Notice of Pre-AIA or AIA Status
The present application, filed on or after June 09, 2026, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of Applicants’ claimed invention filed on 06/09/2026 in the matter of Application N° 18/704,561. Said documents are entered on the record. The Examiner further acknowledges the following: claims 16-25 represent all claims currently under consideration.
Response to Amendment- Objection to the Claims
Claims 23 and 24 have been amended to depend from claim 22, consistent with the Examiner’s indication in the previous Office Action. The amendment is acknowledged, and the previous objection to claims 23 and 24 concerning improper claim dependency has been overcome and is hereby withdrawn.
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.
Claims 16-21 are 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.
The new language, “wherein the NGQDs or their salts synthesized from citric acid and polyethyleneimine as precursors have a surface with a positive charge in deionized water” is indefinite. The phrasing describes the surface having a positive charge WHEN they are made from citric acid and polyethyleneimine, but this does not positively recite the product-by-process limitation of requiring that the NGQDs actually be made from citric acid and polyethyleneimine. These claims have been examined as if they were limited to NGQDs made from citric acid and polyethyleneimine, but correction is still required. Contrast this with claim 22 where the process requires citric acid and polyethyleneimine; this claim is not indefinite.
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.
Claims 16-25 are rejected under 35 U.S.C. 103 as being unpatentable over Ahn et al. (Facile Synthesis of N-Doped Graphene Quantum Dots as Novel Transfection Agents for mRNA and pDNA, 10/22/2021). PubMed Central (PMC), in view of Pierrat et al. (Efficient in vitro and in vivo pulmonary delivery of nucleic acid by carbon dot-based nanocarriers) 04/30/2015, (Science Direct), and Senel et al. (Graphene quantum dots: Synthesis, characterization, cell viability, genotoxicity for biomedical applications Behiye Senel et al. 20 May 2019.), in view of Meierhofer et al. (Citric Acid Based Carbon Dots with Amine Type Stabilizers: pH Specific Luminescence and Quantum Yield Characteristics Florian Meierhofer et al. J. Phys. Chem. C 2020, 124, 8894-8904).
Regarding claim 16, Ahn et al. teach N-doped graphene quantum dots (NGQDs) prepared from polyethyleneimine (PEI) and citric acid precursors by a microwave assisted hydrothermal reaction. Ahn et al. Report that the resulting NGQDs have a positive surface charge in deionized water, with a measured zeta potential of 1.91±1.77 mV. Ahn et al. further explain that the positive surface charge permits the NGQDs to interact electrostatically with negatively charged genes, including mRNA and plasmid DNA (pDNA). Ahn et al. demonstrate that the NGQDs form complexes with mRNA and pDNA and successfully transfect cells (See Abstract, page 2, Introduction, and page 4, Results and Discussion).
Ahn et al., however, do not expressly teach administering the NGQD/gene composition to a subject in need thereof.
Pierrat et al. teach cationic carbon dots prepared from citric acid and branched polyethyleneimine (bPEI25k) under microwave radiation. Pierrat et al. characterize the surface charge of the resulting carbon dots and determine their ability to form stable complexes with nucleic acids. Pierrat et al. further investigate delivery of plasmid DNA and small interfering RNA and expressly evaluate the carbon-dot/nucleic-acid carriers for in-vivo gene delivery through a non-invasive pulmonary route in mice, obtaining transgene expression in the lungs (See Abstract).
It would have been obvious to one of ordinary skill in the art at the time of the invention to apply the in-vivo gene-delivery approach of Pierrat et al. to the positively charged NGQDs of Ahn et al. A person of ordinary skill in the art would have been motivated to do so because both references recognize the utility of positively charged carbon-based quantum dots as carriers for negatively charged nucleic acids. Ahn et al. expressly demonstrates that the positively charged NGQDs and mRNA and pDNA and facilitate cellular transfection, while Pierrat et al. demonstrates that closely related cationic carbon-dot/nucleic-acid complexes can be administered in vivo to a subject to achieve gene delivery.
The modification would therefore have involved the predictable application of a known gene delivery technique to a closely related carbon-based quantum-dot carrier, with a reasonable expectation of success. The skilled artisan would have had reason to administer the NGQD/nucleic-acid complexes of Ahn et al. in vivo in view of the demonstrated in-vivo gene delivery capability of the cationic carbon-dot systems of Pierrat et al.
With respect to the limitation requiring that the NGQDs or salts thereof be synthesized from citric acid and polyethylenimine as precursors, Ahn et al. expressly disclose using citric acid and PEI as precursors for the microwave assisted hydrothermal synthesis of the NGQDs.
With respect to the limitation requiring that the NGQDs or salts thereof have a positive surface charge in deionized water, Ahn et al. expressly reports a positive zeta potential for the NGQDs in deionized water and explain that the positive charge permits electrostatic interaction with negatively charged genetic material.
