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 1-3, 6-16, 18 and 20-24 are pending.
Claims 1-3, 6-16, 18 and 20-24 are under examination.
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://doi.org/10.1016/j.stem.2020.06.007 on pg. 34). 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 Objections
Claims 1-2, 6-8, 10 and 16 are objected to because of the following informalities:
Claims 1-2, 6-8 and 10 include periods before the end of the claim (e.g. “a.” 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 1-2, 6-8 and 10 it is recommended that Applicant amend all instances of periods before the end of the claim to parentheses (for example, “a.” in claim 1 would be amended to “a)” or “(a)”).
Claim 8 recites “the method according to 7.” Claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application (37 C.F.R. 1.75). While it is clear that claim 8 intends to refer to claim 7, it is recommended Applicant amend “7” to “claim 7.”
Claim 8 recites “the medium in step c. comprises from 2 to 6 μM CHIR99021.” Because CHIR99021 is a WNT agonist, which is a glycogen synthase kinase (GSK) 3 inhibitor, it is clear that the CHIR99021 of claim 8 is the WNT agonist, which is a glycogen synthase kinase (GSK) 3 inhibitor of the medium as recited in claim 7 upon which is depends. However, for increased clarity, it is recommended that Applicant amend to specify that the CHIR99021 of claim 8 is the glycogen synthase kinase (GSK) 3 inhibitor recited in claim 7. A recommendation to overcome this would be to amend to “wherein the GSK3 inhibitor is CHIR99021 and wherein the medium in step c. comprises from 2 to 6 μM of the CHIR99021.”
Claim 16 recites a list that appears to be missing a comma “VSIG4 TREM2.” It is recommended that Applicant amend to include a comma as “VSIG4, TREM2.”
Appropriate correction is required.
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.
Claim 20 is 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 20 recites “The method of claim 13, wherein the protein(s) CYP1A2 and/or CYP3A4.” However, claim 13, upon which claim 20 depends, does not recite CYP1A2. Therefore, there is improper antecedent basis for this term and it is unclear what the metes and bounds of the scope of the term “CYP1A2” is intended to encompass in claim 20.
Claim Rejections - 35 USC § 103
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.
Claims 1-3, 6-14, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mathapati et al. (Curr Protoc Stem Cell Biol. 2016 Aug 17:38:1G.6.1-1G.6.18.; see IDS filed 8th, April, 2024; henceforth “Mathapati”) in view of Davis et al. (SLAS Technol. 2018 Aug;23(4):364-373. Epub 2018 Feb 26.; henceforth “Davis”) and Ng et al. (WO-2017048193-A1; henceforth “Ng”)
Regarding claim 1, Mathapati discloses an in vitro method for production of hepatocytes comprising:
a. suspending culturing vertebrate pluripotent stem cells (hPSCs) in a liquid base medium (“Carefully resuspend pellet in Essential 8 Medium with ROCK inhibitor to give the optimal cell density” Step 9. Pg. 4)
b. incubating the suspended pluripotent stem cells overnight “(overnight incubation” pg. 4 step 11);
c. incubating the cells from step b. in the presence of a WNT agonist (3 µM CHIR99021 for 12 hours Step 13. Pg. 6) for 12 to 30 hours;
d. incubating the cells from step c. in medium without WNT agonist for 12 to
30 hours (“replace with 2 ml RPMI/B-27 medium without CHIR99021.
Incubate cells an additional 24” Step 14. Pg. 6;
e. incubating the cells from step d. in the presence of DMSO for 4 to 9 days (“replace with 4 ml SR-DMSO differentiation medium. Incubate cells until day 7” Step 15. Pg. 6);
and
f. incubating the cells from step e. in the presence of a glucocorticoid and an agonist of the hepatocyte growth factor receptor (HGFR) for from 10 to 200 days (“replace with 4 ml L-15 differentiation medium. Incubate cells until day 20” pg. 6 Step. 16; L-15 differentiation medium recipe includes 15 μL dexamethasone stock solution which is a glucocorticoid; see pg. 14 and N-hexanoic-Tyr, Ile-(6) aminohexanoic amide ; see “Dihexa stock solution” pg. 13).
