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 .
Status of the Claims
Claims 1-22, 24-26, and 28-37 are pending.
New claims 36-37 have been added.
Claims 21-22, 24-26 and 28-35 are withdrawn.
Claims 1, 15, 17 and 21-22 are amended.
Claims 1-20 and 36-37 are under current consideration.
Withdrawn Rejections
The rejection of claim 15 under 35 USC 112b is withdrawn in light of the amendment to claim 15.
The rejection of claims 1-6, 8-14 and 17-20 under 35 USC 102 as being anticipated by Bonnamain is withdrawn in light of the amendments to claim 1.
The rejection of claims 1 and 7 under 35 USC 102 as being anticipated by Bonnamain as evidenced by Gonmanee is withdrawn in light of the amendments to claim 1.
The rejection of claims 1, 11 and 15 under 35 USC 103 as being unpatentable over Bonnamain in view of Heng is withdrawn in light of the amendments to claim 1.
The rejection of claims 1, 11, 15 and 16 under 35 USC 103 as being unpatentable over Bonnamain in view of Heng and further in view of Abe is withdrawn in light of the amendments to claim 1.
New Grounds of Rejection-Necessitated by Amendment
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 36-37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This is a new matter rejection. New claims 36-37 submitted on 5/23/25 further limit the neural differentiation
medium to comprise retinol or retinol acetate. Applicant in their remarks state that support for new claims 36-37 can be found at paragraphs [0047]-[0049] and [0141] of the PG-PUB. [0048] lists several retinoids that could be used in the neural differentiation medium. However, paragraphs [0047]-[0049] and [0141] do not provide support for a neural differentiation medium comprising all-trans retinoic acid (ATRA) and an additional retinoid, such as retinol and retinal acetate per claim 36. Applicant is encouraged to point to where support can be found in the specification for a neural medium comprising ATRA and retinol or retinol acetate.
Claim Rejections - 35 USC § 103-New Grounds of Rejection Necessitated by Amendment
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.
Claim(s) 1-15 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al (Human Cell (2017) 30: 60-71; of record-IDS submitted on 11/12/21) taken with Bonnamain et al (Frontiers in Physiology (2013)-of record) as evidenced by Gonmanee et al (The Anatomical Record (2020) of record).
Regarding claim 1, Takahashi teaches isolating human adipose stem cells (hBFP-ASCs) from the buccal fat pad (intraoral mesenchymal tissue). See the abstract. Takahashi goes on to teach culturing of hBFP-ASCs in a neurogenic differentiation medium comprising all-trans retinoic acid (ATRA) and thyroxine (T4) to produce neural cells. See the neural induction section of material and methods at page 62, column 1.
Takahashi does not teach preparing an adherent cell culture containing cells derived from intraoral mesenchymal tissue and collecting cells that do not adhere in the adherent culture to obtain a cell population from which neural cells or spheroids can be derived.
However, prior to the effective filing date of the claimed invention methods of preparing adherent cell culture containing cells derived from intraoral mesenchymal tissue and collecting non-adherent cells were known in the art as demonstrated by Bonnamain.
With respect to claim 1, Bonnamain teaches methods of culturing human dental pulp cells (hDPSCs) in neuron differentiation medium and separating them according to their differential adhesion to plastic (pg. 2, left col., par. 2). Bonnamain prepared an adherent cell culture container for culturing isolated human DPSCs (derived from intraoral mesenchymal tissue) in defined medium (basal medium supplemented with N2, EGF, bFGF and herapin), where floating cells were isolated (collecting cells that do not adhere to the adherent cell culture container) (Figure 1 in pg. 3; Materials and Methods pg. 2). The isolated floating cells were spheroids and spheroid-derived DPSCs expressing Nestin, β-III tubulin and NF-M (neuronal markers) obtained are a neural cell-containing preparation (Figure 1; pg. 5, right col., par. 1). It is noted that both Takahashi and Bonnamain taught culturing of (stem) cells derived from intraoral mesenchymal tissue.
With respect to claims 2 and 8, spheroids derived from the non-adherent cell population were characterized after 10 days in culture (Figure 5 in pg. 6).
With respect to claim 3, as illustrated in Figure 1 (pg. 3), the non-adherent floating population (free cells) are present in the neuron differentiation medium.
