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 .
Detailed Action
Claims 4-5, 13-14, 16-19, 22-23 are cancelled.
Claims 1 and 15 are amended.
Claim 24 is new.
Claims 1-3, 6-12, 15, 20-21, and 24 are pending and under examination on the merits.
Withdrawn Rejections
The rejections of claims 5, 16-17, and 22-23 are withdrawn as moot in light of the cancellation of the claims by the 03/10/2026 claim amendments. The rejections of claims 1-3, 5-12, 15-17, and 20-23 under 35 USC §112(b) are withdrawn in light of Applicant’s clarifying amendments dated 03/10/2026.
Maintained-Claim Interpretation
Note that, in the interest of advancing prosecution, a control as recited in claim 15 is being interpreted to mean a pluripotent stem cell maintained/cultured on laminin 421 or laminin 121.
A cell ‘released from resistance’ as recited in claim 1, step 1, is being interpreted to mean a cell maintained/cultured on laminin 511. This is consistent with claims 1 and 15 of the instant Application read in light of paragraphs 0009-0010 and figure 3 of the instant disclosure.
Further, in the interest of advancing prosecution, it is noted that there is no mention of a cell ‘originated’ from a human in the specification. Only cells derived from a human are mentioned in the disclosure. Therefore, the amendment to claim 8 to the effect that the cells are originated from a human is interpreted, substantively, to be a cell derived from a human, in an effort to avoid issues of new matter.
New-Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 6-8, 15, and 24 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.
Regarding claim 1, the claim recites “(i) 0.025 - 0.125 µg/cm2 of laminin 511 based on laminin 511 E8 fragment or (ii) 0.025 - 0.125 µg/cm2 of laminin 511 fragment including the region of the E8 fragment based on laminin 511 E8 fragment.” From a full reading of the instant disclosure, it is unclear what is meant by the phrase ‘based on the laminin 511 E8 fragment’ or how this modifies the concentration. Redrafting to clarify the claim scope is suggested as it is unclear whether using, for example, 0.025 - 0.125 µg/cm2 of laminin 511 would be sufficient to meet the claim or if some other element is required to infringe. The present drafting is further unclear regarding how limitation (i) differs from limitation (ii). In the interest of advancing prosecution, the Examiner is interpreting the claim to require (i) 0.025 - 0.125 µg/cm2 of laminin 511, where the laminin 511 comprises the E8 fragment or (ii) 025 - 0.125 µg/cm2 of laminin 511 E8 fragment.
Claims 2-3, 6-8, 15, via dependency incorporate and fail to remedy this ambiguity and are therefore included in this rejection.
Regarding claim 24, the claim recites “(i) 0.005- 0.025 µg/cm2 of laminin 511 based on laminin 511 E8 fragment or (ii) 0.005- 0.025 µg/cm2 of laminin 511 fragment including the region of the E8 fragment based on laminin 511 E8 fragment.” From a full reading of the instant disclosure, it is unclear what is meant by the phrase ‘based on the laminin 511 E8 fragment’ or how this modifies the concentration. Redrafting to clarify the claim scope is suggested as it is unclear whether using, for example, 0.005- 0.025 µg/cm2 of laminin 511 would be sufficient to meet the claim or if some other element is required to infringe. The present drafting is further unclear regarding how limitation (i) differs from limitation (ii). In the interest of advancing prosecution, the Examiner is interpreting the claim to require (i) 0.005- 0.025 µg/cm2 of laminin 511, where the laminin 511 comprises the E8 fragment or (ii) 0.005- 0.025 µg/cm2 of laminin 511 E8 fragment.
Maintained-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.
Claims 1-3, 6-11, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over WO2017164257 A1 (reference A; note that the Google machine translation is being relied upon for examination purposes and said translation is attached) in view of JP 2017023019 A (reference B; note that the Google machine translation is being relied upon for examination purposes and said translation is attached) and Osaka University (US 9758765 B2).
Regarding claims 1 and 7-8, reference A teaches a method of producing mesoderm (having high blood cell differentiation ability from human pluripotent stem cells; see page 1/13) comprising a step of contacting pluripotent stem cells with bone morphogenetic protein 4 (BMP4) or CHIR (which Applicant admits is a GSK-3ß inhibitor at paragraph 0040 of the specification) for 3 days or more. The method may include contacting pluripotent stem cells with BMP4, one of the bone morphogenetic factors, or CHIR (CHIR-99021 or CHIR-98014) known as a GSK-3β inhibitor or an agent that activates the Wnt signal for a desired period of time (such as for 3 days or longer, see for example the abstract at page 1/13 and page 6/13). Thus, pluripotent stem cells are induced to differentiate into mesodermal cells. BMP4 or CHIR is brought into contact with pluripotent stem cells by adding it to a medium or the like for culturing pluripotent stem cells (see claim 1 and page 3/13). Note that because the cells have a ‘high blood cell differentiation ability’ it is assumed that the method steps/treatment have ‘released’ the cells’ from differentiation resistance’ (per the definition in the specification (see page 9) and that of the claim interpretation section made of record in the office action dated 02/04/2025).
Reference A does not teach that the pluripotent stem cells are maintained on Laminin 511 (LM511).
However, reference B teaches that induction of differentiation of pluripotent stem cells into mesodermal progenitor cells was accomplished by maintaining cells on laminin 511 (LM511) coated plates with CHIR99021 (see paragraphs 0059-0060 of reference B).
Reference A and B do not explicitly teach the use of laminin 511 or a fragment thereof at the claimed concertation(s).
However, Osaka University teaches that recombinant human laminins (particularly, laminin 332, which consists of α3, β3 and γ2 chains, and laminin 511, which consists of α65, β1 and γ1 chains) are effective for maintaining the pluripotency of human ES cells and teach a method for culturing mammalian cells (which may be embryonic stem cells (ECs), iPSCs, or somatic stem cells, characterized by culturing the cells in the presence of the modified human laminin and further teach a culture substrate coated with the modified human laminin, wherein the coating concentration of the modified human laminin is 0.03 to 25 μg/cm2 wherein the laminin E8 fragment is highlighted for use in said culture method(s) (see for example column 1 bridging column 2, Figures 5 and 8 and their descriptions, Examples 1 and 7, and claims 1 and 5-9).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of reference A, reference B, and Osaka University. The artisan would have been motivated to make and use the invention as claimed because both references A and B describe making mesodermal cells from pluripotent stem cells, one of ordinary skill in the art would have found it obvious to optimize their methods by combining features of the two methods, such as by modifying reference A to comprise maintaining the cells on LM511 before contacting the pluripotent stem cells thereby obtained with CHIR to induce differentiation. The MPEP provides that it is obvious to combine known elements where there is motivation in the art (see MPEP section 2143(I)(G)) or where the combination according to known methods yields predictable results (see MPEP section 2143(I)(A)). Here, the combination of LM511 and CHIR would be predictably combined to achieve the same purpose of helping pluripotent stem cells to differentiate into mesodermal/mesendodermal cells. Looking to the art for supported concentrations of laminin to use for cell-culture substrate for culturing pluripotent stem cells (iPSCs, mGS, or embryonic (ES) cells; see column 11 of Osaka University), the artisan would have found it obvious to use the concentrations taught by Osaka University as a starting point for optimizing the laminin coating concentration used to contact and culture the pluripotent cells. With respect to the recitation of step 1 of claim 1 ‘subjecting a pluripotent stem cell having resistance to differentiation into mesendodermal lineage,’ no explicit definition is provided. The only implicit definition comes from reading claim 15 in light of paragraph 0009 of the specification. This reading of the disclosure supports that such a pluripotent cells would be a cell maintained and/or cultured on laminin511 or a fragment thereof prior to differentiation wherein the control is a cell maintained and/or cultured on laminin 421 of laminin 121 (claim 15 states that said cell has a decreased integrinß1 (ITGß1) and paragraph 0009 supplies that cells maintained and/or cultured on laminin 511 have a decreases expression of ITGß1 relative to cells cultured on Laminin 421 or laminin 121, which is consistent with the preclusion of contacting the cells with laminin 421 and/or laminin 121 recited in instant claim 1; see also figure 3 of the instant Application). Osaka University teaches that the pluripotent cells are maintained/cultured on laminin 511 or a fragment thereof (see for example examples 5-7 and columns 19 and 28-33) such that the cells of Osaka University are reasonably interpreted to read upon the cells of step 1 of instant claim 1, as presently drafted. While the references do not explicitly state that there is no contact with laminin 121 or laminin 421, the fact that the references do not mention these laminins would have been understood by the reasonable artisan to stand as a teaching that the methods function as written without further contacting the cells with laminin 121 and/or laminin 421. The recited decreased expression level of integrin ß1 relative to a control cultured on laminin 421 and/or 121 is an inherent feature of practicing the obvious prior art method as this is a result achieved, not an active step. The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Regarding claim 2, as discussed above, the combined references make obvious the claimed method of differentiation/production of mesodermal cells of instant claim 1, and reference A teaches that the cells obtained are mesodermal cells. Moreover, where the components/structures used and method steps employed by the prior art read on and make obvious the instant claims active steps, the effects/results/functions therefrom would necessarily result once the artisan practices said steps because function inherently flows from structure.
Regarding claim 3, as discussed above, the combined references make obvious the claimed method of differentiation/production of mesodermal cells of instant claim 1. Reference A further teaches that:
“According to the novel differentiation-inducing method of the present invention using BMP4 or CHIR, not only differentiation from pluripotent stem cells to mesoderm can be induced with higher efficiency but also differentiation induction into blood cell groups. Can be promoted. The present invention further enables high-efficiency differentiation induction of not only megakaryocytes and platelets but also various blood cells including hematopoietic stem cells,”
(see page 2/13, which also discusses the number of cells differentiated into blood cells). Thus, one of ordinary skill would have found it obvious that combining the methods of references A and B would have the known effect of differentiating pluripotent stem cells into blood cells. Moreover, because the steps of reference A as modified to comprise maintaining the cells on LM511, as taught by reference B, teaches the same steps as the instantly claimed method to be practiced on the same cell population (pluripotent stem cells), and would thereby inherently and predictably have the same effects on differentiation.
