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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/24/2026 has been entered.
Priority
Acknowledgement is made of Applicants’ claim for priority to PCT/ES2020/070100, filed on 02/14/2020.
Information Disclosure Statement
The IDS filed 08/15/2022 has been considered by the examiner.
Status of Claims
Claims 2-6 and 8-14 are under examination.
Claims 1,7, and 15 have been canceled.
Claim Objections
Objections to claims 4-5, 7, 11, 12, and 13 have been withdrawn in view of applicant’s amendments filed on 08/05/2025.
Objection to claim 15 under 37 CFR 1.75(c) has been withdrawn in view of the applicant’s amendments filed 03/24/2026.
Claim Rejections - 35 USC § 112
Rejection to claim 15 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of the applicant canceling the claim in the reply filed 03/24/2026.
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.
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.
Rejection of claim 1 under 35 U.S.C. 103 as being unpatentable over Fabre et al (EP1650292A1) in view of Griffiths (US 2009/0042289 A1) and as evidenced by Sigma Aldrich (G6784, ʟ-Glutamine–Penicillin–Streptomycin) was withdrawn in view of applicant canceling the claim.
Rejections maintained:
Claims 2-6 and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Fabre et al (EP1650292A1) in view of Griffiths (US 2009/0042289 A1) and as evidenced by Sigma Aldrich (G6784, ʟ-Glutamine–Penicillin–Streptomycin).
Regarding claim 2, Fabre teaches a method of storing and/or transporting in vitro cell cultures which protect the properties of the cells storing at a temperature of between 15 and 25°C for a period of up to 96 hours (page 3, paragraph 0012). Fabre teaches that the cell transport medium can be any commercial culture medium, like DMEM. Fabre further teaches that the gelatin solution in the culture medium is supplemented with FBS and Penicillin/Streptomycin/L-Glutamine (complete culture medium) (page 3, paragraphs 0016-0017). Fabre teaches the addition of HEPES to the conditioning medium in order to increase cell survival during storage and transport (page 9, paragraph 0036). Fabre teaches that the gelatin solidifies to immobilize the cells (page 4, paragraph 0019). Fabre however does not specifically teach Leibovitz L-15 as the basal medium, although Fabre does provide motivation for using Leibovitz L-15 be by teaching that any commercial culture medium can be used.
Griffiths teaches methods for preserving cells within a gel specifically, a hydrolyzed gelatin (cover sheet, abstract). Griffiths teaches a suitable medium for preservation is Leibovitz (L-15) medium preferably buffered with HEPES (page 2, paragraph 0022). Griffiths further teaches that another suitable medium for the cell preservation method is Dulbecco’s (DMEM).
It would have been obvious to one of ordinary skill in the art prior to the filing of this application to make the simple substitution of the DMEM cell culture medium of Fabre with the Leibovitz (L-15) basal cell culture medium of Griffiths. The success of the simple substitution of the culture medium is known in the art and demonstrated by the teaching in Griffiths that L-15 can be substituted with DMEM for the cell storage method.
Fabre teaches the gelatin solution in the culture medium can be supplemented with 10% FBS (page 3, paragraph 0017). Fabre teaches the addition of 25mM HEPES in order to increase the health and survival of the cells (page 9, paragraph 0036). The 25 mM HEPES of Fabre corresponds to 2.5% by volume of HEPES, as one would add 25mL of 1M commercially available HEPES to make the 1L medium resulting in a 25mM HEPES concentration. Fabre teaches the addition of penicillin-streptomycin-glutamine but does not state the amount. However, when one of ordinary skill in the art follows the manufacturer’s recommendation of penicillin-streptomycin-glutamine (Sigma Aldrich), one would use 10 mL/L which is 1%. Further Fabre teaches the gelatin solution in the culture medium at a concentration of 1% to 5% (page 3, paragraph 0010), which is the same as 10-50 mg of gelatin per mL of transport medium. Fabre does not teach what percentage of the medium comes from the basal medium however if 1% of the medium is penicillin-streptomycin-L-glutamine, the gelatin is 1 to 5%, HEPES is 2.5%, and further the FBS is 10% the basal medium would make up 81.5%-85.5%.
Regarding claim 3, Fabre teaches the cell lines can be Caco-2 or HEK (page 3, paragraph 0014).
Regarding claim 4, Fabre teaches that the gelatin used is Type A gelatin (page 4, paragraph 0026).
