DETAILED ACTION
Applicants’ arguments filed June 26, 2026 have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Status of Claims
Claim 2 is canceled
Claims 1 and 3-14 are pending.
Claims 6-13 have been withdrawn from consideration.
Claims 1, 3-5, and 14 are under examination.
Drawings
The drawings are objected to because of the following informalities.
The text of Figure 2 is blurry and insufficiently clear. A reader is unable to determine the identities of the superscripts and subscripts associated with the listed elements, including both those for stoichiometry and charge states.
Appropriate correction is required.
Claim Interpretation
Claim 14 is interpreted to contain functional language. The phrase “bioimaging probe” describes an intended use of the claimed upconversion nanoparticle of claim 1 and does not provide additional structural restriction on the composition. Please note that a recitation of intended use does not distinguish over the prior art since a composition claim covers what the composition is and not what it is used for. A chemical composition and its properties are inseparable (MPEP § 2112.01). Therefore, as long as the prior art teaches the claimed structural features of the upconversion nanoparticle of claim 1 and the composition is capable of being used as a bioimaging probe, it reads on the claim.
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.
Claims 1, 3-5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Peng (Peng, P.; et al., ACS Nano, 2020) further in view of Dou (Dou, Q.; Zhang, Y., Langmuir, 2011).
Peng teaches an upconversion nanocrystal with a host matrix of an alkali metal (potassium, K) and ZrF7 doped with Yb3+ and Er3+ lanthanide ions of formula K3ZrF7:Er3+, Yb3+ (pg. 16672, Abstract). Peng further teaches and its utilization for biological imaging and biodegradation properties (pg. 16675, Figure 3).
Peng does not teach an upconversion particle with a host matrix of ZrF7 and lithium (in Li3ZrF7 stoichiometry).
Dou teaches a method of tuning the structure and emission spectra of upconversion nanocrystals (pg. 13236, Abstract). Dou generated upconversion nanoparticles possessing a host matrix of XYF4 doped with Er3+ and Yb3+, wherein X is sodium, potassium, or lithium, or a mixed ratio of sodium and potassium or sodium and lithium (pg. 13237, Nanocrystal Synthesis). Dou teaches that by increasing the lithium content of the nanoparticle, the luminescence emission spectra is changed and the green luminescence intensity (545 nm) is increased relative to blue (410 nm) (pg. 13239, Figure 4). While the direct analysis of lithium in Dou is a comparison between sodium and lithium, a similar comparison between sodium and potassium (pg. 13240, Figure 7) depicts increased potassium incorporation to be inversely proportional to the ratio of green emission intensity relative to blue emission intensity. Therefore, it can be transitively determined that a direct comparison between potassium and lithium would depict an even greater increase in green to blue emission ratio as the lithium content is increased.
A person of ordinary skill in the art would have recognized that the upconversion nanoparticles of Peng (K3ZrF7:Er3+, Yb3+) and Dou, (K/Na/Li)YF4:Er3+, Yb3+, are similar in that they are both lanthanide-doped (Er3+and Yb3+) nanoparticles possessing photon upconversion properties further containing host materials comprising an alkali metal ion and a metal-fluoride complex. Furthermore, it would be recognized that the switching of potassium to lithium in the host material would enable tuning the emission color.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the upconversion nanoparticle taught by Peng by incorporating the teachings of Dou (to swap the potassium with lithium). This would result in the predictable conversion of K3ZrF7:Er3+, Yb3+ to Li3ZrF7:Er3+, Yb3+, resulting in an upconversion nanoparticle that reads on the claimed Chemical Formula 1.
Regarding claim 1, applying the potassium to lithium swap taught by Dou (pg. 13237, Nanocrystal Synthesis) to the K3ZrF7:Er3+, Yb3+ upconversion nanoparticle of Peng (pg. 16672, Abstract) would result in an upconversion nanoparticle of the formula Li3ZrF7:Er3+, Yb3+. Claim 1 requires an upconversion nanoparticle comprising Li3ZrF7 doped with either a single lanthanide or two or more different lanthanides selected from the group consisting of Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, and Yb. The product of the teachings of Peng and Dou reads on the nanoparticle of claim 1 the doped lanthanides are the combination of Er and Yb. Therefore, the combined teachings of Peng and Dou render claim 1 obvious.
