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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 27 May 2025 has been entered.
Status of the Claims
The status of the claims is as follows:
Claims 1, 9-10, and 13 are pending.
Claims 13 remains withdrawn
Claims 1 and 9-10 have been hereby examined.
Claim Rejections - 35 USC § 103
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.
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.
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.
Claims 1 and 9-10 remain rejected under 35 U.S.C. 103 as being unpatentable over Strano et al (2016. WO 2017/079676. Nanobionic light emitting plants) and Khattab et al (2019. Luminescent plant root: A step toward electricity-free natural lighting plants. Journal of Molecular Structure: 249-253; Available online 29 August 2018). The rejection is repeated for the reasons of record as set forth in the Office action Mailed 19 February 2026, as applied to claims 1 and 9-10. Applicant’s arguments filed 15 May 2026 have been fully considered but they are not persuasive.
The claims are broadly drawn to a plant comprising a plant structure and a phosphorescent light capacitor in a portion of the plant structure wherein the phosphorescent light capacitor comprises a phosphorescent nanoparticle of between 162.3 nm to 944 nm size, with a charge of 0.57 +/- 0.21 mV, wherein the phosphorescent light capacitor is capable of storing captured light and capable of glowing in dark conditions; wherein the phosphorescent light capacitor is distributed inside the plant’s leaves in spongy mesophyll region without penetration inside the plant’s cell and wherein the silica coated phosphorescent nanoparticle is a strontium aluminate nanoparticle.
Strano et al teach a method to produce photosynthetic organisms using nanobionic engineering [entire document]. Strano et al teach that the photosynthetic composition can be localized in an organelle, a cell or a tissue, including the mesophyll of the plant (which reads on distributed in the plant’s leaves in spongy mesophyll region without penetration inside the plant’s cell) [page 2, lines 6-7 and 10]. Strano et al teach the nanoparticles, the size, shape and potential of the particles and the distribution within the plant tissue (FIG 1A and 1B; para. Bridging pages 3-4]. FIG 1A-2 shows the PLGA-Luciferin (PLGA-LH) nanoparticle with a diameter of 200-300 nm and a Zeta potential of 0.48 mV [which reads on a phosphorescent nanoparticle of between 162.3 nm to 944 nm size, with a charge of 0.57 +/-0.21 mV]. FIG 4A-I show the light emitting plant and illumination. Strano et al teach delivering a composition into a plant and localizing the composition in a tissue of the plant including the mesophyll [page 7, lines 12-19; FIG 1A]. Strano et al teach that the nanoparticles can include silica (page 8, lines 5-7). Strano et al teach that one advantage of this nanobionic approach is that the function of specific regions within tissues can be targeted and that some nanoparticles are located in guard cells, but mostly in air spaces surrounding sponge mesophyll cells (page 14, lines 8-21). Strano et al teach that any variety of nanoparticles can be use which include photoluminescent nanoparticle and that the photoluminescent nanoparticles exhibit phosphorescence [which reads on phosphorescent nanoparticles]. Strano et al also teach that a nanoparticle can include noncarbon nanoparticles including ceramic with one or more metals including strontium and aluminum.
Although Strano et al teach that the nanoparticles can include strontium and aluminum, Strano et al does not specifically teach wherein the silica coated phosphorescent nanoparticle is a silica coated strontium aluminate nanoparticle.
Khattab et al teach introducing a strontium aluminate pigment phosphor doped with europium and dysprosium into a plant root [entire document]. Lanthanide-doped strontium aluminate are distinguished by photoluminescence characteristics and their ability to store light energy which is gained by their excitation when exposed to an illumination light supply [page 249, left col., paras. 1 and 2]. A photoluminescent material is composed of crystals of elemental aggregations and energy traps and after the crystals have been excited by a light source, the light can be cut off, and the crystals will stay excited and continue to discharge light which is typically supported by energy traps such as Eu(II) and Dy(III) to leading to an extended phosphorescence period (which reads on wherein the phosphorescent light capacitor is capable of storing captured light and capable of glowing in dark conditions) [page 249, rt. col. para. 1]. The role of Dy(III) was to motivate the formation of hole traps which can be thermally discharged after the illumination source was removed and the discharged holes transfer to Eu(II) and return back to ground state of Eu(II) producing prolonged light emission [page 252, lf. col., para. 1]. The treated artichoke roots exhibited phosphorescent properties under UV light and after illumination of the roots under ultraviolet light for 5 min, the UV light supply was turned off, and the fading emissions was recorded as a function of time at the wavelength of maximum emission [page 250, rt. col., para. 3]. The phosphorescent effects were confirmed by excitation and phosphorescence emission spectra, through the appearance of two broad and strong excitation and emissions peaks in the ultraviolet [para. Bridging pages 250-251]. The phosphorescence profile of luminescent roots showed characteristics different than that of the solid material which possesses only one emission peak at 520 nm [para. Bridging pages 250-251; Figs. 1-4].
