DETAILED ACTION
Applicant’s response to the restriction/election requirement received on 4/7/26 has been entered. Claims 1-21 are pending in the instant application.
Applicant’s election of Group I and the species b) exosomes from tendon derived mesenchymal stem cells as the co-culture agent. As applicant did not indicate that the elections were made with traverse and did not include any arguments traversing either the restriction requirement or election of species requirement, the elections are considered to have been made without traverse.
Claims 16-21 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and/or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/7/26.
Claims 1-15 are currently under examination based on the elected species of co-culture agent. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . An action on the merits follows.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 4/7/26 (3) are in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the information disclosure statements have been considered by the examiner, and initialed and signed copies of the 1449s are attached to this action.
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 1-9 and 11-12 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.
Independent claim 1 recites, “administering to the subject a population of cells selected from tendon exosome educated macrophages (tendon-EEM)”, the phrase “selected from” is confusing because there is there is only one type of cell recited after this phrase. Therefore, there doesn’t appear to be anything to “select”. It is suggested that the claim be amended to recite, “administering to the subject a population of cells comprising tendon exosome educated macrophages (tendon-EEM)”. Claims 2-9 depend on claim 1 and thus are included in this rejection.
Claim 2 is further indefinite in the recitation that the tendon-EEM cells are eotaxin low, TGF-alpha low, and IL-13 low. The word “low” is a relative term of degree. Without a reference level, the metes and bounds of the term “low” cannot be determined. In other words, is the expression of these markers “low” in comparison to another particular cell type? In addition, even were reference level indicated, or a baseline provided, it is unclear how much less expression than that reference level or baseline level of expression would qualify as “low” expression. Thus, the metes and bounds of this term and thus the claim as a whole cannot be determined. In the interests of compact prosecution, the claim has been interpreted as tendon-EEM cells which express at least detectable levels of eotaxin, TGF-alpha, and IL-13.
Claim 11 depends on claim 10 and recites, “wherein the extracellular factor is derived from tendon or tendon derived mesenchymal stem cells”. However, claim 10 recites that the CD14+ cells are co-cultured with “tendon derived mesenchymal stem cells or an extracellular factor derived therefrom”. As such, claim 10 limits the extracellular factor to one derived from tendon derived mesenchymal stem cells. As such, the limitation of claim 11 where the extracellular factor is from tendon or tendon derived mesenchymal stem cells conflicts with the limitation of claim 10. Thus, the metes and bounds of the claim are confusing and indefinite. Claim 12 depends on claim 11 and thus is included in this rejection.
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.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for methods of preparing a population of tendon-mesenchymal stem cell derived exosome educated peripheral blood CD14+ macrophages, where the tendon-mesenchymal stem cell derived exosome educated peripheral blood CD14+ macrophages are generated by co-culturing isolated peripheral blood CD14+ macrophages with exosomes obtained from isolated tendon derived mesenchymal stem cell for at least 3 days, does not reasonably provide enablement for methods of preparing a population of tendon-mesenchymal stem cell derived exosome educated peripheral blood CD14+ macrophages with an anti-inflammatory macrophage phenotype, or for methods of treating any orthopedic injury in a subject by administering any population of macrophages educated by exposure for any length of time to exosomes generated by any tendon derived cell. 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 or use the invention commensurate in scope with these claims.
Claims 1-9 read broadly on the therapeutic administration of any macrophage from any source tissue educated by exosomes derived from any type of tendon or tendon derived cell. Claim 10-15 limit the macrophages to CD14+ macrophages co-cultured with exosomes derived from tendon derived mesenchymal stem cells. Claims 10-15 also characterize the educated macrophages as having an anti-inflammatory macrophage phenotype. The claims further read on the treatment of orthopedic injuries including mechanical injuries to various tendons, inflammatory injuries, angiogenesis, fibrosis, and degradation of peri-ligamentous or tendonous tissues such as cartilage.
