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 .
Applicant’s amendment filed on 11/14/2025 has been entered.
Claims 20-27, 30-32, 34-38 and new claims 39-44 are pending in the present application.
Applicant elected previously without traverse of Group II, which is drawn to an in vitro method for generating a T cell progenitor population.
Applicant also elected previously the following species: (i) a medium comprising TNF-alpha; (ii) a medium comprising at least IL-7, SCF and TPO; and (iii) a method further comprises a step of exposing the cells to a vector intended for transfection or transduction of CD34+ cells.
Claims 20-22 and 38 were withdrawn previously from further considerations because they are directed to non-elected inventions. Additionally, claims 24-25 and 37 were also withdrawn previously from further consideration because they are directed to non-elected species. Moreover, newly added claims 39-44 were also withdrawn from further consideration because they are directed to a non-elected species (a medium comprising an antagonist of the Aryl hydrocarbon/Dioxin receptor; please refer to the Restriction Requirement dated 11/19/2024).
Accordingly, amended claims 23, 26-27, 30-32 and 34-36 are examined on the merits herein with the above elected species.
Terminal Disclaimer
The terminal disclaimer filed on 11/14/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 11,426,430 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Amendment
1. All 103 rejections that were set forth in the Non-Final Office action dated 05/15/2025 (pages 4-9) were withdrawn in light of currently amended independent claim 23, particularly with the new limitation “wherein the cells are cultured in the presence of TNF-alpha for a period between 5 days and 10 days, and wherein more than 60% of the CD7+ cells in the population are CD34-“.
2. The rejection on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,426,430 (IDS) was withdrawn in light of the Terminal Disclaimer filed on 11/14/2025.
3. The rejection on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,071,635 in view of Snoeck et al (J. Exp. Med. 183:705-710, 1996; IDS) and Schiavinato et al (In Vitro Cell. Dev. Biol.-Animal 52:920-934, 2016) was withdrawn in light of currently amended independent claim 23, particularly with the new limitation “wherein the cells are cultured in the presence of TNF-alpha for a period between 5 days and 10 days, and wherein more than 60% of the CD7+ cells in the population are CD34-“.
Claim Objections
Claim 32 is still objected to because the term “CS-1” should be spelled out in full at the first occurrence of the term.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Amended claims 23, 26-27, 30-32 and 34-36 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because while being enabling for:
An in vitro method for generating T cell progenitor population comprising T cell progenitors that are CD7+CD34-, comprising the step of culturing CD34+ cells in a culture medium comprising fetal serum, TNF-alpha, IL-7, thrombopoietin (TPO), Flt3L, and Stem cell factor (SCF), in the presence of an immobilized DL-4 Notch ligand and an immobilized fibronectin fragment, wherein the cells are cultured for a period between 5 days and 10 days,
wherein more than 60% of the CD7+ cells in the population are CD34-,
wherein TNF-alpha is present in the culture medium from day 0 of the culture, and at a concentration of at least 5 ng/ml,
wherein said fibronectin fragment comprises the RGDS (SEQ ID NO:3) motif, the CS-1 peptide of SEQ ID NO: 6 and a heparin binding domain, and
wherein fetal serum is present in the culture medium at a concentration of at least 15%;
does not reasonably provide enablement for an in vitro method for generating a T cell progenitor population comprising T cell progenitors that are CD7+CD34- as claimed broadly for the reasons discussed below. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. This is a new ground of rejection necessitated by Applicant’s amendment.
The factors to be considered in the determination of an enabling disclosure have been summarized as the quantity of experimentation necessary, the amount of direction or guidance presented, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art and the breadth of the claims. Ex parte Forman, (230 USPQ 546 (Bd Pat. Appl & Unt, 1986); In re Wands, 858 F.2d 731, 8 USPQ 2d 1400 (Fed. Cir. 1988)).
The instant specification is not enabled for the instant broadly claimed invention for the reasons discussed below.
