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 .
Claim Status
Claims 1, 4, 7-8, 10-13, 16, 18, 31-32, 36, 38-40, 47, 55, 58, and 60 were previously pending.
Applicant’s election without traverse of the invention of group I drawn to a transgenic mouse (claims 1, 4, 7-8. And 10-12) in the reply filed on 27 July, 2026 is acknowledged.
Claims 13, 16, 18, 31-32, 36, 38-40, 47, 55, 58, and 60 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. It is noted that any future amendments to the claims should indicate which claims are withdrawn from consideration in order to comply with 37 C.F.R. 1.142.
Therefore, claims 1, 4, 7-8, and 10-12 are pending and are the subject of the present Official Action.
Priority
The present application is a 35 U.S.C. 371 national stage filing of International Application No. PCT/US2022/034294, filed 21 June 2022, which claims priority to United States provisional application No. 63/213,335, filed 22 June 2021. Acknowledgment is made of applicant’s claim for priority.
The earliest possible priority for the instant application is 22 June 2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 18 December, 2023, 01 April, 2025, and 30 June, 2026 are compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner. The Fukuda reference listed on the 01 April, 2025 IDS was already provided with the 18 December, 2023 IDS. Therefore, the Fukuda reference is lined through on the 01 April, 2025 IDS to indicate its duplicative status.
Drawings
The drawings submitted on 18 December 2023 are accepted by the Examiner.
Claim Objections
Claim 11 is objected to because of the following informalities: Gene expression is typically not referred to as either transiently or stably integrated and “in to” is only used in English when “in” is part of a phrasal verb. The gene itself is typically transiently or stably integrated while the expression itself is said to be either transient or stable. In addition, “in to” is only used in instances where a common phrase uses the word “in” directly before “to” (for example: drop in to check on the team), otherwise “into” is used. Thus, the phrase “fusion protein gene expression is stably integrated in to” is improper English. The claim should instead recite -----fusion protein gene is stably integrated into----- or else, -----expression of the fusion protein gene is stable-----. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 7-8 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 7 recites “the eGFP is operably linked to the C-terminus of an OCT4 locus,” and claim 8 recites “the OCT4 locus comprises a deletion of a proximal enhancer element.” A person having ordinary skill in the art understands “locus” to refer to a specific location on a chromosome which is supported by claim 8’s recitation of a proximal enhancer element (a genetic component). However, only proteins have a “C-terminus” and claim 7’s reference to the C-terminus of an OCT4 locus appears to be referencing a specific position on the OCT4 peptide where the eGFP is to be operably linked. Claim 8 refers back to “an OCT4 locus” but employs the term locus in its typically understood genetic context while claim 7 appears to use the term to refer to the fusion peptide itself. Therefore, claims 7 and 8, taken together are confusing as written. It is unclear whether Applicant intends “an OCT4 locus” to refer to a specific location on the chromosome (in line with the common usage of “locus”) or whether Applicant intends to instead refer to a specific position on the OCT4 peptide (which further confuses the issues with claim 8’s reference to “the OCT4 locus”). Accordingly, a person having ordinary skill in the art would not be apprised of the scope of the patent protection sought by claims 7 and 8.
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, 4, 7-8, and 10-12 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.
The claims encompass a transgenic mouse broadly comprising stable expression of an OCT-4/eGFP fusion protein “wherein gene expression of said fusion protein is stably transmitted through germline DNA.” No structure is specifically recited in the claims for performing the recited function of the fusion protein being capable of stable transmission through germline DNA. The claims do not require the stable integration of the coding sequence for the transgene into the DNA of germline cells yet they require the stable expression of the fusion protein and the function of stable transmission through germline DNA.
