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 1-9 are examined on the merits.
Priority
This application is a national stage application, which claims priority from Korean Application KR10-2023-0055806, filed 04/27/2023 is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
Line 21, page 20 states “Meanwhile, for comparison, in the case of mice in which the MeCP2 gene was up-regulated in DIR neurons, the improved effect on depression was not confirmed as a result of behavioral analysis (FIG. 5).” The FIG 5 does not correspond to what is presented in the drawings.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3 are rejected under 35 U.S.C. 101 because
the claimed invention is directed to natural phenomenon and abstract idea without significantly more. The claim(s) recite(s) detection of a naturally occurring molecule Mecp2.
Claim 1 recites “A method for diagnosing depression comprising the followings: (A) obtaining a biological sample derived from the ventral striatum of a subject; (B) measuring the expression level of MeCP2 in the sample; (C) comparing the expression levels of MeCP2 between the sample of the subject and a sample derived from a normal person; and (D) determining depression if the level of MeCP2 in the subject sample is lower than that of the normal sample”.
Subject Matter Eligibility Test for Products and Processes
Step 1 - Is the Claim to a Process, Machine, Manufacture or Composition of Matter? YES.
The claims recite a method comprising: (A) obtaining a biological sample derived from the ventral striatum of a subject; (B) measuring the expression level of MeCP2 in the sample; (C) comparing the expression levels of MeCP2 between the sample of the subject and a sample derived from a normal person; and (D) determining depression if the level of MeCP2 in the subject sample is lower than that of the normal sample. Thus, the claims are directed to a statutory category (e.g., a process).
Step 2A, Prong 1— Does the claim recite a Law of Nature, a Natural Phenomenon, or an Abstract idea? YES.
The Supreme Court has explained that the judicial exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and technological work", and are thus excluded from patentability because "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it". The claims recite two judicial exceptions: Law of Nature/Natural phenomenon: Claim 1 recites the biological relationship between a decreased expression levels of Mecp2 in the ventral striatum and the clinical condition of depression. The correlation itself-where a lower level of a naturally occurring mRNA or protein indicates a specific neurological condition- exists in nature entirely independent of human intervention, this correlation is a law of nature.
Abstract idea: Steps (C) and (D) recites “comparing the expression levels” and “determining depression if the level of Mecp2 is lower”. These steps represent a mental process or logical comparison that can be performed within the human mind. Analyzing data and drawing a diagnostic conclusion from the data fall within a “mental process” category of abstract ideas. The act of comparing a measured level to a normal level and making a diagnosis is a mental process (See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) (Mental processes and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work, MPEP 2106.04).
Claim 2 further limits the measuring step of the naturally occurring biological molecule Mecp2, at gene expression or protein level. Techniques for measuring protein or mRNA levels in biological samples, such as ELISA for proteins or reverse transcriptase PCR for mRNA, are conventional and routinely used Brown et al. (WO 2013/022995 A2). The mere act of measuring a naturally occurring biomarker does not constitute an inventive concept.
Claim 3 further recites performing a treatment of depression after the diagnosis is made. However, the claim merely adds the treatment step after determining the presence of depression using the natural correlation.
Step 2A, Prong 2
The claims do not integrate the judicial exception into a practical application. The additional elements, including obtaining a biological samples, measuring MeCP2 expression, comparing expression levels and performing conventional routine assays at protein or mRNA level, merely collect and analyze data used to observe the natural correlation. These steps do not improve laboratory technology, or effect a transformation beyond that associated with observing the natural law.
With respect to claim 3 further recites performing treatment of depression when the diagnosis is made. When the diagnosis is not made, no further step occurs. Thus, there is an embodiment with no practical application. Even if the diagnosis is made, the treatment step is broadly general, does not specify any particular therapeutic agent. Instead, the treatment is merely an “apply it” limitation that follows the mental determination of the subject’s condition. Treatment of depression is specified at a high level of generality and treatment was generally carried out in the art (Duman et al. Neuron, 2019).
This judicial exception is not integrated into a practical application because no elements in addition of the judicial exception are recited in the claims.
Step 2B - Does the Claim Recite Additional Elements that Amount to Significantly More than the Judicial Exception? NO.
The Supreme Court has identified a number of considerations for determining whether a claim with additional elements amounts to “significantly more” than the judicial exception(s) itself. The claims as a whole are analyzed to determine whether any additional element/step, or combination of additional elements/steps, in addition to the identified judicial exception(s) is sufficient to ensure that the claim amounts to “significantly more” than the exception(s).
