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
Claims 1, 3, 5, and 7-19 are currently pending in this application. Applicant’s amendment filed 1/7/2025 is acknowledged and entered. All of the amendments and arguments have been thoroughly reviewed and fully considered.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, in the reply filed on June 3, 2024 is acknowledged. Claims 10-19 are withdrawn for being drawn to non-elected subject matter, and claims 1, 3, 5, and 7-9 have been considered on the merits.
Previous Rejections
Status of the rejections: the previous claim rejections under 112(b) and 112(d) are withdrawn in view of applicant’s claim amendments. The previous claim rejections under 112(a) are withdrawn in view of applicant’s claim amendments except as specifically maintained below.
35 USC § 112(a) – Scope of Enablement
Claims 1, 3, 5, and 7-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because while the claims are enabled for controlling adhesion and differentiation of stem cells wherein each integrin ligand peptide comprises the entire amino acid sequence of SEQ ID NO: 1 and the application of the magnetic field has a strength of at least about 10 mT or greater, the specification does not enable any person skilled in the art to which it pertains or with which it is most nearly connected to apply a magnetic field of any strength and be capable of controlling adhesion and differentiation of a stem cell or wherein the peptide(s) comprise any amino acid sequence of SEQ ID NO: 1.
Enablement is considered in view of the Wands factors (MPEP 2164.01 (a)). The court in Wands states that "Enablement is not precluded by the necessity for some experimentation such as routine screening. However, experimentation needed to practice the invention must not be undue or unreasonable experimentation. The key word is 'undue.' Not 'experimentation;" (Wands, 8 USPQ2d 104). Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. "Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighting many factual considerations." (Wands, 8 USPQ2d 1404).
The factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation required is “undue” or unreasonable include, but are not limited to:
(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.
Furthermore, the USPTO does not have laboratory facilities to test if an invention will function as claimed when working examples are not disclosed in the specification. Therefore, enablement issues are raised and discussed based on the state of knowledge pertinent to an art at the time of the invention. And thus, skepticism raised in the enablement rejections are those raised in the art by artisans of expertise.
All of the Wands factors have been considered with regard to the instant claims, with the most relevant factors discussed below.
Nature of the invention:
The claims are directed to a nanocoil-substrate complex which functions to control adhesion and differentiation of stem cells due to an axial length reversibly changing depending on a magnetic field according to Equation 1 |L1-L0| > 10 nm.
Breadth of the claims
The claims are broadly directed to nanocoil-substrate complex nanocoils changing their axial length in response to the application/non-application of any magnetic field but are narrowly directed to changing their axial length by at least 10 nm (|L1-L0| > 10 nm) with axial lengths limited to 100 nm to 20 µm. The claims are also broadly directed to wherein the peptide(s) comprise “an amino acid sequence of SEQ ID NO: 1”, which encompasses GC, GY, GR, GD, SP, CG, YG, RG, DS, PG, etc.
The state of the art:
The prior art teaches substrate bound nanostructures which change shape in the presence of a magnetic field within the range of L0 − L1 > 10 nm as explained below (Wong et al., Nano Lett 17: 1685-95 (2017), Kang1 (Kang et al., ACS Nano 12: 5978-94 (2018), and Kang2 (Kang et al., J Am Chem Soc 140: 5909-13 (2018)). For example, Wong teaches wherein the application of a magnetic field of 86.1 ± 1.01 mT reversibly shortens the axial length of an over 70 nm nanolinker by about 54 nm (from L0 =72 to L1=18 nm) wherein a magnetic iron (Fe) particle is conjugated to the far distal end away from the substrate (Wong at Abstract; pg. 1686, left col., last para. to right col., 1st para.; pg. 1687, left col.; pg. 1691 left col., to pg. 1692, right col., 1st para. Fig. 1, 9). Similarly, Kang teaches a magnetic field of 121 ± 6 mT causes reversible changes in a nanocoil-substrate complex ((RGD−GNP)−MNC) to displace a particle (RGD-GNP) by a distance of over 10 nm away from a 35 nm diameter spherical area (MNC) again wherein the far distal end away from the substrate comprises a magnetic Fe particle (MNC) (Kang1 at Scheme 2, pg. 5980, left col., last para., to pg. 5981, left col.; Fig. 1B; Kang2 at pg. 5911, left col., 2nd para.; Fig. 1c). In all three references, the magnetic field manipulated nanostructure comprises iron oxide nanoparticles and the magnetic field strengths are within 85-127 mT.
