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 .
Claim Status
Claims 1-15 and 17-20 are pending.
Claims 10-15 and 17-20 are withdrawn.
Claims 1-9 are under examination.
Election/Restrictions
Applicant’s election with traverse of the following invention
Invention
Group I, claims 1-9, drawn to a method for producing a population of cardiac stromal cells from pluripotent stem cells
in the reply filed on 7th, October, 2025 is acknowledged.
Applicant’s traversal is on the grounds that “Applicant submits that the claims of Groups I-III all concern cardiac stromal cells with a specific expression profile of at least 80% of the stromal cell population expressing CD90, CD73, and CD44. Notably, the prior art cited by the examiner (Sommariva et al.) fails to disclose or suggest the CD73 biomarker. As such the expression profile required by the instant claims is not disclosed or suggested by the prior art. As such, the present claims have unity of invention and the claims of Groups II and III should be rejoined and examined” (pg. 2).
In response, first, as previously stated in the Lack of Unity mailed 8th, August, 2025, Group IV is a cell culture media that recites an intended use for amplification of cardiac stromal cells. The recitation of cardiac stromal cells is an intended use and the cells themselves are not required for this Group. Accordingly, as previously stated, Group IV lacks unity with the other groups.
Further in response, regarding Groups I-III, the alleged special technical feature of “cardiac stromal cells with a specific expression profile of at least 80% of the stromal cell population expressing CD90, CD73, and CD44” cited by Applicant is still not novel because it is disclosed by Subramani et al. (Cytotechnology. 2016 Oct;68(5):2061-73. Epub 2016 Jan 28.; henceforth “Subramani”).
Regarding the technical feature, Subramani teaches isolated (in vitro) cardiac stromal cells (human cardiac-derived MSCs or hC-MSCs) with a specific expression profile of 99.7% positive for CD73, 99.9% CD90 and 98.8 % positive for CD44 (abstract; Figure 1), which is more than the “at least 80%.”
Accordingly, the alleged technical feature is still not novel and the groups lack unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
The examiner notes that newly added claims 17-20, which recite uses of the population of cardiac stromal cells and the population of cardiac stromal cells belong in unelected Group II as previously set forth in the Lack of Unity mailed on 8th, August, 2025 and accordingly they are withdrawn below as being drawn to a nonelected invention.
Claims 10-15 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 1, 3 and 8-9 are objected to because of the following informalities:
Claims 1, 3 and 9 include periods before the end of the claim (e.g. “i.” in claim 1). Periods are only allowed at the end of a claim. Applicant is directed to MPEP 608.01(m) which states “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i).”
To overcome this objection to claims 1, 3 and 9, it is recommended that Applicant amend all instances of periods before the end of the claim to parentheses (for example, “i.” in claim 1 would be amended to “i)” or “(i)”).
Claims 1, 3, and 9 include capital letters in the middle of the claim (e.g. “Inducing” and “Amplifying” in claim 1) which should not be capitalized (see MPEP 608.01(m)).
Claim 3 recites “i. Inducing epithelial-mesenchymal transition of epicardial cells obtained by differentiation of pluripotent stem cells, wherein the epicardial cells express Wilms tumor antigen (WT-I), wherein by inducing epithelial-mesenchymal transition the epicardial cells are differentiated into cardiac stromal cells, wherein inducing epithelial-mesenchymal transition comprises,” “a1) culturing said epicardial cells under suitable conditions in the presence of an first extracellular matrix protein in a serum-free basal medium, ” “a2) culturing the cells of step (i) a1) under suitable conditions in the presence of a second extracellular matrix protein in a serum-free basal medium” and “Amplifying the number of said cardiac stromal cells by culturing said population of cardiac stromal cells of step (i) in the presence of at least one third extracellular matrix protein in a serum-free basal medium” which are all already recited in claim 1, upon which claim 3 depends. Therefore, these are unnecessarily redundant to include in claim 3.
Claim 8 is objected to because it improperly attempts to incorporate a non-patent literature by reference.
Claim 8 recites “the epicardial cells are obtained as described in Schlick (2018), Doctoral Thesis, November 2018, University of Gottingen, Witty et al. Nat Biotechnology 32, 1026-1035 (2014),” which attempts to improperly incorporate non patent literature references into the claim.
