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
The instant application is a national stage entry of PCT application PCT/KR2022/021169, filed 05/17/2024 under 35 USC 371. Acknowledgment is made of applicant's claim for foreign priority based on an application KR10-2022-0004739 filed in Republic of Korea on 01/12/2022.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
Both claims 1 and 5 recite the word “treating”. It is recommended to replace the word “treating” with “adding” in the claims to enhance the clarity.
Claim 1 recites “a microwell plate whose an inner circumferential surface has a curved surface inclined downward”, the word “an” needs to be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
Written Description
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 1-7 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.
From M.P.E.P. § 2163, the analysis of whether the specification complies with the written description requirement calls for the examiner to compare the scope of the claim with the scope of the description to determine whether applicant has demonstrated possession of the claimed invention from the standpoint of one of skill in the art at the time the application was filed. For inventions in emerging and unpredictable technologies, or for inventions characterized by factors not reasonably predictable which are known to one of ordinary skill in the art, more evidence is required to show possession. For claims drawn to a genus, possession may be shown (for example) through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. A “representative number of species” means that the species which are adequately described are representative of the entire genus, and is an inverse function of the skill and knowledge in the art. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to
reflect the variation within the genus. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. See, e.g., Eli Lilly. If a representative number of adequately described species are not disclosed for a genus, the claim to that genus must be rejected as lacking adequate written description under 35 U.S.C. 112, para. 1.
Instant claims are directed to a method for producing an inner ear organoid, comprising treating (adding) stem cells and a culture medium on a microwell plate whose inner circumferential surface has a curved surface inclined downward, and seeding the stem cells in each microwell; and culturing the stem cells seeded in each microwell. The claims cover a genus of stem cells from any source (i.e., any body parts such as bone marrow or adipose from human or non-human animals) with any differentiation potency (i.e., pluripotent, multipotent or unipotent), including but not limit to: embryonic stem cells (ESCs), induced pluripotent stem cells (iPSCs), somatic stem cells, mesenchymal stem cells (MSCs), hematopoietic stem cells, neural stem cells (NSCs), cardiac stem cells (CSCs), hepatoblasts, keratinocytes, and so on. The issue at hand is whether or not Applicant has possession of the full scope of the genus of stem cells for the method of producing an inner ear organoid by culturing these species of stem cells at the time the application was filed.
In the instant case, Applicant has failed to provide disclosure of species which are representative of the full scope of the genus of the claimed stem cells. No dependent claims have further limited the species of stem cells. The specification only provides one working example which using mouse embryonic stem cells (see parag 0072). The specification does not identify any other species of stem cells for producing an inner ear organoid, or any predictable result of producing an inner ear organoid with comparable structure and functionality using any other species of stem cells. As such, the instant specification does not provide a sufficient representative sampling of species of stem cells and the method of producing an inner ear organoid using the species of stem cells.
Furthermore, Applicant has failed to provide disclosure of relevant, identifying characteristics, such as the functional characteristics (being able to differentiate to inner ear organoid) coupled with known or disclosed structure of the stem cells. It is known different types of stem cells have different structures, express different cell markers, and exhibit different differentiation potency (i.e., pluripotent, multipotent or unipotent). These characteristics leads to various differentiation fate of the stem cells (i.e., be able to differentiate to specific tissues or not). In the instant case, Applicant has failed to establish a known structure- function relationship wherein the genus of structures of stem cell is capable of differentiate to an inner ear organoid with any predictability. Thus, one of ordinary skill in the art, in looking to the instant specification, would not be able to determine that Applicant was in possession of the invention, as claimed, at the time the invention was made.
Claim Rejections - 35 USC § 112(a)
Scope of Enablement
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for culturing mouse embryonic stem cells for producing an inner ear organoid by the claimed method, does not reasonably provide enablement for culturing ANY stem cells from ANY sources for producing an inner ear organoid by the claimed method. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
In determining whether Applicant’s claims are enabled, it must be found that one of skill in the art at the time of invention by applicant would not have had to perform “undue experimentation” to make and/or use the invention claimed. Such a determination is not a simple factual consideration, but is a conclusion reached by weighing at least eight factors as set forth in In re Wands, 858 F.2d at 737, 8 USPQ 1400, 2d at 1404. Such factors are: (1) The breadth of the laims; (2) The nature of the invention; (3) The state of the art; (4) The level of one of ordinary skill in the art; (5) The level of predictability in the art; (6) The amount of direction and guidance provided by Applicant; (7) The existence of working examples; and (8) The quantity of experimentation needed to make and/or use the invention.
