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 .
Claim Status
Claims 5 and 8 are cancelled.
Claims 4 and 7 are amended.
Claims 4,6-7, and 9-13 are pending.
Edited rejections necessitated by amendment
Claim interpretation
The newly added claims 12-13 recite the term “subculturing” which appears to refer to the passaging of cells. The interpretation is drawn from Applicants recitation that state “ Subculture was performed when the cell density in the culture dish reached a confluency of about 80% to 90%”. ( See page 11-lines 17-18).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 4,6-7, and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/143258, with a publication date of 08/09/2018 (cited on IDS), in view of Wagh et al ( Stem Cell Rev and Rep, 2011) and Nishigaki et al (International Journal of Developmental Biology, 2011). It should be noted that the citations below have been made to the English equivalent application US 2019/0390173 A1 by Nojima et al.
Regarding claims 4,6-7,and 9, Nojima et al disclose a method for culturing pluripotent stem cells. The methods involves culturing the pluripotent stem cells in a culture medium containing β-nicotinamide mononucleotide (NMN), a pharmaceutically acceptable salt thereof, or a solvate thereof. Nojima et al’s method also involves adding the NMN to a culturing medium at concentrations of 0.01 to 5 mM. Nojima et al further disclose that the NMN is suitable for promoting the proliferation of pluripotent stem cells selected from the group consisting of embryonic stem cells, induced pluripotent stem cells, and mesenchymal stem cells. (See claims 4-6). It is noted that the instant claims 4 and 7 have been amended to include the limitation wherein the NMN is included in the stem cells culturing medium “ so as to suppress or prevent chromosomal aneuploidy”, and not to promote stem cells proliferation as disclosed by prior art; however Applicants are reminded that "When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent." See MPEP 2112.01 or In re Best, 195 USPQ430, 433 (CCPA 1997). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). In this case, Nojima et al use the same culturing medium for the same cells as the instant application. Therefore, the recitation that the NMN is specifically added to stem cell culturing medium to prevent chromosomal aneuploidy is considered an inherent property as it recites functional outcome. This functional outcome is considered inherent, because it flows from performing the active step of the method (i.e. culturing stem cells continuously in a medium containing NMN) which is taught by Nojima et al, and there is nothing in applicants' disclosure that indicates that this functional result is necessarily limited to a specific step that achieves the recited function. In conclusion, for the invention to be patentable, the claimed method must involves additional structural limitations that would account for such a difference (for example, the presence of additional constituents, or a narrow concentration range where this effect is seen).
Furthermore, the method of Nojima et al involves the step of continuously culturing stem cells in a medium containing NMN. However, Nojima et al do not teach the steps of culturing cells in a first medium, freezing them, and then culturing them in a second medium, with at least the first or second medium is supplemented with NMN, nor do they disclose freezing the cells in a DMSO-free cryopreservation solution.
Wagh et al supplement the method of Nojima et al by teaching a method that involves the steps of culturing stem cells in a first medium, freezing them, and then culturing them in a second medium. Specifically, Wagh et al teach a method for detecting the effect of cryopreservation on the cellular processes of human stem cells following thawing and subsequent culturing. The method of Wagh et al involves culturing H9 human embryonic stem cells ( H9 hESCs) in stem cell growth medium, which are subsequently mechanically dissociated and cryopreserved for three days. After that, the cells are thawed and re-cultured in stem cells growth medium. Wagh et al demonstrate that multiple passaging of hESCs followed by freeze-thaw cycles has a major impact on cellular health, leading to various physiological changes. For examples, Wagh et al show that freezing and thawing cells lead to low recovery and induce unwanted cell differentiation following thawing. ( See abstract, Figs.2-3, and “ hESCs Culturing and Freeze-Thawing” on page 507 ).
On the other hand, Nishigaki et al remedy the second deficiency by expressly teaching highly efficient cryopreservation of human induced pluripotent stem cells using DMSO-free solution. Specifically, Nishigaki et al teach cryopreservation of human induced pluripotent stem cells using DMSO-free cryopreservation solution comprising of Euro-Collins solution containing ethyl glycol and polyethylene glycol cryoprotectants. Nishigaki et al further demonstrate that, following thawing and subsequent culturing, the cryopreserved cells maintain undifferentiated stem cell markers, alkaline phosphatase activity, and pluripotency, thereby establishing that DMSO-free cryopreservation is a suitable alternative to conventional DMSO-containing cryopreservation methods. (See abstract).
