DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application was filed on 12/04/2020 and is a 371 application of PCT/US2018/036355 filed on June 6, 2018. The effective filing date for claims 1-2,10,12-13,15-16,18-24,26-27,30 and 34-36 is June 6, 2018.
Claim Status
In the response filed Feb. 17, 2025, Applicant has amended claim 1. Currently, claims 20-24, 26-27, 30, and 34-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicants Election to Group I (drawn to a method of preparing a human neuronal stem cell from a human embryonic stem cell) was made without traverse in the reply filed on May 24th, 2024.
Currently, claims 1, 2, 10, 12-13, 15-16, and 18-19 are under examination.
Withdrawn Objections & Rejections
Rejections and/or objections not reiterated from the previous office action are hereby withdrawn due to amendment. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, 10, 12-13, 15-16, and 18-19 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.
This rejection is a new rejection necessitated by amendments to the claims.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “a) singly isolating a stem cell rosette from a population of embryoid bodies (EB) generated from human embryonic stem cell line ESI-017 cultured in differentiation medium, wherein the singly isolated stem cell rosette is individually separated and not harvested in bulk;” (lines 3-6).
In amended cases, subject matter not disclosed in the original application is sometimes added and a claim directed thereto. Such a claim is rejected on the ground that it recites elements without support in the original disclosure under 35 U.S.C. 112, first paragraph, Waldemar Link, GmbH & Co. v. Osteonics Corp. 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). See MPEP § 2163.06- § 2163.07(b) for a discussion of the relationship of new matter to 35 U.S.C. 112, first paragraph. New matter includes not only the addition of wholly unsupported subject matter but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method. See MPEP § 608.04. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP § 2163.05.
In the instant case, the instant amendment to the claims introduces new limitations (i.e. wherein the singly isolated stem cell rosette is individually separated and not harvested in bulk). There is no disclosure in the instant specification that recites: wherein the singly isolated stem cell rosette is individually separated and not harvested in bulk (Claim 1, lines 3-6). Applicant asserts that support for the amendments to claim 1 “can be found throughout the specification, for example, at paragraphs [218] and [219] and Figure 8D” (Remarks, page 6). Contrary to Applicants assertion there are no specification paragraphs [218] and [219] (see spec. filed 2/5/2024). If Applicant is referring to the published application, then it is still unclear how the amendments are supported since the paragraphs [218] and [219] refer to cited references that are directed to models of dementia. It is noted that the specification ends on paragraph 189 (see spec. filed 2/5/2024 page 59). Contrary to Applicants assertion figure 8D is a zoomed in microscopic image of a rosette but does not explicitly state that this rosette was a singly isolated stem cell rosette is individually separated and not harvested in bulk (see spec. para. 24, page 7-8). The closest recitation of “singly isolating a stem cell rosette” or “not harvested in bulk” in the drawings is where figure 8 recites “identifying rosettes of neural stem cells (NSC) and manual dissection of the rosettes” (see e.g. figure 8B). Further, the closest recitation in the specification is “rosettes visually isolated under dissecting scope, manually dissected out using an 18 gauge needle, and plated into growth factor reduced Matrigel coated 6-well plate” (Spec. para. 149, page 43). Although this supports a single rosette being isolated, this does not support wherein the singly isolated stem cell rosette is individually separated and not harvested in bulk. Therefore, the specification of the originally filed application fails to support the newly added limitation of “wherein the singly isolated stem cell rosette is individually separated and not harvested in bulk” (Claim 1, lines 3-6).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 10, 12-13, 15-16, and 18-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 step c) recites the limitation "(a)" in line 10 of claim limitation step “c)”, however there is only step “a)” recited in the claim. Thus, there is insufficient antecedent basis for this limitation of “(a)” in the claim. Further, it is unclear what “(a)” is referring to in the claim.