1. The breadth of the claims
The instant claims encompass an in vitro method for generating a T cell progenitor population comprising T cell progenitors that are CD7+CD34-, comprising the step of culturing CD34+ cells in any culture medium as long as it comprises TNF-alpha at any concentration, in the presence of any immobilized Notch ligand (e.g., Delta-like-1, -3, -4, and Jagged-1, -2), wherein the cells are cultured in the presence of TNF-alpha for a period between 5 days and 10 days, and the TNF-alpha is not necessarily present on day 0 of the culture (e.g., TNF is added on day 1, 2, 3, 4, or 5 of the culture); and wherein more than 60% (e.g., 70%, 80%, 90%, 95% or more) of the CD7+ cells in the population are CD34-.
2. The state and the unpredictability of the prior art
Before the effective filing date of the present application (02/13/2017), virtually nothing was known about the generation of a T cell progenitor population comprising T cells progenitors that are CD7+CD34- by culturing CD34+ cells in a culture medium comprising TNF-alpha in the presence of an immobilized Notch ligand, wherein the cells are cultured in the presence of TNF-alpha for a period between 5 days and 10 days, and wherein more than 60% of the CD7+ cells in the population are CD34-, as evidenced at least by the teachings of Snoeck et al (J. Exp. Med. 183:705-710, 1996), Ohishi et al (J. Clin. Invest. 110:1165-1174, 2002), Reimann et al (Stem Cells 30:1771-1778, 2012; IDS), Reimann et al (Poster Abstract 3532, Blood 114:3532, 2009; IDS), Bernstein et al (US 2014/0369973; IDS) and Schiavinato et al (In Vitro Cell. Dev. Biol.-Animal 52:920-934, 2016). Moreover, the physiological art is recognized as unpredictable (MPEP 2164.03).
3. The amount of direction or guidance provided
Apart from disclosing culturing CD34+ cells from human CB or mobilized peripheral blood samples in plates that had been coated with recombinant fibronectin RetroNectin and DL-4 (Notch-ligand Delta-like 4) in a culture medium containing 20% defined fetal calf serum, recombinant human cytokines interleukin-7, Flt3-ligand, SCF and TPO with or without TNF-alpha (100 ng/ml) that yielded CD34-CD7+ cells 20 to 40 times more in a 7-day culture with TNF-alpha than in a 7-day culture without TNF-alpha, with 90.1%-95.6% CD7+ cells are CD34-CD7+ and 87.7%-95.4% CD7+ cells are CD34-CD7+CD5- (see at least Examples 1-3, 10; Figure 4; Tables 1-2); the instant specification fails to provide sufficient guidance for a skill in the art on how to generate in vitro a T cell progenitor population in which more than 60% of the CD7+ cells in the population are CD34- (a specific desired result) after culturing CD34+ cells in any other medium comprising TNF-alpha for a period between 5 days and 10 days, and in the presence of any other immobilized Notch ligand as encompassed broadly by the instant claims.
