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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/16/2026 has been entered.
Response to Amendment
The amendment filed on 01/16/2026 has been entered. Claims 1, 6-7, 10-12, 14-18, 20-21, and 23-28 are pending in the application. Claims 16, 20, 24-25, and 27-28 are withdrawn. Applicant’s amendments to the claims have not introduced new matter and are supported in the specification in at least [0042] of the instant specification.
Response to Arguments
Applicant's arguments filed 01/16/2026 have been fully considered but they are not persuasive.
Applicant argues that Haynes teaches a sufficiently broad range such that a skilled artisan would have not have specifically selected the claimed combination of 60 nm to 70 cavity with nanosized channels with a diameter of 1 to 20 nm. Applicant argues the broad range of Haynes allows the cavity to be smaller, larger or the same size as the pores while the instant invention requires the cavity is at least 3 times larger than the pores.
However, while it is noted Haynes teaches broader ranges than those claimed, the ranges of Haynes entirely encompass the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Haynes (3 to 100 nm cavity; diameter of pores and nanosized channels 2 to 50 nm) overlaps with the claimed range (cavity in the range of 60 to 70 nm; pores and nanosized channel is 1 to 20 nm). Therefore, the ranges in Haynes renders obvious the claimed range. The Office notes overlapping endpoints of the prior art and claimed ranges are sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range. See MPEP 2144.05.I.
Applicant has not provided a showing of criticality of the ranges and it remains the position of the Office that the ranges disclosed by Haynes makes the claimed limitations obvious.
Applicant argues Haynes does not provide teaching, suggestion, guidance, or motivation for a skilled artisan to arrive at a composite where the cavity is bigger than the pores. Applicant argues par. [0030] in Haynes suggests a favored cavity size of 50 nm, where the narrowest range taught by Haynes for the cavity is 20 to 50 nm.
However, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Haynes teaches overlapping ranges, as discussed above. Additionally, a skilled artisan viewing the disclosure of Haynes would also see figures 1(a)-1(c) and Fig. 2(D) in Haynes that clearly depict hollow spheres where the cavity is larger than the pore sizes.
Further, if viewing the narrow ranges disclosed in Haynes as the most preferred ranges, Haynes still teaches a cavity with a size of 20 to 50 nm and mesopores with a size from 2 to 50 nm. In this regard, Haynes teaches the cavity can be at least 3 times greater than the pores and would overlap such a range in the instant invention.
Applicant argues the large cavity of the instant invention improves the oxygen scavenging capacity of the composite by displaying the arrangement of cavity and nanosized channel, which could be due to the capillary effect. Applicant states this is neither taught nor suggested in Haynes.
However, the fact that the inventor has recognized 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. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As discussed above, Haynes teaches overlapping ranges to the claimed ranges.
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 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 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Haynes et al. (US20160193588A1) in view of Sun et al. (App. Surface Sci. 2013, 279. 1-6) and Li et al. (WO2016190815A1).
Regarding claim 1, Haynes teaches silica particles that have a hollow structure with an outer shell portion where mesoporous structures form cavities that have an average pore diameter (i.e. cavity size) of 3 to 100 nm, and that the silica particles can include one or more core metal nanoparticles within the cavities (Abstract; Fig. 2D; [0006]-[0007]; [0027]). Haynes teaches the hollow silica particles may have one or more metal nanoparticles within the composite (Abstract; [0029]), where the metal nanoparticles are no more than 100 nm in size in any dimension and the metal can include iron, as well as a wide variety of core nanoparticles ([0038]). This teaching of metal particles from Haynes differs from the claim limitation requiring metal particles are disposed in the pores of the porous silica particle nanosized channels.
Haynes teaches the silica particles have a shell with mesoporous structure (i.e. pore channels between 2 to 50 nm) where the pores extend from the surface of the silica particle to the core (i.e. cavity) ([0008], [0012]; Fig. 1D). Haynes teaching a mesoporous shell meets the limitation “nanosized channel” because mesopores are between 2 to 50 nm and furthermore Fig. 1D of Haynes, reproduced below, clearly depicts pores extending from the surface to the cavity and meets the limitation required by the claim “wherein the nanosized channel extends from a surface of the silica particle to the cavity.”
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Figure 1. Fig. 1D of Haynes depicting the porous structure of the HLM-3 silica particles of Haynes
Haynes further teaches the silica particles have a shell with mesoporous structure (i.e. pore channels between 2 to 50 nm) where the pores extend from the surface of the silica particle to the core (i.e. cavity) ([0008], [0012]; Fig. 1D). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Haynes (3 to 100 nm cavity; diameter of pores and nanosized channels 2 to 50 nm) overlaps with the claimed range (cavity in the range of 60 to 70 nm; pores and nanosized channel is 1 to 20 nm). Therefore, the ranges in Haynes renders obvious the claimed range. The Office notes overlapping endpoints of the prior art and claimed ranges are sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range. See MPEP 2144.05.I.
