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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 19, 2026, has been entered.
DETAILED ACTION
The amended claims filed on March 19, 2026, have been acknowledged. Claims 1-112, 114-119, 121-122, 127-132, and 136 were cancelled. Claims 113, 120, and 135 were amended. Claims 137-145 are new. Claims 113, 120, 123-126, 133-135, and 137-145 are pending and examined on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) filed on March 19, 2026, has been considered.
Priority
The applicant claims domestic priority from U.S. provisional application No. 62/757,082, filed on November 7, 2018. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/757,082, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. This provisional application provides information on reprogramming a fibroblastic cell into a progenitor cell but does not provide information reprogramming a limbal niche cell into a neural crest cell. However, Application No. PCT/US2019/060140, filed on November 6, 2019, did provide the above information. Therefore, claims 113, 120, 123-126, 133-135, and 137-145 receive domestic benefit from application No. PCT/US2019/060140, filed on November 6, 2019.
Maintained Claim Rejections - 35 USC § 112a
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 113, 120, 123-126, 133-135, and 137-145 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for reprogramming the late passage limbal niche cells that lost Pax6 expression into an earlier lineage limbal niche cell that expresses Pax6, a neural crest cell marker, by contacting the late passage limbal niche cell with soluble HC-HA/PTX3 in vitro without TGFβ1 and with functioning CXCR4/SDF-1 signaling does not provide enablement for performing this method with TGFβ1 in the media, without functioning CXCR4/SDF-1 signaling, or in vivo. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims. The applicant’s disclosure does not provide enough information for any person skilled in the art to perform this method in vivo, with TGFβ1 in the media, or without functioning CXCR4/SDF-1 signaling. This is a new rejection made in response to Applicant’s amendments to claim 113 that is similar to a previous rejection of record. Any aspect of Applicant’s traversal that is relevant to the rejection of record as newly written is addressed below.
The factors to be weighed to evaluate whether a disclosure satisfies the enablement requirement and whether any necessary experimentation is undue are set forth in MPEP 2164.01(a).
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Although all the factors have been considered, the relevant factors will be addressed below.
Breadth of the claims: Claim 113 recites the following claim language, “A method of reprogramming a cell having a first phenotype, comprising: contacting the cell having the first phenotype to a composition comprising a therapeutically effective amount of soluble HC-HA/PTX3 wherein the contacting reprograms the cell having the first phenotype to a second cell having a second phenotype, wherein the first phenotype comprises a limbal niche cell, wherein the limbal niche cell does not express Pax6 in the nucleus and wherein the second phenotype comprises a neural crest progenitor cell” The broadest reasonable interpretation is that this method could be used to reprogram limbal niche cells lacking nuclear Pax6 expression into neural crest progenitor cells using soluble HC-HA/PTX3 in any media conditions. The broadest reasonable interpretation is that this method could be done in vivo or in vitro.
Nature of the invention: The subject matter of the invention relates to a method to reprogram a cell having a first phenotype (a limbal niche cell lacking nuclear Pax6 expression) into a second cell phenotype (a neural crest progenitor cell) by contacting the cell having the first phenotype with a composition comprising soluble HC-HA/PTX3 for a time sufficient to reprogram the cell.
State of the prior art: The prior art teaches that human corneal fibroblasts could be reprogrammed to keratocytes or neural crest cells as identified by United States Patent Application No. 20150166624 (Tseng).
Tseng teaches the ability of HC-HA/PTX3 complexes to maintain stem cells in an undifferentiated state as well as induce adult differentiated fibroblasts to younger progenitors in a human corneal fibroblasts model. Human corneal fibroblasts are differentiated from keratocytes and upon addition of exogenous TGF-β1, they further differentiate into scar-forming myofibroblasts. The data provided herein demonstrate that culturing the cells in the presence of HC-HA prevented cells from differentiating into myofibroblasts under TGF-β1 stimulation. In the absence of TGF-β1, HC-HA/PTX3 complexes revert human corneal fibroblasts into keratocytes expressing keratocan and CD34 after 72 hours of culture. In the presence of TGF-β1, immobilized, but not soluble, HC-HA/PTX3 complexes revert human corneal fibroblasts (HCF) into younger progenitors that lack keratocan expression but express a number of neural crest cell markers such as Osr2, FGF 10, and Sox9 and embryonic stem cell markers, such as c-myc, KLF 4, Nanog, nestin, Oct 4, Rex-1, Sox-2, and SSEA-4 (paragraphs 205 and 0735 and Figures 50-52). In the presence of TGF-β1 and soluble HC-HA/PTX3, HCF lacks keratocan expression and has reduced nestin expression (a key neural crest cell marker) and no significant change in expression of multiple embryonic stem cell markers (Figures 50-52).
