DETAILED ACTION
Status of the Claims
Claims 1-32 are pending in the instant application. Claims 15-23 and 29 have been withdrawn based upon Restriction/Election as discussed below. Claims 1-14, 24-28 and 30-32 are being examined on the merits in the instant application.
Advisory Notice
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
All rejections and/or objections not explicitly maintained in the instant office action have been withdrawn per Applicants’ claim amendments and/or persuasive arguments.
Priority
The instant Application filed 12/08/2023, claims priority to US Provisional Application No. 63/431,167 filed 12/08/2022, and has a child PCT/US2023/084857 filed 12/19/2023.
The U.S. effective filing date for claims 1, 5-14 has been determined to be 12/08/2022, the filing date of 63/431,167.
The U.S. effective filing date for claims 2-4, 24-28 and 30-32 has been determined to be 12/08/2023, the filing date of the instant application.
Claim Rejections - 35 USC § 112(b)
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-14, 24-28 and 30-32 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 pre-AIA the applicant regards as the invention.
Claims 1 and 24 have been amended to recite “when stored at ambient temperature” in lines 7-8, and 17-18, respectively. It is unclear what “ambient temperature” should be considered in the context of the claim because the temperature can vary considerably based on the environment under which the ambient conditions are found. Appropriate clarification is required. Claims 2-14, 25-28 and 29-32 depend from base claims 1 & 24 and inherit the above discussed limitation, and are therefore rejected for the same reasoning.
Claim 14 is further rejected as being indefinite because the claim recites “wherein the cationic polymer is polyvinyl pyrrolidone.” However, polyvinyl pyrrolidone is not a cationic polymer. The examiner cites Lou et al. (“Multifunctional Role of Polyvinylpyrrolidone in Pharmaceutical Formulations,” 2021, APPS; AAPS PharmSciTech Vol. 22, article 34, pp. 1-16) disclosing that: “Polyvinylpyrrolidone (PVP), a non-ionic polymer, has been employed in multifarious fields such as paper, fibers and textiles, ceramics, and pharmaceutics due to its superior properties.” [emphasis added](abstract, lines 1-3). Appropriate correction is required.
Response to Arguments:
Applicant's arguments filed 08/10/2026 have been fully considered but they are not persuasive.
With respect to claim 14, the examiner maintains that polyvinylpyrrolidone (PVP) is a nonionic polymer as per Lou et al., a published scientific paper. Applicant has submitted print-outs of world wide web pages which indicate PVP can be cationic without any scientific explanation or chemical structure showing the same. Therefore, Applicant’s evidence is not convincing and the rejection is maintained.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5-6 and 9 remain rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Nilsen (“Selective Precipitation of Large RNAs,” 2012, Cold Spring Harbor Laboratory Press, Cold Spring Harbor Protocols, doi:10.1101/pdb.prot072322, pp. 1302-1303).
Applicant Claims
Applicant claims a method for preparing a stable nucleic acid liquid formulation comprising: providing DNA or RNA solution having an initial DNA or RNA concentration; adding at least one polymer, adding at least one salt; and forming a macroscopic DNA-rich or RNA-rich condensate, wherein the DNA or RNA in the condensate is protected against degradation when the formulation is stored at ambient temperature (instant claim 1). Applicant further claims the polymer is polyethylene glycol (PEG) (instant claim 5) and the salt is sodium chloride (NaCl). Applicant further claims the DNA-rich or RNA-rich condensate is separated by centrifugation (instant claim 9)
Disclosure of the Prior Art
Nilsen discloses selective precipitation of large RNAs (title, see whole document), and particularly that “For reasons that are somewhat mysterious, “large” RNAs ≥100 nucleotides long can be selectively separated from small RNAs <100 nucleotides long by precipitation with either LiCl or PEG/NaCl. These methods are very straightforward, and are valuable for enriching for very small RNAs (i.e., miRNAs) in unprecipitated material while retaining all other RNAs in the precipitate.” (p. 1302, 1st paragraph).
Nilsen discloses that: “1. Mix RNA (at least 1 μg/μL) with either 5 M LiCl to a final concentration of 2.5 M or with 50% PEG 8000 and 5 M NaCl to final concentrations of 5% PEG and 0.5 M NaCl. 2. Incubate the mixture for 30 min on ice. Centrifuge the mixture at maximum speed in a microcentrifuge for 30 min or at 10,000 rpm in a centrifuge for 30 min.” (§METHOD steps 1-3). The examiner takes the position that a precipitate would have been visible to the naked eye (i.e. a macroscopic RNA-rich condensate)(instant claims 1, 5-6 & 9).
Regarding the added limitation, “wherein the DNA or RNA in the condensate is protected against degradation when the formulation is stored at ambient temperature.”, the claimed method steps and ingredients are the same as in the prior art, and therefore the result of the method would have been the same. Additionally the examiner notes that “protected against degradation” includes any level of protection against degradation, and “stored at ambient temperature” includes any storage for any amount of time.
Response to Arguments:
Applicant's arguments filed 08/10/2026 have been fully considered but they are not persuasive.
