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 .
Receipt is acknowledged of Applicant’s Request for Continued Examination filed on 03/10/2025; and Amendments filed on 03/10/2025 and 05/01/2025.
Claims 1 Has been amended.
Claims 5-8, 12-13 have been canceled.
Claims 1, 3-4, 9-11, 15-19 are pending in the instant application.
Claims 15-19 have been previously withdrawn from consideration.
Note, rejections and objections not reiterated from previous office actions are hereby withdrawn. The following rejections or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/10/2025 has been entered.
Claim Rejections - 35 USC § 112, 4th
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Independent claim 1 has already recite “hydrophobic photoswnsitizer”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claim(s) 1, 3-4, 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over LUCKY et al (Nanoparticles in Photodynamic Therapy. Chem. Rev. 2015, 115, 1990−2042) in view of BEKAH et al (Synthesis and characterization of biologically stable, doped LaF3 nanoparticles co-conjugated to PEG and photosensitizers. Journal of Photochemistry and Photobiology A: Chemistry 329 (2016) 26–34).
LUCKY teaches nanoparticles in photodynamic therapy (see title), wherein the prior art had known of nanoparticle composition comprising of: a hydrophobic compound, such as polylactide co-glycolide (PLGA) (see pg. 2013, 1st col); a nanoscintillator, such as lanthanum fluoride doped with cerium (see pg. 2013, 1st col); and a photosensitizer, such as PpIX (see pg. 2013, 1st col), which is protoporphyrin IX. Additional disclosures include: typical size of 100nm (see pg. 1998, 1st col); enhanced drug loading (see pg. 1998, 1st col). LUCKY also teaches “systemic use of such synthetic polymeric nanoparticles has been limited due to their rapid opsonisation and removal from the systemic circulation by the macrophage cells of the mononuclear phagocytic system (MPS). In order to evade the recognition and removal by the MPS, the nanoparticles are often further surface modified by polyethylene glycol (PEG) or poly(ethylene oxide) to confer “stealth properties. PEGylated PLGA nanoparticles have been shown to have enhanced circulation time and remain in the blood compared to bare PLGA nanoparticles” (see pg. 2000). Thus, it would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate PEGylated PLGA. The person of ordinary skill in the art would have been motivated to make those modifications, because it would enhance circulation time and remain in the blood as compared to PLGA alone, and reasonably would have expected success because PEGylated PLGA nanoparticles are well-known in the prior art of nanoparticles in photodynamic therapy.
LUCKY does not specifically teach the amount of doped cerium in the lanthanum fluoride, such as 10% cerium.
BEKAH teaches photodynamic therapy using nanoparticle composition (see title) comprised of: a nanoscintillator, such as lanthanum fluoride doped with cerium (see abstract), photosensitizers (see abstract), and hydrophilic compound, such as PEG (see abstract), with 10% and 50% cerium doping.
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate 10% cerium doping or any optimized amount of cerium doping. The person of ordinary skill in the art would have been motivated to make those modifications and reasonably would have expected success because the prior art had used this amount of cerium to dope lanthanum fluoride.
Note, the prior art’s nanoparticle would inherently have the chemical/physical properties, such as “the nanoparticle shows increased cytotoxicity in the presence of the ionizing radiation compared to radiotherapy alone”, as claimed by Applicant, because the prior art nanoparticle has the same ingredients as claimed by Applicant, unless proven otherwise.
Response to Arguments
Applicant argues that there is no recitation in Lucky or Bekah as required by the currently amended claims, of a nanoparticle with the property of having increased cytotoxicity in the presence of ionizing radiation when compared to the cytotoxicity of radiation alone. In an effort to address what might be a concern of the Examiner, Applicants note that the cytotoxicity of the claimed nanoparticles is one of their properties and discussion of this property does not require that Applicant be presenting method claims. Recitation of the relative cytotoxicity of the claimed nanoparticles (as supported by the Specification) is no different than reciting the level of cerium dopant in the lanthanum fluoride.
The Examiner finds this argument unpersuasive, because as discussed in the rejection, the prior art’s nanoparticle would inherently have the chemical/physical properties, such as “the nanoparticle shows increased cytotoxicity in the presence of the ionizing radiation compared to radiotherapy alone”, as claimed by Applicant, because the prior art nanoparticle has the same ingredients as claimed by Applicant, unless proven otherwise.
Telephonic Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAKE MINH VU whose telephone number is (571)272-8148. The examiner can normally be reached Mon-Fri 9:00am-5:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at (571) 272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAKE M VU/Primary Examiner, Art Unit 1618