Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 29-48 are currently pending in this application.
Election/Restrictions
Election was made without traverse of Group I, claims 1-4, 6, 8-11, 13, 16-17, 19 and 22, in the reply filed on Aug. 5, 2025, and claims 42-47 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected subject matter, there being no allowable generic or linking claim. Claims 29-41 and 48 have been considered on the merits.
Previous Rejections
Status of the rejections: the previous rejections pursuant to 112(a), 102, 103, and double patenting are withdrawn in view of the claim amendments. The previous rejection of claim 3 pursuant to 112(b) is moot in view of the canceling of claim 3.
Claim Interpretation
In the claims, the term “cell culture bag” is interpreted as encompassing any closable container that is gas permeable regardless of shape so long as the outer material is flexible in some manner, such as any bag-like or sac-like container comprising a flexible film or membrane layer on the interior (see instant [0016]-[0018] and pg. 2). In the claims, the “on the lower face” of the bag are understood to preferably but not necessarily be in the interior of the bag, i.e., on the surface of the interior-facing face of the lower face as opposed to on an “outer” lower face (see e.g., [0005]).
In claim 29, the term “recess” is interpreted as encompassing any indentation, concave site, wrinkle, or localized curvature in the bag, e.g., an uneven contour, irregular topography, area surrounding a protrusion, kink, or warpage of dimensions at least large enough to accommodate two or more insulin secreting cells, e.g., having a width of about 10-250 µm (see instant [0020], [0030]).
In claim 29, the phrase “stirring the contents” is interpreted as encompassing any type of agitation or motion resulting in the active mixing of the contents (i.e., the medium and cells), such as, e.g., using a physical stirrer (rotating or tumbling), rocking, vibrating, orbital shaking, and/or pressurized fluid flow forces, including bubblers.
In claim 29, the term “recovering” is interpreted as meaning removal of cultured cell aggregates from the bag, such as, e.g., also optionally purifying/isolating cell aggregates from the culture medium.
In claim 29, the term “cells” is interpreted as encompassing insulin-secreting cells in the form of a cell aggregate(s) or only completely dissociated cells as well as mixtures of both, while the term “formed cell aggregates” is interpreted as only those aggregates created during the (1) adding steps. In claim 29, the term “formed” is not interpreted as limiting beyond timing relative to the stirring and culturing under pressure active steps. Thus, “formed” is not structurally limiting as the preamble recites a method for producing cell aggregates using a cell culture bag and, thusly, the performance of all the recited active steps of claim 29 inherently produces cell aggregates considered “formed” absent evidence to the contrary. The “formed cell aggregates” may optionally encompass cells that are not insulin-secreting cells.
In claim 31-32, the term “particle size” is interpreted as meaning the maximum diameter/length of each cell aggregate.
In claim 33, the phrase “200 to 2000 cells are included per recovered cell aggregate” is interpreted merely as requiring each recovered aggregate to comprise at least 200 cells, such as 100% insulin-secreting cells. Further, this means claim 29 encompasses cellular aggregates of any number of cells, such as 2 to 2 trillion.
In claim 48, the verb “sandwiching” is interpreted as simultaneously applying pressure in at least two directions from opposing sides (faces) as oriented by the positions of the placement table and pressing member, and optionally aligned with the upper and lower faces of the culture bag as the orientation of the bag is not limited or set by the claims, nor are the respective “upper” and/or “lower” faces thereof other than being generally in opposition.
Claim Rejections - 35 USC § 112(a) - Written Description (new)
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 29-41 and 48 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claimed invention as a whole is not adequately described if the claims require essential or critical elements that are not adequately described in the specification and that is not conventional in the art as of applicant’s effective filing date. Possession may be shown by actual reduction to practice, clear depiction of the invention in a detailed drawing, or by describing the invention with sufficient relevant identifying characteristics such that a person skilled in the art would recognize that the inventor had possession of the claimed invention. Pfaff v. Wells Electronics, Inc., 48 USPQ2d 1641,1646 (1998).
In making a determination of whether the application complies with the written description requirement under 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, it is necessary to understand what Applicant is claiming and what Applicant has possession of.