In the interest of compact prosecution, the “(a)” will be interpreted as a typo because the claim 1c) further recites the amendment “(s)” in line 13 of the claim. Also, the claim does not recite “step” before “rosette(a)” but instead recites “step b)” after the word “rosette”. Therefore, the claim will be interpreted as “c) isolating the individual cells from the rosette(s) of step b)”. Thus, the dependent claims are rejected because they depend on independent claim 1 and do not remedy the issue. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 10, 12-13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Elkabetz, et al. (Genes & development 22.2: 152-165; cited IDS 4/21/2022; published 2008; prior art of record), in view of Zhang, et al. (Nature biotechnology 19.12: 1129-1133; published 2001; prior art of record), Terskikh and Bajpai (WO 2006/086746 A2, published 2006, hereinafter as “Terskikh”, prior art of record), Thomson, et al. (Science 282.5391: 1145-1147, published 1998, prior art of record), Cencora (FirstWord Pharma., published 2015, prior art of record), , Pistollato et al., (Journal of visualized experiments: JoVE 124: 55702; published 2017, prior art of record), Lazzari, et al. (Stem Cells 24.11: 2514-2521; published 2006, prior art of record), and StemCell Technologies (Technical Manual, STEMCELL Technologies Canada Inc., published 2014, prior art of record).
This rejection is a new rejection necessitated by amendments to the claims. However, since it is substantially similar to a rejection set forth in the non-final Official action mailed on Nov.17, 2025, therefore any aspect of applicant's response considered relevant to the rejection as newly set forth is responded to following the statement of rejection.
Regarding claim 1, Elkabetz teaches a method of preparing neural rosette cells (i.e. R-NSCs) as a novel human neuronal stem cell (hNSC) from a human embryonic stem cell (hESC)(see e.g. abstract, page 162). Elkabetz discloses an EB-based approach where rosettes were harvested mechanically (i.e. isolating at least one stem cell rosette) from a population of embryoid bodies (EB) cultured in differentiation medium (see e.g. page 162). Elkabetz discloses replating rosettes that were mechanically harvested, corresponding to the claim limitation of step b) culturing an individual cell isolated from the rosette of step a) for an amount of time and under conditions that provide for the generation of at least one rosette from the individual cell (see e.g. page 162). Elkabetz discloses after 7-9 days the replated rosettes (i.e. P1 R-NSC) were dissociated (i.e. isolated), resuspended, and replated for R-NSC maintenance (i.e. cultured), corresponding to the claim limitation of step c) isolating the individual cells from the rosette of step b) and the claim limitation of step d) culturing the individual cells isolated from step c) in N2 media to provide for the generation of confluent population of hNSCs (see e.g. page 162). Further, Elkabetz discloses clonal density assays where R-NSCs were dissociated to single cell density (i.e. individual cells) followed by replating and expansion for an additional 8-21 days, corresponding to the claim limitation of step e) wherein steps b) through c) are performed for 2 times (see e.g. page 162, supplemental material page 1).
Elkabetz dose not explicitly state isolating stem cell rosettes or culturing individual cells from rosettes (i.e. isolated stem cell rosette is individually separated).
However, the prior art of Zhang discloses rosettes cells can be isolated by adhesion and differential enzymatic treatment (see e.g. page 1129-1130, fig. 1) and the prior art of Terskikh discloses culturing single (i.e. individual cells) from rosettes, where scattered rosettes can be isolated through differential enzymatic digestion, and collecting rosettes triturated into single cells (see e.g. para. 7, 15, 23, 32-33 and 248, fig. 1, 7, and 9). Furthermore, the prior art of Thomson suggests that culturing a single cell population (i.e. individual cells) is need in order to “rule out the possibilities of variation in developmental potential among the undifferentiated cells in spite of homogenous appearance”(see pages 1146).
Accordingly, it would have been obvious for a person of ordinary skill in the art to combine the method of preparing human neuronal stem cells (hNSCs) as taught by Elkabetz et al. with the step of isolating rosettes and culturing individual cells from rosettes as taught by Zhang and Terskikh because Zhang suggest that there are contaminating cells (see page 1129, fig. 1). Further, Terskikh discloses a person of ordinary skill in the art would want to generate a pure and large quantities of neural precursors for drug screening and treatments of neurological disorders (see e.g. abstract, para 248). Additionally, the prior art of Thomson discloses that when cell lines are not cloned from a single cell that there are possibilities of variation in developmental potential in spite of homologous appearances (page 1146), suggesting that a person of ordinary skill in the art would want to culture individual cells from rosettes in order to obtain a pure population as taught by Terskikh (see e.g. abstract, para 248). Furthermore, a person of ordinary skill in the art would have a reasonable expectation of success because Elkabetz discloses that the methods of culturing individual cells were already known in the prior art (e.g. dissociate single cell density followed by replating for clonal density assays)(see e.g. page 162, supplemental material page 1). Therefore, it would have been obvious for a person of ordinary skill in the art to combine the method of preparing human neuronal stem cells (hNSCs) as taught by Elkabetz et al. with culturing individual cells from the rosettes as taught by Terskikh and suggested by Thomson, as discussed above.