Accordingly, it would have been prima facie obvious to one with ordinary skill in the art at the time the invention was filed to modify the stem cell culture method of Nojima et al with the freeze-thaw protocol by Wagh et al and further employ the DMSO-free cryopreservation solution taught by Nishigaki et al. Nojima et al disclose a method for promoting the proliferation of pluripotent stem cells by continuously culturing the cells in a medium containing NMN, but it does not include the steps of freezing and thawing the cells nor do they teach freezing cells using DMSO-free medium. Wagh et al describe a method for detecting the effect of cryopreservation on different cellular processes by comparing changes in the cellular processes before and after freezing, and clearly demonstrate that cryopreservation negatively impact cell recovery. Nishigaki et al teach DMSO-free cryopreservation successfully preserves pluripotent stem cells and maintain their pluripotency following thawing. Thus, a person of ordinary skill in the art seeking to improve the recovery and quality of cryopreserved stem cells would have been motivated to apply NMN-containg culture medium taught by Nojima to the freeze-thaw protocol of Wagh because NMN was known to enhance stem cell proliferation and expansion after culture. Applying the known culture medium before and/or after cryopreservation would have been a predictable approach to improve the number and quality of viable recovered cells after thawing. One with ordinary skill in the art would also be motivated to employ the DMSO-free cryopreservation solution of Nishigaki to the cryopreservation method of Wagh et al while utilizing the NMN-containing culture medium of Nojima et al to obtain the predictable benefit of reducing cryoprotectant associated toxicity while preserving stem cell viability and function following cryopreservation. There is a reasonable expectation of success because Nishigaki et al demonstrate successful recovery and continued culture of pluripotent stem cells following DMSO-free cryopreservation.
Regarding claims 10-11, Nojima et al teach the continuous culturing of stem cells in a medium supplemented with NMN. But, they do not teach the steps of culturing cells in a first and second medium containing NMN. However, the choice of when to supplement the media with NMN and how long to expose the cells to NMN are routine practices in the art, and one with ordinary skill in the art can utilize routine experimentation to discover an optimum value of a result effective variable.
As per the MPEP "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum of workable ranges by routine experimentation. The "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." Application of Boesch, 617 F.2d 272, 276, 205 USPQ 215, 218-219 (C.C.P.A. 1980). See MPEP 2144.05.
Regarding claims 12-13, as previously discussed in claim interpretation, the term subculturing refers to passaging cells. Following the discussion of claim 4 above, the method of Nojima et al involves the step of continuously culturing stem cells in a medium containing NMN. Nojima et al also state that “ The medium is replaced daily and the cells were passaged on day 5 and 6”. ( See [0065]). Thus the method of Nojima et al also involves a subculturing step, wherein the medium used for subculturing is also supplemented with NMN.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 4,6-7, and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. US 11,634,690 B2, in view of Wagh et al ( Stem Cell Rev and Rep, 2011) and Nishigaki et al (International Journal of Developmental Biology, 2011). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3 of patent US 11,634,690 B2 are directed to a method for accelerating growth of a pluripotent stem cell, comprising culturing the pluripotent stem cell in a culture medium that comprises β nicotinamide mononucleotide, or a pharmaceutically acceptable salt thereof, or a solvate thereof, wherein the concentration of the β-nicotinamide mononucleotide in the culture medium is in a range from 0.1 to 2.0 mM, and the pluripotent stem cell is at least one cell selected from the group consisting of an embryonic stem cell and an induced pluripotent stem cell. It is noted that the culturing method of US 11,634,690 B2 is intended to promote stem cells growth rather than to improve the stability of stem cell chromosomes; however, this is presumed to be an inherent outcome because US 11,634,690 B2 uses the same culturing medium on the same cells as the instant application.
The claims of US 11,634,690 B2 do not teach the steps of culturing cells in a first medium, freezing them, and then culturing them in a second medium, with at least the first or second medium is supplemented with NMN, nor do they teach freezing the cells in a DMSO-free cryopreservation solution.