In view of the specification, the claims are directed to a method of producing insulin-secreting cell aggregates using a cell culture bag comprising a plurality of recesses wherein the method comprises a “pressing” to apply any pressure to the bag in at least one single direction of any orientation and “maintaining” the pressure until the cell aggregates are recovered from the bag thereby ending the method. The claims are broad in that the term “pressing” in at least one direction to accomplish applying a pressure encompasses any type of “pressing.”
The instant specification defines the phrase “applying a pressure” as encompassing equalizing a liquid depth within a cell culture bag containing cells ([0030]). The term “pressing” encompasses any type of pressing, including merely by the self-weight of a pressing member resulting equalizing the liquid depth of a liquid in the cell culture bag, e.g., smoothing out a kink, wrinkle, bend or warpage in either the upper and/or lower face of the bag ([0030]). In view of new claim 36 and 48, the method of claim 29 encompasses wherein the bag is not sandwiched during the culturing so long as a liquid depth is equalized by a pressing. Thus, “pressing” also encompasses pushing down by a human finger on the outside of the bag as well as sandwiching the bag between a pressing member and a the top of a placement table for a duration subjectively considered as “to completion” (see 112(b) section below).
In analyzing whether the written description requirement is met for genus claims, it is first determined whether a representative number of species have been described. In the instant case, the specification [0051]-[0052] describes different types of pressure, such as by any amplitude that can equalize a liquid depth or via a cell culture apparatus, in an unlimited way that depends on the size and depth of the culture bag. However the specification warns to avoid pressures that are too large, such as inhibiting cell survival or proliferation, without further guidance ([0052]).
The specification fails to provide a single working example wherein the pressing is anything other than “sandwiching” as partially described in claim 48: the cell culture bag was oriented with the recesses turned down and the “bag was placed on the placement table of the culture apparatus, and a pressure of 2 kgf was applied from the upper face of the bag by the pressing member.” Examples 1-2, FIG. 3-5. As shown in the instant figures, the sandwiching orientation is intentionally aligned with uniformly shaped descending recesses (4ʹ) of the lower face of the bag such that pressure is applied from above (downward arrows) due to the pressing member (6) and from below due to the immovable placement table (5ʹ) or a flat placement face (5aʹ) thereof regardless of the presence of any openings (5b). No working example is described for other alignments, recess positions, media that cannot flow/deform under pressure, or wherein pressure is only applied from above or below as encompassed by dependent claim 36.
The prior art teaches applying pressure in the form of a uniform gravitational force during an entire culturing period, pressing down on a flexible sac-like culture bag to promote cell adhesion to the inner bag surface and suppress detachment with a rectangular plastic/glass plate the size of the bag, and using pressure from a plastic/metal plate the size of the bag to form the recesses in the culture bag by temporary deformation, which can be removed with the release of pressure (instant [0004]-[0007], Suenaga at (6) in FIG. 2-5, 7-8; Kim at (41) in FIG. 2-9; Li; WO2016208526A1, IDS ref., at (4) in FIG. 5, 8, 10, 14). However the prior art does not teach the full scope of the term “pressing” as used in the claims nor maintenance of pressing throughout an arbitrary culturing duration of insulin-secreting cell aggregates, which could be for milliseconds or days. Thus, there is unpredictability for other pressings (e.g., by localized finger pressure or short durations), alignments (e.g., perpendicular to the recesses), recess positions (e.g., avoiding localized pressing), media that cannot flow/deform under pressure (e.g., preventing pressing from transferring pressure to the cells relative to the recesses), or wherein pressing is not due to a sandwiching process constraining the shape of the bag in multiple dimensions at once (e.g., wherein the pressing does not ensure any alteration of cell dispersion, Brownian motion, or aggregation into recesses).
Given the lack of working examples without sandwiching and lack of prophetic description across the full scope of pressing (e.g., not limited by alignment, duration, or effect on cells relative to recesses), the skilled artisan could not rely upon the disclosure in the specification such that the specification would sufficiently describe that Applicant was in possession of the full scope of the claimed methods encompassed by the broad term “pressing” (e.g., in any direction or any duration) such that the pressing would effectuate anything regarding cell aggregation or culturing. The dependent claims are included in the basis of the rejection because they do not correct the primary deficiencies of the independent claim for all parameters. Claim 48 is deficient at least for the reason(s) that the sandwiching alignment, recess positions and/or recess orientations are not set. Adequate written description of a method requires more than statements of broad steps recited at a high level of generality yet purporting to achieve specific results from practicing the inventio as in claims 31-33.
