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 .
Claim Status
Claims 1 – 3, 6 – 8, 11, 15 – 16, 22, 24, 26, 33, 35, 37 – 38, 40, 43, 45 – 46, 48, 50 – 52, 56, 59, 60 and 70 – 71 are pending.
Claims 45 – 46 and 60 are canceled.
Response to Arguments
Applicant’s arguments, see p. 7 of the Remarks, filed May 6, 2026, with respect to the objection of claim 22 have been fully considered and are persuasive. The objection of claim 22 has been withdrawn.
Applicant’s arguments, see p. 7 of the Remarks, filed May 6, 2026, with respect to the 112(b) rejection of claims 16, 22 and 43 have been fully considered and are persuasive. The rejections of claims 16, 22 and 43 have been withdrawn.
Applicant’s arguments, see p. 8 of the Remarks, filed May 6, 2026, with respect to the 102 – Anticipation rejection of claims 1 – 3, 6 – 8, 11, 15 – 16, 22, 24, 26, 33, 35, 37 – 38, 40, 43, 45 – 46, 48, 51 – 52, 56 and 59 have been fully considered and are persuasive. The rejection of claims 1 – 3, 6 – 8, 11, 15 – 16, 22, 24, 26, 33, 35, 37 – 38, 40, 43, 45 – 46, 48, 51 – 52, 56 and 59 has been withdrawn.
Claim 60 was rejected under 35 U.S.C. 101 – Ineligible Subject Matter and has been canceled, see p. 8 of the Remarks, filed May 6, 2026.
Claims 26 and 50 were rejected under 35 U.S.C. 103. The rejection of each claim has been maintained and modified to include Amadei, which teaches culturing for 5 days.
Claim Rejections - 35 USC § 103
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 1 – 3, 6 – 8, 11, 15 – 16, 22, 24, 33, 35, 37 – 38, 40, 43, 48, 50 – 52, 56, 59 and 70 – 71 are rejected under 35 U.S.C. 103 as being unpatentable over Tarazi et al. (Post-gastrulation synthetic embryos generated ex utero from mouse naive ESCs, Cell. 2022;185(18):3290-3306.e25., cited on IDS) in view of Amadei et al. (Embryo model completes gastrulation to neurulation and organogenesis. Nature 610, 143–153 (2022); cited on IDS, hereinafter Amadei).
Regarding claim 1, Tarazi teaches a method of generating a synthetic embryo in vitro, the method comprising: (a) co-culturing a wild-type mammalian embryonic stem cell (ESC), a mammalian ESC overexpressing CDX2 transcription factor, and a mammalian ESC overexpressing GATA transcription factor under a condition allowing the ESCs to self-assemble into a gastrulating embryo structure (Abstract); and (b) culturing the gastrulating embryo structure in a post-implantation culture medium under a condition allowing the gastrulating embryo structure to develop into a synthetic embryo (Figure 2, “Naïve ESC derived sEmbryos complete gastrulation..” ,p. 3293).
Tarazi teaches all of the elements of the current invention as stated above except the length of time (at least 5 days) for the culture to stay under a static condition. However, Amadei discloses an embryo model that completes gastrulation to neurulation and organogenesis within a seven day static culture (Fig. 1A) and a subsequent dynamic condition in post-implantation culture medium (Methods Sect., 1st page, Formation of ETiX…). Amadei further discloses that the motivation for the length of time (p.145, 1st full para.) depends on ETiX embryoid developmental efficiency and further notes that on static culture day 7, the embryo takes on a morphology that resembles the early headfold stage of an E8.0 natural embryo.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the static and dynamic culture conditions of Amadei in the protocol of Tarazi for generating embryos. Doing so would improve embryo developmental efficiency, according to Amadei.
Regarding claim 2, Tarazi teaches the method of claim 1, the GATA transcription factor is GATA4 (Methods – “Generation of iGATA4…” , p. 3306.e6).
