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 .
DETAILED ACTION
Claims 1-10 and 12-32 are canceled. Claims 33-45 are new. Claims 11 and 33-45 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The instant claims are entitled to an effective filing date of 03/26/2021.
Election/Restrictions
Applicant’s election without traverse of Group II (claim 11) in the reply filed on 04/16/2026 is acknowledged. Claims 1-8, 10, 12-13, 16, 18, 20-21, 23-24 and 30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant has canceled the withdrawn claims in the amendment filed on 04/16/2026.
Accordingly, claims 11 and 33-45 are under consideration in this action.
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 11, 35, 38-42, 44, and 46-48 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor, at the time the application was filed, had possession of the claimed invention.
The claims are drawn to a genus of engineered clostridial neurotoxins that can be proteolytically processed into corresponding di-chain clostridial neurotoxins upon contact with furin. Claims 11, 35, 38-42, 44, and 46-48 encompass engineered clostridial neurotoxins without a furin cleavage site. Claim 35 requires the engineered clostridial neurotoxin to comprise an exogenous activation loop comprising the amino acid sequence of any one of SEQ ID NOs: 14-22. Although SEQ ID NOs: 14-19 and 21-22 include the RXXR (SEQ ID NO: 1) furin cleavage site, SEQ ID NO: 20 does not. See the instant specification p. 20, line 31, for SEQ ID NO: 20. Therefore, claim 35 encompasses engineered clostridial neurotoxin embodiments that do not include a furin cleavage site. The specification does not disclose a representative number of species of the claimed genus by reduction to practice. Therefore, one of skill cannot immediately envision which engineered clostridial neurotoxins can be proteolytically processed into a di-chain upon contact with furin, and one could not conclude that Applicant was in possession of the claimed genus at the time the filing, as discussed more fully below.
For claims drawn to a genus, MPEP § 2163(3)(a)(ii) indicates the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant identifying characteristics, i.e., structure or other physical and/ or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.
The instant specification reduces to practice one example of an engineered clostridial neurotoxin (SEQ ID NO: 24), which includes the furin cleavage site SEQ ID NO: 5 inserted in the activation loop or the di-chain loop region, and can be cleaved into a di-chain when incubated with furin. In example 1, the specification teaches modifying BoNT/A1 of SEQ ID NO: 68 to replace a portion of the activation loop (amino acid residues 435-448 of SEQ ID NO: 25) by a furin cleavage site (SEQ ID NO: 5) creating engineered BoNT/A1-furin protein SEQ ID NO: 24(SXN104539). See p. 74 lines 6-8. The furin cleavage site SEQ ID NO: 5 is KQKSSNSRKK. See p. 20 line 5. The target protein SXN104539 is expressed in E. coli BL21 DE3 cells. See p. 74 lines 11-12. SXN104539 is incubated with furin for 48 h at 25˚C. SDS-PAGE confirmed the presence of a ~50 kDa and ~100 kDa chain that is linked by a disulphide bond, with reduced human furin appearing as a band at ~60 kDa. See p. 74 line 15. In example 2, the potency of BoNT/A1-furin SEQ ID NO: 24(SXN104539) is compared with native BoNT/A1 and recombinant BoNT/A1. See p. 74 lines 21-22. The results show that SXN104539 has improved potency compared with single chain BoNT/A1 (scSXN104539). See p. 74 lines 30-32. In example 3, the in vivo mouse Digital Abduction Score (DAS) assay is used to assess potency as well as safety. See p. 75 lines 19-20. SXN104539 is disclosed as being well tolerated in vivo. See p. 75 line 24. Thus, the specification reduces to practice one example of an engineered clostridial neurotoxin structure.
MPEP 2163(3)(a)(ii) states that “the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are "representative of the full variety or scope of the genus," or by the establishment of "a reasonable structure-function correlation. Such correlations may be established "by the inventor as described in the specification," or they may be "known in the art at the time of the filing date”. Considering the lack of guidance provided in the specification, one would appraise support from the state of the art to extrapolate which engineered clostridial neurotoxin structures can be proteolytically processed into a di-chain upon contact with furin.