35 USC § 112(a) – Scope of Enablement (new)
Claims 29-41 and 48 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while enabling wherein the cell is a mammalian cell, does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to produce cell aggregates using any insulin-secreting cell.
Enablement is considered in view of the Wands factors (MPEP 2164.01 (a)). The court in Wands states that "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 104). 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 weighting many factual considerations." (Wands, 8 USPQ2d 1404).
The factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation required is “undue” include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Furthermore, the USPTO does not have laboratory facilities to test if an invention will function as claimed when working examples are not disclosed in the specification. Therefore, enablement issues are raised and discussed based on the state of knowledge pertinent to an art at the time of the invention. And thus, skepticism raised in the enablement rejections are those raised in the art by artisans of expertise.
All of the Wands factors have been considered with regard to the instant claims, with the most relevant factors discussed below.
Nature and Breadth of the invention:
The claims are directed to methods of producing and recovering cell aggregates that may consist entirely of insulin-secreting cells wherein the insulin-secreting cell type is unlimited. The term “insulin-secreting” cell is not defined by the instant application except for that it encompasses cells differentiated from pluripotent stem cells (see [0064]-[0065], [0076]).
The state of the art:
The prior art teaches many types of insulin-secreting cells, such as engineered bacteria, yeast, insect and plant cells (Baeshen et al., Microb Cell Fact 13: 141 (2014) at Table 1, Fig. 1, pg. 5-6). However the prior art does not teach the full scope of any insulin-secreting cell can be aggregated in bag culture regardless of the presence of any recesses in the bag or pressure being applied by pressing. To the contrary, the prior art teaches some of these cells, like E. coli, rarely aggregate under healthy growth culturing conditions (Roostalu et al., BMC Microbiol 8: 68 (2008) at Fig. 2, pg. 9, right col., 1st para.).
The amount of direction and guidance and working examples provided by Applicant:
The disclosure provided by the applicant, in view of prior art, must encompass a wide area of knowledge to a reasonably comprehensive extent to enable cell aggregation of any insulin-secreting cell type by the recited methods, such as to form aggregates specifically having 200-2000 cells (claim 33) or more. In other words, each of these aspects must be shown to a reasonable extent so that one of the ordinary skills in the art would be able to practice the invention without any undue burden being on such Artisan.
The instant application shows two working examples only with in vitro differentiated, human, induced pluripotent stem cells (derived from the Ff-I14s04 or 1231A3 line) (Examples 1-2, FIG. 6-8). From this empirical data, it is not predictable that all other insulin-producing cell types (e.g., E. coli, S. cerevisiae, S. pastoris, or A. thaliana) will form cellular aggregates during the culturing step of the claimed method. Thus, this evidence is only found in working embodiments and as suggested by the prior art for other related cell types (e.g., mammalian cells). Thus, the scope of any insulin-secreting cell as encompassed by the claims is merely prophetic. Extensive experimentation would be required to determine how to aggregate other insulin-secreting cell types, such as certain unicellular species of bacteria and fungi, by the claimed method without guidance from the human cell examples and may never be achieved across the full scope of the claims.
Given the lack of working examples, the limited guidance provided in the specification, the lack of guidance in the prior art, and the broad scope of the claims with regard to any such insulin-secreting cell, undue experimentation would have been required for one skilled in the art to perform the full scope of the claimed invention for non-mammalian cells.
Claim Rejections - 35 USC § 112(b) (maintained, new)
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 29-41 and 48 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 pre-AIA the applicant regards as the invention.
The claims are interpreted as provided in a previous section.
Claim 29 recites the phrase “maintained to the completion of culture,” however what constitutes “completion” of said culture is ambiguous beyond the presence of “formed cell aggregates,” which could have been introduced by the (1) adding step or be formed initially in small amounts insufficient to be considered “completion.” The term “completion” in the current claim is subjective and a matter of intent or preference. Claims 29-41 and 48 are included in this rejection for depending from indefinite claim 29.
