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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/10/2025 has been entered.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-2 and 4-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nagpal (US 20220226472) of prior record, hereinafter Nagpal.
Regarding claim 1, Nagpal teaches an inorganic nanoparticle quantum dots (such as “nanoparticle” that comprises “InP quantum dot” described in para 65) introduced with a hydrophilic ligand (para 108) having activity of killing multidrug-resistant bacteria; i.e. MDR (para 3 describes “multidrug resistant pathogens” and para 6 describes “killing bacteria; also see para 41),
wherein the inorganic nanoparticle quantum dots are indium-phosphide-based quantum dots (para 65).
Nagpal does not specifically state that the inorganic nanoparticle quantum dots have “a core bandgap of 2.71 eV”. However, Nagpal teaches that killing bacteria is based on “irradiating the quantum dot to generate a therapeutically effective amount of superoxide radical that kills” (para 6). Nagpal further explains variables that are required to produce the above mentioned therapeutically effective amount of superoxide radical that kills by penetrating light, but without harming human cells (see para 119-120). More specifically, Nagpal teaches that the penetration of light emitted by quantum dots is tunable (see title, also see para 139-140), with one of the tunable metrics being light intensity (para 139), that band gap of InP quantum dots may is also tunable to have different values (example values shown in para 66). Nagpal also discloses an “Optical Model of Tissue Penetration” (see heading just above para 119) that shows the relationship between a value (that is analogous to required or effective dosage of transmitted light for therapy) and multiple variables such as light intensity, with the goal of achieving light penetration that can eliminate/kill a target percentage of bacteria without harming (i.e. non-toxic) human cells (see para 119-120, including Equation 4 and Equation 5), with para 84 describe why dosage levels may need to be varied (also see para 9).
Given that the core band gap of inorganic nanoparticle quantum dots is a known results effective variable and its dependence on determining effective but nontoxic dose is also known (as explained above), varying the core band gap of inorganic nanoparticle quantum dots would not be cause for undue experimentation. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) see MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing of the claimed invention to use a specific band gap for a given application, such as the quantum dots having “a core bandgap of 2.71 eV ”. The ordinary artisan would have been motivated to modify Nagpal at least for the purpose of supplying a therapeutically effective dose for while taking advantage of stability and low cost of known materials (para 3) that may be suitable for suitable packaging (para 96) such as inorganic nanoparticle quantum dots that are indium-phosphide based.
Note: Also see applicant’s specification which shows similar dependence of determining effective quantum dot dosage that is “capable of effectively killing multidrug-resistant bacteria” and also “not show cytotoxicity” with “irradiation with light at a specific wavelength” (page 3, line 19 – page 4, line 9). For additional factors that affect dosage (especially see page 8, line 17 to page 9, last line).
Regarding claim 2, Nagpal teaches that the inorganic nanoparticle quantum dots are quantum dots having an indium phosphide core/zinc selenide shell; i.e. InP/ZnSe or an indium phosphide core/zinc sulfide shell; i.e. InP/ZnS (para 65).
Regarding claim 4, Nagpal teaches the inorganic nanoparticle quantum dots according to claim 1, wherein reactive oxygen species or ROS (see “ROS” described in para 58 of Nagpal) generated by irradiating the inorganic nanoparticle quantum dots with light at a wavelength of 300 nm to 500 nm (e.g. 400 nm described in para 75) kills multidrug-resistant bacteria or inhibits growth thereof. Note that claim 4 is a product claim but it recites a method of steps therein; i.e. the process of generating the ROS; i.e. ROS is “generated by irradiating the inorganic nanoparticle quantum dots with light at a wavelength of 300 nm to 500 nm”. Therefore, the claim amounts to a product by process claim. "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). See MPEP 2113.
Regarding claim 5, Nagpal teaches the inorganic nanoparticle quantum dots according to claim 1, wherein the hydrophilic ligand is selected from the group consisting of 3-mercaptopropionic acid (MPA), L-glutathione (GSH), mercaptoacetic acid, mercaptobutanoic acid, mercaptopentanoic acid, mercaptohexanoic acid, mercaptoheptanoic acid, mercaptooctanoic acid, mercaptononanoic acid, mercaptodecanoic acid, mercaptoundecanoic acid, mercaptododecanoic acid, and L-cysteine (para 108 discloses "3-mercaptopropionic acid as a hydrophilic ligand").
