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 .
DETAILED ACTION
Claim Status
This action is in response to claims filed on 02/09/2025.
Claims 19-38 are pending and are considered on the merits.
Priority
This application is a DIV of 17/415,239 (filed on 06/17/2021), which is a 371 of PCT/US2019/067343 (filed on 12/19/2019), which claims benefit from provisional application 62/798,572 (filed on 01/30/2019). The instant application has been granted the earliest benefit date, 01/30/2019, from the application 62/798,572.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/17/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. The corresponding signed and initialed PTO form 1449 has been mailed with this action.
Claim Objections
Claim 19 is objected to because of the following informalities:
Claim 19 recites a phrase “fetal bovine serum (PBS)”, which contains a typographical error. It is recommended to change to “fetal bovine serum (FBS)”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The 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 19-20, 22-26 and 28-38 are rejected under 35 U.S.C. 103 as being unpatentable over Watson et al., (PhD dissertation. Imperial College London, July 2018. pg. 1-359. Cited in IDS 12/17/2024) in view of Tomanek et al., (Dev. Dyn. 2001; 221: 265-273. PTO-892) and Fernández-Avilés et al., (Circ Res. 2004;95:742-748. Cited in IDS 12/17/2024).
With respect to claim 19, it is noted that the limitation “for screening candidate therapeutic agents for therapeutic effect or cardiotoxicity" is interpreted as intended use. MPEP 2111.02 II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, 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 and is of no significance to claim construction”. Thus, this limitation is reasonably interpreted as a method that is capable of performing the intended use for screening candidate therapeutic agents for therapeutic effect or cardiotoxicity as recited in the preamble.
Watson teaches a method of culturing myocardial slices (e.g., abstract) and performing pharmacological testing with an anti-cancer drug sunitinib to assess drug-induced cardiotoxicity (see e.g., p. 358, para 10.13 “Pharmacological Testing with Sunitinib”), thus teaches a method that is capable of screening candidate therapeutic agents for therapeutic effect or cardiotoxicity.
Regarding culturing an organotypic mammalian heart slice in a culture medium, Watson teaches an optimized protocol for producing myocardial slices (also referred to as “organotypic cardiac slices” in p. 79, para 1.5 “Myocardial slices”) from small and large mammalian hearts and culturing the slices in a culture medium (e.g., abstract and p. 111, para 2.5 “Myocardial slice culture”), thus teaches culturing an organotypic mammalian heart slice in a culture medium.
Regarding applying electrical stimulation, Watson teaches applying electrical stimulation to the heart slices during culture (p. 113, para 2.5.3.2 “Electromechanical Stimulation with Physiological Preload”, p. 114, para 2.5.3.3 “Prolonged Electromechanical Stimulation with Physiological Preload” and p. 116, para 2.5.3.4 “Biodynamic Stimulation”).
Regarding contacting an agent, Watson teaches “To test the sensitivity of myocardial slices to assess drug-induced cardiotoxicity, sunitinib was added to the culture medium” (p. 358, para 10.13, Appendix 13 legend), thus teaches contacting the organotypic mammalian heart slice with a candidate therapeutic agent.
Regarding measuring a factor, Watson teaches “After culture, myocardial slice contractility (as described in 2.7.1) and whole slice viability (as described in 2.10.1) were assessed” (p. 358, para 10.13, Appendix 13 legend), thus teaches measuring one or more factors within the organotypic mammalian heart slice that are indicative of the therapeutic effect or cardiotoxicity of the candidate drug.
However, regarding the culture medium, Watson only teaches the culture medium comprises base medium M199 supplemented with ITS supplement (insulin, transferrin and sodium selenite) and lists the composition of the culture medium in p. 111-113 (p. 111, para 2.5.2 “Culture Medium”), but is silent on the culture medium comprising FBS, VEGF and FGF.
Tomanek teaches a method for culturing a heart explant comprising dissecting the heart and culturing the apical one-third of the ventricles (p. 271, left col, last para). Tomanek teaches the heart explant (i.e. slice) is cultured in base medium M199 supplemented with insulin-transferrin-selenium-A (ITS) and FBS, and further supplemented with growth factors VEGF and FGF (p. 271, right col, para 1-2). Tomanek teaches addition of a 30/30 ng/ml of VEGF and FGF results in a 4-fold increase in vasculogenesis than control and more significantly than single growth factor (see Fig 4, comparing the left most columns in each group). Tomanek teaches the critical role of VEGF in vascular development has been well documented and a role for bFGF has also been indicated for angioblast differentiation (p. 268, left col, last para).
