Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
As of the Non-Final Office Action mailed 8/12/2025, claims 1-10 were pending.
In Applicant's Response filed on 10/14/2025 claims 1-3 and 5-9 were amended, claims 4 and 10 were canceled, and claims 11-27 were newly added.
As such, claims 1-3, 5-9, and 11-27 are pending and have been examined herein.
Withdrawn Objections/Rejections
The rejection of record of claim 1-10 under 35 USC § 112(b) have been withdrawn in view of Applicant’s amendment to claim 1-3, 5-9 and cancelation of claims 4 and 10.
The rejection of record of claim 10 under 35 USC § 101 is moot due to its cancelation.
The rejection of record of claim 10 under 35 USC § 102 is moot in view of its cancelation.
Maintained/Modified Rejections
The rejection of record of claims 1, 4, and 6-10 under 35 USC § 102(a)(1) as being anticipated by Sugimoto et al (Sci Rep 18 Dec 2017) has been fully considered but is not persuasive. The rejection of claims 4 and 10 are moot due to their cancelation. The rejection has been recast below to account for amendments to independent claim 1 and newly added claims. Response to arguments will follow the rejection.
The rejection of record of claims 2-3 under 35 USC § 103 as being unpatentable over Sugimoto et al (Sci Rep 18 Dec 2017) as applied to claims 1, 4, and 6-10 and further in view of Guo et al (Ann Biomed Eng. 17 Nov 2015) has been fully considered but is not persuasive. The rejection has been recast below to account for amendments to claim 2-3 and newly added claims. Response to arguments will follow the rejection.
The rejection of record of claim 5 under 35 USC § 103 as being unpatentable over Sugimoto et al as applied to claims 1, 4, and 6-10 and further in view of Ding et al (Mol Med Rep. 5 Aug 2014) has been fully considered but is not persuasive. The rejection has been recast below to account for amendments to claim 5 and newly added claims. Response to arguments will follow the rejection.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 6-9, 11-15, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sugimoto et al (Sci. Rep 2017 Dec 18; 7(1):17696; previously cited).
Sugimoto teaches that the extracellular environment regulates the dynamic behaviors of cells
(abstract). The reference teaches self-renewal and cell fate decisions of MSCs are extremely sensitive to changes in the extracellular environment and related factors, including extracellular matrix stiffness, cell culture medium, O2 concentration, three-dimensional scaffolds, and mechanical stress (Introduction para2). Primary human MSCs originated from a single human bone marrow (BMSCs) were obtained from Lonza (Materials and Methods, para 1) and human bone marrow-derived UE7T-13 cells were cultured in various amounts of media at 100% atmospheric conditions at 37 °C for 10 days and under different hydrostatic pressure in a custom pressure chamber ranging from 0.005 to 0.03 MPa (i.e., ~37 mm Hg to 225 mm Hg) (Results para 2; Fig. 1D) (“A method of culturing stem cells, characterized in that said method comprises a step of culturing stem cells in an atmospheric environment comprising an additional pressure applied in addition to an atmospheric pressure, wherein the additional pressure is 60-140 mmHg” as in instant claim 1; “characterized in that said additional pressure is constant” as in instant claim 4; “characterized in that the stem cells in said step are primary stem cells and/or passaged stem cells” as in instant claim 6; “characterized in that said stem cells are human stem cells” as in instant claim 7; “characterized in that said stem cells are mesenchymal stem cells” as in instant claim 8; “characterized in that said culturing is conducted at a temperature of 36.5-37.5 °C” as in instant claim 9; overlaps with “wherein said additional pressure is constant at a value within a range of 70-120” as in instant claim 11; “additional pressure is constant at a value within a range of 75 - 115 mmHg” as in instant claim 12; “additional pressure is constant at a value within a range of 80 - 110 mmHg” as in instant claim 13; “additional pressure is constant at a value within a range of 85 - 100 mmHg” as in instant claim 14; “additional pressure is constant at a value within a range of 90 - 95 mmHg” as in instant claim 15; “wherein said culturing is conducted at a temperature of 37” as in instant claim 23). The results suggested that 0.01 MPa hydrostatic pressure (i.e., ~75 mm Hg) promoted the differentiation of osteoblasts and inhibited the differentiation of adipocytes from MSCs (Results, para 4). Thus, hydrostatic pressure was strongly correlated with the cell fate decision of MSCs (same para).
