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 with traverse of Group I (drawn to a composition), Brn2 (Genus A), P2A (Genus B), and a single vector system (Genus C) in the reply filed on 08/12/2026 is acknowledged. The traversal is on the ground(s) that the inventions of Groups I and II share substantially overlapping compositions, vector constructs, conversion factors, and technical effects, and that examination of both groups would involve substantially the same prior art and search fields without imposing a serious search or examination burden. Applicant further argues that the alternatives within Genera A, B, and C are functionally related and do not warrant separate species elections.
After further consideration, the Examiner has decided to withdraw the requirement for electing within Genus A, Genus B, and Genus C. However, the arguments against the restriction between Group I and Group II is not found persuasive because the inventions are related as product and process of use, and the products of Group I, comprising GSTA4 protein or nucleic acid encoding the same, are capable of being used in materially different processes, such as assays for evaluating GSTA4 expression or activity, apart from the methods recited in Group II. Thus, the inventions are distinct under MPEP § 806.05(h). Furthermore, examination of the product and method inventions involves different classifications and fields of search, thereby imposing a serious search and examination burden.
The requirement between the inventions of Group I and Group II is still deemed proper and is therefore made FINAL.
Claims 12-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Status of Claims
Claims 1-25 are currently pending.
Claims 1-11 and 24-25 are under consideration, as claims 12-23 are withdrawn.
Priority
The present application is a continuation of PCT/KR2022/021615 filed on 12/29/2022, and claims priority to Korean application KR-10-2021-0190556, filed on 12/29/2021. Acknowledgment is made of applicant' s claim for foreign priority and papers submitted under 35 U.S.C. 119 (a)-(d). The present application and all claims are being examined with an effective filing date of December 29, 2021. In future actions, the effective filing date may change due to amendments or further review of priority documents.
Claim Objections
Claims 2 and 9 are objected to because of the following informalities:
Regarding claim 2, the phrase “an amino acid sequence having a of 70% or more sequence identity thereto” contains an extraneous “a” and “of” after “having”, rendering the phrase grammatically incorrect. The language should be amended to read “an amino acid sequence having 70% or more sequence identity thereto.”
Regarding claim 9, the phrase “wherein the iii) included in one vector or in two or more vectors” omits the word “is” and is grammatically incorrect. The language should be amended to read “wherein the iii) is included in one vector, or in two or more vectors.”
Appropriate correction of all of the above is required.
Claim Rejections - 35 USC § 112(b)
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 2-3, 6, 9, and 24-25 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.
Regarding claims 2, 3 and 6, the recitation “has an amino sequence represented by SEQ ID NO…” renders the scope of the claims unclear. Specifically, it is unclear whether the claimed nucleic acid must consist of the exact nucleotide sequence identified by, for example SEQ ID NO: 2 or 12 in claim 3, or whether the claim encompasses nucleic acids comprising the identified sequence together with additional nucleotides. For examination purposes, the limitation is interpreted broadly to encompass a nucleic acid containing the complete nucleotide sequence of the recited SEQ ID NOs, including nucleic acids having additional nucleotides flanking the identified sequence.
Regarding claim 9, the claim recites “a vector” comprising a first vector and a second vector, but subsequently recites that the nucleic acid encoding the conversion factor is included “in one vector or in two or more vectors.” It is unclear whether the claimed subject matter is directed to a single vector, a two-vector system, or a system comprising three or more vectors. Furthermore, it is unclear how the recitation permitting the conversion-factor-encoding nucleic acid to be included in one or two or more vectors relates to the previously recited second vector comprising that nucleic acid. Accordingly, the number of vectors required and the distribution of the recited nucleic acids among the vectors cannot be determined with reasonable certainty.
Regarding claims 24 and 25, the recitation of “the vector” lacks a clear antecedent basis because claim 9 recites both a first vector and a second vector. It is unclear whether the additional limitations of claims 24 and 25 apply to the first vector, the second vector, or both vectors. Accordingly, the scope of claims 24 and 25 cannot be determined with reasonable certainty. For examination purposes, the examiner is interpreting “the vector” as referring to either the first or second vector.
Claim Rejections - 35 USC § 112(a)
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 2 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.
It is noted that MPEP 2111.01 states that ''[d]uring examination, the claims must be interpreted as broadly as their terms reasonably allow. Claim 2 has been broadly interpreted as encompassing a genus of compositions comprising GSTA4 proteins having an amino acid sequence with at least 70% sequence identity to SEQ ID NO: 1.
MPEP 2163 I. states that 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.