Fernández-Avilés teaches a method for culturing heart slices as a model in cardiac research (title, abstract). Fernández-Avilés teaches heart slices are cultured in a culture medium comprising 10% FBS for up to 3 weeks (p. 743, right col, para 1).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method comprising culturing a mammalian heart organotypic slice in a culture medium disclosed by Watson, by adding FBS, VEGF and FGF to the culture medium as suggested by Tomanek and Fernández-Avilés with a reasonable expectation of success. One of ordinary skill in the art would have had a reason to do so since Watson suggests that reciprocal cross-talk between cardiomyocytes and endothelial cells is crucial for cardiac development and mutations in VEGF-A and VEGFR result in failure of myocardium development and ventricular wall thinning (p. 36, para 1), and since Tomanek teaches addition of VEGF and FGF to the culture medium comprising FBS results in a most significant increase in vasculogenesis in cultured heart explant (slice) (see Fig 4, comparing the left most columns in each group). Thus, adding VEGF and FGF to the culture medium as suggested by Tomanek would have promoted formation of new vasculature in the heart slices of Watson to improve the supply of oxygen and nutrients. Furthermore, since both Tomanek and Fernández-Avilés use FBS in their heart explant/slice culture, and Fernández-Avilés teaches the culture medium comprising FBS supports long-term culture of heart slices for up to 3 weeks (p. 743, right col, para 1), one of ordinary skill in the art would have had a reason to add FBS to the culture medium of Watson in order to achieve long-term culture of heart slices.
With respect to claim 20 directed to adding the candidate therapeutic agent to the culture medium, as stated supra, Watson teaches “To test the sensitivity of myocardial slices to assess drug-induced cardiotoxicity, sunitinib was added to the culture medium” (p. 358, para 10.13, Appendix 13 legend), thus teaches the step of contacting comprises adding the candidate therapeutic agent to the culture medium.
With respect to claim 22 directed to the factors measured, as stated supra, Watson teaches “After culture, myocardial slice contractility and whole slice viability were assessed” (p. 358, para 10.13, Appendix 13 legend), thus teaches the measuring comprises determining viability and measuring the contractility of the heart slice.
With respect to claim 23 directed to the culture medium not including BDM and claim 24 directed to the culture medium not including extra fatty acids, as stated supra, Watson teaches the culture medium comprises base medium M199 supplemented with ITS supplement (insulin, transferrin and sodium selenite), and lists the composition of the culture medium in pages 111-113 (p. 111, para 2.5.2 “Culture Medium”), which does not include 2, 3-butanedione monoxime (BDM) or any fatty acids added.
With respect to claim 25 and claim 37, directed to the viability and contractile force on day 6 being not different from that on day 1, MPEP 2111.04 (I) indicates 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.” The examiner has determined that the wherein clauses of the instant claims do not recite any additional active method steps, but simply state a characterization of the intended results of the culturing step and the applying electrical stimulation step that are positively recited. Thus, the clauses do not limit the structure of the heart slice, the culture medium or the electrical stimulation, nor do they affect the method of culturing the heart slice in a culture medium and applying electrical stimulation, as recited in base claim 19. Therefore, the language of the wherein clause of instant claims does not provide a limiting effect on the claimed method. See Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1171,26 USPQ2d 1018, 1023 (Fed Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003).
Furthermore, in regard to the limitation wherein a viability is not different “as measured by MTT assay” in claim 25, MPEP 2111.04 (I) indicates that a “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed”. The examiner has determined that the step of “measured by MTT assay” recited in claim 25 is not required by the claimed method to be performed, thus is considered optional. Therefore, the language of the wherein clause of instant claim does not provide a limiting effect on the claimed method. Thus, claims 25 and 37 are rejected in the same way as that of base claim 19.
