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 .
Status of the Claims
Claims 1-20 are currently pending.
Claims 1-3, 4-5, and 12-15 are amended.
Claims 10 and 16-20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.
Claims 1-9 and 11-15 have been considered on the merits.
Withdrawn Rejections/Objections
The objections made onto claims 1-3 are withdrawn in light of the amendments made on 05/13/2026.
The 112(b) rejections made onto claims 1 and 4 are withdrawn in light of the amendments made on 05/13/2026.
New Objections
Claim 1 is objected to for formatting. Currently the last line of claim 1 reads “Raxhi, Sox110, Sox2+, and Bmi-1+”, which contains two superscript issues.
The first is that “Raxhi” should read as follows “Raxhi”. Applicant is kindly requested to include “hi” formatted in the superscript. Claim 1 is interpreted to recite “Raxhi”.
The second issue is that “Sox110” appears to recite “Sox1^10”, as in Sox1 raised to the 10th power, however the term is meant to read as Sox1^”low”. Applicant is kindly requested to include the full word “low” in the superscript of “Sox1” for clarity purposes so that this term reads “Sox1low”. Claim 1 is interpreted to recite “Sox1low”.
Appropriate correction is required.
Claim 4 is objected to for formatting. Currently the line 3 of claim 4 reads “Raxhi” and “Sox110”, which contains two superscript issues.
The first is that “Raxhi” should read as follows “Raxhi”. Applicant is kindly requested to include “hi” formatted in the superscript. Claim 4 is interpreted to recite “Raxhi”.
The second issue is that “Sox110” appears to recite “Sox1^10”, as in Sox1 raised to the 10th power, however the term is meant to read as Sox1^”low”. Applicant is kindly requested to include the full word “low” in the superscript of “Sox1” for clarity purposes so that this term reads “Sox1low”. Claim 4 is interpreted to recite “Sox1low”.
Appropriate correction is required.
Maintained Rejections
Claim Rejections - 35 USC § 112
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 14 and 15 remain rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the method of claim 1 along with the dependent claims 2-9 and 11-13, does not reasonably provide enablement for “wherein the method further comprises administering to a human subject in need thereof a pharmaceutical composition comprising the engineered exosomes, wherein the engineered exosomes are loaded with an NFKB inhibitor or with a small interfering RNA targeting interleukin-6 (IL-6), tumor necrosis factor alpha (TNF-a), or NFKB, for preventing, treating or controlling a inflammation-associated disease or disorder in the human subject” of claim 14; nor does it provide enablement for “wherein the inflammation-associated disease or disorder is one or more of a chronic inflammation, a neuroinflammation, an autoimmune disorder, a topical inflammation, and a cytokine storm” of claim 15. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Enablement is considered in view of the Wands factors (MPEP 2164.01(a)). The court in Wands
states: "Enablement is not precluded by the necessity for some experimentation such as routine
screening. However, experimentation needed to practice the invention must not be undue
experimentation. The key word is 'undue,' not 'experimentation.' " (Wands, 8 USPQ2d 1404). Clearly,
enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation
required to make or use the invention. "Whether undue experimentation is needed is not a single,
simple factual determination, but rather is a conclusion reached by weighing many factual
considerations." (Wands, 8 USPQ2d 1404). The factors to be considered in determining whether undue
experimentation is required include: (1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the
invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims. While all of these factors are considered, a
sufficient amount for a prima facie case are discussed below.
(1) The nature of the invention
The specification describes the invention as a method of making neuronal stem cells and exosomes of diencephalon lineage. Also provided are compositions comprising neuronal stem cells or exosomes of diencephalon lineage, which may be formulated as pharmaceutical formulations for the treatment and prevention of disorders associated with the neuroendocrine system and the control of behavioral and physiological processes.
(2) the breadth of the claims:
Dependent claims 14 and 15, broadly encompass wherein the method further comprises administering to a human subject in need thereof a pharmaceutical composition comprising the engineered exosomes, wherein the engineered exosomes are loaded with an NFKB inhibitor or with a small interfering RNA targeting interleukin-6 (IL-6), tumor necrosis factor alpha (TNF-a), or NFKB, for preventing, treating or controlling a inflammation-associated disease or disorder in the human subject. Additionally, wherein the inflammation-associated disease or disorder is one or more of a chronic inflammation, a neuroinflammation, an autoimmune disorder, a topical inflammation, and a cytokine storm. Thus, the claims taken together with the specification imply that the method is able to prevent, treat, or control any disease or disorder associated with inflammation, in a human subject, using exosomes engineered to comprise NFKB inhibitor or with a small interfering RNA targeting interleukin-6 (IL-6), tumor necrosis factor alpha (TNF-a), or NFKB, with any treatment regimen, which is unpredictable.
