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 responsive to papers filed on Oct. 30, 2025. Claims 2, 3, 19 and 20 are withdrawn. Claims 1, 5 and 8 are currently amended. Claims 1, and 5-18 are examined below.
Withdrawn Rejections
The rejection of claim 5 under AIA 35 USC 112 for being indefinite is withdrawn in view of the claim amendment filed on Oct. 30, 2025.
The rejection of claims 1, and 6-18 under AIA 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (IEEE, 2018) as evidenced by Wang et al. (Sci Rep. 2016) is withdrawn in view of the claim amendments in the Response of Oct. 30, 2025.
The rejection of claim 4 under AIA 35 U.S.C. 102(a)(1) as being anticipated by Cui et al. (Appl. Material Interfaces, 2019) is withdrawn in view of the statement made in the Response filed on Oct. 30, 2025. The publication date of the Cui et al. reference is Jan. 7, 2019. This date is less than one year prior to the filing date (June 2, 2019) of the parent application (16/429,042) of the current application. Therefore, the priority date of the current application is July 2, 2019. As such, the Cui et al. reference is within a timeframe that a 102(b)(1) exception to the 102(a)(1) rejection could apply. On page 4 of the response filed on Oct. 20, 2025, it is asserted that the 102(b)(1)(a) exception applies – that is, the disclosure published in the Cui et al. reference is from the inventors. As such, the Cui et al. reference is not available as prior art and this rejection is withdrawn.
The rejection of claim 5 under AIA 25 U.S.C. 103 as being unpatentable over Wang et al. (IEEE, 2018) in view of Beers et al. (Nat. Protocol, 2012) is withdrawn in view of the claim amendments in the Response of Oct. 30, 2025.
Claim Objections
Claim 5 is objected to because of the following informalities: the claim has been amended to recite “a enzyme” – standard language would be “an enzyme”. Appropriate correction is required.
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 1 and 5-18 are 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 1 recites “differentiating the hiPSCs on a membrane pre-coated with Matrigel". Matrigel® is a registered trademark of Corning. Its use in the claims instead of the associated generic description of the goods ("solubilized basement membrane preparation") renders this claim indefinite, as trademarks are used to identify the source of goods, not a particular material or product. See MPEP 2173.05 (u).
Claims 5-18 ultimately depend from claim 1 and do not correct the indefiniteness of claim 1, as noted above. Dependent claim 5-18 are rejected on this basis.
Conclusion
No claims are allowed.
If the objection and the indefiniteness associated with the use of a registered trademark in the claims is corrected, the claims would be in condition for allowance.
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.
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/TERESA E KNIGHT/Primary Examiner, Art Unit 1634