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 .
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.
Status of Claims
Claims 1-3, 6, 9-10, 12, 15, 17-21, 23-31, 40, 43, 46, 49, 52 and 55-64 are pending. Claims 15, 17, 18, 20, 21, 26-28, 43, and 52 are withdrawn. Claim 57-64 are new. Claims 1-3, 6, 9-10, 12, 19, 23-25, 29-31, 40, 46, 49 and 55-64 are currently under examination.
Withdrawn Rejections
In view of the amendments, the previous 35 U.S.C. 112(b) rejection is hereby withdrawn.
In view of the amendments, the previous 35 U.S.C. 112(d) rejection is hereby withdrawn.
New Rejection
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 1-3, 6, 9-10, 12, 19, 23-25, 29-31, 40, 46, 49 and 55-64 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 amended claim 1 recites the limitation of “thereby forming a crosslinked polymer matrix; and (b) hypercrosslinking the crosslinked polymer matrix, wherein the hypercrosslinking in (b) is carried out via a Friedel-Craft” is unclear to the metes and bounds of the final claimed product. Meanwhile, a “structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made” (see MPEP 2113). However, the product produced from the claimed process can be defined without the process (e.g., hypercrosslinked poly(VBC-co-DVB)). In this particular case, there is a structural difference between the claimed product and the “product-by-process” recitations. There are two distinctive final products for claimed magnetic particle (e.g., hypercrosslinked poly(VBC-co-DVB) or alike vs. polymer matrix that comprises a hypercrosslinked polymer matrix). Additionally, the recited process is performed without the presence of the claimed magnetic Fe3O4 cores. Therefore, it is unclear if whether the magnetic particle is a magnetic hypercrosslinked poly(VBC-co-DVB) particle or a general polymer matrix that has a hypercrosslinked polymer. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by a process to produce a hypercrosslinked poly(VBC-co-DVB) is required to be the final product on the magnetic particle. As a reminder, the claimed product can be defined without the process. Thus, it is unclear to what is the final product of the claimed magnetic particle product. Claims 2-3, 6, 9-10, 12, 23-25, 40, 49, 56-58 and 61-62 are rejected as being dependent from claim 1.
Additionally, claims 1 and 61 are unclear to the polymer matrix comprises a hypercrosslinked polymer with a particle size in the range from 10 to 50 micrometers. As stated below, Gao’s hypercrosslinked polymer microparticle is 1.3 microparticle (much smaller) but the surface area reaches 500 m2/g after Friedel-Crafts reaction (see abstract) whereas claims 1 and 61 having a much larger particle size with a surface area of 300 m2/g. Claim 1 could have a surface area of less than 300 m2/g, as it has not been defined. Therefore, there is question or doubt as to whether the feature introduced by a process producing hypercrosslinked polymer is required.
Similarly, claim 19 recites a product with product-by-process recitation is unclear to the metes and bounds of the final claimed product. As stated above, there is a structural difference between the claimed product and the “product-by-process” recitations. There are two distinctive final products in the claimed magnetic particle (i.e., hypercrosslinked poly(VBC-co-DVB) or alike vs. a magnetic particle without a polymer). Additionally, the recited process is performed without the presence of the claimed magnetic cores. Therefore, it is unclear if whether the magnetic particle is a magnetic hypercrosslinked polymer poly(VBC-co-DVB) or simply a magnetic particle without polymer. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by a process to produce a hypercrosslinked polymer poly(VBC-co-DVB) is required to be the final product on the magnetic particle. As a reminder, the claimed product can be defined without the process. Thus, it is unclear to what is the final product to the claimed product. Claims 29-31, 46, 55, 59-60 and 63-64 are rejected as being dependent from claim 19.
Additionally, claims 19 and 63 are unclear to the polymer matrix comprises a hypercrosslinked polymer with a particle size in the range from 10 to 50 micrometers. As stated below, Gao’s hypercrosslinked polymer microparticle is 1.3 microparticle (much smaller) but the surface area reach 500 m2/g after Friedel-Crafts reaction (see abstract) whereas claims 1 and 61 having a much larger particle size with a surface area of 300 m2/g. Claim 1 could have a surface area of less than 300 m2/g, as it has not been defined. Therefore, there is question or doubt as to whether the feature introduced by a process producing hypercrosslinked polymer is required.
