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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 January 2026 has been entered.
Election/Restrictions
Claims 12-14, 16, and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 29 January 2025.
Claim Status
Claims 12-14, 16, and 18-20 are withdrawn, claims 1, 12, 16, 18-21, and 23 were amended, claim 6, 15, and 17 were previously canceled, and claim 22 was newly canceled.
Claims 1-5, 7-11, 21, and 23 have been considered on their merits.
Withdrawn Rejections
The rejection under 35 U.S.C. 112(a) of claim 22 has been withdrawn as the claim was canceled.
The rejection under 35 USC 103 has been withdrawn due to Applicant’s amendments to the claims. However, upon further consideration, a new ground of rejection has been set forth below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 8-10, 21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Gagliardi et al. (Cytotherapy, published December 2019, IDS ref., of record) in view of Gojo et al. (WO2022/243906, IDS ref., of record) and Ron-Harel et al. (Cell Metab. 24(1), published 12 July 2016) as evidenced by Chen et al. (BMC Immunology, published 2020, of record).
This is a new rejection, necessitated by applicant’s amendments to the claims. A response to applicant’s traversal follows the rejection below.
Regarding claims 1, 3, 8, and 21, Gagliardi et al. teach a method for isolating, activating, and expanding T cells from peripheral blood mononuclear cells (PBMCs) (claim 3) (p. 1247, Starting material). The T cells from PBMCs read as primary T cells. Gagliardi et al. teach the cells were counted and resuspended at 1-2 x 106 cells/mL in medium with anti-CD3 antibody and anti-CD28 antibody (claim 8) (abstract, p. 1247, Culture imitation and T-cell activation). Gagliardi et al. teach the cells were cultured in suspension (claim 1a) for up to three weeks to determine count and viability measurements and the figures show, by day ten, all cells cultured via G-Rex exceeded a ten-fold increase (Fig 2C and 2D) (claim 1c).
Gagliardi et al. teach expansion of genetically modified cells, however, it would have been obvious to one of ordinary skill in the art to utilize non-genetically modified cells with a reasonable expectation of success because while Gagliardi et al. teach transduction of the T-cells following activation, these transduction modifications, iRC9 and PSCA CAR are known to enhance cell therapy by overcoming immunosuppressive microenvironment of solid tumors and to create a targeted immunotherapy for treating PSCA-positive solid tumors, these modifications are not known to affect mitochondria production, absent evidence to the contrary. One would be motivated to utilize non-genetically modified cells because it would save steps not to modify said cells, which would include saving time and the expense of such steps (claims 1b and 1c).
Therefore, the steps of Gagliardi et al. read as expanding said activated primary human T cells for a time sufficient to produce an expanded population of human T cells comprising at least 10 times the number of primary human T cells provided and said activating occurs in suspension without said primary human T cells adhered to a wall of a container holding said suspension (claim 21).
Gagliardi et al. is silent to isolating mitochondria from T cells.
However, Gojo et al. teach exemplary sources of mitochondria for use in the extraction methods provided include isolated exogenous mitochondria from a lymphoid cell (para. [0071]). Gojo et al. teach a method of isolating exogenous mitochondria for mitochondrial transfer to human primary T cells (para. [00164]). Gojo et al. teach the mitochondria was isolated from the immortalized human uterine endometrial gland-derived mesenchymal cell lines, EPC100 (para. [00164]). Gojo et al. teach the mitochondria were isolated in the same method as that of B6 murine embryonic fibroblasts (MEF), these cells were ruptured by ten strokes of a 27-gauge needle on ice to extract the mitochondria (para. [00162]). Gojo et al. teach the homogenate was centrifuged at 400 x g to remove unbroken cells. The mitochondria were harvested (mitochondria extract) by centrifugation at 6000 x g and resuspended in HB (para. [00162]).
Gojo et al. identifies lymphocytes as a source for mitochondria extract, however, does not specify a type of lymphocyte, although it is well known in the art T cells are a major type of lymphocyte. Additionally, Ron-Harel et al. teach activated T cells contain higher numbers of mitochondria than naïve cells (p. 2, Introduction). Ron-Harel et al. teach 9 and 24 hour post-activation revealed a dramatic increase in mitochondrial mass (Fig. 1H).
