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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Jan 21, 2026 has been entered.
Status of claims
Claims 1-3, 5-10, 12-20, and 22-24 are pending and under exam. Claims 4, 11 and 21 are cancelled.
WITHDRAWN REJECTIONS
Claim Rejections - 35 USC § 103
Claims 1-3, 5-6, 18-20 and 22-23 were rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al (US20180127727A1; Published May 10, 2018; See PTO-892 of 6/24/2025; Hereinafter “Yoshida") in view of Yang et al. (Circ Res. 2014 Jan 31; hereinafter “Yang;” See PTO-892).
Claims 7-13 were rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al (US20180127727A1; Published May 10, 2018; See PTO-892 of 6/24/2025; Hereinafter “Yoshida") in view of Yang et al. (Circ Res. 2014 Jan 31; hereinafter “Yang;” See PTO-892); and Lindsey et al (Am J Physiol Heart Circ Physiol. 2018 Apr 1; hereinafter "Lindsey;" See PTO-892 of 6/24/2025).
Claim 14 was rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al (US20180127727A1; Published May 10, 2018; See PTO-892 of 6/24/2025; Hereinafter “Yoshida") in view of Yang et al. (Circ Res. 2014 Jan 31; hereinafter “Yang;” See PTO-892) and further in view of Budinger et al (J Biol Chem. 1998 Feb 6; hereinafter "Budinger;" See PTO-892 of 6/24/2025).
Claims 15-17 were rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al (US20180127727A1; Published May 10, 2018; See PTO-892; Hereinafter “Yoshida" of 6/24/2025) in view of Yang et al. (Circ Res. 2014 Jan 31; hereinafter “Yang;” See PTO-892); Sharma et al (Sci Transl Med. 2017 Feb 15et al; hereinafter "Sharma;" See PTO-892 of 6/24/2025) and Aydin et al (Vasc Health Risk Manag. 2019 Jan 17; hereinafter "Aydin;" See PTO-892 of 6/24/2025).
The rejection is withdrawn following Applicant amendments to indicate mature ventricular cells. It is submitted that although Yoshida taught to probe for markers of mature ventricular cells, they did not teach that their method, especially treatment with Ascorbic acid and FGF proteins would arrive at the claimed cells. New rejections are set forth below.
NEW REJECTIONS
Claim Rejections - 35 USC § 112
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 1-3, 5-10, 12-20, and 22-24 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 claims contain 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.
The claim required that treatment of stem cells with FGF4 results in cardiomyocytes which are mature ventricular cells. However, the specification did not provide sufficient support that the Applicants were in possession of the claimed invention at the time of filing of instant application.
The specification, particularly at [0093] indicated that “it was confirmed that the expression of the mature cardiomyocyte marker (cTnI), the ventricular cardiomyocyte marker (MLC2v), and the atrial cardiomyocyte markers (MLC2a, ANP) was significantly increased by treatment with 10 ng/ml FGF4 on the 15th day after differentiation. In contrast, it was confirmed that the expression of the vascular smooth muscle cell markers (SMA, SM22) and the nodal cardiomyocyte markers (HCN4, TBX18) was significantly decreased” As such the specification did not indicate that all the cardiomyocytes generated by FGF4 treatment alone were mature ventricular cells. It is also pointed out that “a synergistic effect in which the expression of the ventricular cardiomyocyte marker (MLC2v) was significantly increased in the group co-treated with 10 ng/ml FGF4+200 μg/ml ascorbic acid compared to the control group and the group treated with 10 ng/ml FGF4 on the 15th day after differentiation was confirmed. In contrast, it was confirmed that the expression of the vascular smooth muscle cell markers (SMA, SM22) and the nodal cardiomyocyte markers (HCN4, TBX18) was significantly decreased. However, it was confirmed that the gene expression of the cardiomyocyte marker (cTnT), the mature cardiomyocyte marker (cTnI), and the atrial cardiomyocyte markers (MLC2a, ANP) did not show a significant increase or decrease between the group co-treated with 10 ng/ml FGF4+200 μg/ml ascorbic acid and the group treated with 10 ng/ml FGF4 alone” (See specification [0096]). It is also noted that the specification measures the existence of various types of cardiomyocytes using markers. As such the specification also clearly alluded to presence of other types of cells (such as atrial cardiomyocyte markers) as well when the cells were differentiated with FGF4 alone or in combination with ascorbic acid. There is no support in the specification that the cells produced by the method are purely ventricular cells as claimed. The specification clearly demonstrated that at least atrial cells and smooth muscle cells also exist in the differentiated cell product.
Stem cells:
It is also noted that the claims encompass differentiating any stem cell into cardiomyocytes using a medium comprising FGF4, without limitation as to stem cell type, developmental stage, origin or required cofactors. The specification however only describes a single embodiment involving differentiation of a specific human embryonic stem cell line (BG01). The specification does not describe experiments involving iPSCs, adult stem cells, MSCs or other stem cell population. Nor does the specification demonstrate, structural, functional or mechanistic description demonstrating that the Applicants had possession of a method applicable to stem cells generally. The specification clearly only demonstrated instant protocol applies to human embryonic stem cells.
Claims 2-3, 5-10, 12-20, and 22-24 are rejected for their dependency on the rejected claims.
Claim 1-3, 5-10, 12-20 and 22-24 are rejected under 35 USC 112(a) as failing to comply with the enablement requirement.
