DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, 21-24, in the reply filed on 1/1/2026 is acknowledged.
Claims 9-12, 14, 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/1/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The listing of references in the specification, such as on pages 57-65, is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
The drawings are objected to because:
(1) In Figure 1B, due to the use of nearly similar tones of gray, the two conditions cannot be distinguished such that the figure cannot be evaluated. Similarly, Figure 1E cannot be evaluated because the genes upregulated in various lineages (ectoderm vs mesoderm etc.) cannot be distinguished.
(2) The description for Figure 2 in [0055] refers to Figure S2 and “Colored sectors”. No Figure S2 is provided and since the figure is in grayscale “colored sectors” cannot be identified.
(3) In Figure 4A, “successful” vs “successful, but unstable” cannot be distinguished.
(4) UMAP plots in Figures 9, 10, 11 and 16 cannot be evaluated in grayscale.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code, such as on pages 76, 77, 103 and 104. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
The use of the terms: Matrigel, Accutase, B-27, Versene, SYBR etc., which are trade names or a marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 3 is objected to because of the following informalities: Claim 3 recites “CHIR99021 inhibitor” in lines 5, 15, 22, and “SB-431542 inhibitor” in lines 8, 17, 24. CHIR99021 is a GSK3b inhibitor but not an inhibitor of CHIR99021 itself. Similarly, for SB-431542. The use of term “inhibitor” after CHIR99021 and SB-431542 should be removed.
Claim 23 is objected to because of the following informalities: Claim 23 recites “CHIR99021 inhibitor” in line 3. CHIR99021 is a GSK3b inhibitor but not an inhibitor of CHIR99021 itself. The use of term “inhibitor” after CHIR99021 should be removed.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-6, 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 4-6 each recite markers of axial stem cells produced by the method and identifies their sequence by referring to UniProtKB, a publicly available database for gene and protein sequences. However since sequences on this database are routinely updated with new findings, it is unclear which version of the sequence is recited in the instant claim. Since the claims also recites appropriate SEQ ID NOs. for the sequence of the markers, these are used for claim interpretations.
Claim 4 recites a phrase “substantially not expressing” in options (ii) and (iii). The specification states “[0085] As used herein, the term "substantially not expressing" may refer to an expression level that is less than 10% (e.g., less than 7%, less than 4%, less than 1%, less than 0.5%, or less than 0.1%) of the expression level of the control (e.g., starting cell, e.g., undifferentiated cell, e.g., undifferentiated H9 hESCs)”. No control is recited in claim 4 such that it is unclear in relation to what is the axial stem cells “substantially not expressing” OCT4 or NANOG. For the purpose of compact prosecution, the claim(s) 4 is/are interpreted as “in comparison to the pluripotent stem cells, embryonic or induced pluripotent stem cells of step (a)”.
Claim 4, option (xv) recites “are not neuromesodermal progenitors (NMps)” and Claim 5 recites “wherein said axial stem cells are not neuromesodermal progenitors (NMps). The specification appears to “define” axial stem cells and NMps as follows:
[0079] As used herein, the term "axial stem cell/s" (or "AxSC/s") may interchangeably be used with the term "neuromuscular-skeletal stem cells" and may refer to cells produced by the methods of the present invention or having characteristics of the cells produced by the methods of the present invention as described herein below
[0083] As used herein, the term "neuromesodermal progenitors" (or NMps) may refer to embryonic cell-type that contributes to the development of both the spinal cord and paraxial mesoderm (e.g., Tzouanacou et al., 2009).
However, due to use of “may” in both of these “definitions”, these are not a limiting definition for the purpose of claim interpretation. The cells produced by the method of claim 1 are produced by exposing PSCs to Wnt/b-catenin activator, passaged and result in Sox2+ve cells.
Axial stem cells and NMPs are known in the art but a distinction between these terms and cell types is not clear. It appears that these terms are used interchangeably in the prior art. For example Gouti et al (PLOS Biology, Vol. 12, Aug. 2014, e1001937; IDS 7/31/2023) teach NMPs as “dual-fated” cells that are Sox2 and Brachyury (=T-box) positive and give rise to spinal neural cells and the mesoderm (Abstract, Introduction-para 2; Author Summary). Gouti also teaches Wnt activation to generate NMPs from hES (Figure 5). Takemoto et al (Nature, Vol. 470, Feb 2011; IDS 7/31/2023) uses the term axial stem cells to describe “bipotential” cells that give rise to neural and mesoderm cells that are Sox2 positive (page 394, col. 1, para 1). Ashton et al (US 2016/0068806 A1, Mar. 10, 2016; IDS 7/31/2023) states the following regarding NMPs and Axial stem cells “Activation of FGF signaling upstream of Wnt/b-catenin signaling was necessary to establish a highly pure Sox2+/Brachyury+ neuromesodermal progenitors reminiscent of the axial stem cell population found in vivo” [0048]. Ashton also teaches Wnt activation to generate NMPs from hES and hiPSC ([0152]; Figure 8). Thus, it appears that axial stem cells and NMPs represent same and/or similar populations with the same bi-potency and marker phenotypes. The claims do not identify any feature that distinguishes the cells produced by the generic method of claim 1- wherein PSCs are exposed to Wnt/b-catenin activator and passaged in the presence of Wnt/b-catenin activator - from NMps.
