DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is responsive to papers filed 11/07/2025.
Claims 1, 13 and 14 have been amended. Claims 2-3, 7, and 9 have been newly canceled.
Claims 1, 4-6, 8, and 10-14 are currently pending.
Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/04/2025.
Claims 1, 4-6, 8, 10-11 and 13-14 have been examined on their merits.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to amendment. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
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.
Claim(s) 1, 8, 10-11, 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tamashiro et al (Journal of Visualized Experiments 2012-from IDS filed 09/12/2022) in view of Menassa et al (Frontiers in Immunology 2018) and Bennett et al (PNAS 2016).
Regarding claim 1, Tamashiro disclose methods of isolating and culturing microglia including culturing a cell mixture taken from brain tissue and isolating microglia from this mixed cell culture (page 2 protocol sections 1-4). Tamashiro disclose that the brain tissue, which is the source of their cell mixture, is obtained from a rat (subject) and brain tissue inherently contains a neuroepithelial layer and thus the cell mixture obtained by Tamashiro inherently includes a cell mixture from a neuroepithelial layer as well.
Tamashiro do not explicitly disclose isolating the mixture from a subject’s neuroepithelium layer or wherein the subject is a fetus isolated from a uterus.
Menassa disclose that there is evidence that microglia originate in the neuroepithelium (page 5, column 1) and also in fetal mammalian tissue (pages 2-4 Table 1, page 7 column 1, page 7 column 2).
One of ordinary skill in the art would have been motivated to obtain their microglia-containing cells from the neuroepithelial layer of a fetus isolated from a uterus in the method of Tamashiro because Menassa teach and suggest that these are tissue sources that have been found to contain microglial cells. One of ordinary skill in the art would have had a reasonable expectation of success because Menassa disclose that microglia was demonstrated in a rat fetus (page 7 column 2) and Tamashiro is also obtaining their cells from a rat subject as well.
Tamashiro do not teach wherein the microglia express a gene TMEM119.
Bennett disclose that Tmem119 is sufficient to isolate microglia by P14 (page E1742) and that microglia maturation occurs by P14 and correlates with Tmem119 gene expression (page E1742, column 2). Bennett also disclose that Tmem119 is a specific marker for both mouse and human microglia (Title, page E1744). Bennett also teach that Tmem119 is one of the most highly expressed microglia-specific genes (page E1745).
One of ordinary skill in the art would have been motivated to obtain microglia-cells that express TMEM119 in the method of Tamashiro because Bennett teach and suggest that TMEM119 is a specific marker for both mouse and human microglia Title, page E1744). One of ordinary skill in the art would have had a reasonable expectation of success because Bennett also teach that Tmem119 is one of the most highly expressed microglia-specific genes (page E1745) and that Tmem119 is a specific marker for both mouse and human microglia (Title, page E1744).
Regarding claims 8, 10-11 and 14, Tamashiro describe wherein the isolated microglia express IBA-1 and are capable of phagocytosis. Considering the number of specific markers expressed and that the microglia are isolated at a high purity (page 2 Section 5, pages 3-4 Figures 1-2), the isolated microglia are deemed to also include microglia that express microglia markers such as CD11b and a ramified form. Even if this were not the case, including microglia markers and features, such as CD11b expression and ramified morphology, would have been an obvious addition as Tamashiro indicate that they are directed to isolating microglia cells from a mixture of brain cells.
Regarding claim 13, Tamashiro disclose that the isolation of the microglia is by a shaking method (abstract, page 2, sections 4-5).
Therefore, the combined teachings of Tamashiro et al, Menassa et al and Bennett et al. render obvious Applicant’s invention as claimed.
.
Claim(s) 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Tamashiro et al (Journal of Visualized Experiments 2012-from IDS filed 09/12/2022) in view of Menassa et al (Frontiers in Immunology 2018) and Bennett et al (PNAS 2016) as applied to claims 1, 8, 10-11, 13-14 above, and further in view of Kosaka Shinichi (JP-H0549473-A-using machine translation).
Regarding claims 4-6, Tamashiro disclose methods of isolating and culturing microglia as described above, but do not explicitly disclose subculturing and isolating after 2 to 6 passages or freezing, storing and thawing the cell mixture.
Kosaka Shinichi disclose methods of obtaining microglia cells from a rat brain using a shaking method for isolation (page 3). Kosaka Shinichi disclose methods of subculturing the cells for more than 2 passages and utilizing storage conditions of freezing the cells at -80 degrees C (pages 3-4). Additional subculturing is disclosed from frozen cells that have been thawed (pages 4-5).
One of ordinary skill in the art would have been motivated to subculture the cell mixture obtained in the Tamashiro method for at least 2 passages as this would allow for increased numbers of microglia cells for further use in therapy or research. Storage of the cell mixture in a frozen state prior to isolation would have been an obvious modification as Kosaka Shinichi disclose that microglia cells are able to tolerate such storage conditions and can be further subcultured as needed after thawing. One of ordinary skill in the art would have had a reasonable expectation of success because Kosaka Shinichi and Tamashiro are both taking microglia cells from rat brain tissue and using a shaking method for the isolation process.
Therefore, the combined teachings of Tamashiro et al, Menassa et al, Bennett et al. and Kosaka Shinichi et al render obvious Applicant’s invention as claimed.
Response to Arguments
Applicant's arguments filed 11/07/2025 have been fully considered but they are not persuasive. Applicant’s arguments have been addressed in so far as they relate to the new rejections above.
