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 .
Response to Arguments
Applicant's arguments, filed July 9, 2026, have been fully considered but they are not deemed to be fully persuasive. The following rejections and/or objections constitute the complete set presently being applied to the instant application.
Specification
Although Applicants amended the specification filed July 9, 2026, the issues identified in the April 9, 2026 Office Action regarding the lack of a detailed description of drawings have not been fully resolved.
The disclosure is objected to because of the following informalities:
In ¶ 39 of the amendment to the specification, “FIGS. 19B” should read “FIG. 19B.”
In ¶ 42 of the amendment to the specification, the paragraph still lacks a description for FIG. 22E. It appears that “FIG. 22” should read “FIG. 22E.”
Appropriate correction is required.
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 1-7 and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (ACS Applied Materials & Interfaces, 2018) in view of Cheng et al. (ACS Applied Materials & Interfaces, 2017; cited on IDS filed November 2, 2023).
This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed April 9, 2026 and those set forth herein.
Regarding new limitations of amended claim 1, “immobilized on a surface”, Xiao discloses that manganese dioxide (MnO2) nanosheets can bind to the surface of the polydopamine (PDA) nanoparticles (NPs) via noncovalent binding interaction such as chelating bonding (Supporting Information, page S-5, ¶ 1) because PDA NPs have the capability of chelating metal ion such as Mn2+ owing to catechol-like structures on the surface. Regarding new limitations of amended claim 1, “the manganese salt comprises manganese carbonate (MnCO3), manganese sulfate (MnSO4), manganese chloride (MnCl2), manganese nitrate (Mn(N03)2), manganese acetate ((CH3COO)2Mn), or a mixture thereof”, this limitation is derived from amended claim 6, and the claim was rejected over Xiao in view of Cheng as discussed in the Office Action mailed April 9, 2026.
Regarding amended claim 6, Cheng discloses complexes comprising MnCO3 NPs and PDA for amplified magnetic resonance imaging (MRI)-guided photothermal therapy (PTT) (title), and Xiao in view of Cheng renders the claim obvious as discussed in the Office Action mailed April 9, 2026.
Regarding new claim 16, Xiao does not disclose that the manganese salt is present in a crystalline form.
Cheng discloses that the MnCO3 can form crystalline structure (page 19299, column 1, ¶ 1).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the complex of Xiao by substituting MnO2 with MnCO3 in crystalline form for cancer theranostics applications. A person of ordinary skill in the art would have been motivated to make these modifications and reasonably would have expected success because Cheng teaches that MnCO3 can form crystalline structure and can be used for pH-dependent theranostics agent. Further, a person of ordinary skill in the art would have been motivated to utilize crystalline MnCO3 to ensure superior structural integrity and reliable cycling stability for biomedical imaging. Accordingly, applying the teachings of Cheng to the complex of Xiao constitutes no more than the predictable use of prior art elements according to their established functions, thus rendering claim 16 obvious.
Applicant argues that neither Xiao nor Cheng, alone or in combination, discloses or suggests the structure in which a manganese salt is immobilized on a surface of the fluorescent NPs as required by amended claim 1.
This argument is unpersuasive. Structural limitations must be given their broadest reasonable interpretation (BRI) consistent with the specification. Under the BRI in light of the specification, the claimed limitation “immobilized” includes covalent linkage, surface adsorption, coordination complexation, chelation, and electrostatic binding. As instant claim 2 recites that a manganese ion is “chelated” to the surface of the fluorescent nanoparticle, “immobilized” necessarily encompasses “chelated.” As discussed above, Xiao explicitly teaches that MnO2 nanosheets can bind to the surface of the PDA NPs via chelation bonding because PDA NPs have the capability of chelating metal ions such as Mn2+ owing to catechol-like structures on the surface. Specifically, manganese ions can chelate to the surface, and carbonate ions can attach to the manganese ions, thereby resulting in manganese salt immobilization on the surface of NPs. A surface-immobilized manganese salt fundamentally manifests as manganese ions chelated to surface functional groups such as catechol moieties electrostatically paired with counter-anions such as carbonate ions. Thus, teaching the chelation of manganese ions directly establishes the foundational binding architecture required for immobilizing a manganese salt on the surface of NPs. In doing so, a POSITA would reasonably expect that introducing Cheng’s MnCO3 into Xiao’s framework would result in its stable immobilization on the surface of NPs, leveraging the established catechol-manganese coordination chemistry of the PDA NPs. Therefore, Xiao teaches the structural limitation where a manganese salt is immobilized on a surface of the fluorescent NPs as recited in amended claim 1.
Applicant argues that modifying Xiao in view of Cheng would not be motivated because replacing the MnO2 nanosheets of Xiao with MnCO3 of Cheng would change the fluorescent quenching mechanism (fluorescence resonance energy transfer (FRET) system) of Xiao.
This argument is unpersuasive. 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. In Xiao, when MnO2 nanosheets bind to the surface of PDA NPs, fluorescence quenching occurs not only through distance-dependent FRET but also through direct interfacial photoinduced electron transfer (PET) and static/contact quenching due to sub-nanometer interfacial contact. Specifically, because the surface chelation of manganese ions to catechol groups brings the nanosheet and NP into sub-nanometer proximity, direct molecular orbital overlap inevitably induces PET and ground-state complex formation (contact quenching) alongside long-range dipole-dipole FRET. Consequently, Xiao inherently discloses a hybrid, multi-pathway quenching process rather than a pure or exclusive FRET mechanism. Thus, even when replacing Xiao’s MnO2 nanosheets with Cheng’s MnCO3, a POSITA would reasonably expect quenching to be maintained through these prevailing short-range PET and static quenching pathways provided by close surface immobilization. A POSITA seeking a pH-dependent theranostic agent would modify Xiao by replacing MnO2 with MnCO3 as taught by Cheng to achieve enhanced acid-responsive imaging and therapeutic efficacy. Such a modification does not destroy the principle of operation merely because the precise biophysical pathway shifts from FRET to PET/contact quenching, provided the overall device continues to perform its established function as a nanoquencher-based biosensor system. Further, the record lacks any empirical data or technical evidence demonstrating that applying Cheng’s MnCO3 to Xiao’s NP framework would be inoperative or incapable of achieving fluorescence quenching. In conclusion, combining Xiao’s fluorescent PDA NPs framework with Cheng’s pH-sensitive MnCO3 moiety represents a predictable combination of prior art elements according to known methods to yield predictable results, thus the rejection is maintained.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Xiao and Cheng as applied to instant claims 1-7 and 9-16 above, and further in view of Miao et al. (ACS Applied Materials & Interfaces, 2015; cited on IDS filed November 2, 2023).
This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed April 9, 2026 and those set forth herein.
As discussed above, amended claim 1 is obvious. Since Applicant presents no separate or distinct arguments regarding the specific patentability of claim 8, the rejection of claim 8 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JONG HWAN BAEK whose telephone number is (571)272-0670. The examiner can normally be reached Mon - Thu, 9 am - 3 pm ET.
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/JONG HWAN BAEK/Examiner, Art Unit 1618
/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618
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