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 .
Claim Status
Claims 1-11, 13, 14 and 18 are cancelled.
Claims 12, 15-17 and 19-22 are pending. Applicant’s amendment has necessitated modification of the existing rejection. Accordingly, this Action is FINAL.
Withdrawn rejections
Applicant's amendments and arguments filed 3/18/26 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 Any rejection and/or objection not specifically addressed below is herein withdrawn.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.
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 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 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 12, 15-17 and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Sakimura et al. (WO2012132141) in further view of Xu et al. (Int J Mol Sci 2011;12:462-475) and Sirsi et al. (Bubble Sci Eng Technol 2009;1(1-2):3-17 and Schneider et al. (US20030185759).
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.
Applicant claims, for example:
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Claim interpretation: the limitation of “positively-charged” means that the ultrafine bubbles are in an aqueous solution of pH 1-4 (Specification [0031]).
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a drug delivery research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from drug delivery technology and techniques, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 12, 17, 20 and 21, Sakimura et al. teaches compositions and methods for delivering a drug into a cell (Abstract; claim 1) comprising microbubbles generated by physical stimulation (Claim 2) of ultrasonic radiation (Claim 3) and peptide, antibody, gene, oligonucleotide (RNA, DNA), siRNA, viral vector or a low-molecular weight drug compound (Claim 7) and not containing phospholipid and methods of contacting cells (Claim 13) and methods of introducing a drug into a cell (Claim 14) wherein the drug is a peptide, antibody, gene oligonucleotide, siRNA, viral vector, plasmid or low molecular weight organic compound (Claim 16). Sakimura et al. teach applying ultrasonic irradiation at an intensity of 0.03 to 5 W/cm2 (Claim 4) or even to 0.06 to 0.1 W/cm2 or 0.03 to 1 W/cm2, which are equivalent to 30 to 5000 mW/cm2, 60 to 100 mW/cm2, 30 to 1000 mW/cm2 respectively, which the person skilled in the art can appropriately set (Page 6, 2nd to 3rd paragraphs from top), and overlap the claimed range of 250-500 mW/cm2, thus rendering the claimed range obvious. Sakimura et al. also teach examples employing 240 mW/cm2 (Example 10) and 500 mW/cm2 (Example 11), thereby establishing a range of 240-500 mW/cm2 as within the scope of Sakimura et al. and obvious to the ordinary artisan. See MPEP 2144.05(I): In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Sakimura et al. also teach that it is desirable to use lower ultrasonic intensity to reduce adverse effects on cells (Example 10). Sakimura et al. also teach applying a frequency of 1.0 to 3.4 MHz (Claim 5), or even in the range of 50KHz to 3.4 MHz or 1.0 MHz to 3.4 MHz (Page 6, paragraphs 3-6), which overlaps the claimed range of 0.5 to 10 MHz. An ultrasound generator is necessarily present to generate the ultrasonic radiation. The size of microbubbles can be from 1 nm to 1000 microns; 10 nm to 100 microns; 100 nm to 10 microns or 20 microns or less (Page 6 of 19; 6th paragraph), which overlaps or lies within the claimed range of not more than 200 nm or 50-200 nm. The limitation of “excluding immune cells” is merely part of the intended use of the system and is not given patentable weight. Therefore, the system of Sakimura et al. is implicitly configured for delivering a target substance into a cell, wherein immune cells are excluded. Methods of contacting a cell with the composition and applying ultrasonic radiation are taught (Claims 13-19) thus increasing the delivery of a nucleic acid, protein or a low-molecular weight compound into a cell. Sakimura et al. teach adjusting the pH to 2.2 (Page 15, Example 4 Generation of microbubbles under acidic conditions) and suggest pH adjuster such as hydrochloric acid, citric acid and the like (Page 12, last paragraph). Thus, the microbubbles will be inherently positively charged as taught by Applicant and noted above because such a charge naturally flows from the pH of the solution.
Regarding claim 15, Sakimura et al. teach using surfactants, albumin, gamma globulin, protein and fatty acids (Page 7, 6th paragraph) including stearic acid, which is an anionic surfactant (Example 3) as well as buffers (Example 1) and buffering agents (Page 11 of 19, 5th paragraph).