With respect to the state of the art on clostridial neurotoxin, Binz (Toxins, 2010, 2(4), 665-682) discloses that clostridial neurotoxin family consists of tetanus neurotoxin and seven distinct botulinum neurotoxins which cause the diseases tetanus and botulism. See the abstract. Each clostridial neurotoxin (CNT) is synthesized as a ~150 kDa single chain protein, but subsequently cleaved by specific clostridial or host proteases. Cleavage results in an N-terminal ~50 kDa light chain and a C-terminal ~100 kDa heavy chain. See p. 666 first paragraph. Kukrej (Biochemistry, 2010 49(11), 2510-2519) discloses that some clostridial strains contain strains contain endogenous proteases that nick the neurotoxin whereas botulinum neurotoxin type E is released from the bacterium in a single chain form that is completely un-nicked and must be exposed to exogenous protease such as trypsin to be activated. See the sentence spanning p. 1-2. As such, Kukrej suggest that not all clostridial neurotoxins undergo proteolytic cleavage through the same mechanism. Moreover, Steward (US 2013/033 0807) teaches that the presence of a protease cleavage site makes a modified Clostridial toxin susceptible to proteolytic cleavage by its cognate protease. See [0011]. In example 2, Steward teaches genetically engineering protease cleavage sites into BoNT/A. See [0493]. Steward teaches performing assays to determine whether the BoNT/A comprising a protease cleavage site could be cleaved by its cognate protease. See [0494]. Steward discloses that upon proteolytic cleavage with a protease, the single-chain form of the toxin or chimera is converted to the di-chain form. See [0008]. Thus, Binz, Kukrej and Steward illustrate the unpredictability in the art, because the references suggest that clostridial neurotoxins are structurally distinct in terms of their protease cleavage sites and, consequently, are cleaved by different cognate proteases.
In view of the prior art, the instant disclosure does not satisfy the written description requirement because the species disclosed do not adequately represent the substantial variation within the claimed genus. As evidenced by Kukrej and Steward, clostridial neurotoxins are cleaved into di-chains by different proteases based on the protease cleavage site present in the clostridial neurotoxin. The instant specification reduces to practice one example of an engineered clostridial neurotoxin (BoNT/A1-furin SEQ ID NO: 24) that contains a furin cleavage site (SEQ ID NO: 5) and is capable of being proteolytically processed into a di-chain. This represents a very small fraction of the possible number of species within the breadth of the claims. Consequently, one of skill could not conclude that Applicant was in possession of the claimed genus at the time the application was filed.
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 36-37, 43 and 45 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.
Claim 36 recites “the furin cleavage site replaces the endogenous activation loop or part thereof of the corresponding native clostridial neurotoxin”, which is indefinite because, in one interpretation, the “part thereof” is referencing any part of the endogenous activation loop, and under an alternative interpretation, the “part thereof” is referencing any part of the corresponding native clostridial neurotoxin. To obviate this rejection, the term “thereof” in line 2 can be deleted, or the recitation “of the corresponding native clostridial neurotoxin” can be deleted. Furthermore, there is insufficient antecedent basis for “the endogenous activation loop” recited in lines 1-2, and for “the corresponding native clostridial neurotoxin” recited in lines 2-3.
Claim 37 depends from claim 36 and is rejected for the reason set forth above.
Claim 43 recites “the polynucleotide comprises a sequence having at least 80% identity to any one of SEQ ID NOs: 24 and 70 to 78”, which renders the claim indefinite because SEQ ID NOs: 24 and 70-78 are amino acid sequences, not polynucleotide sequences. See the instant specification p. 60 for SEQ ID NO: 24 and see p. 69-73 for SEQ ID NOs: 70-78. Therefore, in one interpretation, claim 43 requires the engineered clostridial neurotoxin to comprise an amino acid sequence having at least 80% identity to any one of SEQ ID NOs: 24 and 70-78; and under an alternative interpretation, claim 43 requires a polynucleotide sequence that encodes an amino acid sequence that is at least 80% identical to any one of SEQ ID NO: 24 and 70-78.
Claim 45 depends from claim 43 and is rejected for the reason set forth above.
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 42, 44, and 46-47 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.
