DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Acknowledgment is made of applicants' claim for foreign priority to Japanese applications JP 2021-075809 filed on April 28, 2021. Certified copies of the foreign priority document(s) are present in the application file.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/23/2025 06/24/2025 and 11/08/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings are objected to because the single view is labeled as “FIG-1”. Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Claim 1 is directed to a composition but indicates an intended use (introducing a target foreign substance from outside a eukaryotic cell into at least the cytoplasm of the cell). “[S]tatements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. “In the instant case, the intended use does not structurally limit the composition recited. As such the intended use is not given patentable weight.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 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 claim(s) contains 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(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-12: The scope of the claim encompasses two or more repeats of SEQ ID NO: 1 optionally separated by a linker of 1-5 amino acids. However, the specification fails to provide adequately provide written description for embodiments in which (1) there are more than two copies of SEQ ID NO: 1; (2) there are 1-5 amino acid linkers within the two or more copies of SEQ ID NO: 1 and (3) any foreign substance, which encompasses at least nucleic acids, peptides, proteins, small molecules, dyes among many others. As such the specification does not disclose any representative species containing intervening amino acid linkers between repeats or any structural guidance or common features sufficient to demonstrate possession of this genus of variants. Instead, the specification is limited to exactly two contiguous tandem repeats of SEQ ID NO: 1. Further the specification only demonstrated delivery of a single fluorescent small molecule (FAM). The specification does not disclose representative species of any other classes of foreign substances, such as proteins, nucleic acids, or therapeutic agents, nor does it provide structural or mechanistic guidance that any and all foreign substances are capable of being transported into any eukaryotic cell using more than two tandem repeats of SEQ ID NO: 2, or with 1-5 amino acid linker. Additionally, with respect claim 4, the specification does not demonstrate the position of linkage as there is no demonstration of linking SEQ ID NO: 1 to any peptide. The specification fails to disclose the specific point of attachment of the foreign substance to the carrier peptide (i.e., whether at the N-terminus or C-terminus), and fails to disclose any structural or chemical linkage defining the construct, instead only describing that a peptide-FAM construct was used in functional assays. With respect to claim 12, the specification fails to reasonably convey that the Applicant was in possession of the full scope of human or non-human mammalian cells. The disclosure is limited to only HeLa cells, without representative species spanning the breadth of the claimed genus. 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 (see i)(A) above), reduction to drawings (see i)(B) above), 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 inventor was in possession of the claimed genus. In the present case, the specification only discloses a single species comprising two tandem repeats of SEQ ID NO: 1and does not disclose any representative species directed to linker-containing embodiments. Nor does the specification disclose structural features common to the full scope of the claimed genus to demonstrate possession. As such the claim is properly rejected under 112(a).
Claims 8-12 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 enablement requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 8-12: Applicant's specification is not found to be enabling for method of introducing a foreign substance using the peptide of claim 1. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to carry out the method of the invention commensurate in scope with the current claims.
Analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention without undue or unreasonable experimentation. See Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916). The key word is 'undue,' not experimentation.' " (Wands, 8 USPQ2d 1404). The factors to be considered in determining whether undue experimentation is required are summarized in In re Wands 858 F.2d 731, 8 USPQ2nd 1400 (Fed. Cir, 1988). The factors to be considered in determining whether undue experimentation is required include: (1) the quantity of experimentation necessary, (2) the amount or direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. While all these factors are considered, a sufficient number are discussed below so as to create a prima facie case.
Applicants' claims are directed to: a method for introducing a target foreign substance from outside a eukaryotic cell into at least the cytoplasm of the cell using a peptide fragment for introducing a target foreign substance from outside a eukaryotic cell into at least the cytoplasm of the cell, the peptide fragment being configured such that two or more of following amino acid sequences VVKSLVK (SEQ ID NO: 1) are arranged in series, and another amino acid residue is not included between the amino acid sequences or a peptide linker composed of 1 to 5 amino acid residues is interposed between the amino acid sequences.
The breadth of the claims includes
Introduction of any foreign substance using
Any number greater than 2 tandem repeats of SEQ ID NO: 1 or
Use of any peptide linker that is 1-5 amino acids long wherein there is no bar on the identity of amino acids
In any eukaryotic cell
The specification provides example of a SEQ ID NO: 4 (which has two tandem repeats of SEQ ID NO: 1) and assessed the cell membrane permeability of FAM (a fluorescent dye) linked to SEQ ID NO: 4 in HeLa cells. 20 µM SEQ ID NO: 4- FAM solution was added to adherent HeLa cells. After culture of cells for 20h, the cells were washed and subject to flow cytometry and the fluorescent intensity was measured. Applicants concluded from their experiment that “with the technique disclosed herein a target foreign substance can be efficiently introduced from outside a eukaryotic cell into at least the cytoplasm of the cell by using a peptide fragment obtained by arranging in series two or more amino acid sequences shown in SEQ ID NO: 1” (See [0108]).