With respect to the limitation requiring the target gene to be bound to the NGQDs interact electrostatically with negatively charged mRNA and pDNA and successfully transfect cells. Pierrat et al. likewise teaches that the cationic carbon dots form stable complexes with nucleic acids and deliver plasmid DNA and siRNA in vivo.
Regarding claim 17, Senel et al. disclose wherein the N-GQDs zeta potential is -2.86 (mV) (See Table 3).
Regarding claim 18, Senel et al. disclose wherein the N-doped GQDs have a particle size of 10.9 (nm) (See Table 3).
Regarding claim 19, as discussed with respect to claim 16, Ahn et al. teach N-doped graphene quantum dots prepared from citric acid and polyethylenimine, wherein the NGQDs possess a positive surface charge and form complexes with negatively charged genetic material, including mRNA and plasmid DNA. Ahn et al. further demonstrates cellular transfection using the NGQD/gene complexes. Pierrat et al. teach the use of cationic carbon dots to form complexes with nucleic acids and demonstrate in-vivo gene delivery. With respect to the additional limitation of claim 19 requiring that the nitrogen-doped graphene quantum dots and the gene be bound at a weight ratio of NGQD to gene of 1 to 50:1, Ahn et al. teach analyzing the ratio of NGQDs to genes by combining 100 ng of mRNA or pDNA with varying amounts of NGQDs, including 0.5, 1, 2, and 4 µg of NGQDs. These amounts correspond to NGQD-to-gene weight ratios of 5:1, 10:1, 20:1, and 40:1, respectively, all of which fall within the claimed range of 1 to 50:1 (See 2.3 Loading Capacity). Ahn et al. further expressly report formation of NGQD/mRNA complexes at a 20:1 weight-to-weight ratio, wherein 600 ng of NGQDs were combined with 30 ng of mRNA prior to transfection. Accordingly, Ahn et al. expressly teach NGQD-to-gene weight ratios falling within the claimed range (See page 6, Results and Discussion).
It therefore would have been obvious to employ an NGQD-to-gene weigh ratio within the range of 1 to 50:1, including the expressly disclosed 20:1 ratio, when forming the NGQD/gene complexes of claim 16. The selection of the claimed ratio would have been within the teachings of Ahn et al. and would have involved no more than selecting a disclosed ratio for use in the gene-delivery method.
Regarding claim 20, Senel et al. teach the coupling of siRNA through electrostatic attraction between the negatively charged siRNA and positively charged Eudragit forming the GQDs (See page 848, 3.7.2 Binding studies with EpHA2 SiRNA of Eu-GQDs).
Regarding claim 21, Senel et al. disclose wherein studies on siRNA loading were carried out, and their impact on cells was assessed. The microscopy N-doped GQDs were rapidly absorbed into the cell, according to the results. Through DNA and mRNA breaking, the unique N-doped GQDs containing siRNA are a potential in situ tumor suppressor (See abstract).
However, Senel et al. do not teach wherein a method of preparing nitrogen-doped graphene quantum dots, comprising a mixed solution of citric acid and polyethylenimine to a hydrothermal reaction.
Regarding claim 22, Ahn et al., teaches a method of preparing nitrogen-doped graphene quantum dots by preparing a solution comprising citric acid and polyethylenimine and subjecting the solution to a microwave-assisted hydrothermal reaction. Specifically, Ahn et al. disclose adding 200 mg of citric acid and 50 mg of branched PEI to water, followed by sonication and microwave assisted hydrothermal treatment to produce the NGQDs (See 2.1 Synthesis of NGQDs).
Ahn et al. further characterize the resulting NGQDs and report a zeta potential of +1.91±1.77mV. Ahn et al. explain that this measurement demonstrates that the NGQDs have a positively charged surface in deionized water (See page 4, Results and Discussion).
Regarding claims 25, Meierhofer et al. describes a process that uses a hydrothermal reaction between citric acid and polyethylenimine to create nitrogen-doped carbon dots (See abstract and page 8895, second paragraph).
It would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the hydrothermal reaction between citric acid and polyethylenimine as taught by Meierhofer et al. into the method of preparing nitrogen-doped quantum dots into Senel et al.
Regarding claim 23, Ahn et al. further teach that the hydrothermal reaction used to prepare the nitrogen-doped graphene quantum dots is carried out by microwave irradiation. Specifically, Ahn et al. disclose preparing the nitrogen-doped graphene quantum dots from citric acid and polyethylenimine by a microwave-assisted hydrothermal reaction (See page 2 Introduction, and page 4, Results and Discussion).
Regarding claim 24, Ahn et al. further teaches that citric acid and polyethylenimine are mixed in amounts of 200 mg and 50 mg, respectively (See 2.1 Synthesis of NGQDs). These amounts provide a citric acid-to-polyethylenimine weight ratio of 4:1 (200 mg/50 mg = 4), which falls within the claimed weight range of 1:1 to 10:1.
Response to Arguments
Applicant's arguments filed June 09, 2026, have been fully considered but they are not persuasive.
