DETAILED ACTION
Status of the Claims
Claims 1-29 are pending in the instant application. Claims 15-23 and 29 have been withdrawn based upon Restriction/Election as discussed below. Claims 1-14 and 24-28 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 .
Restriction/Election
Applicant's election with traverse of Group I drawn to methods of making, currently claims 1-14 and 24-28 in the reply filed on 01/22/2026 is acknowledged. The traversal is on the ground(s) that “indeed there would not be a serious burden on search and/or examination as there are multiple features between the claim groups thar are congruent. For instance, claim 15 […] incorporates all the features of independent claim 1 […]. Furthermore, the kit and composition claims can be directly seen to be used for and formed from the claimed methods, and based on review of the Li reference, it is not clear whether the method of Li would even produce a composition with the same properties as those claimed and produced by the methods of at least claims 1 and 24.” This is not found persuasive because composition claims including method of making claims (e.g. claim 15 incorporating the method of claim 1) are considered product-by-process claims, for which “determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.” (MPEP §2113(I)). A composition and its properties are considered inseparable (MPEP §2112.01(II)) therefore if the composition of Li is the same than the properties should also be the same.
The examiner maintains a search burden exists because the described distinct inventions would present a unduly search burden e.g., (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or (c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries).
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-23 and 29 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/22/2026.
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 the instant application.
The U.S. effective filing date for claims 2-4 and 24-28 has been determined to be 12/08/2023, the filing date of the instant application.
Information Disclosure Statement
No Information Disclosure Statements have been filed in the instant application. Applicants are reminded of their duty to disclose patents and publications relevant to the patentability of the instant claims. Applicant is reminded of the requirements of 37 CFR 1.56 and Li Second Family Limited Partnership v. Toshiba Corp., 56 USPQ2d 1681 (Fed. Cir. 2000); accord McKesson Information Solutions, Inc. v. Bridge Medical, Inc. 487 F.3d 897, 913. (Fed.Cir.2007).
Specification
The abstract of the Abstract of disclosure is objected to because the Abstract includes 155 words – “The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length.” (37 C.F.R. 1.72(b)). Correction is required. See MPEP § 608.01(b).
Claim Objections
Claims 4 and 27 each are objected to because of the following informalities: claims 4 and 27 recites “phenylalanine arginine” which appears to be two different amino acid species that should be separated by a comma. Appropriate correction is required.
Claims 3 and 26 are objected to because the claims each recite “1-2-3-4-butanetetracarboxylic acid” which should be “1,2,3,4-butanetetracarboxylic acid” (see e.g., PubChem entry pubchem.ncbi.nlm.nih.gov/compound/15560). Appropriate correction is required.
Claim 3 is further object to because the claim recites “citrate” twice in line 2, and recites “1-2-3-4-butanetetracarboxylic acid” twice in lines 2-3. Applicant should delete the duplicate claim elements. Appropriate correction is required.
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 4, 8-12, 14 and 25-28 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 4 and 27 are rejected as being indefinite for reciting “tween” in line 2. Claims 4 and 27 each contains the trademark/trade name tween (in line 2). Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe polysorbates and, accordingly, the identification/description is indefinite. Appropriate correction is required.
Claims 8-12 each recites the limitation "the DNA-rich or RNA-rich condensate". There is insufficient antecedent basis for this limitation in the claim. Instant claim 1 recites “a macroscopic DNA-rich or RNA-rich condensate.” (line 6), and therefore dependent claims should recite “the macroscopic DNA-rich or RNA-rich condensate”, or alternatively should delete “macroscopic” from claim 1, line 6. Appropriate correction is required.
Claim 14 recites the limitation "the cationic polymer" in line 1. There is insufficient antecedent basis for this limitation in the claim. Instant claim 14 should depend from instant claim 13 to provide proper antecedent basis in the claim. Appropriate correction is required.
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.
Claim 25 is rejected as being indefinite because the claim recites “wherein the LNP synthesis buffer are citrate or 1-2-3-4-butanetetracarboxylic acid, at pH between 3 and 4 (and cannot contain acetate).” [emphasis added]. It is unclear of the recited “(and cannot contain acetate)” a required limitation or not. Applicant should delete the parentheses if required, and if not delete the parentheses on indicate the limitation is optional (e.g. “, and optionally cannot contain acetate”). Appropriate correction is required.
Claim 26 recites the limitation "the LNP product formulation buffer" in line 1. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 27 recites the limitation "the other nucleic acid stabilizing excipient" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 28 is rejected as being indefinite because the parent claim 24 recites “performing buffer exchange […] without a macromolecular crowding agent” (lines 12-13), and further recites “adding a macromolecular crowding agent” in line 14. Claim 28 recites the limitation "the macromolecular crowding agent" in 1 where it is unclear if this references the step of “performing buffer exchange […] without a macromolecular crowding agent” (lines 12-13), and/or the step of “adding a macromolecular crowding agent” in line 14. The examiner suggests that Applicant include specific steps in claim 24 (e.g. (i) providing […]; (ii) synthesizing […]; (iii) preparing […]; (iv) performing […]; (v) adding […]; and (vi) forming […].”) and referencing the referencing the specific steps in the dependent claims for clarity. Appropriate correction is required.
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.
Claims 1, 5-6 and 9 are 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 (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).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-14 and 24-28 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).
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) 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 (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 (and cannot contain 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 25).
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).
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.
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.
Citation of pertinent prior art:
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rhine et al. (“RNA droplets,” 2020, Annual Reviews; Annual Reviewes of Biophysics, Vol. 49, pp. 247-265) is cited a a review of RNA droplets (see whole document), and particularly that: “The physical properties of these condensates, also referred to as droplets (in vitro) or granules (in vivo), are distinct from the surrounding environment. The viscoelastic properties of different condensates are tuned by the constituent molecules (1).” (p. 249, lines 4-6).
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.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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