The claim further requires “wherein said plurality of iron particles is disposed within pores of said porous silica particle and is adsorbed in the nanosized channel” and that the iron particles “have a particle size in a range of 1 nm to 10 nm.” Haynes teaches one or more metal nanoparticles are included in the core ([0029]) but does not explicitly teach metal particles are adsorbed in the nanosized channels.
Sun teaches incorporation of nanoscale zero-valent iron particles inside the channels of SBA-15 silica rods, where the nanoscale zero-valent iron particles that are incorporated into the mesopores of the silica material are about 5.9 nm (Fig. 4; Pg. 4, right col.-Pg. 5, left col.; Fig. 4). Sun teaches the ultrasmall zero-valent iron nanoparticles had been better incorporated inside the channels of SBA-15 silica rods, where the main mesopore diameter is between 6.2 and 6.5 nm when iron is incorporated into the channels (Pg. 5, left col. 3.1.3; Table 1, Pg. 3, right col.). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the value taught by Sun (iron particles of about 5.9 nm) overlaps with the claimed range (iron particles 1 to 10 nm). Therefore, the range in Sun renders obvious the claimed range.
Advantageously, iron particles of this size are able to be forced into small pore channels which effectively prevents aggregation among zero-valent iron particles (Pg. 5, left col.), where aggregation of zero-valent of iron particles is an issue in the art that leads to depressed efficiency of the iron particles and limits their application (Pg. 1, Introduction).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to disperse iron particles with a size of about 5.9 nm in the composite of Haynes in order to provide active iron particles that are able to fit into small pores that reduce disadvantageous aggregation of the iron particles, as taught by Sun.
The claim further requires “an oxygen scavenging performance in a range of 190 cm3/g to 210 cm3/g of metal as determined by oxygen scavenging test,” to which Haynes and Sun are silent.
Li teaches a nanostructured iron/carbon composite for scavenging oxygen (Abstract; Title) that exhibits a good oxygen scavenging capacity of up to 210 cm3/g of iron (Pg. 6, par. 2). Li teaches the metal particles can be zero-valent metal particles and may be uniformly or randomly distributed on the carbon material, or within the pores of the material (Pg. 5, par. 5-6). Li teaches the metal particles are of a particle size less than 500 nm, preferably 50 nm or less (Pg. 5, par. 7). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Li (oxygen scavenging capacity of up to 210 cm3/g of iron) overlaps with the claimed range (oxygen scavenging performance in a range of 190 cm3/g to 210 cm3/g of metal). Therefore, the range in Li renders obvious the claimed range.
Advantageously, due to the presence of the metal particles within the composite, the metal may be able to absorb oxygen when in packaging and that the metal may not undergo oxidation due to stabilization by the porous carbon material (Pg. 5, par. 9-Pg. 6, par. 1).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to disperse iron nanoparticles in the pores of a porous material in the composite of Haynes in order to absorb oxygen and resist oxidation due to stabilization from the porous support material as taught by Li.
Regarding claims 6-7, Haynes, Sun, and Li teach the composite of claim 1 and Haynes further teaches the particle is a silica particle (Abstract; Title) and that the silica particles have an average particle size of 30 to 5000 nm, with an average particle size of 40 to 100 nm in certain embodiments ([0031]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Haynes (particle size of 40 to 100 nm) overlaps with the claimed range (particle size in the range of 80 nm to 1000 nm). Therefore, the range in Haynes renders obvious the claimed range.
Regarding claim 23, Haynes, Sun, and Li teach the composite of claim 1.
The claim further requires “the iron particles are present in the composite material at a content of at least 34.7 wt.%” to which Haynes and Sun are silent.
Li teaches a nanostructured iron/carbon composite for scavenging oxygen where the concentration of the iron metal particle in the composite material may be in the range of about 1 wt.% to about 80 wt.% (Abstract; Title; Pg. 5, par. 8; Pg. 17, Claim 16). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Li (about 1 to about 80 wt.% iron metal) overlaps with the claimed range (at least 34.7 wt.% iron particles). Therefore, the range in Li renders obvious the claimed range.
Advantageously, due to the presence of the metal particles within the composite, the metal may be able to absorb oxygen when in packaging and that the metal may not undergo oxidation due to stabilization by the porous carbon material (Pg. 5, par. 9-Pg. 6, par. 1).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to disperse iron nanoparticles in a concentration between 1 and 80 wt.% in the pores of a porous material in the composite of Haynes in order to absorb oxygen and resist oxidation due to stabilization from the porous support material as taught by Li.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Haynes et al. (US20160193588A1) in view of Sun et al. (App. Surface Sci. 2013, 279. 1-6) and Li et al. (WO2016190815A1), and further in view of Xie et al. (WO2017125839A1).
Regarding claim 26, Haynes, Sun, and Li teach the composite of claim 1.
