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 .
Claims status
Applicant’s reply filed 5/14/2026 is acknowledged.
Claims 13 is/are cancelled. Claims 1-8, 10-12, 14-16, 18-20, 23-27, 29, 32-37, 39-43, 46-48 is/are currently pending with claims 14-16, 18-20, 23-27, 29, 32-37, 39-43 is/are withdrawn. Claims 1-8, 10-12, 46-48 is/are under examination.
Withdrawn Objections
The objections presented herein represent the full set of objections currently pending in this application. Any objections not specifically reiterated are hereby withdrawn.
Claim Suggestion
Claim 1 recites “deterministically define”. A step of defining an element in a composition, for example defining cell types in an organoid, is implicitly deterministic i.e. requires pre-determination. Thus, use of the word “deterministically” adds to the verbosity of the claim and may be removed.
Claim Rejections - 35 USC § 112(d) - Withdrawn
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Rejection of Claim 12 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn in light of claim amendment.
Claim Rejections - 35 USC § 112(b) – New, necessitated by claim amendment
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.
Rejection of Claims 2, 3, 46, 47 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 is withdrawn in light of claim amendments.
Claims 1-8, 10-12, 46-47 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites a step of culturing at least two genetically-engineered inducible populations of stem cells. For this step, the claim is now amended to recite “wherein the initial ratio and/or composition of the at least two […] stem cells is adjusted”. It is unclear how the initial ratio and/or composition of the stem cells cultured in the culturing step is being adjusted. It is further unclear how adjustment to the initial ratio or composition defines cell types or their quantity. For example, are cells being added and/or removed, and/or other cells that may not be the recited cells being added? The specification provides no guidance regarding an initial ratio and/or composition that is subsequently adjusted and such an adjustment is determined such that the cell types or quantity of cells in the resulting organoid are defined.
Claims 2-8, 10-12, 46-47 is/are rejected due their dependence on claim 1 because they do not clarify the 112b issue noted with claim 1.
Claim Rejections - 35 USC § 112(a) – New Matter, necessitated by claim amendment
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 1-8, 10-12, 46-47 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. 37 CFR 1.118 (a) states that “No amendment shall introduce new matter into the disclosure of an application after the filing date of the application”.
Claim 1 has been amended to “wherein the initial ratio and/or composition of the at least two […] stem cells is adjusted to deterministically define the different cell types and quantity within the resulting programmable multicellular organoid”.
Applicant indicates that at least paras [0051, 0054, 0058, 0088, 0182] in the specification provide support for this newly added limitation. However, neither these or any other paragraphs in the specification explicitly or implicitly disclose a method wherein an initial ratio or composition of cells in culture are adjusted.
The originally filed specification discloses identifying an initial ratio and composition of stem cells included in the culturing step but does not teach adjusting this initial ratio or composition. See for example, [0142] in Example 1, [0161], [203] in Example 2 wherein the ratio of the two inducible hiPSC is identified before the culturing step without any subsequent adjustment.
In [0032], the specification states that “Another embodiment relates to the use of the method descried anywhere herein to enable the tailoring of the initial ratio and/or composition of pluripotent cell populations to deterministically define the different cell types and quantity within the resulting 3D human tissue”. However, this embodiment is not directed to a method that comprises adjusting an initial ratio and/or composition of the stem cells during the culturing step. Rather, it is directed to use of the disclosed method to generate different 3D tissue by identifying different initial ratios or composition of stem cells added in the culturing step.
Thus, originally filed specification does not disclose a method “wherein the initial ratio and/or composition of the at least two […] stem cells is adjusted to deterministically define the different cell types and quantity within the resulting programmable multicellular organoid”. Claims 2-8, 10-12, 46-47 is/are rejected due their dependence on claim 1 because they embrace the new matter recited in claim 1.
Claim 2 is amended to recite “wherein the [..] stem cells are derived from cells selected from the group consisting of pluripotent stem cells, multipotent stem cells, progenitor cells, terminally differentiated cells, endothelial cells, endothelial progenitor cells, immortalized cell lines, and primary cells”.
