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 .
Applicant's amendments to the claims and arguments filed on 11-07-2025 have been received and entered. Claims 1, 5, 6, has been amended. Claims 15-21 have been canceled. Claims 1-14 are pending in the instant application.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-14 in the reply filed on 10-09-2024 is acknowledged. The traversal is on the grounds that that there is no additional burden to search all the claims in three groups. This is not found persuasive because instant application is a national stage filing under 35 U.S.C. 371 and according to MPEP 1893.03(d), whether or not a serious burden is required is not a proper basis of traversal in a national stage application. The requirement is still deemed proper and is therefore made FINAL.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12-11-2023. It is noted that claims 15-21 have been canceled.
Claims 1-14 are under consideration.
Priority
This application is a 371 of PCT/US2019/027685 filed on 04/16/2019 that claims priority from US provisional application no 62/700,472 filed on 07/19/2018 and 62/658,901 filed on 04/17/2018.
Withdrawn-Claim Rejections - 35 USC § 112
Claims 1-14 were rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. Applicant's amendments to base claim obviates the basis of the rejection. Applicants' arguments with respect to the withdrawn rejections are thereby rendered moot.
Maintained in modified form-Claim Rejections - 35 USC § 112 - necessitated by amendments
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 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 phrase “contains substantially no oligodendrocyte lineage cells” in claim 1, step a, and the phrase “minimal immuno-staining” in claim 9 contain terms of degree which renders the claim indefinite, because it 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 per MPEP 2173.05(b), when a term of degree is used in the claim, the examiner should determine whether the specification provides some standard for measuring that degree. Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367, 94 USPQ2d 1385, 1391 (Fed. Cir. 2010); Enzo Biochem, Inc., v. Applera Corp., 599 F.3d 1325, 1332, 94 USPQ2d 1321, 1326 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984). If the specification does not provide some standard for measuring that degree, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree). For example, in Ex parte Oetiker, 23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992), the phrases "relatively shallow," "of the order of," "the order of about 5mm," and "substantial portion" were held to be indefinite because the specification lacked some standard for measuring the degrees intended.
In the instant case, claim 1 and 9 are vague and indefinite in the metes and bounds of the phrases “contains substantially no oligodendrocyte lineage cells” and “minimal immune-staining” are unclear. For example, the term “substantially” is a subjective term that is not defined in the instant disclosure in the context of claim 1 in any limiting way. The word “No” is definitive, meaning that the culture comprises no oligodendrocyte cell. Thus, the plain language of the term “substantially no oligodendrocyte” in the context of claim 1 implies that at least some amount of oligodendrocyte may be present in the culture medium. Indeed, the instant disclosure states that “By the end of neurocortical patterning at week 8, neurocortical spheroids contained few cells in the oligodendrocyte lineage as evidenced by minimal immunostaining of OLIG2 and SOX10, two canonical OPC transcription factors (FIGs. 6B-6C)” (see the instant specification, Page 15, last para, Example 2). Additionally, the instant disclosure only provides general statement that “In certain embodiments, the neurocortical spheroids at the end of step a) contain substantially no oligodendrocyte lineage cells ” (see page 11, 5th para.).
Thus, the specification of the claimed invention does not define the term “substantially” in any limiting way and there is no standard provided by the instant specification for measuring the degree intended for the phrase “substantially no oligodendrocytes” as claimed. Likewise, the term “minimal immune-staining” is not defined in a limiting way in the instant disclosure. Therefore, one of skill in the art would not be reasonably apprised of the scope of the terms “substantially no” and “minimal” in the claimed invention because it is unclear what amount of oligodendrocytes and immune-staining will meet these claim limitations as recited in claims 1 and 9, respectively.
Claims 2-8, and 10-14 are included in the rejection because they directly or indirectly depend from the rejected base claim. Appropriate correction is required.
Response to Arguments
Applicant's arguments filed 11-07-2025 have been fully considered but they are not persuasive.