The claim further requires “the iron particles are present in the composite material at a content of 70 wt.% to 80 wt.% based on the dry weight of the porous silica particle” to which Haynes and Sun are silent. Li teaches incorporating between 1 and 80 wt.% of metal particles within a carbon-based composite (Abstract; Title; Pg. 5, par. 8; Pg. 17, Claim 16), but Li does not teach the weight percent is based on the dry weight of a porous silica particle.
Xie teaches a hollow catalytic nano- or micromaterial comprising a ceramic material that
comprises a shell that can have catalytic metal or metal oxide dispersed throughout the shell (;
Abstract; [0006]; [0008]), where the catalytic metal is present from 0.01 to 100 parts by weight
per 100 parts by weight of the nano- or micromaterial ([0047]-[0048]). Xie teaches the ceramic is composed of a metal oxide, where the metal oxide is silica, and that the transition metal dispersed within the metal oxide is Fe (iron) (Claims; [0006]; [0008]). In the case where the
claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of
obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Xie (0.01 to 100
parts weight relative to silica) overlaps with the claimed range (from 70 wt% to 80 wt% on the weight of porous silica particle). Therefore, the range in Xie renders obvious the claimed range.
Advantageously, dispersing the metal in the shell allows for tuning of the porosity and
pore size of the shell that in turn improves the exposure of the active metal and increases
catalytic activity ([0006]; ([0049])
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to disperse metal particles at a concentration ranging
from 0.01 to 100 parts by weight relative to the nano- or micromaterial in the composite of
Haynes in order to improve the metal exposure which increases the catalytic activity of the
material, as taught by Xie.
Claims 14, 15, 17-18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Beckwith et al. (US20090061062A1) in view of Haynes et al. (US20160193588A1) in view of Sun et al. (App. Surface Sci. 2013, 279. 1-6) and Li et al. (WO2016190815A1). The rejections are presented in order of dependence, with the claim 21 rejection preceding the claims 17-18 rejections.
Regarding claim 14, Beckwith teaches a multilayer film comprising iron-based oxygen scavenger particles and a passive oxygen barrier layer (Abstract; [0012]; [0062];Pg. 9-10, Representative Films 1-14; Claim 1) where the oxygen barrier can include metal oxides such as silica, nano clays, and vermiculite ([0062]).
The claim further requires “the composite material of claim 1” to which Beckwith is silent.
Haynes, Sun, and Li teach the composite material of claim 1, as described above. Haynes further teachers that, advantageously, the hollow-structured silica particles with nanosized cavities affords the metal nanoparticles with long-term stability via the silica coating ([0038]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to utilize the hollow-structured silica particles with nanosized cavities in the range of 3 to 100 nm in the product of Beckwith in order to stabilize the embedded nanoparticles as taught by Haynes.
Regarding claim 15, Beckwith, Haynes, Sun, and Li teach the composition of claim 14 and Beckwith further teaches the oxygen barrier material may be vermiculite ([0062]).
Regarding claim 21, Beckwith, Haynes, Sun, and Li teach the composition of claim 14 and Beckwith further teaches the composition is prepared from polymer forming alcohols, including polyvinyl alcohol (PVOH) and ethylene vinyl alcohol (EVOH) ([0062]), including an example that prepares a composition from ethylene vinyl alcohol ([0116]; Pg. 12, EVOH-2 Sample).
Regarding claims 17 and 18, Beckwith, Haynes, Sun, and Li teach the composition of claim 14 and Beckwith further teaches a multilayer film comprising iron-based oxygen scavenger particles and a passive barrier layer (Abstract; [0012]; [0062];Pg. 9-10, Representative Films 1-14; Claim 1) that can be made of compositions such as polyethylene terephthalate (PET), among others ([0090]). Beckwith further teaches that in some embodiments the multilayer film is transparent [0098] and transparency is useful when using Nano-sized iron particles ([0014]). Beckwith further teaches the composition is prepared from polymer forming alcohols, including polyvinyl alcohol (PVOH) and ethylene vinyl alcohol (EVOH) ([0062]), including an example that prepares a composition from ethylene vinyl alcohol [0116]; Pg. 12, EVOH-2 Sample). An oxygen barrier of polyethylene terephthalate (PET) meets the instant case “an article” and “a transparent coated film,” as defined by the instant specification in at least [0084], [0085], [0089], [0099], and [0120].
The claim further requires “a composition according to claim 21,” which depends on claim 14. Beckwith teaches the limitations of claim 14 and Haynes, Sun, and Li teach the composite material of claim 1
Haynes, Sun, and Li teach the composite material of claim 1, as described above. Haynes further teaches that, advantageously, the hollow-structured silica particles with nanosized cavities affords the metal nanoparticles with long-term stability via the silica coating ([0038]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to utilize the hollow-structured silica particles with nanosized cavities in the range of 3 to 100 nm in the product of Beckwith in order to stabilize the embedded nanoparticles as taught by Haynes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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/JORDAN W TAYLOR/Examiner, Art Unit 1738
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