DETAILED ACTION
Claims 1-10 are currently pending.
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 election with traverse of Group I, claims 1-9, in the reply filed on 6/8/2026 is acknowledged. The traversal is on the ground(s) that no undue burden on the Examiner to consider examination of all claims. This is not found persuasive for the reasons set forth in the previous Office action (4/16/2026), specifically that Inventions I and II are related as process of making (claim 10) and product made (claims 1-9). The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed (cell support composite) can be made by another and materially different process.
Prestwich taught of cell support composites made by the process of polymerization between modified gelatin and at least one actinically crosslinkable macromolecule, e.g., polysaccharide (Abstract; [0172]-[0174]). The process of Prestwich is patentably distinct from the method of the instant Group II.
The requirement is still deemed proper and is therefore made FINAL.
Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/8/2026.
Priority
This application claims benefit as a DIV of 16/593,462 (filed 10/4/2019; now U.S. Patent No. 12,024,720) which claims benefit from international application PCT/JP2018/011392, filed March 22, 2018. Acknowledgment is further made of applicants' claim for foreign priority to JP application 2017-075828, filed April 6, 2017. A certified copy of the foreign priority document is present in the application file.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 4/16/2024, 5/21/2024, 6/25/2025 and 5/8/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings are objected to because FIG. 12 appears to have a typographical error in the spelling of “Geratin”. It appears this should be spelled “Gelatin” since there are no disclosures of “Geratin” in the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Claim 1 recites the following limitation:
“…cultivated cells adhering to the substrate, with the coating agent layer being interposed therebetween, the cultivated cells being produced by a cultivation method including: cultivating primary cultured kidney cells which are dedifferentiated in a state of being non-adherent to a culture vessel for a period of 5 days or longer, forming aggregates of the kidney cells during the cultivation period, then cultivating the kidney cells in a state of having formed aggregates, during a portion of the period, and thereby restoring physiological functions of the kidney cells, the primary cultured kidney cells including primary cultured renal proximal tubular epithelial cells, and a percentage of the primary cultured renal proximal tubular epithelial cells in the primary cultured kidney cells being 83% or more.”
It is initially noted that claim 1 is directed to a cell support composite product. As to the limitations directed to cultivating primary cultured kidney cells which are dedifferentiated in a state of being non-adherent to a culture vessel for a period of 5 days or longer, forming aggregates of the kidney cells during the cultivation period, then cultivating the kidney cells in a state of having formed aggregates, during a portion of the period, and thereby restoring physiological functions of the kidney cells, the primary cultured kidney cells including primary cultured renal proximal tubular epithelial cells, it is noted these limitations are directed to the manner by which the cultivated cells adhering to the substrate has been produced, such limitations are product-by-process limitations which appear to define the cultivated cells adhering to the cell support substrate. Product-by-process limitations are considered only insofar as the method of production imparts distinct structural or chemical characteristics or properties to the product. Therefore, if the product, as claimed, is the same or obvious over a product of the prior art (i.e., it is not structurally or chemically distinct), the claim is considered unpatentable over the prior art, even though the prior art product is made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), and In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). See also MPEP § 2113.
In the instant case, if the product by process limitations are considered, the process has cultivated renal proximal tubular epithelial cells for 5-14 days to permit aggregation of the cells during a portion of the cultivation period, wherein the aggregation restores physiological functions. Thus, the cultivated cells adhering to the substrate are considered to include a population of renal proximal tubular epithelial cells (RPTECs) at a concentration of 83% or more and the RPTECs have restored physiological function, e.g., differentiated phenotype or expression of AQP1 or OAT1 (specification [0062], [0114]).