Applicant indicates that “support for amendment to claim 12 may be found throughout the instant specification, including, for example, the disclosure relating to co-differentiation of hiPSCs engineered with different transcription factors (e.g., ETV2 and NONI) into divergent cell types (e.g., endothelial cells and neurons).” (page 14, para 9). However, no paragraphs in the specification explicitly or implicitly disclose a method wherein the inducible population of stem cells of claim 1 are derived from multipotent stem cells, progenitor cells, terminally differentiated cells, endothelial cells, endothelial progenitor cells, immortalized cell lines, and primary cells. Differentiation of the hiPSC into cells such as endothelial cells and neurons does not support de-differentiation or induction of pluripotency in these cells to derive the hiPSC.
MPEP 2163.06 notes “If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112, first paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).” MPEP 2163.02 teaches that “Whenever the issue arises, the fundamental factual inquiry is whether a claim defines an invention that is clearly conveyed to those skilled in the art at the time the application was filed...If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application. MPEP 2163.06 further notes “When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not “new matter” is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure [or point to case law supporting incorporation of such a limitation as in the instant case]” (emphasis added).
Claim Interpretation – Updated in light of claim amendments
Claim 1 is directed to a method of generating a programmable multicellular organoid. The speciation defines “The term "a programmable multicellular organoid" refers to an organoid that is formed from multiple populations of human induced pluripotent stem cells (hiPSCs) that upregulate differing sets of transcription factors, such that they undergo orthogonally induced differentiation from a pluripotent tissue into a multicellular differentiated tissue.” [0043].
The claim comprises a step of culturing two genetically-engineered inducible population of stem cells in “a” i.e. same culture media in “one culturing environment” i.e. together. Next, the claim comprises a step of concurrently inducing direct/trans-differentiation of the said stem cells into at least two divergent populations of cells.
The specification defines “genetically-engineered inducible populations of stem cells” as “transgenic stem cells that contain inducible promoters to upregulate the expression of a set of specific genes, such as transcription factors, upon addition of an inducing agent” [0066]. However, although the claimed genetically-engineered inducible populations of stem cells contain inducible promoter that regulates expression of a set of genes upon addition of an inducing agent, the claimed method does not recite addition of an inducing agent that activates the inducible promoter. Additionally the claim does not require that the activation of the inducible promoter in the claimed stem cells upregulate the expression of a set of specific genes, such as transcription factors, resulting in their direct/trans-differentiation.
Taken together, claim 1 comprises a step of culturing two genetically-engineered inducible population of human induced pluripotent stem cells and a step of concurrently inducing direct/trans-differentiation of the said stem cells into at least two divergent populations of cells, wherein the induction of direct/trans-differentiation of the said stem cells can occur by any means as long as a divergent populations of cells is generated.
Claim 3 recites “cell-autonomous promoter” and “cell non-autonomous promoter”. These are not terms in the art. The specification provides the following guidance: as an example of cell-autonomous promoters, the specification discloses “cell type-specific promoters” and as an example of cell non-autonomous promoters, the specification discloses “heat induced and light induced promoters” [0068]. Thus, cell-autonomous promoters are understood as promoters that are activated/inactivated based on the cell type itself whereas cell non-autonomous promoters are understood as promoters that are activated/inactivated by external stimuli.
Claim 6 requires addition or removal of various factors such as “small molecules, growth factors, dissolved gases, or morphogens” to induce direct/trans-differentiation of the genetically-engineered inducible population of stem cells. The claim does not require the recited factors to be an inducing agent that induce the activity of the inducible promoter of the said stem cells resulting in direct/trans-differentiation of the said stem cells. Thus, the recited factors embrace both an inducing agent that induce the activity of the inducible promoter of the said stem cells resulting in direct/trans-differentiation of the said stem cells and other factors that are known in the art to induce differentiation of stem cells, such as Wnt signaling modulators, SMAD modulators etc. This is also evident from claim 11 that also recites the same factors but for differentiation of wild-type cells i.e. not genetically engineered and thus not comprising an inducible promoter.
Claim Rejections - 35 USC § 103 - New, necessitated by claim amendment
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.
