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 .
Status of Claims
Claims 1-11 are pending.
Priority
Claims 1-11 are a CON of PCT/JP 2023/026332 filed on July 19, 2023, which has priority to JAPAN 2022-115178 filed on July 20, 2022.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on May 14, 2025, and on December 24, 2025, and on April 25, 2026, were filed before the mailing of the First Office Action on October 3, 2026. The Non-Patent Literature is in compliance with the provisions of 37 CFR 1.97 and are being considered by examiner.
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.
Claim 9 is 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 9 recites “relative expression level of Meflin during a culture period is maintained at 0.40 or more”. However, it is unclear what parameters are assigned to “culture period”. Although the specification refers generally to prolonged culture periods, neither the claim nor the specification provides any reference as to what makes up a “culture period” in which the presence of Meflin is to be determined. It is unclear whether the limitation refers to a particular duration of culture, a particular number of passages or subcultures, or the entire period of MSC expansion. Based on this, a person of ordinary skill would not with reasonable certainty understand the meets and bounds of “culture period”.
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.
Claims 1-11 are rejected under 35 U.S.C. §103 as being unpatentable over Lam et al. [Adaptation of a simple microfluidic platform for high-dimensional quantitative morphological analysis of human mesenchymal stromal cells on polystyrene-based substrates, SLAS Technology, 2017], in view of Jayaraman et al. [Acceleration of translational mesenchymal stromal cell therapy through consistent quality GMP manufacturing, Frontiers in Cell and Developmental Biology, 2021], in view of Corning® Cellstack® Culture Chambers (Hereinafter Culture Chambers) [Grow more cells with Corning, Wayback Machine, January 2022], in view of Nguyen et al. [Dynamic bioreactor culture of high volume engineered bone tissue, Tissue Eng Part A., 2016], in view of Wiese and Braid (Hereinafter Wiese) [Transcriptome profiles acquired during cell expansion and licensing validate mesenchymal stromal cell lineage genes, Stem Cell Res Ther., 2020].
Regarding claim 1, Lam et al. teaches a method of culturing human mesenchymal stem cells (MSCs) on bacteriological-grade polystyrene substrates (bgPS) where the cell contacting bgPS surfaces using water contact angle measurements and reports that the unexposed bgPS surface has a water contact angle of 80.84˚ ± 2.02˚ [Wettability of Unexposed and UV-exposed PS substrates ¶ 1]. Lam et al. further teaches that the water contact angles of 77.65˚ ± 2.45˚ following two hours of UV exposure and 73.33˚ ± 1.14˚ following four hours of UV exposure [Id.]. Lam et al. further teaches culturing MSCs in a growth medium, trypsinizing the cultured MSCs to form single-cell suspensions, and subsequently seeding and culturing the MSCs on the characterized bgPS surfaces [Cell Culture and Seeding]. However, Lam et al. does not expressly teach subculturing the MSCs two or more times using the culture vessel with the specified water contact angle.
For this limitation, Sabatino et al. teaches subculturing the MSCs two or more times using the disclosed culture surface [Results]. Additionally, Sabatino et al. teaches repeated expansion and subculturing of bone-marrow derived MSCs through successive passages using multi-layer Cell Factor culture vessels [Id.]. In addition, Jayaraman et al. also teaches repeated passages and scale-out expansion of human MSCs using multi-layer culture vessels as an established technique for large-scale manufacturing [Figure 2].
Here, it would have been prima facie obvious to a person of ordinary skill in the art prior to the filing of the claimed invention to modify the systems and methods of Lam et al. that disclosed the use of water contact angle in order to determine the relative hydrophilic properties of the culture surface with the additional teachings of both Sabatino et al. and Jayaraman et al. where both discuss expansion techniques for MSCs through repeated culture and successive passages on multi-layered polystyrene culture vessels. Based on this, a person of ordinary skill in the art would have had a reasonable expectation of success to combine the teachings of Lam et al. that disclosed culture vessels with water contact angles equal to or greater than 70˚ can be successfully cultured with the combined teachings of Sabatino et al. and Jayaraman et al. where both teach the use of successive passages and subcultures for maintaining and expanding MSC culture populations using multi-layered culture vessels made from polystyrene. Furthermore, a person of ordinary skill would have been motivated to apply the known repeated-subculturing and scale-up techniques of Sabatino et al. and Jayaraman et al. to the MSC culture method of Lam et al. to predictably increase MSC production where this combines known prior art elements according to known methods leading to predictable results. MPEP §2143(I)(A) states “The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.”