The office has analyzed the specification in direct accordance to the factors outlines in Jn re Wands. MPEP 2164.04 states: “[W]hile the analysis and conclusion of a lack of enablement are based on factors discussed in MPEP 2164.01(a) and the evidence as whole, it is not necessary to discuss each factor in written enablement rejection.” These factors will be analyzed, in turn, to demonstrate that one of ordinary skill in the art would have had to perform “undue experimentation” to make and/or use the invention and therefore, applicant’s claims are not enabled.
Nature of the Invention:
The disclosure of the instant application is directed to a method for producing an inner ear organoid comprising treating (adding) stem cells and a culture medium on a microwell plate whose inner circumferential surface has a curved surface inclined downward, and seeding the stem cells in each microwell; and culturing the stem cells seeded in each microwell. The claims broadly embrace a genus of stem cells from any sources (i.e., any body parts such as bone marrow or adipose from human or non-human animals) with any differentiation potency (i.e., pluripotent, multipotent or unipotent), including but not limit to: embryonic stem cells (ESCs), induced pluripotent stem cells (iPSCs), somatic stem cells, mesenchymal stem cells (MSCs), hematopoietic stem cells, neural stem cells (NSCs), cardiac stem cells (CSCs), hepatoblasts, keratinocytes, and so on. Any and all types of stem cells from any sources are covered by the claims. The breadth of the claims is thus very broad.
Guidance of the Specification and The Existence of Working Examples:
The specification provides one working example using mouse embryonic stem cells (see parag 0072) for the method of producing an inner ear organoid. The specification does not disclose any other species of stem cells for the claimed method, or any predictable result of producing an inner ear organoid using any other species of stem cells.
State of the Art and Predictability of the Art and the Amount of Experimentation Necessary:
The state of the prior art with respect to differentiating stem cells into inner ear organoid are summarized by the references of van der Valk et al. (Cell Death Differ. 2021 Jan;28(1):24-34), Roccio et al. (Development. 2019 Sep 2;146(17):dev177188) and Avery (The Cardinal Edge. 2021, Vol. 1: Iss. 1, Article 23). Van der Valk et al. review progress toward in vitro inner ear modeling approaches (p25, left column), teach that different approaches of modeling the human inner ear in vitro have been demonstrated using human pluripotent stem cells (hPSCs, including embryonic stem cells (ESCs) derived from pre-implantation embryos and induced pluripotent stem cells (iPSCs)), adult tissue resident stem cells (adult inner ear progenitor cells), or fetal progenitor stem cells (p25, left column). Roccio et al. review how inner ear organoids have been developed and how they offer the opportunity to validate drug based therapies, gene-targeting approaches and cell replacement strategies (Abstract), teach the development of the cell culture methodologies from tissue-specific and pluripotent stem cells (PSCs) (p1, right column), the study of tissue-specific progenitors refers the in vitro expansion of neural stem cells (p4, left column), the PSCs include murine embryonic stem cells (mESCs) and murine induced pluripotent stem cells (mIPSCs) as well as human embryonic stem cells (hESCs) (p6, right column). Avery reviews the development of the otic placode and hair cells and the possibility of regenerating hair cells from stem cell populations (Abstract). Avery teaches the formation of hair cells has been approached using human induced pluripotent stem cells, mouse induced pluripotent and embryonic stems cells, and cochlea progenitor cells (p1, right column). None of the prior arts demonstrate that ANY stem cells (i.e., cardiac stem cells, hepatoblasts or Keratinocytes) can be used for producing an inner ear organoid. There was no known link between, at least these types of stem cells, and the producing of an inner ear organoid. None of the known effects of these types of stem cells would have been expected to be able to produce an inner ear organoid which having a comparable structure and functionality. Absent specific guidance, one skilled in the art before the effective filing date of the claimed invention would have to perform undue experimentation to determine how to culture these species of stem cells to produce an inner ear organoid without reasonable expectation of success.
In conclusion, in view of breadth of the claims and absence of a strong showing by Applicant, in the way of specific guidance and direction, and/or working examples demonstrating the same, such invention as claimed by Applicant is not enabled commensurate with full scope. An artisan of skill would have required undue experimentation to practice the invention with a reasonable expectation of success.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koehler et al. (Nat Protoc. 2014;9(6):1229-44, as cited in IDS).
Koehler et al. teach a protocol describes a culture system in which inner-ear sensory tissue is produced from mouse embryonic stem (ES) cells under chemically defined conditions (Abstract).