Regarding claim 1, Elkabetz et al. is silent regarding generating the embryoid bodies from ESI-017 human embryonic cell line.
However, the prior art of Cencora discloses that pluripotent cell expansion and studies performed well with the human embryonic stem (hES) cell line, ESI-017, and reliably formed robust neuronal stem cells (NSCs)(see e.g. page 2).
Accordingly, it would have been obvious for a person of ordinary skill in the art to modify the method of preparing human neuronal stem cells (hNSCs) as taught by Elkabetz et al. with the ESI-017 hES as suggested by Cencora because Cencora discloses that the cell line reliably formed robust NSCs (see e.g. page 2). Thus, providing a person of ordinary skill in the art a reasonable expectation of success. Furthermore, Cencora discloses that the ESI-017, hES, cells are an inexpensive research-grade cells and good-manufacturing complain clinical grade cells for translation into clinical applications (see e.g. page 2). Therefore, it would have been obvious for a person of ordinary skill in the art to modify the method of preparing human neuronal stem cells (hNSCs) as taught by Elkabetz et al. with the ESI-017 human embryonic stem cell line (hES) as suggested by Cencora (see e.g. page 2).
Regarding claim 1, Elkabetz dose not explicitly disclose trypsin in ethylenediaminetetraacetic acid (EDTA) and a defined trypsin inhibitor (DTI).
However, Elkabetz references the prior art of Zhang et al. (2001) for the embryoid body (EB) based-approach (see e.g. page 162) and Zhang discloses the dissociation with trypsin 0.025% in 0.1% EDTA (see e.g. isolation and culture of neuronal precursor cells). Additionally, the prior art of Pistollato teaches the addition of 1.5 mL of 0.05% trypsin in EDTA and the addition of 1.5 mL of trypsin inhibitor (i.e. DTI)(see e.g. page 4 and see Materials list page 1), and the prior art of Lazzari teaches the disaggregation of neural rosettes with 0.05% trypsin-EDTA (see e.g. page 2515).
Per M.P.E.P. § 2144.05(II)(A), “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Thus, the same logic extends to varying the concentration and amount of EDTA and DTI between steps, since the general conditions of claim 1 are disclosed in the prior art as discussed above and the limitation of concentration and amount are considered a variable to be optimized under routine conditions.
Additionally, the following is noted from the MPEP: MPEP 2144.05: “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” MPEP 2144.05(I) teaches “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).” In the instant case, the specification does not have a special definition for the term “about”. Additionally, neither the specification nor Applicant have provided evidence of that the claimed amount and percentage of EDTA and DTI is critical, thus the teachings of Zhang, Pistollato, and Lazzari renders the claimed amount and percentage of EDTA and DTI as obvious.
Accordingly, it would have been obvious for a person of ordinary skill in the art to modify the culture method of Elkabetz with the trypsin in ethylenediaminetetraacetic acid (EDTA) and the defined trypsin inhibitor (DTI) as taught by Zhang and Pistollato because, a person of ordinary skill would have known to optimize the amount of trypsin in EDTA and DTI that is appropriate for obtaining the maximum amount of isolated cells from a rosette. A person of ordinary skill in the art would have had a reasonable expectation of success because both Elkabetz and Pistollato teach maintenance of hNSC cells and Pistollato teaches that the NSCs derived from rosettes can be expanded and maintained (see e.g. figure 1). Therefore, a person of ordinary skill in the art would have considered altering the amount and percentage of EDTA and DTI between carrying out step b) and d) to comprise about 0.5 to about 1mL of trypsin in EDTA, and about 0.5ml to about 1mL of DTI to have been prima facie obvious at the time of filing.
Regarding claim 1, Elkabetz discloses 80% confluency of P1 R-NSC cultures (i.e. cells cultured in steps c-d) (see e.g. pg 162).
Elkabetz dose not explicitly state about 85% confluency.
However, the prior art of StemCell Technologies (Technical Manual - StemdiffTM Neural System), which teaches 80-90% confluency obtained for neural progenitor cells (i.e. rosette cells)(see e.g. page 21, Fig. 4).
