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 .
This Office action is responsive to Applicant’s preliminary amendment and remarks, filed 09 March 2026, in which claims 6, 8, 16, and 20 are amended, and new claims 25-34 are added.
This application is the national stage entry of PCT/US2022/017825, filed 25 Feb 2022; and claims benefit of provisional application 63/153,533, filed 25 Feb 2021.
Claims 1-34 are pending in the current application. Claims 16-24, drawn to non-elected inventions, are withdrawn. Claims 8, 10, 25-32, and 34, drawn to non-elected species, are withdrawn. Claims 1-7, 9, 11-15, and 33 are examined on the merits herein.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15 and new claims 25-34, in the reply filed on 09 March 2026 is acknowledged.
Claims 16-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 March 2026.
Applicant’s election of species of guest molecule of oil-soluble resveratrol and water-soluble vitamin B in the reply filed on 09 March 2026 is acknowledged.
However, the examiner interprets this to be an election of two distinct species, and not a single species of guest molecule.
During a telephone conversation with Joseph Chu on 24 March 2026 a provisional election was made for the species of guest molecule of oil-soluble resveratrol. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8, 10, 25-32, and 34 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected species.
Regarding claim 10, the elected species of guest molecule of oil-soluble resveratrol is not taught to be an active fragrance ingredient, therefore claim 10 is withdrawn.
Search and examination has expanded to include the species of guest molecule of therapeutic drug methotrexate.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The Applicant’s attention is drawn to In re Wands, 8 USPQ2d 1400 (CAFC1988) at 1404 where the court set forth eight factors to consider when assessing if a disclosure would have required undue experimentation. Citing Ex parte Forman, 230 USPQ 546 (BdApls 1986) at 547 the court recited eight factors:
(1) The nature of the invention; (2) the state of the prior art; (3) the relative skill of those in the art; (4) the predictability or unpredictability of the art; (5) the breadth of the claims; (6) the amount of direction or guidance presented; (7) the presence or absence of working examples; and (8) the quantity of experimentation necessary.
Nature of the invention: Claim 11 depends from claim 1 and recites “wherein an opening at the first end is the same size as the opening at the second end.” (emphasis added) Claim 1 recites “a cyclodextrin host comprising a polymer chain of structural units shaped as a frustoconical annulus formed around a cavity defined from a first end to a second end” (emphasis added). The term “frustoconical” describes a shape has a wider circular base that tapers to a smaller circular top, or a frustrum of a conical shape. Such a structural unit wherein an opening at the first end is the same size as the opening at the second end would be cylindrical, not conical.
The state of the prior art: Loftsson et al. (Journal of Pharmaceutical Sciences, 1996, 85(10), p1017-1025, cited in PTO-892) teaches cyclodextrins are cyclic (α-1,4)-linked oligosaccharides of α-D-glucopyranose containing a relatively hydrophobic central cavity and hydrophilic outer surface. Owing to lack of free rotation about the bonds connecting the glucopyranose units, the cyclodextrins are not perfectly cylindrical molecules but are toroidal or cone shaped. Based on this architecture, the primary hydroxyl groups are located on the narrow side of the torus while the secondary hydroxyl groups are located on the wider edge (Figure 1) (page 1017, right column, paragraph 3; page 1018, figure 1).
The relative skill of those in the art: The relative skill of those in the art is high.
The predictability or unpredictability of the art: Loftsson et al. teaches it is predictable that cyclodextrins are not perfectly cylindrical molecules but are toroidal or cone shaped based on their chemical structure, which defines a narrow side of the torus and a wider edge.
The Breadth of the claims: The scope of the claims encompasses any cyclodextrin.
The amount of direction or guidance presented: The specification speaks generally about cyclodextrins, such as those manufactured by glucosyltransferase degradation of starch, at page 12, paragraph 67-68 of the specification. However, guidance is not given for a cyclodextrin host comprising a polymer chain of structural units shaped as a frustoconical annulus formed around a cavity defined from a first end to a second end, and an opening at the first end is the same size as the opening at the second end.
The presence or absence of working examples: The only working examples provided are for the preparation of the claimed compound using α-, β-, or γ-CD at pages 36-41 of the specification.
The quantity of experimentation necessary: In order to practice the invention with the full range of all possible cyclodextrins beyond those known in the art, (such as α-, β-, or γ-CD or those manufactured by glucosyltransferase degradation of starch) one skilled in the art would undertake a novel and extensive research program into the synthesis of cyclodextrins. Because this research would have to be exhaustive, and because it would involve such a wide and unpredictable scope of chemical structures where the prior art predicts cyclodextrins are not perfectly cylindrical molecules due to their chemical structure, it would constitute an undue and unpredictable experimental burden.