However, regarding claim 1, Mathapati does not teach incubating the pluripotent stem cells so that the pluripotent stem cells form aggregates under agitation for 12 hours and Mathapati is silent to a cell density of from 0.5 to 5.0 ml medium per one million pluripotent stem cells during the seeding step a.
Nevertheless, regarding claim 1, Davis teaches incubating pluripotent stem cells so that the pluripotent stem cells form aggregates under agitation for 12 hours (stirring bioreactor; abstract; pg. 365 col 2 “Adaptation to Rocking-Motion Culture”; Figure 1). Davis teaches seeding the cells at a density of 2 × 105 to 6 × 105 cells/mL (pg. 365 col. 1) for the agitation culture to form aggregates. Davis teaches aggregates were formed over 12 hours (pg. 365 col.1). Davis teaches data suggest that suspension aggregates are more biologically similar after directed differentiation and maturation than cells grown in two-dimensional (2D) culture (pg. 364 col. 1). Davis teaches pluripotent stem cell suspension aggregates have proven to be an efficient and phenotypically stable means for expansion and directed differentiation (abstract). Davis teaches the rocking platform bioreactor enabled closed system and hands-off expansion of pluripotent stem cell aggregates (pg. 371 col. 2 2nd para.). Davis teaches greater cell numbers were produced using relatively less medium, which would reduce the costs associated with pluripotent stem cell expansion (pg. 371 col. 2 3rd para.). Davis teaches pluripotent stem cell aggregates can be efficiently expanded and passaged in a closed-system automated rocking bioreactor (pg. 373 col. 1 1st para.).
Therefore, regarding claim 1, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Mathapati and combine the known prior art element of incubating the pluripotent stem cells so that the pluripotent stem cells form aggregates under agitation for 12 hours of Davis, which would include the range of seeding density of 2 × 105 to 6 × 105 cells/mL for step a., to obtain the predictable result of expanded and passaged pluripotent stem cells. One of ordinary skill would have been motivated to do so as taught by Davis to obtain cells that are more biologically similar after directed differentiation and maturation (pg. 364 col. 1), and to produce greater cell numbers using relatively less medium, which would reduce the costs associated with pluripotent stem cell expansion (pg. 371 col. 2 3rd para.). Regarding the reasonable expectation of success, Davis evidences pluripotent stem cell aggregates can be efficiently expanded and passaged in a closed-system automated rocking bioreactor (pg. 373 col. 1 1st para.).
Additionally, regarding claim 1, it is noted that as discussed above, Davis makes obvious a seeding density of 2 × 105 to 6 × 105 cells/mL (pg. 365 col. 1) for the agitation culture to form aggregates which overlaps with the claimed range of from 0.5 to 5.0 ml medium per one million pluripotent stem cells of instant claims (which is equal to a range of from 2 x 105 to 2x106). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It is routine procedure to optimize component amounts to arrive at an optimal product that is superior for its intended use, since it has been held where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See M.P.E.P. §2144.05.
However, regarding claim 1, although Mathapati teaches differentiation of hPSCs into liver cells (hepatocyte-like cells), Mathapati and Davis are silent to a method for production of liver organoids.
Nevertheless, regarding claim 1, Ng teaches a method of culturing cell clusters into liver organoids (see Figure 1; Examples 3 and 6). Ng teaches there is a need for high quality liver model that resembles the in vivo liver tissue from basic research to industrial and medical applications (para. [0003]). Ng teaches liver organoids can be created from cells of human origin to avoid surreptitious species-specific differences in disease pathogenesis and drug response, while mimicking in vivo disease presentation including interactions between various cell types involved in 3D space, which make
them ideal for the study of liver function and diseases in vitro (para. [0004]).