Regarding claim 1, it is noted the preamble “for producing an inner ear organoid” is the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation to be given patentable weight and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See MPEP 2111.02. Koehler et al. teach a protocol describes a culture system in which inner-ear sensory tissue is produced from mouse embryonic stem (ES) cells under chemically defined conditions (Abstract). In their protocol, mouse ES cells are aggregated in 96-well plates in medium containing extracellular matrix proteins to promote epithelialization (Abstract). Figure 1 (see p1230) shows inner ear induction protocol. The in vitro culture method comprises dissociate ES cells and distribute on 96-well plate in ectodermal differentiation medium on day 0. This teaching reads on a method comprising treating (adding) stem cells and a culture medium on a microwell plate (96-well plate), seeding the stem cells in each microwell, and culturing the stem cells seeded in each microwell. Koehler et al. teach the 96-well plate is U-bottom 96-well plates (p1235, left column), reads on the inner circumferential surface the microwell plate has a curved surface inclined downward. Therefore Koehler et al. anticipate instant claim.
Regarding claim 3, following the discussion above, Koehler et al. teach the 96-well plate is U-bottom 96-well plates (p1235, left column), wherein the “U” shape bottom is the shape has a first curved surface inclined downward and a second curved surface inclined downward which is connected to the first curved surface, as recited in instant claim.
Regarding claim 5, following the discussion above, Koehler et al. teach the in vitro culture method (see i.e., figure 1) comprises adding Matrigel on day 1 of the culture for the purpose of basement membrane formation, and adding bone morphogenetic protein 4 (BMP4) and SB-431542 on day 3 of culture for non-neural ectoderm (NNE) induction (p1230, figure 1).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Koehler et al. (Nat Protoc. 2014;9(6):1229-44, as cited in IDS).
Koehler et al. teach a protocol describes a culture system in which inner-ear sensory tissue is produced from mouse embryonic stem (ES) cells under chemically defined conditions (Abstract).
Regarding claim 1, it is noted the preamble “for producing an inner ear organoid” is the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation to be given patentable weight and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See MPEP 2111.02. Koehler et al. teach a protocol describes a culture system in which inner-ear sensory tissue is produced from mouse embryonic stem (ES) cells under chemically defined conditions (Abstract). In their protocol, mouse ES cells are aggregated in 96-well plates in medium containing extracellular matrix proteins to promote epithelialization (Abstract). Figure 1 (see p1230) shows inner ear induction protocol. The in vitro culture method comprises dissociate ES cells and distribute on 96-well plate in ectodermal differentiation medium on day 0. This teaching reads on a method comprising treating (adding) stem cells in a culture medium on a microwell plate (96-well plate), seeding the stem cells in each microwell, and culturing the stem cells seeded in each microwell. Koehler et al. teach the 96-well plate is U-bottom 96-well plates (p1235, left column), reads on the inner circumferential surface the microwell plate has a curved surface inclined downward.
Regarding claim 3, following the discussion above, Koehler et al. teach the 96-well plate is U-bottom 96-well plates (p1235, left column), wherein the “U” shape bottom is the shape has a first curved surface inclined downward and a second curved surface inclined downward which is connected to the first curved surface, as recited in instant claim.
Regarding claim 5, following the discussion above, Koehler et al. teach the in vitro culture method (see i.e., figure 1) comprises adding Matrigel on day 1 of the culture for the purpose of basement membrane formation, and adding bone morphogenetic protein 4 (BMP4) and SB-431542 on day 3 of culture for non-neural ectoderm (NNE) induction (p1230, figure 1).
Regarding claims 6 and 7, following the discussion above, Koehler et al. teach the in vitro culture method (see i.e., figure 1) comprises adding bone morphogenetic protein 4 (BMP4) and SB-431542 on day 3 of culture for non-neural ectoderm (NNE) induction (p1230, figure 1). Koehler et al. also teach adding fibroblast growth factor 2 (FGF2) and LDN193189 to non-neural ectoderm for the preplacodal ectoderm (ppe) induction (p1230, figure 1). Koehler et al. do not specifically teach isolating the non-neural ectoderm from the microwells after the NNE induction. However, Koehler et al. teach aggregates can be fixed at any point (see p1239, step 40) which requires isolating the cell aggregates (i.e., the non-neural ectoderm) from the microwells (see step 40(a)(i)).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Koehler et al.’s method of producing inner ear organoid from mouse embryonic stem (ES) cells under chemically defined conditions in a 96-well plate, and isolate the non-neural ectoderm from the microwell (i.e., in order to transfer to a different microwell with different size) and then further culture (adding FGF2 and LDN193189) the isolated non-neural ectoderm for preplacodal ectoderm (ppe) induction. The only difference between instant claim and Koehler et al.’s method is instant claim isolate the non-neural ectoderm from the microwell after differentiating the stem cells into non-neural ectoderm. Given that Koehler et al. teach aggregates (i.e., the non-neural ectoderm) can be isolated (i.e., fox fixing) from the microwells at any timepoints (see p1239, step 40), one of ordinary skill in the art would have substituted Koehler et al.’s method of producing inner ear organoid in a 96-well plate, and isolating the non-neural ectoderm from the microwells to a different culture plate (i.e., a microwell with different size) depending on their research interest or as a way of optimizing the current method. This simple substitution of one known element (Koehler et al.’s method of producing inner ear organoid with an extra step of isolating the non-neural ectoderm from the microwells) for another known element (Koehler et al.’s method of producing inner ear organoid) is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 — 97 (2007) (see MPEP § 2143, B.).