Regarding claim 16, Sakimura et al. teach using fluorocarbons and air (Claim 9; Example 9) where the fluorocarbons include CF4, C2F6, C3F8, etc…(Page 6, 1st paragraph), which are perfluorohydrocarbons because all the hydrogen atoms have been replaced with fluorine, and would consist of perfluorohydrocarbons or air.
Regarding claim 19, Sakimura et al. teach a density of 1 X 106 to 1 X 109 (Page 6 of 19, 7th paragraph), thus overlapping the claimed range of not less than 1.0 X 108.
Regarding claim 22, Sakimura et al. teach that the cells can be skeletal muscle cells and brain cells (Page 7 paragraphs 4 and last paragraph), which would read on nerve cells.
Regarding claims 12 and 15, Sirsi et al. teach microbubble compositions stabilized with a shell comprised of proteins, lipids or polymers (Abstract) including surfactant shells of non-ionic surfactants SPAN and TWEEN (page 2 bottom through page 3) and non-ionic polyvinyl alcohol (Page 5 top) for gene and drug delivery (Pages 9-16). Xu et al. teach anionic, neutral and cationic biosurfactants for microbubble preparation and include polysaccharides (Page 464, Types of Biosurfactants). Schnieder et al. teach microbubble suspensions in aqueous phases that contain surfactants and hydrophilic stabilizers (Abstract) wherein the surfactant is one or more surfactants selected from the group consisting of lipid, phospholipids, phosphatidylserine, lecithins, cholesterol, free fatty acids, esters of fatty acids with polyoxyalkylene compounds, ethers of fatty acids with polyoxyalkylene glycols, esters of fatty acids with polyoxy alkylated sorbitan, soaps, glycerol-polyalkylene stearate, glycerol-polyoxyethylene ricinoleate, homo and copolymers of polyalkylene glycols, polyethoxylated soya-oil and castor oil and hydrogenated derivatives, ethers and esters of sucrose and other carbohydrates with fatty acids or fatty alcohols, mono, di and triglycerides of saturated and unsaturated fatty acids, fatty alcohols, glycerides of soya-oil and sucrose (Claim 1) with a stabilizing polymer of one or more polymers selected from the group consisting of hydrophilic polymers, starch, dextran, polyvinyl alcohol, polyvinyl-pyrrollidone, dextrin, xanthan, partly hydrolyzed cellulose oligomers, protein, human serum albumin, gelatin, synthetic polymers and polypeptides (Claims 13 and 17; [0173]). The instant specification teaches that polyvinyl alcohol (PVA) is a hydrophilic resin. PVA is also non-ionic.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02); and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
The difference between the instant application and Sakimura et al. is that Sakimura et al. do not expressly teach a system in an embodiment with an ultrafine positively charged bubble average diameter of not more than 200 nm, an average ultrafine bubble diameter of 50nm – 200 nm or a d90/d10 ratio of not more than 5. However, it would have been obvious to one of ordinary skill in the art before to the effective filing date of the claimed invention to make the system of Sakimura et al. with a positively charged ultrafine bubble average diameter of not more than 200 nm, an average ultrafine bubble diameter of 50nm – 200 nm or a d90/d10 ratio of not more than 5, and produce the instant invention.
One of ordinary skill in the art would have been motivated to do this because Sakimura et al. teach embodiments in acidic solution (Example 4), which inherently imparts a positive charge on the ultrafine bubbles, and that the size of microbubbles can be from 1 nm to 1000 microns; 10 nm to 100 microns; 100 nm to 10 microns or 20 microns or less. It is then merely selection of the sizes of not more than 200 nm or from 50-200 nm for an average diameter by the ordinary artisan in the acidic solution embodiment of Sakimura et al. with a reasonable expectation of success. In this type of claim, a prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art. See In re Peterson, 315 F.3d 1325, 1329 (Fed.Cir.2003). Where the "claimed ranges are completely encompassed by the prior art, the conclusion [that the claims are prima facie obvious] is even more compelling than in cases of mere overlap." Peterson, 315 F.3d at 1330. Concerning the limitation of a d90/d10 ratio of not more than 5, this appears to be nothing more than optimization of the average diameter of the ultrafine bubbles of not more than 200 nm to predominantly have more within the d90 than the d10 in the absence of any criticality.