For claim 2 where the culture vessel has a volume of 0.6 L or greater, Sabatino et al. teaches the use of multi-layer cell factories with a volume of 2.5 L per container [BMSC passage 2 culture]. Additionally, Jayaraman et al. also teaches the use of Corning CellSTACK® systems that have around 650-1000 mL depending on configuration [2D monolayer-based scale-out culture system ¶ 1 and Grow more cells with Corning®, Respectively].
For claim 3 where the culture vessel is a multi-layer flask, Both Sabatino et al. and Jayaraman et al. disclose using multi-layer cell factories that functionally and structurally a multi-layer culture flask [See rejection for claim 2]. Additionally, both systems are made of polystyrene [Initial growth of BMSCs and 3D microcarrier-based scale-up suspension system, respectively].
It would have been prima facie obvious to a person of ordinary skill prior to the filing of the claimed invention to modify the methods and systems of Lam et al. that discloses a method of culturing MSCs that involve measuring the water contact angle with the further teachings of both Sabatino et al. and Jayaraman et al. because the use of a culture vessel with a volume greater than 0.6 L and is a multi-layered flask represent known methods in MSC production and expansion resulting in predictable results based on the teachings of Sabatino et al. and Jayaraman et al. that teach multiple methods of culturing and expanding MSCs using large volume multi-layered flasks allowing for expansion and scale-out culture systems used for MSC large scale manufacturing. Therefore, an artisan would have had a reasonable expectation of success to combine known methods in the art of culturing and expanding MSCs on a large production scale where the artisan would have chosen a culture vessel with a specific water contact angle given the chemistry and wettability can affect the amount, composition, conformation, and orientation of absorbed proteins coupled with the known methods of large scale production as taught by Sabatino et al. and Jayaraman et al.
For claim 4 where the mesenchymal stem cells are either bone marrow or synovial derived, Sabatino et al. discloses that bone marrow MSCs, including other MSC origins, are the most common sources of MSCs [Cell isolation ¶ 1].
For claim 5 where the culture vessel is made of polystyrene, Lam et al., as well as Sabatino et al. and Jayaraman et al., disclose the use of culture vessels that are made of polystyrene [Abstract, Initial growth of BMSCs, 3D microcarrier-based scale-up suspension system ¶ 1, respectively]. Additionally, polystyrene culture vessels are the culture vessels that Lam et al. performed tests in order to determine what the water contact angle was for the specific culture vessel that was to be used [Wettability of unexposed and UV-exposed PS substrates]. Therefore, a person of ordinary skill in the art would have a reasonable expectation of success to choose a culture vessel made of polystyrene given what Lam et al., Sabatino et al., and Jayaraman et al. teach. Furthermore, polystyrene culture vessels are widely available commercially and is an established material that is routinely used in the manufacture of such products as culture vessels that are designed specifically to culture, maintain, and expand mesenchymal stem cells, as well as other cell types. Additionally, the use of bone marrow derived MSCs represent a known method [Jayaraman et al. Cell isolation] because bone marrow stem cells were well known and routinely used as a source for mesenchymal stem cells and would have constituted a predictable selection of a known cell source for its established use in MSC culture expansion.
For claim 6 where the culturing is performed absent a ROCK inhibitor, Nguyen et al. discloses culturing bone marrow-derived MSCs that were cultured in growth media containing DMEM with L-Glutamine, supplemented with 10% fetal bovine serum, 1% v/v penicillin/streptomycin, and nonessential amino acids [Human mesenchymal stem cell culture ¶ 1]. Additionally, Nguyen et al. also discloses using RoosterBio Inc. high performance media kit which is also absent of a ROCK inhibitor. Furthermore, Lam et al. also discloses using hMSC high performance media kit from RoosterBio Inc [MSC expansion]. Here, both Nguyen et al. and Lam et al. teach the use of a culture media that is absent a ROCK inhibitor demonstrating bone-marrow derived MSCs could be successfully expanded under such conditions without a ROCK inhibitor.
For claim 7 where the MSCs are subcultured five or more times, Nguyen et al. teaches that most MSC signature genes are stable during cell expansion [Most MSC signature genes are stable during cell expansion]. Furthermore, Nguyen et al. also discloses passages up to 10 times and that the selected MSCs at any given passage constitutively express 435 of 445 Roson-Burgo MSC signature genes despite accumulating age-related markers during pre-senescence [id.].