Genentech, 108 F.3d at 1366, states that, “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion.” And “patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.”
Therefore, in view of the Wands factors discussed above, Applicants fail to provide information sufficient to practice the claimed invention in the form of a cyclodextrin host comprising a polymer chain of structural units shaped as a frustoconical annulus formed around a cavity defined from a first end to a second end, and an opening at the first end is the same size as the opening at the second end.
.
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.
Claims 1-5, 9, and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Noro et al. (Colloids and Surfaces B: Biointerfaces, 2017, 159, p259–267, cited in PTO-892).
Noro et al. discloses encapsulation nanodevices synthesized by emulsification of cyclo-oligosaccharides fully substituted by hydrophobic palmitic chains. These highly hydrophobic compounds, acquire oily-like behavior at moderate temperatures (∼50 °C) and when submitted to ultrasound can undergo emulsification. The improved emulsifying properties of modified cyclo-oligosaccharides are suitable to produce small and narrow sized nanoemulsions with ability to encapsulate amphiphilic molecules. Both encapsulation and delivery of a therapeutic drug, methotrexate (MTX), with amphiphilic character was assessed (page 259, abstract). Noro et al. discloses the embodiments of β-CD or γ-CD fully esterified with palmitic acid (CD-PAL) (page 262, figure 1), meeting limitations of claims 1-3. Oil-in-water nanoemulsions were self-assembled by cyclo-oligosaccharide/water system (paragraph spanning pages 262-263). MTX was encapsulated by the modified cyclo-oligosaccharides. The available ester groups of the cyclo-oligosaccharides are expected to interact with the hydrophilic groups of the drug, whereas the aromatic groups would interact more easily with the hydrophobic palmitic chains introduced by synthesis with the cyclo-oligosaccharides (paragraph spanning pages 265-266), where methotrexate is a known chemotherapeutic agent and meeting limitations of claims 4-5 and 9. The release of MTX from γ-CD-PAL nanoemulsions was measured (page 266, right column, paragraph 2 and figure 5).
Regarding claim 12-13, these claims recite properties of the organic super molecular vessel, however the language does not appear to require organic super molecular vessel to be in the form of the specific structure such as spherical structure of six organic super molecular vessels (claim 12). MPEP 2112.01 especially at I. citing In re Best, 562 F.2d 1252, 195 USPQ 430 (C.C.P.A. 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) discusses the support of rejections wherein the prior art discloses subject matter which there is reason to believe inherently includes functions that are newly recited or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to show the products of the applicant and the prior art are not the same or that the prior art products do not necessarily possess the characteristics of the claimed product. In this case Noro et al. discloses β-CD or γ-CD fully esterified with palmitic acid having the same structure of the organic super molecular vessel as claimed, and self-assemble into aggregates that encapsulate MTX, therefore there is reason to believe the cyclodextrin esters disclosed in Noro et al. possess the same properties as the claimed product.
Claims 1-2 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choisnard et al. (Biomacromolecules, 2006, 7, p515-520, cited in PTO-892).
Choisnard et al. discloses decanoate β-cyclodextrin esters (β-CDd) and hexanoate β-cyclodextrin esters (β-CDh), and their ability to self-organize into nanoparticles was tested using a nanoprecipitation technique (page 515, abstract; page 516, left column), or OSMVs comprising the β-cyclodextrin host and the medium-chain fatty acid hexanoate or the long-chain fatty acid decanoate bound to at least one of the cyclodextrin and meeting limitations of claims 1-2. The β-CDd nanosystems appeared as multilamellar aggregates in which the distance between layers is approximately 4 nm and stacked by association of the ester bound fatty acids (page 519, left column, paragraph 2-4 and figure 6), meeting limitations of claims 14-15.
