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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/28/2025 has been entered.
Status of Application
Applicants' arguments/remarks filed 10/28/2025 are acknowledged. Claims 1 and 13 are currently amended. Claims 3 and 14-15 are newly canceled. Claims 1, 4-5, 7-8, 11, 13 and 16-18 are examined on the merits within and are currently pending.
Withdrawn Rejections
With applicants' amendment, and with respect to applicant’s arguments/remarks filed 10/28/2025, the rejection of claims 3, 14-15 under 35 U.S.C. 103 has been withdrawn in view of the cancellation of the claims.
Modified Rejections
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 non-obviousness.
Claims 1, 5, 7-8 and 11 are rejected under 35 U.S.C. 103 as being obvious over An et al., (CN 109847073 A) and Huang et al., (Huang et al., pH-Responsive nanodrug encapsulated by tannic acid complex for controlled drug delivery. RSC Adv., 2017, 7, 2829) in view of Zitvogel et al. (US 20130156790 A1).
Claim 1,
An et al. teach nanoparticles of tannic acid (TA) complexed with Fe3+ ions and with bovine serum albumin (BSA) adsorption on the TA coating. (Abs). An et al. teach albumin (alb) coated tannic acid-Fe (pTA) nanoparticles (NPs).
Huang et al. teach the metal ion/polyphenol complexation encapsulating paclitaxel nanodrug (PTX-C). (Abs).
An et al. and Huang et al. do not teach drugs that induces immunogenic cell death (ICD) for cancer treatment.
Zitvogel et al. teach several anti-cancer therapeutics, amongst which feature chemotherapy anthracyclines such as doxorubicin (DX), idarubicin and mitoxantrone (MTX), oxali-platinum (oxaliplatin or OXP), taxanes (paclitaxel or docetaxel), and cyclophosphamide/alkylating. (0008). They are also compound to induce immunogenic cancer cell death in a subject, (Title), the drugs to induce immunogenic cell death (0606), a therapeutic for treatment of cancer, in particular to prepare a pharmaceutical composition to allow or improve the efficiency of a therapy of cancer in a subject (Abs). Appropriate excipient, diluent or carrier may be selected. (0518).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare nanoparticle compositions, of tannic acid (TA) complexed with Fe3+ ions coated with albumin adsorption on the TA, taught by An et al., and the anticancer drug encapsulated in the metal ion/polyphenol complexation, taught by Huang et al., which comprise drug(s) to induce immunogenic cell death with appropriate excipient, diluent or carrier, and anthracycline drugs inducing immunogenic cell death, taught by Zitvogel et al., since the ideas have been studied and proven they would be feasible to do so.
With regard to claims 5 and 11, Zitvogel et al. teach a method for treating a subject having a tumor, with chemotherapy, administering intratumorously, in the tumor bed or systemically to said subject. (0055).
With regard to claim 7,
Zitvogel et al. teach to prepare a pharmaceutical composition to allow or improve the efficiency of a therapy of cancer in asubject in need thereof (0005).
An et al. teach tannic acid (TA) complexed with Fe3+ ions and with BSA adsorption on the TA coating. (Abs). The preparation method, specifically comprising the following steps:
(1) Bovine serum albumen (BSA) powder dissolved in water, obtaining bovine serum albumin solution;
(2) Dissolving soluble trivalent iron salt in water, fully dissolving to obtain the iron source solution;
(3) adding the iron source solution into the bovine serum albumin solution, to obtain the uniform transparent yellow solution, namely BSA-Fe precursor;
(4) weighing tannic acid powder is dissolved in water, to obtain TA solution, and add in BSA-Fe, continuously stirring for about 15 -19h. BSA prepared stable TA-Fe nano-particle dispersion, obtaining the tannic acid (TA) - iron BSA nanoparticles. (pdf pg. 3, 3rd par. steps 1-4).
An et al. teach albumin (alb) coated tannic acid-Fe (pTA) nanoparticles (NPs), but do not teach the incorporation of a therapeutic compound that induces immunogenic cell death (ICD) for cancer treatment.
