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 .
Status of the Claims
Claims 16-17, 19-26, 29, 31, 35-38 are currently pending.
Claims 16-17, 29, 31, and 35 are currently amended.
Claims 16-26 and 31 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.
Claim(s) are cancelled.
Claims 1-15, 18, 27, 28, 30, 32-34, and 39 are cancelled.
Claims 29 and 35-39 have been considered on the merits.
Maintained Rejections Necessitated by Amendment
Claim Interpretation
Claim 29 has been amended to read “and wherein said spheroid is embedded in a collagen or gelatin matrix, said collagen matrix comprising collagen at a concentration ranging from 0.75 mg/mL to 3 mg/mL”. The claim language of “collagen or gelatin matrix” followed by specific concentrations of collagen, requires only that collagen is present in the claimed spheroid. Gelatin is not currently a required limitation of claim 29, rather it is an optional limitation due to the use of the word “or”. Thus, the quoted wherein limitation of claim 29 is being interpreted to require that the spheroid is embedded in a collagen matrix comprising collagen at a concentration ranging from 0.75 mg/mL to 3 mg/mL.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 29 and 36-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a spheroid comprising proliferative primary human hepatocytes (PHH), embedded within a collagen matrix with concentrations ranging from 0.75-3 mg/ml without significantly more. The claim(s) recite(s) “a spheroid comprising proliferative primary human hepatocytes (PHH), wherein said spheroid has an acinus-like structure with a hollow lumen, and wherein, said spheroid is embedded in a collagen matrix or gelatin matrix, said collagen matrix comprising collagen at a concentration ranging from 0.75-3 mg/mL” which is a product of nature without significantly more. This judicial exception is not integrated into a practical application because the independent claim is reciting a composition without any additional limitations which integrate the claimed composition into a practical application present. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception as explained in detail below.
The claims are directed to:
A spheroid containing PHH and embedded in a collagen matrix that encompasses the natural product of liver tissue.
The claims recite a composition of PHH in the form of a spheroid. PHH, as stated above, as primary human hepatocytes, in other terms, human liver cells obtained directly from the liver of a human being. There are no limitations in the claims that require the composition differ from the cells which are found in nature, or that these cells which are clearly obtained directly from human livers have been altered in a way which results in a product which is not simply a natural product which has been isolated from nature (i.e. from the human liver).
Additionally, the claims recite that the spheroid is embedded in a collagen matrix comprising collagen at a concentration ranging from 0.75-3 mg/mL. Collagen is the most abundant extracellular matrix protein which is present in human liver tissues. Embedding the spheroid within a collagen matrix does not support a markedly different characteristic of the invention as compared to human liver tissue.
The only physically descriptive characteristic of the spheroid which is claimed is “wherein the spheroid has an acinus-like structure with a hollow lumen”. This characteristic further defines an aspect of the human liver. The human liver contains basic acinus units that contain a small portal tract at the center (Rose, pg. 2, para 3; reference of record).
Thus, the claimed spheroid is defined by (1) containing PHH, (2) being present within a collagen matrix, and (3) displaying an acinus-like structure with a hollow lumen. All three of these characteristics define the human liver and therefore support a conclusion of the claimed product being a product of nature.
The claims are directed to a composition using only a nature-based product, i.e., PHH cells, this nature-based product is analyzed to determine whether it has markedly different
characteristics from any naturally occurring counterpart(s) in their natural state. In this regard, the
disclosed PHH spheroid exists entirely in nature (e.g., same genotype and phenotype potential and structure).
The art teaches about PHH spheroids stating that “human liver samples were obtained from patients undergoing liver resection”, that the cells were “isolated by a two-step collagenase perfusion procedure”, and that fresh hepatocytes are “embedded into a collagen matrix” (Rose et al, Scientific Reports, pg. 12, paras 2-3). Therefore, the art teaches that human liver samples contain collagen and PHH and that only isolation is required to obtain PHH from nature. Further, that to obtain the PHH spheroid the PHH are only reintroduced to a collagen rich matrix (i.e. the claimed embedded in collagen). Further, Rose et al teaches that the PHH spheroids, which were produced by the method which was just explained, “appears as a hepatosphere bordered by a single layer of well-organized cells forming an acini-like structure with a hollow lumen” (Rose, pg. 2, para 3). Therefore, the art is teaching that the PHH form the natural structure found in the liver.