As the prior art does not teach reversibly changing nanocoil-substrate complexes in response to a magnetic field according to the formula recited in claim 1 wherein the nanocoils do not comprise iron or wherein the magnetic field is less in strength than about 85 mT, these aspects must be shown to a reasonable extent so that one of the ordinary skills in the art would be able to practice the invention without any undue burden being on such an artisan.
Wong and Kang teach wherein the integrin ligand peptide comprises the amino acid sequence of instant SEQ ID NO: 1 that is R-G-D; however the prior art is silent as to successfully using shorter sequences, such as R-G or G-D, for cell adhesion.
The amount of direction and guidance and working examples provided by Applicant:
The instant application provides a single working example wherein the majority of the nanocoil is a cobalt and iron (CoFe) nanowire and the length behaves according to Equation 1 when no magnetic field is applied or 270 mT magnetic field is applied and only wherein the integrin ligand peptide consists of SEQ ID NO: 1 (Examples 2-3, FIG. 10-16).
The quantity of experimentation needed to make and/or use the invention:
Extensive experimentation would be required to determine how use magnetic field strengths weaker than the earth’s magnetic field to change the axial length change at a scale of at least 10 nm for a minimum nanocoil axial length of 100 nm. The examples provided, while extrapolatable to similar or greater magnetic field strengthens, do not provide sufficient guidance without working examples in the specification regarding a nexus between length changing behavior in any magnetic field. Thus, undue and unreasonable experimentation is required across the entire scope of the claims, which may never be successfully achieved for any magnetic field strength, especially in weaker ranges.
Further, the working examples show a single integrin ligand peptide, while extrapolatable to other peptides comprising instant SEQ ID NO: 1, that does not provide sufficient guidance without working examples in the specification regarding a nexus between cell adhesion and the peptide sequence selected. Thus, undue and unreasonable experimentation is required across the entire scope of the claims, which may never be successfully achieved for any subsequence of instant SEQ ID NO: 1.
In summary, claims 1, 3, 5, and 7-9 are rejected under 35 U.S.C. 112(a) because the specification does not reasonably provide enablement, to a person skilled in the art to which it pertains or with which it is most nearly connected to, to make/use the claimed invention. Given the lack of working examples, the limited guidance provided in the specification, the lack of guidance in the prior art, and the broad scope of the claims with respect to the magnetic field and the genus of integrin ligand peptides; undue and unreasonable experimentation would have been required for one skilled in the art to perform the claimed methods to produce the recited result according to Equation 1, which may never be achieved across the entire scope of the claims.
Response to Arguments
Applicant traverses the previous rejections by arguing claim 1 as amended is fully enabled by the specification in view of the previous Office Action. As detailed above, the claims are not enabled over their entire scope despite the amendments to claim 1 overcoming some of the enablement issues of the previous Office Action.
Claim Rejections - 35 USC § 103 (new)
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Wong (Wong et al., Nano Lett 17: 1685-95 (2017)) in view of Kim (US20180327919A1, published 2018) and Hubbell (US7744912B1, published 2010).
Regarding claim 1, the intended purpose of “controlling adhesion and differentiation of stem cells” in the preamble does not imply any additional structural limitation to the claimed product other than those positively recited (see MPEP 2111.02). In addition, the axial length of the nanocoil in the claimed product is interpreted to have any length between 100 nm to 20 μm regardless of the application/non-application of a magnetic field as the product as positively recited does not require any process step, such as a step of applying a magnetic field to change the length of the nanocoil.
Regarding claim 1, Wong teaches a substrate complex for controlling adhesion of cells comprising a substrate (glass) and a plurality integrin ligand (RGD) peptides chemically coupled to a spiral nanocoil wire(s) (coiled flexible polyethylene glycol (PEG) linker/tether) to the substrate, wherein the structure comprises the metal Fe (pg. 1686, left col., last para. to right col., 1st para.; Fig. 1, 3), and whereby applying a 86 mT magnetic field promotes cell adhesion by allowing physical access of cells to integrin ligand peptides by altering tether mobility and bringing the substrate-coupled flexible PEG-linked RGD in closer proximity to the substrate (Abstract; pg. 1686, left col., last para. to right col., 1st para.; Fig. 1, 9). Wong teaches longer or high molecular weight PEG molecules/linkers form a coiled shape that can be uncoiled like a spring by applying a force and that cells require more effort and force for adhesion to substrate coupled PEG-linked RGD when the length is greater than about 40 nm (“critical tether length”) while lengths less than 40 nm promote more efficient adhesion (pg. 1690, right col., 2nd para.). Wong teaches the features of the substrate complex each has a length of at least 17.8 to 72.2 nm, depending on the application of a magnetic field as the length reversibly changes by about 54 nm (72 to 18 nm) when a magnetic field force is applied (pg. 1687, left col.; pg. 1691 left col., to pg. 1692, right col., 1st para.). Thus, Wong teaches |L1 − L0| > 10 nm (e.g., 54 nm), where L1 is the length when a magnetic field is applied (e.g., 18 nm), and L0 is the length when the magnetic field is not applied (e.g., 72 nm) and that the shortened state (18 nm) should promote cell adhesion compared to longer states (>40 nm). Wong teaches the integrin ligand peptide comprises a thiolated integrin ligand peptide coupled to the substrate (Fig. 1).
