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 .
In view of the Appeal Brief filed on January 29, 2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
Jeffrey Stucker, SPE AU1675
RESPONSE TO AMENDMENT
Status of Application/Amendments/claims
3. Applicant’s amendment filed July 7, 2025 and Appeal Brief filed January 29, 2026 is acknowledged. Claims 1-15 and 17 are canceled. Claims 16 and 36-37 are amended. Claims 16 and 18-37 are pending in this application. Claims 25-29 and 33 are withdrawn with traverse (10/24/2022) from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/24/22.
4. Claims 16, 18-24, 30-32 and 34-37 are under examination in this office action.
5. Applicant’s arguments filed on July 7, 2025 and January 29, 2026 have been fully considered but they are not deemed to be persuasive for the reasons set forth below.
Claim Rejections/Objections Withdrawn
6. The rejection of claims 16, 18-24, 30-32 and 34-37 under 35 U.S.C. 103 as obvious over Andersen et al. (US10676715) in view of Mori et al. (J. Neurosci. Res., 2006; 84:1682-1691) and Bolognin et al. (US2018/0298330); and evidentiary references: Corning catalogue Number 4441 and the factsheet of Corning Ultra-Low Attachment Surface is withdrawn.
New Grounds of Rejection
Claim Rejections - 35 USC § 112
7. The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claims 16, 18-24, 30-32 and 34-37 are 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
To provide adequate written description and evidence of possession of a claimed genus, the specification must provide sufficient distinguishing identifying characteristics of the genus. The factors to be considered include disclosure of complete or partial structure, physical and/or chemical properties, functional characteristics, structure/function correlation, methods of making the claimed product, or any combination thereof.
Claims 16, 18-24, 30-32 and 34-37 as amended encompass using a genus of first neuronal tissue that is developed to an organoid at a stage of differentiation of interest and a genus of second neuronal tissue that is developed to an organoid at a stage of differentiation of interest differing from the stage of differentiation of interest of the first neuronal tissue in a vicinity to each other sufficient for fusion by growth and wherein a hydrogel, or extracellular matrix or a component of extracellular matrix is in contact with the first and second neuronal tissue during fusion.
Applicant has not disclosed sufficient species for the broad genus of first neuronal tissue that is developed to an organoid at a stage of differentiation of interest and the broad genus of second neuronal tissue that is developed to an organoid at a stage of differentiation of interest differing from the stage of differentiation of interest of the first neuronal tissue for fusion by growth.
Based on Applicant’s own admission, the organoid fusion from PSC-derived EBs in a droplet of Matrigel cannot develop distinct regions, such as NKX2-1+ ventral interneuron progenitor regions (see p. 32-33, Example 10). Based on Applicant’s own admission, the use of a combination of WNT-inhibition and enhanced SHH signaling to promote a rostro-ventral forebrain can only results in detection of forebrain marker FOXG1 and ventral forebrain marker DLX2 but not dorsal forebrain marker TBR1 (p. 32-33).
The specification only describes specific steps of generating and fusing specific dorsal and ventral-pattering embryoid bodies (EBs) formed from pluripotent stem cells (PSCs) (PSC-derived EBs) to produce a specific cerebral organoid fusion that comprises specific “TBR1 positive dorsal” neural tissue and “NKX2-1 positive ventral” neural tissue by:
i) culturing PSCs in a human embryonic stem cell (hESC) culture medium: DMEM/F12 (Invitrogen) containing 20 ng/mL bFGF to form EBs;
ii) ventral patterning treatment of EBs for producing ventral organoids comprising ventral pattering neural progenitor cells/tissue expressing forebrain marker FOXG1 and NKX2-1 by culturing EBs in a neural induction medium comprising 2.5 μM IWP2 and 100 nM SAG,
iii) dorsal patterning treatment of EBs for producing dorsal organoids comprising dorsal pattering neural progenitor cells/tissue expressing TBR1 by culturing EBs in a neural induction medium comprising 5 μM CycA;
iv) embedding a ventral EB and a dorsal EB in a single Matrigel droplet; and
iv) culturing the ventral and the dorsal EBs in a differentiation medium on an orbital shaker with medium exchange every 5-7 days, and after day 40 of the protocol, when organoids begin to grow out of the Matrigel droplet, the differentiation medium was supplemented with 1% Matrigel (see Examples 3 and 10-15).