It would have been obvious to one of ordinary skill in the art to use the cell activation and expansion method of Gagliardi et al. with the mitochondria isolation (extraction) method of Gojo et al. in view of Ron-Harel et al. with a reasonable expectation of success because Gojo et al. teach mitochondrial isolation may be accomplished by any of a number of well-known techniques (para. [0074]). One would be motivated to activate and expand the T cells in the method of Gagliardi et al. with the mitochondria extraction method of Gojo et al. in view of Ron-Harel et al. because Gojo et al. teach exemplary sources of mitochondria for use in the extraction methods provided include isolated exogenous mitochondria from a lymphoid cell and Ron-Harel et al. teach activated T cells have an increased mitochondrial mass. Additionally, Gagliardi et al. teach a streamlined efficient method for activating and expanding T cells (claim 1d).
Regarding claim 2, Gagliardi et al. teach utilized Lymphoprep medium for the isolation of cells (p. 1247, Starting material). However, Gagliardi et al. is silent to the percent of primary human T cells isolated from the PBMCs. Chen et al. disclose the quantity of T cells isolated from PBMCs following Cell Preparation Tubes (CPT) with a relative density of 1.077 g/mL and Lymphoprep (LP) medium centrifugation was 96.07% as determined by FSC-A (p. 2, 1st column and Fig. 4A). Chen et al. disclose the performance of CPT and LP tube methods to isolate PBMCs from peripheral blood was evaluated for cell recovery, viability, frequency of recovered cell subsets, and functional assessment of T cell cytokine production and found no significant differences between CPT or LP tube methods (p. 9, Discussion). Therefore, Gagliardi et al. as evidenced by Chen et al. teach the population of isolated primary human T cells was at least 90% T cells.
Regarding claims 4, 5, and 9, Gagliardi et al. teach the activated primary T cells were cultured in gas-permeable rapid expansion (G-Rex) bioreactors (claim 9) which resulted in 27-fold expansion in 11 days from the time of activation (abstract and p. 1249, Results). Eleven days falls within the range of the expansion time limitation of between 7 and 14 days (claim 4) and 27-fold (claim 5) is greater than 20 times the number of provided primary human T cells.
Regarding claim 10, Gagliardi et al. teach a method for isolating, activating, and expanding T cells from PBMCs and Gojo et al. teach a method for mitochondria isolation from human cells by first harvesting the cells from culture dishes with homogenization buffer (HB) (lysis buffer) (para. [00162]). Gojo et al. teach the cells were ruptured by ten strokes of a 27-gauge needle (needle shearing) to extract the mitochondria (para. [00162]). Gojo et al. teach the mitochondria were harvested (mitochondria extract) by centrifugation at 6000 x g and resuspended in HB (para. [00162]). Therefore, Gagliardi et al. in view of Gojo et al. in view of Ron-Harel et al. teach the method of claim 10.
Regarding claim 23, directed to wherein said isolated mitochondria comprise at least 110 micrograms of protein for every 1 million primary human T cells provided.
Gojo et al. teach in some embodiments the amount of isolated exogenous mitochondria incubated with lymphoid cells is greater than 100 µg per 1 x 106 lymphoid cells (which include T cells) (para. [0070]).
Gagliardi et al. in view of Gojo et al. and Ron-Harel et al. are silent to the isolated mitochondria comprising at least 110 µg per 1 x 106 human T cells.
However, it would have been obvious to one of ordinary skill in the art to expect the extraction method of Gojo et al. with the activated primary T cells of Gagliardi et al. to arrive at the same results as the claimed method with a reasonable expectation of success because Gagliardi et al. in view of Gojo et al. teach all the method steps a-c, as indicated in the rejection of claim 1 above. Therefore, since all method steps have been made obvious by Gagliardi et al. in view of Gojo et al. and Ron-Harel et al., the resulting isolated mitochondria from the expanded culture would necessarily comprise 110 µg of protein per 1 x 106 cells.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention.
Response to Traversal
Applicant's arguments filed 01 January 2026 have been fully considered but they are not persuasive.
On page 8 of the response, Applicant states an agreement was reached pertaining to the obviousness rejection of record. For clarity of the record, no agreement was reached to remove any rejections. In the interview summary, posted 04 February 2026, during the interview the examiner stated the amendment to the claims appeared to overcome the rejection but further search and consideration was required.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
At page 8-9, section IA of the response, Applicant states Gagliardi does not expand the primary cells activated and thus fails to expand “said activated” cells as required by the claims. However, in the new rejection set forth above, Gagliardi in view of Gojo teach this limitation.