MPEP 2163. II.A.3.(a) states that “Possession may be shown in many ways. For example, possession may be shown by describing an actual reduction to practice of the claimed invention. Possession may also be shown by a clear depiction of the invention in detailed drawings or in structural chemical formulas which permit a person skilled in the art to clearly recognize that inventor had possession of the claimed invention. An adequate written description of the invention may be shown by any description of sufficient, relevant, identifying characteristics so long as a person skilled in the art would recognize that the inventor had possession of the claimed invention.
According to MPEP 2163.II.A.3.(a).ii), “Satisfactory disclosure of a ‘representative number’ depends on whether one of skill in the art would recognize that the applicant was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus…Instead, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are ‘representative of the full variety or scope of the genus,’ or by the establishment of ‘a reasonable structure-function correlation.’"
In the instant case, SEQ ID NO: 1 encodes an enzyme that is intended to have specific biological activity. The specification identifies GSTA4 as a glutathione S-transferase enzyme and describes its use as a factor for direct conversion of somatic cells into induced motor neurons. The specification discloses the amino acid sequence of GSTA4 as SEQ ID NO: 1 and broadly states that GSTA4 variants may be obtained through amino acid substitutions, insertions, or deletions, including variants having at least 70% sequence identity to SEQ ID NO: 1 (see the section entitled “Gsta4 Type (1)—Gsta4 Protein”). However, the specification does not identify representative amino acid sequences of GSTA4 variants spanning the claimed sequence-identity range. Nor does the specification identify critical amino acid residues, conserved functional regions, catalytic motifs, or other structural characteristics that would establish which sequence modifications may be tolerated while retaining the biological properties associated with GSTA4. In particular, the specification does not establish a correlation between the structural features of GSTA4 variants and the asserted ability to promote direct conversion of somatic cells into induced motor neurons. Additionally, while the specification provides experimental results demonstrating neuronal marker expression following introduction of GSTA4 into somatic cells (see Example 1 and FIG. 2), the experiments do not characterize structurally diverse GSTA4 variants or demonstrate that variants having as little as 70% sequence identity to SEQ ID NO: 1 retain the relevant biological activity.
Given that the claimed genus encompasses proteins having substantial amino acid sequence variation relative to SEQ ID NO: 1, and that changes in amino acid sequence may affect protein structure and biological function, disclosure of the reference sequence and a broadly stated percentage identity range does not, without further structural characterization or representative species, adequately establish possession of the full scope of the claimed genus. Accordingly, in the absence of sufficient representative GSTA4 variant sequences or an established structure–function correlation identifying structural characteristics common to the claimed genus, the specification fails to reasonably convey to one of ordinary skill in the art that the inventor was in possession of the full scope of the invention recited in claim 2 at the time of filing.
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 1-3 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goli et al. (US20030044401A1, cited in PTO-892).
Regarding claim 1, Goli et al. teaches a composition comprising a substantially purified human glutathione S-transferase (hGST) protein having the amino acid sequence of SEQ ID NO: 1 (paragraphs [0008] and [0037]). Sequence alignment establishes that SEQ ID NO: 1 of Goli et al. is 100% identical to instant SEQ ID NO: 1, corresponding to the claimed GSTA4 protein. It is noted that the discovery of a previously unrecognized property or function of a known composition does not render the composition patentably distinct from the prior art. See MPEP § 2112(I). Although the instant specification identifies GSTA4 as a factor capable of promoting direct conversion of somatic cells into induced motor neurons, claim 1 is directed to a composition rather than a method of performing such conversion. To the extent that the recited direct-conversion language identifies an intended use of the composition without imposing an additional structural limitation, such language does not distinguish the claimed composition from the GSTA4 composition disclosed by Goli et al. Furthermore, the recitation concerning direct conversion of a somatic cell into an induced motor neuron is interpreted as describing the intended use or result of the claimed composition, rather than requiring performance of a method step. See MPEP § 2111.02. Pursuant to MPEP § 2112.01, identical chemical compositions cannot possess mutually exclusive inherent properties, and a newly recognized property of an otherwise known composition does not, by itself, render the composition novel. Accordingly, the recited intended use does not distinguish the claimed composition from the structurally identical composition disclosed by Goli et al.
Regarding claim 2, Goli et al. teaches that the hGST protein comprises the amino acid sequence of SEQ ID NO: 1 (paragraph [0008] and Figures 1A–1C). Sequence alignment establishes 100% amino acid sequence identity between SEQ ID NO: 1 of Goli et al. and instant SEQ ID NO: 1 (see sequence alignment below).
Regarding claim 3, Goli et al. teaches a polynucleotide encoding hGST comprising the nucleotide sequence of SEQ ID NO: 2 (paragraphs [0009] and [0039]). Sequence alignment establishes that all 669 nucleotides of instant SEQ ID NO: 12 are present with 100% identity within Goli et al. SEQ ID NO: 2 (see sequence alignment below).
