The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to Applicant’s amendments/remarks received June 10, 2026.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
Claims 4, 8, 10-11, 19 are canceled. Claims 14-18 are withdrawn. Claims 1-3, 5-7, 9, 12-13, 20, 21-22 are under consideration.
Priority: The instant application has a benefit date of June 27, 2024.
Objections and Rejections
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 1-3, 6-7, 9, 12-13, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Corgie et al. (US 20150252352; previously cited) in view of Martinez (2023 Magnetic Gold Nanoparticles for Biomedical Applications, SepMag article: 6 pages). The instant claims are product-by-process claims drawn to a nanoparticle composition comprising a nanoparticle, at least one polymer, and at least one protein. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
On page 15, at least claims 1, 3-6, 9, 11, Corgie et al. disclose a composition comprising a scaffold in which is incorporated self-assembled mesoporous aggregates of magnetic nanoparticles and enzymes embedded in the nanoparticles, where the enzyme is peroxidase (claims 5-6), where the enzyme is laccase (claim 9), where the scaffold is a polymeric composition (claim 11). Corgie et al. disclose a composition comprising magnetic nanoparticles adsorbed to enzymes referred to as a “bionanocatalyst” or “BNC” (at least paragraphs 0032-033). Corgie et al. disclose the nanoparticles or BNCs may also be coated with a noble metal, such as gold, silver (at least paragraphs 0038, 0062). Corgie et al. disclose in particular embodiments, the BNCs are incorporated into a continuous macroporous scaffold (at least paragraph 0040), where the scaffold has a polymeric composition, where the polymer is selected from among others polyethylene, polyvinyl alcohol, polysaccharides, etc. (at least paragraph 0046). Corgie et al. disclose in particular embodiments, the enzyme is a selected from among others laccase, peroxidase (at least paragraphs 0054, 0056-0057). Corgie et al. demonstrate that the activity and resiliency of peroxidases dramatically increased in association with gold-coated magnetic nanoparticles (Au-MNPs) (at least paragraphs 0103-0107). Therefore, Corgie et al. can be deemed to disclose a composition comprising a nanoparticle, at least one polymer, and at least one protein, where the nanoparticle is an Au-MNP, the at least one polymer is polyvinyl alcohol and/or polyethylene glycol, and the at least one protein is peroxidase and/or laccase (instant claims 1-2, 6). Corgie et al. do not explicitly teach that an Au-MNP is a type of gold nanoparticle.
Martinez et al. disclose that magnetic gold nanoparticles (GNPs) are GNPs having a magnetic core coated with gold shells and having properties of GNPs (at least p. 1-2). Therefore, it would be obvious to one of ordinary skill that the Au-MNP disclosed in Corgie et al. is considered a type of “gold nanoparticle.”
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that Corgie et al. disclose the claimed composition comprising a gold nanoparticle (i.e. Au-MNP), at least one polymer, and at least one protein, the at least one polymer is polyvinyl alcohol and/or polyethylene glycol, and the at least one protein is peroxidase and/or laccase (instant claims 1-2, 6). One of ordinary skill would have reasonably considered that the Au-MNP disclosed in Corgie et al. is a gold nanoparticle because it is coated in a gold shell and has the surface properties of a gold nanoparticle. One of ordinary skill would have a reasonable expectation of success because the prior art reasonably disclose that magnetic GNPs are gold nanoparticles.
Regarding instant claim 3, Corgie et al. disclose in some embodiments, the noble metal coating is applied before enzyme is included with the magnetic nanoparticles, in which case enzyme is later bonded to the noble metal coating; the enzyme can be bonded to the noble metal coating by functionalizing the noble metal coating with difunctional molecules that bind to the noble metal coating and possess another reactive group for binding to the enzyme (at least paragraph 0062). Therefore, Corgie et al. can be deemed to disclose conjugation of the protein or enzyme to the gold magnetic nanoparticle.
Regarding instant claim 7, Corgie et al. disclose contacting a lignin-containing material with the any of the BNC-scaffold structures by combining them in an aqueous solution (at least paragraphs 0076-0078); Therefore, Corgie et al. can be deemed to disclose a component coated with the nanoparticle composition comprising the Au-MNPs, at least one polymer, and at least one protein, noted above.
Regarding instant claim 9, Corgie et al. has disclosed that in particular embodiments, the BNCs are incorporated into a continuous macroporous scaffold (at least paragraph 0040), where the scaffold has a polymeric composition, where the polymer is selected from among others polyethylene, polyvinyl alcohol, polysaccharides, cellulose etc. (at least paragraph 0046). Corgie et al. disclose the macroporous scaffold is a continuous material, such as a polymeric material, such as biopolymer, which may be a polysaccharide, such as cellulose; in some embodiments, the scaffold material may be sonicated to untangle or disperse individual sheets, fibers, or ribbons of the material (at least paragraph 0067). Therefore, Corgie et al. can be deemed to disclose a textile (i.e. polymer fibers) comprising the nanoparticle composition comprising the Au-MNPs, at least one polymer, and at least one protein, noted above.