Tseng teaches that soluble and immobilized HC-HA (based on the statements in paragraph 0205 as presented above, the HC-HA is synonymous with HC-HA/PTX3) promoted protein levels of Keratocan by 8- and 10-fold, respectively indicating those HCF are indeed reverted to keratocytes when they were cultured with HC-HA/PTX3 complexes (FIG. 51).
Regarding limbal niche cells, Tseng teaches that Limbal niche cells, p3 [passage 3] were seeded on plastic dishes with immobilized HA, soluble HC-HA (PBS) (2x or 4x) (paragraph 0205 shows that HC-HA refers to HC-HA/PTX3 complexes) for 48 hr without TGFβ1 (paragraph 0735). However, Tseng does not describe the end results of that experiment.
The art teaches that TGF-β is widely expressed in the body, as identified by Deng et al. (Signal Transduction and Targeted Therapy 9: 1-40. 2024).
Deng teaches that TGF-β is widely produced by nonneoplastic
tissues such as salivary glands, muscles, kidneys, liver, heart, and brain. Furthermore. platelets have been identified as one of the most abundant sources of TGF-β among
all normal tissues. The ubiquitous expression of TGF-β in health strongly indicates its critical and multiple roles in physiological conditions (page 1, column 1, paragraph 1).
Level of predictability in the art: The prior art has successfully reduced to practice that soluble and immobilized HC-HA/PTX3 compounds cause different phenotypic changes when cultured with TGF-β1, including reduced nestin expression (a neural crest cell marker) when TGF-β1 is present in the media. Although Tseng performs a similar experiment using soluble HC-HA/PTX3 compounds with limbal niche cells, Tseng is silent as to what effect the compound has on the limbal niche cells.
The art also identifies that TGF-β is widely expressed in the body and has ubiquitous expression in health.
As such, this results in unpredictability about how someone can use this method using soluble HC-HA/PTX3 to reprogram limbal niche cells lacking nuclear Pax6 expression into neural crest progenitor cells, based on the prior art.
Amount of direction provided by the inventor and existence of working examples: The specification discloses one example (Example 3) of reprogramming a passage 10 (P10) limbal niche cell lacking nuclear Pax6 expression using HC-HA/PTX3 into a neural crest progenitor cell. Late passaged limbal niche cells (P10) are reprogrammed to an earlier lineage limbal niche cell that expresses Pax6+ and functions as a neural crest progenitor. Pax6 expression was increased after 48 hours of culturing the cells with immobilized or soluble HC-HA. The specification discloses that CXCR4/SDF-1 signaling is essential for nuclear Pax6 expression to occur as blockade of CXCR4/SDF-l signaling by AMD3100 prevented nuclear Pax6 expression from occurring (paragraphs 0339-0341 and Figures 15-19). This example was done in vitro.
Quantity of experimentation needed: In light of the above factors, the applicant provides enablement for reprogramming the late passage (P10) limbal niche cells that lost nuclear Pax6 expression and formed non-aggregated cells into an earlier lineage limbal niche cell that expresses Pax6, a neural crest cell marker, after contacting the late passage limbal niche cell with soluble HC-HA/PTX3 in vitro without TGFβ1 and with functioning CXCR4/SDF-1 signaling but not performing this method in vivo, with TGFβ1 in the media, or without functioning CXCR4/SDF-1 signaling. As such, there would be undue experimentation related to reprogramming a limbal niche cell lacking nuclear Pax6 expression into neural crest progenitor cell by performing the method in vivo, performing the method with cells without functioning CXCR4/SDF-1 signaling, and performing the method with TGFβ1 contacting the cells to practice the full scope of the claim.
Claims 120, 123-126, 133-135, and 137-145 are also rejected because of their dependency on claim 113.
Response to Arguments
Applicant's arguments filed March 19, 2026, are acknowledged.
