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
Applicants’ preliminary amendments submitted 03 April 2023 are acknowledged and entered into the application file. Claims 1-7 are pending, with claims 1-7 amended to improve the claim language without introducing new matter. Therefore, prosecution on the merits commences for claims 1-7.
Priority
The instant application is a national stage entry under 35 USC 371 of PCT/TR2021/050761, filed
02 September 2021. Acknowledgement is made of Applicants’ claim for foreign priority under 35 USC 119(a)-(d) to Republic of Türkiye application TR2020/16056, filed 08 October 2020. Receipt is acknowledged of certified copies of papers, in a non-English language, required by 37 CFR 1.55.
Drawings
The replacement drawing sheets filed 03 April 2023 are acknowledged and entered into the application file.
Specification
The substitute Specification filed 03 April 2023 is acknowledged and entered into the application file.
Claim Objections
Claims 1-7 are objected to because of the following informalities:
Regarding claim 1: The instant claim recites the term “R-spo1” in Line 5 and “R-spo 1” in Line 6. Applicants must ament the claim such that a uniform term is used throughout the claims.
The instant claim recites the limitation, “culturing a sorted EpCAM+endoderm progenitor cells in a 3D Matrigel medium of 37°C, 5% CO2, 95% humidity, and 7.2-7.5 pH” in Lines 10-12. Applicants must amend the recitation to, “culturing a population of sorted EpCAM+endoderm progenitor cells in a 3D Matrigel medium at 37°C, 5% CO2, 95% humidity, and a pH of 7.2-7.5
The instant claim further recites “um” in Lines 16-18 and 23 when referring to the micromolar unit. Applicant must amend this recitation to “μM”.
The instant claim further recites the limitation, “once the 3D Matrigel medium solidifies, a cell culture medium of 1.25mM N-acetylcysteine with 1% N2 and 1% B27 without retinoic acid, 10nM gastrin and 50ng/ml EGF, 10% RSPO1 is added to the 3D Matrigel medium, 100ng/ml FGF 10, 25ng/ml HGF, 10mM Nicotinamide, 5μM A8301, DMEM/F12 with added 10μM FSK culture medium is added to the 3D Matrigel medium; during the first 3 days of this step, 25ng/ml Noggin and 30% Wnt CM and 10μM Y27632 is added to the 3D Matrigel medium” in Lines 13-19. Applicants must amend the recitation to, “once the 3D Matrigel medium solidifies, adding an expansion and maintenance (EM) culture medium to the 3D Matrigel medium, wherein the EM culture medium consists of Advanced DMEM/F12 supplemented with 1.25mM N-acetylcysteine with 1% N2 and 1% B27 without retinoic acid, 10nM gastrin, 100ng/ml FGF 10, 25ng/ml HGF, 10mM Nicotinamide, 5μM A8301, and
wherein 25ng/ml Noggin, , and 10μM Y27632 also added to the 3D Matrigel culture medium during the first 3 days”, or the like, to improve the clarity of the claim language.
The instant claim further recites the limitation, “for a functional hepatocyte differentiation of organoids, the 3D Matrigel medium needs to be changed with 1% N2 and 1% B27 without retinoic acid, 10nM gastrin and 50ng/ml EGF, 100ng/ml FGF 10, 25ng/ml HGF, 500nM A8301, 10μM DAPT, 25ng/ml BMP7 and 30μM Dexamethasone added a developed cell culture medium DMEM/F12 containing a differentiation medium” in Lines 20-25. Applicants must amend the recitation to, “changing the 3D Matrigel medium to a differentiation medium, wherein the differentiation medium consists of Advanced DMEM/F12 medium supplemented with 1% N2 and 1% B27 without retinoic acid, 10nM gastrin, , and 30μM Dexamethasone
The instant claim is further objected to for utilizing bullet points within the claim language. See MPEP § 608.01(m).
Appropriate correction is required.
Regarding claim 2: The instant claim is directed to a “3D hepatic organoid obtained according to Claim 1.” Applicants must amend the recitation to, “3D hepatic organoid obtained according to the method of claim
Appropriate correction is required.
Regarding claim 3: The instant claim refers to the method “according to Claim…”. The recitation of “claim” in the instant claim should be amended to the un-capitalized version, such that it recites, “according to claim…”. See MPEP § 608.01(m).
