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 1-13 (Group I) in the reply filed on 06/08/2026 is acknowledged.
Claims 14 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/08/2026.
Accordingly, claims 1-13 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. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/174,090 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Instant claims 1-13 all recite or otherwise require limitations that were not disclosed in provisional application 63/174,090, filed 04/13/2021. Specifically, while the provisional application discloses methods of using CRISPR enzymes and systems thereof, the provisional application does not explicitly disclose utilizing CRISPRi systems, as recited at instant claim 1 (and inherited by dependent claims 2-13). The provisional application further does not disclose that the Cas protein of the instantly claimed system may be Cas12a or Cas14, as recited at instant claim 4, nor does it disclose that the system claimed therein is provided on a single nucleic acid, as recited at instant claim 5. Finally, the provisional application does not disclose the in vivo therapies of instant claims 8-10.
Accordingly, instant claims 1-13 are entitled to an effective filing date of 04/13/2022 (the filing date of PCT/US2022/024622).
Information Disclosure Statement
Receipt of information disclosure statements on 04/17/2024 and 05/23/2025 is acknowledged. The signed and initialed PTO-1449‘s have been mailed with this action.
Drawings
The drawings are objected to because:
Regarding Figures 1A-1H, while Figures 1A and 1B include legends to interpret the graphs depicted therein, Figures 1C-1H do not include such legends. For purposes of interpreting the instant graphs, it would be remedial to include legends to facilitate said interpretation. While the associated brief description (paragraph [0026]) references various colors, these colors are not interpretable in the instant black and white drawings. Should Applicant deem these colors necessary for the interpretation of the graphs, Applicant must file a petition under 37 CFR 1.84(a)(2), as set forth below.
Regarding Figures 2A-2C, while Figure 2A includes legends to interpret the graphs depicted therein, the grayscale color scheme does not sufficiently distinguish the various conditions from one another. For purposes of interpreting the instant graphs, it would be remedial to amend the legends such that the grayscale color scheme sufficiently distinguishes the various conditions from one another, thereby facilitating said interpretation. Furthermore, Figures 2B and 2C do not include legends to distinguish the various conditions from one another, thereby complicating the interpretation thereof. For purposes of interpreting the instant graphs, it would be remedial to include legends to facilitate said interpretation. While the associated brief description (paragraph [0027]) references various colors, these colors are not interpretable in the instant black and white drawings. Should Applicant deem these colors necessary for the interpretation of the graphs, Applicant must file a petition under 37 CFR 1.84(a)(2), as set forth below.
Regarding Figures 3A-3E and Figures 4A-4E, as set forth above regarding Figures 1 and 2, the figures do not consistently include a legend to facilitate their interpretation. Additionally, while the associated brief description (paragraphs [0028] and [0029]) references various colors, these colors are not interpretable in the instant black and white drawings. Should Applicant deem these colors necessary for the interpretation of the graphs, Applicant must file a petition under 37 CFR 1.84(a)(2), as set forth below.
Regarding Figures 5A-5F, as set forth above regarding Figures 1 and 2, the figures do not consistently include a legend to facilitate their interpretation. Additionally, while the associated brief description (paragraph [0030]) references various colors, these colors are not interpretable in the instant black and white drawings. Should Applicant deem these colors necessary for the interpretation of the graphs, Applicant must file a petition under 37 CFR 1.84(a)(2), as set forth below.
Regarding Figures 10B and 10C, as set forth above regarding Figures 1 and 2, the figures do not consistently include a legend to facilitate their interpretation. Additionally, while the associated brief description (paragraph [0035]) references various colors, these colors are not interpretable in the instant black and white drawings. Should Applicant deem these colors necessary for the interpretation of the graphs, Applicant must file a petition under 37 CFR 1.84(a)(2), as set forth below.