The attempt to incorporate subject matter into this application by reference to “Schlick (2018), Doctoral Thesis, November 2018, University of Gottingen, Witty et al. Nat Biotechnology 32, 1026-1035 (2014),” is ineffective for the reasons stated below.
Regarding claim 8, Applicant is first directed to Rule 75(d)(1) (see MPEP 608.01(i)) which states “The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.” The recited “Schlick (2018)” and “Witty et al.” references are not “the invention as set forth in the remainder of the specification” and also do not “find clear support or antecedent basis in the description” because they are non-patent literature documents.
Regarding claim 8, Applicant is next directed to Rule 57(d) which states “"Essential material" may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference.” (see also MPEP 608.01(p)). Claim 8 attempts to incorporate non-patent literature references which are not “a U.S. patent, or U.S. patent application publication” and therefore the incorporation by reference in claim 8 is improper.
Lastly, regarding claim 8, Applicant is again directed to Rule 57(d) which states “an incorporation by reference must be set forth in the specification and must:(1) Express a clear intent to incorporate by reference by using the root words "incorporat(e)" and "reference" (e.g., "incorporate by reference"); and (2) Clearly identify the referenced patent, application, or publication.” In the instant case, the attempt to incorporate by reference in set forth in claim 8, and is therefore improper.
The incorporation by reference will not be effective until correction is made to comply with 37 CFR 1.57(c), (d), or (e). If the incorporated material is relied upon to meet any outstanding objection, rejection, or other requirement imposed by the Office, the correction must be made within any time period set by the Office for responding to the objection, rejection, or other requirement for the incorporation to be effective. Compliance will not be held in abeyance with respect to responding to the objection, rejection, or other requirement for the incorporation to be effective. In no case may the correction be made later than the close of prosecution as defined in 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.
Any correction inserting material by amendment that was previously incorporated by reference must be accompanied by a statement that the material being inserted is the material incorporated by reference and the amendment contains no new matter. 37 CFR 1.57(g).
Claim 9 recites “a2) culturing the cells of step (i) a1) under suitable conditions in the presence of a second extracellular matrix protein in a serum-free basal medium,” and “ii. Amplifying the number of said cardiac stromal cells by culturing said population of cardiac stromal cells of step (i) in the presence of at least one third extracellular matrix protein in a serum-free basal medium” which are all already recited in claim 1, upon which claim 9 depends. Therefore, these are unnecessarily redundant to include in claim 9.
Appropriate correction is required.
Objections to Specification
Browser-executable Code
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (https://d-nb.info/1177361744/34” pg. 95 line 24). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Interpretation
Instant claim 1 recites “Inducing epithelial-mesenchymal transition of epicardial cells obtained by differentiation of pluripotent stem cells.” It is noted that “obtained by differentiation of pluripotent stem cells.” is a product-by process limitation with respect to the pluripotent stem cells and is not an active method step.
Applicant is reminded that product-by process claims are not limited by the manipulation of the recited steps, only the structure implied by the steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113).
In the instant case, the limitation of “epicardial cells obtained by differentiation of pluripotent stem cells” as part of the instantly claimed method is met by all possible epicardial cells that are structurally indistinguishable from those that have been “obtained by differentiation of pluripotent stem cells.”
Claim Rejections - 35 USC § 112(a)
Scope of Enablement
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 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for
A method for producing a population of cardiac stromal cells from epicardial cells, the method comprising the steps of:
i) Inducing epithelial-mesenchymal transition of epicardial cells obtained by differentiation of pluripotent stem cells,
wherein the epicardial cells express Wilms tumor antigen (WT-1),
wherein by inducing epithelial-mesenchymal transition the epicardial cells are differentiated into cardiac stromal cells,
wherein inducing epithelial-mesenchymal transition comprises
a1) culturing said epicardial cells on laminin coated plates in a serum-free basal medium comprising Glutamine, serum replacement, 50 ng/ml FGF, VEGF, and a GSK-3 inhibitor for 4 days;
followed by
a2) culturing the cells of step (i) a1) on vitronectin coated plates in a serum-free basal medium comprising Glutamine, serum replacement, 50 ng/ml FGF, and VEGF for 7 days, passaging the cells; and
culturing the cells on vitronectin coated plates a serum-free basal medium comprising Glutamine, serum replacement, 50 ng/ml FGF, and VEGF for 6 days to obtain cardiac stromal cells; and
passaging the cells;
wherein at least 80 % of the cells of the obtained population of cardiac stromal cells express CD90, CD73, and CD44; and
ii) Amplifying the number of said cardiac stromal cells by culturing said population of cardiac stromal cells of step (i) on an extracellular matrix protein-coated plate comprising Glutamine, serum replacement, 50 ng/ml FGF, and VEGF for up to 9 passages,
wherein at least 90% of the cells of the cardiac stromal cell population maintain the expression of CD90, CD73, and CD44.
