Ex Parte Moreno-Lopez et al

Patent Trial and Appeal Board

Jun 17, 2013

10816465 (P.T.A.B. Jun. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SONIA MORENO-LOPEZ and MARCOS TIMON-JIMENEZ
__________

Appeal 2011-012384
Application 10/816,465
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, JOHN A. EVANS, and
ANNETTE R. REIMERS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of eliciting an immune response. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
The Specification teaches that
by attaching covalently a peptide comprising a protein
transduction domain or a nuclear localization domain, to the
hairpin loops of covalently closed DNA constructs
(MIDGE), which encode an antigen for vaccination, and
subsequent vaccination of the constructs into an animal, that
the quality and quantity of the resulting immune response is
significantly shifted towards a cellular immune response.

(Spec. 5.)
The Claims
Claims 42-44 are on appeal. Claim 42 is representative and
is reproduced below:
42. A method of eliciting an immune response in a living
being with a vaccine which induces protective immunity to
one or more infectious diseases when administered,
comprising:
a) providing a therapeutic amount of a product
comprising a type 1 cellular mediated immune response
eliciting vaccine for injection of the product into a living
being to protect against infectious diseases caused by
intracellular infection germs; wherein said vaccine
comprises:
a DNA expression construct configured to operate in
eukaryotic cells; said expression construct comprising a
covalently closed, linear, dumbbell-shaped deoxyribonucleic
acid molecule; said deoxyribonucleic acid molecule
comprising a linear double stranded region; said double
stranded region comprising single strands being linked by a
short, single- stranded loop consisting of deoxyribonucleic
acid nucleotides; said double-strand forming single strands
comprising a terminator sequence; and a coding sequence
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for one or more antigens under the control of a promoter that
is configured to be operable in the living being to be
vaccinated; and
at least one oligopeptide, and
said DNA expression construct being covalently
linked to said at least one oligopeptide to increase
transfection efficacy, and wherein said DNA construct
encodes a hepatitis antigen, wherein the oligopeptide is of a
length of five to 25 amino acids and at least half of the
amino acids are a member of the group consisting of lysine
and arginine, and
b) injecting the therapeutic amount of the product
intradermally into the living being.

The Issues

A. The Examiner rejected claims 42 and 44 under 35 U.S.C. § 103(a) as
obvious over McCluskie,1 Wittig,2 and Makkerh3 (Ans. 4-7).
B. The Examiner rejected claim 43 under 35 U.S.C. § 103(a) as obvious
over McCluskie, Wittig, and Liu4 (Ans. 7-9).
A. 35 U.S.C. § 103(a) over McCluskie, Wittig, and Makkerh
The Examiner finds that McCluskie teaches “a genetic vaccine for
eliciting Thl type cellular immune response against hepatitis comprising a
plasmid DNA vector encoding a hepatitis antigen and methods of

1 McCluskie et al., Route and Method of Delivery of DNA Vaccine
Influence Immune Responses in Mice and Non-Human Primates, 5
MOLECULAR MEDICINE 287-300 (1999).
2 Wittig et al., US 6,451,593 B1, issued Sep. 17, 2002.
3 Makkerh et al., Comparative mutagenesis of nuclear localization
signals reveals the importance of neutral and acidic amino acids, 6
CURRENT BIOLOGY 1025-1027 (1996).
4 Liu et al., Nanostructured Materials Designed for Cell Binding
and Transduction, 2 BIOMACROMOLECULES 362-368 (2001).
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administering the vaccine using intradermal injection to generate hepatitis
antigen specific CTL and antibodies” (Ans. 5). The Examiner finds that
Wittig teaches
dumbbell shaped DNA expression constructs comprising
covalently closed linear DNA that contains only a coding
sequence operably linked to a promoter and polyA
termination sequence where the linear ends are linked by
short single stranded loops of DNA, and wherein the
construct is further covalently linked to a peptide which
directs transport of the construct across a cell’s endosome or
into the nucleus