The specification provides general guidance of using exosome educated macrophages including the use of bone marrow derived exosomes and tendon derived exosomes for orthopedic injuries. Specific guidance in the specification, however, is limited to the extraction of exosomes from conditioned media of either bone marrow derived mesenchymal stem cells or tendon derived mesenchymal stem cells. The specification does not provide specific guidance for obtaining and using exosomes obtained from the media of cultured tenocytes, or of any other cell type present in a tendon other than tendon mesenchymal stem cells. The specification’s working examples describe methods of obtaining mesenchymal stem cells from tendon, and of obtaining exosomes from the conditioned media of cultures of tendon-derived mesenchymal stem cells. The working examples also describe methods of obtaining exosomes from bone marrow derived mesenchymal stem cells. In both cases, CD14+ cells are isolated from peripheral blood mononuclear cells using anti-CD14 magnetic bead separation. Second, bone marrow mesenchymal stem cells are isolated from bone marrow, or tendon mesenchymal stem cells are isolated from tendon, followed by isolation of exosomes (EVs) from the bone marrow derived mesenchymal stem cells (BM-MSC) or tendon derived mesenchymal stem cells (tendon-MSC). The CD14+ cells and bone marrow-mesenchymal stem cell derived exosomes or tendon mesenchymal stem cell derived exosomes were then incubated for at least 3 days to 7 days. The resulting bone marrow mesenchymal stem cell exosome-educated CD14+ macrophages (labeled BM-EEM cells ) or tendon mesenchymal stem cell exosome-educated CD14+ macrophages (labeled tendon-EEM cells) were tested for expression of various protein markers and cytokines and compared with CD14+ macrophages cultured with reference mesenchymal stem cells, or uneducated CD14+ macrophages. Pages 11-12 of the specification discloses the phenotype of various “educated” macrophages versus un-educated macrophages, where the phenotype includes surface marker expression of a number of proteins, and qPCR data for cytokine and growth factor expression (specification, pages 11-12, Tables 1 and 3, and Figure 1D and 1E). Table I clearly shows that the expression of a variety of cell surface markers, cytokines, and growth factor are markedly different between un-educated macrophages, macrophages educated with mesenchymal stem cells, and macrophages educated with bone marrow mesenchymal stem cell derived exosomes (MEM vs BM-EEM). In particular, BM-EEM were observed to exhibit a unique combination of levels of expression of CD163, CD206, CD16, PD-L1, PD-L2, TGF-b, TNF-a, IL-6, IL-10, FGF-2, IL-1b, VEGF-A, VEGF-C, and Serpine-1 compared to un-educated macrophages or mesenchymal stem cell educated macrophages (MEMs). Furthermore, comparison of uneducated macrophages, BM-EEM and tendon-EEM showed significant differences between the tendon-EMM and both BM-EEM and uneducated macrophages, see Figure 1D and 1E and Table 3. Tendon-EEM exhibited significantly reduced levels of Eotaxin, TGF-alpha, INF-a2, and IL-13 compared to both uneducated macrophages and BM-EEM, and further exhibited less expression of CD163, CD206, PD-L1, PD-L2, CD16, HLA-DR, IL-7, IL-8, and VEGF than BM-EEM. The specification states that the profile of the proteins expressed by the tendon-EEM resembles that of the uneducated macrophages and shows expression of both M1 and M2 markers, whereas as the expression profile of the BM-EEM was substantially different than the uneducated macrophages and from the tendon-EEM. It is also noted that specification states that a number of the cytokines with less expression in the tendon-EEM are anti-inflammatory and associated with tendon repair. Thus, the data presented in the specification shows that while BM-EEM exhibit an expression profile of proteins and cytokines which have anti-inflammatory properties and contribute to tendon repair, tendon-EEM do not. Furthermore, while the working examples continued to test the BM-EEM in vivo, the in vivo working examples do not test the effects of tendon-EEM on any orthopedic injury. Regarding the in vivo tests reported in the specification, the working examples state that mesenchymal stem cells, uneducated CD14+ macrophages, and BM-EEM were each administered directly to a mechanically injured tendon in mice and report that whereas the mesenchymal stem cells and uneducated macrophages did not affect the mechanical properties of the injured tendons, the administration of BM-EEM significantly increased Young’s modulus and maximum stress of the tendon. While the tendon-EEM were not tested, the similarity in expression profile of the tendon-EEM and uneducated macrophages suggest that tendon-EEM, like the uneducated macrophages, would not have exhibited a therapeutic effect on the mechanical properties of injured tendons. Finally, it is noted there is no evidence of record that other sources of tendon derived exosomes, i.e. exosomes from other types of cells present in tendon such as tenocytes, tenoblasts, chondrocytes, vascular cells, or synovial cells, would elicit the same phenotypic and functional properties in CD14+ macrophages as the bone marrow mesenchymal stem cell derived exosomes obtained and tested by applicants.