Regarding claim 7, Goli et al. teaches an expression vector comprising a nucleic acid encoding human glutathione S-transferase (HGST) and a promoter for expression of the encoded protein (paragraphs [0063]–[0066]). Goli et al. further teaches that the HGST-encoding sequence may be inserted into an adenoviral expression system comprising a late promoter and tripartite leader sequence, thereby enabling expression of HGST in infected mammalian host cells (paragraph [0071]). Accordingly, Goli et al. teaches a vector comprising a nucleic acid encoding GSTA4 and a promoter operably linked thereto, wherein sequence alignment establishes that Goli et al. SEQ ID NO: 1 is 100% identical to instant SEQ ID NO: 1.
Sequence alignment between SEQ ID NO: 1 of Goli et al. and instant SEQ ID NO: 1
US-09-784-739-1
(NOTE: this sequence has 65 duplicates in the database searched.
See complete list at the end of this report)
Sequence 1, US/09784739
Publication No. US20030044401A1
GENERAL INFORMATION
APPLICANT: Goli, Surya K.
APPLICANT: Hillman, Jennifer L.
TITLE OF INVENTION: A NOVEL GLUTATHIONE S-TRANSFERASE
CURRENT APPLICATION NUMBER: US/09/784,739
CURRENT FILING DATE: 14-Feb-2001
PRIOR APPLICATION NUMBER: 09/309,320
PRIOR FILING DATE: <Unknown>
NUMBER OF SEQ ID NOS: 5
SEQ ID NO 1
LENGTH: 222
TYPE: PRT
Query Match 100.0%; Score 1141; Length 222;
Best Local Similarity 100.0%;
Matches 222; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MAARPKLHYPNGRGRMESVRWVLAAAGVEFDEEFLETKEQLYKLQDGNHLLFQQVPMVEI 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MAARPKLHYPNGRGRMESVRWVLAAAGVEFDEEFLETKEQLYKLQDGNHLLFQQVPMVEI 60
Qy 61 DGMKLVQTRSILHYIADKHNLFGKNLKERTLIDMYVEGTLDLLELLIMHPFLKPDDQQKE 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 DGMKLVQTRSILHYIADKHNLFGKNLKERTLIDMYVEGTLDLLELLIMHPFLKPDDQQKE 120
Qy 121 VVNMAQKAIIRYFPVFEKILRGHGQSFLVGNQLSLADVILLQTILALEEKIPNILSAFPF 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 VVNMAQKAIIRYFPVFEKILRGHGQSFLVGNQLSLADVILLQTILALEEKIPNILSAFPF 180
Qy 181 LQEYTVKLSNIPTIKRFLEPGSKKKPPPDEIYVRTVYNIFRP 222
||||||||||||||||||||||||||||||||||||||||||
Db 181 LQEYTVKLSNIPTIKRFLEPGSKKKPPPDEIYVRTVYNIFRP 222
Sequence alignment between SEQ ID NO: 2 of Goli et al. and instant SEQ ID NO: 12
US-09-784-739-2
Sequence 2, US/09784739
Publication No. US20030044401A1
GENERAL INFORMATION
APPLICANT: Goli, Surya K.
APPLICANT: Hillman, Jennifer L.
TITLE OF INVENTION: A NOVEL GLUTATHIONE S-TRANSFERASE
CURRENT APPLICATION NUMBER: US/09/784,739
CURRENT FILING DATE: 14-Feb-2001
PRIOR APPLICATION NUMBER: 09/309,320
PRIOR FILING DATE: <Unknown>
NUMBER OF SEQ ID NOS: 5
SEQ ID NO 2
LENGTH: 800
TYPE: DNA
Query Match 100.0%; Score 669; Length 800;
Best Local Similarity 100.0%;
Matches 669; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 ATGGCAGCAAGGCCCAAGCTCCACTATCCCAACGGAAGAGGCCGGATGGAGTCCGTGAGA 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 ATGGCAGCAAGGCCCAAGCTCCACTATCCCAACGGAAGAGGCCGGATGGAGTCCGTGAGA 60
Qy 61 TGGGTTTTAGCTGCCGCCGGAGTCGAGTTTGATGAAGAATTTCTGGAAACAAAAGAACAG 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 TGGGTTTTAGCTGCCGCCGGAGTCGAGTTTGATGAAGAATTTCTGGAAACAAAAGAACAG 120
Qy 121 TTGTACAAGTTGCAGGATGGTAACCACCTGCTGTTCCAACAAGTGCCCATGGTTGAAATT 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 TTGTACAAGTTGCAGGATGGTAACCACCTGCTGTTCCAACAAGTGCCCATGGTTGAAATT 180
Qy 181 GACGGGATGAAGTTGGTACAGACCCGAAGCATTCTCCACTACATAGCAGACAAGCACAAT 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 GACGGGATGAAGTTGGTACAGACCCGAAGCATTCTCCACTACATAGCAGACAAGCACAAT 240
Qy 241 CTCTTTGGCAAGAACCTCAAGGAGAGAACCCTGATTGACATGTACGTGGAGGGGACACTG 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 CTCTTTGGCAAGAACCTCAAGGAGAGAACCCTGATTGACATGTACGTGGAGGGGACACTG 300
Qy 301 GATCTGCTGGAACTGCTTATCATGCATCCTTTCTTAAAACCAGATGATCAGCAAAAGGAA 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 GATCTGCTGGAACTGCTTATCATGCATCCTTTCTTAAAACCAGATGATCAGCAAAAGGAA 360
Qy 361 GTGGTTAACATGGCCCAGAAGGCTATAATTAGATACTTTCCTGTGTTTGAAAAGATTTTA 420