Maintained Rejections
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 1-3, 6, 19, 23-25, 29-31, 40, 46, 49 and 55-64 are rejected under 35 U.S.C. 103 as being unpatentable over Gao et al. (“Magnetic solid-phase extraction using magnetic hypercrosslinked polymer for rapid determination of illegal drugs in urine”, J. Sep. Sci. 2011, 34, 3083–3091) in view of Tai et al. (“Synthesis of Fe3O4@poly(methylmethacrylate-co-divinylbenzene) magnetic porous microspheres and their application in the separation of phenol from aqueous solutions”, Journal of Colloid and interface Science, vol. 360, pgs. 731-738, published 05/04/2011, of record dated 09/18/2024) and Wang et al. (US Patent No. 5395688, published 03/07/1995, of record dated 09/18/2024), as evidenced by Qiang Gao et al. (“Rapid magnetic solid-phase extraction based on magnetite/silica/poly(methacrylic acid–co–ethyleneglycoldimethacrylate) composite microspheres for the determination of sulfonamide in milk samples”, Journal of Chromatography A, 1217 (2010), pgs. 5602–5609) and NIST.gov (retrieved on 04/01/2022, of record dated 04/26/2022).
With respect to claims 1 and 19, Gao teaches a magnetic material Fe3O4/SiO2/P(MAA-co-VBC-co-DVB) microspheres was prepared via hypercrosslinking of it precursor which was produced via precipitation polymerization of methacrylic acid (MAA), vinylbenzyl chloride (VBC), and divinylbenzene (DVB) in the presence of Fe3O4/SiO2 submicrospheres and it was found that this material had remarkable features such as large surface area (500m2/g) (see abstract; pg. 3085, right col., last paragraph; and Figs. 1-2). Gao teaches the polymer contains methacrylic acid (MAA) which reads on the surface of the polymer matrix (P) is functionalized with an hydroxyl group (-OH). Because the claims recite the polymer matrix comprises (open-ended limitation), the presence of methacrylic acid with the side chain of -OH would be on the surface of the polymer. Gao teaches P(MAA-co-VBC-co-DVB) has been formed on Fe3O4/SiO2 core (see pg. 3086, right col., bottom of para. 1). Gao teaches oleic acid (pg. 3084, left col., para. 1 of section 2.1).
In particular, Gao also teaches Fe3O4/SiO2 submicrospheres were prepared according to reference [18] (see pg. 3085, left col., para. 1). Reference [18] is Qiang Gao et al. The evidentiary teachings of Qiang Gao indicate that Fe3O4 nanoparticles capped with oleic acid were synthesized by chemical co-precipitation of Fe3+ and Fe2+ under basic condition (see pg. 5603, left col., section 2.2). Additionally, Qiang Gao discloses that Fe3O4 nanoparticles were prepared by the chemical co-precipitation of Fe(III)/Fe(II) salts via a well-known sol-gel process and subsequently stabilized by oleic and clearly, Fe3O4 is made up of monodisperse and sphere-like nanoparticles with a mean size of about 10 nm and the MPS-modified Fe3O4/SiO2 microparticles are fairly uniform inside and shape with a mean diameter around 1.3 micrometer (pg. 5604, right col., section 3.1). Thus, Gao teaches wherein the magnetic core M comprises at least two nanoparticles and a coating C1, wherein the coating C1 is a tenside (i.e., oleic acid) wherein the at least two magnetic cores comprise at least two iron oxide nanoparticles, wherein the iron oxide comprises Fe3O4 wherein the polymer matrix comprises a co-polymer that has divinylbenzene and vinyl benzyl chloride (i.e., VBC-co-DVB).
With respect to the product-by-process recitations, MPEP 2113 states: “[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) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim").
Although Gao teaches a hypercrosslinked magnetic particles comprising a polymer matrix that has vinyl benzyl chloride-co-divinylbenzene and forming microparticles with 10 nm Fe3O4 nanoparticles, the reference does not explicitly teach at least two magnetic cores (i.e., two separated iron oxide nanoparticles), 5-90 vol% of all monomeric building blocks are divinylbenzenes, a polymer with a crosslinking degree of at least 5%. Further, the reference does not teach the particle size is in the range of from 10 to 50 micrometers and a saturation magnetization of at least 5 A m2/kg.