Step (A) recites obtaining a biological sample derived from the ventral striatum of a subject”. Extracting or obtaining a biological sample from a subject is a well-known routine, and conventional preliminary step in the diagnostic arts (While obtaining a biopsy from a ventral striatum of a brain of a subject is highly invasive and uncommon, the concept of obtaining a tissue sample to run an assay is entirely conventional.
Step (B) recites “measuring the expression level of Mecp2”. The claim relies on broad pure functional language and does not recite any novel, unconventional method or proprietary assay for measuring mRNA or protein. Measuring protein or gene expression using standard laboratory techniques (such as RT-PCR, Northern blot, Western blot, ELISA) is routine and conventional Brown et al. (WO 2013/022995 A2).
When viewed as an ordered combination, the elements merely instruct a person of ordinary skill to gather standard biological data (Steps A, B), perform a generic mental comparison *Step C), and arrive at a natural conclusion (Step D). The combination of these steps does not alter the underlying natural phenomenon, the steps constitute well-understood, routine and conventional activity in the art.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no elements in addition to the judicial exception are recited in the claims.
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 1-3 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.
Enablement is considered in view of the Wands factors (MPEP 2164.01(A)). These include: the breadth of the claims, the nature of the invention, the state of the prior art, the level of one of ordinary skill, the level of predictability in the art, the amount of direction provided by the inventor, the existence of working examples, and the quantity of experimentation needed to make or use the invention. All of the Wands factors have been considered with regard to the instant claims, with the most relevant factors discussed below.
Nature of the invention: Claim 1 is drawn to a method for diagnosing depression comprising the followings: (A) obtaining a biological sample derived from the ventral striatum of a subject; (B) measuring the expression level of MeCP2 in the sample; (C) comparing the expression levels of MeCP2 between the sample of the subject and a sample derived from a normal person; and (D) determining depression if the level of MeCP2 in the subject sample is lower than that of the normal sample. Dependent claim 2 limits the system to the measuring of the level of MeCP2 in the (B) is performed by a method selected from the group consisting of reverse evaluating MeCP2 at mRNA or at protein level. Dependent claim 3 further comprises (E) performing the treatment of depression for the subject when the subject is determined as depression in the (D). The nature of the claim is complicated because the claim requires the outcome of treating depression for the subjects yet this is performed after diagnosis which requires a highly invasive technique in a deep brain structure, the ventral striatum.
Breadth of the claims: The claim encompass an initial diagnosis of depression by measuring the levels of MeCP2 in a biological sample from the ventral striatum. Followed by treatment of the diagnosed subjects. The complex nature of the subject matter of this invention is greatly exacerbated by the breadth of the claims.
Guidance of the specification and existence of working examples: The specification envisions a pharmaceutical composition for preventing or treating depression including an agent capable of increasing the expression level of MeCP2 specifically in D2R neurons of the ventral striatum as an active ingredient (e.g., line 5, page 5). The specification envisions the agent may be a vector including a MeCP2 gene, the vector may be a viral vector, and the viral vector may be at least one vector selected from the group consisting of retrovirus, lentivirus, adenovirus, adeno-associated virus, and hybrid vector. In another embodiment of the present disclosure, the MeCP2 gene may be DNA or RNA consisting of a nucleotide sequence encoding MeCP2. In addition, according to yet another aspect, there is provided a method for preparing a depression animal model, including knocking down a MeCP2 gene specifically in D2R
neurons of the ventral striatum of a subject other than human line 9, page 5). The specification envisions a screening method of
drugs for preventing or treating depression including the following steps:
(a) administering a candidate substance to a depression animal model due to exposure to chronic restraint stress; (b) measuring the expression level of MeCP2 in D2R neurons in a ventral striatum sample of the animal after administering the candidate substance; and (c) selecting the candidate substance as a drug for preventing or treating depression when there is no significant difference between the expression level of MeCP2 and the
expression level of MeCP2 of D2R neurons of the ventral striatum in a control group not exposed to chronic restraint stress (e.g., line 8, page 6). The specification envisions a depression animal model in which MeCP2 expression is knocked down in the neurons, and the depression animal model may be used to search for substances that up-regulate the expression of MeCP2, which may be used as a drug for preventing or treating depression, and is expected to be greatly helpful in researching novel drugs (e.g., line 24, page 7). The specification envisions The screening method may selectively include comparing results of measuring MeCP2 expression levels in D2R neurons of the ventral striatum of a subject before or after administration and selecting the candidate substance as a drug for preventing or treating depression when the expression level ofMeCP2 increases after administration of the candidate
15 substance; and comparing results of measuring MeCP2 expression levels in D2R neurons of the ventral striatum in a normal animal model and a depression animal model administered with the candidate substance and selecting the candidate substance as a drug for preventing or treating depression when there is no significant difference there between (e.g., line 11, page13).
