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 .
Applicant’s reply filed 4/10/2026, is acknowledged. Claims 1-4, 6-10, 12-17, 19-20 and 22-24 are pending.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. At the outset, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this instance Applicant suggests that Fedorchak should teach the CNT-drug complex.
Fedorchak does not describe loading, binding, or complexing any therapeutic agent onto or into any additional drug delivery vehicle, let alone a carbon nanotube. The additional drug delivery vehicles listed in paragraph [0074] are described as component that the polymer-based implant “can comprise,” not as carriers to which therapeutic agent are complexed.
Reply at page 6. Applicant also suggest that Zhang should teach “that a CNT-drug complex would be suitable for intravitreal delivery to treat an ocular tumor.” Reply at page 7. Requiring one reference to teach what the other reference is cited for is nonsensical in the context of an obviousness rejection. If each reference had to teach what the other reference taught in order to be used in an obviousness rejection, then there would be no need for obviousness rejections.
Applicant also uses this faulty reasoning to argue a lack of motivation to combine the references. See Reply at page 7. For instance, Applicant suggests that Zhang provides no motivation to use its CNT-drug complex irrespective of all its drug delivery benefits because “it does not address any aspect of ocular delivery.” Id.
Applicant further argues that “the Office Action does not address whether a person skilled in the art would have had a reasonable expectation of success in delivering a CNT-therapeutic complex by intravitreal injection to treat an ocular tumor.” Id. However, this is an overstatement. That is, the claims are directed to a general concept of treating an ocular tumor with a composition comprising certain components. There is no level of success or particular effect in the treatment of an ocular tumor required by the claims. That being said, there would be a reasonable expectation of success in combining the teachings of Fedorchak with a CNT-therapeutic agent complex taught by Zhang to treat an ocular tumor at least because Fedorchak contemplates the use of CNTs.
Applicant also argues that the Office Action misplaces reliance on Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945). See page 8. However, Applicant overstates the proposition of the case and seemingly suggests that Zhang should teach that its CNT-therapeutic agent is intended to treat or detect an ocular tumor. See id. Zhang need not do that. It suffices in teaching that the CNT-therapeutic complex are suitable for drug delivery.
Applicant’s remaining argument that independent claim 24 is not obvious for additional reasons is unpersuasive because it is predicated on the arguments above. See id.
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 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.
Claim(s) 1-4, 6-10, 12-17, 19, 20 and 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fedorchak et al. (US2022/0249700) in view of Zhang et al., Nanoscale Research Letters, 2011, 6:555, 1-22.
Regarding claim 1, Fedorchak et al. teaches polymer-based implants for treating retina diseases and/or retinopathies. See Abstract. The implant may be performed via injection. See para. [0005]. The polymer implant may be used to treat ocular tumors. See para. [0084]. Further, the implant may include chemotherapeutics for retinoblastoma and carbon nanotubes (“CNTs”) (current claims 4, 12 and 22). See para. [0074]. Fedorchak et al. does not provide an explicit example of a complex of a carbon nanotube and a therapeutic agent. However, the use of carbon nanotube for delivery treating cancer was within the purview of one of ordinary skill in the art.
For instance, Zhang et al. teaches that “CNTs are promising drug carriers in the target drug delivery systems for cancer therapies.” Page 2, col. 1. Zhang et al. also teaches that for this purpose CNTs may be functionalized in two way covalently and non-covalently (current claims 2, 3, 14 and 15). See page 2, col. 2.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention in view of Feorchak et al. and Zhang et al. to arrive at the claimed invention. In this regard, it is prima facie obviousness to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). It would have been obvious to employ a CNT and a chemotherapeutic agent to treat an ocular tumor as taught by Fedorchak et al.
Regarding claims 6-8, 16, 17 and 24, Zhang et al. teaches that water-soluble precursor CNTs have been covalently conjugated with tumor-specific mAbs, radiometal-ion chelates, and fluorescent probes (current claim 23). See page 12, col. 2. The fluorescent probes imply signal detection (current claim 13).
Regarding claims 9 and 19, Zhang et al. teaches single walled carbon nanotubes. See page 14, col. 2.
Regarding claims 10 and 20, Zhang et al. teaches CNT that are 900 nm long and 11 nm in diameter. See page 2, col. 2.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S CABRAL whose telephone number is (571)270-3769. The examiner can normally be reached M-F 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT S CABRAL/Primary Examiner, Art Unit 1614
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