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 submission filed on April 10, 2026 has been entered and considered. Rejections and/or objections not reiterated from the previous action mailed January 13, 2026 are hereby withdrawn. The following rejections and/or objections are either newly applied or are reiterated and are the only rejections and/or objections presently applied to the instant application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 21, 29, and 126 have been amended to further limit Applicant’s invention. Claims 57, 74, 75, 78, and 85 have been amended to correct dependence and issues of clarity. Claims 27, 87, and 92 have been canceled. Claims 162 and 163 are newly added.
Priority
The present application is a 35 U.S.C. 371 national stage filing of the International Application No. PCT/US2022/023356, filed on April 4, 2022. The instant application claims benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) to U.S. provisional applications 63/170,405, filed on April 2, 2021 and 63/240,739, filed on September 3, 2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 19, 2026 is in compliance with the provisions of 37 CFR 1.97 based on Applicant’s timing statement and is being considered by the examiner.
The information disclosure statement (IDS) submitted on September 9, 2024 is in compliance with the provisions of 37 CFR 1.97 and was considered by the examiner.
Withdrawn Claim Objections
Claim 57 was objected to for reciting “length, width, and/or width of an approach region” in line 4. In light of Applicant’s amendment to claim 57 to recite “length, depth, and/or width…” in line 4, the objection to claim 57 has been withdrawn.
Claim 74 was objected to for a presumed misspelling of “capable”. In light of Applicant’s amendment to claim 74 to correct the typographical error, the objection to claim 74 has been withdrawn.
Withdrawn Claim Rejections - 35 USC § 112
Claims 57, 76, 78, 85, and 92 were 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.
Claim 57 was rejected for recitation of the phrase “for example”. In light of Applicant’s amendment to remove the phrase “for example” (e.g.), the rejection has been withdrawn.
Claim 76 was rejected for improperly depending from a canceled claim. In light of Applicant’s amendment to correct claim dependency to recite that claim 76 depends from claim 74, the rejection over improper claim dependency has been withdrawn.
Claims 78 and 85 were rejected over antecedent basis for reciting “a plurality of constrictions in line 2”. In light of Applicant’s amendment to recite “at least about two or more constrictions”, the rejection over antecedent basis regarding constrictions has been withdrawn.
Claim 92 was rejected over antecedent basis for recitation of “the cell suspension”. Applicant has canceled claim 92 rendering the rejection moot.
Withdrawn Claim Rejections - 35 USC § 101
Claim 126 was rejected under 35 U.S.C. 101 as being drawn to a natural product without significantly more. In light of Applicant’s amendment to recite that the instantly claimed cell comprises a reprogramming factor and a nucleic acid encoding a puromycin-N-acetyltransferase which Applicant asserts renders the cell distinct from naturally occurring cells, this rejection has been withdrawn.
Withdrawn Claim Rejections - 35 USC § 102
Claims 21-22, 27, 29, 36-37, 42, 50-51, 53, 57-58, 61, 74, 76, 78, 85, and 126 were rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Sharei et al. (US 2020/0277566 filed 03/13/2020, found in IDS, hereafter “Sharei”). In light of Applicant’s amendment to claim 21 to recite that the instantly claimed method cell comprises contacting a cell population with “one or more nucleic acids encoding a reprogramming factor and an enzyme that confers resistance to an antibiotic and collecting the cell suspension that passed through the constriction and treating the cell suspension with the antibiotic”, these rejections have been withdrawn.
Claim 126 was rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arnold et al. (2011, Sox2+ adult stem and progenitor cells are important for tissue regeneration and survival of mice. Cell Stem Cell, 9(4), 317-329). In light of Applicant’s amendment to claim 126 to recite wherein the cell further comprises a nucleic acid encoding a puromycin-N-acetyltransferase, this rejection has been withdrawn.