Claim 21 recites the limitation "pluripotent cells" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, the claim(s) 21 is/are interpreted as "pluripotent stem cells"
Claim 21 contains the trademark/trade name B27. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe media supplement and, accordingly, the identification/description is indefinite.
Claim Interpretation
Claim 1 is directed to a method for producing axial stem cells, wherein the cells derived from the step (c) endogenously express transcription factor SOX-2. The specification states “As used herein, the term "axial stem cell/s" (or "AxSC/s") may interchangeably be used with the term "neuromuscular-skeletal stem cells" and may refer to cells produced by the methods of the present invention or having characteristics of the cells produced by the methods of the present invention as described herein below” [0079]. Thus, although the specification suggests that the claimed axial stem cells may refer to cells produced by the claimed method or have the characteristics of the claimed method, this is not a limiting definition. Furthermore, no specific characteristics are recited in the method.
“Axial stem cells” or alternatively, “neuromesodermal progenitor” cells with SOX-2 expression were known in the art. Gouti et al (PLOS Biology, Vol. 12, Aug. 2014, e1001937; IDS 7/31/2023) teach NMPs as “dual-fated” cells that are Sox2 and Brachyury (=T-box) positive and give rise to spinal neural cells and the mesoderm (Abstract, Introduction-para 2; Author Summary). Gouti also teaches Wnt activation to generate NMPs from hES (Figure 5). Takemoto et al (Nature, Vol. 470, Feb 2011; IDS 7/31/2023) uses the term axial stem cells to describe “bipotential” cells that give rise to neural and mesoderm cells that are Sox2 positive (page 394, col. 1, para 1). Ashton et al (US 2016/0068806 A1, Mar. 10, 2016; IDS 7/31/2023) states the following regarding NMPs and Axial stem cells “Activation of FGF signaling upstream of Wnt/b-catenin signaling was necessary to establish a highly pure Sox2+/Brachyury+ neuromesodermal progenitors reminiscent of the axial stem cell population found in vivo” [0048]. Ashton also teaches Wnt activation to generate NMPs from hES and hiPSC ([0152]; Figure 8).
Taken together, it is interpreted that the claimed method is directed to production of SOX2 positive cells that are bi-potent, such as axial stem cells and/or NMPs.
Claim 1 recites an optional step (d). Claim 3 requires this optional step (d). However, “step (d)” is not an additional step since it only adds additional elements to the already recited step (c). In claim 1, it states “d) optionally, said continuous activating the Wnt/b-catenin signaling pathway from step (c) is carried out in the presence of:”. Thus, “step (d)” in claims 1 and 3 are interpreted as reciting additional elements to the step (c).
Claims 4-6 recite intended results of the method of claim 1. Claim 4 recites characteristics of “axial stem cells” produced by the method of claim 1. Since these characteristics are inherent to the “axial stem cells” produced by the method of claim 1, these characteristics of the “axial stem cells” produced necessarily arise from the active steps of claim 1. Thus, prior art anticipating and/or rendering obvious the method of claim 1, results in the “axial stem cells” with the claimed characteristics. Similarly, claim 5, in view of 112b issue noted with this claim regarding the phrase “not” NMps, the proteins recited as expressed by the “axial stem cells” are inherent to the axial stem cells produced by the method of claim 1. Similarly for claim 6, the differentiation capabilities of the axial stem cells are inherent to these stem cells and must necessarily arise from the active steps of claim 1. Thus, prior art anticipating and/or rendering obvious the method of claim 1, results in the “axial stem cells” with the claimed characteristics of claims 4-6.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7, 22 and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ashton et al. (US 2016/0068806 A1, Mar. 10, 2016; IDS 7/31/2023) as evidenced by Verrier et al (Development (2018) 145, dev166215; IDS 7/31/2023).
Regarding claims 1 and 7, Ashton teaches a method comprising providing human pluripotent stem cells (PSC), including human embryonic and induced pluripotent stem cells (= step (a); human= as required by claim 7), activating the Wnt/b-catenin signaling pathway in the said cells (=step (b) and passaging the cells exposed to Wnt/b-catenin signaling pathway activation in the presence of Wnt/b-catenin signaling pathway activation (=step(c); wherein the cells derived are endogenous SOX2 positive ([0003, 0006, 0007, 0011, 0048, 0138], Example 2 and 4, Figure 2, 7, 11). Ashton describes the cells produced as caudal lateral epiblast or neuromesodermal progenitors alternatively, and states that “Sox2+/Brachyury+ neuromesodermal progenitors reminiscent of the axial stem cell population found in vivo” [0048].
Regarding claims 2, 22 and 23, Ashton teaches CHIR99021, a GSK3b inhibitor, as an activator of the Wnt/b-catenin signaling pathway ([0095]; Example 2, 4; Figures 2, 7, 11). Ashton teaches concentration from 1-20uM, suggests use at about 6uM [0095] and uses 3-6uM in their examples (as required by claim 23; [0142, 0152]; Figure 11). Aston uses the CHIR99021 for at least 24 hours in their method (Figure 2, 7, 11).
