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 .
Status of the Claims
Claims 1-9 are pending.
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 1-4 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin et al., WO 2015/149072 (“Lin ‘072”).
Zondervan, et al. Photobleaching of Rhodamine 6G in Poly(vinyl alcohol) at the Ensemble and Single-Molecule Levels, J. Phy. Chem. A, 108 (10), (2004) (“Zondervan”)(copy provided herewith) is relied upon as an evidentiary reference for claims 1-4 and 8. Fort et al., Efficient photobleaching of rhodamine 6G by a single UV pulse, Applied Optics, 60(22), 2021 (“Fort”) is relied upon as an evidentiary reference for claim 2. Copies of all references are provided herewith.
Regarding claims 1 and 2, Lin ‘072 teaches a method of soaking rhodamine 6G into a metal organic framework (Bpy-UiO) (page 37, line 29-page 38 line 3). It is noted that according to the instant specification, metal organic frameworks contain metal nodes (see para. 0015). As such, the metal organic framework taught by Lin ‘072 corresponds to the claimed solid molecular scaffold framework containing metal nodes.
Additionally, while Lin ‘072 does not disclose that the metal organic framework protects the dye molecules, it is noted that the instant specification indicates that metal organic frameworks offer protection to dye molecules from UV degradation (see para. 0015). Further, while Lin ‘072 is silent regarding rhodamine 6G being photosensitive, Zondervan serves as objective evidence that rhodamine 6G is susceptible to photobleaching (i.e., is photosensitive)(abstract, page 1657 columns 1-2, bridging paragraph). Thus, in light of the instant specification and the evidence provided by Zondervan, there is a reasonable expectation that the method of soaking rhodamine 6G into a metal organic framework would inherently result in the protection of the rhodamine 6G (see MPEP 2112V).
It is further noted that while Lin ‘072 may not expressly teach that the disclosed method is for protecting photosensitive molecules, MPEP 2112.02 I establishes that when the prior art device (in this case, the disclosed metal organic framework comprising rhodamine 6G inside) is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process.
Regarding claim 3, as is noted above when addressing claim 1, the instant specification indicates that metal organic frameworks offer protection to dye molecules from UV degradation (see para. 0015). Additionally, Fort serves as objective evidence that rhodamine 6G is susceptible to photobleaching by UV radiation (abstract, ). As such, there is a reasonable expectation that the metal organic framework used in the method disclosed by Lin ‘072 would inherently meet the limitation of claim 3.
Regarding claim 4, the rhodamine 6G disclosed by Lin ‘072 reads on the claimed dye.
Regarding claim 8, Lin ‘072 is silent regarding the spectral features being sharpened relative to bulk solid properties. However, it is noted that the instant specification recites “Isolating the dyes inside the pores of the MOF also sharpens the spectral features of the dye molecules by eliminating spectral broadening that occurs in high concentration environments (see para. 0015). Therefore, in light of the instant specification, there is a reasonable expectation that the spectral properties of the rhodamine 6G in the metal organic framework of the method of Lin ‘072 would inherently exhibit the claimed property.
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.
Claims 1-6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al., WO 2016/061256 (“Lin ‘256”)(copy provided herewith).
Regarding claims 1 and 2, Lin ‘256 discloses a method of treating a disease comprising administering to a patient a metal organic framework (abbreviated as “MOF” in the reference) (abstract, page 4 line 28-page 5 line 15, claim 25). The metal organic framework comprises a photosensitizer trapped inside (i.e., isolated within a solid molecular scaffold framework) (page 7 lines 5-9, claim 1). The metal organic framework may be UiO-66 (page 38 lines 3-8, page 90 lines 19-24, page 92 lines 14-33). The photosensitizer may be, inter alia, cyanine 5.5 (referred to as “cy5.5” in the reference)(page 7 lines 5-9, claim 20). Given that Lin ‘256 teaches that UiO-66 is a suitable metal organic framework and that cyanin 5.5 is a suitable dye for practicing the disclosed invention, it would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have used them in combination.
Lin ‘256 does not disclose that the metal organic framework protects a photosensitive molecule, it is noted that the instant specification indicates that metal organic frameworks offer protection to dye molecules from UV degradation (see para. 0015). Additionally, it is noted that the instant specification specifically calls out UiO-66 as a suitable metal organic framework and Cy5.5 as a suitable photosensitive dye (see paras. 0013, 0015, 0018). As such, in the absence of objective evidence to the contrary, there is a reasonable expectation that the metal organic framework disclosed by Lin ‘256 inherently comprises metal nodes and protects the Cy5.5)(see MPEP 2112V).
It is further noted that while Lin ‘256 may not expressly teach that the disclosed method is for protecting photosensitive molecules, MPEP 2112.02 I establishes that when the prior art device (in this case, the disclosed metal organic framework comprising a dye inside) is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process.
Regarding claims 3 and 4, since the instant specification discloses that OiU-66 and Cy5.5 are a suitable molecular scaffold framework and photosensitive molecule for practicing the disclosed invention, in the absence of objective evidence to the contrary, there is a reasonable expectation that the metal organic framework disclosed by Lin ‘256 would inherently meet the limitations of the claims.
Regarding claim 5, Lin ‘256 teaches that the photosensitizer (i.e., the dye) can be covalently attached (page 6 line 22-page 7 line 2, page 29 line 26-page 30 line 9).
Regarding claim 6, Lin ‘256 teaches that the photosensitizer (i.e., the dye) can be non-covalently trapped inside the metal organic frame work (page 7 lines 5-9, page 29 line 26-page 30 line 9) which reads on the claimed encapsulated inside pores of the solid molecular scaffold framework but is not covalently grafted to the solid molecular scaffold framework.
Regarding claim 8, Lin ‘256 is silent regarding the spectral features being sharpened relative to bulk solid properties. However, it noted that the instant specification recites “Isolating the dyes inside the pores of the MOF also sharpens the spectral features of the dye molecules by eliminated spectral broadening that occurs in high concentration environments (see para. 0015). Therefore, in light of the instant specification, there is a reasonable expectation that the spectral properties of the Cy5.5 in the metal organic framework of the method of Lin ‘256 would inherently exhibit the claimed property.
Regarding claim 9, Lin ‘256 teaches that the metal organic framework may comprise a moiety comprising a hydrophilic polymer bound covalently or electrostatically (page 49 line 21-page 50 line 2) which reads on the claimed affixed into a solid or liquid polymer.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim 7 recites “wherein the visible or infrared active dye is encapsulated inside the solid molecular framework during the process to form the solid molecular scaffold framework” which is not taught by the cited prior art.
Pertinent Prior Art
The following constitutes a list of prior art which has not been relied upon, but is considered pertinent to Applicant’s claims and/or written description.
· WO 2009/020745 to Yaghi et al. – discloses a method of preparing a functionalized zeolitic framework comprising zinc nodes [abstract, 0005-0009]. Yaghi teaches adsorbing organic dyes into the functionalized zeolitic framework [0013, 0015, claims 1, 21, 22, and 23].
· WO 2016/028702 to Tsung et al. – discloses a metal organic framework comprising zinc nodes wherein a guest molecule is disposed inside the metal organic framework (abstract, pages 2-4, and 9-10, Fig. 1]. The guest molecule may be a dye (page 2 lines 25-26).
Conclusion
Claims 1-6, 8, and 9 are rejected. Claim 7 is objected to.
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/LEE E SANDERSON/ Primary Examiner, Art Unit 3991
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