Huang et al. teach the metal ion/polyphenol complexation encapsulating paclitaxel (PTX) nanodrug (PTX-C). (Abs). The method of fabrication process of the TA and Fe ion starting materials, and complex-encapsulated PTX-C could be a very effective and promising anti-tumor nanodrug. (pg. 6, left col., 2nd last par.). a. PTX powder in controlled size in water are mixed with polyphenols (tannic acid) and FeIII to form PTX-NPs. (pg. 2828, left col, last par.-right col.).
With regard to claim 8, Zitvogel et al. teach several anti-cancer therapeutics, amongst which feature chemotherapy anthracyclines such as doxorubicin (DX), idarubicin and mitoxantrone (MTX), oxali-platinum (oxaliplatin or OXP), taxanes (paclitaxel or docetaxel), and cyclophosphamide/alkylating compounds are considered as the most efficient cytotoxic agents of the oncologist. (0008). They are also compound to induce immunogenic cancer cell death in a subject. (Title).
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being obvious over An et al., (CN 109847073 A) and Huang et al., (Huang et al., pH-Responsive nanodrug encapsulated by tannic acid complex for controlled drug delivery. RSC Adv., 2017, 7, 2829) in view of Zitvogel et al. (US 20130156790 A1) and further in view of JP2018510636 A.
The teachings of An et al., Huang et al. and Zitvogel et al., are described in claim 1 above.
An et al. Huang et al. and Zitvogel et al., do not teach proteasome inhibitors, such as carfilzomib.
JP 2018510636 A teach proteasome inhibitors, such as bortezomib and carfilzomib. (pdf pg. 36, 3rd last par.). The compounds of the invention can also be used for cancer treatment. (pg. 37, 3rd last par.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare nanoparticle compositions, of tannic acid (TA) complexed with Fe3+ ions coated with albumin adsorption on the TA, taught by An et al., and the anticancer drug encapsulated in the metal ion/polyphenol complexation, taught by Huang et al., which comprise drug(s) to induce immunogenic cell death with appropriate excipient, diluent or carrier, taught by Zitvogel et al., and a proteasome carfilzomib can also be used for cancer treatment, taught by JP 2018510636 A since the ideas have been studied and proven they would be feasible to do so.
Claims 13 and 16-18:
“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).”
Claims 13 and 17-18 are rejected under 35 U.S.C. 103 as being obvious over An et al., (CN 109847073 A) and Huang et al., (Huang et al., pH-Responsive nanodrug encapsulated by tannic acid complex for controlled drug delivery. RSC Adv., 2017, 7, 2829) in view of Zitvogel et al. (US 20130156790 A1).
Claim 13,
An et al. teach tannic acid (TA) complexed with Fe3+ ions and with BSA adsorption on the TA coating. (Abs). The preparation method, specifically comprising the following steps:
(1) Bovine serum albumen (BSA) powder dissolved in water, obtaining bovine serum albumin solution;
(2) Dissolving soluble trivalent iron salt in water, fully dissolving to obtain the iron source solution;
(3) adding the iron source solution into the bovine serum albumin solution, to obtain the uniform transparent yellow solution, namely BSA-Fe precursor;
(4) weighing tannic acid powder is dissolved in water, to obtain TA solution, and add in BSA-Fe, continuously stirring for about 15 -19h. BSA prepared stable TA-Fe nano-particle dispersion, obtaining the tannic acid (TA) - iron BSA nanoparticles. (pdf pg. 3, 3rd par. steps 1-4).
An et al. teach albumin (alb) coated tannic acid-Fe (pTA) nanoparticles (NPs), but do not teach the incorporation of a therapeutic compound that induces immunogenic cell death (ICD) for cancer treatment.
Huang et al. teach the metal ion/polyphenol complexation encapsulating paclitaxel (PTX) nanodrug (PTX-C). (Abs). The method of fabrication process of the TA and Fe ion starting materials, and complex-encapsulated PTX-C could be a very effective and promising anti-tumor nanodrug. (pg. 6, left col., 2nd last par.). a. PTX powder in controlled size in water are mixed with polyphenols (tannic acid) and FeIII to form PTX-NPs. (pg. 2828, left col, last par.-right col.).