Applicants argue that “Claims 1-14 are rejected under 35 U.S.C. 112(b) as allegedly being indefinite, for reciting "substantially no oligodendrocyte lineage cells" in claim 1, step a, and "minimal immuno-staining" in claim 9. Applicant respectfully submits that one of ordinary skill in the art could readily ascertain the scope of the claim in view of the disclosure, such as FIG. IA, in which Applicant has illustrated the extent of OPC prevalence in NSC.” (Remarks, page 10-11)
Response to Arguments:
FIG. 1A is reproduced below:
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Applicants’ arguments and Figure 1A do not address the issues raised under 35 U.S.C. 112(b) above: The phrases “contains substantially no oligodendrocyte lineage cells” and “minimal immune-staining” are unclear, and the specification of the claimed invention does not define these phrases in any limiting way. For example, the term “substantially” is a subjective term that is not defined in the instant disclosure in the context of claim 1 in any limiting way. The word “No” is definitive, meaning that the culture comprises no oligodendrocyte cell. Thus, the plain language of the term “substantially no oligodendrocyte” in the context of claim 1 implies that at least some amount of oligodendrocyte may be present in the culture medium. Indeed, the instant disclosure states that “By the end of neurocortical patterning at week 8, neurocortical spheroids contained few cells in the oligodendrocyte lineage as evidenced by minimal immunostaining of OLIG2 and SOX10, two canonical OPC transcription factors (FIGs. 6B-6C)” (see the instant specification, Page 15, last para, Example 2). Additionally, the instant disclosure only provides general statement that “In certain embodiments, the neurocortical spheroids at the end of step a) contain substantially no oligodendrocyte lineage cells ” (see page 11, 5th para.).
Maintained in modified form -Claim Rejections - 35 USC § 103-- necessitated by amendments
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.
Claims 1-8, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Douvaras et al (nature protocols | VOL.10 NO.8 | 2015, Published online 2 July 2015; doi:10.1038/nprot.2015.075) in view of Pasca et al (Nature methods |VOL.12 NO.7 |JULY 2015, doi:10.1038/Nmeth.3415).
Claim interpretation:
The specification of the claimed invention states that applicant generated and patterned "neurocortical spheroids" using an optimized version of a 50-day protocol (Pasca et al., Functional cortical neurons and astrocytes from human pluripotent stem cells in 3D culture. Nat Methods 12, 671-678 (2015) (Page 15, example 1, 2nd para). Additionally, the instant specification teaches that by the end of neurocortical patterning at week 8, neurocortical spheroids contained few cells in the oligodendrocyte lineage as evidenced by minimal immunostaining of OLIG2 and SOXl0, two canonical OPC transcription factors (FIGs. 6B-6C). However, subsequent treatment of patterned spheroids with PDGF-AA and IGF-1 for 10 days, resulted in a substantial increase in the number of OPCs (Page 15, example 2, last para.). Thus, it is interpreted that the Pasca’s 50-day protocol can be used to generate and pattern “neurocortical spheroids”, and by the end of neurocortical patterning, the treatment of patterned spheroids with PDGF-AA and IGF-1 can result in a increase in the number of OPCs.
Regarding to claim 1, preamble, Douvaras et al teaches Generation and isolation of oligodendrocyte progenitor cells from human pluripotent stem cells (Title). Douvaras et al teaches Fundamental steps of hPSC differentiation to oligodendrocytes with Sphere selection in Figure 2 (Page 1145)
Regarding to claim 1 and step a and b, Douvaras et al describes a robust, fast and reproducible differentiation protocol to generate human oligodendrocytes from pluripotent stem cells (PSCs) using a chemically defined, growth factor–rich medium. Within 8 d, PSCs differentiate into paired box 6–positive (paX6+) neural stem cells, which give rise to Olig2+ progenitors by day 12. Oligodendrocyte lineage transcription factor 2–positive (Olig2+) cells begin to express the transcription factor nKX2.2 around day 18, followed by srY-box 10 (Sox10) around day 40 (Abstract).
Although Douvaras et al teach PSCs differentiate into paired box 6–positive (paX6+) neural stem cells (Abstract and Figure 2), Douvaras et al do not specifically teach generating a neurocortical spheroid (NCS) through neurocortical patterning of said pluripotent stem cells, wherein said NCS contains substantially no oligodendrocyte lineage cells. However, Pasca et al cures the deficiency.
