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 .
DETAILED ACTION
Claims 14-33 are currently pending and a preliminary amendment to the claims filed on 02/06/2024 is acknowledged and those claims are being examined.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/06/2024 was filed before the mailing date of the instant first action on the merits. The submission thereof is in compliance with the provisions of 37 CFR 1.97. It is noted that the foreign references have only been considered to the extent that an English language abstract, translation or statement of relevance has been provided to the examiner. Accordingly, the information disclosure statement has been considered by the examiner, and signed and initialed copy is enclosed herewith.
Claim Objections
Claims 20, 21, 26, 27, 32 and 33 are objected to minor informalities under 37 CFR 1.75.
Each of 21, 26 and 33 recites abbreviation “PCN-22”, but which should be spelled out in the first encounter.
Claim 27 has the following issues:
“and” is necessary between line 4 and line 5;
Remove duplicate limitations over lines 9-14.
Each of claims 20 and 32 should have “and” between fourth chemical formula and fifth chemical formula.
Each of claims 20, 26 and 32 recite limitations of five chemical formulae and names. However, they look fuzzy. When the application is published, those blurred limitations will be a problem. Applicant is required to provide clean copy.
Appropriate correction is requested.
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 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.
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 14-17, 20, 22, 23 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al., “Multifunctional L-arginine magnetic nanoparticles for multiple-synergistic tumor therapy”, Biomaterials Science, January 13, 2021, vol. 9, pages 2230-2243 (IDS of 02/06/2024).
Applicant claims the below claims 14 and 22 filed on 02/06/2024:
PNG
media_image1.png
452
975
media_image1.png
Greyscale
PNG
media_image2.png
382
975
media_image2.png
Greyscale
PNG
media_image3.png
62
660
media_image3.png
Greyscale
Prior Art
Yang discloses multi-functional L-arginine (LA)-based magnetic nanoparticles for multiple-synergistic tumor therapy (title); in this respect, Yang teaches superparamagnetic-co-glycolide (PLGA) nanoparticles (Fe3O4@PLGA/LA NPs) for synergistic breast cancer therapy wherein the NPs contains LA as a core and contains Fe3O4 nanoparticles as a shell, and further indicates the LA spontaneously reacts with hydrogen peroxide in the tumor microenvironment to generate nitric oxide (see e.g., abstract and Fig. 3 on page 2236); the Fe3O4@PLGA/LA NPs is administered to mouse having tumor to generate nitric oxide (see e.g., 2.4, Fig. 4 and 2.7 on page 2232) which reads on the method of claim 14 and 22; the LA reads on the claimed compound of formula I wherein R1 is hydrogen and R2 is alky group having 4 carbon atoms substituted with a carboxyl group. That is, the Fe (=iron) reads on the claimed transition metal and carrier material and the LA reads on the claimed L-arginine and/or the compound of formula I, and thus, the compound supported on the carrier.
In light of the foregoing, instant claims 14-17, 20, 22, 23 and 25 are anticipated by Yang.
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 of this title, 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.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 14-26 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al., “Multifunctional L-arginine magnetic nanoparticles for multiple-synergistic tumor therapy”, Biomaterials Science, January 13, 2021, vol. 9, pages 2230-2243 (IDS of 02/06/2024) as applied to instant claims 14-17, 20, 22, 23 and 25 in view of Wang et al., “Recent advances in porphyrin-based MOFs for cancer therapy and diagnosis therapy”, Coordination Chemistry Reviews, vol. 439, 2021-04-24 (on-line available), pp. 1-30.
Applicant claims instant clams 14 and 22 as noted above.
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Yang was discussed with respect to instant claims 14-17, 20, 22, 23 and 25 above.
However, Yang does not expressly teach metal organic frameworks (MOFs) carrier of instant claims 18, 19, 21, 24 and 26. The deficiencies are cured by Wang.
Wang discloses porphyrins and porphyrin derivatives are used for e.g., biomedical applications (e.g., biological application in the therapy and diagnosis of cancer) owing to their outstanding photophysical and electrochemical properties, and porphyrin-based metal organic frameworks (MOFs), a family of novel hybrid porous coordination polymers, have been developed and the porphyrin-based MOFs maintain the specific properties of porphyrins and can be loaded or modified with functional molecules or drugs to impart therapeutic and imaging abilities (e.g., abstract); and porous coordination networks (PCN)-222, PCN-224, Mn-MOF are porphyrin-based MOFs can be used for tumor therapy (Table 1 on page 11) (instant claims 18, 19, 21, 24 and 26).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the teachings of Yang with MOFs of Wang in order to enhance chemical and optical stability in biological application especially in the therapy and diagnosis of cancer as taught by Wang.
