15.
With regard to claims 16 and 17, which respectively recite “a vector comprising or encoding the composition of claim 1,” wherein “the vector is selected from the group consisting of: adeno-associated virus, retrovirus, lentivirus, adenovirus, nanoparticle, micelle, liposome, lipoplex, polymersome, polyplex, and dendrimer,” as set forth above, Garcia and application ‘155 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the nucleic acid molecules taught therein may be delivered to cells via various delivery systems, including encapsulation in liposomes or construction of a nucleic acid as part of an adeno-associated viral vector (paragraph [0096]). Thus, Garcia anticipates each and every additional limitation of instant claims 16 and 17.
With regard to claim 18, which recites “a cell comprising the vector of claim 16,” as set forth above, Garcia anticipates the vector of claim 16. Garcia further discloses cells comprising the recombinant vector comprising the PTM taught therein (paragraph [0097]). Thus, Garcia anticipates each and every additional limitation of instant claim 18.
Given that application ‘155 recites each and every component of the instantly claimed composition, with the exception of trans-splicing enhancer sequences in the intronic domain(s) claimed therein, that Garcia, DeBoer, and Fisher also disclose a nucleic acid trans-splicing molecule, wherein said molecule comprises a domain that reads on the instantly claimed intronic domain(s) comprising at least one trans-splicing enhancer sequence and a 3’ UTR, that Herai, Mansfield, and Hinnebusch collectively disclose that the 3’ and 5’ UTRs may be replaced via trans-splicing and further that these UTR sequences are linked to trans-splicing and translation efficiency, and that Tornabene and Loeb disclose that inclusion of the WPRE enhances transgene expression, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of application ‘155 such that the intronic domain(s) claimed therein further comprise at least one trans-splicing enhancer sequence to predictably enhance trans-splicing efficiency, as well as to supply the elements taught by the prior art and set forth above (i.e. a UTR and a WPRE) to predictably enhance expression of the transgene derived via trans-splicing and delivered via the system taught therein. One would have been motivated to make such a modification in order to receive the expected benefit of enhancing trans-splicing efficiency and increasing transgene expression.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/862,406 (corresponds to US 2025/0290067 A1) in view of US 2012/0245220 A1 (hereinafter Garcia), WO 2014/011050 A1 (hereinafter De Boer), WO 2020/214973 A1 (hereinafter Fisher), Mansfield et al., 2003 (hereinafter Mansfield), Herai and Yamagishi, 2009 (hereinafter Herai), Hinnebusch et al., 2016 (hereinafter Hinnebusch), Tornabene et al., 2019 (hereinafter Tornabene), and Loeb et al., 1999 (hereinafter Loeb), as evidenced by Furuyama and Bruzik, 2002 (hereinafter Furuyama).
Claim 3 of copending application ‘406 is drawn to a composition comprising a nucleic acid comprising one or more replacement domains that encode a therapeutic sequence operably linked to one or more intronic domains that promote RNA splicing of the replacement domain and one or more antisense domains that promote binding to a target RNA molecule.
In comparison, instant claim 1 recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule.”
Thus, copending claim 3 reads on each and every limitation of the construct of instant claim 1, with the exception of a trans-splicing enhancer sequence in the one or more intronic domains claimed therein. This deficiency is cured by Garcia. As set forth above, Garcia discloses methods and compositions for generating novel nucleic acid molecules through targeted splicesosome mediated simple or double trans-splicing, said compositions including pre-trans-splicing molecules (PTM) designed to interact with a target precursor messenger RNA molecule for purposes of mediating a simple or double trans-splicing reaction resulting in the generation of a novel chimeric RNA molecule via the ExChange approach (abstract; paragraphs [0013], [0014], and [0075]). These molecules utilized in the ExChange approach comprise a replacing exon (which reads on (a)), flanked by artificial intronic sequences with intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) (which reads on (b)), which are connected to antisense sequences designed to anneal the target mRNA (which reads on (c)) (paragraphs [0019], [0020], [0073], [0091], and [0143]; Figure 3). The replacing exon of Garcia is explicitly disclosed to correct Duchenne Muscular Dystrophy genetic defects (paragraphs [0002] and [0003]). Thus, Garcia and application ‘406 collectively anticipate each and every limitation of instant claim 1.
Regarding the remainder of the claims, all of the claimed elements were known in the prior art, as set forth below.
With regard to claim 2, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of adenine (A), uracil (U), cytosine (C) and guanine (G);
X5 is selected from the group consisting of adenine (A), cytosine (C), uracil (U) and guanine (G); and
X6 is selected from the group consisting of adenine (A), uracil (U) and guanine (G),” as set forth above, Garcia and application ‘406 collectively disclose PTMs that anticipate instant claim 1. Garcia further discloses that the PTM molecules taught therein comprise intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) sequences in the introns flanking the therapeutic exon taught therein and set forth above (Figure 3; paragraphs [0019] and [0020]). These ISE and DISE sequences respectively correspond to SEQ ID NOs: 26 and 27 (paragraphs [0072] and [0073]), which respectively comprise 5’-GGGAAG-3’ and 5’-ATGGGT-3’, both of which read on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 2.
With regard to claim 3, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of adenine (A), uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘406 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 3.
With regard to claim 4, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘406 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 4.
With regard to claim 5, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is adjacent to RNA motifs that further increase trans-splicing efficiency,” as set forth above, Garcia and application ‘406 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the intronic sequences taught therein comprise a strong conserved yeast branch point sequence, a polypyrimidine tract, a 3’ acceptor site, and a 5’ donor site (paragraphs [0015-0018] and [0069]; Figures 1 and 2). These sequences are known to be involved in splicing and thus are considered to read on the instantly claimed “RNA motifs that further increase trans-splicing efficiency.” Thus, Garcia anticipates each and every additional limitation of instant claim 5.
With regard to claim 6, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 3’ splice site of the trans-splicing nucleic acid,” De Boer also discloses trans-splicing molecules, as depicted at Figure 1 therein, which includes the intronic splicing enhancer directly adjacent to the branch point and the polypyrimidine tract, which themselves are directly adjacent to the 3’ splice site. Furthermore, De Boer discloses that the branch point may comprise sequences such as SEQ ID NO: 2 (10 nucleotides in length) or SEQ ID NO: 3 (5 nucleotides in length), among others (page 4, lines 20-22). The polypyrimidine tract is disclosed to have the consensus sequence of SEQ ID NO: 4 (19 nucleotides in length) or SEQ ID NO: 5 (10 nucleotides in length), or another sequence (page 4, lines 22-25). Per Figure 1 of De Boer, these sequences are the only sequences that separate the intronic splicing enhancer that increases trans-splicing efficiency from the 3’ splice site. When considering the disclosed sequences of De Boer, it is clear that the intronic splicing enhancer that increases trans-splicing efficiency is less than 300 bases from the 3’ splice site of the same trans-splicing nucleic acid, as summing the lengths of the disclosed sequences is markedly less than 300 bases. Notably, while De Boer discloses that there may be a spacer sequence between the base pairing region and the neighboring element (page 4, lines 15-16), no such spacer sequence is disclosed between any of the other construct elements. Thus, it is considered that De Boer discloses each and every additional limitation of instant claim 6.
With regard to claim 7, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 5’ splice site of the trans-splicing nucleic acid,” as set forth above, Garcia and application ‘406 collectively disclose PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the spacer separating the 5’ splice donor site and the 3’ end target binding domain comprises between 10 and 100 nucleotides and comprises the DISE sequence (i.e. SEQ ID NO: 27, which is 24 nucleotides in length) (paragraph [0091]). Given that the spacer separating the 5’ splice donor site and the 3’ target binding domain is disclosed to be between 10 and 100 nucleotides and further that it comprises the DISE sequence, the DISE sequence must be located less than 300 bases from a 5’ splice site, as instantly claimed. Thus, it is considered that Garcia discloses each and every additional limitation of instant claim 7.
