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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/11/2025 has been entered.
Status of the Claims
This action is in response to papers filed 11/11/2025 in which claims 9, 10, and 19 were canceled; claims 2-8, 11, and 13-18 were withdrawn; and claims 1 and 2 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1, 12 and 20 are under examination.
Withdrawn Rejections
Applicant's amendments and arguments filed 11/11/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record.
Any rejection and/or objection not specifically addressed below is herein withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Modified Rejections
Necessitated by Applicant’s Claim Amendments
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.
Claim(s) 1 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hainfeld et al (US 2009/0186060 A1) in view of Chen et al (International Journal of Hydrogen Energy, 2015, 40: 4548-4557).
Regarding claims 1 and 20, Hainfeld teaches a metal nanoparticles of platinum, bismuth or mixtures thereof, wherein the nanoparticle is functionalized with PEG comprising OH or COOH (e.g., SH-PEG-OH and SH-PEG-COOH) (Abstract; [0014]-[0015], [0018]-[0020], [0023], [0035], [0075]-[0076], [0080]-[0081]; claims 1, 9 and 19-22). Hainfeld teaches that the metal nanoparticles are non-toxic and safely administered to human intravenously or intra-arterially (Abstract; [0027], [0035], [0039], [0058], [0062], [0085]-[0086]), thereby the metal nanoparticles of Hainfeld are sterile and biocompatible.
It would have been obvious to one of ordinary skill in the art to select a mixture of platinum and bismuth as the metal of the nanoparticles, and produce the claimed invention. One of ordinary skill in the art would have been motivate to do so because Hainfeld indicated that alloys or mixtures of two heavy metals including platinum and bismuth can be selected as the metal core of the nanoparticles (Hainfeld: [0019], [0064]-[0067], [0075], and [0081]; claims 9 and 11). One of ordinary skill in the art would have reasonable expectation of success in selecting a mixture of platinum and bismuth as the metal of the nanoparticles because it is well-established in the prior art in view of Chen, platinum and bismuth are particularly suitable for use as a mixture in forming bimetallic platinum-bismuth nanoparticles (Chen: Abstract; pages 4549-4552). Thus, an ordinary artisan provided the knowledge from Chen would have looked to selecting an alloy or mixtures of two heavy metals, particularly platinum and bismuth as the metal of the nanoparticles, and achieve Applicant’s claimed invention with reasonable expectation of success.
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 before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hainfeld et al (US 2009/0186060 A1) in view of Chen et al (International Journal of Hydrogen Energy, 2015, 40: 4548-4557), as applied to claim 1 above, and further in view of Illés et al (Journal of Magnetism and Magnetic Material, 2015, 380: 132-139).
The nanoparticles of claim 1 is discussed above by Hainfeld and Chen, said discussion being incorporated herein in its entirety.
However, Hainfeld and Chen do not teach particularly the functionalized polyethylene glycol of claim 12.
Regarding claim 12, Illés teaches PEGylation of magnetic (metal) nanoparticles, wherein pegylation is via α-hydroxy-ω-carboxy PEG (Abstract; Introduction; pages 133 and 136-137). Illés teaches PEGylation provides resultant metal nanoparticles that is stable, biocompatible, and non-toxic (Abstract; Introduction; pages 133 and 136-137).
It would have been obvious to one of ordinary skill in the art to modify the metal nanoparticles of Hainfeld in view of Chen such that the metal nanoparticles are functionalized or pegylated with α-hydroxy-ω-carboxy PEG, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Illés provided the guidance to so by teaching that peglyation of metal nanoparticles can be via other known functional groups in the art including α-hydroxy-ω-carboxy PEG (Illés: Abstract; Introduction; pages 133). Thus, an ordinary artisan provided the guidance from Illés would have looked to other pegylation functional groups in the art including α-hydroxy-ω-carboxy PEG known to be suitable for use in functionalizing on the surface of the metal nanoparticles, and achieve Applicant’s claimed invention with reasonable expectation of success.
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 before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hainfeld et al (US 2009/0186060 A1) in view of Chen et al (International Journal of Hydrogen Energy, 2015, 40: 4548-4557), as applied to claim 1 above, and further in view of Glogowski et al (Nano Letters, 2007, 7(2): 389-393; previously cited).
The nanoparticles of claim 1 is discussed above by Hainfeld and Chen, said discussion being incorporated herein in its entirety.
However, Hainfeld and Chen do not teach particularly the functionalized polyethylene glycol of claim 12.
Regarding claim 12, Glogowski teaches metal (gold) nanoparticles functionalized (pegylated) with PEG-thiol or PEG-OH (Abstract; pages 389-390 and 392). Glogowski teaches pegylation of gold nanoparticles with PEG-thiol or PEG-OH improve the stability of the gold nanoparticles (page 392).
It would have been obvious to one of ordinary skill in the art to modify the metal nanoparticles of Hainfeld in view of Chen such that the metal nanoparticles are functionalized or pegylated with PEG-OH, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Glogowski provided the guidance to so by teaching that aside from PEG-thiol, the metal nanoparticles can also be functionalized or pegylated with other known functional groups in the art including PEG-OH (Glogowski: Abstract; pages 389-390). Thus, an ordinary artisan provided the guidance from Glogowski would have looked to other pegylation functional groups in the art including PEG-OH known to be suitable for use in functionalizing on the surface of the metal nanoparticles, and achieve Applicant’s claimed invention with reasonable expectation of success.