Accordingly, it would have been obvious for a person of ordinary skill in the art modify the methods of Elkabetz with culturing and passaging at about 85% confluency as taught by StemCell Technologies because StemCell Technologies teaches an optimal range of 80-90% confluency for neural progenitor cells (i.e. rosette cells)(see e.g. page 21, Fig. 4) was known in the art. Further, the 80% confluency as taught by Elkabetz reads on about 85% confluency (see MPEP 2144.05(I) teaches “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, Applicant has not indicated a critical percentage of about 85% confluency. Further, a person of ordinary skill in the art would have produce an about 85% confluent culture because it would have been desirable obtain an optimal amount of cells. Furthermore, the fact that Elkabetz mentions confluency indicates that this is a necessary attribute for their hNSC cultures.
Regarding claim 2, as discussed above, Elkabetz et al. teaches wherein at least one of steps a) through d) is performed mechanically (page 162, col. 2, para. 4).
Regarding claim 10, Elkabetz et al. does not explicitly state culturing the embryoid body (EB) of a) on an ultra-low attachment surface in EB medium.
However, the prior art of Pistollato teaches culturing embryoid body (EB) on ultra-low attachment surface (i.e. standard matrix-coated dishes) in EB medium (see e.g. page 3, fig. 1).
Accordingly, it would have been obvious for a person of ordinary skill in the art to modify the method of preparing human neuronal stem cells (hNSCs) as taught by Elkabetz et al. with the ultra-low attachment surface as taught by Pistollato because Pistollato discloses further generating rosettes and expanding them and staining them for specific markers (see e.g. page 3, fig. 1). Furthermore, both Elkabetz et al. and Pistollato teach generating the embryoid bodies from human embryonic stem cell (hESC) lines. Thus, providing a person of ordinary skill in the art with a reasonable expectation of success. Furthermore, an artisan of ordinary skill in the art (i.e. human embryonic stem cell methods) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Regarding claim 12-13, Elkabetz et al. teaches substituting N2 medium for the EB medium after the EBs have been cultured for an effective amount of time to produce at least one EB further to step a) on an ornithine/laminin coated surface (page 162, col. 2, para. 4).
Regarding claim 15, as discussed above, Elkabetz et al. discloses further culturing (i.e. P3 and P4) and a confluent population of hNSCs (i.e. 80% confluency) with an amount of N2 medium (Figures 5-6).
Elkabetz does not explicitly state an effective amount of N2 medium.
However, the prior art of Pistollato teaches culturing rosette-derived NSCs in the presence of NI medium (i.e. N2 medium)(see Materials table) with refreshing the medium every other day until the cells reach confluency (see e.g. page 4).
Accordingly, it would have been obvious for a person of ordinary skill in the art to further culture the confluent population of hNSCs with an effective amount of N2 medium as taught by Elkabetz and Pistollato because Elkabetz discloses methods for multiple passages where rosette NSC (R-NSC) cultures were maintained with candidate growth factor regimens (see e.g. page 162 and Fig. 6) and Pistollato discloses that the NSCs derived from rosette fragments can be expanded and maintained (see e.g. page 4, fig. 1). Thus, a person of ordinary skill in the art would have had a reasonable expectation of success. Furthermore, an artisan of ordinary skill in the art (i.e. human embryonic stem cell methods) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Regarding claim 16, Elkabetz et al. discloses that the “R-NSCs indeed express markers of radial glia, and these markers are maintained after FGF2/EGF expansion (NSCFGF2/EGF stage)(page 162, col. 1, para. 1; page 157, col. 2, para. 1; page 158; Fig. 5), corresponding to expanding the population of NSC cells.
Hence, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
Response to Traversal:
Applicant traverses the obviousness rejection by arguing that the prior art does not teach the amendments to claim 1 (i.e. Claim 1 has been amended to recite “a) singly isolating a stem cell rosette from a population of embryoid bodies (EB) generated from human embryonic stem cell line ESI-017 cultured in differentiation medium, wherein the singly isolated stem cell rosette is individually separated and not harvested in bulk” (see claim 1, lines 3-6).)(Remarks, page 8). Applicant asserts that the claimed method is performed by identifying and individually excising a single rosette from an embryoid body culture using microscopic visualization (Remarks, page 8).
