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 .
Claims 72, 74-104, and 106-110 are pending. Claims 82, 93-95, 98-104 are withdrawn from consideration as being directed to nonelected inventions or species.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 January 2025 has been entered.
Status of the Application
Applicant’s response and amendment filed 16 January 2025 are acknowledged and entered.
Applicant has amended Claims 72, 78, 89-90, 98, 102, 106, and 110.
Response to Amendment
The 112(a) written description rejection was withdrawn in response to the After Final amendments filed 28 October 2024.
The 112(a) enablement rejection is modified but not withdrawn.
The 103 rejection is modified but not withdrawn.
The NSDP rejections are not withdrawn.
Claims 72, 74-81, 83-92, 96-97, and 106-110 are examined.
Arguments applicable to newly applied rejections to amended or newly presented claims are addressed below. Arguments that are no longer relevant are not addressed.
Rejections not reiterated here are withdrawn.
Information Disclosure Statement
The IDS has been considered.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show Fig. 4H as described (¶163) in the specification. Fig. 4H is not in the Drawings.
Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Applicant has indicated on the record (see Remarks p. 10 ¶1-3) that the definition provided in the Spec. for (¶55) a “rejuvenated cell”—a definition that requires transcriptomic data—is not what they intend when using the words “rejuvenate” or “rejuvenation”. The remarks indicate that those words should be understood according to their plain and general meaning including to make young or youthful again or to give new vigor to.
Claims 72, 74-81, 83-89, and 106-110 recite “a method to treat”, “a method for treating”, or “a method of treating”. The term “treat” in those claims is interpreted to mean the cell is being subjected to a substance/condition. The term “treat” in those claims is not interpreted to mean treatment of any kind of disease or condition.
The independent claims recite a single method step of transfecting cells. The result of the transfecting results in the claimed outcomes or negative outcomes:
wherein the mRNA is not integrated intrachromosomally or extrachromosomally into the genome of the cell,
whereby said transfecting achieves expression of the one or more reprogramming factors in the somatic cell to obtain a cell [or] cells with retention of cellular identity and to rejuvenate the cell [or] cells,
wherein said expression wherein said expression of the one or more reprogramming factors does not dedifferentiate the somatic cell into an iPSC,
whereby said transfecting generates a cell that retains its cellular differentiation and that expresses the one or more reprogramming factors to rejuvenate the cell,
wherein the mRNA is
(i) not integrated intrachromosomally or extrachromosomally and
(ii) expressed to expose the human somatic cell to the one or more reprogramming factors, thereby treating the cell with the one or more reprogramming factors,
where in the cell retains its differentiated cell-type,
thereby treating the cell with the one or more reprogramming factors without de-differentiation into a pluripotent stem cell,
whereby said transfecting achieves expression of the one or more reprogramming factors in the somatic cell to obtain a cell with retention of cellular identity, and
wherein said expression of the one or more reprogramming factors does not dedifferentiate the somatic cell into an induced pluripotent stem cell.
All of those outcomes are interpreted as outcomes of the single method step.
Claim Objections
Claims 92 and 108 are objected to because of the following informalities:
Claim 92 recites …hair thinking… but should recite hair thinning.
Claim 96 recites …differentiated cells while retaining their identity but should recite identities (plural) or clarify that the method is for only cells of a single type.
Claim 108 recites …where_in… but should recite wherein.
Appropriate correction is required.
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 90-92 and 96-97 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for:
A method of treating an age-related disease or condition in a subject, comprising:
transfecting differentiated cells associated with the age-related disease or condition in the subject with an mRNA encoding the reprogramming factors Oct4, Sox2, Klf4, and cMyc, and optionally Lin28 or NANOG; wherein the mRNA is not integrated intrachromosomally or extrachromosomally into the genome of the subject,
whereby said transfecting achieves expression of the one or more reprogramming factors in the differentiated cells (1) to obtain cells with retention of cellular differentiation and (2) to rejuvenate the cells, wherein said expression of the one or more reprogramming factors does not dedifferentiate the subject’s differentiated cell into an induced pluripotent stem cell,
wherein the age-related disease or condition is selected from the group consisting of osteoarthritis and sarcopenia,
wherein the differentiated cells are selected from the group consisting of chondrocytes that express the marker COL2A1 and skeletal muscle cells that express the marker MyoD,
wherein retention of cellular differentiation is indicated by the chondrocyte retaining expression of COL2A1 or the skeletal muscle cell retaining expression of MyoD, and
wherein rejuvenation is indicated by at least one of the following outcomes:
chondrocytes: a significant reduction in the pro-inflammatory cytokines MIP1A, IL6, IFNα, and MCP3; significantly reduced intracellular mRNA levels of iNOS2; significantly increased cell proliferation, significantly increased ATP production, significantly decreased oxidative stress as revealed by reduced mitochondrial ROS, and significantly elevated levels of SOD2 RNA or
skeletal muscle cells: myofibers comprising significantly increased cross-sectional area, myofibers comprising significantly increased size, and muscles comprising significantly increased tetanic forces,
and:
A method of treating an age-related disease or condition in vitro, comprising:
transfecting differentiated vertebrate cells having the age-related disease or condition with an mRNA encoding the reprogramming factors Oct4, Sox2, Klf4, cMyc, and optionally Lin28 or NANOG, wherein the mRNA is not integrated intrachromosomally or extrachromosomally into the genome of the differentiated vertebrate cell,
whereby said transfecting achieves expression of the reprogramming factors in the differentiated vertebrate cells (1) to obtain cells with retention of cellular differentiation and (2) to rejuvenate the cells, wherein said expression of the one or more reprogramming factors does not dedifferentiate the differentiated vertebrate cell into an induced pluripotent stem cell
does not reasonably provide enablement for the full scope of the claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims. This is a scope of enablement rejection.
The factors to be considered in determining whether a disclosure would require undue experimentation include: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the specification; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 8 USPQ2d, 1400 (CAFC 1988) and MPEP 2164.01.
The breadth of the claims and the nature of the invention: With respect to claim breadth, the standard under 35 U.S.C. §112(a) entails determining what the claims recite and what the claims mean as a whole.
Methods of Claims 90-92 and 96-97 are methods of treating an age-related disease or condition in a subject, comprising: transfecting differentiated cells associated with the age-related disease or condition in the subject with an mRNA encoding one or more reprogramming factors selected from the group consisting of Oct4, Sox2, Klf4, cMyc, Lin28, and NANOG, wherein the mRNA is not integrated intrachromosomally or extrachromosomally into the genome of the subject, whereby said transfecting achieves expression of the one or more reprogramming factors in the differentiated cells to obtain cells with retention of cellular differentiation and to rejuvenate the cells, wherein said expression of the one or more reprogramming factors does not dedifferentiate the somatic cell into an induced pluripotent stem cell. Claims 91-92 recite specific genera and subgenera of age-related diseases or conditions and the sub-subgenus of any dermatologic diseases or conditions. Claims 96-97 recite that the method entails transfecting the differentiated cell with any one or more reprogramming factor(s) selected from the list of Oct4, Sox2, Klf4, cMyc, Lin28, and NANOG for “a period of time sufficient to rejuvenate the cells while retaining their identity”. Claim 97 recites technical aspects of the transfecting.
The Spec. discloses examples of “age-related disease[s] and condition[s]” at ¶73 and discloses that the term refers to any condition, disease, or disorder associated with aging. The claim therefore encompasses a huge genus of diseases and conditions.
The broadest reasonable interpretation (BRI) of the methods is that they encompass treating any disease or condition that is associated in any way with age by administering mRNA encoding any one or more reprogramming factor(s) OSKML or N and doing so will rejuvenate any differentiated cell who retains its cell identity—including all vertebrate and human cell types. The methods encompass treating any age-related disease or condition by rejuvenating cells via expression of a single transfected cellular reprogramming factor. The methods can be performed in a subject because the method recites treating an age-related disease or condition in a subject [emphasis added]. Note that some of the terms recited in the claims are indefinite (see §112[b]).
The nature of the invention is a method of treating any age-related disease or condition by transfecting the cell to any one or more reprogramming factor(s) selected from the group consisting of OSKML or N. A skilled artisan would not be able to use the methods as claimed with a reasonable expectation of success based on guidance provided in the specification and what is known in the art.
The state of the art and prior art, the level of one of ordinary skill, and the level of predictability in the art:
A review of the art shows that that at least the reprogramming factors OSKM are required for treatment of age-related diseases or conditions, there are reprogramming factors yet to be discovered, and there are age-related diseases or conditions that could not be treated with cell rejuvenation.
The art of Takahashi (and Yamanaka. 2006. Induction of Pluripotent Stem Cells from Mouse Embryonic and Adult Fibroblast Cultures by Defined Factor. Cell 126[4]:663-676; “Takahashi”; of record) teaches that (§Discussion ¶1) at least cMyc and Klf4 are essential for toward the reversion to pluripotency. However, the instant claims recite that rejuvenation is possible with as few as one reprogramming factor.
Furthermore, the art of Ocampo (of record) teaches they achieved rejuvenation of cells by exposing the cells to the factors OSKM, and their rejuvenation was able to produce the following benefits in mice suffering from premature ageing due to a mutation in the gene Lmna (LAKI):
Reduced spinal curvature,
Improvement in appearance of gastrointestinal tract,
Increased epidermal and dermal thickness
Decreased keratinization of the skin,
Macroscopic involution of spleen,
Lymphoid depletion of white pulp,
Decrease in tubular atrophy and interstitial volume in kidneys,
Rescue of age-associated loss of parietal cells and thinning of gastric epithelium in stomach,
Partial rescue of degeneration of vascular smooth muscle cells, as indicated by an increase in the number of nuclei in the medial layer of the aortic arch,
Rescue of progressive development of bradycardia,
Improved lifespan, and
Cell proliferation rate in stomach, kidney, and skin restored to WT levels;
the following benefits in WT mice suffering from ablated pancreatic injury:
Improved glucose tolerance, and
Increased size of pancreatic islets;
the following benefits in WT mice inflicted with CTX-induced muscle injury:
Significant improvement in regenerative capacity of muscle,
Increase in cross-sectional area of muscle fibers,
Reduction in the number of central nucleated fibers,
Increased number of Pax7-positive satellite cells in the muscle.
However, Ocampo did not provide any data that they achieved these outcomes by administering fewer than all four reprogramming factors OSKM.
Regarding the art of Roux (et al. 2022. Diverse partial reprogramming strategies restore youthful gene expression and transiently suppress cell identity. Cell Systems 13:574-587; cited by Applicant in Remarks 24 April 2024; “Roux”, of record) teaches (§Highlights) the OSKM reprogramming factors recited in the claims suppress cell identity and (Fig. 3) modulate gene expression. Notably, Roux did not test the effects of the other reprogramming factors, Lin28 and NANOG; Roux provides no data for their effects on gene expression.
