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
Claims 1-10, 12-13 and 17-24 are pending.
Claims 1-3 and 19-20 are withdrawn as being drawn to nonelected Group I, there being no allowable generic or linking claim.
Claims 1, 4, 7 and 10 are newly amended.
Claims 11, and 14-16 are cancelled.
Claims 21-24 are newly added.
Claims 4-10, 12-13, 17-18, and 21-24 read on the elected invention and are examined herein.
Withdrawn Objections & Rejections
Applicant's response filed August 21, 2025 has been considered. Rejections and/or objections not reiterated from the previous office action mailed March 21, 2025 are hereby withdrawn.
The objections and rejections presented herein represent the full set of objections and rejections currently pending in the application.
Claim Objections
Claim 24 is objected to because of the following informalities: The claim ends with a double period “..” which is grammatically incorrect. If the claim were amended to conclude with a single period “.”, it would overcome this objection.
This is a NEW objection as necessitated by the amendments to the claims filed 08/21/2025.
Appropriate correction is required.
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.
Claims 4-10, 12-13, 17-18 and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Forman (US 11,649,449 B2, cited in IDS 03/08/2024) in view of das Neves (PLOS (2010) 8:12;1-11), Shimizu et al (Antioxidants and Redox Signaling(2009), and Tarafdar et al (Bioresource Technology(2021)326;1-12).
This is a NEW rejection as necessitated by the claim amendments filed 08/21/2025.
Regarding claim 4-5: Forman teach improved cell lines for manufacture of protein-based pharmaceutical agents (a target protein) by generating a producer cell line selected from a starter population of mixed cells and selecting for one or more characteristic that supports protein production. (abstract).
Forman disclose providing a starter population of cultured cells and forming a population of cell hybrids, each comprising two or more cells (Claim 1(a) and (b)). Forman also teach single cell lines (such as CHO cells) are sufficient use as a starter population of cultured cells (p5 col 1 para 3 ln 1-8).
Forman disclose an aspect of the invention is to obtain a cell line adapted for high-level production of proteins, therefore sorting on how much protein is expressed and selecting clones with high protein production capacity per cell (p3 col2 ln 34-36). Forman teach the fusion protein is a marker protein that contains a peptide that generates an optical signal (such as GFP or luciferase) (p3 col1 para 2 ln 13-19).
Forman also teach selecting cell hybrids that have a higher (faster) growth rate (claim 15).
Forman does not teach testing or selecting the cell hybrids for content of mitochondria per cell.
das Neves teach there is marked cell-to-cell variability in the average cellular rates of transcription and in the amount of cellular mitochondrial mass (Abstract). das Neves teach isolating Hela cells according to the mitochondrial content (Fig 3 a). das Neves further teach daughter cells with higher mitochondrial mass (that inherit more mitochondrial mass) have a faster rate of protein synthesis (p7 col2 para2).
It would have been obvious to one of ordinary skill in the art to adapt the methods of Forman drawn to isolating cell hybrids for enhanced protein synthesis by doing selecting cells for higher mitochondria content as taught by das Neves.
das Neves discloses sister cells with higher mitochondrial content have a faster rate of protein synthesis. Accordingly, one of ordinary skill in the art would have been motivated to isolate cell hybrids for efficient protein production as taught by Forman by selecting cell hybrids with a higher content of mitochondria per cell, as taught by das Neves, to for the purposes of selecting a cell hybrid population that has a faster rate of protein synthesis and thus is more efficient at protein synthesis.
One would have had a reasonable expectation of success because both inventions are drawn to isolating specific cell populations and das Neves teach standard cell sorting methods can isolate cells with high mitochondrial content (p9 col1 para2).
Regarding claim 6: The teachings of Forman are discussed supra. Forman do not teach selecting cell hybrids that have a higher content of ROS per cell.
Shimizu teach protein folding in the ER generates a single ROS for each disulfide bond that is formed (abstract). Shimizu further teach for many cells approximately 1/3 of the total proteins produced are synthesized in the ER, and the percentage can be higher in specialized secretory cells (p1 col1 para1). Shimizu disclose that in the average cell ~25% of cellular ROS production during protein synthesis is generated by ER mediated protein folding, and that cellular ROS production is likely even higher in secretory cells (p8 col2 para3).
It would have been obvious to one of ordinary skill in the art to adapt the methods of Forman, drawn to selecting cell hybrids for increased protein production, to select cell hybrids based on high ROS as taught by Shimizu. Shimizu discloses that protein folding in the endoplasmic reticulum generates ROS. Thus, one of ordinary skill in the art would understand that cells that are highly active for protein synthesis would also exhibit increased ROS compared to cells that were less active for protein synthesis.
Accordingly, one of ordinary skill in the art would have been motivated to select cells hybrids for increased protein production, as taught by Forman, and select cell hybrids based on high ROS as taught by Shimizu, to for the purposes of enriching for cell hybrids that are highly active for protein production.
One would have had a reasonable expectation of success because one of ordinary skill in the art would understand that efficient protein synthesis requires the activity of the endoplasmic reticulum for correct protein folding of secreted proteins.
Regarding claim 7: The teachings of Forman are discussed supra. Forman also teach a gene encoding the protein of interest is typically transfected into the cells before, after, or during one or more cycles of selection (p3 col2 ln 25-33), thus cells can be genetically altered after the step (b) forming the cell hybrids.
Furthermore, MPEP reads “[w]ith respect to the order of steps, it is noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Therefore, the claimed order of steps is an obvious variant of the steps of the cited prior art.