Claims 42, 44, and 46-47 do not further limit the method of claim 11. Claim 11 requires contacting the engineered clostridial neurotoxin with furin, thereby producing the di-chain clostridial neurotoxin. Claims 42, 44, and 46-47 describe the origin of the engineered clostridial neurotoxin, without structurally limiting the engineered clostridial neurotoxin or the method as a whole. Claim 42 requires the engineered clostridial neurotoxin to be encoded by a polynucleotide, which is inherent to the clostridial neurotoxin recited in claim 11. This limitation does not structurally limit the method of claim 11 in anyway, because claim 11 already indicates that the engineered clostridial neurotoxin is an amino acid sequence that can produce a di-chain upon contact with furin; and amino acid sequences are encoded by polynucleotides. Claim 44 requires the polynucleotide to be comprised within an expression vector. Claim 46 requires the polynucleotide to be expressed in a cell. Claim 47 depends from claim 44 and requires the expression vector to be expressed in a cell. However, claims 42, 44, and 46-47 merely recite inherent components of the elements recited in claim 11 and do not require any additional active method steps.
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.
Claims 11, 33-34, and 36-48 are rejected under 35 U.S.C. 103 as being unpatentable over Steward (US 2013/0330807), with evidence from Hatsuzawa (J Biol Chem. 1990 Dec 25;265(36):22075-8. PMID: 2266110).
Regarding claim 11, Steward, in example 2, teaches making a clostridial toxin or clostridial toxin chimeric comprising an inactivation cleavage site by genetically engineering protease cleavage sites into inactivation cleavage site regions. Table 8 lists expression constructs modified to contain a protease cleavage site. See [0493]. In table 8, Steward teaches furin protease cleavage sites. Steward teaches performing in vitro protease cleavage assays to determine whether a BoNT/A comprising a protease cleavage site could be cleaved by its cognate protease. See [0494]. Steward discloses that upon proteolytic cleavage with a protease, the single-chain form of the toxin or chimera is converted to the di-chain form. See [0008]. Clostridial toxins can comprise a di-chain loop region comprising an exogenous protease cleavage site and non-limiting examples of inactivation cleavages sites include furin cleavage sites. See [0012]. Furthermore, Steward discloses BoNT/A is a neurotoxin. See [0002].
Steward does not explicitly teach contacting the engineered clostridial neurotoxin with furin thereby producing the di-chain clostridial neurotoxin. However, Steward suggests that during the in vitro protease cleavage assay of example 2 the engineered BoNT/A clostridial neurotoxin comprising the furin cleavage site is contacted with its cognate protease, furin.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention that the furin contact step taught by Steward necessarily results a di-chain product, because Steward suggests that upon proteolytic cleavage with furin, the clostridial neurotoxin BoNT/A is converted to the di-chain form.
Regarding claim 33, Steward, in example 2, a BoNT/A (i.e. clostridial neurotoxin) comprising a protease cleavage site. See [0494]. In table 8, Steward teaches furin protease cleavage sites.
Claim Interpretation: instant claim 34 requires the furin cleavage site to comprise the amino acid sequence of SEQ ID NO: 1, and SEQ ID NO: 1 is Arg-Xaa-Yaa-Arg. See p. 57 line 25 of the instant specification.
Regarding claim 34, Steward teaches furin protease cleavage sites including I870insRKKR, and delK871NII-insRKKR. See table 8, specifically on p. 88. The inserted RKKR sequence of Steward is a 100% identity match to instant SEQ ID NO: 1.
Regarding claim 36, Steward teaches modifying a naturally-occurring di-chain loop protease cleavage site by replacing it with an exogenous protease cleavage site. See [0347]. Steward teaches the naturally-occurring di-chain loop protease cleavage site of BoNT/A in table 6 (p.70), and discloses that the site corresponds to residues 430-454 of SEQ ID NO: 1 (see [0331]). In example 2, Steward teaches BoNT/A comprising a protease cleavage site including furin protease cleavage sites. See [0494] and table 8.