Claims 37 and 38 recites the phrase a “depth:diameter ratio of the recesses” or “depth of the recesses”, respectively, each of which is ambiguous and unclear as to whether the limitation applies to all the recesses collectively or to each recess individually, such as wherein one recess is contained within a larger recess, e.g., an indentation or concave site within a localized curvature, wrinkle, contour, kink or warpage in the bag.
Claim 40 and 41 recites the cells are added in an amount of 1 x 104 to 5 x 106 “cells/cm2” to the cell culture bag, which is ambiguous and unclear as to what the per cm2 is referring to, which could be the entire surface area of the bag, the 2-D surface area of a liquid contained in the bag, or something else due to the bag being flexible and having the ability to change shape and total interior surface area, such as during the addition of the cells or upon application of pressure.
Claim 41 recites the “lower face unit area”, which is ambiguous and unclear as to what area of the lower face is being referred, such as the entire interior lower face or just the area covered by liquid. Furthermore, the precise boundaries of the lower face in a flexible bag is not always clear or stable, such as due to the bag being flexible or the boundary between the lower face and the sides or in a flexible bag having a round bottom shape.
Claim 48 recites “the upper face” and “the lower face” regarding a placement table and pressing member, respectively, as well as “the pressing member.” Each of these terms lacks sufficient antecedent basis within either claim 29 or claim 48.
Response to arguments
In the response filed 2/27/26, Applicant argues claims 37-38 and 41 are definite to one of ordinary skill in the art. This was not found persuasive.
Regarding claims 37-38, applicant argues that a “depth:diameter ratio of the recesses” is “clearly” limited to a plurality of recesses, meaning all the recesses present collectively. However this is not clear from the plain claim language’s ambiguity. Furthermore, applicant argues the is no reason that a recess would be within another recess; however as noted previously and herein, the term “recesses” or singular “recess” encompasses any indentation, concave site, wrinkle, or localized curvature in the cell culture bag, e.g., an uneven contour, irregular topography, area surrounding a protrusion, kink, or warpage of dimensions at least large enough to accommodate two or more insulin secreting cells. Thus, nothing precludes one or more recesses to be within a larger recess, such as a smaller concave site within a larger wrinkle in the bag.
Regarding claim 41, applicant argues “lower face unit area” would be readily understood by one of ordinary skill in the art to only refer to the “inner” surface of the “lower” face of the culture bag. However as noted above, the boundaries of the “lower” face are not always clear and can be changed by applying pressure and, further, smaller recesses can be contained within larger recesses making this term more incoherent. Does this refer to the total cell culture surface area during the culturing under a maintained pressure (e.g., covered with a liquid medium) or merely to the design of the bag regardless of the situation during the performance of the method, i.e., during stirring, culturing and/or recovering.
Claim Rejections - 35 USC § 103 (new)
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 29-33, 36-38, and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Berkland (US20140219997A1) in view of Suenaga (WO2018230544A1).
The claims are interpreted as provided in a previous section.
Regarding claim 29, Berkland teaches a method of in vitro production of viable islets (cell aggregates comprising insulin-secreting beta cells), the method comprising culturing for days islet cells, or aggregates (clusters) thereof, in liquid culture in a gas permeable flexible container (PDMS) with a bottom surface comprising uniform, rounded recesses (divots) that control aggregation/aggregate size based on the dimensions of the recesses, such as forming new aggregates that are spherical in shape (Abstract, [0092]-[0094], [0099], FIG. 24, [0066], [0017]-[0019], [0197]-[0202], [0209]-[0210], FIG. 14, 20-21, 24; [0061], [0056], FIG. 13).
Berkland does not teach using a cell culture bag format nor pressing the bag in at least one direction for the duration of a culturing.
