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 .
Claims Status
Claims 1-10 are pending in the application.
Claim Objections
Claim 6 is objected to because of the following informalities: the structures of claim 6 are illegible. Appropriate correction is required.
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Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koumura et al. (J. Am. Chem. Soc. 2002, 124, 5037-5051).
Koumura et al. (J. Am. Chem. Soc. 2002, 124, 5037-5051) teaches of the molecular motors
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wherein X is S; Y
is S; R1 is OMe, H and R2 is H, OMe (Figure 3) and anticipates the molecules
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of the instant claims when X is S; R1 is methoxy groups or hydrogen; R2 is hydrogen or methoxy groups and R3 is
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ter Wiel et al. (Org. Biomol. Chem. 2005, 3, 28-30).
ter Wiel et al. (Org. Biomol. Chem. 2005, 3, 28-30) teaches of the molecular motors
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wherein Y is S; R is H, OMe or NO2 and anticipates the molecules
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of the instant claims when X is S; R1 is methoxy groups,
hydrogen or nitro and R2 is hydrogen, methoxy groups or nitro and R3 is
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by García-López et al. (Nano Lett. 2015, 15, 8229-8239).
Garcia-Lopez et al. (Nano. Lett. 2015, 15, 8229-8239) teaches of the nanomachine light-driven
motors comprising fluorophores
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(abstract; Figure 1.) The nanomachine is activated by UV light and provides for subsequent rotation of the motor (p8230, left column, second paragraph; p8234, right column, first paragraph; p8235, right column, last paragraph).
The USN-1 anticipates the
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of the instant claims.
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.
Claim(s) 1 and 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koumura et al. (J. Am. Chem. Soc. 2002, 124, 5037-5051) in view of Bell et al. (US 2011/0077394A1)
Koumura et al. (J. Am. Chem. Soc. 2002, 124, 5037-5051) discloses the molecular motors as well as that stated above.
Koumura et al. does not disclose the targeting agent, tracing agent, solubility agent or active
agent of the instant claims 7-10.
Bell et al. (US 2011/0077394A1) discloses nanometer-scale rotary molecular motors powered and controlled by light energy wherein the design of the molecular motors can be designed so that the rotary direction, drive light wavelength and other physical characteristics can varied. The molecular motor can be chemically functionalized, integrated into or attached to a variety of structures (abstract; p1, [0009]).
The molecular motors comprise
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wherein E and Em comprise CH,CH2; A is CR; G comprises CR Cb comprises a carbocyclic or heterocyclic group (p2, [0039]; p9, [0061-0067]).
The molecular motors can be used for making holes in membranes by attaching compounds of the invention to or embedding them in a membrane creates a point of insertion or the ability to make a hole in the membrane at the location of the compound. For example, light activated motion of a rotor embedded in a lipid bilayer will increase the disorder of the membrane. Changes in membrane disorder will alter access of various molecules through the holes in the membrane. In the cellular environment, compounds of the invention may be used to disrupt the cellular membrane allows access of pharmaceuticals through the membrane (p13, [0095]).
The molecular motors can be inserted into relaxed, covalently closed circular DNA or synthetic polymers. The molecular motors can incorporate PEG or peptide fragments to improve water solubility (p2, [0031]; p12, [0082]; p13, [0102]; p15, [0111]).
The molecular motors can be targeted to selective membrane layers by use of antibody coupling (p13, [0095]).
The molecular motors can be visualized using Cyvr green dyes intercalated into the DNA via strong fluorescence (p20, [0148]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the molecular motors of Koumura et al. can be used to target lipid membrane layers via coupling to an antibody targeting moiety as Bell et al. teaches of targeting molecular motors to lipid membrane layers via an antibody for the advantage of allowing pharmaceuticals/drugs through the membrane due to membrane disorder/hole.
The antibody targeting moiety encompasses the antibody targeting agent of the instant claims.
The pharmaceuticals/drugs encompasses the drug active agent of the instant claims.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the molecular motors of Koumura et al. can be detected after insertion into relaxed, covalently closed circular DNA as Bell et al. teaches that molecular motors can be visualized via strong fluorescence using Cyvr green dyes intercalated into the DNA.
The Cyvr green dyes encompasses the dye tracing agent of the instant claims.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the molecular motors of Koumura et al. comprise PEG or peptide fragments as Bell et al. teaches that the molecular motors incorporate PEG or peptide fragments for the advantage of improving water solubility.
The PEG or peptide fragments encompasses the solubilizing agent of the instant claims.
Claim(s) 1-4 and 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over ter Wiel et al. (Org. Biomol. Chem. 2005, 3, 28-30) in view of Bell et al. (US 2011/0077394A1).
ter Wiel et al. (Org. Biomol. Chem. 2005, 3, 28-30) discloses the molecular motors as well as that
stated above.
ter Wiel et al. does not disclose the targeting agent, tracing agent, solubility agent or active agent of the instant claims 7-10.
Bell et al. (US 2011/0077394A1) discloses nanometer-scale rotary molecular motors powered and controlled by light energy wherein the design of the molecular motors can be designed so that the rotary direction, drive light wavelength and other physical characteristics can varied as well as that
stated above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the molecular motors of ter Wiel et al. can be used to target lipid membrane layers via coupling to an antibody targeting moiety as Bell et al. teaches of targeting molecular motors to lipid membrane layers via an antibody for the advantage of allowing pharmaceuticals/drugs through the
membrane due to membrane disorder/hole.
