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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-18 in the reply filed on 08/05/2026 is acknowledged.
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/05/2026.
Claims 1-18 are currently under examination.
Priority
Applicant’s claim for the benefit of a prior-filed application provisional application 63463515 , filed on 05/02/2023 under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted filed before the mailing date of the non-final first action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 1 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 1 recites method of improving or enhancing maturation of iPSC-CMs, comprising “contacting one or more iPSC-CMs with (1) a nucleic acid molecule comprising a nucleic
acid sequence encoding (i) at least one zinc finger protein, (ii) at least one polypeptide
having effector activity, and (iii) a deactivated Cas9 (dCas9) endonuclease, or (2) a
vector comprising the nucleic acid molecule, wherein, following the contacting step, the one or more iPSC-CMs are characterized by a mature structural, electrophysiological, contractile, and
metabolic profile”. It should be noted that the claim when given its broadest reasonable interpretation consistent with the specification, encompasses employing a nucleic acid encoding 1. “ at least one zinc finger”; 2. “at least one polypeptide having effector activity”.; and 3. “ a deactivated cas9 (dcas9) endonucleases”. The specification, however, provides substantially narrower disclosure, and does not demonstrate possession of the full breadth of this claimed genus. Specifically, instant specification identifies Zim3/ZFN657/ZFN264 and describes a particular Zim3-KRAB-dCas9 system. For example, paragraphs [00406-00410] of instant specification describe the use of Zim3-KRAB-dCas9 in human iPSCs-CMs and attribute the reported functional outcomes including the electrophysiological and changes in gene expression profile to the use of Zim3-KRAB-dCas9. Paragraph [00407], further, describes effects obtained by expressing Zim3-KRAB-dCas9 without addition of gRNA or with scrambled/control gRNA, and paragraph [00408] identifies the increased expression of KCNJ2, KCNH2, and GJA1 following the expression of Zim3-KRAB-dCas9 . Thus, the specification provides an experimental disclosure directed principally to Zim3-KRAB-dCas9 , while claim 1 is not limited to Zim3, KRAB, or the particular Zim3-KRAB-dCas9 construct disclosed and exemplified in the specification. Rather, claim 1 encompass a broad genus comprising any zinc finger protein, in combination with any polypeptide having effector activity and dCas9, provided that the resulting cells exhibit the recited mature profile.
It should be noted that the specification does not identify a representative number of zinc finger proteins and corresponding effector proteins spanning this genus. Nor does it provide sufficient structural, functional, or other characteristics establishing that the inventor is in full possession of the broad genus of zing finger/effector/dCas9 combination encompassed by claim 1. The disclosure of single Zim3-KRAB-dCas9 embodiment does not by itself demonstrate possession of the substantially broader genus claimed in claim 1.
Accordingly, one of ordinary skill in the art would not reasonably conclude from the specification as filed that Applicants are in possession of all zinc-finger proteins and effector polypeptides encompassed by claim 1, when associated with dCas9 would produce the recited functional outcome including mature structural, electrophysiological, contractile, and metabolic profile. Accordingly, claim 1 is rejected under 35 U.S.C 112(a).
As per the MPEP (2163 (I)). “ To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116.
As per the MPEP (2163 (V)).” While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when…(2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
Applicant attention is directed to the existing narrower disclosure, in particular claims 2-3 reciting the full construct and the corresponding nucleic acid sequences. Applicant is invited to amend the independent claim, if appropriate, to bring the scope of the claim into conformity with the subject matter adequately described in instant specification by incorporating the limitation of claims 2-3 in the subject matter of the independent claim 1.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-3, and 5-18 are rejected under 35 U.S.C. 103 as being unpatentable over Taipale et al (WO 2022/032397 A1), in view Metzl-Raz et al ( Stem Cell Research, 2022), Wang et al ( Frontiers et al, 2022), Herron et al ( Arrhythmia and Electrophysiology, 2016), Horikoshi et al ( Cells, 2019), Ahmed et al ( Frontiers, 2020), and Shardin et al ( Nature Communication, 2017) .
Regarding claims 1-2, Taipale et al teach a heterologous transcriptional repressor comprising a DNA targeting domain, preferably a catalytically inactive DNA targeting protein such as a dCas9 protein ,and a KRAB domain wherein the KRAB domains expressly include ZIM3-KRAB. Taipale et al further teach nucleic acid, expression constructs, vectors, and cells encoding or expressing said transcriptional repressor, as well as systems and methods for transcriptional repression of a target gene, and compositions, kits and reagents employed in the making and use thereof. ( See abstract). In Particular, Tiapale et al identify ZIM3-KRAB-dCas9 as a potent transcriptional repressor and provides nucleic acid and vector embodiments encoding the fusion protein. ( See [0007-0009] and [0014]). For example, Tiapale et al test multiple KRAB domains fused to dCas9 for transcriptional repression and show that ZIM3-KRAB exhibits substantially greater repression than KOX1-KRAB controls. ( See example 1 and 3). Thus, Taipale et al teach the Zim3-KRAB-dCas9 architecture recited in claim 2.