Wong does not teach wherein the spiral nanowire comprises cobalt, the nanocoil has a length of 100 nm to 20 μm, an average interval between adjacent integrin ligands is reversibly changed depending on application/non-application of a magnetic field to a substrate complex, or wherein the integrin ligand peptides comprise instant SEQ ID NO: 1.
However Kim teaches a nanospring metallic nanowire with a thickness of about 20-70 nm ([0051]) and a diameter of 200 nm ([0045]; FIG. 2-3) comprising the transition metal ions iron and cobalt for use in an external magnetic field due to the magnetic properties of the iron and/or cobalt ions ([0054]; FIG. 5; [0006]; [0037]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective time of filing to modify a substrate complex comprising RGD peptides for cell adhesion as taught by Wong to structurally comprise nanocoils comprising cobalt as well as iron and to have a length of 100-200 nm as taught in Kim. One of ordinary skill in the art with the goal of providing nanocoils that move and/or change shape in an applied magnetic field as taught by Wong would be motivated to select nanocoils having dimensions of about 100-200 nm because Kim shows an embodiment of a nanocoil (nanospring) having such dimensions (200 nm) responds with extreme stretchability to an applied magnetic field (FIG. 5; [0049]). Furthermore it would have been prima facie obvious to one of ordinary skill in the art before the effective time of filing to distribute the plurality of conjugated RGD peptides taught by Wong to be conjugated at different attachment sites along the nanocoil (i.e., “spaced apart”) to provide more cell adhesion sites. When a nanocoil taught by the combination of Wong and Kim having two or more RGD peptides conjugated at different attachment sites along the nanocoil is subjected to a magnetic field, then as the axial length of the nanocoil changes according to the formula |L1 − L0| > 10 nm as taught by Wong then the average interval between adjacent integrin ligand peptides (RGD) would reversibly and necessarily change in response to the application/non-application of the magnetic field changing the length of the nanocoil.
Although Wong and Kim does not teach wherein the integrin ligand peptides comprising instant SEQ ID NO: 1, Hubbell teaches SEQ ID NO: 1 (SEQ ID NO: 61) is an integrin ligand (RGD) adhesion peptide comprising naturally occurring extracellular matrix fibronectin and thrombospondin adhesion domains and that upon immobilization by conjugation to a surface this peptide is bound by human cells causing a flattening shape (Examples 3 and 7; Table 4; FIG. 6).
It would have been prima facie obvious to one of ordinary skill in the art before the effective time of filing to select the RGD peptide attached to nanocoils for cell adhesion as taught by Wong and Kim to specifically comprise the RGD containing peptide comprising instant SEQ ID NO: 1 as taught by Hubbell. One of ordinary skill in the art with the goal of providing cell adhesion in a shortened spiral length state due to the application of an external magnetic field compared to longer states would be motivated to select any RGD-containing peptide known to provide cell adhesion by most mammalian cells and Hubbell teaches SEQ ID NO: 1 in particular promotes adhesion for most cells (e.g., via α5β1), as occurs with fibronectins and thrombospondins of natural vertebrate extracellular matrices (Table 4).
Regarding claim 3, Wong does not teach the nanowire has a circular cross-section, a diameter of 5 nm to 100 nm, and an average length of a spiral outer diameter of the nanocoil is 50 nm to 200 nm.