Therefore, regarding claim 1, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to practice the method as suggested by Mathapati in view of Davis, and combine the known prior art element of culturing the aggregates into organoids of Ng to obtain the predictable result of a liver organoid. One of ordinary skill would have been motivated to do so as taught by Ng to be used for basic research, industrial and medical applications (para. [0003]) and to study liver function and diseases in vitro (para. [0004]). Using the culturing protocol components and timings of Mathapati specifically to create the organoid would be beneficial because the small-molecule driven procedure of Mathapati procedure allows scalable production of hepatocytes, is affordable, and can be easily translated to either a GMP or even clinical-grade format (pg. 15 col. 2 2nd para.). Regarding the reasonable expectation of success, Ng evidences culturing cell aggregates into liver organoids with patterning factors (see Figure 1; Examples 3 and 6), and therefore one of ordinary skill would have had a reasonable expectation of success in culturing the aggregates suggested by Davis into organoid with the small molecule patterning factors of Mathapati.
Regarding claim 2, further to the discussion of claim 1 above, Mathapati teaches the liquid base medium in step a. comprises an inhibitor of ROCK-I and/or ROCK-II (“Essential 8 Medium with ROCK inhibitor Y-27632 at a final concentration of 10 μM” pg. 4 step 1; see also Step 9. Pg. 4).
Regarding claim 3, further to the discussion of claim 1 above, Mathapati teaches the cells are human cells (Human Pluripotent Stem Cells; Title; see also hPSCs; pg. 1-5), which are mammalian cells.
Regarding claim 6, further to the discussion of claim 1 above, Mathapati teaches the medium in step c. comprises insulin (pg. 6 steps 12-14).
Regarding claims 7-8, further to the discussion of claim 1 above, Mathapati teaches the WNT agonist in step c. is 3 µM CHIR99021 (Step 13. Pg. 6) (instant claim 8), which is a glycogen synthase kinase (GSK) 3 inhibitor (instant claim 7) and is within the claimed range of from 2 to 6 μM (instant claim 8).
Regarding claim 9, further to the discussion of claim 1 above, Mathapati teaches the agonist of the hepatocyte growth factor receptor is N-hexanoic-Tyr Ile-(6) aminohexanoic amide (see “Dihexa stock solution” pg. 13 provided at a concentration of 100 nM (“100 nM final” see “L-15 differentiation medium” pg. 14), which is within the claimed range of 80 to 120 nM.
Regarding claim 10, further to the discussion of claim 1 above, Mathapati teaches the glucocorticoid in step f. is dexamethasone provided at a concentration of 100 nM (“100 nM final” see “L-15 differentiation medium” pg. 14), which is within the claimed range of 80 to 120 nM.
Regarding claim 11, further to the discussion of claim 1 above, Mathapati teaches obtained hepatocytes subjected to the culture components and timings express ALB, A1AT (Figure 1G.6.1 and pg. 6 step 16.) and ASGPR1 (“ASGR1” pg. 6 step 16.). Therefore, because the organoids obtained by the suggested method would undergo the same culture components and timings as the cells of Mathapati, they would also be expected to express ALB, A1AT and ASGR1.
Regarding claim 12, further to the discussion of claim 1 above, Mathapati teaches obtained hepatocytes subjected to the culture components and timings express APOA2, TDO2 and TTR (pg. 6 step 16.). Therefore, because the organoids obtained by the suggested method would undergo the same culture components and timings as the cells of Mathapati, they would also be expected to express APOA2, TDO2 and TTR.
Regarding claim 13, further to the discussion of claim 1 above, Mathapati teaches obtained hepatocytes subjected to the culture components and timings express CYP3A4 (pg. 6 step 16.). Therefore, because the organoids obtained by the suggested method would undergo the same culture components and timings as the cells of Mathapati, they would also be expected to express CYP3A4.
Regarding claim 14, further to the discussion of claim 1 above, although Mathapati is silent to expression of CD45 and CD86, Ng teaches liver organoids made from culturing cell aggregates with patterning factors contain liver specific endothelial cells which express CD45 and/or CD86 (para. [0012, 0243, 0263]; claims 7 and 88). Therefore, the organoids made by the suggested method, which includes culturing aggregates into organoids, would be expected to comprise liver specific endothelial cells which express CD45 and/or CD86.