Regarding claim 3, Tarazi teaches the method of claim 1, further comprising: generating the mammalian ESC overexpressing GATA transcription factor and the mammalian ESC overexpressing CDX2 transcription factor by contacting a mammalian ESC carrying an inducible Gata gene and a mammalian ESC carrying an inducible Cdx2 gene with an inducer (Generation of iGATA4…”, p. 3306.e6).
Regarding claim 6, Tarazi teaches the method of claim 1, wherein the ESCs are co-cultured for up to 6 days (Figure 2A).
Regarding claim 7, Tarazi teaches the method of claim 1, wherein the gastrulating embryo structure resembles an E6.0-E7.5 natural embryo structure, optionally an E6.0-E6.5, E6.5-E7.0, or E7.0-E7.5 natural embryo structure (Figure 2A).
Regarding claim 8, Tarazi teaches the method of claim 1, wherein the ESCs are cultured in a substrate, optionally wherein the substrate comprises a dish, a U-plate, a flask or a microwell plate (Methods – “Naïve ESC-derived…” p. 3306.e7, 1st para.).
Regarding claim 11, Tarazi teaches the method of claim 1, wherein step (a) comprises culturing the ESCs in a feeder cell (FC) media for about 3 days, and wherein step (a) further comprises culturing the ESCs in an in vitro culture (IVC) media for about 2 days (Results – “sEmbryos self-assembled from naïve…”, p. 3295, 2nd para.) Tarazi’s Aggregation Media (AM) is the equivalent to the instant application’s FC media based on claim 22.
Regarding claim 15, Tarazi teaches the method of claim 11, wherein the FC media and the IVC media comprise a basal culture medium (“Naïve ESC-derived…”, p.3306.e8, 3rd para).
Regarding claim 16, Tarazi teaches The method of claim 15, wherein the basal culture medium comprises (“Naïve ESC-derived…”, p. 3306.e8, 3rd para):
Dulbecco's Modified Eagle Media (DMEM), DMEM Nutrient Mixture 12 (DMEM/F12)
A non-human serum or serum substitute thereof (FBS)
A reducing agent (N-acetyl-L-cysteine)
An antibiotic (Penicillin-streptomycin)
L-glutamine or an analogue thereof (GlutaMAX)
Regarding claim 22, Tarazi teaches the method of claim 11, wherein the FC (AM) media comprises (“Naïve ESC-derived…”, p. 3306.e7, 1st para.):
DMEM
Fetal bovine serum
Sodium pyruvate
GlutaMAX
MEM non-essential amino acids (Sartorius 01-340-1B)
Beta-mercaptoethanol,
IVC media (“Naïve ESC-derived…”, p. 3306.e8, 3rd para.)
ITS-X
Estradiol
N-acetyl-L-cysteine
Progesterone
Penicillin streptomycin
Regarding claim 24, Tarazi teaches the method of claim 11, wherein the FC (AM) media further comprises (“Naïve ESC derived…”, p. 3306.e7, 1st para.):
Heparin
A fibroblast growth factor (FGF4)
ROCK inhibitor (ROCKi Y27632)
Regarding claim 33, Tarazi teaches the method of claim 1, wherein co-culturing the ESCs comprises increasing serum concentrations, optionally increasing the serum concentration from about 20% to about 30%, optionally when the ESCs are co-cultured in the IVC media (“Naïve ESC-derived…” p. 3306.e7, 1st para. (20%) and p. 3306.e8, 3rd para. (30%)).
Regarding claim 35, Tarazi teaches the method of claim 1, wherein step (a) is performed under a static condition and/or wherein step (b) is for a duration of at least 3 days
(Figure S3A).
Regarding claim 37, Tarazi teaches the method of claim 1, wherein the post-implantation culture media is capable of supporting the development of embryo ex utero (“Naïve ESC-derived…”, p. 3306.e8, 5th para.).
