DETAILED ACTION
Status of the Claims
Claims 1-13 are pending in the instant application. Claims 2-3, 5, and 10-12 have been withdrawn based upon Restriction/Election as discussed below. Claims 1, 4 and 6-9 are being examined on the merits in the instant application.
Advisory Notice
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Restriction/Election
Applicant's election of Group I drawn to methods of making, currently claims 1-12, in the reply filed on 10/29/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicants have elected the following species in the reply filed 10/29/2025: a species of peptide is NGRFFF readable on claims 1, 4 and 6-9.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2-3, 5, and 10-12 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/29/2025.
Priority
The instant Application claims priority to U.S. Provisional Application No. 63/383,143 (hereafter ‘143) filed 11/10/2022. The U.S. effective filing date has been determined to be 11/10/2023, the filing date of the instant Application. The examiner finds no support for “nanoparticles with a diameter of ≤ 100 nm.” (instant claim 1, last line) in ‘143. The examiner notes that while ‘143 does include nanoparticles of less than 100 nm and about 100 nm, the full scope of “nanoparticles with a diameter of ≤ 100 nm.” does not appear to be supported therein. The examiner further notes that claim 2 in ‘143 is nearly identical to instant claim 1 except for the last line of instant claim 1.
Information Disclosure Statement
The information disclosure statements submitted on 05/14/2024 and 05/20/2024 were filed before the mailing date of the first office action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 4 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over POURSHARIFI (“Synthesis, characterization and applications of peptide-coated nanoparticles,” Dissertation, The City University of New York, 09-2021, 137-pages) in view of Cui et al. (“Dual-Target Peptide-Modified Erythrocyte Membrane-Enveloped PLGA Nanoparticles for the Treatment of Glioma,” 2020, Frontiers in Oncology, Vol. 10, Article 563938, pp. 1-15).
Applicants Claims
Applicant claims a method for synthesizing a nanoparticle, the method comprising sequential steps of: diluting a hexapeptide in nanopure water to a concentration between 0.1 mg per mL and 0.25 mg per mL, wherein the hexapeptide is selected from a group consisting of EKHFFF, NGRFFF and RGDFFF thereby producing a diluted hexapeptide solution; adding a solution of PLGA in acetonitrile dropwise at a rate of between 0.05 mL per min and 0.5 mL per min to the diluted hexapeptide solution while maintaining the diluted hexapeptide solution at a temperature of 37±3 °C for EKHFFF, NGRFFF and RGDFFF, wherein the total mass of the hexapeptide and a total mass of the PLGA are present in a mass ratio of 1:5 for EKHFFF or NGRFFF or a mass ratio of 1.5:5 for RGDFFF; stirring for at least 10 hours at a temperature between 20 °C and 25 °C to produce a raw solution; and dialyzing the raw solution to remove contaminants, thereby producing nanoparticles with a diameter of ≤ 100 nm (instant claim 1).
Elected Species: Applicants have elected species of peptide is NGRFFF for examination on the merits.
Determination of the scope
and content of the prior art (MPEP 2141.01)
POURSHARIFI teaches that: “Peptides provide NP stabilization via self-assembly of (phenylalanine-phenylalanine-phenylalanine) FFF motif on the NPs surface, and active tumor/vasculature targeting through targeting motifs. This thesis describes NPs with three different peptide coatings: […] 2) NGRFFF to target vasculateure NGR […].” (p. IV, last two lines, through p. V, line 2; chemical structure for NGRFFF on p. 32). And that: “Chapter 1 presents the synthesis and characterization of peptide-coated NPs. The NPs were synthesized via a nanoprecipitation method, which is simple, cost-effective, and easily scalable. […] The NPs are spherical in shape, with diameters: 99.6 ± 9.3 nm, 72.8 ± 2.2 nm, and 111 nm ± 8.0 corresponding to EKHFFF, RGDFFF, and NGRFFF NPs, respectively, and are stable in serum.” [emphasis added](p. V, 2nd paragraph)(instant claim 1, “nanoparticles with a diameter of ≤ 100 nm.”). And further that: “Results show that the uptake of NGRFFF and RGDFFF NPs are cell-dependent, while cellular uptake of EKHFFF NPs showed more than 94% percent positivity for all eight PDCLs.” (p. V, last paragraph).