Although Roux’s data show changes in gene expression and “restored youthful expression”, nothing in Roux relates the modulation of gene expression to any one age-related disease or condition, let alone any age-related disease or condition. Roux discloses that (§Discussion) their data show their reprogramming system can confer youthful expression. But notably, they do not correlate youthful expression with treating any age-related disease or condition. In fact, they are clear their data cannot substantiate an ability to treat (in their words, “confer youthful function”):
(§Discussion ¶2) Partial reprogramming restored youthful expression in many aging genes, but the degree of restoration was cell identity dependent, and some gene programs (e.g., PRC2 targets) appear resistant to restoration …. We cannot determine from our data which of these expression changes may confer youthful function or potentially have other, undesired effects. Decomposing the relevant effectors from other effects of reprogramming remains an important area for future research. [emphasis added.]
Therefore, without demonstration of evidence demonstrating otherwise, an artisan of ordinary skill would determine that expressing any one factor to treat any age-related disease or condition is unpredictable.
Finally, the art indicates that using the claimed method to treat any age-related disease or condition is unpredictable because some diseases/conditions are treated in ways the claimed method does not address.
Regarding nutrition and aging, Behavioral Nutrition (2020. Aging and Nutrition. Available online at BehavioralNutrition.org. Accessed 11 January 2024; “Nutrition”; of record) teaches that inadequate nutrient intake can lead to deficiency-related diseases, with some including anemia, frailty, and blindness. Chronic diseases associated with aging include osteoporosis, cardiovascular disease and diabetes. The reference further teaches: Nutritional therapists have indicated that If the elderly’s diet is low in nutrient-rich and antioxidant property foods, uncontrolled oxidative stress can accelerate the aging process. It is important to get in enough vitamins (C, E) as they interact with free radicals and prevent them from developing.
Although Applicant’s reference Franceschi (et al. 2018. The Continuum of Aging and Age-Related Diseases: Common Mechanisms but Different Rates. Front. Med. 5:61, “Franceschi”, of record) teaches (Other Pathologies: RA, Osteoarthritis [OA], Osteopenia, and Macular Degeneration ¶4) osteopenia/osteoporosis are associated with the specific inflammation makers TNFα and IL6, the reference doesn’t teach addressing inflammation treats osteopenia/osteoporosis, and Applicant has not produced any evidence that reducing inflammation treats osteopenia/osteoporosis.
The art of Endometriosis Treatment Center of America (2025. The Four Stages of Endometriosis Explained. Available online at centerofendometriosis.com. Accessed on 06 August 2025, “ETCA”) teaches (¶1) endometriosis occurs in one out of ten women who are within their reproductive age and it is most commonly diagnosed in women between the ages of 30-40. Therefore, endometriosis can be considered an age-related disease or condition. ETCA teaches (same ¶) endometriosis is caused when the tissue that forms the lining of the uterus is found outside the uterus. ETCA teaches (§Endometriosis Stages Explained: An Overview of the Stage System) endometriosis can be progressive, in which case it would be exacerbated as an individual ages and more and more adhesions grow thicker because the cells forming them multiply. ETCA teaches (§Treatments for Endometriosis) a variety of treatments but none of them includes any kind of cell rejuvenation. Furthermore, using the claimed method to treat endometriosis is entirely unpredictable because the disease is caused by aberrantly located endometrium. A person of ordinary skill can readily understand that if the problem is caused by aberrantly located endometrium, rejuvenating the cells that form the aberrantly located endometrium would be predicted to worsen, not treat the condition.
The art of Extend Fertility (2025. “Egg Quality”. Available online at extendfertility.com Accessed on 07 August 2025, “Extend”) teaches as a woman ages, a higher and higher percentage of the eggs inside her ovaries contain genetic abnormalities and:
Once a cell’s DNA is degraded, it can’t be fixed medically or “healed.” In other words, once an egg becomes abnormal, it can’t become normal again—egg quality cannot be improved. Egg quality is fairly black-and-white—either an egg is genetically “normal” (euploid) or it’s not (aneuploid), and as women age, a higher and higher percentage of their eggs become abnormal.
That indicates, that unless evidence demonstrating otherwise is presented, successfully treating age-related egg quality deterioration with the claimed method is unpredictable.
The art of Koivunen (et al. 2022. Major Lower Limb Amputations and Amputees in an Aging Population in Southwest Finland 2007–2017. Clin. Interv. Aging 17:925-936, “Koivunen”) teaches that (§Abstract-Results) the incidence of lower extremity amputations (LEA) increases with age. Therefore, LEA can be considered an age-related condition. Koivunen teaches (§Abstract-Conclusion) LEA is the only feasible treatment for critical limb ischemia [emphasis added]. Therefore, Koivunen indicates that successfully treating critical limb ischemia using anything—including the claimed method—besides amputation is unpredictable.
Regarding dermatological conditions specifically, the art of Cleveland Clinic (2023. Skin Cancer. Available online at my.clevelandclinic.org. Accessed on 07 August 2025, “Cleveland”) teaches (§What are the risk factors for skin cancer?) before age 50 skin cancer is more common in women but after 50 it’s more common in men. Cleveland teaches (§Are all moles cancerous?) moles can develop with age and more moles means an increased risk of melanoma. Therefore skin cancer can be considered an age-related disease or condition. Cleveland teaches (§Management and Treatment) several ways to treat skin cancer and all of them require killing or removing cancerous cells. Applicant has not explained how their method of rejuvenating cells would treat skin cancer when the art teaches all the methods of treating skin cancer are killing or removing the cancer. Therefore an artisan would determine that successfully treating skin cancer using the claimed method is unpredictable.
Those references (Nutrition, ECTA, Extend, Koivunen and Cleveland) demonstrate that there are age-related diseases and conditions that cannot be treated without addressing factors besides cellular rejuvenation, or that cannot be addressed at all. A person of ordinary skill would determine that treating a condition caused by nutrient deficiencies, endometriosis, or critical limb ischemia by cellular rejuvenation is unpredictable. Without evidence showing otherwise, an artisan would determine that no amount of cellular rejuvenation will address the absence of calcium or supply nutrients not ingested or treat a condition for which the only treatment is amputation, and that rejuvenating aberrantly located endometrium would worsen endometriosis. An artisan would determine that it is not possible to remediate DNA damage that affects egg quality or to treat skin cancer by methods other than killing or removal.
The art also teaches that an organism’s body is more complex than in vitro models represent and translating results from in vitro to in vivo. Lowenstein (and Castro. 2009. Uncertainty in the Translation of Preclinical Experiments to Clinical Trials. Why do Most Phase III Clinical Trials Fail? Curr. Gene Ther. 9[5]:368-374, Lowenstein) teaches (§Abstract) many times preclinical experiments are tested in a very narrow set of experimental conditions and when such approaches are finally tested in the context of human disease, the complexities of the diseases to be treated provide challenges which were never tested or modeled. Lowenstein teaches (§The Basic Science Aspects Underpinning the Clinical Trials ¶4) cell lines grown in vitro lack the in vivo geometrical organization, and cellular complexity of in vivo models. Lowenstein teaches (§In Search of Preclinical Robustness ¶6) oftentimes treatments shown to work in animals are not robust when tested in humans because of perturbations such as genetically heterogenous human patient populations. Lowenstein teaches (§CONCLUSIONS: A BLUEPRINT FOR ROBUST TRANSLATIONAL MEDICINE ¶1) new therapeutic approaches should be tested in vitro but also in vivo.
Furthermore, the art of Emulate Bio (2024. In Vitro vs In Vivo: A History of Modern Cell Culture. Available online at emulatebio.com. Accessed on 07 August 2025, “Emulate”) teaches (§In vivo studies: Advantages and disadvantages) in vivo experiments provide the most accurate representation of how cells behave in their physiological context and have long been viewed as the gold standard for understanding complex interactions within tissues, organs, and systems, as well as for assessing the real-world effects of drugs and treatments. Emulate teaches that is because (§In Vitro Cell Culture Advantages and Disadvantages-Disadvantages):
the in vitro environment is far removed from the cell’s natural environment in the human body, where cells experience three-dimensional contact with proteins and other cells, biomechanical forces, as well as dynamic nutrient and waste gradients. Each of these factors can influence how the cell behaves. By removing cells from a complex environment to a far more simplified one, the translational value of in vitro cell culture diminishes
Altogether, Lowenstein’s and Emulate’s teachings indicate to a person of ordinary skill in the art that in vivo treatment is much more complicated than in vitro treatment including because cell line experiments in vitro do not recapitulate an entire organism.
Although some age-related diseases/conditions may share mechanisms, the entire genus of ate-related diseases/conditions is broad and diverse. There is nothing in the art of record to demonstrate that it is possible to treat any age-related disease or condition by rejuvenating cells using only one reprogramming factor or to treat any age-related disease or condition using any one method at all. Furthermore, the art teaches it is not possible to use in only vitro studies as a basis for in vivo treatment because in vitro studies do not recapitulate the complex geometry and cellular interactions that occur in an organism. Therefore, although the level of an artisan is high, the art of reprogramming factors and treating age-related diseases and conditions is unpredictable as evidenced by the state of the art discussed above. If the Spec. does not address these problems, the claims are not enabled.
The amount of direction provided by the specification and the existence of working examples: What is enabled by the working examples is narrow compared to the breadth of the claims. The entire scope of the claims must be deemed enabled and it is not. Some of the main issues are listed here and discussed below:
The claims recite the methods of treatment by transfecting a cell in vivo with an mRNA encoding one or more reprogramming factors selected from the group consisting of Oct4, Sox2, Klf4, cMyc, Lin28, and NANOG (OSKMLN). The examples have demonstrated enablement for only the entire cocktail of reprogramming factors Oct4, Sox2, Klf4, cMyc, Lin28, and NANOG (OSKMLN). The art of Ocampo teaches the four factors OSKM are required for treatment. Similarly, e.g., Claim 96 requires that transfection with only one reprogramming factor is sufficient to rejuvenate differentiated cells. However, all the examples show treatment with the OSKMLN cocktail and the art shows treatment using the four factors OSKM.
Claim 90 recites treating any age-related disease or condition with the methods but the invention is not enabled for treating age-related diseases/conditions that are caused by nutrient deficiencies or other conditions that the art indicates cell rejuvenation would not address.
Regarding the number of reprogramming factors required for rejuvenation, the Spec. shows (¶148) examples that are all based on a cocktail of mRNAs (OSKMLN). Since the prior art teaches that four factors are required and the Spec. does not demonstrate using fewer than the entire cocktail, or provide guidance, the use of only one reprogramming factor is not enabled.
Regarding the treatment of any age-related diseases/conditions, the specification teaches the following examples of the age-related diseases/conditions that were treated with the instant methods:
(¶32, Fig. 1) reversion of aged physiology in fibroblasts, as indicated by a selection of markers or assessments: increased H3K9me3, HP1γ, and LAP2α; remediation of nuclear folding/blebbing, autophagasome formation, proteasome activity, membrane potential, and mitochondrial ROS; increased SIRT1, and reduced inflammatory cytokine CMCSF.
