DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 13 2026 has been entered.
Receipt of Arguments/Remarks filed on February 13 2026 is acknowledged. Claims 2-4 and 17-19 were/stand cancelled. Claims 1, 5-10 and 14-16 were amended.
Claims 1 and 5-16 are pending.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 5-16 are rejected under 35 U.S.C. 103 as being unpatentable over Seow et al. (WO2018074980, cited on PTO Form 1449) in view of Gilbert et al. (WO2017041050) and Williams et al. (Biotechnology and Bioengineering, 1999, cited on PTO Form 1449).
Applicant Claims
The instant application claims a method of introducing one or more exogenous substances into an immune cell, the method comprising, providing a membrane having a plurality of pores configured to allow the immune cell to pass through, activating the immune cell from an inactivated state to an activated state by exposing the immune cell to one or more activation agents, passing a fluid containing the activated immune cell and the one or more exogenous substances through the plurality of pores to induce a mechanical stress to the activated immune cell and facilitate introduction of the one or more exogenous substances into the activated immune cell, and recirculating the fluid containing the activated immune cell and the one or more exogenous substances such that the same activated immune cell passes through the membrane more than once; wherein the plurality of pores has an average pore diameter which is no less than an average diameter of the activated immune cell nucleus and no more than an average diameter of the activated immune cell, and wherein a specific flow rate for passing the fluid containing the activated immune cell and the one or more exogenous substances through the plurality of pores is from 10 nL/s to 1000 nL/s.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Seow et al. is directed to device, system and method for intracellular delivery of substances. Claimed is a method for introducing one or more substances into a cell (i.e. introducing one or more exogenous substances into a cell) comprising coupling the outlet of a fluid extruding device to an engaging member of an attachment comprising a membrane having a plurality of pores such that the fluid extruding device is in fluid communication with the membrane; passing the one or more substances and the cell through the plurality of pores to facilitate introduction of the one or more substances into the cell by inducing a mechanical stress to the cell (claim 13). The plurality of pores have an average diameter which is from 40 to70% of the average diameter of the cell (claim 21). Claimed is a fluid extruding device for introducing one or more substances into a cell, the device comprising: a fluid flow chamber; a membrane disposed within the fluid flow chamber, the membrane having a plurality of pores configured to allow a cell to pass through while inducing a mechanical stress to the cell such that the introduction of one or more substances into the cell is facilitated; and an actuator for applying a reducing volume in the fluid flow chamber to create a pressure differential across the membrane to facilitate flow of fluid across the membrane (claim 26). It is taught that the method steps can be repeated to pass the cell and one or more substances across the membrane in a single direction for a plurality of times (page 21, lines 4-21) or the steps may be repeated to pass the cell and one or more substances across the membrane in both directions for a plurality of times (pages 21-22, lines 23-32 and 1-5). Concentration of cells is 4 x 104, 2 x 105 and 1 x 106 cells/ml (figure 11). Filter pore sizes taught are 5, 8, 10 or 20 µm (figure 13).
It is taught that cells used in research and commercial production of biologies are frequently engineered to give them new functions that could be useful for understanding basic biology or to produce molecules of therapeutic or commercial interest. One of the most crucial processes that is required to engineer anything within a cell is the ability to get macromolecules, such as DNA (deoxyribonucleic acid) plasmids and proteins, into a cell (page 1, lines 13-19).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Seow et al. teaches the use of a membrane with pores to introduce a substance into a cell, Seow et al. does not teach the claimed flow rate, volume, T-cell or activation. However, these deficiencies are cured by Gilbert et al. and Williams et al.