(3) The state of the prior art
The prior art shows the application of hypothalamus stem cell derived exosomes to treat signs of aging in mice. The art shows that exosomes are able to be loaded with nearly any biologically active molecule, however does not appear to demonstrate that any biologically active molecule/drug can prevent, treat, or control any disease or disorder associated with hypothalamus malfunction.
(4) the predictability or unpredictability of the art:
The claims embody a method of preventing, treating or controlling any disease or disorder associated with inflammation in a human subject through the application of exosomes engineered to express NFKB inhibitor or with a small interfering RNA targeting interleukin-6 (IL-6), tumor necrosis factor alpha (TNF-a), or NFKB, through any treatment means, which is unpredictable.
The method is found to be unpredictable with regards to the ability of the method to prevent, treat, or control any disease or disorder associated with inflammation in a human subject through the application of exosomes engineered to express a NFKB inhibitor or with a small interfering RNA targeting interleukin-6 (IL-6), tumor necrosis factor alpha (TNF-a), or NFKB, through any treatment means. The instant specification only provides examples which employ in vitro cells as the “subject”, and does not appear to provide any guidance on how one might perform the method of preventing, treating , or controlling any disease associated with inflammation. Example 24 of the specification details a method in which hypothalamus stem cell exosomes are able to decrease simulated inflammation in human cells in vitro. However, Nicolakopoulou (Brain, 2020) provides a review on in vitro CNS models. Nicolakopoulou teaches that “Conventional in vitro models, in turn, cannot provide information regarding behavioral responses, many functional responses, or systemic responses (organ–organ interactions), and are therefore considered to be too simplistic for many practical applications (pg. 3182, col. 1, para 1). Thus, Nikolakopoulou supports that without explicit guidance from the instant application, the application of the method of claims 14 and 15 would be unpredictable in humans. Nikolakopoulou also states that “[t]he lack of adequate CNS models is one explanation for the low success rate of CNS drug development” (pg. 3182, col. 1, para 1). This further supports that without direct guidance, the success rate/results for the method of claims 14 and 15 would be unpredictable.
Therefore, this method is found to be unpredictable with regards to the method’s ability to prevent, treat, or control any disease or disorder associated with hypothalamus malfunction in any subject through the application of exosomes engineered to express any biologically active molecule/drug, through any treatment means.
(5) The relative skill of those in the art:
The relative skill of those in the art is high.
(6) The amount of direction or guidance presented
The specification details examples 1-20. Example 1 details the isolation of human hypothalamus stem cells during iPSC differentiation. Example 2 details differentiation of human hypothalamus stem cells into mature hypothalamus neurons. Example 3 details neurosphere formation. Example 4 details differentiation of human ESC and iPSCs into neurons. Example 5 details exosome formation. Example 6 details collection of conditioned media and purification of exosomes. Example 7 details the quality assessment of the exosomes. Examples 8-9 detail the purification of exosomes by various methods. Example 10 details the transfection of exosomes. Examples 11 details the isolation of human hypothalamus stem cells and exosomes from humans. Examples 12-16 detail identification of drugs for treatment of diseases of the hypothalamus. Example 17 details scaling up hypothalamus stem cell production. Example 18 details isolation of hypothalamus stem cell exosomes from biological fluids. Example 19 details what appears to be a prophetic example of how one might treat of chronic inflammation “of a subject” by delivery of hypothalamus stem cell exosomes loaded with an inhibitor. Example 20 details human hypothalamus stem cells. Example 21 details the purification of human hypothalamus stem cell exosomes. Example 22 details the visualization of exosomes by microscopy. Examples 23 details the western blot assay of exosomes. Example 24 details that in vitro hypothalamus stem cell exosomes decrease simulated inflammation in human cells. Examples 25-26 details the addition of hormones and siRNA to the exosomes. Example 27 details an in vitro experiment to simulate the blood brain barrier.
(7) the presence or absence of working examples:
With specific regards to working examples, the specification teaches a cell based in vitro model of simulated inflammation, to which exosome treatment was provided. Additionally, the specification teaches a cell based in vitro model of the blood brain barrier. These models do not encompass a working model of the method of claims 14 and 15. The specification does not at any point appear to treat a “subject”, rather only appear to provide in vitro cell based examples. The examples heavily rely on in vitro cell based experimentation and does not appear to employ any subject level disease models.
(8) The quantity of experimentation necessary:
Considering the state of the art as discussed above and the high unpredictability and the lack of
guidance provided in the specification, one of ordinary skill in the art would be burdened with undue
experimentation to use the claimed invention within the broad scope as instantly claimed.
It is the examiner’s position that one skilled in the art could not practice the invention
commensurate in the breadth of the claims without undue experimentation. Therefore, claim 6
and its dependents are rejected under 35 U.S.C. 112, first paragraph, for a lack of enablement.