POURSHARIFI teaches synthesis of NRGFFF (p. 12, title), and that: “Herein, we demonstrate a novel approach of using short peptides to stabilize PLGA-based NPs. The most important advantages of this method are the biocompatibility and biodegradability of the peptides, which can greatly facilitate biological applications of the platform. Peptides have Generally Recognized as Safe (GRAS) status, and various short peptide therapeutics are already used in the clinic, including the treatment of cancer, autoimmune diseases, and type 1 diabetes. Short peptides are easy to synthesize, have low toxicity profiles, and the amino acid sequence can be tailored to recognize different cellular receptors. Importantly, short peptides can form supramolecular structures, which can be immediately applied in nanocarrier designs. Therefore, the role of short peptides in this project is twofold: to target diseased cells and to stabilize the NPs. The NP's targeting is achieved with short amino acid sequences specific to receptors overexpressed on OC cells. The NP stabilization is accomplished via the FFF (Phenylalanine-Phenylalanine-Phenylalanine) moiety, which is known to facilitate the peptide self-assembly. Recent studies on FF and FFF sequences show that π − π stacking interactions guides self-assembly processes.” (paragraph bridging pp. 13-14).
POURSHARIFI teaches that: “The second NP was coated with NGRFFF peptide, where NGR motif can deaminate and generate DRG - a ligand for αvβ3 integrin receptor described above. On top of that, the NGR motif can recognize Aminopeptidase N (APN), also known as the CD13 receptor found in tumor blood vessels and some cancer cells. […] Overexpression of CD13 in tumor vasculature and some tumor cells including thyroid, ovarian, and prostate cancers have been demonstrated. Thus, CD13 has become widely known as a promising target in therapeutic development, and several NGR-conjugated agents are now in pre-clinical and clinical studies, such as IFNalpha2a-NGR and NGR-hTNF, respectively. Therefore, the NGR can provide "double targeting" via αvβ3 and CD13 simultaneously, which can potentially lead to increased NGRFFF NPs accumulation in the tumor tissue via concurrent targeting of the vasculature as well as the cancer cells.” (paragraph bridging pp. 15-16).
POURSHARIFI teaches the synthesis of the peptide-coated NPs (p. 17, §2.3), and that: “The peptide-coated NPs were synthesized using a nanoprecipitation method, which is simple, cost-effective, and easily scalable. The procedure is schematically presented in Figure 4. Shortly, a solution of PLGA in organic solvent was added dropwise into an aqueous solution of different peptides at 37°C. The mixture was stirred for 2 h at room temperature, allowing for the evaporation of organic solvent and self-assembly of the NPs. The final step involved washing and pre-concentrating of the NPs in centrifugal concentrations.” [emphasis added](p. 17, last paragraph).
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(p. 18). And that: “To synthesize EKHFFF , NGRFFF and RGDFFF NPs, 5mg (0.0006 mmol) of PLGA (5-10 kDa) in 2 ml acetonitrile was added dropwise at 0.1 ml/min flow to 6 ml of water with 1 mg (0.0019mmol) of dissolved EKHFFF or NGRFFF or RGDFFF at 37°C. Next, the NPs were stirred overnight. After that, the NPs were concentrated in vivaspin (100 k MWCO) and washed three times with water.” [emphasis added](p. 34, 1st paragraph)(instant claim 1, “diluting a hexapeptide in nanopure water to a concentration between 0.1 mg per mL and 0.25 mg per mL” 1 mg in 6 mL is 0.167 mg/mL or ~0.17 mg/mL (instant claim 4) – “wherein the hexapeptide is […] NGRFFF […] thereby producing a diluted hexapeptide solution; adding a solution of PLGA in acetonitrile dropwise at a rate of between 0.05 mL per min and 0.5 mL per min to the diluted hexapeptide solution while maintaining the diluted hexapeptide solution at a temperature of 37±3 °C for […] NGRFFF […], wherein the total mass of the hexapeptide and a total mass of the PLGA are present in a mass ratio of 1:5 for […] NGRFFF […]’” – 5 mg PLGA and 1 mg NGRFF – “stirring for at least 10 hours at a temperature between 20 °C and 25 °C to produce a raw solution” – “the NPs were stirred overnight” is being read to encompasses “stirring for at least 10 hours,” and it is suggested that room temperature is used on page 17, last paragraph line 4, which is regarded as encompassing “a temperature between 20 °C and 25 °C”).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of POURSHARIFI is that POURSHARIFI does not expressly teach “dialyzing the raw solution to remove contaminants” (instant claim 1), or the temperature between 20 °C and 25 °C is 22 °C (instant claim 6); the stirring rates (instant claims 7-8); or the dialysis is performed using a 3.5 kDa membrane in nanopure water (instant claim 9).
Regarding instant claim 6, POURSHARIFI suggests that “The mixture was stirred for 2 h at room temperature, allowing for the evaporation of organic solvent and self-assembly of the NPs.” (p. 17, last paragraph). Where 22 °C is regarded as close to room temperature (MPEP §2144.05-I).
Regarding instant claims 7 and 8, POURSHARIFI teaches the solution is stirred while dropwise addition of PLGA in acetone (p. 18, Figure 4, first beaker), and stirred to evaporate the solvent (Figure 4, second beaker), the constituent ingredients and method steps are identical to those now claimed, and it would have been within the ordinary level of skill in the art to adjust the stirring speed to produce the nanoparticles per the disclosure of POURSHARIFI, as discussed above, and in view of the ordinary knowledge in the art to which the invention pertains (MPEP §2144.05-II).