Gilbert et al. is directed to the intracellular delivery of biomolecules mediated by a surface with pores. Claimed is a method for delivering a compound into a cell comprising passing a cell suspension through a surface containing pores wherein said pores deform the ell thereby causing a perturbation of the cell such that the compound enters the cell (claim 1). The surface is a membrane (claim 2). The pore cross-sectional width is about 20% to about 99% of the cell diameter (claim 9). The cell is an immune cell (claim 63) wherein the immune cell is a T cell (claim 64). The compound can be a nucleic acid (claim 67). The cells are passed through the pores by constant or variable pressure (claim 86) wherein the pressure is applied using a pump (claim 88). The cell suspension comprising an aqueous solution which can be comprised of a variety of different components which do not include conditioning agents (claims 109-110). Concentrations ranging from 50 to 500M/mL (paragraph 0485). Flow rate of 0.001 ml/cm2/sec are suggested (paragraph 0071). The compound can be an antigen. An antigen is a substance that stimulates a specific immune response. Antigens bind to receptors expressed by immune cells such as T cell receptors (paragraph 0091). In some embodiments, the antigen presenting cells produced by the method disclosed herein contribute to increased levels of T and B-cell mediated immunity against a target antigen. Such a method could thus be employed as a means of activating the immune system in response to cancer or infections or in vaccine development. One embodiment of the current subject matter includes a system in which dendritic cells, T cells or B cells, isolated from a patient's blood, are treated by the methods of the present disclosure, ex vivo, to activate them against a particular antigen and then reintroduced into the patient's blood stream. In some embodiments, the cancer antigens are from a patient with a blood cancer, such as B cell lymphoma, or with a cancer such as melanoma or pancreatic cancer. In some embodiments, cancer antigens are delivered directly to the DC cytoplasm, thereby exploiting the MHC-I antigen presentation pathway and inducing a cytotoxic T lymphocyte (CTL) response in the patient. These activated T-cells then seek out and destroy any cancerous cells which express the target antigen. The cells may be contacted with the antigen prior to, during and/or after passing through the surface containing pores (paragraph 0112).
Williams et al. is directed to filtroporation which is a simple, reliable technique for transfection and macromolecular loading of cells in suspension. Specifically cultured Chinese hamster ovary cells suspended in their growth medium were forced by gas pressure through the uniformly sized micropores of filter membranes. This procedure caused transient damage to the plasma membrane which increased the permeability of the cells to exogenous molecules (abstract). It is stated that the choice of micropore size for any cell type is best determined by trial and error. Ideally the size should be narrower than the cell diameter but still permit the cell nucleus to traverse the micropore without a need for excessive gas pressures (page 343, left column, first paragraph).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Seow et al., Gilbert et al. and Williams et al. and utilize activated T cells. One skilled in the art would have been motivated to activate the T cells as these cells are known to seek out and destroy cancerous cells. Therefore, one skilled in the art would have been motivated to active T cells which can then further incorporate additional compounds in order to provide for cells which can be reintroduced into the body to seek out and destroy any cancerous cell as suggested by Gilbert et al. Gilbert et al. states that the cells may be contacted with the antigen prior to passing through the surface containing the pores. This suggests activation of the T cells prior to passing a fluid containing the activated immune cells through the plurality of pores. Since both Seow et al. and Gilbert et al. teach the use of a porous membrane to incorporate substances there is a reasonable expectation of success. Regarding claim 12, the use of the activated T cells by Gilbert et al. suggests the transfected T cells are for use in immunotherapy.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Seow et al., Gilbert et al. and Williams et al. and manipulate the operating parameters such as flow rate, volume of cell suspension, density of cells, pore size as well as the time interval as set forth in instant claim 1, 8 and 10. Since it is the desire of Seow et al., Gilbert et al. and Williams et al. to incorporate substances into cells, one skilled in the art would have been motivated to manipulate the operating conditions to determine the optimal conditions to achieve the desired level of substance incorporated into the cells. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). NOTE: MPEP 2144.05. Furthermore, Williams et al. expressly teaches that determining the ideal pore size is done by trial and error (i.e. routine optimization) and that the size is generally larger than the nucleus but smaller than the cell diameter.