Withdrawn Claim Rejections - 35 USC § 103
Claims 87 and 92 were rejected under 35 U.S.C. 103 as being unpatentable over Sharei as applied to claim 21, and further in view of Chen et al. (WO 2020/180742, filed February 28, 2020, hereafter “Chen”) and Wu et al. (2021, "Microfluidic cell squeezing enables the in vitro generation of induced neurons from human pluripotent stem cells through non-viral transcription factor delivery Applying SQZ(TM) Technology to Regenerative Medicine", found in IDS). Applicant has canceled claims 87 and 92 rendering this rejection moot.
New Claim Rejections - 35 USC § 112(b)
Claim 22, which depends from claim 21, recites the limitation "the reprogramming factor" in line 2. There is insufficient antecedent basis for this limitation in the claim as claim 21 has been amended to recite that a cell population is contacted with “one or more nucleic acids encoding a reprogramming factor”. Appropriate correction is required.
Claim 29, which depends from claim 21, recites the limitation "the nucleic acid" in line 1. There is insufficient antecedent basis for this limitation in the claim as claim 21 has been amended to recite “one or more nucleic acids…”. Appropriate correction is required.
Claim 36, which depends from claim 21, recites the limitation "the reprogramming factor" in line 1. There is insufficient antecedent basis for this limitation in the claim as claim 21 has been amended to recite that a cell population is contacted with “one or more nucleic acids encoding a reprogramming factor”. Appropriate correction is required.
Claim 37, which depends from claims 21 and 36, recites the limitation "the reprogramming factor" in line 1. There is insufficient antecedent basis for this limitation in the claim as claim 21 has been amended to recite that a cell population is contacted with “one or more nucleic acids encoding a reprogramming factor”. Appropriate correction is required.
Claim 74, which depends from claim 21, recites the limitation "at least two or more reprogramming factors" in line 2. There is insufficient antecedent basis for this limitation in the claim as claim 21 has been amended to recite that a cell population is contacted with “one or more nucleic acids encoding a reprogramming factor”. Appropriate correction is required.
Claim 76, which depends from claim 21, recites the limitation "at least two or more reprogramming factors" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim as claim 21 has been amended to recite that a cell population is contacted with “one or more nucleic acids encoding a reprogramming factor”. Appropriate correction is required.
Claim 85, which depends from claims 21 and 78, recites the limitations "first reprogramming factor" in lines 2-3 and 5 and “second reprogramming factor” in lines 3-4 and 7. There is insufficient antecedent basis for this limitation in the claim as claim 21 has been amended to recite that a cell population is contacted with “one or more nucleic acids encoding a reprogramming factor”. Appropriate correction is required.
Claim 162, which depends from claim 21, recites the limitation "the reprogramming factor" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim as claim 21 has been amended to recite that a cell population is contacted with “one or more nucleic acids encoding a reprogramming factor”. Appropriate correction is required.
New Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 78 and 85 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With regard to claim 78, based on Applicant’s amendment, claim 78 recites the limitation “at least about 2 or more constrictions”. Applicant’s instant specification indicates that use of “about” extends the boundaries above and below that stated numerical value and that “in general, the term “about” can modify a numerical value above and below the stated value by a variance of, e.g., 10 percent up or down…”. Applicant’s definition of about comprises an example of 10 percent up or down, but use of “for example” implies that there are additional unmentioned examples which could be considered “about”. Additionally, as there is no way to modify a number of constrictions by 10% (that is, it is not possible have 1.8 or 2.2 constrictions), Applicant’s limitation of “at least about two or more contractions” is interpreted broadly as encompassing a single constriction which does not further limit the method as recited in claim 21. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
With regard to claim 85, based on Applicant’s amendment, claim 85 also recites the limitation “at least about 2 or more constrictions” which has been interpreted to comprise a single constriction. Claim 85 is rejected for incorporating the limitations of a rejected claim while failing to correct the deficiencies.
New Claim Rejections - 35 USC § 102
This is a new rejection necessitated by Applicant’s amendment.
Claim 126 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hockemeyer et al. (2009, Efficient targeting of expressed and silent genes in human ESCs and iPSCs using zinc-finger nucleases. Nature Biotech., 27(9), 851-857, hereafter “Hockemeyer”).