The claims thus encompass a PHH spheroid that is identical (no difference in characteristics) to naturally occurring PHH cells in the collagen rich ECM of the liver (i.e., naturally occurring liver tissue). Since there is no difference between the PHH spheroid claimed and naturally PHH and collagen containing liver tissue, the PHH spheroids do not have markedly different characteristics, and thus are a “product of nature” exception. In re Roslin Institute (Edinburgh), 750 F.3d
1333, 1338-39 (Fed. Cir. 2014). Accordingly, the claimed invention is directed to an exception. Because
the claimed invention does not include any additional features that could add significantly more to the
exception, the claimed culture does not qualify as eligible subject matter, and should be rejected under
35 U.S.C. § 101.
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Step 2A has recently been revised to include two prongs (Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019):
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An examination of Step 2A in the revised 101 guidance, with respect to the claimed invention, the answer is yes since the claimed invention comprises naturally occurring products (judicial exceptions), in the instant case these naturally occurring products are PHH spheroids. When examining the claimed invention with regards to Step 2A prong 1, the answer is yes since the claimed invention encompasses naturally occurring products. When examining the claimed invention with regards to Step 2A prong 2, the answer is no since the claimed invention does not recite additional elements that integrate the judicial exception, in the instant case a PHH spheroid, into a practical application.
It is only the recited limitations in the claims that are examined under 101 and not aspects such as what the PHH spheroid is capable of treating or used for (i.e. PHH spheroid for drug testing). In this case only PHH spheroid is examined with respect to its status as a judicial exception. It is again emphasized that the claimed invention is a composition and not a method.
An examination of Step 2B, the answer is no with respect to the claimed invention. There are no other additional elements recited in the claim that would amount to significantly more than the judicial exceptions. The PHH spheroid as claimed encompasses a composition that is indistinguishable from those that exist in nature and there are no limitations that add any additional elements to the claimed PHH spheroid. The PHH spheroid has the same function as it does in nature and the fact that they may exist in an isolated system does not change the PHH spheroid in a significant or meaningful way to amount to more than the judicial exception.
The only factors which can be examined under 101 in the claimed composition are those that are recited in the claim i.e. a PHH spheroid. How the PHH spheroid was obtained and the knowledge of using it is not considered with respect to a composition claim, it is only the judicial exceptions themselves that are analyzed under 101 and in this case all of the components in the claimed composition are naturally-occurring products and thus qualifies as a judicial exception.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 29 and 36-38 are rejected under 35 U.S.C. 103 as obvious over Bomo et al (J. Cell. Biochem., 2016), and as evidenced by Garnier et al (Scientific Reports, 2018).
Regarding claim 29, Bomo teaches the use of primary human hepatocytes (referred to as “normal hepatocytes” in Bomo) (pg. 709, col. 2, para 3). Bomo teaches that “stiffness clearly greatly increases the proliferative capabilities of normal hepatocytes with a two and fourfold increase of thymidine incorporation in rigid gels as compared to 2 D cultures and compliant gels, respectively” (pg. 715, col 2, para 1). Bomo teaches that the spheroid is embedded in a collagen matrix comprising a collagen concentration of 0.75-1.5 mg/ml (abstract, pg. 710, col. 1, para 2).
Bomo does not explicitly teach that the human hepatocytes retain the liver acinus with a hollow lumen as required by claim 29. Bomo does not teach that the spheroids have a diameter range from close to 25 um and up to around 100 um (i.e. a diameter ranging from about 20 um to about 130 um) as required by claim 38.
