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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-5 and 8-9 in the reply filed on 05/15/2026 is acknowledged.
Claims 6-7 and 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected claims, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/15/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is contains the trademark/trade name of laundry list such TOOKAD, LUZ,WST-11, BC19 etc. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe specific components and, accordingly, the identification/description is indefinite.
Claim 5 recites the limitation "CA2" in line 1. There is insufficient antecedent basis for this limitation 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.
Claim(s) 1-3, 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Xie et al. (Production, Modification, and Bio-Applications of Magnetic Nanoparticles Gestated by Magnetotactic bacteria, Nano Res (2009) 2: 261-278).
Regarding claims 1, 3, 8-9 Xie discloses magnetic nanoparticles in the form of magnetite (Fe3O4). The nanoparticles are magnetotactic bacteria (MTB) (MTB-NP). The MTB-NP’s (CA1) are disclosed as having good crystallinity (page 266). The MTB-NP's are innately coated with a lipid layer (CA2) that confers physiological solubility and stability (page 274), the lipid coating layer meets the limitation of a surrounding coating covering the central part, the surround coating not originating from the living organism. Xie discloses magnetic nanoparticle synthesis focuses more on yielding particles with size ranging from 5–20 nm, in which scale the particles are known to be superparamagnetic, i.e., retaining zero magnetic moment without an external magnetic field (page 6). Thus, the distance between CA1 and CA2 in the composition would intrinsically be greater than 0.1 nm as CA1 is present in core and CA2 is present in shell as stated above.
As Xie discloses magnetic nanoparticles comprising a metallic core coated with a lipid layer (not synthesized by the living organism) as presently claimed, therefore, it would meet the limitation of CA1 and CA2 are different compounds and would meet the limitation of compounds from C.
Regarding claim 2, Xie discloses the MTB-NP’s can be easily concentrated and separated, in an innate state, along with the lipid layer and the MM proteins (pages 268-269), where the proteins meet the limitation of protectant compound of claim 2. The particles can be incorporated and used for MR imaging, drug delivery and bio separation (page 269). The particles are disclosed as being administered. As Xie discloses magnetic nanoparticles comprising a metallic core coated with a lipid layer (not synthesized by the living organism) as presently claimed, therefore, it would meet the limitation that composition would intrinsically be isotonic.
With respect to the percentage of protectant compound in the composition. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Claim(s) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Xie et al. (Production, Modification, and Bio-Applications of Magnetic Nanoparticles Gestated by Magnetotactic bacteria, Nano Res (2009) 2: 261-278) as applied to claim 1, further in view of Edouard (CA 3057346).
Regarding claims 4-5, Xie fails to disclose that the magnetic nanoparticles comprise at least one compound C or compound D and are photosensitizers selected from the group consisting of Acridine, rhodium, aminovulinic, cyanine etc.
Whereas, Edouard discloses method for producing high purity iron oxide nanoparticles using nanoparticle-producing cells, including: a) a pre-growth step that includes amplifying the nanoparticle-producing cell(s) in a pre-growth and/or fed-batch medium/media (abstract). The nanoparticle producing cells are magnetotactic bacteria (claim 8). The nanoparticles producing cells comprises riboflavin (claim 3) and also comprises radioactive components (claim 12).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include riboflavin and radioactive components as taught by Edouard in the magnetotactic nanoparticles of Xie motivated by the desire to have cellular energy production and antioxidant properties and to have improved therapeutic properties.
Conclusion
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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