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 .
Claim Status
Receipt is acknowledged of the preliminary amendments submitted on 17 September, 2024. Claims 3-12 are amended. Claims 13-55 are cancelled. Claims 56-61 are newly added.
Therefore, claims 1-12, and 56-61 are pending and are the subject of the present Official Action.
Priority
The present application is a 35 U.S.C. 371 national stage filing of International Application No. PCT/US2023/064645, filed 17 March, 2023, which claims priority to United States Provisional Application No. 63/321,373, filed 18 March, 2022. Acknowledgment is made of applicant’s claim for priority.
The earliest possible priority for the instant application is 18 March, 2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 17 September, 2024, 24 December, 2024, and 02 February, 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 submitted on 17 September, 2024 are accepted by the Examiner.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim is missing a transitional clause between “the primary well,” and “the primary well” in the fourth line of the claim. The claim should instead read “the primary well, wherein the primary well is separated…”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the recitation of the term “initially” in the third and seventh lines of the claim are inherent. The claim sets forth the step of incubating in a liquid media without mixing as the immediately following step in each case. Therefore, there is no need to say “initially”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the term “target cells” in the twelfth line of the claim is missing a definite article (e.g. “the”). Appropriate correction is required.
Claim Interpretation
Claim 1 recites “initially incubating in a liquid media without mixing to allow the target cells to adhere to the bottom of the primary well” and “initially incubating in a liquid media without mixing to allow the feeder cells to adhere to the bottom of the secondary well”. This language creates an ambiguity in the claims as a whole with regard to whether the cells are required to be adhered to the bottom of their respective wells. Were this language to be interpreted as requiring the cells to be adhered to the bottom of their respective wells, this would present a conflict with claims 10 and 60 which depend from claim 1. Claims 10 and 60 require the target cells to be embedded in a hydrogel dome disposed in the primary well. Thus, for the purpose of compact prosecution, claim 1 is interpreted as requiring only incubation in liquid media without mixing with an intended result of allowing the cells to adhere but not requiring such an outcome. If Applicant would like to require the cells to be adhered to the bottom of their respective wells, they may amend the claims to do so.
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.
Claims 1-12, and 56-61 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 “initially incubating in a liquid media without mixing to allow the target cells” and “initially incubating in a liquid media without mixing to allow the feeder cells” in the third and seventh lines of the claim. This language is unclear because the claim does not state what is being initially incubated. It is unclear whether the claim requires the target cells to be initially incubated in the first recitation with the feeder cells being initially incubated in the second recitation or whether the claim requires initially incubating just the target cells without mixing in both steps. Accordingly, a person having ordinary skill in the art would not be apprised of the scope of the patent protection sought by claim 1. This rejection can be overcome by reciting “incubating the target cells in a liquid media” and “incubating the feeder cells in a liquid media” in their respective positions within the claim. Claims 2-12, and 56-61 are further rejected for their dependency on a rejected base claim.
Claim 1 is further rejected for the recitation of “settling the detached target cells in the primary well away from the open microchannel” in line 13th line of the claim. It is unclear what active steps are required to “settle” the cells and it is unclear how one “settles” the cells away from the open microchannel. Once detached, the cells are in a suspension and fluid dynamics coupled with gravity would appear to be the main determinants of where the cells “settle” depending on what instrumentation is used and how such instrumentation is used to deposit a solution of cells back into a well of a microplate. Accordingly, a person having ordinary skill in the art would not be apprised of the scope of the patent protection sought by claim 1. Claims 2-12, and 56-61 are further rejected for their dependency on a rejected base claim.
Claim 5 recites the limitation “the initial incubation period” in the second and third lines of the claim. There is insufficient antecedent basis for this limitation in the claim. There are two initial incubation periods recited in claim 1 and, thus, multiple antecedents for “the initial incubation period” as recited in claim 5. Thus, a person having ordinary skill in the art would not be apprised of the scope of the patent protections sought by claim 5.
Claim 6 recites the limitation "the target cell" in the second line of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 6 also recites “the target cells” implying that the choice to singularize “the target cell” was deliberate. Claim 6 depends from claim 1 which only recites “the target cells”. Therefore, there is insufficient antecedent basis for “the target cell”. Even further, there are multiple cells recited in claim 1 and it is unclear whether Applicant intends claim 6 to refer to all or one of the cells recited. This rejection may be overcome by amending the claim to instead recite “the target cells”.
Claims 10 and 60 recite “wherein the target cells are embedded in a hydrogel dome disposed in the primary well” without reciting when in the method of claim 1 this step is intended to occur. Thus, the metes and bounds of claims 10 and 60 cannot be determined and a person having ordinary skill in the art would not be apprised of the scope of the patent protection sought by claims 10 and 60.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10 and 60 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 10 and 60 require the target cells to be embedded in a hydrogel dome disposed in the primary well whereas claim 1 from which claims 10 and 60 depend requires the target cells to be allowed to adhere to the bottom of the primary well. As noted above in “claim interpretation,” in the claims may properly be read to require the cells to be adhered to the bottom of their respective wells which would place claims 10 and 60 in conflict with claim 1 from which they depend. Thus, claims 10 and 60 are rejected because claims 10 and 60 require the target cells to be disposed in a way that is mutually exclusive of the way they may be required to be disposed in independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
As noted above in “claim interpretation,” claim 1 is interpreted as requiring only incubation in liquid media without mixing with an intended result of allowing the cells to adhere but not requiring such an outcome.
