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 .
Election/Restrictions
Applicant's election with traverse the species directed to HGF, as recited in claim 9, in the reply filed on 07/15/2026 is acknowledged. The traversal is on the ground(s) that claims 9-13 do not define separate patentably distinct species because the claims merely provide different concentration limitations for growth factors that are simultaneously present in the same composition and generated by the same cell-expansion and standing process. This is not found persuasive because it does not establish that the identified species are patentably indistinct. The fact that the same adipose -derived stem cell preparation method may generate more than one growth factor does not, by itself, establish that the respective growth factor species are obvious variant of one another or that examination of one species would necessarily resolve the patentability of the other species. Thus, the claims present distinct growth factor specific limitation requiring separate consideration for patentability. Thus, Applicant argument that the claims share a common preparation method and inventive concept does not overcome the requirement for election of species. The requirement is still deemed proper and is therefore made FINAL.
Claims 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/15/2026.
Claims 1-9 are under examination.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. However, applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosures of the prior-filed application 63302595 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. For example, the provisional application does not provide support for the claimed preparation method of the pharmaceutical composition nor to the presence or quantity of the active synergistic component or growth factors in the final composition. Therefore, the claims are entitled to the benefit of the filing date of the CIP filing date, because the claimed preparation method is not adequately supported by the disclosure of the earlier-filed application. Therefore the U.S. effective filing dates for all claims is set to follow the CIP filing date:
Claims 1-13 is set at 10/11/2022.
Claim Interpretation
Claim 1 under the broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. In the instant claim, the word “amount” refers to the concentration of stem cells as well as the synergistic component. It is noted that, in light of the specification teachings, the plain meaning of the word “amount” is interpreted as # of cells/ml for the stem cells, and # of particles/ml for the active synergistic component. See MPEP § 2111.01.
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 and 6 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.
Regarding claim 1, the claim recites “a preparation method of pharmaceutical composition for treating chronic stroke” and further recites that “ the preparation method comprises “ (a) culturing adipose-derived stem cells in an expansion medium and (b) obtaining the pharmaceutical composition by allowing the adipose-derived stem cells
treated by cell expansion to stand in water for injection at a temperature of 2-10°C for 24 hours”. However, the claim subsequently requires, as part of the same claimed method that “the pharmaceutical composition is injected via brain into the cranium of a patient having chronic stroke for six months or more”. The claim, therefore, does not clearly defines the metes and bounds of the claimed “ preparation method”. Specifically, it is unclear whether the claimed preparation method ends when the pharmaceutical composition is obtained following the 24-standing step, or whether preparation of the pharmaceutical composition is considered incomplete until the already obtained pharmaceutical composition is subsequently administered to a chronic-stroke patient. This ambiguity is significant because the specification distinguishes the method of preparing the composition from the subsequent use of the composition. For example, according to the specification, [0069-0070], the pharmaceutical composition is prepared before its subsequent administration to a patient. The final limitation, however, requires the subsequent administration of the already prepared composition to a patient as a limitation of the “preparation method”. In other words, the claim does not identify whether the intracranial injection is itself a step of preparing the pharmaceutical composition, a separate therapeutic use of the composition, or an additional step that must be performed to complete the steps of the preparation method. In other words, the ambiguity is illustrated by the fact that preparation and administration may be performed at different time by different entities. Thus, when claim 1 is read in light of specification, the scope of the claimed “preparation method” is not reasonably clear. A person of ordinary skill in the art would not be reasonably apprised whether the claimed method encompasses the preparation of the composition alone or necessarily requires both preparation and subsequent administration of the composition to a patient. The claim is ,therefore, indefinite under 35 U.S.C. 112(b).
Claims 2-9, inherit the deficiency, as being dependent claims, and so are rejected on the same basis.
Regarding claim 6, the claim recites that “adipose-derived stem cells treated by cell expansion have an activity of at least 80% or more”. However, the claim does not specify what is meant by “activity”. The specification does not define “activity” of the adipose-derived stem cells, or identify the particular biological or cellular function to which “activity” refers, or provides an objective methodology by which the claimed “at least 80%” activity can be determined. It is therefore, unclear whether “activity” refers, for example, to cell viability, proliferation, differentiation, or secretion of particular factor. Accordingly, an ordinary skill in the art would not be able to determine with reasonable certainty which adipose-derived stem cell would possess the claimed “ activity of at least 80% or more”. The claim is therefore is indefinite under 35 U.S.C. 112(b).
