NOAH HARRISONDownload PDFPatent Trials and Appeals BoardJun 30, 20212021003603 (P.T.A.B. Jun. 30, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/096,214 04/11/2016 NOAH JAMES HARRISON NJH-0001-P 1906 68368 7590 06/30/2021 Barcelo, Harrison & Walker, LLP 2901 W. Coast Hwy Suite 200 Newport Beach, CA 92663 EXAMINER MARVICH, MARIA ART UNIT PAPER NUMBER 1633 NOTIFICATION DATE DELIVERY MODE 06/30/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): dwalker@bhiplaw.com josh@bhiplaw.com rey@bhiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NOAH JAMES HARRISON1 Appeal 2021-003603 Application 15/096,214 Technology Center 1600 Before ERIC B. GRIMES, FRANCISCO C. PRATS, and RACHEL H. TOWNSEND, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a method of killing a pathogenic microbe in a patient, which have been rejected as obvious and nonenabled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies the real party in interest as the inventor, Noah James Harrison. Appeal Br. 2. We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2021-003603 Application 15/096,214 2 STATEMENT OF THE CASE The Specification states that “current treatment by many antimicrobial medications may results in adverse events, which are more commonly known as side effects. For example, administration of the antimicrobial blasticidin S may cause death in humans, and administration of the antibacterial agents ciprofloxacin and levofloxacin . . . increases the risk of tendon rupture in humans.” Spec. ¶ 1. The instant invention is directed toward “protecting eukaryotic ells while killing microbes in vivo.” Id. ¶ 31. In an exemplary embodiment, [a] patient is administered a recombinant viral vector, which contains in its genome one or more antimicrobial resistance genes. . . . [T]he viral vector preferably transfects only the patient’s eukaryotic cells, so that pathogenic microbes will not be transduced with the antimicrobial resistance gene. . . . [T]he patient is also administered an antimicrobial medication, which otherwise may be toxic to the patient or have undesirable side effects on the patient (if the viral vector had not been administered). Id. ¶¶ 32–35 (reference numerals omitted). Claims 1, 3–6, 9–11, 14, 21, 24, 26, and 31 are on appeal. Claim 1, reproduced below, is illustrative: 1. A method to kill a pathogenic microbe in a patient, comprising: transducing eukaryotic cells of the patient with a first viral vector that will not transfect the pathogenic microbe, the pathogenic microbe being an extracellular pathogenic microbe or a tissue- restricted pathogenic microbe, the first viral vector is replication defective and encodes in a recombinant genome of the first viral vector a first antimicrobial resistance gene and a first promoter Appeal 2021-003603 Application 15/096,214 3 operatively linked to the first antimicrobial resistance gene; and administering an antimicrobial medication to the patient. Appeal Br. 41 (Claims App.). In response to an election-of-species requirement, Appellant elected treatment of bacterial infection using blasticidin S, where the patient is administered an adenovirus-5 vector encoding the bsr resistance gene under the control of a cytomegalovirus (CMV) promoter. See Reply to Restriction Requirement filed Sept. 14, 2016.2 The claims stand rejected as follows: Claims 1, 3–6, 9–11, 14, 21, 24, and 26 under 35 U.S.C. § 103 as obvious based on Voigtlander3 and Federoff4 (Ans. 14) and Claims 1, 3–6, 9–11, 14, 21, 24, 26, and 31 under 35 U.S.C. § 112(a) on the basis that the Specification does not enable the full scope of the claims (Ans. 3). OPINION Obviousness Claims 1, 3–6, 9–11, 14, 21, 24, and 26 stand rejected as obvious based on Voigtlander and Federoff. The Examiner finds that Voigtlander 2 The Examiner states that the elected species is limited to treatment of methicillin-resistant Staphylococcus aureus (MRSA) (see, e.g., Ans. 4), but the election-of-species requirement mailed August 25, 2016 was not so limiting. 3 R. Voigtlander et al., A Novel Adenoviral Hybrid-vector System Carrying a Plasmid Replicon for Safe and Efficient Cell and Gene Therapeutic Application, Molecular Therapy–Nucleic Acids 2:e83 (2013). 