The working examples disclose:
Example 1: development of a depression animal model by exposure to chronic restraint stress: test group of experimental animals were exposed every day for 21 days to restraint stress by exposing them to open field test, elevated plus maze test, forced swim test (e.g., line 20, page 15-16). Mice subjected to restraint stress for 2 hours every day for 3 weeks continued to lose body weight and had high anxiety compared to a control group in an elevated plus maze test and had a significant increase in despair compared to the control group in a forced swim test to construct mice in which depression was induced by exposure to restraint stress (e.g., line 20, page 16).
Example 2: disclose MeCP2 as biomarker for diagnosing depression. After the end of chronic restraint stress stimulation, the brain tissue was extracted from a mouse, frozen at - 80°C, and only the ventral striatum portion was cut and the brain slice was dissolved in a RIPA buffer. MeCP2 expression determined by Western blot and immunohistostaining using anti-MeCP2 antibodies. It was confirmed that the expression level of MeCP2 in the group exposed to chronic stress (chronic restraint stress, CRS) was significantly decreased compared to the control group (CTR) at 2 hours and 3 days after the end of stimulation (e.g., line 5; Fig. 2). It was
confirmed that MeCP2 was specifically decreased in D2R neurons, and no change in MeCP2 expression was observed in DIR neurons in the ventral striatum (e.g., line 6, page 19).
Example 3: disclose MeCP2 as target for treating (preventing) depression. A transgenic mouse (B6.FVB( Cg)-Tg(Drd2-cre )ER44Gsat/Mmucd, RRID: MMRRC 032108-UCD) specifically expressing Cre recombinase in D2R neurons was administered with AAV(DJ/8)-DIO-mMeCP2-eGFP or AAV(DJ/8) DIO- eGFP, and as a result, Cre recombinase was specifically expressed in D2R neurons. After 2 weeks of virus injection, CRS was applied for 3 weeks, and OFT, EPM, and FST were performed after stimulation was completed. In mice expressing the MeCP2 gene in D2R neurons of the ventral striatum, depressive symptoms were improved to a similar level to control mice that were not exposed to CRS even after exposure to CRS (e.g., line 17, Figs. 4B to 4F; Fig. 5). Meanwhile, for comparison, in the case of mice in which the MeCP2 gene was up-regulated in DIR neurons, the improved effect on depression was not confirmed as a result of behavioral analysis.
The examples described in the specification does disclose the diagnosis of depression by measuring the expression of MeCP2 in DR2 neurons of transgenic mice in brain of euthanized mice.
The specification does not enable the claimed sequence of obtaining a ventral striatum biological sample and subsequently treating the same subject. The specification does not disclose guidance for obtaining a biological sample from the ventral striatum of a living subject in a manner that permits routine clinical diagnosis as claimed; followed by treatment of the diagnosed subjects. The ventral striatum is a deep brain structure that is not ordinarily accessible through minimally invasive sampling techniques. The specification lacks any working examples showing the claimed diagnostic method being performed on living subjects followed by treatment.
Predictability and state of the art: The state of the art with respect to treatment of depression in subjects diagnosed by obtaining a sample from the ventral striatum is underdeveloped and unpredictable. Spijker et al (Neuroproteomics, 2019) teaches dissect in the frozen brain or that are relatively large, such as the dorsal striatum, thalamus, and the entire prefrontal cortex. In principle, with frozen dissection, various subregions can be harvested in parallel by precisely cutting out the region of interest from a brain slice, e.g., the prelimbic and infralimbic prefrontal cortex, and nucleus accumbens (ventral striatum) (e.g., paragraph 2nd, page 8). Sun et al. (CNS Neuroscience & Therapeutics, 2025) teaches the expression of Methyl-CpG-binding protein 2 (MeCP2) was modulated by injecting the adeno-associated virus (AAV) with the DIO system into the ventral DG of the Nes-CreERT2 mice and was evaluated upon euthanization of the mice (e.g., paragraph 3rd, column left, page 3).
