DETAILED ACTION
Status of the Claims
Claims 1-8, 10-18, 20 and 21 are pending in the instant application. Claims 11-16 and 20 have been withdrawn based upon Restriction/Election. Claims 1-8, 10, 17, 18 and 21 are being examined on the merits in the instant application.
Advisory Notice
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
All rejections and/or objections not explicitly maintained in the instant office action have been withdrawn per Applicants’ claim amendments and/or persuasive arguments.
Priority
The U.S. effective filing date has been determined to be 12/23/2019, the filing date of the EPO document EP19383183.1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 10, 17, 18 and 21 remain rejected under 35 U.S.C. 103 as being unpatentable over RODRIGUEZ (US 2012/0183589; published July, 2012 - also published as EP2460516, cited by Applicants on IDS filed 09/06/2024) in view of DeLong et al. (“Characterization and performance of nucleic acid nanoparticles combined with protamine and gold,” 2009, ELSEVIER; Biomaterials, Vol. 30, pp. 6451-6459); Flores et al. (“Biomolecular Triconjugates Formed between Gold, Protamine, and Nucleic Acid: Comparative Characterization on the Nanoscale,” 2011; Hindawi Publishing Corporation; Journal of Nanotechnology Volume 2012, Article ID 954601, pp. 1-9); ROTELLO (US 2017/0119687; published May, 2017); SHASTRI (US 2006/0083781; published April, 2006) and Kim et al. (“Photothermally triggerable solid lipid nanoparticles containing gold nanospheres,” 2015, Colloid and Surfaces A: Physicochemical and Engineering Aspects, Vol. 484, pp. 441-448).
Applicants Claims
Applicant claims a solid lipid nanoparticle (SLN) comprising: a lipid solid at room temperature at the core of the SLN; a cationic surfactant; a non-ionic surfactant; gold; and a nucleic acid; wherein the gold is in the form of a nanoparticle with a diameter ranging from 1 to 50 nm, wherein the gold is not covalently bound to the nucleic acid, and wherein the zeta potential of the SLN is in a range of +5 mV to +50 mV (instant claim 1). Applicant further claims the SLN composition comprises a peptide (claim 2) which is protamine (claim 3). Applicant further claims the SLN composition comprises a polysaccharide (claim 4) which is a glycosaminoglycan (claim 5) which is hyaluronic acid (claim 21). Applicant further claims the gold is adsorbed onto the surface of the SLN (claim 7), in a hydrophilic phase of the SLN surrounding the lipid core of the SLN (claim 8). Applicant further claims a suspension composition comprising a plurality of the SLN of claim 1 (claim 10).
Applicant further claims the SLN obtainable by a process as defined in instant claims 17 and 18 which are considered product-by-process claims. MPEP §2113 makes clear that: "[E]ven 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."
Determination of the scope
and content of the prior art (MPEP 2141.01)
RODRIGUEZ teaches lipid nanoparticles for gene delivery and particularly “a lipid nanoparticle system comprising a lipid component, a cationic surfactant, a nonionic surfactant, a polysaccharide and, optionally, a positively charged peptide, useful for the release of pharmacologically active molecules, and especially for transfecting genetic material into cells and/or tissues. It also relates to methods for obtaining nanoparticles, to pharmaceutical compositions comprising it, as well as to the use thereof in gene therapy.” [emphasis added](title, abstract; see whole document)(instant claim 1, a lipid, a cationic surfactant, a non-ionic surfactant and a nucleic acid).
RODRIGUEZ teaches the inclusion of a lipid component ([0049]-[0055]) includes “Nanoparticle formulation of the present invention comprises at least one solid lipid at room temperature forming part of the nanoparticle core.” ([0049])(instant claims 1, 17, 18, “a lipid solid at room temperature at the core of the solid lipid nanoparticle”).
RODRIGUEZ teaches the inclusion of cationic surfactant ([0056]-[0060]) such as cetyltrimethylammonium bromide (CTAB)([0060])(instant claims 1, 17, 18, a cationic surfactant).
RODRIGUEZ teaches the inclusion of a non-ionic surfactant ([0061]-[0063]) such as polysorbates, polyethylene glycol copolymers and polypropylene glycol copolymers ([0063])(instant claims 1, 17, 18, a cationic surfactant).