Regarding claim 1, Seow et al. teaches the same membrane with pores. Seow et al. teaches an actuator for applying a reducing volume in the fluid flow chamber to create a pressure differential across the membrane to facilitate flow of fluid across the membrane reading on the instantly claimed passing a fluid. Seow et al. teaches steps can be repeated to pass the cell and one or more substances across the membrane in a single direction for a plurality of times or the steps may be repeated to pass the cell and one or more substances across the membrane in both directions for a plurality of times reading on recirculating the fluid the fluid. Example 5 teach the use of white blood cells reading on the instantly claimed immune cell. As set forth above, Gilbert et al. suggests that the cells can be contacted with an antigen (i.e. activation agent) before passing through the porous surface.
Regarding claim 5, Gilbert et al. suggests suspensions of cells in aqueous solution which do not include conditioning agents.
Regarding claim 6, Seow et al. does not mention pretreating to alter cell membrane pliability.
Regarding claim 7, concentration of cells is 4 x 104, 2 x 105 and 1 x 106 cells/ml (figure 11) and example 1 teaches 1 x 106 cells/ml reading on the instantly claimed no less than 1 x 105 cells/ml.
Regarding claim 9, example 1 shows the use of OptiMEM reduced serum medium reading on the instantly claimed substantially free of serum.
Regarding claim 10, figure 16 shows a 5 minute recovery time reading on the instantly claimed at least 5 minutes.
Regarding claim 13, example 5 utilizes peGFP-C1 (a plasmid reading on a nucleic acid). Example 7 utilizes a DNA oligonucleotide and siRNA both reading on nucleic acid.
Regarding claims 14-16, these claims are directed to wherein clauses that merely state the result of the limitations in the claims. Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) Note MPEP 2111.04. In these claims the wherein clause does not inform the artisan of how the passing a fluid containing the immune cell and one or more exogenous substances steps is performed; rather, the wherein clause merely characterizes the results of those steps. Seow et al. teaches that the cell may remain in a viable form after passing through the membrane (page 11, lines 4-5).
Response to Arguments
Applicants’ arguments filed February 13 2026 have been fully considered but they are not persuasive.
Applicants argue (page 5) that (1) advantageously, the present application discloses that specific and careful control of these parameters enables effective transfection and cell recovery in various embodiments of the present application, which are typically mutually exclusive goals. Surprisingly, the synergistic effect of choosing a pore size that is larger than the cell nucleus diameter and subjecting the cells to a specific flow rate at the pores that is suitable for activated immune cells unexpectedly improves transfection and cell recovery rate of activated immune cells (See paragraphs [0111]-[0112] of the Present Application).
Regarding Applicants’ first argument, firstly, the specification as originally filed does not contain paragraph numbers. Perhaps Applicants mean the paragraphs in the PGPUB. However, these paragraphs of the PGPUB do not teach any surprising, synergistic or unexpected effect. In fact, nowhere in the four corners of the specification is any form of the word synergy, surprising or unexpected recited. The fundamental requirement is that “any superior property must be unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). MPEP 2143. However, other than statements by the Attorney, no evidence has been provided that the results are unexpected. “The arguments of counsel cannot take the place of evidence in the record.” In re Schulze, 346 F.2d 600, 145 USPQ 716, 718 (CCPA 1965), In re Huang, 40 USPQ 2d 1685 (Fed. Cir. 1996), In re De Blauwe et al., 222 USPQ 191, (Fed. Cir. 1984). MPEP 2145. Applicant has not provided any factual evidence establishing unobviousness. Therefore, if Applicants wish to rely on an unexpected effect for establishing unobviousness, Applicants must clearly indicate where the explanation for the unexpected effect is found.
Applicants argue (page 6-7) that (2) the cited reference do not teach or suggest activating the immune cell from an inactivated state to an activated state by exposing the immune cell to one or more activation agent. The instant claims require the immune cell to be activated from an inactivated state prior to passing the activated immune cells and one or more exogenous substance through a membrane having a plurality of pores. It is argued that the reasoning provided by the Office improperly conflates the downstream biological function of activated immune cells with a claimed upstream process. No where in Gilbert is there any disclosure, suggestion or motivation to pre-activate immune cells before subjecting them to repeated mechanical deformation across a porous membrane. It is argued that activation induces a measurable increase in size. These changes enable the claimed selection of membrane pore sizes. Unactivated immune cells and their nuclei have dimensions that are very close leaving minimal margin for selecting a pore size. Neither Seow nor Gilbert recognizes or exploits this relationship.