Regarding claim 5, Fabre teaches the functional cells are immobilized by the addition of gelatin (page 4, paragraph 0019).
Regarding claim 6, Fabre teaches transwell membrane inserts as asymmetric support (page 10, claim 7) and further teaches applying a collagen solution or another extracellular matrix component to the semi-permeable membranes of each insert, which provides support to the cells (page 4, paragraph 0018). Fabre details a study which cultured three-dimensional tissues which have been fixed on two types of sponges in a gelatin solution in order to support the 3D structure of the cells cultured (page 2, paragraph 0004)
Regarding claim 8, Fabre teaches a method of storing and or transporting in vitro cell cultures which protects the properties of the cells (page 3, paragraph 0012). Fabre teaches that the cell transport medium can be any commercial culture medium, like DMEM. Fabre further teaches that the gelatin solution in the culture medium is supplemented with FBS and Penicillin/Streptomycin/L-Glutamine (complete culture medium) (page 3, paragraphs 0016-0017). Fabre teaches the addition of HEPES to the conditioning medium in order to increase cell survival during storage and transport (page 9, paragraph 0036). Fabre teaches that the gelatin solidifies to immobilize the cells (page 4, paragraph 0019). Fabre teaches solidifying the gelatin at a temperature between 15 and 25 ºC (page 10 claim 1). Fabre further teaches storing and or transporting the cell line at a temperature between 15 and 25 ºC for up to 96 hours (page 10 claim 1). Fabre however does not specifically teach Leibovitz (L-15) as the basal medium, although Fabre does provide motivation for using Leibovitz (L-15) be by teaching that any commercial culture medium can be used.
Griffiths teaches methods for preserving cells within a gel more specifically a hydrolyzed gelatin (cover sheet, abstract). Griffiths teaches a suitable medium for preservation is Leibovitz (L-15) medium preferably buffered with HEPES (page 2, paragraph 0022). Griffiths further teaches that another suitable medium for the cell preservation method is Dulbecco’s (DMEM).
It would have been obvious to one of ordinary skill in the art prior to the filing of this application to make the simple substitution of the DMEM cell culture medium of Fabre with the Leibovitz (L-15) basal medium cell culture medium of Griffiths. The success of the simple substitution of the culture medium is known in the art and demonstrated by the teaching in Griffiths that L-15 can be substituted with DMEM for the cell storage method.
Regarding claim 9, The combination of Fabre and Griffiths make obvious the limitations of claim 8 as previously described. The substitution of DMEM for Leibovitz (L15) as is previously described from Fabre and Griffiths. Fabre teaches the gelatin solution in the culture medium can be supplemented with 10% FBS (page 3, paragraph 0017). Fabre teaches the addition of 25mM HEPES in order to increase the health and survival of the cells (page 9, paragraph 0036). The 25 mM HEPES of Fabre corresponds to 2.5% by volume of HEPES, as one would add 25mL of commercially available 1M HEPES for the 1L of medium resulting in a 25mM HEPES concentration. Fabre teaches the addition of penicillin-streptomycin-glutamine but does not state the amount added. However, when one of ordinary skill in the art follows the manufacturer’s recommendation of penicillin-streptomycin-glutamine (Sigma Aldrich), one would use 10 mL/L which is 1%. Further Fabre teaches the gelatin solution in the culture medium at a concentration of 1% to 5% (page 3, paragraph 0010), which is the same as 10-50 mg of gelatin per mL of transport medium. Fabre does not teach what percentage of the medium comes from the basal medium however if 1% of the medium is penicillin-streptomycin-L-glutamine, the gelatin is 1 to 5%, the HEPES is 2.5% by volume, and further the FBS is 10% the basal medium would make up 81.5%-85.5%.
Regarding claim 10, Fabre teaches transwell membrane inserts as asymmetric support (page 10, claim 7) and further teaches applying a collagen solution or another extracellular matrix component to the semi-permeable membranes of each insert, which provides support to the cells (page 4, paragraph 0018). Fabre details a study which cultured three-dimensional tissues which have been fixed on two types of sponges in a gelatin solution to support the 3D structure of the cells cultured (page 2, paragraph 0004)
Regarding claim 11, Fabre teaches that the gelatin used is Type A gelatin (page 4, paragraph 0026).
Regarding claim 12, Fabre teaches the cell lines can be Caco-2 or HEK (page 3, paragraph 0014).