However Suenaga teaches methods for obtaining cultured spherical cell aggregates, the method comprising (a) adding cells and medium (S) to a cell culture bag (1 or 2) having an upper face and a lower face and comprising a plurality of recesses (4) on the interior surface of the lower face (22); (b) stirring the cells and medium due to medium flow and exchange; (c) culturing the cells while applying downward pressure using a pressing member (6) to sandwich the subset of the bag comprising the recesses into a pressed form during culturing (flat-culturing), e.g., to prevent cell movement (FIG. 2); and (d) recovering cell aggregates (C) formed by the culturing, such as using an increased flow rate (Abstract; pg. 4, para. 4 and 6; FIGs. 1-2 and 11; pg. 11; pg. 8, para. 7; pg. 6, para. 3 and last para.).
It would have been prima facie obvious to one of ordinary skill in the art before the effective time of filing to modify a method taught by Berkland of culturing insulin-secreting cell (islet) spherical aggregates in recesses using a culture bag having a lower face comprising the recesses as taught Suenaga and applying a pressure by sandwiching the bag to prevent cell loss and promote cell aggregation to the dimensions of the recesses. One of ordinary skill in the art with the goal of creating islet cell aggregates of a controlled size would be motivated to use prior art methods already shown to work as in Suenaga for accomplishing prior art uses to control cell aggregate size formation.
Regarding claims 30-33, for purposes of applying prior art, the intended results in claims 30-33 are considered but none of these dependent claims implies anything more to the active steps positively recited in claim 29 (see MPEP 2111.04), as there is no implied additional active step of counting or sizing the aggregates during the recovery for any of claims 30-32. Moreover regarding claim 31, both Berkland ([0092]-[0093], [0061], [0102]) and Suenaga (pg. 2, para. 6) teach the produced cellular aggregates can form a uniform size due physical constraints of the chosen dimensions when using uniformly-sized recesses, and Berkland teaches using dimensions of at least 150 µm accommodating aggregates having a diameter of 140 µm or greater ([0093]). Note, where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 36, Suenaga teaches applying pressure from above and below, e.g., “sandwiching” (pg. 13-14, FIG. 2-6 and 8).
Regarding claims 37-38, Berkland teaches wherein the recess dimension is 50-200 µm in diameter and 50-150 µm deep ([0017]), which encompasses depth:diameter ratios of 1:1.5 to 2.5 and depths of 150 µm. Note, where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 39, Suenaga teaches the number and density of recesses is not necessarily limited by the method which could be scaled higher ([0193]). Furthermore, Suenaga teaches using a bag of dimensions around 50-500 mm in length and width and a liquid depth of 0.1-10 mm during use, at least above the recesses (pg. 6, para. 1-4, FIG. 1). Such a culture bag may have a volume of well over 2,500 mm3 to 250 cm3 and is capable of comprising a liquid depth of 1.5-6 mm or more, which may depending on the degree of pressure applied during sandwiching. Note, where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 48, Suenaga teaches sandwiching the bag between the bottom of a pressing member (6a) and the upper face of a placement table (placement surface) (5a) (Abstract; pg. 7, 3rd to last para., to pg. 8, 1st para.; FIG. 2-6 and 8, pg. 13-14).
Claims 29-38 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Berkland (US20140219997A1) in view of Suenaga (WO2018230544A1) as applied above, and further in view of Kim (JP2016086774A; IDS ref.).
Regarding claim 34, the combination of Berkland and Suenaga does not teach flipping the bag for recovering the cell aggregates,
However Kim teaches methods (pg. 3, 2nd para.; FIG. 1-3) for obtaining cell aggregates (p. 7, para. 6), the method comprising (a) enclosing cells and medium in a cell culture bag (2) (pg. 4, para. 5) having an upper face and a lower face and comprising a plurality of recesses (pg. 13, para. 4) on the interior surface of the lower face (22); (b) stirring the cells and medium, such as by repeatedly exchanging the medium (pg. 8, para. 7; FIG. 4-5); and (c) recovering cell aggregates formed by the culturing (e.g., peeling off lumps) using a large frictional/shear force or an injection of a cell detachment liquid and turning the bag upside down (p. 7, para. 6; pg. 10, para. 4-5; FIG. 6(c)).
It would have been prima facie obvious to one of ordinary skill in the art before the effective time of filing to recover aggregates from the culture bag in a method taught by the combination of Berkland and Suenaga using a flipping step that turns the bag upside down as taught by Kim. One of ordinary skill in the art would be motivated to use prior art methods already shown to work as in Kim for accomplishing prior art uses.