However, the claims are not limited to the method and the specific dorsal and ventral PSC-derived EBs set forth above but also encompass using a genus of structurally and functionally undefined first neuronal tissue that is developed to a structurally and functionally undefined organoid at a stage of undefined differentiation of interest and a genus of s structurally and functionally undefined second neuronal tissue that is developed to a structurally and functionally undefined organoid at a stage of undefined differentiation of interest differing from the stage of differentiation of interest of the first neuronal tissue in a vicinity to each other sufficient for fusion by growth and wherein a hydrogel, or extracellular matrix or a component of extracellular matrix is in contact with the first and second neuronal tissue during fusion.
In making a determination of whether the application complies with the written description requirement of 35 U.S.C. 112, first paragraph, it is necessary to understand what Applicant is in possession of and what Applicant is claiming.
M.P.E.P. § 2163 instructs:
An invention described solely in terms of a method of making and/or its function may lack written descriptive support where there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function. . . .
An applicant may show possession of an invention by disclosure of drawings or structural chemical formulas that are sufficiently detailed to show that applicant was in possession of the claimed invention as a whole. . . .
An applicant may also show that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics which provide evidence that applicant was in possession of the claimed invention, i.e., complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics.”
This standard has not been met in this case. From the specification, Applicant is in possession of producing and fusing dorsal and ventral-pattering PSCs-derived embryoid bodies (PSC-derived EBs) to produce a specific cerebral organoid fusion comprising a specific TBR1+ dorsal neural tissue and a NKX2-1+ ventral neural tissue using the method set forth above or as shown in Examples 3 and 10-15. However, Applicant is not in possession of producing a structurally and functionally undefined bi- or multi-differentiated neural tissue comprising at least two undefined neuronal tissues using a genus of structurally and functionally undefined first and second neural tissue that is developed to an organoid at a stage of undefined differentiation of interest to fuse each other by growth, wherein a hydrogel or extracellular matrix or a component of extracellular matrix is in contact with the first and second neuronal tissue.
Based on Applicant’s own admission, the organoid fusion from PSC-derived EBs in a droplet of Matrigel cannot develop distinct regions, such as NKX2-1+ ventral interneuron progenitor regions (see p. 32-33, Example 10). Based on Applicant’s own admission, the use of a combination of WNT-inhibition and enhanced SHH signaling to promote a rostro-ventral forebrain can only results in detection of forebrain marker FOXG1 and ventral forebrain marker DLX2 but not dorsal forebrain marker TBR1 (p. 32-33).
The specification only disclosed fusing a ventral EB to a dorsal EB wherein the ventral EB is treated with 2.5 μM IWP2 and 100 nM SAG in a neural induction medium and the dorsal EB is treated with 5 μM CycA in a neural induction medium. Andersen et al. (US10676715) teach fusion of cortical spheroids (hCS) (for dorsal forebrain comprising glutamatergic neurons) and subpallial spheroids (hSS) (for ventral forebrain comprising GABAergic interneurons). However, the specification fails to provide sufficient descriptive information, such as definitive structural or functional features of the claimed genus of first neuronal tissue that is developed to an organoid at a stage of differentiation of interest and the genus of second neuronal tissue that is developed to an organoid at a stage of differentiation of interest differing from the stage of differentiation of interest of the first neuronal tissue in a vicinity to each other sufficient for fusion by growth and in contact with a hydrogel or extracellular matrix or a component of extracellular matrix.
The specification fails to teach structural and functional relationship between the first or second neuronal tissue and the ventral EBs treated with 2.5 μM IWP2 and 100 nM SAG in a neural induction medium and the dorsal EBs treated with 5 μM CycA in a neural induction medium. The specification fails to teach structural and functional relationship between the bi- or multi-differentiated neuronal tissue comprising at least two neuronal tissue types and the cerebral organoid fusion that comprises TBR1 positive dorsal neural tissue and NKX2-1 positive ventral neural tissue and is fused from a ventral EB and a dorsal EB.
