DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendments
Applicant's amendments filed 12/22/2025 to claim 1 have been entered. Claims 3, 6, 8, 11, 13, 14, 16-18, 21-239, 31, and 32 are canceled. Claims 1, 2, 4, 5, 7, 9, 10, 12, 15, 19, 20, 30, 33-35, and 41 remain pending, and are being considered on their merits. No claims are withdrawn from consideration at this time. References not included with this Office action can be found in a prior action. Any rejections of record not particularly addressed below are withdrawn in light of the claim amendments and/or applicant’s comments.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1, 4, 7, 10, 12, 15, 19, 30, 33-34 and 41 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable Kelly et al. (US2009/0263896) in view of D’Amour (Nature Biotechnology (2006), 24(11), 1392-1401), Cho et al. (BBRC (2008), 366, 129-134), Nostro et al. (Development, 2011 138(5), 861-871; Epub 2011 Jan 26), Banerjee et al. (J Tissue Eng Regen Med 2011; 5: 313–323) and Cabrera et al. (PNAS. vol. 103 no. 7, 2334–2339) (+CD34+ progenitors), and as evidenced by Salech et al. (Front. Aging Neurosci. (2020), pages 1-10).
Kelly teaches compositions and methods comprising cell surface markers for hES-derived cells, in particular, endoderm lineage cells including pancreatic endoderm-type cells, derived from hES cells (Abstract). Therefore the art teaches the use of human embryonic stem cells (hence, a pluripotent cell). Kelly teaches said stem cells can be used to produce cell cultures termed “PDX1-positive, dorsally-biased, foregut endoderm cells”, “PDX1-positive foregut (PF) endoderm cells”, “PDX1 positive endoderm”, “pancreatic endoderm (PE)” or equivalents thereof. In some embodiments, the PDX1-positive foregut endoderm cells express one or more markers including PDX1, HNF6, PROX1 and SOX9. See “PF” in FIG. 1. See [0066]. Therefore the art is interpreted to differentiate human embryonic stem cells to produce an endodermal cell population. In other embodiments, Kelly teaches that PDX1-positive foregut endoderm cells are further differentiated to other, at least, pancreatic-lineage cells, for example, PDX1-positive (PDX1+) endoderm express NKX6.1 (see [0066]). Hence, in one embodiment, a PDX1-positive foregut endoderm cell precedes a PDX1+/NKX6.1+ type cell ([0066]). Therefore Kelly teaches PDX-1 positive endoderm cells that are differentiated into PDX1-positive cells which express NKX6.1. Kelly teaches the use of antibodies that can immune-select for a >80% PDX1+ endoderm cell population ([00156]). Therefore Kelly teaches a >60% PDX1+ endoderm cell population can be made, reading in part on claims 1 and 34 and on the embryonic stem cells of claim 12. Kelly teaches NKX6-1 positive cells can be enriched ([0174]), reading on claims 19, 33, and 34. Kelly teaches differentiating the Nkx6.1 pancreatic progenitor cells into mono-hormonal immature or mature beta cells ([0062] and [0069]), reading in-part on claim 1 (C).
Kelly incorporates the teachings of D'Amour et al. 2006 Nat. Biotechnol. 24(11): 1392-1401 in its entirety (See [0053]). Regarding the incorporated reference:
D’Amour teaches a 5 stage method of differentiating human embryonic stem cells (see Figure 1a). The art teaches differentiation of hESCs to produce “posterior foregut”. The art teaches “posterior foregut endoderm” expresses PDX1. The art teaches culturing said endoderm in DMEM+1% B27 comprising DAPT and Ex4 for 2-3 days (Stage 4). The art teaches this produces “pancreatic endoderm” expressing NKX6-1. It is noted the art teaches PDX1 accumulates in stage 3 and is also present in stage 4 (the step that produces pancreatic endoderm expressing NKX6-1), reading on claim 30.
Kelly teaches the use of human embryonic stem cells. The art teaches differentiation to produce endoderm cells. The art teaches an endodermal cell population comprising at least 60% PDX1+ cells can be prepared. The art teaches said cells can be differentiated to produce cells that are NKX6-1+. Kelly incorporates all the teachings of D’Amour, which teaches a method comprising culturing posterior foregut in a medium comprising DAPT and Ex4 to produce pancreatic endoderm.