does not reasonably provide enablement for:
All other “suitable conditions” for culturing including
All other culture media components and concentrations of components for the basal medias
All other timings and all other durations of culture
All other amplifying by culturing steps including
All other culture media components for the basal medias
All other plating conditions
All other passaging numbers.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the method of the invention commensurate in scope with these claims.
Wands Factors
The factors to be considered in determining whether undue experimentation is required are summarized In re Wands 858 F.2d 731, 8 USPQ2nd 1400 (Fed. Cir, 1988). The Court in Wands states: “Enablement is not precluded by the necessity for some 'experimentation.'” Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. “Whether undue experimentation is needed is not a single simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” (Wands, 8 USPQ2d 1404). The factors to be considered in determining whether undue experimentation is required include: (1) the quantity of experimentation necessary, (2) the amount or direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. While all of these factors are considered, a sufficient amount for a prima facie case is discussed below.
Breadth of the Claims
Instant claims encompass:
“Inducing epithelial-mesenchymal transition of epicardial cells,” where the epicardial cells are positive for WT-1, comprising “a1) culturing said epicardial cells under suitable conditions in the presence of a first extracellular matrix protein in a serum-free basal medium” and “a2) culturing the cells of step (i) a1) under suitable conditions in the presence of a second extracellular matrix protein in a serum-free basal medium.”
This encompasses all possible method steps with “suitable conditions” including but not necessarily limited to all culture timings, media components, basal medium types, 2D or 3D culture, or atmospheric conditions in addition to the recited conditions.
This also includes all possible extracellular matrix protein types and all possible serum-free basal medium types.
Importantly, steps a1) and a2) as claimed require the functional result of “at least about 80 % of the cells of the obtained population of cardiac stromal cells express CD90, CD73, and CD44.”
“Amplifying the number of said cardiac stromal cells by culturing said population of cardiac stromal cells of step (i) in the presence of at least one third extracellular matrix protein in a serum-free basal medium”
This encompasses all possible method steps of “Amplifying” including but not necessarily limited to all possible passaging numbers, splits ratios, passaging timings, media components or atmospheric conditions in addition to the recited conditions
Importantly, step ii. requires the functional result of “at least 80% of the cells of the cardiac stromal cell population maintain the expression of CD90, CD73, and CD44.” (claim 1 and dependents)
For dependent claim 3, step i. a1 requires the functional result of “the expression of CD90 in at least 50% of the cells obtained by step (i) al), the expression of CD73 in at most 50% of the cells obtained by step (i) a1), and the expression of CD44 in at most 30% of the cells obtained by step (i) a1).
Direction or Guidance Presented
While contemplating “suitable conditions” for inducing epithelial-mesenchymal transition of epicardial cells, Applicant provides limited guidance on conditions that arrive at the claimed functional results of at least about 80 % of the cells of the obtained population of cardiac stromal cells express CD90, CD73, and CD44 (Examples 1, 3-4 and 7).
While contemplating amplifying the number of said cardiac stromal cells by culturing, Applicant provides limited guidance on amplification steps that arrive at the claimed functional result of at least 80 % of the cells of the cardiac stromal cell population maintain the expression of CD90, CD73, and
CD44 (Examples 1, 3-4 and 7).
Present Working Examples
Applicant discloses 8 working examples. Of the working examples disclosed, those considered pertinent are discussed below.
Example 1 (pg. 74 - 80)
“Generation of cardiac stromal cells in high quantity, high quality and under serum-free conditions”
Figures 1A and 8 Illustrate the serum-free differentiation/amplification method.
