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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/17/2025 has been entered.
Response to Amendment
The amendment filed 09/17/2025, amending claims 1 and 3, canceling claims 12-20, and adding claims 21-23 is acknowledged. Claims 1-6, 8-11, and 21-23 are pending and under examination.
Priority
Applicant’s claim for the benefit of a prior-filed application provisional application 63/193,153 filed on 05/26/2021 under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Claim Rejections - 35 USC § 112(a) – Modified due to 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 1-6, 8-11, and 21-23 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.
When determining if an amendment to the claims has adequate written description, the specification, as originally filed, is examined to determine if the newly recited limitations have explicit or implicit written support.
Newly amended claim 1 recites “after the seeding and prior to cryopreservation, culturing the stem-cell seeded allograft in a first solution comprising a stem-cell detachment solution thereby detaching stem cells from the stem-cell seeded allograft, and culturing the stem-cell seeded allograft in a second solution comprising a stem cell nourishment solution thereby growing a population of the stem cells in the stem-cell seeded allograft;
after the culturing ends, freezing the stem-cell seeded allograft containing the cell culture medium with a cryopreservation solution;
after cryopreservation, thawing the stem-cell seeded allograft containing the cell culture medium to provide the bone augmentation composition for application to a bone treatment site, wherein a surviving stem cell population in the bone augmentation composition after thawing is between 50% and 90% of an initial stem cell population in the bone augmentation composition prior to the freezing”.
Regarding claim 1, the specification fails to describe or provide evidence of possessing a method for making a bone augmentation composition comprising the method steps of:
“after the seeding and prior to cryopreservation, culturing the stem-cell seeded allograft in a first solution comprising a stem-cell detachment solution thereby detaching stem cells from the stem-cell seeded allograft, and culturing the stem-cell seeded allograft in a second solution comprising a stem cell nourishment solution thereby growing a population of the stem cells in the stem-cell seeded allograft;
after the culturing ends, freezing the stem-cell seeded allograft containing the cell culture medium with a cryopreservation solution;
after cryopreservation, thawing the stem-cell seeded allograft containing the cell culture medium to provide the bone augmentation composition for application to a bone treatment site”, that results in a surviving stem cell population in the bone augmentation composition after thawing being between 50% and 90% of an initial stem cell population in the bone augmentation composition prior to the freezing.
A search of the specification for “50” and “90” returned the following results:
“More specifically, there is provided a method for making a bone augmentation composition, comprising: a) hydrating an allograft comprising cortical fibers with a cell culture media, b) seeding the hydrated allograft with human mesenchymal stem cell solution derived from a source other than the patient being treated, wherein the seeding optionally comprises a dynamic seeding where the hydrated allograft is agitated at least during application of the stem cell solution to the hydrated allograft, c) culturing the stem-cell seeded allograft for a predetermined time (or a limited time to reduce stem cell attachment to the allograft), d) freezing the stem-cell seeded allograft containing the cell culture media with a cryopreservation solution, e) and after cryopreservation. thawing the stem-cell seeded allograft containing the cell culture media to provide the bone augmentation composition for application to a bone treatment site. In one embodiment, a surviving stem cell population in the bone augmentation composition after thawing is between 50% and 90% of an initial stem cell population in the bone augmentation composition prior to freezing. In one embodiment, the seeding, the limited time of culturing, and the freezing produce, after thawing, a surviving stem cell population in the bone augmentation composition that is between 50% and 90% of an initial stem cell population in the bone augmentation composition prior to freezing.” (pg. 12-13)
“Statement 1. A method for making a bone augmentation composition, comprising: hydrating an allograft comprising cortical fibers with a cell culture media; seeding the hydrated allograft with human mesenchymal stem cell solution derived from a source other than the patient being treated; culturing the stem-cell seeded allograft for a predetermined time (or a limited time to reduce stem cell attachment to the allograft), freezing the stem-cell seeded allograft containing the cell culture media with a cryopreservation solution; and after cryopreservation. thawing the stem-cell seeded allograft containing the cell culture media to provide the bone augmentation composition for application to a bone treatment site. In one embodiment, a surviving stem cell population in the bone augmentation composition after thawing is between 50% and 90% of an initial stem cell population in the bone augmentation composition prior to freezing…In one embodiment, the dynamic seeding, the limited time of culturing, and the freezing produce, after thawing, a surviving stem cell population in the bone augmentation composition that is between 50% and 90% of an initial stem cell population in the bone augmentation composition prior to freezing.” (pg. 22-23)
Neither of these recitations refer to a method for making a bone augmentation composition as recited in newly amended claim 1, specifically to a method comprising the step of after the seeding, culturing the stem-cell seeded allograft in a first solution comprising a stem-cell detachment solution thereby detaching stem cells from the stem-cell seeded allograft, and culturing the stem-cell seeded allograft in a second solution comprising a stem cell nourishment solution thereby growing a population of the stem cells in the stem-cell seeded allograft prior to freezing, that results in 50-90% of the initial stem cell population surviving.