Regarding to claim 1, step a, Pasca et al teaches human cortical spheroids (hCSs) can be used as a versatile platform for generating other neuronal and glial subtypes (such as oligodendrocytes) in vitro (Abstract). Pasca et al teaches human cortical spheroids (hCSs), were generated from intact hiPSC colonies that were cultured and minimally patterned in exclusively nonadherent conditions and in the absence of extracellular scaffolding (Page 671, right column and Figure 1, Page 672). In one aspect, Pasca et al teaches that the hCS method can generate only excitatory neurons of the dorsal telencephalon (Page 671, right column). It should be noted that since human cortical spheroids method is capable of generating only excitatory neurons, a person of ordinary skill in the art would recognize that the human cortical spheroids without specific induction condition would not generate oligodendrocyte lineage cells (free of oligodendrocyte progenitor cells or any glial subtypes).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the rejected claims to combine the teachings of prior art to modify the method of Douvaras et al by generating human cortical spheroids (hCSs) that can be used as a versatile platform for generating other neuronal and glial subtypes (such as oligodendrocytes) in vitro as taught by Pasca et al as instantly claimed, with a reasonable expectation of success. Said modification amounting to combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would have been motivated to do so because Pasca et al provide explicit advantage of a versatile platform for generating glial subtypes (such as oligodendrocytes) in vitro (Abstract) and provide a method of culturing human cortical spheroids that is simple, scalable and reproducible between hiPSC lines, across and within differentiations (Page 672, left column, 1st para.). One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Pasca et al provides proof of principle and methods for differentiation of human pluripotent stem cells in 3d culture to cortical spheroids.
It is noted that the instant disclosure does not provide any definition for the phrase “NCS contains the substantially no oligodendrocyte lineage cells” in a limiting way. Additionally, Pasca et al are silent in neurocortical spheroid containing oligodendrocyte lineage cells, and Pasca et al provide similar method to generate neurocortical spheroid as the claimed invention (see the instant specification, Page 15, example 1, 2nd para). Thus, a person of ordinary skill in the art would recognize that Pasca et al provide neurocortical spheroid that contains substantially no oligodendrocyte lineage cells, and the claimed invention, as a whole, is clearly prima facie obvious in absence of any surprising or unexpected with respect to use of “NCS contains the substantially no oligodendrocyte lineage cells”.
Regarding claims 1-step b, 2, 3, 4, Douvaras et al teaches PDGF medium with PDGFAA and IGF-1 (Page 1147)
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Regarding to claims 5, 6, 8, Douvaras et al teaches timeline of oligodendrocyte differentiation in Figure 1 showing recommended time points to evaluate the expression of stage-specific markers through immunofluorescence (Page 1144). Thus, it is indicating that the time for induction was recognized in the prior art to be a result-effective variable. A person of ordinary skill in the art would have been motivated to perform the induction for different periods of time such as 50-60 days or 60-70 days or about 10 days out of the course of routine optimization
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Regarding to claim 7, Douvaras et al teaches generation and isolation of oligodendrocyte progenitor cells from human pluripotent stem cells (Title)
Regarding to claim 10, Douvaras et al teaches Live imaging and quantification of O4+ OPCs showing an increase in the number of O4+ cells with time (Page 1145).
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Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Douvaras et al (nature protocols | VOL.10 NO.8 | 2015, Published online 2 July 2015; doi:10.1038/nprot.2015.075) in view of Pasca et al (Nature methods |VOL.12 NO.7 |JULY 2015, doi:10.1038/Nmeth.3415), as applied to claims 1-8,10 above, and further in view of Jiang et al (NATURE COMMUNICATIONS | 4:2196 | DOI: 10.1038/ncomms3196, Published 23 Jul 2013).
Claims interpretation:
According to claim 9, oligodendrocyte progenitor cell (OPC) markers are OLIG2 and SOX10.
Since neurocortical spheroids (NCS) and oligocortical spheroids (OCS) can differentiate to oligodendrocyte progenitor cells (OPCs) and oligodendrocytes (Page 4, Brief Description of The Drawings of the claimed invention). NCS and OCS are interpreted as neural progenitor cell (NPC) and vice versa.
The teachings of the above references are as described above. The above references do not specifically teach minimal immuno-staining of one or more canonical OPC markers selected from transcription factors oligodendrocyte transcription factor (OLIG2) and Sry-related HMGbox gene 10 (SOX10)
Regarding to claim 9, Jiang et al teaches the use of Olig2 marker and hESC-derived Olig2+ progenitors (Abstract) and the basic helix-loop-helix transcription factor Olig2 is required for motoneuron and oligodendrocyte development in mice (Page 2, left column, last para.). Jiang et al teaches that they differentiated the hESCs to either Olig2-negative NPCs or a pure progenitor population, Olig2PCs (page 13, left column, last para.). Since Jiang et al teach generation of Olig2-negative NPCs or a pure progenitor population, and the importance of Olig2 in subsequent differentiation of NPCs to oligodendrocyte, one of ordinary skill in the art who is seeking to generate oligodendrocyte would be motivated to try and use Olig2-negative neural progenitor cells as taught by Jiang et al for generation of oligodendrocytes.