Applicant’s arguments with respect to the previous rejection has been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Elkabetz, et al. (Genes & development 22.2: 152-165; cited IDS 4/21/2022; published 2008; prior art of record), in view of Zhang, et al. (Nature biotechnology 19.12: 1129-1133; published 2001; prior art of record), Terskikh and Bajpai (WO 2006/086746 A2, published 2006, hereinafter as “Terskikh”, prior art of record), Thomson, et al. (Science 282.5391: 1145-1147, published 1998, prior art of record), Cencora (FirstWord Pharma., published 2015, prior art of record), , Pistollato et al., (Journal of visualized experiments: JoVE 124: 55702; published 2017, prior art of record), Lazzari, et al. (Stem Cells 24.11: 2514-2521; published 2006, prior art of record), and StemCell Technologies (Technical Manual, STEMCELL Technologies Canada Inc., published 2014, prior art of record) due to applicants amendments of step a of singly isolating a stem cell rosette.
As stated supra, the closest support for the amendment in the specification is that the “rosettes visually isolated under dissecting scope, manually dissected out using an 18 gauge needle, and plated into growth factor reduced Matrigel coated 6-well plate” (Spec. para. 149, page 43), which does not explicitly state that in each well there was a single stem cell rosette, and that the singly isolated stem cell rosette is not harvested in bulk (Claim 1, lines 3-6). Therefore, the new matter 112 rejection is applied above.
In response to Applicants argument that the prior art does not teach isolating a single stem cell rosette,[AltContent: textbox ([img-media_image1.png]
See Terskikh Fig. 9b )] as discussed above, the prior art of Zhang is cited for disclosing teaching isolating rosette cells and the prior art of Terskikh is cited for disclosing individual cells from scattered (i.e. isolated) rosettes (see e.g. fig. 9b).
Applicant asserts that Elkabetz does not teach or suggest selecting a single rosette from among EB (Remarks, page 9). Applicant asserts that Terskikh only describes forming and handling neurospheres-like aggregates and monolayers and no single rosettes (para. 227). Applicant asserts that Thomson does not disclose embryoid bodies or rosettes (Remarks, page 9-10).
Applicant arguments are acknowledged, have been fully considered, and have been deemed not persuasive.
Applicant is directed to pages 12-13 of KSR v Teleflex (550 US 398 2007) “ … the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one(emphasis added). If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”
In the instant case, as stated supra, the prior art of Zhang is cited for disclosing that a person of skill in the art would be able to isolate individual stem cell rosettes (see e.g. page 1129) and the prior art of Terskikh discloses culturing single (i.e. individual cells) from rosettes, where scattered rosettes can be isolated through differential enzymatic digestion, and collecting rosettes triturated into single cells (see e.g. para. 7, 15, 23, 32-33 and 248, fig. 1, 7, and 9). Accordingly, it would have been obvious for a person of ordinary skill in the art to combine the method of preparing human neuronal stem cells (hNSCs) as taught by Elkabetz et al. with the step of isolating rosettes and culturing individual cells from rosettes as taught by Zhang and Terskikh because Terskikh discloses that a person of ordinary skill in the art would want to generate pure and large quantities of neural precursors for drug screening and treatments of neurological disorders (see e.g. abstract, para 248). Clearly in the instant case the isolating stem cell rosettes and culturing individual cells from the stem cell rosettes would have been obvious at the time the invention was made.
Additionally, it is noted that the prior art of Thomson does not disclose embryoid bodies or rosettes. However, the prior art of Elkabetz cites the prior art of Zhang (see e.g. page 165), and the prior art of Zhang cites the prior art of Thomson (see e.g. page 1133) showing that there is a scientific nexus where a person of ordinary skill in the art (i.e. preparing human neuronal stem cells (hNSCs)) would have viewed Thomson as evidence that when cell lines are not cloned from a single cell that there are possibilities of variation in developmental potential in spite of homologous appearances (see Thomson page 1146), suggesting that a person of ordinary skill in the art would want to culture individual cells from rosettes in order to obtain a pure population as taught by Terskikh (see e.g. abstract, para 248).
Applicant asserts that none of the other cited references (i.e. Cencora, Zhang, Brivanlous and Behrends) cure the deficiency of a single EB-derived rosette as a starting point for hNSC preparation.
Applicant arguments are acknowledged, have been fully considered, and have been deemed not persuasive.