Response to Arguments
Applicant’s arguments have been regarding the Sugimoto reference have been fully considered but are not persuasive.
On p. 6-7 of Remarks, Applicant argues that Sugimoto does not disclose each of the features of claim 1, namely “to maintain the stemness thereof” as recited in the preamble of the claim. Applicant argues that this recitation requires that the stem cells remain undifferentiated and retain their multipotent capacity and directed the examiner’s attention to working example 4 for support. Applicant argues that, because Sugimoto’s focus is on identifying factors and mechanisms that regulate differentiation outcomes, the instant claims are patentably distinguishable.
In response, the examiner disagrees. The preamble “to maintain stemness thereof” in claim 1 merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitation. The preamble is not considered a limitation and is of no significance to claim construction (see MPEP 2111.02(II)). Please note also that the instant specification contains no embodiments, working examples, or empirical evidence that applying additional pressure to stem cells (such as MSCs) on its own is sufficient to “maintain the stemness” of cells. The working example that Applicant points to only describes 4 conditions: (1) normoxia, (2) 5% hypoxia, (3) 5% hypoxia + static pressure, and (4) 5% hypoxia and dynamic pressure. The data derived from this example is inapplicable to the instant claims because, at a minimum, independent claim 1 does not require hypoxic conditions. As such, Sugimoto anticipates the invention of instant claims 1, 6-9, 11-15, and 23 and the rejection is proper.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 2-3, 16-17, and 24-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto et al as applied to claims 1, 6-9, 11-15, and 23 above, and further in view of Guo et al (Ann Biomed Eng. 17 Nov 2015; previously cited).
The teachings of Sugimoto were recited in the above 35 U.S.C. 102 rejection as applied to claim 1 of which claim 2-3, 16-17, and 24-27 depends. The teachings will not be repeated here.
The difference between Sugimoto and the invention as instantly claimed is that it does not teach sinusoidal periodic fluctuation of pressure (claims 2, 16-17) or the frequency of periodic fluctuation (3 and 24-27)
Guo teaches the effect of dynamic culture and periodic compression on human mesenchymal stem cells (title). The reference teaches that when compared to static culture, dynamic culture can maintain a higher cell population (abstract). Fig. 3B shows periodic dynamic compression with an applied pressure of ~4618 to 9008 Pa (~34-67 mm Hg) (overlaps with “characterized in that said additional pressure changes by way of sinusoidal periodic fluctuation within the range of 60-140 mmHg” as in instant claim 2). On day 21, the aggrecan gene expression decreased in the compressed group compared to day 14. The expression of Sox 9 maintained similar levels as day 14 until the last time point in the compressed group. A delay of type II collagen gene expression was observed in the compressed group during the study such that on day 14, the expression was higher in the uncompressed dynamic group compared to compressed group (Results para 6). However, on day 21, while the uncompressed group experienced a significant decrease of type II collagen expression, hMSCs exposed to mechanical compression showed an increasing trend when compared to the previous time point (same para). Results showed that a greater cell population in the dynamic group was maintained throughout the study than in the static group (Discussion para 2). Compared to hMSCs in dynamic culture in the TPS bioreactor, hMSCs exposed to additional periodic compression had higher expression level of aggrecan and type II collagen, the two main positive chondrogenic markers, at later time point after 14 days (Discussion, para 4). Figure 3B of Guo shows periodic fluctuation (dynamic compression) of mesenchymal stem cells of approximately 6 times/50 seconds. While the reference does not explicitly teach fluctuating as instantly claimed in instant claim 3 and 24-27, it would have been a matter of routine optimization using standard laboratory techniques available at the time of filing to determine the appropriate amount of times to fluctuate the hydrostatic pressure as instantly claimed to improve cell population during culture as taught by Guo with a reasonable expectation of success.