However Kim teaches a nanospring nanowire with a thickness of about 20-70 nm ([0051]), a circular cross-section, and a spiral outer diameter of 200 nm ([0045]; FIG. 2-3), such as for use in an external magnetic field due to its magnetic properties ([0054]; FIG. 5; [0006]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective time of filing to modify a substrate complex comprising RGD peptides for cell adhesion as taught by Wong and Hubbell to structurally comprise nanocoils in the form of a spiral nanowire having a circular cross-section, a diameter of 20 nm to 70 nm, and an average length of a spiral outer diameter of 200 nm as taught by Kim. One of ordinary skill in the art would be motivated to use such a nanowire configuration because Kim teaches how to manufacture nanocoil helical nanowire structures having these dimensions.
Regarding claim 7, Wong teaches the integrin ligand peptide coupled to the substrate by a polyethylene glycol tether (Fig. 1).
Regarding claim 9, neither Wong nor Kim teaches wherein an uncoupled surface of the substrate is aminated, thus at least a portion of the surface of the substrate is non-aminated and not coupled to any nanocoil.
Thus, the claimed invention as a whole is prima facie obvious before the earliest effective filing date in the absence of evidence to the contrary.
Claims 1, 3, 5, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Wong in view of Kim and Hubbell as applied above, and further in view of Sitasuwan (Sitasuwan et al., Front Chem 2: 31 (2014)).
Regarding claim 5, the combination of Wong, Kim, and Hubbell does not expressly teach wherein a plurality of integrin ligand peptides is coupled to the nanohelix with an average spacing interval of adjacent integrin ligands of 1-10 nm.
However Sitasuwan teaches how to couple to a helix a plurality of integrin RGD peptides, with a spacing of 2-4 nm (e.g., a nucleic acid 300 nm long) (Abstract; Fig. 1). Sitasuwan also teaches that integrin-binding spacing can influence cell behaviors with spacings of less than 8-12 nm promoting more adhesion (pg. 1, right col.).
It would have been prima facie obvious to one of ordinary skill in the art before the effective time of filing to design a substrate complex comprising RGD peptides for cell adhesion as taught by Wong, Kim, and Hubbell to comprise a plurality the RGD peptides at a spacing of about 2-4 nm as taught by Sitasuwan. One of ordinary skill in the art would be motivated to use a plurality of RGD peptides with such a spacing when using the complex for controlling adhesion of cells because Sitasuwan teaches that integrin-binding clusters with spacing of less than 8 nm promoting adhesion complexes formation by cells via integrin binding (pg. 1, right col.).
Thus, the claimed invention as a whole is prima facie obvious before the earliest effective filing date in the absence of evidence to the contrary.
Claims 1, 3, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Wong in view of Kim and Hubbell as applied above, and further in view of Banderas (Banderas, A., Thesis: A Combined Chemical and Magneto-Mechanical Induction of Cancer Cell Death by the Use of Functionalized Magnetic Iron Nanowires (2016)).
Regarding claim 8, the combination of Wong, Kim, and Hubbell does not expressly teach wherein the nanohelix is coupled to the substrate by coupling carboxylate to the nanohelices.
However Banderas teaches methods of coupling molecules to nanocoil nanowires (NWs) using carboxylate reactions comprising 6-aminocaproic acid (pg. 35, 1st para.) and strategies for coating nanowires (e.g., 6 μm long and 30-40 nm diameter), such as iron oxide comprising nanowires, with immobilized polypeptides and other molecules (pg. 23, 39-42; Fig. 12, pg. 49-52).
It would have been prima facie obvious to one of ordinary skill in the art before the effective time of filing to create a substrate complex comprising the RGD peptides for cell adhesion and capable based on the application of a magnetic field of a reversible length change as taught by Wong, Kim and Hubbell to couple each RGD peptide nanohelix to the substrate using carboxylate coupling as taught by Banderas. One of ordinary skill in the art would be motivated to do so because Banderas teaches such a strategy for attaching polypeptides to nanowires and to immobilize polypeptides.
Thus, the claimed invention as a whole is prima facie obvious before the earliest effective filing date in the absence of evidence to the contrary.
Response to Arguments
Applicant traverses the previous obviousness rejections by arguing the prior art of record does not teach or suggest the invention of presently amended claim 1 requiring the integrin ligands to be a thiolated integrin ligand peptide comprising instant SEQ ID NO: 1. While this argument was found persuasive, the claim amendment necessitated the new ground(s) of rejection presented above.
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 ERIC J ROGERS whose telephone number is (571)272-8338. The examiner can normally be reached Monday - Friday 9:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tracy Vivlemore can be reached on 571-272-2914. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC J ROGERS/Examiner, Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638