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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/22/2025 has been entered. It is noted that a different Examiner, Emmalee Williams, is examining the case.
Status of the Claims
Claims 1-31 are pending (claim set as filed on 9/22/2025). Claims 1-10 and 15-31 are withdrawn. Claims 11-14 are currently under examination. No claims have been amended.
Election/Restrictions
Applicant’s election of Group IV, claims 11-14, in the reply filed on 2/27/2024 stands.
Priority
Applicant’s claim to an earlier priority date of 9/25/2013 from provisional application no. 61/882,221 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 6/9/2021, 2/7/2024, and 5/5/2025 are considered by the examiner. The submissions are in compliance with the provisions of 37 CFR 1.97.
Specification
The use of the terms MATRIGEL®, SYNTHEMAX®, MSTESR®, E8™ which are trade names or marks used in commerce, have been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 rejection below is identical to the rejection in the Final Rejection mailed 1/3/2025.
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Chambers (Chambers et al., “Highly efficient neural conversion of human ES and iPS cells by dual inhibition of SMAD signaling”, 2009 Mar 1, Nature Biotechnology, 27(3), pgs. 275-280), in view of Meyer (International Publication No. WO 2012/135621 A1 – publication date 10/4/2012), in view of Kim (Kim et al., “Modulation of b-catenin function maintains mouse epiblast stem cell and human embryonic stem cell self-renewal”, 2013 Aug 29, Nature Communications, 4(2403), pgs. 1-11), and in further view of Liu (Liu et al., “Assigning the Positional Identity of Spinal Motor Neurons: Rostrocaudal Patterning of Hox-c Expression by FGFs, Gdf11, and Retinoids”, 2001 Dec 20, Neuron, 32, pgs. 997-1012).
Regarding claim 11, Chambers teaches methods for neural induction protocols for both
human embryonic stem (hES) and human induced pluripotent stem (hiPS), and Chambers
teaches their method formed cells in an epiblast-like stage wherein said cells were Pax6
negative (see abstract). Regarding claim 1, while Chambers is silent as to Sox2 expression in
the hES cells following the induction, Chambers teaches hiPS are engineered to express Sox2
and therefore are Sox2 positive (see col. 1 on page 279).
Regarding claim 11 step (i), Chambers teaches culturing the hES and hiPS cells for a
period that includes 1 to 2 days in a first culture medium that is capable of promoting and
supporting differentiation of human pluripotent stem cells towards a neural lineage (see page
279); reads on "neural differentiation base medium" consistent with the definition in paragraph
70 of the specification.
Regarding claim 11 step (ii), Chambers teaches collecting the cells, and further culturing
the cells in the medium that also includes FGF2 for 3 days, or until they were nearly confluent
(see "Neural induction" on page 279). As stated above, while Chambers is silent as to the Sox2
expression in the hES, Chambers teaches hiPS are engineered to express Sox2. Additionally,
while Chambers only analyzes the day-by-day data using the hES, Chambers reports replicating
the protocol in hiPS that are positive for Sox2 expression (see col. 1 on page 279). Chambers
teaches the method results in an intermediate cell epiblast-like type at day 5 of differentiation
that was negative for PAX6 (see col. 1 on page 276). Chambers teaches they included
SB431542, and that this inhibitor mediated suppression of Brachyury (see col. 1 on page 276);
reads on Brachyury negative. Chambers teaches the cells expressed "Otx2 before
neuralization", suggests the presence of epiblast-stage cells in the culture (see col. 1 on page
276). Therefore Chamber's cells produced in this step reasonably appear to be Sox2+, Otx2+, Brachyury-, and Pax 6-. It is also noted that the claim does not require that 100% of the cells
have the listed expression pattern.
Regarding claim 11 step (iii), and claims 13-14, Chambers teaches that upon day 5 of
differentiation, the medium was changed, while maintaining FGF2, and the addition of the BMP
inhibitor Noggin (see "Neural induction" on page 279). Chambers teaches neuralization occurs
by day 7, and Chambers continues the culture conditions for 11 days (see Figure 1 including
legend). Chambers further teaches that this neural differentiation protocol provides access to
early intermediate progenitors capable of giving rise to known populations of rosette neural stem
(R-NS) cells and neural crest stem (NCS) (see col. 1 on page 279).
Chambers teaches their method used the combination of Noggin and SB431542-treated
cultures to drive the hES and hiPS cells toward neuroectodermal lineages, and that the
SB431542-mediated suppression of mesodermal lineages, the while Noggin-mediated
suppression of markers of endodermal lineage (col. 1 on page 276).