However, Bomo does teach the formation of spheroids in identical collagen rigidity parameters for human hepatic carcinoma cells. Bomo teaches that the phenotype of cells retains the liver acinus with a hollow lumen as required by claim 29 (pg. 713, col. 1, para 1 and Fig. 3B). Additionally, Bomo teaches that the spheroids have a diameter range from close to 25 um and up to around 100 um (i.e. a diameter ranging from about 20 um to about 130 um) as required by claim 38 (Fig. 2C, scale bars and imaging). Further, Bomo teaches that “3D reconstruction of spheroids in stiff matrices showed that Huh7 assembled in acini of one or two cell layers, with large lumens which increased with time. Normal hepatocytes also are more differentiated in 3D cultures and more proliferative in stiff gels showing that normal hepatic cells can proliferate and be differentiated if 3D interactions between cells and matrix are still maintained. Higher 3-MC induction of CYP1A2 activities are obtained in human hepatocytes cultured in rigid gels indicating that cells within collagen matrix could be an easy tool to generate mature hepatocytes that would be applicable for drug toxicity testing and pharmacological long term and chronical studies.” (pg. 717, col 2, para 1).
One of ordinary skill in the art would find it obvious at the effective filling date of the instant invention to combine the human hepatic carcinoma cell spheroid taught by Bomo with the primary human hepatic cell spheroid taught by Bomo to form a primary human hepatic cell spheroid which contains an acini and hollow lumen to arrive at the instant invention. One of ordinary skill in the art would be motivated to make this combination because Bomo teaches that “3D reconstruction of spheroids in stiff matrices showed that Huh7 assembled in acini of one or two cell layers, with large lumens which increased with time. Normal hepatocytes also are more differentiated in 3D cultures and more proliferative in stiff gels showing that normal hepatic cells can proliferate and be differentiated if 3D interactions between cells and matrix are still maintained. (pg. 717, col 2, para 1). One of ordinary skill in the art would have a reasonable expectation of success when combining Bomo with Bomo because Bomo teaches “higher 3-MC induction of CYP1A2 activities are obtained in human hepatocytes cultured in rigid gels indicating that cells within collagen matrix could be an easy tool to generate mature hepatocytes that would be applicable for drug toxicity testing and pharmacological long term and chronical studies.” (pg. 717, col 2, para 1).
Bomo does not directly state that at least 20% of the total number of PHH are positive for a proliferation marker as required by claim 36. Bomo does not directly state that the proliferation marker is ki67 or cyclin D1 as required by claim 37.
The Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether or not applicants' PHH differ, and if so to what extent, from the PHH taught by Bomo. The PHH of Bomo are the same or similar because they are being cultured in the same manner as claimed by applicant. Garnier teaches about the expansion of PHH in vitro in a 3D organoid (i.e., spheroid). Garnier teaches that when PHH are cultured as 3D organoids, the survival can be maintained on long term and an active proliferation can be obtained (pg. 2, last para). Further, Garnier teaches that “according to the Ki67 mRNA level, the proliferation rate is also dramatically increased in 3D organoids, with a 150-fold induction” (pg. 2, last para). Garnier compares this dramatic increase in proliferation markers in 3D organoid culture with adherent culture, where Garnier states that “the proliferation rate is very low and the survival limited” (pg. 2, last para). Therefore, the 3D spheroids containing PHH taught by Bomo would also inherently be able to be maintained on long term and active proliferation and that the Ki67 proliferation marker is dramatically increased as required by claims 36-37.
The cited art taken as a whole demonstrates a reasonable probability that the cells of Bomo are either identical or sufficiently similar to the claimed cells that whatever differences exist are not patentably significant. Therefore, the burden of establishing novelty or unobviousness by objective evidence is shifted to applicants. Clear evidence that the PHH of Bomo does not possess a critical characteristic that is possessed by the claimed PHH (for example, that the PHH of the prior art lacks 20% positivity of a proliferation marker including Ki67) would advance prosecution and might permit allowance of claims to applicants' method for generating stem cells.