Regarding Figures 12A and 12B, the associated brief description (paragraph [0037]) references various colors, which are not interpretable in the instant black and white drawings. Should Applicant deem these colors necessary for the interpretation of the graphs, Applicant must file a petition under 37 CFR 1.84(a)(2), as set forth below:
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2 and 4 are objected to because of the following informalities:
Claim 2 recites in part “the Cas protein and the transcriptional repressor are provided as a fusion protein, or a nucleic acid encoding thereof” (bolded emphasis added), which while not strictly improper nonetheless reads awkwardly. For purposes of clarity, it would be remedial to amend the instant claim such that it reads more clearly, for example by reciting “the Cas protein and the transcriptional repressor are provided as a fusion protein, or a nucleic acid encoding the same.” This is merely an example set forth by the Examiner and is not intended to be limiting.
Claim 4 recites “the method of claim 1, wherein the Cas protein is Cas9, Cas12a, and Cas14” (bolded emphasis added), which appears to incorporate an unintentional typographical error meant to recite “the method of claim 1, wherein the Cas protein is Cas9, Cas12a, or Cas14” (bolded emphasis added). It would be remedial to amend the instant claim language to correct this typographical error.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for in vitro administration of a CRISPRi system and a nucleic acid encoding the target endogenous gene to a cell and in vivo administration of the same to mice, does not reasonably provide enablement for in vivo administration of the same to human subjects. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
Enablement is considered in view of the Wands factors (MPEP 2164.01(A)). These include: the breadth of the claims, the nature of the invention, the state of the prior art, the level of one of ordinary skill, the level of predictability in the art, the amount of direction provided by the inventor, the existence of working examples, and the quantity of experimentation needed to make or use the invention. All of the Wands factors have been considered with regard to the instant claims, with the most relevant factors discussed below.
Nature of the invention: Claims 1-13 are drawn to a method comprising introducing into a cell an effective amount of a CRISPRi system configured to knockout or at least partially silence both alleles of a target endogenous gene, as well as a nucleic acid encoding an exogenous functional version of the target endogenous gene. While instant claims 1-7 and 12-13 do not explicitly recite that this method is performed in vivo, instant claims 8-11 are drawn to in vivo administration of the same to a subject in need thereof. Thus, it is considered that the instant claim language of the claim set broadly encompasses both in vivo and in vitro administration of CRISPRi systems to a cell, including a cell in a subject in need thereof, including human subjects as disclosed at paragraph [0056] of the instant specification. The nature of the invention is therefore complex in that one must be able to administer CRISPRi systems to human subjects in vivo in order to practice the invention commensurate in scope with its claims, which has not yet been achieved in the field.
Breadth of the claims: The claims broadly encompass both in vivo and in vitro administration of CRISPRi systems to a cell, including a cell in a subject in need thereof, including human subjects as disclosed at paragraph [0056] of the instant specification. The complex nature of the subject matter of this invention is greatly exacerbated by the breadth of the claims.
Guidance of the specification and existence of working examples: The instant specification discloses in vitro administration of CRISPRi systems to cell lines at Examples 4-6. The instant specification is silent as to the in vivo administration of the same systems.
Predictability and state of the art: While CRISPRi is an established technology (reviewed in Barrangou and Doudna, 2016: see Figure 5), there are a number of hurdles to its routine in vivo use in human subjects. Bendixen et al., 2023 (hereinafter Bendixen) post-dates the effective filing date of the instant application but is hereby applied purely for evidentiary purposes to establish the state of the art at or around the time of filing. Bendixen discloses that off-target effects remain a concern with CRISPRi technologies (page 1932, column 2, paragraph 3). Furthermore, Bendixen discloses that one potential challenge to overcome for clinical implementation of CRISPRi for in vivo therapy is the immunogenicity of the Cas enzyme that may hinder repeated dosing of dCas9-effectors or stable expression from persistent vector types (page 1933, column 1, paragraph 2). In summary, there is still much to be learned about the in vivo therapeutic use of CRISPRi systems in human subjects, and these technologies are still some years away from being used therapeutically (page 1933, column 1, paragraph 4). The instant application is silent as to any proposals to overcome any of these hurdles.
