Monday, April 16, 2007

Somers on Bongso work as prior art to Thomson patents

Back on July 19, 2006, IPBiz noted the discussion of the work of Bongso WHICH APPEARS IN THOMSON'S '780 PATENT:

Research groups in Britain and Singapore are informally reported, later than the work described here, to have attempted to derive human ES cell lines from surplus in vitro fertilization-produced human embryos, although they have not yet reported success in demonstrating pluripotency of their cells and have failed to isolate permanent cell lines. In the only published report on attempts to isolate human ES cells, conditions were used (LIF in the absence of fibroblast feeder layers) that the results below will indicate will not result in primate ES cells which can remain in an undifferentiated state. It is not surprising, then that the cells grown out of human ICMs failed to continue to proliferate after 1 or 2 subcultures, Bongso et al. Hum. Reprod. 9: 2100-2117 (1994).

Flash forward to April 16, 2007, and Terri Somers writes in the San Diego Union-Tribune in an article "Embryonic stem cell pioneer chose to publish, not patent":

That inspiration in 1994 led Bongso, now 60, to become the first scientist to derive human stem cells from an embryo. In the process, he laid the foundation for a field that many people hope will lead to new therapies for diseases such as diabetes, Parkinson's and cancer – and that others oppose because it destroys embryos.


For almost a decade, the fame and financial benefit of being the first to derive human embryonic stem cells has been heaped upon James Thomson and the University of Wisconsin.


On April 2, the U.S. Patent and Trademark Office issued a ruling that may invalidate the Wisconsin patents. Bongso's work was identified as proof that what Thomson did was not new and unique. [IPBiz note: Bongso's work, which is cited within Thomson's '780 patent, was used against one (1) claim of Thomson's '780 patent, hardly justifying Somers' assertion that it is "proof that what Thomson did was not new and unique."]


When Bongso figured out how to pull stem cells out of donated human embryos, he thought it was “hot stuff.”

He wrote a scientific paper describing his methods and results. Then he sent the article to the journal Human Reproduction. [IPBiz note: the very paper referenced by Thomson within Thomson's '780 patent.]

“It is the journal in the IVF world, and I thought only people in IVF would be interested in my discovery,” Bongso said.


Bongso forged ahead, concentrating on growing the stem cells on fallopian tube cells, which had proved to be the trick with embryos. His method never allowed the stem cells to grow past two generations.

“Through 1995, 1996 and 1997, no one seemed interested in my work,” Bongso said. “A scientist gauges his work based on the interest that other scientists show in carrying forward his work. When there was no interest, I lost interest. I moved on.”

He redirected his focus to human fertilization.


“There were so many things you could do with mouse stem cells at the time; no one was really thinking about humans,” she said. “And there was also an issue of access to human embryos.” [IPBiz note: this would be an argument AGAINST the presence of motivation to go from mouse to human. This is thus an argument against the obviousness of Thomson's patents!]


Bongso was quick to credit Thomson for growing several generations of stem cell colonies in 1998. And he reflected on what his lab did wrong.

“We were (separating) our embryonic stem cells into single cells (in separate dishes) for further propagation not realizing that these cells had the unique behavior of being 'social,' ” Bongso said. “This means they preferred neighboring cells of their same type in close contact with them for further successful propagation.”

Separately, although FTCR suggested in July 2006 that work of Bongso might render Thomson's patent claims obvious, FTCR and PubPat did NOT use Bongso in the re-examination request of the '780. The USPTO brought up Bongso, as to ONE (1) patent claim.

The URL for this post is being emailed to Terri Somers. The text of the email to Somers on April 16:

I have read your article in the San Diego Union-Tribune entitled "Embryonic stem cell pioneer chose to publish, not patent." I consider your text: "Bongso's work was identified as proof that what Thomson did was not new and unique," misleading in that the Bongso reference was applied against only one claim of the '780 patent. Specifically, Bongso was applied against claim 11, and not against the more fundamental claims of Thomson's patent. Further, you neglected to mention in your article that Thomson referenced Bongso's work in the '780 patent, and distinguished Bongso's work from what Thomson did. Thomson is hardly trying to take credit for what Bongso did.

More details may be found at

Lawrence B. Ebert
April 16, 2007; 11:50am

No response so far.


Blogger bookbah said...


Can you check me on this? Yes, only 1 claim of Thomson's was cited as being obvious in light of Bongso's patent. But it is a claim that encompasses, as far as I can tell, not just the cells, but the entire process of extracting them? Do you agree? As far as I can tell, Claim 11 of United States Patent 5843780 says the following:

"11. A cell line developed by the method of step 9.

Step 9 is this:

9. A method of isolating a primate embryonic stem cell line, comprising the steps of:

(a) isolating a primate blastocyst;

(b) isolating cells from the inner cell mass of the blastocyst of (a);

(c) plating the inner cell mass cells on embryonic fibroblasts, wherein inner cell mass-derived cells masses are formed;

(d) dissociating the mass into dissociated cells;

(e) replating the dissociated cells on embryonic feeder cells;

(f) selecting colonies with compact morphologies and cells with high nucleus to cytoplasm ratios and prominent nucleoli; and

(g) culturing the cells of the selected colonies.

Am I correct here? This seems major to me.


5:24 AM  

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