The specification provides no description of the conserved regions which are critical to the function of the claimed genus of the first and second neuronal tissue. There is no information regarding the relation of structure of other first and second neuronal tissues to the function of ventral EBs treated with 2.5 μM IWP2 and 100 nM SAG in a neural induction medium and the dorsal EBs treated with 5 μM CycA in a neural induction medium. Furthermore, the prior art does not provide compensatory structural or correlative teachings sufficient to enable one of skill to identify what other first and second neuronal tissue that is developed to a stage of differentiation of interest might be and capable of fusing to each other by growth.
Since the common characteristics/features of other first and second neuronal tissue are unknown, a skilled artisan cannot envision the functional correlations of the genus with the claimed invention. Accordingly, in the absence of sufficient recitation of distinguishing identifying characteristics, the specification does not provide adequate written description of the genus of first and second neuronal tissue that is developed to a stage of differentiation of interest differing from each other and capable of fusing to each other by growth and in contact with a hydrogel, extracellular matrix or a component of extracellular matrix.
Based on MPEP § 2161.01 and §2163, “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. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116”.
Vas-Cath Inc. v. Mahurkar, 19USPQ2d 1111, clearly states “applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.” (See page 1117.) The specification does not “clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed.” (See Vas-Cath at page 1116).
As discussed above, the skilled artisan cannot envision the detailed chemical structure of the encompassed genus of first and second neuronal tissue that is developed to a stage of differentiation of interest differing from each other and capable of fusing to each other by growth, and therefore conception is not achieved until reduction to practice has occurred, regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method of isolating it. The compound itself is required. See Fiers v. Revel, 25 USPQ2d 1601 at 1606 (CAFC 1993) and Amgen Inc. v. Chugai Pharmaceutical Co. Ltd., 18 USPQ2d 1016. One cannot describe what one has not conceived. See Fiddes v. Baird, 30 USPQ2d 1481 at 1483.
Therefore, the claimed method has not met the written description provision of 35 U.S.C. §112, first paragraph. Applicant is reminded that Vas-Cath makes clear that the written description provision of 35 U.S.C. §112 is severable from its enablement provision (see page 1115). Applicant is directed to the Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112, ¶ 1 "Written Description" Requirement. See MPEP § 2161.01 and 2163.
Claim Rejections - 35 USC § 103
8. 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 16, 18-24, 30-32 and 34-37 are rejected under 35 U.S.C. 103 as obvious over Andersen et al. (US10676715, cited previously) in view of Knoblich et al. (US2015/0330970, published Nov 19, 2015; also published as EP2743345 or WO2014090993 as in IDS) and evidentiary references: the factsheet of Corning Ultra-Low Attachment Surface (the Corning-Ultra Low) (cited previously) and Birey et al. (Nature, 2017, 545:54-59, published online on April 26, 2017).
Claims 16, 18-24, 30-32 and 34-37 as amended are drawn to an in vitro method of producing a bi- or multi- differentiated neuronal tissue with at least two neuronal tissue types comprising steps of:
i) providing a first neuronal tissue that is developed to an organoid at a stage of differentiation of interest;
ii) providing a second neuronal tissue that is developed to an organoid at a stage of differentiation of interest differing from the stage of differentiation of interest of the first neuronal tissue;
iii) placing the first and second neuronal tissues in a vicinity to each other sufficient for fusion of the first and the second neuronal tissue by growth, wherein a hydrogel or extracellular matrix or a component of extracellular matrix is in contact with the first neuronal tissue and the second neuronal tissue during fusion, and growing the first and second neuronal tissues to fuse to each other; and thereby producing a bi- or multi-differentiated neuronal tissue comprising the first and second neuronal tissues with different stages of differentiation, wherein at the time of fusion, the bi- or multi-differentiated neuronal tissue has in its longest dimension a size of at least 500mm.