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the rejected claims to combine the teachings of prior art to modify the method of the above combined references by using Olig2-negative NPCs or a pure progenitor population as taught by Jiang et al for generation of oligodendrocytes as instantly claimed, with a reasonable expectation of success. Said modification amounting to combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would have been motivated to do so because Jiang et al teach using Olig2-GFP knockin hESCs, in which GFP is inserted into the Olig2 gene locus so that ESC-derived cells that express Olig2 also express GFP (Page 2, right column, 2nd para.), and Jiang et al teach “we first differentiated the hESCs to either Olig2-negative NPCs or a pure progenitor population Olig2PCs” (page 13, left column, last para.), and Jiang et al stated that “we show that human astroglia generated from hESC-derived Olig2-positive or Olig2-negative neural progenitors are protective against ischaemic brain injury and improve functional outcome.” (Page 12, right column, 2nd para.). One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Jiang et al were successful in differentiation of the hESCs into either Olig2-negative NPCs or a pure progenitor population Olig2PCs (page 13, left column, last para.).
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Douvaras et al (nature protocols | VOL.10 NO.8 | 2015, Published online 2 July 2015; doi:10.1038/nprot.2015.075) in view of Pasca et al (Nature methods |VOL.12 NO.7 |JULY 2015, doi:10.1038/Nmeth.3415) as applied to claims 1-8, 10 above and further in view of Nevin et al (The American Journal of Human Genetics 100, 617–634, April 6, 2017, http://dx.doi.org/10.1016/j.ajhg.2017.03.005).
The teachings of the above references are as described above. The above references do not specifically teach pluripotent stem cells are iPSC isolated from a subject having a disease, said disease is characterized by a defect in myelin production, said disease is Pelizaeus-Merzbacher disease (PMD), said PMD is characterized by a deletion of the entire PLPl locus, a duplication of the entire PLPl locus, or a point mutation in PLPl.
Regarding to claims 11, 12, 13, 14, Nevin et al teaches modeling the mutational and phenotypic landscapes of Pelizaeus-Merzbacher disease with human iPSC-derived oligodendrocytes (Title). Nevin et al teaches Pelizaeus-Merzbacher disease (PMD) is a pediatric disease of myelin in the central nervous system (See below) (Abstract, page 617).
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Therefore, it would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the rejected claims to combine the teachings of prior art to modify the method of the above references by using pluripotent stem cells as taught by Nevin et al to generate cortical spheroids as instantly claimed, with a reasonable expectation of success. Said modification amounting to combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would have been motivated to do so because Nevin et al provide explicit advantage of classification of Pelizaeus-Merzbacher disease (PMD) subgroups by cell-intrinsic phenotypes and identified a subset of mutations for targeted testing of small-molecule modulators of the endoplasmic reticulum stress response, which improved both morphologic and myelination defects (Abstract). One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Nevin et al were successful in using human induced pluripotent stem cells (hiPSCs) and hiPSC-derived oligodendrocytes from 12 individuals with mutations spanning the genetic and clinical diversity of PMD (Abstract).
Response to Arguments
Applicant's arguments filed on 11-07-2025 have been fully considered but they are not persuasive.
1. Applicant essentially argue that “Douvaras teaches, as a "CRITICAL STEP" under Step 24, that "only the OLIG2+ cells aggregate into spheres, wherein the OLIG2· cells remain as single cells.
There are two key facts concerning the Douvaras method.
First, for the Douvaras method to work, a critical step is to obtain as many OLIG2+ cell aggregates, first through the differentiation Steps 21-23, and then the detachment Step 24, before such cell aggregates are further differentiated into OPCs in subsequent steps.
Second, the "sphere" generated by aggregation of the OLIG2+ cells are not the NCS in claim 1, step a). In that regard, Applicant is in complete agreement with the Examiner's finding that "Douvaras et al do not specifically teach generating a neurocortical spheroid (NCS) through neurocortical patterning of said pluripotent stem cells, wherein said NCS contains substantially no oligodendrocyte lineage cells" (p.12, 2nd para. of the Office Action).
Specifically, the Douvaras "sphere" appears to be cell aggregates enriched for OLIG2+ cells. They do not appear to have the layered/ laminated structure in the "hCS" of Pasca (see below). Further, such cell aggregates are plated again in Step 30, and further differentiated to OPC in adherent cultures as in Steps 31-32, and may detach as a sheet of cell if not being careful in Step 32(A)(iii)
Pasca (incorporated by reference in Example 1 of the specification) purportedly teaches a protocol to generate neurocortical spheroids (NCS) using a 50-day protocol. An improved variation of Pasca is described in Example 7 of the specification.