Therefore, the invention reference anticipates the claimed subject matter or the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 29 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Bomo et al (J. Cell. Biochem., 2016), and as evidenced by Garnier et al (Scientific Reports, 2018), in view of Lee et al (NPG Asia Materials, 2017)(reference of record).
With regards to claim 35, the limitations of the independent claim 29 are addressed above.
Bomo does not teach the inclusion of a gelatin matrix as optionally required by claim 29. Bomo does not teach that the gelatin matrix is methacrylated gelatin (Gelma) as required by claim 35.
However, Lee teaches a spheroid made of hepatocytes which are cultured in 3D Gelma scaffold as required by claims 34, 35, and 39 (pg. 7, column 2 para 2). Further, Lee teaches that “albumin production in hepatospheroids was well maintained compared with the 2D system, where albumin production abruptly dropped. These results indicate that hepatocytes within 3D cultures experience a higher degree of cellular interactions than those in 2D cultures, helping the cells better maintain functionality” (pg. 7, column 2 para 2).
One of ordinary skill in the art would find it obvious at the effective filling date of the instant invention to combine the hepatocyte spheroids taught by Bomo with the gel matrix taught by Lee to arrive at the instant invention. One of ordinary skill in the art would be motivated to make this combination because Lee teaches that “albumin production in hepatospheroids was well maintained compared with the 2D system, where albumin production abruptly dropped. These results indicate that hepatocytes within 3D cultures experience a higher degree of cellular interactions than those in 2D cultures, helping the cells better maintain functionality” (pg. 7, column 2 para 2). One of ordinary skill in the art would have a reasonable expectation of success when combining Bomo with Lee because both Bomo and Lee are in the area of hepatocyte spheroid production and maintenance.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the effective time of filing of the invention, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 11/19/2025 have been fully considered but they are not persuasive.
The arguments generally cite to the Declaration of Georges Baffet, which is individually addressed below, therefore the response to arguments that follows is focused more specifically in response to the Remarks filled on 11/19/2025.
Applicant argues, in reference to the rejection of claims 29 and 36-38, (Remarks, pg. 8) that the currently presented claim does not constitute a product of nature because (1) gelatin is not naturally occurring in human liver tissue, and (2) “in the normal human liver, the proportion of collagen is low, and in any case, lower than 0.75 mg/mL”.
In response, the arguments are not found persuasive. Applicant’s have included gelatin matrix as an optional limitation in claim 29 and therefore the claims still encompass an embodiment with only a collagen matrix, therefore this cannot distinguish the invention from a product of nature. Claim 35 is not included in the 101 rejection due to requiring that methacrylated gelatin be included as the gelatin matrix. Regarding the concentration of collagen, the Remarks cite to the Declaration filled by Georges Baffet to support that human liver tissue does not contain collagen in the concentration claimed. Neither the Remarks nor the Declaration filled by Georges Baffet cite any reference to support the assertion that human liver tissue is lower than 0.75 mg/ml. Additionally, primary liver tissue contains collagen as part of the ECM and applicant would have to provide explicit support that the claimed concentration of collagen provides markedly different characteristics to the naturally occurring product. Minor fluctuations in concentration would not support an overall finding of a markedly different characteristics as compared to primary liver tissue. Therefore, the arguments are not found persuasive.
Applicant argues, in reference to the rejection of claims 29 and 36-38 under 35 U.S.C. 103, (Remarks, pg. 9) that Bomo does not provide results regarding the combination of the human hepatic carcinoma cell spheroid of Bomo with the PHH spheroid of Bomo to form PHH spheroid defined by the present claims. Additionally, that the primary rat and human hepatocytes tested could not form spheroids.
