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 .
Receipt is acknowledged of Applicant’s Restriction Requirement Response filed on 07/09/2026; and IDS filed on 12/22/2023.
Claims 1-19 are pending in the instant application.
Claims 16-19 are withdrawn from further consideration.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-15) in the reply filed on 07/09/2015 is acknowledged. The traversal is on the ground(s) that should a single inventive concept be found, claims 16-18 and 19 be rejoined into the application. Currently, claims 16-19 all ultimately depend from claim 1. Thus, if claim 1 is eventually found patentable, rejoined of claims 16-19 is respectfully requested.
. This is not found persuasive because the withdrawn claims are drawn to method claims versus the elected composition claims.
The requirement is still deemed proper and is therefore made FINAL.
Note, the withdrawn claims will be considered for rejoining upon allowance of claim 1. The Examiner suggests amending withdrawn claims, if needed, to avoid 112 issues.
Claim Rejections - 35 USC § 112, 1st paragraph
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 9 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The “viologen derivatives” does not meet the written description provision of 35 USC § 112, first paragraph, due to lacking chemical structural information for what they are and chemical structures are highly variant and encompass a myriad of possibilities. The specification provides insufficient written description to support the genus of derivatives of viologen encompassed by the claim, since there is no description of the structural relationship of these derivatives provided in the specification and Applicant has not provided a description as to how the base molecule may be changed while remaining a derivative.
Claim Rejections - 35 USC § 112, 2nd paragraph
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.
Claims 1-3, 6, 7, 11 and 15 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1, 3, 6, 7, and 15, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Note, withdrawn claim 17 also has this issue.
Claims 2-3, 11 contain abbreviations, such as “FAB”, “RNA”, “PMSA”, etc., which is not defined by the claims. Claims must stand alone to define the invention, and should not rely on the description or the drawings to give them meaning (see Ex Parte Fressola, 27 USPQ 2d 1608). Thus, the first claim using the abbreviation, at the very least, should define the abbreviation by its formal name; once the abbreviation is defined, the abbreviation may be subsequently recited. See Applicant’s claim 6, if needed, for properly defining abbreviations.
Note, claim 17 also has this issue.
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.
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.
Claim(s) 1-7, 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over SHAZEEB et al (MR signal amplification for imaging of the mutant EGF receptor in orthotopic human glioma model. Mol Imaging Biol. 2013 December;15(6): pg. 1-19) in view of JANSSEN et al (US 2007/0224490).
Regarding claims 1-3, SHAZEEB teaches the prior art had known of linking/conjugating RGR receptor antibodies to glucose oxidase and horseradish peroxidase (see abstract and pg. 2) for MR imaging (see title) of brain tumors (see abstract).
SHAZEEB does not teach the nano fuel cell as claimed by Applicant.
JANSSEN teaches a composition that appears to be the same nano fuel cell as claimed by Applicant (see JAZSSEN’s Fig. 1 and Applicant’s Fig. 1, which is provided below):
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JANSSEN’s composition comprised of an anode compartment including an anode (see [0001]), a cathode compartment including a cathode (see [0001]), and a suspension (see [0001]) for generating a current of electrons (see title), wherein said suspension is preferably comprised of a plurality of hollow particles in electrically conductive contact (see [0003]), wherein said hollow particles comprise entrapped therein a redox-reaction for catalyzing an enzymatic conversion of a substrate in said hollow particles thereby liberating electrons (see [0005]), and wherein said hollow particles comprise a substrate permeable and electrically conductive outer polymer shell (see [0003]-[0005]), and said suspension is disposed within said anode compartment, or within said cathode compartment, or between said anode and cathode compartment (see [0001]). The size of the composition is under 1 micron (see Fig. 4).
JANSSEN further teaches the enzyme, such as glucose oxidase (see [0006]), are protected from protease degradation, wherein more than one polypeptide/enzyme can be used (see [0003])
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate the nano fuel cell as claimed by Applicant. The person of ordinary skill in the art would have been motivated to make those modifications, because it would protect the glucose oxidase and horseradish peroxide from degradation, and reasonably would have expected success because both references dealt with the same enzyme, such as glucose oxidase.
Regarding claim 4, SHZEEB teaches radiolabeled antibody conjugates (see abstract and pg. 3) with Tc-99m (see pg. 3 and reference #22 on pg. 11).
Regarding claim 5, JANSSEN teaches hollow particle is composed of a rigid helical polyisocyanide head group and a flexible polystyrene tail (see [0004]).
Regarding claim 6 and 7, as discussed above, SHAZEEB teaches glucose oxidase and horseradish peroxidase.
Regarding claim 9, JANSSEN teaches ferrocene derivatives and viologen derivatives in order to facilitate electron transport (see [0006]).
Regarding claim 10 and 11, these claims are intended use claims, wherein Applicant’s claims are drawn to a composition. Additionally, SHAZEEB teaches MR imaging and computed tomography (CT).
Regarding claim 12, JANSSEN teaches the sizes of some of the compositions can be about 300 nm (see Fig. 4). Additionally, it would have been obvious to optimized the size of the composition for the intended needs and desires, such as capable of being injected and travel through the vasculature system for MR imaging of the tumors.
Note, Applicant’s specification does not have any examples of the nano-fuel cell composition coupled to at least one ligand for specific binding, nor any example of using MRI imaging on the claimed composition.