Regarding claim 38, Tarazi teaches the method of claim 1, wherein the post-implantation culture media comprises (“Naïve ESC-derived...”, p. 3306.e8, 5th para.):
DMEM
Non-human serum (FBS and Rat)
Human cord serum
L- glutamine or an analogue thereof (GlutaMAX)
Penicillin streptomycin
Regarding claim 40, Tarazi teaches the method of claim 38, wherein the post-implantation culture medium comprises bicarbonate HEPES (“Naïve ESC-derived…”, p. e8, 5th para.).
Regarding claim 43, Tarazi teaches the method of claim 1, wherein the post-implantation culture medium comprises (“Naïve ESC-derived…”, p. 3306.e8, 5th para.):
DMEM,
Rat serum,
Human cord serum,
GlutaMax,
Penicillin and/or streptomycin,
HEPES
Regarding claim 48, Tarazi teaches the method of claim 45, wherein the dynamic condition comprises suspension agitation, optionally rotation and wherein culturing the gastrulating embryo structure under the dynamic condition is performed in a rotating bottle culture chamber (Figure 2C).
Regarding claim 50, Amadei does teach using 3 synthetic embryoids in about 2 ml post-implantation medium per rotating bottle (Methods Sect. 1st page, Formation of ETiX…).
Regarding claim 51, Tarazi teaches the method of claim 1, wherein step (b) comprises supplying the post-implantation culture medium with glucose. (“Naïve ESC-derived…” p. 3306.e8, 5th para.).
Regarding claim 52, Tarazi teaches the method of claim 1, wherein the synthetic embryo structure (1) resembles an E8.0-E8.5 natural embryo structure; (2) is a neutralizing embryo structure; (3) has established headfolds, a beating heart, allantois, chorion structure, and/or yolk sac; and/or (4) has developed amnion-like and yolk-sac-like membranes (Figure 5B and F, p. 3299).
Regarding claim 56, Tarazi teaches the method of claim 1, wherein (1) the method does not comprise any in vivo step; (2) none of the wild-type ESC, the ESC overexpressing CDX2 transcription factor and the ESC overexpressing GATA transcription factor is present in an in vivo environment during step (a) or step (b); and optionally wherein the in vivo environment comprises a tissue, an organ, an organism, or a combination thereof; and/or (3) the method does not comprise culturing an extra-embryonic stem cell, optionally, the extra-embryonic stem cell comprises an extra-embryonic trophoblast stem cell and/or an extra-embryonic endoderm stem cell (Discussion, p. 3302, 2nd and 3rd para.).
Regarding claim 59, Tarazi teaches the method of any one of claim 1, wherein the synthetic embryo is a mouse embryo (Abstract).
Regarding claims 70 – 71, Amadei discloses culturing the gastrulating embryo at a gas pressure of 0.5 psi (Methods Sect. 2nd page, Formation of ETiX…) and the method of claim 1, wherein step (a) comprises culturing the ESCs in a feeder cell media for about 3 days, followed by in an in vitro culture media for about 2 days (Methods Sect. 1st page, Formation of ETiX…).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Tarazi and Amadei as applied to 1 – 3, 6 – 8, 11, 15 – 16, 22, 24, 33, 35, 37 – 38, 40, 43, 48, 50 – 52, 56, 59 and 70 – 71 above, and further in view of Yao et al. (C.A. Patent Application Publication No. 2843373), hereinafter Yao.
Regarding claim 26, Tarazi teaches all of the elements of the current invention as stated above including the method of claim 11, wherein the IVC media comprises: estradiol and progesterone, but does not teach the use of insulin.
Yao teaches the use of insulin [para. 0034] and insulin-like growth factors (IGF) [para. 0035] for culturing embryos (Abstract).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified and optimized the combined embryo generating protocol of Tarazi and Amadei to incorporate the motivation and teachings of Yao to use insulin and/or analogues thereof for culturing embryos. Doing so would improve embryo quality and implantation potential.
Conclusion
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 WALTER JACKSON III whose telephone number is (571)272-0247. The examiner can normally be reached M-F 9:00A - 5:00P.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tracy Vivlemore can be reached at 571-272-2914. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WALTER JACKSON III/Examiner, Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
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