The specification fails to provide explicit or implicit support for a method comprising the same method steps (i.e., structure) as the newly amended claimed method that results in 50-90% of the initial stem cell population surviving after thawing. Adding/altering a method step (i.e., changing the structure of the method) may change the outcome (i.e., percentage of cells surviving), and there is nothing in the specification to suggest that the result of the method would stay the same despite the change in structure. The only reference to a percentage of the cell population surviving in the specification are recited above.
Additionally, there is no working example in the specification teachings a method comprising culturing the stem-cell seeded allograft in a stem-cell detachment solution and stem cell nourishment solution that results in 50-90% of the stem cell population surviving (nor between 1 and 5 x 1065 cells/ml surviving, as recited in claim 2).
Claim 1 recites the method for making a bone augmentation composition having the function of resulting in 50-90% survival of the cell population after thawing.
Claim 2 recites the method for making a bone augmentation composition having the function of resulting in a surviving stem cell population in the bone augmentation composition between 1 and 5 x 10^5 cells/ml.
Either these are inherent property(ies) of (that naturally flows from) the method steps of claim 1, or it is not.
The claim denotes that not all of the structures/method steps of the independent claim are able to achieve the functional property(ies) recited in the dependent claim(s).
To the extent it is not an inherent property (that naturally flows) from the product/method of the independent claim, then something must change. The claim is considered to lack adequate written description for failing to recite the structure that is necessary and sufficient to cause the recited functional language.
The limitations “wherein a surviving stem cell population in the bone augmentation composition after thawing is between 50% and 90% of an initial stem cell population in the bone augmentation composition prior to freezing” (claim 1) and “wherein the surviving stem cell population in the bone augmentation composition is between 1 and 5 x 10^5 cells/ml” merely states functional characteristics without providing any indication about how the functional characteristics are provided. The functional characteristics do not follow from (are not inherent property(ies) of) the structure recited in the claim, so it is unclear whether the claim requires some other structure to be added to the composition to provide the functional characteristic. The specification fails to disclose what structural changes to the method is necessary and sufficient to cause the recited survival rate, and thus the ordinary artisan would not know what modification(s) must be made in order to fulfill the instant recitation.
In analyzing whether the written description requirement is met for genus claims, it is first determined whether a representative number of species have been described by their complete structure. To provide adequate written description and evidence of possession of a claimed genus, the specification must provide sufficient distinguishing identifying characteristics of the genus. The factors to be considered include disclosure of complete or partial structure, physical and/or chemical properties, functional characteristics, structure/function correlation, methods of making the claimed product, or any combination thereof. The disclosure of a single species is rarely, if ever, sufficient to describe a broad genus, particularly when the specification fails to describe the features of that genus, even in passing. (see In re Shokal 113USPQ283(CCPA1957); Purdue Pharma L.P. vs Faulding Inc. 56 USPQ2nd 1481 (CAFC 2000).
The court explained that “reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” The court found that applicant was advocating the latter, i.e., the impermissible importation of subject matter from the specification into the claim.). See also In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997).
The claims fail to recite, and the specification fails to disclose, a nexus between the method steps of claim 1 and the corresponding functional property(ies) of
50% to 90% of an initial stem cell population surviving after thawing, and
Between 1 and 5 x 10^5 cells/ml in the bone augmentation survive.
For example, are the resulting functional properties dependent upon the cell number in the seeding step (see also claims 2 and 5)? Upon the first solution formulary? The amount of time cultured in the first solution? Is the resulting survival rate dependent upon the second solution formulary? The amount of time cultured in the second solution? The cryopreservation medium formulary and/or freezing protocol? Is it dependent upon the thawing protocol?