Tai teaches a simple strategy to fabricate magnetic porous microspheres of Fe3O4@poly(methylmethacrylate-co-divinylbenzene) (poly(MMA-co-DVB) was demonstrated and the magnetic microspheres consisting of polymer-coated iron nanoparticles (see abstract). Tai teaches a successful adsorption of oleic acid on the surface of Fe3O4 nanoparticles (see Scheme 1), Table 1 shows the different amounts of DVB volumes are contained in the microspheres. Tai teaches that the oleic acid-coated Fe3O4 nanoparticles is comparatively uniform; in addition, oleic acid-coated magnetite nanoparticles are easily to aggregate (see pg. 733, left col., para. 1 and Figs. 1A-C). As stated above, the instant specification has not defined the term core and; therefore, the Fe3O4 nanoparticles inside the microsphere would read on the magnetic core comprises at least two nanoparticles.
Figs. 2B, 2D and 2E show that MPMS3, MPMS4 and MPMS 10 have particle sizes overlapping with the claimed range of 10 to 50 micrometers. Tai teaches the typical characteristics of the superparamagnetic behavior and the saturation magnetizations of MPMS4 and MPMS10 are 24.1 and 9.8 emu/g, respectively, and the lower saturation magnetization can be ascribed to the lower magnetite content of the magnetic microspheres (see pg. 735, left col., para. 2 and Fig. 6). The evidentiary teachings of NIST.gov indicate that emu/g is equal to A m2/g (see σ).
Wang teaches polymeric particles with sizes ranging from 1 to 100 micron and core particles and transformed into magnetically responsive polymer particles (see abstract). Wang teaches developing magnetic polymer particles for fast magnetic separation (see col. 2, lines 28-30). Wang further teaches the polymer particles with various surface charges and functional groups for passive adsorption or covalent coupling of biological material (see col. 2, lines 31-34). Wang teaches the magnetic particles are coated with protective layer of polymer such as polystyrene, to prevent the metal oxide from falling off and the magnetic particles are coated with another layer of functionalized polymer to provide functional groups such as carboxyl or hydroxyl for covalent coupling of biological material (see col. 3, lines 33-41). Wang further teaches polymerization with a crosslinking agent such as divinyl benzene (see col. 3, lines 64-66) and containing 4% of divinylbenzene cross linked polystyrene beads and produces carboxyl magnetic beads (see Example 13).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have used the magnetic hypercrosslinked microspheres as taught by Gao with magnetic cores and high saturation magnetizations as taught by Tai because Gao teaches the microspheres are extracted through magnetic response in solution (see Fig. 2) and Tai teaches the critical characteristics of a magnetic polymer microsphere are saturation magnetizations and having superparamagnetic behavior for separation. Because Gao and Tai recognize magnetic extraction for its polymeric microspheres, it would have been obvious to the person to have contained a plurality of Fe3O4 nanoparticles with at least 9.8 emu/g as taught by Tai in Gao’s magnetic hypercrosslinked microspheres for the purpose of increasing the responsiveness in magnetic separation or produces superparamagnetic behavior.
Furthermore, it would have been obvious to have increased the magnetic microsphere size of Gao to at least 10 microns as taught by Tai and Wang because Tai teaches the magnetic polymer microsphere of at least 10 microns (MPMS10 or MPMS4) produces a high saturation magnetization ( at least 9.8 emu/g) and superparamagnetic behavior from high contents of iron oxide nanoparticles and Wang teaches magnetically responsive polymer particles are recognized at various sizes ranging from 1 to 100 micron. Thus, it would have been obvious to have increased the magnetic hypercrosslinked microspheres to 10 microns to become superparamagnetic or strongly magnetized/separated in the presence of a magnet. Additionally, even though Tai and Wang recognize a particle size of at least 10 microns, the references do not explicitly teach the claimed range from 10 to 50. Because the claimed range overlaps with the range of the microparticles disclosed by the prior art, a prima facie case of obviousness exists.
Because (1) Gao, Tai and Wang teach divinylbenzene for co-polymerization, (2) Gao recognizes hypercrosslinking with divinylbenzene and (3) Tai recognizes various amounts of divinylbenzene are used for polymerization, it would have been obvious for the artisan to discover an optimum volume range of crosslinking agent with respect to the particle size through routine experimentation for a result effective variable in hypercrosslinking. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum of workable ranges by routine experimentation” Application of Aller, 220 F.2d 454, 456, 105 USPQ 233, 235-236 (C.C.P.A. 1955). “No invention is involved in discovering optimum ranges of a process by routine experimentation.” Id. at 458, 105 USPQ at 236-237. The “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” Since applicant has not disclosed that the claimed volume concentrations are for any particular purpose or solve any stated problem. It would have been obvious for the artisan o to discover the optimum effective range in adding divinylbenzenes for a particular polymer particle size. Additionally, because Gao teaches co-polymerizing to produce a hypercrosslinked polymer, it would have been obvious that the crosslinking degree is at least 5%, as hypercrosslinking contains an extremely high degree of crosslinking.