It is noted that claim 126 includes process steps relating to the introduction of the reprogramming factor, and therefore claim 126 is interpreted as product-by-process. MPEP 2113(I) states:
“Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps… “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966” and “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made…”
In the instant case, claim 126 recites wherein the reprogramming factor enters the cell through a perturbation in the cell membrane which formed due to deformation of the cell as it passes through a constriction, thereby allowing the reprogramming factor to enter the cell. Absent evidence to the contrary, it does not appear that the process by which the reprogramming factor enters the cell imparts any structural difference in the cell comprising a reprogramming factor over any other cell which comprises a reprogramming factor. Claim 126 further recites that the cell comprises a nucleic acid encoding a puromycin-N-acetyltransferase.
Hockemeyer discloses human embryonic stem cells (i.e., BG01 cells) which endogenously express OCT4, SOX2, and NANOG, which are considered to reasonably read on reprogramming factors and which further comprise a nucleic acid encoding a puromycin-N-acetyltransferase (See Fig. 1a and c, Pg. 851, right col., 1st full para).
New Claim Rejections - 35 USC § 103
This is a new rejection necessitated by Applicant’s amendment. However, this rejection shares substantial similarity to the rejection as previously set forth in the office action dated January 13, 2026. Any aspect of Applicant’s traversal that pertains to the rejection as newly set forth will be provided following the new statement of rejection.
Claims 21-22, 29, 36-37, 42, 50-51, 53, 57-58, 61, 74, 76, 78, 85, and 162 are rejected under 35 U.S.C. 103 as being unpatentable over by Sharei et al. (US 2020/0277566 filed 03/13/2020, found in IDS, hereafter “Sharei” in view of Chen et al. (WO 2020/180742, filed February 28, 2020, hereafter “Chen”) and Yukabov et al. (2010, Reprogramming of human fibroblasts to pluripotent stem cells using mRNA of four transcription factors. Biochem. and Biophys. Res. Comm., 394(1), 189-193, hereafter “Yukabov”) as evidenced by Sharei et al. (US 2014/0287509, now US Pat. 10,696,944, hereafter “US Pat. 10,696,944”).
With regard to claims 21 and 29, Sharei teaches a microfluidic system for causing perturbations in a cell membrane comprising a channel having a cell-deforming constriction (Abstract) and a method for delivering a compound into a cell comprising providing a cell suspension which can include a “payload”, passing the cell suspension/payload through a microfluidic channel having a constriction such that the constriction causes perturbations in the cell which allows the payload to pass into the cell (Para. [0020]). Additionally, Sharei teaches that the disclosed techniques comprise mechanical deformation of the cell as it passes through the constriction (Para [0006], lines 21-22; See also Figs 1A and 1B) and that the payload can comprise various compounds or compositions, including RNA and DNA molecules (Para. [0007], [0026]), which is considered to reasonably read on a nucleic acid. Sharei teaches that the system can be used for “targeted cell differentiation by introducing proteins, mRNA, DNA and/or growth factors” and “delivery of genetic or protein material to induce cell reprogramming…” (Para. [0030]). Sharei further teaches that this system is particularly suitable for delivery of nucleic acid constructs (Para. [0038]). Thus, based on Sharei’s teachings, a skilled artisan would understand that Sharei’s method could be used to deliver a nucleic acid encoding a reprogramming factor to a population of cells, thereby inducing the reprogramming of cells. ). Additionally, Sharei teaches that the method can be used to introduce molecules such as a detectable marker (Para. [0027], lines 15-19) for cell screening purposes (Para. [0032], line 1) and wherein the detectable marker can be a fluorescent molecule (Para. [0032], line 7), including a GFP-plasmid (Para. [0193]).
While Sharei teaches delivery of nucleic acids, Sharei is silent as to delivery of a nucleic acid encoding an enzyme that confers resistance to an antibiotic.