When starting from epicardial cells (day 0) the epithelial-mesenchymal transition is induced
comprising two sub-steps: (i) at) and (i) a2)
Step (i) (includes step a1) and step a2))
Epithelial-mesenchymal Transition
Step a1)
StC-EM+C medium, replaced with fresh StC-EM+C on day 1
Cells were cultivated on laminin coated plates
Cells were incubated with StC-EM+C medium until day 4
Step a2)
Starts on day 4 with passaging the cells onto vitronectin coated plates
accutase was warmed to room temperature and versene was warmed to at 37°C
cells were washed once with PBS (6 ml for a T75 flask), and then incubated with accutase (6 ml for a T75 flask) for 10-20 minutes
versene (6 ml for a T75 flask) was added to the accutase and incubated for 5 min
StC-EM medium (12 ml for a T75 flask) was added to the pool cells and the cells were centrifuged at 300xg for 5 min at room temperature
cells were diluted with StC-EM medium in order to obtain a density of 3x10E6 cells in 15 ml so that the cells can be plated
On days 7 and 9, the medium was replaced by fresh StC-EM medium.
Due to cell division, the cells were passaged again on day 11 on vitronectin plates
On days 14 and 16 the medium was again replaced by fresh StC-EM medium
On day 17, step (i) a2) of the protocol was completed and cardiac stromal cells were generated
Step (ii)
Amplifying the Cell Number of Cardiac Stromal Cells
Cells were passaged using accutase and versine on day 17 and cultured in StC-EM medium
Medium was exchanged every second day and further passaging was performed every week
Cardiac stromal cells can also be harvested and used for tissue engineering after every passage and were characterized by the maintained expression of CD90, CD44 and CD73 in at least 90% of the cells.
Pg. 77 lists a table with exact media volumes for a small scale and large scale generation of cardiac stromal cells which is copied below for reference.
PNG
media_image1.png
698
951
media_image1.png
Greyscale
Media preparations are describe on pg. 79-80
Stromal cell induction medium (StC-IM) (used in step (i))
Final concentration of the ingredients is provided in Figure 8, which is copied below:
PNG
media_image2.png
675
1046
media_image2.png
Greyscale
An Example preparation for StC-IM is included as the following table.
PNG
media_image3.png
353
859
media_image3.png
Greyscale
Basal serum free medium (BSFM; 4°C) (used in step (i**))
BSFM was prepared and comprised RPMI 1640 with Glutamax, 1% of 100X sodium pyruvate,
2% B27 supplement, and 200uM ASC.
Stromal cell specification medium (StC-SM) (used in step (i**))
The final concentration of the ingredients is also provided in Figure 8. StC-SM was obtained by supplementing BSFM with 50 ng/ml BMP4 (50 µl stock in 10 ml medium), 4µmol/L retinoic acid (5 µl stock in 10 ml medium), and 1 µM CHIR (1 µl stock in 10ml medium).
Stromal cell amplification medium with CHIR (StC-EM+C) (used in step (i) a1))
Medium was obtained by supplementing KO DMEM medium with 1% Glutamine, 10% (CTS) KO Serum Replacement, 50 ng/ml FGF (50 µl stock in 10 ml medium), 25 ng/ml VEGF and 1 µM CHIR (1 µl stock in 10ml medium).
Stromal cell amplification medium (StC-EM) (used in step (i) a2) and step (ii))
Medium was obtained by supplementing KO DMEM medium with 1% Glutamine, 10% (CTS) KO Serum Replacement, 50 ng/ml FGF (50 µl stock in 10 ml medium), and 25 ng/ml VEGF.
Example 3 (pg. 81-82)
Example 3 analyzed the cardiac stromal cells for purity.
The cells were analyzed by flow cytometry (Figure 3A).
The expression of CD90, CD44, CD73 (extracellular markers) and Collagen 1 and Vimentin (intracellular markers) after step (i) a2) was assessed in order to characterize the generated cardiac stromal cells.
The proportion of CD90 positive cells was 95%.
The proportion of CD44 positive cells was 99%.
The proportion of CD73 positive cells was 99%.
The proportion of Collagen 1 positive cells was 97%.
The proportion of Vimentin positive cells was 98%.