Claim(s) 1-7, 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over SHAZEEB et al (MR signal amplification for imaging of the mutant EGF receptor in orthotopic human glioma model. Mol Imaging Biol. 2013 December;15(6): pg. 1-19) in view of JANSSEN et al (US 2007/0224490) and VARZI et al (Study of multi-walled carbon nanotubes for lithium-ion battery electrodes. Journal of Power Sources 196 (2011) 3303–3309).
As discussed above, the references teach Applicant’s invention.
Regarding claims 13, the references do not teach using multiwalled carbon nanotubes.
VARZI teaches the prior art had known of using multiwalled carbon nanotubes for cathode and anode (see title; and pg. 3304, 1st col), which enhances the rate performance (see abstract).
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate multiwalled carbon nanotubes. The person of ordinary skill in the art would have been motivated to make those modifications, because and reasonably would have expected success because it would enhance the rate performance of the battery.
Claim(s) 1-7, 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over SHAZEEB et al (MR signal amplification for imaging of the mutant EGF receptor in orthotopic human glioma model. Mol Imaging Biol. 2013 December;15(6): pg. 1-19) in view of JANSSEN et al (US 2007/0224490), VARZI et al (Study of multi-walled carbon nanotubes for lithium-ion battery electrodes. Journal of Power Sources 196 (2011) 3303–3309), and STEFANSSON et al (Targeting Antibodies to Carbon Nanotube Field Effect Transistors by Pyrene Hydrazide Modification of Heavy Chain Carbohydrates. Journal of Nanotechnology. Volume 2012, Article ID 490175, 1-8 pages)
As discussed above, the references teach Applicant’s invention.
Regarding claim 14, the references do not teach using pyrenyl residues on the ligand.
STEFANSSON teaches the prior art had known of using pyrenyl residues, such as pyrene hydrazide to conjugate antibodies onto carbon nanotubes (see abstract; and pg. 5, Fig. 2).
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate pyrenyl residues on the antibody ligand. The person of ordinary skill in the art would have been motivated to make those modifications, because and reasonably would have expected success because it would allow the conjugation of SHEZAAB’s antibodies onto the carbon nanotubes.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over SHAZEEB et al (MR signal amplification for imaging of the mutant EGF receptor in orthotopic human glioma model. Mol Imaging Biol. 2013 December;15(6): pg. 1-19) in view of JANSSEN et al (US 2007/0224490), VARZI et al (Study of multi-walled carbon nanotubes for lithium-ion battery electrodes. Journal of Power Sources 196 (2011) 3303–3309), STEFANSSON et al (Targeting Antibodies to Carbon Nanotube Field Effect Transistors by Pyrene Hydrazide Modification of Heavy Chain Carbohydrates. Journal of Nanotechnology. Volume 2012, Article ID 490175, 1-8 pages), and HYUN et al (Performance evaluation of glucose oxidation reaction using biocatalysts adopting different quinone derivatives and their utilization in enzymatic biofuel cells. Korean J. Chem. Eng., 36(3), 500-504 (2019)).
As discussed above, the references teach Applicant’s invention.
Regarding claim 8, the references do not teach using naphthoquinone.
HYUN teaches the prior art had known of using naphthoquinone with glucose oxidase to increase the catalytic activity for glucose oxidation reaction.
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate naphthoquinone. The person of ordinary skill in the art would have been motivated to make those modifications, because it would increase the glucose oxidation reaction, and reasonably would have expected success because the primary reference dealt with the same field of endeavor, such as glucose oxidase.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over SHAZEEB et al (MR signal amplification for imaging of the mutant EGF receptor in orthotopic human glioma model. Mol Imaging Biol. 2013 December;15(6): pg. 1-19) in view of JANSSEN et al (US 2007/0224490), VARZI et al (Study of multi-walled carbon nanotubes for lithium-ion battery electrodes. Journal of Power Sources 196 (2011) 3303–3309), STEFANSSON et al (Targeting Antibodies to Carbon Nanotube Field Effect Transistors by Pyrene Hydrazide Modification of Heavy Chain Carbohydrates. Journal of Nanotechnology. Volume 2012, Article ID 490175, 1-8 pages), HYUN et al (Performance evaluation of glucose oxidation reaction using biocatalysts adopting different quinone derivatives and their utilization in enzymatic biofuel cells. Korean J. Chem. Eng., 36(3), 500-504 (2019)), and SILVA et al (Gold coated magnetic nanoparticles: from preparation to surface modification for analytical and biomedical applications. Chem. Commun., 2016, 52, 7528-7540).
As discussed above, the references teach Applicant’s invention.
Regarding claim 15, the references do not teach coating the polymer shell with metal particles, such as gold (Au).
SILVA teaches the prior art had known of using gold-coating (see abstract) in magnetic resonance imaging (MRI) (see pg. 7528, under Introduction), wherein the gold coating addresses the challenges of conductivity, optical properties, biocompatibility, etc. (see pg. 7528, under Introduction).
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate teach coating the polymer shell with metal particles, such as gold (Au). The person of ordinary skill in the art would have been motivated to make those modifications, because the gold coating addresses the challenges of conductivity, optical properties, biocompatibility, etc., and reasonably would have expected success because the primary reference dealt in the same field of endeavor, such as MRI imaging.
Telephonic Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAKE MINH VU whose telephone number is (571)272-8148. The examiner can normally be reached Mon-Fri 9:00am-5:30pm.
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/JAKE M VU/Primary Examiner, Art Unit 1618
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