Without a correlation between structure and function, the claim does little more than define the claimed invention by function. That is not sufficient to satisfy the written description requirement. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (“definition by function…does not suffice to define the genus because it is only an indication of what the gene does, rather than what it is”).
Martin, W. Blake, et al. "Methods of cryoprotectant preservation: allogeneic cellular bone grafts and potential effects." BioMed Research International 2019.1 (2019): 5025398. is considered relevant prior art for reviewing methods of cryoprotectant preservation of allogeneic cellular bone grafts. Martin et al. notes: “It is necessary that the addition and removal of the cryoprotectants is controlled to preserve cell viability, cell differentiation, and cell signaling [9–14]. As low freezing process of about -1 °C/min is commonly used for freezing so that most of the intracellular water has enough time to diffuse into the extracellular space prior to ice crystal formation [11–13]. Freezing too quickly will result in more ice formation within the cells and lead to more cell death [11–13]. For intracellular cryoprotectants, freezing too slow results in long-term exposure to high intracellular cryoprotectant concentrations as the cells are dehydrated and experience severe volume shrinkage [11-13]” (pg. 2, col 2, para 1). While Martin et al. largely focuses on the role of cryoprotectants such as DMSO in cell viability, Martin et al. teaches that there are a multitude of variables to be considered when cryopreserving bone grafts comprising hMSCs.
Thus, for the reasons outlined above, it is concluded that the claims do not meet the requirements for written description under 35 U.S.C. 112, first paragraph.
MPEP 2163 - 35 U.S.C. 112(a) and the first paragraph of pre-AIA 35 U.S.C. 112 require that the “specification shall contain a written description of the invention ....” This requirement is separate and distinct from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010) (en banc)
Dependent claims are included in the basis of the rejection because they do not clarify the nature of the corresponding structure(s) and/or method step(s) that is/are necessary and sufficient to cause the recited functional language.
Claim Rejections - 35 USC § 112(b) - Modified and new, necessitated by amendment
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.
Claims 1-6, 8-11, and 21-23 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 “after the seeding and prior to cryopreservation, culturing the stem-cell seeded allograft in a first solution comprising a stem-cell detachment solution thereby detaching stem cells from the stem-cell seeded allograft, and culturing the stem-cell seeded allograft in a second solution comprising a stem cell nourishment solution thereby growing a population of the stem cells in the stem-cell seeded allograft”. It is also unclear as written whether the culturing in the first and second solution have to be separate, or if the cells are to be cultured in both solutions at the same time, because as written they share the same method step. Does the stem-cell seeded allograft required to first be cultured in a stem-cell detachment solution, then followed by culturing in a stem cell nourishment solution?
If the allograft is required to be cultured in both solutions at the same time, it would be remedial to add the limitation “at the same time”. If no order of culturing is required and the allograft may be cultured in both solutions at the same time or one at a time in either order, it would be remedial to add claim language reciting such.
For examination purposes, the claim limitations read on the stem cell seeded allograft being cultured in a first solution comprising a stem-cell detachment solution and a second solution comprising a stem cell nourishment solution. The cells may be cultured in the solutions at the same time or separately, in any order.
Claim 1 recites “the cell culture medium” in lines 13 and 15. It is unclear what “the cell culture medium” comprises, as there are multiple medias and solutions that the allograft is hydrated or cultured in during earlier steps of claim 1. Does “the cell culture medium” refer to the stem-cell nourishment solution? The nourishment solution and detachment solution? Only the cell culture media the allograft is hydrated with before being seeded with stem cells? The metes and bounds of the cell culture medium are not clearly and precisely defined. It would be remedial to clarify what “the cell culture medium” refers to and whether any of the other medias and/or solutions are present. For examination purposes, a stem cell seeded allograft in a cell culture medium reads upon the claim language.
In kind, claim 6 is similarly rejected.
Claim 1 recites “a surviving stem cell population in the bone augmentation composition after an initial thawing is between 50% and 90% of an initial stem cell population”. It is unclear whether “an initial stem cell population” is referring to all stem cells that were seeded on the hydrated allograft, or to the number of stem cells that were present directly before freezing, such as once cryopreservation solution is added (e.g., at what point in the claimed method would the cells be measured and considered the “initial” stem cell population?). Additionally, it is unclear whether “a surviving stem cell population” is directed to the totality of stem cells present after thawing. The use of “a” rather than “the” may read on multiple stem cell populations being present, and thus it would be unclear which is being referenced to.