Chen teaches a method of producing a modified immune cell comprising an exogenous CD 160 protein (claim 15) wherein the method comprises introducing a nucleic acid encoding an exogenous CD 160 protein into a precursor immune cell (claim 22) and that the introduction of the nucleic acid can be performed via transfection (Para. [0015], lines 7-8 and Para. [0060]). Chen further teaches use of a microfluidic system such as CELL SQUEEZE for delivery into the cell via cellular passage through the microfluidic system (Para. [0107], lines 14-15). It is noted that Chen references US 2014/0287509 (now US Pat. 10,696,944), in relation to CELL SQUEEZE. The prior art of Sharei as applied to this rejection indicates it is a divisional application of US Pat. 10,696,944. Thus, CELL SQUEEZE as taught by Chen and the system as taught by Sharei are considered to reasonably read on the same microfluidic system. Additionally, Chen teaches that nucleic acid sequences can be present in a gene expression cassette (Para. [0147], line 1-2) and that the gene expression cassette can further comprise a selection marker such as an antibiotic resistance gene or reporter gene (Para. [0147], lines 6-9). Further, Chen teaches that selection markers (i.e., reporter genes) can be used to identify transfected cells and that selection markers (i.e., reporter genes) encode polypeptides whose expression is manifested by an easily detectable property such as enzymatic activity (Para. [0175], lines 1-4), for example green fluorescent protein (Para. [0175], line 7). Thus, the antibiotic resistance gene as taught by Chen is considered to reasonably read on a nucleic acid encoding an enzyme that confers resistance to antibiotic and the “selection marker” of Chen appears to be analogous to the “detectable marker” as taught by Sharei.
Therefore it would have been obvious to one having ordinary skill in the art to use an antibiotic resistance gene as a detectable/selection marker as taught by Chen in Sharei’s method of contacting a cell with a nucleic acid encoding a reprogramming factor as Sharei teaches the method can also be used to deliver a detectable/selection marker (e.g., a GFP-plasmid) with a reasonable expectation of success. As Sharei teaches that detectable/selection markers can be used for cell screening and Chen teaches that detectable/selection markers can be used to identify cells which have been transfected, a skilled artisan would be motivated to use a nucleic acid encoding an antibiotic resistance gene in order to be able to reliably screen cells to which intracellular delivery of compounds had been successful via the use of relatively inexpensive methods (i.e., application of antibiotics) and without the need for specialized visual equipment required by fluorescent markers.
The combination of Sharei and Chen is silent as to the steps of collecting the cell suspension which had been contacted with the nucleic acid encoding an enzyme which confers resistance to an antibiotic and treating the cell suspension with the antibiotic. However, the use of a selection marker comprising an antibiotic resistance gene is a technique commonly used in the art which would be well-known to one having ordinary skill in the art. Therefore, a skilled artisan would recognize that the population of cells which had been contacted with the nucleic acid encoding an enzyme which confers resistance to an antibiotic would need to be collected and treated with the antibiotic in order for the nucleic acid encoding an enzyme which confers resistance to an antibiotic to function as a detectable/selection marker which is able to reliably select cells. A skilled artisan would recognize that subsequent treatment with the antibiotic would select for only those cells which exhibit resistance to the antibiotic, indicating that the method of introducing the nucleic acid encoding an enzyme conferring resistance to antibiotic was successful for those cells.
Further, in regard to use of mRNA for cellular reprogramming, Yakubov teaches that transfection of mRNA can be used to successfully reprogram fibroblasts into induced pluripotent stem cells (iPS) while avoiding risks of DNA integration from use of vectors (Abstract, Pg. 189, right col., 2nd full para.). Yakubov’s method using mRNA relies on multiple transfections using Lipofectamine performed 24 hours apart and resultant colonies of iPS cells were observed between 1 and 2 weeks (Pg. 190, left col., 1st para.) which is similar to the timeline for protein-based cell reprogramming using cell penetrating peptides as taught by Sharei (see Para. [0228]). Further, Yakubov teaches that mRNA transfection is beneficial as it allows protein folding and post-translational modifications to occur in the natural cellular environment compared to the production of iPS using bacterially synthesized proteins and also avoids bacterial synthesis of proteins which is problematic for therapeutic use (Pg. 193, left col., last para.). Yakubov also teaches that production of RNA in vitro is simple and easily scalable and allows for efficient transfection ((Pg. 193, bridging para. left and right cols.).
Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing, to use mRNA for cellular reprogramming as taught by Yakubov in the method of Sharei with a reasonable expectation of success. A skilled artisan would have been motivated to use mRNA for cell reprogramming as RNA is easy to prepare and offers scalability and avoids challenges to therapeutic use which are associated with use of bacterially-synthesized proteins. One having ordinary skill in the art would have had a reasonable expectation of success as Sharei teaches their delivery method is “universal” and can be used to deliver both proteins and mRNA (Para. [0219]) and is superior to existing methods (Para. [0218]; [0240]), lines 20-24).
With regard to claim 22, Sharei teaches that the cells are contacted with the “payload” to be delivered into the cell during passage through the constriction (Para. [0020]).
With regard to claims 36 and 37, Sharei teaches that the method can be used to deliver transcription factors, including SOX2 (Para. [0197], lines 1-3). Although Sharei’s working examples are drawn to delivery of proteins and the increased efficiency of Sharei’s method over existing methods of protein delivery such as cell penetrating peptides (CPP) (Para. [0196]), Sharei teaches that the method is “agnostic to the type of material being delivered” (Para. [0217]) and can be used to deliver “virtually any payload into a cell” (Para. [0091]) including delivery of genetic material to induce cell reprogramming (Para. [0030]). Sharei teaches that the method is “not confined to protein delivery” and can be used to deliver nucleic acids (Para. [0218]). Sharei also teaches that the method is similarly superior to existing methods for delivery of other macromolecules, including nucleic acids (Paras. [0218], [0219]). Further, Yukabov, as detailed above, teaches that mRNA based cellular reprogramming provides benefits such as simple preparation and scalability as well as avoiding concerns about bacterially-produced proteins related to therapeutic use.
Therefore, it would have been obvious to one having ordinary skill in the art, based on the teachings of Sharei and Yukabov, that nucleic acids encoding transcription factors, including SOX2, could also be delivered intracellularly using Sharei’s method with a reasonable expectation of success. A skilled artisan would have been motivated to do so because Sharei teaches that the method of intracellular delivery can be used for virtually any material and is a superior to existing methods (Para. [0218]).
With regard to claim 42, Sharei teaches that the method can be used for cell conversion and provides an exemplary embodiment of conversion of fibroblasts to neurons (Para. [0244], lines 1-3) and also discloses wherein the method is used to generate iPSCs, which can be differentiated into neurons (Example 6, and Para. [0243], lines 1-5). Although Sharei’s working examples are drawn to delivery of proteins, Sharei teaches that the method is “agnostic to the type of material being delivered” (Para. [0217]) and can be used to deliver “virtually any payload into a cell” (Para. [0091]) including delivery of genetic material to induce cell reprogramming (Para. [0030]). Sharei teaches that the method is “not confined to protein delivery” and can be used to deliver nucleic acids (Para. [0218]). Sharei also teaches that the method is similarly superior to existing methods for delivery of other macromolecules, including nucleic acids (Paras. [0218], [0219]). Yukabov, as detailed above, teaches that mRNA based cellular reprogramming provides benefits such as simple preparation and scalability as well as avoiding concerns about bacterially-produced proteins related to therapeutic use.
Therefore, it would have been obvious to one having ordinary skill in the art, based on the teachings of Sharei and Yukabov, that the method could be used for delivery of nucleic acids encoding transcription factors for cell differentiation into neurons with a reasonable expectation of success as Sharei teaches that the system can be used to deliver mRNAs or microRNAs for cellular reprogramming. (Para. [0240]). A skilled artisan would be motivated to do so because Sharei teaches that, in addition to protein delivery, the method can be used to deliver nucleic acids and is superior to existing methods (Para. [0218]).
With regard to claims 50 and 51, Sharei teaches that material (e.g., RNA, DNA, etc.) can be delivered into cells such as embryonic stem cells (Para. [0026], lines 5-7 and Fig. 33)
With regard to claim 53, Sharei teaches that material can be delivered into blood cells (Para. [0030], line 11, Para. [0192], line 8, and Fig. 33).