Regarding claim 8: The teachings of Forman are discussed supra. Forman also disclose selecting and recovering cell hybrids from the population that have a relatively high density of endoplasmic reticulum and/or Golgi apparatus per cell and obtaining a producer cell line (claim 1(c) and (d)).
Regarding claims 9 and 10: The teachings of Forman are discussed supra. Forman also teach expressing a fusion protein in the cell hybrids and sorting the cells according to how much protein is expressed (claim 10).
Forman teach a gene encoding the protein of interest is typically transfected into the cells before, after, or during one or more cycles of selection (p3 col2 ln 25-33), thus cells can be genetically altered after the step before or after step (c), testing the cell hybrids.
Furthermore, MPEP reads “[w]ith respect to the order of steps, it is noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Therefore, the claimed order of steps is an obvious variant of the steps of the cited prior art.
Regarding claim 12: The teachings of Forman are discussed supra. Forman also teach for selection for faster growth (p7 col9 ln 40-45, claim 15).
Regarding claims 13 and 21: The teachings of Forman are discussed supra. Forman also teach the cultured cells are the cell line HEK 293 (claim 3).
Regarding claim 17 and 18: The teachings of Forman are discussed supra. Forman also teach the producer cell line may express a naturally occurring component of blood, a therapeutic enzyme or a gene product for commercial use or sale (p4 col4 ln 5-8; p3 col2 ln 50-55).
Forman do not teach the target protein is a food ingredient or industrial enzyme.
Tarafdar teach industrial enzymes can be obtained from plants, animals and microorganisms (p1 col1 para1). Tarafdar also teach enzymes are vital biocatalysts for many industrial processes and have applications in food, feed and technical fields (p2 col2 para3). Tarafdar also teach the market for industrial enzymes has witnessed constant growth (p2 col1 para4).
It would have been obvious to one of ordinary skill in the art to adapt the methods of Forman drawn to selecting cell hybrids for high protein production by selecting cell hybrids for a high protein production of an industrial enzyme, as taught by Tarafdar. Tarafdar disclose industrial enzymes can be obtained from animals and that the market for industrial enzymes is growing.
Accordingly, one of ordinary skill in the art would have been motivated to select cell hybrids that produce high amounts of protein as taught by Forman to for the purposes of generating an industrial enzyme, as taught by Tarafdar, for financial gain. One would have had a reasonable expectation of success because expression of industrial enzymes is well known in the art.
Regarding claim 22: The teachings of Forman are discussed supra. Forman also teach the expression of the target protein (secreted alkaline phosphatase) shows over 4-fold improvement (p8 col12 ln1-5).
Regarding claim 23: The teachings of Forman are discussed supra.
Forman also teach cells having an average level of expression that is at least 1.5, 2, 3, or 5-fold higher than the parental line can be selected ().
While the reference doesn't specifically disclose the cells produce a 10-fold increase in protein compared to the parental line, the change in protein production of the selected cell population compared to the parent cell population, however, would have been a matter of routine optimization based on the protein that is expressed and protein production methods taught in the art.
Furthermore, MPEP 2144.05 reads “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) ”.
Regarding claim 24: The teachings of Forman are discussed supra. Forman also teach depending on the chosen protein, cell lines may be obtained that produce eight grams of protein per liter (equivalent to 8000 mg/liter) or more of culture fluid (col2 ln30-35). This reads on at least 500mg/liter of the target protein (equivalent to 0.5 g/L) of the instant claim 24.
Response to Arguments under 35 USC § 103
Regarding claim 4: Applicant argues the claim requires “cell hybrids that have a higher content of mitochondria per cell and/or a higher content of reactive oxygen species (ROS) per cell compared with other cells” and that the Forman do not teach a higher content of mitochondria per cell and/or a higher content of reactive oxygen species per cell.
Applicant further argues that mitochondria content per cell, ROS, and mitochondrial membrane potential are independent variables and refer to Chakrabarti (ref 21) to support this conclusion. Applicant further argues that Chakrabarti teach away from sorting for either mitochondria content per cell or ROS.
Applicant further argues that one of ordinary skill in the art would not be motivated to combine the teachings of Forman and Chakrabarti.
Applicant’s arguments that the teachings of Chakrabarti do not provide motivation to sort cells based on mitochondrial content or ROS levels are considered moot in view of the claim amendments. Chakrabarti is no longer relied upon. See new claim rejection above.
Response to Arguments under 35 USC § 112
The rejection under 35 USC § 112 is withdrawn in view of the claim amendments filed August 21, 2025.
Request for Rejoinder
Applicant requests a rejoinder of the claims that have been withdrawn based on the assertation that the prior art does not teach or suggest the following combination of features: cell hybrids, high mitochondria content and/or high levels of ROS, producer cells that produce substantially more protein per cell that the starting cell population.
This argument is found unpersuasive based on the teachings of Forman (US 11,649,449 B2, cited in IDS 03/08/2024) in view of das Neves (PLOS (2010) 8:12;1-11), Shimizu et al (Antioxidants and Redox Signaling(2009), and Tarafdar et al (Bioresource Technology(2021)326;1-12), as discussed supra in the new rejection under USC § 103.
Interview request
Applicant requests an interview should any further matters arise. Applicant is invited to schedule an interview via the contact information disclosed below in the concluding paragraphs.
Conclusion
No claims are 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 ANDREA LYNNE MORRIS SPENCER whose telephone number is (571)272-3328. The examiner can normally be reached Monday-Friday 9:00-5:00.
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/ANDREA LYNNE MORRIS SPENCER/Examiner, Art Unit 1631
/JAMES D SCHULTZ/Supervisory Patent Examiner, Art Unit 1631