Claim 3 recites “wherein the culturing the stem-cell seeded allograft for a period of about 0.5 to 5 hrs at a temperature of about 20 to 50 C”. As written, it is unclear whether this limitation applies to the culturing of the seeded allograft in both the nourishment and detachment solutions, or just one (and if so, which one). For example, must the allograft be cultured in both solutions combined for no more than a total of about 0.5 to 5 hrs? Each solution for a period of about 0.5 to 5 hrs? It would be remedial to clarify in the claim what “the culturing” is referencing in claim 1 (e.g., “culturing the stem-cell seeded allograft in the stem cell nourishment solution for a period…”).
Claim 11 recites the limitation "the loose cortical fibers”. There is insufficient antecedent basis for this limitation in the claim. There is nothing explicit or implicit in claim 1, which claim 11 depends upon, that would inherently require the cortical fibers to be “loose”. Therefore, the metes and bounds of the claim is not clearly and precisely defined. It would be remedial to amend claim 1 to “the cortical fibers”.
Dependent claims are included in the basis of the rejection because they do not correct the primary deficiencies of the independent claim(s).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Shi (US2016/0067377A1, published March 10th, 2016).
For claims 1, 6, and 10, Shi teaches a method for making a bone augmentation composition, comprising:
A method for making a bone augmentation composition, comprising:
hydrating an allograft comprising cortical fibers with a cell culture ([0161; 0353], “Certain volume of growth medium was added into the cell pellets and shaken to break the pellets. A very small volume of cell suspension was added to allografts” (i.e., cortical fibers were no longer in pellet form when hydrated. pg. 13 of the specification recites that “loose” means cortical fibers are not in pellet form); Figure 1);
under agitation, seeding the hydrated allograft comprising the cortical fibers with human mesenchymal cells provided in a stem cell solution derived from a source other than the patient being treated ([0341 and 0344], solution with stromal vascular fraction (SVF), which contains human mesenchymal stem cells (MSCs), acquired from adipose tissue from a cadaver, combined with allograft; [0353], “a dynamic “seeding” process can be used…cell suspension and bone substrate were placed in a 50 ml centrifuge tube on an orbital shaker and agitated”);
after the seeding, culturing the stem-cell seeded allograft in a second solution comprising a stem cell nourishment solution thereby growing a population of the stem cells in the stem-cell seeded allograft prior to freezing [0353 and 0354];
after the culturing ends, freezing an incubated solution containing cell culture medium, the stem-cell seeded allograft, the stem cells and a cryopreservation solution [0354].
In the embodiment cited above (Example A1 of Shi), Shi teaches rinsing the allograft thoroughly in PBS and sonicating to remove unwanted cells. In different embodiments than the cited Example A1 of Shi above, Shi teaches detaching stem cells using TRYPLE Express ( i.e., cultured in a stem cells detachment solution) [0415, 0416, 0422].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to substitute rinsing and sonicating as taught by Shi to remove unwanted cells with culturing the cells in a stem cell detachment solution to remove unwanted cells (i.e., as part of the culturing step of the stem-cell seeded allograft of the claimed method) also taught by Shi with a reasonable expectation for success.
An artisan would have a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. M.P.E.P. §2144.07 states "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).” “When substituting equivalents known in the prior art for the same purpose, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).” M.P.E.P. §2144.06.
Further, substituting one technique (i.e., of removing unwanted cells) with another has long been done in the molecular biology art and would be routine. One would be motivated to culture in a stem cell detachment solution as taught by Shi because as taught by Shi, using TRYPLE Express led to recoverable cell populations [0422].
Shi also teaches the seeded graft being washed to remove non-adherent cells, then placed into cryopreservation medium comprising 90% serum and then frozen at -80 [0303; 0354] (claim 6).
Regarding claim 10, Shi teaches the cryopreservation medium comprising 10% DMSO [0303; 0354]. The concentration of DMSO of Shi and the instant claimed concentration (i.e., 0%-9.99%; less than 10 weight percent) are considered to share overlapping ranges, as the instant specification recites “In one embodiment, the stem cell incubated bone allograft solution has a cryo- preservative added to it such a dimethyl sulfoxide DMSO. The DMSO concentration can be less than about 20 weight percent, or less than about 10 weight percent, or less than about 5 weight percent, or less than about 2 weight percent” (pg. 16). Further, the specification recites that the term “about” when referring to a concentration or percentage is meant to encompass variations of +/- 20%, +/- 10%, +/- 5%, +/- 1% +/- 0.5%, +/- 015%
Additionally, the specification recites “Half of the samples were analyzed using Alamar Blue to determine pre-freeze adherent cell concentration, while the other half was incubated in a mixture of 10% dimethyl sulfoxide DMSO for 30 mins before cryopreservation” (pg. 21-22).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It is routine procedure to optimize component amounts to arrive at an optimal product that is superior for its intended use, since it has been held where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are close enough that one skilled in the art would have expected them to have the same properties. See M.P.E.P. §2144.05(I).
