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 .
Status of the Claims
Claims 1-2, 5, 9-11, 16, 20, 22, 24, 29-30, and 68-75 are currently pending.
Claims 1, 2, 9-11, 22, 24, 30, and 73 are amended.
Claims 3-4, 6-8, 12-15, 17-19, 21, 23, 25-28, and 31-67 are cancelled.
New claims 74-75 have been added.
Claims 1-2, 5, 9-11, 16, 20, 22, 24, 29-30, and 68-75 have been considered on the merits.
Withdrawn Rejections/Objections
The objection made onto claims 9 and 20 are withdrawn in light of the amendments submitted on 04/27/2026.
The objections made onto the specification are withdrawn in light of the amendments made onto the specification submitted on 04/27/2026.
The 112(b) rejection made onto claim 22, 30, and 73 are withdrawn in light of the amendments submitted on 04/27/2026.
The 35 U.S.C. 102 rejection is withdrawn in light of the amendments submitted on 04/27/2026.
New and Maintained Rejections Necessitated by Amendment
Claim Objections
Claim 74 is objected to because of the following informalities: a comma is needed after “the method of claim 1” in line 1. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-2, 5, 9-11, 16, 20, 22, 24, 29-30, and 68-75 are newly rejected and claims 24 and 72 remain 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 limitation “CD235a/b-/+” which is indefinite. It is unclear what the notation “a/b-/+” means. It is not clear if the “-/+” is intended to mean that the claimed cells are CD235a- and CD235b+ or if the notation means that the claimed cells are CD235a/b – or +. This notation does not appear to be consistent with the typical notation in the art regarding CD235. The specification does not provide an explicit definition of “CD235a/b-/+”. The specification appears to be using this notation to mean that the claimed cells can be either CD235a/b- or CD235 a/b+ based on paragraph [0014] of the instant spec which states “As demonstrated KDR+ mesoderm specified as described herein, including CD235a/b+ as well as CD235a/b- can provide yolk sac blood cell lineages” ([0014]). Additionally, Fig. 3 C-E contains notation which defines two expression profiles labelled “KDR+CD235a/b+” and “KDR+CD235a/b-“. Therefore, the claim term “CD235a/b-/+” is being interpreted to mean that the claimed cells must demonstrate positive or negative expression of CD235a/b. Appropriate clarification is required. All dependent claims are included in this rejection due to dependency on claim 1.
Claims 24 and 72 depends from claim 22 which requires that CD34+CD45+ hematopoietic progenitor cells are differentiated to obtain differentiated cells of the multipotent lineage, which is indefinite. Thus, claim 22 requires differentiating the cells into multipotent lineage cells, i.e. the cells are differentiated but remain multipotent. Regarding claim 24, the claim limitations limit the “multipotent lineage cells” to be macrophage cells, mast cells, erythrocytes, granulocytes, or T lymphocytes. Of these cell types, only certain subsets of T lymphocytes, T memory stem cells, are considered multipotent cells. Therefore, it is unclear how the “differentiated cells of the multipotent lineage” can be unipotent terminally differentiated cells such as macrophage cells, mast cells, erythrocytes, granulocytes, or non-memory T lymphocytes. Regarding claim 72, the claim further limits wherein the T lymphocytes are gamma/delta, alpha/beta, and/or Vdelta2 T lymphocytes. All of these subsets of T lymphocytes are not regarded as multipotent cells and therefore render the claim indefinite. Appropriate clarification is required.
Claim 75 recites the limitation “wherein the contacting is for about 16 to 24 hours,” which renders the claim indefinite. Claim 75 depends from claim 1 and there are two separate steps which begin with “contacting” therefore it is unclear which contacting step is being limited by claim 75. For the sake of compact prosecution the claim is being interpreted to limit either contacting step. Appropriate clarification is required.
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.
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.
Claims 1-2, 5, 9-11, 16, 20, 22, 24, 29-30, 68-73 and 75 are rejected under 35 U.S.C. 103 as being unpatentable over Sturgeon et al (Nat Biotechnol. 2014) as evidenced by BD Biosciences (BD Pharmingen™ APC Mouse anti-human CD235a/b, “Antibody Details”, accessed 01/20/2026), in view of Watanabe et al (Nature Biotechnology, 2007).