It would have been obvious to one of ordinary skill in the art to combine the teachings of Strano and Khattab et al and use strontium aluminate as taught by Khattab as the nanoparticle in the phosphorescent light capacitor as taught by Strano et al. Strano et al teach a silica coated nanoparticle of between 162.3 nm to 944 nm size, with a charge of 0.57 +/1 0.21 mV that is distributed inside the plant’s leaves in the spongy mesophyll region without penetration inside the plant’s cell. Straneo et al also teach that the composition produces phosphorescent light in plant tissues. Khattab et al teach that lanthanide-doped strontium aluminate are distinguished by photoluminescence characteristics and their ability to store light energy which is gained by their excitation when exposed to an illumination light supply. Khattab et al further teach that the photoluminescent material is composed of crystals of elemental aggregations and energy traps and after the crystals have been excited by a light source, the light can be cut off, and the crystals will stay excited and continue to discharge light which is typically supported by energy traps such as Eu(II) and Dy(III) to leading to an extended phosphorescence period. One would have been motivated to use strontium aluminate as the silica coated nanoparticle because Strano et al teach that a nanoparticle can include noncarbon nanoparticles including ceramic with one or more metals including strontium and aluminum. One would also have been motivated to use strontium aluminate as the silica coated nanoparticle to capture and store the light energy produced by the phosphorescent light produced in the plant tissues (Strano et al) and extend the phosphorescence period as taught by Khattab et al. One would have had a reasonable expectation of success given the success of Strano et al and their suggestion to include strontium and aluminum in the phosphorescent nanoparticle and the success of the strontium aluminate for capturing and storing light and later glowing in the dark as shown with teaching of Khattab et al.
Applicant’s Arguments dated 15 May 2026
Applicant’s urge that the PLGA-Luciferin nanoparticles of Strano are not a phosphorescent nanoparticles. [response page 4].
These arguments have been carefully considered but are not deemed persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). It is the combination of Khattab and Strano that make obvious the claimed invention. Strano et al teach a silica coated nanoparticle of between 162.3 nm to 944 nm size, with a charge of 0.57 +/1 0.21 mV that is distributed inside the plant’s leaves in the spongy mesophyll region without penetration inside the plant’s cell. Straneo et al also teach that the composition produces phosphorescent light in plant tissues. Khattab et al teach that lanthanide-doped strontium aluminate are distinguished by photoluminescence characteristics and their ability to store light energy which is gained by their excitation when exposed to an illumination light supply. Khattab et al further teach that the photoluminescent material is composed of crystals of elemental aggregations and energy traps and after the crystals have been excited by a light source, the light can be cut off, and the crystals will stay excited and continue to discharge light which is typically supported by energy traps such as Eu(II) and Dy(III) to leading to an extended phosphorescence period. One would have been motivated to use strontium aluminate as the silica coated nanoparticle because Strano et al teach that a nanoparticle can include noncarbon nanoparticles including ceramic with one or more metals including strontium and aluminum. One would also have been motivated to use strontium aluminate as the silica coated nanoparticle to capture and store the light energy produced by the phosphorescent light produced in the plant tissues (Strano et al) and extend the phosphorescence period as taught by Khattab et al. One would have had a reasonable expectation of success given the success of Strano et al and their suggestion to include strontium and aluminum in the phosphorescent nanoparticle and the success of the strontium aluminate for capturing and storing light and later glowing in the dark as shown with teaching of Khattab et al. Replacing the nanoparticle of Strano with that of Kattab et al would reduce the need for additional components (enzyme plus substrate) and allow for the an extended phosphorescence period as seen with the photoluminescent materials of Khattab et al.
Applicant’s urge that Strano does disclose the use of semiconductor nanocrystal phosphors for wavelength modulation. [page 6].