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 361 GTGGTTAACATGGCCCAGAAGGCTATAATTAGATACTTTCCTGTGTTTGAAAAGATTTTA 420
Qy 421 AGGGGTCACGGACAAAGCTTTCTTGTTGGTAATCAGCTGAGCCTTGCAGATGTGATTTTA 480
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 421 AGGGGTCACGGACAAAGCTTTCTTGTTGGTAATCAGCTGAGCCTTGCAGATGTGATTTTA 480
Qy 481 CTCCAAACCATTTTAGCTCTAGAAGAGAAAATTCCTAATATCCTGTCTGCATTTCCTTTC 540
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 481 CTCCAAACCATTTTAGCTCTAGAAGAGAAAATTCCTAATATCCTGTCTGCATTTCCTTTC 540
Qy 541 CTCCAGGAATACACAGTGAAACTAAGTAATATCCCTACAATTAAGAGATTCCTTGAACCT 600
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 541 CTCCAGGAATACACAGTGAAACTAAGTAATATCCCTACAATTAAGAGATTCCTTGAACCT 600
Qy 601 GGCAGCAAGAAGAAGCCTCCCCCTGATGAAATTTATGTGAGAACCGTCTACAACATCTTT 660
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 601 GGCAGCAAGAAGAAGCCTCCCCCTGATGAAATTTATGTGAGAACCGTCTACAACATCTTT 660
Qy 661 AGGCCATAA 669
|||||||||
Db 661 AGGCCATAA 669
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 1, 4-11 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Son et al. (WO 2013/025963 A2, cited in PTO-892) in view of Ström et al. (“Naturally Occurring Genetic Variability in Expression of Gsta4 Is Associated with Differential Survival of Axotomized Rat Motoneurons,” NeuroMolecular Medicine 14:15–29, 2012, cited in PTO-892) and Goli et al. (US 2003/0044401 A1, cited in PTO-892).
Regarding claims 1 and 4-5, Son et al. teaches compositions and methods for directly converting somatic cells, including fibroblasts, into functional induced motor neurons (iMNs) through expression of motor-neuron-inducing transcription factors, including Ascl1, Brn2, Myt1l, Hb9, Isl1, Lhx3, Ngn2, and NeuroD1 (paragraphs [0010]–[0012] and [00183]–[00189]). Son et al. further teaches that direct conversion of somatic cells into motor neurons provides a means of generating functional motor neurons without first producing pluripotent stem cells or passing through a proliferative neural progenitor state, and demonstrates that the resulting iMNs exhibit characteristic motor-neuron morphology, expression of neuronal and motor-neuron-specific proteins, electrophysiological activity, and the ability to form functional connections with muscle cells (Figures 1–4 and 6). Son et al. teaches that motor-neuron-inducing transcription factors may be introduced into somatic cells using nucleic acids encoding the factors and that combinations of transcription factors may be employed to achieve direct conversion. Son et al. specifically discloses the use of Ascl1, Brn2, Myt1l, Hb9, Isl1, Lhx3, Ngn2, and NeuroD1, including their combined use to induce motor-neuron characteristics in somatic cells, thereby teaching the additional conversion factors recited in claims 4 and 5 (paragraphs [00183]–[00189]; Figures 1 and 7). Moreover, Son et al. further recognizes that induced motor neurons retain susceptibility to degenerative stimuli. In particular, Son et al. demonstrates reduced survival of iMNs under conditions involving mutant SOD1-associated toxicity and withdrawal of neurotrophic factors (Figures 5C–5F). These findings establish that, although the disclosed transcription factors are capable of generating functional motor neurons, the resulting cells remain susceptible to conditions that impair motor-neuron survival. Furthermore, Son et al. additionally contemplates modifying populations of iMNs by introducing genes that enhance or supplement cellular function and expressly identifies genes encoding anti-apoptotic factors as suitable additions. Son et al. teaches that such genes may be introduced using known gene-delivery techniques, including adenoviral, retroviral, lentiviral, plasmid, and adeno-associated viral systems (paragraphs [00296]–[00297]). However, Son et al. does not expressly teach a composition comprising GSTA4 protein or a nucleic acid encoding GSTA4 in combination with its motor-neuron-inducing system.