Regarding claim 13, Fabre teaches a kit for storing and or transporting organized in vitro cell cultures comprising an asymmetric support and a gelatin solution in the culture medium (page 10 claim 12), where the gelatin solution immobilizes the cells (page 4, paragraph 0019).
Regarding claim 14, Fabre teaches that the kit for storing and or transporting cells, where the asymmetric support is a transwell (page 10, claim 13).
Response to Arguments
Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive.
Applicant arguments: Applicant argues there is no motivation to combine Fabre with Griffiths as alleged. Fabre and Griffiths address fundamentally different problems. The primary teaching of Griffiths is cold preservation at temperatures that are close to freezing. The rejection focuses on a single point (15°C) to suggest that a person of skill in the art would be motivated to combine these references.
Examiner’s response: Changing the cell culture medium only requires a simple substitution of the DMEM cell culture medium of Fabre with the Leibovitz (L-15) basal cell culture medium of Griffiths which would produce predictable results. The success of the simple substitution of a known culture medium for another culture medium would yield a predictable result. Fabre teaches that the cell transport medium can be any commercial culture medium and L-15 is a commercially available cell culture medium which would be a viable alternative to DMEM. Furthermore, the result is demonstrated by the teaching in Griffiths that L-15 can be substituted with DMEM for the cell storage. DMEM and Leibovitz (L-15) are in the case a storage interchangeable basal cell culture mediums which are common cell culture mediums that are used for cell culture at temperatures above 15 degrees. Therefore, regardless of the various storage temperatures both methods maintain the viability of cells for storage and transport. Furthermore, Fabre teaches that the gelatin solution can support at a temperature between 15 and 25 ºC (page 3, paragraphs 0016-0017).
Applicant arguments: Applicant argues surprising and unexpected benefits of the present application cannot be expected from the prior art references. The present application and claims are directed to the storage and transportation of sensitive cell lines, e.g., HEK-293 and Caco-2 cell lines. At the time the present application was filed, it was not considered to be possible to reliably transport sensitive cell lines such as HEK-293 MATE1 cells at room temperature with a viability that is greater than 60%. The inventors of the present application have made the surprising and unexpected discovery that a cell transport medium with the characteristics of claim 2 increase the viability of MATE1 cells to about 80%. See FIG. 2 and of the present application.
Examiner’s response: The benefits of Leibovitz are not surprising because Griffiths teaches the benefits of the method on preservation of cell types which are sensitive to cryopreservation and allows cells to be transported to distant locations with minimal losses (page 4, paragraph 0061). Fabre teaches storage and transport of various cell lines which include HEK-293 and Caco-2 among others (page 3, paragraph 0014). Fabre teaches that Caco-2 cells after transport/storage have an intact functional barrier and only significantly reduce in function after 5 to 7 days of immobilization (page 7, paragraph 0030).
Applicant arguments: Griffiths does not describe a method of continuous storage at 20-25°C, rather, Griffiths suggests a brief and periodic warming cycle to restore cellular structure. That paragraph cautions against exposing cells to temperatures of 20°C or greater for any extended period of time, suggesting that such temperature excursions should preferably be limited to about 5 hours.
Examiner’s response: Fabre teaches a method of storing and/or transporting in vitro cell cultures which protect the properties of the cells storing at a temperature of between 15 and 25°C for a period of up to 96 hours (page 3, paragraph 0012). Fabre teaches that the cell transport medium can be any commercial culture medium (page 3, paragraph 0016).
Applicant arguments: Griffiths' use of the term "sensitive" is completely different from its use in the present application and claims. the sensitive cell lines are defined as cell lines that exhibit less than 50% viability after 96 hours of transport at a temperature between 15°C and 25°C in a corresponding system free of HEPES wherein the Leibovitz L-15 basal medium is replaced with DMEM.
Examiner’s response: The “sensitive” cell lines claimed are HEK-293 and Caco-2 which are cell lines taught by Fabre (page 3, paragraph 0014) as described above in regard to claim 3. Therefore the “sensitive cell lines” are made obvious by Fabre and Griffith.
Conclusion
All claims are identical to or patentably indistinct from the invention claimed in the parent application prior to the filing of this Continued Prosecution Application under 37 CFR 1.53(d) (that is, restriction would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing under 37 CFR 1.53(d). 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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/C.L.M./Examiner, Art Unit 1638
/Anna Skibinsky/
Primary Examiner, AU 1635
Prosecution Insights