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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This action is in response to the papers filed June 10, 2026.
Claims 59-88 are pending in the application.
Claims 84-88 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/21/2026.
Claims 59-65, 72-75 and 77-78 have been amended, no new claims have been added and no claims have been canceled as set forth in the claim set filed 06/10/2026.
Therefore, claims 59-83 are examined on the merits. Claims 59 and 72 are independent claims.
Priority
The present application is a CON of Application 18/852,012 filed 09/27/2024 which is a 35 U.S.C. 371 national stage filing of International Application No. PCT/US2023/065140 filed March 30, 2023.
Applicant’s claim for the benefit of a prior-filed provisional applications 63/444,108 filed on 02/08/2023 and 63/326,640 filed on 04/01/2022 under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Thus, the earliest possible priority for the instant application is April 01, 2022.
Response to arguments
Withdrawn objections/ Rejections in response to Applicants’ arguments or amendments
Claim Objections
The amendments filed 06/10/2026 correct the claim objections previously set forth.
Claim Rejections - 35 USC § 112(b)
The rejection of claims 65 and 78 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second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter is withdrawn.
Applicant’s amendments filed to remove “and/or” obviates the rejection.
Double Patenting Rejection
The provisional rejection of Claims 59-83 on the ground of nonstatutory double patenting as being unpatentable over claims 59-83 of copending Application No. 19/361,182 in view of Nicol (NATURE COMMUNICATIONS| (2019) 10:5116; IDS Reference filed 10/27/2025) is withdrawn.
Applicant has filed a terminal disclaimer on 06/16/2026 in Application No. 19/361,182 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of the newly issued patent which was formerly 19/361,182 has been reviewed and is accepted.
Therefore the double patenting rejection with regards to Application ‘182 is overcome.
Maintained objections/ Rejections in response to Applicants’ arguments or amendments
Claim Rejections - 35 USC § 103
Claims 59-60, 63; 66, 70-73, 76, 79 and 83 remain rejected under 35 U.S.C. 103 as being unpatentable over Ishida (Endocrinology, 2021, Vol. 162, No. 12, 1–11) in view of Nicol (NATURE COMMUNICATIONS| (2019) 10:5116; IDS Reference filed 10/27/2025) and LaVoie (Mol Reprod Dev. 2017;84:788–801).
Regarding claims 59 and 72, Ishida teaches human induced pluripotent stem cells (hiPSC) which have been modified by providing an exogenous polynucleotide which encodes an NR5A1 protein with a doxycycline inducible promoter (p. 2, 2nd column). Ishida discloses 4 iPSC clones: 2 male clones and 2 female clones (page 2, col. 2) and teaches that at day 6, EBs formed from both female and male iPSCs with no obvious differences (page 7, col. 1, last para) The aim of the study was to determine that Leydig cells could be induced from hiPSCs via the forced expression of NR5A1(p. 3, 1st column).
However, Ishida does not teach an exogenous RUNX1 protein within the hiPSCs.
Nicol teaches RUNX1 is “a transcription factor involved in pre-granulosa cell differentiation/maintenance. RUNX1 first delineates the supporting cell lineage and then
becomes pre-granulosa cell-specific during gonad development. RUNX1 plays redundant roles with FOXL2 through binding of common chromatin regions and control of common sets of genes to maintain pre-granulosa cell identity in the fetal ovary. Our findings provide insights into the genomic control of granulosa cell differentiation and pave the way for the identification of
transcription factors and cis-signatures contributing to the fate determination of granulosa cells and the consequent formation of a functional ovary” (p. 12, 1st paragraph).