Regarding claim 6, because reference A when modified according to reference B to comprise maintaining the cells on LM511, teaches the method steps of instant claim 1 for the purpose of maintaining obtaining pluripotent stem cells which then are treated with CHIR for differentiation into mesodermal cells, one of ordinary skill in the art motivated, for the reasons above, to practice the method of reference A as modified by reference B and Osaka University, the limitations of claim 6 would have necessarily occurred as a result of practicing the active method steps.
Regarding claim 7, the only added limitation is the time range for contact with the GSK3ß inhibitor. As noted above, reference A teaches a method of producing mesoderm comprising a step of contacting pluripotent stem cells with bone morphogenetic protein 4 (BMP4) or CHIR (which Applicant admits is a GSK-3ß inhibitor at paragraph 0040 of the specification) for 3 days or more (see for example the abstract at page 1/13 and page 6/13).
Regarding claim 8, the added limitation is that the pluripotent stem cell is originated from a human. As discussed above, reference A teaches a method of producing mesoderm (having high blood cell differentiation ability from human pluripotent stem cells; see page 1/13). In the absence of a definition of the term ‘originated’ and in accordance with claim interpretation section above, the cells of reference A appear to meet the limitation of instant claim 8 as presently drafted. Moreover, given the pluripotent stem cells of reference A are human, it would have been predictable for the artisan to apply the teachings of reference A to pluripotent stem cells originated and/or derived from a human such that the selection of a human originated/derived pluripotent stem cell would be an obvious matter of choice yielding no more than predictable results (see for example MPEP §2141.I).
Regarding claim 9, as discussed above, the combined references make obvious method(s) of obtaining pluripotent stem cells capable of/ with high blood cell differentiation ability from human pluripotent stem cells (see page 1/13 of reference A) which meet the limitations of instant claim 1, and reference A teaches a step of inducing differentiation of the cell obtained into a cell of mesodermal lineage (see reference A’s claim 1, which teaches a method for inducing mesoderm, comprising a step of contacting pluripotent stem cells with BMP4 or CHIR for 3 days or more). Note that one of ordinary skill in the art would have understood that there would have been a period of time wherein the treated (with Laminin511) cells would have been released from resistance to differentiation, but not yet differentiated (as relating to the intermediate product resulting from claim 1 and which is used in claim 9 part (1).
Regarding claims 10 and 11, as discussed above the combined references make obvious the method of instant claim 9 and reference A further teaches that the pluripotent stem cells have a high blood cell differentiation ability from human pluripotent stem cells (see page 1/13 of reference A) and that the cells were differentiated into blood cells (see figures 2E, 10B, 11A and D, and 13 and the description of said figures).
Reference A, reference B, and Osaka University do not explicitly teach that the cell is induced to differentiate.
However, by applicant’s admission, the steps of differentiating the pluripotent cells are not inventive, but are accomplished by methods known in the art (see paragraph 0050 of the instant specification citing Nakatsuji and Suemori ed., "Experimental Medicine Separate Volume ES/iPS Cell Experimental Standard" which has not been appended and which the Examiner is unable to retrieve, as an exemplary source teaching such means for differentiation into various mesodermal or endodermal cells). Because Applicant states any art source would be exemplary and obvious for the artisan to turn to, the Examiner points to reference A teaching steps of differentiating induced human ES from pluripotent stem cells to blood cells (see for example pages 5/9-6/9)
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of the combined references. The artisan would have been motivated to make and use the methods of reference A, reference B, and Osaka University to achieve a differentiated blood or other mesendodermal cells through art-known means such as those taught by reference A. The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Regarding claim 20, as discussed above, the combined references make obvious the method of instant claim 2 and the steps of inducing differentiation are, by applicant’s admission, known in the art and non-inventive (see paragraph 0050 of the instant specification) as well as taught in the prior art references cited herein. The combined references implicitly teach a step of inducing differentiation by teaching that the cells are differentiated into mesodermal (mesendodermal/blood) cells. Therefore, the cited references in combination are held to make obvious the method of instant claim 20.
Regarding claim 21, as discussed above, the combined references teach the method of instant claim 3 and the steps of inducing differentiation are, by applicant’s admission, known in the art and non-inventive (see paragraph 0050 of the instant specification). Moreover the combined references implicitly teach a step of inducing differentiation by teaching that the cells are differentiated into mesodermal (mesendodermal/blood) cells. Therefore, the cited references in combination are held to make obvious the method of instant claim 21.
The artisan would have had a reasonable expectation of success in light of the combined references.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over reference A, reference B, and Osaka University, as applied to instant claims 1-3, 5-11, 16-17, 20-23 above, in view of D’Amour et al (Production of pancreatic hormone–expressing endocrine cells from human embryonic stem cells. Nat Biotechnol 24, 1392–1401 (2006). https://doi.org/10.1038/nbt1259).
Regarding claim 12, as discussed above, reference A in view of reference B and Osaka University teaches the method of instant claim 9, but does not explicitly teach differentiation into endodermal cells.
However, D’Amour et al teach which provides a 5 stage method of differentiating human embryonic cells into pancreatic ß cells with intact hormonal function (see for example the abstract and Discussion sections; see also the methods and refence in general).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of reference A, reference B, D’Amour et al, and Osaka University because all the methods pertain to cell culture and differentiation of pluripotent stem cells (such as embryonic stem cells or iPSCs, as noted above) using the ß1-ß-catenin pathway where D’Amour et al teach differentiation of pluripotent human embryonic stem cells into endodermal cells, specifically functional pancreatic ß cells. The artisan would have been motivated to make and use the invention as claimed because, absent evidence to the contrary, it is presumed that the pluripotent cells of reference A would be capable of differentiation into a pancreatic ß cell where the proper steps of inducing differentiation, known in the art, are practiced (such as those taught by D’Amour et al). The artisan would have been motivated to make pancreatic ß cells because D’Amour et al teach that production of these hES cell–derived endocrine cells may represent a critical step in the development of a renewable source of cells for diabetes cell therapy (see for example, the abstract, as discussed above). Where the steps of differentiation and products used are the same, one of ordinary skill in the art would have had a reasonable expectation of success beginning with the pluripotent cells of reference A and proceeding with the method of reference A as modified by reference B, Osaka University, and D’Amour et al to arrive at a functional human pancreatic ß cell. The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Maintained-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.
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).
Claims 1-2, 6, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 10 of U.S. Patent No. 10563171 B2 (reference D) in view of Osaka University (US9758765B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps disclosed in reference D encompass and recite the subject matter of the instant claims.
Regarding claim 1, reference D teaches a method comprising a step of producing a mesoderm-like cell by culturing a human pluripotent stem cell in a culture medium comprising activin A and a GSK3β inhibitor, which may be CHIR, on LM511 or a fragment thereof (a treatment for activating an integrin ß1-ß-catenin signal transduction pathway) (see claims 1, 4, and 10 of reference D) which encompasses and discloses, making obvious, the method steps of instant claim 1.
Reference D does not explicitly claim that the cells are maintained on laminin511 (have a relatively lower expression of ITGB1) or the recited laminin511 concentration.
However, Osaka University teaches that recombinant human laminins (particularly, laminin 332, which consists of α3, β3 and γ2 chains, and laminin 511, which consists of α65, β1 and γ1 chains) are effective for maintaining the pluripotency of human ES cells and teach a method for culturing mammalian cells (which may be embryonic stem cells (ECs), iPSCs, or somatic stem cells, characterized by culturing the cells in the presence of the modified human laminin and further teach a culture substrate coated with the modified human laminin, wherein the coating concentration of the modified human laminin is 0.03 to 25 μg/cm2 wherein the laminin E8 fragment is highlighted for use in said culture method(s) (see for example column 1 bridging column 2, Figures 5 and 8 and their descriptions, Examples 1 and 7, and claims 1 and 5-9)
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of reference D and Osaka University. The artisan would have been motivated to make and use the invention as claimed because reference D describes culture/differentiation of pluripotent stem cells, one of ordinary skill in the art would have found it obvious to optimize their methods by combining features of the two methods, such as by modifying reference D to comprise maintaining the cells on LM511 before inducing differentiation. The MPEP provides that it is obvious to combine known elements where there is motivation in the art (see MPEP section 2143(I)(G)) or where the combination according to known methods yields predictable results (see MPEP section 2143(I)(A)). Here, the use of LM511 would be predictably used at the concertation of Osaka University to achieve the same purpose of helping pluripotent stem cells to differentiate. Looking to the art for supported concentrations of laminin to use for cell-culture substrate for culturing pluripotent cells, the artisan would have found it obvious to use the concentrations taught by Osaka University as a starting point for optimizing the laminin coating concentration used to contact and culture the iPSCs. With respect to the recitation of step 1 of claim 1 ‘subjecting a pluripotent stem cell having resistance to differentiation into mesendodermal lineage,’ no explicit definition is provided. The only implicit definition comes from reading claim 15 in light of paragraph 0009 of the specification. This reading of the disclosure supports that such an iPSC would be a cell maintained and/or cultured on laminin511 or a fragment thereof prior to differentiation wherein the control is a cell maintained and/or cultured on laminin 421 of laminin 121 (claim 15 states that said cell has a decreased integrinß1 (ITGß1) and paragraph 0009 supplies that cells maintained and/or cultured on laminin 511 have a decreases expression of ITGß1 relative to cells cultured on Laminin 421 or laminin 121, which is consistent with the preclusion of contacting the cells with laminin 421 and/or laminin 121 recited in instant claim 1; see also figure 3 of the instant Application). Osaka University teaches that the pluripotent cells are maintained/cultured on laminin 511 or a fragment thereof (see for example examples 5-7 and columns 19 and 28-33) such that the cells of Osaka University are reasonably interpreted to read upon the cells of step 1 of instant claim 1, as presently drafted. While the references do not explicitly state that there is no contact with laminin 121 or laminin 421, the fact that the references do not mention these laminins would have been understood by the reasonable artisan to stand as a teaching that the methods function as written without further contacting the cells with laminin 121 and/or laminin 421. The recited decreased expression level of integrin ß1 relative to a control cultured on laminin 421 and/or 121 is an inherent feature of practicing the obvious prior art method as this is a result achieved, not an active step. The artisan would have had a reasonable expectation of success based on the cumulative disclosures of the combined references.
