DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in response to the papers filed October 27, 2025.
Claims 1-4 and 8-14 are pending in the application. Claims 5-7 are canceled, claims 1,4 and 8 are amended and no new claims are added as set forth in the claim set filed October 27, 2025.
Therefore, claims 1-4 and 8-14 are examined on the merits.
Priority
The present application is a 35 U.S.C. 371 national stage filing of International Application No. PCT/KR2021/005767 filed May 07, 2021.
Applicant’s claim for the foreign benefit of a prior-filed Korean Patent 10-2020-0054455 filed May 07, 2020 under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Filing of a certified untranslated copy of the Korean Patent 10-2020-0054455, filed November 4, 2022 is acknowledged.
Thus, the earliest possible priority for the instant application is May 07, 2020.
Response to arguments
Maintained objections/ Rejections in response to Applicants’ arguments or amendments
Claim Rejections - 35 USC § 103
Claims 1-4 and 9-14 remain rejected and claim 8 is newly rejected under 35 U.S.C. 103 as being unpatentable over Sheyn (STEM CELLS TRANSLATIONALMEDICINE 2016;5:1447–1460) in view of Zhang (Biomaterials 41 (2015) 15-25; IDS Reference), Rungarunlert (World J Stem Cells 2009 December 31; 1(1): 11-21) and Carpenedo (STEM CELLS 2007;25:2224 –2234)
This rejection has been modified as necessitated by Applicant’s arguments and amendments filed 10/27/2025.
Regarding claim 1, 8 and 11, Sheyn teaches a method of making induced mesenchymal stem cells (iMSCs) from human induced pluripotent stem cells (iPSCs) (reading on pluripotent stem cells of claim 1 step (a) ) (Abstract; p. 1448, 2nd column). The iMSCs were made by seeding the iPSCs into 348 well plates with 10,000 cells per well and cultured to form embryoid bodies (EBs) (p. 1449, 1st column; Fig 1A), reading on claim 1 step (a).
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The EBs were then transferred and cultured on 1% gelatin treated flasks (reading on culture vessel coated with an adhesive polymer of claim 1 step ( c)) where EBs attached and formed the aiMSCs or EBs did not attach and formed tiMSCs, both populations were compared to BM-MSCs (Figure 1, p. 1449, 1st column; p. 1449, 2nd column). Regarding step 1c, the EBs themselves are differentiated.
While Sheyn teaches partially step a), partially step b) and partially step c) of the present invention, the reference does not teach step b) 3D culturing of EBs in a bioreactor under microgravity to form spheroids.
Zhang teaches that it is known in the art generally that spheroids can be obtained via three approaches: hanging drop, low-attachment culture, and dynamic culture, however dynamic culture is more suitable for large scale production of spheroids (p. 16, 2nd paragraph). Dynamic cultures involve spheroids that are grown in a spinner flask or a microgravity bioreactor (MB) which offers the benefits of reduced shear stress, reduction of damage caused by mechanical agitation, increased mass transfer which promotes the transport of nutrients and the removal of metabolites from spheroids growing in an MB. “Thus, these advantages of MB potentially increase cell viability of MSCs. Moreover, increasing evidence has demonstrated that MBs are useful in the scale-up of stem cells” (p. 16, 2nd paragraph). Moreover, Zhang teaches that the bioreactor is a microgravity bioreactor which rotates at a speed of 25 rpm for 5 days (p. 16, 1st column).
Based on the benefits of culturing embryoid bodies in microgravity bioreactor (MB) for large scale production of spheroids as taught by Zhang, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to include a step of culturing the EBs in a bioreactor with migrogravity in the method of Sheyn as taught by Zhang before the differentiation of EB into mesenchymal stem cells by adherent culture with a reasonable expectation of success. An artisan would be motivated to do so as microgravity bioreactors offer the benefits of reduced shear stress, reduction of damage caused by mechanical agitation, increased mass transfer which promotes the transport of nutrients and the removal of metabolites from spheroids growing in an MB (Zhang, p. 16, 2nd paragraph). Moreover, Zhang shows microgravity forms spheroids, therefore culturing the EBs of Sheyn would form spheroids with a reasonable expectation of success.
However, Sheyn and Zhang do not teach the limitation of step a where in the aggregation of the cells to form EBs is induced through centrifugation as required in claim 1 line 9 .