Regarding Applicants’ second argument, firstly, nowhere in the arguments do Applicants point where in the specification this relationship between activation and pore size is discussed. Secondly, Gilbert et al. expressly states the cells may be contacted with the antigen prior to, during and/or after passing through the surface containing pores (paragraph 0112). Therefore, the cited prior art clearly suggest activation of the cells prior to passing through the pores. Regarding the pore size, as set forth above Williams et al. makes it clear that determining the pore size is done by trial and error. One skilled in the art would recognize that manipulation of the pore size must be done in order to achieve the desired effect. Williams also recognizes that the size should be larger than the nucleus but less than the diameter. Therefore, selection of this pore size is obvious in light of these teachings. Determining the optimal pore size is not an unexpected effect sufficient to establish unobviousness.
Applicants argue (page 8-9) that (3) Seow and/or Gilbert do not teach or suggest the technical effect of a plurality of pores having an average pore diameter that is no less than an average diameter of the activated immune cell nucleus.
Regarding Applicants’ third argument, in order to more precisely address the arguments and claim limitations regarding the pore size, Williams et al. is cited in the rejection above. Williams et al. which is also directed to incorporating exogenous material into cells makes it clear that the choice of micropore size for any cell type is best determined by trial and error. Ideally the size should be narrower than the cell diameter but still permit the cell nucleus to traverse the micropore without a need for excessive gas pressures. This provides an express teaching which is in line with the instant claim limitation of pores having an average pore diameter which is not less than the average diameter of the cell nucleus and no more than an average diameter of the cell.
Applicant argue (page 9-11) that (4) the cited references do not teach or suggest a specific flow rate from 10 nL/s to 1000 nL/s. Gilbert does not provide meaningful teaching or guidance on the claimed flow rate. The range of Gilbert is so broad that when the disclosures are considered together they encompass flow conditions spanning many orders of magnitude. Gilbert provides no guidance on how flow rate correlates with pore size, immune cell type and nuclear dimensions. The reference does not identify flow rate as a critical parameter, does not define lower or upper bounds relevant to immune cell viability, does not disclose an optimization strategy that would lead a skilled person to the presently claimed narrow subrange. Gilbert only exemplifies applied pressure without any disclosure of the resulting volumetric flow rate. Gilbert does not explain how pressure translate into flow rate. Seow does not provide guidance for selecting a flow rate. Impermissible hindsight is argued.
Regarding Applicants’ fourth argument, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Gilbert et al. expressly claims that the fluid flow directs the cells through the pores (claim 100). Gilbert et al. makes it clear that the dimensions of the pore, the entrance angle of the pore, the surface properties of the pores (e.g. roughness, chemical modification, hydrophilic, hydrophobic, etc.), the operating flow speeds (e.g., cell transit time to the pore), the cell concentration, the concentration of the compound in the cell suspension, and the amount of time that the cell recovers or incubates after passing through the pores can affect the passage of the delivered compound into the cell. Additional parameters influencing the delivery of the compound into the cell can include the velocity of the cell in the pore, the shear rate in the pore, the velocity component that is perpendicular to flow velocity, and time in the pore. Such parameters can be designed to control delivery of the compound (paragraph 0104). Pressure can be applied to drive the cells through the pores (paragraph 0107). Since these are all well recognized parameters, absent a demonstration of the criticality, it is the examiners position that manipulation of the parameters to achieve a desired effect is obvious. Note. MPEP 2144.05. This section of the MPEP makes it clear that modification of a process parameter may be patentable if it produces a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. Nothing in the arguments establish an unexpected effect or criticality with regards to the flow rate, the argument is merely that the range taught in the prior art is much broader than the instant claims. This section of the MPEP makes it clear that One factor that may weigh against maintaining an obviousness rejection based on optimization of a variable disclosed in a range in the prior art is where an applicant establishes that the prior art disclosure of the variable is within a range that is so broad in light of the dissimilar characteristics of the members of the range as to not invite optimization by one of skill in the art. Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1306, 99 USPQ2d 1713, 1725 (Fed. Cir. 2011) (holding that ordinary motivation to optimize did not apply where disclosure was 68,000 protein variants including 2,332 amino acids where one of skill in the art would appreciate that the claimed truncated proteins vary enormously in structure). See MPEP §§ 2131.02, 2131.03, and 2144.08 for additional discussion on consideration of range limitations. Here again nothing establishes an unexpected effect.