Applicant argues that: “In contrast to the present claims, Nilsen is generally directed towards a benchtop laboratory protocol addressed to a purification problem, that is, separating RNA species by size. Nilsen observes that "'large' RNAs 2:100 nucleotides long can be selectively separated from small RNAs <100 nucleotides long by precipitation with either LiCl or PEG/NaCl," and explains that these methods are "valuable for enriching for very small RN As (i.e., miRNAs) in unprecipitated material while retaining all other RN As in the precipitate." The disclosed procedure of Nilsen is a three-step bench operation: the practitioner mixes RNA with either 5 M LiCl or with 50% PEG 8000 and 5 M NaCl to reach final concentrations of 5% PEG and 0.5 M NaCl, incubates the mixture for 30 minutes on ice, and then centrifuges it for 30 minutes to pellet the large RNAs. The pelleted precipitate is a transient purification intermediate and as such the practitioner recovers it (or the supernatant) for downstream use in fractionating large from small RNAs. Nilsen thus concerns size-selective purification and enrichment, however, it does not describe preparing, storing, or stabilizing a nucleic acid formulation or a condensate that is DNA and/or RNA rich which has the claimed stability features. Further, as will be appreciated, Nilsen's ice-incubated, size-selective precipitate is not necessarily the same as the claimed precipitate, which is a liquid-liquid phase-separated, reversible, storage formulation which is supported by the examples illustrating the technology in the Specification. As will be further appreciated, and as discussed in the Specification, full reversibility of the claimed storage utility is of importance underlying the claimed technology.” (paragraph bridging pp. 13-14). And that: “Independent claim I recites the features of "forming a macroscopic DNA-rich or RNArich condensate, wherein the DNA or RNA in the condensate is protected against degradation such that the formulation is storable at ambient temperature." Nilsen neither discloses nor characterizes its precipitate as a degradation-protecting or storage-stable form.” (p. 13, 2nd paragraph). And that: “In the present case, the claims enable the formation of stable DNA/RNA-rich condensates where the stability of the macroscopic condensates are realized through minimizing degradation of the nucleic acids at ambient temperatures. Nilsen, on the other hand, is entirely silent as to degradation protection, shelf life, or ambient temperature storage stability of the precipitated RNA, instead its incubation is performed on ice and its centrifuged pellet is carried forward for further processing, not stored.” (p. 14, last paragraph).
In response the examiner argues that the claimed method includes the steps of: (1) providing a DNA or RNA solution having an initial DNA or RNA concentration; (2) adding at least one polymer; (3) adding at least one salt; and (4) forming a macroscopic DNA-rich or RNA-rich condensate” which steps and constituent ingredients are disclosed by Nilsen et al. The resulting properties would have been the same (MPEP §2112.02). Additionally the examiner notes that “protected against degradation” includes any level of protection against degradation, and “stored at ambient temperature” includes any storage for any amount of time (MPEP §2111).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-14, 24-28 and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over ANCHIRDOQUY (US 2021/0369860 A1; published December, 2021) in view of Nilsen (“Selective Precipitation of Large RNAs,” 2012, Cold Spring Harbor Laboratory Press, Cold Spring Harbor Protocols, doi:10.1101/pdb.prot072322, pp. 1302-1303); HASS (WO 2021/001417 A1; published January, 2021) and MCKERNAN (WO 2002/055727 A2; published January, 2001); and as evidenced by Nag et al. (“DoE-derived continuous and robust process for manufacturing of pharmaceutical-grade wide-range LNPs for RNA-vaccine/drug delivery” 2022, NPG; Scientific Reports, Vol. 12, No 9394, pp. 1-11).
Applicants Claims
Applicant claims a method for preparing a stable nucleic acid liquid formulation, as discussed above. Applicant further claims the DNA or RNA solution is at least one of a nucleic acid stabilizing buffer and one or more other nucleic acid stabilizing excipients (instant claim 2), the buffer is at least one of citrate, 1-2-3-4-butanetetracarboxylic acid, Tris, bis-Tris (instant claim 3), the one or more other nucleic acid stabilizing agents include phenylalanine, arginine, glutamic acid, glycine, proline, tween, poloxamer, and cyclodextrin (instant claim 4). Applicant further claims greater than 95% of the DNA or RNA in solution is partitioned into the DNA-rich or RNA-rich condensate (instant claim 8), further comprising dissolving the DNA-rich or RNA-rich condensate in water or other diluents (instant claim 10), the DNA or RNA concentration is restored to the initial DNA or RNA concentration (claim 11), and wherein there is no significant degradation of DNA or RNA in the DNA-rich or RNA-rich condensate for at least three days at ambient temperature (instant claim 12). Applicant further claims the inclusion of polyvinyl pyrrolidone (instant claims 13-14).
