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
Applicants elected a mix of chemical formulas 3 and 4 at a ratio of 1:9 with phenophoride A, and a second otherwise identical embodiment with GdDOTA without traverse in the reply filed on 13 March, 2026 and the phone call with Brandan Chan on 14 April, 2026.
Claims Status
Claims 1-24 and 26-30 are pending.
Claims 1, 3-5, 8, 9, and 16 have been amended.
Claims 7, 17, 18, 20-23, 26, and 27 have been withdrawn from consideration due to an election/restriction requirement.
New Objections
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 describes part ‘a’ as a hydrophobic peptide, but the sequences allowed by the claim are typically considered very hydrophilic and is inconsistent with how it is referred to in the rest of the application, note claim 3 and p21, line 15 where the same sequences are considered hydrophilic. Appropriate correction is required.
Withdrawn Rejections
The rejection of claim 4 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite due to uncertainty as to the cutoff between hydrophobic and not hydrophobic is hereby withdrawn due to amendment.
The rejection of claims 8 and 9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite due to uncertainty as to the sequences required is hereby withdrawn due to amendment.
The rejection of claims 15 and 16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph due to uncertainty as to how the average is defined is hereby withdrawn due to amendment.
The rejection of claims 9, 10, and 19 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form due to the addition of the RGD sequences is hereby withdrawn due to amendment.
The rejection of claim 25 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form over the hydrophobicity of the drug is hereby withdrawn due to amendment.
Maintained/Modified Rejections
Claim Rejections - 35 USC § 102
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) 1-3, 8, 9, 11-13, 15, 16, 24, 25, and 28-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lim et al (KR20180032052A, cited by applicants). Note that Lim et al is in Korean. A machine language translation was used for this rejection; any mention of locations in the reference refer to the machine translation, unless otherwise noted.
Lim et al discuss cyclic peptides that self assemble into nanoparticles (paragraph 3). The cyclic peptide used by the authors is a cyclized version of WWε-KWW-Ebs-TRQARRNRRRRWRR-Ebs (paragraph 32-37, note that the structure is in paragraph 35 of the original document). Note that this compound has an RRRR sequence (SEQ ID 3 of the examined claims) and a Wε-KW sequence, separated by linkers comprising Ebs, anticipating claims 1-3, 8, and 9. The material was assembled into vesicles by various techniques (paragraphs 45-55), anticipating claims 11-13. Note that structures form just from dissolution (paragraph 73). The structures formed by the material were spherical with a diameter of about 40-45 nm, anticipating claim 15. While the thickness of the shell is not described, it is the same compounds as applicants have described, so it will inherently have the same thickness, anticipating claim 16. Assemblies with carboxymethylfluorescien were made (paragraph 63), which were used to deliver the dye to HeLa cells (paragraph 68), anticipating claims 24, 29, and 30. While the pathway by which the material crosses the cell membrane is not described, as these are the same compounds as claimed by applicants, they must use the same mechanism, anticipating claim 28.
response to applicant’s arguments
Applicants argue that the hydrophilic peptide of Lim et al does not consist of 2-6 Arg residues or an RGD sequence.
Applicant's arguments filed 9 July, 2026 have been fully considered but they are not persuasive.
The cyclic sequence of Lim et al has a 4 Arg sequence. Applicants appear to be arguing that there are additional amino acids on one side or the other of the sequence, but that is a distinction without a difference, as it exists only in the mind of the person who designed the sequence. There is nothing in the claims that prevent those non-Arg residues from being part of the linker, or an additional segment under the rubric of “comprising” in 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.
first rejection
Claim(s) 1-6, 8, 9, 11-13, 15, 16, 24, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al (KR20180032052A, cited by applicants) in view of Kabanov et al (Prot. Eng. (1989) 3(1) p39-42) and Gao et al (Science (Nov. 2021) 24 103220). Note that Lim et al is in Korean. A machine language translation was used for this rejection; any mention of locations in the reference refer to the machine translation, unless otherwise noted.