Claims 27, 29, 31 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al., “Multifunctional L-arginine magnetic nanoparticles for multiple-synergistic tumor therapy”, Biomaterials Science, January 13, 2021, vol. 9, pages 2230-2243 (IDS of 02/06/2024).
Applicant claims the below claim 27 filed on 02/06/2024:
PNG
media_image4.png
102
845
media_image4.png
Greyscale
PNG
media_image5.png
301
765
media_image5.png
Greyscale
Prior Art
Yang discloses multi-functional L-arginine (LA)-based magnetic nanoparticles for multiple-synergistic tumor therapy (title); in this respect, Yang teaches superparamagnetic-co-glycolide (PLGA) nanoparticles (Fe3O4@PLGA/LA NPs) for synergistic breast cancer therapy wherein the NPs contains LA as a core and contains Fe3O4 nanoparticles as a shell, and also indicates that the LA spontaneously reacts with hydrogen peroxide in the tumor microenvironment to generate nitric oxide (see e.g., abstract and Fig. 3 on page 2236), and the Fe3O4@PLGA/LA NPs is administered to mouse having tumor to generate nitric oxide (see e.g., 2.4, Fig. 4 and 2.7 on page 2232) wherein the LA is the formula I compound wherein R1 is hydrogen and R2 is alky group having 4 carbon atoms substituted with a carboxyl group. Here, the Fe (=iron) reads on the claimed transition metal and the LA reads on the claimed L-arginine and/or the compound of formula I, and thus the Fe3O4@PLGA/LA NPs reads on the claimed composition. Although Yang does not expressly teach a method for inhibiting anticancer drug resistance, Yang teaches the composition containing transition metal and L-arginine is used to treat cancer, e.g., breast cancer. Please note that any compound effective against cancer cells would reasonably be expected to impact resistant cancer cells or resistance pathways, and therefore, administering the said composition to a subject in need thereof would inhibit anticancer drug resistance. See In re Kubin, 561 F.3d, 1351, 90 USPQ 2D(BNA) 1417 (Fed. Cir. Apr.3, 2009) stating that if a compound is known in the prior art for a specific purpose, the discovery of a new, additional property of that same compound (e.g., a new mechanism of action) does not inherently make it patentable (instant claims 27, 29, 31 and 32).
In light of the foregoing, instant claims 27, 29, 31 and 32 are obvious over Yang.
Claims 28, 30 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al., “Multifunctional L-arginine magnetic nanoparticles for multiple-synergistic tumor therapy”, Biomaterials Science, January 13, 2021, vol. 9, pages 2230-2243 (IDS of 02/06/2024) as applied to instant claims 27, 29, 31 and 32, in view of Wang et al., “Recent advances in porphyrin-based MOFs for cancer therapy and diagnosis therapy”, Coordination Chemistry Reviews, vol. 439, 2021-04-24 (on-line available), pp. 1-30.
Yang was discussed above with respect to instant claims 27, 29, 31 and 32.
However, Yang does not expressly teach anticancer drug of instant claim 28; and metal organic frameworks (MOFs) carrier of instant claims 30 and 33. The deficiencies are cured by Wang.
Wang discloses doxorubicin as anticancer agent or sonosensitizer can be used (page 18, right column) (instant claim 28); and Wang further teaches porphyrin-based MOF is useful for tumor therapy when e.g., anti-cancer drug is resistant (section 3 on page 10); Wang further teaches porphyrins and porphyrin derivatives are used for e.g., biomedical applications (e.g., biological application in the therapy and diagnosis of cancer) owing to their outstanding photophysical and electrochemical properties, and porphyrin-based metal organic frameworks (MOFs), a family of novel hybrid porous coordination polymers, have been developed and porphyrin-based MOFs maintain the specific properties of porphyrins and can be loaded or modified with functional molecules or drugs to impart therapeutic and imaging abilities (abstract); and porous coordination networks(PCN)-222, PCN-224, Mn-MOF are porphyrin-based MOFs can be used for tumor therapy (Table 1 on page 11) (instant claims 30 and 33).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the teachings of Yang with anticancer agent and MOFs of Wang in order to enhance therapeutic effect, chemical and optical stabilities in biological application especially in the therapy and diagnosis of cancer as taught by Wang.
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.
From the combined 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 was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KYUNG S CHANG/ Primary Examiner, Art Unit 1613