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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/24/2024 was filed before the mailing date of the first non-final action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
It should be noted that the optional recitations in instant claims are not given
patentable weight as they are not required by the subject claim.
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.
Claim 30 is 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. The claim is directed to a method of using the bioengineered hair follicle for the prophylactic or therapeutic treatment of reduced pilosity or alopecia, however there are no active, positive steps that show how this treatment is accomplished.
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 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.
Claims 1-2,4-5,7-16,18-23,25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Thangapazham et al ( US 2016/0184481 A1), in view Kageyama et al ( Biomaterials, 2019), Kageyama et al ( Biomaterials, 2018), and Atac et al ( In Vitro Cellular and Developmental Biology, 2020) .
Regarding claims 1,4, 5, 12, and 27, Thangapazham et al teach a method for producing a bioengineered hair follicle. The method involves forming skin substitutes, wherein the formation of skin substitutes comprises the following steps:
(a) mixing a culture of hair follicle dermal cells (i.e. mesenchymal cells) with a matrix (i.e. collagen) ; and
(b) overlaying a culture of primary or early-passage epithelial cells (i.e. Keratinocyte) onto the mixture of (a). ( See [0026])
Thangapazham et al teach that the skin substitutes can be provided in a suspension as microspheres. Thangapazham et al, for example, teach utilizing the hanging droplet method to produce the said microspheres, and teach that the microspheres can be generated by mixing the two types of cells (i.e. mesenchymal cells and epithelial cells) with methylcellulose and then dispensing the mixture as a 20 ul droplet in the bottom of petri dish. ( See 0168-0169]. It should be noted that, in one of the embodiment , Thangapazham et al teach how to produce HF microsphere comprising epithelial cells ,neural crest-derived mesenchymal cells, and collagen rather than. ([0021], and [0132]) . Thangapazham et al also teach culturing microspheres in a medium containing supplementary factors. [0121].
It is submitted that the process of forming microspheres ,as described by Thangapazham, does not explicitly teach the steps of instant claim 1. For example, the method of forming microspheres, as described by Thangapazham et al, does not include the steps of forming mesenchymal cell-matrix microsphere, followed by culturing the mesenchymal cell-matrix microsphere in the vessel, and then dispensing a droplet of a suspension of epithelial cells in close proximity to the mesenchymal cell-matrix microsphere.
Kageyama et al (2019) supplement Thangapazham et al by teaching an in vitro method for producing hair follicle (HF).The method of Kageyama et al involves the following steps:
Forming microspheres ( referred to it as hair beads (HB)) comprising mixing mouse mesenchymal cells or human dermal papilla cells (DP) in collagen solution on ice to form mesenchymal cell-matrix microsphere;
Dispensing the collagen solution containing the cells as 2-μl droplets on a culture vessel (i.e. low attachment round-bottom 96-well plate) and incubating for 30 mins at 37C for gelation;
Overlaying a culture of epithelial cells suspended in epidermal keratinocyte growth medium-2 (KG2) (i.e. epidermalization medium) onto the mixture and culturing the mixture in the presence of epidermalization medium for 3 days to form mesenchymal microsphere-epithelial cell mixture. (See section 2.7. “ Preparation of HFG-like aggregates”, and Fig. 6).
It should be noted that Kageyama et al refer to the microspheres containing mesenchymal cells and collagen as hair beads (HB), and to hair follicle as hair follicle germs (HFGs). Kageyama et al demonstrate that the bead-based hair follicle germs (bbHFGs) method (i.e. the method involving using HBs overlaid with epithelial cells) is more efficient than the conventional method known as self-organized HFG (ssHFG), wherein the ssHFG method involves the mixing and seeding of the two types of cells without ECM (i.e. collagen), as well as the other conventional method termed as (e+m) HFG, which involves generating microspheres comprising of a collagen solution containing both epithelial and mesenchymal cells. ( See Fig.6A). For example, when Kageyama et al compared the expression of trichogenous gene markers including versican, alp, hey1, igfbp5, wnt10b, among the three cell aggregate preparations, they found that the expression of almost all genes was greater in bbHFGs than in ssHFGs or HBs(e + m). (Fig. 6C), suggesting that the method of Kageyama et al can be adopted to efficiently generate bioengineered hair follicle.
Taken together, claim 1 would have been obvious to one of ordinary skill in the art, as there was some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. Because Thangapazham et al teach a method for producing bioengineered hair follicle comprising forming skin substitutes or microspheres, comprising of mesenchymal cells , epithelial cells , and extracellular cellular matrix (i.e. collagen), but fails to teach the exact steps as claimed for the generation of microspheres of instant claim. Kageyama et al supplement Thangapazham by teaching an in vitro method for making bioengineered HF, comprising the steps of first forming microspheres comprising a mixture of mesenchymal cells and ECM, followed by overlaying a layer of epithelial cells on top to form mesenchymal microsphere-epithelial cells mixture, and clearly suggest that this method is more efficient than the conventionally known methods for producing hair follicle. Therefore, Kageyama et al provide a suggestion that would have led an ordinary skill in the art to modify the method of Thangapazham according to the teachings of Kageyama et al because doing so would allow for more efficient production of HF than the conventional method of Thangapazham et al.
