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 case has been transferred to Examiner Constantina Stavrou.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9 and 11-15 in the reply filed on 10/14/2025 is acknowledged.
Claims 10, and 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 10/14/2025.
Applicant has elected the species of claim 15, for which claims 1, 9, 10, 12, and 14 had been indicated as generic.
Status of the Claims
Claims 1-20 are currently pending.
Claims 10 and 16-20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.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.
Claim Objections
Claim 1 is objected to because of the following informalities: “day O” in line 7 should be amended to “day 0”. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: “Cxcr4+_” in line 2 should be amended to “Cxcr4+”. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: “one or more ofNK2 homeobox” in line 2 and should be amended to “one or more of NK2 homeobox”. Appropriate correction is required.
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 are 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 subject in need thereof a pharmaceutical composition comprising engineered exosomes for preventing, treating or controlling a disease or disorder associated with hypothalamus malfunction in the subject” of claim 14; nor does it provide enablement for “wherein the disease or disorder is one or more of an infection, a viral disease, a degenerative disease, an autoimmune disease, a genetic disorder, a dermatological disorder, a topical inflammation, a metabolic syndrome, a cancer, or a damaged tissue in need of repair” 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 subject in need thereof a pharmaceutical composition comprising engineered exosomes for preventing, treating or controlling a disease or disorder associated with hypothalamus malfunction in the subject. Additionally, wherein the disease or disorder is one or more of an infection, a viral disease, a degenerative disease, an autoimmune disease, a genetic disorder, a dermatological disorder, a topical inflammation, a metabolic syndrome, a cancer, or a damaged tissue in need of repair. 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 hypothalamus malfunction (including infection and viral disease which do not appear to be connected to hypothalamus malfunction), in any subject, using exosomes engineered to comprise any biologically active molecule/drug, 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 hypothalamus malfunction in any subject through the application of exosomes engineered to express any biologically active molecule/drug, 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 hypothalamus malfunction in any subject through the application of exosomes engineered to express any biologically active molecule/drug, 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 hypothalamus malfunction. 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 behavioural 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. 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 Rejections - 35 USC § 112(b)
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 1-4, 6-9 and 11-15 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 contains the phrase “isolating hypothalamus stem cells at hypothalamus marker and neuronal stem cell marker maximal expression” in lines 9-10, which renders the claim indefinite. It is unclear what the term “maximal expression” is intended to be compared to in order to arrive at a conclusion of “maximal expression”. Claims 2-4, 6-9, 11-15 are included in the rejection because they directly or indirectly depend from the rejected base claim. Appropriate clarification is required.
Claim 4 contains the phrase “wherein the purified human hypothalamus stem cells are Raxhi, Soxl10, Sox2+, and Bmi-1+” which is indefinite. It appears that “Raxhi” and “Soxl10” are not terms which are well known in the art. It is unclear if “Raxhi” is meant to be read as “Raxhi”, and whether “Soxl10” is meant to be read as “Sox1lo”. In the interest of compact prosecution, claim 4 is being interpreted to mean that the purified human hypothalamus stem cells display high expression of Rax and low expression of Sox1. Appropriate clarification is required.
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.
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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al (J Clin Invest. 2015).
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 (pg. 797, col. 2, para 3); and
(iv) purifying isolated human hypothalamus stem cells (Fig. 6A).
Wang teaches that the neuronal stem cell markers are positive for NESTIN as required by claim 2 (pg. 797, col. 2, para 3). Wang also teaches that the hypothalamus markers comprise Nkx2.1 and homeobox protein orthopedia (OTP) as required by claim 3 (pg. 797, col. 2, para 3).
Therefore, Wang anticipates claims 1-3.
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 1, 4-9, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (J Clin Invest. 2015), in view of Zhang et al (Nature, 2017; Author Manuscript published 2018).
Regarding claims 4-9 and 11-13, Wang teaches the limitations of independent claim 1 above.
Wang teaches that the purified human hypothalamus stem cells are Raxhi (Fig. 3D) and SOX1lo (supplemental Fig. S2) as required by claim 4. Wang teaches that the hypothalamus stem cells contain 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” as required by claim 5 (pg. 797, col. 2, para 3). 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 or not the purified human hypothalamus stem cells are SOX2+ and BMI-1+ as required by claim 4. 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.
Conclusion
No claims are allowed.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Paras can be reached at 571-272-4517. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
CONSTANTINA E. STAVROU
Examiner
Art Unit 1632
/ANOOP K SINGH/Primary Examiner, Art Unit 1632