Further regarding claims 2-8, it is noted these claims recite limitations directed to the manner by which the cultivated cells adhering to the substrate have been prepared by previous aggregation by further defining culture duration (claim 2), size and number of cells in previously aggregated cultivation (claims 3-4), and culture vessel conditions used to prepare the cultivated cells (claims 5-8), but these limitations do not further limit the structure of the claimed cells adhering to the cell support composite per se.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites the limitation “…selected from the group consisting of laminin molecules, a basement membrane matrix mixture, collagen molecules, and fragments of any of these...”
The recited molecules and matrix mixture encompass proteins (polypeptides), thus in its broadest reasonable interpretation, fragments of a protein include individual amino acids, and the amino groups, carboxylic groups and side chains that form the amino acids.
The specification at [0044] discloses an example of the fragment of a laminin molecule is a modified body of the E8 region including a cell adhesive site (integrin-binding site) of domain I in a full-length laminin (described as laminin***-E8). Examples of such a modified body include laminin 111-E8, laminin 211-E8, laminin 421-E8, and laminin 521-E8. The molecular weights of these are all about 1/5 of full-length laminin.
Thus, the disclosed fragments of laminin are polypeptides that are not the full-length laminin molecule, and have smaller molecular weights.
The specification at [0049] discloses the basement membrane matrix mixture is a mixture of extracellular matrix proteins extracted from mouse sarcoma, includes laminins, collagen IV, and entactin as main constituent components, and an example of the basement membrane matrix mixture is a soluble basement membrane matrix extracted from Engelbreth-Holm-Swarm (EHS) mouse sarcoma, MATRIGEL®.
The specification at [0055] discloses a fragment of a basement membrane matrix mixture means a mixture of at least one of a fragment of a laminin, a fragment of collagen IV, and a fragment of entactin.
The specification at [0059] discloses a fragment of a collagen molecule may be used, and it is also acceptable that a mixture of a plurality of kinds of the whole bodies of collagen molecules and a mixture of a plurality of kinds of the fragments thereof may also be each used, and [0073] discloses collagen fragments are obtained by fragmenting the collagen polypeptide chain.
Thus, the specification teaches the fragments of collagen are polypeptides that are not the full-length collagen molecule.
Applicants’ disclosure of the claimed fragments of any of these molecules is limited to smaller, defined polypeptide portions of the full-length proteins, per se, there is no disclosure of acceptable fragments that encompass individual amino acids, or the amino groups or carboxylic groups that make up amino acids.
To satisfy the written description aspect of 35 U.S.C. 112, first paragraph, for a claimed genus of molecules, it must be clear that: (1) the identifying characteristics of the claimed molecules have been disclosed, e.g., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed cor-relation between function and structure, or by a com-bination of such identifying characteristics; and (2) a representative number of species within the genus must be disclosed. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
Thus, one of ordinary skill in the art, in looking to the instant specification, would not be able to determine that Applicants were in possession of the invention, as claimed, at the time of filing. Accordingly, the claims are considered to lack sufficient written description and are properly rejected under 35 USC 112, first paragraph.
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.
Claims 1-9 are 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 1 recites the limitation “…selected from the group consisting of laminin molecules, a basement membrane matrix mixture, collagen molecules, and fragments of any of these...”
The limitation directed to “fragments of any of these” renders the claim indefinite since it is unclear if the recited fragments means polypeptides that comprise fewer amino acid residues, as compared to a full-length polypeptide, or if the claim encompasses a fragmented coating layer, wherein the coating comprises dis-connected or broken-off pieces of a solid substrate comprising the recited laminin, collagen or basement membrane matrix.
Claims 2-8 are included in this rejection due to dependency directly, or indirectly, from claim 1.
Appropriate clarification is appreciated.
Further regarding claim 9, it is noted the limitation “…increasing an amount of expression of OAT1 gene” renders the claim indefinite since the term “increasing” is a relative term. The term "increasing" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
It is unclear if the increased OAT1 expression is relative to specific in vivo conditions (e.g., expression found in particular age groups, or specific donor population), or is relative to specific in vitro culture conditions (e.g., serum-free culture or serum-supplemented culture).
