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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 27, 2026, that includes a response to the Final Office Action mailed October 28, 2025, has been entered. Claims 1, 6, 14, 18, 19, 26, 29, and 32 have been amended; claims 2, 3, 7-10, 12, 13, 20-25, 28, and 33-38 have been canceled; and claim 41 has been newly added. Claims 11, 16-19, 26, 27, and 29-32 have been withdrawn. Newly added claim 41 is drawn to non-elected subject matter*** and is hereby also withdrawn. Claims 1, 4-6, 14, 15, 39, and 40 are currently under examination.
***It is noted that the elected species of lipid-based shell lipid component is the combination of DSPC and DSPE-PEG2000. Hence, the examination is limited to this combination only at this time. Applicant was permitted to select this combination of shell lipid components after asserting that all the lipid components recited in the claim were “critical” and must be included in the shell (see Interview summary mailed 2/19/25). Newly added claim 41 includes only DSPC and necessarily excludes DSPE-PEG2000.
Claim Objections
Claims 1 and 39 are objected to for the following reasons:
1. In claim 1, there should be a semicolon rather than a comma between “the core of the microbubble” and “wherein the unsaturated nitro-fatty acid”.
2. In claim 39, for the compound “1,2-distearoyl-sn-glycero-3-phosphoethanolamine-N-[methoxy(propylene glycol)-2000]”, none of the terms should be capitalized.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4-6, 14, 15, 39, and 40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, as now amended, first provides that the microbubble comprises a shell which comprises “a plurality of lipids” and also comprises “an unsaturated nitro-fatty acid”, and later stipulates in a wherein clause that the unsaturated fatty acid is present in the shell “in the amount ranging from 10% to 25% by mass” based on “a total amount of lipids in the shell”, which renders the claim indefinite. As anyone of ordinary skill in the art would immediately recognize, an unsaturated nitro-fatty acid would fall within the purview of “a lipid”. Yet, the claim appears to provide that “a plurality of lipids” and ““an unsaturated nitro-fatty acid” are two separate and distinct constituents. Hence, one of ordinary skill in the art cannot definitively ascertain the metes and bounds of “the total amount of lipids in the shell”. Specifically, does the “total amount of lipids in the shell” include only the “plurality of lipids” element and not the “unsaturated nitro-fatty acid” element, or rather does the “total amount of lipids in the shell” include both the “plurality of lipids” element and also the “unsaturated nitro-fatty acid”?
***For examination at this time, the claim is being interpreted as the latter case, in which the “total amount of lipids in the shell” includes both the “plurality of lipids” (e.g. DSPC and DSPE-PEG2000) element and also the “unsaturated nitro-fatty acid”.
Claims 4-6, 14, 15, 39, and 40 are indefinite for depending from an indefinite claim.
Claim Rejections - 35 USC § 103 (I and II)
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
I. Claims 1, 4-6, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lassus et al. (U.S. Patent Application Pub. No. 2015/0343097), in view of Freeman et al. (U.S. Patent Application Pub. No. 2007/0232579).
I. Applicant Claims
Applicant’s elected subject matter is directed to a microbubble comprising a shell and a core; the shell comprising 1,2-distearoyl-sn-glycero-3-phosphocholine (i.e. DSPC), 1,2-distearoyl-sn-glycero-3-phosphoethanolamine-N-(methoxy (polyethylene glycol) 2000) (i.e. DSPE-PEG2000), and 10-nitrooleate; and the core comprising perfluorobutane; wherein the 10-nitrooleate is present in the amount of 10-25 wt% based on the total amount of lipid in the shell.
I. Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Lassus et al. disclose a microbubble comprising a shell and a core; the shell comprising e.g. DSPC, DSPE-PEG2000, saturated and unsaturated fatty acids or derivatives thereof, and other therapeutic agents; and the core comprising perfluorobutane; wherein the microbubble can be used to treat e.g. inflammation (abstract; paragraphs 0001, 0005, 0014-0017, 0026-0028, 0031, 0032, 0049, 0050, 0054; examples).
Freeman et al. disclose that nitrated fatty acids have therapeutic efficacy in treating inflammation, and can be incorporated into microparticles and other carriers for administration (paragraphs 0019, 0027, 0070, 0110, 0111, 0120, 0122, 0141, 0274, 0278, 0300, 0308, 0309; Fig. 10).
I. Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Lassus et al. do not explicitly disclose that the saturated and unsaturated fatty acids are nitro-fatty acids, such as 10-nitrooleate. This deficiency is cured by the teachings of Freeman et al.
I. Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Lassus et al. and Freeman et al., outlined supra, to devise Applicant’s claimed microbubble.
Lassus et al. disclose a microbubble comprising a shell and a core; the shell comprising e.g. DSPC, DSPE-PEG2000, saturated and unsaturated fatty acids or derivatives thereof, and other therapeutic agents; and the core comprising perfluorobutane; wherein the microbubble can be used to treat e.g. inflammation. Since Freeman et al. disclose that nitrated saturated and unsaturated fatty acids, such as e.g. 10-nitrooleate, have therapeutic efficacy in treating inflammation, and can be incorporated into microparticles and other carriers for administration; one of ordinary skill in the art would thus be motivated to include nitrated saturated and unsaturated fatty acids, such as 10-nitrooleate, in the shell of the Lassus et al. microbubble, with the reasonable expectation that the resulting microbubble, upon administration to a subject in need thereof, will successfully treat inflammation.
Lassus et al. disclose a microbubble comprising e.g. 15.6 mg DSPC, 2.6 mg DSPE-PEG2000, and 4.8 mg oleic acid (i.e. preparation 2bA1), and also a microbubble comprising e.g. 15.6 mg DSPC, 2.6 mg DSPE-PEG2000, 4.1 mg oleic acid, and 1.7 mg stearic acid (i.e. preparation 3bA1). It is understood from Lassus et al. that the recited lipids are constituents of the shell. The total amount of lipids is thus 23 mg. The oleic acid can thus be present in the amount of about 18-21 wt%, based on the total amount of lipids in the shell. For reasons just discussed, supra, one of ordinary skill in the art would thus be motivated to employ 10-nitrooleic acid for oleic acid, and thus would arrive at a microbubble comprising 10-nitrooleic acid in the amount of about 18-21 wt%, based on the total amount of lipids in the shell.
In light of the foregoing 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).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
II. Claims 1, 4-6, 14, 15, 39 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Gorgerat et al. (U.S. Patent Application Pub. No. 2009/0263330), in view of Freeman et al. (U.S. Patent Application Pub. No. 2007/0232579).
II. Applicant Claims
Applicant’s elected subject matter is directed to a microbubble comprising a shell and a core; wherein the shell consists of 1,2-distearoyl-sn-glycero-3-phosphocholine (i.e. DSPC), 1,2-distearoyl-sn-glycero-3-phosphoethanolamine-N-(methoxy (polyethylene glycol) 2000) (i.e. DSPE-PEG2000), and 10-nitrooleate; and wherein the 10-nitrooleate is present in the amount of 10-25 wt% based on the total amount of lipid in the shell.
II. Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Gorgerat et al. disclose a microbubble comprising a shell and a core; wherein the shell can consist of e.g. DSPC, DSPE-PEG2000, and a fatty acid or a derivative thereof; wherein the fatty acid can be e.g. oleic acid (i.e. octadec-9-enoic acid) and can be present in the shell in an amount preferably up to about 25 wt%, and the core comprises perfluorobutane; and wherein the microbubble can be used to treat e.g. pain and other maladies and diseases (abstract; paragraphs 0006, 0007, 0009, 0010-0012, 0019-0023, 0032, 0033, 0041, 0042, 0066; examples).
Freeman et al. disclose that nitrated fatty acids have therapeutic efficacy in treating inflammation, and can be incorporated into microparticles and other carriers for administration (paragraphs 0019, 0027, 0070, 0110, 0111, 0120, 0122, 0141, 0274, 0278, 0300, 0308, 0309; Fig. 10).
II. Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Gorgerat et al. do not explicitly disclose that the fatty acid or a derivative thereof is a nitro-fatty acid, such as 10-nitrooleic acid. This deficiency is cured by the teachings of Freeman et al.
II. Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Gorgerat et al. and Freeman et al., outlined supra, to devise Applicant’s claimed microbubble.