Applicant argues that the presently claimed methods are distinct from the disclosures of Senel et al., and Meierhofer et al. with respect to the recited precursors and/or preparation methods and, therefore, that a prima facie case of obviousness has not been established. Applicant further contends that the improved effects associated with the presently claimed methods would not have been predictable from the prior art. Applicant additionally argues that Senel et al. merely demonstrate the possibility of loading siRNA onto Eu-GQDs and do not experimentally establish that other genetic materials can be loaded or that the loaded siRNA can be safely delivered to target cells to achieve its intended effect.
The Examiner respectfully disagrees.
With respect to amended claim 16, although Senel et al. may not expressly teach each of the newly recited limitations, Ahn et al. expressly teach N-doped graphene quantum dots (NGQDs) prepared using citric acid and polyethylenimine (PEI) as precursors. Ahn et al. further teaches that the resulting NGQDs possess a positively charged surface in deionized water and that the positively charged NGQDs electrostatically interact with negatively charged genetic material. Ahn et al. specifically demonstrate formation of NGQD complex types of genetic material, including messenger RNA (mRNA) and plasmid DNA (pDNA), and demonstrate efficient delivery and transfection of such genetic material into target cells.
Thus, Applicant’s argument that Senel et al. merely demonstrates the possibility of loading siRNA and fail to demonstrate successful delivery of other genetic materials does not overcome the rejection. Ahn et al. expressly demonstrate that positively charged NGQDs are capable of complexing with different types of nucleic acids, including mRNA and pDNA, and successfully delivering such genetic material into target cells. Ahn et al. further report that the transfection efficiency of the NGQDs is comparable to that obtained using commercially available lipid nanoparticles.
Pierrat et al. further support the obviousness of using cationic carbon-based quantum dots for gene delivery. Pierrat et al. teach cationic carbon dots prepared from citric acid and branched polyethylenimine under microwave irradiation and demonstrate that the resulting carbon dots form stable complexes with nucleic acids. Pierrat et al. teach cationic carbon dots prepared from citric acid and branched polyethylenimine under microwave irradiation and demonstrate that the resulting carbon dots form stable complexes with nucleic acids. Pierrat et al. evaluated the carbon-dot carriers for delivery of plasmid DNA and siRNA and further demonstrate in vivo gene delivery by pulmonary administration to mice, resulting in high transgene expression in the lungs.
One of ordinary skills in the art would have been motivated to employ the positively charged NGQDs taught by Ahn et al. for administration and gene delivery in view of Pierrat et al.’s demonstration that closely related cationic carbon-dot/nucleic-acid complexes are suitable for in vivo administration and effective gene delivery. Both references recognize the ability of positively charged carbon-based nanoparticles to complex with negatively charged nucleic acids and facilitate delivery thereof. The skilled artisan therefore would have had a reasonable expectation of successfully using the NGQD/gene complexes of Ahn et al. for gene delivery to a subject.
With respect to Applicant’s assertion that the claimed methods provide improved and unpredictable effects, the argument is not persuasive because the relied-upon prior art itself demonstrates the relevant effects. Ahn et al. experimentally demonstrates efficient cellular delivery and transfection of mRNA and pDNA using positively charged NGQDs, while Pierrat et al. demonstrates in vivo delivery of nucleic acids using cationic carbon-dot carriers. Thus, successful nucleic acid complexation and gene delivery would have been reasonably expected from the combined teaching of the references rather than constituting an unpredictable result.
Regarding amended claim 19, Ahn et al. teach forming NGQD/gene complexes using NGQD-to-gene weight ratios falling within the presently claimed range of 1:1 to 50:1. The additional numerical limitation of claim 19 does not distinguish the claimed method from the prior art.
Regarding amended claims 22 and 23, Ahn et al. expressly teaches preparing NGQDs from citric acid and PEI by subjecting a solution containing the precursors to a microwave-assisted hydrothermal reaction. Ahn et al. further report that the resulting NGQDs have a positive surface charge in deionized water. Ahn et al. teach the hydrothermal preparation and positive-surface-charge limitations of claim 22 and the microwave irradiation limitation of claim 23.
Regarding claim 24, Ahn et al. disclose preparing the NGQDs using 200 mg citric acid and 50 mg PEI. These amounts correspond to a citric acid-to-PEI weight ratio of 4:1, which falls within the presently claimed range of 1:1 to 10:1.
Applicant’s arguments concerning the alleged deficiencies of Senel et al. and Meierhofer et al., either individually or in combination, do not overcome the rejection because the additional teachings of Ahn et al. and Pierrat et al. address the limitations introduced by amendment and provide a reasoned basis for the claimed combination with a reasonable expectation of success.
The rejection under 35 U.S.C. 103 is maintained and made FINAL.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kimberly Barber whose telephone number is (703) 756-5302. The examiner can normally be reached on Monday through Friday from 6:30 AM to 3:30 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax, can be reached at telephone number (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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