Regarding claim 2, because the resulting cell of claim 1 of reference D is human, the pluripotent stem cell is presumed, and implicitly taught, to be human derived.
Regarding claim 6, because reference D, teaches the method steps of instant claim 1 for the purpose of maintaining obtaining pluripotent stem cells which then are treated with CHIR for differentiation into mesodermal-like cells, one of ordinary skill in the art motivated to practice the method of reference D, a known, successful method in the art, as discussed above, would inherently meet the limitations of instant claim 6 because the limitations of instant claim 6 are merely results effected by practicing the method steps of instant claim 1.
Regarding claim 20, as discussed above, reference D teaches the method of instant claim 2 and the steps of inducing differentiation are, by applicant’s admission, known in the art and non-inventive (see paragraph 0050 of the instant specification). Moreover the combined references implicitly teach a step of inducing differentiation by teaching that the cells are differentiated into mesodermal (mesendodermal/blood) cells. Therefore, reference D is held to make obvious the method of instant claim 20.
Claims 3, 7-11, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 10 of U.S. Patent No. 10563171 B2 (reference D) and Osaka University, as applied to claims 1-2, 4, 6, 18, and 20 in view of WO2017164257 A1 (reference A). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps of reference D and Osaka University in view of reference A encompass the subject matter of the instant claims.
Regarding claim 3, as discussed above, reference D in view of Osaka University teaches the method of instant claim 1. Reference D does not teach that the cell differentiates into a blood cell.
However, reference A, as discussed above, does teach that hPSCs treated according to the method of instant claim 1 differentiate into blood cells.
Regarding claims 7-8, reference A teaches a method of producing mesoderm (having high blood cell differentiation ability from human pluripotent stem cells; see page 1/13) comprising a step of contacting pluripotent stem cells with bone morphogenetic protein 4 (BMP4) or CHIR (which Applicant admits is a GSK-3ß inhibitor at paragraph 0040 of the specification) for 3 days or more. The method may include contacting pluripotent stem cells with BMP4, one of the bone morphogenetic factors, or CHIR (CHIR-99021 or CHIR-98014) known as a GSK-3β inhibitor or an agent that activates the Wnt signal for a desired period of time (such as for 3 days or longer, see for example the abstract at page 1/13 and page 6/13). Thus, pluripotent stem cells are induced to differentiate into mesodermal cells. BMP4 or CHIR is brought into contact with pluripotent stem cells by adding it to a medium or the like for culturing pluripotent stem cells (see claim 1 and page 3/13).
Regarding claim 9, as discussed above, reference D in view of Osaka University in light of reference A teaches methods of obtaining pluripotent stem cells capable of/ with high blood cell differentiation ability from human pluripotent stem cells (see page 1/13 of reference A) which meet the limitations of instant claim 1, and reference A teaches a step of inducing differentiation of the cell obtained into a cell of mesodermal lineage (see reference A’s claim 1, which teaches a method for inducing mesoderm, comprising a step of contacting pluripotent stem cells with BMP4 or CHIR for 3 days or more).
One of ordinary skill in the art would have been motivated to practice the method of reference D in view of reference A because they are known, successful methods of culturing hPSCs to obtain a mesodermal/mesodermal-like cell.
Regarding claims 10 and 11, as discussed above both reference D and reference A teaches the method of instant claim 9 and reference a further teaches that the pluripotent stem cells have a high blood cell differentiation ability from human pluripotent stem cells (see page 1/13 of reference A) and that the cells were differentiated into blood cells (see figures 2E, 10B, 11A and D, and 13 and the description of said figures).
Regarding claim 21, as discussed above, reference D in view of reference A teaches the method of instant claim 3 and the steps of inducing differentiation are, by applicant’s admission, known in the art and non-inventive (see paragraph 0050 of the instant specification). Moreover the combined references implicitly teach a step of inducing differentiation by teaching that the cells are differentiated into mesodermal (mesendodermal/blood) cells. Therefore, the cited references in combination are held to make obvious the method of instant claim 21.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 10 of U.S. Patent No. 10563171 B2 (reference D), Osaka University, and reference A, as applied to claims 3, 7-11, and 21 above, in further view of D’Amour et al (Production of pancreatic hormone–expressing endocrine cells from human embryonic stem cells. Nat Biotechnol 24, 1392–1401 (2006). https://doi.org/10.1038/nbt1259). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps of reference D and the secondary references cited encompass the subject matter of the instant claims.
Regarding claim 12, as discussed above, reference D in view of reference A and Osaka University teaches the method of instant claim 9, but does not explicitly teach differentiation into endodermal cells.
However, D’Amour et al teach a 5 stage method of differentiating human embryonic cells into pancreatic ß cells with intact hormonal function (see for example the abstract and Discussion sections; see also the methods and refence in general).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of reference D, reference A, D’Amour et al, and Osaka University because all the methods pertain to cell culture and differentiation of iPSCs using the ß1-ß-catenin pathway where D’Amour et al teach differentiation into endodermal cells (specifically, pancreatic ß cells). The artisan would have been motivated to make and use the invention as claimed because, absent evidence to the contrary, it is presumed that the pluripotent cells of reference D, reference A, or Osaka University would be capable of differentiation into a pancreatic ß cell where the proper steps of inducing differentiation, known in the art, are practiced. Where the steps of differentiation and products used are the same, one of ordinary skill in the art would have had a reasonable expectation of success beginning with the pluripotent cells of reference D and proceeding with the method of reference D as modified by reference A, Osaka University, and D’Amour et al to arrive at a functional human pancreatic ß cell for therapeutic means such as diabetic cell therapy as taught throughout D’Amour et al (see for example, the abstract, as discussed above). The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Claims 1-3, 6-11, and 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6of U.S. Patent No. 11136547 B2 (reference E) in view of WO2017164257 A1 (reference A) and JP 2017023019 A and (reference B) and Osaka University (US9758765B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps of reference E in view of the secondary references cited encompass the subject matter of the instant claims.
Regarding claims 1 and 7-8, reference E teaches a method for producing hematopoietic mesoderm cells comprising a first step of contacting the pluripotent stem cells with CHIR for at least 3 days (see claims 1 of reference E). Likewise, reference A teaches a method of producing mesoderm (having high blood cell differentiation ability from human pluripotent stem cells; see page 1/13) comprising a step of contacting pluripotent stem cells with bone morphogenetic protein 4 (BMP4) or CHIR (which Applicant admits is a GSK-3ß inhibitor at paragraph 0040 of the specification) for 3 days or more. The method may include contacting pluripotent stem cells with BMP4, one of the bone morphogenetic factors, or CHIR (CHIR-99021 or CHIR-98014) known as a GSK-3β inhibitor or an agent that activates the Wnt signal for a desired period of time. Thus, pluripotent stem cells are induced to differentiate into mesodermal cells. BMP4 or CHIR is brought into contact with pluripotent stem cells by adding it to a medium or the like for culturing pluripotent stem cells. (see claim 1 and page 3/13). Note that because the cells have a ‘high blood cell differentiation ability’ it is assumed that the method steps/treatment have ‘released’ the cells’ from differentiation resistance’ (per the definition in the specification (see page 9) and that of the claim interpretation section).
Reference A does not teach that the pluripotent stem cells are maintained on Laminin 511 (LM511). However, reference B teaches that induction of differentiation of pluripotent stem cells into mesodermal progenitor cells was accomplished by maintaining cells on laminin 511 (LM511) coated plates with CHIR99021 (see paragraphs 0059-0060 of reference B).
The combined reference do not explicitly claim or teach the instantly claimed concentration of laminin511 or a fragment thereof.
However, Osaka University teaches that recombinant human laminins (particularly, laminin 332, which consists of α3, β3 and γ2 chains, and laminin 511, which consists of α65, β1 and γ1 chains) are effective for maintaining the pluripotency of human ES cells and teach a method for culturing mammalian cells (which may be embryonic stem cells (ECs), iPSCs, or somatic stem cells, characterized by culturing the cells in the presence of the modified human laminin and further teach a culture substrate coated with the modified human laminin, wherein the coating concentration of the modified human laminin is 0.03 to 25 μg/cm2 wherein the laminin E8 fragment is highlighted for use in said culture method(s) (see for example column 1 bridging column 2, Figures 5 and 8 and their descriptions, Examples 1 and 7, and claims 1 and 5-9).