Regarding instant claims 12, 20, Corgie et al. disclose in another aspect, the BNC-scaffold structure includes lactoperoxidase, which exhibits broad antifungal and antibacterial activity (at least paragraphs 0088-0089). Therefore, it would be obvious that the nanoparticle composition comprising the Au-MNPs, at least one polymer, and at least one protein, noted above, comprises lactoperoxidase as the protein.
Regarding instant claims 13, 20, Corgie et al. disclose the BNCs are incorporated into a continuous macroporous scaffold (at least paragraph 0040), the scaffold having pore sizes of 50 nm to 100 µm (at least paragraph 0042, also p. 15 claims 1, 12).
Reply: In view of Applicant’s amendments/remarks the previous 102(a)(1) rejection as being anticipated by Corgie et al. has been withdrawn. However, Corgie et al. is applicable as a 103 rejection for the reasons noted above and herein.
Applicant has amended instant claim 1 to recite that the nanoparticle is selected from among others a gold nanoparticle. Applicant asserts that in contrast, Corgie et al. discloses magnetic nanoparticles that are or include an oxide of a magnetic metal (Corgie et al. 0038). Applicant asserts that the disclosure of gold or silver referred to by the examiner relates to surface coatings on the magnetic nanoparticles. Applicant asserts that Corgie et al. do not teach a composition comprising a boron nitride, silica, graphene, cellulose, carbon, latex, silver, or gold nanoparticles, at least one polymer, and at least one protein.
Applicant’s remarks are not persuasive. In this instance, while Corgie et al. disclose that the nanoparticles have a magnetic core, Corgie et al. disclose that the nanoparticles are coated in gold to become Au-MNPs (gold magnetic nanoparticles), where it is disclosed that magnetic GNPs are GNPs having a magnetic core coated with gold shells and having properties of GNPs (Martinez). A review of the role of gold nanoparticle also discloses that magnetic nanocores (e.g. iron, cobalt, nickel) coated with gold shells are included among types of gold nanoparticles (Bansal et al. p. 3776).
Therefore, it would have been obvious to one of ordinary skill that the Au-MNP of Corgie et al. is reasonably a gold nanoparticle and that Corgie et al. disclose a nanoparticle composition comprising the same components and/or features recited in the instant claims, i.e. the nanoparticle composition comprising a gold nanoparticle, at least one polymer, and at least one protein, the at least one polymer is polyvinyl alcohol and/or polyethylene glycol, and the at least one protein is peroxidase and/or laccase (see teachings of Corgie et al. above).
Claims 1-3, 6-7, 9, 12-13, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Galliker et al. (2010 Journal of Colloid and Interface Science 349: 98-105; previously cited) in view of Kelleher et al. (2015 Nanotechnology 26:365703, 12 pages). Galliker et al. disclose laccase enzymes have high stability and are versatile oxidative enzymes that are used in a wide range of industrial processes in various fields including food, paper, textile, cosmetic industries, environmental applications such as treating contaminated effluents, etc. (at least p. 98). Galliker et al. disclose a composition comprising silica nanoparticles, 3-amino-propyl-triethoxyl-silane (APTES), and a laccase, where the enzyme is conjugated to the nanoparticle (at least p. 98-101, also Fig. 3). Galliker et al. differ from the claimed composition by not reciting a polymer.
Kelleher et al. disclose that when choosing immobilization strategies for linking of biomolecules to silica nanoparticles, the use of silanes for surface activation is commonplace (at least p. 2). Kelleher et al. disclose in particular, APTES linkers are used to provide the surface of the silica with amine groups, to which biomolecules can be directly linked (at least p. 2). Kelleher et al. disclose that however, there is evidence that these APTES groups can become chemically unstable at high and low pH, and at raised temperatures (at least p. 2). Kelleher et al. disclose that alternative linkers to APTES include polymer linkers, including linear PEG (LPEG), 8-arm PEG (8PEG) (at least p. 2, also Fig. 1). Kelleher et al. disclose polymer linkers have shown to be highly effective for stable binding of biomolecules to surfaces (at least p. 2-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a polymer linker such as the LPEG or 8PEG of Kelleher et al. for the APTES in the composition comprising silica nanoparticles, laccase of Galliker et al. to thereby arrive at the claimed composition comprising a silica nanoparticle, at least one polymer, and laccase (instant claims 1-2, 6). The motivation to do so is given by the prior art which disclose polymer linkers are alternative linkers for APTES for linking biomolecules to nanoparticles. One of ordinary skill would have a reasonable expectation of success because alternative linkers to APTES, including polymer linkers, for linking biomolecules to silica nanoparticles were know in the prior art.
Regarding instant claim 3, Galliker et al. disclose that the enzyme is conjugated to the nanoparticle (at least p. 98-101, also Fig. 3). Kelleher et al. disclose that the polymer linker directly links the biomolecule to the nanoparticle (at least p. 2, also Fig. 1). Therefore, Galliker et al. in view of Kelleher et al. can be deemed to disclose conjugation of the laccase enzyme to the silica nanoparticle.