Rejection of Claim(s) 1-8, 10-13, 46-48 under 35 U.S.C. 103 as being unpatentable over Ng, Hon Man Alex. (April 2018. Differentiation of Human Cells and Tissues Using a Comprehensive Human Transcription Factor Library. Doctoral dissertation, Harvard University, Graduate School of Arts & Sciences. Publication date 2018-04-24) is withdrawn to address newly added claim amendments.
Claim(s) 1-8, 10-13, 46-48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ng, Hon Man Alex. (April 2018. Differentiation of Human Cells and Tissues Using a Comprehensive Human Transcription Factor Library. Doctoral dissertation, Harvard University, Graduate School of Arts & Sciences. Publication date 2018-04-24; ref of record).
Regarding claims 1 and 12, Ng teaches a method for generating a multicellular cerebral organoid which is 3D brain-specific tissue (Chapter 3). The method comprises culturing unmodified i.e. wild type hiPSC with genetically-engineered hiPSCs that comprise a doxycycline-inducible endothelial transcription factor together in the same culture media (Figure 3.1, 3.7; 3.3.7 Generation of stable vasculature within cerebral organoids; 3.5.9 Cerebral organoid culture.). This step comprises defining the initial ratio 80:20 of the two cell types used in the organoid which results in the cell types and their quantity in the organoid (3.5.9 Cerebral organoid culture). The method further comprises inducing differentiation of the wild type hiPSC and the genetically-engineered hiPSCs concurrently by exposure to neural differentiation medium along with doxycycline which results in differentiation of wild type hiPSC into neural cells and differentiation of genetically-engineered hiPSCs comprising the doxycycline-inducible endothelial transcription factor into endothelial cells (Figure 3.1, 3.7; 3.3.7 Generation of stable vasculature within cerebral organoids; 3.5.9 Cerebral organoid culture.). The method, thus, results in differentiation of the wild type hiPSC and the genetically-engineered hiPSCs into divergent cells i.e. neural cells and endothelial cells thereby forming a multicellular organoid which is 3D brain-specific tissue that can be programmed by doxycycline.
Regarding claim 2, Ng teaches genetically-engineered hiPSCs which are derived from human induced pluripotent stem cells (Figure 3.1, 3.7; 3.5.9 Cerebral organoid culture).
Regarding claim 3, Ng teaches genetically-engineered hiPSCs with inducible promoters introduced by lentivirus or Piggy-bac transposon (=DNA delivery element; 2.5.7 Lentiviral production and transduction.; 2.5.14 Nucleofection of PiggyBac and generation of stable cell lines.)
Regarding claim 4 and 5, Ng teaches ETV2 transcription factors induced by doxycycline (3.5.9 Cerebral organoid culture; page 16, 24). Ng also teaches hiPSC with doxycycline-inducible NGN1 transcription factors induced by doxycycline (page 16).
Regarding claims 6-8, Ng teaches differentiation induction via neural induction medium comprising small molecules and growth factors and also via addition of doxycycline during culture (3.5.9 Cerebral organoid culture.).
Regarding claims 10 and 11, Ng teaches culturing wild type hiPSC and inducing their differentiation into neural cells by addition of neural induction medium comprising small molecules and growth factors (3.5.9 Cerebral organoid culture.).
Regarding claim 46, Ng teaches adding doxycycline as an inducing agent to induce over expression of a transcription factor, ETV2, in one of the genetically-engineered inducible hiPSC, during the differentiation step (Figure 3.1, 3.7; 3.3.7 Generation of stable vasculature within cerebral organoids; 3.5.9 Cerebral organoid culture).
Regarding claim 47, Ng teaches adding doxycycline as an inducing agent to induce over expression of a transcription factor, ETV2, in one of the genetically-engineered inducible hiPSC to concurrently induce differentiation of the wild type hiPSC and the genetically-engineered hiPSCs into divergent cells i.e. neural cells and endothelial cells (Figure 3.1, 3.7; 3.3.7 Generation of stable vasculature within cerebral organoids; 3.5.9 Cerebral organoid culture).