However, the prior art does teach that CRISPRi systems have been successfully applied to mice in vivo. As disclosed in Zheng et al., 2018, CRISPRi has effectively silenced multiple genes in the mouse brain following delivery of CRISPRi machinery via an all-in-one lentiviral vector comprising a dCas9-KRAB fusion and several sgRNAs (Figure 5; section “CRISPRi achieves multiplex gene silencing in the brain”). Therefore, while hurdles to in vivo CRISPRi therapeutics in human subjects, it is considered that the prior art supplies the necessary guidance required for practicing in vivo CRISPRi in mouse systems.
Amount of experimentation necessary: The quantity of experimentation needed to carry out the full scope of the claimed method is large. One could not rely upon guidance provided in the instant disclosure or prior art. As set forth above, there is significant work in the field required before CRISPRi systems are used in vivo in human subjects (reviewed in Bendixen). Neither the prior art nor the instant disclosure teaches methods of overcoming these hurdles, meaning in vivo administration to human subjects of the CRISPRi systems claimed herein cannot be considered to be enabled by the instant disclosure or by the prior art. Accordingly, a large amount of inventive effort would be required to carry out the claimed invention of administering CRISPRi to a cell in vivo in a human subject in need thereof.
Furthermore, in In re Vaeck, 947 F.2d 488,495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991), the Court ruled that a rejection under 35 U.S.C. 112, first paragraph for lack of enablement was appropriate given the relatively incomplete understanding in the biotechnological field involved, and the lack of a reasonable correlation between the narrow disclosure in the specification and the broad scope of protection sought in the claims. Such is the case here where there is a relatively incomplete understanding in the biotechnological field involved, as described above, and the lack of a reasonable correlation between the narrow disclosure in the specification and the broad scope of protection sought in the claims.
In view of the breadth of the claims and the lack of guidance provided by the specification as well as the unpredictability of the art, the skilled artisan would have required an undue amount of experimentation to make and/or use the claimed invention. Therefore, claims 1-13 are not considered to be fully enabled by the instant disclosure.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regard to claim 1, which recites in part “a Clustered Regularly Interspaced Short Palindromic Repeats (CRISPR) interference (CRISPRi) system, or one or more nucleic acids encoding the CRISPRi system, configured to knockout or at least partially silence both alleles of a target endogenous gene...”, the Examiner notes that CRISPRi systems are, by definition, incapable of knocking out gene targets. As reviewed in Ghavami and Pandi, 2021 (hereinafter Ghavami), CRISPRi knocks down expression but does not knockout gene sequences themselves, as CRISPRi utilizes a catalytically dead Cas9, which is incapable of producing the requisite double-stranded breaks for gene knockout (see sections 4.1 and 7; Figure 2). Therefore, knockout via a CRISPRi system is impossible, rendering the scope of instant claim 1 and all claims which depend therefrom (i.e. instant claims 2-13) indefinite, as none of the dependent claims overcome this impossibility. For purposes of examination and in the interest of compact prosecution, the Examiner has interpreted instant claim 1 to recite in part “a Clustered Regularly Interspaced Short Palindromic Repeats (CRISPR) interference (CRISPRi) system, or one or more nucleic acids encoding the CRISPRi system, configured to at least partially silence both alleles of a target endogenous gene...”, which is consistent with the established principles by which CRISPRi functions.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With regard to claim 3, which depends from claim 1, the recitation that “the Cas protein is catalytically dead” does not further limit the Cas protein of instant claim 1, which is explicitly drawn to a CRISPRi system. As is known to those of ordinary skill in the art, CRISPRi functions with a catalytically dead Cas protein (reviewed in Barrangou and Doudna, 2016: see Figure 5). CRISPRi would not function properly with a catalytically active Cas protein. Therefore, given that instant claim 1 is explicitly drawn to a CRISPRi system, the Cas proteins of said CRISPRi system must be catalytically dead, as is recited at instant claim 3. Accordingly, it cannot be considered that instant claim 3 further limits instant claim 1.