While Chambers teaches all of the limitations of steps (i) and (ii), Chambers does not
teach that a third culture step includes modulation of the beta-catenin pathway by treatment with
an inhibitor of GSK3 (claims 11-12) or the addition of GDF11 (claim 13). Chambers does not
teach that the cells obtained after the third culture step are caudal lateral epiblasts that are
Sox2+, Brachyury+, Pax6- and Otx2- (claim 11). Chambers does not teach all the components
that are present in the base cell culture medium (claim 11).
Regarding claim 11, Meyer teaches methods and composition for the differentiation of
pluripotent stem cells to neural stem cells in a culture medium, and Meyer teaches suitable
culture medium comprises water, salts, amino acids, vitamins, a carbon source, a buffering
agent, selenium, and insulin (see abstract, paragraphs 3-5 and 83-88); reads on "neural
differentiation base medium" consistent with the definition in paragraph 70 of the specification.
Regarding claim 11, Meyer teaches Otx2 is a marker for dopaminergic neurons (see paragraph
154).
Regarding claims 11-12, Kim teaches that modulation of the beta-catenin pathway by
treatment with an inhibitor of GSK3 allowed long-term maintenance of undifferentiated epiblast
stem cells (EpiSCs) (see paragraph spanning col. 1 & 2 on page 2). Kim teaches that EpiSCs
require the cytokines fibroblast growth factor 2 (FGF2) for self-renewal (see top of col. 1 on
page 2).
Regarding claims 11 and 13, Liu teaches their studies have revealed a role for Gdf11 in
patterning the neural tube, independent of its actions on mesodermal tissues, and raise the
possibility that the actions of Gdf11 on caudal paraxial mesoderm may also reflect the
modulation of FGF signaling, and that rostrocaudal patterning of Hox-c expression is regulated
by FGFs and Gdf11 (see abstract and col. 2 on page 1009). Regarding claims 11-13, Liu
teaches Gdf11 enhances the ability of FGFs to induce a caudal Hox-c profile, thus promoting
the differentiation of MNs with a more caudal positional identity, and that cells can be treated
with exogenous Gdf11 (see col. 2 on page 1004).
Regarding claim 11, Meyer teaches methods and composition for the differentiation of
pluripotent stem cells to neural stem cells in a culture medium, and Meyer teaches suitable
culture medium comprises water, salts, amino acids, vitamins, a carbon source, a buffering
agent, selenium, and insulin (see abstract, paragraphs 3-5 and 83-88).
It would have been obvious to combine Chambers and Meyer's to use Meyer's neural
differentiation base medium in place of neural differentiation base medium. A person of ordinary
skill in the art would have had a reasonable expectation of success in using Meyer's neural
differentiation base medium in Chambers' method because Meyer specifically teaches that the
medium is useful for differentiating pluripotent stem cells into neuronal lineages. The skilled
artisan would have been motivated to use Meyer's neural differentiation base medium in
Chambers' method because Meyer defines what components are useful in a base medium
while Chambers is silent as to all the components in the base medium.
It would have been obvious to combine Chambers to with Kim to include Kim's inhibitor
of GSK3 in Chambers' third culture stage. A person of ordinary skill in the art would have had a
reasonable expectation of success in including Kim's inhibitor of GSK3 in Chambers' third
culture stage because Kim teaches including an inhibitor of GSK3 allowed long-term
maintenance of undifferentiated epiblast stem cells. The skilled artisan would have been
motivated to include Kim's inhibitor of GSK3 in Chambers' third culture stage because this
would allow Chambers to stop the differentiation of the cells after they reach the epiblast stage
(stage 2 of Chambers culture) and continue to propagate undifferentiated epiblasts and expand
the cells at this early stage of differentiation.
It would have been obvious to combine Chambers and Kim with Liu to use a third culture
period is at least six days long, and wherein, after at least four days of the third culture period, the culture medium further comprises Liu's GDF11 with Chambers' FGF2 and inhibitor of BMP. A person of ordinary skill in the art would have had a reasonable expectation of success in adding Liu's GDF11 because 11-13, Liu teaches GDF11 enhances the ability of FGFs to induce a caudal Hox-c profile, thus promoting the differentiation of MNs with a more caudal positional identity, and that cells can be treated with exogenous GDF11. The skilled artisan would have been motivated to adding Liu's GDF11 in Chambers third culture period because Kim teaches that while the inclusion of the GSK inhibitor can maintain cells in an epiblast stage, Liu teaches that GDF can both enhance the effects of Chambers FGF and also control the fate of the cells by driving them towards a specific caudal pathway. It would have been obvious to add the GDF11 after at least four days because Chambers already teaches the culture period and Kim teaches including factors to retain the cells in an undifferentiated stage thereby allowing the time of the addition of factors to be adjusted.