Taipale et al, however, do not teach a method of enhancing the maturation of iPSCs-CMs using the repression construct (i.e. ZIM3-KRAB-dCas9).
Metzl-Raz et al supplement Taipale et al by teaching a doxycycline-inducible dCas9-KRAB-mCherry construct integrated into an MYL7-mGFP human iPSC line. Metzl et al demonstrate that the resulting system exhibited CRISPR inhibition/repression activity in iPSCs and iPSC-derived cardiomyocytes (iPSCs-CMs). Metzl et al teach that the repression activity of KRAB-dCas9 system was experimentally validated by targeting MYOCD in iPSCS-derived cardiomyocytes. ( See abstract). Metzl-Raz et al, therefore, provides a teaching to use an inducible dCAS9-KRAB transcriptional repression system in the precise cellular context recited in claim 1 (i.e. iPSCs-derived cardiomyocytes (iPSCs-CM).
Wang et al further supplement Taipale et al by teaching that human iPSCs-CM are immature relative to adult cardiomyocytes and that cardiomyocyte maturation involves coordinated phenotypic and functional changes that are driven by complex gene regulatory network. Wang et al also demonstrate that the loss-of-function of LMNB2 resulted in increased maturation of iPSCs-CM, with the increased maturation characterized by transcriptional
profiles related to myofibril structure and energy metabolism. Wang et al expressly identify the work as providing a strategy for promoting cardiomyocytes maturation. ( See the abstract).
Taken together, Taipale et al teach contacting cells with a repression system comprising nucleic acid encoding ZIM3-KRAB-dCas9. Metzl-Raz et al supplement Taipale by implementing dCas9-KRAB in iPSCs-derived cardiomyocytes, while Wang supplements the cited prior art by teaching that genetic manipulation of iPSCs-CM to produce increased maturation, including maturation associated with myofibril structure and energy metabolism. Therefore, it would have been prima facie obvious to one with ordinary skill in the art at the time the invention was filed to employ the repression construct of Taipale et al (i.e. ZIM3-KRAB-dCas9) in the iPSCs-CM of Metzl-Raz, in view of Wang’s teaching that genetic manipulation of gene-regulatory pathways can be used to promote the maturation of iPSCs-CM. As such, the combined teachings merely involve combining known gene-regulation techniques to a known cellular system to produce a known biological objective (i.e. modulation of cardiomyocytes maturation). In other words, instant claims are combining prior art elements according to known methods to yield predictable results. See MPEP 2143 (I)(A).
Regarding claim 3, Taipale et al teach a dCas9 comprising amino acid sequence set forth in SEQ ID NO.1, which shares 100% identity with SEQ ID NO.20 of instant claim. (See Table of Sequences on page 35). It is submitted that the ZIM3-KRAB domain taught by Taipale et al does not share 100% identity with the recited SEQ ID NO.23. However, Chakraborty et al supplement Taipale et al by teaching a ZIM3-KRAB domain comprising nucleic acid sequence set forth in SEQ ID NO.8, that shares 93.3% identity with the recited SEQ ID NO.23. In particular, the sequence disclosed by Chakraborty et al corresponds to SEQ ID NO.23 except for the absence of the 5’-ATG initiation codon. Thus, the difference between the sequence disclosed by Chakraborty and SEQ ID NO.23 would have been an obvious modification to one of ordinary skill in the art. Specifically, an ATG initiation codon is a conventional translation initiation element used to initiate translation of an encoded polypeptide. Where a coding sequence is incorporated into an expression vector, it would have been a routine for an ordinary skill in the art to provide appropriate initiation codon in the vector and/or immediately upstream of the coding sequence so that the disclosed ZIM3-KRAB coding sequence is expressed. Accordingly, one with ordinary skill in the art would have been motivated to combine the disclosed ZIM-KRAB coding sequence of Chakraborty with the dCAS9 coding sequence taught by Taipale et al to produce nucleic acid encoding ZIM3-KRAB-dCas9. The combination merely involves combining known elements according to know recombinant-DNA techniques to produce the predictable result of expressing ZIM3-KRAB-dCas9 fusion effector. See MPEP 2143 (I)(A).