Regarding claim 18, further to the discussion of claim 1 above, although Mathapati is silent to expression of COL1A1, Ng teaches liver organoids made from culturing cell aggregates with patterning factors contain hepatic myofibroblasts which express COL1A1 (para. [0014, 0245, 0265]; claims 9 and 90). Therefore, the organoids made by the suggested method, which includes culturing aggregates into organoids, would be expected to comprise hepatic myofibroblasts which express COL1A1.
Regarding claim 20, further to the discussion of claims 1 and 13 above, as stated above (see claim 13 rejection above), because the organoids obtained by the suggested method would undergo the same culture components and timings as the cells of Mathapati, they would be expected to express CYP3A4. Because the organoids would be expected to express CYP3A4, which is the structural requirement for metabolizing caffeine and/or acetaminophen, and instant claims do not require a specific amount of metabolism of caffeine and/or acetaminophen, the organoids would be expected to metabolize some caffeine and/or acetaminophen with the expected expression amount of CYP3A4.
Hence, the claimed invention as a whole was prima facie obvious.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Mathapati et al. (Curr Protoc Stem Cell Biol. 2016 Aug 17:38:1G.6.1-1G.6.18.; see IDS filed 8th, April, 2024; henceforth “Mathapati”) in view of Davis et al. (SLAS Technol. 2018 Aug;23(4):364-373. Epub 2018 Feb 26.; henceforth “Davis”) and Ng et al. (WO-2017048193-A1; henceforth “Ng”) as applied to claim 1 above, and in further view of MacParland et al. (Nat Commun. 2018 Oct 22;9(1):4383.; henceforth “MacParland”).
The teachings of Mathapati, Davis, and Ng above are hereby incorporated in their entirety.
Regarding claims 15-16, further to the discussion of claim 1 above, although Ng teaches liver organoids mimic the in vivo liver organ (para. [0174]), Mathapati, Davis, and Ng are silent to expression of C1QC and VSIG4
Nevertheless, regarding claims 15-16, MacParland teaches liver organs comprise cells which express C1QC (pg. 10 col. 1 2nd para.) and MacParland teaches liver organs comprise cells which express VSIG4 (pg. 10 col. 1 3rd para.)
Therefore, regarding claims 15-16, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the liver organoid made by the suggested method, which would be expected to mimic the in vivo liver organ, as taught by Ng, would express the marker C1QC (instant claim 15) and VISG4 (instant claim 16) which are expressed by liver organs, as taught by MacParland.
Hence, the claimed invention as a whole was prima facie obvious.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Mathapati et al. (Curr Protoc Stem Cell Biol. 2016 Aug 17:38:1G.6.1-1G.6.18.; see IDS filed 8th, April, 2024; henceforth “Mathapati”) in view of Davis et al. (SLAS Technol. 2018 Aug;23(4):364-373. Epub 2018 Feb 26.; henceforth “Davis”) and Ng et al. (WO-2017048193-A1; henceforth “Ng”) as applied to claim 1 above, and in further view of Meyer et al. (Toxicol Lett. 2015 Jan 5;232(1):159-66. Epub 2014 Oct 24.; henceforth “Meyer”).
The teachings of Mathapati, Davis, and Ng above are hereby incorporated in their entirety.
Regarding claims 21-22, further to the discussion of claim 1 above, although Ng teaches liver organoids mimic the in vivo liver organ (para. [0174]), Mathapati, Davis, and Ng are silent to expression of carboxyl esterase, and Mathapati, Davis, and Ng are silent to metabolism of heroin.
Nevertheless, regarding claims 21-22, Meyer teaches hCES2, which is a carboxyl esterase, is expressed in liver (pg. 160 col.1), and Meyer teaches hCES2 is the enzyme system responsible for metabolizing heroin (pg. 161 col. 1 3rd para.; Table 1).
Therefore, regarding claims 21-22, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the liver organoid made by the suggested method, which would be expected to mimic the in vivo liver organ, as taught by Ng and would express the carboxyl esterase hCES2 (instant claim 21) which is normally expressed by liver organs, as taught by Meyer.