The Pasca protocol is best illustrated in FIG. la, copied below - note the sphere shape at Day 43, and the laminated layers in cryosection - the dark "proliferative zone," the surrounding "deep cortical layers," and the outer "superficial cortical layers," dotted with astrocytes (blue dots)”. (Remarks, Page 4-5).
Response to Arguments:
In response to applicant's argument pertaining to Douvaras and Pasca, it appears that Applicant is arguing that the cited references do not expressly suggest the claimed invention. However, it is well established in case law that a reference must be considered not only for what it expressly teaches, but also for what it fairly suggests. In re Burkel, 201 USPQ 67 (CCPA 1979). Furthermore, in the determination of obviousness, the state of the art as well as the level of skill of those in the art are important factors to be considered. The teaching of the cited references must be viewed in light of these factors. Douvaras reference is cited to show generation and isolation of oligodendrocyte progenitor cells from human pluripotent stem cells (Title). Douvaras et al teach fundamental steps of hPSC differentiation to oligodendrocytes with Sphere selection in Figure 2 (Page 1145). Within 8 d, PSCs differentiate into paired box 6–positive (paX6+) neural stem cells, which give rise to Olig2+ progenitors by day 12. Oligodendrocyte lineage transcription factor 2–positive (Olig2+) cells begin to express the transcription factor nKX2.2 around day 18, followed by srY-box 10 (Sox10) around day 40 (Abstract). Douvaras et al teach “The transition from PSCs to OLIG2+ progenitors are associated with massive proliferation, …. the adherent cultures are dissociated to form spheres in suspension” (Page 1144, right column, last para). Thus, Douvaras et al teaches oligocortical spheroid containing oligodendrocyte Olig2+ progenitor cells.
The Pasca reference is cited to show “neurocortical patterning of said pluripotent stem cells, wherein said NCS contains substantially no oligodendrocyte lineage cells”: Pasca et al teaches human cortical spheroids (hCSs) can be used as a versatile platform for generating other neuronal and glial subtypes (such as oligodendrocytes) in vitro (Abstract). Pasca et al teaches human cortical spheroids (hCSs), were generated from intact hiPSC colonies that were cultured and minimally patterned in exclusively nonadherent conditions and in the absence of extracellular scaffolding (Page 671, right column and Figure 1, Page 672). In one aspect, Pasca et al teach that the hCS method can generate only excitatory neurons of the dorsal telencephalon (Page 671, right column). It should be noted that since human cortical spheroids method is capable of generating only excitatory neurons, a person of ordinary skill in the art would recognize that the human cortical spheroids without specific induction condition would not generate oligodendrocyte lineage cells (free of oligodendrocyte progenitor cells or any glial subtypes). Pasca et al also teach Figure 1 : Generation and characterization of human cortical spheroids (hCS) from hiPSCs (Page 672). Thus, Pasca et al teach “generating a neurocortical spheroid (NCS) through neurocortical patterning of said pluripotent stem cells, wherein said NCS contains substantially no oligodendrocyte lineage cells”.
Applicants’s arguments regarding “They do not appear to have the layered/ laminated structure in the "hCS" of Pasca” and “cell aggregates are plated again in Step 30, and further differentiated to OPC in adherent cultures as in Steps 31-32, and may detach as a sheet of cell if not being careful in Step 32(A)(iii)” are not recited in the claims and are not persuasive.
2. Applicant essentially argue that one key difference between Douvaras and the claimed invention is that Douvaras requires the use of OLIG2+ cells (which are crucial for creating oligodendrocytes) enriched through cell aggregation (see above, especially "Critical Step" 24). The claimed invention not only lacks this requirement, but in fact teaches away from this by requiring the NCS to "contains substantially no oligodendrocyte lineage cells." That is, Douvaras relies on "spheres" or cell aggregates formed by OLIG2+ progenitors, and the claimed method avoids using OLIG2+ progenitors …..
Thus, the so-called "sphere" in Douvaras appears to be nothing more than sphere-shaped cell aggregates devoid of the 3D layered structure in NCS, and the cell aggregates only exist temporarily in an enrichment step and are soon to be dispersed to lose the sphere shape.
In other words, the difference between Douvaras and the claimed invention is such, that they are directed to completely different methods, with completely different/ noninterchangeable steps, even though they might share the same ultimate goal of producing oligodendrocytes (ODCs).