Steward does not teach the furin cleavage site replaces the endogenous activation loop or part thereof of the corresponding native clostridial neurotoxin.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to substitute Steward’s exogenous furin protease cleavage site for the endogenous activation loop or part thereof of the corresponding native clostridial neurotoxin based on Steward’s suggestion. One of ordinary skill in the art would have been motivated to do so because Steward explicitly suggests replacing the naturally-occurring di-chain loop protease cleavage site with an exogenous protease cleavage site. There would have been a reasonable expectation of success because Steward discloses the location of the endogenous activation loop in BoNT/A, and further demonstrates engineering BoNT/A to include furin cleavage sites.
Regarding claim 37, Steward the naturally-occurring di-chain loop protease cleavage site of BoNT/A in table 6 (p.70) and discloses that the site corresponds to residues 430-454 of SEQ ID NO: 1 (see [0331]). Steward’s naturally-occurring di-chain loop protease cleavage site of BoNT/A is a 100% identity match to instant SEQ ID NO: 39 as shown in the alignment below.
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[AltContent: textbox (alignment between instant SEQ ID NO: 39 (top sequence) and Steward’s SEQ ID NO: 1 subsequence of residues 430-454 (bottom sequence))]
Regarding claims 38-39, Steward, in example 2, teaches performing in vitro protease cleavage assays to determine whether a BoNT/A comprising a protease cleavage site (i.e. modified BoNT/A) could be cleaved by its cognate protease. See [0494].
Regarding claim 40-41, Steward, in example 2, teaches performing in vitro protease cleavage assays to determine whether a BoNT/A comprising a protease cleavage site (i.e. modified BoNT/A) could be cleaved by its cognate protease. See [0494]. Steward discloses that upon proteolytic cleavage with a protease, the single-chain form of the toxin or chimera is converted to the di-chain form. See [0008].
Regarding claim 42, Steward teaches a polynucleotide encoding a toxin and/or chimeric according to any one of aspects 1-75. See [0464]. Steward indicates that aspect 20 is a clostridial toxin comprising a BoNT/A enzymatic domain and an exogenous protease cleavage site (i.e. engineered clostridial neurotoxin). See [0399].
Regarding claim 43, Steward teaches the BoNT/A sequence, SEQ ID NO: 1, which is a 99% identity match to instant SEQ ID NO: 24. See table 1 on page 4, and see the office action appendix for the alignment.
Regarding claim 44, Steward teaches an expression construct (i.e. expression vector) comprising a polynucleotide. See [0361].
Regarding claim 45, Steward teaches a polynucleotide molecule operably-linked to an expression vector, and expression vectors that express a clostridial toxin or clostridial toxin chimeric under control of a cell-specific or inducible promoter element. See [0361].
Regarding claim 46, Steward teaches expressing in a cell a polynucleotide molecule encoding a clostridial toxin or clostridial toxin chimeric. See [0016].
Regarding claim 47, Steward teaches bacteria containing expression constructs (i.e. expression vectors). See [0478]. Steward teaches an expression construct comprising a polynucleotide operably-linked to an expression vector useful for expressing the polynucleotide molecule in a cell. See [0361].
Regarding claim 48, Steward, in example 3, teaches injecting mice with BoNT/A comprising an inactivation cleavage site. See [0500]. As shown in table 9, the protease cleavage sites include furin cleavage sites.
Evidentiary reference Hatsuzawa discloses that furin mRNA transcript is present in mouse tissue. See the abstract.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention that Steward’s engineered BoNT/A clostridial neurotoxin necessarily contacts furin in vivo upon injection into a mouse.
Claims 35 are rejected under 35 U.S.C. 103 as being unpatentable over Steward (US 2013/0330807), as applied to claims 11, 33-34, and 36-48 above, and further in view of Smith (US 2013/0345398).
Regarding claim 35, Steward teaches a di-chain loop region of BoNT/A comprising amino acids 430-454 of SEQ ID NO: 1. See [0331]. As shown in table 6, the di-chain loop region containing the naturally-occurring protease cleavage site is
CVRGIITSKTKSLDKGYNK- - - -ALNDLC. The alignment between instant SEQ ID NO: 14 (top sequence) and Steward’s SEQ ID NO: 1 naturally-occurring protease cleavage site, residues 430-454 (bottom sequence) is shown below. Steward teaches modifying a naturally-occurring di-chain loop protease cleavage site by replacing it with an exogenous protease cleavage site. See [0347]. Steward teaches furin protease cleavage site RKKR. See table 8. Steward suggests that substituting serine (S) for D or K residues is a neutral substitution. See table 3 p. 7-8. Furthermore, Steward discloses that the last 32 amino acids of the BoNT/A light chain are not required for enzymatic activity. See [0029].