Appropriate correction is required.
Regarding claims 4 and 6-7: The instant claims each refer to the 3D hepatic organoid “according to Claim…”. The recitation of “claim” in each claim should be amended to the un-capitalized version, such that each claim recites, “according to claim…”. See MPEP § 608.01(m).
Appropriate correction is required.
Regarding claim 5: The instant claim refers to the 3D hepatic organoid “according to Claim…”. The recitation of “claim” in the instant claim should be amended to the un-capitalized version, such that it recites, “according to claim…”. See MPEP § 608.01(m).
In addition, the recitation of “Citrulinemia” in Line 2 needs to be corrected to “Citrullinemia”.
Appropriate correction is required.
Claim Interpretation
Instant claim 2 is directed to a 3D hepatic organoid obtained according to the method of claim 1. This is a product-by-process limitation. Product-by-process limitations are considered only in so far as the method of production affects the structure of the final product. In the instant case, there is no evidence that the method of claim 1 imparts any particular structure or significance to the final 3D hepatic organoid, as the 3D hepatic organoid is only intermediately comprised of EpCAM+ hepatic cells and does not provide evidence that the final 3D hepatic organoid continues to express EpCAM. Thus, the claim will be interpreted as if a 3D hepatic organoid derived from any production method fulfills the recited claim limitation. See MPEP § 2113.
Instant claims 4-7 each recite an intended use limitation, specifically the use of the 3D hepatic organoid in researching therapeutics for the treatment of all liver metabolic diseases (claim 4), mimicking a Citrullinemia phenotype in vitro (claim 5), as a platform for drug hepatotoxicity assays of candidate therapeutics (claim 6), and as a live hepatic function monitoring system (claim 7). Intended use limitations are considered only in so far as they physically limit the claimed method. Therefore, so long as the 3D hepatic organoid is physically capable of being “configured for use” in the instantly recited applications, it will read on each of the claims as written. It is of note that the phrase “configured for use” as utilized within the instant claims is being interpreted as the beginning of an intended use phrase, and does not require the addition of any structural limitations to the 3D hepatic organoid.
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 1-7 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.
Regarding claims 1-7: Instant claim 1 recites the following method steps of, “differentiating the IPSCs into a definitive endoderm in a medium containing Activin A, Wnt3a, and R-spo1 factors” and “adding 5ng/ml R-spo1 during IPSC differentiation to increase an amount of EpCAM+endoderm progenitor cells”. The scope of the claim is indefinite, as it is unclear if the 5ng/ml is being added in addition to a basal amount of R-spo1, or if the total amount of R-spo1 comprised within the medium in the first limitation is 5 ng/ml. Therefore, the metes and bounds of the claim cannot be determined, thus rendering the instant claim indefinite. For purposes of compact prosecution, the instant claim will be interpreted as if the total amount of R-spo1 comprised within the medium is 5 ng/ml.
In addition, instant claim 1 recites the trademark/trade name “Matrigel” in Lines 11, 13, 15, 17, 19, and 21. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the solubilized basement membrane matrix secreted by Engelbreth-Holm-Swarm (EHS) mouse sarcoma cells and, accordingly, the identification/description is indefinite.
Instant claims 2-7 either directly depend from or incorporate all the limitations of instant claim 1, thus rendering them indefinite as well.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 2 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akbari et al (Stem Cell Reports, 2019, of record on IDS filed 10 April 2023).
It is of note that Akbari et al has an electronic publication date of 12 September 2019, which is greater than one year prior to the effective filing date of the instant invention.
Akbari et al disclose the generation of hepatic organoids using induced pluripotent stem cell (iPSC)-derived EpCAM-positive endodermal cells as an intermediate (Abstract; Pages 628, 631-632, 638-639; Figure 1).
Accordingly, Akbari et al anticipate the claims as follows:
Regarding claim 2: The instant claim comprises a product-by-process limitation, as can be
observed in the Claim Interpretation section above and is incorporated in its entirety herein.
Accordingly, Akbari et al disclose the generation of hepatic organoids that are constructed from iPSC-derived EpCAM-positive endodermal cells. This therefore reads on the 3D hepatic organoid of the instant claim.