Zitvogel et al. teach a method of treating cancer comprising the administration to a subject in need thereof, of a compensatory molecule, preferably together with a drug used in a conventional treatment of cancer, (0028), particular compounds, the drugs to induce immunogenic cell death (0606). Appropriate excipient, diluent or carrier may be selected. (0518). several anti-cancer therapeutics, amongst which feature chemotherapy anthracyclines such as doxorubicin (DX), idarubicin and mitoxantrone (MTX), oxali-platinum (oxaliplatin or OXP), taxanes (paclitaxel or docetaxel), and cyclophosphamide/alkylating compounds are considered as the most efficient cytotoxic agents of the oncologist. (0008). They are also compound to induce immunogenic cancer cell death in a subject. (Title).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare nanoparticle compositions, of tannic acid (TA) complexed with Fe3+ ions coated with albumin adsorption on the TA, taught by An et al., and the anticancer drug encapsulated in the metal ion/polyphenol complexation, taught by Huang et al., which comprise drug(s) to induce immunogenic cell death with appropriate excipient, diluent or carrier, taught by Zitvogel et al., since the ideas have been studied and proven they would be feasible to do so.
With regard to claims 17 and 18, Zitvogel et al. teach a method for treating a subject having a tumor, with chemotherapy, administering intratumorously, in the tumor bed or systemically to said subject. (0055).
Claims 13 and 16 are rejected under 35 U.S.C. 103 as being obvious over An et al., (CN 109847073 A) and Huang et al., (Huang et al., pH-Responsive nanodrug encapsulated by tannic acid complex for controlled drug delivery. RSC Adv., 2017, 7, 2829) in view of Zitvogel et al. (US 20130156790 A1) and further in view of JP2018510636 A.
The teachings of An et al. and Huang et al. and Zitvogel et al., are described in claim 13 above.
An et al., Huang et al. and Zitvogel et al., do not teach proteasome inhibitors, such as carfilzomib.
JP 2018510636 A teach proteasome inhibitors, such as bortezomib and carfilzomib. (pdf pg. 36, 3rd last par.). The compounds of the invention can also be used for cancer treatment. (pg. 37, 3rd last par.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare nanoparticle compositions, of tannic acid (TA) complexed with Fe3+ ions coated with albumin adsorption on the TA, taught by An et al., and the anticancer drug encapsulated in the metal ion/polyphenol complexation, taught by Huang et al., which comprise drug(s) to induce immunogenic cell death with appropriate excipient, diluent or carrier, taught by Zitvogel et al., and a proteasome carfilzomib can also be used for cancer treatment, taught by JP 2018510636 A since the ideas have been carried out and proven they would be feasible to do so.
Response to Arguments
Claim Rejections
I: Claims 1 - 3 and 5
Applicant argues that:
1. The Office has failed to make a proper prima facie case for Obviousness rejection as prescribed by the MPEP and Graham. Graham provides that the asserted combination of art must be consistent with the knowledge of one of ordinary skill in the art at the time of the invention and thus the proper element of reasonable expectation of success.
The Office concedes that An and Huang do not teach or suggest incorporation of therapeutic compounds which induce cell death. This defect is not cured by the cited Zitvogel as asserted by the Office, because there is no suggestion or teaching in the art, either alone or in combination as asserted to make the composition as claimed. The Office may not assert as support only it's own opinion in the absence of any teaching or suggestion in the art. While Zitvogel is asserted to teach various chemotherapy agents which induce cell death, there is no teaching or suggestion of incorporation of such agents into a composition as encompassed by the claimed invention. Additionally, the asserted combination of art fails to provide any suggestion or teaching that there is a reasonable expectation of success in making the claimed invention.