Regarding claim 48, Ng teaches a method for generating a multicellular cerebral organoid which is 3D brain-specific tissue (Chapter 3). The method comprises culturing unmodified i.e. wild type hiPSC with genetically-engineered hiPSCs that comprise a doxycycline-inducible endothelial transcription factor together in the same culture medium (= step (i) in part; Figure 3.1, 3.7; 3.3.7 Generation of stable vasculature within cerebral organoids; 3.5.9 Cerebral organoid culture.). The method further comprises adding doxycycline as an inducing agent to induce over expression of a transcription factor, ETV2, in one of the genetically-engineered inducible hiPSC to concurrently induce differentiation of the wild type hiPSC and the genetically-engineered hiPSCs into divergent cells i.e. neural cells and endothelial cells (= step (ii); Figure 3.1, 3.7; 3.3.7 Generation of stable vasculature within cerebral organoids; 3.5.9 Cerebral organoid culture.). The method, thus results in differentiation of the wild type hiPSC and the genetically-engineered hiPSCs into divergent cells i.e. neural cells and endothelial cells thereby forming a multicellular organoid which is 3D brain-specific tissue that can be programmed by doxycycline (= iii).
Ng generated their cerebral organoid by mixing wild type hiPSC and the genetically-engineered inducible hiPSCs and not two genetically-engineered inducible hiPSCs as required by claims 1 and 48.
However, Ng provides teaching, suggestion and motivation to include more than one genetically-engineered inducible hiPSCs in organoids.
Ng identifies transcription factors that can induce differentiation in stem cells without need for additional differentiation inducing factors (Figure 2.3D; 2.3.3 A pooled, FACS-based TFome screen reveals hundreds of TFs can induce loss of pluripotency) and validate some of these identified transcription factor in hiPSC by generating genetically-engineered hiPSCs comprising the doxycycline-inducible transcription factors (2.3.5 Validation of hits reveal diverse morphologies). They teach “ATOH1 and NEUROG3-induced cells appeared to exhibit neurites similar to neuronal cells. NKX3.2 and ETV2-induced cells had large, flatten morphologies. However they were subtly different, as ETV2 cells appeared to be space-filling whereas NKX3.2 cells were larger and in contact with each other. FOXC1, SOX14, HOXB6, ZSCAN1 and MITF appeared flat with comparatively smaller size” (page 24, last para; Figure 2.5; 2.3.7 NKX3-2 induces stromal fibroblast-like cells; 2.3.8 NEUROG3 induces neuronal differentiation; 3.3.2 A splice isoform of ETV2 induces potent endothelial differentiation). Critically, they teach that this ability of certain transcription factors to rapidly induce differentiation in stem cells, without any need of external differentiation factors, was already known based on prior work from their lab showing “based on our previous work using NEUROG1/2 to induce neuronal differentiation with >90% efficiency in only four days in pluripotency-maintaining conditions (28), we hypothesized the existence of other TFs that are equally potent at differentiating cells under the same conditions” (page 16, para 1; 1.3 Transcription factors for cell conversion). Ng also show this by inducing differentiation of ETV-hiPSC into endothelial cells in the presence of a neural differentiation medium when making their organoid (3.3.3 Potent endothelial differentiation in neural-inducing conditions, 3.3.4 Endothelial cells remain stable after doxycycline withdrawal). Thus, in line with previous findings, Ng show that hiPSC that are genetically engineered to overexpress cell-specific transcription factors, such as ETV2, can override the cues from the differentiation media and thus can be used in a system containing non-endothelial differentiation media.
Ng teaches several genetically-engineered hiPSCs with inducible promoters operably linked to transcription factors that upon induction differentiate the hiPSC into other cell types. For example, in addition to hiPSCs with doxycycline-inducible endothelial transcription factor, Ng also teaches genetically-engineered hiPSCs with doxycycline-inducible neural transcription factor and genetically-engineered hiPSCs with doxycycline-inducible stromal transcription factor (2.3.7 NKX3-2 induces stromal fibroblast-like cells; 2.3.8 NEUROG3 induces neuronal differentiation; 3.3.2 A splice isoform of ETV2 induces potent endothelial differentiation).