RODRIGUEZ teaches the inclusion of a polysaccharide ([0064]-[0067]), and particularly that “the polysaccharide is selected from chitosans, dextrans, hyaluronic acid, […].” [emphasis added]([0067])(instant claims 4-6 and 21).
RODRIGUEZ teaches the inclusion of a positively charged peptide ([0068]-[0072)] “the positively charged peptide is selected from nuclear signaling peptides (peptides directed towards the nucleus) and mitochondrial signaling peptides (peptides directed towards the mitochondria), RGD peptides (cell surface recognition peptides containing the arginine-glycine-aspartic acid sequence and variants thereof) and CPP ( cell penetrating peptides). Said peptide is preferably selected from protamines and histones.” [emphasis added]([0072])(instant claim 2-3; instant claims 17 & 18 – “a peptide with a net positive charge”).
RODRIGUEZ teaches that “In a preferred embodiment of the invention the biologically active molecule is a DNA plasmid, such as pEGFP, or a nucleic acid, it is more preferably DNA, mRNA, iRNA, microRNA or an antisense sequence.” ([0081]). And that: “Depending on the hydrophobic or hydrophilic nature of the biologically active molecule, the latter is incorporated to the lipophilic phase or to the hydrophilic phase of the nanoparticles, respectively. Nevertheless, in a particular embodiment, the biologically active molecule can be adsorbed on the surface of the nanoparticles one the latter are formed.” ([0082]).
RODRIGUEZ teaches pharmaceutical compositions include liquid compositions such as suspensions ([0086])(instant claim 10).
RODRIGUEZ teaches that: “Table I shows the particle size and the surface charge of the 6 formulations above:”
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([0145], Table 1)(instant claims 1, 17, 18 – “wherein the zeta potential of the SLN is in a range from +5 mV to +50 mV).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of RODRIGUEZ is that RODRIGUEZ does not expressly teach a solid lipid nanoparticle including gold, wherein the gold is a gold nanoparticle with a diameter ranging from 1 to 50 nm (claim 1), adsorbed onto the surface of the SLN (claim 8).
DeLong et al. teaches the “Characterization and performance of nucleic acid nanoparticles combined with protamine and gold,” (title, see whole document) and particularly that: “Macromolecular nucleic acids such as DNA vaccines, siRNA, and splice-site switching oligomers (SSO) have vast chemotherapeutic potential. Nanoparticulate biomaterials hold promise for DNA and RNA delivery when a means for binding is identified that retains structure–function and provides stabilization by the nanoparticles. In order to provide these benefits of binding, we combined DNA and RNA with protamine--demonstrating association to gold microparticles by electrophoretic, gel shot, fluorescence, and dynamic laser light spectroscopy (DLLS). A pivotal finding in these studies is that the Au–protamine–DNA conjugates greatly stabilize the DNA; and DNA structure and vaccine activity are maintained even after exposure to physical, chemical, and temperature-accelerated degradation.” (abstract).
DeLong et al. teaches that: “Despite the promise of nanotechnology for the delivery of therapeutic nucleic acids, a major current limitation is the inability to combine therapeutic DNA and RNA with nanomaterials to maintain structure and function after bioprocessing and delivery.” (p. 6451, col. 1, lines 1-4).
DeLong et al. teaches that: “Indeed, Seferos et al. [7] recently demonstrated that such oligoDNA–gold conjugates, termed ‘‘nanoflares,’’ can specifically detect mRNA. Thiol linkage to metal nanoparticles takes advantage of the strong coordination chemistry that exists between some metals and sulfur.” (p. 6451, col. 2, lines 4-8). And that: “For DNA vaccines, one approach we have patented involves attaching DNA to the surface of gold microparticles via protamine for delivery by gene gun. To enhance stability, several groups have reported that the attachment of proteins to gold nanoparticles affords the proteins resistance to temperature and protease degradation. In comparison to proteins, nucleic acids are considerably more susceptible to chemical and enzymatic degradation. Recently, we reported that protamine mediates attachment of DNA to gold microparticles and protects the DNA from nuclease degradation. Herein our aim was to investigate whether or not Au–protamine–DNA conjugates enhance chemical stabilization of DNA as well; treating them for weeks to months against accelerated physical, chemical, and temperature degradation; and then testing their vaccine activity in mice.” (paragraph bridging pp. 6451-6452). And further that: “In addition to its stabilization enhancing properties, protamine is well known for transporting macromolecules into cells.” (p. 6452, col. 1, 2nd paragraph, lines 1-2).