Regarding claim 35, Kim teaches methods wherein air is injected into the bag prior to recovery (pg. 10, 1st para.). Thus, it also would have been prima facie obvious to one of ordinary skill in the art before the effective time of filing to recover aggregates from the culture bag in a method taught by the combination of Berkland and Suenaga using an air injecting step as taught by Kim. One of ordinary skill in the art would be motivated to use prior art methods already shown to work.
Claims 29-33, 36-41 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Berkland (US20140219997A1) in view of Suenaga (WO2018230544A1) as applied above, and further in view of Razian (Razian et al., J Vis Exp 81: e50665 (2013)).
Regarding claim 40, Berkland and Suenaga does not teach a specific number of cells used in seeding the bag,
However Razian teaches culturing cell aggregates (spheroids) in large numbers (e.g., 25,000-50,000) and as being arbitrarily scalable with culture surface area (pg. 5, 1st para.; Abstract). Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective time of filing to choose dimensions of the culture bag in a method taught by the combination of Berkland and Suenaga such that it has enough seeded cells per recess to produce as many as possible aggregates. Thus, one of ordinary skill in the art would be motivated to use in the range of 1 x 104 to 5 x 106 “cells/cm2 for certain bag dimensions, recess densities, and/or total number of recesses. As the cell seeding density merely scales with the recesses to achieve one aggregate per recess and neither the bag dimensions nor the recess number is critical and merely scales with surface area, the prior art is deemed to render obvious any practical cell seeding density with regard to a culture bag having dimensions in mm to cm (see MPEP 2144.05).
Regarding claim 41, although Berkland and Suenaga does not teach a specific number of recess per cm2 of the lower face, it would have been prima facie obvious to one of ordinary skill in the art before the effective time of filing to scale the dimensions of the culture bag in a method taught by the combination of Berkland and Suenaga as detailed above such that it has enough recesses to produce as many as possible aggregates (tumor spheroids), including wherein there are 1-1000 recesses/cm2. One of ordinary skill in the art with the goal of screening drugs against tumor cells would be motivated to produce as many aggregates as possible and as taught by Razian the number of aggregates produced can be a direct function of the number of recesses, such as wherein there is 1 spheroid per recessed part as taught by Suenaga and each recess has a width of 0.3-10 mm, meaning two or more recesses can fit per cm2 (pg. 2, para. 5; pg. 6, 3rd para.).
Therefore, the claimed invention as a whole would have been prima facie obvious to a person of ordinary skill before the earliest effective filing date absent evidence to the contrary.
Response to arguments
Applicant’s arguments in the response filed 2/27/26 were found persuasive; however new grounds of rejection are presented above regarding the claim 29 amendments introducing a “pressing” action and “maintained” pressure to completion of the culture wherein the cells are “insulin-secreting” cells.
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.
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Claims 29-34, 36-38, and 48 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-11, and 16 of copending Application No. 17/927,545 (the reference application) in view of Iwata (US20160304839A1; IDS ref.) and Suenaga (WO2018230544A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 3-4 of the reference application teach a cell culturing system for culturing cell aggregates using a cell culture bag having a lower face comprising a plurality of recesses and combining in the bag cells with a culture medium using a method wherein a pressure is applied to the bag and wherein the bag’s contents are stirred and then cultured (claim 3), and to form and recover cell aggregates after completion of culture (claim 4).
Instant claim 29 differs in that the cells must comprising insulin-secreting cells and a pressure must be applied throughout the culturing. However Iwata teaches making artificial pancreatic organoids or pseudoislets that secrete insulin by methods comprising culturing differentiating aggregates of stem cells whereby some cells become insulin-secreting pancreatic islet cells and specifically keeping each aggregate away from others using one recess per aggregate and then recovering individual aggregates ([0010]-[0012], Abstract; FIG. 5). Also, Suenaga teaches methods for obtaining cultured spherical cell aggregates, the method comprising (c) culturing the cells while applying downward pressure using a pressing member (6) to sandwich the subset of the bag comprising the recesses into a pressed form during culturing (flat-culturing), e.g., to prevent cell movement (FIG. 2; pg. 4, para. 4 and 6; FIGs. 1 and 11; pg. 11; pg. 8, para. 7; pg. 6, para. 3 and last para.). This is akin to the sandwiching pressure described in reference claim 16.
