DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
It is noted that throughout this Official Action, where reference is made to the Instant Specification, the Examiner will be referring to the publication of the Instant Application (US2023/0330151).
Claims 1-15 are pending. Receipt is acknowledged of the claim amendments submitted on 20 March, 2026. Claims 8-11 are amended.
Applicant previously elected with traverse of the invention of group II, drawn to a method of promoting differentiation of neural stem cells into dopaminergic neurons in the reply filed on 22 October, 2025. Applicant’s arguments were not found persuasive and the requirement was still deemed proper and was therefore made FINAL (See Non-Final Rejection mailed: 23 December, 2025).
Claims 1-7, and 12-15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Therefore, claims 8-11 are pending and under examination in the instant Official Action.
Priority
The present application is a 35 U.S.C. 371 national stage filing of International Application No. PCT/KR2021/011263, filed 24 August, 2021, which claims priority to Republic of Korea Application Nos. KR10-2021-0111440, filed 24 August, 2021, and KR10-2020-0106224, filed 24 August, 2020. Acknowledgment was previously made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified untranslated copies of papers required by 37 CFR 1.55 have been filed in this application on 23 February, 2023. Applicant cannot rely upon the foreign priority papers to establish the effective filing date based upon these documents because a translation of said papers has not been made of record in accordance with 37 CFR 1.55. See MPEP § 201.15.
The earliest possible priority for the instant application is 24 August, 2021.
Withdrawn Rejections in view of Applicant’s Amendments and Arguments
Claim Rejections - 35 USC § 102
The rejection of claims 8-10 under 35 U.S.C. 102(a)(1) as being anticipated by US2013/0089926 (hereinafter “Moon”, OF RECORD in the IDS submitted: 20 June, 2023) is withdrawn in view of Applicant’s amendments to the claims. Applicant has moved dependent claim limitations up into independent claim 8 such that this rejection no longer applies.
Maintained Rejections in view of Applicant’s Amendments and Arguments
Claim Rejections - 35 USC § 112 (b)
Claims 8-11 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 8 has been amended to recite “wherein the subculturing is performed 10 to 20 times”. The term subculturing is define at page 5 as “a method of continuously culturing cells, specifically stem cells, in a healthy state for a long period of time, and may mean replacing a culture vessel or culturing a cell population in divisions. One-time replacement of the culture vessel or dividing and culturing the cell population is called subculture 1.” The Specification discloses at page 15 that “14-week-old embryos and fetuses were cultured, allowed to settle, and differentiated for 6 days in a differentiation medium…. . The culture was continuously subculture under a condition of oxygen partial pressure of 3 % by changing the culture medium once every two days.” Thus it is unclear whether the phrase “subculturing is performed 10 to 20 times” refers to 10 to 20 passages of the culture cells, or 10-20 days of continuous culture where the medium is changed every two days or other. As such the metes and bounds of the claim are indefinite. Claims 9-11 are further rejected for their dependency on a rejected base claim.
Claim Rejections - 35 USC § 112 (a)
Claims 8-10 remain rejected and claim 11 is newly rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This rejection has been modified as necessitated by Applicant’s amendments to the claims.
Applicant has amended claim 8 to require all three of fusaric acid, ascorbic acid, and NAD+ and to require 10-20 subcultures. However, claim 8 still reads on any amount of those additives. Amended claims 9-11 recite amounts of the additives but individually all depend from claim 8. Thus, the amended dependent claims continue to read on any amount of the other additives.
Claim 8 broadly encompasses a method of promoting differentiation of neural stem cells into dopaminergic neurons, comprising culturing the neural stem cells in a medium comprising any amount of fusaric acid, ascorbic acid, and NAD+. Amended dependent claims 9-11 recite amounts of the additives but individually all depend from claim 8. Thus, the amended dependent claims continue to read on any amount of the other additives.