Regarding claim 1 (a), Kelly does not teach adding a I) nodal agonist and Wnt signaling agonist, a II) nodal agonist and FGF agonist, and III) and nodal agonist and FGF agonist. Regarding claim 1 (b), Kelly does not teach containing the stage 1 differentiated cells with FGF agonist. Regarding claim 1(c), Kelly does not teach any noggin component and retinoic acid or analog (the other elements being optional and not limiting of claim scope). Regarding claim 4, Kelly does not teach any species of EGF component. Regarding claim 7, Kelly does not teach any species of nicotinamide component.
The required components of claim 1 (a)(I) are a nodal agonist and a wnt signaling agonist. Claim 15 further limits the nodal agonist to ActA (i.e. Activin A) and the Wnt signaling agonists to Wnt3 or CHIR 99021. The required components of claim 1 (a)(II) are a nodal agonist and a FGF agonist. Claim 15 further limits the nodal agonist to ActA (i.e. Activin A) and the FGF agonist to bFGF. The required components of III are a nodal agonist and a FGF agonist. Claim 15 further limits the nodal agonist to ActA (i.e. Activin A) and the FGF agonist to bFGF. Kelly does not teach the limitations of claim 15.
Cho et al. teach a method of inducing pancreatic β-cell differentiation from human embryonic stem cells (Abstract). Cho discloses a five-stage protocol for differentiation (See Materials and Methods section). It is emphasized Cho teaches “for the most part, differentiation experiments were carried out according to the previously described five-stage protocol of reference 10 (D'Amour et al. 2006 Nat. Biotechnol. 24(11): 1392-401)”. Therefore Cho uses the same method incorporated by Kelly (i.e. incorporated by reference teachings of D’Amour).
Cho teaches the following protocol:
Stage 1 (definitive endoderm induction). To induce the mesendoderm,
SNUhES3 cells were cultured in RPMI 1640 medium (Invitrogen) containing 100 ng/ml activin A (R&D systems, Minneapolis, MN) and 25 ng/ ml Wnt3a (R&D systems) for 1 day. At this stage, FBS was not added to the culture media. After 24 h, the medium was replaced with fresh RPMI 1640 supplemented with 100 ng/ml activin A and 0.2% FBS for 2 days to further differentiate the cells into the definitive endoderm.
Stage 2 (primitive gut tube induction). To induce the primitive gut tube,
the culture medium was replaced with RPMI 1640 supplemented with
50 ng/ml FGF10 (R&D systems) and 0.25 µM KAAD-cyclopamine
(Toronto Research Chemicals, Downsview, Ont., Canada) for 3 days.
Stage 3 (posterior foregut induction). We replaced the culture medium
with DMEM supplemented with 1% B27 (Invitrogen), 2 lM all-trans
retinoic acid (Sigma), 50 ng/ml FGF10, and 0.25 µM KAAD-cyclopamine.
From stage 4 onward, we used 2 protocols either without (protocol 1) or with (protocol 2) betacellulin and nicotinamide supplementation.
Stage 4 (pancreatic endoderm induction). In this stage, the cells were
cultured with DMEM containing 1% B27, 1 lM c-secretase inhibitor
DAPT (Sigma), and 50 ng/ml extendin-4 (Sigma) for 2 days (protocol 1). In protocol 2, 10 nM betacellulin (R&D systems) and 10 mM nicotinamide (Sigma) were added to the same culture medium.
Stage 5 (pancreatic b-cell induction). In the final stage, the culture
medium was replaced with CMRL (Invitrogen) containing 1% B27, 50 ng/ml exendin-4, 50 ng/ml insulin-like growth factor (IGF)-1 (Sigma), and 50 ng/ml hepatocyte growth factor (HGF) (PeproTech, Rocky Hill, NJ) for 6 days (protocol 1). In protocol 2, 10 nM betacellulin and 10 mM
nicotinamide were added to the same culture medium.
, reading in part on steps (a)-(c) of claims 1, 4, 7, and 10. Cho teaches nicotinamide. As evidenced by Salech et al., “nicotinamide is a well-known inhibitor of PARP-1” (see last sentence of page 2), reading on claim 41.