Regarding claim 6, Nagpal teaches the inorganic nanoparticle quantum dots according to claim 1, wherein the multidrug-resistant bacteria is selected from the group consisting of Bacillus cereus, Staphylococcus aureus, Escherichia coli, Pseudomonas aeruginosa, Acinetobacter baumannii, Klebsiella pneumonia, Enterococcus faecium, Enterobacteriaceae, Helicobacter pylori, Campylobacter spp., Salmonellae, Neisseria gonorrhoeae, Streptococcus pneumoniae, Haemophilus influenzae, and Shigella spp (para 2 discloses "Escherichia coli" and several examples of E. coli such as para 23).
Regarding claim 7, Nagpal teaches a composition for killing multidrug-resistant bacteria or inhibiting growth (para 27 describes “inhibit bacterial growth”; also see para 5) thereof comprising the inorganic nanoparticle quantum dots according to claim 1 (as explained for claim 1).
Regarding claim 8, Nagpal teaches a composition for preventing or treating (para 17; also see para 3 and 5 for background) an infectious disease (para 51; also see para 41 and 50) caused by multidrug-resistant bacteria comprising the inorganic nanoparticle quantum dots according to claim 1 (as explained for claim 1).
Regarding claim 9, Nagpal teaches the composition according to claim 8, but does not specifically teach a concentration of the inorganic nanoparticle quantum dots is “50 nM to 200 nM”. However, Nagpal teaches that the concentration of the inorganic nanoparticle quantum dots is a results effective variable that is related amount requires to kill a specific percentage of bacteria but is still nontoxic to humans (para 10), and also the specific inorganic nanoparticle quantum dot composition used, or whether the goal is to kill or hamper the growth of bacteria (para 77; also see para 32 and Figure 24). Given that the concentration of the inorganic nanoparticle quantum dots is a known results effective variable and its dependence on determining effective but nontoxic dose is also known (as explained above), varying the concentration of the inorganic nanoparticle quantum dots would not be cause for undue experimentation. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) see MPEP 2144.05. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing of the claimed invention to use a concentration for a given application, such as a concentration of the inorganic nanoparticle quantum dots is “50 nM to 200 nM”. The ordinary artisan would have been motivated to modify Nagpal at least for the purpose of supplying a therapeutically effective dose for a given type of inorganic nanoparticle quantum dots, while ensuring it is also not toxic to the patient.
Regarding claim 10, Nagpal teaches the composition according to claim 8, but does not specifically state that the infectious disease caused by multidrug-resistant bacteria is “pneumonia, sepsis, urinary tract infection, food poisoning, impetigo, purulent disease, acute dermatitis, wound infection, bacteremia, endocarditis, or enteritis”. However, para 2 of Nagpal discloses "Escherichia coli" and several examples of E. coli such as in para 23; and E. coli is known to cause infections such as food poisoning. It would have been obvious to one of ordinary skills in the art at the time of the effective filing of the claimed invention to modify Nagpal to include a cure for at least treating food poisoning infections. The ordinary artisan would have been motivated to modify Nagpal for at least the purpose of treating common infections, such as E. coli induced food poisoning – also see other types of bacteria listed in para 76.
Regarding claim 11, Nagpal teaches a method of killing multidrug-resistant bacteria using light, comprising: (a) mixing (as evidenced by “in the presence of” in para 72) the inorganic nanoparticle quantum dots according to claim 1 with multidrug-resistant bacteria (para 76) in vitro (para 50); and (b) radiating light (para 75; also see para 73, especially last sentence) onto the multidrug-resistant bacteria (para 76) mixed with the quantum dots (para 72).