Rungarunlert teaches that methods are known in the art which force aggregation of EBs through centrifugation in pluripotent cells such as embryonic stem cells and (Table 1; p. 15, 1st column). Forced aggregation through centrifugation improves the reproducibility of EB production (p. 15, 1st column). As shown in Table 1, forced aggregation of EBs is a known alternative method of forming EBs from pluripotent cells such as embryonic stem cells.
Based on these teachings, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to further induce aggregation of pluripotent cells to form EBs of Sheyn through centrifugation as taught by Rungarunlert with a reasonable expectation of success. An artisan would have been motivated to aggregate the pluripotent cells to form EBs of Sheyn through the methods such as forced aggregation by centrifugation as taught by Rungarunlert because forced aggregation through centrifugation improves the reproducibility of EB production (p. 15, 1st column). As shown in Table 1, forced aggregation of cells is a known alternative method of forming EBs.
Regarding the limitation of 40-80 rpm, as well as the increase in rpm in claim 8, these references do not teach that the rpm is 40-80 where rotation speed increases by 5 rpm everyday.
Carpenedo teaches culturing embryoid bodies formed from pluripotent stem cells in a microgravity bioreactor at speeds of 25, 40 and 55 rpm (p. 2225, 4th-5th paragraph). The study teaches that an inverse relationship between embryoid body (spheroids) formation size and rotary speed exists, for instance, a lower speed such as 25 rpm produces larger, fewer clusters of the spheroids and a higher speed such as 55 rpm produces smaller spheroids in greater amounts (p. 2233, 1st paragraph; p. 2226, last paragraph; Figure 1). “The ability to control the size of EBs may be necessary for creating robust, reproducible strategies for ES cell differentiation because cell differentiation is influenced by spatial and temporal patterns of cell-cell interactions, and thus the size of individual EBs formed may affect their differentiation profiles” (p. 2232, last paragraph). Therefore, the rotatory speed is a case of routine optimization.
In view of the benefits of to control the size of EBs by adjusting the rotation speed, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to modify the speed of the microgravity bioreactor as taught by Sheyn, Zhang and in order to routinely optimize the parameters of the cell culture as evidenced by Carpenedo. An aristan would be motivated to optimize this parameter as Carpenedo teaches “The ability to control the size of EBs may be necessary for creating robust, reproducible strategies for ES cell differentiation because cell differentiation is influenced by spatial and temporal patterns of cell-cell interactions, and thus the size of individual EBs formed may affect their differentiation profiles” (p. 2232, last paragraph).
It is well settled that routine optimization is not patentable, even if it results in significant improvements over the prior art. In support of this position, attention is directed to the decision in In re Aller, Lacey, and Haft, 105 USPQ 233 (CCPA 1955): Normally, it is to be expected that a change in temperature, or in concentration, or in both, would be an unpatentable modification. Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 C.C.P.A. (Patents) 830, 73 F.2d 931,24 USPQ 52; In re Waite et al., 35 C.C.P.A. (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 C.C.P.A. (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 C.C.P.A. (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 C.C.P.A. (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 C.C.P.A. (Patents) 1248, 150 F.2d 708, 66 USPQ 308; In re Irmscher, 32 C.C.P.A. (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, 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 Swain et al., 33 C.C.P.A. (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D. C. 324, 135 F.2d 11,57 USPQ 136. (Emphasis added). With regards to determining experimental parameters, such as time in culture, the court has held that "[d]iscovery of optimum value of result effective variable in known process is ordinarily within skill of art (In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980)).
The adjustment of particular conventional working conditions (e.g. rotary speed/rpm) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan having the cited reference before him/her.
Regarding claims 2 and 3, the combined teachings of Sheyn, Zhang, Rungarunlert, and Carpenedo render obvious claim 1. Moreover, Sheyn teaches a method of making induced mesenchymal stem cells (iMSCs) from human induced pluripotent stem cells (iPSCs) (i.e. pluripotent stem cells) (Abstract; p. 1448, 2nd column).