4 Federoff et al., US 2008/0226601 A1; pub. Sept. 18, 2008. Appeal 2021-003603 Application 15/096,214 4 teaches “that a construct comprising bsr under control of CMV can be expressed from an adenovirus vector.” Ans. 14. The Examiner finds that Voigtlander also teaches that “[i]n vitro blasticidin is used in selection. The construct can be used in vivo in small animals” but “[w]hat is missing is using this construct with the medication in vivo.” Id. The Examiner finds that Federoff teaches “delivery of antibiotic resistance genes to target organisms by viral vectors followed by administration of antimicrobial medication”; specifically, “using herpes virus encoding antibiotic resistances genes followed by administration of antibiotic gel directly to the uterus of a mouse. Following antibiotic gel is applied.” Id. (citing Federoff ¶ 117). The Examiner concludes that it would have been obvious “to incorporate the construct of Voigtlander et al in the methods of therapy of Federoff et al.” because “the expanded method would have allowed variable gene and medication use.” Id. at 15. Appellant argues, among other things, that Federoff teaches intracranial administration of the viral vector in utero, and applies a topical antibiotic ointment to a surgical site on the mother. The topical antibiotic applied to the skin of the mother would not substantially reach the embryo, and is not intended to be absorbed systemically. Accordingly, in Federoff, the patient that is administered the viral vector and the patient that is administered the antimicrobial medication are functionally separate entities. Appeal Br. 39. We agree with Appellant that the Examiner has not persuasively shown that the cited references would have suggested the Appellant’s claimed method, which requires transducing a patient’s cells with a viral vector encoding an antimicrobial resistance gene and “administering an Appeal 2021-003603 Application 15/096,214 5 antimicrobial medication to the patient”; i.e., administering the medication to the same patient. The Examiner acknowledges that Voigtlander does not teach this limitation, and cites Federoff’s paragraph 117 to make up the difference. Ans. 14. That paragraph describes an “[i]n utero gene delivery” experiment in mice. Federoff ¶ 117. “The embryo was visualized” and “[i]njection of fetuses was performed. . . . Two microliters of HSVsb or the control amplicon HSVPrPuc was mixed . . . with HSVT-βgeo, and delivered intracranially to the mouse embryo.” Id. The HSVT-βgeo vector includes a β-galactosidase/neomycin resistance fusion transgene. Id. ¶ 97. Federoff states that after injection was performed, “[t]he uterus was returned to the abdominal cavity and the abdominal wall was closed” and a “layer of triple antibiotic gel . . . was applied over the incision site.” Id. ¶ 117. Thus, as Appellant has pointed out, Federoff describes injection of a viral vector encoding an antimicrobial resistance gene (HSVT-βgeo) to one subject (the mouse fetus/embryo) and administration of an antimicrobial medication (antibiotic gel) to a different subject (the pregnant mouse). Federoff does not describe transducing the cells of a patient with a viral vector encoding an antimicrobial resistance gene and administering an antimicrobial medication to the same patient, and therefore fails to make up for the acknowledged deficiency in Voigtlander. The Examiner interprets Federoff as disclosing that “vector was infused into the mother [mouse],” and cites its statement that “Herpes virus amplicon particles carrying other transgenes can be microinjected or otherwise application to other tissues, such as muscle.” Ans. 24. The quoted Appeal 2021-003603 Application 15/096,214 6 statement, however, immediately follows Federoff’s description of intracranial injection of embryos, and precedes the description of closing up the incision in the mother mouse’s abdomen. Federoff ¶ 117. In our view, this passage is most reasonably interpreted as suggesting that Federoff’s vectors can be microinjected into other tissues, such as muscle, of the embryo, not of the mother. In summary, the Examiner has not shown that Voigtlander and Federoff would have made obvious a method meeting all of the limitations of Appellant’s claim 1. We therefore reverse the rejection of claim 1, and dependent claims 3–6, 9–11, 14, 21, 24, and 26, under 35 U.S.C. § 103. Enablement Claims 1, 3–6, 9–11, 14, 21, 24, 26, and 31 stand rejected on the basis that the specification, while being enabling for killing of MRSA Staphylococcus Aureus in a small animal patient comprising the MRSA wherein the method comprises administering Ad5 