Thus, the teachings of the post-filing art are consistent with the prior art demonstrating the underdeveloped and unpredictable nature of the invention.
Amount of experimentation necessary: It would require a large amount of experimentation to develop a safe, reproducible and clinically applicable methods for obtaining ventral striatum tissue and carrying out the claimed diagnostic and treatment steps.
In view as well as the unpredictability of the art, the skilled artisan would have required an undue amount of experimentation to make and/or use the claimed invention. Therefore, claims 1-3 are not considered to be enabled by the instant disclosure.
In view of the breadth of the claims, the lack of guidance provided by the specification, the lack of the predictability of the art to which the invention pertains, undue amount of experimentation would be required to make and use the claimed invention to diagnose depression by obtaining biological samples from the ventral striatum and followed by treatment of diagnosed subjects. Because the specification does not contain a detailed description of how to make and use the method of diagnosis and treatment, according to the invention, and absent working examples that provide evidence that is reasonably predictive of diagnosis and treatment, the claims are not enabled commensurate in scope with the claimed invention.
Claim 4 is 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.
Claim 4 requires the provision of a genus of “an agent” capable of increasing the expression of MeCP2 in D2R neurons of the ventral striatum. Thus, the claim encompasses the provision of a genus of “agents” that must function to increased expression of MeCP2. The limitation “an agent” encompasses an exceedingly broad genus of compounds capable of increasing MeCP2 expression in DR2 neuros of the ventral striatum. Under broadest reasonable interpretation, the term “agent” includes but not limited to, small molecules, proteins, antibodies, nucleic acids, antisense oligonucleotides, microRNAs, mRNAs, epigenetic modifiers, transcription factors, or any other substance capable of producing the recited functional results.
To provide adequate written description and evidence of possession of a claimed genus, the specification must provide sufficient distinguishing identifying characteristics of the genus. The factors to be considered include disclosure of a complete or partial structure, physical and/or chemical properties, functional characteristics, structure/function correlation, and any combination thereof.
The specification envisions a pharmaceutical composition for preventing or treating depression including an agent capable of increasing the expression level of MeCP2 specifically in D2R neurons of the ventral striatum as an active ingredient (e.g., line 5, page 5). The specification envisions the agent may be a vector including a MeCP2 gene, the vector may be a viral vector, and the viral vector may be at least one vector selected from the group consisting of retrovirus, lentivirus, adenovirus, adeno-associated virus, and hybrid vector. In another embodiment of the present disclosure, the MeCP2 gene may be DNA or RNA consisting of a nucleotide sequence encoding MeCP2. In addition, according to yet another aspect, there is provided a method for preparing a depression animal model, including knocking down a MeCP2 gene specifically in D2R
neurons of the ventral striatum of a subject other than human line 9, page 5). The specification envisions a screening method of
drugs for preventing or treating depression including the following steps:
(a) administering a candidate substance to a depression animal model due to exposure to chronic restraint stress; (b) measuring the expression level of MeCP2 in D2R neurons in a ventral striatum sample of the animal after administering the candidate substance; and (c) selecting the candidate substance as a drug for preventing or treating depression when there is no significant difference between the expression level of MeCP2 and the
expression level of MeCP2 of D2R neurons of the ventral striatum in a control group not exposed to chronic restraint stress (e.g., line 8, page 6). The specification envisions a depression animal model in which MeCP2 expression is knocked down in the neurons, and the depression animal model may be used to search for substances that up-regulate the expression of MeCP2, which may be used as a drug for preventing or treating depression, and is expected to be greatly helpful in researching novel drugs (e.g., line 24, page 7). The specification envisions The screening method may selectively include comparing results of measuring MeCP2 expression levels in D2R neurons of the ventral striatum of a subject before or after administration and selecting the candidate substance as a drug for preventing or treating depression when the expression level ofMeCP2 increases after administration of the candidate
15 substance; and comparing results of measuring MeCP2 expression levels in D2R neurons of the ventral striatum in a normal animal model and a depression animal model administered with the candidate substance and selecting the candidate substance as a drug for preventing or treating depression when there is no significant difference there between (e.g., line 11, page13).
The working examples disclose:
Example 1: development of a depression animal model by exposure to chronic restraint stress: test group of experimental animals were exposed every day for 21 days to restraint stress by exposing them to open field test, elevated plus maze test, forced swim test (e.g., line 20, page 15-16). Mice subjected to restraint stress for 2 hours every day for 3 weeks continued to lose body weight and had high anxiety compared to a control group in an elevated plus maze test and had a significant increase in despair compared to the control group in a forced swim test to construct mice in which depression was induced by exposure to restraint stress (e.g., line 20, page 16).
