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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-6, 7-9, 12 and 14) in the reply filed on 07/18/2025 is acknowledged.
Claims 1- 14 are pending. Claims 10, 11 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/18/2025.
Claims 1-9, 12 and 14 are examined on the merits.
Claim Rejections - 35 USC § 112(a)
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, 4, 6 and 14 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.
Regarding claims 1 and 3:
Claim interpretation:
The claims are rejected for reciting a generic agent. The claims recite the term “agent” in reference to a cryopreservation agent.
The instant specification provides non-limiting examples of a cryopreservation agent, as discussed below. The instant specification also discloses cryopreservation agents protect cells from damage caused by the crystallization of water molecules at low temperatures (p1 0003).
The Merriam-Webster dictionary defines agent as “b) a chemically, physically, or biologically active principle” (https://www.merriam-webster.com/dictionary/agent).
The broadest reasonable interpretation of a cryopreservation agent, therefore, is any protein/peptide, small molecule, nucleic acid or compound that protects the cell from damage caused by the crystallization of water molecules at low temperatures. This includes any protein, small molecule or solution that protects a cell or reduces ice crystal damage in a cell during the freezing process.
Teachings of the instant specification:
The instant specification teaches desired qualities of a cryopreservation agent include being free of DMSO and agents having biological toxicity, causing no safety problem during clinical use, being free of xenoantigens, being low cost, and comprising clinically approved components such as glycerol and trehalose (p3 0023). The instant specification further teaches an example of a cryopreservation agent that comprises 60-80% glycerol, 0.090-0.200 g/ml trehalose, PBS as a solvent (p2 006-0012).
The instant specification teaches glycerol serves as an osmotic protective agent and cryopreservation protective agent, that the cryoprotective agent is free of DMSO, animal serum or human albumin, and the cryopreservation agent includes trehalose and PBS (p6 0037-0041).
The instant specification teaches various concentrations for the disclosed components (p8 0051-0063).
The instant specification discloses working examples of a cryoprotective agent. Figures 3 and 4 show activity of G3PDH of various samples and retention rate of fat transplantation after cryopreservation under different conditions (p4 0028-0029).
The instant specification teaches specific working examples of a cryopreservation agent. Embodiment 1 teaches a formula for a cryopreservation agent (p11 0087-0090). Embodiment 2 teaches use of the cryopreservation agent disclosed in embodiment 1 (p11 0091-0092).
Embodiments 5-11 disclose cryopreservation agents comprising identical components as embodiment 1, at varying concentrations of trehalose and glycerol (p14 00102-00105).
The state of the art:
Best et al (Rejuvenation Research (2015) 18(5)1-15) teach cryopreservation agents (CPAs) are used to eliminate ice formation when cooling organs to cryogenic temperatures (p1 col1 para1). Best teach widely used CPAs include ethylene glycol, propylene glycol, dimethyl sulfoxide, glycerol, formamide, methanol, and butanediol (p1/2 col2/1 para4/1).
Bhattacharya et al (IntechOpen Chapter 2 (2018) p1-14) teach a cryopreservation agent can be glycerol, MPD, trehalose, proline, sorbitol, diethyl glycol, sucrose, triethylene glycol, and polymers (p10 5.1-5.15).
Bhattacharya teach optimization of cryoprotectants is a challenging task (abstract). Bhattacharya teach during cryopreservation almost half of the cell fluids are replaced with cryoprotectant molecules which can cause toxicity at warm temperatures (p9 para2). Bhattacharya teach cryoprotectant concentration is very important for long term storage of cells (p14 para 3).
Bhattacharya further teach optimization of cooling rate is important because some tissues are more susceptible to chilling injuries than others (p 14 para 2). Bhattacharya also teach cryoprotectant concentration should be optimized with cooling rate (p14 para5). Bhattacharya teach optimizing cryoprotectant concentration and selection of specific concentration of cryoprotectants could result in better cell survival during preservation (p17 para2).
Conclusion:
The instant specification provides working examples and 8 specific formulations of a cryopreservation agent comprising trehalose, glycerol and PBS.
The instant specification does not provide sufficient guidance or working examples of exogenous immunostimulatory agents claimed in the broad genus “cryopreservation agent”, such as proteins, small molecules or solutions.
As discussed, Bhattacharya and Best teach some specific examples of the species claimed by the broad genus “cryopreservation agent”. However a small number of example for specific species are not sufficient to provide guidance for a broad genus.
Bhattacharya also teach unpredictability in regards to the toxicity and concentration and cooling conditions for cryopreservation agents, which supports that trial and error experimentation is required to test each cryopreservation agent in the specific context of use (cell type, cooling rate, preservation concentration etc.).
Furthermore, the function of a cryopreservation agent depends on the structure of the cryopreservation agent, for example Bhattacharya teach large molecule cryoprotectants (non-penetrating) can be highly toxic whereas penetrating cryoprotectants can cause a cell to swell (p10 para1).