It would have been prima facie obvious to combine the cited references to arrive at the claimed method(s) because reference E, reference A, and reference B describe making mesodermal cells from pluripotent stem cells, one of ordinary skill in the art would have found it obvious to optimize their methods by combining features of the 3 methods, such as by modifying reference A to comprise maintaining the cells on LM511 before contacting the pluripotent stem cells thereby obtained with CHIR to induce differentiation. The MPEP provides that it is obvious to combine known elements where there is motivation in the art (see MPEP section 2143(I)(G)) or where the combination according to known methods yields predictable results (see MPEP section 2143(I)(A)). Here, the combination of LM511 and CHIR would be predictably combined to achieve the same purpose of helping pluripotent stem cells to differentiate into mesodermal/mesendodermal cells. While the references do not explicitly state that there is no contact with laminin 121 or laminin 421, the fact that the references do not mention these laminins would have been understood by the reasonable artisan to stand as a teaching that the methods function as written without further contacting the cells with laminin 121 and/or laminin 421. The recited decreased expression level of integrin ß1 relative to a control cultured on laminin 421 and/or 121 is an inherent feature of practicing the obvious prior art method as this is a result achieved, not an active step. The artisan would have had a reasonable expectation of success.
Regarding claim 2, as discussed above, reference E, reference A, and reference B teach the claimed method of differentiation/production of mesodermal cells of instant claim 1, and references E and A teach that the cells obtained are mesodermal cells.
Regarding claim 3, as discussed above, references E, A, and B teach the claimed method of differentiation/production of mesodermal cells of instant claim 1. Reference A further teaches that:
“According to the novel differentiation-inducing method of the present invention using BMP4 or CHIR, not only differentiation from pluripotent stem cells to mesoderm can be induced with higher efficiency but also differentiation induction into blood cell groups. Can be promoted. The present invention further enables high-efficiency differentiation induction of not only megakaryocytes and platelets but also various blood cells including hematopoietic stem cells,”
(see page 2/13, which also discusses the number of cells differentiated into blood cells). Thus, one of ordinary skill would have found it obvious that combining the methods of references A and B would have the known effect of differentiating pluripotent stem cells into blood cells. Moreover, because the steps of reference A as modified to comprise maintaining the cells on LM511, as taught by reference B, teaches the same steps as the instantly claimed method to be practiced on the same cell population (pluripotent stem cells), and would thereby inherently and predictably have the same effects on differentiation. Applicant's attention is directed to MPEP § 2112 (II), which states, "there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)." Furthermore, Integra Life Sciences I Ltd. v. Merck KGaA, 50 USPQ2d 1846 (DC SCalif, 1999) makes clear that a reference teaching a process may anticipate claims drawn to a method comprising the same process steps, despite the recitation of a different intended use in the preamble or the later discovery of a particular property of one of the starting materials or end products.
Regarding claim 6, because references E and A when modified according to reference B to comprise maintaining the cells on LM511, teaches the method steps of instant claim 1 for the purpose of maintaining obtaining pluripotent stem cells which then are treated with CHIR for differentiation into mesodermal cells, one of ordinary skill in the art motivated, for the reasons above, to practice the method of references E and A as modified by reference B, as discussed above, would inherently meet the limitations of instant claim 6 because the limitations of instant claim 6 are merely results effected by practicing the method steps of instant claim 1.
Regarding claim 9, as discussed above, references E, A, and B teach methods of obtaining pluripotent stem cells capable of/ with high blood cell differentiation ability from human pluripotent stem cells (see page 1/13 of reference A) which meet the limitations of instant claim 1, and reference A teaches a step of inducing differentiation of the cell obtained into a cell of mesodermal lineage (see reference A’s claim 1, which teaches a method for inducing mesoderm, comprising a step of contacting pluripotent stem cells with BMP4 or CHIR for 3 days or more).
One of ordinary skill in the art would have been motivated to practice the method of references E and A as modified by reference B for the reasons discussed above.
Regarding claims 10 and 11, as discussed above references E, A, and B teach the method of instant claim 9 and reference a further teaches that the pluripotent stem cells have a high blood cell differentiation ability from human pluripotent stem cells (see page 1/13 of reference A) and that the cells were differentiated into blood cells (see figures 2E, 10B, 11A and D, and 13 and the description of said figures).
Regarding claim 18, as discussed above, the combined references teach the method of instant claim 2 wherein the pluripotent stem cell is contacted with LM511.
Regarding claim 19, as discussed above, the combined references teach the method of instant claim 3 wherein the pluripotent stem cell is contacted with LM511.
Regarding claim 20, as discussed above, the combined references teach the method of instant claim 2 and the steps of inducing differentiation are, by applicant’s admission, known in the art an non-inventive (see paragraph 0050 of the instant specification). Moreover the combined references implicitly teach a step of inducing differentiation by teaching that the cells are differentiated into mesodermal (mesendodermal/blood) cells. Therefore, the cited references in combination are held to make obvious the method of instant claim 20.
Regarding claim 21, as discussed above, the combined references teach the method of instant claim 3 and the steps of inducing differentiation are, by applicant’s admission, known in the art an non-inventive (see paragraph 0050 of the instant specification). Moreover the combined references implicitly teach a step of inducing differentiation by teaching that the cells are differentiated into mesodermal (mesendodermal/blood) cells. Therefore, the cited references in combination are held to make obvious the method of instant claim 21.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11136547 B2 (reference E), Osaka University, reference B, and reference A, as applied to claims 1-3, 6-11, and 18-21 above, in further view of D’Amour et al (Production of pancreatic hormone–expressing endocrine cells from human embryonic stem cells. Nat Biotechnol 24, 1392–1401 (2006). https://doi.org/10.1038/nbt1259). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps of reference E and the secondary references cited encompass the subject matter of the instant claims.
Regarding claim 12, as discussed above, reference E in view of the cited secondary references teaches the method of instant claim 9, but does not explicitly teach differentiation into endodermal cells.
However, D’Amour et al teaches a 5 stage method of differentiating human embryonic cells into pancreatic ß cells with intact hormonal function (see for example the abstract and Discussion sections; see also the methods and refence in general).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of reference E, reference A, reference B, D’Amour et al, and Osaka University because all the methods pertain to cell culture and differentiation of iPSCs using the ß1-ß-catenin pathway where D’Amour et al teaches differentiation into endodermal cells (specifically, pancreatic ß cells). The artisan would have been motivated to make and use the invention as claimed because, absent evidence to the contrary, it is presumed that the pluripotent cells of references E or A or Osaka University would be capable of differentiation into a pancreatic ß cell where the proper steps of inducing differentiation, known in the art, are practiced. Where the steps of differentiation and products used are the same, one of ordinary skill in the art would have had a reasonable expectation of success beginning with the pluripotent cells of reference E and proceeding with the method of reference E as modified by reference B, reference A, Osaka University, and D’Amour et al to arrive at a functional human pancreatic ß cell for therapeutic means such as diabetic cell therapy as taught throughout D’Amour et al (see for example the abstract). The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Claims 1-2, 6, and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No.11505785 B2 (reference F) in view of JP 2017023019 A (reference B; note that the Google machine translation is being relied upon for examination purposes and said translation is attached) in further view of Wikipedia (as evidenced by Wikipedia (obtained from: https://en.wikipedia.org/wiki/Laminin#:~:text=Laminins%20are%20heterotrimeric%20proteins%20with,extracellular%20matrix%20and%20cell%20membrane (available as of 02/01/2017 as evidenced by Wayback Machine)). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps disclosed in reference F encompass and recite the subject matter of the instant claims.
Regarding claims 1-2, 6, and 20-21, reference F claims a cell culture method comprising culturing mammalian iPSCs in a culture vessel comprising a medium, wherein said medium comprises a native laminin α5β1γ1 E8 fragment, wherein the native laminin α5β1γ1 (which is laminin511 as evidenced by Wikipedia) E8 fragment is dissolved the medium at a concentration of 0.03 μg to 0.25 μg per cm2 of culture surface area of the culture vessel, and wherein the method does not comprise coating the culture vessel with a laminin or a laminin fragment before seeding the mammalian stem cells or cells differentiated from mammalian stem cells in the culture vessel (see claims 1-3).
There does not appear to be a discernible difference from the iPSCs/ES cells of reference F and the instant claims. The culturing step implicitly requires a step of contacting the iPSCs with the laminin 511 in a concentration of 0.03-25µg/cm2, which, where the products and steps involved are encompassed by the instant claim, the method of reference F is presumed to result in the same results/perform the same functions as function inherently flows from structure such that a showing to the contrary would likely indicate a deficiency of the instant claims with respect to 35 USC §112(a).
Reference F does not claim that the cells are differentiated to mesodermal lineage cells.
However, reference B teaches that induction of differentiation of pluripotent stem cells into mesodermal progenitor cells was accomplished by maintaining cells on laminin 511 (LM511) coated plates with CHIR99021 (see paragraphs 0059-0060 of reference B).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of reference F and reference B. The artisan would have been motivated to make and use the invention as claimed because both references F and B describe making mesodermal cells from pluripotent stem cells, one of ordinary skill in the art would have found it obvious to optimize their methods by combining features of the two methods, such as by modifying reference F to induce differentiation of cells into mesodermal lineage cells. The MPEP provides that it is obvious to combine known elements where there is motivation in the art (see MPEP section 2143(I)(G)) or where the combination according to known methods yields predictable results (see MPEP section 2143(I)(A)). While the references do not explicitly state that there is no contact with laminin 121 or laminin 421, the fact that the references do not mention these laminins would have been understood by the reasonable artisan to stand as a teaching that the methods function as written without further contacting the cells with laminin 121 and/or laminin 421. The recited decreased expression level of integrin ß1 relative to a control cultured on laminin 421 and/or 121 is an inherent feature of practicing the obvious prior art method as this is a result achieved, not an active step. The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Claims 3 and 7-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No.11505785 B2 (reference F) in view of reference B as evidenced by Wikipedia, as applied to claims 1-2, 6, 9, and 20-21, in further view of WO2017164257 A1 (reference A; note that the Google machine translation is being relied upon for examination purposes and said translation is attached). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps disclosed in reference F encompass and recite the subject matter of the instant claims.