Sakimura et al. do not expressly teach an ultrafine bubble aqueous solution with a nonionic surfactant and/or a hydrophilic resin for use in a method for increasing the delivery of a nucleic acid, a protein or a low-molecular-weight compound into a cell. However as discussed above, Sirsi et al. teach microbubble compositions stabilized with a shell comprised of proteins, lipids or polymers (Abstract) including surfactant shells of non-ionic surfactants SPAN and TWEEN (page 2 bottom through page 3) and non-ionic polyvinyl alcohol (Page 5 top) for gene and drug delivery (Pages 9-16). Xu et al. teach anionic, neutral and cationic biosurfactants for microbubble preparation and include polysaccharides (Page 464, Types of Biosurfactants). Schnieder et al. teach microbubble suspensions in aqueous phases that contain a variety of surfactants and hydrophilic stabilizers (Abstract) with a stabilizing polymer of one or more polymers selected from the group consisting of hydrophilic polymers, starch, dextran, polyvinyl alcohol, polyvinyl-pyrrollidone, dextrin, xanthan, partly hydrolyzed cellulose oligomers, protein, human serum albumin, gelatin, synthetic polymers and polypeptides (Claims 13 and 17; [0173]). The instant specification teaches that polyvinyl alcohol (PVA) is a hydrophilic resin. PVA is also non-ionic.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make the system of Sakimura et al. for use in the method taught by Sakimura et al. with the claimed surfactants, as suggested by Schnieder et al., Xu et al. and Sirsi et al., and produce the instant invention. One of ordinary skill in the art would have been motivated to do this because Sakimura et al. teach adding a surfactant and the ordinary artisan in the microbubble art understands that all sorts of surfactants can be used to make microbubbles including anionic surfactants, non-ionic surfactants, cationic surfactants, amphoteric surfactants and hydrophilic resin surfactants. It is then merely a matter of judicious selection of known surfactants such as a non-ionic surfactant and/or a hydrophilic resin such as PVA by the ordinary artisan with a reasonable expectation of success in producing the bubbles.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined 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 at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Response to Arguments:
Applicant’s arguments filed 3/18/26 have been carefully considered but are not persuasive.
On page 5 of remarks, Applicant asserts: “The present application demonstrates that the claimed methods achieve an unexpectedly remarkable effect on delivery of a target substance into living cells. For example, Example 4 and FIG. 4 of the present application shows that use of an ultrasound output intensity of 250 to 500 mW/cm2 achieves a remarkable increase of delivery of FITC into living cells.” On page 6 of remarks, Applicant reproduced Figure 4 showing significant increase in FITC concentration with 250 mW and 500 mW over the control and 100 mW. Applicant argues: “there is no teaching or suggestion in Sakimura that the introduction efficiency into cells is significantly improved within the range of 250 to 500 mW/cm2.” Respectfully, the Examiner has a different perspective. As discussed above, while Sakimura et al. do teach and suggest a broad range of applying ultrasonic irradiation at an intensity of 0.03 to 5 W/cm2 (Claim 4) or even to 0.06 to 0.1 W/cm2 or 0.03 to 1 W/cm2, which are equivalent to 30 to 5000 mW/cm2, 60 to 100 mW/cm2, 30 to 1000 mW/cm2 respectively, which the person skilled in the art can appropriately set (Page 6, 2nd to 3rd paragraphs from top), Sakimura et al. also teach examples employing 240 mW/cm2 (Example 10) and 500 mW/cm2 (Example 11: Introduction of fluorescent protein expression gene into cells). Sakimura et al. thereby establish a range of 240-500 mW/cm2 as within the scope of Sakimura et al. and obvious to the ordinary artisan. Any enhancement in introduction efficiency into cells for the 240 and 500 mW/cm2 examples is implicit in the method of Sakimura et al. Especially when Sakimura et al. also use a frequency of 1.0 MHz for 10 seconds (Examples 10 and 11), which is the same time and frequency employed by Applicant (Specification page 41, lines 1-4). Moreover, independent claim 12 has no limitation for any degree of introduction efficiency enhancement or other process parameters.
Respectfully, Applicant’s arguments have been carefully considered but are not persuasive.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNST V ARNOLD whose telephone number is (571)272-8509. The examiner can normally be reached M-F 7-3:30.
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/ERNST V ARNOLD/Primary Examiner, Art Unit 1613