to the small animal wherein the Ad5 vector is replication defective and encodes bsr under control of CMV [promoter] and thereafter blasticidin is administered wherein following the administration of the Ad5 and the blasticidin the MRSA Staphylococcus Aureus is killed, does not reasonably provide enablement for any other embodiment. Ans. 3.5 5 The Examiner notes the elected species in the § 112(a) rejection. See, e.g., Ans. 4. However, the Examiner’s enablement analysis appears to address the full scope of claim 1; i.e., the claimed genus rather than just the elected species. See, e.g., Ans. 11 (“one must practice undue experimentation to determine which patient, which microbe, which antimicrobial gene, which delivery vector and which antimicrobial medication can mediate the Appeal 2021-003603 Application 15/096,214 7 The Examiner finds that the scope of the claims is broad, because they encompass “a method of killing any pathogenic microbe in any patient using any replication defective viral vector not able to transfect the pathogenic microbe wherein the viral genome is engineered to comprise any microbial resistance gene and is treated with any microbial medication wherein the order of addition is any.” Id. at 4. The Examiner also finds that “[t]here is no connection between the microbe, the resistance gene and the antimicrobial medication. These 3 components must be related to one another to be of any relevance. The microbe must be able to be treated by the antimicrobial medication. However, as recited, there is no correlation.” Id. at 8. The Examiner finds that the Specification provides eight prophetic examples but “[n]one of the methods were performed in vitro or in vivo.” Id. (emphasis omitted). The Examiner also finds that “the art is clear that blasticidin is toxic” and is not used clinically for that reason. Id. at 6. The Examiner also cites Varnavski,6 Orkin,7 and Fumoto8 as evidence that using viral vectors to introduce genes into a subject is difficult. Id. at 7. The Examiner finds that “the order of administration is critical. One would kill the patient should the antimicrobial agent be administered prior to outcome of killing a microbe that is present in a patient.”). Our review of the rejection for nonenablement is, therefore, not limited to the elected species. 6 Varnavski et al., “Evaluation of toxicity from high-dose systemic administration of recombinant adenovirus vector in vector naïve and pre- immunized mice,” Gene Therapy 12:427–436 (2005). 7 Orkin et al., “Report and Recommendations of the Panel to Assess the NIH Investment in Research on Gene Therapy,” U.S. National Institutes of Health, pp. 1–50 (Dec. 7, 1995). 8 Fumoto et al., “Targeted Gene Delivery: Importance of Administration Routes,” InTech, Chap. 1, pp. 3–31 (2013). Appeal 2021-003603 Application 15/096,214 8 administration of the gene.” Id. at 10. “If the patient is dead, one cannot complete the method as the method requires that the patient’s eukaryotic cells be transduced.” Id. The Examiner concludes that “one must practice undue experimentation to determine which patient, which microbe, which antimicrobial gene, which delivery vector and which antimicrobial medication can mediate the outcome of killing a microbe that is present in a patient.” Id. at 11. “Combining the large breadth of claimed subject matter with the lack of working examples and high unpredictability of the art of gene delivery, undue experimentation would have been necessary.” Id. at 13. Appellant argues that “claim 1 does not require that a specific quantity of pathogenic microbes be killed; it does not require the method be commercially viable or successful in FDA clinical trials; and it does not require that the method be therapeutically safe; it requires only that some of the pathogenic microbes in the patient are killed.” Appeal Br. 9–10. Appellant also argues that the claim . . . focuses on the performance of a sequence of straightforward procedural steps that can be easily followed with existing and known drugs and genes, especially in this case where the applicable drugs and genes are expressly listed in the specification along with a disclosed selection rationale, and with the specification providing eight exemplary linked combinations that are described in detail. Id. at 14–15. Appellant argues that “the information disclosed in the patent specification (coupled with information known