Applicant argues that a skilled artisan can confirm that present claim 113 is enabled in view of instant application; the process requires contacting the LNC to soluble HC-HA/PTX3 complex to elicit cell aggregation observed as early as 60 minutes (FIG. 16A, white arrow) (See at paragraph [0030] "FIGs. 16A-16C illustrate soluble HC-HAIPTX3 also promoted early cell aggregation and nuclear Pax6+ neural crest progenitors in P10 LNC, ") which culminates with completion of cellular reprogramming of the P10 LNC to a neural crest progenitor expressing nuclear Pax6. Protein expression as expected, was detectable and reported later at 24-48 hours since it follows the cell aggregation and mRNA transcript expression detectable earlier than 60 minutes (FIG. 16A-16B). These data demonstrate that once cells aggregate, they start reprogramming and rescuing senescent LNC to revert to a progenitor status confirmed by the expression of progenitor status markers including Pax6 protein expression, as shown at paragraphs [0328]- [0340] and [0349]. Taken together, the studies enable a skilled artisan to contemplate, perform the experiments, and collect data (page 4, paragraph 4-page 6, paragraph 1).
Applicant's arguments have been fully considered but they are not persuasive. However, further consideration of other examples from Applicant’s specification, specifically paragraphs 0341-0343 and Figures 17-19, show that Pax6 nuclear expression does begin within 60 minutes after contacting as identified in Figure 19E as BMP inhibition did not prevent nuclear Pax6 staining from occurring in that initial 60-minute time frame. Therefore, Applicant is considered to be enabled for a broader time frame than at least 48 hours.
Applicant further argues that the experiments were enabled for in vivo extrapolation as they were conducted in the established 3D Matrigel model, a proxy for in vivo studies. Applicant argues that MPEP 2164.02 provides enablement for using their method in vivo as there is a correlative relationship between the in vitro and in vivo method and that their experiments using Matrigel are an established proxy for in vivo biology in terms of stem cell or regenerative medicine. Furthermore, Applicant argues that the specification in Example 3 provides enablement for the claimed subject matter. The 3D Matrigel assay that is a proxy for an in vivo study demonstrated efficacious findings that soluble HC-HA/PTX3 complex can revert a P10 LNC to a neural crest progenitor cell (page 6, paragraph 3-page 7, paragraph 1).
Applicant's arguments have been fully considered but they are not persuasive.
Regarding MPEP 2164.02, it is worth highlighting the passage,
“An in vitro or in vivo animal model example in the specification, in effect, constitutes a "working example" if that example "correlates" with a disclosed or claimed method invention. If there is no correlation, then the examples do not constitute "working examples." In this regard, the issue of "correlation" is also dependent on the state of the prior art. In other words, if the art is such that a particular model is recognized as correlating to a specific condition, then it should be accepted as correlating unless the examiner has evidence that the model does not correlate.
The art, as identified by Tseng, teaches the ability of HC-HA/PTX3 complexes to maintain stem cells in an undifferentiated state as well as induce adult differentiated fibroblasts to younger progenitors in a human corneal fibroblasts model. Human corneal fibroblasts are differentiated from keratocytes and upon addition of exogenous TGF-β1, they further differentiate into scar-forming myofibroblasts. In the presence of TGF-β1 and soluble HC-HA/PTX3, HCF lacks keratocan expression and has reduced nestin expression (a key neural crest cell marker) and no significant change in expression of multiple embryonic stem cell markers (Figures 50-52).
The art teaches that TGF-β is widely expressed in the body, as identified by Deng et al. (Signal Transduction and Targeted Therapy 9: 1-40).
Deng teaches that TGF-β is widely produced by nonneoplastic tissues such as salivary glands, muscles, kidneys, liver, heart, and brain. Furthermore. platelets have been identified as one of the most abundant sources of TGF-β among all normal tissues. The ubiquitous expression of TGF-β in health strongly indicates its critical and multiple roles in physiological conditions (page 1, column 1, paragraph 1).
Therefore, soluble HC-HA/PTX3 compounds cause different phenotypic changes when cultured with TGF-β1 compared to without, including reduced nestin expression (a neural crest cell marker) when TGF-β1 is present in the media.
The art also identifies that TGF-β is widely expressed in the body and has ubiquitous expression in health.