At page 9, section IB of the response, Applicant asserts there is a lack of rationale for selections in the obviousness rejection. This is not persuasive because, all of the rejections of record utilize rationale, 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, see MPEP § 2143 (I). Additionally, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., (1) Selecting primary human T cells; (2) Selecting to activate said T cells; (3) Selecting to expand said T cells; (4) Selecting to expand the cells at least 10 times; and (5) Selecting to isolate mitochondria from a population of T cells prepared after selections (1)-(4).) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). There are no mentions of any limitations where selecting are part of the claims. Either the art or combination thereof address all of the limitations of the claims individually or in combination with accompanying rationale.
At page 10, section IB of the response, Applicant asserts nothing of record explains why a POSA would have proceeded from the teachings of Gagliardi to search for and select Gojo, which does not teach extracting mitochondria from a T cell of any kind. This is not persuasive because as outlined in the rejection above, Gagliardi teach a streamlined method for activating and expanding T cells while Gojo teach T cells are a known source for extracting mitochondria.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
At pages 10-11, section IC of the response, Applicant asserts a POSA would not be motivated to combine Gagliardi and Gojo with a reasonable expectation of successfully arriving at the claimed invention. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant argues Gojo does not teach isolating mitochondria from T cells, however, this is not persuasive because at paragraph [0071] lines 1 and 2 of Gojo, teach the isolated exogenous mitochondria of the present disclosure can be obtained from various types of cells that have a healthy and functional mitochondria. In the same paragraph, the last line states in some embodiments the isolated exogenous mitochondria are obtained from a lymphoid cell, of which T cells are known to be a major cell type. While Gojo et al. does teach mitochondrial transfer to T cells, the teachings of Gojo et al. cited in the rejections above were focused on the methods of extracting mitochondria. Therefore, the teachings of Gojo suggest T cells would be appropriate sources of mitochondrial extract.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
At page 12, section ID of the response, Applicant asserts unexpected success of the claimed methods. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the method produced yields even as high as 220 ug protein per 1 million primary T cells) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Even if these limitations were included in the claims, the method steps are taught and/or suggested by the prior art, then the same steps would be expected to result in a similar outcome and therefore, would necessarily result in the amount of protein per 1 million cells, thus the mitochondria of the primary T cells taught by Gagliardi were extracted in the method of Gojo, the combined teachings would necessarily result in the same outcome.
Regarding the assertion the unexpected nature of the results presented in the subject application have not been challenged in any of the issued Office Actions, see the previous Office Action, mailed 30 September 2025, Response to Traversal at page 10.
At page 13, section II of the response, Applicant asserts 90% T cells as recited in claim 2 is not taught in the cited art and there is no connection between Gagliardi and Chen. These arguments are not persuasive because Chen was included as an evidentiary reference because Gagliardi did not disclose the specific quantity of T cells isolated from the PBMCs, yet Gagliardi and Chen both disclose methods for isolating PBMCs utilizing the Lymphoprep medium for the isolation of cells. Chen disclose the quantity of T cells isolated from PBMCs following Cell Preparation Tubes (CPT) with a relative density of 1.077 g/mL and Lymphoprep (LP) medium centrifugation was 96.07% as determined by FSC-A (p. 2, 1st column and Fig. 4A), as presented in the previous office action and reiterated in the present office action. Regarding Applicant’s assertion Chen’s figure is related to functionality, not cell quantity, the description of Fig. 4a states “Gating to identify CD4+ and CD8+ T cells (upper)” and FSC-A is utilized to isolate single, viable cells, and to differentiate cell types in heterogeneous cultures, not determine functionality.
At pages 14-15, section IIIA-C of the response, Applicant asserts independent claim 23 recites additional non-obvious features, specifically, A) flawed analysis, B) claim feature missing from the combined prior art, and C) unexpected feature is recited in the claims. The limitations of the claim are directed to intended results. The court noted (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’” Id. While the claim does not recite a “whereby” clause, the intended results of a process exist and are thereby not given patentable weight. As indicated in the rejection of claim 23 above, it would have been obvious to one of ordinary skill in the art to expect the extraction method of Gojo et al. with the activated primary T cells of Gagliardi et al. to arrive at the same results as the claimed method with a reasonable expectation of success because Gagliardi et al. in view of Gojo et al. teach all the method steps a-c, as indicated in the rejection of claim 1 above. Therefore, since all method steps have been made obvious by Gagliardi et al. in view of Gojo et al. and Ron-Harel et al., the resulting isolated mitochondria from the expanded culture would necessarily comprise 110 µg of protein per 1 x 106 cells.