Therefore, it would have been obvious prior to the effective filing date of the instantly claimed invention to culture stem cells under additional pressure as taught by Sugimoto, where the additional pressure is applied with periodic fluctuation as taught by Guo, to arrive at the instantly claimed invention. As Guo shows that human MSCs can be cultured under periodically fluctuating pressure, one of ordinary skill would have been motivated to modify the method of Sugimoto to include periodic fluctuation as taught by Guo with a reasonable expectation of advantageously maintaining higher cell population of the MSCs as taught by the prior art.
Regarding claims 16-17, Guo does not explicitly teach at least 70 mm Hg (claim 16) or at least 75 mm Hg (claim 17). However, it does teach 67 mm Hg. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys.") (see MPEP 2144.05(I)).
Response to Arguments
On p. 8 of Remarks, Applicant argues that one of ordinary skill in the art would not consult Sugimoto nor would they look to Guo because Guo is purportedly less materially relevant as it does not disclose or suggest culturing cells in an atmospheric environment. Applicant also argues that the pressure described in Guo are not air pressure, but rather mechanical pressure. Applicant further argues that Guo describes promoting chondrogenic differentiation rather than preserving stemness.
In response, the examiner notes that the maintaining stemness is within the preamble and non-limiting (see above). Second, even if, arguendo, Guo does not disclose culturing in an atmospheric environment within its disclosure, the Sugimoto reference does. The Guo reference was not cited to render obvious the use of atmospheric pressure. Finally, even if, arguendo, the pressure described in Guo is a mechanical pressure, the instant claims do not limit the “additional pressure” to be “air pressure.” Thus, the rejection is proper.
Claim(s) 5, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto et al as applied to claims 1, 6-9, 11-15, and 23 above, and further in view of Ding et al (Mol Med Rep 5 Aug 2014; 10(4):2184-90).
The teachings of Sugimoto were recited in the above 35 U.S.C. 102 rejection as applied to claim 1 of which claim 5 depends. The teachings will not be repeated here.
The difference between Sugimoto and the invention as instantly claimed is that it does not teach that the atmospheric environment comprises an oxygen concentration of 2-20% (i.e., hypoxia; claim 5), 2-8% (claim 18), and 3-7% (claim 19).
Ding teaches that continuous hypoxia regulates the osteogenic potential of mesenchymal stem cells (title, abstract). 1% hypoxia was able to enhance and accelerate the osteogenic ability of the MSCs during the initial phases of differentiation, and the protein expression of certain associated biomarkers was upregulated (abstract). The reference also teaches that 30-fold increase in hMSC expansion was obtained over six weeks without loss of multi-lineage differentiation capabilities when hMSCs were maintained in an atmosphere of 2% hypoxia (Introduction, para 3). Furthermore, it has been demonstrated that hypoxia can promote chondrogenesis of MSCs through the transcriptional activity of SRY (sex determining region Y)-box 9 and HIF-1α (Discussion, para 2). In the context of tissue engineering, when MSCs were seeded onto fibrin glue and cultured in a 3% O2 atmosphere, Oct-4 was shown to be stably expressed and an increase in directed differentiation was observed (same para). The oxygen conditions of 2-3% overlap with instant claims 3 and 18-19.
Therefore, it would have been obvious prior to the effective filing date of the instantly claimed invention to culture stem cells under additional pressure as taught by Sugimoto, where the cells are subjected to hypoxia as taught by Ding, to arrive at the instantly claimed invention. As Ding shows that mesenchymal stem cells can be cultured under hypoxia, one of ordinary skill would have been motivated to modify the method of Sugimoto with a reasonable expectation of advantageously increase hMSC expansion without loss of differentiation capabilities as taught by the prior art.
Response to Arguments
Applicant has not provided any arguments challenging the specific teachings of cited reference Ding nor has Applicant attempted to distinguish the instantly claimed invention from what is taught in the prior art reference.
New Grounds of Rejections Necessitated by Amendments
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto as applied to claims 1, 6-9, 11-15, and 23 above, and further in view of Lim et al (US20170369904A1, 6/21/2017; published 12/28/2017).