in the art) does provide sufficient connection between the microbe, microbial resistance gene, and microbial medication” and that “in view of the teachings of the specification Appeal 2021-003603 Application 15/096,214 9 and information already known in the art, those of ordinary skill would readily recognize which subset of alternative combinations would accord with the claimed method, and which would not.” Id. at 15. In support of this position, Appellant argues that, given “the current state of the art, it is common knowledge which antimicrobial resistance genes are active against which antimicrobial medications” and “the state of the art already includes many well-known and routine experiments to determine the efficacy of a particular antimicrobial agent against a particular pathogen.” Id. at 20. Appellant also argues that the Examiner’s analysis does not take into account the level of skill in the relevant art, which “is high in the biological arts and sciences.” Id. at 20–21. Appellant argues that “[a]ny experimentation required to perform the claimed method steps would be typical and routine for an ordinary molecular biologist, cellular biologist, . . . who has read the presently pending patent application.” Id. at 21. Appellant argues that the Orkin reference cited by the Examiner was published in 1995, and does not indicate the “state of the gene therapy art in . . . 2016, two decades later when the presently pending patent application was filed.” Id. Appellant cites a more recent reference disclosing that, “[b]y April 2013, there had been over 400 gene therapy trials conducted with human adenoviral vectors alone.” Id. We agree with Appellant that the Examiner has not provided sufficient evidence to support a prima facie case of nonenablement. See In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993) (“When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the Appeal 2021-003603 Application 15/096,214 10 scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application.”). The Examiner’s rejection focuses on two aspects of claim 1. First, the scope of the claim with regard to the pathogenic microbe, the antimicrobial resistance gene, and the antimicrobial medication; combined with the lack of any recited “connection between the microbe, the resistance gene and the antimicrobial medication.” See, e.g., Ans. 8. Second, the Examiner finds that the “order of administration is critical” because “[o]ne would kill the patient should the antimicrobial agent be administered prior to administration of the gene.” Id. at 10. We will start with the lack of a recited relationship between the microbe, resistance gene, and medication in claim 1. The Examiner is correct that the claim does not expressly state that the resistance gene provides resistance against the medication administered in claim 1’s second step, or that the medication administered is effective to kill the microbe recited in claim 1’s preamble. However, we agree with Appellant that those of skill in the art would be able to practice the claimed method without undue experimentation. Appellant asserts, and the Examiner does not dispute,9 that the level of skill in the medical and biological arts is quite high. Cf. Monsanto Co. v. Scruggs, 459 F.3d 1328, 1338 (Fed. Cir. 2006) (“[B]ecause of the level of skill in the 9 Neither the Examiner’s explanation of the rejection nor the response to Appellant’s arguments appears to address the level of skill in the art, which is one of the factors set out in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Appeal 2021-003603 Application 15/096,214 11 art and the publicly available information about CaMV [cauliflower mosaic virus], no specific gene sequence needed to be claimed for someone of ordinary skill in the art to understand how to make and use the invention.”). In addition, “a claim must be read in view of the specification of which it is a part.” Renishaw plc v. Marposs Societa per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). Here, the Specification states that an objective of the claimed method is to “protect[] eukaryotic cells while killing microbes in vivo.” Spec. ¶ 31. The Specification provides extensive lists of antibiotic agents, antifungal agents, and antiparasitic agents that are suitable for use in the disclosed method. Spec. ¶¶ 9–12. The Specification also provides guidance regarding suitable antimicrobial resistance