Example 2: disclose MeCP2 as biomarker for diagnosing depression. After the end of chronic restraint stress stimulation, the brain tissue was extracted from a mouse, frozen at - 80°C, and only the ventral striatum portion was cut and the brain slice was dissolved in a RIPA buffer. MeCP2 expression determined by Western blot and immunohistostaining using anti-MeCP2 antibodies. It was confirmed that the expression level of MeCP2 in the group exposed to chronic stress (chronic restraint stress, CRS) was significantly decreased compared to the control group (CTR) at 2 hours and 3 days after the end of stimulation (e.g., line 5; Fig. 2). It was
confirmed that MeCP2 was specifically decreased in D2R neurons, and no change in MeCP2 expression was observed in DIR neurons in the ventral striatum (e.g., line 6, page 19).
Example 3: disclose MeCP2 as target for treating depression. A transgenic mouse (B6.FVB( Cg)-Tg(Drd2-cre )ER44Gsat/Mmucd, RRID: MMRRC 032108-UCD) specifically expressing Cre recombinase in D2R neurons was administered with AAV(DJ/8)-DIO-mMeCP2-eGFP or AAV(DJ/8) DIO- eGFP, and as a result, Cre recombinase was specifically expressed in D2R neurons. After 2 weeks of virus injection, CRS was applied for 3 weeks, and OFT, EPM, and FST were performed after stimulation was completed. In mice expressing the MeCP2 gene in D2R neurons of the ventral striatum, depressive symptoms were improved to a similar level to control mice that were not exposed to CRS even after exposure to CRS (e.g., line 17, Figs. 4B to 4F; Fig. 5). Meanwhile, for comparison, in the case of mice in which the MeCP2 gene was up-regulated in DIR neurons, the improved effect on depression was not confirmed as a result of behavioral analysis.
The examples described in the specification does disclose the expression of MeCP2 in DR2 neurons of transgenic mice. The specification only provides data for MeCp2 as an agent, and is not representative of a broad agents allowed by the claims. Furthermore, the examples describe in the specification does not meet the limitation of the rejected claim “an agent”. There is insufficient guidance provided indicating any type of other agents capable of increasing the expression of MeCP2.
The state of the art with respect to using “an agent” for increase the expression level of MeCP2 is underdeveloped and unpredictable. Bird et al. (WO 2018/172795 A1) teaches the nucleic acid molecules and viral vectors disclosed herein provide novel tools for expressing MeCP2 and are of particular value in the treatment of disorders associated with reduced MeCP2 activity, including Rett syndrome (e.g., abstract). Liyanage et al. (Experimental Neurology, 2015) teaches that continuous ethanol exposure upregulates MeCP2 expression, whereas ethanol withdrawal downregulates expression in vitro (e.g., abstract). Similarly, Host et al. (Journal of Psychopharmacology, 2011) teaches that cocaine administration increases MeCP2 expression in multiple brain regions in rats (e.g., abstract). Villani et al. (Scientific Reports, 2021) teaches that fluoxetine increases brain MeCP2 expression in mouse model of Rett syndrome (e.g., abstract).
The claims encompasses significantly more than what is disclosed in the specification and does not satisfy the written description requirement under 35 U.S.C 112(a).
Therefore, the skilled artisan would have reasonably concluded applicants were not in possession of the claimed invention for claim 4.
Claims 4-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a composition for treating depression, the composition comprising administering an adeno-associated virus (AAV) comprising a polynucleotide encoding MeCP2 protein to the subject, and wherein the administration is via intracranial injection, does not reasonably provide enablement for preventing depression. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
Factors to be considered in determining whether a disclosure meets the enablement requirement of 35 U.S.C. 112, first paragraph, have been described by the court in In re Wands, 8 USPQ2d 1400 (Fed. Cir. 1988). Wands states, on page 1404: Factors to be considered in determining whether a disclosure would require undue experimentation have been summarized by the board in Ex part Forman. These include: the breadth of the claims, the nature of the invention, the state of the prior art, the level of one of ordinary skill, the level of predictability in the art, the amount of direction provided by the inventor, the existence of working examples, and the quantity of experimentation needed to make or use the invention. All of the Wands factors have been considered with regard to the instant claims, with the most relevant factors discussed below.