The presence of a TNF-alpha in a culture medium does not necessarily result in the differentiation of CD34+ cells into T cell progenitors that are CD7+CD34-, let alone the desired T cell progenitor population in which more than 60% of the CD7+ cells are CD34-. Snoeck et al failed to disclose any generation of CD7+CD34- T-cell progenitors by culturing primitive human CD34++CD38- hematopoietic progenitor cells in the presence of TNF-alpha at various concentrations (Abstract; and Fig. 1). Similarly, Bernstein et al also failed to disclose any generation of CD7+CD34- T-cell progenitors by culturing CD34+ hematopoietic stem/progenitor cells in the presence of a Notch ligand (e.g., Deltaext-IgG) immobilized on a solid support (e.g., a plastic tissue culture dish) in combination with an aryl hydrocarbon receptor antagonist (e.g., StemRegenin1 or SR1) in a fluid medium containing one or more growth factors in the fluid medium such as SCF, Flt-3, IL-6, IL-3, IL-11 and TPO. Instead, Bernstein et al disclosed in Example 4 showing 16-day cultured cells contain lymphoid progenitors (CD34+CD7+) (paragraphs [0088], [0425] and Fig. 4E). Thus, it is apparent that neither the presence of TNF-alpha in a culture medium nor the presence of an immobilized Notch ligand in a culture of CD34+ cells would necessarily lead to the generation of CD7+CD34- T-cell progenitors. However, Bernstein et al stated explicitly “Where differentiation of HSPC is desired, HSPC (e.g., enriched HSPC or expanded HSPC) can be exposed to one or more growth factors that promote differentiation…For example, SCF can be used in combination with GM-CSF or IL-7 to differentiate HSPC (e.g., expanded HSPC) into myeloid stem/progenitor cells or lymphoid stem/progenitor cells by exposing HSPC to about 100 ng/ml of each of SCF and IL-7” (paragraph [0219]). Moreover, Ohishi et al also demonstrated that Delta1Ext-myc immobilized together with fibronectin fragment CH-296 effectively inhibits myeloid differentiation, maintains cord blood precursors at a less differentiated CD34+ stage and induces optimal expansion of cord blood CD34+ cells in the presence of SCF, FL, TPO, IL-6 and IL-3 growth factors compared to control cultures; and the addition of IL-7 which is a cytokine known to support lymphoid differentiation led to enhanced generation of CD34-CD7+ cells (Abstract; “Results” section on pages 1168-1172). Furthermore, Reimann et al (2012) also disclosed a method for in vitro generation of human T-cell precursors displaying the phenotypic and molecular signatures of very immature thymic precursors, the method comprises exposing human CD34+ CB cells to immobilized Notch-ligand Delta-4 Fc fusion protein (5 ug/ml) on coated plates in the presence of cytokines IL-7, SCF, Flt3-ligand and TPO along with supplemented 20% defined fetal calf serum; with CD34+ CB cells began to express CD7 within 3 days with increased CD7 expression until day 7 that is correlated with a decreased CD34 expression and the emergence of a CD34-CD7+ T-cell precursor population (Abstract; page 1772, left column, third full paragraph; Materials and Methods; section titled “In vitro exposure of CB CD34+ to a DL4 fusion protein induces phenotypic changes that are consistent with early T-cell development”; Figure 1 and Tables 1-2). Reimann et al (2012) specifically disclosed that the 7-day culture contained 22% CD7+CD34- cells, the 10-day culture contained 46% CD7+CD34- cells, and the 14-day culture contained 62% cD7+CD34- cells (Fig. 1A).
With respect to the disclosed results of the present application, the instant specification stated specifically “When both TNF-alpha and the Notch ligand are present, the effect observed is very high. It thus seems that there is a synergy between these two compounds and that the effect of TNF-alpha on T-cell differentiation is likely Notch dependent” (page 31, lines 5-8; Example 10 and Figure 4). The specification also taught that the total number of CD7+ T cell precursors was not different from 5 ng/ml TNF-alpha treatment to 100ng/ml TNF-alpha treatment (Example 8; and Figure 7). Apart from the DL-4 Notch ligand, there is no evidence of record indicating or suggesting that TNF-alpha also acts synergistically with other Notch ligands in the robust generation of CD7+CD34- T cell progenitors from CD34+ cells, particularly the desired T cell progenitor population in which more than 60% of the CD7+ cells are CD34- as encompassed by the instant claims. On the contrary, Schiavinato et al demonstrated that the presence of low and physiologically relevant concentration TNF-alpha (0.25 ng/ml) in a co-culture of human CD34+ HSCs with OP9-DL1 cells supplemented with 20% fetal calf serum, IL-7 and FLt3L promoted significant increase in the percentage of primitive (CD34+CD7+CD1a-) and committed (CD34+CD7+CD1a+) T progenitors on day 12 (54 and 5%, respectively), with their numbers increasing on day 24 (82 and 20%, respectively) (Abstract; section titled “Coculture and treatment conditions” on page 922; page 923, left column, second last paragraph). Moreover, Jaleco et al (J. Exp. Med. 194:991-1001, 2001; IDS) also demonstrated differential effects of Notch ligands Delta-1 and Jagged-1 in human lymphoid differentiation; particularly Jagged-1 did not disturb either B or T cell/NK development (Abstract). Furthermore, it is also unclear whether the supplemental 20% defined fetal calf serum in the culture medium of the present application also plays a role in contributing to the observed synergistic effects between TNF-alpha and immobilized DL-4 Notch ligand since animal and human sera are added to support stable cell viability and optimal cell growth. Once again, there is no evidence of record indicating or suggesting that the observed synergy between TNF-alpha and the DL-4 Notch ligand in the generation of a T cell progenitor population in which more than 60% of the CD7+ cells are CD34- from cultured CD34+ cells is also attainable in a serum-free culture medium.