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[AltContent: textbox (alignment between instant SEQ ID NO: 14 (top sequence) and Steward’s SEQ ID NO: 1 naturally-occurring protease cleavage site (bottom sequence))]
Steward does not teach an engineered clostridial neurotoxin that comprises an exogenous activation loop comprising the amino acid sequence of any one of SEQ ID NOs: 14 to 22.
Smith suggests that the C-terminal end of the BoNTA light chain is DKGYNK. See [0077].
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to modify the DKGYNK residues in Steward’s SEQ ID NO: 1 (i.e. positions 14-19 in the bottom sequence above) by substituting S residues for the D and K residues at positions 14 and 19 respectively, and by further substituting the RKKR exogenous furin cleavage site for the KGYN residues (i.e. positions 15-18 bottom sequence above). In the process, one would arrive at a sequence that is 100% identical to instant SEQ ID NO: 14. One of ordinary skill in the art would have been motivated to substitute the D and K residues in the DKGYNK subsequence of Steward’s SEQ ID NO: 1, because Smith suggests that “DKGYNK” is the C-terminal of the light chain (see [0077]), which Steward suggests does not contribute to enzymatic activity (see [0029]). There would have been a reasonable expectation of success because Steward discloses that D to S and K to S substitutions are neutral substitutions (table 3). One of ordinary skill in the art would have been further motivated to substitute Steward’s RKKR furin cleavage site for the KGYN residues, because Steward suggests replacing naturally-occurring di-chain loop protease cleavage sites with exogenous protease cleavage sites (see [0347]), and the KGYN residues are part of the naturally-occurring site (see table 6). There would have been a reasonable expectation of success because Steward demonstrates inserting RKKR into BoNT/A (e.g. see example 2 table 8).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11 and 33-45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12589139 in view of Steward (US 2013/0330807), and Smith (US 2013/0345398), with evidence from Hatsuzawa (J Biol Chem. 1990 Dec 25;265(36):22075-8. PMID: 2266110).
Patent claim 1 recites a method for proteolytically processing a single-chain clostridial neurotoxin into a corresponding di-chain clostridial neurotoxin, the method comprising contacting the single-chain clostridial neurotoxin with enterokinase,
wherein the single-chain clostridial neurotoxin comprises an activation loop comprising the amino acid sequence of SEQ ID NO: 18 and wherein the amino acid sequence of the single-chain clostridial neurotoxin comprises an amino acid sequence selected from the group consisting of SEQ ID NO: 5, 7, 9, 11, and 13, and wherein the enterokinase hydrolyses a peptide bond of the activation loop thereby producing the di-chain clostridial neurotoxin.
Patent claim 2 recites the method of claim 1, wherein the single-chain clostridial neurotoxin comprises the amino acid sequence of SEQ ID NO: 5 [i.e. BoNT/X].
Patent claim 3 recites a method for proteolytically processing a single-chain clostridial neurotoxin into a corresponding di-chain clostridial neurotoxin, the method comprising contacting the single-chain clostridial neurotoxin with enterokinase,
wherein the single-chain clostridial neurotoxin comprises an activation loop comprising the amino acid sequence of SEQ ID NO: 18 and wherein the amino acid sequence of the single-chain clostridial neurotoxin comprises: (a) the amino acid sequence of SEQ ID NO: 52 or a fragment thereof; and (b) an amino acid sequence selected from the group consisting of SEQ ID NO: 53, 54, 55, 56, 57, 58, 59, and 60, and
wherein the enterokinase hydrolyses a peptide bond of the activation loop thereby producing the di-chain clostridial neurotoxin.