(id.). The Examiner finds that Wittig teaches “the use of the nuclear
localization sequence (NLS) from SV40, a sequence which inherently
comprises PKKKRKV” (id.). The Examiner finds that Makkerh teaches
“that the sequence consisting of PKKKRKV is the defined nuclear
localization sequence of SV40, which can be used to target heterologous
molecules to the nucleus” (id. at 6).
The Examiner finds it obvious
to use a dumbbell DNA construct encoding hepatitis antigen
linked to the defined NLS peptide PKKKRKV of Makkerh
et al. according to the teachings of Wittig . . . . Further,
based on the substantial guidance for making dumbbell
constructs provided by Wittig et al., and the teachings of
Wittig et al. that such constructs can be used as vaccines for
infectious diseases, the skilled artisan would have had a
reasonable expectation of success in making a dumbbell
DNA expression construct encoding a hepatitis antigen
covalently linked to a peptide such as the PKKKRKV
peptide from SV 40, and in administering the construct by
intradermal injection as taught by McCluskie et al. to elicit
immune responses in a living being.
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(Id. at 6-7.)
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the McCluskie, Wittig, and Makkerh
render claims 42 and 44 obvious?
Findings of Fact
1. McCluskie teaches “a model for DNA-based immunization
against the hepatitis B virus (HBV) whereby strong systemic immunity is
induced by IM or ID injection of DNA encoding HBV surface antigen
(HBsAg)” (McCluskie 289, col. 1).
2. McCluskie teaches that “[g]ene-transfer studies were carried
out with plasmid DNA encoding . . . surface proteins of the HBV envelope.
These plasmids . . . were each under the control of the cytomegalovirus
(CMV) immediate-early promoter” (McCluskie 289, col. 1).
3. Figure 2 of McCluskie is reproduced below:

Fig. 2. Results from immunization of BALB/c mice with 100 µg
pCMV(A)-S in saline by various routes. Each bar represents the group
geometric mean titer (GMT) determined by end-point dilution ELISA assay
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for HBsAg-specific antibodies (anti-HBs) of IgG1 (gray bars) or IgG2a
(black bars) isotypes in plasma taken 4 weeks (A) and 8 weeks (B) after
immunization. Titers were defined as the highest plasma dilution resulting in
an absorbance value two times that of nonimmune plasma, with a cut-off
value of 0.05. Numbers above each bar indicate the IgG2a-to-IgGl ratio,
with a value >1 indicating a more Th-1 like response.
4. McCluskie teaches, regarding cell-mediated responses, that
“HBsAg-specific CTL were detected following immunization by six injected
routes (IM, IV, SL, ID, IPER, and VW) as well as by one noninjected route”
(McCluskie 292, col. 1).
5. McCluskie teaches that:
DNA vaccines have been shown to induce strong humoral
and cellular immune responses against numerous bacterial,
viral, and parasite antigens in animal models. This,
combined with the many potential economical and practical
advantages that they offer, has led to intense interest in the
development of DNA vaccines for use in humans.

(McCluskie 295, col. 1.)
6. Wittig teaches that the “desoxyribonucleic acid construct
according to the invention is preferably employed as vaccine for the
treatment of infectious diseases in humans and animals” (Wittig, col. 8, ll.
24-26).
7. Wittig teaches
a circular strand of desoxyribonucleic acid comprising a
partly complementary, antiparallel base sequence, so that a
dumbbell-shaped construct is formed, in which the
complementary antiparallel base sequence essentially
comprises a promotor sequence, a coding sequence and a
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polyadenylation signal or another RNA-stabilizing signal.
The non-complementary sequence comprises two loops of
single-stranded deoxyribonucleic acid, which covalently join
the 5’- and 3’-ends of the complementary, antiparallel
strands.