Based on the fact that culturing cells with TGF-β1 and soluble HC-HA/PTX3 compounds has previously been shown to actually reduce the level of nestin expression (a neural crest cell marker) and lead to no significant change in expression of multiple embryonic stem cell markers, its clear that culturing TGF-β1 with soluble HC-HA/PTX3 compounds can prevent cells from achieving a neural crest cell phenotype, as required by the claims. As such, this results in unpredictability about how someone can use this method using soluble HC-HA/PTX3 to reprogram limbal niche cells lacking nuclear Pax6 expression into neural crest progenitor cells when TGF-β is present. As identified by Deng, TGF-β is widely expressed throughout the body. Therefore, it is likely that any soluble HC-HA/PTX3 compounds used in vivo would interact with TGF-β and potentially prevent limbal niche cells lacking nuclear Pax6 expression cells achieving a neural crest cell phenotype, leading to unpredictability about how someone can use this method in vivo.
Therefore, the evidence suggests that there is not a correlation between the in vitro working examples of the Applicant and in vivo methods.
Applicant further argues that present claim 113 and its dependent claims of record do not recite TGF-B1 and the assertion above by the Office demonstrates an impermissible importation of a limitations from the specification into the claims. Applicant respectfully asserts that the claims do not recite TGFβ1. Applicant submits that neither the current claims nor the previous claims recite TGFβ1. Furthermore, the above assertion by the Office describes a different subject matter that though disclosed in the instant application is not presently claimed. For example, the instant claim is not directed to reverting human corneal fibroblast to keratocytes. As such, Applicant requests withdrawal of this impermissible importation of limitation from the specification into the claims (page 7, paragraph 3-page 9, paragraph 1).
Applicant's arguments have been fully considered but they are not persuasive.
As stated in the rejection above, Applicant’s method is broadly interpreted to include any media composition for culturing the limbal niche cells lacking Pax6 expression with soluble HC-HA/PTX3. This encompasses media compositions comprising TGF-β1. Therefore, although the claims do not recite that TGF-β1 is used as part of the claimed method, the claimed method does not preclude the use of TGF-β1. Therefore, the claimed method encompasses culturing TGF-β1 and soluble HC-HA/PTX3 compounds. As such, consideration of TGF-β1 is not considered improper.
As stated in MPEP 2164.08, When analyzing the enabled scope of a claim, the teachings of the specification must not be ignored because claims are to be given their broadest reasonable interpretation that is consistent with the specification. "That claims are interpreted in light of the specification does not mean that everything in the specification must be read into the claims." Raytheon Co. v. Roper Corp., 724 F.2d 951, 957, 220 USPQ 592, 597 (Fed. Cir. 1983), cert. denied, 469 U.S. 835 (1984).
The record must be clear so that the public will have notice as to the patentee’s scope of protection when the patent issues. If a reasonable interpretation of the claim is broader than the description in the specification, it is necessary for the examiner to make sure the full scope of the claim is enabled. Limitations and examples in the specification do not generally limit what is covered by the claims. See also United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1370, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court found that the claims directed to administration of treprostinil to treat all five types of pulmonary hypertension, which were construed to not require safety and efficacy, were adequately enabled by the specification which described administration, concentrations and dosages as well as an open label study despite potential safety concerns associated with one type of pulmonary hypotension. The record included evidence that "a skilled artisan would understand that the claimed administration of treprostinil would vasodilate the pulmonary vasculature, improve hemodynamics, and in this way for a single dose, treat a patient’s elevated pulmonary blood pressure independent of the type (i.e., group) of pulmonary hypertension patient.").
The breadth of the claims was a factor considered in Amgen Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991), cert. denied, 502 U.S. 856 (1991). In Amgen, the patent claims were directed to a purified DNA sequence encoding polypeptide analogs of the protein erythropoietin (EPO). The court stated that:
See also In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (The evidence did not show that a skilled artisan would have been able to carry out the steps required to practice the full scope of claims which encompass "any and all live, non-pathogenic vaccines, and processes for making such vaccines, which elicit immunoprotective activity in any animal toward any RNA virus." (original emphasis)); In re Goodman, 11 F.3d 1046, 1052, 29 USPQ2d 2010, 2015 (Fed. Cir. 1993) (The specification did not enable the broad scope of the claims for producing mammalian peptides in plant cells because the specification contained only an example of producing gamma-interferon in a dicot species, and there was evidence that extensive experimentation would have been required for encoding mammalian peptide into a monocot plant at the time of filing); In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (Where applicant claimed a composition suitable for the treatment of arthritis having a potency of "at least" a particular value, the court held that the claim was not commensurate in scope with the enabling disclosure because the disclosure was not enabling for compositions having a slightly higher potency. Simply because applicant was the first to achieve a composition beyond a particular threshold potency did not justify or support a claim that would dominate every composition that exceeded that threshold value.); In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (Given the relatively incomplete understanding in the biotechnological field involved, and the lack of a reasonable correlation between the narrow disclosure in the specification and the broad scope of protection sought in the claims, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for lack of enablement was appropriate.); Pac. Biosciences of Cal., Inc. v. Oxford Nanopore Techs., Inc., 996 F.3d 1342, 1352, 2021 USPQ2d 519 (Fed. Cir. 2021) (The court found that undue experimentation was required to enable the full scope of the claims where there was ample evidence that relevant artisans would not know how to perform the claimed invention for more than a narrow range of the claimed scope of invention).