Lim et al discuss cyclic peptides that self assemble into nanoparticles (paragraph 3), which can be used as a drug delivery mechanism (paragraph 20). The cyclic peptide used by the authors is a cyclized version of WWε-KWW-Ebs-TRQARRNRRRRWRR-Ebs (paragraph 32-37, note that the structure is in paragraph 35 of the original document). Note that this compound has an RRRR sequence (SEQ ID 3 of the examined claims) and a Wε-KW sequence, separated by linkers comprising Ebs. The material was assembled into vesicles by various techniques (paragraphs 45-55). The structures formed by the material were spherical with a diameter of about 40-45 nm. Assemblies with carboxymethylfluorescien were made (paragraph 63), which were used to deliver the dye to HeLa cells (paragraph 68). The Arg residues in the sequence allow the material to penetrate cell membranes, and are responsible for delivery of a cargo into a cell (paragraph 83), but the requirement is for a hydrophilic segment (paragraph 72). As noted above, this reference anticipates claims 1-3, 8, 9, 11-13, 15, 16, 24, and 28-30.
The difference between this reference and the remaining claims is that this reference does not discuss a fatty acid adduct.
Kabanov et al discuss lipid modification of proteins for membrane transport (title). By reacting proteins with stearoyl chloride, they were able to pass through bilayer membranes (p39, 2nd column, 2nd paragraph). This reference discusses using fatty acids to aid in passage through cell membranes.
Gao et al looks at the same method for a different peptide (title). They also showed that the length of the fatty acid affected how efficiently the peptide was transported through the cell membrane, with a maximum uptake in their system with their test sequence being a C14 fatty acid (fig 1e, 3d page, top of page). This reference discusses the effect of changing the length of the fatty acid to optimize uptake.
Therefore, it would be obvious to add the fatty acid of Kabanov et al to the structures of Lim et al, to assist in membrane passage. As this was demonstrated to be effective for different polypeptides and by different groups, an artisan in this field would attempt this modification with a reasonable expectation of success.
Lim et al discusses cyclic peptides that meet the limitations of claim 1, while Kabanov et al renders obvious adding a fatty acid to the sequences. The only obvious location to add it is at the Lys residue in the hydrophobic section, rendering obvious claim 4.
Gao et al renders obvious optimizing the length of the fatty acid. The MPEP states that “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or working ranges by routine experimentation" In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”) (MPEP2144.05.II). Thus, the combination of references renders obvious claims 5 and 6.
response to applicant’s arguments
Applicants have repeated the same arguments as with respect to the rejection under 35 USC 102, above, which were found unpersuasive for the reasons described there.
second rejection
Claim(s) 1-6, 8-16, 19, 24, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al (KR20180032052A, cited by applicants) in view of Kabanov et al (Prot. Eng. (1989) 3(1) p39-42), Gao et al (Science (Nov. 2021) 24 103220), Liu et al (Drug Dev. Res. (2008) 69(6) p329-339), Burgess et al (J. Med. Chem. (1996) 39 p4520-4526) and Sethuraman et al (WO 2019165183). Note that Lim et al is in Korean. A machine language translation was used for this rejection; any mention of locations in the reference refer to the machine translation, unless otherwise noted.
Lim et al discuss cyclic peptides that self assemble into nanoparticles (paragraph 3), which can be used as a drug delivery mechanism (paragraph 20). The cyclic peptide used by the authors is a cyclized version of WWε-KWW-Ebs-TRQARRNRRRRWRR-Ebs (paragraph 32-37, note that the structure is in paragraph 35 of the original document). Note that this compound has an RRRR sequence (SEQ ID 3 of the examined claims) and a Wε-KW sequence, separated by linkers comprising Ebs. The material was assembled into vesicles by various techniques (paragraphs 45-55). The structures formed by the material were spherical with a diameter of about 40-45 nm. Assemblies with carboxymethylfluorescien were made (paragraph 63), which were used to deliver the dye to HeLa cells (paragraph 68). The Arg residues in the sequence allow the material to penetrate cell membranes, and are responsible for delivery of a cargo into a cell (paragraph 83), but the requirement is for a hydrophilic segment (paragraph 72).