Regarding claim 3, applying the potassium to lithium swap taught by Dou (pg. 13237, Nanocrystal Synthesis) to the K3ZrF7:Er3+, Yb3+ upconversion nanoparticle of Peng (pg. 16672, Abstract) would result in an upconversion nanoparticle of the formula Li3ZrF7:Er3+, Yb3+. Claim 3 requires the upconversion nanoparticle of claim 1 to be doped with Er3+ and Yb3+. The aforementioned product of combining the works of Peng and Dou is an upconversion nanoparticle with a host material of Li3ZrF7 doped with Er3+ and Yb3+. Therefore, the combined teachings of Peng and Dou render claim 3 obvious.
Regarding claim 4, Peng teaches that the upconversion nanoparticle of the formula K3ZrF7:Er3+, Yb3+ is degradable in water, and phosphate buffered saline (pg. 16674, Figure 2e). Peng describes these as aqueous buffer solutions (pg. 16674, right column, last paragraph, lines 6-7). Peng further teaches that this degradation property is related to pH-dependent hydrolysis of the host material to water soluble [ZrF7 ]3- and K+ ions (pg. 16673, paragraph 1). As the potassium to lithium swap of Dou (pg. 13237, Nanocrystal Synthesis) does not alter the other host material atoms, the ZrF7 would persist in the product of the combined teachings and thus the biodegradability of the upconversion nanoparticle is not expected to be changed by the incorporation of lithium. Therefore, the combined teachings of Peng and Dou render claim 4 obvious.
Regarding claim 5, Peng teaches that the K3ZrF7:Er3+, Yb3+ upconversion nanoparticles degrade in various aqueous solutions including water and phosphate buffered saline (Figure 2e). Peng teaches that the degradation in water is about 80% after 8 hours and the degradation in phosphate buffered saline is less than 40% after 8 hours (Figure 2e). For the reasons discussed above, it is not expected that the incorporation of lithium would remove this property. While Peng does not explicitly teach nanoparticle degradation over the period of about 20 days, the examiner notes that the combination of Peng and Dou teaches an upconversion nanoparticle of the formula Li3ZrF7:Er3+, Yb3+, which possesses a structure that reads on claim 1, upon which claim 5 indirectly depends. Per MPEP § 2112.01(II), compositions of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Therefore, the combined teachings of Peng and Dou render claim 5 obvious.
Regarding claim 14, Peng teaches that the upconversion nanoparticle of the formula K3ZrF7:Er3+, Yb3+ can be used as a bioimaging probe by administering the nanoparticle to a live animal and monitoring the luminescence intensity in animal tissue (pg. 16675, Figure 3). As Dou teaches that the switch from potassium to lithium does not remove the upconversion luminescence properties of lanthanide-doped nanoparticles and perhaps even improves these properties (pg. 13239, Figure 4 and pg. 13240, Figure 7), the combined product of Peng and Dou, Li3ZrF7:Er3+, Yb3+ (as described in the rejection of claim 1), would be expected to retain its ability to be used as a bioimaging probe. Therefore, the combined teachings of Peng and Dou render claim 14 obvious.
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 and 3-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/774,558 in view of Dou and further in view of Hu (Hu, J.; et al., Chem. Mater., 2022).
The claims of copending application 18/774,558 are drawn toward a biodegradable core-double shell upconversion nanoparticle. Conflicting claim 2 specifically requires the core layer comprises Na3ZrF7:Yb, Er/Tm, Ca nanoparticles.
The copending application does not teach an upconversion nanoparticle lacking calcium and comprising lithium in the host material of the formula Li3ZrF7 doped with one or more lanthanide ions.
As described above, Dou teaches a method of switching alkali metal ions in upconversion nanoparticles (pg. 13237, Nanocrystal Synthesis). Dou specifically teaches that switching sodium to lithium enables modulation of the emission spectra (pg. 13239, Figure 4).
Hu teaches an upconversion material of the formula β-Ba2ScAlO5:Er3+, Yb3+(pg. 3089, Abstract). Hu further teaches that both the calcium-doped and undoped variants of this upconversion nanomaterial display upconversion luminescence at wavelengths between 400 nm and 700 nm (pg. 3091, Figure 3).
A person of ordinary skill in the art would have recognized that the copending application 18/774,558, Dou, and Hu all teach upconversion materials doped with Er3+and Yb3+. It would be recognized that the works of Dou and Hu teach that modulation of host or doped inorganic cations can be used to tailor an upconversion material. Hu teaches that removal of doped calcium does not change the upconversion luminescence wavelengths and Dou teaches that switching sodium to lithium enables color tunability.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Dou (switching sodium to lithium) and Hu (removal of doped calcium) with the reference application. This would yield a biodegradable upconversion nanoparticle that would read on the instant claims.
