DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is non-final.
Status of the Claims
Claims 5, 8-14, and 22-40 are currently pending.
Claims 5 and 8 are amended.
Claims 9-14, 22-28, and 31-32 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.
New claims 33-40 have been added.
Claims 5, 8, 29-30, and 33-40 have been considered on the merits.
Withdrawn Rejections
The 112(b) rejection made onto claim 8 is withdrawn in light of the amendments made onto the claims on 08/15/2025.
New and Maintained Rejections Necessitated by Amendment
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.
Claim 37 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.
Claim 37 recited the limitation “wherein prior to step (a), myoblasts are differentiated on the nanofiber substrate to form the skeletal myocyte layer thereon”, which is indefinite. The recitation of “step (a)” in claim 37 refers to independent claim 5: “a) isolating skeletal myocytes”. It is unclear if the limitation is to mean that myoblasts are differentiated on a nanofiber substrate to form the skeletal myocyte layer and then the skeletal myocytes are isolated from the substrate and reseeded onto a different scaffold to form myofibers or if the myoblasts are differentiated on the nanofiber substrate and then subsequently cultured on a scaffold to form myofibers without removal from the scaffold/nanofiber substrate. Appropriate clarification is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 36-38 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 36 contains the limitation “wherein the nanofiber substrate comprises a skeletal myocyte layer thereon”. Claim 36 depends from claim 33 which limits “wherein the scaffold comprises a nanofiber substrate”, which depends from the independent claim 5 which recites “b) culturing the skeletal myocytes on a scaffold to form myofibers”. Thus it appears that the limitations of claim 5 and 33 already imply that the nanofiber substrate which is the scaffold of claim 5 would contain a skeletal myocyte layer, and claim 36 is not further limiting. Dependent claim 37 is included in this rejection.
Claim 38 contains the limitation “wherein the spinal motor neurons are co-cultured on the skeletal myocyte layer”. Claim 38 depends from claim 36, which depends from claim 33 which limits “wherein the scaffold comprises a nanofiber substrate”, which depends from the independent claim 5 which recites “d) co-culturing the motor neurons with the myofibers on the scaffold”. Thus it appears that the limitations of claim 5 and 33 already imply that the nanofiber substrate which is the scaffold of claim 5 would contain a co-culture of spinal motor neurons on the skeletal myocyte layer, and claim 38 is not further limiting.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 5, 8, and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Chin et al (WO2011102991A1) in view of Guo et al (Biomaterials, 2011), and Donnelly et al (Drug Discovery Today, “A Novel Bioreactor for Stimulating Skeletal Muscle In Vitro”, 2010).
With regards to claim 5, Chin teaches a method of generating innervated skeletal muscle tissue comprising isolating myocytes, seeding myocytes on a scaffold until an anisotropic tissue forms (i.e. formation of myofibers), isolating neurons, co-culturing the neurons on the myofiber and scaffold construct to form an innervated myofiber complex as required by claim 5 (claims 2 and 15 of Chin, pg. 15, para 1). Chin teaches that the myocytes are mammalian myocytes as required by claim 29 (example 1, para 1-3). Additionally, Chin teaches that “cells from any species can be used so long as they do not cause an adverse immune reaction in the recipient” (pg. 17, para 4) (i.e. human cells) as required by claim 30.
Although Chin does teach the isolation and co-culture of neurons with the myocytes, Chin does not teach that the neurons are specifically spinal motor neurons as required by claim 5.
However, Guo teaches a method of culturing human fetal spinal stem cell derived motor neurons, termed “motoneurons” by Guo, with human skeletal muscle as required by claim 5 (abstract). Guo teaches that the system of culturing both the human spinal motor neurons with human skeletal muscles would “greatly facilitate not only research related to human NMJ-related diseases, but lead the way to a host of functional in vitro systems derived entirely from human stem cells” (pg. 3, para 2).