The cells were also analyzed by fluorescence microscopy (Figure 3B).
Vimentin, anti-human fibroblast specific protein and Collagen1 were stained immunologically and DNA of the cell nuclei was visualized with Hoechst 33342.
All three markers show a homogenous distribution and a high purity of cardiac stromal cells after step (i) a2).
CD90, CD73 and CD44 were also assessed by FACS during the differentiation and amplification protocol (Figure 3C).
After completion of step (i) at) (culture day 4) more than 50% of the cells expressed CD90; less than 50% of the cells expressed CD73; less than 30% of the cells expressed CD44, and more than 80% of the cells expressed vimentin.
On culture day 17 (during step (i) a2)) the markers CD90, CD73, and vimentin were expressed in more than 90% of the cells, the marker CD44 was expressed in more than 80% of the cells.
After completion of step (i) a2) (culture day 17) the markers CD90, CD73, CD44, and vimentin were expressed in more than 90% of the cells.
The expression profile after the optional step (i*) was also assessed (culture day -7; Figure 8) and more than 90% of the cells expressed CD90, less than 10% of the cells expressed CD73, less than 10% of the cells expressed CD44, and more than 40% of the cells expressed vimentin.
CD73 was successively more expressed over the course of the differentiation.
CD44 was also successively more expressed over the course of the differentiation and amplification protocol.
Example 4 (pg. 82)
Mass amplification and maintained expression of characteristic markers of cardiac stromal cells
FACS analyses of the cardiac stromal cells at passage 9 was performed (Figure 3D), after the cardiac stromal cells were already amplified over 5 passages (see Figure 2).
More than 90% of the amplified cardiac stromal cells expressed CD90, CD44, and CD73. Thus, cardiac stromal cells retained the phenotype after step (i) a2) stably and maintained expression of said characteristic markers
Example 7 (pg. 85)
Amplification of cardiac stromal cells can only be performed in the presence of an extracellular matrix protein and does not work on uncoated culture surfaces under strictly serum-free conditions
The cardiac stromal cells were cultivated on vitronectin, laminin LN-521, collagen in the form of gelatine, fibronectin, Matrigel coated and on uncoated plates for passage 5 and 6 and the results are shown in Figure 7.
All ECM protein coated plates (vitronectin, LN-521, gelatine, fibronectin) and the Matrigel coated plates supported further amplification of the cardiac fibroblasts, while the cardiac stromal cells on the uncoated plates died in passage 5 on the uncoated plates. Thus, the cardiac stromal cells according to Figures 1 or 8 cannot be expanded on uncoated plates.
State of the Prior Art and Unpredictability of the Art
Marker Expression
Regarding specific marker expression in cell culture conditions, Applicant is directed to the art of Nims et al. (In Vitro Cell Dev Biol Anim . 2017 Dec;53(10):880-887. Epub 2017 Dec 1.; henceforth “Nims”). Nims evidences cell phenotypes can change as a result of changes in culture conditions (pg. 886 col. 1 4th para.).
Regarding specific marker expression in cell culture conditions, Applicant is additionally directed to the post art of Cao et al. (Stem Cell Rev Rep. 2024 Jun 5;20(6):1656–1666.; henceforth “Cao”). Cao evidences culture conditions affect expression of various markers (“Culture conditions, including the culture medium employed and the degree of confluence” pg. 1657 col. 1 2nd para.).
CD90 Expression in Cardiac Stromal Cells
Kamp
Regarding CD90 expression in Cardiac Stromal cells, Applicant is first directed to the art of Kamp et al. (US-2018/0094245-A1; see IDS filed 23rd, May, 2023; henceforth “Kamp”). Kamp evidences a method for generating high-yield cardiac stromal cells (cardiac fibroblasts). However, Kamp evidences obtaining expression of CD90 in 80% of the cells after differentiation is unpredictable as Kamp evidences only about 25-50% CD90+ cells after one passage, and apparent complete loss of the marker after passage 8 (Figure 3C). Further, Kamp specifically states “CD90 was robustly expressed in hPSCs, but its expression gradually declined during the differentiation. Most of the cells expressed CD90 at days 2-3 (>80%) but the expression level of CD90 was relatively lower than in hPSCs (FIG. 1B).” (para. [0092]). Kamp further states “expression ofCD90 was present on only a fraction of hPSC-CF or HNCF-V (22-40%) and was present on a progressively smaller percentage of cells with passaging” (para. [0095]).