MPEP 2163 states “To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention”.
As described above, in the case of the instant claims 1-3, the claimed invention is broad and includes any protein, small molecule or solution that protects a cell or reduces ice crystal damage in a cell during the freezing process.
In view of the unpredictability in the effect/toxicity of immunostimulatory agents as taught by Bhattacharya, and the trial and error necessary for their effective use, the specification fails to support the broad genus of “cryopreservation agent” as claimed such that one skilled in the art can reasonably conclude the inventor had possession of the claimed invention.
The gap between the limited number of structures corresponding to those that exhibit a cryoprotective effect as described in the specification and art compared to the breadth any agent that can provide a cryoprotective effect is extremely large. Given this large gap, the specification fails to support the broad genus of “cryopreservation agent” as claimed
such that one skilled in the art can reasonably conclude the inventor had possession of the claimed invention.
Note claims 2, 4-5, 7-9 and 14 recite the term agent, but satisfy the written description requirement.
Claim Rejections - 35 USC § 101 and 35 USC § 112(b)
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
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.
MPEP § 2173.05(q) “Use” Claims, states:
Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph:
"Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 ").
Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.
It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections.
Claims 1-6 and 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 1 does not fall within at least one of the four categories of patent eligible subject matter the claim is a “use” claim that do not purport to claim a process, machine, manufacture, or composition of matter. As noted above, MPEP § 2173.05(q) states that "use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101 fail to comply with 35 U.S.C. 101.
Note that claims 2-6 and 14 are also rejected because they depend from claim 1 and fail to fix the deficiency.
Claims 1-6 and 14 are also 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 is indefinite because it is a “use” claim that attempts to claim a process without setting forth any steps involved in the process. As noted above, MPEP § 2173.05(q) states that attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Note that claims 2-6 and 14 are also rejected because they depend from claim 1 and fail to fix the deficiency.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moscatello et al (CN-109673621-A; 2019, as cited in the IDS filed 06/22/22).
Regarding claims 1 and 2: As described supra in the 112(b) rejection over the instant claim 1, it is unclear if claim 1 is drawn to a process, machine, manufacture, or composition of matter. For purposes of compact prosecution, the claim is interpreted as drawn to a method of use.
Moscatello teach a method comprising the use of cryoprotectant for cryopreserving adipose tissue (abstract). Moscatello teach the cryoprotectant comprises glycerol (claim 2).
Regarding claim 3: Moscatello teach the cryoprotectant comprise a polyol and a crystalloid (claim 1). The cryoprotective agent taught by Moscatello does not comprise DMSO, animal serum, or human albumin.
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.
Claims 4-9, 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Moscatello et al (CN-109673621-A; 2019, as cited in the IDS filed 06/22/22) as applied to claims 1-3 above, and further in view of Thorat et al (Pharm Res (2019) 36:98;1-11), Bhattacharya et al (IntechOpen Chapter 2 (2018) p1-14), Eum et al (Fertility and Sterility (2009) 91:5;1928-1932), Roberts (Cryopreservation Freezing Solutions (2019) [online] Future lab [retrieved on 8/29/2025]. Retrieved from the internet: https://www.biocompare.com/Editorial-Articles/358505-Cryopreservation-Freezing-Solutions/).
Regarding claim 4: The teachings of Moscatello are described supra. Moscatello also teach the cryoprotectant comprises trehalose, (p9 para6). While Moscatello teaches the cryoprotectant comprises Ringer’s solution (claim 3), Moscatello do not teach the cryoprotectant comprises PBS buffer.
Thorat teach PBS is widely used as a medium for cryopreservation (p1 col2 para2).
It would have been prima facie obvious to substitute the PBS taught by Thorat for the Ringer’s solution taught by Moscatello in the cryopreservation solution taught by Moscatello et al because both solutions are commonly used in cell culture. There would have been a reasonable expectation that the PBS of Thorat would work equivalently to the Ringer’s solution of Moscatello as both solutions are ph buffered isotonic solutions commonly used to culture cells, and the results would have been predictable.
Substitution of one element for another known in the field, wherein the result of the substitution would have been predictable, is considered to be obvious. See KSR International Co. v Teleflex Inc 82 USPQ2d 1385 (US 2007) at page 1395.
Regarding claims 5 and 7: The teachings of Moscatello are described supra. Moscatello also teach the glycerol concentration is about 10% in the cryoprotectant (glycerol and lactic acid Ringer’s solution are at a ratio of about 1:10) (p6 para4). Moscatello do not teach the glycerol concentration is 60-80%.
Moscatello teach trehalose is at a concentration of 0.2M (p9 para6). The molecular weight of trehalose is 342.3 g/mol. Thus 0.2M is equivalent to ~0.07 g/ml. Moscatello do not teach the concentration of trehalose is 0.090-0.200 g/ml.