Cui et al. teaches that: “In the current study, an active targeting preparation based on PLGA nanoparticles coated with erythrocyte membranes (RBCNPs) and dual-modified with DWSW and NGR peptide ligands (DWSW/NGR-RBCNPs).” for the treatment of glioma (title, abstract, see whole document).
Cui et al. teaches that: “Then, the products were dialyzed (MWCO 3.5 kDa) in purified water for 24 h in a light-proof environment. The purified solid product (DSPE-PEG2000-NGR-CFDA) was obtained by freeze-drying.” (p. 4, col. 1, 2nd paragraph).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a method for the production of PLGA nanoparticles coated with the peptide NGRFFF, as suggested by POURSHARIFE, and to adjust the stirring speeds during PLGA addition and solvent evaporation, per the ordinary level of knowledge/skill in the art, and further to dialyze the final “raw solution” using a MWCO 3.5 kDa dialysis membrane, as taught by Cui et al. to purify the final PLGA peptide-coated nanoparticles.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
Claims 7 and 8 are further rejected under 35 U.S.C. 103 as being unpatentable over POURSHARIFI in view of Cui et al. as applied to claims 1, 4 and 6-9 above, and further in view of Prakobvaitayakit et al. (“Optimization of Polylactic-Co-Glycolic Acid Nanoparticles Containing Itraconazole Using 23 Factorial Design,” 2003; AAPS, PharmSciTech, Vol. 4, No. 4, Article 71, pp. 1-9) and Zhang et al. (“PLGA Nanoparticle-Peptide Conjugate Effectively Targets Intercellular Cell-Adhesion Molecule-1,” 2007, ACS; Bioconjugate Chem., Vol. 19, pp.145–152).
Determination of the scope
and content of the prior art (MPEP 2141.01)
POURSHARIFI teaches peptide coated PLGA nanoparticles, as discussed above and incorporated herein by reference. And Cui et al. teaches that: “In the current study, an active targeting preparation based on PLGA nanoparticles coated with erythrocyte membranes, as discussed above and incorporated herein by reference.
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of POURSHARIFI/Cui et al. is that POURSHARIFI/Cui et al. does not expressly teach the stirring rates (instant claims 7-8).
Regarding instant claims 7 and 8, POURSHARIFI teaches the solution is stirred while dropwise addition of PLGA in acetone (p. 18, Figure 4, first beaker), and stirred to evaporate the solvent (Figure 4, second beaker), the constituent ingredients and method steps are identical to those now claimed, and it would have been within the ordinary level of skill in the art to adjust the stirring speed to produce the nanoparticles per the disclosure of POURSHARIFI, as discussed above, and in view of the ordinary knowledge in the art to which the invention pertains (MPEP §2144.05-II). Alternatively, it would have been prima facie obvious to utilize a stir speed of ~750 nm when adding the PLGA solution to the aqueous hexapeptide solution, Prakobvaitayakit et al. teaching that: “The organic phase was added at a constant flow rate (0.3 mL/min) under mechanical stirring at 750 rpm to 25 mL of an aqueous phase containing 0.25% of nonionic surfactant (pluronic F68).” [emphasis added](p. 2, paragraph bridging cols. 1-2). And further to stir the prepared nanoparticle solution at a rate of 200 rpm, as suggested by Zhang et al. teaching that: “PLGA nanoparticles were prepared by a solvent diffusion method. Briefly, 50 mg of PLGA was dissolved in 3.0 mL of acetone, and the PLGA solution was added to 0.2% PEMA (30 mL) through a syringe pump (20 mL/h) under stirring at 200 rpm in a hood to evaporate acetone.” [emphasis added](p. 146, col. 2, 2nd paragraph)(In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. – MPEP §2145.05-I).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a method for the production of PLGA nanoparticles coated with the peptide NGRFFF, as suggested by POURSHARIFE, and to adjust the stirring speeds during PLGA addition and solvent evaporation, per the ordinary level of knowledge/skill in the art, and further to dialyze the final “raw solution” using a MWCO 3.5 kDa dialysis membrane, as taught by Cui et al. to purify the final PLGA peptide-coated nanoparticles, and to include stirring rates of 750 rpm during addition of the PLGA solution, and 200 rpm during evaporation of organic solvent, as suggested by Prakobvaitayakit et al. and Zhang et al., respectively.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
Conclusion
Claims 1, 4 and 6-9 are pending and have been examined on the merits.
Claims 1, 4 and 6-9 are rejected under 35 U.S.C. 103. No claims allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IVAN A GREENE whose telephone number is (571)270-5868. The examiner can normally be reached M-F, 8-5 PM PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on (571) 272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619