As to Pasca, the protocol ends just after week 7 (and into week 8), though longer growth and further increase in size is possible. Pasca does not disclose that the generated NCS "contains substantially no oligodendrocyte lineage cells," as claimed. …Pasca also does not disclose any further differentiation of such NCS, including expanding the few OPCs in the NCS, and differentiate into oligocortical spheroid (OCS), as claimed. Using an illustration in FIG. lA of the instant application, Pasca at best teaches a process within the yellow box that ended at the beginning of week 8 (i.e., Day 50) (Remarks, page 6-7).
Response to Arguments:
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case:
It is noted that the ultimate goal of claimed invention and Douvaras is to generate an oligocortical spheroid containing oligodendrocyte progenitor cells (OLIG2+ progenitor cells), and as applicant admitted, OLIG2+ progenitor cells are crucial for creating oligodendrocytes. Applicants argue that “the claimed invention not only lacks this requirement but in fact teaches away from this by requiring the NCS to "contains substantially no oligodendrocyte lineage cells”. However, Douvaras is cited to teach generation of oligocortical spheroid contain oligodendrocyte progenitor cells which are OLIG2+ progenitor cells . It appears Applicants have further engaged in selective reading of the teachings of Douvaras et al who teach OLIG2+ progenitor cells (oligodendrocyte progenitor cells) to formulate the grounds for teaching away. The claims do not have limitation to specify oligodendrocyte progenitor cells are not OLIG2+ progenitors, and it would not make sense to exclude OLIG2+ progenitor cells while the whole purpose is to generate oligodendrocyte progenitor cells which are OLIG2+ progenitor cells. It also appears that applicant is attempting to argue Douvaras do not teach the generating a neurocortical spheroid (NCS) in step a of claim 1. However, that’s why Pasca reference was cited to address step a of claim 1 which require “generating a neurocortical spheroid (NCS) through neurocortical patterning of said pluripotent stem cells, wherein said NCS contains substantially no oligodendrocyte lineage cells”. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argue that “the difference between Douvaras and the claimed invention is such, that they are directed to completely different methods, with completely different/ noninterchangeable steps, even though they might share the same ultimate goal of producing oligodendrocytes (ODCs).”. However, Applicant's arguments amount to nothing more than conjecture with mere allegations of patentability lack of sufficient explanation or rationale. As mentioned above, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. It is noted that the specification of the claimed invention states that “applicant generated and patterned "neurocortical spheroids" using an optimized version of a 50-day protocol (Pasca et al., Functional cortical neurons and astrocytes from human pluripotent stem cells in 3D culture. Nat Methods 12, 671-678 (2015)” (Page 15, example 1, 2nd para). Additionally, the instant specification teaches that “by the end of neurocortical patterning at week 8, neurocortical spheroids contained few cells in the oligodendrocyte lineage as evidenced by minimal immunostaining of OLIG2 and SOXl0, two canonical OPC transcription factors (FIGs. 6B-6C). However, subsequent treatment of patterned spheroids with PDGF-AA and IGF-1 for 10 days, resulted in a substantial increase in the number of OPCs” (Page 15, example 2, last para.). Thus, as evidenced by applicant disclosure, the Pasca’s 50-day protocol can be used to generate and pattern “neurocortical spheroids”, and by the end of neurocortical patterning, the treatment of patterned spheroids with PDGF-AA and IGF-1 (as taught by Douvaras) can result in a increase in the number of OPCs.
3. Applicant essentially argue that there is simply no motivation to modify Douvaras by Pasca. MPEP 2143.01, Sec. V states that "If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification." MPEP 2143.01, Sec. VI also states that "If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious."
There is also no reasonable expectation that such modification can be carried out - the Examiner merely asserted that Douvaras can be modified by Pasca, without specifying how. Specifically, the last para. in p.12 of the OA states: "it would have been prima facie obvious ... to combine the teachings of prior art to modify the method of Douvaras et al by generating human cortical spheroids (hCSs) that can be used as a versatile platform for generating other neuronal and glial subtypes (such as oligodendrocytes) in vitro as taught by Pasca et al as instantly claimed, with a reasonable expectation of success" (underline emphasis added) (Remarks, page 8).
Response to Arguments:
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Douvaras et al describes a robust, fast and reproducible differentiation protocol to generate human oligodendrocytes from pluripotent stem cells (PSCs) using a chemically defined, growth factor–rich medium. Within 8 d, PSCs differentiate into paired box 6–positive (paX6+) neural stem cells, which give rise to Olig2+ progenitors by day 12. Oligodendrocyte lineage transcription factor 2–positive (Olig2+) cells begin to express the transcription factor nKX2.2 around day 18, followed by srY-box 10 (Sox10) around day 40 (Abstract).