Regarding instant claim 1, conflicting claim 2 of the reference application teaches a biodegradable upconversion nanoparticle with a core layer comprising Na3ZrF7:Yb, Er/Tm, Ca nanoparticles. Applying the teaching of Dou to switch the alkali metal from sodium to lithium would produce a biodegradable upconversion nanoparticle with a core layer comprising nanoparticles of the formula Li3ZrF7:Yb, Er/Tm, Ca. Applying the teaching of Hu to prepare an alternative material not doped with calcium would produce a biodegradable upconversion nanoparticle with a core layer comprising nanoparticles of the formula Li3ZrF7:Yb, Er or Li3ZrF7:Yb, Tm. These are both nanoparticles comprising Li3ZrF7 doped with two different lanthanide ions from the group consisting of Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, and Yb. Therefore, these compositions read on the nanoparticle of instant claim 1.
Regarding instant claim 3, as described above, applying the combined teachings of Dou and Hu to the Na3ZrF7:Yb, Er/Tm, Ca nanoparticles of the reference application (conflicting claim 2) would produce a biodegradable upconversion nanoparticle with a core layer comprising nanoparticles of the formula Li3ZrF7:Yb, Er or Li3ZrF7:Yb, Tm; the former reads on the claimed formula of Li3ZrF7:Yb3+, Er3+.
Regarding instant claims 4 and 5, as described above, applying the combined teachings of Dou and Hu to the Na3ZrF7:Yb, Er/Tm, Ca nanoparticles of the reference application would produce a biodegradable upconversion nanoparticle with a core layer comprising nanoparticles of the formula Li3ZrF7:Yb,Er or Li3ZrF7:Yb,Tm; which both read on the nanoparticle of claim 1. Additionally, conflicting claim 2 requires the nanoparticle be biodegradable. This does not explicitly require the nanoparticle to demonstrate degradation in aqueous media. However, the examiner notes that as the combined teachings produce a product within the scope of the structure of the nanoparticle of claim 1, upon which claims 4 and 5 depend, per MPEP § 2112.01(II), a chemical composition and its properties are inseparable. Therefore, as an identical chemical structure is taught, the degradation in aqueous media over a period of about 20 days is necessarily present.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed June 26, 2026 have been fully considered but they are not persuasive.
First, Applicant asserts that the Office relied on hindsight reconstruction and did not provide an adequate technical basis for concluding that a person of ordinary skill in the art would have modified Peng’s K3ZrF7:Yb/Er system by replacing potassium with lithium to arrive at the presently claimed Li3ZrF7 system with a reasonable expectation of success. Applicant states that Dou concerns a different host material (NaYF4-based nanocrystals). Applicant also puts forth that Dou does not teach or suggest substituting Li for K in Peng’s cubic potassium heptafluorozirconate host. Additionally, it is argued that Dou does not address the different coordination environment and phase behavior of Peng’s K3ZrF7 host.
Second, Applicant asserts that Dou does not support the Examiner’s assertion that lithium incorporation would predictably increase maximum UCL intensity. Applicant puts forth that Dou states that the fluorescence spectra taught by Dou were normalized according to the blue emission peak and thus demonstrate relative spectral distribution and do not teach increases in absolute maximum emission intensity.
Third, Applicant asserts that unexpected results are presented with respect to upconversion luminescence intensity and degradation rate in aqueous media. Applicant states that the comparative K3ZrF7:Er3+,Yb3+ material degrades over a period of 8 hours and the claimed Li3ZrF7:Er3+,Yb3+ material degrades over a period of 20 days. Applicant also states that the Li3ZrF7:Er3+,Yb3+ material exhibits an approximately 300-fold increase in upconversion luminescence intensity relative to the K3ZrF7:Er3+,Yb3+ comparator.
Fourth, Applicant asserts that claims 4 and 5 further distinguish over the references of Peng and Dou. It is put forth that neither Peng nor Dou teaches or suggests an upconversion nanoparticle that is hydrolytically degradable in an aqueous medium selected from pure water, saline, and phosphate buffered saline and that degrades over about 20 days in that medium. It is put forth that Peng’s potassium-based system is reported to degrade much more rapidly. It is also put forth that the cited art does not teach or suggest that the claimed lithium-based system would exhibit the presently claimed degradation behavior.
Fifth, Applicant asserts that because the cited art does not render amended claim 1 obvious, it likewise does not render obvious a bioimaging probe comprising the nanoparticle of claim 1.
Sixth, Applicant asserts that the art combination proposed by the Examiner does not establish obviousness of the presently amended claims with respect to the nonstatutory double patenting, rejection over conflicting claim 2 of copending Application No. 18/774,558 in view of Dou and Hu. Applicant requests the rejection be held in abeyance until an indication of allowable subject matter is provided by the Office.