Regarding claims 4-7: As aforementioned in the discussion of claim 2, Akbari et al disclose a 3D hepatic organoid. As the 3D hepatic organoid is physically capable of being utilized for the research of therapeutics for the treatment of all liver metabolic diseases (claim 4), mimicking a Citrullinemia phenotype in vitro (claim 5), as a platform for drug hepatotoxicity assays of candidate therapeutics (claim 6), and as a live hepatic function monitoring system (claim 7), this therefore anticipates the 3D hepatic organoid of the instant claims for the same reasons as discussed in the rejection of instant claim 2. See Claim Interpretation section for the discussion of the intended use limitations.
It is of note that the Akbari et al disclose that the mature 3D hepatic organoids underwent functionality testing and disease-modeling assays (Pages 633-636).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102
and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Akbari et al (Stem Cell Reports, 2019, of record on IDS filed 10 April 2023) in view of Blak et al (US 2011/0086379 A1) as evidenced by Corning (Matrigel Technical Sheet, 2019).
Akbari et al is considered prior art under 35 USC 102(a)(1) and has an electronic publication date of 12 September 2019, which is greater than one year prior to the effective filing date of the instant invention. Blak et al is considered prior art under 35 USC 102(a)(1) and 35 USC 102(a)(2).
Regarding claims 1 and 3: Akbari et al disclose the generation of hepatic organoids using induced pluripotent stem cell (iPSC)-derived EpCAM-positive endodermal cells as an intermediate (Abstract; Pages 628, 631-632, 638-639; Figure 1).
As such, Akbari et al disclose that iPSCs are initially differentiated into a definitive endoderm via the culturing of the iPSCs in a RPMI/B27 culture medium supplemented with 100 ng/mL activin A, 50 ng/mL Wnt3a, and 5 ng/mL R-spo1 (Page 639, In Vitro Differentiation of Human iPSCs…).
Akbari et al further disclose that after four days of endoderm culture, the cells are dissociated, stained with anti-human EpCAM antibody and sorted via FACS. Akbari et al further disclose that the sorted EpCAM+ cells are mixed with Matrigel and allowed to solidify. Once solidified, culture medium is added, wherein the culture medium is comprised of AdDMEM/F12 medium supplemented with 1% B27, 1.25 mM N-acetylcysteine, 10 nM gastrin, 50 ng/mL EGF, 10% R-spo1 conditioned medium, 100 ng/mL FGF10, 25 ng/mL HGF, 10 mM nicotinamide, 5 μM A8301, and 10μM forskolin. Akbari et al further disclose that, during the first three days of culture, the medium is supplemented with 5% - or 25 ng/mL – Noggin and 30% Wnt conditioned medium, and 10 mM Y27632 (Page 639, Organoid Culture of EpCAM+ Hepatic Progenitors).
Akbari et al further disclose that after three to five days the medium was changed to AdDMEM/F12 medium supplemented with 1% B27, 10 nM gastrin, 50 ng/mL EGF, 100 ng/mL FGF10, 25 ng/mL HGF, 500 nM A8301, 10 μM DAPT, 25 ng/mL BMP7, and 30 μM dexamethasone (Page 639, Hepatocyte Differentiation and In Vitro Functional Studies).
Akbari et al do not disclose that the EpCAM+ cells/Matrigel mixture is cultured at 37°C, 5% CO2, 95% humidity, and a pH of 7.2-7.5, nor that 1% N2 is added to the culture mediums, as required by instant claim 1.
Blak et al, however, disclose methods of differentiating stem cells into at least an endodermal layer involving the formation of 3D aggregates, wherein the aggregates are formed on Matrigel-coated plates and cultured at 37°C, 5% CO2, 95% humidity, and a pH of 7.4 (Abstract, Paragraphs [0004], [0028]-[0029], [0121], [0124], [0160]-[0166], [0174], [0179]-[0180], [0182]). Blak et al further disclose that the cells are cultured in DMEM culture medium supplemented with 1% N2 and 1% B27 (Paragraphs [0032], [0117], [0183], [0252], [0255], [0262], [0268]).
It is of note that Matrigel solidifies at 37°C and 5% CO2, as evidenced by Pages 1-2 of Corning.