Applicant claims a method of preparing a stable nucleic acid encapsulated lipid nanoparticles (DNA/RNA-LNP) liquid formulation comprising: (i) providing a DNA or RNA solution in an LNP synthesis buffer containing at least one nucleic acid stabilizing buffer salt and at least one other nucleic acid stabilizing excipient, the DNA or RNA having an initial concentration; (ii) synthesizing DNA or RNA encapsulated LNPs based on the DNA or RNA solution and the LNP synthesis buffer, wherein the LNP synthesis buffer is used as the quenching buffer; (iii) preparing a plurality of formulation product buffers containing at least one nucleic acid stabilizing buffer salt and at least one other nucleic acid stabilizing excipient, wherein the formulation product buffers have a series of concentrations; (iv) performing buffer exchange for the DNA or RNA encapsulated LNPs using a LNP product formulation buffer without a macromolecular crowding reagent; (v) after the buffer exchange, adding a macromolecular crowding agent and at least one nucleic acid stabilizing excipient at the series of concentrations to the DNA/LNP-LNP formulation after buffer exchange; and (vi) forming the stable nucleic acid encapsulated lipid nanoparticle liquid formulation, wherein the DNA/RNA-LNP’s are protected against degradation when stored at ambient temperature (instant claim 24).
Determination of the scope
and content of the prior art (MPEP 2141.01)
ANCHIRDOQUY teaches functionalized nanoparticle formulations for oral drug delivery (title, see whole document). And particularly “This invention relates generally to the field of drug delivery systems. The system includes the use of FcRn binding partners as targeting moieties conjugated to a nanoparticle for oral administration of therapeutic agents.” ([0002]), the FcRn binding partner(s) included for binding receptors on epithelial cells to enhance uptake in the gastrointestinal tract ([0006]).
ANCHIRDOQUY teaches that: “The nanoparticle of this disclosure may be formed as an extracellular vesicle (e.g. exosomes, ectosome), an endosome, a liposome, a lipoplex, a micelle, or a reverse micelle. Nanoparticles of this disclosure may be used to form compositions comprising the nanoparticles suspended in a pharmaceutically acceptable excipient, and can be administered orally to a subject.” ([0007]).
ANCHIRDOQUY teaches a method for preparing a stable nucleic acid liquid formulation (para [0005] – “Compositions and methods are provided for the oral administration of therapeutic agents. In the methods of this disclosure, a therapeutic agent, including for example low-molecular weight compounds, such as small molecules, proteins or nucleic acid therapeutics, such as antibodies, antibody drug conjugates, or gene therapy constructs, cells or microbes, such as stem cells, or recombinant viruses, are encapsulated In nanoparticles comprising a polymer or lipid membrane, e.g. a liposomal structure”; para [0100] – “The nanoparticles may be loaded with one or more therapeutic agents by suspending or dissolving the therapeutic agent(s) in a suitable buffer and/or solvent”; para [0044] – “Additionally, the nanoparticles preferably exhibit in vitro and in vivo stability”) comprising: providing a DNA or RNA solution having an initial DNA or RNA concentration (para [0100] – “The nanoparticles may be loaded with one or more therapeutic agents by suspending or dissolving the therapeutic agent(s) in a suitable buffer and/or solvent and incubating the nanoparticles in the suspension/solution containing the therapeutic agent(s)”; para [0079] – “the therapeutic agents can be proteins or nucleic acid therapeutics, such as antibodies, antibody drug conjugates, or gene therapy constructs”); adding at least one polymer (para [0100] – “The nanoparticles may be loaded with one or more therapeutic agents by suspending or dissolving the therapeutic agent(s) in a suitable buffer and/or solvent and incubating the nanoparticles in the suspension/solution containing the therapeutic agent(s)”; para (0052] – “The nanoparticles of this disclosure may also be polymeric particles”); adding at least one salt (para (0100] – “The nanoparticles may be loaded with one or more therapeutic agents by suspending or dissolving the therapeutic agent(s) in a suitable buffer”; para [0079] – “the therapeutic agents can be proteins or nucleic acid therapeutics, such as antibodies, antibody drug conjugates, or gene therapy constructs”; para [0085] – “suitable carriers include, e.g., water, buffered aqueous solution, 0.4% NaCl, 0.3% glycine, and the like”); and forming a macroscopic DNA-rich or RNA-rich condensate (para (0060] – “Polymers can be cationic polymers. In general, cationic polymers can condense and/or protect negatively-charged strands of nucleic acids (e.g., DNA, RNA, or derivatives thereof)”)(instant claim 1).