With regard to claim 8, which recites “each of the one or more intronic domains [of the composition of claim 1] comprises 2 or more trans-splicing enhancer sequences,” as set forth above, Garcia and application ‘406 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 26 comprises 5’-GGGAAG-3’ and 5’-GAGGGA-3’, both of which read on the trans-splicing enhancer sequences recited at instant claim 2. Furthermore, SEQ ID NO: 27 comprises 5’-ATGGGT-3’ and 5’-GGGTTG-3’, both of which read on the trans-splicing enhancer sequences recited at instant claims 2 and 3. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process. Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 8.
With regard to claim 9, which recites “the composition of claim 1, further comprising a 3’ untranslated region that increases trans-splicing efficiency,” Fisher also discloses trans-splicing nucleic acid molecules. Fisher further discloses that the nucleic acid trans-splicing molecule taught therein comprises a 3’ UTR sequence (page 36, lines 16-17). Thus, Fisher anticipates each and every additional limitation of instant claim 9.
With regard to claim 10, which recites “the composition of claim 1, further comprising a 5’ untranslated region that increases trans-splicing efficiency,” as set forth above, Garcia and application ‘406 collectively disclose the composition of instant claim 1. While Garcia discloses that the compositions taught therein preserve regulatory sequences in the 5’ and 3’ UTRs (paragraph [0011]), Mansfield discloses therapeutic trans-splicing reactions targeting both the 5’ and 3’ ends of mRNA (abstract), wherein 3’ replacement constructs comprise a 3’ UTR to effectively target that region, resulting in acquisition of the native 5’ UTR and replacement of the 3’ UTR (page 1295, column 2, paragraph 1). As disclosed in Herai, trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement UTRs (as disclosed in Mansfield) that increase trans-splicing efficiency, as instantly claimed.
Additionally, Mansfield further discloses that the 5’ region of the replacement constructs can be modified to increase translation of the therapeutic construct inserted by said constructs (page 1295, column 2, paragraph 1). As is known to those of ordinary skill in the art and reviewed in Hinnebusch, the 5’ UTR is critical for ribosome recruitment to the mRNA and start codon choice and plays a major role in the control of translation efficiency and shaping the cellular proteome (abstract), thereby establishing that the 5’ UTR is critical for improving translation/expression. Furthermore, as set forth above, Herai discloses that trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement 5’ UTRs (as disclosed in Mansfield and Hinnebusch) that increase trans-splicing efficiency, as instantly claimed.
Thus, it is considered that the cited art collectively anticipates each and every additional limitation of instant claim 10.
With regard to claims 11 and 12, which respectively recite “the one or more replacement domains [of the composition of claim 1] each comprises a gene expression-enhancing element,” such as “a sequence derived or isolated from the group consisting of: Woodchuck Hepatitis Virus (WHV) Posttranscriptional Regulatory Element (WPRE), triplex from MALAT1, the PRE of Hepatitis B virus (HPRE), and an iron response element,” as set forth above, Garcia and application ‘406 collectively disclose the composition of instant claim 1. Garcia further discloses that the trans-splicing cassettes taught therein were produced by subcloning the sequences into a plasmid comprising WPRE (paragraph [0154]), detected via PCR (paragraph [0158]). Thus, while it is considered that Garcia discloses trans-splicing cassettes comprising WPRE (paragraph [0161]), Garcia does not explicitly disclose that said WPRE is a component of the one or more replacement domains taught therein (merely that the trans-splicing nucleic acid comprises a WPRE) or that WPRE enhances gene expression. This deficiency is cured by Tornabene, which discloses inclusion of WPRE to increase transgene expression in trans-splicing constructs (abstract; page 4, column 1, paragraph 1).
Furthermore, Loeb discloses that the woodchuck hepatitis virus posttranscriptional regulatory element (WPRE) is an effective tool for increasing the long-term expression of transgenes in gene therapy when located in cis with the transgene of interest (abstract). This increase in long-term expression improves the prospects for generating and maintaining therapeutic levels of transgene expression using available gene delivery technologies (page 2295; column 1, paragraph 1). Thus, it is considered that Tornabene and Loeb disclose and/or motivate each and every additional limitation of instant claims 11 and 12.
With regard to claim 13, which recites “the composition of claim 1, further comprising an RNA-binding protein that strengthens the interaction between the trans-splicing nucleic acid and the target RNA molecule and increases trans-splicing efficiency,” as set forth above, Garcia and application ‘406 collectively anticipate the composition of instant claim 1. Garcia further discloses that the compositions taught therein may include splicing enhancers such as transacting splicing factors, including SR proteins, which have been shown to interact with exonic splicing enhancers and modulate splicing (paragraph [0072]). As taught in Furuyama and known to those of ordinary skill in the art, SR proteins are RNA-binding proteins (abstract). Thus, it is considered that Garcia anticipates each and every additional limitation of instant claim 13.
With regard to claim 14, which recites “the trans-splicing nucleic acid [of the composition of claim 1] is RNA, DNA, a DNA/RNA hybrid, a nucleic acid analog, a chemically-modified nucleic acid, or a chimera composed of two or more nucleic acids or nucleic acid analogs,” as set forth above, Garcia and application ‘406 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the nucleic acid molecules taught therein are DNA molecules transcribed into RNA molecules that perform the trans-splicing reactions disclosed therein (paragraphs [0094], [0122], [0124], [0136], and [0139]). Thus, it is considered that Garcia anticipates each and every additional limitation of instant claim 14.
With regard to claim 15, which recites “the trans-splicing nucleic acid [of the composition of claim 1] further comprises a heterologous promoter,” as set forth above, Garcia and application ‘406 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the constructs taught therein may comprise constitutive promoters such as the CMV promoter, the SV40 early promoter region, or the human gonadotropin-P promoter, amongst others (paragraph [0094]), all of which read on the instantly claimed “heterologous promoter.” Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 15.
With regard to claims 16 and 17, which respectively recite “a vector comprising or encoding the composition of claim 1,” wherein “the vector is selected from the group consisting of: adeno-associated virus, retrovirus, lentivirus, adenovirus, nanoparticle, micelle, liposome, lipoplex, polymersome, polyplex, and dendrimer,” as set forth above, Garcia and application ‘406 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the nucleic acid molecules taught therein may be delivered to cells via various delivery systems, including encapsulation in liposomes or construction of a nucleic acid as part of an adeno-associated viral vector (paragraph [0096]). Thus, Garcia anticipates each and every additional limitation of instant claims 16 and 17.
With regard to claim 18, which recites “a cell comprising the vector of claim 16,” as set forth above, Garcia anticipates the vector of claim 16. Garcia further discloses cells comprising the recombinant vector comprising the PTM taught therein (paragraph [0097]). Thus, Garcia anticipates each and every additional limitation of instant claim 18.
Given that application ‘406 recites each and every component of the instantly claimed composition, with the exception of trans-splicing enhancer sequences in the intronic domain(s) claimed therein, that Garcia, DeBoer, and Fisher also disclose a nucleic acid trans-splicing molecule, wherein said molecule comprises a domain that reads on the instantly claimed intronic domain(s) comprising at least one trans-splicing enhancer sequence and a 3’ UTR, that Herai, Mansfield, and Hinnebusch collectively disclose that the 3’ and 5’ UTRs may be replaced via trans-splicing and further that these UTR sequences are linked to trans-splicing and translation efficiency, and that Tornabene and Loeb disclose that inclusion of the WPRE enhances transgene expression, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of application ‘406 such that the intronic domain(s) claimed therein further comprise at least one trans-splicing enhancer sequence to predictably enhance trans-splicing efficiency, as well as to supply the elements taught by the prior art and set forth above (i.e. a UTR and a WPRE) to predictably enhance expression of the transgene derived via trans-splicing and delivered via the system taught therein. One would have been motivated to make such a modification in order to receive the expected benefit of enhancing trans-splicing efficiency and increasing transgene expression.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 28, 31, 41, 42, 45, and 47-52 of copending Application No. 18/911,917 (corresponds to US 2025/0051764 A1; cited in Applicant IDS) in view of US 2012/0245220 A1 (hereinafter Garcia), WO 2014/011050 A1 (hereinafter De Boer), Mansfield et al., 2003 (hereinafter Mansfield), Herai and Yamagishi, 2009 (hereinafter Herai), and Hinnebusch et al., 2016 (hereinafter Hinnebusch).