It would have been prima facie obvious to one of ordinary skill in the art to modify the method of the reference claims of culturing cell spherical aggregates in recesses of a culture bag by applying a pressure by sandwiching the bag to prevent cell loss and promote cell aggregation throughout the culturing as taught by Suenaga and where the cell type selected comprises insulin-secreting cells as motivated by Iwata. One of ordinary skill in the art with the goal of creating artificial pseudoislet aggregates would be motivated to use prior art methods already shown to work as in Suenaga for accomplishing prior art uses to prevent cell/aggregate movement during culturing while still removing air from the bag using a pressure before adding Suenaga’s technique for the culturing step, such as by merely continuing to apply the same pressure that also prevents air from returning (e.g., of reference claim 16), such as specifically for making/recovering insulin-secreting human cell aggregates for diabetic therapies using recessed culture surfaces as taught by Iwata ([0002]).
For purposes of applying prior art, intended language is not given patentable weight unless the intended result imparts an implied limitation to the claimed method’s active step(s). In the instant case, the intended result in claims 30-33 of the number of aggregates formed and recovered or certain characteristics of the cell aggregates (“70% or more of the recovered cell aggregates” having a certain size or the recovered cell aggregates comprising at least “200 to 2000 cells”) is considered but does not imply anything more to the active steps positively recited in instant claim 29. Thus, the subject matters of instant claims 30-33 are obvious merely by a teaching performing a method comprising all the active method steps recited in instant claim 29.
Regarding instant claim 34, reference claim 5 teaches wherein aggregate recovery comprises flipping the bag vertically. Regarding instant claim 36, Suenaga teaches applying pressure from above (FIG. 2). Regarding instant claims 37-38, reference claim 9 teaches wherein the recess depth is 100-1000 µm and diameter is 300-1500 µm, which encompasses depth:diameter ratios of 1:1.5-2.5. Regarding instant claim 48, Suenaga specifically teaches sandwiching during the culturing to prevent cell loss. Note, where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 29-33, 36, and 48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of US 12,410,389 (the reference patent) in view of in view of Iwata (US20160304839A1; IDS ref.) and Suenaga (WO2018230544A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent discloses a method of culturing cell aggregates (spheroids) in a medium in a cell culturing bag having an upper and lower face wherein the bag’s lower face (lower film) has a plurality of recesses to restrict aggregate size and wherein the cells are confined in the recesses by pressing a pressing member on the top of the bag while the bag is on a placement surface to sandwich the bag so that the recess portions are closed (claim 1), such as wherein the contents are stirred by the flow of medium during injection/discharge through a port (claim 3 and/or 4).
Instant claim 29 differs in that the cells must comprising insulin-secreting cells and the pressure must be applied specifically throughout the culturing. However Iwata teaches making artificial pancreatic organoids or pseudoislets by methods comprising culturing differentiating aggregates of stem cells whereby some cells become insulin-secreting pancreatic islet cells and specifically keeping each aggregate away from others using one recess per aggregate and then recovering individual aggregates ([0010]-[0012], Abstract; FIG. 5). Also as in reference claim 1 discussing a sandwiching pressure, Suenaga teaches methods for obtaining cultured spherical cell aggregates, the method comprising (c) culturing the cells while applying downward pressure using a pressing member (6) to sandwich the subset of the bag comprising the recesses into a pressed form during culturing (flat-culturing), e.g., to prevent cell movement (FIG. 2; pg. 4, para. 4 and 6; FIGs. 1 and 11; pg. 11; pg. 8, para. 7; pg. 6, para. 3 and last para.).