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.
Claims 1-5, and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ho et al ( Biomedicines, Published July 10th 2022) in view of Ding et al ( Journal of Biomedical Science,2013), Fryer et al ( US 2010/0087002 A1), Pardo et al (Corning Technical Report, 2010), Hanson et al ( Journal of Biomaterial Science, 2007), Bastianelli et al ( WO 2016/170112 A1), Zhang et al ( Peer Journal, 2017), Levy et al (Stroke, 2019), and Trzyna et al (Biomelocules,2021).
Regarding claim 1, Ho et al teach a method for culturing and expanding human adipose- derived stem cells (ADSCs) in K-NAC medium comprising Keratinocyte-SFM supplemented with 2 mM N-acetyl-L-cysteine, and 0.2 mM L-ascorbic acid-2-phosphate. Ho et al further teach collection and isolation of extracellular vesicles secreted by ADSCs. Ho, therefore, teaches the expansion medium and the claimed concentration range, and the production of extracellular vesicles following culturing and expansion (i.e. the active synergistic component). ( See sections 2.2. and 2.4. on page 3). Thus, Ho et al teach the claimed ADSCs treated by cell expansion and the claimed extracellular vesicle (EV) component.
Ding et al further supplement Ho et al by teaching a method for culturing and serially expanding ADSCs in keratinocyte serum-free medium containing mM N-acetyl-L-cysteine, and L-ascorbic acid-2-phosphate, thereby confirming that the claimed type of medium was an established ADSCs expansion medium.( See section “ Derivation of ASC” on page 2, and “ Proliferation assay and estimation of population doubling time” on page 3). As such, it would have been prima facie obvious to one with ordinary skill in the art at the time the invention was filed to employ the known expansion method of Ding in the ADSC-EV process of Ho because both references concern the use of ADSCs for regenerative application, and Ding demonstrates that the identified keratinocyte serum-free medium is suitable for serial expansion of ADSCs. Such modification merely combines known elements according to known functions, and would have been expected to provide the predictable result of expanding ADSCs.
Neither Ho nor Ding teach the limitation of culturing the cells in a culture plate made of a material containing at least 20% or more oxygen-containing functional groups.
Fryer et al supplement Ho and Ding by teaching methods, surface-modified plates, and compositions for cell attachment and cultivation. ( See abstract). Fryer et al particularly describe CELLBIND as a cell surface having an oxygen rich surface and oxygen-containing functional groups. Specifically, Fryer expressly teaches that the modified surface of CELLBIND comprises of 70.4% carbon, 29.0% oxygen, 0.6% nitrogen, and <0.01 % other elements, and has a relatively high concentration of oxygen-containing functional groups including C-[O]-C, C=O, and COOH/R , as analyzed by ESCA. ( See [0245]). Of particular relevance, Fryer’s Table 7 reports the surface elemental composition of CELLBIND as approximately 72.2 atomic % carbon, 26.8% oxygen, and 1 atomic % nitrogen. (See Table 7). It should be noted that Fryer’s example 17 identifies the 2010 Corning Technical Report as the source of this characterization of the CELLBIND surface. ( See [0245]). Fryer’s Table 8 identifies other bonding environment including oxygen containing groups such as C-O-C,C-[O]-C,C=O, and other carbon bonding environment. ( See Table 8). Accordingly, Fryer establishes that the CELLBIND modified surface comprises of element oxygen and oxygen-containing functional groups. Fryer et al further establishes that oxygen content affects cellular attachment. Specifically, Fryer et al state that oxygen content of the surfaces exemplified by CELLBIND versus NUNCLON DELTA, had an effect on the ability of the surfaces to support human embryonic system cell attachment and colony formation in the presence of Rho kinase inhibitions. ( See [250]). Thus, Fryer et al provides an express teaching that oxygen-containing surface chemistry is a factor affecting the ability of substrate to support cell attachment and cultivation. In addition, the Corning Technical Report identified by Fryer et al, provides further detail regarding the CELLBIND surface. Specifically, The Corning report expressly state that the surface treatment increases the oxygen content of the polymer surface, resulting in increased hydrophilicity, and subsequently improve cell spreading and attachment. The report further explains that the CELLBIND treatment increase the oxygen-functional groups on the polystyrene backbone. The report also identifies ESCA as the analytical method used to characterize the surface composition. ( See section “ Corning CellBIND Surface” and Table 1). As such, the Corning disclosure identifies CELLBIND surfaces as a culture-vessel surfaces specifically developed to improve cell attachment.