It is further noted the specification at [0110] discloses that the expression of OAT1 is affected by cell concentration, however the claim does not recite any specific number of cells and given that cell concentrations are an ever-changing parameter, the metes and bounds of determining what would meet the limitation of an increased amount of OAT1 is unclear. Is the increased OAT1 expression compared to expression found in vitro for 500 cells, or 1000 cells, or 5000 cells, etc.
Given the specification does not specifically define what is meant by “increasing”, one of ordinary skill in the art would not understand the metes and bounds of the term.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. Claim 1 is directed to a cell support composite comprising three (3) components as follows:
A substrate;
A coating agent layer covering at least a portion of the substrate, the coating agent layer containing one or more selected from the group consisting of laminin molecules, a basement membrane matrix mixture, collagen molecules, and fragments of any of these;
Cultivated cells adhering to the substrate.
As set forth above at Claim Interpretation, the cultivated cells adhering to the substrate are considered to include a population of renal proximal tubular epithelial cells (RPTECs) at a concentration of 83% or more and the RPTECs have restored physiological function, e.g., differentiated phenotype or expression of AQP1 or OAT1 (specification [0062], [0114]).
Thus, the claim(s) recite(s) an aggregation of primary renal proximal tubular epithelial cells (RPTECs) which are not markedly different from the product’s naturally occurring counterpart in its natural state.
The rationale set forth below conforms to current Office practice for examination of claims under § 101.
These claims are analyzed for eligibility in accordance with their broadest reasonable interpretation. All of the claims are directed to a statutory category, e.g., a composition (Step 1: YES).
The next part of the analysis involves whether the claimed invention recites or is directed to one or more judicial exceptions (Step 2A, prong one).
Claim 1: As is recognized by the instant specification (paragraph [0016]), renal proximal tubular epithelial cells (RPTECs) are native to the kidney.
Bondue (see IDS 5/8/2026), at Figure 2, evidences that native proximal tubule epithelial cells exist in vivo as an aggregation of cells within the proximal tubule of the kidney and KidneyPathology.com (see IDS 5/8/2026) further provides histology images to evidence the native aggregation of proximal tubular epithelial cells (see Figure 1).
Thus, the claim as currently drafted encompasses a natural product.
Further regarding the limitation directed to the amount of proximal tubular epithelial cells (i.e., 83% or more), it is noted this limitation does not limit the claimed composition in such a way that is markedly different in structure or biological and/or pharmacological function from their natural counterparts and Bondue clearly shows the tubule lining comprises 100% proximal tubule epithelial cells.
Further regarding the recited coating agent layer, it is noted that laminin, basement membrane matrix and collagen are also natural products.
The recited substrate, in combination with the recited coating layer, does not appear to further limit the structure/function of the claimed aggregation of RPTECs in a way that is markedly different in structure or biological and/or pharmacological function from their natural counterparts.
Accordingly, the claim is directed to an exception (Step 2A, prong one: YES). Thus, the claim does not qualify as eligible subject matter, and are rejected under 35 U.S.C. 101.
Claims 2 and 5-8, as set forth above at Claim Interpretation these claims recite limitations directed to the manner by which the aggregation of primary cultured renal proximal tubular epithelial cells (RPTECs) has been prepared by further defining culture duration (claim 2) and culture vessel conditions (claims 5-8), however, these limitations do not further limit the structure of the claimed cells a way that is markedly different in structure or biological and/or pharmacological function from their natural counterparts.
Claims 3-4 and 9: claims 3-4 and 9 depend directly from claim 1 and further define the amount of cells present (claim 3), cell size (claim 4) and restored physiological functions (claim 9). These limitations do not limit the claimed composition in such a way that is markedly different in structure or biological and/or pharmacological function from the natural counterpart. Specifically regarding claim 9, it is noted the instant specification recognizes that removal of the proximal tubular epithelial cells from the native environment causes de-differentiation and reduces native physiological functions ([0016]-[0017] and [0101]), thus the native environment maintains physiological functions.