Claims 28, 31, and 52 of copending application ‘917 are drawn to a system for trans-splicing an exonic sequence into a target mRNA molecule, said system comprising an engineered nucleic acid encoding an RNA trans-splicing nucleic acid, itself comprising in the 5’ to 3’ direction, an exonic sequence, an intronic domain, and an antisense domain, wherein the antisense domain in the RNA trans-splicing nucleic acid is complementary to the target RNA molecule in the cell, as well as a kit comprising the same.
In comparison, instant claim 1 recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule.”
Thus, copending claims 28, 31, and 52 read on each and every limitation of the construct of instant claim 1, with the exception of a trans-splicing enhancer sequence in the one or more intronic domains claimed therein. This deficiency is cured by Garcia. As set forth above, Garcia discloses methods and compositions for generating novel nucleic acid molecules through targeted splicesosome mediated simple or double trans-splicing, said compositions including pre-trans-splicing molecules (PTM) designed to interact with a target precursor messenger RNA molecule for purposes of mediating a simple or double trans-splicing reaction resulting in the generation of a novel chimeric RNA molecule via the ExChange approach (abstract; paragraphs [0013], [0014], and [0075]). These molecules utilized in the ExChange approach comprise a replacing exon (which reads on (a)), flanked by artificial intronic sequences with intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) (which reads on (b)), which are connected to antisense sequences designed to anneal the target mRNA (which reads on (c)) (paragraphs [0019], [0020], [0073], [0091], and [0143]; Figure 3). The replacing exon of Garcia is explicitly disclosed to correct Duchenne Muscular Dystrophy genetic defects (paragraphs [0002] and [0003]). Thus, Garcia and application ‘917 collectively anticipate each and every limitation of instant claim 1.
Copending claims 41 and 42 respectively recite that the engineered nucleic acid sequence set forth above comprises RNA, DNA, a DNA/RNA hybrid, a nucleic acid analog, a chemically modified nucleic acid, or a chimera composed of two or more nucleic acids or nucleic acid analogs, and further that the nucleic acid sequence encoding the engineered exonic sequence comprises DNA. In comparison, instant claim 14 further limits the trans-splicing nucleic acid claimed therein to RNA, DNA, a DNA/RNA hybrid, a nucleic acid analog, a chemically-modified nucleic acid, or a chimera composed of two or more nucleic acids or nucleic acid analogs. Thus, copending claims 41 and 42 are not patentably distinct from instant claim 14.
Copending claim 45 further recites that the engineered nucleic acid (set forth above) encodes a trans-splicing nucleic acid molecule comprising an untranslated region positioned 3’ of the trans-splicing nucleic acid. This recitation is considered to read on the 3’ UTR recited at instant claim 9. Thus, copending claim 45 and instant claim 9 are not patentably distinct.
Copending claim 47 further recites that the engineered nucleic acid (set forth above) encodes a sequence derived or isolated from the group consisting of Woodchuck Hepatitis Virus (WHV) Posttranscriptional Regulatory Element (WPRE), triplex from MALAT1, or the PRE of Hepatitis B virus (HPRE), as is also recited at instant claims 11 and 12. Thus, copending claim 47 and instant claims 11 and 12 are not patentably distinct.
Copending claim 48 further recites that the system claimed therein further comprises an RNA binding protein that strengthens the interaction among the engineered exonic sequence and the target RNA molecule, thereby increasing an efficiency of the trans-splicing of the exonic sequence to the target RNA molecule, as is also recited at instant claim 13. Thus, copending claim 48 and instant claim 13 are not patentably distinct.
Copending claim 49 further limits the system claimed therein such that it further comprises or encodes a heterologous promoter, as is also recited at instant claim 15. Thus, copending claim 49 and instant claim 15 are not patentably distinct.
Finally, copending claims 50 and 51 further recite that the composition claimed therein is carried in a vector, wherein the vector is selected from the group consisting of: adeno-associated virus, retrovirus, lentivirus, adenovirus, nanoparticle, micelle, liposome, lipoplex, polymersome, polyplex, and dendrimer, as is also recited at instant claims 16 and 17. Thus, copending claims 50 and 51 are not patentably distinct from instant claims 16 and 17.
Regarding the remainder of the instant claims, the various secondary references set forth above collectively disclose each and every limitation thereof.
With regard to claim 2, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of adenine (A), uracil (U), cytosine (C) and guanine (G);
X5 is selected from the group consisting of adenine (A), cytosine (C), uracil (U) and guanine (G); and
X6 is selected from the group consisting of adenine (A), uracil (U) and guanine (G),” as set forth above, Garcia and application ‘917 collectively disclose PTMs that anticipate instant claim 1. Garcia further discloses that the PTM molecules taught therein comprise intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) sequences in the introns flanking the therapeutic exon taught therein and set forth above (Figure 3; paragraphs [0019] and [0020]). These ISE and DISE sequences respectively correspond to SEQ ID NOs: 26 and 27 (paragraphs [0072] and [0073]), which respectively comprise 5’-GGGAAG-3’ and 5’-ATGGGT-3’, both of which read on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 2.
With regard to claim 3, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of adenine (A), uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘917 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 3.
With regard to claim 4, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘917 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 4.
With regard to claim 5, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is adjacent to RNA motifs that further increase trans-splicing efficiency,” as set forth above, Garcia and application ‘917 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the intronic sequences taught therein comprise a strong conserved yeast branch point sequence, a polypyrimidine tract, a 3’ acceptor site, and a 5’ donor site (paragraphs [0015-0018] and [0069]; Figures 1 and 2). These sequences are known to be involved in splicing and thus are considered to read on the instantly claimed “RNA motifs that further increase trans-splicing efficiency.” Thus, Garcia anticipates each and every additional limitation of instant claim 5.
With regard to claim 6, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 3’ splice site of the trans-splicing nucleic acid,” De Boer also discloses trans-splicing molecules, as depicted at Figure 1 therein, which includes the intronic splicing enhancer directly adjacent to the branch point and the polypyrimidine tract, which themselves are directly adjacent to the 3’ splice site. Furthermore, De Boer discloses that the branch point may comprise sequences such as SEQ ID NO: 2 (10 nucleotides in length) or SEQ ID NO: 3 (5 nucleotides in length), among others (page 4, lines 20-22). The polypyrimidine tract is disclosed to have the consensus sequence of SEQ ID NO: 4 (19 nucleotides in length) or SEQ ID NO: 5 (10 nucleotides in length), or another sequence (page 4, lines 22-25). Per Figure 1 of De Boer, these sequences are the only sequences that separate the intronic splicing enhancer that increases trans-splicing efficiency from the 3’ splice site. When considering the disclosed sequences of De Boer, it is clear that the intronic splicing enhancer that increases trans-splicing efficiency is less than 300 bases from the 3’ splice site of the same trans-splicing nucleic acid, as summing the lengths of the disclosed sequences is markedly less than 300 bases. Notably, while De Boer discloses that there may be a spacer sequence between the base pairing region and the neighboring element (page 4, lines 15-16), no such spacer sequence is disclosed between any of the other construct elements. Thus, it is considered that De Boer discloses each and every additional limitation of instant claim 6.