Regarding instant claim 7, Galliker et al. disclose spreading the nanoparticle suspensions on fresh cleaved mica surfaces (at least p. 99). Therefore, it would have been obvious to arrive at a component coated with the laccase-nanoparticle composition of Galliker et al. in view of Kelleher et al. noted above.
Regarding instant claim 9, Galliker et al. disclose laccases are versatile oxidative enzymes that are used in a wide range of industrial processes including textile (at least p. 98). Therefore, it would have been obvious to arrive at a textile comprising the laccase-nanoparticle composition of Galliker et al. in view of Kelleher et al. noted above.
Regarding instant claims 12-13, 20, Galliker et al. in view of Kelleher et al. disclose a nanoparticle composition comprising silica nanoparticles, laccase enzymes, polymer. Since Galliker et al. disclose laccase has a wide range of industrial processes uses, including treating contaminated material (at least p. 98), Galliker et al. can be deemed to disclose that the laccase-nanoparticle composition comprises antimicrobial properties (instant claims 12, 20). Additionally, Galliker et al. disclose aggregates of the silica nanoparticles (at least p. 99-100), where it would be expected that the silica nanoparticles in the laccase-nanoparticle composition of Galliker et al. in view of Kelleher et al. will aggregate together and reasonably form pores between the nanoparticles in the nanoparticle composition (instant claim 13).
Reply: In view of Applicant’s amendments/remarks, the previous 102(a)(1) rejection as being anticipated by Galliker et al. has been withdrawn. However, Galliker et al. is applicable as a 103 rejection for the reasons noted above and herein.
Applicant has amended instant claim 1 to recite the selected polymer is among others silane polymer. Applicant asserts that the APTES is not a polymer, but rather APTES is a small molecule.
Applicant’s remarks are not persuasive. The deficiency of Galliker et al. to not explicitly teach a polymer is remedied by newly cited Kelleher et al. for the reasons noted above.
As noted above, Galliker et al. disclose a composition comprising silica nanoparticles, APTES, and a laccase, where the enzyme is conjugated to the nanoparticle (at least p. 98-101, also Fig. 3). Galliker et al. differ from the claimed composition by not reciting a polymer.
Kelleher et al. disclose that the use of silanes for surface activation is commonplace (at least p. 2). Kelleher et al. disclose APTES linkers are used to provide the surface of the silica with amine groups, to which biomolecules can be directly linked (at least p. 2). Kelleher et al. disclose that however, there is evidence that these APTES groups can become chemically unstable at high and low pH, and at raised temperatures (at least p. 2). Kelleher et al. disclose that alternative linkers to APTES include polymer linkers, including linear PEG (LPEG), 8-arm PEG (8PEG) (at least p. 2, also Fig. 1). Kelleher et al. disclose polymer linkers have shown to be highly effective for stable binding of biomolecules to surfaces (at least p. 2-3).
Therefore, it would have been obvious to one of ordinary skill to incorporate a polymer linker such as the LPEG or 8PEG of Kelleher et al. for the APTES in the composition comprising silica nanoparticles, laccase of Galliker et al. to thereby arrive at the claimed composition comprising a silica nanoparticle, at least one polymer, and laccase because polymer linkers are alternative linkers for APTES for linking biomolecules to nanoparticles.
Claims 1-3, 5, 6-7, 9, 12-13, 20, 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Galliker et al. (2010 Journal of Colloid and Interface Science 349: 98-105; previously cited) in view of Kelleher et al. (2015 Nanotechnology 26:365703, 12 pages) and Gonzalez-Ortiz et al. (2020 Materials Today Advances 8:100107, 20 pages). The teachings of Galliker et al. in view of Kelleher et al. over at least instant claims 1-3, 5, 7, 9, 12-13, 20 are noted above.
Regarding instant claims 5, 21-22, Gonzalez-Ortiz et al. disclose that among nanostructured materials, the interest for boron nitride (BN) – based materials has progressively increased because of their high chemical stability, mechanical strength, resistance to oxidation, etc. (at least p. 1-2). Gonzalez et al. disclose BN as a functional material for nanostructures and/or nanoparticles (at least p. 3-4, 13-14), including gold nanoparticles (at least p. 16-17) and silica (at least p. 3, 7, 13). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further incorporate boron nitride as a functional material with the nanoparticle in the nanoparticle composition comprising a nanoparticle, laccase enzyme, polymer, of Galliker et al. in view of Kelleher et al. noted above. The motivation to do so is given by the prior art, which disclose BN based materials are used to fabricate nanostructures, including nanoparticles. One of ordinary skill would have a reasonable expectation of success because BN is a recognized material for producing nanostructures.
Reply: Applicant’s amendments/remarks have been considered but they are not persuasive. The reasons for maintaining Galliker et al. are the same as noted above.
No claim is allowed.
THIS ACTION IS MADE FINAL. 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 Marsha Tsay whose telephone number is (571)272-2938. The examiner can normally be reached M-F.
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/Marsha Tsay/Primary Examiner, Art Unit 1656
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