ANCHIRDOQUY teaches a method for preparing a stable nucleic acid encapsulated lipid nanoparticles (DNA/RNA-LNP) liquid formulation comprising (i) providing a DNA or RNA solution in an LNP synthesis buffer containing at least one nucleic acid stabilizing buffer salt and at least one other nucleic acid stabilizing excipient, the DNA or RNA having an initial concentration (para [0005] – “Compositions and methods are provided for the oral administration of therapeutic agents. In the methods of this disclosure, a therapeutic agent, including for example low molecular weight compounds, such as small molecules, proteins or nucleic acid therapeutics, such as antibodies, antibody drug conjugates, or gene therapy constructs, cells or microbes, such as stem cells, or recombinant viruses, are encapsulated in nanoparticles comprising a polymer or lipid membrane, e.g. a liposomal structure”; para [0100] - "The nanoparticles may be loaded with one or more therapeutic agents by suspending or dissolving the therapeutic agent(s) in a suitable buffer and/or solvent”; para [0068] – “Exemplary buffer solutions include, without limitation, a phosphate buffer solution, citrate buffer solution, and phosphate-buffered physiological saline solution, physiological saline water, culture mediums for cell culturing, and the like”; para [0044] – “Additionally, the nanoparticles preferably exhibit in vitro and in vivo stability.”); (ii) synthesizing DNA or RNA encapsulated LNPs based on the DNA or RNA solution and the LNP synthesis buffer, wherein the LNP synthesis buffer is used as the quenching buffer (para [0100] – “The nanoparticles may be loaded with one or more therapeutic agents by suspending or dissolving the therapeutic agent(s) in a suitable buffer and/or solvent and incubating the nanoparticles in the suspension/solution containing the therapeutic agent(s)”); (iii) preparing formulation product buffers (para [0082]); (iv) performing buffer exchange for the DNA or RNA encapsulated LNPs using a LNP product formulation buffer without a macromolecular crowding reagent (para [0091] – “Well-known methods exist for removing any undesired or unincorporated complexes or compositions, such as therapeutic agent not encapsulated within nanoparticles. Representative examples include, without limitation, dialysis, centrifugal separation, tangential flow filtration (TFF) and gel filtration. Dialysis can be conducted, for example, using a dialysis membrane”; para [0082] – “There are no limitations on the solvent of the nanoparticle composition in the case where the composition is a liquid formulation. Representative examples include buffer solutions such as phosphate buffer solution, citrate buffer solution, and phosphate buffered physiological saline solution, physiological saline water, and culture mediums for cell culturing"); (iv) adding a macromolecular crowding agent and at least one nucleic acid stabilizing excipient at the series of concentrations to the DNA/LNP -LNP formulation after buffer exchange; and forming the stable nucleic acid encapsulated lipid nanoparticle liquid formulation (para [0085] - “A buffer substance can be added to provide pH optimal for storage stability. For example, pH between about 6.0 and about 7.5, more preferably pH about 6.5, is optimal for the stability of liposome membrane lipids, and provides for excellent retention of the entrapped entities. Histidine, hydroxyethylpiperazine-ethylsulfonate (HEPES), morpholipo-ethylsulfonate (MES), succinate, tartrate, and citrate, typically at 2-20 mM concentration, are exemplary buffer substances. Other suitable carriers include, e.g., water, buffered aqueous solution, 0.4% NaCl, 0.3% glycine, and the like. Protein, carbohydrate, or polymeric stabilizers and tonicity adjusters can be added, e.g., gelatin, albumin, dextran, or polyvinylpyrrolidone")(instant claim 24).
ANCHIRDOQUY teaches the method of instant claim 1, as discussed above, and further teaches wherein the DNA or RNA solution is in at least one of a nucleic acid stabilizing buffer and one or more other nucleic acid stabilizing excipients (para [0068] – “Exemplary buffer solutions include, without limitation, a phosphate buffer solution, citrate buffer solution, and phosphate-buffered physiological saline solution, physiological saline water, culture mediums for cell culturing, and the like”; para [0044] – “Additionally, the nanoparticles preferably exhibit in vitro and in vivo stability'”)(instant claim 2).
ANCHIRDOQUY further teaches wherein the nucleic acid stabilizing buffer is at least one of citrate, 1-2-3-4-butanetetracarboxylic acid, tris, bis-Tris, citrate, and 1-2-3-4-butanetetracarboxylic acid (para [0068] -“Exemplary buffer solutions include, without limitation, a phosphate buffer solution, citrate buffer solution, and phosphate-buffered physiological saline solution, physiological saline water, culture mediums for cell culturing, and the like”; para [0044] – “Additionally, the nanoparticles preferably exhibit in vitro and in vivo stability”)(instant claim 3).
ANCHIRDOQUY further teaches wherein the one or more other nucleic acid stabilizing excipients comprise at least one of phenylalanine arginine, glutamic add, glycine, proline, tween, poloxamer, tween, and cyclodextrin (para (0085] - "Other suitable carriers include, e.g., water, buffered aqueous solution, 0.4% NaCl, 0.3% glycine, and the like"; para [0044] - "Additionally, the nanoparticles preferably exhibit in vitro and in vivo stability")(instant claim 4).
ANCHIRDOQUY teaches wherein the polymer is polyethylene glycol (PEG) (para [0053] - "Examples of suitable polymers include ... polyethers (e.g., polyethylene glycol)")(instant claim 5).
ANCHIRDOQUY teaches wherein the salt is sodium chloride (NaCl) (para [0085] – “Representative examples of liquid stabilizers include, without limitation, normal saline, isotonic dextrose, isotonic sucrose, Ringer's solution, and Hanks' solution. A buffer substance can be added to provide pH optimal for storage stability. For example, pH between about 6.0 and about 7.5, more preferably pH about 6.5, is optimal for the stability of liposome membrane lipids, and provides for excellent retention of the entrapped entities. Histidine, hydroxyethylpiperazine-ethylsulfonate (HEP ES), morpholipo-ethylsulfonate (MES), succinate, tartrate, and citrate, typically at 2-20 mM concentration, are exemplary buffer substances. Other suitable carriers include, e.g., water, buffered aqueous solution, 0.4% NaCl, 0.3% glycine, and the like")(instant claim 6).