Nature of the invention: The instant claim 4 recites a pharmaceutical composition for “preventing” or treating a depression, comprising a functionally active ingredient designed to increase MeCP2 expression specifically in D2R neurons of the ventral striatum. The term “preventing” broadens the scope of the claim to encompass prophylactic intervention in any asymptomatic individual. This means the compound must be capable of permanently altering or protecting before any pathogenic onset of depressive behavior occurs. The nature of the claim is complicated because the claim requires the outcome of preventing depression for the subjects yet the claim is drawn to administering an agent capable of increasing the expression of MeCP2 in ventral striatum as the only step.
Breadth of the claims: The claim encompass preventing depression comprising a functionally active ingredient designed to increase MeCP2 expression specifically in D2R neurons of the ventral striatum. The complex nature of the subject matter of this invention is greatly exacerbated by the breadth of the claims.
Guidance of the specification and existence of working examples: The specification envisions a pharmaceutical composition for preventing or treating depression including an agent capable of increasing the expression level of MeCP2 specifically in D2R neurons of the ventral striatum as an active ingredient (e.g., line 5, page 5). The specification envisions the agent may be a vector including a MeCP2 gene, the vector may be a viral vector, and the viral vector may be at least one vector selected from the group consisting of retrovirus, lentivirus, adenovirus, adeno-associated virus, and hybrid vector. In another embodiment of the present disclosure, the MeCP2 gene may be DNA or RNA consisting of a nucleotide sequence encoding MeCP2. In addition, according to yet another aspect, there is provided a method for preparing a depression animal model, including knocking down a MeCP2 gene specifically in D2R
neurons of the ventral striatum of a subject other than human line 9, page 5). The specification envisions a screening method of
drugs for preventing or treating depression including the following steps:
(a) administering a candidate substance to a depression animal model due to exposure to chronic restraint stress; (b) measuring the expression level of MeCP2 in D2R neurons in a ventral striatum sample of the animal after administering the candidate substance; and (c) selecting the candidate substance as a drug for preventing or treating depression when there is no significant difference between the expression level of MeCP2 and the
expression level of MeCP2 of D2R neurons of the ventral striatum in a control group not exposed to chronic restraint stress (e.g., line 8, page 6). The specification envisions a depression animal model in which MeCP2 expression is knocked down in the neurons, and the depression animal model may be used to search for substances that up-regulate the expression of MeCP2, which may be used as a drug for preventing or treating depression, and is expected to be greatly helpful in researching novel drugs (e.g., line 24, page 7). The specification envisions The screening method may selectively include comparing results of measuring MeCP2 expression levels in D2R neurons of the ventral striatum of a subject before or after administration and selecting the candidate substance as a drug for preventing or treating depression when the expression level ofMeCP2 increases after administration of the candidate
15 substance; and comparing results of measuring MeCP2 expression levels in D2R neurons of the ventral striatum in a normal animal model and a depression animal model administered with the candidate substance and selecting the candidate substance as a drug for preventing or treating depression when there is no significant difference there between (e.g., line 11, page13).
The working examples disclose:
Example 1: development of a depression animal model by exposure to chronic restraint stress: test group of experimental animals were exposed every day for 21 days to restraint stress by exposing them to open field test, elevated plus maze test, forced swim test (e.g., line 20, page 15-16). Mice subjected to restraint stress for 2 hours every day for 3 weeks continued to lose body weight and had high anxiety compared to a control group in an elevated plus maze test and had a significant increase in despair compared to the control group in a forced swim test to construct mice in which depression was induced by exposure to restraint stress (e.g., line 20, page 16).
Example 2: disclose MeCP2 as biomarker for diagnosing depression. After the end of chronic restraint stress stimulation, the brain tissue was extracted from a mouse, frozen at - 80°C, and only the ventral striatum portion was cut and the brain slice was dissolved in a RIPA buffer. MeCP2 expression determined by Western blot and immunohistostaining using anti-MeCP2 antibodies. It was confirmed that the expression level of MeCP2 in the group exposed to chronic stress (chronic restraint stress, CRS) was significantly decreased compared to the control group (CTR) at 2 hours and 3 days after the end of stimulation (e.g., line 5; Fig. 2). It was
confirmed that MeCP2 was specifically decreased in D2R neurons, and no change in MeCP2 expression was observed in DIR neurons in the ventral striatum (e.g., line 6, page 19).