DeLong et al. teaches Nano-Conjugation - “Gold particles were included in some batches (3–35 mg batch sizes) mixed manually on a vortex at approximately 1 ml/s by first adding protamine (0.01–2 mg/ml) followed sequentially by addition of DNA or RNA (0.01–0.1 mg/ml). Thereafter, the particles were precipitated from 70% ethanol or stored in a 70% ethanol solution until use.” (p. 6452, §2.2)(instant claims 1, 17, 18, “wherein gold is not covalently bound to the nucleic acid”).
Flores et al. teaches “Biomolecular Triconjugates Formed between Gold, Protamine, and Nucleic Acid” (title, see whole document), and particularly that: “DNA and RNA micro- and nanoparticles are increasingly being used for gene and siRNA drug delivery and a variety of other applications in bionanotechnology. On the nanoscale, these entities represent unique challenges from a physicochemical characterization perspective. Here, nucleic acid conjugates with protamine and gold nanoparticles (GNP) were characterized comparatively in the nanorange of concentration by UV/Vis NanoDrop spectroscopy, fluorimetry, and gel electrophoresis.” (abstract). Flores et al. teaches that: “GNPs with a uniform size of ~20–30nm were synthesized using the standard method of citrate reduction of HAuCl4 salt. […] To produce the GNPs, an aqueous solution of HAuCl4 (1 mM, 500 mL) was brought to reflux while stirring, and 50mL of 38.8mM trisodium citrate solution was rapidly added.” (p. 2, §2.1)(instant claim 1, “wherein the gold is in the form of nanoparticle with a diameter ranging from 1 to 50 nm” – compare method of making to instant Specification Example 1). Flores et al. teaches that: “Therefore, our next step was to create conjugates of GNP with protamine as illustrated in Figure 3. As diagrammed in Step 1, positively charged protamine molecules bind to the negatively charged gold nanoparticles created by the citrate surface. In Step 2, negatively charged RNA molecules bind to the positively charged protamine molecules bound to a gold nanoparticle, completing the protamine/RNA/gold nanoparticle triconjugate.” (paragraph bridging pp. 5-6)(instant claims 1, 17, 18, “wherein the gold is not covalently bound to the nucleic acid”).
ROTELLO teaches nanoparticle-stabilized nanocapsules and methods of preparation and use for nucleic acid delivery into cells (title, abstract, see whole document). ROTELLO teaches that: “The invention is based on the unexpected discovery that nanoparticle-stabilized nanocapsules (NPSC) complexed with siRNA provide a highly effective siRNA transfection strategy. Microscopy studies have shown that these systems delivered siRNA directly to the cytosol, providing efficient utilization of the siRNA payload by avoiding endosomal sequestration.” ([0008]).
ROTELLO teaches that: “In one aspect, the invention generally relates to a nanoparticle-stabilized nanocapsule. The nanocapsule includes: a nanodroplet comprising an amphiphilic fluid; and a plurality of nanoparticles deposed on a surface of the nanodroplet, each nanoparticle comprising a ligand capable of complexing with a nucleic acid material. In certain preferred embodiments, the nanocapsule further includes: one or more nucleic acid materials complexed to at least some of the nanoparticles.” ([0009]).
ROTELLO teaches that: “The method includes: providing a nanoparticle-stabilized nanocapsule, comprising: a nanodroplet comprising an amphiphilic fluid and a plurality of nanoparticles deposed on a surface of the nanodroplet, wherein a nucleic acid material is complexed to at least some of the nanoparticles; contacting the nanoparticle-stabilized nanocapsule with one or more cells; and allowing the nanoparticle-stabilized nanocapsule to release at least some of the nucleic acid material within the cell.” ([0010]).
ROTELLO teaches that “the invention generally relates to a nanoparticle-stabilized nanocapsule, which includes: a nanodroplet comprising a fatty acid; and a plurality of gold nanoparticles on a surface of the nanodroplet, […].” ([0012])(instant claim 7).
