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 .
Status of Claims
Claims 1-66 are canceled.
Claims 67-83 are pending and are under examination for the merits in this Office action.
Priority
This application claims priority to U.S. Provisional Patent Application Serial No. 63238878, filed August 31, 2021; and International Application Serial No. PCT/IB2022/058089, filed August 29, 2022.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claims 67-78 and 81-82 are supported by the disclosure of U.S. Provisional Patent Application Serial No. 63238878; thus, are considered to have an effective filing date of August 31, 2021.
Claims 79-80 and 83 are supported by the disclosure of International Application Serial No. PCT/IB2022/058089 (i.e., the CLEANCAP concentration ranges); thus, are considered to have an effective filing date of August 29, 2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/29/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01. See page 1 line 34.
The use of the term CLEANCAP AG, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore, the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. CLEANCAP appears 22 times throughout the specification without a trade name or a mark used in commerce. Applicant is required to identify each and every occurrence.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 73 objected to because of the following informalities: claim 73 recites “manufacturing RNA,” which lacks a preceding article for RNA. See analogous claim 67 for proper article use preceding RNA. Appropriate correction is required.
Claim 79 is objected to because of the following informalities: claim 79 recites “the CLEANCAP AG concentration 2 - 10mM,” which is grammatically incorrect as it is missing “is” preceding “2-10mM”. See following claim 80 for proper grammatical construction. Appropriate correction is required.
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 81 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 81 is construed to require that the temperature limitation applies to step (A), i.e., the recited components in independent claim 73 are combined in a reaction vessel at 35-40C. the specification discloses combining IVT reaction components under standard room temperature or over ice conditions and subsequently incubating the assembled reaction at an elevated temperature to effect transcription. Applicant does not describe an embodiment in which the components themselves are combined/mixed at 35-40C, as distinct from the manufacturing/transcription step being run at that temperature.
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 73-77, and 78-83 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 74 depends from canceled claim 34. Claim 75 and 76 inherit the deficiency of claim 74 as they both either directly depend from or ultimately depend from claim 74. In the interest of compact prosecution and customer service, the examiner is interpreting claim 74 to depend from independent claim 73.
If claim 74 is interpreted to depend on claim 73, claim 74 lacks proper antecedent basis for the term “total NTPs,” and thus, claims 75 and 76 inherit the antecedent basis deficiency of claim 74.
In the interest of compact prosecution and customer service, the examiner is interpreting claim 73 in light of claim 74, and thus is considering (c)(ii) as referring to “total NTP.”
Claim 77 recites “wherein the Mg2+:NTP ratio is 3:1 to 8:1.” It is unclear if NTP as recited is meant to convey total NTP (consistent with independent claim 73’s recitation, as informed by claim 74’s express use of “total NTPs concentration” as a further limitation) or to the concentration of each individual NTP species (consistent with the specification’s use of an analogous Mg2++:NTP ration calculation in Table 6). These two readings yield materially different, and non-overlapping claim scope, such that a person of ordinary skill in the art could not determine the metes and bounds of claim 77 with reasonable certainty. Thus, claim 77 is interpreted to recite total NTP or individual NTP species with respect to the prior art.
Claims 78-80 and 83 contain the trademark/trade name CLEANCAP AG. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe TriLink's patented co-transcriptional capping reagent for in vitro transcription of 5' capped mRNA resulting in a Cap 1 structure and, accordingly, the identification/description is indefinite.
Claim 81 recites “the method of claim 73 wherein for a portion of the duration of step (A) of manufacturing, the temperature is 35-40C.” It is unclear whether step “(A) combining in a reaction vessel components comprising…,” or step “(B) manufacturing the RNA of claim 81 is carried out at 35-40 C because the specification as filed does not disclose step A being performed at 35-40 C, rather the specification describes preferred temperatures for the entire duration of the manufacturing step (see [0078]) or “for a portion of the duration of the step of manufacturing” (see [0078]) or “ for a portion of the duration of IVT reaction” (see [0078]) or “the step of incubating the reaction components” (see [0080]).