Regarding claims 3 and 7-11, references F and B make obvious the method of instant claims 2, but do not explicitly show differentiation into a blood cell (though reference B defines mesodermal cells to include blood cells (see for example page 4/9)).
However, reference A teaches a method of producing mesoderm (having high blood cell differentiation ability from human pluripotent stem cells; see page 1/13) comprising a step of contacting pluripotent stem cells with bone morphogenetic protein 4 (BMP4) or CHIR (which Applicant admits is a GSK-3ß inhibitor at paragraph 0040 of the specification) for 3 days or more. The method may include contacting pluripotent stem cells with BMP4, one of the bone morphogenetic factors, or CHIR (CHIR-99021 or CHIR-98014) known as a GSK-3β inhibitor or an agent that activates the Wnt signal for a desired period of time (such as for 3 days or longer, see for example the abstract at page 1/13 and page 6/13). Reference A goes on to teaches that:
“According to the novel differentiation-inducing method of the present invention using BMP4 or CHIR, not only differentiation from pluripotent stem cells to mesoderm can be induced with higher efficiency but also differentiation induction into blood cell groups. Can be promoted. The present invention further enables high-efficiency differentiation induction of not only megakaryocytes and platelets but also various blood cells including hematopoietic stem cells,”
(see page 2/13, which also discusses the number of cells differentiated into blood cells). Thus, one of ordinary skill would have found it obvious that combining the methods of references F, A, and B would have the known effect of differentiating pluripotent stem cells into blood cells. Moreover, because the steps of reference A as modified to comprise contacting the cells on LM511, as taught by references F and B, teaches the same steps as the instantly claimed method to be practiced on the same cell population (pluripotent stem cells), and would thereby inherently and predictably have the same effects on differentiation. Applicant's attention is directed to MPEP § 2112 (II), which states, "there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)." Furthermore, Integra Life Sciences I Ltd. v. Merck KGaA, 50 USPQ2d 1846 (DC SCalif, 1999) makes clear that a reference teaching a process may anticipate claims drawn to a method comprising the same process steps, despite the recitation of a different intended use in the preamble or the later discovery of a particular property of one of the starting materials or end products. Moreover, the method made obvious by the prior art references is presumed to accomplish the same results as the instantly claimed method because the components used and steps perform appear to read upon the instantly claimed method, such that a showing that the prior art product does not perform the same functions/achieve the same results would likely indicate a deficiency of the instant claims with respect to 35 USC 112(a).
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No.11505785 B2 (reference F) and reference B and reference A as evidenced by Wikipedia, as applied to claims 3 and 7-11 above, in further view of D’Amour et al (Production of pancreatic hormone–expressing endocrine cells from human embryonic stem cells. Nat Biotechnol 24, 1392–1401 (2006). https://doi.org/10.1038/nbt1259). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps of reference E and the secondary references cited encompass the subject matter of the instant claims.
Regarding claim 12, as discussed above, reference F in view of the cited secondary references teaches the method of instant claim 9, but does not explicitly teach differentiation into endodermal cells.
However, D’Amour et al teach a 5 stage method of differentiating human embryonic cells into pancreatic ß cells with intact hormonal function (see for example the abstract and Discussion sections; see also the methods and refence in general).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of reference F, reference A, reference B, and D’Amour et al because all the methods pertain to cell culture and differentiation of iPSCs using the ß1-ß-catenin pathway where D’Amour et al teach differentiation into endodermal cells (specifically, Pancreatic ß cells). The artisan would have been motivated to make and use the invention as claimed because, absent evidence to the contrary, it is presumed that the pluripotent cells of references F or A or Osaka University would be capable of differentiation into a pancreatic ß cell where the proper steps of inducing differentiation, known in the art, are practiced. Where the steps of differentiation and products used are the same, one of ordinary skill in the art would have had a reasonable expectation of success beginning with the pluripotent cells of reference F and proceeding with the method of reference F as modified by reference B, reference A, and D’Amour et al to arrive at a functional human pancreatic ß cell for therapeutic means such as diabetic cell therapy as taught throughout D’Amour et al (see for example the abstract). The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Claims 1-3, 6-11, and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No.11959103 B2 (reference G) in view of WO2017164257 A1 (reference A; note that the Google machine translation is being relied upon for examination purposes and said translation is attached), JP 2017023019 A (reference B; note that the Google machine translation is being relied upon for examination purposes and said translation is attached), and Osaka University (US 9758765 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps disclosed in reference G encompass and recite the subject matter of the instant claims.
Regarding claims 1 and 7-8, reference G claims a method for inducing pluripotent stem cell, which may be human iPSCs, to differentiate into somatic cells, the method comprising bringing pluripotent stem cells into contact with a conjugate of a laminin E8 fragment of human laminin α5ß1γ1 (laminin 511) (see for example claims 1 and 5-6 of reference G).
Reference G does not explicitly claim certain limitations such as the fact that the starting cell of step 1 of claim 1 is a human cell having resistance to differentiation to mesodermal lineage.
However, reference A teaches a method of producing mesoderm (having high blood cell differentiation ability from human pluripotent stem cells; see page 1/13) comprising a step of contacting pluripotent stem cells with bone morphogenetic protein 4 (BMP4) or CHIR (which Applicant admits is a GSK-3ß inhibitor at paragraph 0040 of the specification) for 3 days or more. The method may include contacting pluripotent stem cells with BMP4, one of the bone morphogenetic factors, or CHIR (CHIR-99021 or CHIR-98014) known as a GSK-3β inhibitor or an agent that activates the Wnt signal for a desired period of time (such as for 3 days or longer, see for example the abstract at page 1/13 and page 6/13). Thus, pluripotent stem cells are induced to differentiate into mesodermal cells. BMP4 or CHIR is brought into contact with pluripotent stem cells by adding it to a medium or the like for culturing pluripotent stem cells (see claim 1 and page 3/13). Note that because the cells have a ‘high blood cell differentiation ability’ it is assumed that the method steps/treatment have ‘released’ the cells’ from differentiation resistance’ (per the definition in the specification (see page 9) and that of the claim interpretation section made of record in the office action dated 02/04/2025).
Reference A does not teach that the pluripotent stem cells are maintained on Laminin 511 (LM511).
However, reference B teaches that induction of differentiation of pluripotent stem cells into mesodermal progenitor cells was accomplished by maintaining cells on laminin 511 (LM511) coated plates with CHIR99021 (see paragraphs 0059-0060 of reference B).
Reference A and B do not explicitly teach the use of laminin 511 or a fragment thereof at the claimed concertation(s).
However, Osaka University teaches that recombinant human laminins (particularly, laminin 332, which consists of α3, β3 and γ2 chains, and laminin 511, which consists of α65, β1 and γ1 chains) are effective for maintaining the pluripotency of human ES cells and teach a method for culturing mammalian cells (which may be embryonic stem cells (ECs), iPSCs, or somatic stem cells, characterized by culturing the cells in the presence of the modified human laminin and further teach a culture substrate coated with the modified human laminin, wherein the coating concentration of the modified human laminin is 0.03 to 25 μg/cm2 wherein the laminin E8 fragment is highlighted for use in said culture method(s) (see for example column 1 bridging column 2, Figures 5 and 8 and their descriptions, Examples 1 and 7, and claims 1 and 5-9).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of reference G, reference A, reference B, and Osaka University. The artisan would have been motivated to make and use the invention as claimed because both references A and B describe making mesodermal cells from pluripotent stem cells, one of ordinary skill in the art would have found it obvious to optimize their methods by combining features of the two methods, such as by modifying reference A to comprise maintaining the cells on LM511 before contacting the pluripotent stem cells thereby obtained with CHIR to induce differentiation. The MPEP provides that it is obvious to combine known elements where there is motivation in the art (see MPEP section 2143(I)(G)) or where the combination according to known methods yields predictable results (see MPEP section 2143(I)(A)). Here, the combination of LM511 and CHIR would be predictably combined to achieve the same purpose of helping pluripotent stem cells to differentiate into mesodermal/mesendodermal cells. Looking to the art for supported concentrations of laminin to use for cell-culture substrate for culturing pluripotent stem cells (iPSCs, mGS, or embryonic (ES) cells; see column 11 of Osaka University), the artisan would have found it obvious to use the concentrations taught by Osaka University as a starting point for optimizing the laminin coating concentration used to contact and culture the pluripotent cells. With respect to the recitation of step 1 of claim 1 ‘subjecting a pluripotent stem cell having resistance to differentiation into mesendodermal lineage,’ no explicit definition is provided. The only implicit definition comes from reading claim 15 in light of paragraph 0009 of the specification. This reading of the disclosure supports that such a pluripotent cells would be a cell maintained and/or cultured on laminin511 or a fragment thereof prior to differentiation wherein the control is a cell maintained and/or cultured on laminin 421 of laminin 121 (claim 15 states that said cell has a decreased integrinß1 (ITGß1) and paragraph 0009 supplies that cells maintained and/or cultured on laminin 511 have a decreases expression of ITGß1 relative to cells cultured on Laminin 421 or laminin 121, which is consistent with the preclusion of contacting the cells with laminin 421 and/or laminin 121 recited in instant claim 1; see also figure 3 of the instant Application). Osaka University teaches that the pluripotent cells are maintained/cultured on laminin 511 or a fragment thereof (see for example examples 5-7 and columns 19 and 28-33) such that the cells of Osaka University are reasonably interpreted to read upon the cells of step 1 of instant claim 1, as presently drafted. While the references do not explicitly state that there is no contact with laminin 121 or laminin 421, the fact that the references do not mention these laminins would have been understood by the reasonable artisan to stand as a teaching that the methods function as written without further contacting the cells with laminin 121 and/or laminin 421. The recited decreased expression level of integrin ß1 relative to a control cultured on laminin 421 and/or 121 is an inherent feature of practicing the obvious prior art method as this is a result achieved, not an active step. The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Regarding claim 2, as discussed above, the combined references make obvious the claimed method of differentiation/production of mesodermal cells of instant claim 1, and reference A teaches that the cells obtained are mesodermal cells. Moreover, where the components/structures used and method steps employed by the prior art read on and make obvious the instant claims active steps, the effects/results/functions therefrom are presumed to be made obvious because function inherently flows from structure.
