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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/07/2025 has been entered. A suspension of action was not requested.
Filing Receipt
PNG
media_image1.png
240
1004
media_image1.png
Greyscale
PNG
media_image2.png
102
1004
media_image2.png
Greyscale
Claim Status
Claims 1-11, 13-14, and 16-20 are pending. Claims 1-10 and 18-20 are
withdrawn. Claims 11, 13-14 and 16-17 are under examination. Claims 11, 13-14 and 16-17 are rejected. No claims allowed.
Election/Restrictions
Claims 1-10 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/29/2024.
Response to Amendments/Arguments
Applicant's amendments and arguments filed 07/18/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below in original or modified form is herein withdrawn.
The objection to claims 12 and 15 in the final mailed 05/20/2025 is withdrawn. The amendments to the claims have overcome the objection.
The 102 rejection of claims 11, 13 and 16-17 as anticipated by Sugie et al. (Solvent Diversity in the Preparation of Alkanethiol-capped Gold Nanoparticles. An Approach with a Gold(I) Thiolate Complex), Chem. Lett., 39, pp. 319-321, Published 02-2010) in the final mailed 05/20/2025 is withdrawn. The amendments to the claims have overcome the rejection.
The 102 rejection of claims 11, 13-14 and 16-17 as anticipated by Fleming et al. (Stability and Exchange Studies of Alkanethiol Monolayers on Gold-Nanoparticle-Coated Silica Microspheres, Langmuir 2001, 17, 16, pp. 4836–4843, Published 07-2001) in the final mailed 05/20/2025 is withdrawn. The amendments to the claims have overcome the rejection.
The following newly applied 112(b), 112(d), and 102 rejections constitute the complete set of rejections and/or objections presently being applied to the instant application.
Response to Arguments
Applicant's arguments filed 07/11/2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claim(s) 11, 13-14 and 16-17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Interpretation
The Au, Ag, Cu, Pt, Pd, and Ni metal of claim 11 is being interpreted as being optionally substituted. Explanation for this interpretation is in the non-final mailed 01/30/2025 pages 3-4 and is incorporated by reference.
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.
Claim 13 and 17 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.
Claim 13 recites the limitation "an unsubstituted C1-C20 hydrocarbyl" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 from where claim 13 depends defines R as a substituted hydrocarbyl. An unsubstituted hydrocarbyl limitation is not present in claim 11.
Claim 17 is indefinite because of a dualistic interpretation of the identity of the claimed nanoparticles. The nanoparticles may involve the Metal-S-R-COO group, may constitute just the Metal (gold nanoparticle) with the S-R-COO attached to the surface of the Metal, or may be an entity not disclosed in the claim. A nanoparticle of Ti may be the claimed portion of the composition, due to the comprising language of claim 11 and 17. Without clarification the nanoparticle of claim 17 does not have to be made up of the claimed metals. Clarity is needed.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 further broadens claim 11 by defining R as an unsubstituted C1-C20
hydrocarbyl. Claim 11 from where claim 13 depends defines R as a substituted
hydrocarbyl.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claim(s) 11, 13-14 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a Okada et al. (Aurothiolates Inhibit HIV–1 Infectivity by Gold(I) Ligand Exchange with a Component of the Virion Surface, Virology 192, pp. 631-642, Published 1993).
Okada at al. disclose this bis(thiomalate)gold(I) as seen immediately below.
PNG
media_image3.png
278
363
media_image3.png
Greyscale
Concerning the composition, Okada at al. disclose the bis(thiomalate)gold(I) in wells with cell culture infective doses of HIV–1 (p. 631). The Group 10 to Group 14 metal is Au (claim 16), the malate reads on the substituted C2 hydrocarbyl (variable R) organic group of claims 11 and 14.
This anticipates the claims.
Claim(s) 11, and 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a Chen et al. (Synthesis of Water-Soluble [Au25(SR)18] − Using a Stoichiometric Amount of NaBH4, J. Am. Chem. Soc., 140, pp. 11370-11377, Published 2018).
Chen et al. disclose gold nanoclusters (NC) [Au25(SR)18] of p-MBA in aqueous (p. 11376, left column). P-MBA being the compound immediately below.
PNG
media_image4.png
227
368
media_image4.png
Greyscale
The sulfur of p-MBA is bound to the gold NC, see Chen et al. page 11370
PNG
media_image5.png
199
619
media_image5.png
Greyscale
And see Chen et al. bridging pages 11370-11371.
PNG
media_image6.png
201
619
media_image6.png
Greyscale
PNG
media_image7.png
199
631
media_image7.png
Greyscale
Due to the prior art disclosing the particles as NP’s (nanoparticles) and only involving 25 Au’s, the NP’s of the prior art reads on the claimed average particle size of less than about 100 nm. As to how the size is determined, upon meeting the size limitation the claimed determined by transmission electron microscopy is met. The limitation “as determined by transmission electron microscopy” is interpreted to not be an active step. Moreover, steps are not limitations in a composition claim. Additionally, the measurement does not alter the overall composition as claimed. The composition is not altered by the measurement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAINE G DOLETSKI whose telephone number is (571)272-2766. The examiner can normally be reached M-F 7-4 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at (571)270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/B.G.D/Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625