The person would have reasonably expected success in modifying Gao’s magnetic hypercrosslinked microspheres with larger microparticle sizes and a plurality of Fe3O4 nanoparticles because it has been well recognized by Tai and Wang to produce magnetic microparticles in various sizes, and further, Gao, Tai and Wang recognize the use of polymer coating with divinylbenzene onto magnetic particles for separation.
With respect to claims 2-3, Gao teaches pore size for the hypercrosslinked particle is 2.6 nm (see Table 1). Because Gao teaches pore size is 2.6 and hypercrosslinked polymer, Gao’s pore sizes read on the claimed pore sizes.
With respect to claim 6, Gao does not teach superparamagnetic. As stated above, Tai teaches superparamagnetic behavior. Because Gao and Tai recognize magnetic extraction for its polymeric microspheres, it would have been obvious to the person to have contained a plurality of Fe3O4 nanoparticles in Gao’s magnetic hypercrosslinked microspheres for the purpose of increasing the responsiveness of magnetic separation.
With respect to claims 23-25 and 29-31, as stated above, Gao does not teach the claimed particle size ranges. Tai teaches in Figs. 2B and 2D show that MPMS3 and MPMS10 have particle sizes overlapping with the claimed range of 10 to 50 micrometers. Additionally, Wang teaches polymeric particles with sizes ranging from 1 to 100 micron (see abstract). It would have been obvious to have increased the magnetic hypercrosslinked microspheres to 10 microns to become strongly magnetized/separated in the presence of a magnet. Additionally, even though Tai and Wang recognize a particle size of at least 10 microns, the references do not explicitly teach the claimed ranges. Because the claimed range overlaps with the range of the microparticles disclosed by the prior art, a prima facie case of obviousness exists.
With respect to claims 40 and 46, Gao teaches a surface area of 500 m2/g (see abstract).
With respect to claims 49 and 55, as stated above, Gao does not explicitly teach the claimed saturation magnetization. Tai teaches the magnetic polymer microsphere of at least 10 microns (MPMS10) produces a high saturation magnetization (9.8 emu/g) (see pg. 735, left col., para. 2 and Fig. 6). Because Gao and Tai recognize magnetic extraction for its polymeric microspheres, it would have been obvious to the person to have contained a plurality of Fe3O4 nanoparticles with at least 9.8 emu/g of Tai in Gao’s magnetic hypercrosslinked microspheres for the purpose of increasing the responsiveness in magnetic separation.
With respect to claims 56, as stated above, Qiang Gao indicate that Fe3O4 nanoparticles capped with oleic acid were synthesized by chemical co-precipitation of Fe3+ and Fe2+ under basic condition (see pg. 5603, left col., section 2.2) and Fe3O4 is made up of monodisperse and sphere-like nanoparticles with a mean size of about 10 nm (pg. 5604, right col., section 3.1). As stated above, Gao does not explicitly teach at least two cores. Because Gao and Tai recognize magnetic extraction for its polymeric microspheres, it would have been obvious to the person to have contained a plurality of slightly different Fe3O4 nanoparticle sizes with a mean size of 10 nm in Gao’s magnetic hypercrosslinked microspheres for the purpose of increasing the responsiveness in magnetic separation.
With respect to claims 57-60, these limitations are directed to the product-by-process. As stated above, the claim is considered indefinite because there is a question or doubt as to whether the feature introduced by a process to produce a hypercrosslinked polymer is required to be the final product on the magnetic particle. Meanwhile, Gao does recite polymerization with dinvinylbenzene and vinylbenzylchloride.
With respect to claims 61 and 63, Gao teaches the Fe3O4/SiO2/P(MAA-co-VBC-co-DVB) reach up to 500m2/g after Friefel-Crafts reaction, indicating the hypercrosslinked network of P(MAA-co-VBC-co-DVB) has been formed (see pg. 3086, right col., bottom of para. 1).