Moreover, LaVoie teaches that in females, FSHR gene expression is highly restricted to ovarian granulosa cells, and that transcription factors linked to ovarian FSHR promoter regulation in various species include Nuclear receptor subfamily 5 group A member 1 (NR5A1), GATA-binding proteins 4 and 6 (GATA4/6) (p. 792, 1st column). LaVoie further discusses the presence of GATA4 and NR5A1 as regulatory factors in various genes (p. 796, 1st column).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to modify the hiPSC cell of Ishida which comprises an exogenous polynucleotide encoding a NR5A1 protein to additionally comprise an exogenous polynucleotide encoding RUNX1 with a reasonable expectation of success. An artisan would be motivated to include and additional polynucleotide encoding a RUNX1 protein in the cell differentiation protocol of Ishida in order to differentiate the cells to lead a hiPSCs not only to Leydig cells but potentially to a granulosa cell fate. As shown in LaVoie, GATA4 and NR5A1 (both mentioned in Ishida) are important regulatory factors within granulosa cells.
Regarding claims 60 and 73, the combination of Ishida, Nicol and LaVoie make obvious claims 59 and 72. Moreover, Ishida teaches it is known in the art that GATA4 and NR5A1 are transcriptional factors in the same grouping to differentiate cell fate (p. 2, 1st column) rendering obvious to further include an additional exogenous polynucleotide comprising an open reading frame encoding GATA4 protein.
Regarding claims 63, 66, 76 and 79, the combination of Ishida, Nicol and LaVoie make obvious claims 59 and 72. Moreover, Ishida teaches NR5A1 is operably linked to the TetO promoter (i.e. tetracycline or doxycycline inducible promoter) (Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art to operably link each open reading frame to a heterologous promoter.
Regarding claims 70 and 71, the combination of Ishida, Nicol and LaVoie make obvious claims 59 and 72. Regarding the limitation of every polynucleotides is present within a single nucleic acid molecule or the polynucleotides is present within separate nucleic acid molecules this separation or joining can be at once envisaged within the hiPSC comprising the constructs as made obvious by the above references. See MPEP 2131.02.
Regarding claim 83, the combination of Ishida, Nicol and LaVoie make obvious claims 59 and 72. Moreover, Ishida teaches for EB formation, 3 × 104 NR5A1-iPSCs were allowed to aggregate in maintenance medium (p. 3, 1st column). Therefore, Ishida had 1x102 to 1x107 hiPSCs.
Therefore, the invention would have been obvious to one of ordinary skill in the art at the time of the effective filing date
Claims 61-62 and 74-75 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida (supra) in view of Nicol (supra) and LaVoie (supra) as applied to claims 59-60 and 72-73, above, and in further view of Ford (Biology of Reproduction, 2022, 106(3), 503–514; published Oct 2021)
As discussed above, the combined teachings of Ishida, Nicol and LaVoie make obvious a human induced pluripotent stem cells (hiPSC) which have been modified by providing an exogenous polynucleotide which encodes an NR5A1 protein, GATA protein and RUNX1 protein with a doxycycline inducible promoter, as discussed above and incorporated herein in its entirety.
However, these references do not teach an additional exogenous polynucleotide comprising an open reading frame encoding TCF21 protein.
Ford teaches POD1 (TCF21) as a negative regulator of steroidogenic factor-1 (SF-1; NR5A1), an important regulator of granulosa cell regulated ovary development suggesting a possible role in the differentiation of granulosa cells (p. 512, 1st column).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to modify the hiPSC cell of Ishida, Nicol and LaVoie which comprises an exogenous polynucleotide encoding NR5A1 protein, RUNX1 protein and GATA4 protein to additionally comprise an exogenous polynucleotide encoding TCF21 with a reasonable expectation of success. An artisan would be motivated to include TCF in the cell differentiation protocol in order to differentiate hiPSCs to a granulosa cell fate. As taught in Ford, TCF21 is a negative regulator of steroidogenic factor-1 (SF-1), which has a possible role in the differentiation of granulosa cells.
Therefore, the invention would have been obvious to one of ordinary skill in the art at the time of the effective filing date
Claims 64-65 and 77-78 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida (supra) in view of Nicol (supra) and LaVoie (supra) as applied to claims 59, 63, 72 and 76, above, and in further view of Ng (US20210054448A1; Published 02-25-2021).