ANCHIRDOQUY teaches wherein greater than 95% of the DNA or RNA in solution is partitioned into the DNA-rich or RNA-rich condensate (para [0097] – “Therefore, the nanoparticle compositions are preferably adjusted in the external phase to contain less than 10%, or less than 5%, or less than 2%, or less than 1 %, or less than 0.1 %, or less than 0.01% unconjugated FcRn binding partners, or unencapsulated or unbound therapeutic agent(s)”; para.[0005]- “Compositions and methods are provided for the oral administration of therapeutic agents. In the methods of this disclosure, a therapeutic agent, including for example low-molecular weight compounds, such as small molecules, proteins or nucleic acid therapeutics, such as antibodies, antibody drug conjugates, or gene therapy constructs, cells or microbes, such as stem cells, or recombinant viruses, are encapsulated in nanoparticles comprising a polymer or lipid membrane, e.g. a liposomal structure”)(instant claim 8).
ANCHIRDOQUY teaches wherein the DNA-rich or RNA-rich condensate is separated by centrifugation (para [0091] – “Well-known methods exist for removing any undesired or unincorporated complexes or compositions, such as therapeutic agent not encapsulated within nanoparticles. Representative examples include, without limitation, dialysis, centrifugal separation”)(instant claim 9).
ANCHIRDOQUY teaches the method further comprising: dissolving the DNA-rich or RNA-rich condensate in water and other diluents (para [0052] – “The nanoparticles of this disclosure may also be polymeric particles”; para [0060] – “Polymers can be cationic polymers. In general, cationic polymers can condense and/or protect negatively-charged strands of nucleic acids (e.g., DNA, RNA, or derivatives thereof)”; para [0096] – “In cases where the nanoparticle composition is a solid preparation, it can be dissolved or suspended in a suitable solvent and, used as a liquid formulation”; para [0085] – “For purposes of stable long-term storage of the nanoparticle composition it is preferable to eliminate the electrolyte in the solvent as much as possible ... Histidine, hydroxyethylpiperazine-ethylsulfonate (HEPES), morpholipo ethylsulfonate (MES), succinate, tartrate, and citrate, typically at 2-20 mM concentration, are exemplary buffer substances. Other suitable carriers include, e.g., water, buffered aqueous solution, 0.4% NaCl, 0.3% glycine, and the like")(instant claim 10).
ANCHIRDOQUY teaches wherein the polymer is at least one of a biocompatible crowding polymer and a cationic polymer (para [0060] – “Polymers can be cationic polymers”)(instant claim 13). And further teaches wherein the cationic polymer is polyvinyl pyrrolidone (para [0053] – “Examples of suitable polymers include ... poly(vinyl pyrrolidone)”)(instant claim 14).
ANCHIRDOQUY teaches wherein the LNP synthesis buffer are citrate or 1-2-3-4-butanetetracarboxylic acid, at pH between 3 and 4 (buffer is free of acetate) (para [0082] – “There are no limitations on the solvent of the nanoparticle composition in the case where the composition is a liquid formulation. Representative examples include buffer solutions such as phosphate buffer solution, citrate buffer solution”; para [0083] – “the pH may be between 2 and 11”)(instant claim 30).
ANCHIRDOQUY teaches wherein the LNP product formulation buffer comprises at least one of Iris, bis-Tris, citrate, or 1-2-3-4-butanetetracarboxylic acid at pH between 6 and 8.5 (para [0082] – “There are no limitations on the solvent of the nanoparticle composition in the case where the composition is a liquid formulation. Representative examples include buffer solutions such as phosphate buffer solution, citrate buffer solution”; para [0083] – “the pH may be between 2 and 11”)(instant claim 26).
ANCHIRDOQUY teaches wherein the other nucleic acid stabilizing excipient comprises at least one of phenylalanine arginine, glutamic acid, glycine, proline, tween, poloxamer, and cyclodextrin (para [0085] – “Histidine, hydroxyethylpiperazine-ethylsulfonate (HEPES), morpholipo-ethylsulfonate (MES), succinate, tartrate, and citrate, typically at 2-20 mM concentration, are exemplary buffer substances. Other suitable carriers include, e.g., water, buffered aqueous solution, 0.4% NaCl, 0.3% glycine, and the like”)(instant claim 27).
ANCHIRDOQUY teaches wherein the macromolecular crowding
reagent is polyethylene glycol (para [0085] – “polymeric stabilizers and tonicity adjusters can be added”; para [0053] – “Examples of suitable polymers include polyalkylenes (e.g., polyethylenes) ... polyethers (e.g., polyethylene glycol)”)(instant claim 28).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of ANCHIRDOQUY is that ANCHIRDOQUY does not expressly teach the RNA is mRNA (instant claim 7); the RNA concentration is restored to the initial RNA concentration (i.e. resuspended/reconstituted)(instant claim 11); the RNAis not degraded in the RNA-rich condensate for at least three days (instant claim 12).