ROTELLO teaches that: “Through still and video microscopy of fluorescently labeled siRNA delivery, direct cytosolic delivery of siRNA using NPSC was confirmed. Electrostatic self-assembly of Arg-AuNP and siRNA on the surface of the "oil" droplet generated stable nanocapsules for siRNA delivery applications. The stability of NPSC relies on the supramolecular guanidine-carboxylate interactions between the arginine-functionalized gold nanoparticles (Arg-AuNP) of the shell and the hydrophobic fatty acid "oil" components in the core (FIG. la).” ([0068]; Figure 1a) (instant claim 8, “the gold is found at a hydrophilic phase […] surrounding the lipid core”).
ROTELLO teaches that: “The nanoparticles in the nanoparticle-stabilized nanocapsule can have any suitable size ( e.g., the size including the amine-containing ligands). In certain embodiments of the nanocapsule, each of the plurality of nanoparticles has a largest dimension of about 1 nm to about 200 nm. […] about 1 nm to about 50 nm […].” ([0074])(instant claim 1, gold nanoparticle diameter ranging from 1 to 50 nm).
Kim et al. teaches solid lipid nanoparticles containing gold nanospheres (title, see whole document), and particularly that: “GNP was dispersed in the melt of dodecanoic acid (DA) using cetyltrimethylammonium chloride as a stabilizer. The mixture melt (around 50◦C) was put in Tween 20 solution (0.5%, 1%, 2%) of the same temperature, emulsified and cooled in an ice bath to obtain SLN containing GNP. Thermograms revealed that Tween 20 solution (0.5%) allowed for the formation of SLN without an appreciable decrease in the melting point.” (abstract). Kim et al. teaches that: “The surface of GNPs is hydrophilic, so it needs to be hydrophobically modified in order for GNP to be included in the inside of the hydrophobic matrix of SLN and to be well dispersed in the matrix. For that purpose, CTAB, a cationic surfactant, was used as a stabilizer for GNP.” (p. 445, col. 2, §3.4, lines 10-14). Therefore, where it is desired to incorporate the gold nanoparticles (GNP) into the lipid of a solid lipid nanoparticle, a surfactant would have been added to properly incorporate the gold nanoparticles therein.
Regarding instant claims 17 and 18, the prior art clearly suggest combining the claimed components, and it would have been within the ordinary level of skill in the art to combine the gold with the nucleic acid (instant claim 17, and as in DeLong et al.) and to combine the gold with a cationic surfactant, a non-ionic surfactant, and the solid lipid at room temperature and surfactants and subsequently combining the nucleic acid (instant claim 18). For example, SHASTRI teaches a composition of solid lipid nanoparticles and suggesting the inclusion of gold “In an even further aspect, the thermoresponsive payload delivery system can be a multimodal system, wherein the solid lipid nanoparticle can contain a payload, for example gold nanoparticles, that that can increase in temperature in response to an RF energy source and thereby melt the lipid component of the solid lipid nanoparticle and release the payload.” (see whole document, particularly [0269], claims). Therefore, gold nanoparticles are suggested as combined within the solid lipid. And ROTELLO teaches that “the invention generally relates to a nanoparticle-stabilized nanocapsule, which includes: a nanodroplet comprising a fatty acid; and a plurality of gold nanoparticles on a surface of the nanodroplet, […].” ([0012]), clearly suggesting gold nanoparticles on the surface. Therefore the different arrangements are known to those having ordinary level of skill in the art to which the invention pertains and would have been prima facie obvious (instant claims 17 and 18).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a solid lipid nanoparticle (SLN) comprising a lipid component solid at room temperature at the core of the SLN, a cationic surfactant, a nonionic surfactant, a polysaccharide (dextran/hyaluronic acid) and, optionally, a positively charged peptide (protamine), useful for the release of pharmacologically active molecules, and especially for transfecting genetic material into cells and/or tissues, as suggested by RODRIGUEZ, and to incorporate gold nanoparticles as “Au–protamine–DNA conjugates greatly stabilize the DNA; and DNA structure and vaccine activity are maintained even after exposure to physical, chemical, and temperature-accelerated degradation.” as suggested by DeLong et al., the gold-protamine-nucleic acid nanoparticle deposited on the surface of the solid lipid nanoparticles for effective directly delivery of the nucleic acid to the cytosol, providing efficient utilization of the nucleic acid payload by avoiding endosomal sequestration, as suggested by ROTELLO, the Au–protamine–DNA triconjugates including gold nanoparticles, as suggested by Flores et al., having a uniform size of ~20–30nm.