As discussed above, the combined teachings of Ishida, Nicol and LaVoie make obvious a human induced pluripotent stem cells (hiPSC) which have been modified by providing an exogenous polynucleotide which encodes an NR5A1 protein, GATA protein and RUNX1 protein with a doxycycline inducible promoter, as discussed above and incorporated herein in its entirety.
However, regarding claims 64-65 and 77-78, these references do not teach that the promoter is an alcohol-regulated promoter, a steroid-regulated promoter, a metal-regulated promoter, a pathogenesis-regulated promoter, a temperature-inducible promoter, or a light- responsive promoter.
Ng teaches that vectors which carry transcription factors have inducible promoters known in the art such as “chemically/biochemically-regulated and physically-regulated promoters such as alcohol-regulated promoters, tetracycline-regulated promoters (e.g., anhydrotetracycline (aTc)-responsive promoters and other tetracycline responsive promoter systems, which include a tetracycline repressor protein (tetR), a tetracycline operator sequence (tet0) and a tetracycline transactivator fusion protein (tTA)), steroid-regulated promoters (e.g., promoters based on the rat glucocorticoid receptor, human estrogen receptor, moth ecdysone receptors, and promoters from the steroid/retinoid/thyroid 25 receptor superfamily), metal-regulated promoters (e.g., promoters derived from metallothionein (proteins that bind and sequester metal ions) genes from yeast, mouse and human), pathogenesis-regulated promoters (e.g., induced by salicylic acid, ethylene or benzothiadiazole (BTH)), temperature/heat-inducible promoters (e.g., heat shock promoters), and light-regulated promoters (e.g., light responsive promoters from plant cells)” (para 0044).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to utilize an inducible promoter as described in Ng for the tetO promoter of Ishida, Nicol and LaVoie with a reasonable expectation of success. An artisan would be substituting one known inducible promoter in the art for another for the same purpose of transcription factor expression in iPSCs.
Therefore, the invention would have been obvious to one of ordinary skill in the art at the time of the effective filing date
Claims 67 and 80 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida (supra) in view of Nicol (supra) and LaVoie (supra) as applied to claims 59 and 72 above, and in further view of UniProt1 (ABSS Sequence Search, Rup result SEQ ID NO: 1) and Uniprot2 (UniProt1 (ABSS Sequence Search, Rup result SEQ ID NO: 2)
As discussed above, the combined teachings of Ishida, Nicol and LaVoie make obvious a human induced pluripotent stem cells (hiPSC) which have been modified by providing an exogenous polynucleotide which encodes an NR5A1 protein, GATA protein and RUNX1 protein with a doxycycline inducible promoter, as discussed above and incorporated herein in its entirety.
However, NR5A1 and RUNX1 are not taught as SEQ ID NO:1 and SEQ ID NO: 2 respectively.
However, SEQ ID NO: 1 was taught in Uniprot as “STF1_Human” as shown below in the Rup results.
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762
1453
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And SEQ ID NO: 2 was taught in Uniprot as “RUNX1_HUMAN” as shown below in the Rup results.
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787
1551
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It would have been obvious at the time of filing to use the Uniprot database as a source for the protein sequences known in the art to utilize in the method of Ishida, Nicol and LaVoie with a reasonable expectation of success. An artisan would have been motivated to use these sequences as they are known to be the desired transcription factors rendered obvious by Ishida, Nicol and LaVoie. One would have had a reasonable expectation of success in carrying out the invention as it was well within the skill of the ordinary artisan to substitute one sequence for another.
Therefore, the invention would have been obvious to one of ordinary skill in the art at the time of the effective filing date
Claims 68 and 81 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida (supra) in view of Nicol (supra) and LaVoie (supra) as applied to claims 59, 60, 72 and 73 above, and in further view of UniProt5 (ABSS Sequence Search, Rup result SEQ ID NO: 5)
As discussed above, the combined teachings of Ishida, Nicol and LaVoie make obvious a human induced pluripotent stem cells (hiPSC) which have been modified by providing an exogenous polynucleotide which encodes an NR5A1 protein, GATA protein and RUNX1 protein with a doxycycline inducible promoter, as discussed above and incorporated herein in its entirety.