The art at the time of filing teaches that germline cells are very efficient at silencing multi-copy transgenes and that methods for producing transgenic organisms through germline transmission need to introduce low copy transgenes to overcome this silencing (Merritt et al., WormBook: the online review of C. elegans biology (2010): 1, hereinafter “Merritt”, Introduction, page 1, second paragraph). Merritt also teaches that several known methods for obtaining low-copy transgenes were known at the time of filing and that these methods had varying success and presented their own unique challenges (Merritt, pages 1-2, last paragraph and first and second paragraphs respectively). Merritt goes on to teach that these challenges necessitate consideration of all components of the transgene (promoter, tag, ORF, and 3’UTR) for successful design of germline transgenes (Merritt, page 2, third paragraph). Thus, a skilled artisan at the time of filing knew that even for known methods for stable integration of a transgene into germline cells, the precise components as well as the copy number of the transgene have to be controlled to prevent silencing of the transgene.
The specification teaches only one mouse possessing a transgenic protein stably transmitted through germline DNA and one method for the stable integration of a transgene into germline DNA to generate that mouse. The working examples teach the construction of a bacterial artificial chromosome (BAC) comprising the transgene and the injection of the BAC into the pronuclei of fertilized mouse embryos before implantation of those embryos into a fertile female mouse (Specification, [0113]). The specification also teaches that offspring positive for the transgene in their cells had to be backcrossed to stabilize the transgene copy number (Specification, [0118]). Thus, the specification teaches only one species of transgenic mouse comprising stable expression of an OCT-4/eGFP fusion protein “wherein gene expression of said fusion protein is stably transmitted through germline DNA,” and that is a species in which a nucleic acid encoding the transgene was integrated into the chromosomal DNA of the cells within a mouse via the injection of a BAC comprising the nucleic acid into the pronuclei of a fertilized mouse embryo.
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 inventor was in possession of the claimed genus. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. See Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021). Further, 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. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014) (Claims directed to a functionally defined genus of antibodies were not supported by a disclosure that "only describe[d] one type of structurally similar antibodies" that "are not representative of the full variety or scope of the genus."). The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure "indicates that the patentee has invented species sufficient to constitute the gen[us]." See Enzo Biochem, 323 F.3d at 966, 63 USPQ2d at 1615; Noelle v. Lederman, 355 F.3d 1343, 1350, 69 USPQ2d 1508, 1514 (Fed. Cir. 2004) (Fed. Cir. 2004) ("[A] patentee of a biotechnological invention cannot necessarily claim a genus after only describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated."). See MPEP 2163(II)(A)(3)(a)(ii). As recited, the claims lack a corresponding structure to provide the recited function. The specification teaches only one way to achieve the recited function and that is to integrate a nucleic acid encoding the transgene into the chromosomal DNA of a mouse via the injection of a BAC comprising the nucleic acid into the pronuclei of a fertilized mouse embryo.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, and 10-12 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US 2014/0302513, published: 09 October 2014 of record on the IDS filed: 18 December 2023, hereinafter “Ni”.
Ni discloses OCT-4 linked to a fluorescent reporter protein expressed as a transgene in a mammal (Ni, [0094]). Ni discloses a specific example where the transgene is eGFP fused to OCT-4 and expressed in mice (Ni, [0106]). Ni teaches that the transgene can be stably integrated into the germline DNA (Ni, [0074]) and provides an example where the OCT-4-eGFP fusion protein is expressed in male mice which are bred to female mice to produce embryos which themselves possess the OCT-4-eGFP fusion protein (Ni, [0106]-[0109]). Ni also discloses that the fusion protein is under control of the Oct-4 promoter (Ni, [0106]). Therefore, Ni discloses all of the elements of instant claim 1.
Regarding claim 10, the transgenic male mice of Ni were bred with female mice to produce transgenic offspring. Thus, the germline DNA is from a sperm.
Regarding claim 11, the transgenic male mouse of Ni is both viable and fertile as it was capable of reproducing with a female mouse and the fusion protein was transmitted to an embryo (zygote) through chromosomal DNA (stably integrated).
Regarding claim 12, Ni discloses expression of the OCT-4-eGFP at the 4-cell stage (Figure 5) and teaches providing a transgenic embryo at as early as the 1-cell stage for evaluation of development through the 2-cell and 4-cell stages and beyond (Ni, [0013], [0018]).