Anderson et al. (US10676715) teaches a method for producing an integrated human forebrain structure (i.e.an assembled organoid) comprising human GABAergic interneurons synaptically integrated with human glutamatergic neurons in vitro (i.e. which is a bi- or multi- differentiated neuronal tissue with at least two neuronal tissue types) (see col. 3, lines 13-57; col. 4, line 24 to col.; col. 18, lines 64-col.19, line 13), wherein the methods comprise steps:
(A) inducing in a pluripotent stem cell (PSC) suspension culture to a neural fate by culturing pluripotent stem cells (PSCs) including iPSCs in medium comprising an inhibitor of BMP and an inhibitor of TGFβ to derive spheroids of neural progenitor cells (see col. 5, lines 9-19; col. 18, line 63 to col. 19, line 55; col. 49, line 66 to col. 59, line 28; col. 33-58, Example 1; col.79-80, claims 1-9);
(B) differentiating neural progenitor cells in a spheroid of step (A) into cortical spheroids (hCS) (for dorsal forebrain comprising glutamatergic neurons) by the steps comprising: (i) in suspension culture, culturing the spheroid in neural medium comprising FGF2 and EGF for a period of from 1 to 4 weeks; (ii) in suspension culture, moving the floating spheroid to neural medium comprising BDNF and NT3 for a period of from 4 to 7 weeks to generate hCS (i.e. which is the step of providing the first neuronal tissue type that is developed to an organoid at a stage of differentiation of interest) (see col. 4, lines 24-40; col. 19, line 58-col. 20, line 17; col.21, lines 16-44; col. 50, line 40-col. 51, line 19; col. 33-58, Example 1 ; col.79-80, claims 1-9);
(C) differentiating neural progenitor cells in a spheroid of step (A) to subpallial spheroids (hSS) (for ventral forebrain comprising GABAergic interneurons) by the steps comprising: (i) in suspension culture, culturing a spheroid of step (A) in the presence of medium comprising a Wnt inhibitor and Agonist of Smoothened for a period of from 7 to 24 days; (ii) in suspension culture, culturing the spheroid in neural medium comprising FGF2 and EGF for a period of from 1 to 4 weeks; (iii) in suspension culture, moving the floating spheroid to neural medium comprising BDNF and NT3 for a period of from 4 to 7 weeks to generate hSS (i.e. which is the step of providing the second neuronal tissue type that is developed to an organoid at a stage of differentiation of interest) (see col. 4, lines 24-40; col. 5, lines 19-28; col. 20, line 18 to col.21, line 44; col. 50, line 40-col. 51, line 19; col. 33-58, Example 1 ; col.79-80, claims 1-9);
(D) to fuse or assemble two subdomain spheroids into an integrated forebrain structure, culturing one or more of each hCS and hSS spheroids into close physical proximity, such as a conical tube or in Corning 24-well ultralow attachment plates for an extended period of time such as up to 30 days…90 days or more in neural medium to provide an integrated forebrain structure called an assembled organoid comprising human GABAergic interneurons synaptically integrated with human glutamatergic neurons (i.e. which is the step of placing the first and second neuronal tissue in vicinity and allowing the first and second neuronal tissue to grow and fuse to each other to produce a bi-or multi-differentiated neuronal tissue comprising the first and second neuronal tissue with different stages of differentiation) (see col.21, lines 45-54; col. 51, lines 20-28; col. 33-58, Example 1 ; col.79-80, claims 1-9).
Andersen discloses the steps recited in instant claim 16 except a hydrogel, or extracellular matrix or a component of extracellular matrix that is in contact with the first and the second neuronal tissue during fusion, or that the fusion by growth is in a hydrogel or extracellular matrix or a component of extracellular matrix, or is in 3D culture comprising a hydrogel or extracellular matrix or a component of extracellular matrix or in a droplet of the hydrogel or the extracellular matrix or the component of extracellular matrix recited in claims 16 and 34-37.
The steps of culturing and differentiating cortical spheroids (hCS) and subpallial spheroids (hSS) and the step of fusing or assembling the hCS and the hSS to form an integrated forebrain structure called an assembled organoid comprising human GABAergic interneurons synaptically integrated with human glutamatergic neurons disclosed by Anderson are the steps of providing the first neuronal tissue that is developed into an organoid at a stage of differentiation of interest and the second neuronal tissue that is developed into an organoid at a stage of differentiation of interest different from each other and placing the first and the second neuronal tissue in a vicinity to each other sufficient for fusion of the first tissue to the second neuronal tissue by growth as in claim 16. The step of fusing the hCS to the hSS to form an integrated forebrain structure disclosed by Andersen is the step of placing the first and second neuronal tissue to grow to fuse to each other are performed in suspension as in claim 21 because the hCS and hSS were transferred into Corning 24-well ultralow attachment plates which have a neutral, hydrophilic hydrogel coating that inhibits cell attachment and forces the hCS and hSS in a suspended and unattached state in culture medium as evidenced by the factsheet of the Corning 24-well ultralow attachment surface (see p.1).