Turning to the state of the art at the time of filing, it is noted that the prior art does not teach the production of macrophages “educated” by co-culture with exosomes derived from tendon-mesenchymal stem cells. The prior art does teach the use of specific macrophages educated with products obtained from the blood or from bone marrow or peripheral blood mesenchymal stem cells. Woodell-May et al., for example, teaches that M2 phenotype macrophages educated with a blood derived protein solution can be administered to treat inflammation associated with tendonitis, or can be administered to the site of inflammation during surgical ACL repair, MCL repair, BTB repair, patella repair, or cartilage repair (U.S. Patent Application Publication 2015/0147300 (May 28, 2015), hereafter referred to as Woodell-May et al., paragraph 171). Hematti et al. teaches mesenchymal educated macrophages (MEMs) obtained by isolating mesenchymal stem cells from bone marrow or peripheral blood, obtaining exosomes from conditioned cultured media of mesenchymal stem cells, obtaining CD14+ monocytes from bone marrow or peripheral blood of a subject previously treated with a mobilizing agent such as G-CSF or GM-CSF, and culturing the CD14+ monocytes with the mesenchymal stem cell derived exosomes to generate MEMs (Hematti et al., paragraphs 32-36). Hematti et al. further teaches that the MEMs express high levels of CD206, PD-L1/2, IL-6, TGF-beta, and low levels of TNF-alpha similar to that observed in applicant’s BM-EEM (U.S. Patent Application Publication 2016/0082042 (March 24, 2016), hereafter referred to as Hematti et al., paragraphs 32-33, 74, and 87). However, applicant’s own data demonstrates that macrophages educated with tendon derived mesenchymal stem cell exosomes have substantially different expression protein profiles and express substantially less amounts of anti-inflammatory cytokines and other proteins which promote tendon repair than macrophages educated with bone marrow derived mesenchymal stem cell exosomes. The closest prior art related to tendon derived stem cells teaches that at the time of filing, teaches that marker based identification of tendon derived stem cells was still considered a work in progress. Lui et al. teaches that tendon derived stem cells appear to express common mesenchymal stem cell markers, certain embryonic stem cell markers, and some fibroblast markers, and that marker expression can change based on the culture conditions of the cells, whether the tendon is injured or healthy, and on the age of the donor (Lui et al. (2015) Stem Cell Res. & Ther. Vol. 6:106, doi:10.1186/s13287-015-0097-y, pages 1-9, see pages 2-5). Lui et al. warns that researchers should be aware of the influence of cell source, procedures of cell isolation and cell culture on marker expression and hence the functions of the tendon derived stem cells (Lui et al., page 7). Lui et al. does not teach to isolate exosomes from the tendon derived stem cells or to educate macrophages with the exosomes for any therapeutic purpose. Liu et al., in a review of the state of the art of using stem cells for treating tendon injuries, teaches that while bone marrow derived stem cells and adipose derived stem cells have each been shown in certain clinical trials to have a positive effect on tendon healing, many challenges to the use of stem cells for tendon repair still remain to be addressed (Liu et al. (2017) J. Orthoped. Transl., Vol. 9, 69-75, see page 72). In particular, Liu et al. teaches that future challenges included answering the following questions: (1) which sources of stem cells are most promising or bear the best potential to be used? (2) Are there subpopulations of cells among the heterogonous population of MSCs that may bring a more favorable outcome? (3) What type of injuries or diseases require the implantation of stem cells? And (4) Can biologics such as stem cell-derived exosomes replicate the therapeutic effect of stem cells in tendon injury and/or disease, and to which extent? Thus, the state of the prior art at the time of filing demonstrates the underdeveloped and unpredictable state of the prior art in using tendon-mesenchymal stem cell derived exosomes to educate macrophages which are useful for treating a tendon injury, or any other type of orthopedic injury.
Therefore, in view of the undeveloped and unpredictable state of the prior art at the time of filing for using tendon exosome educated macrophages to treat any orthopedic injury in a patient, the differences disclosed in the specification regarding the effects of exosomes derived from different tissue sources on macrophage phenotype, and in particular the substantial differences between macrophages educated with bone marrow derived mesenchymal stem cell exosomes vs. tendon derived mesenchymal stem cell exosomes, the lack of working examples involving the use of tendon-EMM in vivo for treating any tendon injury or other orthopedic injury, and the breadth of the claims, it would have required undue experimentation to practice the methods of treating an orthopedic injury as claimed.
Additional Comments
It is noted that double patenting is not applicable between the claims issued in U.S. Patent 11,738,046 and the instant claims under examination as the claims in U.S. Patent 11,738,046 are drawn to bone marrow exosome educated macrophage not tendon exosome educated macrophages as claimed in the instant claims.
No claims are allowed.
Any inquiry concerning this communication from the examiner should be directed to Anne Marie S. Wehbé, Ph.D., whose telephone number is (571) 272-0737. If the examiner is not available, the examiner’s supervisor, Maria Leavitt, can be reached at (571) 272-1085. For all official communications, the technology center fax number is (571) 273-8300. Please note that all official communications and responses sent by fax must be directed to the technology center fax number. For informal, non-official communications only, the examiner’s direct fax number is (571) 273-0737. For any inquiry of a general nature, please call (571) 272-0547.
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Dr. A.M.S. Wehbé
/ANNE MARIE S WEHBE/Primary Examiner, Art Unit 1634
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