As set forth above (Stage 4) Cho teaches betacellulin and nicotinamide can be added to the same medium disclosed in D’Amour (DMEM, 1% B27, DAPT and Exindin4) to produce “pancreatic endoderm”. D’Amour and Cho both teach production of the same tissue. D’Amour teaches pancreatic endoderm (stage 4) expresses PDX1 and NKX61 (see Figure 1a, See Figure 1b). The pancreatic endoderm taught by Cho would be expected to comprise both markers since D’Amour teaches pancreatic endoderm expresses both markers. Cho teaches incorporating betacellulin (e.g. an EGF component) and nicotinamide sustains PDX1 expression (Abstract), reading on claim 4. The art teaches since PDX1 induces the expression of the insulin gene, sustained expression of PDX1 in the later stage of β-cell development is crucial (see 133, left column, first paragraph), reading on claims 1, 4, and 7, and the extendin of claims 1 and 10.
Claim 1 recites “wherein the endodermal population is treated with the composition for at least 3 days and prior to inducing pancreatic beta cell differentiation”. Examiner notes the claims do not recite any steps for inducing differentiation of a pancreatic beta cell. Therefore as written, the claim is interpreted to mean the claim method is an intermediate step that does not include differentiation of a beta cells. Cho reads on this limitation.
In Supplemental Figure S5, Nostro treats pluripotent stem cells with:
A medium comprising Wnt, Act, BMP4, VEGF and bFGF (hence, comprising a nodal agonist and a wnt signaling agonist; A medium comprising Act, BMP4, VEGF, bFGF (hence, comprising a nodal agonist and an FGF agonist) Nostro teaches medium comprising Act and FGF can be changed (about middle of first paragraph of Materials and Methods, Differentiation). Examiner notes Stage 2 and 4 (Protocol 2+Act) reading on steps b and c of claims 1 and 15.
Regarding claim 1, 4, and 7, it would have been obvious to combine the teachings of the prior art to produce the claimed cells. As set forth above, Kelly teaches a method of differentiating human embryonic stem cells an endodermal cell population comprising at least 60% PDX1+ cells can be prepared. It would have been obvious to treat these cells with an EGF and a Nicotinamide component for at least 3 days. One would have been motivated to do so since D’Amour (incorporated by Kelly in its entirety) teaches induction of pancreatic endoderm can be performed for 2 to 3 days. Cho teaches endoderm can be treated with an EGF component and a nicotinamide component for at least 3 days. One would do so to sustain PDX1 expression, as taught by Cho. One would have expected similar results since both references are directed to methods of differentiating human embryonic stem cells to produce pancreatic endoderm.
Regarding claims 1 steps (a)-(c) and claim 15, it would have been obvious to combine the teachings of the prior art by differentiating stem cells as disclosed by Nostro. One would have been motivated to do so since Cho teaches a method of differentiation pluripotent stem cells and Nostro teaches pluripotent stem cells can be differentiated using the claimed steps. KSR Rationale A indicates that it is scientifically rational to combine prior art elements according to known methods to yield predictable results, when all of the claimed elements were known in the prior art and one skilled in the art could have combined the element as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable. One would have had a reasonable expectation of success since Nostro teaches pluripotent cells can be differentiated as claimed to produce endoderm. One would have expected similar results since both references teach methods of differentiation pluripotent cells to produce endoderm. Examiner notes II and III repeat the use of a nodal agonist and an FGF agonist. One would do so since Nostro teaches medium can be changed and re-added to the cells after several days in culture.
Regarding the first wherein clause of claim 1, the statement of intended use of the cells made by the claimed method is reasonably and inherently met by the NKX6.1 pancreatic progenitor cells made by Kelly absent any showing to the contrary as Kelly teaches NKX6.1 pancreatic progenitor cells as cited above. See M.P.E.P. § 2111.02 and 2111.04.
Regarding claim 1, Kelly does not teach co-culturing the NKx6.1+ pancreatic progenitor cells with CD34+ endothelial cells.
Banerjee teaches a method of differentiating embryonic stem cells to insulin-producing cells positive for Nkx.1 (See Figure 1; See Abstract). After obtaining definitive endoderm, Banjeree induces final maturation by co-culture with vascular endothelial cells (Abstract; page 317, Section 3.3.2). The art teaches doing so produces pancreatic islets expressing high levels of insulin, and induces cell specific maturation (page 319, Discussion; last paragraph on page 322 bridging 323).