Ström et al. teaches molecular mechanisms associated with differences in motor-neuron survival following nerve injury. Ström et al. reports substantial differences in survival of axotomized motor neurons among rat strains and identifies Gsta4, encoding glutathione S-transferase alpha-4, as a candidate gene associated with these differences (pages 19–21; Figure 1). Ström et al. further teaches that Gsta4 expression is higher in the rat strain exhibiting increased motor-neuron survival, both under normal conditions and following nerve injury (pages 23–24; Figures 2–3). Immunolabeling confirms the presence of Gsta4 protein within motor neurons, predominantly localized to the neuronal cytoplasm (page 25; Figure 4). Ström et al. further teaches that glutathione S-transferases participate in cellular detoxification by catalyzing conjugation of glutathione to reactive compounds, including products generated during lipid peroxidation. In particular, Ström et al. identifies GSTA4 as having high enzymatic activity toward 4-hydroxynonenal (4-HNE), a reactive aldehyde associated with oxidative cellular damage (pages 25–26, Discussion). Ström et al. further explains that oxidative stress and lipid peroxidation are implicated in neurodegenerative diseases, including amyotrophic lateral sclerosis, and that 4-HNE can induce neuronal apoptosis (page 26, Discussion). Additionally, Ström et al. discloses experimental evidence that overexpression of Gsta4 in cell lines confers resistance to 4-HNE-induced apoptosis, supporting a protective role for GSTA4 against oxidative injury (page 26, right column). Ström et al. additionally notes that injured motor neurons are particularly vulnerable to oxidative damage and apoptosis during the early period following nerve injury and proposes that differences in Gsta4 expression during this period may contribute to differences in motor-neuron survival (pages 26–27, Discussion). Ström et al. concludes that naturally occurring differences in Gsta4 expression are associated with differences in motor-neuron survival under conditions of distress and identifies oxidative stress responses and lipid peroxidation as important mechanisms in motor-neuron degeneration (page 27, Discussion).
Goli et al. teaches substantially purified human glutathione S-transferase protein comprising the amino acid sequence of SEQ ID NO: 1 and polynucleotides encoding the same, including SEQ ID NO: 2 (paragraphs [0008]–[0009]). It is noted that SEQ ID NO: 1 of Goli et al. is 100% identical to instant SEQ ID NO: 1 (see sequence alignment above). Goli et al. further teaches expression vectors comprising nucleic acids encoding the disclosed glutathione S-transferase protein, together with regulatory elements suitable for expression in mammalian host cells (paragraphs [0063]–[0066] and [0071]).
An invention would have been obvious to a person of ordinary skill in the art if some teaching in the prior art would have led that person to combine prior art reference teachings to arrive at the claimed invention. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the motor-neuron-inducing compositions of Son et al. to further comprise GSTA4 protein or a nucleic acid encoding GSTA4, as taught by Goli et al., in view of the teachings of Ström et al. Son et al. establishes a system for directly converting somatic cells into functional motor neurons, recognizes the susceptibility of the resulting iMNs to degenerative stimuli, and expressly contemplates introduction of anti-apoptotic factors to support the resulting cells. Ström et al. provides a biological reason for selecting GSTA4 for this purpose by identifying its association with increased motor-neuron survival, its role in detoxifying reactive lipid-peroxidation products such as 4-HNE, and evidence that GSTA4 overexpression can confer resistance to oxidative-stress-associated apoptosis. Goli et al. provides the known GSTA4 protein, encoding nucleic acids, and expression-vector technology suitable for introducing and expressing GSTA4 in mammalian cells. Accordingly, a skilled artisan seeking to support the survival of the iMNs generated by Son et al. would have been motivated to incorporate GSTA4 into Son et al.’s motor-neuron-inducing compositions to provide additional protection against oxidative injury and apoptosis. There is a reasonable expectation of success that the known GSTA4 protein or encoding nucleic acid could be incorporated into Son et al.’s established motor-neuron conversion system using conventional recombinant expression techniques, thereby providing the resulting cells with the anticipated protective activity of GSTA4 against oxidative injury without requiring GSTA4 itself to function as a motor-neuron-inducing transcription factor. The resulting composition would have predictably combined the established motor-neuron-inducing activities of Son et al.’s transcription factors with the anticipated cytoprotective activity associated with GSTA4. Thus, the claimed invention as a whole would have been prima facie obvious, before the effective filing date of the claimed invention.
