DETAILED ACTION
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 with traverse of Group II drawn to a method comprising mixing a manganese compound and an acid in water, stirring, heat treating the mixture, cooling the mixture, and extracting anionic manganese oxide nanoparticles in the reply filed on 24 August 2026 is acknowledged. The traversal is on the grounds that the claims of Group I and Group II are so similar as to render searching effectively redundant. Also, searching and consideration of the claims in Group II – addressing methods of making a particular nucleic acid scavenger comprising anionic manganese oxide nanoparticles – necessarily encompass consideration of the claimed nucleic acid scavenger itself – the anionic manganese oxide nanoparticles. This is found persuasive. Therefore, Group I and Group II are rejoined and examined herein. Applicant did not argue the restriction of Group III.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-16 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 26 August 2026.
Claims 1-13 and 17-19 are examined herein.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 16 May 2024 were filed before the mailing of an Office action. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
A Non-Patent Literature Document, cite no. 6, is a duplicate of cite no. 3 and has therefore been lined through.
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 10 is 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.
Claim 10 states “cooling the mixture to at least 50 °C”. It is unclear if 50 °C is intended to be the maximum or minimum temperature after cooling. For instance, it is unclear whether the claim means “at least 50 °C” which include temperatures greater than 50 °C, or if the claim means that the mixture is at least cooled to 50 °C but can be cooled to a lower temperature. The examiner recommends that Applicant amend the claim similar to instant claim 9, which states “cooling the mixture to a temperature of less than 50 °C”.
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.
Claims 1-3, 7-10, 17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wei et al. (CN 113385170 A).
Regarding claims 1-2, 17 and 19, Wei et al. disclose mesoporous material comprising MnO and tannic acid, wherein the nanoparticles have a particle size of 65-75 nm (Abstract; Claim 6).
It is noted that claim 19 is drawn to a composition comprising the anionic manganese oxide nanoparticles of claim 1. The nanoparticles according to Wei et al. are within the scope of claim 1 and would inherently scavenge or bind cfDNA to alleviate inflammation response when the composition is administered to a subject.
Regarding claim 3, Wei et al. disclose mixing tannic acid, manganese compound and water, heating, cooling and collecting the product (Example 1; Claim 3).
Regarding claims 7-10, Wei et al. disclose stirring the mixture for 12 h, heating in a hydrothermal reactor for 12 h at 100 °C, and centrifuging and collecting (i.e., reduced temperature) (Claim 3).
Claims 1-3, 7-10, 17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (Ceramics International, 2021).
Regarding claims 1-2, 17 and 19, Zhang et al. disclose manganese oxide/3,4-dihydroxybenzenepropanoic acid (DHCA) nanoparticles with a size of 200-400 nm (pg. 6122, Section 2.2; pg. 6124, Fig. 3).
It is noted that claim 19 is drawn to a composition comprising the anionic manganese oxide nanoparticles of claim 1. The nanoparticles according to Zhang et al. are within the scope of claim 1 and would inherently scavenge or bind cfDNA to alleviate inflammation response when the composition is administered to a subject.
Regarding claim 3, Zhang et al. disclose mixing DHCA, manganese compound and water, heating, cooling and collecting the product (pg. 6122, Section 2.2).
Regarding claims 7-10, Zhang et al. disclose stirring the mixture until completely dissolved, heating in a hydrothermal reaction vessel for 12 h at 140 °C, reducing to room temperature and collecting (pg. 6122, Section 2.2).
Claims 1-2 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Souri et al. (IET Nanobiotechnology, 2018).
Regarding claims 1-2, 17 and 19, Souri et al. disclose manganese oxide nanoparticles having an average particle size of 38 nm (Abstract; pg. 826, Conclusions).
It is noted that claim 19 is drawn to a composition comprising the anionic manganese oxide nanoparticles of claim 1. The nanoparticles according to Souri et al. are within the scope of claim 1 and would inherently scavenge or bind cfDNA to alleviate inflammation response when the composition is administered to a subject.
Regarding claim 18, Souri et al. disclose synthesis of manganese oxide nanoparticles comprising curcumin (pg. 823, Section 2.3).
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 1-3, 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Santhanam et al. (US 2010/0251856 A1).
Regarding claims 1-2, 17 and 19, Santhanam et al. teach a method for preparing metal or metal oxide nanoparticles comprising contacting (i) an aqueous metal precursor solution comprising a first metal precursor with (ii) an aqueous hydrolysable gallotannin solution under conditions suitable to form a nanoparticle solution comprising metal or metal oxide nanoparticles having a mean diameter of less than about 40 nm ([0002], [0006]-[0007]; Claim 1).
Santhanam et al. do not explicitly disclose an example comprising anionic manganese oxide nanoparticles, as instantly claimed.
However, Santhanam et al. teach that the metal oxide includes manganese oxide ([0031]-[0032]; Claim 7), and the hydrolysable gallotannin includes tannic acid ([0002], [0036], [0138]).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare metal oxide nanoparticles according to Santhanam et al. wherein the metal oxide is manganese oxide, and the particles have a mean diameter of less than about 40 nm.
Regarding claim 3, Santhanam et al. teach the method for preparing metal oxide nanoparticles comprises mixing the metal precursor and the hydrolysable gallotannin, heating at a temperature of up to 100 °C ([0008], [0010], [0029]). Cooling the mixture and extracting the metal nanoparticles is inherent in the method of Santhanam et al.
Regarding claim 17, the claim does not recite additional components other than the anionic manganese oxide nanoparticles.
Regarding claim 19, in the absence of evidence to the contrary, the manganese oxide nanoparticles according to Santhanam et al. will be effective scavengers of cfDNA to alleviate inflammation response when administered to a subject.
Claims 4-13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Santhanam et al. (US 2010/0251856 A1) as applied to claims 1-3, 17 and 19 above, further in view of Souri et al. (IET Nanobiotechnology, 2018).
The teachings of Santhanam et al. are discussed above.
Regarding claims 4, 11 and 13, Santhanam et al. teach that the aqueous metal precursor solution comprises a metal salt ([0032]), but does not explicitly disclose manganese acetate, as instantly claimed.
Souri et al. teach the green synthesis of MnO nanoparticles comprising aqueous solutions of manganese acetate as the metal precursor (pg. 823, Section 2.3).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to use manganese acetate as the metal precursor in the method of Santhanam et al. with the reasonable expectation that manganese acetate would be a suitable manganese salt for the preparation of manganese oxide nanoparticles, as reasonably taught by Souri et al.
Regarding claims 5 and 12, Santhanam et al. teach the hydrolysable gallotannin includes tannic acid ([0002], [0036], [0138]).
Regarding claim 6, Santhanam et al. teach the molar ratio of the hydrolysable gallotannin to the first metal precursor is about 0.01 to 20 (Claim 10).
Regarding claims 7-10, Santhanam et al. teach the method for preparing metal oxide nanoparticles comprises mixing the metal precursor and the hydrolysable gallotannin, heating at a temperature of up to 100 °C ([0008], [0010], [0029]). Cooling the mixture and extracting the metal nanoparticles is inherent in the method of Santhanam et al.
Regarding claim 18, Santhanam et al. do not explicitly disclose MnO curcumin nanoparticles, as instantly claimed.
Souri et al. teach the green synthesis of manganese oxide nanoparticles comprising curcumin (pg. 823, Section 2.3).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare MnO nanoparticles according to Santhanam et al. comprising curcumin as a stabilizing agent and increasing biological activity, as taught by Souri et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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/N.W.S/Examiner, Art Unit 1616
/MONICA A SHIN/Primary Examiner, Art Unit 1616
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