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 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, 4. And 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0302513, published: 09 October 2014 of record on the IDS filed: 18 December 2023, hereinafter “Ni”, in view of Zacharias, et al. Science 296.5569 (2002): 913-916, hereinafter “Zacharias”.
Ni discloses OCT-4 linked to a fluorescent reporter protein expressed as a transgene in a mammal (Ni, [0094]). Ni discloses a specific example where the transgene is eGFP fused to OCT-4 and expressed in mice (Ni, [0106]). Ni teaches that the transgene can be stably integrated into the germline DNA (Ni, [0074]) and provides an example where the OCT-4-eGFP fusion protein is expressed in male mice which are bred to female mice to produce embryos which themselves possess the OCT-4-eGFP fusion protein (Ni, [0106]-[0109]). Ni also discloses that the fusion protein is under control of the Oct-4 promoter (Ni, [0106]).
Ni does not teach to use an eGFP which comprises an A206K mutation.
However, Ni does teach a fairly extensive list of fluorescent reporters for use in the transgenic mice of Ni and that list includes various monomeric fluorescent proteins, including several monomeric GFPs (Ni, [0076]). Ni also teaches that their invention overcomes limitations in morphological assessment of embryos in assisted reproductive technologies (ART) by allowing a determination of the health of the embryo at the cellular level (Ni, [0008]). Thus, a person having ordinary skill in the art would have understood that the fluorescently tagged proteins in Ni would have to behave as close to physiologically normal as possible to allow for an assessment of the health of the embryo at the cellular level because were the tagged proteins to be prevented from performing their native intermolecular functions, they would hinder the effectiveness of the system of Ni.
Zacharias teaches monomeric forms of GFP proteins generated by mutating residues in the hydrophobic patch responsible for dimerization of the proteins (Zacharias, page 916, second paragraph). Zacharias specifically teaches the A206K mutation and teaches that it is advisable to introduce this mutation whenever assessing intermolecular interactions for tagged proteins (Zacharias, Table 1; page 916, second paragraph). In Zacharias, the use of the mutant GFPs allowed for the direct determination in living cells of specific intermolecular interactions that were otherwise unobservable (Zacharias, page 916, third paragraph). Thus, a person having ordinary skill in the art knew from Zacharias that introducing the A206K mutation into GFPs prevents dimerization to enable tagged proteins to engage in their native intermolecular interactions and they would have been motivated to introduce such a mutation wherever they want to preserve native functioning of the tagged protein as much as possible.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have introduced the A206K mutation of Zacharias into the eGFP of Ni and to have arrived at the invention claimed in instant claim 4 with a reasonable expectation of success because Zacharias suggests to do so whenever preservation of the native intermolecular interactions of the tagged protein is desired and this is precisely the goal of Ni who teaches other monomeric GFPs as possible fluorescent reporters and who teaches that the goal of their invention is to assess the health of embryos at the cellular level with fluorescently tagged proteins. There would have been a reasonable expectation of success in introducing the mutation of Zacharias to the eGFP of Ni insofar as the same mutation would have been reasonably expected to prevent dimerization in the same way it did so in Zacharias to enable the evaluation of intermolecular interactions between tagged proteins and their native molecular partners.
Claims 1, 7, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0302513, published: 09 October 2014 of record on the IDS filed: 18 December 2023, hereinafter “Ni”, in view of Palmer, et al. Comparative and functional genomics 5.4 (2004): 342-353, hereinafter “Palmer”.
Ni discloses OCT-4 linked to a fluorescent reporter protein expressed as a transgene in a mammal (Ni, [0094]). Ni discloses a specific example where the transgene is eGFP fused to OCT-4 and expressed in mice (Ni, [0106]). Ni teaches that the transgene can be stably integrated into the germline DNA (Ni, [0074]) and provides an example where the OCT-4-eGFP fusion protein is expressed in male mice which are bred to female mice to produce embryos which themselves possess the OCT-4-eGFP fusion protein (Ni, [0106]-[0109]). Ni also discloses that the fusion protein is under control of the Oct-4 promoter (Ni, [0106]).