Regarding claims 5- 15, it is noted that instant claims recite characteristics that are associated with the maturation phenotype of the cells . Although Taipale et al do not specifically teach these functional outcomes, such outcomes represent well-established indicators of iPSC-derived cardiomyocytes maturation. These includes established metabolic programs, gene expression patterns, and electrophysiological profile, all of which were recognized as measures of iPSCs-CM maturation before the relevant effective filing dates of instant application.
For example, Horikoshi et al recognize that as CMs mature, the mitochondrial oxidative capacity increases, with fatty acid-oxidation becoming a key energy source to meet the heart’s high energy. Specifically, Horikoshi et al teach that mature iPSC-CM exhibit increased mitochondrial oxidative capacity, increased mitochondrial number and enhanced fatty acid utilization. Horikoshi et al also report that a metabolic transition from glycolytic metabolism, characteristic of immature cardiomyocytes, toward oxidative metabolism and fatty acid utilization, which are characteristics of mature cardiomyocytes, this reads on claims 6,9-11, and 12. ( See abstract).
On the other hand, Herron et al also report that human iPSCs-CM were known to exhibit an immature phenotype and that maturation could be assessed by structural and electrophysiological characteristics including KCNJ2/Kir2.1 and GJA1/Cx43 expression and increased conduction velocity, this reads on claim 7. ( See abstract).
Furthermore, Ahmed et al identify aaditional characteristics associated with mature CM. Specifically, Ahmed et al report that mature human CM begin beating when stimulated with a force around 40–80 mN/mm2 , exhibit a conduction velocity around 60 cm/s, and have upstroke velocity about 150–350 V/s. (See section “ Physical and Electrophysiological Properties” on page 3). Ahmed et al further describe these parameters as characteristics of mature cardiomyocytes and contrast them with substantially lower values in immature hiPSCs-CM. Ahmed et al further discuss the difference in gene expression between the immature and mature CM. For example, Ahmed et al report that CAV3 and KCNH2 tend to be expressed at lower level in immature CM. ( See section “ Gene Expression” on page 4). This reads on claims 8, and 13-15.
Therefore, it would have been obvious to one with ordinary skill in the art at the time the invention was filed to evaluate iPSCs-CM maturation using these known molecular and metabolic markers after applying ZIM3-KRAB-dCas9 regulatory system of Taipale et al.
Regarding claim 17, following the discussion of claims 1 above and 5-15, Taipale et al in view of the cited prior arts render obvious a method of enhancing the maturation of iPSCs-CM by contacting the cells with nucleic acid encoding ZIM3- KRAB-dCas9. Taipale et al do not teach employing the mature iPSCs-CM in drug development. Horikoshi et al, however, supplement Taipale et al by recognizing the utility of mature iPSCs-CM in drug development. Thus, the teachings of Horikoshi et al establish that the use of mature iPSCs-CM was well known before the effective filing date. Therefore, it would have been obvious to one with ordinary skill in the art to employ those cells in drug-screening applications, as this represents a predictable use of the resulting cells.
Regarding claim 16, following the discussion of claim 1 above, Taipale et al do not teach adding mature iPSCs-CM to implantable patch. However, Shardin et al supplement Taipale et al by teaching the use of matured hiPSCs-CM in an implantable patch. Specifically, Shardin et al describe a three-dimensional cardiopatch platform in which hiPSCs-CM are cultured and matured, with maturation resulting in structural and functional characteristics approaching those of adult cardiomyocytes. Shadrin et al further teach that the resulting cardiopatches are suitable for cardiac repair and demonstrate implantation of the cardiopatches onto the epicardial surface of rat hears. ( See the abstract). Thus, Shardin et al teach the additional limitation of claim 18. Therefore, it would have been prima facie obvious to one with ordinary skill in the art at the time the invention was filed to modify the combined teachings of Taipale et al, Metzl-Raz, and Wang and employ the resulting matured iPSCs-CM into an implantable cardiac patch that can be used in heart repair, as taught by Shardin et al, and with a reasonable expectation of success, because Shardin et al teach cardiopatches comprising mature iPSCs-CM and demonstrate that when implanted into rat hearts, those cardiopatches robustly engraft, maintain pre-implantation electrical function, and do not increase the incidence of arrhythmias.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FATIMAH KHALAF MATALKAH whose telephone number is (703)756-5652. The examiner can normally be reached Monday-Friday,7:30 am-4:30 pm EST.
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/FATIMAH KHALAF MATALKAH/Examiner, Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
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