Example 3: disclose MeCP2 as target for treating depression. A transgenic mouse (B6.FVB( Cg)-Tg(Drd2-cre )ER44Gsat/Mmucd, RRID: MMRRC 032108-UCD) specifically expressing Cre recombinase in D2R neurons was administered with AAV(DJ/8)-DIO-mMeCP2-eGFP or AAV(DJ/8) DIO- eGFP, and as a result, Cre recombinase was specifically expressed in D2R neurons. After 2 weeks of virus injection, CRS was applied for 3 weeks, and OFT, EPM, and FST were performed after stimulation was completed. In mice expressing the MeCP2 gene in D2R neurons of the ventral striatum, depressive symptoms were improved to a similar level to control mice that were not exposed to CRS even after exposure to CRS (e.g., line 17, Figs. 4B to 4F; Fig. 5). Meanwhile, for comparison, in the case of mice in which the MeCP2 gene was up-regulated in DIR neurons, the improved effect on depression was not confirmed as a result of behavioral analysis.
The examples described in the specification does disclose that transgenic mice treated with an AAV carrying MeCP2 gene was up-regulated in DIR neurons, the improved effect on depression was not confirmed as a result of behavioral analysis.
The specification does not disclose preventing
Predictability and state of the art: The state of the art with respect to preventing depression in subjects is underdeveloped and unpredictable. Ali et al. (Molecular Biology Reports, 2025) teaches that two main therapeutic approaches are under investigation: (1) gene augmentation, which directly targets the core MECP2 loss-of-function mutation, and (2) therapies targeting downstream pathways to alleviate cellular and molecular dysfunctions caused by MECP2 deficiency (e.g., paragraph 2nd, right column, page 687). Ali teaches inserting a therapeutic construct containing the intact MECP2 gene into RTT-affected cells to restore MECP2 protein levels and consequently improve cellular, synaptic, and behavioral functions. If successful, gene aug-mentation has the potential to reverse or significantly allevi-ate RTT symptoms by directly restoring MECP2’s role in gene regulation and neural stability. However, challenges remain in developing a safe and effective gene therapy for RTT, particularly for achieving precise regulation of MECP2 expression in brain cells. Given the dose-sensitivity of MECP2, overexpression could have adverse effects, caus-ing toxicity or additional neural dysfunction (e.g., paragraph 3rd, right column, page 687). Bae et al. (Experimental & Molecular Medicine, 2026) teaches a chronic restraint stress (CRS) model to examine whether MeCP2 is associated with stress-related behavioral and circuit changes in a cell-type-specific manner. Bae discloses that CRS was accompanied by reduced MeCP2 protein levels in D2R neurons, but not D1R neurons, in the NAc. Viral restoration of MeCP2 expression specifically in D2R neurons attenuated CRS-associated behavioral alterations, including increased immobility in the forced swim test (FST) and elevated anxiety-like behavior in the elevated plus maze (EPM) (e.g., paragraph 3rd, left column, page 1658).
Thus, the teachings of the post-filing art are consistent with the prior art demonstrating the underdeveloped and unpredictable nature of the invention.
Neither the specification nor prior art teaches about prevention, neither teaches about quantification over time on expression of MeCP2 and its effect on normal cells over time.
Amount of experimentation necessary: It would require a large amount of experimentation to develop a safe, reproducible and clinically applicable composition for preventing depression by increasing the expression level of MeCP2 in D2R neurons of the ventral striatum. The specification lacks any guidance regarding preventive efficacy, a person of ordinary skill in the art, would be force to carry out an extensive, and long trial and error screening campaign. This would require identifying healthy populations, systematically guessing at prophylactic dosing regimens without any guidance. Furthermore, given the dose-sensitivity of MECP2, overexpression could have adverse effects, caus-ing toxicity or additional neural dysfunction.
In view as well as the unpredictability of the art, the skilled artisan would have required an undue amount of experimentation to make and/or use the claimed invention. Therefore, claims 4-7 are not considered to be enabled by the instant disclosure.
In view of the breadth of the claims, the lack of guidance provided by the specification, the lack of the predictability of the art to which the invention pertains, undue amount of experimentation would be required to make and use the claimed invention to prevent depression in a subject with reasonable expectation of success. Because the specification does not contain a detailed description of how to determine the if a subject is predisposing to develop depression. Prevention of a genetic disorder implies the ability to intervene prior to the development of the disease, which requires a deeper understanding of the disease pathogenesis, timing of intervention, delivery efficiency, long-term effects and safety, none of which are addressed in the specifications.