With respect to claims 4, 5 and 6 both Takahashi (buccal fat pad) and Bonnamain (dental pulp) derived their cells from human intraoral mesenchymal tissue to create primary cell cultures as discussed above.
With respect to claim 7, Bonnamain does not explicitly teach wherein the cells that do not adhere to the adherent cell culture container have an average diameter from 12 to 16 μm. However, the claimed average diameter range is encompassed by the average diameter range taught in the art for neural cells, and specifically, DPSC-derived neural cells, as evidenced by Gonmanee. In particular, Gonmanee cultured and measured DPSC-derived neural cells, and the human nuclear diameter ranged from 10.71 to 30.95 µm and the average was 17.51 ± 3.93 µm (pg. 2935, par. 3.2). Therefore, the average diameter of the cells is interpreted as an inherent result of practicing the claimed method as recited in instant claim 1.
With respect to claim 9, Takahashi taught adherent neural cell culture. See the neural induction and aggregate culture sections of material and methods at page 62, column 1.
With respect to claim 10, the free cells were collected by centrifugation (pg. 2, right col., par. 1).
With respect to claim 11, spheroids derived from the non-adherent cell population (free cells) were collected and cultured (pg. 2, right col., par. 1).
With respect to claim 12, Bonnamain shows adherent cells that migrated out of spheroid structures after 48h in culture (Fig. 6A in pg. 6). Therefore, it is interpreted that spheroid formation occurred in at least 48h (2 days).
With respect to claim 13, floating spheroid structures displayed an expression pattern of neuronal differentiation (a cell-contacting surface of a culture container used for culturing the cell population in the spheroid formation is non-adherent to neural cells of which axons are elongated (pg. 7, right col., par. 2).
With respect to claim 14, spheroids were obtained in suspension culture (pg. 2, right col., par. 1).
With respect to claim 15, Bonnamain teaches that brain-derived neurospheres may be mechanically or enzymatically dissociated and subcultured repeatedly (pg. 1, right col., par. 1).
With respect to claim 17, Bonnamain teaches that neurospheres resulting from the differentiation of brain’s neural stem/progenitor cells contain a mixture of neural stem cells and progenitor cells which may have potential for neurogenesis under right environmental conditions (e.g., growing in EGF) (pg. 7, left col., par. 3; right col., par. 2). The floating cell-derived spheroids culturing in defined media comprising EGF displayed an expression pattern of neuronal differentiation (pg. 7, right col., par. 2). Thus, the neural cell containing preparation contains neural stem cells.
With respect to claims 18-20, Bonnamain discusses the potential of human dental pulp tissue for regenerative medicine, transplantation and repair of damaged areas (pg. 6, right col., par. 1; pg. 7, par. 2). However, claims 18-20 contain wherein clauses that recite intended uses of the cells obtained, which are not given patentable weight. MPEP 2111.04 states “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed”.
Accordingly, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the claimed invention to modify the method of Takahashi by providing an alternate protocol for isolating stem cells that could be differentiated into cells having neural lineage. One of ordinary skill would have been motivated to do this because both Takahashi and Bonnamain isolated stem cells from intaoral mesenchymal tissue and provided methods for differentiating those stem cells into cells having neural lineage. There would have been a reasonable expectation of success since both Takahashi and Bonnamain were successful in isolating stem cells and differentiating them into neural cells, where Bonnamain provided a successful alternate source for isolating stem cells from intraoral mesenchymal tissue.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the absence of evidence to the contrary-prior to the effective filing of the claimed invention.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al taken with Bonnamain at al as evidenced by Gonmanee et al as applied to claims 1-15 and 17-20 above, and further in view of Abe et al (Cell Biology International (2012)-of record).
The teachings of Takahashi, Bonnamain and Gonmanee are relied on above.
With respect to claim 16, while Bonnamain teaches that brain-derived neurospheres may be mechanically or enzymatically dissociated and subcultured repeatedly (pg. 1, right col., par. 1), neither Takahashi, Bonnamain or Gonmanee each a method wherein a period for culturing cells (cells derived from DPSCs) obtained by dispersing the spheroids is from 3 hours to 7 days.