genes. Id. ¶¶ 15–19. In addition, the Specification describes exemplary combinations of vectors, promoters, resistance genes, and antimicrobial agents for targeting different pathogens. Id. ¶¶ 39–88. While the examples are prophetic, they nonetheless provide guidance to the skilled artisan regarding suitable combinations of the elements required by the claimed method. The Specification describes the treatment method defined by claim 1: A patient is administered a recombinant viral vector, which contains in its genome one or more antimicrobial resistance genes. . . . [T]he viral vector preferably transfects only the patient’s eukaryotic cells, so that pathogenic microbes will not be transduced with the antimicrobial resistance gene. . . . In this way, some eukaryotic cells within all tissues and cell types may be transduced with the antimicrobial resistance gene. . . . [T]he patient is also administered an antimicrobial medication, which otherwise may be toxic to the patient or have undesirable side Appeal 2021-003603 Application 15/096,214 12 effects on the patient (if the viral vector had not been administered). Id. ¶¶ 32–35 (reference numerals omitted); see also Fig. 1. Reading claim 1 in light of the Specification’s description of the claimed method, a person of ordinary skill in the art would understand that achieving the goal of the claimed method—“protecting eukaryotic cells while killing microbes in vivo,” Spec. ¶ 31—would require administering a viral vector that encodes an antimicrobial resistance gene that is effective against the antimicrobial agent being used, and would also require administering an antimicrobial agent that is effective to kill the target pathogen. Given the extensive guidance in the Specification and the level of skill in the art, the Examiner has not carried the burden of showing that choosing an appropriate combination of antimicrobial agent and resistance gene for a given pathogen would have required undue experimentation. We do not agree with the Examiner’s position (Ans. 9) that taking into account the Specification’s description of the reason for the claimed method—to kill pathogens while reducing unintended effects on the host’s cells—amounts to reading limitations from the Specification into the claims. Rather, it requires reading the claim language from the viewpoint of a skilled artisan familiar with the Specification’s description of the invention. It is proper to construe claims in light of the description of the invention in the applicant’s specification: Ultimately, the interpretation to be given a [claim] term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction. Appeal 2021-003603 Application 15/096,214 13 Renishaw plc v. Marposs Societa per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). The Examiner also finds that the “order of administration is critical” because “[o]ne would kill the patient should the antimicrobial agent be administered prior to administration of the gene.” Id. at 10. “If the patient is dead, one cannot complete the method as the method requires that the patient’s eukaryotic cells be transduced.” Id. More specifically, “[i]f blasticidin is administered prior to the resistance gene then the cells are killed and the cells cannot be transduced.” Id. at 17. We do not agree with the Examiner’s position that the lack of a specified order for the steps of the claimed method merits a rejection for lack of enablement. The Examiner cites Davison10 and Misato11 as evidence that blasticidin is toxic. Ans. 6. Davison indeed states that “blasticidin S, due to its eukaryotic toxicity, is not a clinically used antibiotic.” Davison 2. And Misato states that “[t]he toxicity of blasticidin S is rather high with a peroral LD50 in rats of 39.5 mg per kg body weight.” Misato 1. However, we do not agree with the Examiner’s conclusion that the evidence shows that “[o]ne would kill the patient should the antimicrobial agent be administered prior to administration of the gene.” Ans. 10. First, even though the prior art characterizes blasticidin S as “toxic,” a compound does not have to be lethal in order to be considered toxic, and the 10 Davison et al., “A New Natural Product Analog of Blasticidin S Reveals Cellular Uptake Facilitated by the NorA Multidrug Transporter,” Antimicrobial Agents and Chemotherapy 61:e02635-16, pp. 1–17. 