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 . 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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5, in the reply filed on 09/23/2025, is acknowledged.
Claims 6-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/23/2025.
Claim Rejections - 35 USC § 112 –
Indefiniteness and Broad Limitation followed by Narrow Limitation
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 1-5 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation “phosphorylcholine”, and the claim also recites “(PC)” which is the narrower statement of the range/limitation.
In the present instance, claim 4 recites the broad recitation “glutathione”, and the claim also recites “(GSH)” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The Applicant is encouraged to remove the parentheses from the claims, at each instance of occurrence.
Claim Rejections - 35 USC § 103 - Obviousness
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.
Claim(s) 1-2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al (US 2020/0048105 A1), in view of Goda et al (Chem. Commun., 2013, 49, 8683-8685) and further in view of Zhou et al (Langmuir, 2019, 35, 13031-13039).
Sun taught gold clusters (AuCs) externally coated with thiol-containing ligands [see claims 1 and 3] via an Au-S bond [0066]. As per Sun, without ligands, AuCs cannot exist stably in a solution [0066].
Sun differs from the instant claim 1, in that Sun did not teach phosphorylcholine ligands.
Goda taught gold functionalized with thiolated 2-methacryloyloxyethyl phosphorylcholine [see abstract and Figure 1].
Zhou taught gold nanoparticles (AuNP) with thiol-phosphorylcholine ligands, where the thiol-phosphorylcholine stabilized the particles [abstract and title].
Since Sun taught gold clusters with external thiol-containing ligands, wherein ligands stabilize the clusters, it would have been prima facie obvious to one of ordinary skill in the art to include, within the teachings of Sun, thiol-containing ligands, as taught by Goda [see abstract and Figure 1]. The ordinarily skilled artisan would have been motivated to stabilize the gold particles, as taught by Zhou [abstract and title]. By the teachings of Goda and Zhou, the ordinarily skilled artisan would recognize that thiol associates with phosphorylcholine.
Claims 2 and 5 are rendered prima facie obvious because Sun taught that the AuCs are biocompatible, and contain only a few to hundreds of gold atoms [0007].
The instant claim 2 recites from 8 to 300 gold atoms.
Sun taught a few, to hundreds of gold atoms. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. MPEP 2144.05 A.
Claim(s) 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al (US 2020/0048105 A1), in view of Goda et al (Chem. Commun., 2013, 49, 8683-8685), further in view of Zhou et al (Langmuir, 2019, 35, 13031-13039) and further in view of Li et al (Bioconjug Chem, 2013, 24(11), 1790-1797).
The 35 U.S.C. 103 rejection over Sun, Goda and Zhou was previously described.
Additionally, Zhou taught that the advantage of the thiol-phosphorylcholine ligand is the strong affinity to AuNPs, as a result of multiple Au-S bonds, which are beneficial to preserve a stable coating on AuNPs [page 13037, section 3.3 at the 1st paragraph].
Although the combined teachings of Sun, Goda and Zhou taught thiol-phosphorylcholine associated with AuNPs via the Au-S bond, the combined teachings of the prior art were not specific covalent linkages, as recited in claims 3-4.
Nevertheless, Li taught gold nanoparticles functionalized with thiol ligands, where the Au-S bond is covalent and stable [Abstract; Introduction, 1st paragraph].
Since Sun, Goda and Zhou taught thiol-phosphorylcholine ligands associated with AuNPs via the Au-S bond, where the ligand stabilizes the AuNP, it would have been prima facie obvious to one of ordinary skill in the art to include, within the combined teachings of the prior art, covalent bonding, as taught by Li. The ordinarily skilled artisan would be motivated to stabilize the particles, as taught by Li [Abstract; Introduction, 1st paragraph].
Conclusion
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/CELESTE A RONEY/Primary Examiner, Art Unit 1612