Additionally, one skilled in the art would have been motivated to produce a solid lipid nanoparticle comprising Au–protamine–DNA triconjugates because it is generally considered to be prima facie obvious to combine compositions, each of which is taught by the prior art to be useful for the same purpose, in order to form a composition that is to be used for an identical purpose. The motivation for combining them flows from their having been used individually in the prior art, and from the being recognized in the prior art as useful for the same purpose. As shown by the recited teachings, instant claims are no more than the combination of conventional components of nucleic acid delivery compositions. It therefore follows that the instant claims define prima facie obvious subject matter. Cf. In re Kerkhoven, 626 F.2d 848, 205 USPQ 1069 (CCPA 1980).
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 because RODRIGUEZ teaches each of the claimed elements outside of the gold nanoparticles, which are separately taught as being effective vehicles for delivery of nucleic acids (DeLong et al.) directly to the cytosol, providing efficient utilization of the nucleic acid payload by avoiding endosomal sequestration, as suggested by ROTELLO. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
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(a).
Response to Arguments:
Applicant's arguments filed 06/26/2025 have been fully considered but they are not persuasive.
Applicant argues that: “As noted hereinabove, applicant has amended claim I to recite that the gold is not covalently bound to the nucleic acid. Knowing that in DeLong the gold is covalently bound to a nucleic acid and this covalently bonded Au-protamine-DNA conjugate allegedly stabilizes the DNA, where is the objective reason to use gold nanoparticles that are not covalently bound to the nucleic acid?
The Examiner provided no reason why it would be obvious to incorporate gold nanoparticles that are not covalently bound to a nucleic acid into RODRIGUEZ. In other words, the alleged benefit of DeLong, that the DNA is stabilized because of the covalent bonded Au-protamine-DNA conjugate, can no longer be used as an objective reason to combine the teaching of DeLong with RODRIGUEZ. There is no indication in DeLong that said stabilization is still achieved when the gold is not covalently bound to the nucleic acid, and hence no motivation, teaching or suggestion to use gold that is not provided in a covalently bonded Au-protamine-DNA conjugate. Accordingly, with regards to presently pending claim 1, DeLong does not cure the deficiencies of RODRIGUEZ.” (p. 8, 1st paragraph).
The examiner sees no evidence that “in DeLong the gold is covalently bound to a nucleic acid and this covalently bonded Au-protamine-DNA conjugate” as suggested by Applicant. The examiner notes that the term “conjugate” does not suggest a covalent bond in the art to which the invention pertains. Particularly, the examiner cites Anderson et al. (“Five Years of siRNA Delivery: Spotlight on Gold
Nanoparticles,” 2011, small, Vol. 7, No. 14, pp. 1932–1937) teaching that: “The strategies developed thus far can be classified into two categories: 1) siRNA conjugated directly to the AuNP surface via a gold–thiol bond, and 2) siRNA adhered to the AuNP surface though electrostatic interactions.” (p. 1933, col. 2, last paragraph). Flores et al. (cited above) teaches nucleic acid conjugates with protamine and gold nanoparticles (GNP) (title, abstract) referred to as triconjguates – GNP + protamine + nucleic acid (RNA)(title, Figure 3):