Claim 82 recites the limitation "the mRNA" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 82 depends from claim 73, which recites “manufacturing RNA,” which does not limit to mRNA, and thus claim 82 recitation of “the mRNA” lacks antecedent basis.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 69 and 76-77 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 69, claim 67, from which claim 69 ultimately depends, requires total NTPs at a concentration of 34-38 mM. Claim 68, from which claim 69 directly depends, requires that each NTP species be present at the same concentration. For claim 69’s recited per-species range of 8-10 mM to remain consistent with claim 67’s total, each species must fall within approximately 8.5-9.5 mM (34mM/4 to 38mM/4). As claimed, the outer portions of the 8-10 mM range (8-8.5 mM and 9.5-10 mM per species) describe embodiments with a total NTP concentration outside the 34-38 mM range required by claim 67, and therefor fails to further limit claim 67.
Regarding claim 76, which depends from claim 75, which depends from claim 74, which (assuming the intended dependency on claim 73) requires total NTPs at 12-24 mM. For claim 76’s recited 2-8 mM per species (equimolar, per claim 75) to remain within that inherited total, each species must fall within 3-6 mM (12mM/4 to 24mM/4). Claim 76’s recited 2-8 mM range is inconsistent with the inherited total at both ends: 4 x 2mM = 8 mM (below 12 mM) and 4 x 8 mM = 32 mM ( above 24 mM, and also above claim 73’s own outer total of 28 mN), and therefore fails to further limit the claims from which it depends.
Regarding claim 77, claim 73, from which claim 77 depends, requires Mg2+ concentration at 8-20 mM and NTPs concentration at 12-28 mM. The full range of Mg2+:NTP ratios mathematically achievable within these bounds spans from 8mM/28mM = 0.29:1 (minimum Mg2+ and NTP) to 20mM/12mM = 1.67:1 (maximum Mg2+ and NTP). Claim 77’s recited ratios of 3:1 to 8:1 lies entirely outside this range under the construction that “NTP” in claim 77 refers to total NTP concentration, consistent with the parent claim’s concentration limits. Rather than further limiting claim 73’s scope, claim 77 recites subject matter that is mutually exclusive with it, rendering the claim as improper dependent form.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 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 73-77 and 81-82 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Milburn S. et al., (US6586218B2, published 07/01/2003).
Regarding claim 73, Milburn teaches method for manufacturing RNA by in vitro transcription (IVT) (abstract: “…an improved reaction mixture for use in in vitro RNA transcription…” and claim 1 “a method of preparing a polynucleotide, comprising:”), said method comprising the steps of (A) combining in a reaction vessel components comprising (claim 1: “(a) preparing a reaction mixture comprising”): (a) a DNA template (claim 1: “a polynucleotide template” and column 7 lines 47-50 “the in vitro RNA synthesis is directed by DNA templates”); (b) a RNA polymerase (claim 1: “an RNA polymerase”); and (c) a suitable reaction buffer, the buffer comprising (i) Mg2+ at a total concentration 8 -20 mM (claim 1: “an initial free Mg++ concentration equal to or less than 0.2 mM” and claim 3 “wherein the free Mg++ concentration does not remain equal to or less than 0.2 mM throughout incubation” and claim 4 “wherein the reaction mixture is further defined as comprising an initial molar concentration of Mg++ that is not more than 10% greater than the total molar nucleotide concentration” and claim 5 “wherein the initial total molar concentration of Mg++ is less than the initial molar total nucleotide concentration” and Table 1/FIG. 2 “total Mg++ (mM)…14” and FIG. 1 description “the concentration of MgCl2 was 16 mM”); (ii) NTPs at a concentration 12 - 28 mM (abstract: “the reaction mixture uses high concentrations of total nucleotides, in the order of 12 mM to 40 mM, i.e. levels that were previously thought to be inhibitory,” and column 3 lines 21-25: “for most applications, the nucleotide concentration will be between 12 mM and about 40 mM,” and claim 1: “an initial total nucleotide concentration of greater than 16 mM” and claim 6: “wherein the initial total nucleotide concentration is less than 40 mM” and claim 11: “wherein the initial total nucleotide concentration is between 16 mM and 40 mM” and claim 16: “wherein the initial total nucleotide concentration is between 16 mM and 20 mM” and Table 1/FIG. 2: “total nucleotide concentration (mM)…20” and FIG. 1 description: “18 mM total nucleotides (4.5 mM A+C+G+U=18)”); and (B) manufacturing the RNA1 (claim 1: “(b) incubating the reaction mixture to produce a polynucleotide).