Applicants argue (page 11) that (5) example embodiments of the presently claimed method demonstrate a nonobvious control of multiple interrelated parameters, including pore size, flow rate, and immune cell activation, to achieve a careful balance between two competing considerations: minimizing cell death while ensuring efficient intracellular delivery. Example embodiments of the presently claimed method achieve this balance by selecting an average pore diameter that is sufficiently large to reduce mechanical damage to cells, yet small enough to induce the necessary level of mechanical stress for effective molecular entry, in the context of immune cells whose physical dimensions have been deliberately modified through a controlled activation step performed prior to transfection. It is argued that coordinated control of pore size and flow rate is not a matter of routine optimization, but the result of systematic investigation and inventive insight. Without the benefit of the present application, a person skilled in the art would not have recognized the specific interplay between these parameters, nor appreciated that upstream activation of immune cells could be used to modulate cell morphology in a manner that enables and constrains the selection of effective pore sizes and flow conditions, thereby allowing both high viability and high transfection efficiency to be achieved simultaneously. Taken together, these features operate in a coordinated and nonobvious manner to achieve a surprising technical effect of high-efficiency delivery with high cell viability that is neither taught nor suggested by any of the cited documents. Indeed, the examples in the Examples section of the present application demonstrate that the method may achieve high transfection efficiency (e.g., more than 75%) and cell recovery (e.g., about 70% of cells recovered after two passes). See Present Application, paragraph [0127]. The combination of these parameters, each carefully optimized and functionally interrelated, represents a clear inventive step beyond the teachings of the cited documents.
Regarding Applicants’ fifth argument, firstly as indicated above the present application as filed did not include paragraph numbers. Perhaps Applicants are referring to paragraph 0127 of the PGPUB which states the exact same language as the response. However, this paragraph merely establish the effect of the present invention not an unexpected or unobvious effect. Secondly, on one hand applicants argue that these parameters are not determined by routine optimization but in the last statement states that these parameters are carefully optimized. This creates confusion to the argument being made by Applicants. Furthermore, as set forth above, Williams makes it clear that trial and error is utilized to determine the correct pore size and it must be greater than the nucleus but less than the diameter of the cell. While Applicants keep arguing there is an unexpected effect, in order to establish an unexpected effect first the expected effect must be established and second the results must be compared to embodiments outside the claimed scope to establish an unexpected effect. The arguments by applicants are just that the claimed invention works, not that the results achieved (i.e. high transfection efficiency and cell recovery) are unexpected.
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 1 and 5-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-7, 9-11, 13-14, 17-19, 21-22, 23 and 26 of copending Application No. 16343503 (USPGPUB No. 20190264229) in view of Gilbert et al. and Williams et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
This is a provisional nonstatutory double patenting rejection.
The instant application claims a method of introducing one or more exogenous substances into an immune cell, the method comprising, providing a membrane having a plurality of pores configured to allow the immune cell to pass through, activating the immune cell from an inactivated state to an activated state by exposing the immune cell to one or more activation agents, passing a fluid containing the activated immune cell and the one or more exogenous substances through the plurality of pores to induce a mechanical stress to the activated immune cell and facilitate introduction of the one or more exogenous substances into the activated immune cell, and recirculating the fluid containing the activated immune cell and the one or more exogenous substances such that the same activated immune cell passes through the membrane more than once; wherein the plurality of pores has an average pore diameter which is no less than an average diameter of the activated immune cell nucleus and no more than an average diameter of the activated immune cell, and wherein a specific flow rate for passing the fluid containing the activated immune cell and the one or more exogenous substances through the plurality of pores is from 10 nL/s to 1000 nL/s.