The teachings of Wagh and Nishigaki are set forth above.
Accordingly, it would have been prima facie obvious to one with ordinary skill in the art at the time the invention was filed to modify the stem cell culture method of US 11,634,690 B2 with the freeze-thaw protocol by Wagh et al and further employ the DMSO-free cryopreservation solution taught by Nishigaki et al. Because US 11,634,690 B2 disclose a method for promoting the proliferation of pluripotent stem cells by continuously culturing the cells in a medium containing NMN, but it does not include the steps of freezing and thawing the cells nor do they teach freezing cells using DMSO-free medium. Wagh et al describe a method for detecting the effect of cryopreservation on different cellular processes by comparing changes in the cellular processes before and after freezing, and clearly demonstrate that cryopreservation negatively impact cell recovery. Nishigaki et al teach DMSO-free cryopreservation successfully preserves pluripotent stem cells and maintain their pluripotency following thawing. Thus, a person of ordinary skill in the art seeking to improve the recovery and quality of cryopreserved stem cells would have been motivated to apply NMN-containg culture medium taught by US 11,634,690 B2 to the freeze-thaw protocol of Wagh because NMN was known to enhance stem cell proliferation and expansion after culture. Applying the known culture medium before and/or after cryopreservation would have been a predictable approach to improve the number and quality of viable recovered cells after thawing. One with ordinary skill in the art would also be motivated to employ the DMSO-free cryopreservation solution of Nishigaki to the cryopreservation method of Wagh et al while utilizing the NMN-containing culture medium of US 11,634,690 B2 to obtain the predictable benefit of reducing cryoprotectant associated toxicity while preserving stem cell viability and function following cryopreservation. There is a reasonable expectation of success because Nishigaki et al demonstrate successful recovery and continued culture of pluripotent stem cells following DMSO-free cryopreservation.
Claims 4,6-7, and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-8,10, and 12-15 of U.S. Patent No. US 11,814,652 B2, in view of Wagh et al ( Stem Cell Rev and Rep, 2011) and Nishigaki et al (International Journal of Developmental Biology, 2011).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2,4-8,10,12-15 of patent US 11,814,652 B2 are directed to method for differentiating pluripotent stem cell, comprising culturing the pluripotent stem cell in a culture medium that comprises β-nicotinamide mononucleotide, or a pharmaceutically acceptable salt thereof, or a solvate thereof, wherein a concentration of the β-nicotinamide mononucleotide in the culture medium is in a range from 0.01-10 mM, and the pluripotent stem cell is at least one cell selected from the group consisting of an embryonic stem cell, an induced pluripotent stem cell, mesenchymal stem cells, hematopoietic stem cells, and skin stem cells. It is noted that the culturing method of US 11,814,652 B2 is intended to induce the differentiation of stem cells rather than to improve the stability of stem cell chromosomes; however, this is presumed to be an inherent outcome because US 11,814,652 B2 uses the same culturing medium on the same cells as the instant application.
The claims of US 11,814,652 B2 do not teach the steps of culturing cells in a first medium, freezing them, and then culturing them in a second medium, with at least the first or second medium is supplemented with NMN, nor do they teach freezing the cells in a DMSO-free cryopreservation solution.
The teachings of Wagh and Nishigaki are set forth above.
Accordingly, it would have been prima facie obvious to one with ordinary skill in the art at the time the invention was filed to modify the stem cell culture method of US 11,814,652 B2 with the freeze-thaw protocol by Wagh et al and further employ the DMSO-free cryopreservation solution taught by Nishigaki et al. Because US 11,814,652 B2 disclose a method for differentiating pluripotent stem cell by continuously culturing the cells in a medium containing NMN, but it does not include the steps of freezing and thawing the cells nor do they teach freezing cells using DMSO-free medium. Wagh et al demonstrate that stem cells are routinely cultured, cryopreserved, thawed, and subsequently returned to culture, evidencing that culture and cryopreservation are complementary steps in standard stem cell processing rather than separate technologies. Nishigaki et al teach DMSO-free cryopreservation successfully preserves pluripotent stem cells and maintain their pluripotency following thawing. Thus, a person of ordinary skill in the art would have found it obvious to employ the NMN-containing medium of US 11,814,652 B2 in conjunction with the conventional freeze-thaw protocol of Wagh and the DMSO-free cryopreservation of Nishigaki, yielding no patentably distinct invention over the claims of US 11,814,652 B2.