With regard to claim 7, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 5’ splice site of the trans-splicing nucleic acid,” as set forth above, Garcia and application ‘917 collectively disclose PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the spacer separating the 5’ splice donor site and the 3’ end target binding domain comprises between 10 and 100 nucleotides and comprises the DISE sequence (i.e. SEQ ID NO: 27, which is 24 nucleotides in length) (paragraph [0091]). Given that the spacer separating the 5’ splice donor site and the 3’ target binding domain is disclosed to be between 10 and 100 nucleotides and further that it comprises the DISE sequence, the DISE sequence must be located less than 300 bases from a 5’ splice site, as instantly claimed. Thus, it is considered that Garcia discloses each and every additional limitation of instant claim 7.
With regard to claim 8, which recites “each of the one or more intronic domains [of the composition of claim 1] comprises 2 or more trans-splicing enhancer sequences,” as set forth above, Garcia and application ‘917 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 26 comprises 5’-GGGAAG-3’ and 5’-GAGGGA-3’, both of which read on the trans-splicing enhancer sequences recited at instant claim 2. Furthermore, SEQ ID NO: 27 comprises 5’-ATGGGT-3’ and 5’-GGGTTG-3’, both of which read on the trans-splicing enhancer sequences recited at instant claims 2 and 3. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process. Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 8.
With regard to claim 10, which recites “the composition of claim 1, further comprising a 5’ untranslated region that increases trans-splicing efficiency,” as set forth above, Garcia and application ‘917 collectively disclose the composition of instant claim 1. While Garcia discloses that the compositions taught therein preserve regulatory sequences in the 5’ and 3’ UTRs (paragraph [0011]), Mansfield discloses therapeutic trans-splicing reactions targeting both the 5’ and 3’ ends of mRNA (abstract), wherein 3’ replacement constructs comprise a 3’ UTR to effectively target that region, resulting in acquisition of the native 5’ UTR and replacement of the 3’ UTR (page 1295, column 2, paragraph 1). As disclosed in Herai, trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement UTRs (as disclosed in Mansfield) that increase trans-splicing efficiency, as instantly claimed.
Additionally, Mansfield further discloses that the 5’ region of the replacement constructs can be modified to increase translation of the therapeutic construct inserted by said constructs (page 1295, column 2, paragraph 1). As is known to those of ordinary skill in the art and reviewed in Hinnebusch, the 5’ UTR is critical for ribosome recruitment to the mRNA and start codon choice and plays a major role in the control of translation efficiency and shaping the cellular proteome (abstract), thereby establishing that the 5’ UTR is critical for improving translation/expression. Furthermore, as set forth above, Herai discloses that trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement 5’ UTRs (as disclosed in Mansfield and Hinnebusch) that increase trans-splicing efficiency, as instantly claimed.
Thus, it is considered that the cited art collectively anticipates each and every additional limitation of instant claim 10.
With regard to claim 18, which recites “a cell comprising the vector of claim 16,” as set forth above, Garcia and application ‘917 collectively disclose the nucleic acid of claim 1, while application ‘917 discloses the vector of claim 16. Garcia further discloses cells comprising the recombinant vector comprising the PTM taught therein (paragraph [0097]). Thus, Garcia anticipates each and every additional limitation of instant claim 18.
Given that application ‘917 recites each and every component of the instantly claimed composition, with the exception of trans-splicing enhancer sequences in the intronic domain(s) claimed therein, that Garcia, DeBoer, and Fisher also disclose a nucleic acid trans-splicing molecule, wherein said molecule comprises a domain that reads on the instantly claimed intronic domain(s) comprising at least one trans-splicing enhancer sequence and a 3’ UTR, that Herai, Mansfield, and Hinnebusch collectively disclose that the 3’ and 5’ UTRs may be replaced via trans-splicing and further that these UTR sequences are linked to trans-splicing and translation efficiency, and that Tornabene and Loeb disclose that inclusion of the WPRE enhances transgene expression, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of application ‘917 such that the intronic domain(s) claimed therein further comprise at least one trans-splicing enhancer sequence to predictably enhance trans-splicing efficiency, as well as to supply the elements taught by the prior art and set forth above (i.e. a UTR and a WPRE) to predictably enhance expression of the transgene derived via trans-splicing and delivered via the system taught therein. One would have been motivated to make such a modification in order to receive the expected benefit of enhancing trans-splicing efficiency and increasing transgene expression.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, 21, 23-26, 28-32, 48, 50, 55, and 56 of copending Application No. 18/994,856 (corresponds to US 2026/0028381 A1) in US 2012/0245220 A1 (hereinafter Garcia), WO 2014/011050 A1 (hereinafter De Boer), WO 2020/214973 A1 (hereinafter Fisher), Mansfield et al., 2003 (hereinafter Mansfield), Herai and Yamagishi, 2009 (hereinafter Herai), Hinnebusch et al., 2016 (hereinafter Hinnebusch), Tornabene et al., 2019 (hereinafter Tornabene), and Loeb et al., 1999 (hereinafter Loeb).
MPEP 804 II B 1 states:
The specification can be used as a dictionary to learn the meaning of a term in the patent claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)… Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970).
The following rejections are in view of the decision of the Court of Appeals for the Federal Circuit in Pfizer Inc, v Teva pharmaceuticals USA Inc., 86 USPQ2d 1001, at page 1008 (March 2008), which indicates that there is no patentable distinction between claims to a product and a method of using that product disclosed in the specification of the application and that the preclusion of such a double patenting rejection under 35 USC 121 does not apply where the present application is other than a divisional application of the patent application containing such patentably indistinct claims.
Copending claim 1 is drawn to a system for trans-splicing, said system comprising a nucleic acid molecule encoding an exonic sequence, at least one intronic domain configured to promote insertion of said exonic sequence into a target RNA molecule, and one or more binding domains configured to interact with an RNA-binding protein, as well as the corresponding RNA binding protein. Copending claims 3-8 further limit the RNA binding protein of the copending application. Copending claim 21 is drawn to a vector comprising said system. Copending claim 23 is drawn to a cell comprising said system. Copending claim 24 is drawn to a method of using said system.
In comparison, instant claim 1 recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule.”
Thus, copending claim 1 reads on each and every limitation of the construct of instant claim 1, with the exception of a trans-splicing enhancer sequence in the one or more intronic domains claimed therein and an antisense domain promoting binding to a target RNA molecule (as well as the RNA binding protein of the copending application, which is addressed below). This deficiency is cured by Garcia. As set forth above, Garcia discloses methods and compositions for generating novel nucleic acid molecules through targeted splicesosome mediated simple or double trans-splicing, said compositions including pre-trans-splicing molecules (PTM) designed to interact with a target precursor messenger RNA molecule for purposes of mediating a simple or double trans-splicing reaction resulting in the generation of a novel chimeric RNA molecule via the ExChange approach (abstract; paragraphs [0013], [0014], and [0075]). These molecules utilized in the ExChange approach comprise a replacing exon (which reads on (a)), flanked by artificial intronic sequences with intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) (which reads on (b)), which are connected to antisense sequences designed to anneal the target mRNA (which reads on (c)) (paragraphs [0019], [0020], [0073], [0091], and [0143]; Figure 3). The replacing exon of Garcia is explicitly disclosed to correct Duchenne Muscular Dystrophy genetic defects (paragraphs [0002] and [0003]). Thus, Garcia and application ‘856 collectively anticipate each and every limitation of instant claim 1.
Furthermore, instant claim 13 recites that the composition of instant claim 1 (set forth above) further comprises an RNA-binding protein that strengthens the interaction between the trans-splicing nucleic acid and the target RNA molecule, thereby increasing trans-splicing efficiency.
Accordingly, copending claims 1, 3-8, and 24 and Garcia collectively disclose each and every limitation of instant claims 1 and 13.
Furthermore, instant claim 16 is drawn to a vector comprising the nucleic acid taught therein. Instant claim 17 recites a number of vector species, including adeno-associated viral vectors, which are not recited in the copending claim set. However, this deficiency is cured by Garcia. As set forth above (see section Claim Rejections - 35 USC § 102), Garcia further discloses that the nucleic acid molecules taught therein may be delivered to cells via various delivery systems, including encapsulation in liposomes or construction of a nucleic acid as part of an adeno-associated viral vector (paragraph [0096]).