Regarding the glycerol concentration:
Bhattacharya teach cryopreservation with 70% glycerol makes it difficult for ice crystals to form and that glycerol is less toxic at high concentrations compared to other cryoprotectants (p11 para 5.3).
It would have been obvious to one of ordinary skill in the art to adapt the methods of Moscatello drawn to a cryopreservation solution comprising ~10% glycerol by using 70% glycerol as taught by Bhattacharya because Bhattacharya disclose it is difficult to form ice crystals at that concentration of glycerol, and thus cells are protected from damage by ice crystals.
Accordingly, one of ordinary skill in the art would have been motivated to modify the cryopreservation solution as taught by Moscatello to have a higher percentage of glycerol, as taught by Bhattacharya to for the purposes of having a cryopreservation solution that protects cells during cryopreservation.
Regarding the trehalose concentration:
MPEP 2144.05 reads “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)”.
MPEP 2131.03 further reads “If the prior art disclosure does not disclose a claimed range with "sufficient specificity" to anticipate a claimed invention, any evidence of unexpected results within the narrow range may render the claims nonobvious. See MPEP § 716.02 et seq.”.
In the case of the trehalose, the concentration disclosed by Moscatello is close to the range disclosed in the instant application. In absence of new or unexpected results for values outside the claimed range, the range disclosed by the cited art is considered to disclose the claimed range with “sufficient specificity” to read on the claimed range.
Regarding claims 6 and 9: The teachings of Moscatello are described supra. Moscatello also teach storing adipose tissue at temperature lower than -150°C. Moscatello do not teach cells are cryopreserved at -196 ° C for at least 6 months.
Eum teach cryopreservation methods for embryos in which embryos are stored in liquid nitrogen (-196°C) for 6 months (p1930 col1 6).
Bakhach teach allotransplantation and reconstruction by allotransfer has allowed progress for reconstructive surgery (p119 col1 para1). Bakhach also teach cryopreservation is important to allow time to select a recipient from an anatomical, immunological and psychological standpoint and to prepare the allotransplatation procedure (p119 col1/2 para 1/1).
It would have been obvious to one of ordinary skill in the art to adapt the methods of Moscatello drawn to cryopreservation of adipose tissue by storage of the adipose tissue at -196°C for at least 6 months as taught by Eum. Eum discloses successful cryopreservation of tissues for 6 months at -196°C.
One of ordinary skill in the art would have been motivated to adapt the method of Moscatello cryopreserve the adipose tissue for at least 6 months as taught by Eum because that would provide sufficient time to find an appropriate recipient for adipose transplantation and to prepare the recipient of the tissue as taught by Bakhach.
One would have had a reasonable expectation of success because Eum teach cryopreserved cells have a similar survival rate after 1 week, 1 month, and 6 months of cryopreservation (Fig 2A).
Regarding claim 8: The teachings of Moscatello are described supra. Moscatello teach the cryoprotectant solution is a polyol (glycerol) and a cryalloid (Ringer’s solution) (abstract, claim 3). The cryoprotectant taught by Moscatello is absent of DMSO, animal serum and human serum and thus reads on the instant claim.
Regarding claim 12: The teachings of Moscatello are described supra. Moscatello also teach placing the adipose tissue with cryopreservation solution in the vapor phase of liquid nitrogen (below -150 C), but do not teach storing the adipose tissue in the liquid nitrogen. Moscatello do not teach mixing the adipose tissue and cryopreservation agent at a 1:1 ratio.
While Moscatello do not teach mixing the adipose tissue and cryopreservation agent at a 1:1 ratio, the ratio of cryopreservation solution and tissue would have been a matter of routine optimization based on the tissue volume, cryopreservation agent and protocols in the art.
Moscatello teach freezing and storing is -1 C/min to -80C which requires a cooling box. Moscatello does not explicitly teach a programmable cooling box.
Roberts teach programmable controlled rate freezers give very accurate colling and very good sample-to-sample uniformity, and allow the user to customize the protocols (p3).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date to combine the method of cryopreservation taught by Moscatello with the programmable freezer box taught by Roberts because it would have been obvious to combine prior art elements according to known methods to yield predictable results.
Combining a programmable freezer box as taught by Roberts with the method of Moscatello would have led to predictable results with a reasonable expectation of success because both inventions are drawn to cryopreservation of biological samples.
Regarding claim 14: The teachings of Moscatello and Bhattacharya are described supra. Moscatello and Bhattacharya do not teach an explicit order of addition of components to make the cryopreservation solution.
With respect to the order of steps, it is noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Therefore, the claimed order of steps is an obvious variant of the steps of the cited prior art.
Thus, in the absence of unexpected results, the cryopreservation solution as taught by Moscatello and Bhattacharya reads on the instant claim 14.
Conclusion
No claims are allowed.
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/ANDREA LYNNE MORRIS SPENCER/Examiner, Art Unit 1631
/JAMES D SCHULTZ/Supervisory Patent Examiner, Art Unit 1631