(¶33, Fig. 2) reversion of aged physiology in endothelial cells, as indicated by a selection of markers or assessments: increased H3K9me3, HP1γ, and LAP2α; remediation of nuclear autophagasome formation, proteasome activity, membrane potential, and mitochondrial ROS; and slightly increased telomere length and reduced senescence.
(¶34, Fig. 3) mitigation of osteoarthritis (OA) phenotypes in diseased chondrocytes, as indicated by a selection of markers or assessments: increased COL2A1, slightly increased ATP concentration, increased SOD2, reduced ROS, reduced inflammatory markers RANKL and INOS. Catabolic factors MMP13 and MMP3 were increased, which is more like OA phenotype.
(¶35, Fig. 4) restoration of potency in aged mouse and human muscle stem cells (MuSCs) transplanted to mouse muscle, as indicated by a selection of assessments: more centrally nucleated muscle fibers and more muscle fibers overall.
(¶36-37, Figs. 5-6) reversion of aged physiology in fibroblasts and endothelial cells, as indicated by a selection of markers and some transcriptomic data: increased H3K9me3, HP1γ, and LAP2α; increased (or unchanged) SIRT1, remediation of mitochondrial membrane potential and mitochondrial ROS (or unchanged ROS); remediation of autophagasome formation and proteasome activity; reduced (or unchanged senescence), and unclear data about cytokines. Figs. 6 show transcriptomic and methylomic analyses for aged fibroblasts and endothelial cells.
(¶38, Fig. 7) transient reprogramming in osteoarthritic chondrocytes and mesenchymal stem cells, as indicated by a selection of markers and assessments: reduced ATP and ROS, increased SOD2, more cell proliferation, slightly increased COL2A1 and reduced RANKL and INOS2, changes in cytokines that are unclear, slight changes in levels of p16 and p21, and reduced senescence.
(¶39, Fig. 8) transient reprogramming engineered skin tissue (i.e., fibroblasts and keratinocytes) and muscle regeneration in human and mouse MuSCs (i.e., “satellite cells”), as indicated by a selection of markers and assessments: reduced SA-βGal, reduced p16, IL8, and MMP1, and muscle regeneration.
(¶40, Fig. 9) reduced senescence in corneal epithelial cells. It is noted that regarding transfection of corneal epithelial cells, details of these experiments are not provided; only the figure caption (at ¶40) and ¶166 minimally discuss this experiment. Therefore it is not possible to determine how the experiment was conducted or the full scope of its results.
Only a few of these examples correspond to a specific age-related disease or condition: (¶159) diseased chondrocytes that are associated with osteoarthritis and (¶160) impaired regeneration and (¶163) sarcopenia of MuSCs. Those examples are not described to correspond with any age-related disease or condition (as claimed in Claim 90) or even those recited in Claims 91-92. The Spec. does not provide guidance on how to treat any age-related diseases/conditions let alone those that are caused by factors such as nutrient deficiencies. The Spec. does not provide guidance on how to treat the specific age-related diseases/conditions of endometriosis, age-related infertility, skin cancer, or critical limb ischemia.
Since the instant Spec. does not provide guidance on the issues discussed in the art, it does not does not support enablement of the claimed method of treating any age-related disease or condition by rejuvenating cells using one or more reprogramming factors. In summary, the guidance present in the specification does not provide any guidance in addressing the enablement issues raised in view of the state of art discussion presented above. The specification does not address the issues listed above.
The quantity of experimentation needed to make or use the invention: The standard of an enabling disclosure is not the ability to make and test if the invention works but one of the ability to make and use with a reasonable expectation of success. A patent is granted for a completed invention, not the general suggestion of an idea (MPEP 2164.03 and Chiron Corp. v. Genentech Inc., 363 F.3d 1247, 1254, 70 USPQ2d 1321, 1325-26 (Fed. Cir. 2004). The instant specification is not enabling because one cannot follow the guidance presented therein or within the art at the time of filing, and practice the claimed method without first making a substantial inventive contribution. Given teachings in the art about the way various diseases including osteoporosis, endometriosis, and age-related infertility work, teachings about how to treat critical limb ischemia and skin cancer, teachings that in vitro treatment is insufficiently robust to demonstrate treatment in an organism because organisms comprise complex cellular interactions that are not recapitulated in vitro, and given the lack of experimental evidence demonstrating success, an artisan of ordinary skill would not be able to use the invention as claimed with a reasonable expectation of success. The amount of experimentation required for enabling guidance commensurate in scope with what is claimed goes beyond what is considered “routine” within the art and constitutes undue further experimentation in order to successfully use the method of treating any age-related disease or condition with a reasonable expectation of success. Claims 90-92 are rejected for those reasons and Claims 96-97 are rejected because they depend form Claims 90-92 and don’t remedy the issues.
In conclusion, the specification provides enablement for:
A method of treating an age-related disease or condition in a subject, comprising:
transfecting differentiated cells associated with the age-related disease or condition in the subject with an mRNA encoding the reprogramming factors Oct4, Sox2, Klf4, and cMyc, and optionally Lin28 or NANOG; wherein the mRNA is not integrated intrachromosomally or extrachromosomally into the genome of the subject,
whereby said transfecting achieves expression of the one or more reprogramming factors in the differentiated cells (1) to obtain cells with retention of cellular differentiation and (2) to rejuvenate the cells, wherein said expression of the one or more reprogramming factors does not dedifferentiate the subject’s differentiated cell into an induced pluripotent stem cell,
wherein the age-related disease or condition is selected from the group consisting of osteoarthritis and sarcopenia,
wherein the differentiated cells are selected from the group consisting of chondrocytes that express the marker COL2A1 and skeletal muscle cells that express the marker MyoD,
wherein retention of cellular differentiation is indicated by the chondrocyte retaining expression of COL2A1 or the skeletal muscle cell retaining expression of MyoD, and
wherein rejuvenation is indicated by at least one of the following outcomes:
chondrocytes: a significant reduction in the pro-inflammatory cytokines MIP1A, IL6, IFNα, and MCP3; significantly reduced intracellular mRNA levels of iNOS2; significantly increased cell proliferation, significantly increased ATP production, significantly decreased oxidative stress as revealed by reduced mitochondrial ROS, and significantly elevated levels of SOD2 RNA or
skeletal muscle cells: myofibers comprising significantly increased cross-sectional area, myofibers comprising significantly increased size, and muscles comprising significantly increased tetanic forces,
and:
A method of treating an age-related disease or condition in vitro, comprising:
transfecting differentiated vertebrate cells having the age-related disease or condition with an mRNA encoding the reprogramming factors Oct4, Sox2, Klf4, cMyc, and optionally Lin28 or NANOG, wherein the mRNA is not integrated intrachromosomally or extrachromosomally into the genome of the differentiated vertebrate cell,
whereby said transfecting achieves expression of the reprogramming factors in the differentiated vertebrate cells (1) to obtain cells with retention of cellular differentiation and (2) to rejuvenate the cells, wherein said expression of the one or more reprogramming factors does not dedifferentiate the differentiated vertebrate cell into an induced pluripotent stem cell.
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 72, 74-81, 83-92, 96-97, and 106-110 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.
The term “retention of cell identity” in Claims 72, 78, 90, 106-107, and 110 is a relative term which renders the claim indefinite. The term “retention of cell identity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The art of Morris (2019. The evolving concept of cell identity in the single cell era. Development 146[12]:dev169748, “Morris) teaches that (§Abstract) it remains challenging to precisely define cell identity, leading to renewed debate surrounding this concept and :
(§Introduction ¶2) fundamentally, though, no general method to accurately define cell identity currently exists... although several cell atlas construction endeavors are under way, these efforts have reignited debate around how cell identity can be effectively and accurately curated, revealing many differing viewpoints on this subject.
Therefore an artisan would not reasonably be apprised of when a cell retains its identity and when it does not.
A claim may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173. In the present instance, Claims 72, 78, 90, 106-107, and 110 recite retention of cell identity. The claim(s) are considered indefinite because there is a question or doubt as to what are the metes and bounds of the claim. The teachings of Morris indicate that an artisan would not reasonably be apprised of when a cell retains its identity and when it does not because the field does not have set definitions for cell identity.
Claims 72, 78, 90, 106-107, and 110 are rejected for those reasons; Claims 74-81, 83-88, 91-92, 96-97 are rejected because they depend from Claims 72, 78, 90, 106-107, and/or 110 and don’t remedy the issues. In the interest of compact prosecution, the retention of cell identity is interpreted as meaning that the cell performs at least one specialized function or carries at least one specialized marker of the original cell.
The terms “differentiated cell” and “differentiated vertebrate cell” in Claims 89-90, 96, and 108-109 are relative terms which render the claim indefinite. The terms “differentiated cell” and “differentiated vertebrate cell” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The art of Biga (et al. 2019. §3.6 Cellular Differentiation in Anatomy & Physiology. Available online at open.oregonstate.education. Accessed on 31 July 2025, “Biga”) teaches (§Stem cells, entire §) cellular differentiation exists on a spectrum from totipotency to multipotency to unipotency, with intermediate extents of differentiation occurring between each of those steps. Therefore what is considered a differentiated cell varies depending on the eye of the beholder. Applicant’s claims (nor Spec.) disclose what extent of differentiation is required for their invention.
Additionally, Claims 89-90, 96, and 108-109 recite differentiated cell and differentiated vertebrate cell. The claim(s) are considered indefinite because there is a question or doubt as to what are the metes and bounds of the claim. The teachings of Biga indicate that an artisan would not reasonably be apprised of what is considered a differentiated cell because cell differentiation exists on a spectrum.
Claims 89-90, 96, and 108-109 are rejected for those reasons; Claims 91-92 and 96-97 are rejected because they depend from Claims 89-90, 96, and 108-109 and don’t remedy the issues. In the interest of compact prosecution, the terms differentiated cell or differentiated vertebrate cell are interpreted as any kind of cell besides a totipotent or pluripotent stem cell. That interpretation is based on Biga because Biga teaches that these [pluripotent stem] cells then become slightly more specialized and are referred to as multipotent cells… a multipotent cell has the potential to differentiate into different types of cells within a given cell lineage or small number of lineages and because the instant claims recite that the cell does not dedifferentiate into a pluripotent cell. Since Biga’s pluripotent cell became slightly more specialized, the slightly more specialized cell necessarily differentiated from the pluripotent cell. Additionally, Biga teaches (§Everyday connection: stem cell research) the adult stem cells that are present in many organs and differentiated tissues, such as bone marrow and skin, are multipotent, being limited in differentiation to the types of cells found in those tissues. That passage indicates that multipotent cells are both differentiated—they are present in many organs and differentiated tissues—and stem cells that can further differentiate. Therefore multipotent cells and oligopotent cells (as described by Biga) are considered to be differentiated vs. a totipotent or pluripotent cell. See also Biga’s Figure 3.6.1.