Accordingly, copending claim 21 is not patentably distinct from instant claims 16 and 17 in view of Garcia.
Finally, instant claim 18 is drawn to a cell comprising the nucleic acid taught therein. Accordingly, copending claim 23 is not patentably distinct from instant claim 18.
Copending claim 25 is drawn to a system for trans-splicing, said system comprising a nucleic acid molecule encoding an exonic sequence, at least one intronic domain configured to promote insertion of said exonic sequence into a target RNA molecule, and a protein configured to insert said exonic sequence into said target RNA molecule, wherein said protein is a tethering protein comprising an RNA-binding domain, as recited at copending claims 26 and 28-32. Copending claim 48 is drawn to a method of using the system of copending claim 25.
In comparison, instant claim 1 recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule.”
Thus, copending claim 25 reads on each and every limitation of the construct of instant claim 1, with the exception of a trans-splicing enhancer sequence in the one or more intronic domains claimed therein and an antisense domain promoting binding to a target RNA molecule (as well as the RNA binding protein of the copending application, which is addressed below). This deficiency is cured by Garcia. As set forth above, Garcia discloses methods and compositions for generating novel nucleic acid molecules through targeted splicesosome mediated simple or double trans-splicing, said compositions including pre-trans-splicing molecules (PTM) designed to interact with a target precursor messenger RNA molecule for purposes of mediating a simple or double trans-splicing reaction resulting in the generation of a novel chimeric RNA molecule via the ExChange approach (abstract; paragraphs [0013], [0014], and [0075]). These molecules utilized in the ExChange approach comprise a replacing exon (which reads on (a)), flanked by artificial intronic sequences with intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) (which reads on (b)), which are connected to antisense sequences designed to anneal the target mRNA (which reads on (c)) (paragraphs [0019], [0020], [0073], [0091], and [0143]; Figure 3). The replacing exon of Garcia is explicitly disclosed to correct Duchenne Muscular Dystrophy genetic defects (paragraphs [0002] and [0003]). Thus, Garcia and application ‘856 collectively anticipate each and every limitation of instant claim 1.
Furthermore, instant claim 13 recites that the composition of instant claim 1 (set forth above) further comprises an RNA-binding protein that strengthens the interaction between the trans-splicing nucleic acid and the target RNA molecule, thereby increasing trans-splicing efficiency.
Accordingly, copending claims 25, 26, 28-32, and 48 and Garcia collectively disclose each and every limitation of instant claims 1 and 13.
Finally, copending claim 50 is drawn to a nucleic acid molecule encoding an exonic sequence, at least one intronic domain configured to promote insertion of said exonic sequence into a target RNA molecule, and one or more binding domains that interact with an RNA-binding protein. Copending claims 55 and 56 further limit the RNA binding protein.
In comparison, instant claim 1 recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule.”
Thus, copending claim 50 reads on each and every limitation of the construct of instant claim 1, with the exception of a trans-splicing enhancer sequence in the one or more intronic domains claimed therein and an antisense domain promoting binding to a target RNA molecule (as well as the RNA binding protein of the copending application, which is addressed below). This deficiency is cured by Garcia. As set forth above, Garcia discloses methods and compositions for generating novel nucleic acid molecules through targeted splicesosome mediated simple or double trans-splicing, said compositions including pre-trans-splicing molecules (PTM) designed to interact with a target precursor messenger RNA molecule for purposes of mediating a simple or double trans-splicing reaction resulting in the generation of a novel chimeric RNA molecule via the ExChange approach (abstract; paragraphs [0013], [0014], and [0075]). These molecules utilized in the ExChange approach comprise a replacing exon (which reads on (a)), flanked by artificial intronic sequences with intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) (which reads on (b)), which are connected to antisense sequences designed to anneal the target mRNA (which reads on (c)) (paragraphs [0019], [0020], [0073], [0091], and [0143]; Figure 3). The replacing exon of Garcia is explicitly disclosed to correct Duchenne Muscular Dystrophy genetic defects (paragraphs [0002] and [0003]). Thus, Garcia and application ‘856 collectively anticipate each and every limitation of instant claim 1.
Furthermore, instant claim 13 recites that the composition of instant claim 1 (set forth above) further comprises an RNA-binding protein that strengthens the interaction between the trans-splicing nucleic acid and the target RNA molecule, thereby increasing trans-splicing efficiency.
Accordingly, copending claims 50, 55, and 56 and Garcia collectively disclose each and every limitation of instant claims 1 and 13.
Regarding the remainder of the instant claims, the various secondary references set forth above collectively disclose each and every limitation thereof.
With regard to claim 2, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of adenine (A), uracil (U), cytosine (C) and guanine (G);
X5 is selected from the group consisting of adenine (A), cytosine (C), uracil (U) and guanine (G); and
X6 is selected from the group consisting of adenine (A), uracil (U) and guanine (G),” as set forth above, Garcia and application ‘856 collectively disclose PTMs that anticipate instant claim 1. Garcia further discloses that the PTM molecules taught therein comprise intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) sequences in the introns flanking the therapeutic exon taught therein and set forth above (Figure 3; paragraphs [0019] and [0020]). These ISE and DISE sequences respectively correspond to SEQ ID NOs: 26 and 27 (paragraphs [0072] and [0073]), which respectively comprise 5’-GGGAAG-3’ and 5’-ATGGGT-3’, both of which read on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 2.
With regard to claim 3, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of adenine (A), uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘856 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 3.
With regard to claim 4, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘856 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 4.
With regard to claim 5, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is adjacent to RNA motifs that further increase trans-splicing efficiency,” as set forth above, Garcia and application ‘856 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the intronic sequences taught therein comprise a strong conserved yeast branch point sequence, a polypyrimidine tract, a 3’ acceptor site, and a 5’ donor site (paragraphs [0015-0018] and [0069]; Figures 1 and 2). These sequences are known to be involved in splicing and thus are considered to read on the instantly claimed “RNA motifs that further increase trans-splicing efficiency.” Thus, Garcia anticipates each and every additional limitation of instant claim 5.
With regard to claim 6, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 3’ splice site of the trans-splicing nucleic acid,” De Boer also discloses trans-splicing molecules, as depicted at Figure 1 therein, which includes the intronic splicing enhancer directly adjacent to the branch point and the polypyrimidine tract, which themselves are directly adjacent to the 3’ splice site. Furthermore, De Boer discloses that the branch point may comprise sequences such as SEQ ID NO: 2 (10 nucleotides in length) or SEQ ID NO: 3 (5 nucleotides in length), among others (page 4, lines 20-22). The polypyrimidine tract is disclosed to have the consensus sequence of SEQ ID NO: 4 (19 nucleotides in length) or SEQ ID NO: 5 (10 nucleotides in length), or another sequence (page 4, lines 22-25). Per Figure 1 of De Boer, these sequences are the only sequences that separate the intronic splicing enhancer that increases trans-splicing efficiency from the 3’ splice site. When considering the disclosed sequences of De Boer, it is clear that the intronic splicing enhancer that increases trans-splicing efficiency is less than 300 bases from the 3’ splice site of the same trans-splicing nucleic acid, as summing the lengths of the disclosed sequences is markedly less than 300 bases. Notably, while De Boer discloses that there may be a spacer sequence between the base pairing region and the neighboring element (page 4, lines 15-16), no such spacer sequence is disclosed between any of the other construct elements. Thus, it is considered that De Boer discloses each and every additional limitation of instant claim 6.