Claim Interpretation
Claim 6 contains the limitations of “analyzing the purified human hypothalamus stem cells for immunophenotype, neurosphere formation, and ability to give rise to mature hypothalamus neurons”. Applicant further limits claim 6 with dependent claim 7, which states that the ability to give rise to mature hypothalamus neurons is not measured by additional steps which test whether the generated cells are physically capable of giving rise to mature hypothalamus neurons, rather claim 7 measures this “by detecting expression of one or more neuropeptide markers”. Therefore, the limitation of claim 6 of “the ability to give rise to mature hypothalamus neurons” is being interpreted to be met if the cells are analyzed by detecting expression of one or more neuropeptides.
Maintained and New Rejections Necessitated by Amendment
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 remain rejected and claims 4-5 are newly rejected necessitated by amendment under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al (J Clin Invest. 2015). This rejection is amended to reflect the amendments made onto the claims which rendered dependent claims 4 and 5 eligible to be included in this rejection.
Regarding claim 1, Wang teaches a method of identifying, isolating, and purifying human hypothalamus stem cells at an intermediate transitory stage of in vitro induced pluripotent stem cell (iPSC) differentiation comprising the following steps:
(i) culturing iPSCs in a culture media and enabling reproducible differentiation of iPSCs into cells of ventral diencephalon hypothalamic cell lineage (pg. 805, col 2, para 3);
(ii) identifying hypothalamic cells between day 0 and 15 of cell culture that display hypothalamus markers and neuronal stem cells markers (pg. 805, col 2, last para spanning pg. 806);
(iii) isolating hypothalamus stem cells at hypothalamus marker and neuronal stem cell marker maximal expression, wherein said stage of maximal co-expression occurs at day 12, which falls within the claimed range of within days 7-15 of cell culture (pg. 797, col. 2, para 3); and
(iv) purifying isolated human hypothalamus stem cells (Fig. 6A).
Wang teaches that the purified human hypothalamus stem cells are Raxhi (Fig. 3D) and SOX1lo (supplemental Fig. S2). Regarding the newly added limitation of claim 1 which reads “wherein the purified human hypothalamus stem cells comprise SOX2+ and Bmi-1+, claim 1 contains a wherein clause that recites the intended result of the method rather than requiring an additional step be performed. MPEP 2111.04 states “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed” and that a such a clause ‘"in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Therefore since these claims only recite the results of the steps, then art reading on the active steps of claim 1 will also read on these results since performing the same steps will inherently lead to the same results in the absence of evidence to the contrary including unexpected results.
Regarding claim 2, Wang teaches that the neuronal stem cell markers are positive for NESTIN (pg. 797, col. 2, para 3).
Regarding claim 3, Wang also teaches that the hypothalamus markers comprise Nkx2.1 and homeobox protein orthopedia (OTP) (pg. 797, col. 2, para 3).
Regarding claim 4, Wang teaches that the purified human hypothalamus stem cells are Raxhi (Fig. 3D) and SOX1lo (supplemental Fig. S2).
Regarding claim 5, Wang teaches that the hypothalamus stem cells contain maximal co-expression of hypothalamic and neuronal markers at day 12, which is between the claimed “maximal expression is between day 7 and day 15 of cell culture” (pg. 797, col. 2, para 3).
Therefore, Wang anticipates the claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 6-9, and 11-13 remain rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (J Clin Invest. 2015), as applied to claims 1-5 above, and in view of Zhang et al (Nature, 2017; Author Manuscript published 2018).
Regarding claims 6-9 and 11-13, Wang teaches the limitations of independent claim 1 above.
Wang teaches that the hypothalamic cells are capable of giving rise to mature hypothalamus neurons as required by claim 6 (pg. 798, col. 1, last para). Wang teaches that the day 12 hypothalamic stem cells are analyzed for expression of the neuropeptides OTP, RAX, NPY as required by claim 12 (Fig. 3B) as required by claims 7 and 8, and meeting the limitation of the “ability to give rise to mature hypothalamus neurons” of claim 6. Additionally, alpha-MSH, NPY, OTP, MCH, and RAX are also analyzed for expression in day 24+ neurons derived from the day-12 hypothalamic stem cells (Fig. 2, Fig. 5B, and pg. 797, col. 2, para 3).
Wang is silent as to whether the method further comprises analyzing the purified hypothalamic stem cells for neurosphere formation as required by claim 6.
Wang does not teach wherein the method further comprises isolating and purifying exosomes from the culture media and analyzing the exosomes using one or more of the claimed techniques of claim 9. Wang does not teach wherein the method further comprises engineering purified exosomes to express a foreign molecule as required by claim 11. Wang does not teach that the foreign molecule is one or more of a growth factor, nucleic acid, a cytokine, a vaccine, a inactivated viral protein, a drug, a chemotherapeutic and a biologically active molecule as required by claim 12. Wang does not teach where the nucleic acid is DNA, messenger RNA, micro RNA, or siRNA as required by claim 13.