The size of the integrated forebrain organoid disclosed by Andersen has in its longest dimension of at least 1000mm, which meets the limitation “has in its longest dimension of at least 500mm” in claim 16 as evidenced by Birey et al. (see p. 56, Figure 2-d and 2-e, Birey et al. Nature, 2017, 545:54-59, published online on April 26, 2017, which is an article of the Anderson et al. (US10676715) published in Nature). The size of hCS and hSS are grown to a size of 400um, which meets the limitation “the first and the second neuronal tissues are grown to a size of at least 100mm or 200mm” in claims 23 and 32 as evidenced by Birey et al. (see p. 56, Figure 2-d and 2-e in Birey)
The integrated forebrain organoid and the hCS and hSS disclosed by Anderson comprise neural progenitor cells and neurons as in claim 18, or comprise ventral forebrain progenitor tissue or a rostro-ventral forebrain tissue as in claim 19, dorsal forebrain tissue as in claim 20 and the cells are cultured in a suspension culture as in claim 21 and develop a neural plate as in claim 22 (see col. 33-34; col. 19, lines 1-9; col. 20, lines17-21). The hCS disclosed by Anderson express TBR1, FEZF2, CTIP2, TBR2 for dorsal forebrain fate as in claim 20 and the hSS disclosed by Anderson express NKX2-1, FOXG1 and EMX1 for ventral forebrain fate as in claim 19, which expresses a detectable marker that is different from each other as in claim 24 (see col. 33-34). The hCS and hSS disclosed by Anderson are derived from an in vitro culture of pluripotent stem cells (PSCs) including iPSCs as in claims 30-31 (see col. 3, lines 5-6).
But Andersen does not explicitly teach that a hydrogel, or extracellular matrix or a component of extracellular matrix is in contact with the first and the second neuronal tissue during fusion in claim 16, different components of extracellular matrix including collagen, laminin, entactin, heparin-sulfated proteoglycan or any combination thereof as in claim 34, the fusion by growth is in the hydrogel or the extracellular matrix or the component of extracellular matrix in claim 35, suspending the first neuronal tissue and the second neuronal tissue in a three-dimensional (3D) culture comprising the hydrogel, the extracellular matrix or the component of extracellular matrix in claim 36 or in a droplet of the hydrogel or the extracellular matrix or the component of extracellular matrix in claim 37.
Knoblich et al. (US2015/0330970) teaches a method of production of cerebral organoids using a Spinning Droplet Method by embedding neurospheres or embryoid bodies (EBs) in droplets of Matrigel which were then transferred to a spinning bioreactor to enhance nutrient absorption and allow for growth of larger more complex tissues to form cerebral organoids that display different brain regions (see Example 1, [0093]-[0097], Example 2, [0114]-[0117]). Embedding different neurospheres or embryoid bodies (EBs) in droplets of Matrigel meets the limitation “a hydrogel, or extracellular matrix or a component of extracellular matrix is in contact with the first and the second neuronal tissue during fusion”. Knoblich teaches the benefits of using a droplet of Matrigel for producing cerebral organoids because the droplet of Matrigel can provide for better development of neurospheres or EBs into larger cell aggregates, better maintenance of 3D structure of cerebral organoids and differentiation of specific neural cell layers and tissues with structural characteristics reminiscent of various brain regions or the cerebral cortex (see para. [0115]-[0117]).