The next part of the analysis involves whether the claimed invention recites additional elements that integrate the judicial exception into a practical application (Step 2A, prong two).
Given the claims are directed to a composition, the claims do not recite additional steps that integrate the judicial exception into a practical application (Step 2A, prong two: No).
The final part of the analysis involves whether the claimed invention, as a whole, recite something “significantly more” than the judicial exception (Step 2B).
In view of the above and considered as a whole, the claimed RPTECs do not have markedly different characteristics from what occurs in nature. Thus, the claims do not qualify as eligible subject matter, and are rejected under 35 U.S.C. 101 (Step 2B: NO).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lewis et al., (Kidney International, Vol. 49 (1996), pp. 48-58; IDS 4/16/2024) (“Lewis”).
It is initially noted, as set forth above at Claim Interpretation, the cultivated cells adhering to the substrate are considered to include a population of renal proximal tubular epithelial cells (RPTECs) at a concentration of 83% or more and the RPTECs have restored physiological function, e.g., differentiated phenotype or expression of AQP1 or OAT1 (specification [0062], [0114]).
Regarding claim 1, Lewis teaches of isolating proximal tubular epithelial cells (PTE cells), the cells being 90% or greater proximal tubular epithelial cells (Methods, Cell culture, left col, first paragraph, page 49; Results, Characterization of rat renal cell cultures, right col, page 50). Lewis teaches of co-culturing (i.e., aggregation) the isolated PTE cells on collagen IV (i.e., a coating agent layer) coated membrane inserts (i.e., substrate) (Methods, Co-culture of tubular epithelial cells and interstitial fibroblasts, left col, page 50).
Lewis further teaches culturing the PTE cells in 8-chamber slides (i.e., substrate) that were coated with collagen IV (COL IV), collagen I (COL-I), laminin (LN) or fibronectin (FN) (i.e., coating agent layer), and cultured to confluence (i.e., aggregation) for immunohistochemical analysis (Methods, Characterization of cells, right col, page 49; Results, Characterization of rat renal cell cultures, pages 50-51).
Additionally, regarding restoration of physiological functions of the kidney cells, it is noted that Lewis teaches that, when the PTE cells were cultured on semipermeable inserts coated with different individual ECM components revealed that cells on
FN (Fig. 2, lanes 3 and 4), COL-IV (Fig. 2, lanes 5 and 6) and COL-I (data not shown) produced both gelatinase-A and -B apically and basally. Culture on the main components of basement membrane matrix (COL-IV and LN) increased the production of these enzymes when compared to cells grown on plastic (Fig. 2, lane 2) (Expression of MMPs (gelatinase-A and -B and collagenase) by rat renal cells in culture, page 51, right col). Thus, Lewis teaches restoration of native physiological function.
Therefore, the teaching of Lewis anticipates claim 1.
Regarding claims 2-8, it is noted as set forth above at Claim Interpretation, these claims recite limitations directed to the manner by which the cultivated cells adhering to the substrate have been prepared by previous aggregation by further defining culture duration (claim 2), size and number of cells in previously aggregated cultivation (claims 3-4), and culture vessel conditions used to prepare the cultivated cells (claims 5-8), but these limitations do not further limit the structure of the claimed cells adhering to the cell support composite per se.
As such instant claims 2-8 do not further limit parent claim 1, and thus are included in the rejection of claim 1.
Claim(s) 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Prange et al., (Pflugers Arch – Eur J Physiol (2016) 468: 739-750; IDS 4/16/2024) (“Prange”).
It is initially noted, as set forth above at Claim Interpretation, the cultivated cells adhering to the substrate are considered to include a population of renal proximal tubular epithelial cells (RPTECs) at a concentration of 83% or more and the RPTECs have restored physiological function, e.g., differentiated phenotype or expression of AQP1 or OAT1 (specification [0062], [0114]).