Claims 1-8, 10-12, and 56-61 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0063081, published: 27 February, 2020, hereinafter “Vulto” in view of Clinton et al. Current protocols in cell biology 82.1 (2019): e66, hereinafter “Clinton”.
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Regarding claim 1, Vulto discloses a method for culturing cells or cell aggregates (which can be organoids themselves, see [0191]) to produce organoids comprising introducing a droplet of a gel precursor comprising cells or cell aggregates into an “organoid compartment” of a device, allowing the droplet to be confined by the capillary pressure barrier of the device, allowing the droplet of gel to cure, loading a microfluidic channel with a fluid, and culturing the cells or cell aggregates in the cured gel (Vulto, [0018]-[0023]; [0166]). The “organoid compartment” of Vulto (shown as 103 in the photo at right) is equivalent to the “primary well” of claim 1. In addition, the wells on either side of the “organoid compartment” of Vulto (shown
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as 101 in the photo at right) are equivalent to the “secondary well” of claim 1 and are connected to the organoid compartment by a microchannel. Vulto discloses that the capillary connecting the compartments operates as a “capillary pressure barrier” which is equivalent to the “removable barrier” of claim 1 (Vulto, [0072]; see also Figure 21 reproduced at right for Applicant’s convenience). Vulto discloses that the fluid added to the microfluidic channel can comprise endothelial cells to promote vascularization within the microfluidic channel and of the gel comprising cells (Vulto, [0176]-[0177]). Neither the droplet containing cells nor the fluid containing endothelial cells are taught by Vulto to be mixed following introduction. Once the fluid comprising endothelial cells of Vulto is added, the capillary pressure barrier is removed and the device is rocked to induce flow between the compartments (Vulto, FIG. 22, FIG. 24, [0239]).
Vulto does not disclose detaching the target cells from the primary well and settling the detached target cells in the primary well away from the open microchannel.
Clinton teaches protocols for the 3-dimmensional culture of human primary tissue-derived organoids (Clinton, “Introduction”, first paragraph). Clinton specifically exemplifies a cyclical protocol which relies on droplets of gel with cells suspended within (the same starting suspension as Vulto) (Clinton, Figure 1). Once organoids are obtained in the protocol, Clinton teaches to collect the organoids, mechanically dissociate them, enzymatically dissociate them, then resuspend the obtained cells back into gel droplets to obtain more organoids (Clinton, Figure 1). Thus, Clinton teaches to detach the target cells from the well in which they are grown as part of a cyclic method which allows for the production of more target cells in three-dimensional culture. Clinton teaches this protocol as a standardized approach for routine handling of organoids that can be applied to both normal and diseased tissue from various tissue types (Clinton, page 2, second paragraph). Although Clinton teaches to transfer detached domes to an empty conical tube, a person having ordinary skill in the art would understand that the steps could be performed in the well where the organoids were grown and that, in doing so, the step of detaching would merely be performing the same function as if it were done with transfer to a new tube. It is not clear from the instant disclosure that allowing the cells to settle in the primary well is anything other than an arbitrary design choice which does not affect the functioning of the method claimed.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have detached the cells suspended in gel droplets of Vulto according to the methods of Clinton and to have allowed those cells to settle in the organoid compartment of Vulto (“primary well”) to have arrived at the invention claimed in instant claim 1 with a reasonable expectation of success because Clinton teaches to detach organoids grown in gel domes as part of a larger standardized protocol for routine handling of organoids that can be applied to both normal and diseased tissue from various tissue types. With regard to allowing the primary cells to settle in the primary well, a person having ordinary skill in the art would have understood that the cells could have been allowed to settle in the primary well as an obvious matter of design choice which would not modify the operation of the method. There would have been a reasonable expectation of success in following the protocol of Clinton, following the development of organoids in the method of Vulto insofar as both references teach methods for the three-dimensional culture of organoids and Clinton teaches standardized methods for the handling of organoids grown in gel droplets which are the same cells or organoids in droplets obtained in the method of Vulto.
Regarding claim 2, Clinton teaches to mix the organoids using a pipette and to wash them with cold basal medium to disrupt the domes (Clinton, pages 8-9, “ECM removal and washing”). Clinton also teaches to collect the washed organoids/cells with a pipet which is a liquid handler (Clinton, page 11, “Seeding organoids”).