With respect to claim 26 directed to the electrical stimulation having a frequency of 0.5 to 2 Hz, Watson teaches the myocardial slices are stimulated at 1 Hz and 0.5 Hz (p. 114, para 1; p. 115, para 1; p. 116, para 3).
With respect to claims 28 and 29 directed to the electrical stimulation having a voltage of 5-15 V and a voltage of 10 V, Watson teaches a voltage of 30-50 V is applied and “due to the large culture medium volume, the actual voltage experienced by myocardial slices was equivalent to 5-10 V” (p. 114, para 1), and a voltage of 10 V is applied to each myocardial slice in a Biodynamic stimulation (p. 116, last para).
With respect to claim 30 directed to the graphite electrodes in a stimulation device, Watson teaches the electrical stimulation is provided via non-reactive carbon or platinum electrodes (p. 198, para 4.3.6; p. 203, para 4.4.2.3). It is noted that the non-reactive carbon electrodes are equivalent to the claimed graphite electrodes.
With respect to claim 31 directed to a thickness of 100-500 μm, Watson teaches the slice of the heart tissue has a thickness of 300 μm (p. 105, para 2).
With respect to claim 32 directed to the culture medium being oxygenated prior to being added to the culture, Watson teaches the culture medium is oxygenated prior to being added to the culture (p. 114, para 1; p. 115, para 2; p. 116, last para).
With respect to claim 33 directed to the culturing and the applying electrical stimulation being performed for at least 2 days, Watson teaches a prolonged culture in which the myocardial slices are cultured and electrically stimulated for 3 and 5 days (p. 115, para 2).
Claim 34 is directed to the culturing and the applying electrical stimulation being performed for at least 2 days and the culture medium being replaced with fresh culture medium at least once per day.
As stated supra, Watson teaches a prolonged culture in which the myocardial slices are cultured and electrically stimulated for 3 and 5 days (p. 115, para 2). Watson teaches the myocardial slices are cultured with the culture medium being recirculated using a peristaltic pump at 15 mL/min (p. 114, para 1; p. 115, para 2; p. 116, last para) and for 5-day experiments, the 1.5 L of culture medium is completely replaced after 72 hours (p. 115, para 2). Watson teaches the large medium volumes and recirculation improve the function of the heart slices during culture (p. 203, para 4.4.2.3).
Accordingly, although Watson does not specifically teach the culture medium is replaced with fresh culture medium at least once per day, one of ordinary skill in the art would have immediately expected that Watson’s recirculation of culture medium in a large volume would be equivalent to the claimed culture medium being replaced with fresh culture medium at least once per day. Since the medium volume of Watson is much larger than the volume in a culture dish, there would have been a reasonable expectation of success in considering Watson’s large medium volumes and recirculation as being equivalent to replacing with fresh culture medium at least once per day.
With respect to claim 35 directed to the mammalian slice being obtained from a human or pig, Watson teaches the heart slice is obtained from a pig or a human (p. 98, para 2.1.4 “Porcine”, para 2.1.5 “human heart failure” and 2.1.6 “human donor”).
With respect to claim 36 directed to the slice being adhered to a support prior to applying the electrical stimulation, Watson teaches the heart slice is mounted with 3D printed, rectangular rings (p. 113, para 2.5.3.2, see Fig 2.5 in p. 108), then put in culture and stimulated with electrical stimulation (p. 114, para 1), thus teaches the slice is adhered to a support prior to applying the electrical stimulation.
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With respect to claim 38 directed to the slice having no spontaneous calcium transients, Watson analyzes calcium transient on the cultured slice (p. 127, para 2.8.3 “Ca2+ transient analysis”) and plots Fluo-4 fluorescence (labeling calcium transient) for a slice stimulated at 1 Hz (see Fig 2.11D and legend, attached herein). It is noted that the slice does not exhibit any spontaneous calcium transients (Fluo-4 fluorescence) except upon electrical stimulation at 1 Hz.
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Watson et al., (PhD dissertation. Imperial College London, July 2018. pg. 1-359. Cited in IDS 12/17/2024) in view of Tomanek et al., (Dev. Dyn. 2001; 221: 265-273. PTO-892) and Fernández-Avilés et al., (Circ Res. 2004;95:742-748. Cited in IDS 12/17/2024), as applied to claim 19 above, and further in view of Kang et al., (Sci Rep. 2016; 6: 28798, p. 1-13. Cited in IDS 12/17/2024).