Kabanov et al discuss lipid modification of proteins for membrane transport (title). By reacting proteins with stearoyl chloride, they were able to pass through bilayer membranes (p39, 2nd column, 2nd paragraph). This reference discusses using fatty acids to aid in passage through cell membranes.
Gao et al looks at the same method for a different peptide (title). They also showed that the length of the fatty acid affected how efficiently the peptide was transported through the cell membrane, with a maximum uptake in their system with their test sequence being a C14 fatty acid (fig 1e, 3d page, top of page). This reference discusses the effect of changing the length of the fatty acid to optimize uptake.
As noted above, these references render obvious claims 1-6, 8, 9, 11-13, 15, 16, 24, and 28-30.
The difference between these references and the remaining claims is that these references have a different hydrophobic portion of the cyclic peptide.
Liu et al discuss integrin αVβ3 targeted cancer therapy (title). This integrin is expressed in tumor vasculature and some tumors (abstract). This can be used to target anti-cancer agents to the tumor (7th page, 4th paragraph), possibly by RGD containing peptides (4th page, 4th paragraph). This reference discusses targeting integrins to deliver cancer drugs to a tumor.
Burgess et al discuss cyclo RGDRGD, a sequence with selectivity for αVβ3 (title). This showed good binding to the receptor (table 1, p4521, 1st column, top of page), and were active in cells (p4521, 1st column, 3d paragraph). This reference describes a sequence that targets cancer cells.
Sethuraman et al discuss cyclic peptide sequences similar to Lim et al, with an oligoarginine segment, and a stretch of hydrophobic amino acids (paragraph 19). Note that the number of Arg residues can vary, but is at least two, which allow for cell penetrating ability (paragraph 157). This reference discusses oligoarginines in peptides similar to those of Lim et al, to allow cell penetrating ability.
Therefore, it would be obvious to replace the hydrophilic peptide of Lim et al with the sequence of Burgess et al, to target the payload of the constructs of Lim et al to tumor cells, as discussed by Liu et al. As this is a common approach in cancer therapy, an artisan in this field would attempt this modification with a reasonable expectation of success.
Alternatively, it would be obvious to use an oligoarginine, to allow for cell penetrating ability, as mentioned by Sethuraman et al. As Lim et al discusses Arg residues for this purpose (independently suggesting the same modification), an artisan in this field would attempt this modification with a reasonable expectation of success.
Liu et al and Burgess et al render obvious replacing the hydrophilic segment of Lim et al with the sequence RGDRGD. While the resulting sequence (as modified by Kabanov et al and Gao et al) has a WWε-KWW, rather than the Wε-KW sequence of the examined claims, this is not considered a patentable distinction, as the length of a number of repeating units can vary by a small amount and still be considered obvious, absent secondary conditions (MPEP 2144.09). This reconstitutes chemical formula 4, rendering obvious claim 10
Alternatively, Sethuraman et al renders obvious an oligoarginine sequence for the hydrophilic sequence of Lim et al. While it does not specify the 6 Arg residues of applicant’s elected sequence (formula 3), it has an example with 4, and, as noted above, a small difference in the number of repeating units is not considered a patentable distinction, absent secondary considerations (MPEP 2144.09).
The MPEP states that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. . .the idea of combining them flows logically from their having been individually taught in the prior art" (MPEP 2144.06). Thus, it would be obvious to combine the compound of formula 4 and the compound of formula 3, rendering obvious claim 19.
response to applicant’s arguments
Applicants have repeated the same arguments as with respect to the rejection under 35 USC 102, above, which were found unpersuasive for the reasons described there.
third rejection
Claim(s) 1-6, 8-16, 19, 24, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al (KR20180032052A, cited by applicants) in view of Kabanov et al (Prot. Eng. (1989) 3(1) p39-42), Gao et al (Science (Nov. 2021) 24 103220), Liu et al (Drug Dev. Res. (2008) 69(6) p329-339), Burgess et al (J. Med. Chem. (1996) 39 p4520-4526), Sethuraman et al (WO 2019165183) and Tang et al (Canc. Biol. Ther. (2006) 5-9 p1111-1116). Note that Lim et al is in Korean. A machine language translation was used for this rejection; any mention of locations in the reference refer to the machine translation, unless otherwise noted.