Regarding claim 6, Son et al. further teaches Lhx3 polypeptides set forth in SEQ ID NOs: 1–2 and nucleic acids encoding motor-neuron-inducing transcription factors, including Lhx3 (paragraphs [00183] and [00186]). It is noted that SEQ ID NO: 1 of Son et al. is 100% identical to instant SEQ ID NO: 15 (see sequence alignment below; WO2013025963 listed as a duplicate – see application file).
Regarding claims 7–8, Son et al. further teaches introducing nucleic acids encoding motor-neuron-inducing transcription factors into somatic cells using viral and nonviral expression vectors (paragraphs [00176]–[00185]). Son et al. expressly contemplates nonviral polycistronic vectors, thereby establishing that multiple coding sequences may be incorporated into a common vector for expression of introduced factors (paragraph [00181]). Son et al. further teaches nucleic acids encoding Lhx3, Ascl1, Brn2, Myt1l, Isl1, Hb9, Ngn2, and NeuroD1 for direct conversion of somatic cells into induced motor neurons (paragraphs [00183]–[00186]). However, Son et al. does not expressly teach an expression vector comprising a nucleic acid encoding GSTA4 operably linked to a promoter, or a vector further comprising both a GSTA4-encoding nucleic acid and a nucleic acid encoding one of the recited motor-neuron-inducing transcription factors.
Goli et al. teaches expression vectors comprising a nucleic acid encoding human GSTA4, including vectors containing transcriptional regulatory elements suitable for directing expression of the encoded protein in a host cell (paragraphs [0063]–[0066]). Goli et al. further teaches mammalian expression systems employing viral vectors containing promoters and associated transcriptional regulatory sequences (paragraph [0071]).
An invention would have been obvious to a person of ordinary skill in the art if some teaching in the prior art would have led that person to combine prior art reference teachings to arrive at the claimed invention. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to incorporate a nucleic acid encoding GSTA4, as taught by Goli et al., into the expression-vector system of Son et al. in view of Ström et al.’s teachings concerning the role of GSTA4 in motor-neuron survival and resistance to oxidative injury. Son et al. establishes the use of expression vectors for introducing motor-neuron-inducing transcription factors into somatic cells, while Ström et al. provides a reason to supplement the resulting motor neurons with GSTA4 to protect against oxidative-stress-associated apoptosis. Goli et al. supplies the known GSTA4-encoding nucleic acid and teaches its expression using recombinant vectors. Furthermore, incorporating the GSTA4-encoding nucleic acid and at least one motor-neuron-inducing transcription-factor-encoding nucleic acid into a common vector would have provided a means for delivering both coding sequences to the same target cell, and Son et al.’s express disclosure of polycistronic vectors establishes that multigene expression vectors were known for introducing reprogramming factors. A skilled artisan would therefore have had reason to construct a vector comprising both the GSTA4-encoding nucleic acid and a motor-neuron-inducing factor-encoding nucleic acid to facilitate their coordinated delivery and expression in the same somatic cell, with a reasonable expectation of successfully producing the recombinant vector using known expression-vector technology. Thus, the claimed invention as a whole would have been prima facie obvious.
Regarding claim 9, Son et al. teaches expression vectors comprising nucleic acids encoding motor-neuron-inducing transcription factors, including Ascl1, Brn2, Myt1l, Hb9, Isl1, Lhx3, Ngn2, and NeuroD1, for directly converting somatic cells into induced motor neurons (paragraphs [00173]–[00176] and [00183]–[00186]). Son et al. further expressly teaches co-infection with multiple viral vectors and the use of a cocktail of viruses to induce reprogramming of somatic cells, including optimization of the viral titers to achieve desired levels of gene expression (paragraph [00179]).
Goli et al. teaches expression vectors comprising nucleic acids encoding GSTA4 operably linked to transcriptional regulatory sequences, including promoters, for expression in host cells (paragraphs [0063]–[0066] and [0071]). Goli et al. further teaches that expression vectors may be introduced into cells together with a selectable marker gene carried on the same vector or on a separate vector (paragraph [0074]), thereby demonstrating the use of separate vectors to introduce distinct genetic components into host cells.
Ström et al. teaches that GSTA4 expression is associated with increased motor-neuron survival and that GSTA4 participates in detoxification of reactive lipid-peroxidation products associated with oxidative injury and apoptosis, as discussed above.