Copending ‘503 claims a method for introducing one or more substances into a cell, the method comprising: detachably coupling an outlet of a fluid extruding device to an engaging member of an attachment comprising a membrane having a plurality of pores, such that the fluid extruding device is in fluid communication with the membrane; and passing the one or more substances and the cell through the plurality of pores to facilitate introduction of the one or more substances into the cell by inducing a mechanical stress to the cell, wherein the fluid extruding device is configured to extrude fluid via mechanical actuation (claim 13). The method further comprising forming a substantially air tight seal when the engaging member is coupled to the outlet of the fluid extruding device, optionally wherein the engaging member comprises a pliant material for engaging a circumference of the outlet of the fluid extruding device, and optionally wherein the step of detachably coupling the outlet of the fluid extruding device to the engaging member of the attachment comprises coupling via a luer lock fitting (claim 14). The fluid extruding device is selected from the group consisting of a pipette, manually-operated micropipette, electronically- operated micropipette, burette, syringe, automated/semi-automated liquid handling system and liquid handling robotics (claim 17). The plurality of pores has an average pore diameter which is from 40% to 70% of an average diameter of the cell (claim 21). Claimed is a fluid extruding device for introducing one or more substances into a cell, the fluid extruding device comprising: a fluid flow chamber; a membrane disposed within the fluid flow chamber, the membrane having a plurality of pores configured to allow the cell and the one or more substances to pass through while inducing a mechanical stress to the cell such that an introduction of the one or more substances into the cell is facilitated; one or more unidirectional valves disposed within the fluid flow chamber to allow unidirectional flow of the cell and the one or more substances across the membrane in a single direction for a plurality of times, when a volume of fluid on a side of the membrane is reduced and when a volume of space on the same side of the membrane is increased, in a repeated manner; and a mechanical actuator for applying a reducing volume in the fluid flow chamber to create a pressure differential across the membrane to facilitate flow of fluid across the membrane.
While Copending ‘503 claims incorporating a substance into a cell, Copending ‘503 does not claim immune cells, the claimed flow rate, volume, T-cell or activation. However, these deficiencies are cured by Gilbert et al. and Williams et al.
Gilbert et al. is directed to the intracellular delivery of biomolecules mediated by a surface with pores. Claimed is a method for delivering a compound into a cell comprising passing a cell suspension through a surface containing pores wherein said pores deform the ell thereby causing a perturbation of the cell such that the compound enters the cell (claim 1). The surface is a membrane (claim 2). The pore cross-sectional width is about 20% to about 99% of the cell diameter (claim 9). The cell is an immune cell (claim 63) wherein the immune cell is a T cell (claim 64). The compound can be a nucleic acid (claim 67). The cells are passed through the pores by constant or variable pressure (claim 86) wherein the pressure is applied using a pump (claim 88). The cell suspension comprising an aqueous solution which can be comprised of a variety of different components which do not include conditioning agents (claims 109-110). Concentrations ranging from 50 to 500M/mL (paragraph 0485). Flow rate of 0.001 ml/cm2/sec are suggested (paragraph 0071). The compound can be an antigen. An antigen is a substance that stimulates a specific immune response. Antigens bind to receptors expressed by immune cells such as T cell receptors (paragraph 0091). In some embodiments, the antigen presenting cells produced by the method disclosed herein contribute to increased levels of T and B-cell mediated immunity against a target antigen. Such a method could thus be employed as a means of activating the immune system in response to cancer or infections or in vaccine development. One embodiment of the current subject matter includes a system in which dendritic cells, T cells or B cells, isolated from a patient's blood, are treated by the methods of the present disclosure, ex vivo, to activate them against a particular antigen and then reintroduced into the patient's blood stream. In some embodiments, the cancer antigens are from a patient with a blood cancer, such as B cell lymphoma, or with a cancer such as melanoma or pancreatic cancer. In some embodiments, cancer antigens are delivered directly to the DC cytoplasm, thereby exploiting the MHC-I antigen presentation pathway and inducing a cytotoxic T lymphocyte (CTL) response in the patient. These activated T-cells then seek out and destroy any cancerous cells which express the target antigen (paragraph 0112). The cells may be contacted with the antigen prior to, during and/or after passing through the surface containing pores (paragraph 0112).