Regarding claim 3, Ashton teaches CHIR99021 at a concentration from 1-20uM, suggests use at about 6uM [0095] and uses 3-6uM in their examples ([0142, 0152]; Figure 11). Ashton further teaches inclusion of FGF and TGFb inhibitor, wherein Ashton teaches FGF2 as an FGF at a concentration of 50-400ng/ml, using 100-200ng/ml in the examples 1 and 4 ([007, 0050, 0088, 0128 0163]; Figure 6) and SB-431542 as a TGFb inhibitor at a concentration of about 10uM ([0100, 0126]). Ashton’s method results in SOX-2+ve, T-box+ve and PAX-ve caudal lateral epiblast cells (same as NMPs and axial stem cells) ([0011, 129, 0147]; Figure 2, 6; Example 1, 2, 4). Verrier evidences that NMPs generated in vitro from human pluripotent stem cells are MIXL1 positive (Figure 3C). Therefore, Ashton’s method comprises about 6uM CHIR99021 (=claimed about 5uM), 50-400ng/ml FGF2 (=claimed about 20-100ng/ml) and about 10uM SB431542, and produces cells thar are SOX-2+ve, T-box+ve, MIXL1+ve (evidenced by Verrier) and PAX-ve cells (= claimed 3(a)).
Regarding claims 4-6, in view of the claim interpretation presented above, since Ashton anticipates the method of claim 1 which results in the “axial stem cells”, Ashton method results in “axial stem cells” with the claimed characteristics of claims 4-6.
Therefore, Ashton anticipates the claimed invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The 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.
Claim(s) 24 is is/are rejected under 35 U.S.C. 103 as being unpatentable over Ashton as applied to claim 1 above, and further in view of Ashton.
The teachings from Ashton as applied to claim 1 in the U.S.C. 102 rejection are relied upon for the instant rejection.
Regarding passaging cells produced by their method, Ashton teaches that after production of NMPs, “if extended neuromesodermal propagation was required” then passaging was repeated in the presence of CHIR99021, Wnt/b-catenin activator ([0152], Figure 11). For passaging, Ashton teaches serial passaging i.e., wherein cells are reseeded at a lower density (from 1.5x105 to 1.2x105 cells/cm2) in fresh medium, which was serum-free E6 medium ([0141], [0122]).
Ashton explicitly teaches passaging the cells produced at least 2 times (Figures 5 and 11).
Ashton does not explicitly teach passaging the produced cells for at least 3-9 times. However, Ashton teaches that for extended propagation passaging can be performed.
Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to passage the cells produced by Ashton’s method for more than 2 times as taught by Ashton, such as at least 3 times. An ordinary artisan would be motivated to passage the cells produced by Ashton’s method for at least 3 or more times to continue to propagate the cells produced. An ordinary artisan would reasonably expect to passage the cells produced by Ashton’s method for at least 3 times because Aston teaches the passaging method.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in
the art at the effective time of filing of the invention, especially in the absence of evidence to the
contrary.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ashton as applied to claim 1 above, and further in view of Kent (Cell Culture Basics: Stem Cell Media – The “What” and “Why”. Feb 3, 2016.)
Regarding claim 21, Ashton teaches maintenance of human PSC in suitable PSC media ([0141]). When differentiating PSCs into NMPs/caudal lateral epiblasts, Ashton teaches replacing the PSC maintenance media with medium that comprises DMEM as base medium supplemented with F12 [(0142], Table 1, 3). Ashton also teaches that their basal medium maybe substituted with other suitable basal medium buffered to ph about 7.4 (legend below Table 1; [0079]).
Ashton does not teach a RPMI 1640 base medium supplemented with B27 (with or without vitamin A). However use of various base medium such as DMEM and RPMI with different supplements in stem cell cultures was known in the art.
MPEP 2144.06 guides that “In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents. Smith v. Hayashi, 209 USPQ 754 (Bd. of Pat. Inter. 1980) (The mere fact that phthalocyanine and selenium function as equivalent photoconductors in the claimed environment was not sufficient to establish that one would have been obvious over the other. However, there was evidence that both phthalocyanine and selenium were known photoconductors in the art of electrophotography. "This, in our view, presents strong evidence of obviousness in substituting one for the other in an electrophotographic environment as a photoconductor." 209 USPQ at 759.).
In the instant case, Kent teaches DMEM and RPMI as classical basal media used in stem cell cultures (Page 1, listed under “Examples”). Kent also notes use of supplements with basal media in stem cell culture (Introduction).
Thus, DMEM supplemented with a F12 supplement and RPMI supplement with B27 supplement are recognized in the art as media suitable for stem cell culture.
Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute Ashton’s basal media (DMEM/F12) with the claimed equivalent (RPMI1640-B27) without requiring inventive ingenuity.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in
the art at the effective time of filing of the invention, especially in the absence of evidence to the
contrary.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATASHA DHAR whose telephone number is (571)272-1680. The examiner can normally be reached M-F 8am-4pm (EST).
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/MATASHA DHAR/Examiner, Art Unit 1632