Regarding claim 3, as discussed above, the combined references make obvious the claimed method of differentiation/production of mesodermal cells of instant claim 1. Reference A further teaches that:
“According to the novel differentiation-inducing method of the present invention using BMP4 or CHIR, not only differentiation from pluripotent stem cells to mesoderm can be induced with higher efficiency but also differentiation induction into blood cell groups. Can be promoted. The present invention further enables high-efficiency differentiation induction of not only megakaryocytes and platelets but also various blood cells including hematopoietic stem cells,”
(see page 2/13, which also discusses the number of cells differentiated into blood cells). Thus, one of ordinary skill would have found it obvious that combining the methods of references A and B would have the known effect of differentiating pluripotent stem cells into blood cells. Moreover, because the steps of reference A as modified to comprise maintaining the cells on LM511, as taught by reference B, teaches the same steps as the instantly claimed method to be practiced on the same cell population (pluripotent stem cells), and would thereby inherently and predictably have the same effects on differentiation. Applicant's attention is directed to MPEP § 2112 (II), which states, "there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)." Furthermore, Integra Life Sciences I Ltd. v. Merck KGaA, 50 USPQ2d 1846 (DC SCalif, 1999) makes clear that a reference teaching a process may anticipate claims drawn to a method comprising the same process steps, despite the recitation of a different intended use in the preamble or the later discovery of a particular property of one of the starting materials or end products. Moreover, the method made obvious by the prior art references is presumed to accomplish the same results as the instantly claimed method because the components used and steps perform appear to read upon the instantly claimed method, such that a showing that the prior art product does not perform the same functions/achieve the same results would likely indicate a deficiency of the instant claims with respect to 35 USC 112(a).
Regarding claim 6, because reference A when modified according to reference B to comprise maintaining the cells on LM511, teaches the method steps of instant claim 1 for the purpose of maintaining obtaining pluripotent stem cells which then are treated with CHIR for differentiation into mesodermal cells, one of ordinary skill in the art motivated, for the reasons above, to practice the method of reference A as modified by reference B and Osaka University, as discussed above, would inherently meet the limitations of instant claim 6 because the limitations of instant claim 6 are merely recites results effected by practicing the method steps of instant claim 1.
Regarding claim 9, as discussed above, the combined references make obvious method(s) of obtaining pluripotent stem cells capable of/ with high blood cell differentiation ability from human pluripotent stem cells (see page 1/13 of reference A) which meet the limitations of instant claim 1, and reference A teaches a step of inducing differentiation of the cell obtained into a cell of mesodermal lineage (see reference A’s claim 1, which teaches a method for inducing mesoderm, comprising a step of contacting pluripotent stem cells with BMP4 or CHIR for 3 days or more). Note that one of ordinary skill in the art would have understood that there would be a period of time wherein the treated (with Laminin511) cells would be released from resistance to differentiation, but not yet differentiated (as relating to the intermediate product resulting from claim 1 and which is used in claim 9 part (1).
One of ordinary skill in the art would have been motivated to practice the method of reference A as modified by reference B and Osaka University for the reasons discussed above in the rejection of claim 1, for example.
Regarding claims 10 and 11, as discussed above the combined references make obvious the method of instant claim 9 and reference A further teaches that the pluripotent stem cells have a high blood cell differentiation ability from human pluripotent stem cells (see page 1/13 of reference A) and that the cells were differentiated into blood cells (see figures 2E, 10B, 11A and D, and 13 and the description of said figures).
Reference F, reference A, reference B, and Osaka University do not explicitly teach that the cell is induced to differentiate.
However, by applicant’s admission, the steps of differentiating the pluripotent cells are not inventive, but are accomplished by methods known in the art (see paragraph 0050 of the instant specification citing Nakatsuji and Suemori ed., "Experimental Medicine Separate Volume ES/iPS Cell Experimental Standard" which has not been appended and which the Examiner is unable to retrieve) as an exemplary source teaching such means for differentiation into various mesodermal or endodermal cells. Because Applicant states any art source would be exemplary and obvious for the artisan to turn to, the Examiner points to reference A teaching steps of differentiating induced human ES from pluripotent stem cells to blood cells (see for example pages 5/9-6/9)
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of the combined references. The artisan would have been motivated to make and use the invention as claimed in order to make use of the methods of reference A, reference B, and Osaka University to achieve a differentiated blood or other mesendodermal cells through art-known means such as those taught by reference A. The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Regarding claim 20, as discussed above, the combined references make obvious the method of instant claim 2 and the steps of inducing differentiation are, by applicant’s admission, known in the art and non-inventive (see paragraph 0050 of the instant specification) as well as taught in the prior art references cited herein. The combined references implicitly teach a step of inducing differentiation by teaching that the cells are differentiated into mesodermal (mesendodermal/blood) cells. Therefore, the cited references in combination are held to make obvious the method of instant claim 20.
Regarding claim 21, as discussed above, the combined references teach the method of instant claim 3 and the steps of inducing differentiation are, by applicant’s admission, known in the art and non-inventive (see paragraph 0050 of the instant specification). Moreover the combined references implicitly teach a step of inducing differentiation by teaching that the cells are differentiated into mesodermal (mesendodermal/blood) cells. Therefore, the cited references in combination are held to make obvious the method of instant claim 21. While the references do not explicitly state that there is no contact with laminin 121 or laminin 421, the fact that the references do not mention these laminins would have been understood by the reasonable artisan to stand as a teaching that the methods function as written without further contacting the cells with laminin 121 and/or laminin 421.
The artisan would have had a reasonable expectation of success in light of the combined references.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No.11959103 B2 (reference G) in view of reference A, reference B, and Osaka University, as applied to claims 1-3, 6-11, and 20-21, in further view of D’Amour et al (Production of pancreatic hormone–expressing endocrine cells from human embryonic stem cells. Nat Biotechnol 24, 1392–1401 (2006). https://doi.org/10.1038/nbt1259). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps disclosed in reference G encompass and recite the subject matter of the instant claims.
Regarding claim 12, as discussed above, reference G in view of reference A, reference B and Osaka University teaches the method of instant claim 9, but does not explicitly teach differentiation into endodermal cells.
However, D’Amour et al teach a 5 stage method of differentiating human embryonic cells into pancreatic ß cells with intact hormonal function (see for example the abstract and Discussion sections; see also the methods and refence in general).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of reference G, reference A, reference B, D’Amour et al, and Osaka University because all the methods pertain to cell culture and differentiation of iPSCs using the ß1-ß-catenin pathway where D’Amour et al teaches differentiation into endodermal cells (specifically, pancreatic ß cells). The artisan would have been motivated to make and use the invention as claimed because, absent evidence to the contrary, it is presumed that the pluripotent cells of references G or A or Osaka University would be capable of differentiation into a pancreatic ß cell where the proper steps of inducing differentiation, known in the art, are practiced. Where the steps of differentiation and products used are the same, one of ordinary skill in the art would have had a reasonable expectation of success beginning with the pluripotent cells of reference G and proceeding with the method of reference G as modified by reference A, reference B, Osaka University, and D’Amour et al to arrive at a functional human pancreatic ß cell for therapeutic means such as diabetic cell therapy as taught throughout D’Amour et al (see for example the abstract). The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Claims 1-3, 6-11, and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No.11898163 B2 (reference H) in view of WO2017164257 A1 (reference A; note that the Google machine translation is being relied upon for examination purposes and said translation is attached), JP 2017023019 A (reference B; note that the Google machine translation is being relied upon for examination purposes and said translation is attached), and Osaka University (US 9758765 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps disclosed in reference H encompass and recite the subject matter of the instant claims.
Regarding claims 1 and 7-8, Reference H claims a method for producing a cell population comprising culturing human pluripotent stem cells on a laminin 511 E8 coated plate and later contacting the cells with a GSK3ß inhibitor (see for example claims 1 and 8 of reference H).
Reference H does not explicitly claim certain limitations such as the concentration of laminin 511 or fragment thereof or the destiny/capacity of the cell to differentiate into mesendodermal lineage.
However, reference A teaches a method of producing mesoderm (having high blood cell differentiation ability from human pluripotent stem cells; see page 1/13) comprising a step of contacting pluripotent stem cells with bone morphogenetic protein 4 (BMP4) or CHIR (which Applicant admits is a GSK-3ß inhibitor at paragraph 0040 of the specification) for 3 days or more. The method may include contacting pluripotent stem cells with BMP4, one of the bone morphogenetic factors, or CHIR (CHIR-99021 or CHIR-98014) known as a GSK-3β inhibitor or an agent that activates the Wnt signal for a desired period of time (such as for 3 days or longer, see for example the abstract at page 1/13 and page 6/13). Thus, pluripotent stem cells are induced to differentiate into mesodermal cells. BMP4 or CHIR is brought into contact with pluripotent stem cells by adding it to a medium or the like for culturing pluripotent stem cells (see claim 1 and page 3/13). Note that because the cells have a ‘high blood cell differentiation ability’ it is assumed that the method steps/treatment have ‘released’ the cells’ from differentiation resistance’ (per the definition in the specification (see page 9) and that of the claim interpretation section made of record in the office action dated 02/04/2025).
Reference H and reference A does not claim or teach that the pluripotent stem cells are maintained on Laminin 511 (LM511).