Regarding claim 1, Prange teaches culturing primary human proximal tubular epithelial (HRPTEpiC) cells alone (i.e., 100% primary cultured renal proximal tubular epithelial cells), on collagen-coated (i.e., coating agent layer) glass cover slips (i.e., a substrate), wherein the cells were assayed for expression of PCNA, AQP1 and megalin (Fig. 1 at page 741; right col, second and third paragraphs, page 740). Prange’s Fig. 1A illustrates aggregated HRPTEpiC having positive expression for AQP1 and it is noted that Applicant’s specification discloses expression of AQP1 is indicative of restored physiological function ([0100]).
Thus, Prange’s teaching anticipates claim 1.
Regarding claims 2-8, it is noted as set forth above at Claim Interpretation, these claims recite limitations directed to the manner by which the cultivated cells adhering to the substrate have been prepared by previous aggregation by further defining culture duration (claim 2), size and number of cells in previously aggregated cultivation (claims 3-4), and culture vessel conditions used to prepare the cultivated cells (claims 5-8), but these limitations do not further limit the structure of the claimed cells adhering to the cell support composite per se.
As such instant claims 2-8 do not further limit parent claim 1, and thus are included in the rejection of claim 1.
Claim(s) 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oo et al (Biomaterials 32 (2011) 8806-8815; see PTO-892) (“Biomaterials”).
It is initially noted, as set forth above at Claim Interpretation, the cultivated cells adhering to the substrate are considered to include a population of renal proximal tubular epithelial cells (RPTECs) at a concentration of 83% or more and the RPTECs have restored physiological function, e.g., differentiated phenotype or expression of AQP1 or OAT1 (specification [0062], [0114]).
Regarding claims 1 and 9, Biomaterials is directed to bioartificial kidneys and the performance of human primary renal proximal tubule cells (HPTCs) in hollow fiber bioreactors.
Biomaterials teaches the bioreactors comprise hollow fiber membranes (i.e., a substrate) that are coated with DOPA and human collagen IV (i.e., a coating agent layer containing collagen molecules) and thereafter the coated, hollow fiber membranes are seeded with the HPTCs (100%), cultured under static conditions for 2 days and thereafter cultured under perfusion conditions for 7 days prior to immunostaining and functional assays (page 8807, 2.6 Bioreactor handling and hollow fiber double coating). Fig. 3 of Biomaterials illustrates the aggregation of the HPTCs on the hollow fiber membrane, Fig. 5 further illustrates aggregated HPTCs having positive expression of AQP1 (physiological function, see specification at [0100]), and Fig. 6 further illustrates positive expression of OAT1 (physiological function, see specification at [0100]). Biomaterials further assessed HPTCs function by perfusing the cells with PTH, wherein the HPTCs showed significantly increased cAMP as compared to control, i.e. physiological function (page 8813, right col, first full paragraph).
Thus, Biomaterials anticipates claims 1 and 9.
Regarding claims 2-8, it is noted as set forth above at Claim Interpretation, these claims recite limitations directed to the manner by which the cultivated cells adhering to the substrate have been prepared by previous aggregation by further defining culture duration (claim 2), size and number of cells in previously aggregated cultivation (claims 3-4), and culture vessel conditions used to prepare the cultivated cells (claims 5-8), but these limitations do not further limit the structure of the claimed cells adhering to the cell support composite per se.
As such instant claims 2-8 do not further limit parent claim 1, and thus are included in the rejection of claim 1.
Conclusion
No claim is allowed. No claim is free of prior art.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to E. YVONNE PYLA whose telephone number is (571)270-7366. The examiner can normally be reached M-F 9am - 6pm.
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E. YVONNE PYLA
Primary Examiner
Art Unit 1633
/EVELYN Y PYLA/Primary Examiner, Art Unit 1633