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 before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hainfeld et al (US 2009/0186060 A1) in view of Chen et al (International Journal of Hydrogen Energy, 2015, 40: 4548-4557), as applied to claim 1 above, and further in view of Tiwari et al (Nanomaterials, 2011, 1: 31-63; previously cited).
The nanoparticles of claim 1 is discussed above by Hainfeld and Chen, said discussion being incorporated herein in its entirety.
However, Hainfeld and Chen do not teach particularly the functionalized polyethylene glycol of claim 12.
Regarding claim 12, Tiwari teaches metal (gold) nanoparticles functionalized with known peglyation compound of PEG-thiol or PEG-diamine (Abstract; Introduction; pages 33-34 and 41). Tiwari teaches peglyation of metal nanoparticles provide metal nanoparticles that are non-toxic and have improved stability and biocompatibility (Abstract; Introduction; pages 35, 38-39, and 41-42).
It would have been obvious to one of ordinary skill in the art to modify the metal nanoparticles of Hainfeld in view of Chen such that the metal nanoparticles are functionalized or pegylated with PEG-diamine, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Tiwari provided the guidance to so by teaching that aside from PEG-thiol, the metal nanoparticles can also be functionalized or pegylated with other known functional groups in the art including PEG-diamine (Tiwari: Abstract; Introduction; pages 33-34 and 41). Thus, an ordinary artisan provided the guidance from Tiwari would have looked to other pegylation functional groups in the art including PEG-diamine known to be suitable for use in functionalizing on the surface of the metal nanoparticles, and achieve Applicant’s claimed invention with reasonable expectation of success.
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 before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 11/11/2025 have been fully considered but they are not persuasive.
Below is the Examiner’s response to Applicant’s arguments as they pertain to the pending 103 rejections
Applicant argues by alleging that the cited prior arts only suggest the cited prior arts suggest gold or cadmium selenide and gold nanoparticles, and thus, none of the cited prior art teach or suggest particularly platinum-bismuth nanoparticles functionalized at its surface by functionalized polyethylene glycol comprising at least one OH, COOH or NH2 function. Applicant further alleges that that the claimed nanoparticles are advantageously non-toxic, biocompatible and sterile nanoparticles that can be used in therapeutic treatments and/or used for medical and/or biological imaging. (Remarks, pages 6-12).
In response, the Examiner disagrees. The pending 103 rejection over independent claim 1 is based on Hainfeld in view of Chen. As discussed above in the pending 103 rejection, Hainfeld teaches metal nanoparticle is functionalized with PEG comprising OH or COOH (e.g., SH-PEG-OH and SH-PEG-COOH) (see 103 rejection, page 4 of this office action). Hainfeld further indicated that alloys or mixtures of two heavy metals including platinum and bismuth can be selected as the metal core of the nanoparticles (Hainfeld: [0019], [0064]-[0067], [0075], and [0081]; claims 9 and 11). Chen provided the motivation and reasonable expectation of success for selecting a mixture of platinum and bismuth as the metal of the nanoparticles because Chen established that platinum and bismuth are particularly suitable for use as a mixture in forming bimetallic platinum-bismuth nanoparticles (Chen: Abstract; pages 4549-4552). Thus, an ordinary artisan provided the prior knowledge from Chen would have looked to selecting an alloy or mixtures of two heavy metals, particularly platinum and bismuth as the metal of the nanoparticles, as the use of a mixture of platinum and bismuth to form metal nanoparticles is well-known in the art.
Thus, the cited prior arts of Hainfeld in view of Chen established that bimetallic platinum-bismuth nanoparticles are known in the art. Hainfeld in addition with Illés, Glogowski, and Tiwari established that coating metal nanoparticles via peglyation, as in the functionalized polyethylene glycol recited in instant claims 1 and 12, are well-known and widely studied strategy for improving the biocompatibility and stability of the metal nanoparticles (see 103 rejections, pages 4-8 of this office action). Thus, the functionalization of bimetallic platinum-bismuth nanoparticles with a functionalized polyethylene glycol as recited in claims 1 and 12 or in other words, peglyation of metal nanoparticles such as platinum-bismuth nanoparticles using well-known functionalized polyethylene glycol recited in claims 1 and 12, is an obvious modification using known technique of pegylation with known pegylation functional groups in the art so as to form pegylated metal nanoparticles that have improved biocompatibility and stability.
As such, Applicant’s advantageous of providing non-toxic, biocompatible and sterile nanoparticles is obvious and expected based on the cited prior arts teaching of the known benefits of peglyation of metal nanoparticles, to provide metal nanoparticles that are non-toxic, biocompatible, and stable (see 103 rejections, pages 4-8 of this office action).
As a result, for at least the reasons discussed above, claims 1, 12 and 20 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the pending 103 rejections as set forth in this office action.
Conclusion
No claim is allowed.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613