It would have been prima facie obvious to one of ordinary skill in the art to modify the method of the reference claims of culturing cell spherical aggregates in recesses of a culture bag by applying a pressure by sandwiching the bag to prevent cell loss and promote cell aggregation throughout the culturing as taught by Suenaga and where the cell type selected comprises insulin-secreting cells as taught by Iwata. One of ordinary skill in the art with the goal of creating artificial pseudoislet aggregates would be motivated to use prior art methods already shown to work as in Suenaga for accomplishing prior art uses to prevent cell/aggregate movement during culturing while still removing air from the bag using a pressure before adding Suenaga’s technique for the culturing step, such as by merely continuing to apply the same pressure of reference claim 1 during the culturing to keep the recess portions closed, such as specifically for making/recovering insulin-secreting human cell aggregates for diabetic therapies using recessed culture surfaces as taught by Iwata ([0002]).
For purposes of applying prior art, intended language is not given patentable weight unless the intended result imparts an implied limitation to the claimed method’s active step(s). In the instant case, the intended result in claims 30-33 of the number of aggregates formed and recovered or certain characteristics of the cell aggregates (“70% or more of the recovered cell aggregates” having a certain size or the recovered cell aggregates comprising at least “200 to 2000 cells”) is considered but does not imply anything more to the active steps positively recited in instant claim 29. Thus, the subject matters of instant claims 30-33 are obvious merely by a teaching performing a method comprising all the active method steps recited in instant claim 29.
Regarding instant claim 36, Suenaga and reference claim 1 teaches applying pressure from above (FIG. 2). Regarding instant claim 48, Suenaga specifically teaches sandwiching during the culturing to prevent cell loss while reference claim 1 teaches the same for confining the aggregates within closed recesses.
Claims 29-33, 35-36, and 48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of US 12,410,389 (the reference patent) in view of Iwata and Suenaga as applied above, and further in view of Kim (JP2016086774A).
Regarding instant claim 35, Kim teaches bag culturing methods wherein air is injected into the bag during an aggregate recovery step (pg. 10, 1st para.). It would have been prima facie obvious to one of ordinary skill in the art to modify the method of the reference claims view of Iwata and Suenaga of culturing insulin-secreting cell spherical aggregates in recesses of a culture bag by applying a pressure by sandwiching the bag as taught by Iwata and Suenaga to further include recovering the formed cell aggregates by a method comprising injecting are into the bag as taught by Kim. One of ordinary skill in the art with the goal of creating artificial pseudoislet aggregates would be motivated to use prior art methods already shown to work for cultured cell aggregate recovery from culture bags as taught by Kim for prior art taught purposes.
Response to arguments
Applicant’s arguments in the response filed 2/27/26 were not found completely persuasive as new grounds of rejection are presented herein regarding the claim 29 amendments introducing a “pressing” action and “maintained” pressure to completion of the culture.
Applicant traverses the previous provisional double patenting rejection based on US 17/927,545 reference claims teaching a system comprising applying pressure before adding any cells to the culture bag; however nowhere do the reference claims instruct to remove the pressure, such as prior to or during the culturing in reference claim 3. Furthermore, nowhere does instant claim 29 preclude applying pressure prior to adding the cells. Thus, the ‘545 reference claims can be combined with sandwiching culturing teachings given sufficient motivation, such as wherein there is “sandwiching” pressure applied both before and throughout the culturing. Neither the instant claims nor the reference claims recite any purpose for this timing and, regardless, mere intended results would not limit the active steps without an clearly implied structural/step limitation.
Applicant traverses the previous double patenting rejection based on the reference claims of US Patent 12,410,389 purportedly teaching a method comprising applying pressure only during medium infusion or discharge; however nowhere is this required by the reference claims. Instead, reference claim 1 indicates a pressing is applied concomitantly with medium discharge with a stated purpose of confining cells and already formed aggregates to the recesses. Nowhere does reference claim 1 or 3 preclude applying pressure during the entire culturing period, which could also serve the same purpose of confining the cells and aggregates to the recesses throughout regardless of medium exchange. Thus, the ‘389 reference claims can be combined with sandwiching culturing teachings given sufficient motivation, such as wherein there is pressure throughout the culturing to keep the cells and aggregates confined to the recesses throughout.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC J ROGERS whose telephone number is (571)272-8338. The examiner can normally be reached Monday - Friday 9:00-6:00.
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/ERIC J ROGERS/
Examiner, Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
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