Lim et al discuss cyclic peptides that self assemble into nanoparticles (paragraph 3), which can be used as a drug delivery mechanism (paragraph 20). The cyclic peptide used by the authors is a cyclized version of WWε-KWW-Ebs-TRQARRNRRRRWRR-Ebs (paragraph 32-37, note that the structure is in paragraph 35 of the original document). Note that this compound has an RRRR sequence (SEQ ID 3 of the examined claims) and a Wε-KW sequence, separated by linkers comprising Ebs. The material was assembled into vesicles by various techniques (paragraphs 45-55). The structures formed by the material were spherical with a diameter of about 40-45 nm. Assemblies with carboxymethylfluorescien were made (paragraph 63), which were used to deliver the dye to HeLa cells (paragraph 68). The Arg residues in the sequence allow the material to penetrate cell membranes, and are responsible for delivery of a cargo into a cell (paragraph 83), but the requirement is for a hydrophilic segment (paragraph 72).
Kabanov et al discuss lipid modification of proteins for membrane transport (title). By reacting proteins with stearoyl chloride, they were able to pass through bilayer membranes (p39, 2nd column, 2nd paragraph). This reference discusses using fatty acids to aid in passage through cell membranes.
Gao et al looks at the same method for a different peptide (title). They also showed that the length of the fatty acid affected how efficiently the peptide was transported through the cell membrane, with a maximum uptake in their system with their test sequence being a C14 fatty acid (fig 1e, 3d page, top of page). This reference discusses the effect of changing the length of the fatty acid to optimize uptake.
Liu et al discuss integrin αVβ3 targeted cancer therapy (title). This integrin is expressed in tumor vasculature and some tumors (abstract). This can be used to target anti-cancer agents to the tumor (7th page, 4th paragraph), possibly by RGD containing peptides (4th page, 4th paragraph). This reference discusses targeting integrins to deliver cancer drugs to a tumor.
Burgess et al discuss cyclo RGDRGD, a sequence with selectivity for αVβ3 (title). This showed good binding to the receptor (table 1, p4521, 1st column, top of page), and were active in cells (p4521, 1st column, 3d paragraph). This reference describes a sequence that targets cancer cells.
Sethuraman et al discuss cyclic peptide sequences similar to Lim et al, with an oligoarginine segment, and a stretch of hydrophobic amino acids (paragraph 19). Note that the number of Arg residues can vary, but is at least two, which allow for cell penetrating ability (paragraph 157). This reference discusses oligoarginines in peptides similar to those of Lim et al, to allow cell penetrating ability.
As noted above, these references render obvious claims 1-6, 8-16, 19, 24, and 28-30.
The difference between these references and applicant’s elected species is that these references do not discuss pheophorbide a.
Tang et al discusses pheophorbide a, which is a photodynamic therapy agent that can treat a number of different cancers (abstract). This killed a majority of tumor cells, while sparing normal cells upon irradiation after dosing (p1113, 2nd column, 2nd paragraph). This reference shows that pheophorbide a is an effective therapy for multiple cancers.
Therefore, it would be obvious to add the pheophorbide a to the complex of Lim et al, to provide a therapeutic efficacy to the delivery agent of that reference. As that reference demonstrated delivery of fluorescein to cancer cells, an artisan in this field would attempt this addition with a reasonable expectation of success.
response to applicant’s arguments
Applicants have repeated the same arguments as with respect to the rejection under 35 USC 102, above, which were found unpersuasive for the reasons described there.
fourth rejection
Claim(s) 1-6, 8-16, 19, 24, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al (KR20180032052A, cited by applicants) in view of Kabanov et al (Prot. Eng. (1989) 3(1) p39-42), Gao et al (Science (Nov. 2021) 24 103220), Liu et al (Drug Dev. Res. (2008) 69(6) p329-339), Burgess et al (J. Med. Chem. (1996) 39 p4520-4526), Sethuraman et al (WO 2019165183) and Zhou et al (Biomaterials (2013) 34(31) p7683-7693). Note that Lim et al is in Korean. A machine language translation was used for this rejection; any mention of locations in the reference refer to the machine translation, unless otherwise noted.