The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Applicant's specification is found enabling for differentiating human embryonic stem cells into cardiomyocytes comprising steps of:
addition of ROCK inhibitor to a culture medium, for 3 days,
addition of CHIR99021, for 24 hours
addition of IWP2, for 2 days and
addition of FGF4 and ascorbic acid for 10 days.
However, the specification is not found to be enabling for differentiating stem cells into cardiomyocytes using FGF4.
Analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention without undue or unreasonable experimentation. See Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916). The key word is 'undue,' not experimentation.' " (Wands, 8 USPQ2d 1404). The factors to be considered in determining whether undue experimentation is required are summarized In re Wands 858 F.2d 731, 8 USPQ2nd 1400 (Fed. Cir, 1988). The factors to be considered in determining whether undue experimentation is required include: (1) the quantity of experimentation necessary, (2) the amount or direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. While all these factors are considered, a sufficient number are discussed below so as to create a prima facie case.
Applicants' claims are directed to only using FGF4 to differentiate any stem cells to cardiomyocytes which are mature ventricular cells. The breadth of the claims includes use of any and all using any and all stem cells, and adding FGF4 and arriving at cardiomyocytes which are mature ventricular cells.
The specification used human embryonic stem cells to differentiate into cardiomyocytes by the following steps:
addition of ROCK inhibitor to a culture medium, for 3 days,
addition of CHIR99021, for 24 hours
addition of IWP2, for 2 days and
addition of FGF4 and ascorbic acid or FGF10, or ascorbic acid or FGF4 for 10 days.
The specification taught a synergistic effect increase in MLC2v in the cells treated with FGF4 + ascorbic acid compared to the control group and the group treated with FGF4 alone (Example 2) and that the beating characteristics of FGF4 and ascorbate treated cardiomyocytes were more uniform than a control group.
At the time the invention was made it was known that cardiomyocyte differentiation requires mesoderm and cardiac induction, early cardiac induction, cardiomyocyte progenitor formation and cardiomyocyte formation. Several factors/differentiation agents were known to be involved in each of these steps. (See Lin et al figure 1 – see PTO-892). For example, CHIR99021 was known to be involved in cardiac mesoderm induction. Further IWP-2 (Wnt inhibitors) were known to produce early cardiac induction. Further several protocols were in use for use for production of cardiomyocytes (for example See Lin et al, figure 1; Ren et al Figure 1 – see PTO-892). It was also known that the expression of Gata4, Mef2c, and Tbx5 were required for the beating properties of cardiomyocytes. See Ieda et al; Abstract – see PTO-892). The prior art aught that many challenges that require further research before therapeutic application of these cells can be realized. First, human PSC-derived cardiomyocytes have an immature phenotype. Therefore, factors that can direct cardiomyocyte maturation still need to be further investigated and validated. While some progress has already been made, a full mechanistic understanding of cardiomyocyte maturation has yet to be determined. Second, PSC-derived cardiomyocytes are believed to have higher risk of de-differentiation and teratoma formation compared to primary cells or adult stem cells. “ (See Batalov et al; p. 78, col. 2, last para – see PTO-892). Therefore, there was a recognized level of unpredictability with regards to production of cardiomyocytes from stem cells. There was no published prior art that taught differentiation of pluripotent cells purely using FGF4 as currently claimed. While the specification discloses one embodiment of differentiating BG01 human embryonic stem cells into cardiomyocytes using FGF4 (in the presence or absence of ascorbic acid) from day 5 to day 15, the claims are much broader, encompassing other stem cell types, culture conditions and timing of the FGF4 addition. The specification provides no guidance what so ever as to when FGF4 should be added in these other contexts. A person of ordinary skill in the art attempting to practice the full scope of the claims would need to engage in undue experimentation to determine the proper conditions.
Stem cells:
It is also noted that the claims encompass differentiating any stem cell into cardiomyocytes using a medium comprising FGF4, without limitation as to stem cell type, developmental stage, origin or required cofactors. The specification however only discloses a single working example involving differentiation of a specific human embryonic stem cell line (BG01), treated with FGF4, FGF10 and other factors during days 5-15 of an already initiated differentiation protocol. The specification does not provide guidance regarding optimization of the claimed factors for to other pluripotent (stem) cells.
As recognized in Sepac et al (see PTO-892) directly compared cardiomyocyte differentiation behavior between stem cell types using hESC and hiPSCs under identical culture and differentiation conditions, The study demonstrated that hESCs produced more robust and extensive areas of rhythmically contractile cardiomyocytes, whereas hiPSCs exhibited reduced efficiency and variability in cardiomyogenic differentiation despite being subjected to the same protocol. (See Sepac et al p. 6, first para). Thus, the art recognized that stem cell type materially affects differentiation efficiency and outcome and that a protocol effective in one stem cell cannot be presumed to be effective across another stem cell types. As such a person of ordinary skill in the art would understand that cardiomyocyte differentiation is not uniformly predictable across stem cell types and requires cell-type-specific optimization. .
Due to the lack of teachings in the art regarding use of FGF4 in all stem cell types, and the recognized unpredictability in the area of cardiomyocyte differentiation, a large amount of guidance and teachings would be necessary in order to be enabling for methods of such.
Claims 2-3, 5-10, 12-20, and 22-24 are rejected for their dependency on the rejected claims.
Conclusion
No claim is allowed.
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/JAGAMYA NMN VIJAYARAGHAVAN/
/EVELYN Y PYLA/Primary Examiner, Art Unit 1633