Williams et al. is directed to filtroporation which is a simple, reliable technique for transfection and macromolecular loading of cells in suspension. Specifically cultured Chinese hamster ovary cells suspended in their growth medium were forced by gas pressure through the uniformly sized micropores of filter membranes. This procedure caused transient damage to the plasma membrane which increased the permeability of the cells to exogenous molecules (abstract). It is stated that the choice of micropore size for any cell type is best determined by trial and error. Ideally the size should be narrower than the cell diameter but still permit the cell nucleus to traverse the micropore without a need for excessive gas pressures (page 343, left column, first paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of copending ‘503, Gilbert et al. and Williams et al. and utilize activated T cells. One skilled in the art would have been motivated activated T cells as these cells are known to seek out and destroy cancerous cells. Therefore, one skilled in the art would have been motivated to active T cells which can then further incorporate additional compounds in order to provide for cells which can be reintroduced into the body to seek out and destroy any cancerous cell as suggested by Gilbert et al. Gilbert et al. states that the cells may be contacted with the antigen prior to passing through the surface containing the pores. This suggests activation of the T cells prior to passing a fluid containing the activated immune cells through the plurality of pores. Since both copending ‘503 and Gilbert et al. teach the use of a porous membrane to incorporate substances there is a reasonable expectation of success. Regarding claim 12, the use of the activated T cells by Gilbert et al. suggests the transfected T cells are for use in immunotherapy.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of copending ‘503, Gilbert et al. and Williams et al. and manipulate the operating parameters such as flow rate, volume of cell suspension, pore size, time between flows, density of cells, as well as the time interval. Since it is the desire of copending ‘503, Gilbert et al. and Williams et al. to incorporate substances into cells, one skilled in the art would have been motivated to manipulate the operating conditions to determine the optimal conditions to achieve the desired level of substance incorporated into the cells. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). NOTE: MPEP 2144.05. Furthermore, Williams et al. expressly teaches that determining the ideal pore size is done by trial and error (i.e. routine optimization) and that the size is generally larger than the nucleus but smaller than the cell diameter.
Regarding claim 1, copending ‘503 claims the same membrane. Copending ‘503 claims one or more unidirectional values to allow unidirectional flow of the cell and the one or more substances across the membrane for a plurality of times (reading on recirculation).
Regarding claim 5 or 9, Gilbert et al. suggests suspensions of cells in aqueous solution which do not include conditioning agents or serum.
Regarding claim 6, copending ‘503 does not mention pretreating to alter cell membrane pliability.
Regarding claim 7, Gilbert et al. teaches a concentration of cells ranging from 10 to about 1012 cells/ml (paragraph 00105).
Regarding claim 13, Gilbert et al. teaches the substance can be a nucleic acid.
Regarding claims 14-16, these claims are directed to wherein clauses that merely state the result of the limitations in the claims. Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) Note MPEP 2111.04. In these claims the wherein clause does not inform the artisan of how the passing a fluid containing the immune cell and one or more exogenous substances steps is performed; rather, the wherein clause merely characterizes the results of those steps.
Response to Arguments
Applicants’ arguments filed February 13 2026 have been fully considered but they are not persuasive.
Applicants argue that for at least similar reasons the amended claims are not obvious over the copending application and Gilbert.
Applicants’ arguments are not persuasive for the same reasons set forth above.
Conclusion
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/ABIGAIL VANHORN/Primary Examiner, Art Unit 1636
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