One of ordinary skill in the art would find it obvious at the effective filling date of the instant invention to combine the method of skeletal muscle and neuron construct formation taught by Chin with the human spinal motor neurons and human skeletal muscle co-culture taught by Guo to arrive at the instant invention. One of ordinary skill in the art would be motivated to make this combination because Guo teaches that the system of culturing both the human spinal motor neurons with human skeletal muscles would “greatly facilitate not only research related to human NMJ-related diseases, but lead the way to a host of functional in vitro systems derived entirely from human stem cells” (pg. 3, para 2). One of ordinary skill in the art would have a reasonable expectation of success when combining Chin with Guo because both teach methods of growing 3D constructs of skeletal muscle and neurons and Guo teaches the benefit of culturing both human skeletal muscle and spinal motor neurons in co-culture.
Chin does not teach that the construct is matured in a bioreactor as required by claim 5, however does teach that the construct is cultured (claim 2 of Chin).
Donnelly teaches about the growth of skeletal muscle tissue in bioreactors. Donnelly teaches a 3D culture of skeletal muscle cells which exhibit enhanced maturation when allowed to culture in a bioreactor which applies physiologically relevant electrical simulation patterns as required by claim 5 (abstract, pg. 715 last para spanning para 2 on pg. 716). Additionally, Donnelly teaches that when stimulated at 0.1 ms, stimulation improved force production and excitability, suggesting enhanced maturation (abstract).
One of ordinary skill in the art would find it obvious at the effective filling date of the instant invention to combine the method of skeletal muscle formation taught by Chin with the skeletal muscle bioreactor taught by Donnelly to arrive at the instant invention. One of ordinary skill in the art would be motivated to make this combination because Donnelly teaches a 3D culture of skeletal muscle cells which exhibit enhanced maturation when allowed to culture in a bioreactor which applies physiologically relevant electrical simulation patterns (abstract, pg. 715 last para spanning para 2 on pg. 716). One of ordinary skill in the art would have a reasonable expectation of success when combining Chin with Donnelly because both teach methods of growing 3D constructs of skeletal muscle and Donnelly teaches that when stimulated at 0.1 ms, stimulation improved force production and excitability, suggesting enhanced maturation (abstract).
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the effective time of filing of the invention, especially in the absence of evidence to the contrary.
Claims 5 and 33-39 are rejected under 35 U.S.C. 103 as being unpatentable over Chin et al (WO2011102991A1) in view of Guo et al (Biomaterials, 2011), and Donnelly et al (Drug Discovery Today, “A Novel Bioreactor for Stimulating Skeletal Muscle In Vitro”, 2010), as applied to claims 5, 8, and 29-30 above, and in further view of Stratton et al (Bioactive Materials, 2016).
With regards to claims 33-39, Chin, Guo, and Donnelly teach the limitations of the independent claim 5.
Chin in view of Guo does teach wherein the spinal motor neurons are co-cultured on the skeletal myocyte layer as required by claim 38 and detailed above. Additionally, Guo teaches wherein prior to step a), myoblasts are differentiated on a DETA substrate to form the skeletal myocyte layer thereon (Guo pg. 7, para 2 and abstract), however does not teach that the substrate is a nanofiber substrate as required by claim 37. Chin does teach wherein the scaffold comprises a skeletal myocyte layer as required by claim 36 (claims 2 and 15 of Chin, pg. 15, para 1), however does not teach that the scaffold is a nanofiber scaffold as required by claim 36. Finally, Chin and Guo do teach wherein the spinal motor neurons are motor neuron aggregates formed by culturing the spinal motor neurons onto the DETA substrate, but do not teach that the substrate is a nanofiber substrate as required by claim 39 (Guo pg. 7, para 2 and abstract).
Chin does not teach wherein the scaffold comprises a nanofiber substrate comprising nanofibers aligned in a first direction as required by claim 33. Chin does not teach wherein the nanofiber substrate is selected from the group listed in claim 34. Chin does not teach wherein the nanofiber substrate is polycaprolactone as required by claim 35.
However, Stratton teaches about polymeric scaffolds, including polycaprolactone (PCL), for tissue engineering. Stratton discloses that nanofibers of variety of materials, such as PCL, can be in an aligned orientation and that aligned nanofibers have the ability to specify the direction of tissue growth as required by claims 33-39 (pg. 99, col. 2, para 3). Stratton teaches that “[n]anofibers, such as those of PCL and collagen, have been shown to be particularly useful for smooth muscle tissue engineering scaffolds, as growth is guided by the nanofiber orientation and the cells are able to maintain a typical phenotype shape” as required by claims 33-39 (pg. 103, col. 2, para 2).