With regard to claims 57 and 58, Sharei teaches microfluidic device parameters, including the width of the constriction, and provides an embodiment wherein the width is no less than 4 µm (Para. [0008], lines 1 and 5-6).
With regard to claim 61, Sharei teaches that the diameter of the constriction is a function of the diameter of a cell (Abstract) and provides an example wherein the diameter of the constriction is 20% of the diameter of the cell (Para. [0008], line 11).
With regard to claim 74, Sharei teaches that the method can be used to deliver compounds for reprogramming of a cell, including mRNAs, in combination (Para. [0240]), which is considered to reasonably read on contacting the population of cells with two or more nucleic acids encoding a reprogramming factor.
With regard to claim 76, Sharei teaches that the method allows for optimization of temporal delivery of reprogramming factors, including sequential treatment of reprogramming factors in order to compare reprogramming efficiency (Para. [0242]).
With regard to claim 78, based on Applicant’s amendment, claim 78 recites the limitation “at least about 2 or more constrictions”. Applicant’s instant specification indicates that use of “about” extends the boundaries above and below that stated numerical value and that “in general, the term “about” can modify a numerical value above and below the stated value by a variance of, e.g., 10 percent up or down…”. Applicant’s definition of about comprises an example of 10 percent up or down, but use of “for example” implies that there are additional unmentioned examples which could be considered “about”. Additionally, as there is no way to modify a number of constrictions by 10% (that is, it is not possible have 1.8 or 2.2 constrictions), Applicant’s limitation of “at least about two or more contractions” is interpreted broadly as encompassing a single constriction which has been addressed in the rejection of claim 21 above.
With regard to claim 85, based on Applicant’s amendment, claim 78 recites the limitation “at least about 2 or more constrictions”. Applicant’s instant specification indicates that use of “about” extends the boundaries above and below that stated numerical value and that “in general, the term “about” can modify a numerical value above and below the stated value by a variance of, e.g., 10 percent up or down…”. Applicant’s definition of about comprises an example of 10 percent up or down, but use of “for example” implies that there are additional unmentioned examples which could be considered “about”. Additionally, as there is no way to modify a number of constrictions by 10% (that is, it is not possible have 1.8 or 2.2 constrictions), Applicant’s limitation of “at least about two or more contractions” is interpreted broadly as encompassing a single constriction.
MPEP 2111.04 (II) indicates that the broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. As Applicant’s amendment to claim 85 is broadly interpreted as comprising a single constriction, claim 85 is interpreted as comprising only a single constriction associated with one or more nucleic acids encoding a reprogramming factor, which has been addressed in the rejection of claim 21 above.
With regard to newly added claim 162, Sharei teaches that intracellular delivery can be increased by increasing the pressure (See. FIG. 13 and Para. [0113]).
Claim 163 is rejected under 35 U.S.C. 103 as being unpatentable over by Sharei, Yukabov, and Chen as evidenced by US Pat. 10,696,944 as applied to claim 21 above and further in view of Yu et al. (2007, Induced pluripotent stem cell lines derived from human somatic cells. science, 318(5858), 1917-1920, hereafter “Yu”).
With regard to newly added claim 163, it is noted that the clause reciting "wherein treating the collected cell suspension… increases purity…” comprises additional active method steps of treatment with the antibiotic for at least 12 hours but the recitation of increasing purity simply states a characterization or conclusion of the results of a process step positively recited (e.g. treating). Therefore, the limitation regarding increasing purity by at least about 1-fold is not considered to further limit the method beyond treatment of the cell suspension with the antibiotic for at least 12 hours and has not been given weight in construing the claims. See Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1171,26 USPQ2d 1018, 1023 (Fed Cir. 1993) ("A 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim."). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.").
Additionally, as use of antibiotic resistance genes as selection markers is well known in the art, it is also well known that application of the antibiotic eliminates cells which have not been transfected, thereby increasing the purity. Additionally, Applicant has not provided a definition of “purity”. Therefore, application of an antibiotic would reduce bacterial contamination in a cell culture which is considered to reasonably read on increasing the purity of a mixture comprising one or more cells.