Furthermore, Ng teaches “the ability to induce alternative cell fates within the same media conditions using genetic components could enable sophisticated genetic circuits that carefully guide organoid development. This approach may be used to incorporate additional missing cell types,” (page 69) and “With this strategy, we can incorporate additional cell types to organoids and control their timing. Additional modes of control would be ideal: orthogonal inducible or conditional promoters would allow additional cell types to be differentiated separately, rather than all at once under doxycycline control” (page 70).
Taken together, Ng provides teachings regarding various hiPSCs with doxycycline-inducible transcription factors and their use in organoids. Ng also suggests that organoids with several cell types could be combined and induced to differentiate into divergent cell types based on the inducible genetic components.
Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine more than one genetically-engineered inducible hiPSCs in the method to produce an programmable multicellular organoid, as taught by Ng. An ordinary artisan would be motivated to combine more than one genetically-engineered inducible hiPSCs in an organoid because it would allow for precise spatial and/or temporal control of hiPSC differentiation into divergent cell types based on exposure to the inducing agent resulting in a more controlled organoid. An ordinary artisan would reasonably expect to combine more than one genetically-engineered inducible hiPSCs in an organoid because Ng teaches various hiPSC with inducible promoters that drive transcription factors that rapidly differentiate the hiPSCs into distinct cells without need for any additional elements and also teaches the use of an hiPSC with inducible promoters that drive transcription factors in an organoid.
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.
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 1-4, 6-8, 10, 11, 12, 13, 46, 47, 48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24, 26-28, 30, 31 of U.S. Patent No. 11,214,768 in view of Ng, Hon Man Alex. April 2018. Differentiation of Human Cells and Tissues Using a Comprehensive Human Transcription Factor Library. Doctoral dissertation, Harvard University, Graduate School of Arts & Sciences. Publication date 2018-04-24.
Regarding instant claim 1, 12, Claim 24 of `768 is directed to a method of generating a functional human tissue wherein the tissue comprises organoids produced by the steps recited in claim 24. The steps recites are culturing a wild type population of cells and a genetically-engineered inducible population of cells and then inducing differentiation of the genetically-engineered inducible population of cells into a first organoid cells and differentiating the wild-type cells into a second organoid cells. Thus, the method of `768 produces a multicellular organoid that is programmable due to the presence of the genetically-engineered inducible population of cells.
Regarding instant claim 2, Claim 27, 31 of `768 identifies the cells as pluripotent stem cells.
Regarding instant claim 3, 4, Claim 26 of `768 identifies promoters comprised in the genetically-engineered inducible population of cells.
Regarding instant claims 6-8, claims 28, 30 of `768 identify use of inducing agent such as doxycycline.
Regarding instant claim 10, Claim 24 of `768 teach a wild type population of cells that are differentiated into a first organoid cells.
Regarding instant claims 46-48, claim 28 and 30 of `768 teach introducing an inducing agent to induce differentiation.
Claims of `768 does not teach culturing two genetically-engineered inducible population of cells.
Ng teaches various hiPSCs with doxycycline-inducible transcription factors and their use in organoids (page 24, last para; Figure 2.5; 2.3.7 NKX3-2 induces stromal fibroblast-like cells; 2.3.8 NEUROG3 induces neuronal differentiation; 3.3.2 A splice isoform of ETV2 induces potent endothelial differentiation; Figure 3.1, 3.7; 3.3.7 Generation of stable vasculature within cerebral organoids; 3.5.9 Cerebral organoid culture). Ng also suggests that organoids with several cell types could be combined and induced to differentiate into divergent cell types based on the inducible genetic components (page 16, 69, 70).
Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine more than one genetically-engineered inducible hiPSCs, taught by Ng, in the method to produce an programmable multicellular organoid, as taught by `768. An ordinary artisan would be motivated to combine more than one genetically-engineered inducible hiPSCs in an organoid because it would allow for precise spatial and/or temporal control of hiPSC differentiation into divergent cell types based on exposure to the inducing agent resulting in a more controlled organoid, based on teachings from Ng. An ordinary artisan would reasonably expect to combine more than one genetically-engineered inducible hiPSCs in an organoid because Ng teaches various hiPSC with inducible promoters that induce rapidly differentiation of hiPSCs into distinct cells and `768 teaches the use of an hiPSC with inducible promoters that drive differentiation of hiPSC in an organoid.