The terms “for a period of time sufficient to rejuvenate the cell while retaining its identity” and “for a period of time sufficient to rejuvenate the differentiated cells while retaining their identity” in Claims 85 and 96 are relative terms which render the claim indefinite. The term “for a period of time sufficient to rejuvenate the cell while retaining its identity” and “for a period of time sufficient to rejuvenate the differentiated cells while retaining their identity” are not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The recited phrases for a period of time sufficient to rejuvenate the cell while retaining its identity and for a period of time sufficient to rejuvenate the differentiated cells while retaining their identity are indefinite because an artisan would not reasonably be apprised of what that time period is, particularly because the terms retention of cell identity and differentiated cells are indefinite for the reasons explained in the previous 112(b) rejections.
Additionally, Claims 85 and 96 recite for a period of time sufficient to rejuvenate the cell while retaining its identity and for a period of time sufficient to rejuvenate the differentiated cells while retaining their identity. There is a question or doubt as to what are the metes and bounds of the claim. The teachings of Morris and Biga indicate that an artisan would not reasonably be apprised of what defines cell identity or is considered a differentiated cell because opinions differ across artisans and because cell differentiation exists on a spectrum. Furthermore, an artisan would not know what is considered a period of time sufficient for either of those outcomes because the terms themselves are unclear and because the Spec. does not define the terms or disclose the time period(s).
Claims 85 and 96 are rejected for those reasons; Claims 88 and 97 are rejected because they depend from Claim 85 or 88 and don’t remedy the issues. In the interest of compact prosecution, the period of time sufficient to rejuvenate the cell while retaining its identity and for a period of time sufficient to rejuvenate the differentiated cells while retaining their identity are interpreted as meaning the cell performs at least one specialized function or exhibits at least one specialized marker of the differentiated cell type before the method was applied and has at least one characteristic of a younger cell, as indicated by at least one marker of a younger cell.
The term “retention of cellular differentiation” in Claim 90 is a relative term which renders the claim indefinite. The term “retention of cellular differentiation” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As discussed in the previous 112(b) rejections, the art of Morris and Biga indicate that what is considered cell identity and what is considered cell differentiation can vary and/or exist on a spectrum of differentiation. Therefore an artisan would not reasonably be apprised of when a cell is considered by Applicant to retain its differentiation and when it does not, and a person of ordinary skill would not have any way of identifying a cell that has retained its differentiation vs. a cell that has not retained its differentiation (since what is considered “differentiated” is itself unclear).
Additionally, Claim 90 recites retention of cellular differentiation. There is a question or doubt as to what are the metes and bounds of the claim because Morris and Biga indicate that what is considered cell identity and what is considered cell differentiation can vary and/or exist on a spectrum of differentiation so an artisan would not reasonably be apprised of when a cell retains its differentiation and when it does not and would not have a way of identifying a cell that has retained its differentiation vs. a cell that has not retained its differentiation.
Claim 90 is rejected for those reasons; Claims 91-92 and 96-97 are rejected because they depend from Claim 90 and don’t remedy the issues. In the interest of compact prosecution, the claims are interpreted as the cell performs at least one specialized function or carries at least one specialized marker of the original cell.
Claims 79, 86, 88, and 97 recite the limitation "said exposing" in L1-2 (Claim 79) and L2 (Claims 86, 88, and 97). There is insufficient antecedent basis for this limitation in the claim because Claim 79 depends from Claim 77 which depends from Claim 72; neither Claims 72 nor 77 recite any exposing. Claims 86-87 also depend from 72. Claim 97 depends from Claim 96 which depends from Claim 90; neither Claims 90 nor 96 recite any exposing.
In the interest of compact prosecution, the claims are interpreted as the transfecting results in cells being exposed to the reprogramming factors OSKMLN …
Claims 89 and 90 recite the limitation "the somatic cell" in the last two lines. There is insufficient antecedent basis for this limitation in the claim because Claim 89 recites a differentiated vertebrate cell and Claim 90 recites differentiated cells but the claims do not recite any somatic cell.
Claims 89 and 90 are rejected for those reasons; Claims 92-92 and 96-97 are rejected because they depend from Claim 90 and don’t remedy the issues. In the interest of compact prosecution, the claims are interpreted as meaning the method is for differentiated vertebrate cells and the method does not dedifferentiate the differentiated vertebrate cell(s) into an iPSC …
A claim may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173. In the present instance, Claim 90 recites an age-related disease or condition and cells associated with the age-related disease or condition. The claim(s) are considered indefinite because there is a question or doubt as to what are the metes and bounds of the claim. The Spec. discloses examples of “age-related disease[s] and condition[s]” at ¶73 and discloses that the term refers to any condition, disease, or disorder associated with aging. But the claim is unclear because what is considered “associated with aging” can vary depending on the eye of the beholder. Similarly, what cells are considered to be associated with the age-related disease or condition can vary from artisan to artisan.
Claim 90 is rejected for those reasons. Claims 91-92 and 96-97 are rejected because they depend from Claim 90 and do not remedy the issues. In the interest of compact prosecution an age-related disease or condition is interpreted as meaning any disease or condition that has any relationship with age and cells associated with the age-related disease or condition are interpreted as any cell that can be shown to contribute or be affected in any manner, however indirectly, to any age-related disease or condition.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 107-110 are rejected under 35 U.S.C. 103 as being unpatentable over Ocampo (of record), in view of Youn (of record) and Kuhn (et al. 2012. mRNA as a Versatile Tool for Exogenous Protein Expression. Curr. Gene Ther. 12:347-361, “Kuhn”).
Ocampo teaches (§Results-Partial Reprogramming Ameliorates Cellular Phenotypes Associated with Aging ¶1) they administered dox to express the dox-inducible factors OSKM in tail tip fibroblasts (TTF) isolated from mice carrying a dox-inducible OSKM cassette. They confirmed expression of OSKM in the isolated cells and found short-term induction of OSKM in TTFs did not lead to loss of cellular identity, as indicated by expression of the fibroblast-associated marker Thy1 and the absence of markers for intermediate cellular reprogramming, such as SSEA1 [emphasis added]. Ocampo teaches (same §) induction of OSKM did not result in the expression of Nanog, a marker of pluripotency, even after 12 days of induction (Figure S1C), indicating that complete reprogramming to pluripotency was not attained [emphasis added]. Ocampo teaches (same §) the induction was short-term, for 2 or 4 days.
Ocampo teaches (same § and ¶) numerous phenotypes associated with aging were ameliorated in cells wherein OSKM expression was induced, and compared with cells wherein OSKM were not induced: the number, intensity, and volume of foci for a marker of DNA double strand breaks were significantly reduced; levels of p53 binding protein 1 was reduced, expression of age-related stress response genes in certain pathways were reduced, metabolic changes and improvements in mitochondrial function (including significantly reduced ROS) were observed, and cellular levels of epigenetic modifications involved in maintaining heterochromatin were restored to non-aged levels.
Those observations describe what can be characterized as “a rejuvenated cell”. Put another way, an artisan would understand (and would have understood) that one could apply Ocampo’s methods or could use the OSKM factors “to rejuvenate a fibroblast” or more generally, “to rejuvenate a cell” or, when referring to Ocampo’s fibroblast “to rejuvenate the cell”. Altogether, Ocampo’s fibroblast can be considered to be “rejuvenated” in its plain meaning.
The results described above indicate that Ocampo’s treatment of isolated TTFs with the factors OSKM resulted in retention of cell identity as indicated by expression of the fibroblast-associated marker Thy1 and that the fibroblast did not dedifferentiate into an induced pluripotent stem cell (iPSC) because NANOG, the marker of pluripotency, was not expressed. Ocampo’s results show that the fibroblast was rejuvenated because it exhibited many phenotypes of ameliorated aging.
Regarding Claim79: Ocampo teaches (§In Vivo Reprogramming Ameliorates Organismal Phenotypes Associated with Premature Aging) they used their system in mice in vivo and observed (Figs. 4 and 5) longer lifespan and other phenotypes associated with premature aging were ameliorated.
Regarding Claims 80-81 and 108-109: Ocampo teaches (§Improvement of Aging Hallmarks in Mouse and Human Cells by Partial Reprogramming ¶2-3) they used their method to induce OSKM expression in cultured human fibroblasts containing the dox-inducible OSKM system. Like the mouse TTFs, Ocampo’s human fibroblasts exhibited (Figs. 6E and 6F) indicators of rejuvenation, as they describe:
Collectively, these results suggest that short-term induction of OSKM can ameliorate multiple hallmarks of aging in late-passage WT mouse and human cells, including the accumulation of DNA damage, cellular senescence, and epigenetic dysregulation, thus demonstrating the potential of partial reprogramming for the rejuvenation of phenotypes observed during physiological aging [emphasis added].
Ocampo teaches the OSKM mRNA carried on a polycistronic cassette was induced by short-term administration of dox. Ocampo does not teach the vertebrate somatic cells (i.e., mouse TTF and human fibroblast) were transfected with mRNA that was not integrated intra- or extrachromosomally into the cell’s genome.
However, Youn teaches using modified mRNA as an alternative to plasmid DNA (pDNA) for transcript replacement. Youn is drawn to using mRNA gene transfer to express a gene. Youn teaches that (§Abstract-Introduction) there are serious safety concerns with virus mediated gene delivery (including because of insertional mutagenesis), that pDNA has low transfection efficiency, and that mRNA has been suggested as an alternative option to avoid undesired insertion of delivered DNA sequences with higher transfection efficiency and stability [emphasis added]. Youn teaches (§Introduction ¶1-2) there are problems with viral gene delivery and pDNA delivery:
[viral gene delivery] has been challenged due to serious safety concerns, including insertion mutagenesis and triggering of the innate immune response … Modification of pDNA for nuclear localization and enhanced transcription by using a strong constitutive promoter increases the expression of therapeutic genes, but integration of delivered sequences into the nuclear DNA also induces unexpected genetic changes.
Youn teaches (same §) gene delivery using mRNA has advantages including unexpected insertion mutation and promoter dependency can be excluded because mRNA is works as a gene/or transcript replacement in the cytoplasm and mRNA-mediated gene transfer occurs in non-dividing cells, while pDNA-mediated gene transfer is mostly effective in dividing cells. Additionally, Youn teaches (Fig. 4 and caption; §Systemic delivery of modified mRNA for gene therapy ¶3) administering the mRNA in liposomes. Youn teaches (§5. Conclusions ¶1) notable advantages of mRNA-based gene transfer include no risk of integration into the genomic DNA.