With regard to claim 9, which recites “the method of claim 8, wherein the introducing into a cell comprises administering to a subject,” the Examiner notes that the method of claim 8 is drawn to in vivo administration. As is known to those of ordinary skill in the art, cells that exist in vivo exist in a living organism, i.e. a subject. Therefore, it is unclear how the additional limitation of administration to a subject further limits the in vivo methods of instant claim 8. While instant claims 10 and 11 depend from instant claim 9, the recitations of instant claims 10 and 11 do further limit the method of claim 8 and therefore are not included in this rejection.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 7, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Burnight et al., 2019 (hereinafter Burnight), Ji et al., 2019 (hereinafter Ji; as cited in Applicant IDS), and Grewal et al., 2021 (hereinafter Grewal; electronically published 02/27/2021), as evidenced by Barrangou and Doudna, 2016 (hereinafter Barrangou).
With regard to claim 1, which recites “a method comprising introducing into a cell an effective amount of: a Clustered Regularly Interspaced Short Palindromic Repeats (CRISPR) interference (CRISPRi) system, or one or more nucleic acids encoding the CRISPRi system, configured to...at least partially silence both alleles of a target endogenous gene, wherein the CRISPRi system comprises: (a) at least one Cas protein, (b) at least one gRNA, wherein each gRNA is configured to hybridize to a portion of the nucleic acid sequence encoding the target endogenous gene and (c) a transcriptional repressor; and a nucleic acid encoding an exogenous functional version of the target endogenous gene,” Burnight discloses the development of a CRISPR-based strategy for treatment for dominant retinal degenerative blindness, wherein said dominant mutations cause a maculopathy characterized by excessive accumulation of autofluorescent material between the RPE cells and photoreceptor outer segments leading to formation of subretinal lesions and loss of central vision (see section “Purpose”). The strategy disclosed in Burnight comprises administration of a dCas9 fused to a transcriptional repressor domain (KRAB) along with at least one guide RNA targeted to transcriptional regulatory elements in the promoter region of BEST1 (see section “Methods”). While Burnight does not explicitly disclose that the system taught therein is a CRISPRi system, those of ordinary skill in the art are aware that CRISPRi is, by definition, a transcriptional repression system comprising dCas9 potentially fused to a transcriptional repressor such as KRAB (reviewed in Barrangou: see Figure 5). Therefore, it is considered that Burnight discloses the instantly claimed CRISPRi system targeting an endogenous gene (i.e. BEST1). The disclosure of Burnight is supported by Ji, which teaches that gene suppression is best suited for the treatment of gain-of-function mutations in BEST1 (page 11, column 2, paragraph 1). While neither Burnight nor Ji disclose the instantly claimed nucleic acid encoding an exogenous functional version of the target endogenous gene, this deficiency is cured by Grewal.
Grewal discloses the development of therapeutic interventions for treating bestrophinopathies, which are a spectrum of disorders caused by mutations in the BEST1 gene (abstract). Grewal discloses that dominant BEST1 mutations can be treated by providing BEST1-AAV, thereby restoring deficiencies in calcium-dependent chloride channel activity (page 10, column 1, paragraph 2). While Grewal acknowledges that not all BEST1 mutations may respond to this methodology (page 10, column 1, paragraph 2), this disclosure nonetheless establishes that supplying a WT copy of BEST1 was a known and viable therapeutic strategy at the time of filing. Thus, it is considered that Burnight, Ji, and Grewal collectively disclose each and every limitation of instant claim 1, as evidenced by Barrangou.
With regard to claim 2, which recites “the Cas protein and the transcription repressor [of the method of claim 1] are provided as a fusion protein, or a nucleic acid encoding thereof,” as set forth above, the strategy disclosed in Burnight comprises administration of a dCas9 fused to a transcriptional repressor domain (KRAB) (see section “Methods”). Thus, it is considered that Burnight discloses each and every additional limitation of instant claim 2.
With regard to claim 3, which recites “the Cas protein [of the method of claim 1] is catalytically dead,” as set forth above, the strategy disclosed in Burnight comprises administration of a dCas9 fused to a transcriptional repressor domain (KRAB) (see section “Methods”). Thus, it is considered that Burnight discloses each and every additional limitation of instant claim 3.
With regard to claim 4, which recites “the Cas protein [of the method of claim 1] is Cas9, Cas12a, [or] Cas14,” the strategy disclosed in Burnight comprises administration of a dCas9 fused to a transcriptional repressor domain (KRAB) (see section “Methods”). Thus, it is considered that Burnight discloses each and every additional limitation of instant claim 4.