The working examples teach the isolation of neural stem and progenitor cells (NSPCs) from fetal midbrains (FM-NPSCs) ([0081]-[0084]). The working examples then teach the differentiation of these FM-NSPCs for 6 days in medium comprising (1) 0.1 millimolar (mM) fusaric acid, (2) 0.1mM fusaric acid and 0.2 micromolar (μM) acetic acid, (3) 0.1mM fusaric acid and 1mM nicotinamide adenine dinucleotide (NAD+), or (4) 0.1mM fusaric acid, 0.2μΜ ascorbic acid, and 1mΜ NAD+ ([0085]-[0086]). The working examples teach cells with increased tyrosine hydroxylase (TH) expression (evaluated with fluorescence microscopy (see Figures)) as the result of this differentiation and teach TH expression as a marker of dopaminergic neurons ([0086]). The working examples teach that the differentiation of FM-NSPCs into TH+ cells did not differ between cells cultured in fusaric acid and cells cultured with fusaric acid with ascorbic acid and NAD+ when the FM-NSPCs were subcultured prior to differentiation for less than 10 days (FIG. 11A, [0098]) whereas those subcultured for more than 10 days then cultured with fusaric acid, ascorbic acid, and NAD+ were significantly more TH+ (FIG. 11B and C, [0099]). Finally, the working examples teach that “even when [ascorbic acid] or NAD+ was further added, respectively, than when [fusaric acid] was added alone, there was no significant effect on an ability of the neural stem cells isolated from a late stage subculture to differentiate into dopaminergic neurons” ([0093]). Thus, the working examples only teach combinations which comprise fusaric acid and they teach unpredictability with respect to promoting differentiation of NSPCs into dopaminergic neurons depending on how many times the NSPCs are subcultured prior to differentiation and the particular combination employed (all of which include fusaric acid). Where the working examples teach the combination of additives claimed, they only teach 0.1mM fusaric acid, 0.2μΜ ascorbic acid, and 1mΜ NAD+ ([0085]-[0086]). Notably, the ranges encompassed by the amended claims for each of these components is vast, yet the working examples test no amounts other than 0.1mM fusaric acid, 0.2μΜ ascorbic acid, and 1mΜ NAD+ ([0085]-[0086]).
A skilled artisan at the time of filing knew that methods for the differentiation of neural stem cells into dopaminergic neurons in vitro typically did not include a medium supplemented with NAD+ as evidenced by the relative lack of teachings in the art at the time of filing. Further, the exposure of NSPCs to 1mM NAD+ (the exact amount used by Applicants) is known to inhibit the morphological development of neurons differentiated from the NSPCs (Huang et al. Cells 11.8 (2022): 1283, hereinafter “Huang”, page 12, “Conclusions”). Thus, there is unpredictability in the field of dopaminergic neuron differentiation from NSPCs with respect to NAD+ supplementation.
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. See Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021). Further, A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014) (Claims directed to a functionally defined genus of antibodies were not supported by a disclosure that "only describe[d] one type of structurally similar antibodies" that "are not representative of the full variety or scope of the genus."). The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure "indicates that the patentee has invented species sufficient to constitute the gen[us]." See Enzo Biochem, 323 F.3d at 966, 63 USPQ2d at 1615; Noelle v. Lederman, 355 F.3d 1343, 1350, 69 USPQ2d 1508, 1514 (Fed. Cir. 2004) (Fed. Cir. 2004) ("[A] patentee of a biotechnological invention cannot necessarily claim a genus after only describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated."). See MPEP 2163(II)(A)(3)(a)(ii). In this case, the specification teaches only media comprising fusaric acid alone at 0.1mM, 0.1mM fusaric acid with 0.2 μM ascorbic acid, 0.1mM fusaric acid with 1mM NAD+, or 0.1mM fusaric acid with 0.2μΜ ascorbic acid and 1mΜ NAD+. There is no discussion of media with any other concentration of each of the ingredients when used in the claimed combination.