Regarding instant claim 7, ANCHIRDOQUY teaches the method of claim 1, but does not explicitly teach wherein the RNA solution is an mRNA solution. ANCHIRDOQUY teaches the encapsulation of nucleic acids in nanoparticles to generate stable nucleic acid formulation (para [0008] – “These nanoparticles may therefore be used to administer a therapeutic agent to elicit a beneficial effect. The nanoparticles conjugated to the FcRn binding partners are designed to deliver a wide variety of therapeutics, including stem cells, RNA and DNA nucleotides, peptides,
carbohydrates, and/or small molecules or chemical compounds”; para [0044] –“Additionally, the nanoparticles preferably exhibit in vitro and in vivo stability”). It would have been obvious to one of ordinary skill in the art, during the course of ordinary experimentation to apply mRNA as the nucleic acid in the method taught by ANCHIRDOQUY in order to produce a stable mRNA nanoparticle formulation.
Further regarding claim 7, HASS teaches RNA formulations suitable for therapy (title, see whole document), and particularly “The formulations display improved transfection efficacy and they can be used for delivery of RNA to a subject, where they have an improved dose response relationship in comparison to formulations where large aggregates in the form of polyplex nanoparticles are present.” (abstract). And particularly teaches mRNA (p. 7, lines 10-11 - “In one embodiment of the compositions described herein, the RNA is selected from the group consisting of mRNA, […].”)(instant claim 7).
Regarding claim 11, ANCHIRDOQUY teaches the method of claim 10, but does not explicitly teach wherein the DNA or RNA concentration is restored to the initial DNA or RNA concentration. ANCHIRDOQUY teaches modulating the concentration of nucleic acids present in the nanoparticle composition (para [0081] – “The concentration of nanoparticle and the concentration of the therapeutic agent in the nanoparticle composition can be appropriately set according to the nanoparticle composition objective, formulation, and other considerations well known to the skilled· artisan”; para [0008] – “These nanoparticles may therefore be used to administer a therapeutic agent to elicit a beneficial effect. The nanoparticles conjugated to the FcRn binding partners are designed to deliver a wide variety of therapeutics, including stem cells, RNA and DNA nucleotides, peRtides, carbohydrates, and/or small molecules or chemical compounds”). ANCHIRDOQUY further teaches “Samples was then centrifuged […] and pellets were washed in lxPBS. Samples were centrifuged again […] and pellets were resuspended in lxPBS. Exosome samples were mounted and imaged via laser scanning confocal microscopy using a Zeiss LSM780 microscope.” ([0115]). Which would have suggested to one of ordinary skill to restore the RNA concentration to the initial RNA concentration as resuspending typically includes the same volume of solution (instant claim 11).
Regarding claim 12, ANCHIRDOQUY teaches the method of claim 1, but does not explicitly teach wherein there is no significant degradation of DNA or RNA in the DNA-rich or RNA-rich condensate for at least three days at ambient temperature. ANCHIRDOQUY teaches modifying the degradation rate by modulating polymer composition (para [0058] - "The polymer may comprise PLGA. PLGA is a biocompatible and biodegradable co-polymer of lactic acid and glycolic acid, and various forms of PLGA are characterized by the ratio of lactic acid:glycolic acid. Lactic acid can be L-lactic acid, D-lactic acid, or D,L-lactic acid. The degradation rate of PLGA can be adjusted by altering the lactic acid:glycolic acid ratio"). It would have been obvious to one of ordinary skill in the art, during the course of ordinary experimentation, to apply the method taught by ANCHIRDOQUY to generate a formulation to prevent the degradation of DNA or RNA for at least three days at ambient temperature.
Additionally, regarding claim 12, ANCHIRDOQUY teaches including EDTA (ethylenediaminetetraacetic acid, chelating agent), and HASS teaches “Certain embodiments of the present disclosure contemplate the use of a chelating agent in a
composition described herein. Chelating agents refer to chemical compounds that are capable of forming at least two coordinate covalent bonds with a metal ion, thereby generating a stable, water-soluble complex. Without wishing to be bound by theory, chelating agents reduce the concentration of free divalent ions, which may otherwise induce accelerated RNA degradation in the present disclosure. Examples of suitable chelating agents include, without limitation, ethylenediaminetetraacetic acid (EDTA), […].” (p. 51, lines 1-7). It would have therefore been prima facie obvious to include a chelating agent such as EDTA for increased stability, as suggested by HASS. HASS further teaches Example 10: Polymer associated, monomeric RNA-species are colloidal stable in liquid storage over long periods of time (p. 73, Example 10).
HASS further teaches including stabilizers such as an amino acid or a surfactant (e.g. poloxamer)(p. 49, item B, through p. 50, line 7). HASS teaches including buffers such as Tris and citric acid alone (p. 50, item C, lines 19 & 26).
Nilsen discloses a protocol for condensing (selective precipitation) of RNAs using PEG/NaCl solution, as discussed above and incorporated herein by reference.