At the time the invention was made it was known that penetrating abilities of cell penetrating peptides linked to various cargos depend significantly on physicochemical properties, size, and concentration of the diverse CPPs and/or CPP–cargo conjugates. (See Guidotti p. 410, para 5). As such there is no guidance in the specification regarding the sequence/structure of any peptide other than the two tandem repeats of SEQ ID NO: 1, (in other words, a SEQ ID NO: 4) conjugated to FAM, which provides translocation to the cytoplasm. It was further known at the time of filing that “[t]ype of the cargo as well as the size and binding methodology have been shown to influence the CPP translocation mechanism. TAT attached to a large cargo is mostly entrapped in the endosomal vesicles; however, it redistributes throughout the cell cytosol when attached to a small cargo” (See Madani p. 5, col. 2, para 2). Kauffman taught that “any particular situation, internalization will depend on fixed factors that include peptide sequence and physical chemistry but also on variable factors such as local peptide concentration, local lipid composition, the response of the cell to the peptide, and much more. Furthermore, the entry mechanism(s) of any CPP will depend very strongly on the characteristics of the cargo, such that each peptide-cargo combination should be considered a unique molecule.” (See Kaufman; p. 1; para 1).
Claim 8 encompasses a method for introducing a target foreign substance from outside a eukaryotic cell into at least the cytoplasm of the cell using a peptide fragment. Further claim 12 limits the eukaryotic cell to human or non-human mammalian cell. However, the prior art taught that “organization of membrane lipids is essential for CPP-mediated protein delivery. Extraction of cholesterol from cells leads to the disappearance of caveolae, flattening of the plasma membrane, and the loss of rafts and abolishes staining with filipin as observed in electron microscopy. Treatment of HeLa cells with methyl β-cyclodextrin removed more than 2/3 of cholesterol from the plasma membrane as indicated the staining of cells with filipin. Cholesterol-depleted HeLa cells took CPP avidin complexes up less avidly than the untreated cells.” (See Saalik p. 1250, col. 2, para 3). It is generally known that only mammalian cells have cholesterol and plants have very small amount of cholesterol. (See evidence in Behrman). Therefore, the prior art established that CPP-mediated uptake is highly dependent on cargo identity, size, and charge as well as cell-type and membrane composition, which larger cargos such as proteins and nucleic acids often exhibiting reduced uptake efficiency and endosomal sequestration. Accordingly, delivery observed for a single small molecule does not reasonably enable delivery across the full scope of structurally diverse “foreign substances” or in all eukaryotic cells. Use of any peptide that has more than 2 tandem repeats of SEQ ID NO: 1 or has between 1-5 amino acids in between repeats is not enabled by the specification.
Due to the lack of teachings in the art regarding
Introduction of any foreign substance using
Any number greater than 2 tandem repeats of SEQ ID NO: 1 or
Use of any peptide linker that is 1-5 amino acids long wherein there is no bar on the identity of amino acids
In any eukaryotic cell
and the recognized unpredictability in the area of cell penetrating peptides., a large amount of guidance and teachings would be necessary in order to be enabling for methods of such.
Guidance and teachings provided by Applicants in the instant specification is limited to disclosure that SEQ ID NO: 4 can enable insertion of certain fluorescent molecules such as FAM in HEK cells. The Examiner acknowledges that the Office does not require the presence of working examples to be present in the disclosure of the invention (see MPEP §2164.02). However, in light of the state of the art, discussed above, which recognizes a high level of unpredictability in the field of cell penetrating peptides the Office would require appropriate disclosure to support the claimed method. The amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). Thus, due to the high level of unpredictability in the art, the current specification would have to provide greater amounts of teachings and guidance directed to methods of carrying out the claimed invention.
Therefore, due to the sum of all the aforementioned factors, one of ordinary skill in the art, at the time the invention was made, would not expect success carrying out the claimed composition. Given that the art fails to recognize a common sequence for a cell penetrating peptide for endocytosis or transport of any foreign substance into all eukaryotic cells, and Applicant has failed to demonstrate any such sequence, a representative foreign substance beyond FAM, for any cell other than HeLa cells, the skilled artisan would be faced with the impermissible burden of undue experimentation in order to practice the claimed invention. Accordingly, claims 8-12 are deemed properly rejected.
Conclusion
Claims 1-12 appear free of art.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAGAMYA VIJAYARAGHAVAN whose telephone number is (703)756-5934. The examiner can normally be reached 9:00a-5:00p.
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/JAGAMYA NMN VIJAYARAGHAVAN/Examiner, Art Unit 1633
/EVELYN Y PYLA/Primary Examiner, Art Unit 1633
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