One of ordinary skill in the art would find it obvious at the effective filling date of the instant invention to combine the method of co-culture of skeletal muscle and spinal motor neurons taught by Chin, Guo, and Donnelly with the nanofiber scaffold taught by Stratton to arrive at the instant invention. One of ordinary skill in the art would be motivated to make this combination because Stratton teaches that “[n]anofibers, such as those of PCL and collagen, have been shown to be particularly useful for smooth muscle tissue engineering scaffolds, as growth is guided by the nanofiber orientation and the cells are able to maintain a typical phenotype shape” (pg. 103, col. 2, para 2). One of ordinary skill in the art would have a reasonable expectation of success when combining Chin, Guo, and Donnelly with Stratton because Chin, Guo, and Donnelly teach methods of growing 3D co-cultures of skeletal muscle and motor neurons and Stratton teaches that nanofibers, specifically PCL nanofibers, are particularly of use to muscle tissue engineering.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the effective time of filing of the invention, especially in the absence of evidence to the contrary.
Claims 5 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Chin et al (WO2011102991A1) in view of Guo et al (Biomaterials, 2011), and Donnelly et al (Drug Discovery Today, “A Novel Bioreactor for Stimulating Skeletal Muscle In Vitro”, 2010) and Stratton et al (Bioactive Materials, 2016), as applied to claims 5 and 33-39 above, in further view of Morrow e al (J Mech Behav Biomed Mater., 2010).
With regards to claim 40, the limitations of the independent claim 5 are taught above.
Chin, Guo, Donnelly, and Stratton are silent regarding a tensile force being applied perpendicular to the first direction in which the nanofibers are aligned as required by claim 40.
However, Morrow et al teaches about the tensile material properties of skeletal muscle tissue. Morrow teaches that “From the arrangement of skeletal muscle architecture (i.e., the parallel bundling of serially arranged muscle fibers), it has been hypothesized that skeletal muscle can be considered transversely isotropic (Blemker and Delp, 2005) with the fiber (longitudinal) axis defining the plane of symmetry. A transversely isotropic material may be fully characterized by testing the tissue under longitudinal extension (LE), transverse extension (TE), and longitudinal shear (LS).” (pg. 1, last para). Morrow discloses methods for conducting longitudinal (parallel to nanofiber orientation) and transverse (perpendicular to nanofiber orientation) extension tests of muscle specimens as required by claim 40 (pg. 2 last para spanning pg. 3).
One of ordinary skill in the art would find it obvious at the effective filling date of the instant invention to combine the method of co-culture of skeletal muscle and spinal motor neurons taught by Chin, Guo, Donnelly, and Stratton with the tensile force applied perpendicular to the nanofiber orientation taught by Morrow to arrive at the instant invention. One of ordinary skill in the art would be motivated to make this combination because Measurement of individual muscle performance could allow for the monitoring of disease progression, evaluation of therapeutic intervention efficacy, and improvement in the understanding of how various conditions affect muscle function (abstract). One of ordinary skill in the art would have a reasonable expectation of success when combining Chin, Guo, Donnelly, and Stratton with Morrow because Chin, Guo, Donnelly, and Stratton teach methods of growing 3D co-cultures of skeletal muscle and motor neurons on nanofiber substrates and Morrow teaches methods of testing the tensile strength of muscle samples through multi-directional tests, one of which is the transverse/perpendicular test.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the effective time of filing of the invention, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant’s arguments, see Remarks, filed 08/15/2025, with respect to the rejection(s) of claim(s) 5, 8, and 29-30 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Chin, in view of Guo, and Donnelly. Additionally, new rejections under 35 U.S.C. 103 have been made regarding the newly added dependent claims and those rejections are made in view of Stratton and Morrow.
Conclusion
No claims are allowed.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONSTANTINA E STAVROU whose telephone number is (571)272-9899. The examiner can normally be reached M-F 8:00-5:00.
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CONSTANTINA E. STAVROU
Examiner
Art Unit 1632
/ANOOP K SINGH/Primary Examiner, Art Unit 1632