Regarding claim 74, Milburn teaches wherein the Mg2+ concentration in step (A) is 10 - 20 mM and the total NTPs concentration is 12 - 24 mM (Table 1/FIG. 2: total Mg++ (mM)…14…20…” and “total nucleotide concentration (mM)…20”).
Regarding claims 75-76, Milburn teaches wherein each species of NTP is at a concentration of 2-8 mM and at the same concentration (Table 1/FIG. 2: total Mg++ (mM)…14…20…” and “total nucleotide concentration (mM)…20,” which at 20mM total NTP necessitated each species to be at 5 mM). Milburn further teaches “For 18 mM total nucleotides (4.5 mM A+C+G+U=18) the concentration of MgCl2 was 16 mM,” see FIG. 1 description.
Regarding claim 77, Milburn teaches IVT reactions with MG2+:total NTP ratio at 1:1 and a reaction in which total NTP is loaded in at 20 mM and thus Mg2+ is also at 20 mM. Therefore, since each NTP is equimolar with respect to one another, each species of NTP is at 5mM, and with respect to Mg2+ at 20 mM, the ratio of Mg2+:NTP species is 4:1, which falls squarely between the claimed 3:1 to 8:1 limitation.
Regarding claim 81, Milburn teaches incubating the transcription reaction at 37C, see examples.
Regarding claim 82, Milburn teaches capped transcripts, used for microinjection into oocytes, transfection experiments, and in vitro splicing reactions, are conventional research-grade capped mRNA transcripts synthesized by standard “run-off” transcription, see column 7 lines 50-60 and column 27 lines 1-3. Milburn does not describe or suggest that the 5’ capped mRNA produced by the disclosed methods comprise structural elements such as a replicase-encoding open reading frame that are associated with self-amplifying/self-replicating RNA; thus, the suggested mRNA products generated by Milburn’s methods and compositions are inherently non-replicating.
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.
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 67-69 are rejected under 35 U.S.C. 103 as being unpatentable over Milburn S. et al., (US6586218B2, published 07/01/2003).
The teachings of Milburn set forth above in the 102 rejection of claims 73-77 and 81-82 are incorporated herein by reference.
Regarding claims 67-69, Milburn teaches methods for manufacturing RNA by IVT, as defined in claim 1: A method of preparing a polynucleotide, comprising: (a) preparing a reaction mixture comprising: an initial total nucleotide concentration of greater than 16 mM; an initial free Mg2+ concentration equal to or less than 0.2 mM; inorganic pyrophosphatase; a polynucleotide template; and an RNA polymerase; and (b) incubating the reaction mixture to produce a polynucleotide. A preferred range for total NTP concentration is indicated as 12-40 mM, with each species of NTP being loaded equimolar (see abstract and examples). Indicated ranges for the magnesium concentration are not more than 10% greater than the total NTP concentration (claim 4), and less than the initial molar total nucleotide concentration (claim 5).