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“Figure 3: Hypothetical formation of biomolecular triconjugates of GNPs, protamine, and nucleic acid […]” (p. 4, Figure 3). And that: “Therefore, our next step was to create conjugates of GNP with protamine as illustrated in Figure 3. As diagrammed in Step 1, positively charged protamine molecules bind to the negatively charged gold nanoparticles created by the citrate surface. In Step 2, negatively charged RNA molecules bind to the positively charged protamine molecules bound to a gold nanoparticle, completing the protamine/RNA/gold nanoparticle triconjugate.” (paragraph bridging pp. 5-6). Thus, it is clear from the prior art that Flores et al. utilizes strategy (2) nucleic acid adhered to the AuNP surface though electrostatic interactions, and not through covalent bonding to the surface. This is consistent with the description of DeLong et al. as well – DeLong et al. teaches Nano-Conjugation - “Gold particles were included in some batches (3–35 mg batch sizes) mixed manually on a vortex at approximately 1 ml/s by first adding protamine (0.01–2 mg/ml) followed sequentially by addition of DNA or RNA (0.01–0.1 mg/ml). Thereafter, the particles were precipitated from 70% ethanol or stored in a 70% ethanol solution until use.” (p. 6452, §2.2)(instant claims 1, 17, 18, “wherein gold is not covalently bound to the nucleic acid”). And consistent with the Examples of the instant Specification describing mixing gold nanoparticles with protamine and nucleic acid – Example 7 disclosing that: “The SLNs were prepared as described in Example 2 only that the gold nanoparticles of Example 1 as well as protamine were added to the solution containing the nucleic acid.” Therefore, the prior art clearly teaches electrostatic conjugation (and not covalent conjugation) of nucleic acid, protamine to the surface of gold nanoparticles. And Applicants arguments are not convincing because they are not consistent with the cited prior art, and the alleged distinction over the cited prior art is not a distinction.
Additionally, the examiner notes that the instant claims in no way exclude covalent attachment of a nucleic acid to the gold nanoparticles so long as “a nucleic acid” is not covalently attached, that is any non-covalently attached nucleic acid reads on the instantly rejected claims. This is clearly suggested by Seferos et al. (reference 7 of DeLong et al., of record as cited by the Examiner on 12/13/2024, NPL reference “W”), teaching that “Au NPs were functionalized with thiolated oligonucleotides containing an 18-base recognition element to a specific RNA transcript (Figure 1c) via gold thiol bond formation. Oligonucleotide-functionalized Au NPs were then allowed to hybridize with short cyanine (Cy5) dye-terminated reporter sequences capable of acting as “flares” when displaced by a longer target or target region (Figure 1a). In the bound state, the Cy5 fluorescence of the reporter strand is quenched due to proximity to the Au NP surface. In the presence of a target, the flare strand is displaced and liberated from the Au NP by forming the longer and more stable duplex between the target and the oligonucleotide modified Au NP.” (p. 15477, col. 2, 2nd paragraph). And further teaches complexing mRNA with the so-called nano-flares (p .15477, col. 2, 4th paragraph; Figure 1)(see MPEP §2111 – broadest reasonable interpretation).
Applicant further argues that: “Moreover, the Examiner recited that "the Au-protamine-DNA triconjugates including gold nanoparticles, as suggested by Flores et al., having a uniform size of ~20-30nm." This is not what Flores teaches. Instead the gold nanoparticles per se have a uniform size of ~20-30nm (see, Flores, page 2, 2.1. GNP, Protamine, and Other Reagents.). A careful review of Flores evidences that the Au-protamine-DNA triconjugates have a much larger size. For example, as shown in Figure 8(b) and recited in the Results and Discussion of Flores, the particle size of the DNA Au Prot triconjugate is approximately 420 nm! (see, Flores, page 7, Figure 8(b) and 3.8. Surface Charge and Size of the Conjugates.).” (p. 8, 2nd paragraph).
In response the examiner argues that Flores et al. clearly includes gold nanoparticles having a diameter ranging from 1 to 50 nm as per Figure 8 which Applicant points to where the electrostatic conjugation with protamine and again with protamine and DNA results in a subsequent apparent particle size increase. However, the instant claims only require “gold is in the form of a nanoparticle with a diameter ranging from 1 to 50 nm” which is clearly taught by Flores et al. and therefore Applicants argument is not convincing.