Regarding the assertion the unexpected nature of the results presented in the subject application have not been challenged in any of the issued Office Actions, see the previous Office Action, mailed 30 September 2025, Response to Traversal at page 10.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Gagliardi et al. (Cytotherapy, published December 2019, IDS ref., of record) in view of Gojo et al. (WO2022/243906, IDS ref., of record) and Ron-Harel et al. (Cell Metab. 24(1), published 12 July 2016) as evidenced by Chen et al. (BMC Immunology, published 2020, of record) as applied to claims 1-5, 8-10, 21, and 23 above, and further in view of Ledderose et al. (The Journal of Biological Chemistry, 2014, of record).
This is a new rejection, necessitated by applicant’s amendments to the claims. A response to applicant’s traversal will not follow the reiterated rejection because there were no arguments directed to the additional reference and all arguments pertaining to Gagliardi, Gojo, and Chen were addressed above.
Gagliardi et al. in view of Gojo et al. and Ron-Harel et al. are silent to activating the primary human T cells with an anti-CD3 antibody immobilized on beads.
However, Ledderose et al. teach beads coated with goat anti-mouse IgG antibodies were labeled with mouse anti-human CD3 and anti-human CD28 antibodies and used for T cell stimulation (pp. 25936-25937, Experimental Procedures). Ledderose et al. teach PBMCs were isolated from the heparinized venous blood of healthy volunteers, followed by CD4+ T cell purification with anti-CD4 magnetic beads. (p. 25937, Experimental Procedures).
Therefore, it would have been obvious to one of ordinary skill in the art to use the anti-CD3 antibody coated beads of Ledderose et al. to stimulate the T cells of Gagliardi et al. with a reasonable expectation of success because both references teach stimulating T cells isolated from PBMCs using the anti-CD3 antibody. One would have been motivated to use the beads of Ledderose et al. to stimulate the T cells because this is a well-known technique in the art.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Gagliardi et al. (Cytotherapy, published December 2019, IDS ref., of record) in view of Gojo et al. (WO2022/243906, IDS ref., of record) and Ron-Harel et al. (Cell Metab. 24(1), published 12 July 2016) as evidenced by Chen et al. (BMC Immunology, published 2020, of record) as applied to claims 1-5, 8-10, 21, and 23 above, and further in view of ThermoScientific (Pub. No. MAN0011504 Rev. B.0, published 2017) and Mannik et al. (J Vis Exp. 2014).
This is a new rejection, necessitated by applicant’s amendments to the claims. A response to applicant’s traversal will not follow the reiterated rejection because there were no arguments directed to the additional reference and all arguments pertaining to Gagliardi, Gojo, and Chen were addressed above.
Regarding claim 11, Gagliardi et al. in view of Gojo et al. and Ron-Harel et al. do not teach the specific centrifugation forces to remove cellular debris and to produce a mitochondrial precipitate.
However, ThermoScientific teach a method for mitochondria preparation wherein cells are homogenized, followed by centrifuge at 700 x g, then the supernatant is centrifuged at 12,000 x g to isolate mitochondria (Fig. 1, and Option B: Isolation of Mitochondria using Dounce Homogenization; steps 3-12). It is understood that the 700 x g spin of ThermoScientific is to collect supernatant comprising mitochondria and remove the cell debris after cell lysis.
It would have been obvious to one of ordinary skill in the art to use the centrifugal forces of ThermoScientific in the method of Gagliardi et al. in view of Gojo et al. and Ron-Harel et al. with a reasonable expectation of success. One would have been motivated to use the centrifugal forces taught by ThermoScientific for the method of Gojo et al. because the method of isolating mitochondria from a supernatant of a cell homogenate at the given centrifugal force is well known in the art for isolating mitochondria.
ThermoScientific do not teach the step of removing debris using 3000 x g spin. However, Mannik et al. teach a method for isolating lipid droplets from placental villous cells, following cell homogenization the cell lysate is centrifuged at 3,000 x g to remove unbroken cells, cellular debris, and nuclei; the supernatant is then collected and centrifuged to remove mitochondria (p. 4, Section 2 Homogenizing placental villous cells, steps 5 and 6). It would have been obvious to a person skilled in the art to centrifuge the cell homogenate at 3000 x g to remove cell debris in the method of Gojo et al. with a reasonable expectation of success. One would have been motivated to use the centrifugal force of Mannik et al. in the method of Gojo et al. because the centrifugal forces used by Mannik et al. are one of many acceptable speeds found in the art known to remove cellular debris from a cell lysate.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention.
Conclusion
No claims are allowed.
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/N.A.H./Examiner, Art Unit 1631
/LAURA SCHUBERG/Primary Examiner, Art Unit 1631