Furthermore, regarding claim 22, it would have been obvious that the hCES2 was expressed at an amount sufficient to metabolize heroin because the organoids obtained by the suggested method would be expected to mimic in vivo liver tissue, as taught by Ng above, and express hCES2. Because the organoids would be expected to express HCES2, which is the structural requirement for metabolizing heroin, and instant claims do not require a specific amount of metabolism of heroin, the organoids would be expected to metabolize some heroin with the expected expression amount of hCES2.
Hence, the claimed invention as a whole was prima facie obvious.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Mathapati et al. (Curr Protoc Stem Cell Biol. 2016 Aug 17:38:1G.6.1-1G.6.18.; see IDS filed 8th, April, 2024; henceforth “Mathapati”) in view of Davis et al. (SLAS Technol. 2018 Aug;23(4):364-373. Epub 2018 Feb 26.; henceforth “Davis”) and Ng et al. (WO-2017048193-A1; henceforth “Ng”) as applied to claim 1 above, and in further view of Hamoud et al. (Trends Endocrinol Metab. 2018 Mar;29(3):140-150. Epub 2018 Feb 3.; henceforth “Hamoud”).
The teachings of Mathapati, Davis, and Ng above are hereby incorporated in their entirety.
Regarding claim 23, further to the discussion of claim 1 above, although Ng teaches liver organoids mimic the in vivo liver organ (para. [0174]), and Mathapati teaches formation of functional hepatocyte-like cells (abstract), Mathapati, Davis, and Ng are silent to expression of carboxyl esterase, and Mathapati, Davis, and Ng are silent to uptake of unconjugated bilirubin.
Nevertheless, regarding claim 23, Hamoud teaches uptake of unconjugated bilirubin is an expected function of hepatocytes within liver tissue. Specifically, Hamoud teaches clearance of bilirubin occurs mostly in the liver (pg. 4 3rd para.) and Hamoud teaches Bilirubin is transported into the hepatocyte by the organic anion transporters (pg. 4 2nd para.)
Therefore, regarding claim 23, because Ng teaches liver organoids are expected to mimic the in vivo liver organ (para. [0174]), and Hamoud teaches uptake of unconjugated bilirubin is an expected function of hepatocytes within liver tissue (pg. 4 para. 2-3), it would have been obvious that the organoid obtained from the suggested method would exhibit this expected function and be able to uptake unconjugated bilirubin.
Hence, the claimed invention as a whole was prima facie obvious.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Mathapati et al. (Curr Protoc Stem Cell Biol. 2016 Aug 17:38:1G.6.1-1G.6.18.; see IDS filed 8th, April, 2024; henceforth “Mathapati”) in view of Davis et al. (SLAS Technol. 2018 Aug;23(4):364-373. Epub 2018 Feb 26.; henceforth “Davis”) and Ng et al. (WO-2017048193-A1; henceforth “Ng”) as applied to claim 1 above, and in further view of Pettinato et al. (Sci Rep. 2019 Jun 20;9(1):8920.; henceforth “Pettinato”).
The teachings of Mathapati, Davis, and Ng above are hereby incorporated in their entirety.
Regarding claim 24, further to the discussion of claim 1 above, although Ng teaches liver organoids mimic the in vivo liver organ (para. [0174]), Mathapati, Davis, and Ng are silent to expression of F8.
Nevertheless, regarding claim 24, Pettinato teaches F8 (Factor VIII) is normally produced and secreted by the endothelial cells in vivo in the liver (pg. 2 10th para.) and Pettinato teaches liver organoids express F8 (pg. 2 10th para.; Figure 1).
Therefore, regarding claim 23, because Ng teaches liver organoids are expected to mimic the in vivo liver organ (para. [0174]), and Pettinato teaches F8 is normally produced and secreted by the endothelial cells in vivo in the liver (pg. 2 10th para.) and further evidences liver organoids express F8 (pg. 2 10th para.; Figure 1), it would have been obvious that the organoid obtained from the suggested method would express F8.
Hence, the claimed invention as a whole was prima facie obvious.
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
/PETER PARAS JR/ Supervisory Patent Examiner, Art Unit 1632