With respect to claims 62 and 64, Gao does not teach the magnetic particle has a particle size in the range of 20-35 micrometer and a saturation magnetization of at least 6 A m2/kg. As discussed above, Tai and Wang teach the claimed particle size and saturation magnetization. It would have been obvious to have increased the magnetic microsphere size of Gao to at least 20 microns as taught by Wang because Tai does teach the magnetic polymer microsphere can be increased with respect to high saturation magnetization ( at least 9.8 emu/g) and superparamagnetic behavior from high contents of iron oxide nanoparticles and Wang teaches magnetically responsive polymer particles are recognized at various sizes ranging from 1 to 100 microns. Thus, it would have been obvious to have increased the magnetic hypercrosslinked microspheres to 20-35 microns to become superparamagnetic or strongly magnetized/separated in the presence of a magnet. Because the claimed range overlaps with the range of the microparticles disclosed by the prior art, a prima facie case of obviousness exists.
Claims 9-10, 12, and 57-64 are rejected under 35 U.S.C. 103 as being unpatentable over Gao et al. in view of Tai et al. and Wang et al., as evidenced by Qiang Gao et al. and NIST.gov, as applied to claim 1 above, and further in view of Xu et al. (Polymer Chemistry, vol. 6, pgs. 2892-2899, published 02/13/2015, of record dated 04/26/2022).
Gao, Tai and Wang references have been discussed in the above rejection. Tai shows aggregated Fe3O4 inside the microspheres (see Figs. 1-2). However, the references do not explicitly teach the two magnetic cores comprise a supraparticle (claims 9-10 and 12).
Xu teaches microspheres consisting of an Fe3O4 supraparticle with divinyl benzene and vinylbenzene chloride (DVB-co-VBC) (see abstract and Scheme 1). Xu teaches Friedel-Craft-type hypercrosslinking treatment (abstract). Xu teaches rapid magnetic separation (see pg. 2898, bottom of Conclusion). Xu teaches in Fig. 4 that the magnetic hysteresis curve and the saturation magnetization for Fe3O4@POP-3 and Fe3O4@PS was up to 14.1 emu/g and 67.3 emu/g for Fe3O4 supraparticles (see pg. 2897, left col., para. 1 and Fig. 4).
Thus, it would have been obvious to have produced the magnetic hypercrosslinked microparticles as taught by of Gao, Tai and Wang with a Fe3O4 supraparticle as taught by Xu because Xu teaches the saturation magnetization of the supraparticle coated with hypercrosslinking polymers was extremely high and produces rapid magnetic separation (up to 14.1 emu/g and 67.3 emu/g). Because Gao and Tai recognize magnetic extraction for its polymeric microspheres and Tai shows aggregated Fe3O4 aggregates, it would have been obvious to the person to have produced a magnetic supraparticle in Gao’s increased microsphere size for the purpose of increasing a rapid response to the magnetic separation.
The person would have reasonably expected success in using a supraparticle because it has been well understood by the references to encapsulate Fe3O4 nanoparticles in polymers containing DVB-co-VBC.
With respect to claim 12, Tai teaches oleic acid was used to modify the Fe3O4 nanoparticles (see Scheme 1), which would read on the fatty acid and derivative thereof.
With respect tot claims 57 and 59, Gao does not explicitly teach the crosslinked polymer matrix consists of vinylbenzylchloride and divinylbenzene. Xu teaches hyper-crosslinking with poly (DVB-co-VBC) (see abstract and Scheme 1). Therefore, it would have been obvious to have hypercrosslinked with poly (DVB-co-VBC).
With respect to claims 58 and 60-64, it has been discussed in the above rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3, 6, 19, 23-25, 29-31, 40, 46, 49 and 55-64 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 18338633 (‘633) (of record) in view of Gao et al. (“Magnetic solid-phase extraction using magnetic hypercrosslinked polymer for rapid determination of illegal drugs in urine”, J. Sep. Sci. 2011, 34, 3083–3091), Tai et al. (“Synthesis of Fe3O4@poly(methylmethacrylate-co-divinylbenzene) magnetic porous microspheres and their application in the separation of phenol from aqueous solutions”, Journal of Colloid and interface Science, vol. 360, pgs. 731-738, published 05/04/2011, of record dated 09/18/2024, of record) and Wang et al. (US Patent No. 5395688, published 03/07/1995, of record dated 09/18/2024), as evidenced by Qiang Gao et al. (“Rapid magnetic solid-phase extraction based on magnetite/silica/poly(methacrylic acid–co–ethyleneglycoldimethacrylate) composite microspheres for the determination of sulfonamide in milk samples”, Journal of Chromatography A, 1217 (2010), pgs. 5602–5609 and NIST.gov (retrieved on 04/01/2022, of record dated 04/26/2022).