Applicant's arguments have been fully considered but they are not persuasive since the basis for 103 rejection is that no one reference has to teach all the claim limitations for an obviousness rejection and therefore several references are combined to render the claims obvious. One with ordinary skill in the art can learn from and select specific parts of several prior arts’ teachings before the effective filing date of the invention to achieve better outcome results even though some prior arts may teach more and may teach different things. In this case, An teaches nanoparticles of tannic acid (TA) complexed with Fe3+ ions and with BSA. Huang teaches pH-Responsive nanodrug encapsulated a chemotherapeutic drug pactlitaxel by tannic acid complex for controlled drug delivery. Zitvogel teach drugs to induce immunogenic cell death. Obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In response to applicant's argument that the invention obtains results not contemplated by prior art at the time of the invention, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The Office has demonstrably misconstrued the Law and ignored the factors as set forth in Graham. The Office is clearly not following the requirements of Graham in constructing an improper rejection under 35 USC 103. This is clearly demonstrated by the mis-statement on page 11 of the Final Office Action summarizing the Office's improper basis for rejection: Graham provides that the asserted combination of art must be consistent with the knowledge of one of ordinary skill in the art at the time of the invention and thus the proper element of reasonable expectation of success.
Applicant's arguments have been fully considered but they are not persuasive since obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As explained above, An teaches nanoparticles of tannic acid (TA) complexed with Fe3+ ions and with BSA. Huang teaches pH-Responsive nanodrug encapsulated a chemotherapeutic drug pactlitaxel by tannic acid complex for controlled drug delivery. Zitvogel teach drugs to induce immunogenic cell death. The combined teachings of the references would have suggested to those of ordinary skill in the art.
II: Claims 1 and 4
l. The Office has improperly used hindsight to construct the combination of art asserted for the rejection
The office attempts to cure the defects in the basic rejection by asserting the additional art JP 2018510636 A as teaching proteasome inhibitors. The asserted JP 2018510636A fails to cure the fundamental defect in the Office's rejection as it does not teach or suggest the asserted combination, or any reasonable expectation that such would be successful. The Office has improperly used hindsight in constructing the rejection. There is no suggestion or teaching in the cited art to make the asserted combination to support the rejection. This is the hallmark of improper use of hindsight, as taught by Grraham. There is no reasonable expectation of success. This improper rejection formed using the claimed invention as a guide is illustrated by the statement of the Office at page 6: JP 2018510636 A teach proteasome inhibitors, such as bortezomib and carfilzomib.
2. The Office has failed to demonstrate that the cited art, alone or in combination teach or suggest the claimed invention with a reasonable expectation of success, and it is improper for the Office to substitute its own Opinion in place of a lack of teaching or suggestion in the art.
Once again, as argued above, the Office has improperly used hindsight in constructing the rejection. There is no suggestion or teaching in the cited art of any reasonable expectation of success in making the combination to support the rejection. This is the hallmark of improper use of hindsight, as taught by Graham.
The claimed invented creation of nanoparticle formulations is patentably distinct from pharmaceutical formulations incorporating "appropriate excipient, diluent or carrier may be selected" in both form and function as well as predictability. At the time of the invention there is no teaching or suggestion in the art that the formulations of the claimed invention (A) could be successfully made or (B) that they would be efficacious in use (C) and would be able to function to induce immunogenic cell death.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In response to applicant's argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In response to applicant's argument that the invention obtains results are not contemplated by prior art, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Please see details of rejections in the claims above.
3. The Office has demonstrably misconstrued the Law and ignored the factors as set forth in Graham. Graham provides that the asserted combination of art must be consistent with the knowledge of one of ordinary skill in the art at the time of the invention and thus the proper element of reasonable expectation of success. (Applicant’s arguments/remarks, I.1, pg. 6).
The Office has clearly misconstrued the Law and is not following the requirements of Graham in constructing an improper rejection under 35 USC 103. This is clearly demonstrated by the mis-statement on page 11 summarizing the Office's position: the Office is not following Graham.
Applicant's arguments have been fully considered but they are not persuasive. In response to applicant' s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In response to applicant's argument that the invention obtains results are not contemplated by prior art, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The office state clearly the basis for 103 rejection is that no one reference has to teach all the claim limitations for an obviousness rejection and therefore several references are combined to render the claims obvious. Yes, it is the US patent law. Combining the ideas from prior arts is not inventive because one with ordinary skill in the art can learn from and select specific parts of several prior arts’ teachings before the effective filing date of the invention to achieve better outcome results even though some prior arts may teach more and may teach different things. Especially in this case, prior arts teach related subjects:
An et al. teach nanoparticles of tannic acid (TA) complexed with Fe3+ ions and with bovine serum albumin (BSA) adsorption on the TA coating. (Abs). An et al. teach albumin (alb) coated tannic acid-Fe (pTA) nanoparticles (NPs),
Huang et al. teach nanodrug encapsulated by tannic acid complex for controlled drug delivery (Title) and the metal ion/polyphenol complexation encapsulating paclitaxel nanodrug (PTX-C). (Abs).