Although Douvaras et al teach PSCs differentiate into paired box 6–positive (paX6+) neural stem cells (Abstract and Figure 2), Douvaras et al do not specifically teach generating a neurocortical spheroid (NCS) through neurocortical patterning of said pluripotent stem cells, wherein said NCS contains substantially no oligodendrocyte lineage cells. However, Pasca et al cures the deficiency. Pasca et al teaches human cortical spheroids (hCSs) can be used as a versatile platform for generating other neuronal and glial subtypes (such as oligodendrocytes) in vitro (Abstract). Pasca et al teaches human cortical spheroids (hCSs), were generated from intact hiPSC colonies that were cultured and minimally patterned in exclusively nonadherent conditions and in the absence of extracellular scaffolding (Page 671, right column and Figure 1, Page 672). In one aspect, Pasca et al teaches that the hCS method can generate only excitatory neurons of the dorsal telencephalon (Page 671, right column). It should be noted that since human cortical spheroids method is capable of generating only excitatory neurons, a person of ordinary skill in the art would recognize that the human cortical spheroids without specific induction condition would not generate oligodendrocyte lineage cells (free of oligodendrocyte progenitor cells or any glial subtypes).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the rejected claims to combine the teachings of prior art to modify the method of Douvaras et al by generating human cortical spheroids (hCSs) that can be used as a versatile platform for generating other neuronal and glial subtypes (such as oligodendrocytes) in vitro as taught by Pasca et al as instantly claimed, with a reasonable expectation of success. Said modification amounting to combining prior art elements according to known methods to yield predictable results.
One of ordinary skill in the art would have been motivated to combine the teachings of prior art to modify the method of Douvaras et al by generating human cortical spheroids (hCSs) as taught by Pasca et al because Pasca et al provide explicit advantage of a versatile platform for generating glial subtypes (such as oligodendrocytes) in vitro (Abstract) and provide a method of culturing human cortical spheroids that is simple, scalable and reproducible between hiPSC lines, across and within differentiations (Page 672, left column, 1st para.). One of ordinary skill in the art would have had a reasonable expectation of success in doing so because Pasca et al provides proof of principle and methods for differentiation of human pluripotent stem cells in 3d culture to cortical spheroids.
It is noted that the instant disclosure does not provide any definition for the phrase “NCS contains the substantially no oligodendrocyte lineage cells” in a limiting way. Additionally, Pasca et al are silent in neurocortical spheroid containing oligodendrocyte lineage cells, and Pasca et al provide similar method to generate neurocortical spheroid as the claimed invention (see the instant specification, Page 15, example 1, 2nd para). Thus, a person of ordinary skill in the art would recognize that Pasca et al provide neurocortical spheroid that contains substantially no oligodendrocyte lineage cells, and the claimed invention, as a whole, is clearly prima facie obvious in absence of any surprising or unexpected with respect to use of “NCS contains the substantially no oligodendrocyte lineage cells”.
4. Applicant essentially argue that
“First of all, Jiang does not appear to cure the defects of the Douvaras - Pasca combination, as explained above. Since claim 9 depends on claim 1, the same defect in combination persists when Jiang fails to cure the defects.
Second, it is still unclear how the Jiang method can be combined in any way with either Douvaras or Pasca. In fact, Jiang itself teaches that this cannot be done.
……..
"It is unlikely that Olig2PC-Astros and NPC-Astros differentiated to the oligodendroglial lineage and contributed to myelination after transplantation as none of the transplanted astroglia expressed the oligodendroglial progenitor marker NG2 (Supplementary Fig. S5)" (page 9, right column, last sentence of the first paragraph in Jiang). Thus, Jiang itself explicitly dispels the Examiner's assertion of using "Olig2-negative neural progenitor cells as taught by Jiang et al for generation of oligodendrocytes” (Remarks, page 9-10)
Response to Arguments:
Applicants have further engaged in selective reading of the teachings of Jiang et al to formulate the grounds for Jiang being failed to teach the claim limitation. It is noted that the claim 9 require NCS lack or has minimal immuno-staining of OLIG2 or SOX10. Jiang et al was cited to teach Olig2 negative NPCs: Jiang et al teach two neural progenitor cells population: Olig2-/GFP- (negative) NPCs and Olig2 +/GFP + (positive) NPC (Olig2PCs) which are further used to generate human astroglia and referred to them as NPC-astroglial cells (NPC-Astros) and Olig2PC-astroglial cells (Olig2PC-Astros) respectively (page 2, 2nd para.), and Jiang et al differentiated the hESCs to either Olig2-negative NPCs or a pure progenitor population, Olig2PCs (Olig2 positive) (page 13, left column, last para.). Thus, Jiang et al clearly provide evidence for method of making Olig2 /GFP (negative) NPCs that can be achieved in the prior art reference before the effective filing date of the rejected claims.