Copending Application No.’633 recites a magnetic particle obtained by the method of claim 1. Copending claim 1 recites the product of a magnetic particle comprising matrix (P) and at least one magnetic core (M) wherein the polymer matrix (P) comprises at least one hypercrosslinked polymer wherein the magnetic particle has a particle size in the range of 5 to 40 micrometers and the least one magnetic core is embedded in a polymer matrix.
However, copending Application No. ‘633 does not explicitly recite a particle size of 10-50 µm wherein at least two magnetic cores (M) comprise two Fe3O4 iron oxide nanoparticles with a coating C1 that is a tenside; the polymer matrix (P) is functionalized with -OH; and the magnetic particle has a saturation magnetization of at least 5 A m2/kg, wherein 5-90 vol% of all monomeric building blocks are divinylbenzenes and a polymer with a crosslinking degree of at least 5%. Gao, Tai, Wang, as evidenced by Qiang Gao and NIST.gov have been discussed in the above rejection.
It would have been obvious to the person at the time of filing to have used the magnetic hypercrosslinked polymer microparticle as recited by the copending Application ‘633 with oleic-coated iron oxide nanoparticles as taught by Tai because Tai teaches that the oleic acid-coated Fe3O4 nanoparticles is comparatively uniform and oleic acid-coated magnetite nanoparticles are easily to aggregate which produces a saturation magnetizations of 24.1 and 9.8 emu/g for effective separation of particle size of at least 10 microns. As stated above, NIST.gov indicates that emu/g is equal to A m2/g (see σ). Additionally, it would have been obvious to have used DVB-co-VBC of Gao to produce the hypercrosslinked polymer because DVB can be highly crosslinked. Futhermore, it would have been obvious to have coated the surface of the hypercrosslinked polymer as recited in the copending Application No. ‘633 with carboxyl and hydroxyl functional groups as taught by Gao and Wang because Wang teaches magnetic separation with various surface charges and functional groups for passive adsorption or covalent coupling of biological material.
The person would have reasonably expected success in producing the microparticles of Gao with the recited copending claim because the copending claims recites a magnetic hypercrosslinked polymer particle.
With respect to claims 2-3, copending Application No. ‘633 does not recite the claimed pore sizes. Gao teaches pore size for the hypercrosslinked particle is 2.6 nm (see Table 1). Because Gao teaches pore size is 2.6 and hypercrosslinked polymer, Gao’s pore sizes read on the claimed pore sizes. Thus, it would have been obvious that the hypercrosslinked polymer of the copending Application No. ‘633 using DVB-VBC would produce the pore size as taught by Gao because it is being hypercrosslinked.
With respect to claim 6, copending Application No. ‘633 does not recite the magnetic particle is superparamagnetic. Tai teaches the microspheres have superparamagnetic characteristic (see abstract). It would have been obvious to have used the magnetic hypercrosslinked polymer particle as recited in copending Application No. ‘633 with oleic-coated iron oxide nanoparticles as taught by Tai because Tai teaches Fe3O4 nanoparticles produces superparamagnetic for an effective separation.
With respect to claims 23-25 and 29-31, copending Application No. ‘633 does not explicitly recite the claimed particle size ranges. However, it would have been obvious to the person to have produced the magnetic hypercrosslinked polymer microspheres with the claimed ranges because copending Application No. ‘633 recites the particle size in the range of 5 to 40 micrometer and Wang teaches that the polymeric particles can be produced in the range of 1 to 100 micron. Because the claimed range overlaps with the range disclosed by the copending Application and prior art, a prima facie case of obviousness exists.
With respect to claims 40 and 46, the copending Application No. ‘633 does not teach the claimed surface area. Gao teaches a surface area of 500 m2/g (see abstract). It would have been obvious to have produced the claimed surface area from Gao’s DVB-co-VBC.
With respect to claims 49 and 55, copending Application No. ‘633 does not recite a saturation of at least 6 A m2/kg. It would have been obvious to have used the magnetic hypercrosslinked polymer microparticle as recited in copending Application No. ‘633 with oleic-coated iron oxide nanoparticles as taught by Tai because Tai teaches that the oleic acid-coated Fe3O4 nanoparticles is comparatively uniform and oleic acid-coated magnetite nanoparticles are easily to aggregate which produces saturation magnetizations for effective separation.