MCKERNAN teaches methods and reagents for isolation of nucleic acids (title, see whole document), and particularly teaches that: “In general, the presence of PEG provides a hydrophobic solution which forces hydrophilic nucleic acid molecules out of solution. The advantages of using PEG which is a nondenaturing water soluble polymer, rather than an organic precipitating reagent (e.g., ethanol, isopropanol or phenol), are attributed to its benign chemical properties.
According to the current invention, nucleic acid precipitates, e.g., PEG-induced nucleic acid precipitates, are adsorbed to the surfaces of a solid phase carrier” (p. 14, lines 22-28).
MCKERNAN further teaches that: “The first reagent can also contain salts to facilitate the adsorption of the nucleic acid to the solid phase carrier. Suitable salts which are useful for facilitating the adsorption of nucleic acid molecules targeted for isolation to a solid phase carrier […] In a preferred embodiment, sodium chloride is used. In general, the presence of salt functions to minimize the negative charge repulsion of the nucleic acid molecules. The wide range of salts suitable for use in the method indicates that many other salts can also be used and suitable levels can be empirically determined by one of ordinary skill in the art.
As used herein, "facilitated adsorption" refers to a process whereby a nucleic acid precipitating reagent, (e.g., a poly-alkyelene glycol) is used to promote the precipitation and subsequent adsorption of a species of DNA molecules, which were initially in mixture, onto the surface of a solid phase carrier.” (p. 15, lines 10-23).
Regarding new claims 31 and 32 reciting “selecting LPN synthesis buffer and the LPN product formulation buffer […] such that they achieve close-to-equal (isotonic) osmotic pressure” (claim 31), and “matching the LNP product formulation buffer to the LNP synthesis buffer based on osmotic pressure” (claim 32), a person having ordinary skill in the art would have recognized that if the osmotic pressure in the LPN particle is different from the bulk liquid of the DNA/RNA-LPN liquid formulation, the LPN particles would not be stable. Therefore, it would have been prima facie obvious to match the LPN synthesis buffer with the LPN product formulation buffer. The examiner cites Nag et al. teaching that: “LNPs are usually made with an organic solvent necessary for the constituting lipid components. Ethanol has been remained as the most widely used solvent for this purpose. Ethanol must be removed to make the formulation suitable for clinical administration. Two methods are generally adopted in industry to remove ethanol, viz., diafiltration and dialysis. The buffer (generally, at pH 7.4) is exchanged as the media of choice for formulation of the doses during this process. LNPs undergo maturation process during this step as such that smaller LNPs gradually fuse to conform larger LNPs to achieve stabilization. This phenomenon may not be an exclusive property for LNP made with MC3 but likely a common property for LNPs made with other ionizable lipids as observed for DOTMA-LNPs and DODMA-LNPs. This phenomenon has been collectively attributed to Ostwald ripening, osmotic pressure of the system in action, influence of buffer system on fractional charge of the ionizable lipid, mechanical condition, thermal properties etc. There were efforts to minimize such effects by employing special technologies. The infinite dilution method is a technique in the field for offsetting the effect where, after formation into a suitable buffer, the LNPs are subjected for high dilution to reduce the chance of high-frequency physical contact of LNPs in the system. The final formulation for the method is achieved through buffer exchange or buffer concentration using TFF or diafiltration. The other method relies on dialysis against a suitable buffer. Both of these methods are in use with appropriate tuning of the method; though the constitutive size enlargement over the time does not stop unless the critical diameter for LNPs for a specific system is achieved. This observation has been suggesting that there might be alternative driving force(s) that can affect Ostwald ripening.” [emphasis added](p. 2, last paragraph through p. 4, line 2).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a method for preparing a stable nucleic acid solution such as mRNA using a selective precipitation, as suggested by Nilsen, HASS and MCKERNAN, for use in a nucleic acid delivery lipid nanoparticles as suggested by ANCHIRDOQUY, in order to produce a composition for efficacious delivery of mRNA; and to use isotonic buffer exchange for stable mRNA lipid nanoparticles, as suggested by Nag et al. for a process of encapsulating RNA in LPN’s.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention because protocols such as condensing RNA using PEG/NaCl were known as taught by Nilsen and MCKERNAN, as were forming delivery lipid nanoparticles as taught by ANCHIRDOQUY and HASS. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
Response to Arguments:
Applicant's arguments filed 08/10/2026 have been fully considered but they are not persuasive.
Applicant argues that: As discussed above, the present claims include the features of "forming a macroscopic DNA-rich or RNA-rich condensate, wherein the DNA or RNA in the condensate is protected against degradation such that the formulation is storable at ambient temperature." As will be appreciated, the claimed method enables the formation of stable DNA/RNA-rich condensates that resist degradation of the nucleic acid at ambient temperatures. In light of this, and the differences discussed above with respect to Nilsen, Applicant submits that the combination of references relied upon do not teach or suggest these features, and particularly one of skill in the art would not have been led to combine the cited teachings to arrive at the claimed invention with a reasonable expectation of success. The cited references do not supply such a reason with respect to at least independent claim 1, as amended, because none of the references is directed to the problem the present technology solves, that is, protecting the nucleic acid within a macroscopic condensate so that the liquid formulation is storable at ambient temperature. While the references may be related to various polymers and nucleic acids and different lab methodologies are used, none of them addresses any objective to which the present claims are.” (paragraph bridging pp. 15-16).