Applicant argues that the yield rate of microglial cells obtained from mixed cells derived from the neuroepithelial layer was compared to the yield rate of microglial cells obtained from the cerebral cortex after culturing for 15 or 21 days and that the yield was assessed by measuring the ratio of CD11b-positive cells to the total cultured cells. Applicant asserts that the superiority of deriving the mixed cells from the neuroepithelial layer is revealed in their results shown at Figure 1C, Figure 2A, Figure 11 and paragraphs 66 and 72 of Applicant’s Specification. Applicant asserts that the difference in microglial yield is not a variation that can be overcome by repeated experiments or conditional adjustments. Applicant points to Exhibit 1 and Figure 3 to show that there is an essential difference arising from inherent biological characteristics depending on the origin and anatomical location of microglial cells.
This is not found persuasive. One of ordinary skill in the art would have been motivated to obtain their microglia-containing cells from the neuroepithelial layer of a fetus isolated from a uterus in the method of Tamashiro because Menassa teach and suggest that these are tissue sources that have been found to contain microglial cells.
Applicant argues that the teaching of Menassa supports their point that the microglial progenitor cells from the fetal neuroepithelium result in differences in properties and function. Applicant asserts that this is a distinctive technical feature responsible for the utility of the claimed methods.
This is not found persuasive. While Applicant’s amendments to the claims requiring the isolation from the fetal neuroepithelium have overcome the previous rejections, they do not negate the fact that the current rejections rely on the obviousness of using the fetal neuroepithelium as a source for microglial progenitors.
Applicant argues that the present application evaluated the expression of TMEM119 depending on the origin of the microglial progenitors and found that their method as recited in the amended claims maintains and enhances TMEM119 expression in microglial after separation and during in vitro culturing. Applicant points to exhibit 2 and Figure 7E as evidence of this.
This is not found persuasive. The current rejections now include the teachings of Bennett. Bennett disclose that Tmem119 is sufficient to isolate microglia by P14 (page E1742) and that microglia maturation occurs by P14 and correlates with Tmem119 gene expression (page E1742, column 2). Bennett also disclose that Tmem119 is a specific marker for both mouse and human microglia (Title, page E1744). Bennett also teach that Tmem119 is one of the most highly expressed microglia-specific genes (page E1745).
Applicant argues that the amended claims are novel and that Tamashiro merely represents conventional technology and does not address TMEM119 expression during culturing.
This is not found persuasive. While Applicant’s amendments to the claims have overcome the previous rejections, these rejections have been preplaced with new 103 rejections as described above.
Applicant argues that the amended claims are nonobvious. Applicant asserts that a person or ordinary skill in the art would not have been motivated to modify Tamashiro method to include isolating cells from a neuroepithelial layer of a fetus isolated from a uterus of a pregnant parent.
This is not found persuasive. One of ordinary skill in the art would have been motivated to obtain their microglia-containing cells from the neuroepithelial layer of a fetus isolated from a uterus in the method of Tamashiro because Menassa teach and suggest that these are tissue sources that have been found to contain microglial cells.
Applicant argues that a person skilled in the art would not have been motivated to produce microglia that express TMEM119.
This is not found persuasive. The current rejections now include the teachings of Bennett. Bennett disclose that Tmem119 is sufficient to isolate microglia by P14 (page E1742) and that microglia maturation occurs by P14 and correlates with Tmem119 gene expression (page E1742, column 2). Bennett also disclose that Tmem119 is a specific marker for both mouse and human microglia (Title, page E1744). Bennett also teach that Tmem119 is one of the most highly expressed microglia-specific genes (page E1745).
Applicant asserts that their data reported in the application demonstrate that combining the claimed features of their method is the basis for unpredicted high performance to produce a significantly enhanced yield of microglial cells and to provide strong TMEM119 expression even under in vitro culture conditions.
This is not found persuasive. In submitting evidence asserted to establish unobvious results, there is a burden on an applicant to indicate how the examples asserted to represent the claimed invention are considered to relate to the examples intended to represent the prior art and, particularly, to indicate how those latter examples do represent the closest prior art. See In re Borkowski, 595 F.2d 713, 184 USPQ 29 (CCPA 1974); In re Goodman, 339 F.2d 228, 144 USPQ 30 (CCPA 1964).
The evidence relied upon should also be reasonably commensurate in scope with the subject matter claimed and illustrate the claimed subject matter "as a class" relative to the prior art subject matter "as a class." In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971 ); In re Hostettler, 429 F.2d 464, 166 USPQ 558 (CCPA 1970). See, also, In re Lindner, 457 F.2d 506, 173 USPQ 356 (CCPA 1972).
It should also be established that the differences in the results are in factunexpected and unobvious and of both statistical and practical significance. In reMerck, 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986); In re Longi, 759 F. 2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Klosak, 455 F2d 1077, 173 UAPQ 14 (CCPA 1972); In re D'Ancicco, 429 F.2d 1244, 169 USPQ 303 (CCPA 1971 ). Ex parte Gelles, 22 USPQ2d 1318 (BPAI 1992).
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Vankriekelsvenne et al., “Transmembrane protein 119 is neither a specific nor a reliable marker for microglia”, Glia, 2022, Vol. 70, pp. 1170-1190.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA J SCHUBERG whose telephone number is (571)272-3347. The examiner can normally be reached 8:30-5:00 EST.
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LAURA J. SCHUBERG
Primary Examiner
Art Unit 1631
/LAURA SCHUBERG/Primary Examiner, Art Unit 1631
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