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 .
Election/Restrictions
Applicant's response to restriction requirement without traverse of invention group 1, drawn to a method of culturing nucleus pulposus cells, claims 1- 9, on the responsive filed on 06/12/2026 is acknowledged.
Further, the applicant elected species B, NP-chondrogenic gene in claim 1. Applicants identification of claims 1 and 3 as expressly encompassing the elected species and claims 7-9 as being readable on the elected species, on the responsive filed on 06/12/2026 is acknowledged.
However, upon further consideration, the species election requirement in claim1 was withdrawn.
Claim 10 was withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/12/2026.
Claim Status
Claims 1-10 are pending.
Claims 1-9 are under examination.
Claim objections
The acronyms NP, AF, are not defined, therefore the claims 1-6 are objected.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Fernandes, Lorenzo M. et al., Scientific reports 10.1 (2020): 15263., and in view of Segeritz, Charis-P. et al., Basic science methods for clinical researchers. Academic Press, 2017. 151-172, and Naing, M. et al., Processes 2.1 (2013): 1-11.
Regarding claim 1, Fernandes teaches a method for in vitro culturing and expanding nucleus pulpous cells (NP) derived from human intervertebral discs (IVD) (Methods, tissue acquisition and primary cell culture experiments, page 12) for a single cell transcriptomic analysis.
Regarding claim1a, Fernandes teaches acquisition of human IVD tissue (Methods, tissue acquisition and primary cell culture experiments, page 12) .
Regarding claim1b, Fernandes teaches treating IVD tissue with proteases and collagenases, followed by filtering the cell suspension through 70 micron cell strainer (Methods, tissue acquisition and primary cell culture experiments, page 12).
Regarding claim 1c, Fernandes teaches culturing of enzyme treated and filtered cells for expansion (Methods, tissue acquisition and primary cell culture experiments, page 12).
Regarding claim 1e, Fernandes teaches screening nucleus pulposus cells based on the expression of genes that are considered markers for NP and annulus fibrosus (AF) cells (Methods, tissue acquisition and primary cell culture experiments, page 12) i.e., NP-specific genes and, AF -specific genes.
Fernandes doesn’t teach: (b) centrifugation step after the enzymatic hydrolysis of the NP tissue, (d) subculturing the said primary NP cells that have reached a predetermined cell density, (f) scale-up culture.
However, before the effective filling date of the claimed invention, centrifugation of cells at various culture steps, subculturing and scale-up culture techniques were well known in the art.
Segeritz teaches centrifugation of cells that are in suspension in order to pellet the cells for routine cell culture procedures and subculturing of cells (pages 162 and 164), and further explains well-defined culture systems allows for high reproducibility and consistency that cannot be warranted when studying whole organ systems (introduction, page 152) .
Segeritz does not teach scale-up culture for NP cells.
Naing teaches the cell culture scale up process in a bioreactor that can be used to culture NP cells (validation of the bioreactor, 3.1 cells, page 5, abstract, page 1).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to combine the above mentioned teachings of Fernandes, Segeritz and Naing to culture and expand NP cells derived from IVD tissue. One of ordinary skill in the art would have been motivated to combine the teachings of Fernandes, Segeritz and Naing to modify the primary NP culture and screening procedure taught by Fernandes with the routine cell culture procedures taught with Segeritz and bioreactor based scale-up method taught by Naing, to streamline the invitro culture and expansion method. There would be a reasonable expectation of success to combine the teachings of Fernandes, Segeritz and Naing to streamline the aforementioned culture method, because these culture techniques are routine and well known in the art, and also may warrant high reproducibility as taught by Segeritz
Hence, the claimed invention as a whole was prima facie obvious.
Regarding claim 2, Fernandes teaches the upregulation of KDM4E which is a gene expressing a transcription factor that targets signature genes specific to NP cells (fig 6, page 10).
Regarding claim 5, Fernandes teaches the significant higher upregulation of SAA1 in NP cells that may contribute to maintenance and non-degenerated phenotype of the NP cells (DEG analysis reveals differential gene expression between NP and AF cells, page 2, table2, page 5).
Regarding claim 7, Fernandes teaches hydrolyzing NP tissue with the enzyme collagenase (Methods, tissue acquisition and primary cell culture experiments, page 12).
Regarding claim 9, the expression level of NP and AF specific genes were determined by qPCR (fig. 6e, 6f).
Regarding claim 8, Segeritz teaches that subculturing is done when the cell density is reached to about 80% (pages 162).