For claim 8 where population doubling occurred after the start of culturing, although silent on the specific culture passage, Nguyen et al. teaches that all MSC populations were expanded to comparable population doublings in both xeno- and serum-free media [Background ¶ 2]. Based on this, it would have been prima facie obvious to a person of ordinary skill in the art prior to the filing of the claimed invention to modify the teachings and methods of Lam et al. that disclosed analyzing water contact angle in culture vessels in order to ensure proper cell expansion in bone-derived MSCs with the further teachings of Nguyen et al. that also teaches a method for expanding bone-derived MSCs using a culture condition that does not contain a ROCK inhibitor where the culturing and/or passaging of the MSCs is done 5 or more times with the result being a comparable population doubling. With this in mind, there would have been a reasonable expectation of success where a person of ordinary skill in the art applying the teachings of both Lam et al. and Nguyen et al. where both disclosed a ROCK inhibitor free culture media, namely the culture media commercially available through RoosterBio Inc., with the further teachings of Nguyen et al. that discloses passaging, i.e. subculturing, the MSCs up to 10 separate times with over 98% gene retention and where the Nguyen et al. taught that the authors witnessed population doubling in both xeno- and serum free conditions.
For claim 9 where the expression level of Meflin is set to 1, a relative expression level of Meflin during a culturing period is maintained at 0.40 or more, Although Wiese does not expressly disclose maintaining a relative Meflin, noted as ISLR in Wiese, expression level of 0.40 or more when the first subculture is normalized to 1, Wiese teaches that ISLR expression varies during serial MSC culture and remains detectable through multiple passages before becoming undetectable with extended passaging [Fig. 1 Part A]. Thus, Meflin expression was a known culture-dependent parameter and would have been obvious to one of ordinary skill in the art seeking to maintain the undifferentiated MSC phenotype to routinely optimize the duration and conditions of culture so as to retain Meflin expression with selection of relative expression level of 0.40 or more representing optimization of a known result-effective parameter. Moreover, the specification does not establish the criticality of the 0.40 threshold or produces an unexpected result relative to other levels of retained Meflin expression. Furthermore, Wiese also disclosed that MSCs constitutively expressed around 98% of the tested 445 tested Roson-Burgo MSC signature genes. MPEP §2144.05(II)(A) states “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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)… In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). Here, Applicant has not established that maintaining a relative Meflin expression level of 0.40 or more is critical, nor demonstrated that the claimed threshold produces unexpected results compared with other levels of Meflin expression during MSC culture as evidenced by the disclosure in Wiese.
For claim 10 where the mesenchymal stem cells are used for cell therapy, Jayaraman et al. teaches the use of both autologous and allogeneic cell therapy manufacturing for production of MSCs [Introduction ¶ 4].
For claim 11 where the mesenchymal stem cells used for cell therapy are allogeneic, again, Jayaraman et al. teaches that MSC production for cell therapy can involve either autologous or allogeneic cell therapy manufacturing process [Id.].
Here, the cited references collectively demonstrate that the claimed features were known in the MSC expansion art, including culturing MSCs on known culture-vessel surfaces, using of bone marrow-derived MSCs, RoosterBio media without a ROCK inhibitor, serial subculturing, and monitoring population doublings along with presence of Meflin (ISLR) expression during expansion. A person of ordinary skill would have had reason to combine the cited references given the disclosed teachings address the same recognized objective of expanding MSCs populations while maintaining undifferentiated MSC characteristics where the references teach compatible culture materials, media, cell sources, and expansion conditions. Selection and routine optimization of known culture parameters, including surface properties, culture duration, passage number, and conditions associated with retention of Meflin expression, would have been within the ordinary skill in the art. Given this, it would have been prima facie obvious to a person of ordinary skill in the art prior to the filing of the claimed invention to modify the systems and methods of Lam et al. with the teachings of Sabatino et al., Jayaraman et al., Nguyen et al., and Wiese to combine the teachings of the cited references to arrive at the claimed MSC culture and expansion methods, as the claimed features represent predictable combinations and routine optimization of known MSC culture conditions and parameters for their established purpose. Therefore, an artisan would have had a reasonable expectation of success combining the teachings of the above cited references where a MSC culture expansion method contemplated the water contact angle of the culture vessel where the culture vessel was a multi-layer flask using bone marrow-derived MSCs as the stem cell to be cultured and expanded in a commercially available media that does not contain a ROCK inhibitor where the MSCs are passaged multiple times resulting in a doubling of the population and where the artisan would know to recognize specific expression markers associated with undifferentiated MSCs where the allogeneic MSCs are used in a cell therapy.
The Supreme court has acknowledged:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable varition..103 likely bars its patentability…if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions…
…the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (see KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 U.S. 2007) emphasis added.
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court reaffirmed "the conclusion that when a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976)). The Supreme Court also emphasized a flexible approach to the obviousness question, stating that the analysis under 35 U.S.C. § 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418; see also id. at 421 ("A person of ordinary skill is... a person of ordinary creativity, not an automaton.").
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims allowed.
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/JOHN DAVID MOORE/Examiner, Art Unit 1638
/JAMES D SCHULTZ/Supervisory Patent Examiner, Art Unit 1631