Applicant also attempted to engage in selective reading to cite teachings of Jiang et al and argue that these populations cannot be used to generate oligodendrocytes: “It is unlikely that Olig2PC-Astros and NPC-Astros differentiated to the oligodendroglial lineage and contributed to myelination after transplantation as none of the transplanted astroglia expressed the oligodendroglial progenitor marker NG2 (Supplementary Fig. S5)” (page 9, right column, last sentence of the first paragraph in Jiang). However, this is not persuasive because, as mentioned above, Jiang et al used Olig2 /GFP (negative) NPCs and Olig2 +/GFP + (positive) NPC (Olig2PCs) which are used to generate human astroglia and referred to them as NPC-astroglial cells (NPC-Astros) and Olig2PC-astroglial cells (Olig2PC-Astros), respectively (page 2, 2nd para.). Thus, Olig2PC-Astros and NPC-Astros are clearly not original Olig2-/GFP- (negative) NPCs and Olig2 +/GFP + (positive) NPC (Olig2PCs). More evidences are as follow: Jiang et al teach Olig2PC NPC (positive) cells only generate astroglial cells in the presence of BMP4 (Page 2, right column, 3rd para.), and Olig2- (negative) NPCs also cultured in the presence of BMP4 for another 20 days to further differentiate the NPCs to astroglia (NPC-Astros) (Page 4, left column, 2nd para.). Thus, the Olig2PC-Astros and NPC-Astros populations are intended to be cultured and differentiated into astroglia, and they require the presence of BMP4 to generate astroglial cells which require specific differentiation factors. Applicants’ arguments regarding Olig2PC-Astros and NPC-Astros cannot differentiate into oligodendroglial lineage are not persuasive because Jiang et al was cited to teach Olig2 negative NPCs population not differentiated Olig2PC-Astros and NPC-Astros populations. Also, Applicants do not provide evident that shows Olig2 /GFP (negative) NPCs cannot be used to generate oligodendrocyte progenitor cells.
Again, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case: Pasca et al teaches human cortical spheroids (hCSs) can be used as a versatile platform for generating other neuronal and glial subtypes (such as oligodendrocytes) in vitro (Abstract). Pasca et al teaches human cortical spheroids (hCSs), were generated from intact hiPSC colonies that were cultured and minimally patterned in exclusively nonadherent conditions and in the absence of extracellular scaffolding (Page 671, right column and Figure 1, Page 672). In one aspect, Pasca et al teaches that the hCS method can generate only excitatory neurons of the dorsal telencephalon (Page 671, right column). It should be noted that since human cortical spheroids method is capable of generating only excitatory neurons, a person of ordinary skill in the art would recognize that the human cortical spheroids without specific induction condition would not generate oligodendrocyte lineage cells (free of oligodendrocyte progenitor cells or any glial subtypes). Thus, a person of ordinary skill in the art would recognize that Pasca et al provide neurocortical spheroid that contains substantially no oligodendrocyte lineage cells, and the claimed invention, as a whole, is clearly prima facie obvious in absence of any surprising or unexpected with respect to use of “NCS contains the substantially no oligodendrocyte lineage cells”.
Additionally, Jiang et al teach two neural progenitor cells population: Olig2 /GFP (negative) NPCs and Olig2 +/GFP + (positive) NPC (Olig2PCs or NPC-astroglial cells or NPC-Astros) (page 2, 2nd para.), and they differentiated the hESCs to either Olig2-negative NPCs or a pure progenitor population, Olig2PCs (Olig2 positive) (page 13, left column, last para.). Thus, Jiang et al clearly provide evidence for method of making Olig2 /GFP (negative) NPCs that can be achieved in the prior art before the effective filing date of the rejected claims.
Thus, the combined prior art references provide evidences for methods of generating Olig2-negative NPCs/ cortical spheroids that can be used to further differentiate into oligodendrocyte progenitor cells or oligodendrocytes.
As per MPEP 716.01(c) (II), Arguments by applicant cannot take the place of evidence : Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHOA NHAT TRAN whose telephone number is (571)270-0201. The examiner can normally be reached M-F (9-5).
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/KHOA NHAT TRAN/Examiner, Art Unit 1632
/PETER PARAS JR/Supervisory Patent Examiner, Art Unit 1632