11 Misato, “Blasticidin S,” in Antibiotics, D. Gottlieb et al. (eds.), Springer- Verlag, pp. 434–435 (1967). Appeal 2021-003603 Application 15/096,214 14 Examiner’s own evidence demonstrates that not every dose of a compound of blasticidin S is toxic. As noted above, Misato states that the LD50 for blasticidin S in rats is 39.5 mg/kg body weight. This means that that dose was lethal in half the rats to which it was administered, and lower doses would be expected to be correspondingly less lethal. The figure reproduced on page 17 of the Examiner’s Answer likewise shows that concentrations of blasticidin S below 1 μg/ml allowed some colony formation by HeLa cells in vitro, and a concentration of 0.1 μg/ml had no effect on colony formation. In addition, even though blasticidin S is part of the species elected for initial search and examination purposes, claim 1 is not limited to blasticidin S as the antimicrobial agent. The Specification states that, depending on the antimicrobial agent used, the viral vector encoding a resistance gene can be administered before, at the same time as, or even after administration of the antimicrobial agent. See Spec. pars 42, 46, 61, 69, 76, 81, 86. We conclude that the Examiner’s finding that administering an antimicrobial agent before administering a viral vector encoding a resistance gene “would kill the patient” (Ans. 10) is not supported by the evidence of record. Finally, the Examiner also finds that “[t]he art has established the lack of predictability of any viral vector to deliver genes by any method in humans,” weighing against enablement. Ans. 19. The Examiner cites Orkin as supporting evidence. Id. at 12, 20. However, as Appellant has pointed out (Appeal Br. 21), Orkin was published in 1995, while the effective filing date of the instant invention is 2016. Thus, Orkin does not provide evidence of the state of the art as of the instant invention. The Examiner also cites Appeal 2021-003603 Application 15/096,214 15 Fumoto: “As set forth by Fumoto et al, virus and targets are highly limited in efficacy of the mode of administration.” Ans. 12 (citing Fumoto at 7). We have reviewed the cited passage but do not agree with the Examiner’s conclusion that it supports nonenablement. Fumoto discusses “interaction[s] with blood components that can affect transfection using viral and non-viral vectors.” Fumoto 7. Fumoto suggests several helpful approaches: “increasing the lipoplex particle size,” “coating of cationic carriers with anionic polymers,” and including “neutral lipids, so-called ‘helper lipids.’” Id. The cited passage does not support the Examiner’s position that transducing a patient’s cells with a viral vector would have required undue experimentation. In contrast, Appellant cites Wold12 as disclosing that “by April 2013, there had been over 400 gene therapy trials conducted with human adenoviral vectors alone.” Appeal Br. 21. Wold indeed states that adenovirus vectors “are used for gene therapy, as vaccines, and for cancer therapy.” Wold 1, abstract. Wold also states that “[m]any clinical trials indicate that replication-defective . . . adenovirus vectors are safe and have therapeutic activity.” Id. And, as Appellant pointed out, Wold states that “[m]ore than 400 gene therapy trials have been or are being conducted with human Ad vectors.” Id. at 3. We conclude that the Examiner’s position that “[t]he art has established the lack of predictability of any viral vector to deliver genes 12 Wold et al., “Adenovirus Vectors for Gene Therapy, Vaccination and Cancer Gene Therapy,” Curr. Gene Ther. 13(6):421–433 (2013). The record copy of Wold is an “Author manuscript,” with pages numbered 1–24. Appeal 2021-003603 Application 15/096,214 16 by any method in humans” (Ans. 19) is not supported by a preponderance of the evidence of record. In summary, the Examiner has not carried the burden of showing that the claims on appeal are not adequately enabled by the description of the claimed method in the Specification. See In re Wright, 999 F.2d at 1561–62. We therefore reverse the rejection of claims 1, 3–6, 9–11, 14, 21, 24, 26, and 31 under 35 U.S.C. § 112(a). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–6, 9– 11, 14, 21, 24, 26 103 Voigtlander, Federoff 1, 3–6, 9– 11, 14, 21, 24, 26 1, 3–6, 9– 11, 14, 21, 24, 26, 31 112(a) Enablement 1, 3–6, 9– 11, 14, 21, 24, 26, 31 Overall Outcome 1, 3–6, 9– 11, 14, 21, 24, 26, 31 REVERSED Copy with citationCopy as parenthetical citation