(Wittig, col. 5, ll. 54-63.)
8. Wittig teaches that “[p]eptide-nucleic acid-linkages with
localization sequences are known for short DNA oligomers. Morris . . .
describe the coupling of oligomers 18-36 base pairs in length, with a 27
amino acid residues containing peptide, which contains the nuclear
localization sequence from SV40 as well as a signal peptide from HIV-
gp41” (Wittig, col. 5, ll. 4-10).
9. Wittig teaches that “a loop of single stranded
desoxyribonucleotides on either end of the molecules allows for the
introduction of chemical modifications in such a way that non-nucleic acid
ligands can be covalently linked to the nucleic acid expression construct”
(Wittig, col. 6, ll. 53-57).
10. Wittig teaches that “peptides needed for the nuclear localization
of the expression constructs can be linked to the construct in such a way, that
after entering the cytosol of a cell said construct is transported by the
translocation apparatus of the cell into nuclear compartments where it can be
transcribed” (Wittig, col. 6, ll. 58-62).
11. Wittig teaches “an expression construct that contains only the
information necessary to be expressed, and to provide means for the
transport into a cell, which is to be treated” (Wittig, col. 5, ll. 25-28).
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12. Makkerh teaches that the “NLS [nuclear localization signal] of
the simian virus 40 large T-antigen (SV40 T-ag) is a single cluster of basic
amino acids . . . PKKKRKV132” (Makkerh 1025, abstract).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
McCluskie teaches a method of eliciting an immune response in a
living being with “a model for DNA-based immunization against the
hepatitis B virus (HBV) whereby strong systemic immunity is induced by
IM or ID injection of DNA encoding HBV surface antigen (HBsAg)”
(McCluskie 289, col. 1; FF 1). McCluskie teaches that the DNA vaccine,
when administered intradermally, induces a Th1 response to hepatitis virus
antigens (FF 3-4).
Wittig teaches a DNA vaccine where the DNA expression construct is
composed of a dumbbell shaped DNA with coding sequences under the
control of a promoter (FF 6-9) where “peptides needed for the nuclear
localization of the expression constructs can be linked to the construct in
such a way, that after entering the cytosol of a cell said construct is
transported by the translocation apparatus of the cell into nuclear
compartments where it can be transcribed” (Wittig, col. 6, ll. 58-62; FF 10).
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Wittig teaches the use of the SV-40 nuclear localization signal (FF 8)
as the peptide and Makkerh teaches that the “NLS [nuclear localization
signal] of the simian virus 40 large T-antigen (SV40 T-ag) is a single cluster
of basic amino acids . . . PKKKRKV132” (Makkerh 1025, abstract; FF 12).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that the person of ordinary skill would have reasonably modified
the intradermally administered hepatitis virus DNA vaccine of McCluskie to
follow the DNA vaccine design of Wittig, including the localization peptide,
since Wittig’s “constructs have none of the disadvantages of plasmid
constructs, which include their size, which inhibits fast transport into the
cell's nucleus, and the presence of unwanted background sequences,
including bacterial sequences, which can lead to unintended immune
responses” (Ans. 6; FF 11). Such a combination is merely a “predictable use
of prior art elements according to their established functions.” KSR, 550 U.S.
at 417.
Appellants contend that a “person skilled in the art who sets out to
create an improved DNA vector based vaccine and relies both on McCluskie
and Wittig would certainly take the teaching of McCluskie into account.
Rather than creating a vector without any classical plasmid sequences at all,
a skilled artisan would be motivated to include additional
immunostimulatory CpG motifs” (App. Br. 6).
We are not persuaded. A teaching away requires a reference to
actually criticize, discredit, or otherwise discourage the claimed solution.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s
mere disclosure of more than one alternative does not constitute a teaching
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away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed”).
Appellants do not identify any specific teaching in McCluskie which teaches
away from the use of Wittig’s vector, or even teaches away from the use of
an expression vector that is reduced in size, such as Wittig’s vector (FF 11).
Further, McCluskie does not teach that CpG sequences are either
required or necessary (see McCluskie 288, col. 1-2), nor do Appellants
identify any teaching in Wittig that CpG sequences should be avoided.
Appellants’ claims do not exclude the inclusion of CpG sequences, nor
indeed do the claims exclude the use of any desired sequence whatsoever,
where the discussion of the expression construct in claim 42 solely uses the
open transitional phrase “comprising.” See Georgia-Pacific Corp. v. U.S.
Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999) (The transitional term
“comprising” is “inclusive or open-ended and does not exclude additional,
unrecited elements or method steps.”)
Appellants contend that the “peptide claimed in claim 44 of the instant
invention consists of the amino acid sequence PKKKRKV. Neither Wittig
nor Makkerh disclose this peptide. Wittig teaches a peptide consisting of 27
amino acid residues which contains the nuclear localization sequence from
SV40” (App. Br. 6). Appellants contend that “it cannot be concluded that
because the necessary SV40 core NLS was known, this sequence in isolation
must also be sufficient to provide nuclear localization in the instant
invention” (id. at 7).
We are not persuaded. Makkerh teaches that the “NLS [nuclear
localization signal] of the simian virus 40 large T-antigen (SV40 T-ag) is a
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single cluster of basic amino acids . . . PKKKRKV132” (Makkerh 1025,
abstract; FF 12). Appellants provide no evidence that the sequence would be
insufficient to direct a target to the nucleus of a cell, while Makkerh directly
teaches that this sequence is the element required for such nuclear
localization (FF 12). In O’Farrell, the court found that
The admonition that “obvious to try” is not the
standard under § 103 has been directed mainly at two kinds
of error. In some cases, what would have been “obvious to
try” would have been to vary all parameters or try each of
numerous possible choices until one possibly arrived at a
successful result, where the prior art gave either no
indication of which parameters were critical or no direction
as to which of many possible choices is likely to be
successful. ... In others, what was “obvious to try” was to
explore a new technology or general approach that seemed
to be a promising field of experimentation, where the prior
art gave only general guidance as to the particular form of
the claimed invention or how to achieve it.