Applicant argues: “Further, the Examiner recited that "the gold-protamine-nucleic acid nanoparticle deposited on the surface of the solid lipid nanoparticles for effective directly delivery of the nucleic acid to the cytosol, providing efficient utilization of the nucleic acid payload by avoiding endosomal sequestration, as suggested by ROTELLO .... " Notably, however, the nanoparticle-stabilized nanocapsules (NPSC) and the NPSC complexes with siRNA of ROTELLO that allegedly provide effective direct delivery of the nucleic acid to the cytosol have a negative zeta potential, as provided in the Examples and Table I or ROTELLO, reproduced hereinbelow for ease of reference: […]. As introduced hereinabove, applicant's claimed SLN has a zeta potential in a range from +5 mV to +50 mV. It is not objectively reasonable to conclude that a ROTELLO NPSC having a positive zeta potential would be capable of delivering nucleic acids to the cytosol. Instead, their NPSC systems "delivered siRNA directly to the cytosol, providing efficient utilization of the siRNA payload by avoiding endosomal sequestration," using NPSC systems having negative surface charges. A person skilled in the art considering ROTELLO, who may want to deliver nucleic acids directly to the cytosol, would not be motivated to instead produce or use a positively-charged nanoparticle, for example as claimed by applicant herein. There would be no reasonable expectation of success.” (paragraph bridging pp. 8-9).
In response the examiner argues that one of ordinary skill would have recognized that cell surfaces typically have a negative charge, and therefore modification to a positive zeta potential as in RODRIGUEZ would have improved interaction with cell surfaces. This is clearly suggested by Rhim et al. (“Lipid-Gold-Nanoparticle Hybrid-Based Gene Delivery,” Small, 4(10): 1651-1655; as cited by Applicant on IDS dated 09/06/2022, NPL citation No. 10) – “However, negatively charged DNA strands are exposed in this form; this negative charge deteriorates the contact between DNA-AuNPs and cells because the cell membrane is also weakly negatively charged. This could be overcome by attaching a cationic lipid layer to DNA-modified AuNP. Not only could this cationic lipid layer (outer layer) facilitate cell membrane crossing of DNA-modified AuNPs, but it could also protect modified DNA.” (p. 1651, paragraph bridging cols. 1-2). Thus, it would have been prima facie obvious for the solid lipid nanoparticles for gene delivery to have a positive zeta potential as clearly taught by RODRIGUEZ. A person having ordinary skill in the art would have had a reasonable expectation of doing so because a negative surface charge, as in ROTELLO would have attracted a positively charged species, for example, the cationic polysaccharide chitosan.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-8, 10, 17, 18 and 21 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of USPN 9,675,710 (hereafter ‘710) of in view of DeLong et al. (“Characterization and performance of nucleic acid nanoparticles combined with protamine and gold,” 2009, ELSEVIER; Biomaterials, Vol. 30, pp. 6451-6459); Flores et al. (“Biomolecular Triconjugates Formed between Gold, Protamine, and Nucleic Acid: Comparative Characterization on the Nanoscale,” 2011; Hindawi Publishing Corporation; Journal of Nanotechnology Volume 2012, Article ID 954601, pp. 1-9) and ROTELLO (US 2017/0119687; published May, 2017); and further in view of SHASTRI (US 2006/0083781; published April, 2006) and Kim et al. (“Photothermally triggerable solid lipid nanoparticles containing gold nanospheres,” 2015, Colloid and Surfaces A: Physicochemical and Engineering Aspects, Vol. 484, pp. 441-448).
The instant claims are discussed above.
‘710 claim 1 recites a system for the release of biologically active molecules comprising nanoparticles with an average particle size equal to or less than 1 micron, wherein the nanoparticles have a structure comprising: a lipophilic core comprising at least one solid lipid at room temperature; a hydrophilic phase surrounding the lipophilic core, said hydrophilic phase comprising at least one cationic surfactant and at least one non-ionic surfactant; at least one biologically active molecule, wherein the biologically active molecule is selected from the group consisting of nucleic acids, oligonucleotides, polynucleotides and mixtures thereof; and at least one polysaccharide, wherein the polysaccharide is selected from the group consisting of chitosans, dextrans, hyaluronic acid, carrageenan, chondroitin, keratin, colominic acid, xanthan, cyclodextrins, salts or derivatives of polysaccharides selected from chitosans, dextrans, hyaluronic acid, carrageenan, chondroitin, keratin, colominic acid, xanthan or cyclodextrins, and mixtures thereof; wherein said polysaccharide comprises the bonding of at least three monosaccharides, provided that said polysaccharide is not a lipopolysaccharide, and wherein said polysaccharide is either incorporated in the hydrophilic phase of the nanoparticles or forms a complex together with the biologically active molecule, said complex being adsorbed on the surface of the nanoparticles. ‘710 claim 2 recites the system according to claim 1, further comprising at least one peptide with a net positive charge.