The instant specification also disclosed specifically that the addition of TNF-alpha at day 0 of the culture is critical and essential for the robust generation of CD7+CD34- T cell progenitors from the 7-day culture of CD34+ cells from cord blood (A) or mobilized peripheral blood (B) as shown by Fig. 2 that is reproduced below, wherein when the complements (TNFalpha or SR1) are added from 0-3 days of culture (a), 0-7 days of culture (b), or 4-7 days of culture (c).
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Thus, the instant specification also fails to provide sufficient guidance for an ordinary skill in the art on how to attain a T cell progenitor population in which more than 60% of the CD7+ cells are CD34- from a culture of CD34+ cells that are exposed to TNF-alpha for a period between 5 days and 10 days, wherein TNF-alpha is not necessarily added at day 0 of the culture (e.g., TNF-alpha is added to the culture medium at day 1, 2, 3, 4, or 5) as encompassed broadly by the instant claims.
Since the prior art before the effective filing date of the present application failed to provide sufficient guidance regarding to the aforementioned issues, it is incumbent upon the present application to do so.
As set forth in In re Fisher, 166 USPQ 18 (CCPA 1970), compliance with 35 USC 112, first paragraph requires:
That scope of claims must bear a reasonable correlation to scope of enablement provided by specification to persons of ordinary skill in the art; in cases involving predictable factors, such as mechanical or electrical elements, a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific laws; in cases involving unpredictable factors, such as most chemical reactions and physiological activity, scope of enablement varies inversely with degree of unpredictability of factors involved.
Moreover, the courts have also stated that reasonable correlation must exist between scope of exclusive right to patent application and scope of enablement set forth in the patent application (27 USPQ2d 1662 Ex parte Maizel.).
Accordingly, due to the lack of sufficient guidance provided by the specification regarding to the issues set forth above, the unpredictability of the relevant physiological art, and the breadth of the instant claims, it would have required undue experimentation for one skilled in the art to make and use the instant broadly claimed invention.
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.
Amended claim 32 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. This is a new ground of rejection necessitated by Applicant’s amendment.
In claim 32, it is unclear what is encompassed by the limitation “CS-1 (SEQ ID NO: 6)”. This is because it is unclear whether SEQ ID NO: 6 a representative member of CS-1 or CS-1 having the sequence of SEQ ID NO: 6. Clarification is requested because the metes and bounds of the claim are not clearly determined. Should Applicant intend the limitation to refer to the CS-1 peptide of SEQ ID NO: 6, then claim it as such.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Quang Nguyen, Ph.D., at (571) 272-0776.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s acting SPE, James Douglas (Doug) Schultz, Ph.D., may be reached at (571) 272-0763.
To aid in correlating any papers for this application, all further correspondence regarding this application should be directed to Group Art Unit 1631; Central Fax No. (571) 273-8300.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to (571) 272-0547.
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/QUANG NGUYEN/Primary Examiner, Art Unit 1631