Furthermore, Hanson et al teach the application of oxygen-functionalized polymer surfaces specifically to ADCS. Hanson et al investigate oxygen-plasma treatment of nonwoven PLLA scaffolds for attachment of ADCS. Hanson et al demonstrate that the oxygen treatment increases surface hydroxyl groups and thereby enhances substrate hydrophilicity. Hanson further reports that oxygen-treated scaffolds exhibited an increased number of adherent ADSC and enhanced cell spreading. ( See abstract).
Taken together, Fryer et al teach a cell culture surface plate having approximately 29% oxygen and oxygen-containg functional group and further teaches that surface oxygen content affects cell attachment. Corning explains that the oxygen-containing functional groups incorporated into the polymer surface increase hydrophilicity and thereby facilitate cell attachment and spreading. Hanson et al demonstrate that oxygen-functionalization of a polymeric substrate is useful specifically for attachment and culturing of ADSCs. Therefore, it would have been prima facie obvious to one with ordinary skill in the art at the time the invention was filed to use the oxygen-functionalized surface as taught by Fryer et al and Corning with ADSC expansion process of Ho and Ding in view of Hanson et al, because the refences collectively identify oxygen-containg surface chemistry as a known means for improving attachment and spreading of cells, including ADSCs. The modification would merely be the use of a known modified culture plate in the expansion method of ADSCs to obtain the predictable results of improved cell attachment and cell spreading.
It is submitted that none of the cited prior art teach the step of allowing the adipose-derived stem cells treated by cell expansion to stand in water for injection at a temperature of 2-10°C for 24 hours.
Bastianelli et al, supplement the cited prior art by teaching methods for in-vitro preservation of therapeutic mesenchymal stem (MSC) cells and MSC-derived cells. Bastianelli et al teach maintaining cells in aqueous suspension at temperatures including about 2C to about 8C and for periods including at least 24 hours, and expressly state its purpose to maintain the cell in a liquid state and preserve cell product stability for extended periods. ( See Example 1). Accordingly, Bastianelli et al teach the claimed temperature range and the claimed 24-hour standing period, because the disclosed range 2-8C is encompassed by the claimed range of 2-10C. It should also be noted that Bastianelli et al expressly teach that non-cryogenic method of cell preservation were well known in the art. Bastianelli et al also identifies suitable aqueous storage liquids including plasma-Lye, and lactated Ringer’s solution (i.e. a water based solution). ( See lines 21-30 on page 1). Bastianelli et al, further explain the disadvantages associated with cryopreservation, including the requirement for very low temperatures, specialized equipment, as well as thawing and washing before administration to removes cryopreservatives, and resuspending the cells which can reduce cell viability , increase contamination risk, and increase between-sample variability. ( See lines 10-20 on page 1). As such, Bastianelli et al recognizes the advantages of maintaining therapeutic cells in a non-cryogenic aqueous suspension prior to their administration to a patient in need. Accordingly, Bastianelli et al provide an ordinary skill in the art with an express motivation for maintaining cells in suspension under refrigerated, non-cryogenic conditions rather than cryopreserving the cells before injection or infusion into a patient, because such method provides a practical mean of preserving cells between preparation and administration.
Furthermore, Zhang et al supplement Bastianelli et al by specifically evaluating storage of ADSCs at 2-8 C for 24 hours. Zhang et al conclude that ADSCs suspended in optimized preservation medium could be stored for 24 hours at 2-8 C, providing a reliable short-term storage condition for cell therapy. ( See abstract). Zhang et al also confirms that the purpose of the short-term storage condition is to maintain ADSCs before transplantation. Thus, it would have been obvious for one with ordinary skill in the art to apply the 2-8 C for 24 hour storage condition of Zhang and Bastianelli to the expanded ADSCs of Ho/Ding when preparing the ADSCs for therapeutic administration. Because Bastianelli et al expressly identify refrigerated aqueous suspension as a practical non-cryogenic alternative for maintaining cells between preparation and administration, while Zhang et al demonstrate that ADSCs specifically can be maintained under refrigerated short-term storage condition. Thus, an ordinary skill in the art would have had a reason to employ the known holding condition with the expanded ADSCs of Ho/Ding, and with a reasonable expectation that the ADSCs would remain suitable for the subsequent therapeutic use.