Kuhn, drawn to a discussion of mRNA as a tool for exogenous protein expression, teaches (§Abstract) synthetic messenger RNA has emerged as powerful tool to deliver genetic information. RNA vectors exhibit several advantages compared to DNA and are particularly interesting for applications that require transient gene expression. Kuhn teaches (§TRANSFER OF RNA INTO CELLS¶1 and 4) there is abundant choice of commercial transfection agents for RNA transfer, including some developed especially for RNA, and only minor modifications are necessary to adapt DNA transfection techniques for mRNA transfer. Kuhn teaches (§SENSING OF EXOGENOUS RNA BY THE INNATE IMMUNE SYSTEM ¶3) repeated transfection of in vitro-transcribed mRNA has been successfully performed.
Kuhn teaches (§PRECLINICAL AND CLINICAL APPLICATIONS OF RNA-Induction of Antigen-Specific Immune Responses ¶1) RNA doesn’t pose risk of genomic integration, making it safer, and RNA has a transient nature wherein it is expressed only during a controlled period of time. Kuhn teaches (§mRNA-Based Gene Therapy ¶1) researchers have demonstrated the successful in vivo use of modified nucleoside-containing mRNAs to express therapeutic proteins. Kuhn teaches (§mRNA-Based Gene Therapy ¶2) synthetic modified mRNA complexed with a transfection reagent has been successfully used to express EPO in mice. Kuhn’s teachings indicate mRNA can be administered in vitro, ex vivo, or in vivo.
Kuhn teaches (§Induction of Pluripotent Stem Cells ¶1 and 3) synthetic coding RNA has been used to produce iPSCs: … methods that are 100% above suspicion with respect to transgene integration have been reported successful too: recombinant cell-penetrating proteins, synthetic microRNA duplexes and synthetic mRNA. Kuhn teaches (same § and ¶) synthetic mRNA was used to induce transdifferentiation of somatic cell types without the detour of iPSCs.
Youn and Kuhn establish that it was routine and customary to administer therapeutic genes by administering mRNA (including with a transfection agent and/or liposomes) and the mRNA avoids intra- or extrachromosomal integration. Kuhn further teaches it is routine and customary in the art to induce iPSCs by administering synthetic mRNA.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings regarding the short-term expression of reprogramming factors OSKM resulting in cell rejuvenation, wherein the fibroblast retained at least one marker of cell identity and wherein the fibroblast did not differentiate into an iPSC, of Ocampo with the teachings regarding the benefits of administering mRNA that is not intra- or extrachromosomally incorporated, of Youn and Kuhn for the benefits of transiently expressing OSKM mRNA in any cell, thereby rejuvenating any cell. One would have been motivated to do so with a reasonable expectation of success because the mRNA of Youn and Kuhn does not require an artisan to produce transgenic dox-inducible animals; rather, mRNA encoding the OSKM factors could be easily administered to any individual. One would have been motivated to do so because Kuhn teaches (§Introduction ¶1) mRNA gene transfer is always transient, suggests (§Outlook) using RNA for manipulation of cell fates, and teaches (cited above) mRNA transfer is already used to revert fibroblasts to iPSCs. An artisan of ordinary skill would have understood from the teachings of Ocampo that they could short-term transfect any fibroblast or any cell with OSKM-encoding mRNA, the resultant expression would be transient, and would thereby achieve the result of rejuvenating the cell.
Therefore all the limitations of Claims 72, 76-77, 80-81, and 108-110 would have been obvious in view of Ocampo, Youn, and Kuhn.
Since Ocampo teaches the amelioration of age-related phenotypes occurred after the OSKM factors were expressed (Figs. 1A and S1A), the method of Ocampo, Youn, and Kuhn would have produced all the limitations of Claim 85.
Since Ocampo induced expression for 2 or 4 days, the method of Ocampo, Youn, and Kuhn would have produced all the limitations of Claim 87.
Since Ocampo’s fibroblast expressed the fibroblast-associated cell marker Thy1, the cell was differentiated and possessed a marker of cell identity and retained that marker. See Fig. S1B. Therefore the method of Ocampo, Youn, and Kuhn would have produced all the limitations of Claims 89 and 107.
Regarding Claim 74, as explained above, Kuhn teaches (§mRNA-Based Gene Therapy ¶2) synthetic modified mRNA complexed with a transfection reagent has been successfully used to express EPO in mice. Kuhn’s teachings indicate it is routine and customary to use a reagent for transfection. A reagent for transfection is merely a different word for “excipient”. Therefore all the limitations of Claim 74 would have been obvious in view of Ocampo, Youn, and Kuhn.
Regarding Claim 75, Youn teaches (cited above) liposomes. Kuhn teaches (§TRANSFER OF RNA INTO CELLS ¶1 and 3) lipofection can be used to transfect cells with RNA and (§PRECLINICAL AND CLINICAL APPLICATIONS OF RNA-Induction of Antigen-Specific Immune Responses ¶4) liposomes can be used. Ocampo teaches (§Method Details-Virus Preparation and Infection) plasmid transfection of HEK293FT cells using lipofectamine. Lipofectamine is known in the art as an excipient that encapsulates contents within liposomes. Therefore, all the limitations of Claim 75 would have been obvious in view of Ocampo, Youn, and Kuhn.
Regarding Claim 79, Ocampo teaches they used their method in living mice. As discussed, that system used dox-inducible expression of OSKM. However, Youn and Kuhn teach that administering mRNA, including in vivo, was known in the art. Therefore, all the limitations of Claim 79 would have been obvious in view of Ocampo, Youn, and Kuhn.
Regarding Claims 83-84: Ocampo’s in vivo work in mice found (§In Vivo Reprogramming Ameliorates Organismal Phenotypes Associated with Premature Aging, entire §) mice in whom OSKM expression was induced showed (Fig. 4E) increased epidermal and dermal thickness and decreased keratinization of the skin compared to untreated controls. Ocampo describes (same §, ¶3; Fig. 5A) their analysis confirmed expression of the factors Oct4 and Sox2 in the skin, liver, stomach, and kidney of mice in whom OSKM expression was induced. Ocampo’s work demonstrates (same §, ¶3; Fig. 5) their treatment reached somatic cells within skin tissue and the phenotypes associated with ageing in the mice were ameliorated and the marker of pluripotency was not expressed. Ocampo’s findings were in vivo in mice, not humans, and Ocampo induced expression with dox, and did not transfect with mRNA. However, as discussed above, Youn and Kuhn teach that administering mRNA, including in vivo to humans, was known in the art. See, e.g., Youn (§3. Delivery systems for modified mRNA ¶2) and Kuhn (§PRECLINICAL AND CLINICAL APPLICATIONS OF RNA-Induction of Antigen-Specific Immune Responses ¶6). Therefore, all the limitations of Claims 83-84 would have been obvious in view of Ocampo, Youn, and Kuhn.
Regarding Claims 90-82 and 96: As discussed in the preceding paragraph, Ocampo teaches inducing OSKM expression resulted in ameliorated phenotypes associated with premature aging, including increased dermal and epidermal thickness, decrease in tubular atrophy and interstitial kidney volume, reduced age-associated loss of parietal cells and reduced thinning of gastric epithelium, and extended lifespan. Those results indicate that Ocampo’s method ameliorated dermal atrophy (see Fig. 4E). Ocampo further teaches (§Increased Resistance to Metabolic Disease and Muscle Injury in Physiologically Aged Animals by Partial In Vivo Reprogramming, entire §; Fig. 7) inducing OSKM expression improved resistance to metabolic disease and skeletal muscle injury in aged animals. Ocampo induced expression with dox, and did not transfect with mRNA. However, as discussed above, Youn and Kuhn teach that administering mRNA, was known in the art. Doing so would have resulted in exogenous mRNA being taken up and expressed by target cells. Therefore, all the limitations of Claims 90-92 and 96 would have been obvious in view of Ocampo, Youn, and Kuhn.
Therefore, all the limitations of Claim(s) 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 107-110 would have been obvious in view of the teachings of Ocampo, Youn, and Kuhn.
Claim(s) 72, 74-81, 83-85, 87, 89-92, 96, and 107-110 are rejected under 35 U.S.C. 103 as being unpatentable over Ocampo, Youn, and Kuhn as applied to Claims 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 107-110 above, and further in view of Gee (et al. 2017. Cellular Reprogramming, Genome Editing, and Alternative CRISPR Cas9 Technologies for Precise Gene Therapy of Duchenne Muscular Dystrophy. Stem Cells Int. 2017:8765154, “Gee”).
The teachings of Ocampo, Youn, and Kuhn as applicable to Claim(s) 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 107-110 have been described in the 103 rejection above.
As explained, methods of rejuvenating a cell by transfecting it with mRNA encoding the reprogramming factors OSKM, wherein the mRNA is not integrated intrachromosomally or extrachromosomally into the cell’s genome, wherein the transfecting achieves expression of the reprogramming factors, producing a cell with at least one marker of cell identity, wherein expression of the reprogramming factors does not dedifferentiate the cell into an iPSC, and methods of treating certain age-related diseases or conditions would have been obvious in view of Ocampo, Youn, and Kuhn.
Regarding Claim 78, Kuhn teaches (§PRECLINICAL AND CLINICAL APPLICATIONS OF RNA-Induction of Antigen-Specific Immune Responses ¶2) RNA can be delivered to cells ex vivo. Altogether, Ocampo, Youn, and Kuhn make obvious a method of rejuvenating a cell ex vivo by transfecting it with mRNAs encoding reprogramming factors.
Ocampo, Youn, and Kuhn do not teach the cell that is then transplanted into a subject.
However, Gee teaches (§3. Considerations for Allogeneic or Autologous iPS Cell Therapy to Treat DMD Going Forward ¶2) autologous iPSCs can be edited ex vivo and transplanted back to a patient and doing so minimizes immunogenic reactions. Gee also teaches (§8. Exon Deletion ¶1) a study wherein a region of DNA was removed from a genome of a cell, the cell was differentiated into skeletal muscle in vitro, and the cell was transplanted into a mouse in vivo.
Gee teaches transplanting a cell that was dedifferentiated into an iPSC ex vivo and then transplanted into a mouse. Ocampo, Youn, and Kuhn make obvious a method of rejuvenating a cell without dedifferentiating it back to an iPSC and without integrating any genetic material—intra- or extrachromosomally—into the genome.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the methods of ex vivo cell rejuvenation of Ocampo, Youn and Kuhn with the teachings about transplanting a cell of Gee for the benefit of treating some age-related conditions with an autologous rejuvenated cell. Doing so would not require that the cell be dedifferentiated to an iPSC; in fact, the teachings of Ocampo forbid such dedifferentiation. One would have been motivated to do so with a reasonable expectation of success because Gee teaches transplanting iPSC-derived cells was performed in the art and it would have been a simple matter to use the method of Ocampo, Youn, and Kuhn to merely rejuvenate—not dedifferentiate—a cell. One would have been motivated to do so because the cell could be rejuvenated ex vivo, expanded, and then tested for genetic abnormalities before being transplanted into the subject. One would have been motivated to do so because Gee teaches doing so avoids immunogenic reactions. The procedure of transplanting a cell would be the same regardless of whether the cell had been dedifferentiated to an iPSC (i.e., Gee) or if it were merely rejuvenated (i.e., Ocampo, Youn, and Kuhn). Therefore, the limitations of Claim 78 (and Claims 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 107-110) would have been obvious in view of Ocampo, Youn, Kuhn, and Gee.
