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 .
Claim Status
As of the Non-Final Office Action mailed 7/28/2025, claims 1-2, 9-13, and 16-19 were pending and claims 16-19 were withdrawn for being drawn to nonelected invention.
In Applicant's Response filed on 11/26/2025, claims 1-2 and 9-11 were amended and claims 12-13 were canceled.
As such, claims 1-2, 9-11, and 16-19 are pending and claims 1-2 and 9-11 have been examined herein.
Withdrawn Objections/Rejections
The rejection of record of claims 1-2, 9, and 11-13 under 35 USC § 103 as being unpatentable over Kim et al (Skelet Muscle, 15 Sept 2016; 6:32; Ref. 2 of Non-Patent Literature in IDS filed 6/24/2021) in view of Schmidt et al (US 2018/0263995 A1, 23 May 2018; Published 20 Sept 2018) as evidenced by Xiao et al (Physiol Rep. 2016 Sep;4(17):e12915) and ApexBio (“3-deazaneplanocin A (DZNep) hydrochloride” Retrieved from the Internet 6/17/2025 from https://www.apexbt.com/3-deazaneplanocin-a-dznep-hydrochloride.html) have been withdrawn in view of Applicant’s amendments to claim 1. Rejection of claim 12-13 are moot in view of their cancelation.
The rejection of record of claim 10 under 35 USC § 103 as being unpatentable over Kim et al (Skelet Muscle, 15 Sept 2016; 6:32; Ref. 2 of Non-Patent Literature in IDS filed 6/24/2021) in view of Schmidt et al (US 2018/0263995 A1, 23 May 2018; Published 20 Sept 2018) as applied to claims 1-2, 9, and 11-13 above, and further in view of Kingsman et al (US 6,235,522 B1, 17 Oct 1997; Published 22 May 2001) have been withdrawn in view of Applicant’s amendments to claim 1.
New Grounds of Rejections Necessitated by Amendments
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.
Claim(s) 1-2, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Falzarano et al (Hum Gene Ther. 2016 Oct;27(10):772-783; of record) in view of Schmidt et al (US 2018/0263995 A1, 23 May 2018; Published 20 Sept 2018; previously cited) as evidenced by Xiao et al (Physiol Rep. 2016 Sep;4(17):e12915; previously cited) and ApexBio (“3-deazaneplanocin A (DZNep) hydrochloride” Retrieved from the Internet 6/17/2025 from https://www.apexbt.com/3-deazaneplanocin-a-dznep-hydrochloride.html; previously cited).
Falzarano teaches autologous myogenic cells is of vital importance for drug screening and functional genetic studies in Duchenne muscular dystrophy (DMD), a rare disease caused by a variety of dystrophin gene mutations (abstract). Stem cells from the urine of two healthy donors and from one patient with DMD were isolated, and performed surface marker characterization, myogenic differentiation (MyoD), and then transfection with antisense oligoribonucleotides to test for exon skipping and protein restoration (same para). Myogenesis of urine cells from both healthy donors and the patient with DMD was induced by infection with an adenovirus serotype 5 (Ad5)-derived, EA1-deleted adenoviral vector carrying the MyoD gene (“Myogenic transformation of USCs” para 1). USCs were isolated from both healthy donors (two) and a patient with DMD known to have a deletion of dystrophin exon 45 (Morphology and CD marker evaluation, para 1). Two types of USC morphology were apparent: one type (named type I) had a regular and rounded shape, and the second type (named type II) consisted of spindle-shaped cells (Fig. 1a). No differences between the cells of control subjects and the subject with DMD were found in terms of morphology, time of expansion, or in vitro survival (same para). Please note that while Falzarano identifies the multiple morphologies of the cells isolated from the urine samples, it is silent to the selection or isolation of subpopulations having only one morphology. Thus, absent evidence to the contrary, Falzarano utilizes a mixed morphology population for transformation (see also Fig. 1(a) and (b) of Falzarano). USCs from both healthy donors and the patient with DMD were transformed into myogenic cells by infection with an Ad5-derived vector carrying the MyoD gene, and the resulting USCs-MyoD were allowed to differentiate into myotubes (p. 778 col 1). This reads on “A method for preparing myotubes from a population of urine-derived cells with a plurality of morphologies comprising: culturing the population of urine-derived cells, introducing a MYOD1 gene into the population of urine-derived cells” as in instant claim 1 in-part, “the population of urine-derived cells comprise at least one selected from the group consisting of myotubes” as in instant claim 2, and “wherein the population of urine-derived cells are derived from a patient with a muscular disease or a patient with muscular dystrophy” as in instant claim 11.