Zhang et al further teach that, following the optimized short-term storage condition, the ADSCs were evaluated for cell-surface markers by flow cytometry, including CD34,CD45,CD90, and CD105. Zhang et al report that the optimized storage condition did not significantly alter the surface – marker characteristic of the ADSCs, with the reported expression levels falling within the ranges recited in claim 1. ( See section “ evaluation of optimized condition” on page 12, and Fig.6). Accordingly, Zhang et al provide a direct teaching that ADSCs phenotype, including the recited surface markers, is maintained following refrigerated short-term storage.
With regard to the limitation of the release of the active synergistic component and the growth factor during standing, it should be noted that according to instant specification the synergistic component and growth factors are not added to the compositions, instead they are obtained by incubating cell suspension at 2° to 10°C for 1-24 hours.
Ho et al teach that ADSCs secrete extracellular vesicles and that such vesicles are recoverable from ADSCs culture medium. ( See section 2.4. on page 4).
Trzyna et al supplement Ho by teaching that Adipose-derived stem cells (ASCs) secrete many cytokines, proteins, growth factors, and extracellular vesicles with beneficial outcomes that can be used in regenerative medicine. (See abstract). Trzyna specifically report secretion of growth factors including HGF and G-CSF, as well as other factors including EGF, IL1β IL4, IL13, and IFNγ. (See section 3-page 4, Fig.1-page 4, and section 3.1-page 5). Accordingly, the growth factor limitation is taught by Trzyna et al, while the extracellular component is taught by Ho et al. Zhang and Bastianelli teach maintaining the ADSCs in aqueous suspension under refrigerated condition for the short term period preceding the therapeutic administration. Thus, when the expanded ADSCs of Ho et al are maintained in the suspension under the refrigerated holding conditions of Bastianelli and Zhang, an ordinary skill in the art would have expected the ADSCs to remain a source of their known secreted products including extracellular vesicles and growth factors. Thus, to the extent the claimed concentration of extracellular vesicles and growth factor is not expressly disclosed in the cited prior art, such release is considered to be inherent in the proposed combination of the prior art teachings.
It is also submitted that none of the cited prior art teach the step of injecting the prepared composition into the brain of a patient having chronic stroke for six months or more.
Levy et al supplement the cited prior arts by teaching administration of mesenchymal stem cells to patient having chronic ischemic stroke occurring at least six months before treatment. Also, Levy et al describe storage of the final formulation of MSCs at 2° to 8°C- to be infused within 8 hours of preparation. (See section “Infusion of Investigational Product” page 2837). Levy therefore provides an additional motivation for refrigerated pre-administration handling of therapeutic MSC compositions in chronic-stroke context.
It is submitted that Levy’s et al teach a composition compromising of MSCs derived from bone marrow. However, the instant application claims using the prepared composition compromising of MSC cells that are derived from adipose tissue in the step of administration.
Trzyna et al teach Adipose-derived stem cells (ADSCs) secrete many cytokines, proteins, growth factors, and extracellular vesicles with beneficial outcomes that can be used in regenerative medicine. (See abstract). Trzyna et al also teach that, when compared to bone marrow derived MSCs (BM-MSCs), ADSCs are the most commonly used MSCs for stem cell therapy. According to Trzyna et al, ADSCs secrete more bioactive factors than BM-MSCs do. For example, Trzyna teachings state that ADSCs secrete more HGF and G-CSF than BM-MSCs. (See section 3, page 4). Trzyna et al also suggest that one strategy for improving ADSCs therapy is to use their secretome with a focus on extracellular vesicles. According to Trzyna, this approach promises higher efficiency than naive ADSCs without having to use ADSCs alone. (See section 3, page 4). Therefore, it would have been prima facie obvious at the time the invention was filed to modify the composition of Levy and make a composition for cell therapy wherein the source of MSC is from adipose tissue. One of ordinary skill would be motivated to do that because Trzyna et al teach that isolating MCSs from adipose tissue rather than bone marrow is less invasive and provides higher cell densities. Trzyna et al also teach ADSCs secrete more bioactive factors than BM-MSCs do. Trzyna et al suggest that one strategy for improving ASC therapy is to use their secretome, specifically extracellular vesicles.