First, respectfully, this argument is not persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, both the Peng and Dou references were published before the effective filing date of the claimed invention and the rejection only relies on the teachings of Peng and Dou. Therefore, the rejection provides a proper reconstruction.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Dou teaches alkali metal substitutions in a YF4 containing upconversion luminescent nanoparticle doped with Er and Yb. As described above, the skilled artisan would recognize that both the XYF4:Er/Yb nanoparticle of Dou and the XZrF7:Er/Yb nanoparticle of Peng (wherein X is an alkali metal) are similar nanoparticles as both possess photon upconversion properties and contain host materials comprising an alkali metal and a transition metal-fluoride complex. Therefore, a skilled artisan would have a reasonable expectation of success applying the modification of Dou to the similar comparable nanoparticle system of Peng.
Second, respectfully, this argument is not persuasive. The Examiner acknowledges that Dou does not explicitly address the effect of substituting potassium for lithium in an upconversion nanoparticle on the absolute maximum luminescence intensity of such nanoparticles. However, it is noted that the Examiner did not solely rely on this aspect of Dou to support the rationale for why a person of ordinary skill in the art would use the teachings of Dou to modify the nanoparticle of Peng. In the previous Office Action, the Examiner pointed out that Dou teaches multiple benefits to changing alkali metals in upconversion nanoparticles, including an increase in emission spectra peaks relative to others, describing the phenomena as enabling emission color tuning. Dou specifically points out that color tunability will enable more powerful upconversion nanoparticles in bioassays (pg. 13240, right column, first paragraph, last sentence). Therefore, the skilled artisan would be motivated to apply the teachings of Dou to the nanoparticle of Peng. As this benefit of color tunability was previously provided, the current rejection as applied above does not constitute a new ground of rejection.
Third, respectfully, this argument is not persuasive. As stated in MPEP § 716, Applicant’s assertion of unexpected results requires objective evidence, i.e. data. Furthermore, per MPEP § 716.01(c), to be of probative value, any objective evidence should be supported by actual proof. In the instant case, with respect to the assertion of extended degradation time period, Applicant has not provided tests comparing the claimed invention with the closest prior art. Applicant merely states that the comparative K3ZrF7:Er,Yb material degrades over a period of 8 hours compared to a period of 20 hours for the Li3ZrF7:Er,Yb material. While data is provided demonstrating the degradation profile of the Li3ZrF7:Er,Yb material, no data is provided in the instant disclosure regarding the degradation profile of a K3ZrF7:Er,Yb material. Furthermore, the burden is on the Applicant to establish results are unexpected and significant (MPEP § 716.02(b). As described above, Peng teaches that a K3ZrF7:Er,Yb material under certain experimental conditions degrades in aqueous media including water and phosphate buffered saline. While Peng only measures degradation over the course of 8 hours, the fact that the percent degradation is less than 80% in water and less than 40% in phosphate buffered saline after 8 hours (Figure 2e) suggests to a person of ordinary skill in the art that degradation will continue for longer than 8 hours. This is contrary to Applicant’s assertion that K3ZrF7:Er,Yb nanoparticles degrade over a period of just 8 hours in aqueous media. No data provided by the Applicant or disclosed by Peng teach that K3ZrF7:Er,Yb would not exhibit degradation beyond a period of 8 hours. Indeed, Peng further teaches that the potassium containing nanoparticle degradation can be measured for at least 30 hours in a cyclohexane/water system (Figure 2b). Additionally, it is not clear that the conditions in which Peng observes K3ZrF7:Er,Yb degradation, the conditions in which Applicant reports Li3ZrF7:Er,Yb degradation, and the conditions in which Applicant states that K3ZrF7:Er,Yb displays an 8 hour degradation time are identical or even comparable. It is not clear whether the nanoparticle concentration, pH, or total ionic strength of the aqueous media used in the data provided in Figure 10 of the instant application are similar to those used in Peng. This is of importance as Peng demonstrates that pH impacts the rate of degradation of such nanoparticles (Figure 2e; and pg. 16674, right column, last paragraph through pg. 16675, left column, first paragraph).
Additionally, with respect to the assertion that the Li3ZrF7:Er,Yb nanoparticles possess an approximately 300-fold increase in upconversion luminescent intensity compared to the K3Zr7F:Er,Yb comparative material, the evidence provided, as currently described, is not sufficient. Applicant fails to provide the conditions under which this comparison was performed. It is unclear whether the nanoparticles being compared were in identical solutions, present at equivalent concentrations, possessed the same doping percentages of lanthanide ions, and irradiated with the same wavelength and intensity of light. Such variables being equivalent is necessary for the presented data to be considered objective evidence that the use of lithium in place of potassium resulted in unexpected results.