The teachings of Sugimoto were recited in the above 35 U.S.C. 102 rejection as applied to claim 1 of which claim 20-21 depend. The teachings will not be repeated here.
The difference between the combined teachings and the invention as instantly claimed is that they do not teach the oxygen concentration is in a range of 4%-7% (claim 20) or 5%-7% (claim 21).
Lim teaches a method of increasing transfection efficiency and cellular reprogramming. The reference teaches that culturing a cell in hypoxic conditions and positive pressure (see, e.g., claims 17 or 18 of Lim). The reference teaches that moderate oxygen and moderate pressure levels can be used to efficiently propagate cells while maintaining, for example, pluripotency (para 94). The oxygen levels can vary from about 5% to about 15% (same para) (overlaps with “wherein said atmospheric environment comprises an oxygen concentration in a range of 4% - 7%” as in instant claim 20; “wherein said atmospheric environment comprises an oxygen concentration in a range of 5% - 7%” as in instant claim 21).
Therefore, it would have been obvious prior to the effective filing date of the instantly claimed invention to culture stem cells under additional pressure as taught by Sugimoto, where the oxygen is between 5 and 15% as taught by Lim, to arrive at the instantly claimed invention. Lim shows that cells can be cultured in a combination of additional pressure and hypoxia between 5 and 15%. One of ordinary skill would have been motivated to modify the culture conditions of Sugimoto to include the hypoxic conditions of Lim with a reasonable expectation of advantageously propagating cells efficiently while maintaining pluripotency as taught by the prior art.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto as applied to claims 1, 6-9, 11-15, and 23 above, and further in view of Dai et al (J Biomech. 2014 Mar 21; 47(5):966-72).
The teachings of Sugimoto was recited in the above 35 U.S.C. 102 rejection as applied to claim 1 of which claim 22 depend. The teachings will not be repeated here.
The difference between the combined teachings and the invention as instantly claimed is that they do not teach that the stem cells are selected from the group consisting of human adipose mesenchymal stem cells, human endometrial mesenchymal stem cells, human hair follicle mesenchymal stem cells and human umbilical mesenchymal stem cells.
Dai teaches that dynamic compression and co-culture of adipose-derived mesenchymal stem cells with nucleus pulposus cells promotes proliferation and differentiation (title). The reference teaches that alginate beads were used to package the NPCs for separation from ASCs in T-25 culture flasks. NPCs were harvested from T-25 flask after 48-h culture and encapsulated in alginate beads in individual wells of six-well plates. The ten alginate beads encapsulating NPCs were co-incubated with ASCs (approximately 1:1 ratio) in a T-25 flask at 37 °C and 5% CO2 in DMEM/F12 with 10% heat-inactivated fetal bovine serum. Mechanical stimulation was achieved by a dynamic compression apparatus shown in Supplementary data Fig. 1. The flask pressure was controlled by adjusting the air pressure at both entrance and exit. An open pressure-adjusting system was created by placing the gas circulating system in the CO2 incubator, including a pressure pump, control device, flow valve and an incubator (Fig. 3). The pressure pump was set to provide intermittent dynamic hydrostatic pressure at 17 kPa under 220 V. The apparatus operated on alternating 12-h shifts of work and rest. It allowed 4 days of proliferation and 7 days of differentiation (“Co-culture and dynamic compression” para 1-2).
Therefore, it would have been obvious prior to the effective filing date of the instantly claimed invention to culture stem cells under additional pressure as taught by Sugimoto where the cells are adipose mesenchymal stem cells as taught by Dai, to arrive at the instantly claimed invention. As Dai shows that adipose mesenchymal stem cells can be cultured under dynamic pressure conditions, one of ordinary skill would have been motivated to simply substitute one known element (stem cell of Sugimoto) for another (adipose mesenchymal stem cell of Dai) to obtain the predictable result of advantageously promoting proliferation of the cells.
Conclusion
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 GILLIAN C REGLAS whose telephone number is (571)270-0320. The examiner can normally be reached T-F 7-3.
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/G.R./Examiner, Art Unit 1632 /KARA D JOHNSON/Primary Examiner, Art Unit 1632
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