Claim Rejections - 35 USC § 112b
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.
Claim 133 is 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. This rejection is substantially similar to a previous rejection of record. Applicant’s traversal is addressed below.
The MPEP 2173.05(g) states that the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. In regards to the limitation “the second phenotype regenerates a cell”, it is unclear by what method regeneration is occurring. For example, is the second phenotype cell produced in vitro and then administered to a patient for regeneration or is the method performed in vivo and the second cell phenotype is produced in a tissue of interest where it divides, regenerating the tissue of interest.
Furthermore, it is unclear whether regeneration is occurring in the neural crest progenitor cell or a separate cell interacting with the neural crest progenitor cell.
Claims 144-145 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. This is a new rejection.
Claim 144 recites that the soluble HC-HA/PTX3 complex is comprised in preparation of a fetal support tissue. It is not clear what is meant by this phrase as it is unclear whether it is supposed to mean that the soluble HC-HA/PTX3 complex is comprised in a preparation with a fetal support tissue or if it’s supposed to mean that the soluble HC-HA/PTX3 complex is derived from a fetal support tissue, based on the preparation of a fetal support tissue language.
Claim 145 is also rejected because of its dependence on claim 144.
Response to Arguments
Applicant's arguments filed March 19, 2026, are acknowledged.
Applicant argues that claim 113 has been amended to clarify the subject matter claimed in claim 133. Applicant respectfully submits that the issue of whether the claim is to an in vitro or in vivo has been addressed in view of the claim amendment and in view of the fact that 3D Matrigel studies demonstrate in vivo effects of contacting soluble HC-HA/PTX3 complex to LNC (induced in vitro senescent) after loss of nuclear Pax6 (page 9, paragraph 5-page 10, paragraph 1).
Applicant's arguments have been fully considered but they are not persuasive.
Applicant’s amendments to claim 113 has not addressed the underlying issue of what method is used for regeneration of the cell and whether the regenerated cell refers to the neural crest progenitor cell or a separate cell interacting with the neural crest progenitor cell. Furthermore, Applicant’s argument regarding the applicability of their in vitro results to in vivo systems does not clarify the regenerated cell of claim 133.
Withdrawn Claim Rejections - 35 USC § 102
The prior rejection of claims 113, 120, 123, 126, and 133-136 under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application No. 20150166624 (Tseng) is withdrawn in light of Applicant’s amendment to require that the first phenotype is a limbal niche cell lacking nuclear Pax6 expression.
New 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 113, 120, 123-126, 133-135, and 137-145 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application No. 20150166624 (Tseng) and further in view of Li et al. (The Journal of Biological Chemistry 290: 10448-20454. 2015). Th is a new rejection made in response to Applicant’s amendments to claim 113. Applicant’s traversal has been considered but is moot in response to the new rejection.
Regarding claims 113 and 138, Tseng teaches that Limbal niche cells, p3 [passage 3] were seeded on plastic dishes with immobilized HA, soluble HC-HA (PBS) (2x or 4x) (paragraph 0205 shows that HC-HA refers to HC-HA/PTX3 complexes) for 48 hr without TGFβ1 (paragraph 0735).
Tseng does not teach wherein the P3 limbal niche cell lacks Pax6 expression.