Claim 21 is directed to the step of contacting comprises infecting the organotypic mammalian heart slice with a virus expressing the candidate therapeutic agent.
However, Watson does not specifically teach the step of contacting comprises infecting the organotypic mammalian heart slice with a virus expressing the candidate therapeutic agent.
Kang teaches using organotypic slices isolated from human donor and end-stage failing hearts as a preclinical platform for validation of new therapies (e.g., abstract). Kang teaches successful clinical gene therapy/editing in the cardiovascular field is relatively few and teaches using eGFP as a proof of concept to suggest that organotypic human heart slice can be virally transduced and express an exogenous protein using adenovirus to test the effects of exogenous genes expression in pre-clinical validation studies prior to embarking on costly human clinical trials (p. 11, section “Adenoviral-mediated expression of eGFP”, also see p. 9, last para and Fig 6a), related to claim 21.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method comprising contacting the heart slice with added candidate therapeutic agent to the culture medium for screening therapeutic effect or cardiotoxicity suggested by Watson in view of Tomanek and Fernández-Avilés, by substituting with infecting the heart slice with a virus expressing the candidate therapeutic agent as a potential gene therapy/editing strategy as suggested by Kang with a reasonable expectation of success. Since Watson suggests the cultured heart slice can be used in pharmacological testing and the development of novel therapeutic strategies (p. 307, last para “Conclusion”), and since Kang teaches more clinical gene therapy/editing in the cardiovascular field is in need and teaches that organotypic human heart slice can be virally transduced and express an exogenous protein to test the effects of exogenous genes expression in pre-clinical validation studies prior to costly human clinical trials (p. 11, section “Adenoviral-mediated expression of eGFP”, also see p. 9, last para and Fig 6a), one of ordinary skill in the art would have had a reason to substitute with infecting the heart slice with a virus expressing the candidate therapeutic agent as suggested by Kang in order to test the effects of exogenous genes expression in pre-clinical validation studies prior to costly human clinical trials.
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Watson et al., (PhD dissertation. Imperial College London, July 2018. pg. 1-359. Cited in IDS 12/17/2024) in view of Tomanek et al., (Dev. Dyn. 2001; 221: 265-273. PTO-892) and Fernández-Avilés et al., (Circ Res. 2004;95:742-748. Cited in IDS 12/17/2024), as applied to claim 19 above, and further in view of Xiao et al., (Lab Chip, 2014, 14, 869-882. Cited in IDS 12/17/2024).
Claim 27 is directed to the electrical stimulation having a frequency of 1.2 Hz.
However, Watson does not specifically teach the electrical stimulation has a frequency of 1.2 Hz.
Xiao teaches a method for culturing 3D functional cardiac tissue that mimics native cardiac tissue (title, abstract). Xiao teaches the culture method comprises electrical stimulation that has a frequency of 1.2 Hz (p. 872, left col, para 1), related to claim 27. Xiao teaches the electrical stimulation of 1.2 Hz further improves phenotype of cardiomyocytes as indicated by organized contractile apparatus, higher Young's modulus, and improved electrical properties (abstract).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method comprising applying electrical stimulation to the heart slice in culture at a frequency of 0.5 Hz and 1 Hz suggested by Watson in view of Tomanek and Fernández-Avilés, by substituting with a frequency of 1.2 Hz as suggested by Xiao with a reasonable expectation of success. One of ordinary skill in the art would have had a reason to do so since Watson suggests that a more biomimetic approach would be to increase stimulation frequency to match the resting heart rates (p. 305, para 2), and since Xiao teaches the electrical stimulation having a frequency of 1.2 Hz improves phenotype of cardiomyocytes as indicated by organized contractile apparatus, higher Young's modulus, and improved electrical properties (abstract), thus, applying the 1.2 Hz electrical stimulation of Xiao would have improved phenotype of cardiomyocytes in Watson’s cultured heart slice.
Hence, the claimed invention as a whole was prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jianjian Zhu whose telephone number is (571)272-0956. The examiner can normally be reached M - F 8:30AM - 4PM (EST).
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/JIANJIAN ZHU/Examiner, Art Unit 1631
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