As stated supra, the prior art of Zhang discloses that neural tube-like rosettes can be isolated by differential enzymatic treatment and adhesion (see e.g. page 1129). Further, Zhang discloses removing contaminating single cells rosettes (see e.g. page 1129) and isolating stem cell rosettes for immunocytochemical analysis of isolated rosette cells (see e.g. page 1129-1130, fig. 1). Accordingly, a person of ordinary skill in the art to combine the method of preparing human neuronal stem cells (hNSCs) as taught by Elkabetz et al. with culturing individual cells from the rosettes as taught by Zhang and Terskikh because a person of ordinary skill in the art would want to obtain a pure population of human neuronal stem cells from the human embryonic stem cells as taught by Terskikh (see e.g. abstract, para 248).
Applicant argues unexpected results of having the “capability” of deriving a clinically relevant stable and functional hNSC product by founding the line from an individually isolated stem cell rosette” (Remarks, page 10). Further, Applicant argues that the single-rosette-derived ESI-017 hNSCs survived long-term after transplantation into R6/2 and Q140 HD mice, differentiate in vivo into neuron-restricted progenitors and astrocytes and become electrophysiologically active. (Remarks, page 10).
Applicant arguments are acknowledged, have been fully considered, and have been deemed not persuasive.
In response to the argument of unexpected results that the prior art is not teaching the “capability” of a method for generating and expanding a defined hNSC population from a single stem cell rosette that yields reproducible, disease-modifying effects in stringent genetic models of neurodegeneration is not evidence that the results are unexpected. It is noted that the argument of “capability” alone would de disposable enough to find Applicants arguments unpersuasive.
In submitting evidence asserted to establish unobvious results, there is a burden on an applicant to indicate how the examples asserted to represent the claimed invention are considered to relate to the examples intended to represent the prior art and, particularly, to indicate how those latter examples do represent the closest prior art. See In re Borkowski, 595 F.2d 713, 184 USPQ 29 (CCPA 1974); In re Goodman, 339 F.2d 228, 144 USPQ 30 (CCPA 1964). It should also be established that the differences in the results are in fact unexpected and unobvious and of both statistical and practical significance. In re Merck, 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986); In re Longi, 759 F. 2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Klosak, 455 F2d 1077, 173 UAPQ 14 (CCPA 1972); In re D’Ancicco, 429 F.2d 1244, 169 USPQ 303 (CCPA 1971 ). Ex parte Gelles, 22 USPQ2d 1318 (BPAI 1992).
In the instant case, it is noted that Applicants response of unexpected results is directed to the intended use of the invention (i.e. being clinically relevant, stable and functional)(See Remarks, page 10) and not comparing the claims to the closest prior art. It is noted that Applicant’s unexpected results are from the “single-rosette-derived ESI-017 hNSCs, which survived long-term after transplantation into R6/2 and Q 140 HD mice, differentiate in vivo into neuron-restricted progenitors and astrocytes and become electrophysiologically active and receive synaptic input. See id. FIGS. ID, 2A-2F, 3A-3D, and 5G.” (Remarks, page 10). Contrary to Applicants assertion this result is not being compared to the closes prior art and does not show how the invention is unexpected.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., express neural stem cell markers (CD24, SOX1, SOX2, Nestin, Pax6) while lacking pluripotency marker SSEA4, and survived long-term after transplantation into R6/2 and Q 140 HD mice) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In the instant case, the claims broadly recite culturing human neuronal stem cells from the human embryonic stem cells like (ESI-017). As discussed above, the prior art of Elkabetz discloses generation of confluent population of hNSCs (see e.g. page 162) that were dissociated to single cell density (i.e. individual cells) followed by replating and expansion for an additional 8-21 days, corresponding to the claim limitation of step e) wherein steps b) through c) are performed for 2 times (see e.g. page 162, supplemental material page 1). Further, the prior art of Elkabetz cites the prior art of Zhang (see e.g. page 165), and the prior art of Zhang cites the prior art of Thomson (see e.g. page 1133) showing that there is a scientific nexus where a person of ordinary skill in the art (i.e. preparing human neuronal stem cells (hNSCs)) would have viewed Thomson as evidence that when cell lines are not cloned from a single cell that there are possibilities of variation in developmental potential in spite of homologous appearances (see Thomson page 1146), suggesting that a person of ordinary skill in the art would want to culture individual cells from rosettes in order to obtain a pure population as taught by Terskikh (see e.g. abstract, para 248). Moreover, an artisan of ordinary skill in the art of culturing human embryonic stem cells (hESC) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007). In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Claims 10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Elkabetz, et al. (Genes & development 22.2: 152-165; cited IDS 4/21/2022; published 2008; prior art of record), in view of Zhang, et al. (Nature biotechnology 19.12: 1129-1133; published 2001; prior art of record), Terskikh and Bajpai (WO 2006/086746 A2, published 2006, hereinafter as “Terskikh”, prior art of record), Thomson, et al. (Science 282.5391: 1145-1147, published 1998, prior art of record), Cencora (FirstWord Pharma., published 2015, prior art of record), , Pistollato et al., (Journal of visualized experiments: JoVE 124: 55702; published 2017, prior art of record), Lazzari, et al. (Stem Cells 24.11: 2514-2521; published 2006, prior art of record), and StemCell Technologies (Technical Manual, STEMCELL Technologies Canada Inc., published 2014, prior art of record), as applied to claims 1-2, 12-13 and 15-16 above, and further in view of Brivanlou et al. (WO 2017/147536 A1, cited IDS 12/4/2020; published 2017; prior art of record).