Furthermore, per MPEP 716.02(d), objective evidence of nonobviousness must be commensurate in scope with the claims which the evidenced is offered to support. The data provided to support the assertions regarding degradation time and UCL intensity are only provided for Li3ZrF7:Er,Yb nanoparticles. The examiner notes that such data pertains to an embodiment more narrow than the scope of each of claims 1, 3-5, and 14. Claim 1 (and thus claims 4-5 and 14 due to their dependence upon claim 1) allow for the presence of other lanthanide ions doped in an L3ZrF7 containing host material. It is not apparent that the inclusion of other lanthanides individually or in combination (beyond the pair of Er and Yb) would exhibit the same asserted unexpected luminescence intensity results. While claim 3 specifies the lanthanide pair, claims 1 and 3 recite “…nanoparticle comprising Li3ZrF7…” and “nanoparticle includes Li3ZrF7:Er3+,Yb3+,” respectively. The scope of these claims allows for the nanoparticle to further contain additional components. However, the data provided is for nanoparticles only containing Li3ZrF7:Er,Yb; which may also be surrounded by a layer of oleic acid as depicted in Figure 2c of Peng. Since the instantly claimed nanoparticles are prepared using similar reagents and methods to that of Peng, the skilled artisan could expect oleic acid to be present in the final product of the instant invention used in the data gathering experiments for the degradation and luminescence properties. However, no data is provided for upconversion nanoparticles containing Li3ZrF7:Er,Yb that contain any additional other components (other than perhaps oleic acid). Thus, the scope of these claims is not commensurate with the data provided. For these above reasons, the assertion of unexpected results is not persuasive.
Fourth, respectfully, this argument is not persuasive. As described above, Peng does indeed teach an alkali metal containing ZrF7:Er,Yb upconversion nanoparticle that degrades in the aqueous media of water and phosphate buffered saline (Figure 2e). As described in the rejection of claim 4 above, it would be expected that the substitution taught by Dou would not remove this property from the nanoparticle. Therefore, the combination of Peng and Dou does teach the degradation behavior as claimed in claim 4. Regarding claim 5, as described above, Peng teaches that the degradation in water is about 80% after 8 hours and the degradation in phosphate buffered saline is less than 40% after 8 hours (Figure 2e). While Peng does not explicitly measure nanoparticle degradation over the period of about 20 days, in especially the example of phosphate buffered saline, it is expected that the degradation would persist beyond 8 hours. Furthermore, as the combined teachings of Peng and Dou teaches a nanoparticle of the formula Li3ZrF7:Er3+, Yb3+, which possesses a structure that reads on claim 1, upon which claim 5 indirectly depends, per MPEP § 2112.01(II), compositions of identical chemical composition cannot have mutually exclusive properties. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. To the extent that such a purported difference in degradation time is unexpected, see the above responses.
Fifth, respectfully, this argument is not persuasive. As described above, the cited prior art renders obvious the nanoparticle of amended claim 1. Therefore (and for the additional reasons provided above), this art also renders obvious the bioimaging probe of claim 14 obvious.
Sixth, respectfully, this argument is not persuasive. Applicant’s provided rationale for asserting that the combination of Dou and Hu with conflicting claim 2 of copending Application No. 18/774,558 is solely stated as “for at least the reasons discussed above with respect to the Peng/Dou rejection.” However, the Examiner notes that the Peng reference is not being used in the provided nonstatutory double patenting rejection. Thus, it is not clear what the reasons for a lack of obviousness are purported to be. Furthermore, while Applicant provides remarks regarding the Dou reference with respect to the rejections under 35 U.S.C. 103, these remarks are with respect to the combination of Dou with the teachings of Peng, not the content of the claims of copending Application No. 18/774,558. To the extent that there is overlap between conflicting claim 2 of the copending application and the teachings of Peng, there is a shared ZrF7 component of the nanoparticles and the lanthanide doping. As described above, the skilled artisan would recognize that the YF4 containing nanoparticles of Dou are similar to those containing ZrF7 as these are transition metal fluoride complexes doped with lanthanide ions possessing the property of upconversion luminescence. Therefore, the nonstatutory double patenting rejection as currently applied is considered proper.
Conclusion
All claims are rejected.
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 Eric P Mosher whose telephone number is (571)272-3258. The examiner can normally be reached Monday-Friday 9am-5pm.
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/E.P.M./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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