Therefore, it would have been prima facie obvious to have modified the method of Akbari et al such that the EpCAM+ cells/Matrigel mixture is cultured at 37°C, 5% CO2, 95% humidity, and a pH of 7.4 in culture medium that has been supplemented with 1% N2, as detailed in Blak et al. One of ordinary skill in the art before the effective filing date of the invention would have been motivated to culture the cell/Matrigel mixture in conditions that are the same as a standard tissue culture incubator (Blak et al: Paragraphs [0180], [0182], [0224]) and are well-known in the art to allow for the solidification of Matrigel. In addition, the ordinary artisan would have been motivated to supplement the culture medium with 1% N2, as it is a well-known component in the art that can be used for endodermal induction (Blak et al: Paragraphs [0117], [0140]), and would have had a reasonable expectation of success given that the disclosures of both Akbari et al and Blak et al are concerned with the culturing of endodermal cellular aggregates with Matrigel. See MPEP § 2143(I)(G).
Consequently, Akbari et al as modified by Blak et al as evidenced by Corning render obvious a method of generating a 3D hepatic organoid, wherein iPSCs are initially differentiated into a definitive endoderm via the culturing of the iPSCs in a RPMI/B27 culture medium supplemented with 100 ng/mL activin A, 50 ng/mL Wnt3a, and 5 ng/mL R-spo1; sorting of the cultured cells via FACS for EpCAM+ endoderm progenitor cells; culturing of the sorted EpCAM+ cells with Matrigel at 37°C, 5% CO2, 95% humidity, and a pH of 7.4, wherein the mixture is allowed to solidify; adding culture medium to the solidified mixture, wherein the culture medium is comprised of AdDMEM/F12 medium supplemented with 1% B27, 1% N2, 1.25 mM N-acetylcysteine, 10 nM gastrin, 50 ng/mL EGF, 10% R-spo1 conditioned medium, 100 ng/mL FGF10, 25 ng/mL HGF, 10 mM nicotinamide, 5 μM A8301, and 10μM forskolin, and wherein the culture medium in the first three days of culture further comprises or 25 ng/mL Noggin, 30% Wnt conditioned medium, and 10 mM Y27632; and switching the culture medium to a differentiation medium comprising AdDMEM/F12 medium supplemented with 1% B27, 1% N2, 10 nM gastrin, 50 ng/mL EGF, 100 ng/mL FGF10, 25 ng/mL HGF, 500 nM A8301, 10 μM DAPT, 25 ng/mL BMP7, and 30 μM dexamethasone. As the culture mediums do not comprise retinoic acid, this therefore renders obvious the method of instant claim 1.
Regarding claim 2: The instant claim comprises a product-by-process limitation, as can be
observed in the Claim Interpretation section above and is incorporated in its entirety herein.
Accordingly, as indicated in the 35 USC 102 rejection above, Akbari et al disclose the generation of hepatic organoids that are constructed from iPSC-derived EpCAM-positive endodermal cells. This therefore reads on the 3D hepatic organoid of the instant claim.
Regarding claim 3: As aforementioned in the discussion of claim 1, Akbari et al disclose that the iPSCs are differentiated in a RPMI/B27 culture medium. As RPMI/B27 is a laboratory culture medium, this therefore reads on the method of the instant claim.
Regarding claims 4-7: As aforementioned in the discussion of claim 2, Akbari et al disclose a 3D hepatic organoid. As indicated in the 35 USC 102 rejection above, since the 3D hepatic organoid is physically capable of being utilized for the research of therapeutics for the treatment of all liver metabolic diseases (claim 4), mimicking a Citrullinemia phenotype in vitro (claim 5), as a platform for drug hepatotoxicity assays of candidate therapeutics (claim 6), and as a live hepatic function monitoring system (claim 7), this therefore anticipates the 3D hepatic organoid of the instant claims for the same reasons as discussed in the rejection of instant claim 2. See Claim Interpretation section for the discussion of the intended use limitations.
It is of note that the Akbari et al disclose that the mature 3D hepatic organoids underwent functionality testing and disease-modeling assays (Pages 633-636).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA G WESTON whose telephone number is (571)272-0337. The examiner can normally be reached Monday-Thursday 8AM - 4PM (CT); Friday 8AM - 11AM (CT).
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/ALYSSA G WESTON/Examiner, Art Unit 1633
/CHRISTOPHER M BABIC/Supervisory Patent Examiner, Art Unit 1633