Gorgerat et al. disclose a microbubble comprising a shell and a core; wherein the shell can consist of e.g. DSPC, DSPE-PEG2000, and a fatty acid or a derivative thereof; wherein the fatty acid can be e.g. oleic acid (i.e. octadec-9-enoic acid), and the core comprises perfluorobutane; and wherein the microbubble can be used to treat e.g. pain and other maladies and diseases. Since Freeman et al. disclose that nitrated fatty acids, such as e.g. 10-nitrooleic acid (i.e. 10-nitro-octadec-9-enoic acid), have therapeutic efficacy in treating inflammation, a common malady or disease that typically includes pain, and can be incorporated into microparticles and other carriers for administration; one of ordinary skill in the art would thus be motivated to include a nitrated fatty acid, such as 10-nitrooleate, in the shell of the Gorgerat et al. microbubble, with the reasonable expectation that the resulting microbubble, upon administration to a subject in need thereof, will successfully treat inflammation.
Further Gorgerat et al. disclose that the microbubble shell can a phospholipid or mixture of phospholipids in an amount of at least 50 wt%, preferably in an amount of at least 90 wt% such that substantially the totality of the shell can be composed of lipid (see paragraph 0022), and can also contain a fatty acid or a derivative thereof; wherein the fatty acid can be e.g. oleic acid (i.e. octadec-9-enoic acid), in an amount preferably up to about 25 wt% (see paragraphs 0010, 0023). For reasons just discussed, supra, one of ordinary skill in the art would thus be motivated to employ 10-nitrooleic acid for oleic acid, and thus would arrive at a microbubble comprising 10-nitrooleic acid in the amount preferably up to 25 wt%, based on the total amount of lipids in the shell.
In light of the foregoing 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).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed February 27, 2026 have been fully considered but they are not persuasive.
i) Applicant contends that “Lassus…requires a mixture of saturated and unsaturated fatty acids”; that “there is no evidence…that would lead one of ordinary skill in the art to modify Lassus to include only unsaturated nitro-fatty acids” since “the skilled artisan would find no motivation to exclude saturated nitro-fatty acids from the Lassus microvesicle”; that “there is no evidence of record that would lead one of ordinary skill in the art to arrive at a microbubble with an unsaturated nitro-fatty acid included in the shell in an amount of 10-25% as compared to a total amount of lipids in the shell”; and that “Gorgerat discloses that the shells are preferably completely saturated” and thus “the skilled artisan…would not modify Gorgerat…to include only unsaturated fatty acids”.
The Examiner, however, would like to point out the following:
1. First, Applicant is advised that only claims 1, 4-6, 14, and 15 have been rejected over Lassus in view of Freeman. In stark contrast to Applicant’s assertion, none of these claims necessarily exclude a saturated fatty acid.
2. Indeed, as anyone of ordinary skill in the art would readily understand, the fact that the claim necessarily includes an unsaturated nitro-fatty acid does not mean the claim necessarily excludes a saturated nitro-fatty acid.
3. Therefore, because claims 1, 4-6, 14, and 15 do not necessarily exclude a saturated nitro-fatty acid, one of ordinary skill in the art need not be motivated to exclude the saturated fatty acid from the cited Lassus reference. This is simply a requirement that does not actually exist at all.
4. In stark contrast to Applicant’s assertion, Gorgerat does not disclose that the shell must be “completely saturated” or must necessarily contain only one or more saturated fatty acid(s). On the contrary, Gorgerat expressly discloses that the shell can contain a fatty acid, and that the fatty acid can be e.g. oleic acid, which is an unsaturated fatty acid. No saturated fatty acid need be included at all. Even if, arguendo, Gorgerat did prefer a saturated fatty acid, Gorgerat is not limited to the preferred embodiments, and these do not “teach away” from the broader disclosure and the non-preferred embodiments. Hence, contrary to Applicant’s assertion, Gorgerat need not somehow be “modified” to exclude a saturated tatty acid.
5. In contrast to Applicant’s assertion, the newly added limitation that “the unsaturated nitro-fatty acid is included in the shell in an amount of 10-25% based on the total amount of lipids in the shell” has been thoroughly addressed under 35 USC 103.
For the foregoing reasons, the 35 USC 103 rejections are hereby maintained.
Conclusion
No claims are allowed.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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/DAVID BROWE/Primary Examiner, Art Unit 1617