Falzarano differs from the instantly claimed invention in that it does not teach exposing the urine-derived cells to at least one of epigenetic regulatory compound or that the epigenetic regulatory compound comprises 3- deazaneplanocin A hydrochloride (DZNep) (related to instant claim 1 in-part).
Schmidt teaches a method for producing mature myotubes and identifying compounds that induce the formation of mature myotubes or myotube-like cells from myoblasts (abstract). One or more compounds are specifically selected to encourage mature myotube production such as PARP inhibitors (para 0016) and are relevant to the maintenance of myotubes (para 0305) (“exposing . . . cells to at least one of epigenetic regulatory compound” as instant claims 1 in-part and 12 in-part;). The reference teaches chemicals which were mixed with Myotube medium to screen and perform myotube formation assay (Example 6, para 0306). Chemicals tested include 3-deazaneplanocin A (see Table 4).
Evidentiary reference Xiao states that 3-deazaneplanocin A (DZNep) is an inhibitor of EZH2 (abstract). To test effects of 3-deazaneplanocin A inhibition of EZH2 on the differentiation of fibroblasts to myofibroblasts, fibroblasts were cultured with 3-deazaneplanocin A hydrochloride (DZNep) (“Materials and Methods” para 2).
Furthermore, evidentiary reference ApexBio shows that 3-Deazaneplanocin A (DZNep) hydrochloride, which is a selective inhibitor of EZH2, is synonymous with 3-Deazaneplanocin (shown below).
PNG
media_image1.png
434
662
media_image1.png
Greyscale
PNG
media_image2.png
300
999
media_image2.png
Greyscale
Given the teachings of these evidentiary references, one of ordinary skill would recognize 3-deazaneplanocin A and 3-deazaneplanocin A hydrochloride to be synonymous with each other such that “3-deazaneplaocin A” as recited in Schmidt et al would read on “3-deazaneplanocin A (DZNep) hydrochloride” as in instantly claimed in claims 1 in-part and 12 in-part.
Therefore, it would have been obvious prior to the effective filing date of the instantly claimed invention to create myotubes from urine-derived cells using MyoD lentiviral vector transduction as taught by Falzarano, where the cells are also cultured in epigenetic regulatory compounds as taught by Schmidt, to arrive at the instantly claimed invention. Schmidt shows that 3-deazaneplanocin A can be used in the formation of mature myotubes, one of ordinary skill would have been motivated to use this inhibitor in the method as taught by Falzarano with a reasonable expectation of advantageously encouraging mature myotube production as taught by the prior art.
Finally, one of ordinary skill would have been motivated to combine two methods, each of which is taught by the prior art to be useful for the same purpose, to form a third method to be used for the very same purpose (see MPEP 2144.06(I)).
Accordingly, the claimed invention was prima facie obvious to one of ordinary skill at the time of filing, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant’s arguments with respect to the Kim reference have been considered but are moot because the new ground of rejection does not rely on that reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument, particularly in view of newly cited reference Falzarano.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Falzarano et al in view of Schmidt et al as applied to claims 1-2, 9, and 11 above, and further in view of Tanaka et al (PLoS One. 2013 Apr 23;8(4):e61540. doi: 10.1371/journal.pone.0061540).
The difference between the combined teachings and the invention as instantly claimed is that they do not teach that MTOD1 gene is under the control of an inducible promoter.