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Koehler et al. (Nat Protoc. 2014;9(6):1229-44, as cited in IDS) in view of Lee et al. (Biomaterials. 2021 Feb;269:120529) and Sumi et al. (Regen Ther. 2017 Sep 11;7:52-60), as evidenced by Jaquith (Well Plate Characteristics, published in 2014).
The teaching of Koehler et al. is set forth above.
Regarding claims 2 and 4, Koehler et al. teach using 96-well plate for stem cell culture, and seeding around 3 x103 cells per well of 96-well plate (see p1238, steps 18-19). A 96-well plate appears to have a width / diameter of around 6.94 mm, as evidenced by Jaquith. Koehler et al. do not teach using a microwell has a width of 100 to 1000 µm (as recited in instant claim 2) or 450-500 µm, as well as seeding 1.5x103 to 4.5x103 stem cells in the microwell with such width (as recited in instant claim 4). However, this was disclosed by Lee et al. and Sumi et al. at the time of instant invention.
Lee et al. produced uniformly-sized HLC 3D spheroids from differentiating hPSCs using a microwell culture platform and tested their feasibility for the use in an imaging-based toxicity assay (p2, left column).
Sumi et al. invented a novel multiple-funnels culture insert that allows secure sphere maintenance, scaled-up production, and easy harvest of cell spheres (p53, left column).
Regarding claim 2, Lee et al. designed microwell platforms with different well sizes (300, 400, 500, and 600 μm in diameter) for producing uniform 3D spheroids from differentiating hPSCs (see p5, right column, also see figure 1), which is within the range of a width of 100 to 1000 µm.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Koehler et al.’s method of producing inner ear organoid from mouse embryonic stem (ES) cells under chemically defined conditions in a 96-well plate, and use a microplate with a width / diameter of around 500 µm, as taught by Lee et al.. The skilled artisan would have been motivated to use a microplate with a width / diameter of around 500 µm for the method since Lee et al. teach a single well of the microwell device had a diameter of 500 μm may provide the optimal volume to facilitate cell-cell contact, generating compact spheroids from a small number of cells in a short period of time (p10, right column). There would be a reasonable expectation of success of using a microwell device had a diameter of 500 μm since Lee et al. teach the microwell device (see figure 1, and p2, right column).
Regarding claim 4, Lee et al. teach seeding 600 viable cells in each 500 μm-diameter well of the microwell device (see p6, right column). The cell number seeded is lower than 1.5x103 to 4.5x103 as recited in instant claim. However, it is not inventive to find optimal workable ranges by routine experimentation. See Jn re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Moreover, Sumi et al. teach micro-funnel culture system (see p54, figure), which has a bottom width of 0.5 mm (500 μm), and seeded three different densities of the cell suspensions (500, 1000, and 1500 mouse ES cells) into each micro-funnel to demonstrate whether the sphere size could be controlled by changing the number of cells (see p53, right column). Sumi et al. teach different cell densities yielded different sphere sizes, and a high seeding cell density resulted in a large cell sphere (p55, left column). Herein the 1500 mouse ES cells are 1.5x103 stem cells.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Koehler et al.’s method of producing inner ear organoid from mouse embryonic stem (ES) cells under chemically defined conditions in a 96-well plate, and use a microplate with a width / diameter of around 500 µm, as taught by Lee et al., and adjust the cell numbers seeds in the microwell (i.e., 1.5x103 cells) as needed as taught by Lee et al. and Sumi et al.. The only difference between instant claim and Koehler et al.’s method is instant claim uses a microwell with a different width (therefore accommodate different amount of cells). Given that Lee et al. and Sumi et al. use different seeding cell density, and Sumi et al. teach that different cell densities yielded different sphere sizes (p55, left column), one of ordinary skill in the art would have substituted Koehler et al.’s 96-well plate, and use microwells with a width of around 500 μm and seeding stem cells with a density (i.e., 1.5x103 cells) depending on their research interest (i.e., requirement of cell sphere sizes). This simple substitution of one known element (producing inner ear organoid in a microwell with a width of around 500 μm) for another known element (producing inner ear organoid in a 96-well plate) is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 — 97 (2007) (see MPEP § 2143, B.).
Conclusion
No claims are allowed.
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/Q.G./Examiner, Art Unit 1633
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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