Knoblich teaches a method of generating an artificial 3D neuronal tissue comprising a heterogeneous population of cells of at least two different tissue sections in a three-dimensional structure, wherein the method comprises steps:
a) providing a multicellular aggregation of pluripotent stem cells (PSCs) by culturing PSCs, ESCs or iPSC in an ultra-low binding plate in hES media with low bFGF (5-fold reduced) and 50 uM ROCK inhibitor;
b) culturing the multicellular aggregation, or neurospheres or Embryoid bodies (EBs) in neural induction medium containing DMEM/F12, 1:100 N2 supplement, Glutamax, MEM-NEAA, and 1 ug/ml Heparin to differentiate to neural tissue;
c) culturing the differentiated multicellular aggregation or progenitor cells in a three dimensional matrix, in a hydrogel or extracellular matrix or a component of extracellular matrix in differentiation media containing a 1:1 mixture of DMEM/F12 and Neurobasal containing 1:200 N2 supplement, 1:100 B27 supplement without vitamin A 3.5 ul/L 2-mercaptoethanol, 1:4000 insulin, 1:100 Glutamax, 1:200 MEM-NEAA, thereby expanding the cells in a multicellular aggregation and wherein the cells are allowed to differentiate, and culturing the expanded and optionally differentiated multicellular aggregation of cells in a suspension culture (see para. [0016]-[0018]; [0028]-[0053]; Example 1, [0093]-[0096]; Examples 2-3, [0114]-[0123]; claims 37-52). Knoblich teaches that the multicellular aggregation or neurospheres are cultured in a 3D matrix culture including a hydrogel, an extracellular matrix or a component of extracellular matrix and embedded in droplets of Matrigel (i.e. a hydrogel as in claims 16 and 35-37), which were then transferred to a spinning bioreactor to enhance nutrient absorption and allow for growth of larger more complex tissue (see para. [0094]-[0097]; Example 2, [0114]-[0117], claims 47-52). Knoblich teaches different components of extracellular matrix including collagen, laminin, entactin, heparin-sulfated proteoglycan or any combination thereof as in claim 34 (see para. [0029]-[0030], claim 50). Knoblich teaches that the Spinning Droplet Method using droplets of Matrigel for production of cerebral organoids led organoids to form very large (up to 4 mm in diameter, which is has a size of at least 500mm recited in claim 16), highly complex heterogeneous tissues with structural characteristics reminiscent of various brain regions (see para. [0115]-[0117]).
The teaching of Knoblich provides motivation and an expectation of success in using droplets of Matrigel and a Spinning Droplet Method by embedding neurospheres or embryoid bodies (EBs) in droplets of Matrigel for better producing cerebral organoids to obtain larger cell aggregates, maintain 3D structure of cerebral organoids and obtain better differentiation of specific neural cell layers and tissues with structural characteristics reminiscent of various brain regions or the cerebral cortex for diagnosis, screening or pharmaceutical or therapeutic purposes or treatment using human integrated forebrain structure (i.e. bi- or multi-differentiated neuronal tissue) .
A person of ordinary skill in the art would have recognized that selecting and applying the known hydrogel including Matrigel droplets, the known benefits of using Matrigel droplets for better producing cerebral organoids, the known Spinning Droplet Method for producing cerebral organoid by embedding neurospheres or embryoid bodies (EBs) in droplets of Matrigel, the known components of extracellular matrix including collagen, laminin, entactin, heparin-sulfated proteoglycans or any combination thereof and the known technique of generation of artificial cerebral organoid comprising in a 3D matrix or in a droplet of Matrigel disclosed by Knoblich to the Anderson’s method would have yielded the predictable result of producing a bi- or multi-differentiated neuronal tissue with at least two neuronal tissue by placing the first neuronal tissue and the second neuronal tissue that is developed into a stage of differentiation of interest differing from each other in a vicinity to each other sufficient for fusion by growth wherein a hydrogel including a Matrigel droplet is in contact with the first and the second neuronal tissue during fusion or in 3D culture comprising a hydrogel, extracellular matrix or a component of cellular matrix or in a droplet of hydrogel or extracellular matrix or a component of cellular matrix including collagen, laminin, entactin, heparin-sulfated proteoglycans or any combination thereof and wherein at the time of fusion, the bi- or multi-differentiated neuronal tissue has in its longest dimension a size of at least 500mm, and resulted in an improved method because: 1) Andersen teaches placing the hSS and the hCS adjacent to each other in close physical proximity in neural medium to provide an integrated forebrain structure called an assembled organoid comprising human GABAergic interneurons synaptically integrated with human glutamatergic neurons; and 2) Knoblich teaches the benefits of using Matrigel droplets and the Spinning Droplet Method by embedding neurospheres or embryoid bodies (EBs) in droplets of Matrigel for better producing cerebral organoids, better development of larger cell aggregates, better maintenance of 3D structure of cerebral organoid and differentiation of specific neural cell layers and tissues with structural characteristics reminiscent of various brain regions or the cerebral cortex. The Spinning Droplet Method for production of cerebral organoids using the Matrigel droplet by placing the differentiated multicellular aggregation or progenitor cells in a 3D-matrix, in a hydrogel or extracellular matrix or a component of extracellular matrix in differentiation media can result in cerebral organoids to form very large up to 4 mm in diameter, highly complex heterogeneous tissues with structural characteristics reminiscent of various brain regions or the cerebral cortex.