Tanaka teaches the rapid, efficient, and reproducible differentiation of hiPSCs into mature myocytes. They demonstrated that inducible expression of myogenic differentiation1 (MYOD1) in immature hiPSCs for at least 5 days drives cells along the myogenic lineage, with efficiencies reaching 70–90% (abstract). Myogenic differentiation driven by MYOD1 occurred even in immature, almost completely undifferentiated hiPSCs, without mesodermal transition. Myocytes induced in this manner reach maturity within 2 weeks of differentiation as assessed by marker gene expression and functional properties, including in vitro and in vivo cell fusion and twitching in response to electrical stimulation. This vector constitutively expresses the neomycin (G418) resistance gene along with the rtTA transactivator element, which mediates doxycycline (Dox)-dependent activation of cDNA cassettes controlled by tetO promoter (PB-TAC-ERN; Fig. 1a ). Activation of gene expression in response to Dox may be indirectly monitored by co-incident mCherry activation. Using Gateway cloning, we produced a derivative vector containing the human MYOD1 gene (Tet-MyoD1). The Tet-MyoD1 vector was transfected together with PB transposase (PBase) into 3 independent hiPSC lines, and selected in G418 supplemented media for 5 days to generate pooled MyoD-hiPSCs containing genomic transposon integrations ( Fig. 1b ). In these pooled MyoD-hiPSCs, Dox administration for 24 h robustly induced MYOD1 expression as detected by mCherry fluorescence and MYOD1 protein ( Fig. 1c ). This shows that an inducible promoter can successfully be used to transduce cells with MYOD1 and form myogenic cells.
Therefore, it would have been obvious prior to the effective filing date of the instantly claimed invention to create myotubes from urine-derived cells using MyoD lentiviral vector transduction and an epigenetic regulatory compound as taught by Falzarano and Schmidt in combination, where MYOD1 expression is driven by an inducible promoter as taught by Tanaka, to arrive at the instantly claimed invention. As Tanaka shows that MYOD can be successfully transduced into cells to form myogenic cells by inducible promoter, one of ordinary skill would have been motivated to modify the vector of Falzarano and Schmidt in combination to include an inducible promoter with a reasonable expectation of advantageously having efficient transduction up to 90% as taught by the prior art.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Falzarano et al in view of Schmidt et al and Tanaka et al as applied to claim 9 above, and further in view of Kingsman et al (US 6,235,522 B1, 17 Oct 1997; Published 22 May 2001; previously cited)
The teachings of Falzarano, Schmidt, and Tanaka in combination were recited in the above 35 U.S.C. 103 rejection as applied to claim 9 of which claim 10 depend. The teachings will not be repeated here.
The difference between the combined teachings and the invention as instantly claimed is that they do not teach that the expression vector further comprises a selection marker gene.
Kingsman teaches retroviral vector particles capable of infecting and transducing mammalian target cells (abstract). Genes incorporated into cells via retroviral vectors can include genes encoding a selectable marker which may be useful for selecting cells that have been successfully transfected and have the provirus integrated into their own genome (col 4, lines 18-29).
Therefore, it would have been obvious prior to the effective filing date of the instantly claimed invention to create myotubes from urine-derived cells using MyoD lentiviral vector transduction and an epigenetic regulatory compound as taught by Falzarano, Schmidt, and Tanaka in combination, where the expression vector contains a selectable marker gene as taught by Kingsman, to arrive at the instantly claimed invention. Kingsman shows that selectable marker genes can be successfully included in retroviral vector constructs. One of ordinary skill would have been motivated to modify the vector of Falzarano, Schmidt, and Tanaka in combination to include a selectable marker gene as taught by Kingsman with a reasonable expectation of advantageously using the selectable marker to select cells that have be successfully transfected and have the vector integrated in the genome as taught by the prior art.
.
Conclusion
No claim is allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GILLIAN C REGLAS whose telephone number is (571)270-0320. The examiner can normally be reached T-F 7-3.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Paras Jr can be reached at (571) 272-4517. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/G.R./Examiner, Art Unit 1632
/KARA D JOHNSON/Primary Examiner, Art Unit 1632