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 .
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 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.
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/04/2025 has been entered.
Status of claims
The amendment filed on 09/04/2025 is acknowledged. Claims 7, 8, 11-13, 16, 19-21, 24, 25, 28, 30-32, and 35-41 have been canceled and claims 22, 23, 26, 27, 29, 33, and 34 have been withdrawn. Claims 1-6, 9, 10, 14, 15, 17, and 18 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 09/04/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.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.
Rejections maintained
The following rejection of the claims is maintained for reasons of record and the following. The rejection is modified.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 1-6, 9, 10, 14, 15, 17, and 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over Vinardell et al. (Antitumor Activities of Metal Oxide Nanoparticles, Nanomaterials (Basel), 2015 Jun 9;5(2):1004-1021) in view of Du et al. (Rapid and multimodal in vivo bioimaging of cancer cells through in situ biosynthesis of Zn&Fe nanoclusters, Nano Research 2017, 10(8): 2626–2632), El-Said et al. (Synthesis of Metal Nanoparticles Inside Living Human Cells Based on the Intracellular Formation Process, Advanced Materials, 2014, 26, 910-918), and Das et al. (Biological synthesis of metallic nanoparticles: plants, animals and microbial aspects, Nanotechnol. Environ. Eng. (2017) 2:18).
Vinardell et al. teach ZnO, iron oxide (the claimed magnetic in the instant claim 14) nanoparticles as antitumor agent inducing cytotoxicity in cancer cells (either arrest of proliferation or cell death → no proliferation), but not in normal cells (the claimed selectively inhibiting the proliferation of cancer cells in a subject and not substantially inhibit proliferation of non-cancerous cells in the subject in the instant claims 1 and 18), and being loaded with anticancer drugs such as doxorubicin (small molecule drug in the instant claim 15) (abstract).
Vinardell et al. do not specify the claimed product-by-process limitation in the instant claims 1-3, 9, and 17; and the resulted zeta potential of them in the instant claim 6 and the properties of the coating of ZnO nanoparticles in the instant claims 1 and 10.
The deficiency is cured by Du et al. who teach ZnO nano-clusters being biosynthesized by HeLa cancer cells from aqueous Zn2+ ion (title and abstract) and thus being coated by the same organic molecular deposition from human cells and thus, would have the same zeta potential; El-Said et al. who teach both cancer cells including HeLa and MCF-7 cell lines (breast cancer in the instant claim 17)) and health cells being used to synthesize nanoparticles (abstract and page 910 and 911); and Das et al. who teach “green” biosynthesized metallic nanoparticles having broad range of applications in targeted drug delivery, cancer treatment, without use of hazardous chemicals (the paragraph bridges left and right columns on page 15) and enhanced biocompatibility (abstract).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Vinardell et al., Du et al., El-Said et al., and Das et al. to specify ZnO in the method taught by Vinardell et al. being synthesized by cancer cells and healthy cells from aqueous Zn2+ ion for the advantages of biosynthesized metallic nanoparticles taught by Das et al. ZnO nanoparticles having cytotoxicity in cancer cells, but not in normal cells, cancer cells biosynthesize ZnO nano-clusters, and “green” biosynthesized metallic nanoparticles having the advantages of not using of hazardous chemicals with enhanced biocompatibility were well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Vinardell et al. do not specify a measuring a minimum inhibition concentration and IC50 of the coated metal nanoparticles (instant claims 4 and 5). Implicitly in any disclosure of giving a drug to a patient with a condition is first determining the concentration-response data as required by FDA. Therefore, the minimum inhibition concentration and IC50 of the coated metal nanoparticles in cancer treatment are determined prior to administering the coated metal nanoparticles. A person of ordinary skill in the art is a healthcare provider which first diagnoses patients with a condition and then treats them with an appropriate drug. This is what a person of ordinary skill in the corresponding art does.
Response to Applicants’ arguments:
Applicants argue that Vinardell et al. do teach the claimed the coated metal nanoparticles targeting the coated metal nanoparticles to the cancer cells.
However, this argument is not deemed persuasive. Vinardell et al. teach the same iron oxide nanoparticles as antitumor agent being administrated to the same patient population (subject in need of inhibition of proliferation of cancer) which would necessarily result in the claimed targeting the coated metal nanoparticles to the cancer cells in the subject. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001):
“[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.” Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc.,246 F.3d 1368, 1376 (Fed. Cir. 2001).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
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, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614