Therefore, Applicant has not disclosed a sufficient number of species for a skilled artisan to conclude that they had possession of the invention claimed.
Response to Arguments
Applicant's arguments filed 20 March, 2026 have been fully considered but they are not persuasive. Applicant argues that the claims as amended are adequately described without addressing any of the specific points raised in the above-rejection. In particular, Applicant has amended dependent claims to read on more particular species but has left the independent claim reading broadly on any amount of fusaric acid, ascorbic acid, and NAD+. Even in the dependent claims, Applicant has opted to claim a vast range of concentrations for each of the additives when the specification exemplifies only a single example with each fusaric acid, ascorbic acid, and NAD+ where the concentrations are 0.1mM fusaric acid, 0.2μΜ ascorbic acid, and 1mΜ NAD+ ([0085]-[0086]). Accordingly, the arguments have been fully considered but have not been found persuasive.
Claim Rejections - 35 USC § 103
Claim 8 remains rejected and claims 9-10 are newly rejected under 35 U.S.C. 103 as being unpatentable over US2013/0089926 (hereinafter “Moon”, OF RECORD in the IDS submitted: 20 June, 2023) in view of Rharass et al. Journal of Biomedical Science 24.1 (2017): 78, hereinafter “Rharass”, and Fricker, et al. International Journal of Tryptophan Research 11 (2018): 1178646918776658, hereinafter “Fricker”. This rejection is withdrawn with respect to its application to claim 11. This rejection has been modified as necessitated by Applicant’s amendments to the claims.
Applicant has amended independent claim 8 to require each of fusaric acid, ascorbic acid, and NAD+ and to require 10-20 subcultures. In addition, claims 9-10 have been amended to merely require specific amounts of each additive separately.
Moon discloses a method for differentiating human neural progenitor cells into dopaminergic neurons comprising culturing human neural progenitor cells in a medium comprising fusaric acid (Moon, [0031]). Moon specifically discloses to subculture the hNPCs before differentiation (Moon, [0023]-[0026], FIG. 7-10). Moon specifically discloses subculture for 7, 11, or 17 passages and teaches increased TH+/Tuj1+ cells from 11 and 17 passages compared to just 7 passages (Moon, FIG. 7, [0023]). Thus, Moon teaches to subculture more than ten and less than 20 times.
Moon does not teach to add ascorbic acid and NAD+ to the culture medium.
Rharass teaches dopaminergic neurons differentiated from neural progenitors as a therapy for neurodegenerative diseases and teaches that ascorbic acid is an essential nutrient that enhances dopamine neuron conversion from pluripotent cells (Rharass, “Background”, first paragraph). Rharass specifically teaches a medium supplemented with ascorbic acid for the culturing of neural progenitor cells (Rharass, “Cell Culture” and “Cell Treatment” headings). Rharass teaches that ascorbic acid treatment of neural progenitor cells has a pro-oxidant effect which enhances the expression of genes which stimulate cell commitment decisions and improves the neuronal yield of in vitro cultured neural progenitor cells to a level necessary for regenerative therapies (Rharass, “Conclusions”). Thus, a person having ordinary skill in the art would have been motivated by Rharass to have added ascorbic acid to the culture medium of Moon to improve the neuronal yield of in vitro cultured neural progenitor cells.