Banjeree does not explicitly teach said endothelial cells are CD34+. As evidenced by Cabrera, vascular endothelial cells are positive for CD34 (See text under Figure 3). Further, in histological analysis Cabrera teaches glucagon-immunoreactive and insulin-immunoreactive cells are closely apposed to vascular endothelial cells, and are found aligned along the vessels (page 2326, left column, last paragraph).
It would have been obvious to one of ordinary skill in the art to combine the teachings of Cho and Banjeree and co-culture cells with CD34+ endothelial cells. One would have been motivated to do so since Banjeree teaches co-culture with vascular endothelial cells induces final maturation of pancreatic cells expressing high levels of insulin. One would use CD34+ endothelial cells because Cabrera teaches endothelial cells with this marker are naturally found in association with insulin-producing cells. One would have expected similar results since both Cho and Banjeree are both directed to making insulin-producing cells from stem cells.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill at the time the invention was made.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill at the time the invention was made.
Claims 2, 9 and 35 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kelly in view of D’ Amour, Cho, Nostro, Banerjee, and Cabrera as applied to claim 1 above, and further in view of Evans-Molina et al. (previously cited; Development of Insulin Producing Cells From Primitive Biologic Precursors. Curr Opin Organ Transplant. 2009 February; 14(1): 56–63).
Claim 1 is rejected on the grounds set forth above. The teachings of Kelly, D’Amour, Cho, and Nostro are reiterated.
The references are silent regarding treatment with one or more Noggin component.
Molina illustrates a method of preparing insulin producing cells (see Jiang's protocol, page 11). After preparing “definitive endoderm” from human embryonic stem cells, Molina treats cells with Noggin and EGF (hence, Noggin and EGF components) followed by nicotinamide (hence, a nicotinamide component). The resulting cells are Nkx6.1 positive.
Cho further treats endodermal cells with at least one EGF component and at least one nicotinamide component. It would have been obvious to combine the teachings of Cho and Molina by treating endodermal cells with at least one EGF component, at least one nicotinamide component and at least one Noggin component. One would have been motivated to do so since Molina teaches endodermal cells can be treated with Noggin to produce insulin producing cells. Further, it would have been obvious to combine compositions which are each taught by the prior art to be used for the same purpose. One would have had a reasonable expectation of success since Molina teaches endodermal cells can be treated with a Noggin component, in addition to a nicotinamide component and an EGF component to produce pancreatic cells. One would have expected similar results since both references differentiate endodermal cells to produce pancreatic cells. Further, the following is noted from the MPEP:
The rejections under 35 USC 103 above are consistent with case law. Applicants are referred to In re Kerkhoven (205 USPQ 1069) in which it was shown to be prima facia obvious to combine two compositions, each of which is taught by the prior art to be used for that very same purpose.
Therefore claim 2 is rendered obvious.
As recited in the rejection of claim 2, treatment with Noggin, EGF and nicotinamide is rendered obvious. Therefore claim 9 is rejected.
Kelly teaches NKX6-1 positive cells can be enriched to produce a population that is 57.61% positive ([0174]). Therefore claim 35 is rendered obvious.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill at the time the invention was made.
Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kelly in view of D’Amour, Cho, Nostro, Banerjee, and Cabrera as set forth in the rejection of claims 1 and 4, and further in view of Fisk et al. (US 7,326,572).
Claims 1 and 4 are rejected on the grounds set forth above. The teachings of Kelly, D’Amour, Cho, and Nostro are reiterated.
Cho further teaches Betacellulin—a 9.5-kDa glycoprotein highly expressed in the pancreas—belongs to the epidermal growth factor family and promotes the differentiation, regeneration, and proliferation of pancreatic β cells under various in vivo and in vitro conditions (page 130, left column, third paragraph).
While Cho teaches the use of an EGF family member to treat endoderm cells, the art is silent as to whether another member of the EGF family can be used.