As detailed above, Sharei discloses use of a method of introduction of a “payload”, which can be a nucleic acid encoding a reprogramming factor, the method comprising passage of a cell through a microfluidic device causing cell deformation which creates perturbations in the cell membrane allowing the payload to enter the cell and Chen teaches a cell which comprises a nucleic acid encoding an antibiotic resistance gene which can be used as a selection marker. As use of selection markers are well known in the art, a skilled artisan would recognize that cells need to be collected and treated with an antibiotic in order for a selection marker to select for only those cells which have been successfully transfected with the antibiotic resistance gene.
Although the combination of Sharei and Chen teach use of an enzyme which confers resistance to an antibiotic for use as a selection marker and a skilled artisan would understand that cells would need to be subsequently treated with the appropriate antibiotic, Sharei and Chen are silent as to the length of time that the cell suspension must be treated with the antibiotic.
Yu teaches use of neomycin phosphotransferase expression which confers resistance to the antibiotic geneticin, which is considered to reasonably read on a nucleic acid encoding an enzyme that confers resistance to an antibiotic, as a selection marker for cells which have been reprogrammed by expression of specific reprogramming factors (Pg. 1917, middle col.). Yu further teaches geneticin selection for cells from day 10 to day 13 after transduction (Supporting Material, Pg. 3, last para.), which is considered to reasonably ready on treating cells with the antibiotic for at least 12 hours.
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to choose neomycin phosphotransferase as a selectable marker and treat cells with geneticin for at least 12 hours as taught by Yu for use in the method of introduction of a nucleic acid encoding a reprogramming factor and an enzyme that confers resistance to an antibiotic which can be used as a selection marker as taught by the combination of Sharei and Chen with a reasonable expectation of success. A skilled artisan would have been motivated to choose neomycin phosphotransferase expression and subsequent treatment using geneticin for at least 12 hours because Yu teaches this combination can be used to successfully distinguish cells which have been reprogrammed and the use of selection via antibiotic resistance is well known to those having ordinary skill in the art. A skilled artisan would have had a reasonable expectation of success as Sharei and Yu teach reprogramming of cells using reprogramming factors and Sharei, Chen, and Yu all teach that detectable markers can be used to determine cells which have successful intercellular delivery of molecules.
Response to Arguments
Applicant's arguments filed April 10, 2026 have been fully considered but they are not persuasive.
Claims 21-22, 27, 29, 36-37, 42, 50-51, 57-58, 61, 74, 76, 78, 85, and 126 were rejected under 35 U.S.C. 102 as being anticipated by Sharei (US 2020/0277566) and claims 28 and 92 were rejected under 35 U.S.C. 103 as being obvious over Sharei and Chen (WO 2020/18074).
Applicant has amended claim 21 to incorporate the limitation of contacting the population of cells with one or more nucleic acids encoding a reprogramming factor and an enzyme that confers resistance to an antibiotic and collecting the cell suspension that passed through a constriction and treating the collected cell suspension with the antibiotic. Claims 87 and 92 have been canceled.
Applicant traverses on Pg. 14, 5th and 6th paras.; that Chen teaches delivery of heterologous nucleic acid sequences containing an antibiotic resistance gene via viral vector delivery and Sharei teaches protein-based reprogramming which does not involve introduction of genetic material. Applicant asserts that Sharei teaches that protein-based reprogramming is highly safe as it does not utilize genetic material and that protein-based delivery can avoid the stochastic processes required by nucleic acid or viral reprogramming as well as offer control over cellular function. Applicant asserts that Sharei teaches that protein-based reprogramming is advantageous as it eliminates risk of mutagenic insertion while achieving more accurate control of the reprogramming process. Applicant concludes on Pg. 14-15 (bridging para.) that a skilled artisan, based on the teachings of Sharei, would understand the superiority of protein-based reprogramming and would not be motivated to combine use of a nucleic acid sequence containing an antibiotic resistance gene as taught by Chen with the protein based reprogramming method of Sharei, which Applicant asserts renders the instant invention non-obvious.
Applicant's arguments have been fully considered but they are not persuasive.