With respect to claim 56, copending Application No. ‘633 does not recite different iron oxide nanoparticles. As evidenced by Qiang Gao that Fe3O4 nanoparticles capped with oleic acid were synthesized by chemical co-precipitation of Fe3+ and Fe2+ under basic condition (see pg. 5603, left col., section 2.2) and Fe3O4 has a mean size of about 10 nm (pg. 5604, right col., section 3.1). It would have been obvious to the person to have contained a plurality of slightly different Fe3O4 nanoparticle sizes with a mean size for the magnetic hypercrosslinked microspheres because the nature of producing Fe3O4 nanoparticles in solution are not exactly identical.
With respect to claims 57-64, as stated above, the claim is considered indefinite because there is a question or doubt as to whether the feature introduced by a process to produce a hypercrosslinked polymer is required to be the final product on the magnetic particle. These claimed limitations are directed to the process recitations of claims 1 and 19. For compact prosecution, copending Application No. ‘633 does not recite the crosslinked polymer matrix consists of VBC and DVB, the claimed surface area, claimed size, and claimed function. Gao, Tai, and Wang have been discussed above. It would have been obvious to have used VBC and DVB of Gao because these components produce a hypercrosslinked polymer for magnetic response. Additionally, surface area, sizes, and magnetism function are well recognized in the art for producing polymer coated microparticles.
Claims 9-10, and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 18338633 in view of Gao et al. in view of Tai et al. and Wang et al., as evidenced by Qiang Gao et al. and NIST.gov, as applied to claim 1 above, and further in view of Xu et al. (Polymer Chemistry, vol. 6, pgs. 2892-2899, published 02/13/2015, of record dated 04/26/2022).
Copending Application No. ‘633 has been discussed above but copending Application does not recite the at least two magnetic cores comprise a supraparticle (claims 9-10) and the at least two magnetic cores comprise a supraparticle and at least one coating of fatty acid (claim 12). Gao, Tai, Wang and Xu, as evidenced by Qiang Gao and NIST.gov have been discussed in the above rejection.
However, it would have been obvious to have formed the magnetic core as recited in copending Application No. ‘633 into a supraparticle structure as taught by Xu and reasonably expected success because Xu teaches the saturation magnetization of the supraparticle coated with hypercrosslinked polymers was extremely high. Therefore, it would have been obvious for the artisan to have produced Fe3O4 supraparticle structure for the magnetic hypercrosslinked polymer microparticle of the copending Application for rapid magnetic separation. Meanwhile, Tai teaches oleic acid was used to modify the Fe3O4 nanoparticles (see Scheme 1), which would read on the fatty acid. Thus, it would have been obvious to have used oleic acid because oleic acid-coated magnetite nanoparticles are easily aggregated which produces high saturation magnetizations as intended with supraparticles.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments filed 02/05/2026 with respect to 35 U.S.C. 112(b) rejection have been considered but are moot because Applicant’s amendments necessitated a new ground of 112(b) issues with the added recitations of product-by-process.
Meanwhile, Applicant's arguments with respect to 35 U.S.C 103 and nonstatutory double patenting rejections have been fully considered but they are not persuasive. The rejections have been modified but maintained.
35 U.S.C. 103 Rejection
Applicant argues on pages 12-13 of the Remarks that the rejection is impermissible hindsight reconstruction because the rejection requires the combination of five documents. Applicant further argues on page 13 Gao does not disclose a tenside coating in the final product. Applicant argues that the office relies on Qiang Gao (evidentiary art) for producing Fe3O4 nanoparticles capped with oleic acid. However, Gao’s final product is Fe3O4/SiO2/P(MAA-co-VBC-co-DVB), is silica-coated system. Applicant further argues that oleic acid referenced in Qiang Gao is used in the intermediate synthesis of FeO4 nanoparticles, which are subsequently coated with silica before incorporation into the polymer matrix. Applicant also argues that Gao’s final hypercrosslinked microspheres are submicrometer in size.
Applicant further argues on page 14 that Tai nor Wang demonstrates that a hypercrosslinked magnetic polymer particle can be produced at 10-50 µm while simultaneously maintaining both high saturation magnetization and high specific surface area as claimed. Applicant argues that Gao has a saturation magnetization of less than the claimed “at least 5 A m2/kg.” Applicant argues that the cited references are in direct conflict on the question of saturation magnetization. Tai demonstrates that magnetic polymer microspheres can achieve high saturation magnetization value without hypercrosslinking and Gao demonstrates that hypercrosslinked magnetic polymer microspheres achieve only low values. Therefore, there is no reasonable expectation of success in the combination.