Regarding claim 12, Nagpal teaches the method according to claim 11, but does not specifically teach that a concentration of the inorganic nanoparticle quantum dots in step (a) is “50 nM to 200 nM”. However, Nagpal teaches that the concentration of the inorganic nanoparticle quantum dots is a results effective variable that is related amount requires to kill a specific percentage of bacteria but is still nontoxic to humans (para 10), and also the specific inorganic nanoparticle quantum dot composition used, or whether the goal is to kill or hamper the growth of bacteria (para 77; also see para 32 and Figure 24). Given that the concentration of the inorganic nanoparticle quantum dots is a known results effective variable and its dependence on determining effective but nontoxic dose is also known (as explained above), varying the concentration of the inorganic nanoparticle quantum dots would not be cause for undue experimentation. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) see MPEP 2144.05. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing of the claimed invention to use a concentration for a given application, such as a concentration of the inorganic nanoparticle quantum dots in step (a) is “50 nM to 200 nM”. The ordinary artisan would have been motivated to modify Nagpal at least for the purpose of supplying a therapeutically effective dose for a given type of inorganic nanoparticle quantum dots, while ensuring it is also not toxic to the patient.
Regarding claim 13, Nagpal teaches the method according to claim 11, wherein in step (b), light is radiated at a wavelength of 300 nm to 500 nm (such as “400” nm disclosed in para 75).
Regarding claims 14 and 15, given that Nagpal teaches the inorganic nanoparticle quantum dots according to claim 1 (see rejection of claim 1, also see para 75), the recitation of “wherein the inorganic nanoparticle quantum dots generate reactive oxygen species when irradiated with light at a wavelength of 300 nm to 500 nm” (see claim 14), OR the recitation of “wherein the inorganic nanoparticle quantum dots generate reactive oxygen species when irradiated with light at a wavelength of 350 nm to 450 nm” (see claim 15) are only a statement of the inherent properties of the inorganic nanoparticle quantum dots according to claim 1 The structure taught by Nagpal (see rejection of claim 1) is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Also see MPEP 2112.01.
Response to Arguments
Applicant’s arguments (see applicant’s response of 10/10/2025, hereinafter applicant’s response) have been considered but are not persuasive.
On page 8, last paragraph to page 9, 2nd last paragraph, applicant urges that “Figure 8C” of applicant’s disclosure shows “the non-linear relationship between bactericidal effect of indium phosphide core quantum dots…….as a function of bandgap…..”. (also see similar argument on page 7, last 2 paragraphs). This argument is not persuasive. For example, referring to applicant’s cited Figure shown on page 9 of applicant’s response:
Going from 2.03 eV to 2.33 eV, which an increase of ((2.33-2.03)/2.03) or approximately 15%, corresponding change in Survival is from approximately 70% to 50%, or approximately ((50-70)/70) or approximately 29%.
Going from 2.33 eV to 2.46 eV, which an increase of ((2.46-2.33)/2.33) or approximately 5 %, corresponding change in Survival is from approximately 50% to 20%, or approximately ((20-50)/50) or approximately 60%.
Going from 2.46 eV to 2.71 eV, which an increase of ((2.71-2.46)/2.46) or approximately 5 %, corresponding change in Survival is from approximately 20% to 1%, or approximately ((1-20)/20) or approximately 95%.
As such, the Core bandgap vs Survival % shown appears to show non-linear behavior at all points, and not just at the claimed core bandgap of 2.71 eV. In summary, a non-linear variation of survival % with core bandgap appears to be the norm, and this also addresses a similar argument that results are “unexpected” solely due to an increase of bactericidal effect to “99.999%” at a “core bandgap of 2.71” (see last 2 paragraphs on page 9 of applicant’s response).
On page 10 of applicant’s response, applicant urges that “Nagpal teaches against the applicant’s claimed indium phosphide core bandgap of 2.71 eV” based on the observation that Nagpal is “emphasizing core bandgap values that are far removed from the 2.71 eV bandgap specified in applicant’s claim 1” (especially see 3rd last paragraph on page 10 of applicant’s response; (also see similar argument on page 7, 1st paragraph). The examiner has reviewed Nagpal again in this context but does not find applicant’s argument persuasive. Examiner submits that using a different core bandgap that is not specifically discloses does not change the principle of operation of the primary reference or render the reference inoperable for its intended purpose. See MPEP § 2143.01. Further, teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Although Nagpal does teach the claimed value of core bandgap (i.e. “core bandgap of 2.71 eV” recited in claim 1), Nagpal does not criticize, discredit, or otherwise discourage the claimed bandgap.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AJAY ARORA whose telephone number is (571)272-8347. The examiner can normally be reached 9 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Drew Richards can be reached at 5712721736. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AJAY ARORA/Primary Examiner, Art Unit 2892