Ni does not specifically teach that the fusion protein is a fusion of eGFP at the C-terminus of OCT-4.
However, Ni does teach that the fusion protein is “Pou5f1-EGFP” which indicates terminal linkage of the eGFP to the OCT-4 gene and even suggests that the eGFP occurs downstream or 3’ to the gene itself which would produce a C-terminal fusion. Nonetheless, a person having ordinary skill in the art would have been motivated to tag OCT-4 at the C-terminus with eGFP according to Palmer who teaches that N-terminal tagging of proteins with GFP adversely affects protein localization whereas C-terminal tagging with GFP is generally better in preserving native protein localization (Palmer, Abstract). Palmer explicitly teaches that C-terminal tagging of proteins with GFP is superior to N-terminal tagging for preserving the native functions of the tagged proteins (Palmer, page 352, second paragraph).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have fused the eGFP to the C-terminal end of OCT-4 in the fusion protein of Ni to arrive at the invention claimed in instant claim 7 with a reasonable expectation of success at least because the orientation of the fusion protein is suggested to be this way in Ni but otherwise because they would have been motivated to do so by Palmer’s teaching that C-terminal fusion is superior and would likely preserve the native function of the OCT-4 whereas N-terminal fusion would not necessarily do so. There would have been a reasonable expectation of success in C-terminal fusion of eGFP to OCT-4 insofar as a person having ordinary skill in the art would have reasonably expected this to be superior to N-terminal fusion for preserving native OCT-4 function.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ni and Palmer as applied to claims 1, 7, and 10-12 above, and further in view of Sun, et al. Stem Cells International 2016.1 (2016): 1390284, hereinafter “Sun”.
As discussed above, Ni and Palmer teach to fuse eGFP to the C-terminal end of OCT-4 by arranging the transgene to have eGFP downstream of the Pou5f1 gene.
Neither Ni, nor Palmer explicitly teach to delete the proximal enhancer element in such a transgene.
However, Ni very specifically teaches that the distal enhancer was used for the transgene (Ni, [0106]). Sun teaches that OCT-4 has two conserved enhancers, the distal and the proximal enhancers (DE and PE respectively) (Sun, Abstract). Sun teaches that each enhancer independently controls OCT-4 expression in embryonic stem cells (ESCs) and eblast stem cells (epiSCs) (Sun, Abstract). Sun also teaches a dual reporter system where two separate fluorescent reporters were under control of the OCT-4 promoter but where each one had only either the DE or the PE (Sun, Abstract). Sun teaches that this system is useful for distinguishing between stem cell subsets and for monitoring the dynamic progression of cell differentiation (Sun, page 2, third paragraph). Sun also teaches that the distal enhancer drives OCT-4 expression in undifferentiated ESCs, morula, primordial germ cells, and ICM whereas the proximal enhancer blocks OCT-4 expression in the epiblast stage (Sun, page 8, first paragraph).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have deleted the proximal enhancer from the upstream regulatory region of OCT-4 in the transgene of Ni and to have arrived at the invention claimed in instant claim 8 with a reasonable expectation of success at least because Ni teaches to use the distal enhancer specifically but otherwise because they would have been motivated to do so to allow OCT-4 expression into the epiblast stage as taught by Sun. There would have been a reasonable expectation of success in deleting the proximal enhancer from the transgene of Ni insofar as a person having ordinary skill in the art would have reasonably expected that doing so would widen the observation window for OCT-4 expression into the epiblast stage as taught by Sun.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDAN THOMAS TINSLEY whose telephone number is (703)756-5906. The examiner can normally be reached Mon-Fri 8:00-5:00.
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/BRENDAN THOMAS TINSLEY/Examiner, Art Unit 1634
/MARIA MARVICH/Primary Examiner, Art Unit 1634
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