However, prior to the effective filing date of the claimed invention methods of culturing cells from dispersed spheroids for a period of 3 hours to 7 days were known as demonstrated by Abe.
Abe studied the sphere-forming and self-renewal ability of apical pulp-derived cells (dental pulp) under neurosphere culture conditions (abstract). A secondary sphere formation assay was performed, wherein primary apical pulp cell-spheres were dissociated, plated and re-cultured for 7 days (pg. 928, sec. 2.2; Fig. 2 (C); pg. 930, sec. 3.1). Abe discloses that the sphere-forming apical pulp-derived cells have the capacity to differentiate into neural lineages (pg. 931, sec. 3.3).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to culture cells obtained by dispersing the spheroids for a period from 3 hours to 7 days since dispersing or dissociating DPSC-derived neurospheres/spheroids is a well-known step in protocols comprising neurosphere formation, as taught by Bonnamain and Abe. One of ordinary skill would have been motivated to culture cells dispersed from spheroids for a period of 3 hours to 7 days with a reasonable expectation of success since the culture time appears to be a routine and optimizable parameter of cell culture.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 5/23/25 have been fully considered but they are not persuasive.
Applicant’s arguments are centered on an amendment to claim 1, where the neuron differentiation medium was amended to comprise all-trans retinoic acid (ATRA) and thyroxine (T4). Applicant asserts that Bonnamain, Gonmanee, Heng and Abe do not teach a neuron differentiation medium comprising ATRA and T4.
In response, the examiner agrees that Bonnamain, Gonmanee, Heng and Abe do not teach a neuron differentiation medium comprising ATRA and T4. However, the Takahashi reference, newly cited in the new 103 rejections above does teach a neuron differentiation medium comprising ATRA and T4. See the 103 rejections above.
Applicant further argues that when the neuron differentiation medium comprises ATRA and T4 the proportion of normal diploid cells in the neural cell population derived from intraoral mesenchymal tissue cells is surprisingly 80% or more. Applicant asserts that such a result would be expected from the references previously of record, particularly Bonnamain. Applicant has provided an inventor declaration from Aiki Marushima in support of the assertion of unexpected results.
In response, the affidavit under 37 CFR 1.132 filed 5/23/25 is insufficient to overcome the rejection of claims 1-20 and 36-37 based upon the Bonnamain references (as well as the other references previously of record) as set forth in the last Office action (non-final mailed on 2/27/25) because:
the Takahashi reference, cited in the new grounds of rejection above does teach a neuron differentiation medium comprising ATRA and T4 used to differentiate stem cells isolated from intraoral tissue. Takahashi is silent as to the ploidy of the cells. However, in light of the successful neural cell transplantation results shown in the Takahashi reference, it does not seem unexpected that the majority of cells used were of normal ploidy as they improved the symptoms of rat hemi-parkinsonian models; and
the data provided by the specification does not appear to support assertions of unexpected results. In looking at Table 3, at page 46 of the specification the ploidy of test samples and reference samples were compared. The data shows that the test samples had a higher percentage of normal diploid cells as compared to the reference samples. However, it appears that the test and reference samples were both cultured in the same neuron differentiation medium, containing ATRA and T4. See page 42 of the specification, preparation of the reference sample section which describes the components of the neural differentiation medium used in preparation of the reference sample; and page 39 of the specification which discusses preparation/culturing of the test sample. So, if the test and reference samples were both cultured in the same neural differentiation medium, comprising ATRA and T4, but have different percentages of normal diploid cells, it cannot be the media components, particularly ATRA and T4, which lead to these results. Table 3 does show a difference in the sample preparation period, where the reference samples were prepared (cultured) for significantly longer periods of time as compared to the test samples. [It is noted that the tables provide in the specification are of very poor quality making them difficult to read.] Applicant is encouraged to point to any additional data provided by the specification showing that neuron differentiation medium comprising ATRA and T4 can lead to the asserted unexpected results. Therefore, the inventor declaration is not persuasive.
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 Peter Paras whose telephone number is (571) 272-4517. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM ET. 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, Yvonne Eyler, can be reached on 571-272-1200. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER PARAS JR/Supervisory Patent Examiner, Art Unit 1632