Regarding claim 2, following the discussion above, the combined teachings of Thangapazham and Kageyama render obvious the method for producing bioengineered HF. Kageyama et al teach dispensing a droplet of 2 µl comprising 2.4-mg/ml collagen solution and 5×103 cell/µl (i.e. 5×106 cell/ml) to form mesenchymal cell-matrix microsphere.
Regarding claim 7, following the discussion above, neither Thangapazham nor Kageyama teach a culture vessel comprising of PDMS-based microwell.
Kageyama et al (2018) supplement the teachings of the recited prior arts by utilizing a PDMS-based microwell to generate bioengineered hair follicle for regenerative medicine. According to Kageyama et al, PDMS is noncytotoxic, transparent, autoclavable, suitable for microfabrication, and widely used in tissue engineering approaches. Kagyama et al further teach that PDMS material is a gas-permeable material. Therefore, a PDMS-based chips/microwells are expected to supply oxygen to the cells from above below (i.e. through the PDMS floor of the chips/microwells). Kayegyama et al state that “ In fact, PDMS has been estimated to exhibit an oxygen diffusion coefficient and oxygen solubility level 1.5- and 10-fold greater than those exhibited by culture medium (water), respectively”. ( See Section 3.3.). Furthermore, Kagyema et al demonstrate that cells cultured in PDMS-based microwells can self-organize in aggregates and generate HFGs after 3 days of culture. ( See Fig.6Di). In contrast, cells cultured on a chip that was fabricated by non-oxygen permeable (i.e. PMMA) formed a poorly delineated aggregate with limited or no spatial separation of the two cell types. ( See Fig.6Dii). Taken together, Kageyama et al demonstrate that PDMS is an optimal material for the fabrication of HFG chips that can enable large-scale HFG production.
Therefore, it would have been prima facie obvious to one with ordinary skill in the art to modify the method of Thangapazham and Kageyama et al (2019) and use a culture vessel comprising of PDMS-based microwells for the generation of HF. Kageyama et al (2018) demonstrate that PDMS is an optimal material for the fabrication of HFG chips that can allow large-scale preparation of ssHFGs. ( See page 298-1st column- last paragraph ).Thus, providing a motivation to a person of ordinary skill in the art to utilize a PDMS-based microwells, as described by Kageyama et al (2018), to generate bioengineered hair follicle, because Kageyama et al demonstrated that such a platform supports the generation of large-scale preparations of HF that can be used in regenerative medicine. In other words, claim 7 is combining prior art elements according to known methods to yield predictable results, namely the predictable result being the production of bioengineered HF utilizing a PDMS-based microwells.
Regarding claims 8-9, following the discussion above, Thangapazham et al state that “to maintain and enrich the hair inductive cells, including dermal papilla cells, growth factors such as BMP2, Wnt-3a, Wnt-l0b, insulin, FGF2, KGF, etc. may be added to the medium”. [0121]. Also, Thangapazham et al and Kageyama both teach culturing the mesenchymal-matrix microsphere in a culture vessel in an incubator at 37C.
Regarding claim 10, the combined teachings of Thangapazham and Kageyama (2019) render obvious the method of producing bioengineered hair follicle of claim 1. Kageyama et al teach overlaying the mesenchymal cell-matrix microsphere with 1×104 epithelial cells suspended in 100 µl of DMEM/KG2 culture medium. It is noted that the droplet size for the epithelial cells suspension, as taught by Kageyama(2019), differs from the range specified in the instant claim (i.e. 0.5-10 ul). However, it is well recognized that it is prima facie obvious for one of ordinary skill in the art to use routine experimentation to discover an optimum value of a result effective variable. The instant application demonstrates that the optimal droplet size containing the epithelial cells is a result-effective variables that can be arrived at by routine experimentation, evident by the recitation of a range that an ordinary skill in the art can use when preparing the epithelial cells. Therefore, one of ordinary skill in the art would be able to arrive at the same droplet size claimed in instant claim through routine experimentation.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum of workable ranges by routine experimentation. The "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." Application of Boesch, 617 F.2d 272, 276, 205 USPQ 215, 218-219 (C.C.P.A. 1980). See MPEP 2144.05
Regarding claim 11, the method of Kageyama et al (2019) teach culturing mesenchymal microsphere-epithelial cell mixture inside an incubator at 37°C for 3 days.