With regard to claim 7, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 5’ splice site of the trans-splicing nucleic acid,” as set forth above, Garcia and application ‘856 collectively disclose PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the spacer separating the 5’ splice donor site and the 3’ end target binding domain comprises between 10 and 100 nucleotides and comprises the DISE sequence (i.e. SEQ ID NO: 27, which is 24 nucleotides in length) (paragraph [0091]). Given that the spacer separating the 5’ splice donor site and the 3’ target binding domain is disclosed to be between 10 and 100 nucleotides and further that it comprises the DISE sequence, the DISE sequence must be located less than 300 bases from a 5’ splice site, as instantly claimed. Thus, it is considered that Garcia discloses each and every additional limitation of instant claim 7.
With regard to claim 8, which recites “each of the one or more intronic domains [of the composition of claim 1] comprises 2 or more trans-splicing enhancer sequences,” as set forth above, Garcia and application ‘856 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 26 comprises 5’-GGGAAG-3’ and 5’-GAGGGA-3’, both of which read on the trans-splicing enhancer sequences recited at instant claim 2. Furthermore, SEQ ID NO: 27 comprises 5’-ATGGGT-3’ and 5’-GGGTTG-3’, both of which read on the trans-splicing enhancer sequences recited at instant claims 2 and 3. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process. Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 8.
With regard to claim 9, which recites “the composition of claim 1, further comprising a 3’ untranslated region that increases trans-splicing efficiency,” Fisher also discloses trans-splicing nucleic acid molecules. Fisher further discloses that the nucleic acid trans-splicing molecule taught therein comprises a 3’ UTR sequence (page 36, lines 16-17). Thus, Fisher anticipates each and every additional limitation of instant claim 9.
With regard to claim 10, which recites “the composition of claim 1, further comprising a 5’ untranslated region that increases trans-splicing efficiency,” as set forth above, Garcia and application ‘856 collectively disclose the composition of instant claim 1. While Garcia discloses that the compositions taught therein preserve regulatory sequences in the 5’ and 3’ UTRs (paragraph [0011]), Mansfield discloses therapeutic trans-splicing reactions targeting both the 5’ and 3’ ends of mRNA (abstract), wherein 3’ replacement constructs comprise a 3’ UTR to effectively target that region, resulting in acquisition of the native 5’ UTR and replacement of the 3’ UTR (page 1295, column 2, paragraph 1). As disclosed in Herai, trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement UTRs (as disclosed in Mansfield) that increase trans-splicing efficiency, as instantly claimed.
Additionally, Mansfield further discloses that the 5’ region of the replacement constructs can be modified to increase translation of the therapeutic construct inserted by said constructs (page 1295, column 2, paragraph 1). As is known to those of ordinary skill in the art and reviewed in Hinnebusch, the 5’ UTR is critical for ribosome recruitment to the mRNA and start codon choice and plays a major role in the control of translation efficiency and shaping the cellular proteome (abstract), thereby establishing that the 5’ UTR is critical for improving translation/expression. Furthermore, as set forth above, Herai discloses that trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement 5’ UTRs (as disclosed in Mansfield and Hinnebusch) that increase trans-splicing efficiency, as instantly claimed.
Thus, it is considered that the cited art collectively anticipates each and every additional limitation of instant claim 10.
With regard to claims 11 and 12, which respectively recite “the one or more replacement domains [of the composition of claim 1] each comprises a gene expression-enhancing element,” such as “a sequence derived or isolated from the group consisting of: Woodchuck Hepatitis Virus (WHV) Posttranscriptional Regulatory Element (WPRE), triplex from MALAT1, the PRE of Hepatitis B virus (HPRE), and an iron response element,” as set forth above, Garcia and application ‘856 collectively disclose the composition of instant claim 1. Garcia further discloses that the trans-splicing cassettes taught therein were produced by subcloning the sequences into a plasmid comprising WPRE (paragraph [0154]), detected via PCR (paragraph [0158]). Thus, while it is considered that Garcia discloses trans-splicing cassettes comprising WPRE (paragraph [0161]), Garcia does not explicitly disclose that said WPRE is a component of the one or more replacement domains taught therein (merely that the trans-splicing nucleic acid comprises a WPRE) or that WPRE enhances gene expression. This deficiency is cured by Tornabene, which discloses inclusion of WPRE to increase transgene expression in trans-splicing constructs (abstract; page 4, column 1, paragraph 1).
Furthermore, Loeb discloses that the woodchuck hepatitis virus posttranscriptional regulatory element (WPRE) is an effective tool for increasing the long-term expression of transgenes in gene therapy when located in cis with the transgene of interest (abstract). This increase in long-term expression improves the prospects for generating and maintaining therapeutic levels of transgene expression using available gene delivery technologies (page 2295; column 1, paragraph 1). Thus, it is considered that Tornabene and Loeb disclose and/or motivate each and every additional limitation of instant claims 11 and 12.
With regard to claim 14, which recites “the trans-splicing nucleic acid [of the composition of claim 1] is RNA, DNA, a DNA/RNA hybrid, a nucleic acid analog, a chemically-modified nucleic acid, or a chimera composed of two or more nucleic acids or nucleic acid analogs,” as set forth above, Garcia and application ‘856 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the nucleic acid molecules taught therein are DNA molecules transcribed into RNA molecules that perform the trans-splicing reactions disclosed therein (paragraphs [0094], [0122], [0124], [0136], and [0139]). Thus, it is considered that Garcia anticipates each and every additional limitation of instant claim 14.
With regard to claim 15, which recites “the trans-splicing nucleic acid [of the composition of claim 1] further comprises a heterologous promoter,” as set forth above, Garcia and application ‘856 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the constructs taught therein may comprise constitutive promoters such as the CMV promoter, the SV40 early promoter region, or the human gonadotropin-P promoter, amongst others (paragraph [0094]), all of which read on the instantly claimed “heterologous promoter.” Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 15.
Given that application ‘856 recites each and every component of the instantly claimed composition, with the exception of trans-splicing enhancer sequences in the intronic domain(s) claimed therein, that Garcia, DeBoer, and Fisher also disclose a nucleic acid trans-splicing molecule, wherein said molecule comprises a domain that reads on the instantly claimed intronic domain(s) comprising at least one trans-splicing enhancer sequence and a 3’ UTR, that Herai, Mansfield, and Hinnebusch collectively disclose that the 3’ and 5’ UTRs may be replaced via trans-splicing and further that these UTR sequences are linked to trans-splicing and translation efficiency, and that Tornabene and Loeb disclose that inclusion of the WPRE enhances transgene expression, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of application ‘856 such that the intronic domain(s) claimed therein further comprise at least one trans-splicing enhancer sequence to predictably enhance trans-splicing efficiency, as well as to supply the elements taught by the prior art and set forth above (i.e. a UTR and a WPRE) to predictably enhance expression of the transgene derived via trans-splicing and delivered via the system taught therein. One would have been motivated to make such a modification in order to receive the expected benefit of enhancing trans-splicing efficiency and increasing transgene expression.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 41-44, 70, 79, and 83-85 of copending Application No. 19/580,271 (not yet published) in view of US 2012/0245220 A1 (hereinafter Garcia), WO 2014/011050 A1 (hereinafter De Boer), WO 2020/214973 A1 (hereinafter Fisher), Mansfield et al., 2003 (hereinafter Mansfield), Herai and Yamagishi, 2009 (hereinafter Herai), Hinnebusch et al., 2016 (hereinafter Hinnebusch), Tornabene et al., 2019 (hereinafter Tornabene), and Loeb et al., 1999 (hereinafter Loeb), as evidenced by Furuyama and Bruzik, 2002 (hereinafter Furuyama).
MPEP 804 II B 1 states:
The specification can be used as a dictionary to learn the meaning of a term in the patent claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)… Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970).
The following rejections are in view of the decision of the Court of Appeals for the Federal Circuit in Pfizer Inc, v Teva pharmaceuticals USA Inc., 86 USPQ2d 1001, at page 1008 (March 2008), which indicates that there is no patentable distinction between claims to a product and a method of using that product disclosed in the specification of the application and that the preclusion of such a double patenting rejection under 35 USC 121 does not apply where the present application is other than a divisional application of the patent application containing such patentably indistinct claims.