Regarding claim 4, as stated by the instant specification, “the term "three-dimensional culture" is a concept opposite to two-dimensional culture, and refers to culturing of cells in a floating state in a culture medium without adhesion to a substrate, etc. Thus, the term "three-dimensional culture" is used in the same meaning as "suspension culture”” (Specification p. 7). The combined teachings of Sheyn, Zhang, Rungarunlert, and Carpenedo render obvious claim 1. Moreover, Sheyn teaches the EBs are formed in non-adherent 384-well conical PCR plates (p. 1499, 1st column). Therefore, Sheyn reads on the claimed limitation.
Regarding claim 9 and 10, the combined teachings of Sheyn, Zhang, Rungarunlert, and Carpenedo render obvious claim 1. Moreover, Sheyn teaches the adhesive polymer the spheroids are cultured on is gelatin (p. 1449, 1st column).
Regarding claim 12, the combined teachings of Sheyn, Zhang, Rungarunlert, and Carpenedo render obvious claim 1. Moreover, Sheyn teaches utilizing the iMSCs to promote bone formation (i.e. treat bone disease) in vivo in mouse models where cells are resuspended in fibrin gel (p. 1451, 1st column). As the fibrin gel is the delivery vehicle, the cells are interpreted to be the active ingredient.
Regarding claim 13 and 14, the combined teachings of Sheyn, Zhang, Rungarunlert, and Carpenedo render obvious claim 1. Moreover, Sheyn teaches that a composition of their iMSCs might be advantageous due to their anti-inflammatory properties to be utilized for treatments or prevention of GvHD (p. 1458, 1st paragraph).
Therefore, the invention would have been obvious to one of ordinary skill in the art at the time of the effective filing date.
In response to Applicant’s arguments and amendments filed 10/27/2025 regarding the 103 rejection previously set forth.
Applicant’s arguments and amendments filed 10/27/2025 have been considered, however, they are not persuasive.
Applicant argues that the secondary reference of Zhang does not cure the deficiencies of the primary reference of Sheyn. Particularly, Applicant argues that Zhang’s aim is to maintain stemness and inhibit differentiation, Zhang used adipose MSCs which do not form embryoid bodies, and Zhang is focused on single disassociated cells which differentiate and not making MSCs from PSCs like the present invention.
In response to applicant's argument that Zhang does not teach that the aim of their method is to create MSCs from PSCs and that Zhang utilizes adipose MSCs which do not form embryoid bodies, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Zhang is utilized to provide teaching, suggestion, or motivation to utilize a migrogravity bioreactor before the differentiation of EB into mesenchymal stem cells by adherent culture with a reasonable expectation of success. An artisan would be motivated to do so as microgravity bioreactors offer the benefits of reduced shear stress, reduction of damage caused by mechanical agitation, increased mass transfer which promotes the transport of nutrients and the removal of metabolites from spheroids growing in an MB (Zhang, p. 16, 2nd paragraph). Moreover, though the instant claims are directed to a method for producing mesenchymal stem cells from pluripotent stem cells, the instant claims are not so limited such that this is the only possible step in the claim. The claims are “open” and thus lend themselves to additional culturing and centrifugation steps of pluripotent stem cells that may maintain their sternness properties. For example, step (a) of amended claim 1 appear to require that inducing cell aggregation of pluripotent stem cells by centrifugation which further maintains their sternness properties. There is no requirement that the only step in the claimed method of claim 1 is so limited to methods of producing mesenchymal stem cells from pluripotent stem cells is so limited as argued by Applicant. This provides a motivation to combine the two references, even if the aims of the studies are not the same.
The above rejections have been modified in order to address the limitations of claims 5-7 incorporated into claim 1. The arguments against the previously set forth rejections with the same references are based on the argument of the combination of Sheyn and Zhang, therefore, they are also found not persuasive and maintained.
New Grounds of rejection
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 8-14 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 applicant regards as the invention. This is a new rejection necessitated by Applicants’ response filed on 10/27/2025.
Claim 1 is indefinite in its recitation of “further includes a step of inducing cell aggregation” because it is unclear if the step of cell aggregation takes place before the formation of the EBs and whether the cell aggregation refers to aggregation of pluripotent stem cells or aggregation of EBs. As such the metes and bounds of the claim are indefinite.
Claims 2-4 and 8-14 are rejected insofar as they depend on claim 1.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALEXANDRA F CONNORS/Examiner, Art Unit 1634
/MARIA G LEAVITT/Supervisory Patent Examiner, Art Unit 1634