Zitvogel et al. teach several anti-cancer therapeutics, amongst which feature chemotherapy anthracyclines such as doxorubicin (DX), idarubicin and mitoxantrone (MTX), oxali-platinum (oxaliplatin or OXP), taxanes (paclitaxel or docetaxel), and cyclophosphamide/alkylating. (0008). They are also compound to induce immunogenic cancer cell death in a subject.
III: Claims 13 and 16:
l. There is no suggestion or teaching in the cited art to make the asserted combination without the improper use of hindsight as disallowed by Graham. The claimed invented creation of nanoparticle formulations is patentably distinct from pharmaceutical formulations incorporating "appropriate excipient, diluent or carrier may be selected" in both form and function as well as predictability. At the time of the invention there is no teaching or suggestion in the art that the formulations of the claimed invention (A) could be successfully made or (B) that they would be
efficacious in use (C) and would be able to function to induce immunogenic cell death.
2. There is no suggestion or teaching in the cited art of any reasonable expectation of success in making the claimed invention without the improper use of hindsight as disallowed by Graham.
3. There is no reasonable expectation of success
4. The Office has demonstrably misconstrued the Law and ignored the factors as set forth in Graham. Applicants argue for the work to combine prior arts' ideas to bring results, but combining prior art ideas is not inventive and it is the basis of 103 that several references are combined to render the claims obvious.
Applicant's arguments have been fully considered but they are not persuasive since Huang et al. teach nanodrug encapsulated by tannic acid complex for controlled drug delivery (Title) and the metal ion/polyphenol complexation encapsulating paclitaxel nanodrug (PTX-C). Since An et al. teach albumin (alb) coated tannic acid-Fe (pTA) nanoparticles (NPs).Huang could encapsulate a chemotherapeutics paclitaxel, and Zitvogel teaches several anti-cancer therapeutics, amongst which feature chemotherapy anthracyclines such as doxorubicin (DX), idarubicin and mitoxantrone (MTX), oxali-platinum (oxaliplatin or OXP), taxanes (paclitaxel or docetaxel), and cyclophosphamide/alkylating. (0008). They are also compound to induce immunogenic cancer cell death in a subject, then how one with skill in the art at the time could clearly learn from them. In response to applicant's argument that the invention obtains results not comtemplated by prior art, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that the work to combine prior arts' ideas to bring results, but combining prior art ideas is not inventive and it is the basis of 103. Yes, it is the basis of 103 patent law, because one with ordinary skill in the art can learn from and select specific parts of several prior arts’ teachings before the effective filing date of the invention to achieve better outcome results.
IV: Claims 13 and 16
l. The Cited Art Does Not provide any suggestion or teaching to make the Asserted combination.
In response to applicant' s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
2. The Asserted Combination of Art does not suggest or teach the claimed invention with any reasonable expectation for success
Applicant's arguments have been fully considered but they are not persuasive. In response to applicant's argument that the invention obtains results not contemplated by prior arts, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
3. The Office has demonstrably misconstrued the Law and ignored the factors as set forth in Graham. Applicants argue for the work to combine prior arts' ideas to bring results, but combining prior art ideas is not inventive and it is the basis of 103 that several references are combined to render the claims obvious.
Applicant's arguments have been fully considered but they are not persuasive since the US patent law of 103 rejection is that no one reference has to teach all the claim limitations for an obviousness rejection and therefore several references are combined to render the claims obvious. Combining ideas from prior arts is not inventive because one with ordinary skill in the art can learn from and select specific parts of several prior arts’ teachings before the effective filing date of the invention to achieve better outcome results even though some prior arts may teach more and may teach different things. In response to applicant's argument that the invention obtains results not contemplated by prior art at the time of the invention since the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
No claim is allowed at this time.
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/NGOC-ANH THI NGUYEN/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615