However, Li teaches that defects in Pax6 cause aniridia and LSC deficiency in humans and the Sey (Small eye) phenotype in mice epithelium. PAX6 is a key gene required for fate determination and maintenance of the corneal epithelium. It is expressed in the ectoderm, which gives rise to epithelial cells of the cornea. Heterozygous null mutations of Pax6 in Sey (Small eye) mice result in corneas with decreased expression of K12 and conjunctival invasion. Dkk2 is another gene that plays an important role in the development of the ocular surface epithelium. Earlier studies showed that when PAX6 expression is absent, Dkk2-null eyes demonstrate a cornea-to-skin fate change. Loss of PAX6 in LSCs leads to skin-like differentiation. Regarding the clinical relevance of PAX6 expression in LSCs, PAX6 expression was completely absent in an area of corneal dermoids which exhibited skin epidermis pathology with vascularization and disorganized cells in the stroma. Furthermore, there was localized expression of p63 and K5 in the basal layer and skin-specific keratins K1 and K10 in the suprabasal layer. These results suggest a conversion of corneal epithelial cells to skin-like epithelial cells in patient tissues during development and strongly support the essential role of PAX6 in cell fate determination. Furthermore, PAX6-deficient LSCs in culture exhibit a skin-like epithelium cell fate as indicated by a switch in keratin expression upon differentiation, specifically replacement of cornea-specific K3/K12 by skin-specific K1/K10 (abstract, page 20448, column 2, paragraph 3-page 20449, column 1, paragraph 1, page 20451, column 1, paragraphs 2-3, and page 20452, column 2, paragraph 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the P3 limbal niche cell with a limbal niche cell lacking Pax6 expression to arrive at the instantly claimed invention. One of ordinary skill in the art would have a reason to substitute with a reasonable expectation of success because Li teaches that limbal niche cells lacking Pax6 expression are associated with diseases in humans, such as aniridia and corneal dermoids. As identified by Li, loss of PAX6 in LSCs leads to skin-like differentiation. PAX6 expression was completely absent in an area of corneal dermoids which exhibited skin epidermis pathology with vascularization and disorganized cells in the stroma. Furthermore, there was localized expression of p63 and K5 in the basal layer and skin-specific keratins K1 and K10 in the suprabasal layer. These results suggest a conversion of corneal epithelial cells to skin-like epithelial cells in patient tissues during development and strongly support the essential role of PAX6 in cell fate determination. Furthermore, PAX6-deficient LSCs in culture exhibit a skin-like epithelium cell fate as indicated by a switch in keratin expression upon differentiation, specifically replacement of cornea-specific K3/K12 by skin-specific K1/K10. Based on the results of Li, it was understood that loss of Pax6 expression in limbal niche cells is associated with disease and that these phenotypic changes can be recapitulated in vitro. Furthermore, Li identifies Stevens-Johnson syndrome as being associated with Pax6 down-regulation and Tseng identifies Stevens Johnson Syndrome and limbal stem cell deficiency as being successfully treated by amniotic membranes which include native HC-HA/PTX3 complexes (paragraphs 0195-0196). Therefore, it would have been obvious to substitute the P3 limbal niche cells of Tseng with limbal niche cells lacking Pax6 expression to generate an in vitro disease model and to test whether the soluble HC-HA/PTX3 of Tseng acts as a useful therapeutic to treat these disorders. Because the prior art teaches all of the elements of the claimed invention, there is a reasonable expectation of success.
Although the combined teachings of Tseng and Li do not positively identify that the limbal niche cells lacking Pax6 expression were reprogrammed to a second cell phenotype, the combined teachings of Tseng and Li positively recite all of the active method steps of claim 113 and would lead to a reprogramming of the cells as seen in Example 3 of the instant specification. Example 3 teaches that soluble HC-HA/PTX3 added directly to P10 [passage 10] limbal niche cells that lacked nuclear Pax6 expression seeded on coated MG showed that cell aggregation was also promoted by soluble HC-HA/PTX3 as early as 60 min. Quantitative RT-PCR revealed significant upregulation of p75NTR and Musashi-1 transcripts by soluble HC-HA/PTX3 at 24 and 48 h. Immunofluorescence staining also confirmed nuclear staining of Pax6 and Sox2 and cytoplasmic staining of p75NTR achieved by soluble HC-HA/PTX3 Such a staining pattern resembled what was noted on immobilized HC-HA/PTX3 (paragraphs 0339-0340). These are embryonic stem cell and neural crest progenitor cell markers, as taught by the specification (expression of embryonic stem cell (ESC) and neural crest (NC) progenitor markers such as p75NTR, Musashi-1, Sox2, Nestin, Msxl, and FoxD3 (paragraph 0338)). As the limbal niche cells would have increased expression of these markers, the cells would represent a neural crest progenitor cell.