Claim Interpretation: Claim 1 recites the limitation “CD235a/b-/+” which is indefinite. It is unclear what the notation “a/b-/+” means. It is not clear if the “-/+” is intended to mean that the claimed cells are CD235a- and CD235b+ or if the notation means that the claimed cells are CD235a/b – or +. This notation does not appear to be consistent with the typical notation in the art regarding CD235. The specification does not provide an explicit definition of “CD235a/b-/+”. The specification appears to be using this notation to mean that the claimed cells can be either CD235a/b- or CD235 a/b+ based on paragraph [0014] of the instant spec which states “As demonstrated KDR+ mesoderm specified as described herein, including CD235a/b+ as well as CD235a/b- can provide yolk sac blood cell lineages” ([0014]). Additionally, Fig. 3 C-E contains notation which defines two expression profiles labelled “KDR+CD235a/b+” and “KDR+CD235a/b-“. Therefore, the claim term “CD235a/b-/+” is being interpreted to mean that the claimed cells must demonstrate positive or negative expression of CD235a/b.
Regarding claim 1, Sturgeon teaches a method of producing KDR+CD235a+ mesoderm cells through the steps of contacting pluripotent stem cells (PSCs) with a PSC culture composition comprising BMP4, a BMP receptor agonist, and then contacting the resulting population of cells with a mesoderm specifying culture composition comprising BMP4, FGF2 (also known as bFGF), and Activin A to produce KDR+CD235a+ mesoderm cells (pg. 10, para 3).
Regarding claim 2, Sturgeon teaches that the PSCs are contacted with the mesoderm specifying culture composition for about 3 days (pg. 10, para 3). Sturgeon teaches that the PSCs are either human ESC or human induced PSCs and that they are used to form embryoid bodies during the method (pg. 10, para 3).
Regarding claim 5, Sturgeon teaches a method of producing KDR+CD235a+ mesoderm cells through the steps of contacting pluripotent stem cells (PSCs) with a PSC culture composition comprising BMP4, a BMP receptor agonist, and then contacting the resulting population of cells with a mesoderm specifying culture composition comprising BMP4, FGF2 (also known as bFGF), and Activin A to produce KDR+CD235a+ mesoderm cells (pg. 10, para 3).
Regarding claim 9, Sturgeon teaches that the method further comprises contacting the KDR+CD235a+ mesoderm cells with an HEC culture media comprising VEGF and the hematopoietic cytokines IL-6, IL-11, SCF, EPO, IGF-1, and Flt-3L to obtain CD34+KDR+ hemogenic endothelial cells (HECs) (pg. 10, para 3 and 5).
Regarding claim 10, Sturgeon also teaches that the method further comprises culturing the CD34+KDR+ HECs to obtain CD34+CD43- HECs or to obtain CD43+ hematopoietic progenitor cells (pg. 10, para 3 and 6 and pg. 3, para 3).
Regarding claim 11, The method further comprises culturing the CD43+ hematopoietic progenitor cells to obtain primitive program lineage cells (pg. 7, para 2; Fig. 5).
Regarding claim 16, Sturgeon teaches a method of producing KDR+CD235a+ mesoderm cells through the steps of contacting pluripotent stem cells (PSCs) with a PSC culture composition comprising BMP4, a BMP receptor agonist, and then contacting the resulting population of cells with a mesoderm specifying culture composition comprising BMP4, FGF2 (also known as bFGF), and Activin A to produce KDR+CD235a+ mesoderm cells (pg. 10, para 3).
Regarding claim 20, Sturgeon teaches wherein the method further comprises contacting the CD34+CD43- HECs with a notch agonist to obtain CD34+CD45+ cells (pg. 5, para 1; pg. 8, para 1; and Fig. 2A, 2D, and 2E).
Regarding claim 22 and 24, Sturgeon teaches that the method comprises contacting the CD43+CD45+ hematopoietic progenitor cells to obtain multipotent lineage cells and those cells are isolated and are taught to be erythroid colonies (Fig. 5; pg. 4, para 2).
Regarding claim 29, Sturgeon teaches that the notch agonist is a notch ligand (pg. 8, para 1).