Applicant is reminded that the MPEP 2123(I) states that patents are relevant as prior art for all they contain, and that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
In the instant case, Sharei teaches that the microfluidic system comprising delivery of a payload into a cell via cellular deformation is capable of “intracellularly delivering virtually any payload into a cell (Para. [0091]), that the method is “agnostic to the type of material being delivered” (Para. [0217]), and that the system is not confined to protein delivery and can be used to deliver nucleic acids to almost any cell type (Para. [0218]). Additionally, Sharei teaches that the microfluidic system is superior to existing delivery methods including liposomal, nanoparticle, and electroporation (Para. [0218]) and that Sharei’s method is a “universal method” capable of delivering a range of macromolecules (including nucleic acids) with minimal cell death and enables superior control over cellular function (Para. [0219]). Therefore, a skilled artisan, based on the teachings of Sharei would have been motivated to use the method as Sharei teaches that the method not only can be used to deliver nucleic acids but also is superior to existing methods of delivering nucleic acids.
In regard to Applicant’s traversal regarding safety of protein-based reprogramming, Sharei teaches that use of non-integrating approaches such as delivery of mRNA or microRNAs are known (Para. [0217], right col., top portion) and that Sharei’s method can be for non-integrating reprogramming by delivery of proteins, mRNAs, and microRNAs in combination (Para. [0240]). Additionally, Sharei teaches that use of the method of intracellular delivery for nucleic acids provides significant increases in efficiency compared to existing approaches (Para [0240]) and that the system allows for increased scalability (Para. [0026]). Therefore, based on Sharei’s teachings, a skilled artisan would have understood that delivery of nucleic acids (e.g., mRNA and/or microRNA) is non-integrating and thereby would also avoid safety concerns, that Sharei’s method results in a more efficient delivery process, and could easily be used to deliver nucleic acids in addition to delivery of proteins in Sharei’s method.
With regard to Applicant’s traversal regarding protein-based cell reprogramming versus nucleic acid based cell reprogramming, as detailed above, Sharei teaches that the method can be used to introduce any payload, including nucleic acids, and that the method is superior to other methods including use of liposomal, nanoparticle, and electroporation (Para. [0218]) and CPPs (Para. [0217], right col, top third). Yakubov teaches that transfection of mRNA can be used to successfully reprogram fibroblasts into induced pluripotent stem cells (iPS) while avoiding risks of DNA integration from use of vectors (Abstract, Pg. 189, right col., 2nd full para.). Yakubov et al.’s method using mRNA relies on five transfections using Lipofectamine performed 24 hours apart, protein expression was detected 8 hours after transfection and reached peak expression at 24 hours, and resultant colonies of iPS cells were observed between 1 and 2 weeks (Pg. 190, left col., 1st para.). This is similar to the timeline for protein based cell reprogramming using cell penetrating peptides as taught by Sharei (See Para. [0228]). Further, Yakubov teaches that mRNA transfection is beneficial as it allows protein folding and post-translational modifications to occur in the natural cellular environment compared to the production of iPS using bacterially synthesized proteins and also avoids bacterial synthesis of proteins which is problematic for therapeutic use (Pg. 193, left col., last para.). Yakubov et al. also teaches that production of RNA in vitro is simple and easily scalable and allows for efficient transfection ((Pg. 193, bridging para. left and right cols.). Therefore, a skilled artisan would have understood, at the time of filing, that use of mRNA based cell reprogramming provided benefits such as simple preparation and scalability while avoiding the challenges to therapeutic use that comes with use of bacterially synthesized proteins. Based on Sharei’s teaching that Sharei’s intracellular delivery method is superior for both protein and nucleic acid delivery, a skilled artisan would have been motivated to use Sharei’s method for delivery of nucleic acids for cell reprogramming and also would have had a reasonable expectation of success.
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 ERIN V PAULUS whose telephone number is (571)272-6301. The examiner can normally be reached Mon-Fri 8 AM-5 PM.
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/ERIN V PAULUS/Examiner, Art Unit 1631
/ARTHUR S LEONARD/Examiner, Art Unit 1631
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