Lim et al discuss cyclic peptides that self assemble into nanoparticles (paragraph 3), which can be used as a drug delivery mechanism (paragraph 20). The cyclic peptide used by the authors is a cyclized version of WWε-KWW-Ebs-TRQARRNRRRRWRR-Ebs (paragraph 32-37, note that the structure is in paragraph 35 of the original document). Note that this compound has an RRRR sequence (SEQ ID 3 of the examined claims) and a Wε-KW sequence, separated by linkers comprising Ebs. The material was assembled into vesicles by various techniques (paragraphs 45-55). The structures formed by the material were spherical with a diameter of about 40-45 nm. Assemblies with carboxymethylfluorescien were made (paragraph 63), which were used to deliver the dye to HeLa cells (paragraph 68). The Arg residues in the sequence allow the material to penetrate cell membranes, and are responsible for delivery of a cargo into a cell (paragraph 83), but the requirement is for a hydrophilic segment (paragraph 72).
Kabanov et al discuss lipid modification of proteins for membrane transport (title). By reacting proteins with stearoyl chloride, they were able to pass through bilayer membranes (p39, 2nd column, 2nd paragraph). This reference discusses using fatty acids to aid in passage through cell membranes.
Gao et al looks at the same method for a different peptide (title). They also showed that the length of the fatty acid affected how efficiently the peptide was transported through the cell membrane, with a maximum uptake in their system with their test sequence being a C14 fatty acid (fig 1e, 3d page, top of page). This reference discusses the effect of changing the length of the fatty acid to optimize uptake.
Liu et al discuss integrin αVβ3 targeted cancer therapy (title). This integrin is expressed in tumor vasculature and some tumors (abstract). This can be used to target anti-cancer agents to the tumor (7th page, 4th paragraph), possibly by RGD containing peptides (4th page, 4th paragraph). This reference discusses targeting integrins to deliver cancer drugs to a tumor.
Burgess et al discuss cyclo RGDRGD, a sequence with selectivity for αVβ3 (title). This showed good binding to the receptor (table 1, p4521, 1st column, top of page), and were active in cells (p4521, 1st column, 3d paragraph). This reference describes a sequence that targets cancer cells.
Sethuraman et al discuss cyclic peptide sequences similar to Lim et al, with an oligoarginine segment, and a stretch of hydrophobic amino acids (paragraph 19). Note that the number of Arg residues can vary, but is at least two, which allow for cell penetrating ability (paragraph 157). This reference discusses oligoarginines in peptides similar to those of Lim et al, to allow cell penetrating ability.
As noted above, these references render obvious claims 1-6, 8-16, 19, 24, and 28-30.
The difference between these references and applicant’s elected species is that these references do not discuss Gd-DOTA.
Zhou et al discuss targeting Gd chelates to detect cancer (title). A complex comprising a peptide attached to Gd complexed with DOTA was synthesized (abstract). This showed stronger enhancement of tumors in an animal model than a commercial non-targeted Gd complex or a scrambled targeting complex using T1 weighted MRI imaging (8th page, 1st paragraph). This reference discusses using Gd-DOTA targeted to detect tumors.
Therefore, it would be obvious to add the Gd-DOTA to the formulation rendered obvious by the other references, to provide an ability to detect tumors and tumor vasculature by T1 weighted MRI imaging. As gadolinium is commonly used for similar purposes, and Lim et al shows that their constructs can deliver a cargo to a cancer cell, an artisan in this field would attempt this modification with a reasonable expectation of success.
response to applicant’s arguments
Applicants have repeated the same arguments as with respect to the rejection under 35 USC 102, above, which were found unpersuasive for the reasons described there.
Conclusion
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 FRED REYNOLDS whose telephone number is (571)270-7214. The examiner can normally be reached M-Th 9-3:30.
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/FRED H REYNOLDS/Primary Examiner, Art Unit 1658
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