It would have been obvious to combine Chambers Meyer, Kim to Liu to adjust the culture
conditions to obtain cells that are a caudal lateral epiblast type and that are Sox2+, Brachyury+,
Pax6- and Otx2-. A person of ordinary skill in the art would have had a reasonable expectation
of success in obtaining such cells because the references identify specific factors that can be
used to drive cells down different developmental pathways, promote and maintain cells in an
epiblast state, and control the expression of these factors that indicate the developmental
differentiation of the cells. Specifically, Chambers teaches SB431542 mediates suppression of
mesodermal lineages and the mesodermal lineage marker Brachyury, the while Noggin
mediates suppression of markers of endodermal lineage, thereby driving cells to an ectodermal
lineage. Liu teaches GDF11 enhances the ability of FGFs to induce a caudal Hox-c profile, thus
promoting the differentiation of MNs with a more caudal positional identity, and Meyer teaches
Otx2 is a marker for dopaminergic neurons therefore providing motivation to select Otx2
negative cells. Additionally, Chambers further teaches that this neural differentiation protocol
provides access to early intermediate progenitors, including Chambers epiblast-like cells,
capable of giving rise to known populations of rosette neural stem (R-NS) cells and neural crest
stem (NCS). The skilled artisan would have been motivated to adjust the culture conditions to
obtain a desired cell type because the roles of these factors are known, and therefore there is
motivation to utilize these known factors to in their known roles to drive cell differentiation.
Additionally, as stated above, there is specific motivation to adjust Chambers culture to
specifically include a GSK inhibitor and GDF11 in Chambers culture stage. As there is both
teaching and motivation to culture cells according to the claimed culture steps, it appears that
the resulting cell type of these obvious motivations would be the same as the cell type obtained
by the claimed method.
Therefore, the invention as a whole would have been prima facie obvious to a person of
ordinary skill at the time the invention was made.
Response to Arguments
Applicant's arguments filed 9/22/2025 have been fully considered in the view of the provided Tomishima reference, but they remain unpersuasive.
The applicant cited the reference Chambers to argue that the media Chambers uses for differentiation are 1) "knockout serum replacement media" supplemented with a TGF-b inhibitor and Noggin and 2) "knockout serum replacement media" supplemented with Noggin (but no TGF-b inhibitor) and increasing amounts of "N2 media.", but does not mention FGF in any form in the differentiation media. However, Chambers does teach FGF2 in the differentiation media with ROCK-inhibitor and wherein the ROCK-inhibitor was removed from the media but makes no mention of FGF2 being removed from the differentiation media (see pg. 279, ¶ 7 – “Neural Induction”). Therefore, under broadest reasonable interpretation, as the FGF2 was taught in the media and Chambers made no mention of the removal of FGF2 it is apparent that FGF2 is present in the differentiation media. As such, Chambers discloses the use of FGF to differentiate cells and so teaches "culturing the second cell population for a third culture period of about one day to about seven days in neural differentiation base medium supplemented with an FGF and an activator of β-cantenin pathway signaling to obtain caudal lateral epiblasts that are Sox2+, Brachyury+, Pax6- and Otx2-" of claim 11 where Meyer, Kim, and Liu can remedy the deficiency of Chambers. This argument remains unpersuasive.
The applicant notes that Chambers does not describe “knockout serum replacement media” (or SRM media) nor “N2 media”, but are described in reference Tomishima in an IDS filed on 5/5/2025. Further the applicant argues that these media do not contain FGF (see Tomishima pg. 2 and 4) and therefore Chambers could not teach FGF in the previously cited neural induction section (see Chambers pg. 279, ¶ 7 – “Neural Induction”). However, Chambers does teach both “knockout serum replacement media” and “N2 media” (see Chambers pg. 279, ¶ 7 – “Neural Induction”). Further, regardless of Tomishima teaching both of these media do not contain FGF it would not mean that Chambers does not teach FGF as Chambers does teach FGF in the differentiation media (see Chambers pg. 279, ¶ 7 – “Neural Induction”) and this argument remains unpersuasive.
Conclusion
No claims are allowed.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Emmalee R. Williams whose telephone number is (571)272-5472. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
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/E.R.W./Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653
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