The instant specification fails to disclose an element of criticality for the claimed range is 0-9.99% DMSO.
Shi is silent on the surviving stem cell population in the bone augmentation composition after thawing being between 50% and 90% of an initial stem cell population in the bone augmentation composition prior to freezing. However, Shi teaches all the claimed method steps (i.e., structure) of claim 1. The Examiner notes that the recitation of “wherein a surviving stem cell population in the bone augmentation composition after thawing is between 50% to 90% of an initial stem cell population in the bone augmentation composition prior to freezing” does not recite any additional active method steps, but simply state a characterization or conclusion of the results of the active method steps positively recited. Therefore, the "wherein" clause is not considered to further limit the method defined by the claim and has not been given weight in construing the claims. See Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1171,26 USPQ2d 1018, 1023 (Fed Cir. 1993) ("A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim."). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.").
Regarding claim 2, Shi as modified teaches the method of claim 1. However, Shi is silent on the surviving stem cell population in the bone augmentation composition. As recited above, Shi teaches the same method of the claimed invention recited in claim 1. The resulting number of surviving cells recited in claim 2 depends upon the method steps of claim 1. The Examiner notes that the recitation of “wherein the surviving stem cell population in the bone augmentation composition is between 1 and 5 x 10^5 cells/ml” does not recite any additional active method steps, but simply state a characterization or conclusion of the results of the active method steps positively recited. Therefore, the "wherein" clause is not considered to further limit the method defined by the claim and has not been given weight in construing the claims. See Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1171,26 USPQ2d 1018, 1023 (Fed Cir. 1993) ("A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim."). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.").
For claims 3, 4, 8, and 9, Shi teaches the method steps of claim 1. Additionally, Shi teaches culturing the stem-cell seeded allograft for a predetermined time occurring for a period of about 0.5 to 5 hrs at a temperature of about 20 to 50 °C [0353] (claim 3). Shi teaches a dynamic seeding process where 10 ml of a cell suspension and bone substrate were placed in a 50 ml centrifuge tube on an orbital shaker and agitated (claims 4 and 8) at 100 to 300 rpm for 6 hours (claim 9).
For claim 11, Shi teaches the method of claim 1. Shi also teaches the use of demineralized bone, cortical bone, and ground bone as the bone substrate for the allograft (para 0143, lines 6, 9, and 15). These forms of bone substrate can be interpreted as being a loose, intertangled mixture of cortical fibers, as the bone substrate is not described as a pellet. Further, in some embodiments of Shi, a cell pellet is formed and then broken up before hydration (para 0353). Cortical fibers that are no longer in pellet form can also be interpreted as being a loose, intertangled mixture.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Shi (US2016/0067377A1, published March 10th, 2016) in further view of Weszl et al. (Weszl, M., Skaliczki, G., Cselenyák, A., Kiss, L., Major, T., Schandl, K., ... & Lacza, Z. 2012. Freeze‐dried human serum albumin improves the adherence and proliferation of mesenchymal stem cells on mineralized human bone allografts. Journal of Orthopaedic Research, 30(3), 489-496.)
As shown above, the base claims are obvious over the base art.
Shi teaches the method of claim 1. Shi teaches counting cells using a CCK-8 Assay (i.e., an assay for identifying stem cells) (para 0385 and 0398). However, Shi is silent on stem cell density of the stem cell solution used for seeding.
An Artisan, interested in methods of assessing cell density, would be aware of Weszl et al. for teaching using Alamar Blue to track mesenchymal stem cell proliferation on bone grafts.