Regarding claim 3, Vulto teaches to load the microfluid channel with a fluid containing cells immediately after the gel is set (Vulto, [0243]-[0244]) and Clinton teaches that it only takes 15 to 30 minutes for a droplet of gel comprising cells to set (Clinton, page 12, “25”). The instant specification provides a non-limiting definition for the terms “simultaneously” and “essentially simultaneously” as being maybe within about 5-15 minutes and maybe within about 30-90 minutes respectively (Specification, [0010]). Even were this to be a limiting definition, the combined disclosures of Vulto and Clinton teach wherein the target cells and the feeder cells are added simultaneously.
Regarding claims 4 and 56, the “capillary pressure barrier” of Vulto leaves a gap of air between the droplet of gel comprising epithelial cells and the fluid comprising endothelial cells.
Regarding claim 5, the fluid of Vulto is added after the gel cures at which point the fluid travels through the capillary connecting the wells and eliminates the airgap and allowing the gel to cure fulfills the “at least a part of the initial incubation period” limitation.
Regarding claims 6 and 58, Clinton teaches to mechanically disrupt the gel droplets followed by enzymatic digestion with Trypsin-EDTA of the organoids into single cells (Clinton, page 10, “12” to “14”; Table 3) before returning the cells to fresh droplets in a culture device (Clinton, Figure 1). The droplets of Clinton are removed to a separate tube and washed prior to digestion. Therefore, Clinton teaches to detach the target cells from the well, then to further detach the target cells from each other using enzymatic digestion in a compartment away from the original well, then to allow the cells to settle back in the original well.
Regarding claims 7 and 59, Clinton teaches Trypsin-EDTA in dissociation buffer (Clinton, Table 3).
Regarding claim 8, Vulto teaches that the protocol cultures organoids in the organoid compartment of the device (Vulto, [0060]).
Regarding claims 10 and 60, the methods of Vulto and Clinton both teach organoids embedded in a hydrogel dome.
Regarding claim 11, the device of Vulto has a microchannel that is closed by a “capillary pressure barrier” and the microchannel is located between the bottom surface of the well unit and a bottom portion of a shared sidewall of the organoid compartment and the other compartments (Vulto, Figure 4).
Regarding claims 12 and 61, Vulto teaches that the height of the microchannel of the device is “in the sub-millimeter range” (Vulto, [0052]). A person having ordinary skill in the art understands an immediate sub-millimeter value to be 999 micrometers (i.e. microns). While Vulto does not teach any particular measurement for the height or the width of the microchannel beyond the above teaching, a person having ordinary skill in the art would understand the general conditions of the microchannel to have been taught as the microchannel must be on the order of microns to function in the device of Vulto. It is noted that, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05(II)(A). The precise height of the microchannel is a matter of routine experimentation to a person having ordinary skill in the art.
Regarding claim 57, Vulto teaches to use pipettes for the methods (Vulto, [0159]) and dispensing the fluid of Vulto with a pipette forces liquid media exchange between the organoid compartment and the other compartments by eliminating the airgap.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0063081, published: 27 February, 2020, hereinafter “Vulto” and Clinton et al. Current protocols in cell biology 82.1 (2019): e66, hereinafter “Clinton” as applied to claims 1-8, 10-12, and 56-61 above, and further in view of Koledova et al. Mammary gland development: methods and protocols. New York, NY: Springer New York, 2016. 217-231, hereinafter “Koledova”.
Regarding claim 9, Vulto and Clinton teach the method of claim 1 and Vulto teaches to include endothelial cells in the fluid added to the microchannel. Vulto does not teach to add fibroblasts into the fluid.
Koledova teaches methods for the co-culture of mammary organoids with fibroblasts for the investigation of branching morphogenesis of the mammary gland (Koledova, Title; Abstract). Koledova teaches that the molecular mechanisms underlying the epithelial-stromal cross talk during mammary gland development remain poorly understood (Koledova, page 3, first paragraph). Koledova also teaches that the stroma (composed partially of fibroblasts) regulates the function, proliferation, differentiation, and invasion of mammary epithelial cells via an intricate network of chemical signaling and physical controls (Koledova, page 2, last paragraph). Koledova teaches to co-culture fibroblasts with mammary organoids in three-dimensional culture to provide an excellent tool for studying branching morphogenesis and its regulation by mammary fibroblasts, “especially by paracrine signaling” (Koledova, page 3, last paragraph).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used fibroblasts as the cells in the fluid added to the microchannel in the method of Vulto and Clinton to better investigate the chemical signaling component between fibroblasts and mammary organoids as taught by Koledova. They would have been motivated to do so by the suggestion to investigate paracrine signaling between fibroblasts and mammary organoids more specifically. Further, there would have been a reasonable expectation of success in doing so, considering the fact that Vulto, Clinton, and Koledova are all teaching methods for three-dimensional organoid culture and that Vulto teaches a device which would facilitate an investigation of the chemical signaling element without the physical signaling element taught in Koledova.
Conclusion
No claim is allowed.
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/BRENDAN THOMAS TINSLEY/Examiner, Art Unit 1634
/MARIA MARVICH/Primary Examiner, Art Unit 1634
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