For reference, relevant Figures 2C and 3C of Kamp are copied below.
Relevant portion of Figure 2C of Kamp
PNG
media_image4.png
267
416
media_image4.png
Greyscale
Figure 3C of Kamp
PNG
media_image5.png
480
700
media_image5.png
Greyscale
Therefore, Kamp evidences obtaining expression of CD90 after culturing and maintaining expression of CD90 during and after expansion (passaging) is not predictable.
It is noted that although Kamp presents a working example that uses medias with Serum (Example 1), Kamp specifically teaches that serum free mediums can be used with the method (para. [0057]) and Kamp specifically teaches alternatives to serums that can be used with the method and therefore the CD90 expression issues of Kamp are considered pertinent to the instantly claimed method.
Cornwell
Regarding CD90 expression in Cardiac Stromal cells, Applicant is directed to the art of Cornwell et al. (Stem Cell Res. 2018 Apr:28:115-124. Epub 2018 Feb 8.; henceforth “Cornwell”).
Cornwell evidences that maintenance of CD90 expression in cardiac stromal cells (Cardiac colony forming unit-fibroblasts (cCFU-F)) is unpredictable. Specifically, Cornwell evidences amplifying the number of the cardiac colony forming unit-fibroblasts by culturing the population of cardiac colony forming unit-fibroblasts in as serum-free media. Cornwell evidences that expression of CD90 is reduced after amplifying (passaging) in serum-free media for 10 passages (Table S11, copied below).
Table S11 of Cornwall
Table S11 | FACS analysis of MSC and cCFU-specific surface markers expressed by cCFU-F cultures after 10 passages in SCM and SFM-FTP.
MSC surface markers
cCFU-F surface markers
CD44
CD105
CD90
CD34
CD45
SCA-1
CD31
PDGFRα
SCM
100%
93.2%
53.3%
<1%
<1%
96.5%
<1%
36.7%
SFM-FTP
100%
92.4%
18.4%
<1%
<1%
100%
<1%
45.2%
Importantly, Cornwell also evidences that CD90 expression varies between species, tissues,
and culture conditions (pg. 118 col. 1). Therefore, Cornwell also evidences that specific culture conditions are required to obtain and maintain a specific level of CD90 expression.
Amplification and Coated Plates
Regarding amplifying the cardiac stromal cells, As stated above, Cornwell evidences that expression of CD90 is reduced after amplifying (passaging) in serum-free media for 10 passages (Table S11) and Kamp evidences CD90 expression decreases with passaging (Figures 2C and 3C; para. [0092, 0095]).
Regarding amplifying the cardiac stromal cells, Applicants own specification evidences amplification is not predictable. Specifically, Applications specification evidences that the cardiac stromal cells died in passage 5 on uncoated plates (Example 7; pg. 85) and therefore coated plates appear to be required for the instantly claimed amplification step.
Concentrations and Timings of Culture Components
Regarding concentrations and timings of culture components, Applicant is again directed to the art of Kamp et al. (US-2018/0094245-A1; see IDS filed 23rd, May, 2023; henceforth “Kamp”). Kamp evidences timings and concentrations of culture components to obtain cardiac stromal cells (cardiac fibroblasts) are not predictable. Specifically, Kamp evidences timing and duration of FGF2 exposure and dose amount resulted in changes in the abundance of cardiac fibroblast populations (para. [0016]; Figure 1D-E).
Unpredictability of the Art and the Quantity of Experimentation Necessary
As the art of Nims, Cao, Kamp and Cornwell demonstrate, the obstacles that hinder practicing the claimed method to obtain the required functional results not easy tasks to be done or solely routine experimentation to enable particular embodiments of the claimed method. The type of experimentation would require new methodologies. This level of experimentation goes beyond what would be routine optimization know at the time of filing. As such, the amount of experimentation would be undue.