Response to Arguments
Applicant’s arguments with respect to claim(s) Claims 1-8, 10-13, and 46-48 have been considered but are moot because the new ground of rejection necessitated by claim amendments.
Arguments pertinent to instant rejection are addressed below.
First, Applicant argue “surprising and unexpected” results stating that “the claimed
method enables simultaneous codifferentiation into distinct cell types to generate organoids”, “For example, using the claimed method, Applicant was able to orthogonally differentiate endothelial cells and neurons from genetically-engineered inducible stem cells (hiPSCs) in a "one-pot system" containing either neural or endothelial stem cell specifying media.” (page 19, para 1). Applicant also assert that “tailoring is achieved, e.g., by adjusting the initial
ratio and/or composition of pluripotent or multipotent stem cell populations to deterministically
define the different cell types and quantity within the resulting organoid, by overexpression of
transcription factors. As a consequence, the resulting multicellular organoid obtained by the
claimed method includes at least two divergent populations of differentiated or
transdifferentiated programmable multicellular organoid cells, such as orthogonally
differentiated endothelial cells and neurons.”. (page 19, para 2). This argument is essentially repeated on page 23-24 and addressed below.
In response, as noted in the rejection, Ng teaches that hiPSC genetically engineered with an doxycycline-inducible endothelial promoter ETV2 (same as the specification) can be differentiated into endothelial cells when present in an organoid even in the presence of neural differentiation medium (same as the specification). Ng teaches other hiPSCs that are genetically engineered with other doxycycline-inducible promoters that can be differentiated without cell-specific differentiation medium. Thus, it is not surprising that hiPSC genetically engineered with an doxycycline-inducible promoters could be differentiated into their respective cell types in the same pot when induced with doxycycline. In the instant specification, in one embodiment, hiPSC genetically engineered with an doxycycline-inducible endothelial promoter ETV2 (taught by Ng) were mixed with WT hiPSC (also taught by Ng) in neural differentiation medium and doxycycline (same as Ng) ([0161], Figure 3). In another embodiment, hiPSC genetically engineered with an doxycycline-inducible endothelial promoter ETV2 (taught by Ng) were mixed with WT hiPSC (also taught by Ng) along with hiPSC genetically engineered with an doxycycline-inducible neuronal promoter NEUROG1 (also taught by Ng) again in neural differentiation medium and doxycycline (same as Ng) ([0163], Figure 4). Unsurprisingly, in this neural differentiation medium WT hiPSC but also hiPSC genetically engineered with an doxycycline-inducible neuronal promoter NEUROG1 form neurons while hiPSC genetically engineered with an doxycycline-inducible endothelial promoter ETV2 form endothelial cells, as is expected from Ng’s results that show that hiPSC genetically engineered with an doxycycline-inducible endothelial promoter ETV2 differentiate into endothelial cells in the presence of neural differentiation media.
Regarding “tailoring” by adjusting the initial ratio or composition of cells included in the organoid to effect the final product, it is unclear how this is effect is unexpected. The initial ratio or composition of cells included in an organoid is expected to effect the final product. Determining the initial ratio and composition of cells to include in an organoid is a natural first step of making an organoid. To this Ng, teaches their initial ratio and composition.
Regarding Ng, Applicant allege that “Ng's Requires One-Engineered, One Unmodified Populations of Cells, And This Requirement Was Scientifically Essential” (page 20). In support, Applicant point to page 54 of Ng that allegedly indicates that “Ng specifically required a
transcription factor that induces potent endothelial differentiation to override "neural-inducing
conditions" (page 20, last para) and that thus “There is no basis in Ng to predict that other transcription factors (e.g., ones described in Chapter 2 of Ng, e.g., NKX3-2, NEUROG3, etc.) would similarly override "neural-inducing conditions" and drive transcription factor-dependent differentiation in a shared cell culture (which is required by Applicant's claims) under concurrent doxycycline induction.” since “its transcription factor program
would similarly need to override external media cues. However, Ng identifies this as a
demanding and uncertain requirement that necessitated extensive isoform-level screening even
for the single TF (ETV2) used.” (page 21, para 1 and 2)
In response, at first it must be noted that the Applicant do not test any transcription factor program other than ETV2 and NEUROG1, both already taught by Ng. Furthermore, the only differentiation media tested when combining the two cell types (ETV2 and NEUROG1) to make organoid is the neural differentiation media. In arguendo, if there is no basis to predict that other transcription factor programs would to override external media cues, then the specification falls short of enablement.