However, reference B teaches that induction of differentiation of pluripotent stem cells into mesodermal progenitor cells was accomplished by maintaining cells on laminin 511 (LM511) coated plates with CHIR99021 (see paragraphs 0059-0060 of reference B).
Reference H, reference A, and B do not explicitly claim or teach the use of laminin 511 or a fragment thereof at the claimed concertation(s).
However, Osaka University teaches that recombinant human laminins (particularly, laminin 332, which consists of α3, β3 and γ2 chains, and laminin 511, which consists of α65, β1 and γ1 chains) are effective for maintaining the pluripotency of human ES cells and teach a method for culturing mammalian cells (which may be embryonic stem cells (ECs), iPSCs, or somatic stem cells, characterized by culturing the cells in the presence of the modified human laminin and further teach a culture substrate coated with the modified human laminin, wherein the coating concentration of the modified human laminin is 0.03 to 25 μg/cm2 wherein the laminin E8 fragment is highlighted for use in said culture method(s) (see for example column 1 bridging column 2, Figures 5 and 8 and their descriptions, Examples 1 and 7, and claims 1 and 5-9).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of reference H, reference A, reference B, and Osaka University. The artisan would have been motivated to make and use the invention as claimed because both references H, A and B describe making methods of culturing and differentiating human cells from pluripotent stem cells through contact with laminin 511, one of ordinary skill in the art would have found it obvious to optimize their methods by combining features of the methods, such as by modifying reference H in view of reference A to comprise maintaining the cells on LM511 before contacting the pluripotent stem cells thereby obtained with CHIR to induce differentiation. The MPEP provides that it is obvious to combine known elements where there is motivation in the art (see MPEP section 2143(I)(G)) or where the combination according to known methods yields predictable results (see MPEP section 2143(I)(A)). Here, the combination of LM511 and CHIR would be predictably combined to achieve the same purpose of helping pluripotent stem cells to differentiate into mesodermal/mesendodermal cells. Looking to the art for supported concentrations of laminin to use for cell-culture substrate for culturing pluripotent stem cells (iPSCs, mGS, or embryonic (ES) cells; see column 11 of Osaka University), the artisan would have found it obvious to use the concentrations taught by Osaka University as a starting point for optimizing the laminin coating concentration used to contact and culture the pluripotent cells. With respect to the recitation of step 1 of claim 1 ‘subjecting a pluripotent stem cell having resistance to differentiation into mesendodermal lineage,’ no explicit definition is provided. The only implicit definition comes from reading claim 15 in light of paragraph 0009 of the specification. This reading of the disclosure supports that such a pluripotent cells would be a cell maintained and/or cultured on laminin511 or a fragment thereof prior to differentiation wherein the control is a cell maintained and/or cultured on laminin 421 of laminin 121 (claim 15 states that said cell has a decreased integrinß1 (ITGß1) and paragraph 0009 supplies that cells maintained and/or cultured on laminin 511 have a decreases expression of ITGß1 relative to cells cultured on Laminin 421 or laminin 121, which is consistent with the preclusion of contacting the cells with laminin 421 and/or laminin 121 recited in instant claim 1; see also figure 3 of the instant Application). Osaka University teaches that the pluripotent cells are maintained/cultured on laminin 511 or a fragment thereof (see for example examples 5-7 and columns 19 and 28-33) such that the cells of Osaka University are reasonably interpreted to read upon the cells of step 1 of instant claim 1, as presently drafted. While the references do not explicitly state that there is no contact with laminin 121 or laminin 421, the fact that the references do not mention these laminins would have been understood by the reasonable artisan to stand as a teaching that the methods function as written without further contacting the cells with laminin 121 and/or laminin 421. The recited decreased expression level of integrin ß1 relative to a control cultured on laminin 421 and/or 121 is an inherent feature of practicing the obvious prior art method as this is a result achieved, not an active step. The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Regarding claim 2, as discussed above, the combined references make obvious the claimed method of differentiation/production of mesodermal cells of instant claim 1, and reference A teaches that the cells obtained are mesodermal cells. Moreover, where the components/structures used and method steps employed by the prior art read on and make obvious the instant claims active steps, the effects/results/functions therefrom are presumed to be made obvious because function inherently flows from structure.
Regarding claim 3, as discussed above, the combined references make obvious the claimed method of differentiation/production of mesodermal cells of instant claim 1. Reference A further teaches that:
“According to the novel differentiation-inducing method of the present invention using BMP4 or CHIR, not only differentiation from pluripotent stem cells to mesoderm can be induced with higher efficiency but also differentiation induction into blood cell groups. Can be promoted. The present invention further enables high-efficiency differentiation induction of not only megakaryocytes and platelets but also various blood cells including hematopoietic stem cells,”
(see page 2/13, which also discusses the number of cells differentiated into blood cells). Thus, one of ordinary skill would have found it obvious that combining the methods of references A and B would have the known effect of differentiating pluripotent stem cells into blood cells. Moreover, because the steps of reference A as modified to comprise maintaining the cells on LM511, as taught by reference B, teaches the same steps as the instantly claimed method to be practiced on the same cell population (pluripotent stem cells), and would thereby inherently and predictably have the same effects on differentiation. Applicant's attention is directed to MPEP § 2112 (II), which states, "there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)." Furthermore, Integra Life Sciences I Ltd. v. Merck KGaA, 50 USPQ2d 1846 (DC SCalif, 1999) makes clear that a reference teaching a process may anticipate claims drawn to a method comprising the same process steps, despite the recitation of a different intended use in the preamble or the later discovery of a particular property of one of the starting materials or end products. Moreover, the method made obvious by the prior art references is presumed to accomplish the same results as the instantly claimed method because the components used and steps perform appear to read upon the instantly claimed method, such that a showing that the prior art product does not perform the same functions/achieve the same results would likely indicate a deficiency of the instant claims with respect to 35 USC 112(a).
Regarding claim 6, because reference H when modified according to references A and B to comprise maintaining the cells on LM511, teaches the method steps of instant claim 1 for the purpose of maintaining obtaining pluripotent stem cells which then are treated with CHIR for differentiation into mesodermal cells, one of ordinary skill in the art motivated, for the reasons above, to practice the method of reference H as modified by references A and B and Osaka University, as discussed above, would inherently meet the limitations of instant claim 6 because the limitations of instant claim 6 are merely recites results effected by practicing the method steps of instant claim 1.
Regarding claim 9, as discussed above, the combined references make obvious method(s) of obtaining pluripotent stem cells capable of/ with high blood cell differentiation ability from human pluripotent stem cells (see page 1/13 of reference A) which meet the limitations of instant claim 1, and reference A teaches a step of inducing differentiation of the cell obtained into a cell of mesodermal lineage (see reference A’s claim 1, which teaches a method for inducing mesoderm, comprising a step of contacting pluripotent stem cells with BMP4 or CHIR for 3 days or more). Note that one of ordinary skill in the art would have understood that there would be a period of time wherein the treated (with Laminin511) cells would be released from resistance to differentiation, but not yet differentiated (as relating to the intermediate product resulting from claim 1 and which is used in claim 9 part (1).
One of ordinary skill in the art would have been motivated to practice the method of reference H as modified by references A and B and Osaka University for the reasons discussed above in the rejection of claim 1, for example.
Regarding claims 10 and 11, as discussed above the combined references make obvious the method of instant claim 9 and reference A further teaches that the pluripotent stem cells have a high blood cell differentiation ability from human pluripotent stem cells (see page 1/13 of reference A) and that the cells were differentiated into blood cells (see figures 2E, 10B, 11A and D, and 13 and the description of said figures).
Reference H, reference A, reference B, and Osaka University do not explicitly teach that the cell is induced to differentiate.
However, by applicant’s admission, the steps of differentiating the pluripotent cells are not inventive, but are accomplished by methods known in the art (see paragraph 0050 of the instant specification citing Nakatsuji and Suemori ed., "Experimental Medicine Separate Volume ES/iPS Cell Experimental Standard" which has not been appended and which the Examiner is unable to retrieve) as an exemplary source teaching such means for differentiation into various mesodermal or endodermal cells. Because Applicant states any art source would be exemplary and obvious for the artisan to turn to, the Examiner points to reference A teaching steps of differentiating induced human ES from pluripotent stem cells to blood cells (see for example pages 5/9-6/9)
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of the combined references. The artisan would have been motivated to make and use the invention as claimed in order to make use of the methods of reference H, reference A, reference B, and Osaka University to achieve a differentiated blood or other mesendodermal cells through art-known means such as those taught by reference A. The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Regarding claim 20, as discussed above, the combined references make obvious the method of instant claim 2 and the steps of inducing differentiation are, by applicant’s admission, known in the art and non-inventive (see paragraph 0050 of the instant specification) as well as taught in the prior art references cited herein. The combined references implicitly teach a step of inducing differentiation by teaching that the cells are differentiated into mesodermal (mesendodermal/blood) cells. Therefore, the cited references in combination are held to make obvious the method of instant claim 20.
Regarding claim 21, as discussed above, the combined references teach the method of instant claim 3 and the steps of inducing differentiation are, by applicant’s admission, known in the art and non-inventive (see paragraph 0050 of the instant specification). Moreover the combined references implicitly teach a step of inducing differentiation by teaching that the cells are differentiated into mesodermal (mesendodermal/blood) cells. Therefore, the cited references in combination are held to make obvious the method of instant claim 21.
The artisan would have had a reasonable expectation of success in light of the combined references.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No.11898163 B2 (reference H) in view of reference A, reference B, and Osaka University, as applied to claims 1-3, 6-11, and 20-21, in further view of D’Amour et al (Production of pancreatic hormone–expressing endocrine cells from human embryonic stem cells. Nat Biotechnol 24, 1392–1401 (2006). https://doi.org/10.1038/nbt1259). Although the claims at issue are not identical, they are not patentably distinct from each other because the method steps disclosed in reference H encompass and recite the subject matter of the instant claims.