Regarding claim 13, following the discussion above, Thangapazham et al teach that a ratio of mesenchymal to epithelial cell of (10:1, 5:1, or 1:1) can be used to form mesenchymal microsphere-epithelial cell mixture. [0169].
Regarding claim 14, it is noted that the method of Kageyama et al (2019) involves the step of culturing mesenchymal cells and ECM at 37 C for 3 hours. This differs from instant claim, which recite culturing the mixture overnight. The method of Kageyama et al also involves the step of culturing the mesenchymal cell microsphere-epithelial cell mixture for three days, which also differs from instant claim which recite culturing the mixture overnight. However, the time required for these steps to be accomplished is a result effective variable, and it is well recognized that it is prima facie obvious for one of ordinary skill in the art to use routine experimentation to discover an optimum value of a result effective variable. When the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimal or workable ranges through routine experimentation, absent evidence to the contrary and the claim is considered obvious.
Regarding claims 15, following the discussion above, Kageyama et al (2019) teach culturing mesenchymal cell microsphere-epithelial cell mixture in epidermalization medium (i.e. KG2) for 3 days. This differs from instant claim, which recites an incubation period of 8 days. However, the incubation time is a result effective variable, and it is well recognized that it is a prima facie obvious for one of ordinary skill in the art to use routine experimentation to discover an optimum value of a result effective variable. When the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimal or workable ranges through routine experimentation, absent evidence to the contrary and the claim is considered obvious.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum of workable ranges by routine experimentation. The "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." Application of Boesch, 617 F.2d 272, 276, 205 USPQ 215, 218-219 (C.C.P.A. 1980). See MPEP 2144.05
Regarding claim 16, the method of Kageyama et al teach producing mesenchymal cell microsphere-epithelial cell mixture comprising at least one mesenchymal cell-matrix microsphere and about 10000 epithelial cells, this reads on step(b) of instant claim. ( See section 2.7.).
Regarding claims 18-19, following the discussion of claim 1 above, Kageyama et al (2019) demonstrate that the alkaline phosphatase ALP activity in the HB (i.e. the mesenchymal cell-matrix microsphere) is 2- and 10-fold greater than in spheroid and monolayer cultures, respectively. ( See Fig.3A,C). Kageyama et al also demonstrate that the bioengineered hair follicle demonstrate multiple features indicative of hair inductivity including alkaline phosphatase and Versican. ( See Fig.6B).
Regarding claims 20 and 22, Kageyama et al also demonstrate that the bioengineered hair follicle has features indicative of epithelial cells proliferation, such as the expression of cytokeratin, as well as cell-cell contacts and cell-extracellular matrix contacts. ( See Fig.6C).
Regarding claim 21, Kageyama et al (2019) also demonstrate that the bioengineered hair follicle has features indicative of hair differentiation as evidenced by the formation of hair shafts on the back skin of mice 3 weeks after transplantation. ( See Fig.7).
Regarding claims 23 and 25, Kageyama et al (2019) demonstrate that the mesenchymal cell-matrix microsphere (i.e. HB) has a spherical structure morphologically similar to native dermal papilla structure ( See Fig.2A). Kageyama et al further demonstrate that the bioengineered hair follicle comprises a tubular structure morphologically similar to native hair follicles. ( See Fig.6C and Fig.7).
Regarding claims 26, the method of Kageyama et al (2018) involves culturing mesenchymal cell-matrix microsphere in a single well in a multiwall plate. ( See Fig.6A, and section 2.7.).
Regarding claim 28, following the discussion above, Thangapazham, Kageyama (2018) and (2019) do not teach using the bioengineered hair follicle for in vitro studies, for example, for pre-clinal substance testing.
Atac et al supplement Thangapazham and Kageyama (2018) (2019) by teaching a method of using HFs in pre-clinical drug testing. In particular, Atac et al demonstrate how to use HFs to test the functional response of the HF to a model hair growth therapy, minoxidil, by comparing the response to minoxidil among HFs and clinical samples. Atac et al found that minoxidil treatment of HFs displayed significant signature overlap with the in vivo transcriptional profile of scalp hair treated with minoxidil, which appeared to generally increase over time. Furthermore, Atac et al suggest utilizing HFs for pre-clinical substance testing. ( See abstract). Therefore, it would have been prima facie obvious to one with ordinary skill in the art at the time the invention was filed to use HFs in pre-clinal substance testing, because Atac et al clearly suggested that it might be beneficial to utilize HFs in pre-clinal testing, providing a motivation to a person of ordinary skill in the art to use the bioengineered hair follicles in pre-clinal testing. An ordinary skill in the art would have a reasonable expectation of success using the HFs in pre-clinical testing, as proven by Atac et al.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FATIMAH KHALAF MATALKAH whose telephone number is (703)756-5652. The examiner can normally be reached Monday-Friday,7:30 am-4:30 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FATIMAH KHALAF MATALKAH/Examiner, Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638