Claim(s) 72, 74-77, 79-81, 83-92, 96-97, and 107-110 are rejected under 35 U.S.C. 103 as being unpatentable over Ocampo, Youn, and Kuhn as applied to Claim 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 107-110 above, and further in view of Phua (et al. 2013. Transfection efficiency and transgene expression kinetics of mRNA delivered in naked and nanoparticle format. J. Cont. Release 166:227-233, “Phua”).
The teachings of Ocampo, Youn, and Kuhn as applicable to Claim(s) 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 107-110 have been described in the 103 rejection above.
As explained, methods of rejuvenating a cell by transfecting it with mRNA encoding the reprogramming factors OSKM, wherein the mRNA is not integrated intrachromosomally or extrachromosomally into the cell’s genome, wherein the transfecting achieves expression of the reprogramming factors, producing a cell with at least one marker of cell identity, wherein expression of the reprogramming factors does not dedifferentiate the cell into an iPSC, and methods of treating certain age-related diseases or conditions would have been obvious in view of Ocampo, Youn, and Kuhn.
Regarding Claims 86, 88, and 97, Ocampo teaches (§Partial Reprogramming Ameliorates Cellular Phenotypes Associated with Aging ¶2) cells wherein OSKM had been induced eventually re-acquired some age-related phenotypes so they re-induced OSKM expression for an additional 4 days. Doing so reverted the reaccumulation of age-associated phenotypes: These results suggest that cyclic induction of OSKM following an ‘‘on and off’’ scheme may have the capacity to prevent or reset the accumulation of age-associated phenotypes. Therefore Ocampo teaches interrupting exposure to the OSKM (by withdrawing dox) and repeating exposure to the factors (by reapplying dox thereby reinducing OSKM expression). Ocampo teaches (§In Vivo Reprogramming Ameliorates Organismal Phenotypes Associated with Premature Aging ¶1) they used their cyclic induction strategy in vivo. Ocampo teaches (§Increased Resistance to Metabolic Disease and Muscle Injury in Physiologically Aged Animals by Partial In Vivo Reprogramming ¶2) their in vivo cyclic induction strategy comprised 3 weeks of cyclic induction, wherein OSKM were induced for 2 days followed by 5 days of dox withdrawal. That indicates that each cycle was a total of 7 days, so the process was cycled 3 times in 3 weeks. That indicates that they interrupted and repeated exposure (since dox resulted in intracellular exposure to the factors) and further interrupted and repeated exposure. Therefore Ocampo teaches limitations of Claims 86, 88, and 97.
As discussed above, Ocampo’s system used dox-inducible expression of OSKM. However, Youn and Kuhn teach that administering mRNA, including in vivo, was known in the art. Administering mRNA would have produced transfection wherein the exogenous mRNA was introduced inside the cell membrane, and would have been obvious in view of the benefits Youn and Kuhn teach about administering mRNA.
Ocampo, Youn, and Kuhn do not teach how long transfected mRNA lasts in a body.
However, Phua teaches the apparent half-life of mRNA expressed in vivo. Phua teaches (§Abstract) expression caused by nanoparticle-delivered mRNA lasts for less than 24 hours in vivo. Phua teaches (same §) other kinds of delivery can last longer. Phua teaches (§4. Discussion, Table 1) methods of delivery artisans can use to control duration of expression. Phua teaches (same §, final ¶) one of the attractions of mRNA delivery is its transient nature, [and] our data further support the idea that mRNA gene expression can be predictable and potentially controllable.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the methods for rejuvenating a cell of Ocampo, Youn, and Kuhn, including Ocampo’s methods of interrupting and withdrawing exposure to the OSKM factors, with the teachings about different kinds of mRNA delivery resulting in predictable persistence of the product of Phua for the benefit of controlling how long mRNA would be expressed. Doing so would have allowed an artisan to choose an mRNA delivery method that ensured transfection with the reprogramming factors—and therefore exposure to the reprogramming factors—could be interrupted and repeated any number of times. One would have been motivated to do so with a reasonable expectation of success because Ocampo teaches cyclic induction (i.e., interrupting exposure to reprogramming factors and then repeating exposure) improves the persistence of ameliorated age-related phenotypes in mice in vivo. The teachings of Youn, Kuhn, and Phua indicate that such cyclic induction can be performed in any cell by administering mRNA because an artisan can use Phua’s teachings to control how long the mRNA persists in the animal. As discussed in the previous 103 rejection, the references teach treating certain age-related diseases/conditions in subjects. Therefore, the limitations of Claims 86, 88, and 97 (and Claims 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 107-110) would have been obvious in view of Ocampo, Youn, Kuhn, and Phua.
Claim(s) 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 106-110 are rejected under 35 U.S.C. 103 as being unpatentable over Ocampo, Youn, and Kuhn as applied to Claims 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 107-110 above, and further in view of Horvath (2013. DNA methylation age of human tissues and cell types. Genome Biol. 14:R115; “Horvath”, of record) and Horvath (and Raj. 2018. DNA methylation-based biomarkers and the epigenetic clock theory of ageing. Nat. Rev. Genet. 19:371-384;“Horvath 2018”, of record). This rejection has been updated in response to the 16 January 2025 claim amendments.
Claim 106 recites a Horvath Clock and therefore is not entitled to the same priority date as the rest of the claims. The Spec. as filed in the priority application 62/642538 does not mention any Horvath Clock. Claim 106 is entitled to the priority date of the PCT application (13 March 2019) because that Spec. mentions a Horvath Clock.
The teachings of Ocampo, Youn, and Kuhn as applicable to Claim(s) 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 107-110 have been described in the 103 rejection above.
As explained, methods of rejuvenating a cell by transfecting it with mRNA encoding the reprogramming factors OSKM, wherein the mRNA is not integrated intrachromosomally or extrachromosomally into the cell’s genome, wherein the transfecting achieves expression of the reprogramming factors, producing a cell with at least one marker of cell identity, wherein expression of the reprogramming factors does not dedifferentiate the cell into an iPSC, and methods of treating certain age-related diseases or conditions would have been obvious in view of Ocampo, Youn, and Kuhn.
Regarding Claim 106, Ocampo teaches (§Summary) the amelioration of age-associated phenotypes by epigenetic remodeling during cellular reprogramming highlights the role of epigenetic dysregulation as a driver of mammalian aging; (§Introduction ¶2) cellular reprogramming to pluripotency by forced expression of the Yamanaka factors (Oct4, Sox2, Klf4, and c-Myc [OSKM]) occurs through the global remodeling of epigenetic marks; (§Introduction, final ¶) [their] in vivo platform for the reprogramming of epigenetic marks may be used to better understand physiological aging, as well as the role of epigenetics during mammalian aging; (§Partial Reprogramming Ameliorates Cellular Phenotypes Associated with Aging ¶1) short-term induction of OSKM in LAKI 4F cells restored levels of H3K9me3 and H4K20me3, two epigenetic modifications involved in the maintenance of heterochromatin, which are downregulated and upregulated respectively during aging.
Ocampo, Youn, and Kuhn do not explicitly teach anything comprising the term Horvath Clock.
However, Horvath teaches (§Abstract-Results) DNA methylation age has the following properties: first, it is close to zero for embryonic and induced pluripotent stem cells; second, it correlates with cell passage number; third, it gives rise to a highly heritable measure of age acceleration… Horvath is drawn to a list of sites that are hyper- or hypo-methylated with age: (§What is known about the 353 clock CpGs? ¶2) the 353 clock CpGs can be divided into two sets according to their correlation with age. The 193 positively and 160 negatively correlated CpGs get hypermethylated and hypomethylated with age, respectively.
Horvath 2018 teaches that (Fig. 1 caption) Horvath’s clock is a multi-tissue DNA methylation (DNAm)-based age estimator. Horvath teaches (§Epigenetic clock in development and ageing ¶1) the DNAm age of adult somatic cells can be result by expressing Yamanaka factors.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the methods of Ocampo, Youn, and Kuhn with the teachings of Horvath and Horvath 2018 for the benefit of measuring reduced methylation age with a known quantitative tool. One would have been motivated to do so with a reasonable expectation of success because Ocampo demonstrates that their methods reduce methylation age of certain sites so an artisan would have expected all of the sites of Horvath to demonstrate reduced methylation age.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the methods of Ocampo, Youn, and Kuhn would have reduced methylation age as measured by the Horvath Clock of Horvath and Horvath 2018 because the Horvath clock measures DNAm that positively or negatively correlates with aging. One would have known that the methods of Ocampo, Youn, and Kuhn would have reduced methylation age as measured by the Horvath Clock of Horvath and Horvath 2018 because Ocampo demonstrates that (Fig. 1DE) two methylation sites are de-aged with their methods. Therefore the methods of Ocampo, Youn, Kuhn, Horvath, and Horvath 2018 would have produced all the limitations of Claim 106 (and Claims 72, 74-77, 79-81, 83-85, 87, 89-92, 96, and 107-110).
Double Patenting
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 72, 74-81, 83-92, and 96-97 and 106-110 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 10260055 (“US055”), Ocampo (of record), Kuhn (et al. 2012. mRNA as a Versatile Tool for Exogenous Protein Expression. Curr. Gene Ther. 12:347-361, “Kuhn”), Phua (et al. 2013. Transfection efficiency and transgene expression kinetics of mRNA delivered in naked and nanoparticle format. J. Cont. Release 166:227-233, “Phua”), and Gee (et al. 2017. Cellular Reprogramming, Genome Editing, and Alternative CRISPR Cas9 Technologies for Precise Gene Therapy of Duchenne Muscular Dystrophy. Stem Cells Int. 2017:8765154). This rejection is new.
Although the claims at issue are not identical, they not patentably distinct from each other because the instant claims are drawn to methods of rejuvenating any somatic or differentiated cell while retaining cell identity or differentiation by transfecting the cell with mRNA(s) encoding one or more of the reprogramming factors Oct4, Sox2, Klf4, cMyc, Lin28, and NANOG (wherein the mRNA is not integrated intra- or extrachromosomally into the cell’s genome and wherein the cell doesn’t dedifferentiate to become an iPSC), and to methods of treating an age-related disease or condition by applying the methods of rejuvenating. The instant claims are broad, the rejuvenated cell can be derived from any somatic cell, and the open language of “comprising” indicates that other elements are allowed. The patented US055 claim is directed to an ARMM1-mediated microvesicle comprising any cargo protein selected from the group consisting of Oct 4, KLF4, Sox2, and cMyc. Both claim sets have overlapping scope because they are drawn to reprogramming cells using mRNA encoding the reprogramming factors OSKM. Ocampo teaches that (§Abstract) administering that cocktail results in cell rejuvenation, and cyclic induction is most effective. Kuhn teaches benefits of using mRNA, including lower cost and easier storage. Phua teaches mRNA is transiently expressed, and Gee teaches transplanting cells. Kuhn’s teachings would have motivated an artisan to use the microvesicle of the US055 claims with the teachings of Ocampo, Kuhn, Phua, and Gee for the benefit of rejuvenating any cell with lower-cost mRNA and transplanting it into a subject. Furthermore, mRNA and protein are obvious variants. Therefore the instant claims would have been obvious in view of the US055 claims, Ocampo, Kuhn, Phua, and Gee.