Regarding claim 12, as discussed above, reference H in view of reference A, reference B and Osaka University teaches the method of instant claim 9, but does not explicitly teach differentiation into endodermal cells.
However, D’Amour et al teach a 5 stage method of differentiating human embryonic cells into pancreatic ß cells with intact hormonal function (see for example the abstract and Discussion sections; see also the methods and refence in general).
It would have been prima facie obvious to the person of ordinary skill in the art to arrive at the claimed invention from the disclosures of reference H, reference A, reference B, D’Amour et al, and Osaka University because all the methods pertain to cell culture and differentiation of iPSCs using the ß1-ß-catenin pathway where D’Amour et al teach differentiation into endodermal cells (specifically, pancreatic ß cells). The artisan would have been motivated to make and use the invention as claimed because, absent evidence to the contrary, it is presumed that the pluripotent cells of references H or A or Osaka University would be capable of differentiation into a pancreatic ß cell where the proper steps of inducing differentiation, known in the art, are practiced. Where the steps of differentiation and products used are the same, one of ordinary skill in the art would have had a reasonable expectation of success beginning with the pluripotent cells of reference H and proceeding with the method of reference H as modified by reference A, reference B, Osaka University, and D’Amour et al to arrive at a functional human pancreatic ß cell for therapeutic means such as diabetic cell therapy as taught throughout D’Amour et al (see for example the abstract). The artisan would have had a reasonable expectation of success based on the cumulative disclosures of these prior art references.
Applicant’s Arguments and Responses
A. Applicant first argues that the cited art references, particularly Osaka, differ from what is claimed in a nonobvious manner. Applicant points out that Osaka is concerned with maintaining cells (in a pluripotent state) whereas the claimed method is for differentiating cells. Applicant states the novelty is in their discovery that lower concentrations of laminin 511 create weak adhesion conducive to differentiation. Applicants uses these points to argue for withdrawal of all rejections over Osaka.
Response: The problem with these arguments is that the claims comprise active steps of subjecting pluripotent stem cells to laminin 511 (wherein the E8 fragment must be present) at a claimed concentration. The effect of using the same concentration of the same reagent on the same cells must be the same regarding adhesion, maintenance of pluripotency/release to differentiation. The prior art motivates the artisan to perform the recited steps using the recited reagents at concentrations within the claimed concertation range. Any resultant effect must be inherent to the prior art method. Applicant’s discovery, while academically valuable and laudable does not lend patentability to what the prior art explicitly motivates. The MPEP provides that:
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id. See also MPEP 2112(I) with regard to inherency and product-by-process claims and MPEP § 2141.02 with regard to inherency and rejections under 35 U.S.C. 103,”
(see MPEP 2112(I)). Therefore, the cited references (in their entirety) and teachings are held to make obvious as of the filing date the claimed methods as presently drafted and this line of argument is deemed unpersuasive. The rejections for obviousness under 35 USC §103 and for double patenting are therefore maintained.
Conclusion
No claim is allowed.
Notice:
Claim 24, which narrows to a concentration lower than that taught or reasonably suggested by the prior art, is deemed to be free from the art. The closest prior art is the combination of reference A (WO2017164257 A1), reference B (2017023019 A), and Osaka (US 9758765 B2) which, in combination teach a method of culturing pluripotent stem cells on laminin 511 comprising the E8 fragment at a concertation of 0.03-25µg/cm2 of laminin 511 comprising the E8 fragment. There is nothing in the prior art to lead the artisan to use a concentration of 0.005-0.025µg/cm2 of laminin 511 comprising the E8 fragment so as to lend a reasonable expectation of success. Therefore, claim 24 is deemed to be free from the prior art.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Miyazaki et al (Laminin E8 fragments support efficient adhesion and expansion of dissociated human pluripotent stem cells. Nat Commun. 2012;3:1236. doi: 10.1038/ncomms2231) teach a defined xeno- and feeder-free culture system for hESCs and hiPSCs. LM-E8s derived from laminin isoforms support increased adhesion, survival, self-renewal and differentiation of hESCs absent the use of laminin 421 or laminin 121 (see for example the Abstract, Methods, and final paragraph of the Discussion sections at pages 1 and 8-9).
Hasegawa et al (US 20170114322 A1) teach a medium enabling maintenance of pluripotent stem cells in an undifferentiated state wherein the medium contains fewer protein components, is prepared at a lower cost, and wherein the cells are more efficiently grown (see paragraph 0011). Hasegawa et al tech that the medium comprises a GSK3β inhibitor, which may be CHIR99021 (CHIR) (see paragraphs 0012-0017). Human ES cell lines remained undifferentiated when cultured in a dish (Laminin-511-E8-coated dish) in which coating treatment was performed overnight using 1 μg of Laminin 511 E8 (iMatrix-511 892001, produced by Nippi) per 1 cm.sup.2 of the culture dish (see paragraphs 0111-0115 and figure 7A).
Matsumura et al (US 20150267160 A1) teach that, in order to obtain a population of cells which are derived from a single cell and which have identical genetic information (hereinafter also referred to as "clone cells"), it is necessary to culture the single cell in a state where the single cell is singly seeded such that contacting of the single cell with another cell or the like is inhibited. A method of obtaining such clone cells is expected to be particularly demanded in cases in which pluripotent cells are industrially used. Matsumura uses and incorporates the teachings of WO 11/043405 and WO 09/123349. WO 11/043405 discloses an invention in which singly dispersed human pluripotent stem cells are cultured in a single-cell state while the pluripotency is maintained, wherein the extracellular-matrix coating of the culture matrix applied is the E8 fragment of human laminin .alpha.5.beta.1.gamma.1 (LM511). WO 09/123349 discloses a culture method in which culturing is carried out in a medium which contains laminin 5 but does not contain feeder cells or serum, in order to avoid the potential risk of viral contamination and the like while maintaining the pluripotency of pluripotent stem cells, wherein CHIR may be used as a reprogramming factor for pluripotency (see 0005, 0007-0008, 0022, 0057-0063, 0066-0070, 00820098, 0157-0158).
Huang et al (Activation of Wnt/β-catenin signalling via GSK3 inhibitors direct differentiation of human adipose stem cells into functional hepatocytes. Sci Rep. 2017 Jan 17;7:40716) teach that that activation of Wnt/β-catenin signalling via GSK3 inhibitors in definitive endoderm specification may represent an important mechanism mediating hASCs differentiated to functional hepatocyte. Furthermore, development of similar compounds may be useful for robust, potentially scalable and cost-effective generation of functional hepatocytes for drug screening and predictive toxicology platform.
Lim et al (Activation of beta-catenin signalling by GSK-3 inhibition increases p-glycoprotein expression in brain endothelial cells. J Neurochem. 2008 Aug;106(4):1855-65) teach that that using the specific glycogen synthase kinase-3 (GSK-3) inhibitor 6-bromoindirubin-3′-oxime enhanced β-catenin and that application of Wnt agonist [2-amino-4-(3,4-(methylenedioxy) benzylamino)-6-(3-methoxyphenyl)pyrimidine] also enhanced β-catenin.
Genecards, retrieved from https://www.genecards.org/cgi-bin/carddisp.pl?gene=POU5F1) teaches that OCT3/4 is also called OCT3 and/or OCT4.
WO 2016010082 A1 (reference C) teaches that:
“Human pluripotent stem cells such as human ES cells and human iPS cells are attracting worldwide attention for their application in regenerative medicine. In order to apply human pluripotent stem cells to regenerative medicine, it is necessary to develop a culture technique for culturing and amplifying these stem cells safely and stably. In particular, the development of a stable culture method under conditions that do not use feeder cells (feeder-free) and do not contain components derived from different animals (xeno-free) is an urgent issue. So far, various culture substrates that satisfy feeder-free and xeno-free conditions such as vitronectin, laminin α5β1γ1 ([also] referred to as “laminin 511”), laminin α5β2γ1 (hereinafter referred to as “laminin 521”) have been developed. However, the recombinant laminin 511E8 fragment containing only the integrin binding site of laminin 511 ([also] referred to as “laminin 511E8”) has a very strong adhesion activity to human pluripotent stem cells… Furthermore, the use of laminin 511E8 as a culture substrate enables the establishment of human iPS cells. The entire process from expansion culture to differentiation induction should be performed all at once under feeder-free conditions. In order to culture cells using laminin 511E8 as a substrate, it is necessary to coat laminin 511E8 on the culture surface of the culture apparatus. However, since most of the culture substrates that satisfy feeder-free conditions such as laminin 511E8 are recombinant proteins prepared using genetic recombination technology, the cost of the recombinant protein used to coat the culture equipment is human pluripotent stem cells is a large economic burden in cultivating Coating concentration of laminin 511E8 used when culturing human ES cells or human iPS cells are usually 0.25μg / cm 2 ~ 1.0μg / cm2 , for example, culture dish. The amount of laminin fragments and the like contained in the coating solution is preferably such an amount that the coating concentration is… more preferably an amount that a coating concentration of 0.1 [mu] g / cm 2 or less. Although a minimum is not specifically limited, 0.01 microgram / cm < 2 > or more is preferable and 0.05 microgram / cm < 2 > or more is more preferable.”
(see pages 2/15 and 6/15).
Rowland et al (obtained from https://doi.org/10.1089/scd.2009.0328 (2009)) and Domogatskaya et al (Stem Cells, Volume 26, Issue 11, November 2008, Pages 2800–2809) discuss the role of ITGB1 in cell proliferation and adhesion.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Ashley Gao/
Examiner, Art Unit 1678
/GREGORY S EMCH/Supervisory Patent Examiner, Art Unit 1678
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