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 .
Acknowledgments and Claim Status
The Examiner acknowledges receipt of the amendment filed 5/20/2024wherien the specification and claims 3-10 and 13-17 were amended.
Note(s): Claims 1-17 are pending.
Priority and Priority Document
This application is a 371 of PCT/EP2022/083006 filed 11/23/2022 which claims benefit to EPO EP21210057.2 filed 11/23/2021 and EPO EP22175125.8 filed 5/24/2022.
Note(s): The earliest effective filing date is 11/23/2021 because the pending invention is fully supported in EPO EP21210057.2.
Acknowledgment is made of Applicant’s claim for foreign priority under 35 USC 119 (a) – (d). The priority documents were filed in 5/20/2024.
Claim Interpretation
Independent claim 1 is directed to a nanoparticle comprising a nanocrystal, a plurality of dispersant molecules comprising an oligoethylene glycol moiety in combination with a catechol or a gallol as set forth in claim 1.
Claim 17 is directed to a method of manufacturing a composition comprising a plurality of nanoparticles comprising a nanocrystal, a plurality of dispersant molecules comprising an oligoethylene glycol moiety in combination with a catechol or a gallol.
Information Disclosure Statement
The information disclosure statements filed 5/20/2024 and 8/6/2026 were considered.
Written Description Rejection
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.
Claims 1-17 are 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.
Applicant is reminded that an inventor is entitled to a patent to protect his work only if he/she produces or has possession of something truly new and novel. The invention being claimed must be sufficiently concrete so that it can be described for the world to appreciate the specific nature of the work that sets it apart from what was before. The inventor must be able to describe the item to be patented with such clarity that the reader is assured that the inventor actually has possession and knowledge of the unique composition that makes it worthy of patent protection. The pending invention does not sufficiently describe the invention as it relates to dispersants other than catechol and gallol. As well as not sufficiently describing the invention as it relates to gallol other than MEEA, oligoethylene glycol, and dihydroxyl nitrophenyl containing dispersants. Thus, what the reader gathers from the instant application is a desire/plan/first step for obtaining a desired result. While the reader can certainly appreciate the desire for achieving a certain end result, establishing goals does not necessarily mean that an invention has been adequately described.
While compliance with the written description requirements must be determined on a case-by-case basis, the real issue here is simply whether an adequate description is necessary to practice an invention described only in terms of its function and/or based on a disclosure wherein a description of the components necessary in order for the invention to function are lacking. In order to satisfy the written description requirement, the specification must describe every element of the claimed invention in sufficient detail so that one of ordinary skill in the art would recognize that the inventor possessed the claimed invention at the time of filing. In other words, the specification should describe an invention and does so in sufficient detail that one skilled in the art can clearly conclude that the inventor created what is the claimed. Thus, the written description requirement is lacking in the instant invention since the various terms as set forth above are not described in a manner to clearly allow persons of ordinary skill in the art to recognize that Applicant invented what is being claimed.
112 Second Paragraph Rejections
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 1-17 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.
Claims 1-17: Independent claim 1 is ambiguous for the following reasons. (1) One cannot determine the metes and bounds of the claims because of the use of ‘comprising or essentially consisting of’ regarding the hafnium oxide and dispersant molecules. Thus, in one instance, the nanoparticle reads on very general compounds that allow a multitude of possible other substances to be present and also read on very limited substances when essentially consisting of is applied to both the hafnium oxide and dispersant. However, further confusion of the claim occurs when one component is dependent upon the comprising terminology and the other consist essentially of limited ingredients.
(2) The claim contains multiple periods (see lines 2, 4, 6, and 8). According to MPEP 608.01(m) which relates to the form of claims, each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviation. Applicant is respectfully reminded that where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
(3) A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation ‘comprising’ and ‘gallol’, and the claim also recites ‘consisting essential of’ and ‘1,2-hydroxy-4-nitrophenyl moiety’, respectively which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Since claims 2-17 depend upon independent claim 1 for clarity, those claims are also vague and indefinite.
Claim 2: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation ‘diameter is ≤ 6 nm’, and the claim also recites ‘diameter is ≤ 4 nm’ and ‘diameter is ≤ 3.5 nm’ which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 2, line 3: Should ‘3,5’ be ‘3.5’?
Claim 4, lines 2-3: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation ‘molecular mass of ≤ 500 g/mol’, and the claim also recites that the molecular mass is ‘particularly of ≤ 400 g/mol’ which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 5 and 6: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation ‘dispersant molecule comprises’, and the claim also recites ‘particularly consists of’ (see line 2) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 5 (lines 3 and 5) and 17 (lines 3, 5, 7, 10, 13, and 14): The claim contains multiple periods. According to MPEP 608.01(m) which relates to the form of claims, each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviation. Applicant is respectfully reminded that where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
Claim 9: Did Applicant intend to insert ‘further’ before ‘comprises’ in line 2. Also, the phrase ‘for optical localization’ is the intended use of the dye and does not further limit the components of the nanoparticle itself.
Claim 12: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation ‘pH from pH 6 to pH 10’, and the claim also recites ‘particularly a pH ranging from pH 6.5 to pH 8.0’ (see line 2) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 13: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation ‘diameter between 2.0 nm and 5.0 nm’, and the claim also recites ‘particularly when 85% of the nanoparticles have a diameter between 2.5 nm and 4.5 nm’ which is the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 14-16: The claims are ambiguous because the composition in the claims do not incorporate any additional components into the composition, but references the composition of claim 10 itself. The phrases, ‘for use in medicine’, ‘for use as a radiotherapy enhancing agent (radiosensitizer))’, and ‘for use as a computed tomography (CT) contrast agent’, are directed to the intended use of the composition. Thus, it is unclear whether or not Applicant intended to incorporate addition product components for the compositions such that they would generate substances that are used in medicine, radiotherapy and computed tomography.
Claim 17: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation ‘carboxylic acid ligand’, ‘gallol’, and ‘isolating the composition’, and the claim also recites ‘particularly by MEEAA’, ‘particularly a 1,2-hydroxy-4-nitrophenyl moiety’, and ‘particularly by size exclusion/spin filtration’, respectively which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 17 (line 14): The claim contains as slash ‘/’ mark. Did Applicant intend to replace the ‘/’ with ‘or’?
Comments/Notes
For clarity of the claims, the following suggestions are respectfully made: (1) in claim 3, line 2, replace ‘characterized by’ with ‘has’; (2) replace ‘with n being’ with ‘wherein n is’; and (3) in claim 17, line 8, replace ‘being’ with ‘is’.
The Deblock et al (JACS Au, 2022, Vol. 2, No. 3, pages 711-722) document made of record and not cited in a rejection was published after Applicant’s effective filing date. Thus, the document is not prior art against the pending invention.
It should be noted that no prior art is cited against the pending invention. However, Applicant must address and overcome the 112 first and second paragraph rejections above. In particular, the claims are distinguished over the prior art of record because the prior art neither anticipates nor renders obvious the pending invention. The closest art is De Roo et al (J. Am. Chem. Soc., 2014, Vol. 136, page 9650-9657) which is directed to a similar invention to that of Applicant.
Conclusion
Claims 1-17 are rejected.
Future Correspondences
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D L Jones whose telephone number is (571)272-0617. The examiner can normally be reached M-F.
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/D. L. Jones/
Primary Patent Examiner
Art Unit 1618
August 8, 2026
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