Claims 72-81, 83-92, 96-97 and 106-110 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 7 of U.S. Patent No. 10760061 (“US061”; of record), Ocampo (of record), Phua, and Gee. This rejection has been updated in response to the 16 January 2025 claim amendments.
Although the claims at issue are not identical, they not patentably distinct from each other because the instant claims are drawn to methods of rejuvenating any somatic or differentiated cell while retaining cell identity or differentiation by transfecting the cell with mRNA(s) encoding one or more of the reprogramming factors Oct4, Sox2, Klf4, cMyc, Lin28, and NANOG (wherein the mRNA is not integrated intra- or extrachromosomally into the cell’s genome and wherein the cell doesn’t dedifferentiate to become an iPSC), and to methods of treating an age-related disease or condition by applying the methods of rejuvenating. The instant claims are broad, the rejuvenated cell can be derived from any somatic cell, and the open language of “comprising” indicates that other elements are allowed. The patented US061 claims are drawn to a method of reprogramming a mammalian somatic cell into a cell with lengthened telomeres by contacting the cell with a population of modified mRNAs encoding reprogramming factors that can be hTERT or Oct 4, KLF4, Sox2, cMyc, Lin28 or Nanog. Both claim sets have overlapping scope because they are drawn to reprogramming cells using mRNA encoding the reprogramming factors OSKMLN.
Ocampo teaches that (§Introduction ¶2) resetting of telomere sizes is an outcome of cell rejuvenation and (§Abstract) administering that cocktail results in cell rejuvenation, and cyclic induction is most effective. Kuhn teaches benefits of using mRNA, including lower cost and easier storage. Phua teaches mRNA is transiently expressed, and Gee teaches transplanting cells. An artisan would have been motivated to use the method of reprogramming cells of the US061 claims with the teachings of Ocampo, Phua, and Gee for the benefit of rejuvenating any mammalian somatic cell to have lengthened telomeres using Ocampo’s cyclic expression strategy and transplanting it into a subject to treat sarcopenia. Therefore the instant claims would have been obvious in view of the US061 claims, Ocampo, Phua, and Gee. Therefore the instant claims would have been obvious in view of the US061 claims, Ocampo, Phua, and Gee.
Claims 72, 74-81, 83-92, 96-97 and 106-110 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 17812709 (reference application, claims July 2022; “App709”; of record) and Youn (and Chung. 2015. Modified mRNA as an alternative to plasmid DNA [pDNA] for transcript replacement and vaccination therapy. Expert Opin. Biol. Ther. 15[9]:1337-1348; “Youn”, of record). This rejection has been updated in response to the 16 January 2025 claim amendments.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are drawn to methods of rejuvenating any somatic or differentiated cell while retaining cell identity/differentiation by transfecting the cell with mRNA(s) encoding one or more of the reprogramming factors Oct4, Sox2, Klf4, cMyc, Lin28, and NANOG (wherein the mRNA is not integrated intra- or extrachromosomally into the cell’s genome and wherein the cell doesn’t dedifferentiate to become an iPSC), and to methods of treating an age-related disease or condition by applying the methods. The instant claims are broad and the open language of “comprising” indicates that other elements are allowed. The App709 claims are drawn to an RNA vector that encodes reprogramming factors and comprises a silencing mechanism to silence expression of the one or more reprogramming factors and to methods of treating a disease or condition including dermatological diseases; Claim 14 recites the same list of reprogramming factors as instant Claim 72.
Both claim sets have overlapping scope because they are drawn to methods of rejuvenating cells by exposing the cell to mRNA(s) encoding one or more of some of the same reprogramming factors. Although the App709 claims recite a persistent RNA vector, it would have been obvious to an artisan to administer pure mRNA, as taught by Youn, for the benefit of preventing insertional mutagenesis. One would have been motivated to do so with a reasonable expectation of success because Youn teaches that mRNA can be administered in liposomes and doing so has the benefit of preventing insertional mutagenesis. Therefore the instant claims would have been obvious to an artisan in view of App709 claims and Youn.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 72, 74-81, 83-92, 96-97 and 106-110 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of copending Application No. 17812710 (reference application, claims July 2022; “App710”; of record) and Youn. This rejection has been updated in response to the 16 January 2025 claim amendments.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are drawn to methods of rejuvenating any somatic or differentiated cell while retaining cell identity or differentiation by transfecting the cell with mRNA(s) encoding one or more of the reprogramming factors Oct4, Sox2, Klf4, cMyc, Lin28, and NANOG (wherein the mRNA is not integrated intra- or extrachromosomally into the cell’s genome and wherein the cell doesn’t dedifferentiate to become an iPSC), and to methods of treating an age-related disease or condition by applying the methods of rejuvenating. The App710 claims are drawn to a reprogramming factor-encoding polynucleotide having at least 95% identity to SEQ ID NOs 1-6 and to a method of rejuvenating cells while retaining cell identity or differentiation by exposing the cell to mRNA(s) encoding one or more of the same reprogramming factors recited in instant Claim 72.
An artisan wouldn’t know what SEQ ID NOs 1-6 are so they would go to the App710 Spec. and find at ¶12 that those SEQ ID NOs encode the reprogramming factors recited in the instant claims (OSKMLN). Both claim sets have overlapping scope because they are drawn to methods of rejuvenating cells while retaining cell identity or differentiation by exposing the cell to mRNA(s) encoding one or more reprogramming factors. Although the App710 claims recite an RNA vector, it would have been obvious to an artisan to administer pure mRNA, as taught by Youn, for the benefit of preventing insertional mutagenesis. One would have been motivated to do so with a reasonable expectation of success because Youn teaches that mRNA can be administered in liposomes and doing so has the benefit of preventing insertional mutagenesis. Therefore the instant claims would have been obvious in view of the App710 claims and Youn.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 72-81, 83-92, and 96-97 and 105-109 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 17812711 (reference application, claims July 2022; “App711”, of record) and Youn. This rejection has been updated in response to the 16 January 2025 claim amendments.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are drawn to methods of rejuvenating any somatic or differentiated cell while retaining cell identity or differentiation by transfecting the cell with mRNA(s) encoding one or more of the reprogramming factors Oct4, Sox2, Klf4, cMyc, Lin28, and NANOG (wherein the mRNA is not integrated intra- or extrachromosomally into the cell’s genome and wherein the cell doesn’t dedifferentiate to become an iPSC), and to methods of treating an age-related disease or condition by applying the methods of rejuvenating. The App711 claims are drawn to methods of treating a cell, tissue, or organ while retaining cell identity or differentiation by contacting the cell, tissue, or organ with an RNA vector comprising polynucleotides encoding one or more reprogramming factors. Both claim sets have overlapping scope because they are drawn to methods of rejuvenating cells while retaining cell identity or differentiation by exposing the cell to mRNA(s) encoding one or more reprogramming factors and both claim sets recite some of the same reprogramming factors.
Although the App711 claims recite a persistent RNA vector, it would have been obvious to an artisan to administer pure mRNA, as taught by Youn, for the benefit of preventing insertional mutagenesis. One would have been motivated to do so with a reasonable expectation of success because Youn teaches that mRNA can be administered in liposomes and doing so has the benefit of preventing insertional mutagenesis. Therefore the instant claims would have been obvious in view of the App711 claims and Youn.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 16 January 2025 have been fully considered but they are not persuasive. Arguments that are no longer relevant are not addressed.
112(a) Scope of Enablement
The Scope of Enablement rejection is applied because Applicant has not shown that their claimed method results in the full breadth of claimed outcomes, including treating any age-related disease or condition in vivo. Therefore, a person of ordinary skill would determine that using the method to treat any age-related disease or condition is unpredictable.
Applicant argues (p. 9 ¶1) it is not necessary for Kim to show rejuvenation by each of the single factors. Kim shows rejuvenation by a representative factor that is one of the six factors relevant to the presented claims. That is not found persuasive because Applicant’s claims recite a method that results in a certain outcome but Applicant has not demonstrated their claimed method of administering only a single OSKMN factor results in the outcome of treating any age-related disease or condition. Kim discusses only one factor and one disease. The art teaches diseases that would not be treated by Applicant’s method and nothing in Kim not supports enablement that the claimed method of administering only a single SKMLN factor results in the claimed outcome of treating those age-related diseases/conditions or any age-related disease/condition.
Applicant argues (p. 9 ¶2-6) that:
Examiner argues that Roux does not support rejuvenation by one single factor, based on the Examiner's interpretation of "rejuvenated cell."…
The Examiner relied only upon Applicant’s own chosen definition for what constitutes a “rejuvenated cell”. Lest Applicant forget their own definitions in their own Spec., a screenshot of is placed here for convenience:
PNG
media_image1.png
106
684
media_image1.png
Greyscale
PNG
media_image2.png
103
594
media_image2.png
Greyscale
PNG
media_image3.png
299
604
media_image3.png
Greyscale
But Applicant’s remarks indicate they want their chosen definition to be ignored so the claims are now interpreted under their plain meaning instead of under Applicant’s chosen definition.
Applicant further argues (p. 9):
it is not necessary for "rejuvenated cells" to have an identical transcriptomic profile to a young cell. Per paragraph 56 of the instant specification, "rejuvenated cells" have the transcriptomic profile of a younger cell, not necessarily a young cell. In Figure 3G of Roux, the transcriptomic profile of cells expressing single factors O, S, K, or M is clearly different from that of the aged non-treated cell, with decreased expression of aging genes, thus clearly representing the transcriptomic profile of a younger cell.
Those arguments are not found persuasive because just because the transcriptomic profiles is “clearly different”, that does not mean that the cell is rejuvenated (by the plain meaning of “rejuvenated”) or that any age-related disease/condition can be treated with the method. Applicant has not presented evidence that, simply because their cell has a transcriptomic profile that is “clearly different”—from both an aged cell and a young cell—the cell is rejuvenated. What are the genes that are upregulated and downregulated? How do we know that the genes that indicate increased age don’t outweigh the genes that indicate decreased age, when it comes to treating any age-related disease/condition? Even Roux itself does not assert that their transcriptomic data translate to treating diseases/conditions, and they state the opposite:
(§Discussion ¶2) Partial reprogramming restored youthful expression in many aging genes, but the degree of restoration was cell identity dependent, and some gene programs (e.g., PRC2 targets) appear resistant to restoration …. We cannot determine from our data which of these expression changes may confer youthful function or potentially have other, undesired effects. Decomposing the relevant effectors from other effects of reprogramming remains an important area for future research. [emphasis added.]