In response, the argument is not found persuasive. Applicant argues that Bomo does not teach the exact claimed spheroid, however disregards the result of the combination of the use of PHH which would result in the claimed spheroid, therefore the argument is not found persuasive. Applicant asserts that since Bomo teaches that “normal hepatocytes are non-motile cells and never form spherical clusters in 3.5 PA gels” that no spheroid can be obtained by primary hepatocytes under any conditions. However, Bomo also teaches in conclusion that “we demonstrated that, in a constant growth factor environment, increasing 3D mechanical forces promoted the proliferation of normal and transformed hepatic cells within collagen gels. This effect is associated with spheroid formations in stiff gel while cells appear flattened and spread in soft matrices and are less proliferative” (pg. 717. Col 1, last para). This supports that Bomo is stating that the normal primary hepatic cells of both rats and humans are non-motile meaning non-moving and therefore, the cells themselves would not spontaneously move into a spheroid formation once embedded in the collagen matrix due to the 3.5PA rigidity of the matrix. This sentence cannot be interpreted as the primary hepatic cells cannot form spheroids at all in 3.5PA rigid matrix. Spheroid formation is also possible through embedding the human hepatocytes into the gel and allowing the cells to proliferate, thereby forming a spheroid derived from a singular embedded cell. Additionally, in response to applicant's arguments against the reference embodiments individually, one cannot show nonobviousness by attacking references embodiments individually where the rejections are based on combinations of reference embodiments. 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). Therefore, the argument is not found persuasive.
Applicant argues, in reference to the rejection of claims 29 and 36-38 under 35 U.S.C. 103, (Remarks, pg. 10) that “ it is notoriously difficult to obtain in vitro cell cultures that enable proliferation of primary human hepatocytes” and “as indicated in point fifteen (15) of the Declaration, one of ordinary skill in the art would not have expected PHH to be able to proliferate in culture as PHH do not display in culture the proliferative capacities of hepatocyte-like cells derived from human hepatocellular carcinoma”. Additionally, applicant argues that the specific steps of the specification, which are not claimed, enable the formation of these spheroids.
In response, the arguments are not found persuasive. Bomo teaches in conclusion that “we demonstrated that, in a constant growth factor environment, increasing 3D mechanical forces promoted the proliferation of normal and transformed hepatic cells within collagen gels. This effect is associated with spheroid formations in stiff gel while cells appear flattened and spread in soft matrices and are less proliferative” (pg. 717. Col 1, last para). Therefore, Bomo demonstrates PHH proliferation and the argument is not found persuasive.
Applicant argues, in reference to the rejection of claims 29 and 36-38 under 35 U.S.C. 103, (Remarks, pg. 11) that Bomo teaches away from obtaining spheroids in the culture conditions described.
In response, Bomo teaches in conclusion that “we demonstrated that, in a constant growth factor environment, increasing 3D mechanical forces promoted the proliferation of normal and transformed hepatic cells within collagen gels. This effect is associated with spheroid formations in stiff gel while cells appear flattened and spread in soft matrices and are less proliferative” (pg. 717. Col 1, last para). This phrase of Bomo provides amble motivation to further investigate the embodiments presented in Bomo and in no way teaches away from the formation of PHH spheroids using combinations of the embodiments presented by Bomo. Therefore, the argument is not found persuasive.
Applicant argues that Garnier (1) does not teach the limitation of culturing in a collagen matrix with a concentration of between 0.75-3 mg/ml and (2) does not provide evidence that PHH can be proliferative when cultured as 3D organoids because Garnier teaches the culture in Matrigel which Applicant describes as “solubilized basement membrane preparation” and implies that this does not read on culturing on a collagen matrix.
In response, Garnier is not relied upon to teach this newly added limitation, Bomo is (See rejections presented above). Additionally, approximately one third of Matrigel is collagen and therefore reads on a collagen matrix and the evidence based teachings of Garnier are still applicable. Therefore, the arguments are not found persuasive.
Applicant argues, in reference to the rejection of claims 29 and 34-35 and 39 over Bomo, Garneir and Lee, (Remarks, pg. 12) that Lee does not remedy the alleged deficiencies of Bomo and that Lee does not teach the individual limitations which are taught by Bomo, additionally that Lee does not teach the culture of .