Weszl et al. teaches using Alamar Blue (i.e., an assay for identifying stem cells) to count cells, with the stem cell density of the stem cell solution used for seeding being between 1x105 to 1x106 (pg 490, subsection “Seeding of Cells on Coated and Uncoated Bone Scaffolds under Standard Conditions”). Weszl teaches seeding 100,000 human dental pulp stem cells, a type of mesenchymal stem cell, onto the surface of an allograft. Alamar Blue was then used to track the proliferation of the dental pulp stem cells on the surface of bone grafts (pg 490-491, subsection “Assessment of the Proliferation of BMSCs and DPSCs”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the method of Shi and the cell density of the stem cell seeding solution being between 1x105 to 1x106 and counted by an assay (i.e., Alamar Blue) taught by Weszl to yield a predictable result. One would have been motivated to make this combination because Alamar Blue is a common tool used to track cell proliferation.
Claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Shi (US2016/0067377A1, published March 10th, 2016) in further view of Ginis et al. (Ginis, Irene, Borislava Grinblat, and Mitchell H. Shirvan. "Evaluation of bone marrow-derived mesenchymal stem cells after cryopreservation and hypothermic storage in clinically safe medium." Tissue Engineering Part C: Methods 18.6 (2012): 453-463.).
As shown above, the base claims are obvious over the base art.
Shi is silent on the freezing rate of the seeded allograft for cryopreservation.
The Artisan, interested in methods of cryopreserving mesenchymal stem cells, would be aware of Ginis et al. for evaluating MSCs following cryopreservation in 2%, 5%, and 10% DMSO.
Ginis et al. teaches suspending MSCs in a cryopreservation media comprising 2%, 5%, or 10% DMSO. Samples were slowly cooled to -5C (freezing point for CryoStor reagents) and then given a blast of chilling to-25C and quick return to -5C to prevent super-cooling and to ensure extracellular ice nucleation. From that point, samples were slowly cooled to -60C at 1C/min (claim 21), and then, fast frozen at -25C/min down to -196C (stored in liquid nitrogen) (i.e., freezing occurs by varying a temperature of a freezing chamber, wherein the freezing chamber follows different temperature ramps at different temperature stages – claims 22 and 23) (pg. 454, “Cryopreservation protocol”).
Before the effective filing date of the current invention, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply combine the methods of Ginis et al. and Shi by applying the freezing rates taught by Ginis et al. to the freezing step of Shi at arrived at the claimed invention. One would have a reasonable expectation for success because their combination requires nothing more than employing well-known cell preservation techniques. One would be motivated to apply the freezing rates taught by Ginis et al. to the freezing step of Shi because as taught by Ginis et al., the percentage of dead cells in samples cryopreserved in 2%, 5%, and 10% DMSO frozen at these rates for 1 month ranged between 13% and 15% (i.e., >80% survival of cells). (pg. 457, “Viability of MSC after cryopreservation for 1 and 5 months”).
Response to Arguments
Applicant's arguments filed 09/17/2025 have been fully considered but they are not persuasive.
The Applicant argues that the 112(b) rejection concerning the culturing step should be removed, as the “for examination purposes” included by the Examiner shows that those skilled in the art would understand what is claimed in light of the specification. This argument is not persuasive because the specification does not provide clarity on the order of the of culturing the allograft in the first and second solution. As written, an artisan would not know how to carry out the culturing step- for example, can an artisan culture the allograft in the detachment solution and nourishment solution at the same time? Or must they be done separately, in a specific order? It would be remedial to clarify this in the claim language (e.g., state whether culturing the allograft in the first and second solutions can occur concurrently or at different times in any order- if this is true and supported by the disclosure).
The Applicant argues that the amendments to claim 1 overcome the 112(a) Written Description rejection previously set forth. The amendments do not address the lack of support for the active method steps (i.e., structure) of the claim resulting in 50-90% of the stem cell population surviving after thawing, nor between 1 and 5 x 10^5 cells/ml surviving (claim 2). Specifically, the specification does not teach a method for making a bone augmentation composition that comprises culturing the stem cell seeded allograft in both a stem cell detachment solution and a stem cell nourishment solution, with 50-90% of the stem cell population surviving post-thawing. The specification recites different embodiments of the claimed method, but does not recite these two limitations together (i.e., does not show that the active method steps/structure results in the functional outcome of % / # cells survival).
Regarding Shi, the Applicant argues that TRYPLE was only used for preparing isolated stem cells that were later seeded into acellular dermal matrix samples, and then for evaluation of the stem cells in the dermal matrix sampled after culturing. Additionally, the Applicant argues that Shi does not teach the isolated and centrifuged ASCs containing any TRYPLE when the stem cells were incubated with the matrix samples. This argument is not found to be persuasive because the intended purpose of TRYPLE in Shi (detaching for isolation/evaluation) does not change Shi teaching TRYPLE being used to detach cells (i.e., what Shi does with the detached cells after the fact does not change how TRYPLE can be/is used in the method).