Therefore, according to the invention, and absent of working examples that provide evidence that is reasonably predictive of the ability of preventing, the claims are not enabled commensurate in scope with the claimed invention.
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.
Claims 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bird et al. (“Bird”, WO 2018/172795 A1).
Bird teaches the nucleic acid molecules and viral vectors disclosed novel tools for expressing MeCP2 and are of particular value in the treatment of disorders associated with reduced MeCP2 activity, including Rett syndrome (e.g., abstract). Bird teaches the AAV virion may be of any suitable serotype. Serotypes AAV9 and AAV PHP.B may be particularly preferred due to their capacity for transduction of neural cells (It reads on all brain cells that includes D2R neurons of the ventral striatum) (e.g., line 34, page 6). Bird teaches that the nucleic acids, virions, etc. can be formulated in pharmaceutical compositions (e.g., line 29, page 36, claim 21). Bird teaches that the virion particle may be regarded as a gene delivery vehicle for delivering nucleic acid encoding MeCP2 protein to a target cell, and capable of inducing expression of MeCP2 protein in a target cell (e.g., line 25, page 6). (Su et al. Molecular Med. Reports, 2015, is cited only to indicate that individuals suffering from Major depressive disorder have reduced levels of MeCP2).
Claim Rejections - 35 USC § 103
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 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.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis et al. (“Lewis”, Neuropsychopharmacology, 2016) in view of Bernosky-Smith et al. (“Bernosky-Smith”, Behavioural Brain Research, 2018) and Su et al. (“Su”, Molecular Med. Reports, 2015).
Regarding claim 8, Lewis teaches a AAV9 mediated shRNA directed against rat MeCP2 mRNA (Mecp2 shRNA) (e.g., paragraph 2nd, right column, page 2853; Experiment 2, page 2855; Fig. 3).
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Regarding claim 9, Lewis teaches intracranial virus infusions in anesthetized rats. The scalp was shaved and surgical area cleaned with ethanol and 1% iodine before a ~ 2 cm incision was made to expose the skull (e.g., paragraph 3rd, right column, page 2853).
Lewis does not teach a depression model by knocking down MeCP2 in D2R neurons of the ventral striatum, as required by claims 8-9. However, this is cured by Bernosky-Smith and Su.
Bernosky-Smith teaches viral approach to manipulate D2R subpopulations in adult wild type rats, using RNA interference to knockdown the D2Rs. Adeno-associated virus serotype 10 (AAV10) infects the neuronal cell bodies at the injection site. Thus, when injected directly into the striatum they induce a knockdown in the postsynaptic D2R, which is found primarily on indirect medium spiny neuron. However, when injected into the midbrain, these viruses will knock down the receptor from neurons whose cell bodies reside in this region, predominantly from DA neuron (e.g., paragraph 3rd, left column, page 130).
Su teaches that the chronic unpredictable stress (CUS) model is a well-established animal model of depression that mimics, and learned helplessness. Following exposure to CUS, the rats exhibited high serum corticosterone levels and depressive behaviors, including increased immobility time in the FST and decreased sucrose consumption, miR-132 expression was upregulated in the hippocampi of CUS-exposed rats, whereas the protein expression levels of MeCP2 and BDNF were significantly decreased(e.g., paragraph 1st, left column, page 5403; Fig. 2).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to deliver the AAV9 encoding MeCP2 shRNA taught by Lewis to D2R subpopulations of adult wild type rats because 1) Lewis discloses an AAV9 mediated shRNA directed against rat MeCP2 mRNA (Mecp2 shRNA) in the brain, 2) Bernosky-Smith discloses a viral approach to manipulate D2R subpopulations in adult wild type rats, using RNA interference, and 3) Su decrease levels of MeCP2 in the hippocampus of animal model of depression; then, it would have been obvious to develop an animal model of depression by knocking down MeCP2 in D2R neurons of the ventral striatum.
One of ordinary skill in the art before the effective filing date of the invention would have been motivated to develop depression animal model comprising an AAV vector carrying a shRNA MeCP2 to transduce neural cell like D2R in ventral striatum to study the role of MeCP2 in depression.
Conclusion
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/JULIO WASHINGTON GOMEZ RODRIGUEZ/Examiner, Art Unit 1637
/Jennifer Dunston/Supervisory Patent Examiner, Art Unit 1637
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