Hence, the claimed invention as a whole was prima facie obvious.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fernandes et al., Segeritz, et al., and Naing, et al., as applied to claims 1,2,5,7,8, and 9 above, and further in view of Tam, et al., Global Spine Journal 6.1_suppl (2016): s-0036.
Regarding claim 3 Fernandes teaches significantly high relative expression of COL2A1 gene in NP cells, a NP marker (fig 1b, page 3), also teaches that NP identity can be confirmed by evaluating the expression of genes that are considered NP markers (methods, page 12).
Teachings of Fernandes, Segeritz and Naing are as relied above.
Fernandes, Segeritz and Naing do not teach the upregulation of SOX9 and AGC1.
However, before the effective filling date of the claimed invention, enrichment of SOX9, COL2A1 and AGC1 in NP cells were known in the art.
Tam teaches the enrichment of the genes COL2A1, AGC1 and SOX9 in NP cells wherein COL2A1, AGC1 are extracellular matrix genes in NP cells, that comprise the gelatinous tissue core of the IVD, and SOX9 is the major chondrogenic transcription factor for COL2A1, AGC1 activation. (introduction, page 1).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to combine the above mentioned teachings of Fernandes, Segeritz and Naing with Tam to culture and accurately screen for NP markers in NP cells derived from IVD tissue . One of ordinary skill in the art would have been motivated to combine the teachings of Fernandes, Segeritz, Naing and Tam to culture the cells derived from IVD tissue and screen for the enrichment of COL2A1, AGC1 and SOX9 genes to identify NP cells as taught in Fernandes. There would be a reasonable expectation of success to combine the teachings of Fernandes, Segeritz, Naing and Tam, because Tam teaches significant enrichment of COL2A1, AGC1 and SOX9 in NP cells which can be used to confirm the identity of NP cells, as taught by Fernandes.
Hence, the claimed invention as a whole was prima facie obvious.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fernandes, et al., Segeritz, et al., and Naing, et al., as applied to claims 1,2,5,7,8, and 9 above, and further in view of Thorpe, et al., Oncotarget 7.3 (2015): 2189.
Teachings of Fernandes, Segeritz and Naing are as relied above
Fernandes, Segeritz and Naing do not teach the expression of PAX1
However, before the effective filling date of the claimed invention, NP cell specific expression of PAX1 was known in the art.
Regarding claim 4, Thorpe teaches high expression of PAX1 mRNA and protein in NP cells (abstract, page 2189). Alsoteachesthat the expression of PAX1 should be considered when defining NP phenotype (discussion, page 2196).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to combine the above mentioned teachings of Fernandes, Segeritz and Naing with Thorpe to culture and accurately screen for NP cells derived from IVD tissue . One of ordinary skill in the art would have been motivated to combine the teachings of Fernandes, Segeritz, Naing and Thorpe to culture the cells derived from IVD tissue and screen for high expression of PAX1 to accurately identify NP cells. There would be a reasonable expectation of success to combine the teachings of Fernandes, Segeritz, Naing and Thorpe, because Thorpe teaches that the expression of PAX1 should be considered when defining NP phenotype.
Hence, the claimed invention as a whole was prima facie obvious.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Fernandes,. et al., Segeritz,. et al., and Naing, et al., as applied to claims 1,2,5,7,8, and 9 above, and further in view of Tang, et al., PloS one 7.12 (2012): e52020.
Teachings of Fernandes, Segeritz and Naing are as relied above.
Fernandes, Segeritz and Naing do not teach the AF-specific gene CD90.
However, before the effective filling date of the claimed invention, AF- specific expression of CD90 was known in the art.
Regarding claim 6, Tang teaches AF-specific expression of CD90 (abstract, page 1), and can serve as a non-NP phenotype of disc cells (page 7, pargapraph1).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to combine the above mentioned teachings of Fernandes, Segeritz and Naing with Tang to culture IVD tissue and accurately screen for AF cells. One of ordinary skill in the art would have been motivated to combine the teachings of Fernandes, Segeritz, Naing and Tang to culture the cells derived from IVD tissue and identify AF cells with high expression of CD90. There would be a reasonable expectation of success to combine the teachings of Fernandes, Segeritz, Naing and Tang, because Tang teaches AF-specific expression of CD90 which is identified as a non-NP marker.
Hence, the claimed invention as a whole was prima facie obvious.
Conclusion
No claim is allowed.
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/HASHANTHI KOMITIGE ABEYRATNE-PERERA/Examiner, Art Unit 1632
/PETER PARAS JR/Supervisory Patent Examiner, Art Unit 1632
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