Additionally, Applicant argues on page 15 that the amended claim 1 requires the reaction in (b) is not carried out in a solvent comprising dichloroethane or other organic halides. Applicant argues on page 16 that Gao’s co-polymer is different from the claimed invention. Applicant argues that the DVB volume percentage is not a result of routine optimization. In particular, the specific interplay between is not recognized in any of the cited references. Applicant argues that the product-by-process limitations produce a structurally distinct product. Applicant argues unexpected results.
The arguments are not found persuasive for the following reasons. The references used in the obviousness rejection (above) all retain the concept of polymer coated magnetic microparticles for magnetism. Also, as stated above in the 112(b) rejection, there is a question or doubt as to whether the feature introduced by a process to produce a hypercrosslinked polymer (e.g., hypercrosslinked poly(VBC-co-DVB)) is required to be the final product on the magnetic particle. As a reminder, the claimed product can be defined without the process. Thus, it is unclear to what is the final product of the claimed product. Meanwhile, references that are used as evidentiary art are not prior art references nor part of the obviousness rejection but rather providing the support to the prior references. In particular, Qiang Gao is an evidentiary reference to support the Gao prior art reference because Gao has disclosed that its Fe3O4/SiO2 particles were prepared according to Qiang Gao (reference [18]). Explicitly, Qiang Gao has stated that the process of producing Fe3O4 nanoparticles was capped with oleic acid (see above). Meanwhile, the claims only require the magnetic core to contain the nanoparticles and a coating of tenside (i.e., oleic acid). The claimed product has an open-ended recitation and does not limit to any specific top coating with tenside nor limit the presence of a silica shell. Both Gao and Qiang Gao do not teach oleic acid as an intermediate that would be removed or disappeared after the addition of silica. There is no passage in said references that would indicate oleic acid as an intermediate. Meanwhile, Applicant assumes that the addition of coating silica would remove oleic acid from capping Fe3O4, then the logic would also apply to the addition of polymer coating the surfaces of Fe3O4 particles comprising oleic acid.
Also, as stated above in the 112(b) rejection, there is a question or doubt as to whether the feature introduced by a process to produce a hypercrosslinked polymer (e.g., hypercrosslinked poly(VBC-co-DVB)) is required to be the final product on the magnetic particle. As a reminder, the claimed product can be defined without the process. In particular, the hypercrosslinking process as recited does not even require the presence of iron oxide nanoparticles. Meanwhile, Tai and Wang do recognize a polymer matrix coating magnetic particles within the claimed micrometers wherein the magnetic cores comprise Fe3O4 nanoparticles which produces the claimed saturation magnetization (i.e., magnetically responsive polymer particle). Although Gao’s Gao does not disclose its microparticles are in the claimed range from 10 to 50 micrometers, Gao recognizes that the particles are microparticles (i.e., microns). The purpose of citing the mean size of about 10 nm and the MPS-modified Fe3O4/SiO2 microparticles are fairly uniform inside and shape with a mean diameter around 1.3 micrometer (see above) is to establish the plurality of iron oxide nanoparticles in Fe3O4/SiO2 microparticles. Meanwhile, the concept of microparticles that fall within the claimed microparticle range has been well understood by Tai and Wang. Additionally, the concept of saturation magnetization is also well understood by Gao, Tai, and Wang because it boils down to the ability to respond to a magnet for separation, which Gao, Tai, and Wang have established. Thus, it is well recognized in the art to produce a microparticle within the claimed size and magnetic response. Importantly, the claimed iron oxide nanoparticles do not require a particular size and the claim only requires “the least two magnetic cores comprise at least two iron oxide nanoparticles” (emphasis added). Gao does establish a plurality of iron oxide nanoparticles in its hypercrosslinked microparticle.
With respect to product-by-process claims, the patentability is based on the structure of the magnetic particle (not a composition) and not the process of producing the product. With respect to unexpected results, the claims need to be in commensurate with the instant specification.
Non-statutory Double Patenting Rejection:
Applicant states that the rejection be held in abeyance until a resolution for the pending claims. The arguments are not found persuasive for the reasons stated above.
Conclusion
No claim is allowed.
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.
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/N.P.N/Examiner, Art Unit 1678
/SHAFIQUL HAQ/Primary Examiner, Art Unit 1678
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