Copending claims 1, 6, 41, and 43 are all drawn to trans-splicing nucleic acid molecules, said molecules comprising an exonic domain, an intronic domain configured to promote RNA trans-splicing, and an antisense domain configured to bind to a target RNA molecule. The antisense domain is further limited at copending claims 42 and 44.
Copending claims 83-85 are drawn to methods of using the trans-splicing nucleic acid molecules of copending claim 1.
In comparison, instant claim 1 recites “a composition comprising a trans-splicing nucleic acid, comprising:
one or more replacement domains that encode a therapeutic sequence operably linked to;
one or more intronic domains that promote RNA splicing of the one or more replacement domains, wherein the one or more intronic domains each comprises a trans-splicing enhancer sequence; and
one or more antisense domains that promote binding to a target RNA molecule.”
Thus, copending claim 3 reads on each and every limitation of the construct of instant claim 1, with the exception of a trans-splicing enhancer sequence in the one or more intronic domains claimed therein. This deficiency is cured by Garcia. As set forth above, Garcia discloses methods and compositions for generating novel nucleic acid molecules through targeted splicesosome mediated simple or double trans-splicing, said compositions including pre-trans-splicing molecules (PTM) designed to interact with a target precursor messenger RNA molecule for purposes of mediating a simple or double trans-splicing reaction resulting in the generation of a novel chimeric RNA molecule via the ExChange approach (abstract; paragraphs [0013], [0014], and [0075]). These molecules utilized in the ExChange approach comprise a replacing exon (which reads on (a)), flanked by artificial intronic sequences with intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) (which reads on (b)), which are connected to antisense sequences designed to anneal the target mRNA (which reads on (c)) (paragraphs [0019], [0020], [0073], [0091], and [0143]; Figure 3). The replacing exon of Garcia is explicitly disclosed to correct Duchenne Muscular Dystrophy genetic defects (paragraphs [0002] and [0003]). Thus, Garcia and application ‘271 collectively anticipate each and every limitation of instant claim 1.
Copending claim 70 further recites that the trans-splicing nucleic acid molecule of copending claim 1 is packaged in or encoded by a viral vector. However, copending claim 70 does not specify the species of viral vector. In comparison, instant claim 16 is drawn to a vector comprising the nucleic acid taught therein, with instant claim 17 further limiting the instantly claimed vector to certain species. As set forth above, the copending application does not specify the species of viral vector claimed therein. This deficiency is cured by Garcia. As set forth above (see section Claim Rejections - 35 USC § 102), Garcia further discloses that the nucleic acid molecules taught therein may be delivered to cells via various delivery systems, including encapsulation in liposomes or construction of a nucleic acid as part of an adeno-associated viral vector (paragraph [0096]).
Accordingly, copending claim 70 is not patentably distinct from instant claims 16 and 17 in view of Garcia.
Finally, copending claim 79 is drawn to a cell comprising the trans-splicing nucleic acid molecule of copending claim 1, as is also recited at instant claim 18. Accordingly, copending claim 79 is not patentably distinct from instant claim 18.
With regard to claim 2, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of adenine (A), uracil (U), cytosine (C) and guanine (G);
X5 is selected from the group consisting of adenine (A), cytosine (C), uracil (U) and guanine (G); and
X6 is selected from the group consisting of adenine (A), uracil (U) and guanine (G),” as set forth above, Garcia and application ‘271 collectively disclose PTMs that anticipate instant claim 1. Garcia further discloses that the PTM molecules taught therein comprise intronic splice enhancers (ISE) and downstream intronic splice enhancers (DISE) sequences in the introns flanking the therapeutic exon taught therein and set forth above (Figure 3; paragraphs [0019] and [0020]). These ISE and DISE sequences respectively correspond to SEQ ID NOs: 26 and 27 (paragraphs [0072] and [0073]), which respectively comprise 5’-GGGAAG-3’ and 5’-ATGGGT-3’, both of which read on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 2.
With regard to claim 3, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of adenine (A), uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘271 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 3.
With regard to claim 4, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] consists of a chain of RNA nucleobases comprising at least one RNA motif having the formula X1X2X3X4X5X6, wherein:
X1 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X2 is selected from the group consisting of uracil (U) and guanine (G);
X3 is selected from the group consisting of adenine (A), uracil (U) and guanine (G);
X4 is selected from the group consisting of uracil (U) and guanine (G);
X5 is selected from the group consisting of uracil (U) and guanine (G); and
X6 is selected from the group consisting of uracil (U) and guanine G),” as set forth above, Garcia and application ‘271 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 27 comprises 5’-ATGGGT-3’, which reads on the instantly claimed RNA motif. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process (see paragraph [0094]). Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 4.
With regard to claim 5, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is adjacent to RNA motifs that further increase trans-splicing efficiency,” as set forth above, Garcia and application ‘271 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the intronic sequences taught therein comprise a strong conserved yeast branch point sequence, a polypyrimidine tract, a 3’ acceptor site, and a 5’ donor site (paragraphs [0015-0018] and [0069]; Figures 1 and 2). These sequences are known to be involved in splicing and thus are considered to read on the instantly claimed “RNA motifs that further increase trans-splicing efficiency.” Thus, Garcia anticipates each and every additional limitation of instant claim 5.
With regard to claim 6, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 3’ splice site of the trans-splicing nucleic acid,” De Boer also discloses trans-splicing molecules, as depicted at Figure 1 therein, which includes the intronic splicing enhancer directly adjacent to the branch point and the polypyrimidine tract, which themselves are directly adjacent to the 3’ splice site. Furthermore, De Boer discloses that the branch point may comprise sequences such as SEQ ID NO: 2 (10 nucleotides in length) or SEQ ID NO: 3 (5 nucleotides in length), among others (page 4, lines 20-22). The polypyrimidine tract is disclosed to have the consensus sequence of SEQ ID NO: 4 (19 nucleotides in length) or SEQ ID NO: 5 (10 nucleotides in length), or another sequence (page 4, lines 22-25). Per Figure 1 of De Boer, these sequences are the only sequences that separate the intronic splicing enhancer that increases trans-splicing efficiency from the 3’ splice site. When considering the disclosed sequences of De Boer, it is clear that the intronic splicing enhancer that increases trans-splicing efficiency is less than 300 bases from the 3’ splice site of the same trans-splicing nucleic acid, as summing the lengths of the disclosed sequences is markedly less than 300 bases. Notably, while De Boer discloses that there may be a spacer sequence between the base pairing region and the neighboring element (page 4, lines 15-16), no such spacer sequence is disclosed between any of the other construct elements. Thus, it is considered that De Boer discloses each and every additional limitation of instant claim 6.
With regard to claim 7, which recites “the trans-splicing enhancer sequence [of the composition of claim 1] is less than 300 bases from a 5’ splice site of the trans-splicing nucleic acid,” as set forth above, Garcia and application ‘271 collectively disclose PTMs that anticipate instant claim 1, wherein said PTM molecules further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). Garcia further discloses that the spacer separating the 5’ splice donor site and the 3’ end target binding domain comprises between 10 and 100 nucleotides and comprises the DISE sequence (i.e. SEQ ID NO: 27, which is 24 nucleotides in length) (paragraph [0091]). Given that the spacer separating the 5’ splice donor site and the 3’ target binding domain is disclosed to be between 10 and 100 nucleotides and further that it comprises the DISE sequence, the DISE sequence must be located less than 300 bases from a 5’ splice site, as instantly claimed. Thus, it is considered that Garcia discloses each and every additional limitation of instant claim 7.