However, Zhang teaches about hypothalamic stem cells and their control of aging speed though exosomal miRNAs (abstract). Zhang discloses that the substantial loss of SOX2+ and BMI-1+ hypothalamic stem cells marks the beginning of the aging process in mice (abstract). Zhang teaches that cells co-expressing Sox2 and Bmi1 were found densely present in the hypothalamic third-ventricle (pg. 2, para 2). Zhang discloses that the hypothalamus neural stem cells are analyzed for neurosphere formation as required by claim 6 (pg. 7, para 2). Zhang discloses the collection of exosomes from hypothalamic neural stem cells, i.e. Sox2+ and Bmi1+ hypothalamic stem cells as required by claim 4, culture media which are analyzed through western blotting, flow cytometry, nanoparticle analysis, density gradient ultracentrifugation or pull-down assay as required by claim 9 (pg. 5, para 1). Zhang discloses that these cells can excrete exosomes containing various miRNA with an anti-aging effect. Additionally, exosomes derived from these cells had been transfected with various Cy3-labeled miRNAs as required by claims 11-13 (Fig. 6).
One of ordinary skill in the art prior would find it obvious at the effective filling date of the instant invention to combine the method of differentiating hypothalamus stem cells from iPSCs taught by Wang with the method of isolating exosomes from hypothalamic stem cells and transfecting the exosomes with an miRNA taught by Zhang to arrive at the instant invention. One of ordinary skill in the art would be motivated to make this combination because Wang teaches a method of differentiating human hypothalamus stem cells and Zhang teaches that “[m]echanistically, hypothalamic stem/ progenitor cells greatly contributed to exosomal miRNAs in the cerebrospinal fluid which declined over aging, while central treatment with healthy hypothalamic stem/progenitor cells-secreted exosomes led to slowdown of aging” (abstract). Additionally, one of ordinary skill in the art would recognize the inherent benefit of combining the experiments of Zhang, performed on mice and mouse cells, with the human hypothalamus stem cells differentiated by Wang to arrive at a model/method which more closely mimics the human environment. One of ordinary skill in the art would have a reasonable expectation of success when combining Wang with Zhang because Wang teaches all necessary information to differentiate the hypothalamic stem cells from iPSCs and Zhang teaches all necessary information to isolate, transfect, and use hypothalamus stem cell-derived exosomes.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the effective time of filing of the invention, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 05/13/2026 have been fully considered but they are not persuasive.
Applicant argues (Remarks, pg. 10-11) that the newly amended claims 14 and 15 are enabled based on the specification support and requests the withdrawal of the rejection.
In response, the arguments are not found persuasive. While it is appreciated that the newly amended claims 14 and 15 provide a less broad recitation of the claimed method, the claims are still drawn to treating essentially any disease or disorder associated with inflammation and in humans. The examples provided in the specification do not enable one of ordinary skill in the art to treat a human being for any cause of inflammation based off of in vitro cell experimentation, which is supported by the art. Nicolakopoulou cited in the 112(a) rejection above.
Therefore, the argument is not found persuasive.
Applicant argues (Remarks, pg. 11-12) that Wang does not explicitly teach the isolation and purification of cells exhibiting maximal co-expression of the specifically recited hypothalamus and neuronal stem cell markers within the recited 7-15 day window, and thus Wang cannot anticipate.
In response this argument is not found persuasive. The amendments made onto at least claims 1-5 render the claims anticipated by Wang. Wang demonstrates isolation and purification of the claimed cells on day 12 which is within the range of day 7 and 15 and provides a detailed heatmap containing many of the claimed markers which amounts to maximal co-expression at day 12 for many of the tested factors (See Fig. 3).
Therefore, the argument is not found persuasive.
Applicant argues (Remarks, pg. 12-14) that Zhang does not remedy the alleged deficiencies of Wang.
This argument is not found persuasive for the reasons described at point 21 above.
Applicant argues (Remarks, pg. 13-14) that the combination of Wang and Zhang is not supported by a reasonable expectation of success because applicant alleged neither reference teaches pausing the method of Wang to isolate and purify cells between days 7-15 as currently claimed.
This argument is not found persuasive. Wang demonstrates isolation and purification of the claimed cells on day 12 which is within the range of day 7 and 15 and provides a detailed heatmap containing many of the claimed markers which amounts to maximal co-expression at day 12 for many of the tested factors (See Fig. 3).
Therefore, the argument is not found persuasive.
Conclusion
No claims are 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.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONSTANTINA E STAVROU whose telephone number is (571)272-9899. The examiner can normally be reached M-F 8:00-5:00.
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CONSTANTINA E. STAVROU
Examiner
Art Unit 1632
/TITILAYO MOLOYE/Primary Examiner, Art Unit 1632
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