Fricker teaches that nicotinamide has long been associated with neuronal development, survival, and function (Fricker, Abstract). Fricker also teaches that nicotinamide has a neuroprotective effect in neurodegenerative conditions like Alzheimer’s, Parkinson’s, and Huntington’s disease (Fricker, Abstract). Fricker teaches that nicotinamide is a key component of the metabolic pathway involved in the production of NAD+ (Fricker, page 1, fourth paragraph). Fricker also teaches that supplementation with nicotinamide increases NAD+ through downregulation of poly(ADP-ribose) polymerases (PARP) which results in a neuroprotective effect (Fricker, page 7, second through fourth paragraphs). Thus, Fricker suggests to a person having ordinary skill in the art that NAD+ has a neuroprotective effect on neurons and that its supplementation through NAD+ itself or its precursor, nicotinamide, can have this neuroprotective effect.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art to have added ascorbic acid and NAD+ to the medium of Moon and to have arrived at the invention claimed in instant claim 8 with a reasonable expectation of success because they would have been motivated to do so to improve the neuronal yield of in vitro cultured neural progenitor cells as taught by Rharass and because Fricker suggests to supplement NAD+ for its neuroprotective effects. There would have been a reasonable expectation of success in adding ascorbic acid and NAD+ to the medium of Moon insofar as Rharass and Fricker teach reasonable beneficial effects of each ingredient on neuronal differentiation and proliferation.
Regarding claim 9, Moon teaches a range of fusaric acid of 50μM to 4 mM (Moon, [0035]).
Regarding claim 10, Rharass teaches 200μM ascorbic acid (Rharass, Abstract).
Response to Arguments
Applicant's arguments filed 20 March, 2026 have been fully considered but they are not persuasive. Applicant appears to argue (1) that the number of passages claimed produces an unexpected result (Remarks, page 8, page 11), (2) Moon does not teach ascorbic acid or NAD+ (Remarks, page 8), (3) Moon does not teach the “critical significance” of the number of passages claimed (Remarks, page 9), (4) Rharass does not teach fusaric acid of NAD+ (Remarks, page 9), (5) Fricker does not teach fusaric acid or ascorbic acid (Remarks, page 9), (6) Neither Rharass nor Fricker disclose the “critical change” in differentiation efficiency due to the number of claimed subcultures (Remarks, page 10), and (7) Huang teaches away from supplementing with NAD+ (Remarks, page 10).
In response to applicant's arguments against the references individually (arguments (2), (4), (5), and (6)), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
With regard to the “critical significance” of the number of passages claimed (Arguments (3), and (6)), the mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). The fact that Moon does not teach the particular significance of the 17 passages does not negate the fact that Moon teaches to do so to a person having ordinary skill in the art. Further, Neither Rharass nor Fricker have to teach the number of subcultures because an obviousness rejection is based upon a combination of references and Moon supplies that teaching.
In response to Applicant’s argument for unexpected results (Argument (1)), it is noted that Applicant is alleging two unexpected results. First, Applicant alleges that the combination of ascorbic acid, fusaric acid, and NAD+ unexpectedly increases “differentiation efficiency into dopaminergic neurons” (Remarks, page 11). Second, Applicant alleges that “a remarkable effect has been confirmed” after “10-20 passages” (Remarks, page 11). Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). “A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference.” In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential). See also MPEP 716.02e. Nowhere has Applicant attempted to indirectly or directly compare the results of the instant invention with the results of Moon to establish a persuasive argument against the prima facie obviousness of the instant invention in view of Moon, Rharass, and Fricker. In addition, Moon teaches to subculture 10-20 times before differentiation so it is unclear how the instantly alleged unexpected result could be unexpected without some comparison to the method of Moon which distinguishes the instant invention.
Lastly, the prior art relied upon in the instant obviousness rejection contain no teaching away and Applicant does not allege that they do. Applicant instead draws on Huang (cited in the rejection under 112(a)) as a teaching away from supplementing with NAD+ all-together. As mentioned in the 112(a) rejection, Huang teaches that relatively high amounts of NAD+ (1mM) have a negative effect on the differentiation of neural stem cells whereas Fricker suggests that NAD+ has a positive effect on neural stem cell differentiation without reference to any particular concentration. A person having ordinary skill in the art would understand the combined teachings of Huang and Fricker to suggest a ceiling to the amount of NAD+ that could be used while simultaneously teaching its importance in low amounts to the differentiation of neural stem cells into neurons. This is not a teaching away from using NAD+ all together.