Including and using the known hydrogel including Matrigel droplets, the known benefits of using Matrigel droplets and the Spinning Droplet Method for producing cerebral organoid, the known components of extracellular matrix including collagen, laminin, entactin, heparin-sulfated proteoglycans or any combination thereof and the known technique of generation of artificial cerebral organoid comprising in a 3D matrix or in a droplet of Matrigel disclosed by Knoblich in the Anderson’s method would generate cerebral organoids to form very large (up to 4 mm in diameter), highly complex heterogeneous tissues with structural characteristics reminiscent of various brain regions and a bi- or multi-differentiated neuronal tissue comprising at least two different neuronal tissues with the claimed features, and expand application of the Anderson’s method, and would increase the use of Anderson’s human integrated forebrain structure (i.e. bi- or multi-differentiated neuronal tissue) for diagnosis, screening or pharmaceutical purposes or therapeutic purposes or treatment using human integrated forebrain structure (i.e. bi- or multi-differentiated neuronal tissue) because embedding neurospheres or EBs in Matrigel droplets can result in better producing cerebral organoids, better development of larger cell aggregates, better maintenance of 3D structure of cerebral organoid and differentiation of specific neural cell layers and tissues with structural characteristics reminiscent of various brain regions or the cerebral cortex.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select and apply the known hydrogel including Matrigel droplets, the known benefits of using Matrigel droplets for better producing cerebral organoids, the known Spinning Droplet Method for producing cerebral organoid by embedding neurospheres or embryoid bodies (EBs) in droplets of Matrigel, the known components of extracellular matrix including collagen, laminin, entactin, heparin-sulfated proteoglycans or any combination thereof and the known technique of generation of artificial cerebral organoid comprising in a 3D matrix or in a droplet of Matrigel disclosed by Knoblich to the Anderson’s method, and yield the predictable result of producing a bi- or multi-differentiated neuronal tissue with at least two neuronal tissues by placing the first neuronal tissue and the second neuronal tissue in a vicinity sufficient for fusion by growth wherein a hydrogel including a Matrigel droplet and component of cellular matrix including collagen, laminin, entactin, heparin-sulfated proteoglycans or any combination thereof is in contact with the first neuronal tissue and the second neuronal tissue during fusion and growing the first and the second neuronal tissue to fuse to each other, wherein at the time of fusion, the bi- or multi-differentiated neuronal tissue has in its longest dimension a size of at least 500mm.
Double Patenting
9. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 16, 18-24, 30-32 and 34-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-18 of US10407664 in view of Andersen et al. (US10676715), Knoblich et al. (US2015/0330970) and evidentiary references: the factsheet of Corning Ultra-Low Attachment Surface (the factsheet of Corning-Ultra Low) (cited previously) and Birey et al. (2017).
Claims 12-18 of the US10407664 (the ‘664 patent) claim a method of generating a 3D neuronal tissue culture comprising outer radial glia cells; and wherein the culture comprises a three dimensional matrix which is a hydrogel, the method comprising: a) providing a multicellular aggregation of pluripotent stem cells, b) culturing said multicellular aggregation in neural induction medium thereby inducing the multicellular aggregation to differentiate to neuroepithelial cells, c) culturing said differentiated neuroepithelial cells in drops of extracellular matrix derived from Engelbreth-Holm-Swarm sarcoma cells, thereby expanding said cells in a multicellular aggregation, and d) culturing said expanded multicellular aggregation of cells from step c) in a suspension culture, thereby generating the 3D neuronal tissue culture.