This rejection is a new rejection necessitated by amendments to the claims. However, since it is substantially similar to a rejection set forth in the non-final Official action mailed on Nov.17, 2025, therefore any aspect of applicant's response considered relevant to the rejection as newly set forth is responded to following the statement of rejection.
The teachings of Elkabetz et al. apply here as indicated above.
However, Elkabetz et al., is silent regarding genetically modifying the cells of the confluent population of hNSCs and wherein the cell is genetically modified by CRISPR.
Regarding claim 18, the prior art of Brivanlou et al. discloses wherein the cell is genetically modified by insertion of a transgene, or by modification by CRISPR (Fig. 1, page 30, para 1; Fig. 15-16, page 34, paras. 1-2; Example 10, pages 104-110). Further, Brivanlou et al. teaches where hESCs were passaged as single cells using accutase and then co-transfected with the pX335-HTT-sgRNAI and HTT-Q150 homology donor plasmids (page 92, lns. 20-21), and where CRISPR/Cas9 gene editing technology was used to introduce the Huntington’s disease (HD) mutation into the endogenous HTT locus (page 53, lns. 1-2).
Accordingly, it would have been obvious for a person of ordinary skill in the art to modify the method of preparing human neuronal stem cells (hNSCs)as taught by Elkabetz et al. with CRISPR/Cas9 mediated gene editing as taught by Brivanlou et al. because Brivanlou et al. discloses that CRISPR cell technology provides for a genetically modified neuronal stem cell that are useful cells models for the study of neurodegenerative diseases (see e.g. abstract, pages 1-2). A person of ordinary skill in the art would have a reasonable expectation of success because both Elkabetz et al. and Brivanlou et al. teach methods of using human embryonic stem cells (hESC) to obtain human neuronal stem cells, as discussed above. Further, the prior art of Brivanlou et al. teaches that an hESC model would improve the study of Huntington’s disease (HD) as well a drug discovery applications. (see e.g. Example 6, page 83). Furthermore, an artisan of ordinary skill in the art (i.e. human embryonic stem cell methods) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Hence, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
Response to Traversal:
Applicant traverses that none of the other cited references (i.e. Cencora, Zhang, Brivanlous and Behrends) cure the deficiency of a single EB-derived rosette as a starting point for hNSC preparation (Remarks, page 10).
Applicant’s arguments with respect to the previous rejection has been fully considered and are not persuasive. Applicant arguments to the other cited prior art has been addressed above.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Elkabetz, et al. (Genes & development 22.2: 152-165; cited IDS 4/21/2022; published 2008; prior art of record), in view of Zhang, et al. (Nature biotechnology 19.12: 1129-1133; published 2001; prior art of record), Terskikh and Bajpai (WO 2006/086746 A2, published 2006, hereinafter as “Terskikh”, prior art of record), Thomson, et al. (Science 282.5391: 1145-1147, published 1998, prior art of record), Cencora (FirstWord Pharma., published 2015, prior art of record), , Pistollato et al., (Journal of visualized experiments: JoVE 124: 55702; published 2017, prior art of record), Lazzari, et al. (Stem Cells 24.11: 2514-2521; published 2006, prior art of record), and StemCell Technologies (Technical Manual, STEMCELL Technologies Canada Inc., published 2014, prior art of record), and Brivanlou et al. (WO 2017/147536 A1, cited IDS 12/4/2020; published 2017; prior art of record), as applied to claims 1-2, 10, 12-13, 15-16 and 18 above, and further in view of and Behrends, et al. (Molecular cell 23.6: 887-897, cited IDS 12/4/2020; published 2006, prior art of record).