Regarding claim 30, Sturgeon teaches that the isolated cells are resuspended in a composition that comprises a gel, in this case Matrigel™, and that the composition comprises an additional cell type, in this case mouse embryonic fibroblasts, (pg. 10, para 3).
Regarding claim 69, Sturgeon teaches that the PSCs are either human ESC or human induced PSCs and that they are used to form embryoid bodies during the method (pg. 10, para 3).
Regarding claim 70, Sturgeon teaches that all KDR+ cells that gave rise to CD34+ cells did so within a day of culture as required by claim 70 (pg. 3, para 3).
Regarding claim 71, Sturgeon teaches that the CD34+CD45+ cells comprise CD34+CD45+CD7+ cells (Fig. 2).
Regarding claim 72, Sturgeon teaches that the resultant progenitor cells are able to further differentiate into cells with T-lymphoid potential, i.e. ability to differentiate into any T-lymphoid cell type (Fig. 5).
Regarding claim 73, Sturgeon teaches that the ratio between BMP4, FGF2, and Activin A is 10:5:6 ng/ml respectively (pg. 10, para 3).
Regarding claim 75, Sturgeon teaches that the contacting is for about 24 hours by teaching a 24 hour incubation period as a first step of the differentiation process and then the contacting step of claim 1 is performed for about 24 hours and subsequently the differentiation procedure continues on day 3, resulting in about a 24 hour contacting period (see pg. 10, para 3).
Sturgeon meets the limitations of claim 1 wherein the mesoderm cells that are produced are positive for the expression of both CD235a and CD235b as evidenced by BD Biosciences. Sturgeon teaches the use of the “CD235a-APC (clone HIR2)” antibody for Flow cytometry and cell sorting (pg. 10, para 4). BD Biosciences discloses that the HIR2 clone of the CD235 antibody binds both CD235a and CD235b (pg. 2, para 1). Therefore, Sturgeon meets the limitation of the cells being both CD235a and CD235b positive.
Claim 71 contains a wherein clause that recites the intended result of the method rather than requiring an additional step be performed. The result recited is wherein the CD34+CD45+ cells comprise CD34+CD45+CD90-CD7+ cells, and Sturgeon is silent as to the expression of CD90 on the resultant cells. MPEP 2111.04 states “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed” and that a such a clause ‘"in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Therefore since these claims only recite the results of the steps, then art reading on the method of claim 20 will also read on these results since performing the same steps will inherently lead to the same results in the absence of evidence to the contrary including unexpected results.
Sturgeon does not teach that the pluripotent stem cell culture composition comprises a ROCK inhibitor as required by claim 1 and 68. Sturgeon does meet the required limitations of claim 16, however Sturgeon does not teach the optional limitation of the ROCK inhibitor being Y-27632.
However, Watanabe teaches about the effects of the use of a ROCK inhibitor on the survival of embryonic stem cells (abstract). Watanabe teaches that “we examined the effects of several caspase inhibitors, growth factors, trophic factors and kinase inhibitors. Of the compounds tested, Y-27632, a selective inhibitor of p160-Rhoassociated coiled-coil kinase (ROCK)2,19, was the most potent inhibitor of apoptosis.” (pg. 681, col. 1, para 2). Additionally, Watanabe teaches that “[a]fter five low-density passages, Y-27632-treated hES cells retained the competence to differentiate into neural cells (see below), mesodermal cells and endodermal precursors in vitro (Fig. 1g–k)” as required by claims 16 and 68 (pg. 681, col. 2, para 3).
One of ordinary skill in the art would find it obvious at the effective filling date of the instant invention to combine the method of producing KDR+CD235a/b mesoderm cells taught by Sturgeon with the ROCK inhibitor within the pluripotent stem cell media taught by Watanabe to arrive at the instant invention. One of ordinary skill in the art would be motivated to make this combination because Watanabe teaches that “we examined the effects of several caspase inhibitors, growth factors, trophic factors and kinase inhibitors. Of the compounds tested, Y-27632, a selective inhibitor of p160-Rhoassociated coiled-coil kinase (ROCK)2,19, was the most potent inhibitor of apoptosis.” (pg. 681, col. 1, para 2). One of ordinary skill in the art would have a reasonable expectation of success when combining Sturgeon with Watanabe because Watanabe teaches that the cells cultured with the ROCK inhibitor are able to successfully differentiate into mesodermal cells in vitro (pg. 681, col. 2, para 3).