Fisk teaches it has been discovered that stem cells can be coaxed along the islet cell differentiation pathway by initiating differentiation towards the endodermal lineage, and focusing the differentiation process by culturing in the presence of factors that facilitate outgrowth of islet cells (column 4, lines 58-63). Fisk teaches the following (column 10, lines 35-55):
In a further manifestation of this approach, the differentiation pathway is divided into three stages. pPS cells are first differentiated to endoderm (Stage 1), and then to a second intermediate (Stage 2)—say, the level of a committed pancreas precursor (identifiable with the marker Pdx1). A further differentiation step (Stage 3) can be performed if the user wants to obtain mature islets. By way of illustration, to accomplish Stage I, pPS cells can be differentiated to cells having markers for gut endoderm using a combination of n-butyrate and activin A (Example 4). Alternatively, a heterogeneous population comprising endodermal cells can be prepared by culturing pPS cells with retinoic acid in the presence of enriching agents (selenium and thyroid hormones such as T3) (Example 5). To accomplish Stage 2, the cells can be cultured with TGF-3 antagonists such as Noggin, in combination with mitogens (a member of the FGF family, possibly in combination with EGF or betacellulin) (Example 5).
Fisk teaches following differentiation of pPS cells to endoderm in stage 1, cells can be cultured in a medium comprising EGF or betacellulin. Examiner notes Fisk discloses specific embodiments where EGF is used to conduct stage 2 (see Example 5).
As set forth above, Cho teaches the use of an epidermal growth factor family member to treat endoderm. It would have been obvious to try using EGF as an alternative to betacellulin. One would have been motivated to do so since Fisk teaches EGF is an alternative to betacellulin that can be used to drive differentiation of endoderm. KSR Rationale E indicates that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and commonsense” (MPEP 2143 “Rationale E. Obvious to Try” section). One would have had a reasonable expectation of success since Fisk teaches EGF can successfully be used to perform endoderm differentiation. One would have expected similar results since Fisk and Cho are both directed to methods of differentiating endoderm.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill at the time the invention was made.
Claim 20 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kelly in view of D’Amour, Cho, Nostro, Banerjee, and Cabrera as set forth in the rejection of claim 19, and further in view of Dorrell et al. (Diabetalogia 2011, 54(11) 1-23).
Claim 19 is rejected as recited above. The teachings of the prior art are reiterated.
Kelly does not teach isolating Nkx6-1 positive cells with an antibody that detects the Hpx epitope (claim 20).
To isolate pancreatic cells, Dorrell uses an Hpx1 specific antibody (Results, first paragraph). The art teaches antibodies target the cell surface (same section). Therefore the antibody contacts. Figure 1 (see a,d) indicates the antibody detects insulin producing cells (i.e. beta cells). The art teaches Nkx6.1 is expressed by said cells (page 7, first paragraph).
It would have been obvious to one of ordinary skill in the art to combine the teachings of Kelly and Dorrell and isolate Nkx6.1 positive cells using the claimed antibody. One would have been motivated to do so since Kelly teaches isolation of Nkx6.1 cells, and Dorrell teaches cells that express this marker can be isolated using an Hpx1 antibody. One would have expected similar results since both Kelly and Dorrell are directed to cells that express the Nkx6.1.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill at the time the invention was made.
Response to Arguments
Applicant's arguments on pages 6-10 of the reply have been fully considered, but not found persuasive of error for the reasons given below.
On pages 8-9 of the reply, Applicant alleges that the instant amendments to claim 1 overcome the obviousness rejections of record. This is not found persuasive over the additionally cited teachings of Kelly as set forth above, towards the production of mono-hormonal immature and mature beta cells.
On pages 8-9 of the reply, Applicant alleges that Evans-Molina is deficient by not teaching every element of amended claim 1. This is not found persuasive over the additionally cited teachings of Kelly as set forth above, towards the production of mono-hormonal immature and mature beta cells.
Conclusion
No claims are allowed. No claims are free of the art.
After extensive prosecution in this case, it appears that applicants disagree with the examiner’s findings and that the disagreement is based on a point of law. In light of this, applicants are reminded of their right to appeal the examiner’s rejections to the Patent Trial and Appeal Board.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN C BARRON whose telephone number is (571)270-5111. The examiner can normally be reached 7:30am-3:30pm EDT/EST (M-F).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached at 571-272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sean C. Barron/Primary Examiner, Art Unit 1653