With regard to claim 8, which recites “each of the one or more intronic domains [of the composition of claim 1] comprises 2 or more trans-splicing enhancer sequences,” as set forth above, Garcia and application ‘271 collectively disclose PTMs that anticipate instant claim 1, wherein the PTM molecules of Garcia further comprise ISE and DISE sequences corresponding to SEQ ID NOs: 26 and 27, respectively (abstract; Figure 3; paragraphs [0019], [0020], [0072], and [0073]). SEQ ID NO: 26 comprises 5’-GGGAAG-3’ and 5’-GAGGGA-3’, both of which read on the trans-splicing enhancer sequences recited at instant claim 2. Furthermore, SEQ ID NO: 27 comprises 5’-ATGGGT-3’ and 5’-GGGTTG-3’, both of which read on the trans-splicing enhancer sequences recited at instant claims 2 and 3. The Examiner notes that those of ordinary skill in the art are aware that the DNA constructs disclosed in Garcia (comprising thymine) must be transcribed into RNA (comprising uracil) prior to undergoing splicing, which is exclusively an RNA-based process. Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 8.
With regard to claim 9, which recites “the composition of claim 1, further comprising a 3’ untranslated region that increases trans-splicing efficiency,” Fisher also discloses trans-splicing nucleic acid molecules. Fisher further discloses that the nucleic acid trans-splicing molecule taught therein comprises a 3’ UTR sequence (page 36, lines 16-17). Thus, Fisher anticipates each and every additional limitation of instant claim 9.
With regard to claim 10, which recites “the composition of claim 1, further comprising a 5’ untranslated region that increases trans-splicing efficiency,” as set forth above, Garcia and application ‘271 collectively disclose the composition of instant claim 1. While Garcia discloses that the compositions taught therein preserve regulatory sequences in the 5’ and 3’ UTRs (paragraph [0011]), Mansfield discloses therapeutic trans-splicing reactions targeting both the 5’ and 3’ ends of mRNA (abstract), wherein 3’ replacement constructs comprise a 3’ UTR to effectively target that region, resulting in acquisition of the native 5’ UTR and replacement of the 3’ UTR (page 1295, column 2, paragraph 1). As disclosed in Herai, trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement UTRs (as disclosed in Mansfield) that increase trans-splicing efficiency, as instantly claimed.
Additionally, Mansfield further discloses that the 5’ region of the replacement constructs can be modified to increase translation of the therapeutic construct inserted by said constructs (page 1295, column 2, paragraph 1). As is known to those of ordinary skill in the art and reviewed in Hinnebusch, the 5’ UTR is critical for ribosome recruitment to the mRNA and start codon choice and plays a major role in the control of translation efficiency and shaping the cellular proteome (abstract), thereby establishing that the 5’ UTR is critical for improving translation/expression. Furthermore, as set forth above, Herai discloses that trans-splicing events have been linked to both the 5’ and 3’ UTRs (page 208, column 1, paragraph 3), meaning one of ordinary skill in the art would reasonably predict that these regions influence trans-splicing efficiency and would be motivated to provide replacement 5’ UTRs (as disclosed in Mansfield and Hinnebusch) that increase trans-splicing efficiency, as instantly claimed.
Thus, it is considered that the cited art collectively anticipates each and every additional limitation of instant claim 10.
With regard to claims 11 and 12, which respectively recite “the one or more replacement domains [of the composition of claim 1] each comprises a gene expression-enhancing element,” such as “a sequence derived or isolated from the group consisting of: Woodchuck Hepatitis Virus (WHV) Posttranscriptional Regulatory Element (WPRE), triplex from MALAT1, the PRE of Hepatitis B virus (HPRE), and an iron response element,” as set forth above, Garcia and application ‘271 collectively disclose the composition of instant claim 1. Garcia further discloses that the trans-splicing cassettes taught therein were produced by subcloning the sequences into a plasmid comprising WPRE (paragraph [0154]), detected via PCR (paragraph [0158]). Thus, while it is considered that Garcia discloses trans-splicing cassettes comprising WPRE (paragraph [0161]), Garcia does not explicitly disclose that said WPRE is a component of the one or more replacement domains taught therein (merely that the trans-splicing nucleic acid comprises a WPRE) or that WPRE enhances gene expression. This deficiency is cured by Tornabene, which discloses inclusion of WPRE to increase transgene expression in trans-splicing constructs (abstract; page 4, column 1, paragraph 1).
Furthermore, Loeb discloses that the woodchuck hepatitis virus posttranscriptional regulatory element (WPRE) is an effective tool for increasing the long-term expression of transgenes in gene therapy when located in cis with the transgene of interest (abstract). This increase in long-term expression improves the prospects for generating and maintaining therapeutic levels of transgene expression using available gene delivery technologies (page 2295; column 1, paragraph 1). Thus, it is considered that Tornabene and Loeb disclose and/or motivate each and every additional limitation of instant claims 11 and 12.
With regard to claim 13, which recites “the composition of claim 1, further comprising an RNA-binding protein that strengthens the interaction between the trans-splicing nucleic acid and the target RNA molecule and increases trans-splicing efficiency,” as set forth above, Garcia and application ‘271 collectively anticipate the composition of instant claim 1. Garcia further discloses that the compositions taught therein may include splicing enhancers such as transacting splicing factors, including SR proteins, which have been shown to interact with exonic splicing enhancers and modulate splicing (paragraph [0072]). As taught in Furuyama and known to those of ordinary skill in the art, SR proteins are RNA-binding proteins (abstract). Thus, it is considered that Garcia anticipates each and every additional limitation of instant claim 13.
With regard to claim 14, which recites “the trans-splicing nucleic acid [of the composition of claim 1] is RNA, DNA, a DNA/RNA hybrid, a nucleic acid analog, a chemically-modified nucleic acid, or a chimera composed of two or more nucleic acids or nucleic acid analogs,” as set forth above, Garcia and application ‘271 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the nucleic acid molecules taught therein are DNA molecules transcribed into RNA molecules that perform the trans-splicing reactions disclosed therein (paragraphs [0094], [0122], [0124], [0136], and [0139]). Thus, it is considered that Garcia anticipates each and every additional limitation of instant claim 14.
With regard to claim 15, which recites “the trans-splicing nucleic acid [of the composition of claim 1] further comprises a heterologous promoter,” as set forth above, Garcia and application ‘271 collectively anticipate the trans-splicing nucleic acid of instant claim 1. Garcia further discloses that the constructs taught therein may comprise constitutive promoters such as the CMV promoter, the SV40 early promoter region, or the human gonadotropin-P promoter, amongst others (paragraph [0094]), all of which read on the instantly claimed “heterologous promoter.” Accordingly, it is considered that Garcia anticipates each and every additional limitation of instant claim 15.
Given that application ‘271 recites each and every component of the instantly claimed composition, with the exception of trans-splicing enhancer sequences in the intronic domain(s) claimed therein, that Garcia, DeBoer, and Fisher also disclose a nucleic acid trans-splicing molecule, wherein said molecule comprises a domain that reads on the instantly claimed intronic domain(s) comprising at least one trans-splicing enhancer sequence and a 3’ UTR, that Herai, Mansfield, and Hinnebusch collectively disclose that the 3’ and 5’ UTRs may be replaced via trans-splicing and further that these UTR sequences are linked to trans-splicing and translation efficiency, and that Tornabene and Loeb disclose that inclusion of the WPRE enhances transgene expression, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of application ‘271 such that the intronic domain(s) claimed therein further comprise at least one trans-splicing enhancer sequence to predictably enhance trans-splicing efficiency, as well as to supply the elements taught by the prior art and set forth above (i.e. a UTR and a WPRE) to predictably enhance expression of the transgene derived via trans-splicing and delivered via the system taught therein. One would have been motivated to make such a modification in order to receive the expected benefit of enhancing trans-splicing efficiency and increasing transgene expression.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sarah E Allen whose telephone number is (571)272-0408. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dunston can be reached at 571-272-2916. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SARAH E ALLEN/ Examiner, Art Unit 1637
/Jennifer Dunston/ Supervisory Patent Examiner, Art Unit 1637
Prosecution Insights