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.
Claims 1 and 74 are rejected under 35 U.S.C. 103 as being unpatentable over Sturgeon et al (Nat Biotechnol. 2014) as evidenced by BD Biosciences (BD Pharmingen™ APC Mouse anti-human CD235a/b, “Antibody Details”, accessed 01/20/2026), in view of Watanabe et al (Nature Biotechnology, 2007), as applied to claims 1-2, 5, 9-11, 16, 20, 22, 24, 29-30, 68-73, and 75 above, and in further view of Carpenedo et al (Stem Cells, 2007).
Regarding claim 74, the limitations of the independent claim 1 are taught above.
Sturgeon teaches the formation of embryoid bodies (pg. 10, para 3).
Sturgeon and Watanabe are silent as to how the embryoid bodies are formed, specifically Sturgeon does not teach that the embryoid bodies are formed with shaking, optionally using an orbital shaker as required by claim 74.
However, regarding claim 74, Carpenedo teaches the formation of embryoid bodies using shaking from an orbital shaker (abstract). Carpenedo teaches that “A 20-fold enhancement in the number of cells incorporated into primitive EBs in rotary versus static conditions was detected after the first 12 hours, and a fourfold increase in total cell yield was achieved by rotary culture after 7 days” (abstract).
One of ordinary skill in the art would find it obvious at the effective filling date of the instant invention to combine the method including the formation of embryoid bodies taught by Sturgeon with the orbital shaking method of embryoid body formation taught by Carpenedo to arrive at the instant invention. One of ordinary skill in the art would be motivated to make this combination because Carpenedo teaches that “A 20-fold enhancement in the number of cells incorporated into primitive EBs in rotary versus static conditions was detected after the first 12 hours, and a fourfold increase in total cell yield was achieved by rotary culture after 7 days” (abstract). One of ordinary skill in the art would have a reasonable expectation of success when combining Sturgeon with Carpenedo because sturgeon already teaches the formation of embryoid bodies using known methods and Carpenedo teaches the increased benefit of forming embryoid bodies using an orbital shaker.
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.
Response to Arguments
Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive.
Applicant argues (pg. 14) that “the examiner did not allege that Sturgeon identified a problem of apoptosis and so no motivation to combine the references, in the absence of the present teachings of the present application. Sturgeon does not once mention “apoptosis” or “cell death” or “viability””.
In response to applicant's argument that Sturgeon does not mention the terms apoptosis, cell death, or viability, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Further, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “apoptosis”, “cell death”, or “viability”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus the argument is not found persuasive.
Applicant argues (pg. 14) that Watanabe and Sturgeon were published in 2007 and 2014 respectively and that there is no motivation provided to combine them if it was obvious to do so.
In response to applicant's argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, one of ordinary skill in the art would find it obvious at the effective filling date of the instant invention to combine the method of producing KDR+CD235a/b mesoderm cells taught by Sturgeon with the ROCK inhibitor within the pluripotent stem cell media taught by Watanabe to arrive at the instant invention. One of ordinary skill in the art would be motivated to make this combination because Watanabe teaches that “we examined the effects of several caspase inhibitors, growth factors, trophic factors and kinase inhibitors. Of the compounds tested, Y-27632, a selective inhibitor of p160-Rhoassociated coiled-coil kinase (ROCK)2,19, was the most potent inhibitor of apoptosis.” (pg. 681, col. 1, para 2). One of ordinary skill in the art would have a reasonable expectation of success when combining Sturgeon with Watanabe because Watanabe teaches that the cells cultured with the ROCK inhibitor are able to successfully differentiate into mesodermal cells in vitro (pg. 681, col. 2, para 3).
Therefore, the arguments are not found persuasive.
Applicant argues (pg. 14) that the combination of Sturgeon and Watanabe is only possible due to hindsight analysis.
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).
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONSTANTINA E STAVROU whose telephone number is (571)272-9899. The examiner can normally be reached M-F 8:00-5:00.
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.
CONSTANTINA E. STAVROU
Examiner
Art Unit 1632
/TITILAYO MOLOYE/Primary Examiner, Art Unit 1632
Prosecution Insights