In response, the argument is not found persuasive for at least the reasons listed in points 19-23. Additionally, Lee is only relied upon to teach the culture of hepatocytes in GelMa matrices and not to teach the limitations of claim 29. Therefore, the argument is not found persuasive.
Response to Declaration by Georges Baffet
Dr. Baffet states at point 5 that gelatin is not naturally found in the human liver, at point 6 that “in the normal human liver, the proportion of collagen is low, and, in any case, lower that 0.75 mg/ml” with no citation provided, and at point 7 that “therefore, currently amended claim 29 is directed to a composition comprising primary human hepatocytes (PHH) that differs from naturally occurring human living tissue comprising PHH”.
In response, this is not found persuasive. As explained in the claim interpretation, 101 rejection, and response to arguments presented above, gelatin is not a currently required limitation of the claim and therefore claim 29 still reads on embodiments which do not include gelatin, thus the claim still reads on a product of nature. Additionally, Dr. Baffet nor the Remarks presented have cited to any material which supports that the proportion of collagen is low in human liver tissue therefore this is not found persuasive.
Dr. Baffet states at point 10 that the results obtained in Bomo, for which Dr. Baffet is an author, do not demonstrate the use of primary human hepatocytes and specific to proliferation they “did not provide any results showing proliferation of primary human hepatocytes” and Dr. Baffet appears to only reference the Figures of Bomo.
In response, this is not found persuasive. Although data is not provided in a figure which demonstrates PHH proliferation, this does not take into account the body of the article where it is explicitly stated that “normal hepatocytes are also more differentiated in 3D culture and more proliferative in stiff gels” (pg. 717, col. 2, para 1). It also appears that Bomo is refereeing to human “normal hepatocytes” in this statement based on this entire excerpt “Moreover, 3D reconstruction of spheroids in stiff matrices showed that Huh7 assembled in acini of one or two cell layers, with large lumens which increased with time. Normal hepatocytes also are more differentiated in 3D cultures and more proliferative in stiff gels showing that normal hepatic cells can proliferate and be differentiated if 3D interactions between cells and matrix are still maintained” (pg. 717, Col. 2, para 1). Bomo is not required to present data in the form of figures to teach that the normal hepatocytes are capable of proliferation so long as it is expressly stated, therefore, the argument is not found persuasive.
Dr. Baffet states at point 11 that they did not disclose a spheroid comprising proliferative primary hepatocytes and that they state that “Note that normal hepatocytes are non-motile cells and never form spherical clusters in 3.5 PA gels”.
In response, the argument is not found persuasive. Dr. Baffet states that Bomo does not teach the exact claimed spheroid, however disregards the result of the combination of the use of PHH which would result in the claimed spheroid, therefore the argument is not found persuasive. Dr. Baffet states that since Bomo teaches that “normal hepatocytes are non-motile cells and never form spherical clusters in 3.5 PA gels” that no spheroid can be obtained by primary hepatocytes under any conditions. However, Bomo also teaches in conclusion that “we demonstrated that, in a constant growth factor environment, increasing 3D mechanical forces promoted the proliferation of normal and transformed hepatic cells within collagen gels. This effect is associated with spheroid formations in stiff gel while cells appear flattened and spread in soft matrices and are less proliferative” (pg. 717. Col 1, last para). This supports that Bomo is stating that the normal primary hepatic cells of both rats and humans are non-motile meaning non-moving and therefore, the cells themselves would not spontaneously move into a spheroid formation once embedded in the collagen matrix due to the 3.5PA rigidity of the matrix. This sentence cannot be interpreted as the primary hepatic cells cannot form spheroids at all in 3.5PA rigid matrix. Spheroid formation is also possible through embedding the human hepatocytes into the gel and allowing the cells to proliferate, thereby forming a spheroid derived from a singular embedded cell. Additionally, in response to applicant's arguments against the reference embodiments individually, one cannot show nonobviousness by attacking references embodiments individually where the rejections are based on combinations of reference embodiments. 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). Therefore, the argument is not found persuasive.