However, GATA4 is not taught as SEQ ID NO: 5.
However, SEQ ID NO: 5 was taught in Uniprot as “GATA4_Human” as shown below in the Rup results.
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757
1512
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It would have been obvious at the time of filing to use the Uniprot database as a source for the protein sequences known in the art to utilize in the method of Ishida, Nicol and LaVoie with a reasonable expectation of success. An artisan would have been motivated to use these sequences as they are known to be the desired transcription factors rendered obvious by Ishida, Nicol and LaVoie. One would have had a reasonable expectation of success in carrying out the invention as it was well within the skill of the ordinary artisan to substitute one sequence for another.
Therefore, the invention would have been obvious to one of ordinary skill in the art at the time of the effective filing date
Claims 69 and 82 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida (supra) in view of Nicol (supra) and LaVoie (supra) and Ford (supra) as applied to claims 59, 61, 72, and 74 above, and in further view of UniProt4 (ABSS Sequence Search, Rup result SEQ ID NO: 4)
As discussed above, the combined teachings of Ishida, Nicol, LaVoie, and Ford make obvious a human induced pluripotent stem cells (hiPSC) which have been modified by providing an exogenous polynucleotide which encodes an NR5A1 protein, GATA protein, RUNX1 protein and a TCF21 (POD1) protein with a doxycycline inducible promoter, as discussed above and incorporated herein in its entirety.
However, TCF21 is not taught as SEQ ID NO: 4.
However, SEQ ID NO: 4 was taught in Uniprot as “TCF21_Human” as shown below in the Rup results.
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856
1310
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Greyscale
It would have been obvious at the time of filing to use the Uniprot database as a source for the protein sequences known in the art to utilize in the method of Ishida, Nicol, LaVoie and Ford with a reasonable expectation of success. An artisan would have been motivated to use these sequences as they are known to be the desired transcription factors rendered obvious by Ishida, Nicol, LaVoie and Ford. One would have had a reasonable expectation of success in carrying out the invention as it was well within the skill of the ordinary artisan to substitute one sequence for another.
Therefore, the invention would have been obvious to one of ordinary skill in the art at the time of the effective filing date.
In response to Applicant’s arguments and amendments filed 06/10/2026 regarding the 103 rejections previously set forth,
Applicant’s arguments and amendments have been considered, however they are not persuasive.
Applicant argues that the Office has not identified in any cited reference or combination as a whole, a teaching, suggestion or motivation for the pair claimed: RUNX1 and NR5A1 in an induced pluripotent stem cell.
In response to applicant's arguments, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As shown below, the combined teachings provide teaching, suggestion and motivation together to show obviousness.
First, Applicant argues that Ishida is directed towards a different project regarding Leydig-like cells, without teaching RUNX1 or the endpoint of the present invention. Applicant further states that Ishida shows that RUNX1 overexpression results in materially distinct cells such as adrenal-like cells.
Examiner states that Ishida is the primary reference which teaches human induced pluripotent stem cells which are modified by providing NR5A1 to produce EBs formed from both female and male iPSCs . The additional references modify this in order to show obviousness of the claimed invention where including an additional polynucleotide encoding a RUNX1 protein in the cell differentiation protocol of Ishida could lead iPSCs not only to Leydig cells but potentially to a granulosa cell fate. As shown in LaVoie, GATA4 and NR5A1 (both mentioned in Ishida) are important regulatory factors within granulosa cells.
Second, Applicant argues that Nicol does not cure this deficiency and only teaches RUNX1 in fetal gonads and that it is biologically relevant to pre-granulosa development. Moreover, Applicant states that this would suggest that this was at most is one among many developmental regulators.
Third, Applicant argues that LaVoie is merely a review article which addresses regulation of genes in granulosa cells, one of which is NR5A1. However, Applicant states that this does not teach that it should be paired with RUNX1. Moreover, Applicant lists that the references against the dependent claims do not remedy the deficiencies of the combination of Ishida, Nicol and LaVoie regarding the independent claim.