The antibody targeting moiety encompasses the antibody targeting agent of the instant claims.
The pharmaceuticals/drugs encompasses the drug active agent of the instant claims.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the molecular motors of ter Wiel et al. can be detected after insertion into relaxed, covalently closed circular DNA as Bell et al. teaches that molecular motors can be visualized via strong fluorescence using Cyvr green dyes intercalated into the DNA.
The Cyvr green dyes encompasses the dye tracing agent of the instant claims.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the molecular motors of ter Wiel et al. comprise PEG or peptide fragments as Bell et al. teaches that the molecular motors incorporate PEG or peptide fragments for the advantage of improving water solubility.
The PEG or peptide fragments encompasses the solubilizing agent of the instant claims.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Garcia-Lopez et al. (Nano. Lett. 2015, 15, 8229-8239) in view of Bell et al. (US 2011/0077394A1).
Garcia-Lopez et al. (Nano. Lett. 2015, 15, 8229-8239) discloses the nanomachine light-driven
motors as well as that stated above.
Garcia-Lopez et al. does not disclose the targeting agent, tracing agent, solubility agent or active agent of the instant claims 7-10.
Bell et al. (US 2011/0077394A1) discloses nanometer-scale rotary molecular motors powered and controlled by light energy wherein the design of the molecular motors can be designed so that the rotary direction, drive light wavelength and other physical characteristics can varied as well as that
stated above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the molecular motors of Garcia-Lopez et al. can be used to target lipid membrane layers via coupling to an antibody targeting moiety as Bell et al. teaches of targeting molecular motors to lipid membrane layers via an antibody for the advantage of allowing pharmaceuticals/drugs through the membrane due to membrane disorder/hole.
The antibody targeting moiety encompasses the antibody targeting agent of the instant claims.
The pharmaceuticals/drugs encompasses the drug active agent of the instant claims.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the molecular motors of Garcia-Lopez et al. can be detected after insertion into relaxed, covalently closed circular DNA as Bell et al. teaches that molecular motors can be visualized via strong fluorescence using Cyvr green dyes intercalated into the DNA.
The Cyvr green dyes encompasses the dye tracing agent of the instant claims.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the molecular motors of Garcia-Lopez et al. comprise PEG or peptide fragments as Bell et al. teaches that the molecular motors incorporate PEG or peptide fragments for the advantage of improving water solubility.
The PEG or peptide fragments encompasses the solubilizing agent of the instant claims.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 19-31 of U.S. Patent No. 11,154,623B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the molecules used for the method of opening a lipid bilayer of U.S. Patent No. 11,154,623B2 comprise a targeting agent, tracing agent, solubilizing agent and active agent have analogous structures to that of the molecules of the instant claims further comprising a targeting agent, tracing agent, solubilizing agent and active agent.
The structures of the molecules of U.S. Patent No. 11,154,623B2 comprises
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wherein R1 and R2 are comprise hydrogen, alkane, alkene, alkynes, alcohols, etc. that encompass the compounds of the instant claims that comprise
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wherein R1 and R2 comprise hydrogen, alkane, alkene, alkynes, alcohols, etc.
Claims 1-4 and 7-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 10-18 of U.S. Patent No. 11,565,003B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the molecular motors used for the method of causing cell death by opening a lipid bilayer of the cell of U.S. Patent No. 11,565,003B2 have analogous structures to that of the molecules of the instant claims further comprising a targeting agent, tracing agent, solubilizing agent and active agent.
The structures of the molecular motors of U.S. Patent No. 11,565,003B2 comprises
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bound to
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wherein X is CH2, S and R1 and R2 comprise hydrogen, alkane, alkene, alkynes, etc. that encompass the compounds of the instant claims that comprise
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bound to
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wherein X is CH2, S and R1 and R2 comprise hydrogen, alkane, alkene, alkynes, etc.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6,11-18,22,23-27,30-49 and 52-61 of copending Application No. 19/115,760 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the molecular machines used in the method of treating a fungal infection in a patient, method of treating a disease or disorder in a patient caused by an infection of a microorganism, method of treating cancer in a patient of copending Application No. 19/115,760 have analogous structures to that of the molecules of the instant claims.
The structures of the molecular motors of copending Application No. 19/115,760 comprises
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wherein X is CH2, S and R1, R1’ comprise hydrogen, alkyl, etc.; R2 may be absent when n is 0 and R3 is hydrogen, alkynyl, etc. that encompass the compounds of the instant claims that comprise
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wherein X is CH2, S and R1 and R2 comprise hydrogen, alkane, alkene, alkynes, etc.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,7,8,10,13,14,27,30,32,38,41,46,48 and 49 of copending Application No. 19/125,733 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the stimulus-responsive molecular machines (when n is 0) used for the method of inducing an intercellular calcium wave (ICW) of copending Application No. 19/125,733 have analogous structures to that of the molecules of the instant claims.
The structures of the molecular motors of copending Application No. 19/125,733 comprises
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bound to
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wherein X is CH2, S; R2 may be absent when n is 0 and R3 is hydrogen, alkynyl, etc. that encompass the compounds of the instant claims that comprise
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wherein X is CH2, S and R1 and R2 comprise hydrogen, alkane, alkene, alkynes, etc.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to MELISSA JEAN PERREIRA whose telephone number is (571)272-1354. The
examiner can normally be reached M9-3, T9-3, W9-3, Th9-2, F9-2.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
Michael Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA J PERREIRA/ Examiner, Art Unit 1618
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