The difference between the instantly rejected claims and the claims of ‘710 is that the claims of ‘710 do not expressly claim the positively charged peptide is a protamine or the solid lipid nanoparticles include gold, and particularly gold nanoparticles on the surface of the solid lipid nanoparticles.
DeLong et al. teaches the “Characterization and performance of nucleic acid nanoparticles combined with protamine and gold,” as discussed above and incorporated herein by reference.
Flores et al. teaches “Biomolecular Triconjugates Formed between Gold, Protamine, and Nucleic Acid,” as discussed above and incorporated herein by reference.
ROTELLO teaches nanoparticle-stabilized nanocapsules and methods of preparation and use for nucleic acid delivery into cells, is discussed above in incorporated herein by reference.
SHASTRI teaches a composition of solid lipid nanoparticles and suggesting the inclusion of gold “In an even further aspect, the thermoresponsive payload delivery system can be a multimodal system, wherein the solid lipid nanoparticle can contain a payload, for example gold nanoparticles, that that can increase in temperature in response to an RF energy source and thereby melt the lipid component of the solid lipid nanoparticle and release the payload.” (see whole document, particularly [0269], claims).
Kim et al. teaches solid lipid nanoparticles containing gold nanospheres, a discussed above and incorporated herein by reference.
It would have been prima facie obvious before the effective filing date of the claimed invention that the instantly rejected claims are an obvious variant of the claims of ‘710 because the claims include each of the components of the instantly claimed solid lipid nanoparticles with the exception of the gold. The skilled artisan would have been motivated to modify the claims of ‘710 and produce the instantly rejected claim because gold nanoparticles were known to enhance the delivery of nucleic acids which the system claimed in ‘710 is directed, and particularly that “Au–protamine–DNA conjugates greatly stabilize the DNA; and DNA structure and vaccine activity are maintained even after exposure to physical, chemical, and temperature-accelerated degradation.” as suggested by DeLong et al., the gold-protamine-nucleic acid nanoparticle deposited on the surface of the solid lipid nanoparticles for effective directly delivery of the nucleic acid to the cytosol, providing efficient utilization of the nucleic acid payload by avoiding endosomal sequestration, as suggested by ROTELLO. Furthermore, the skilled artisan would have had a reasonable expectation of success in producing the invention of the instantly rejected claims because the subject matter of the claims of ‘710 would have been within the ordinary level of skill in the art to produce, and the addition of gold such as gold-protamine-nucleic acid deposited on the SLN’s of ‘710 would have required no more than an ordinary level of skill in the art.
Response to Arguments:
Applicant's arguments filed 06/26/2025 have been fully considered but they are not persuasive.
Applicant argues that: “For example, DeLong relates to covalently bonded Au-protamine-DNA conjugates, with no indication that the so-called DNA stabilization is still achieved when the gold is not covalently bound to the nucleic acid, and no motivation, teaching or suggestion to use gold that is not provided in a covalently bonded Au-protamine-DNA conjugate. Further, a person skilled in the art considering ROTELLO, who may want to deliver nucleic acids directly to the cytosol per ROTELLO, would not be motivated to instead produce or use the positively-charged gold-containing nanoparticle as claimed by applicant herein.” (p. 11, 1st paragraph).
In response the examiner agues that DeLong et al. does not relate to covalently bonded Au-protamine-DNA conjugates, as discussed above and incorporated herein by reference. And consistent with the understanding in the art pertaining to lipid-gold nanoparticle based gene delivery systems, and RODRIGUEZ, it would have been prima facie obvious to produce solid lipid nanoparticles with a positive surface charge (i.e. a positive zeta potential), as discussed above and incorporated herein by reference.
Conclusion
Claims 1-8, 10, 17, 18 and 21 are pending and have been examined on the merits. Claims 1-8, 10, 17, 18 and 21 are rejected under 35 U.S.C. 103; and claims are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of USPN 9,675,710. No claims allowed at this time.
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.
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/IVAN A GREENE/Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619