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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
The word “present” is incorrect. It should be “presence”. Appropriate correction is required.
Claim 3 is objected to because of the following informalities:
There appears to be a typo after the period. Appropriate correction is required.
Claim Rejections - 35 USC § 101 / § 112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
Claim 6 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it is directed to a liquid combination with a lipid nanoparticle. But it also recites “is used as a” which is an active step. As such, it is a composition claim with a method step, which falls into two different categories. An invention can only be in one category.
Claim 6 is 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. As discussed above, it is unclear how a composition claim can have an active step. For purposes of examination, the limitation will be interpreted as an intended use.
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)(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.
(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 1-7 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Benedetto et al (J. Phys. Chem. B 2014, 118, 42, 12192–12206).
Benedetto et al discloses forming phospholipid bilayers (i.e. lipids) with choline chloride (an ionic liquid) (see abstract).
Note, the instant claims all appear to require a lipid and ionic liquid. The ionic liquid will inherently alter the charge and meet the intended use limitations of instant claims 5-7 where the same components are present in the prior art as instantly claimed.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Kumari et al (J. Phys. Chem. Lett. 2020, 11, 17, 7327–7333).
Kumari et al looked at the effect of IL chain length on the elasticity and breakthrough force of IL-containing 1,2-dioleoyl-sn-glycero-3-phosphocholine (DOPC) lipid bilayers. It was found that ILs reduce both elasticity and breakthrough force of the bilayer, with the stronger effect observed for the longer-chain IL, while keeping the integrity of the bilayer. In the same work, the authors correlated this lipid bilayer-effect to the ability of the ILs to alter/control live cell migration — the working hypothesis is that sub-toxic concentrations of ILs can enhance cell migration by reducing the elasticity of the cellular lipid membrane.
Note, the instant claims all appear to require a lipid and ionic liquid. The ionic liquid will inherently alter the charge and meet the intended use limitations of instant claims 5-7 where the same components are present in the prior art as instantly claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri 9:30am-6:30pm + mid-day flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN J PACKARD/ Primary Examiner, Art Unit 1612
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