With regard to claim 7, which recites “the target endogenous gene [of the method of claim 1] is a disease-associated gene,” as set forth above, the methodology of Burnight targets the BEST1 gene (see section “Purpose”), mutations of which cause macular degenerative disorders as taught in Ji (abstract). Grewal further discloses that BEST1 is linked to a bestrophinopathy-related form of retinitis pigmentosa in a number of patients (page 3, column 2, paragraph 3-page 4, column 1, paragraph 1). Therefore, BEST1 is a disease-associated gene, as instantly claimed. Accordingly, it is considered that Burnight (as evidenced by Ji) discloses each and every additional limitation of instant claim 7.
With regard to claim 12, which recites “the target endogenous gene [of the method of claim 1] is BEST1,” as set forth above, the methodology of Burnight targets the BEST1 gene (see section “Purpose”). Thus, it is considered that Burnight discloses each and every additional limitation of instant claim 12.
With regard to claim 13, which recites “the BEST1 [of the method of claim 12] comprises a D203A, I205T or Y236C mutation,” as set forth above, the methodology of Burnight targets the BEST1 gene to treat disease processes associated with dominant mutations in BEST1 (see section “Purpose”). However, Burnight is silent as to the instantly claimed mutations. This deficiency is cured by Ji. Ji discloses that D203A, I205T, and Y236C are all gain-of-function mutations in BEST1 (abstract). As set forth above, Ji explicitly discloses that such mutations are likely to be treatable via suppression of gene expression (page 11, column 2, paragraph 1). Thus, it is considered that Ji discloses each and every additional limitation of instant claim 13.
Given that Burnight discloses CRISPRi targeting of BEST1 (as evidenced by Barrangou), that Ji discloses that gene suppression is best suited for the treatment of gain-of-function mutations in BEST1 such as D203A, I205T, and Y236C, and that Grewal discloses that dominant BEST1 mutations can be treated by providing BEST1-AAV, thereby restoring any deficiencies thereof, it would have been obvious to someone of ordinary skill in the art prior to the effective filing date of the instant invention to suppress expression of gain-of-function BEST1 mutants via CRISPRi (as disclosed in Burnight and Ji) while simultaneously supplying WT BEST1 (as disclosed in Grewal) to predictably suppress expression of mutant BEST1 and supply WT BEST1 to restore any deficiencies thereof. One would have been motivated to make such a modification in order to receive the expected benefit of suppressing expression of mutant BEST1 and restoring expression of WT BEST1 by supplying the same.
Claims 5, 6, and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Burnight et al., 2019 (hereinafter Burnight), Ji et al., 2019 (hereinafter Ji; as cited in Applicant IDS), and Grewal et al., 2021 (hereinafter Grewal; electronically published 02/27/2021), as evidenced by Barrangou and Doudna, 2016 (hereinafter Barrangou), as applied to claim 1 above, and further in view of Zheng et al., 2018 (hereinafter Zheng).
The combined disclosures of Burnight, Ji, Grewal, and Barrangou are described above and applied as before. However, these disclosures do not teach the single nucleic acid of instant claim 5, the vector of instant claim 6, the in vivo application of instant claims 8 and 9, or the diseases of instant claims 10 and 11.
With regard to claim 5, which recites “the Cas protein, the at least one gRNA, and the transcriptional repressor [of the method of claim 1] are provided on a single nucleic acid,” as set forth above, Burnight, Ji, and Grewal (as evidenced by Barrangou) collectively disclose the method of instant claim 1. However, the cited art is silent as to the instantly claimed single nucleic acid encoding the Cas protein, the at least one gRNA, and the transcriptional repressor of said method. This deficiency is cured by Zheng, which discloses in vivo CRISPRi in mice (abstract; Figure 5). Per Zheng, CRISPRi has effectively silenced multiple genes in the mouse brain following delivery of CRISPRi machinery via an all-in-one lentiviral vector comprising a dCas9-KRAB fusion and several sgRNAs (Figure 5; section “CRISPRi achieves multiplex gene silencing in the brain”). Thus, it is considered that Zheng discloses each and every additional limitation of instant claim 5.