An invention would have been obvious to a person of ordinary skill in the art if some teaching in the prior art would have led that person to combine prior art reference teachings to arrive at the claimed invention. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to employ a first expression vector comprising a nucleic acid encoding GSTA4 operably linked to a promoter, as taught by Goli et al., together with a second expression vector comprising a nucleic acid encoding at least one motor-neuron-inducing transcription factor operably linked to a promoter, as taught by Son et al., in view of Ström et al.’s teachings concerning the protective role of GSTA4. Son et al. expressly teaches using multiple viral vectors to introduce reprogramming factors into somatic cells, while Goli et al. independently establishes that different genetic components may be introduced using separate vectors. Accordingly, a skilled artisan would have been motivated to introduce the GSTA4-encoding nucleic acid and the motor-neuron-inducing factor-encoding nucleic acid on separate expression vectors to permit their independent delivery and expression in the same target cells, thereby supplementing Son et al.’s established motor-neuron conversion system with the anticipated cytoprotective activity of GSTA4. The skilled artisan would have had a reasonable expectation of successfully expressing both components using known expression-vector technology, with predictable results. Thus, the claimed invention as a whole would have been prima facie obvious.
Regarding claim 10, Goli et al. further teaches the incorporation of transcriptional enhancers into expression vectors for increasing expression of an introduced nucleic acid in mammalian host cells, including the Rous sarcoma virus (RSV) enhancer (paragraph [0071]). Goli et al. additionally teaches expression vectors comprising selectable marker genes, including antibiotic resistance genes such as the neomycin/G-418 resistance gene, for identifying and recovering successfully transformed cells (paragraphs [0074]–[0075]). Son et al. likewise teaches selectable marker genes, including neomycin, puromycin, and hygromycin resistance genes, and detectable markers such as green fluorescent protein (GFP) (paragraph [00126]). It would have been obvious to one of ordinary skill in the art to include an antibiotic resistance gene in the modified expression vector to facilitate selection and recovery of cells containing the introduced nucleic acids, as expressly taught by Goli et al. and Son et al., with predictable results. Thus, the claimed invention as a whole would have been prima facie obvious for the reasons discussed regarding claims 7–8 above.
Regarding claim 11, Son et al. expressly teaches viral and nonviral expression vectors for introducing motor-neuron-inducing transcription factors into somatic cells (paragraphs [00176]–[00185]). Son et al. further identifies adenoviral, retroviral, lentiviral, plasmid, and adeno-associated viral gene-delivery techniques as suitable approaches for introducing additional genes into iMNs (paragraph [00297]). Goli et al. likewise teaches adenoviral expression vectors for expressing GSTA4 in mammalian host cells (paragraph [0071]). Accordingly, the viral-vector alternative recited in claim 11 is expressly taught by the cited references, and the claimed invention as a whole would have been prima facie obvious for the reasons discussed regarding claims 7–8.
Regarding claim 24, Goli et al. further teaches expression vectors comprising transcriptional regulatory elements, including enhancers, for promoting expression of introduced nucleic acids in mammalian host cells (paragraph [0071]). Goli et al. additionally teaches selectable marker genes, including antibiotic resistance genes, for identifying and selecting successfully transformed cells (paragraphs [0074]–[0075]). It would have been obvious to one of ordinary skill in the art to include an antibiotic resistance gene in at least one of the expression vectors of the modified system to facilitate selection of cells containing the introduced nucleic acids, with predictable results. Thus, the claimed invention as a whole would have been prima facie obvious for the reasons discussed regarding claim 9 above.
Regarding claim 25, Son et al. further teaches that nucleic acids encoding motor-neuron-inducing transcription factors may be introduced into somatic cells using viral or nonviral expression vectors (paragraphs [00176]–[00185]). Goli et al. likewise teaches viral expression vectors, including adenoviral vectors, for expressing the disclosed glutathione S-transferase protein in mammalian host cells (paragraph [0071]). Accordingly, the viral-vector alternative recited in claim 25 is taught by Son et al. and Goli et al., and the claimed invention as a whole would have been prima facie obvious for the reasons discussed regarding claim 9 above.
Sequence alignment between SEQ ID NO: 1 of Son et al. and instant SEQ ID NO: 15
AAB20884
(NOTE: this sequence has 10 duplicates in the database searched.
See complete list at the end of this report)
ID AAB20884 standard; protein; 402 AA.
XX
AC AAB20884;
XX
DT 15-JUN-2007 (revised)
DT 04-JAN-2001 (first entry)
XX
DE Human Lhx3b protein sequence SEQ ID NO:12.
XX
KW Lhx3; LIM-3; P-LIM; identification; characterisation; diagnosis;
KW chromosome 9; pituitary disease; subtelomeric region; mutation;
KW pituitary trophic hormone gene promoter; BOND_PC;
KW LIM homeobox protein 3 isoform b; LIM/homeodomain protein LHX3;
KW LIM homeobox protein 3; LIM homeobox protein 3 isoform b [Homo sapiens];
KW LHX3; M2-LHX3; DKFZp762A2013; LIM homeobox 3, isoform CRA_a;
KW LIM homeobox 3, isoform CRA_a [Homo sapiens]; LIM homeobox 3;
KW LIM homeobox 3 [Homo sapiens]; GO3700; GO3702; GO5634; GO6355; GO8270;
KW GO9887; GO43565; GO46872; GO5489; GO6118; GO7397; GO16563.