Milburn’s Example 1/Table 1/FIG. 2 teaches experiments testing total nucleotide concentration against three Mg2+:total NTP ratios, 0.7X, 1X, and 1.43X, establishing that a fixed sub-saturating ratio (e.g., 0.7X), the reaction proceeds without inhibition across the tested range up to 40 mM total NTP, whereas at equimolar (1X) ratio, NTP concentration above 30 mM begin to show inhibition, and at excess (1.43X) Mg2+ the inhibition is more pronounced still at these same concentrations. Thus, Milburn teaches the operative principle that as total NTP concentration is increased past 30 mM towards 40 mM, a correspondingly sub-saturating Mg2+:total NTP ratio (i.e., <1X) is required to avoid the inhibition observed at equimolar or excess Mg2+, see FIG. 2 and reproduced below for convenience.
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It would have been obvious to a person having ordinary skill in the art (PHOSITA) to employ 30-34 mM Mg2+ and 34-38 mM total NTPs when practicing the methods of Milburn. A PHOSITA seeking to select optimal target total NTP concentrations between Milburn’s tested 30- and 40-mM data points (e.g., 34-38 mM) would, applying Milburn’s demonstrated principle, have selected a correspondingly sub-saturating Mg2+ concentration rather than an equimolar one. Across instant claim 67’s claimed ranges (i.e., 30-34 mM Mg2+ and 34-38 mM total NTPs), the resulting Mg2+:total NTP ratio spans approximately 0.79 – 1.00, with the substantial majority of this range (i.e., 0.79-0.89) falling within the sub-saturating regime Milburn demonstrates as effective up to 40 mM. Selecting values within this range is a routine optimization of a result-effective variable (Mg2+:total NTP ratio) that Milburn identifies as controlling reaction performance. Thus, a PHOSITA would have been motivated to do so in order to increase the yield of IVT reactions. A PHOSITA would have had a reasonable expectation of success because Milburn already demonstrates successfully improving IVT reactions using total NTP concentration up to 40 mM and sub-saturating Mg2+ from 0.7 – 1 of the concentration of total NTP.
Claims 70-71 are rejected under 35 U.S.C. 103 as being unpatentable over Milburn S. et al., (US6586218B2, published 07/01/2003) as applied to claims 67-69 above, and further in view of Martin L. (Thermo Fisher Scientific, Technical Bulletin: #182, Practical Tips for In Vitro Transcription, published 07/16/2019, accessed 07/14/2026).
The teachings of Milburn are incorporated herein by reference to the 102 and 103 rejections above.
Milburn does not teach incubation the transcription reaction at 25-30C.
Martin teaches “typically, transcription reactions are performed at room temperature or at 37°C. Lowering the temperature to ~16°C or even 4°C can sometimes improve transcription. It is believed that lower reaction temperatures slow the polymerase's progression, thereby preventing it from being displaced by secondary structure or a string of one specific nucleotide,” see lowering the incubation temperature of the reaction.
It would have been obvious to one having ordinary skill in the art (PHOSITA) before the effective filing date to employ the IVT methodologies of Milburn such that the incubation step for the transcription reaction (i.e., the manufacturing step) at a temperature between 25-30C, lower than the standard 37C incubation temperature. A PHOSITA would have been motivated to do so in order to enhance IVT reactions because lower incubation temperatures slow the polymerase’s progression, thereby preventing it from being displaced by secondary structures or a stretch of one specific nucleotide. A PHOSITA would have had a reasonable expectation of success because the methodologies were common practice and already successfully performed.
Claim 72 is rejected under 35 U.S.C. 103 as being unpatentable over Milburn S. et al., (US6586218B2, published 07/01/2003) as applied to claims 67-69 above, and further in view of Gealll A, et al., (US20110300205A1).
The teachings of Milburn are incorporated herein by reference to the 102 and 103 rejections above.
Milburn does not teach IVT methods to synthesize self-replication RNA molecules.
Geall teaches “in vitro synthesis of self-replicating RNAs,” see examples I-III. Geall further teaches “ the self-replicating RNA molecules are based on the RNA genome of an alpha virus,” see [0008]. Geall further teaches that self-replicating are advantageous because they “can enhance efficiency of RNA delivery and expression of the encoded gene products,” for example, “in the production of various gene products (e.g., proteins) at the same time, for example, as a bivalent or multivalent vaccine, or in gene therapy applications,” see [0006] and [0075].