Dr. Baffet states at point 12, that Rose et al, of which Dr. Baffet is also a co-author, states that they confirm the previously published work of Bomo that “PHH failed to come together and the cells stayed isolated”.
In response, the argument is not found persuasive. Bomo teaches in conclusion that “we demonstrated that, in a constant growth factor environment, increasing 3D mechanical forces promoted the proliferation of normal and transformed hepatic cells within collagen gels. This effect is associated with spheroid formations in stiff gel while cells appear flattened and spread in soft matrices and are less proliferative” (pg. 717. Col 1, last para). This supports that Bomo is stating that the normal primary hepatic cells of both rats and humans are non-motile meaning non-moving and therefore, the cells themselves would not spontaneously move into a spheroid formation once embedded in the collagen matrix due to the 3.5PA rigidity of the matrix. This sentence cannot be interpreted as the primary hepatic cells cannot form spheroids at all in 3.5PA rigid matrix. Spheroid formation is also possible through embedding the human hepatocytes into the gel and allowing the cells to proliferate, thereby forming a spheroid derived from a singular embedded cell. The same is applicable to Rose et al. Therefore, the argument is not found persuasive.
Dr. Baffet states at point 13 that “it is notoriously difficult to obtain in vitro cell cultures that enable proliferation of primary human hepatocytes” and that proliferation of hepatocyte-like cells derived from human hepatocellular carcinoma is not comparable to the proliferation of primary human hepatocytes.
In response, the arguments are not found persuasive. Bomo teaches in conclusion that “we demonstrated that, in a constant growth factor environment, increasing 3D mechanical forces promoted the proliferation of normal and transformed hepatic cells within collagen gels. This effect is associated with spheroid formations in stiff gel while cells appear flattened and spread in soft matrices and are less proliferative” (pg. 717. Col 1, last para). Additionally, it would be obvious to try the combination based on the teachings of Bomo regardless of the differences in proliferation between human hepatocellular carcinoma and primary human hepatocytes of the similar effect, at varying levels, on proliferation as described in the quoted portion of Bomo (pg. 717. Col 1, last para). Therefore, Bomo demonstrates PHH proliferation and the argument is not found persuasive.
Dr. Baffet states at point 14 that the PHH of Bomo are not the same or similar due to similar culture manner because in the instant invention the cells are first cultured on a low attachment plate before transferring to the collagen matrix.
In response, this is not found persuasive because although the low attachment plate is not described in Bomo, it is not a required limitation of claim 29. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the culture of PHH in a low attachment plate) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the argument is not found persuasive.
Dr. Baffet states at point 18 that Garnier does not remedy the alleged deficiencies of Bomo and that Garnier does not suggest that spheroid comprising PHH could be obtained when embedding PHH in a collagen matrix.
In response, this argument is not found persuasive because Garnier is not relied upon to teach this. Further, the instant invention is drawn to a product and the method of making a product carries little patentable weight. Additionally, In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., preferred method of making claimed spheroid product) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the argument is not found persuasive.
Dr. Baffet states at point 22-23 that Lee only cites to previous art when teaching about hepatocytes in a spheroid.
In response, this argument is not found persuasive. Lee is not relied upon to teach the primary hepatocytes, Bomo is. 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). Further, Applicant argues that the results that Lee describes with the hepatospheroids refer to a different culture system taught by Koide (pg. 15, paras 2-3). However, Lee explicitly states that “this result is similar to previous reports with primary hepatocytes in two different systems”, therefore the argument is not found persuasive.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 CONSTANTINA E STAVROU whose telephone number is (571)272-9899. The examiner can normally be reached M-F 8:00-5:00.
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CONSTANTINA E. STAVROU
Examiner
Art Unit 1632
/ANOOP K SINGH/Primary Examiner, Art Unit 1632