In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). This is not a case
where the prior art gave no direction or indication of the critical parameters.
Indeed, Wittig provided the specific type of nuclear localization signal
required by claim 44 (FF 8) and Makkerh provides the function SV-40 large
T antigen NLS sequence necessary for nuclear localization (FF 12). This is
also not a situation where only general guidance was provided, since
McCluskie, Wittig, and Makkerh provide specific details and a detailed
enabling methodology for making DNA vaccines which result in Th1 cell
mediated immune responses (FF 4-5), dumbbell shaped DNA vaccine
expression vectors (FF 6-7) linked to NLS peptides (FF 8) and the SV-40
large T antigen nuclear localization signal (FF 8, 12).
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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
McCluskie, Wittig, and Makkerh render claims 42 and 44 obvious.
B. 35 U.S.C. § 103(a) over McCluskie, Wittig, and Liu
The Examiner finds that “Liu et al. supplements both Wittig et al. and
McCluskie et al. by teaching that the oligomeric peptide sequence
YGRKKRRQRRR from the protein transduction domain of HIV TAT
protein mediates the transduction of molecules covalently attached to the
peptide into cells (Liu et al., page 363, column 1)” (Ans. 8). The Examiner
finds it obvious to incorporate Liu’s peptide since “the YGRKKRRQRRR
sequence from HIV TAT effectively mediates transduction of molecules into
cells” (id. at 8-9), which is desired for both the DNA vaccines of McCluskie
and Wittig (FF 1-10).
Appellants contend that “[w]hile Liu showed that the coupled peptide
contained the necessary core sequence of the HIV TAT it did not
demonstrate that the pure PTD in isolation is also sufficient to confer nuclear
localization upon the coupled molecule” (App. Br. 8). Appellants contend
that “in analogy to the SV40 NLS discussed above, a person skilled in the art
would be discouraged to use the core PTD of HIV TAT in isolation and for
that reason there would have been no basis for a reasonable expectation of
success” (id.).
We are not persuaded. Liu teaches that the YGRKKRRQRRR
sequence, termed a PTD or protein transduction domain, when linked to a
nanoparticle was “found to interact with CHO cells and HeLa cells, whereas
the analogous structure lacking the PTD component did not” (Liu 362,
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abstract). Liu further teaches that “transduction of the nanoparticle into the
cells also occurred” (id.). Thus, the Examiner reasonably finds that if the
TAT transduction domain sequence suffices to transduce nanoparticles into
cells, the domain would have a reasonable expectation of success in
transducing DNA vaccines into cells (see Ans. 8-9). As stated by the
Federal Circuit, “[r]esponding to concerns about uncertainty in the prior art
influencing the purported success of the claimed combination, this court [in
O’Farrell] stated: ‘[o]bviousness does not require absolute predictability of
success ... all that is required is a reasonable expectation of success.”’ In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853
F.2d at 903-904).
SUMMARY
In summary, we affirm the rejection of claims 42 and 44 under 35
U.S.C. § 103(a) as obvious over McCluskie, Wittig, and Makkerh.
We affirm the rejection of claim 43 under 35 U.S.C. § 103(a) as
obvious over McCluskie, Wittig, and Liu.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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