Accordingly, Applicant’s arguments have been fully considered but have not been found persuasive.
Double Patenting
Claims 8-10 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 8,921,107. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are a species of the instant claims and limitations not explicitly taught by the patent are taught or suggested by Rharass et al. Journal of Biomedical Science 24.1 (2017): 78, hereinafter “Rharass”, and Fricker, et al. International Journal of Tryptophan Research 11 (2018): 1178646918776658, hereinafter “Fricker”. This rejection has been withdrawn with respect to claim 11 which has been amended to require a specific concentration of NAD+.
Patented claim 1 reads “A method for differentiating human neural progenitor cells into dopaminergic neurons, which comprises culturing human neural progenitor cells in a medium comprising fusaric acid”.
Pending claim 8 reads “A method of promoting differentiation of neural stem cells into dopaminergic cells, the method comprising: obtaining a culture of neural stem cells, subculturing the neural stem cells; and differentiating the subcultured neural stem cells in a medium comprising fusaric acid, ascorbic acid, and nicotinamide adenine dinucleotide (NAD+), wherein the subculturing is performed 10-20 times.”
Pending claim 8 is narrower than patented claim 1 insofar as pending claim 8 required “subculturing” for 10-20 times. Note that MPEP 804(II)(2)(a) sets forth instances where it is acceptable to utilize the disclosure of a U.S. patent document in conjunction with its claims for ODP rejections.
In particular, the MPEP notes that the portion of the specification that supports the patent claims may be considered. The court in AbbVie Inc. v. Kennedy Institute of Rheumatology Trust pointed out that “this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined.” In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014). The court explained that it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
The patent specification specifically discloses the subculture of NPCs before differentiating them with a medium comprising fusaric acid and specifically teaches 7, 11, or 17 passages as required by pending claims 9-10 (col. 3, lines 35-56). Thus, pending claims 8-10 are an obvious variant of the invention of patented claims 1-9.
With regard to the amended claim 8 requiring fusaric acid, ascorbic acid, and NAD+, Rharass and Fricker teach and suggest respectively to add ascorbic acid and NAD+ to the medium and teach the amount of fusaric acid and ascorbic acid which is claimed (See above 103 rejection). Therefore, claims 8-10 would have been obvious over the patented claims in view of Rharass and Fricker.
Response to Arguments
Applicant argues against the obviousness of the pending claims over the patented claims in view of Fricker and Rharass by arguing the same positions as above in opposition of the obviousness rejection. These arguments are not found persuasive for the same reasons discussed above. In addition, Applicant argues that there is no description of the number of subcultures in the reference patent. This is false. The patent specification specifically discloses the subculture of NPCs before differentiating them with a medium comprising fusaric acid and specifically teaches 7, 11, or 17 passages as required by pending claims 9-10 (col. 3, lines 35-56).
Additional Comments
Claim 11 is indicated as free of the prior art of record because neither Moon, nor Rharass, nor Fricker provides substantial evidence to teach, suggest, or motivate a person having ordinary skill in the art to use 0.1 mM to 4mM NAD+ in a method of differentiating neural stem cells into dopaminergic neurons.
In addition, Huang teaches that 1mM NAD+ has negative effects on such a method of differentiating neural stem cells. It is noted that Applicant is claiming up to 4mM NAD+ which is four times the amount discussed as inhibitory in Huang and that Applicant has only disclosed a single working example with all three of fusaric acid, ascorbic acid, and NAD+ wherein 0.1mM fusaric acid, 0.2μΜ ascorbic acid, and 1mΜ NAD+ were used ([0085]-[0086]). Applicant is advised that while claim 11 is indicated as free of the prior art of record, the claim must still comply with the provisions of 35 U.S.C. 112(a) to be in condition for allowance.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/BRENDAN THOMAS TINSLEY/Examiner, Art Unit 1634 /MARIA G LEAVITT/Supervisory Patent Examiner, Art Unit 1634
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