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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 1-10 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.
Claim 1 recites the limitation "the activity" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 also recites the limitation “under light conditions” in line 3. It is not clear what is meant by this limitation; e.g., what are the conditions? Is a light applied, or does this mean a weak magnetic field is applied, or something else?
Claim 2 recites the limitations "the oxidation efficiency" in lines 1-2 and “the action” in line 3. There is insufficient antecedent basis for these limitations in the claim.
Claim 3 recites the limitation "the magnetic field strength" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Further regarding claim 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, claim 3 recites the broad recitation 15-700 mT, and the claim also recites 35-600 mT and 50-450 mT, 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.
Similarly regarding claim 3, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Claim 4 recites the limitations "the magnetic field strength" in line 2 and “the oxidation rate” in line 3. There is insufficient antecedent basis for these limitations in the claim.
Claim 5 recites the limitation "the irradiation intensity" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Further regarding claim 5, 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, claim 5 recites the broad recitation 1-200 mW • cm-2, and the claim also recites 3-150 mW • cm-2 and 5-100 mW • cm-2, 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.
Similarly regarding claim 5, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Claim 6 recites the limitations "the irradiation depth" in lines 1-2 and “the irradiation intensity” in line 2. There is insufficient antecedent basis for these limitations in the claim.
Further regarding claim 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, claim 6 recites the broad recitation 1-20 mW • cm-2, and the claim also recites 4-10 mW • cm-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.
Similarly regarding claim 6, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 7 recites the limitations "the irradiation depth" in lines 1-2 and “the irradiation intensity” in line 2. There is insufficient antecedent basis for these limitations in the claim.
Further regarding claim 7, 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, claim 7 recites the broad recitation 50-150 mW • cm-2, and the claim also recites 80-120 mW • cm-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.
Similarly regarding claim 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 8 recites the limitation "the concentration" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Further regarding claim 8, 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, claim 8 recites the broad recitation 0.5-70 mol/L, and the claim also recites 1-50 mol/L, 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.
Similarly regarding claim 8, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 9 recites the limitation "the concentration" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 10, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2-10 are also rejected by virtue of their dependence upon claim 1.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, and 10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Melo et al. (U.S. Pub. No. 2023/0130513 A1; hereinafter known as “Melo”).
Regarding claim 1, Melo discloses a method for enhancing the activity of a photosensitizer by a magnetic field, characterized in that, the photosensitizer is placed in the magnetic field under light conditions, thus enhancing the activity of the photosensitizer ([0012]; [0040]).
Regarding claim 2, Melo discloses that the oxidation efficiency of singlet oxygen generated by the photosensitizer is enhanced under the action of the magnetic field and light ([0085]).
Regarding claim 10, Melo discloses that the photosensitizer is selected from a group capable of energy transitions, and being excited under irradiation conditions and inducing to generate singlet oxygen, preferably is one or several selected from porphyrin compounds, chlorin compounds, bacteriochlorin compounds, phthalocyanine compounds, fluoboric dipyrrole compounds and fluorescein compounds, more preferably porphyrin compounds, chlorin compounds or fluorescein compounds ([0085]).
Claims 1, 3, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mermut et al., "Time-resolved luminescence measurements of the magnetic field effect on paramagnetic photosensitizers in photodynamic reactions", Proc. SPIE 6845, Optical Methods for Tumor Treatment and Detection: Mechanisms and Techniques in Photodynamic Therapy XVII, 68450T (11 Feb 2008; hereinafter known as “Mermut”).
Regarding claim 1, Mermut discloses a method for enhancing the activity of a photosensitizer by a magnetic field, characterized in that, the photosensitizer is placed in the magnetic field under light conditions, thus enhancing the activity of the photosensitizer (Results and Discussion; Fig. 5).
Regarding claim 3, Mermut discloses that the magnetic field strength is from 15 to 700 mT, preferably from 35 to 600 mT, more preferably from 50 to 450 mT (Results and Discussion; Fig. 5).
Regarding claim 4, Mermut discloses that, compared to a single light condition, when the magnetic field strength is 34-355 mT, the oxidation rate of singlet oxygen is increased; and when the magnetic field strength is 50-220 mT, the oxidation rate of singlet oxygen increases by more than 20% (Results and Discussion; Fig. 5; Mermut’s method is taken to be able to achieve this intended result, as it uses the same types of photosensitizers, magnetic field strengths, and light wavelengths as the present invention).
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.
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.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Melo as applied to claim 1 above, and further in view of Nikinmaa et al. (U.S. Pub. No. 2021/0387013 A1; hereinafter known as “Nikinmaa”). Melo discloses the invention as claimed, see rejection supra, but fails to disclose that the irradiation intensity is from 1 to 200 mW • cm-2, preferably from 3 to 150 mW • cm-2, more preferably from 5 to 100 mW • cm-2. Nikinmaa discloses a similar method (Abstract; [0001]-[0007]) that uses an irradiation intensity from 1 to 200 mW • cm-2 ([0104]; [0178]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Melo with the irradiation intensity taught by Nikinmaa in order to provide a known effective irradiation intensity for the light.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Melo as applied to claim 1 above, and further in view of Kishen (U.S. Pub. No. 2016/0067149 A1).
Regarding claim 8, Melo discloses the invention as claimed, see rejection supra, but fails to disclose that the concentration of the photosensitizer is from 0.5 to 70 mol/L, preferably from 1 to 50 mol/L. Kishen discloses a similar method (Abstract) that uses a photosensitizer concentration from 0.5 to 70 mol/L ([0078]-[0082]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Melo with the photosensitizer concentration taught by Kishen in order to provide a known effective photosensitizer concentration.
Regarding claim 9, Melo discloses the invention as claimed, see rejection supra, but fails to disclose that the concentration of the photosensitizer is from 2 to 30 mol/L. Kishen discloses a similar method (Abstract) that uses a photosensitizer concentration of 50 mol/L ([0078]-[0082]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Melo with the photosensitizer concentration taught by Kishen in order to provide a known effective photosensitizer concentration. It would have been obvious to further modify the combination of Melo and Kishen to arrive at the claimed concentration range via routine experimentation/optimization. The general conditions of the claimed range are set out by the prior art of record, with only a minor difference between the upper bound of the claimed range and the concentration taught by Kishen, and thus it would not have been inventive to determine the claimed range through routine experimentation. The concentration of the photosensitizer is a variable that may be changed based upon the intended result of the method or the desired effects.
Allowable Subject Matter
Claims 6 and 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: none of the prior art of record teaches or reasonably suggests such irradiation depths and intensities in combination with such a method for enhancing the activity of a photosensitizer by placing the photosensitizer in a magnetic field under light conditions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS B COX whose telephone number is (571)270-5132. The examiner can normally be reached M-F 9am-6pm.
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, Jason M. Sims can be reached at (571)272-7540. 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.
/THADDEUS B COX/Primary Examiner, Art Unit 3791
Prosecution Insights