As passage 10 limbal niche cells lacking nuclear Pax6 expression exhibited expression of neural crest markers, including Pax6, it is understood that the limbal niche cells lacking Pax6 expression of the combined teachings of Tseng and Li would also respond in a similar manner and express neural crest progenitor markers and Pax6.
Regarding the therapeutically effective amount, this is interpreted to encompass any amount of HC-HA/PTX3 sufficient to cause reprogramming. It would have been inherent within the method that a sufficient (i.e. therapeutically effective amount) would be used to elicit the phenotypic change.
Regarding claims 120 and 137, as stated supra, although the combined teachings of Tseng and Li do not positively identify that the limbal niche cells lacking Pax6 expression were reprogrammed to a second cell phenotype, the combined teachings of Tseng and Li positively recite all of the active method steps of claim 113 and would lead to a reprogramming of the cells as seen in Example 3 of the instant specification. Example 3 teaches that soluble HC-HA/PTX3 added directly to P10 [passage 10] limbal niche cells that lacked nuclear Pax6 expression seeded on coated MG showed significant upregulation of p75NTR and Musashi-1 transcripts by soluble HC-HA/PTX3 at 24 and 48 h. Immunofluorescence staining also confirmed nuclear staining of Pax6 and Sox2 and cytoplasmic staining of p75NTR achieved by soluble HC-HA/PTX3 (paragraphs 0339-0340).
As passage 10 limbal niche cells lacking nuclear Pax6 expression exhibited expression of neural crest markers, including Pax6, it is understood that the limbal niche cells lacking Pax6 expression of the combined teachings of Tseng and Li would also respond in a similar manner and express neural crest progenitor markers and Pax6.
Regarding claims 123 and 135, although Tseng does not specifically identify their limbal cells as being from humans, Tseng identifies that the corneal cells are human and that other cells used in their experiments were human cells, as well (paragraph 0886). As such, the limbal niche cells would be understood to be human cells. As the limbal niche cells are human so would the neural crest cells derived from the human limbal niche cells. Furthermore, Li also human limbal niche cells (Figures 4-5).
Regarding claims 124-125, the claims are interpreted to require contacting for at least about 60 minutes (claim 124) and at least about 24 hours (claims 125). However, these claims do not recite that the contacting stops after about 60 minutes or about 24 hours, respectively. Therefore, these claims are only considered to identify a minimum amount of time of contacting but that the contacting can continue after the identified time frame and still fall within the claim limitations.
As such, the 48 hours of contacting of Tseng is considered to fall within the limitations of claims 124 and 125 as 48 hours of contacting would encompass about 60 minutes of contacting and about 24 hours of contacting.
Regarding claims 126 and 134, Tseng teaches that native and reconstituted HC-HA/PTX3 can be used in their method (paragraphs 0005 and 0495).
Regarding claims 133, as the neural crest cells derived from the limbal niche cells are considered multipotent stem cells, they are considered to regenerate a cell when they divide or differentiate as they are self-renewing and can differentiate into different cell types.
Regarding claim 139, Tseng already identifies that they used passage 3 (P3) limbal niche cells. As these cells have undergone three passages, they are considered to be aged cells compared to P0 cells. As Tseng already identifies the possibility of using P3 limbal niche cells for contacting with soluble HC-HA/PTX3, it would have been obvious that P3 cells could also be used with limbal niche cells that lack Pax6 expression, as identified by Li.
Regarding claims 140 and 142-143, Tseng teaches that their cells can be used to treat corneal damage (paragraph 0052). As part of this method, the neural crest progenitor cells would differentiate into new cell types, such as keratocytes, when administered to the damaged eye.
Regarding claim 141, the term mesenchymal cell is broadly interpreted to include any cell that can be differentiated from a mesenchymal stem cell as all the differentiated cell types would derive from a mesenchymal stem cell and would be considered a mesenchymal cell type. Tseng teaches that their cells can be used to treat corneal damage (paragraph 0052). As part of this method, the neural crest progenitor cells would differentiate into new cell types, such as keratocytes, when administered to the damaged eye.
Regarding claims 144-145, as per the 112b above, claim 144 is interpreted to mean that the soluble HC=HA/PTX3 complex is derived from fetal support tissues. Tseng teaches that HC-HA/PTX3 complexes can be identified and isolated from fetal tissue, such as amniotic membranes (paragraph 0005).
Conclusion
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/KEENAN A BATES/Examiner, Art Unit 1631
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