On the other hand, Ng identifies several transcription factors that can induce differentiation in stem cells without need for additional differentiation inducing factors (Figure 2.3D; 2.3.3 A pooled, FACS-based TFome screen reveals hundreds of TFs can induce loss of pluripotency) and validate some of these identified transcription factor in hiPSC by generating genetically-engineered hiPSCs comprising the doxycycline-inducible transcription factors (2.3.5 Validation of hits reveal diverse morphologies). Indeed, Ng screened several factors to identify specific transcriptions factors and indeed the most potent amongst those that could override external differentiation cues, this does not suggest that Ng requires that one of the cell types in the organoid be unmodified. It is obvious that inclusion of the hiPSC with neural promoter could easily be substituted for WT-hiPSC, especially when the differentiation media is neuron specific, as is in the instant specification. Furthermore, Ng teaches that “the ability to induce alternative cell fates within the same media conditions using genetic components could enable sophisticated genetic circuits that carefully guide organoid development. This approach may be used to incorporate additional missing cell types,” (page 69). Thus, contrary to Applicant’s allegation, Ng does not support requirement of only one engineered and one WT cell types.
Next, regarding Ng, Applicant allege “No Suggestion in Ng of Combining Two (or More) Genetically-Engineered Inducible Populations of Stem Cells in Shared Cell Culture” (page 21). In support, Applicant allege that “all of Ng's Chapter 2 validation experiments were performed on individual hiPSC lines in isolation, not in a co-culture.” (page 22, para 1) and “Ng's passage cited by the Examiner refers to the prospect of extending Ng's existing approach of using wild-type hiPSCs and the genetically engineered inducible hiPSCs "to incorporate additional missing cell types, such as microglia and pericytes" into organoids, not to a cell culture system where two independently engineered inducible populations of stem cells are simultaneously induced with doxycycline.” (page 22, para 4). “There is no suggestion whatsoever in Ng of combining two (or more) genetically-engineered inducible populations of stem cells in a cell culture media” (page 23, para 1).
In response, as cited by the Applicant, Ng states “Third, the ability to induce alternative cell fates within the same media conditions using genetic components could enable sophisticated genetic circuits that carefully guide organoid development. This approach may be used to incorporate additional missing cell types, such as microglia and pericytes, as well as speed up the differentiation of oligodendrocytes and inhibitory neurons”. Thus, Ng explicitly teaches inclusion of more than one independently engineered inducible populations of stem cells. In arguendo, if Ng’s suggestion is limited to merely extending their approach that comprises a WT and a genetically engineered inducible hiPSCs with additional independently engineered inducible populations of stem cells that could give rise to microglia and pericytes, this does not preclude the claimed organoid. This is especially the case, since claims 10 and 11 specifically include WT hiPSC with the two genetically-engineered stem cell types. Furthermore, statements in Ng such as “Additional modes of control would be ideal: orthogonal inducible or conditional promoters would allow additional cell types to be differentiated separately, rather than all at once under doxycycline control.” (citation from Ng by Application) does not imply that Ng requires the cells types to be differentiated separately with different agents. These are merely additional suggestions for how to generate a programmable organoid which maybe ideal if an artisan desires to induce differentiation of the included cell types separately.
Next, regarding Ng, Applicant allege “Ng Teaches Away From Applicant's Claimed Method” (page 23). In support, Applicant allege that by stating "Additional modes of control would be ideal: orthogonal inducible or conditional promoters would allow additional cell types to be differentiated separately, rather than all at once under doxycycline control" (see page 70 of Ng), Ng considers co-induction under doxycycline control as undesirable.” (page 23, para 2).