With regard to claim 6, which recites “the single nucleic acid [of the method of claim 5] is a baculovirus or lentivirus vector,” as set forth above, Zheng discloses in vivo CRISPRi in mice following delivery of CRISPRi machinery via an all-in-one lentiviral vector comprising a dCas9-KRAB fusion and several sgRNAs (Figure 5; section “CRISPRi achieves multiplex gene silencing in the brain”). Thus, it is considered that Zheng discloses each and every additional limitation of instant claim 6.
With regard to claim 8, which recites “the cell [of the method of claim 1] is in vivo,” as set forth above, Zheng discloses in vivo CRISPRi in mice following delivery of CRISPRi machinery via an all-in-one lentiviral vector comprising a dCas9-KRAB fusion and several sgRNAs (Figure 5; section “CRISPRi achieves multiplex gene silencing in the brain”). Thus, it is considered that Zheng discloses each and every additional limitation of instant claim 8.
With regard to claim 9, which recites “the introducing into a cell [of the method of claim 8] comprises administering to a subject,” as set forth above (see section Claim Rejections - 35 USC § 112(d)), the additional limitation of administration to a subject does not further limit the in vivo methods of instant claim 8. Accordingly, as set forth above, Zheng discloses in vivo CRISPRi in mice following delivery of CRISPRi machinery via an all-in-one lentiviral vector comprising a dCas9-KRAB fusion and several sgRNAs (Figure 5; section “CRISPRi achieves multiplex gene silencing in the brain”), which is considered to read on the instantly claimed method, as mice meet the definition of a “subject” per paragraph [0056] of the instant specification. Thus, it is considered that Zheng discloses each and every additional limitation of instant claim 9.
With regard to claim 10, which recites “the subject [of the method of claim 9] has or is suspected to have a disease or disorder selected from the group consisting of a neurogenerative disease and an ocular disease,” as set forth above, the methodology of Burnight targets the BEST1 gene (see section “Purpose”), mutations of which cause macular degenerative disorders (i.e. an ocular disease) as taught in Ji (abstract). Grewal further discloses that BEST1 is linked to a bestrophinopathy-related form of retinitis pigmentosa (i.e. an ocular disease) in a number of patients (page 3, column 2, paragraph 3-page 4, column 1, paragraph 1). Thus, it is considered that Burnight, Ji, and Grewal collectively disclose each and every additional limitation of instant claim 10.
With regard to claim 11, which recites “the disease or disorder [of the method of claim 10] comprises...retinitis pigmentosa (RP),” as set forth above, Grewal discloses that BEST1 is linked to a bestrophinopathy-related form of retinitis pigmentosa (i.e. an ocular disease) in a number of patients (page 3, column 2, paragraph 3-page 4, column 1, paragraph 1). Thus, it is considered that Grewal discloses each and every additional limitation of instant claim 11.
Given that Burnight, Ji, and Grewal (as evidenced by Barrangou) collectively disclose the method of instant claim 1 as set forth above, that Zheng discloses in vivo all-in-one delivery of CRISPRi systems to suppress gene expression in mice, and that Ji and Grewal further disclose that BEST1 is associated with ocular diseases such as macular degenerative disorders and a bestrophinopathy-related form of retinitis pigmentosa, it would have been obvious to someone of ordinary skill in the art prior to the effective filing date of the invention to deliver all-in-one CRISPRi systems in vivo to murine subjects in need thereof (as disclosed in Zheng) to therapeutically intervene in ocular diseases associated with mutant BEST1, including macular degenerative disorders and bestrophinopathy-related forms of retinitis pigmentosa (as disclosed in Ji and Grewal, respectively). One would have been motivated to make such a modification in order to receive the expected benefit of treating macular degenerative disorders and bestrophinopathy-related forms of retinitis pigmentosa in subjects in need thereof.
Conclusion
No claims are allowed.
Claims 2 and 4 are objected to.
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.
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/SARAH E ALLEN/ Examiner, Art Unit 1637
/J. E. ANGELL/ Primary Examiner, Art Unit 1637
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