These arguments have been carefully considered but are not deemed persuasive. Strano states a number of advantages of “this nanobionic approach” that include function of specific regions within tissues can be targeted [page 14, lines 9-21] and that some nanoparticles are located in guard cells, but mostly in air spaces surrounding sponge mesophyll cells. Strano also state that the ability to easily modify wild-type plants is a notable advantage of this nanobionic approach [page 14, lines 20-21]. Strano goes on to state that nanoparticle refers to articles having at least one cross-sectional dimension of less than about 1 micron or can have at least one cross-sectional dimension of less than about 500 nm, less than about 250 nm, less than about 100nm, etc. Given this description, and the knowledge in the art, one could easily design a nanoparticle of a particular dimension or size to target specific tissues or structures depending on the desired location. Strano continues the description saying a nanoparticle can be a photoluminescent nanoparticle and that photoluminescent nanoparticles exhibit phosphorescence. Strano clearly envisioned that “a variety of nanoparticles can be used” [page 16, line 24] and not limited to purposes of wavelength modulation. Strano also states that a nanoparticle can include or be a nanotube which can be a carbon nanotube or can include non-carbon nanoparticles including materials such as ceramic, metal or and other suitable materials and the ceramic can include one or more metals including Sr and Al [para bridging pages 17-18].
Applicants urge that converting the PLGA-Luciferin into a phosphorescent nanoparticle would thus undesirably remove the supply of luciferin for achieving bioluminescence.
These arguments have been carefully considered but are not deemed persuasive. Strano clearly teaches that nanoparticles could be designed to target specific tissues or structures depending on the size of the nanoparticle. Strano clearly envisioned that a variety of nanoparticles can be used including that of ceramic that include one or more metals including Sr and Al. Khattab et al teach introducing a strontium aluminate pigment phosphor doped with europium and dysprosium into a plant [entire document]. Lanthanide-doped strontium aluminate are distinguished by photoluminescence characteristics and their ability to store light energy which is gained by their excitation when exposed to an illumination light supply [page 249, left col., paras. 1 and 2]. A photoluminescent material is composed of crystals of elemental aggregations and energy traps and after the crystals have been excited by a light source, the light can be cut off, and the crystals will stay excited and continue to discharge light which is typically supported by energy traps such as Eu(II) and Dy(III) to leading to an extended phosphorescence period. Strano et al clearly suggest including strontium and aluminum in the phosphorescent nanoparticle and Khattab et al teach the success of the strontium aluminate for capturing and storing light and later glowing in the dark. Replacing the nanoparticle of Strano with that of Kattab et al would reduce the need for additional components (enzyme plus substrate) and allow for an extended phosphorescence period as seen with the photoluminescent materials of Khattab et al.
Applicants urge that Khattab does not remedy the deficiencies of Strano and that the Office’s combination of Strano and Khattab is improper. Applicants further urge that the person of ordinary skill in the art would have had no reason to combine the disclosures of Strano and Khattab because one of ordinary skill in the art, seeking to modify the method for providing light-emitting leaves described in Strano, would have had no reason to apply the teaching from a method for providing glowing roots.
These arguments have been carefully considered but are not deemed persuasive. Applicant states that the uptake mechanism of plant cells in leaves “can be different” from those of plant cells in plant roots but are also similar. Both structures are involved in uptake of water and nutrients into the plant. Strano designed nanoparticles to target specific tissues based on size of the nanoparticles. Strano et al suggest including strontium and aluminum in the phosphorescent nanoparticle and Khattab teach the success of the strontium aluminate for capturing and storing light and later glowing in the dark. Replacing the nanoparticle of Strano with that of Kattab et al would reduce the need for additional components (enzyme plus substrate) and allow for an extended phosphorescence period as seen with the photoluminescent materials of Khattab et al.
Applicant urges that neither Strano nor Khattab suggest silica-coated nanoparticles and its non-toxic advantages [page 9-10].
These arguments have been carefully considered but are not deems persuasive. Strano discloses the use of silica coating, the use of silica nanoparticles and engineering the size of nanoparticles to target specific tissues or structures. Furthermore, it was well known in the art that silica can be engineered to be different sizes, shapes and that silica coating improves chemical stability of the nanoparticle which would include the nanoparticle as taught by Khattab. The fact that silica nanoparticles have additional or latent properties including non-toxic advantages does not rebut prima facie obviousness. Recognition of another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious (MPEP 2145 II).
Conclusion
No claim is allowable.
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.
Examiner’s Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAREN M REDDEN whose telephone number is (571)270-0298. The examiner can normally be reached 730-6 Monday-Thursday.
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/KAREN M REDDEN/Primary Examiner, Art Unit 1661
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