It would have been obvious to one having ordinary skill in the art (PHOSITA) before the effective filing date to modify the IVT methods of Milburn such that they produce self-replicating mRNA molecules. A PHOSITA would have been motivated to do so in order to enhance efficiency of RNA delivery and expression of the encoded gene products. A PHOSITA would have had a reasonable expectation of success because Milburn and Geall demonstrate successful methodologies of IVT using common components.
Claims 78-80 and 83 are rejected under 35 U.S.C. 103 as being unpatentable over Milburn S. et al., (US6586218B2, published 07/01/2003) as applied to claims 73-76 in the 102 rejection above, and further in view of Hogrefe RI, et al., (WO2017053297A1, assigned to TriLink Biotechnologies LLC, the manufacturers of CLEANCAP AG) and Takara (Takara IVTpro™ mRNA Synthesis System, product manual, cat# 6141, v202207Da, printed 07/20/2022).
The teaching of Milburn are incorporated herein by reference to the 102 rejection above.
Milburn does not teach the addition of CLEANCAP to the reaction buffer composition generally, or at a concentration of 2-10 mM or 8 mM.
Hogrefe teaches “methods and compositions for the synthesis of 5'Capped RNAs,” see [0002]. In particular, Hogrefe teaches initiating capped oligonucleotide primers for co-transcriptional 5’ capping of RNA of the general form m7Gppp[N2'Ome]n[N]m wherein m7G is N7-methylated guanosine or any guanosine analog, N is any natural, modified or unnatural nucleoside, "n" can be any integer from 0 to 4 and "m" can be an integer from 1 to 9, see abstract. Hogrefe teaches embodiments that employ m7GpppA2 omePG initiating capped oligonucleotide primers for in vitro transcription, and further teaches the transcription reaction comprised 5mM or 6 mM of the primers, see example 14. This is the same compound TriLink markets as CLEANCAP AG.
Hogrefe further teaches that the benefit of using these methods and compositions is co-transcriptional capping that reduces cost, increases yield, reduces heterogenous 5’ product, and eliminates the separate enzymatic capping/purification steps otherwise required for post-transcriptional capping, see background of invention, advantages over ARCA/mCAP approaches.
Takara teaches the use of “CleanCap Reagent AG or CleanCap Reagent AG (3’ OMe) at a 4:5 molar ratio with NTP (final concentration 8 mM),” see page 11 mRNA synthesis reaction using CleanCap Reagent AG or CleanCap Reagent AG (3’ OMe), reagents per reaction and 2-*3. Takara further teaches that the addition of the 5’ cap by using CLEANCAP “is needed for efficient protein translation in eukaryotes,” see page 3.
It would have been obvious to a person having ordinary skill in the art (PHOSITA) before the effective filing date to employ CLEANCAP AG, and specifically within either the range of 2-10 mM or at 8 mM in the IVT methods of Milburn, and thus also preparing a composition comprising 10-20 mM of Mg++, 12-28 mM NTPs, wherein each NTP is at 2-8 mM and CLEANCAP is at 2-10 mM. A PHOSITA would have been motivated to add Hogrefe’s cap primer at concentrations between 2-10 mM, for example 4-6 mM as taught by Hogrefe or 8 mM as taught by Takara, to reduce cost, increase yield, reduce heterogenous 5’ product, and eliminate the separate enzymatic capping/purification steps. A PHOSITA would have had a reasonable expectation of success because Hogrefe’s cap primer were routinely being employed in IVT employing the same IVT reagents such as T7 and other buffer components such Tris-HCl, Mg++, NTPs, spermidine, and DTT.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COREY LANE BRETZ whose telephone number is (571)272-7299. The examiner can normally be reached M-F 7:30am - 6:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ram Shukla can be reached at (571) 272-0735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/COREY LANE BRETZ/Examiner, Art Unit 1635
/RAM R SHUKLA/Supervisory Patent Examiner, Art Unit 1635
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