In response, as noted above, the referenced statement does not imply that Ng requires the cells types to be differentiated separately with different agents. These are merely additional suggestions for how to generate a programmable organoid which may be ideal if an artisan desires to induce differentiation of the included cell types separately. Furthermore, these are not “limitation to be overcome through future development of orthogonal systems” (page 23, para 3) since such inducing agents other than doxycycline, such as light, arabinose, lactose, auxin, are already known in the art.
Applicant allege improper hindsight because “nowhere in Ng is there a teaching or even suggestion of combining more than one genetically-engineered inducible hiPSCs to allow for precise spatial and/or temporal control of hiPSC differentiation into divergent cell types based on exposure to the inducing agent resulting in a more controlled organoid” (page 24-25, bridging para). Applicant argue that the reasoning presented is circular because “The Examiner's reasoning does not explain why a skilled artisan would have expected this precise outcome based on Ng's disclosure, given that Ng expressly identified simultaneous doxycycline control of all engineered populations as a limitation and called for orthogonal promoter systems as a future solution” (page 24, para 1). Applicant allege that “The Examiner's reasoning, if accepted, would make obvious any combination of two individually examined engineered cell lines simply because each, in isolation, can differentiate when induced. Nowhere in Ng is there teaching and/or suggestion of whether two independently programmed populations of stem cells can be simultaneously induced in a shared culture to produce reliable, orthogonal outcomes, i.e., to produce "a programmable multicellular organoid comprising the two divergent populations of differentiated or transdifferentiated programmable multicellular organoid cells." (page 24, para 2).
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).
Further, “The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art”. See In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009) in MPEP 2143. However, Ng explicitly states that their method “enables control over the timing” and This approach may be used to […] speed up the differentiation” (page 69, last para) and spatial control is reasonably expected by controlling regions of exposure to inducing agents. Thus, contrary to Applicant’s allegation regarding circular reasoning, a skilled artisan would have expected to control at least the timing and reasonably the spatial-aspect, based on Ng's disclosure. Herein again, Ng does not identify simultaneous doxycycline control of all engineered populations as a limitation (see analysis above).
Finally, regarding Applicant’s allegation that if the reasoning presented in the rejection above is accepted then it “would make obvious any combination of two individually examined engineered cell lines simply because each, in isolation, can differentiate when induced.”, it must be noted there is no assertion in the rejection that “any combination of two individually examined engineered cell lines simply because each, in isolation, can differentiate when induced”. However, Ng does teach specific engineered cell lines and teaches their ability to differentiate regardless of the differentiation media. Specifically, ETV2-hiPSC do indeed differentiate even in the presence of neural differentiation media. Furthermore, Ng suggests inclusion of other engineered stem cells taught by them.
Of note, although the claims are embracing any two engineered stem cells, with any inducible transcription factor in any differentiation media generating any organoid, the specification is limited to two transcription factor ETV2 and NEUROG1, both already taught by Ng. Furthermore, the only differentiation media tested when combining the two cell types (ETV2 and NEUROG1) to make organoid is the neural differentiation media. To this end, Ng teaches that ETV2-hiPSC is capable of differentiating into endothelial cells even in the presence of neural differentiation media.
Finally, Applicant argue that “Dependent Claims Are Also Non-Obvious” because of the arguments presented before (page 25, last para).
This is unpersuasive because arguments presented before were unpersuasive.
Applicant's arguments filed 5/14/2026 regarding the NSDP rejection of claims 1-4, 6-8, 10, 11, 12, 13, 46, 47, 48 have been fully considered but they are not persuasive.
Applicant argue that “As established above, Ng not only fails to teach this dual-engineered architecture but expressly identifies the use of multiple populations simultaneously under doxycycline control as a limitation to be overcome, and the proposed modification lacks a reasonable expectation of success.” (page 26, para 4)
This is unpersuasive because for the same reasons as the arguments presented before that this statement summarizes.
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 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
/ANOOP K SINGH/Primary Examiner, Art Unit 1632
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