The patent claims lack: contacting the engineered clostridial neurotoxin with furin (relevant to instant claim 11); the engineered clostridial neurotoxin comprises a furin cleavage site (relevant to instant claim 33); wherein the furin cleavage site comprises SEQ ID NO: 1 (relevant to instant claim 34); wherein the engineered clostridial neurotoxin comprises an exogenous activation loop comprising the amino acid sequence of any one of SEQ ID NOs: 14 to 22 (relevant to instant claim 35); wherein the furin cleavage site replaces the endogenous activation loop or part thereof of the corresponding native clostridial neurotoxin (relevant to instant claim 36); wherein the endogenous activation loop comprises the amino acid sequence of any one of SEQ ID NOs: 34 to 57 (relevant to instant claim 37); the engineered clostridial neurotoxin that is modified BoNT/A (relevant to instant claim 38-41); wherein the engineered clostridial neurotoxin is encoded by a polynucleotide (relevant to instant claim 42); wherein the polynucleotide comprises a sequence having at least 80% identity to any one of SEQ ID NOs: 24 and 70 to 78 (relevant to instant claim 43); wherein the polynucleotide is comprised within an expression vector (relevant to instant claim 44); the polynucleotide is operably linked to a promoter (relevant to instant claim 45); the polynucleotide is expressed in a cell (relevant to instant claim 46); the expression vector is expressed in a cell (relevant to instant claim 47); and wherein the contacting of the engineered clostridial neurotoxin with furin occurs in vivo (relevant to instant claim 48).
However, Steward teaches performing in vitro protease cleavage assays to determine whether a BoNT/A comprising a protease cleavage site could be cleaved by its cognate protease. See [0494] (relevant to instant claim 11, 38-41). Steward teaches BoNT/A with furin protease cleavage sites. See table 8 and paragraph [0493] (relevant to instant claim 33). Steward teaches RKKR furin protease cleavage site, which is 100% identical to instant SEQ ID NO: 1 (relevant to instant claim 34). Steward the naturally-occurring protease cleavage site in BoNT/A: CVRGIITSKTKSLDKGYNK- - - -ALNDLC, which is identical to instant SEQ ID NO: 39. See [0331] and table 6. Steward suggests modifying a naturally-occurring di-chain loop protease cleavage site by replacing it with an exogenous protease cleavage site. See [0347]. Steward teaches an exogenous RKKR furin protease cleavage site. See table 8. Furthermore, Steward discloses that D to S and K to S substitutions are neutral. See table 3 p. 7-8. Smith suggests that the C-terminal end of the BoNTA light chain is DKGYNK. See [0077] (relevant to instant claim 35-37). Steward teaches a polynucleotide encoding a toxin and/or chimeric according to any one of aspects 1-75. See [0464] (relevant to instant claim 42). Steward teaches the BoNT/A sequence, SEQ ID NO: 1, which is a 99% identity match to instant SEQ ID NO: 24. See table 1 on page 4, and see the office action appendix for the alignment (relevant to instant claim 43). Steward teaches an expression construct [i.e. expression vector] comprising a polynucleotide. See [0361] (relevant to instant claim 44). Steward teaches a polynucleotide molecule operably-linked to an expression vector and expression vectors that express a clostridial toxin or clostridial toxin chimeric under control of a promoter. See [0361] (relevant to instant claim 45). Steward teaches expressing in a cell a polynucleotide molecule encoding a clostridial toxin or clostridial toxin chimeric. See [0016] (relevant to instant claims 46-47). Steward injecting mice with BoNT/A comprising an inactivation cleavage site. See [0500]. As shown in table 9, the protease cleavage sites include furin cleavage sites. Evidentiary reference Hatsuzawa discloses that furin mRNA transcript is present in mouse tissue. See the abstract (relevant to instant claim 48).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to substitute Steward’s BoNT/A (SEQ ID NO: 1) and furin for the clostridial neurotoxin and enterokinase recited in patent claim 1 respectively, and to further modify the DKGYNK subsequence in Steward’s BoNT/A (SEQ ID NO: 1) based on the teachings and suggestions of Smith and Steward in order to proteolytically process an engineered clostridial neurotoxin.
Conclusion
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/K.C.B./Examiner, Art Unit 1657
/LOUISE W HUMPHREY/ Supervisory Patent Examiner, Art Unit 1657
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