This rejection is a new rejection necessitated by amendments to the claims. However, since it is substantially similar to a rejection set forth in the non-final Official action mailed on Nov.17, 2025, therefore any aspect of applicant's response considered relevant to the rejection as newly set forth is responded to following the statement of rejection.
The teachings of Elkabetz et al. apply here as indicated above.
However, Elkabetz et al. are silent regarding the transgene is ApiCCT1.
Regarding claim 19, the prior art of Behrends et al. teaches in vitro and in vivo experiments in order to explore the interaction of TRiC with polyQ-expanded fragments of huntingtin (Htt) the disease protein in Huntington’s disease (HD) (page 887, Col. 2, Para. 3), and teaches wherein a transgene is ApiCCT1, a fragment thereof, or an equivalent of each thereof, and optionally wherein the transgene is overexpressed in a cell (where TCP1 comprising ApiCCT1) was cloned under a galactose-inducible promoter into pRS424 (page 896, col. 1, Para. 2); where expression of Htt96Q, which markedly aggravated the growth defect of tcp1-2 cells, was rescued by expression of wild-type TCP1 (page 891, col. 2, Para. 1); where Htt constructs were co-expressed together with either empty vector or with TCP1 under its endogenous promoter (page 892, Fig. 3f); where overexpression of TRiC (TCP1 comprising ApiCCT1) efficiently suppressed the growth defect caused by Htt103Q-GFP (Pg. 892, Col. 2, Para. 1, Fig. 5a).
Accordingly, it would have been obvious to one of ordinary skill in the art, at the time of the claimed invention, to modify the method of Elkabetz et al. and Brivanlou et al. to further comprise the ApiCCT1 transgene and overexpression of Behrends because Behrends discloses that the transgene for a cytosolic chaperonin TRiC/CCT can interfere with the toxic aggregation pathway of polyQ expansion proteins which are the hallmark of Huntington’s disease ( see e.g. page 894, col. 1, Para. 3). A person of ordinary skill in the art would have a reasonable expectation of success of modifying the method of preparing human neuronal stem cells (hNSCs)as taught by Elkabetz et al. with CRISPR/Cas9 mediated gene editing as taught by Brivanlou et al. and the ApiCCT1 transgene and overexpression of Behrends because Brivanlou et al. discloses that CRISPR cell technology provides for a genetically modified neuronal stem cell that are useful cells models for the study of neurodegenerative diseases (see e.g. abstract, pages 1-2). A person of ordinary skill in the art would have a reasonable expectation of success because both Elkabetz, Brivanlou, and Behrends teach methods of using human embryonic stem cells (hESC) to obtain human neuronal stem cells to model neurodegenerative diseases, as discussed above. Further, the prior art of Brivanlou et al. teaches that an hESC model would improve the study of Huntington’s disease (HD) as well a drug discovery applications. (see e.g. Example 6, page 83). Thus, a person of ordinary skill in the art would know this as a valuable for a cell model of this disease. Furthermore, an artisan of ordinary skill in the art (i.e. human embryonic stem cell methods) has good reason to pursue the known options within his or her technical grasp (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007).
Hence, the claimed invention as a whole was prima facie obvious in the absence of evidence to the contrary.
Response to Traversal:
Applicant traverses that none of the other cited references (i.e. Cencora, Zhang, Brivanlous and Behrends) cure the deficiency of a single EB-derived rosette as a starting point for hNSC preparation (Remarks, page 10).
Applicant’s arguments with respect to the previous rejection has been fully considered and are not persuasive. Applicant arguments to the other cited prior art has been addressed above.
Conclusion
No claim is allowed.
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.
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JOSEPHINE GONZALES
Examiner
Art Unit 1631
/JOSEPHINE GONZALES/ Examiner, Art Unit 1631
/JAMES D SCHULTZ/Supervisory Patent Examiner, Art Unit 1631