Levy et al also teach suspending cells in Lactated Ringer’s solution at a concentration of 1×106 cells/ml. Then, each subject receives 1.5 million cell/kg intravenously. (See section “Infusion of Investigational Product” page 2837, and section “Study Design” page 2836). The amount of MSCs in Levy’s composition does not read exactly on the amount of stem cells in instant claim 1. However, following the FDA’s recommendation, Levy et al used allometric scaling from animals to humans to determine the appropriate dose and thus the amount of MSCs. This method takes into account the route of administration as well as the body surface area normalization. (See method section page 2836). Therefore, it would have been prima facie obvious for one of ordinary skill in the art to rely on routine experimentation when determining the appropriate amount of stem cells in a composition. One would have had a reasonable expectation of successfully modifying the amount of cells using allometric scaling from animals, as this method considers the subject’s surface area and route of administration, and it is one of the FDA’s recommended methods. When the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimal or workable ranges through routine experimentation. See MPEP 2144.05.
Taken together, Ho et al provide the ADSCs expansion process and extracellular vesicle source. Ding et al confirm the ADSCs expansion medium. Fryer, Corning report, and Hanson establish oxygen-functionalized culture surfaces as a known means of improved cell attachment, including specifically for ADSCs. Bastianelli establishes refrigerated aqueous suspension as a known non-cryogenic method for preserving therapeutic cells between preparation and administration, while Zhang et al specifically demonstrate short-term refrigerated preservation of ADSCs and evaluation of their characteristic surface marker. Trzyna et al establish the therapeutic relevance of ADSCs secretome, including extracellular vesicles and growth factors. Levy et al in view of Trzyna provide the therapeutic use of ADSCs in the contexts of chronic-stroke and demonstrate refrigerated pre-administration handling. A person of ordinary skill in the art would have had reason to combine these teachings to obtain an expanded ADSCs preparation maintained under short-term refrigerated suspension condition while maintaining its characteristic phenotype and therapeutic secretory products. Each modification employs the respective prior art-element for its known purpose and would have been expected to provide the predictable benefits described by the respective reference. In other words, claim 1 is combining prior art elements according to known methods to yield predictable results. See MPEP 2143 (I)(A).
Regarding claim 2, following the discussion of claim 1 above, Ho et al teach culturing ADSCs at an initial cell density of 15,000 stem cells/cm2. ( See section 2.4. on page 3).
Regarding claim 3, following the discussion of claim 1 above, Levy et al teach the use of allogenic MSCs.
Regarding claims 4-5, Levy et al also teach that the suspension underwent final testing before being released for intravenous infusion, which included cell count, endotoxin, Gram stain, and review of appearance. (See section “Infusion of Investigational Product” page 2837).
Regarding claims 7-8, Trzyna et al teach that the MSCs derived from adipose tissue secrete exosomes with a diameter of 30–150 nm. (See section 3.2.1 page 6). Trzyna et al also teach that exosomes derived from adipose derived stem cells express ALIX, TSG101, CD9, and CD81/63. (See Fig.2, page 6).
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ho et in view of Ding et al, Fryer et al , Pardo et al, Hanson et al, Bastianelli et al, Zhang et al, Levy et al , and Trzyna et al as applied to claims 1-8 above, and further in view of Ejaz t aa ( Stem Cells, 2019).
Regarding claim 9, following the discussion of claim 1 above Trzyna et al provide the foundational teaching that ADSCs have a secretory function and specifically identify HGF among the factors secreted by ADSCs. Thus, Trzyna et al establish that HGF secretion is an expected biological property of ADSCs. It is submitted that Trzyna et al do not expressly specify the concentration of the secreted HGF. Ejaz et al supplement Trzyna et al by teaching that ADSCs secrete HGF. Specifically, Ejaz et al report HGF in the ADSCs conditioned medium at approximately 2000 pg/ml. Thus, Ejaz et al expressly teach production /secretion of the HGF by ADSCs at a concertation corresponding to the lower end of the claimed concentration range. Accordingly, the claimed HFG secretion characteristic would have been an expected property of the ADSCs used in prior art method. In other words, in view of Trzyna’s teaching that ADSCs secrete HGF and Ejaz’s quantitative disclosure of approximately 2000 pg/ml of HGF from ADSCs, the claimed HGF secretion would have been expected when practicing the method of prior art.
Conclusion
No claim is allowed.
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/FATIMAH KHALAF MATALKAH/Examiner, Art Unit 4112
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
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