XX
OS Homo sapiens.
XX
CC PN WO200050868-A2.
XX
CC PD 31-AUG-2000.
XX
CC PF 22-FEB-2000; 2000WO-US004424.
XX
PR 22-FEB-1999; 99US-0121110P.
XX
CC PA (ADRE-) ADVANCED RES & TECHNOLOGY INST.
XX
CC PI Rhodes SJ, Bridwell JL, Meier BC, Parker GE, Price JR;
CC PI Showalter AD, Sloop KW;
XX
DR WPI; 2000-594085/56.
DR N-PSDB; AAA92050.
DR PC:NCBI; gi7657303.
DR PC:SWISSPROT; Q9UBR4.
XX
CC PT New isolated nucleic acid encoding mammalian Lhx3 for identifying a human
CC PT with a disease, disorder, or condition caused by an altered level of
CC PT expression or binding of Lhx3.
XX
CC PS Claim 12; Fig 25; 239pp; English.
XX
CC The present invention describes an isolated nucleic acid (I) encoding a
CC mammalian Lhx3. (I) is used in assays to: (1) detect and quantify the
CC presence and level of expression of Lhx3, Lhx3a or Lhx3b, in a sample;
CC (2) identify a compound that affects expression, the level of expression,
CC or the activity of Lhx3, Lhx3a, or Lhx3b in a cell; (3) identify a
CC compound that affects binding or Lhx3 to nucleic acid or Lhx3 induction
CC of a pituitary trophic hormone gene promoter; (4) identify a human
CC afflicted with a disease, disorder, or condition caused by altered
CC expression of Lhx3 or altered level of binding of Lhx3 to a nucleic acid;
CC and (5) detect a mutation in a Lhx3 allele in a human. The coding region
CC of human Lhx3 has been genomically mapped to the subtelomeric region of
CC chromosome 9. Lhx3 is also known as P-LIM or LIM-3. The present sequence
CC represents the specifically claimed human Lhx3b protein sequence given in
CC the present invention
CC
CC Revised record issued on 15-JUN-2007 : Enhanced with precomputed
CC information from BOND.
XX
SQ Sequence 402 AA;
Query Match 100.0%; Score 2148; Length 402;
Best Local Similarity 100.0%;
Matches 402; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 MEARGELGPARESAGGDLLLALLARRADLRREIPLCAGCDQHILDRFILKALDRHWHSKC 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 MEARGELGPARESAGGDLLLALLARRADLRREIPLCAGCDQHILDRFILKALDRHWHSKC 60
Qy 61 LKCSDCHTPLAERCFSRGESVYCKDDFFKRFGTKCAACQLGIPPTQVVRRAQDFVYHLHC 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 LKCSDCHTPLAERCFSRGESVYCKDDFFKRFGTKCAACQLGIPPTQVVRRAQDFVYHLHC 120
Qy 121 FACVVCKRQLATGDEFYLMEDSRLVCKADYETAKQREAEATAKRPRTTITAKQLETLKSA 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 FACVVCKRQLATGDEFYLMEDSRLVCKADYETAKQREAEATAKRPRTTITAKQLETLKSA 180
Qy 181 YNTSPKPARHVREQLSSETGLDMRVVQVWFQNRRAKEKRLKKDAGRQRWGQYFRNMKRSR 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 YNTSPKPARHVREQLSSETGLDMRVVQVWFQNRRAKEKRLKKDAGRQRWGQYFRNMKRSR 240
Qy 241 GGSKSDKDSVQEGQDSDAEVSFPDEPSLAEMGPANGLYGSLGEPTQALGRPSGALGNFSL 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 GGSKSDKDSVQEGQDSDAEVSFPDEPSLAEMGPANGLYGSLGEPTQALGRPSGALGNFSL 300
Qy 301 EHGGLAGPEQYRELRPGSPYGVPPSPAAPQSLPGPQPLLSSLVYPDTSLGLVPSGAPGGP 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 EHGGLAGPEQYRELRPGSPYGVPPSPAAPQSLPGPQPLLSSLVYPDTSLGLVPSGAPGGP 360
Qy 361 PPMRVLAGNGPSSDLSTGSSGGYPDFPASPASWLDEVDHAQF 402
||||||||||||||||||||||||||||||||||||||||||
Db 361 PPMRVLAGNGPSSDLSTGSSGGYPDFPASPASWLDEVDHAQF 402
Conclusion
No claim is in condition for allowance.
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/NAGHMEH NINA MOAZZAMI/Examiner, Art Unit 1652
/ROBERT B MONDESI/Supervisory Patent Examiner, Art Unit 1652
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