Regarding the arguments against both Nicol and LaVoie as secondary references one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Moreover, the two references combined provide for modifying the cells of Ishida which have NR5A1 expression already, to have RUNX1 expression induced as well in the iPSCs. Nicol teaches RUNX1 is a transcription factor involved in pre-granulosa cell differentiation/maintenance. RUNX1 first delineates the supporting cell lineage and thenbecomes pre-granulosa cell-specific during gonad development. LaVoie teaches that in females, FSHR gene expression is highly restricted to ovarian granulosa cells, and that transcription factors linked to ovarian FSHR promoter regulation in various species include Nuclear receptor subfamily 5 group A member 1 (NR5A1), GATA-binding proteins 4 and 6 (GATA4/6) (p. 792, 1st column). These together provide teaching, suggestion and motivation to include an additional polynucleotide encoding a RUNX1 protein in the cell differentiation protocol of Ishida in order to differentiate the cells to lead a hiPSCs not only to Leydig cells but potentially to a granulosa cell fate. As shown in LaVoie, GATA4 and NR5A1 (both mentioned in Ishida) are important regulatory factors within granulosa cells.
Lastly, Applicant argues that the combination is based on improper hindsight reasoning and that the “obvious to try” rationale does not strengthen the rejection.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). And in response to the argument that the “obvious to try” rationale is an effort to “salvage” the rejection, the rationale (E) is a well known example of rationale utilized by the Office when a finite number of options are presented. However, the “obvious to try” rationale is not utilized. There is specific motivation detailed in the conclusory paragraph above.
Regarding unexpected results, Applicant argues that even if a case of obviousness is present, beneficial results are attributable to the present invention over that of the prior art. Particularly, Applicant states that the combinatorial experiments described from the testing of a library for a successful pairing of granulosa cell genes resulted in NR5A1 expression being shown to be essential for efficient estradiol production and that the combination was ideal for inducing FOXL2 expression and granulosa surface markers and yielding a robust phenotype. Furthermore, Applicant points to the expression of both genes resulting in a 2-15 fold increase in efficiency of granulosa cell-like production relative to controls.
Examiner states that if a case of unexpected results is present, the claims are not in commensurate with the unexpected results. Applicant has not pointed out where the 2-15 gold increase in efficiency of granulosa cell like production is detailed within the application, nor do the claims reflect this result. Regarding markers and expression, while Applicant may have discovered something novel in the field of invention regarding estradiol production, it does not make the invention as shown in the application patentable. Moreover, the estradiol production and expression of NR5A1 are biological processes that would not distinguish an invention from that of what naturally occurs in granulosa cells. In contrast to Applicants’ remarks, the instant claims as written do not require induction of “FOXL2 expression and granulosa surface markers” Lastly, if Applicant’s invention is the granulosa-like cell, the claims should be in commensurate with how the granulosa-like cell was obtained. There are additional culture steps detailed in the specification with inhibitors and other compounds which contribute to the production of the specific cells of the invention.
Double Patenting
Claims 59-83 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 22 of copending Application No. 18/852, 012 as per claims filed on 06/16/2025 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1 and 4 of Application ‘012 read on the independent claims of the present application, claims 59 and 72. Claims 1, 4 and 22 teach a population of pluripotent stem cells (i.e. iPSCs) which comprise an engineered polynucleotide encoding a RUNX family member protein, which can be RUNX1 or RUNX2, and a NR5A1 protein.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In response to Applicant’s remarks and amendments filed 06/10/2026,
Applicant’s remarks and amendments have been considered, however they are not persuasive to overcome the rejection.
Applicant states that they intend to file a terminal disclaimer, however such disclaimer has not been filed in this application. Therefore, the rejection is maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALEXANDRA F CONNORS/ Examiner, Art Unit 1634
/MARIA G LEAVITT/Supervisory Patent Examiner, Art Unit 1634
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