ANCHIRDOQUY clearly teaches forming RNA-rich condensates, as detailed above, and the method steps and constituent ingredients are the same therefore the result of the method would have been the same as well, including “wherein the RNA-LNPs are protected against degradation when stored at ambient temperature.” (MPEP §2112.02). Additionally the examiner notes that “protected against degradation” includes any level of protection against degradation, and “stored at ambient temperature” includes any storage for any amount of time (MPEP §2111). In response to Applicants allegation that: “none of the references is directed to the problem the present technology solves” the examiner notes that MPEP §2144(IV) makes clear that: “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.”
Applicant further argues that: “Accordingly, in contrast to the present claims each of the cited references are directed to, and address a different objective. For instance, Nilsen and McKernan are directed to size-selective purification and isolation of nucleic acids by precipitation, with McKernan expressly precipitating nucleic acid to adsorb it onto a solid-phase carrier for isolation. Further, Anchordoquy is directed to FcRn-targeted nanoparticles for oral drug delivery, and Haas is directed to RNA formulations for improved transfection efficacy. None of these references teach or suggest forming a macroscopic condensate in which the nucleic acid is protected against degradation such that the formulation is storable at ambient temperature, as recited in the claims. The alleged rationale for the combination of references and arriving at the claims, which is producing a stable nucleic acid solution "using a selective precipitation" for use in delivery nanoparticles "in order to produce a composition for efficacious delivery of mRNA," does not articulate any reason to arrive at the claimed ambient-storable, degradation-protected condensate. The references' purification and delivery objectives are for different purposes and incorporate different methodologies, and cannot be said to be related to the claimed storage-stabilization function, and combining the references to reach that function is supported only by hindsight drawn from Applicant's own disclosure.” (p. 16, 2nd paragraph).
In response the examiner argues that one of ordinary skill in the art would clearly have recognized that in order to produce a method comprising forming a macroscopic DNA-rich or RNA-rich condensate it would have been necessary to purify the DNA or RNA for the same therefore purification and precipitation are highly relevant to producing nucleic acid (DNA or RNA) rich condensates and particularly lipid nanoparticles (DNA/RNA-LNP’s). The examiner has addressed Applicants arguments regarding the limitation “protected against degradation when stored at ambient temperature.” above.
Applicant further argues that: “Moreover, the claimed degradation-protection function is not a predictable result of the proposed combination. The Office acknowledges that Anchordoquy does not teach the absence of significant degradation over multiple days at ambient temperature, and relies on generalized suggestions ( e.g., modulating PLGA degradation rate, or adding an EDTA chelating agent per Haas) to fill the gap. Those generalized teachings cannot be said to establish that the specific claimed result, that is, no significant degradation of the nucleic acid within the macroscopic condensate, with stability at ambient temperature would predictably follow. 13 Further, the Specification's data instead evidence unexpected results attributable to the low mobility and low water content of the gel-like condensate, supporting non-obviousness. While the references may generally disclose working with DNA and RNA, and pertain to their purification, none of the references or their combination would teach or suggest to one of skill in the art the formation of DNA and/or RNA-rich condensates that have improved stability characteristics, specifically temperature-time based stability characteristics. Applicant further notes that the cited references generally are directed towards precipitation and isolation techniques, and not reversible functional condensates with the claimed stability characteristics.” (paragraph bridging pp. 16-17).
In response the examiner argues that the claimed degradation-protection function is predictable because the whole purpose of making lipid nanoparticles encapsulating DNA/RNA is to protect the DNA/RNA. And the claimed method steps are not distinguished over the prior art. The examiner has discussed the scope of the limitation “protected against degradation when the formulation is stored at ambient temperature.” above, which scope is broad and therefore clearly predictable. The examiner suggest Applicants should limit what exactly the degradation protection from the resulting method steps should be. The instant Specification discloses “stable nucleic acid liquid formulations are provided that are resistant to nucleic acid degradation caused by enzyme-independent or enzymatic hydrolysis.” (abstract). However, the claim “protected against degradation” is properly read as any level of any protection (MPEP §2111), and particularly that it is improper to import claim limitations from the Specification (MPEP §2111.01(II) – “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). Furthermore, the claimed methods are open-ended by inclusion of the transitional phrase “comprising” therefore additional method steps such as freezing/lyophilizing are not excluded, therefore Applicant should specify that “when the liquid formulation is stored” (claim 1, lines 7-8; claim 24, lines 17-18).
Conclusion
Claims 1-14 and 24-28 are pending and have been examined on the merits. The Abstract of the disclosure is Objected to. Claims 3, 4, 26 and 27 are objected to. Claims 4, 8-12, 14 and 25-28 are rejected under 35 U.S.C. 112(b); claims 1, 5-6 and 9 are rejected under 35 U.S.C. 102(a)(1); and claims 1-14 and 24-28 are rejected under 35 U.S.C. 103. No claims allowed at this time.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