Additionally, the Applicant argues that by substituting TRYPLE for the rinsing and sonicating step in the method taught by Shi would mean that Shi no longer teaches culturing in a stem cell nourishment solution. This argument is not found to be persuasive because [0353] and [0354] of Shi teaches:
“Certain volume of growth medium was added into the cell pellets and shaken to break the pellets. A very small volume of cell suspension was added onto allografts. After culturing in CO2 incubator at 37° C. for a few hours, more growth medium (DMEM/F12, 10% FBS with antibiotics) was added. This was astatic “seeding” process. A dynamic “seeding” process can be used for particular bone substrate. 10 ml of a cell suspension and bone substrate were placed in a 50 ml centrifuge tube on an orbital shaker and agitated at 100 to 300 rpm for 6 hours.
After a few days (about 1 to 3 days), the allograft was taken out and rinsed thoroughly in PBS and sonicated to remove unwanted cells.”
As written, the dynamic seeding process taught by Shi still reads on culturing the allograft in a stem-cell nourishment solution. Absent evidence to the contrary, the dynamic seeding process (e.g., “10 ml of a cell suspension and bone substrate were placed in a 50 ml centrifuge tube on an orbital shaker and agitated at 100 to 300 rpm for 6 hours”) would replace the step of “after culturing in CO2 incubator at 37° C. for a few hours” (i.e., astatic seeding), but would still involve the next step of adding more the growth medium (DMEM/F12, 10% FBS with antibiotics) and culturing the seeded allograft for a few days before being rinsed (i.e., there is nothing to suggest that this culturing would not occur, especially since the allograft must be maintained for 1-3 days after agitation, and a medium that maintains the stem-cell seeded allograft would be interpreted to be a stem cell nourishment solution).
The Applicant argues that one would not be motivated to rinse with TRYPLE and sonicate to remove unwanted cells, as it suggests detached stem cell would be removed, and therefore reduce the number of stem cells that may be preserved, and therefore teaches away. This argument is not found to be persuasive because as written, the claims do not require the detached stem cells to be cryopreserved, only the stem-cell seeded allograft. It is moot what happens to the cells once detached. Additionally, the Applicant provides no evidence of why modifying or eliminating the rinsing step of Shi would change Shi’s intended purpose, as Shi’s intended purpose is to produce an allograft.
The Applicant argues that one would not be motivated to modify/remove the rinsing step of Shi without the Applicant’s disclosure that reducing attachment of the stem cells to the allograft fibers promotes a higher surviving stem cell population, and that there is no evidence outside the record outside the Applicant’s disclosure at pgs. 13, lines 11-16 and Fig. 5 and 8 that culturing in TRYPLE as a detachment solution would promote viability after cryopreservation. This argument is not persuasive because Figures 5 and 8 in the instant specification are related to dynamic vs static seeding and incubation time. There is no data on the differing outcomes based on the presence or absence of detachment solution. The working examples also do not use a detachment solution as part of the active method steps. Further, pg. 13 line 11-16 cited by the Applicant states discussing reducing attachment via limiting the time of culturing, not by using a detachment solution. Thus, even the Applicant’s own disclosure does not explicitly state that TRYPLE, or any detachment solution for that matter, increases survival outcomes of the stem cells.
In addition, the Applicant argues that the recitation of 50-90% of the cell population surviving following thawing further limits the claimed invention. The Applicant fails to provide evidence of how this recitation is more than an intended result, as it is still unclear what structure leads to this result. The Applicant states this clause accounts for the Applicant’s teaching of limited culturing times and limited agitation times, but these are not claimed features in the independent claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The Applicant asserts that Shi gave no indication of which parameters were critical or no directions as to which of many possible choices would likely be successful for survivability. However, it can be argued the instant disclosure does not provide these indications. The Applicant fails to provide evidence that despite Shi teachings the same active method steps, the method of Shi would not result in the same outcome.
Conclusion
No claims are allowed.
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/ALLISON MARIE JOHNSON/Examiner, Art Unit 1638
/ROBERT M KELLY/Primary Examiner, Art Unit 1638