The physiological art is recognized as unpredictable (MPEP 2164.03). As set forth in In re Fisher, 166 USPQ 18 (CCPA 1970), compliance with 35 USC 112(a) requires: “That scope of claims must bear a reasonable correlation to scope of enablement provided by specification to persons of ordinary skill in the art; in cases involving predictable factors, such as mechanical or electrical elements, a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific laws; in cases involving unpredictable factors, such as most chemical reactions and physiological activity, scope of enablement varies inversely with degree of unpredictability of factors involved.” Moreover, the courts have also stated that reasonable correlation must exist between scope of exclusive right to patent application and scope of enablement set forth in the patent application (27 USPQ2d 1662 Ex parte Maize!.). In view of the foregoing, due to the lack of sufficient guidance provided by the specification regarding the issues set forth above, the state of the relevant art, and the breadth of the claims, it would have required undue experimentation for one skilled in the art to practice the instant broadly claimed invention.
Scope of Enablement - Conclusion
In conclusion, the breadth of the claims lack enablement because the specification provides limited working examples with specific culture media components, specific coated plates, specific timings and passaged numbers to arrive at the required functional results with the claimed marker expression. The art at the time of effective filing fail to provide specific guidance that supplement to shortcomings of the specification and further teaches that the breadth of claims cannot predictably be performed to arrive at the required functional results. Further, a great deal of new methodology would need to be developed to enable the full breadth of the claims and this level of experimentation is undue.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 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 the preamble of “A method for producing a population of cardiac stromal cells from pluripotent stem cells.” However the steps set forth in the claim recite step drawn to epicardial cells obtained by differentiation of pluripotent stem cells” which requires epicardial cells but does not require pluripotent stem cells because the language of “obtained by differentiation of pluripotent stem cells” is product-by-process language with respect to the epicardial cells and is not an active method step. Product-by process claims are not limited by the manipulation of the recited steps, only the structure implied by the steps. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113). Further, the claim recites steps drawn to population of cardiac stromal cells from epicardial cells and does not comprise an active method step that includes pluripotent stem cells. Therefore, because the instantly claimed active method steps do not require pluripotent stem cells, it is unclear how the claimed method steps are “a method for producing a population of cardiac stromal cells from pluripotent stem cells” and the metes and bounds of the claims are unclear.
By nature of their ultimate dependency on claim 1, claims 2-9 are also rejected because they do not clarify the issue.
Claim 1 recites “at least about” with no corresponding special definition of “at least about.” Thus, there is nothing in the specification, prosecution or prior art to provide any indication as to the claimed range, thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(b), III.A. Additionally, the phrase “at least” creates a hard lower cutoff for the value, but the term “about” indicates there is a range for the stated value. Including both “at least” and “about” makes it unclear whether or not the lower value is a hard cutoff for the range.
By nature of their ultimate dependency on claim 1, claims 2-9 are also rejected because they do not clarify the issue.
Claims 2 and 4-8 recite preferential language (“preferably,” “even more preferably,” “most preferably”). If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim (see MPEP 2173.05(d). Therefore, it is unclear which aspect(s) of the claim is/are intended to be within the scope(s) of the claim(s) (see also MPEP 2173.05(b)).
Claim 9 recites steps i* and i** which are steps of culturing pluripotent stem cells and refers to “said pluripotent stem cells.” However, claim 1, upon which claim 9 depends, requires “epicardial cells obtained by differentiation of pluripotent stem cells” which is product-by process language and does not require pluripotent stem cells or steps of differentiation of pluripotent stem cells. Therefore, because pluripotent stem cells are not required by claim 1, there is improper antecedent basis for this term and the metes and bounds of what it encompassed by “said pluripotent stem cells” is unclear.
Generally, when the claims are indefinite, vague or unclear, they cannot be construed without speculation or conjecture; therefore, the indefinite claims are not treated on the merits with respect to prior art. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite."). Notwithstanding Steele, the Office has made every attempt to construe the claims in what the Office believes is the intent of the Applicants in the interest of compact prosecution.
Conclusion
No claim is allowable.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIANA N EBBINGHAUS whose telephone number is (703)756-4548. The examiner can normally be reached M-F 9:30 AM to 5:30 PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Paras can be reached at (571) 272-4517. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIANA N EBBINGHAUS/Examiner, Art Unit 1632 /VALARIE E BERTOGLIO/Primary Examiner, Art Unit 1632
Prosecution Insights