While the claims of the ‘664 patent do not recite placing two separate aggregates (two organoids) in a vicinity to each other sufficient for fusion of the first and the second neuronal tissue by growth wherein a hydrogel or extracellular matrix or a component of extracellular matrix is in contact with the first and second neuronal tissue during fusion or the size of at least 500mm at the time of fusion, or the first and second neuronal tissue having a diameter of at least 100mm or 200mm, Andersen, Knoblich, the factsheet of Corning-Ultra Low and Birey teaches these limitation and provide motivation and an expectation of success for the reasons set forth above under the 103 rejection. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select and apply the known steps of providing the first and second neuronal tissue that is developed to a stage of differentiation of interest differing from each other and placing the first and second neuronal tissue in a vicinity to each other sufficient to fuse by growth in a hydrogel, or extracellular matrix or a component of extracellular matrix, or in a 3D culture comprising the hydrogel, or extracellular matrix or a component of extracellular matrix or in a droplet of the hydrogel, or extracellular matrix or a component of extracellular matrix, and the known sizes of at least 500mm for cerebral organoid or 3D neuronal tissue (i.e. bi- or multi-differentiated neuronal tissue), the know sizes of at least 100 or 200 mm for neurosheres or the first and second neuronal tissue, and the known technique disclosed by Andersen and Knoblich to the method of the ‘664 patent, and yield the predictable result of producing a bi- or multi-differentiated neuronal tissue with at least two neuronal tissue wherein at the time of fusion, the bi- or multi-differentiated neuronal tissue has in its longest dimension a size of at least 500mm.
Double Patenting
10. Claims 16, 18-24, 30-32 and 34-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 25-32 and 34-35 of copending Application No. 17/734795 in view of Andersen et al. (US10676715), Knoblich et al. (US2015/0330970) and evidentiary references: the factsheet of Corning Ultra-Low Attachment Surface (the Corning-Ultra Low) (cited previously) and Birey et al. (2017).
Claims 25-32 and 34-35 of Application No. 17/734795 (the ‘795 Application) claim a method of generating an artificial 3D neural tissue culture, comprising: a) providing a multicellular aggregation of pluripotent stem cells, b) culturing the multicellular aggregation in a 3D matrix, thereby expanding the cells in the multicellular aggregation, wherein the cells are allowed to differentiate; c) culturing the expanded multicellular aggregation of cells in a suspension culture, thereby providing a generated artificial 3D neuronal tissue culture.
While the ‘795 Application do not recite placing two separate aggregates (two organoids) in a vicinity to each other sufficient for fusion of the first and the second neuronal tissue by growth wherein a hydrogel or extracellular matrix or a component of extracellular matrix is in contact with the first and second neuronal tissue during fusion or the size of at least 500mm at the time of fusion, or the first and second neuronal tissue having a diameter of at least 100mm or 200mm, Andersen, Knoblich, the factsheet of Corning-Ultra Low and Birey teaches these limitation and provide motivation and an expectation of success for the reasons set forth above under the 103 rejection. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select and apply the known steps of providing the first and second neuronal tissue that is developed to a stage of differentiation of interest differing from each other and placing the first and second neuronal tissue in a vicinity to each other sufficient to fuse by growth in a hydrogel, or extracellular matrix or a component of extracellular matrix, or in a 3D culture comprising the hydrogel, or extracellular matrix or a component of extracellular matrix or in a droplet of the hydrogel, or extracellular matrix or a component of extracellular matrix, and the known sizes of at least 500mm for cerebral organoid or 3D neuronal tissue (i.e. bi- or multi-differentiated neuronal tissue), the know sizes of at least 100 or 200 mm for neurosheres or the first and second neuronal tissue, and the known technique disclosed by Andersen and Knoblich to the method of the‘795 Application, and yield the predictable result of producing a bi- or multi-differentiated neuronal tissue with at least two neuronal tissue wherein at the time of fusion, the bi- or multi-differentiated neuronal tissue has in its longest dimension a size of at least 500mm.
Conclusion
11. NO CLAIM IS ALLOWED.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANG-YU WANG whose telephone number is (571)272-4521. The examiner can normally be reached Monday-Thursday, 7:00am-5:00pm EST.
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/CHANG-YU WANG/Primary Examiner, Art Unit 1675 June 15, 2026
/JEFFREY STUCKER/Supervisory Patent Examiner, Art Unit 1675
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