Applicant has not shown that changes in transcriptome correspond to disease/condition treatment. Therefore, without demonstration of evidence demonstrating otherwise, an artisan of ordinary skill would determine that expressing any one factor to treat any age-related disease or condition is unpredictable.
Applicant argues that (pp. 13-15) the abstracts of Franceschi et al., Licastro et al., Wolfson et al., Johnson et al., and Tacutu et al. disclose common mechanisms so one skilled in the art would reasonably expect that the claimed method that rejuvenates cells would be generally applicable for treating age-related diseases or conditions at least based on such mechanistic commonality. That is not found persuasive because while pathways among age-related diseases may be conserved, none of the cited papers discusses any of those pathways in relation to any of the claimed reprogramming factors or to Applicant’s method of rejuvenation. Nor has Applicant provided evidence about how OSKMLN interact with any of those common mechanisms or common pathways to treat a representative number of disease within the broad genus of age-related diseases/conditions they are claiming their method can treat. Although Applicant shows reduction in some inflammation markers, they don’t show that treats a representative number of diseases within the broad genus of age-related diseases/conditions they are claiming their method can treat.
Applicant argues (pp. 14-15) the discussion of diseases addresses causes but not treatments and that it conflates treating with curing. Applicant argues that the presented claims for treating age-related diseases do not require that a disease be "remediated," or that a cell function properly, or that a cell perform a particular function; the claims are drawn to treating disease, not curing disease. But Applicant has not explained how a disease/condition that results from improper cell function or a cell’s inability to perform a function would be treated by their methods. Applicant is not clear about what “treatment” means to them. The plain meaning is understood as (dictionary.cambridge.org. 2025. “treat”, medical context) “to improve the condition of” but Applicant has not explained how rejuvenating a cell would improve the condition of a person or animal suffering from any age-related disease/condition, particularly if the age-related disease/condition is a result of cellular dysfunction and proper cell function requires an essential nutrient that is not present. Nowhere does the rejection assert that the root cause of the disease/condition must be addressed. But Applicant should supply evidence that their method can treat any age-related disease/condition, because that is what they are claiming it does.
Regarding osteoporosis, Applicant refers again to their cited references Francheschi et al., Licastro et al., Wolfson et al., Johnson et al., and Tacutu et al. Of those, only one—Fransceschi—discusses osteoporosis. Franceschi discusses that osteopenia/osteoporosis are not only highly associated with the aging process but also to different acute inflammatory diseases and teaches the specific cytokines TNFα and IL6. Franceschi teaches inflammatory diseases can lead to bone resorption but does not provide any data showing that inflammation itself causes osteopenia/osteoporosis or that osteopenia/osteoporosis results from inflammation. Franceschi teaches only the two conditions inflammation and osteopenia/osteoporosis are associated. Applicant hasn’t presented any evidence that fixing one will fix the other. Applicant refers to their data that shows reducing inflammation but only one piece of that data (Fig. 7I) shows one inflammatory marker of known relevance to osteopenia/osteoporosis, IL6. However, what Fig. 7I is intending to show is not clear because a basis for comparison is not clear and are not described in the Spec. Are the fluorescence units shown relative to control? Are there two data sets there and one of them is not visible? Applicant alleges that inflammation is an underlying mechanism of osteoporosis but Nutrition doesn’t mention inflammation at all and Franceschi does not teach that inflammation is the only underlying cause, or that reducing inflammation treats osteopenia/osteoporosis. A person of ordinary skill knows that just because two phenomena are associated does not mean reducing one results in treatment of the other.
The art discussed in the rejection teaches a selection of age-related diseases that a person of ordinary skill would determine cannot be treated with the claimed method: age-related infertility, endometriosis, skin cancer, and critical limb ischemia. In each of those cases the art teaches either treatments that don’t comport with the claimed methods or that there is no treatment. Applicant has not explained how their method can—or shown that their method does—treat those conditions. In endometriosis, adhesions and aberrant endometrium grow thicker over time. Without evidence demonstrating otherwise, an artisan would determine that rejuvenating those cells would only allow them to proliferate more, which would worsen the condition; at least Applicant hasn’t explained how their method would treat endometriosis. Similarly, the rejection discusses art-recognized treatments for skin cancer and critical limb ischemia; those treatments require killing or removing affected tissue. Applicant hasn’t explained how their method would treat those conditions. The art teaches egg quality cannot be improved. Applicant hasn’t explained how their method would treat age-related infertility or improve egg quality.
Regarding Applicant’s arguments (p. 11 ¶1-3 and p. 16), where Applicant argues that a person of ordinary skill could use the invention without undue experimentation, that is not found persuasive because Applicant has not demonstrated that administering only a single factor can treat any age-related disease/condition and the art indicates otherwise. Furthermore, the methods recite in vivo treatment but the art indicates successful in vivo treatment cannot be assumed, even based on positive in vitro results, because organisms are complex and diseases/conditions involve complex intercellular interactions.
Applicant hasn’t shown how Roux’s data translate to treating diseases/conditions, particularly when Roux does not show any results from administering only Lin28 or NANOG. Yet, the claims recite treatment outcomes related to administering only Lin28 or only NANOG. Applicant has not provided evidence that a mere shift in transcriptomic profile—even if it were to ensue from each embodiment of their claimed method—would result in treatment for any age-related disease or condition. While Roux’s results show changes in transcriptomic expression, no evidence indicates those changes correspond to treating any condition. Ultimately rejuvenation has to result in treatment of condition because treating any age-related disease/condition is what Applicant’s claims recite. Altogether, the claims cannot be considered enabled for their full breadth because Applicant has not shown treatment of any age-related disease or condition OR a representative number of age-related diseases and conditions and the art indicates there are too many unpredictabilities.
112(b) Indefiniteness
The indefiniteness rejections are new because the claims are unclear because terms used in the claims are unclear, relative terms, terms that lack antecedent basis, and/or their metes and bounds are not definitive.
103
Applicant argues (p. 17, pp. 21-22) Ocampo’s teachings do not make obvious the claimed invention because Ocampo used dox-inducible expression and there was no plasmid expressing OSKM transfected in Ocampo’s cells. Applicant argues that Ocampo never shows that rejuvenation (or partial reprogramming) can be achieved by exogenous delivery of reprogramming factor genes and Ocampo used genetic engineering to create cells with doxycycline-inducible OSKM genes inserted in their genomes which is not compatible with rejuvenation of cells by mRNA that is not integrated intrachromosomally or extrachromosomally into the genome of the cell, nor is compatible with methods for treating diseases. Applicant argues that Ocampo’s genetic engineering strategy using dox-inducible OSKM is not compatible with rejuvenation of cells by mRNA that is not integrated intrachromosomally or extrachromosomally into the genome of the cell, that it’s not compatible with treatment of diseases, and that a person of ordinary skill would not have had a reasonable expectation of success in applying the transgenic, doxycycline-driven expression of genomic OSKM and associated rejuvenation described by Ocampo to an mRNA-based system where exogenous genes expressing reprogramming factors are transfected into cells.
Those arguments are not found persuasive because the art teaches it was routine and customary at time of filing to use mRNA to express a gene/protein in cells, and doing so was of known benefit because the mRNA is not inserted to the genome. Furthermore, Kuhn teaches (§mRNA-Based Gene Therapy ¶2) synthetic modified mRNA complexed with a transfection reagent has been successfully used to express EPO in mice. Applicant has not explained why administering mRNA to a cell or individual would not result in expression of the OSKM factors. Applicant argues that Ocampo never shows that rejuvenation (or partial reprogramming) can be achieved by exogenous delivery of reprogramming factor genes. But Ocampo showed that inducing expression of OSKM produces the claimed result and the art teaches that mRNA could be used to do so. The 103 rejection is a question of obviousness, so whether Ocampo used the exact method as what is claimed is irrelevant because the claimed method would have been obvious in view of Ocampo and the other cited art. Regarding Applicant’s arguments about a lack of a reasonable expectation of success, Applicant has not explained why Ocampo’s strategy of administering the OSKM factors would work only as a dox-inducible strategy or why the factors must be integrated into the genome when Youn and Kuhn teach numerous benefits of administering mRNA to obtain protein expression. Altogether, a person of ordinary skill would determine there is no reason why Ocampo’s factors could not be administered via mRNA.
Note that Ocampo teaches (§Discussion ¶2):
Our results demonstrate that partial reprogramming by short-term expression of the Yamanaka factors has the capacity to rejuvenate cellular phenotypes of aging in mouse and human cells... we demonstrate that tumor formation can be avoided by short-term induction of OSKM… these results show that partial in vivo reprogramming might be used to modulate aging hallmarks and significantly benefit organismal health.
Ocampo teaches (same §, ¶4) [our strategy] may, as well, lead to the development of therapeutic strategies with the goal of ameliorating age-related diseases and thus improving health and longevity. Nothing in those passages mentions any requirement that the OSKM factors be dox-induced. Regarding cyclic induction in an organism, the 103 rejection discusses that Phua teaches mRNA in an organism is transient and an artisan can use different administration methods to modify duration of expression. Applicant has provided no logical reason why Ocampo’s method couldn’t be modified in ways made obvious by the other prior art to produce an mRNA for expressing the same OSKM factors. Indeed, Ocampo itself teaches using their method to induce partial reprogramming in vivo. The claims recite a single method step and that would have been obvious in view of Ocampo, Youn, Kuhn, and the other prior art.
NSDP
The rejection over US055 is new because the patented claims are directed to microvesicle comprising a protein reprogramming factor that can be OSK or M and protein and mRNA are obvious variants.
Applicant hasn’t argued against the rejection over US061.
Applicant argues that the NSDP rejections of App709, App710, and App711 are improper because they are filed after the claimed invention. That is not found persuasive because NSDP rejections over later-filed applications are proper until allowable subject matter has been indicated and the NSDP rejection is the only remaining rejection of the instant claims. See MPEP §804(I)(B)(1)(b)(i). That is not the case here.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Angel (and Yanik. 2010. Innate Immune Suppression Enables Frequent Transfection with RNA Encoding Reprogramming Proteins. PLoS One 5[7]: e11756)
US-20110287536-A1
US-20170360693-A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUTHIE S ARIETI whose telephone number is (571)272-1293. The examiner can normally be reached M-Th 8:30AM-4PM, alternate Fridays 8:30AM-4PM (ET).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ram R Shukla can be reached at (571)272-0735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
RUTHIE S ARIETI
Examiner (Ruth.Arieti@uspto.gov)
Art Unit 1635
/RUTH SOPHIA ARIETI/Examiner, Art Unit 1635
/NANCY J LEITH/Primary Examiner, Art Unit 1636