Response to Arguments
Applicant's arguments filed 07/02/2026 have been fully considered but they are not persuasive.
Applicants argue that Wagh et al employs a conventional cryopreservation protocol using 10%DMSO and, therefore, would not have suggested freezing stem cells in a DMSO-free cryopreservation solution.
Examiner’s Response to Traversal: Applicant’s arguments have been carefully considered but are not found persuasive. This is because while the office agrees with Applicants that Wagh utilizes a DMSO-containg cryopreservation medium and does not expressly disclose a DMSO-free cryopreservation solution, however, the rejection as it stands now does not rely upon Wagh for this teaching. Rather, Wagh is relied upon for teaching the sequence of culturing stem cells, cryopreserving the stem cells, and subsequently culturing the thawed stem cells, as well as for recognizing that cryopreservation adversely affects stem cell recovery and viability. The edited rejection further relied upon Nishigaki et al which expressly teach highly efficient cryopreservation of human induced pluripotent stem cell using a DMSO-free cryopreservation solution ( see rejection above). Accordingly, Nishigaki et al expressly teach the newly added limitation to claim 4. Therefore, an ordinary skill in the art would be motivated to replace the DMSO-containg cryopreservation medium of Wagh et al with the DMSO-free cryopreservation medium of Nishigaki because Nishigaki teaches that DMSO-free cryopreservation successfully preserve pluripotent stem cells while avoiding the use of DMSO. Such replacement represents the use of one cryopreservation medium with another known cryopreservation medium to obtain recognized benefit of reducing DMSO-associated effects while maintain post-thaw stem cell viability and pluripotency. The fact that Wagh et al employs DMSO does not teach away from the substitution, particularly where Nishigaki expressly demonstrate that DMSO-free cryopreservation is a viable alternative for pluripotent stem cells.
Applicants also argue that Wagh teaches cryopreservation decreases cell recovery and induce unwanted differentiation, and therefore would discourage one of ordinary skill in the art from incorporating freezing into the culture method of Nojima.
Examiner’s Response to Traversal: Applicant’s arguments have been carefully considered but are not found persuasive. This is because the rejection does not rely on Wagh for the proposition that cryopreservation promotes stem cell proliferation or improves cell growth. Rather Wagh is relied upon for teaching a conventional workflow comprising culturing stem cells, cryopreserving the cultured cells, thawing the cryopreserved cells, and subsequently re-culturing the thawed cells. Wagh further recognized that cryopreservation can adversely affect cell recovery and viability . Nojima, on the other hand, teaches supplementing the culture medium with NMN to promote proliferation of pluripotent stem cells. A person of ordinary skill in the art would have recognized that the NMN-containing culture medium of Nojima et al could likewise be used in the first culture medium, e.g. before cryopreservation, and in the second culture medium following thawing in the conventional freeze-thaw workflow taught by Wagh. The combination merely applies a known culture medium to a known stem cell processing sequence. In other words, Applicants argument that Wagh et al teach away from the claimed invention is not persuasive. A reference teach away only when it criticizes, discredits, or otherwise discourages the claimed modification. Wagh et al do not discourage the use of cryopreservation; rather, Wagh employs cryopreservation as part of its experimental protocol, and investigate its effects on stem cells. Recognition that cryopreservation present a challenge does not constitute a teaching away from performing cryopreservation itself. Instead, Wagh identifies a problem that would have motivated a person of ordinary skill in the art to improve cryopreservation and post-thaw culture conditions.
Applicants use the same argument as before to argue the double patenting. As a results, the response to this argument will be the same as discussed above.
Conclusion
No claim is allowed.
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 FATIMAH KHALAF MATALKAH whose telephone number is (703)756-5652. The examiner can normally be reached Monday-Friday,7:30 am-4:30 pm EST.
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/FATIMAH KHALAF MATALKAH/Examiner, Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
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