Regarding claim 12-13, these claims recite properties of the organic super molecular vessel, however the language does not appear to require organic super molecular vessel to be in the form of the specific structure such as spherical structure of six organic super molecular vessels (claim 12). Further, regarding claim 13, Choisnard et al. is silent to the pore size of a cavity formed between two β-CDd, however Choisnard et al. discloses the β-CDd nanosystems forming multilamellar aggregates in which the cavity of one β-CDd aligns with the cavity of a second β-CDd at page 519, figure 6. MPEP 2112.01 especially at I. citing In re Best, 562 F.2d 1252, 195 USPQ 430 (C.C.P.A. 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) discusses the support of rejections wherein the prior art discloses subject matter which there is reason to believe inherently includes functions that are newly recited or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to show the products of the applicant and the prior art are not the same or that the prior art products do not necessarily possess the characteristics of the claimed product. In this case Choisnard et al. discloses the decanoate β-cyclodextrin esters (β-CDd) and hexanoate β-cyclodextrin esters (β-CDh) having the same structure of the organic super molecular vessel as claimed, therefore there is reason to believe the β-cyclodextrin esters disclosed in Choisnard et al. possess the same properties as the claimed product.
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.
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 3-7, 9, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Choisnard et al. (Biomacromolecules, 2006, 7, p515-520, cited in PTO-892) in view of Lu et al. (Food Chemistry, 113, 2009, p17–20, cited in PTO-892).
Choisnard et al. teaches as above regarding claims 1-2 and 12-15. Choisnard et al. further teaches the bioavailability of several poorly water soluble pharmaceutically active compounds can be improved using CD as a molecular carrier, and the use of CDs in pharmaceutical applications has been continually raised and generalized since 1953 (page 515, left column, paragraph 1).
Choisnard et al. does not specifically disclose an active compound positioned at least partly within the cavity of the organic super molecular vessel (claim 4).
Lu et al. teaches investigation of slightly water-soluble cancer chemopreventive polyphenol resveratrol (Res) and its inclusions with β-cyclodextrin (β-CD) and hydroxypropyl-β-cyclodextrin (HP-CD). The antioxidant activity of the Res complexes has been determined by the scavenging of the stable radical DPPH. The antioxidant activity of Res in free form has little difference with Res in complexed form at the same concentration (page 17, abstract). Some studies have shown that Res modulates lipid metabolism and protects low-density lipoproteins against oxidative and free radical damage (page 17, left column). In recent years, pharmaceutical applications of CDs as additives and drug-complexing agents have been growing rapidly. Inclusion complex formation will modify physico-chemical properties such as solubility, stability and bioavailability of poorly water-soluble drugs (page 17, right column, paragraph 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Choisnard et al. in view of Lu et al. in order to modify the CD of Choisnard et al. to be a molecular carrier for the active compound of oil-soluble resveratrol. One of ordinary skill in the art would have been motivated to combine Choisnard et al. in view of Lu et al. with a reasonable expectation of success because Choisnard et al. teaches the CD as a carrier to improve the bioavailability of poorly water soluble pharmaceutically active compounds, and Lu et al. teaches slightly water-soluble cancer chemopreventive polyphenol resveratrol formulated as an inclusion complex with different cyclodextrins, suggesting it would have been obvious to formulate the cyclodextrin of Choisnard et al. to as an inclusion complex as a carrier for resveratrol.
Regarding claim 3, Choisnard et al. teaches decanoate β-cyclodextrin esters (β-CDd) and hexanoate β-cyclodextrin esters (β-CDh). MPEP 2144.09 at I. provides “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities.” and at II. provides “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977)” In this case Choisnard et al. teaches the homologous fatty acid esters, decanoate and hexanoate, to have similar properties, suggesting similar homologs such as palmitoyl (or hexadecanoate) and stearic acid (or octadecanoate) esters would have been prima facie obvious and expected to possess similar properties. Further, Choisnard et al. teaching possession of different homologous fatty acid esters suggests one of ordinary skill in the art would have been motivated to make other homologous fatty acid esters of the cyclodextrin with a reasonable expectation of success.
Regarding claim 33, Choisnard et al. in view of Lu et al. does not specifically describe the resveratrol as a cosmetic active agent. However, Lu et al. teaches the antioxidant activity of Res in free form has little difference with Res in complexed form, suggesting the types of functional properties of the resveratrol are not changed by being in complexed form with a cyclodextrin. Therefore the teachings of the prior art suggest the resveratrol made obvious by the combined teachings of Choisnard et al. in view of Lu et al. would possess the functional properties of a cosmetic active agent as claimed.
Conclusion
No claim is found to be allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan S Lau whose telephone number is (571)270-3531. The examiner can normally be reached Monday-Friday 9a-5p Eastern.
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, Scarlett Goon can be reached at (571)270-5241. 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.
/JONATHAN S LAU/ Primary Examiner, Art Unit 1693