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
Claims 1, 3, and 4 of L. Diaz Jalaff et al., US 17/241,835 (Apr. 27, 2021) are pending and are rejected.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. See, MPEP § 2111.
Interpretation of the Claim 1 Preamble
Claim 1 recites as follows, where the strike-out text indicates a preamble limitation that is not given patentable weight.
1. Nanocomposites
wherein said nanocomposites including zinc hydroxides and carboxylic acids are capable of adsorbing said dyes and degrading said adsorbed dyes under ultraviolet or natural or simulated solar light exposure,
wherein said nanocomposites are laminar solids with stacked structure of hybrid layers, and wherein each layer comprises sheets of zinc hydroxide and carboxylic acids.
The preamble language in strike-out text above is not given patentable weight because this language is merely related to an intended use of the claimed nanocomposites. MPEP § 2112.02(II) (citing Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation")).
Withdrawal Non-Statutory Double Patenting Rejections
Rejection of claims 1, 3, and 4 on the ground of non-statutory double patenting as being unpatentable over conflicting claims 1 and 5 of L. Diaz Jalaff et al., 16/223,779, issued as US 10,987,663 (2021) in view of M. Segovia et al., 46 Materials Research Bulletin, 2191-2195 (2011) (“Segovia”) is withdrawn in view of Applicant’s filing of a terminal disclaimer.
Maintained Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Unclear Claim Limitations
Claims 1 3, and 4 are rejected under 35 U.S.C. 112(b) as indefinite because the claim 1 recitation of “are capable of adsorbing and degrading said absorbed dyes”:
1. Nanocomposites for removal of dyes from textile effluents and other organic substances,
wherein said nanocomposites including zinc hydroxides and carboxylic acids
are capable of adsorbing said dyes and degrading said adsorbed dyes under ultraviolet or natural or simulated solar light exposure,
wherein said nanocomposites are laminar solids with stacked structure of hybrid layers, and wherein each layer comprises sheets of zinc hydroxide and carboxylic acids.
in the context of claim 1 is unclear in view of the teachings of the specification. Dependent claims 3 and 4 do not cure the issue. The following reasoning applies.
First, the claim 1 recitation of:
claim 1 . . . are capable of adsorbing said dyes and degrading said adsorbed dyes under ultraviolet or natural or simulated solar light exposure . . .
is a functional limitation. MPEP § 2173.05(g). Per the MPEP, examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. MPEP § 2173.05(g). Here one of skill does not know which nanocomposites (otherwise squarely falling within the claim 1 structural meaning) are incapable of performing the cited claim 1 function, and are thus intended by Applicant to be excluded from claim 1. This is at least because claim 1 does define what dyes must be tested against a claim 1 nanocomposite and under what conditions of temperature, light wavelength or intensity, other reaction components present. Note that a particular light wavelength can be produced at high or low intensity.
For example, a particular claim 1 nanocomposite may be capable adsorbing and degrading some a particular dye under, for example, particularly aggressive UV or simulated solar light exposure. But the same claim 1 nanocomposite may not be so capable with a different dye and/or less aggressive conditions. Here, rather than setting forth well-defined boundaries of the invention, the claim 1 language at issue merely states a problem solved or a result obtained. MPEP § 2173.05(g).
The broadest reasonable interpretation of the subject claim 1 phrase is that any dye and any UV/simulated-solar-light wavelength/intensity can be chosen in the determination of whether the claim 1 function is met. MPEP § 2173.01(I). The rejection under 35 U.S.C. 112(b) is appropriate because the claimed functional language, given its broadest reasonable interpretation, is such that a person of skill in the relevant art would read it with more than one reasonable interpretation MPEP § 2173.02(I). That is, a particular claim 1 nanocomposite could be alternatively interpreted as either not meeting or meeting the claimed functional limitation depending upon the chosen dye and degradation conditions. As such, contrary to 35 U.S.C. 112(b), claim 1 does not provide clear warning to others as to which nanocomposites structurally meeting 1 constitute infringement of the cited functional language. MPEP 2173.02(II).
Applicant’s Argument
Applicant argues that the claim 1 amendment adding the explicit light conditions eliminates any ambiguity. Applicant argues that the test of degradation capacity, which is based on photocatalysis, is a well-known procedure in the art, and is described in the specification under UV or simulated solar light conditions. Applicant argues that person skilled in the art can determine whether the compound fulfills the claimed function by performing routine and undue experimentation under the conditions now specified.
This argument is not persuasive for the following reasons. As argued by Applicant, the specification does provide test procedures. For instance, the specification teaches the following adsorption and degradation test for the Example 2 laminar zinc hydroxide composite prepared with stearic acid (LZH-S) using the dye methyl orange.
For methyl orange degradation, 90 mg of nanocomposite is dispersed in 1.0 mL of ethanol. This suspension is added to 50 mL of methyl orange aqueous solution at a 0.00001 M concentration and it is left under stirring at 600 rpm for 360 minutes. This time is sufficient to obtain a maximum dye adsorption on the solid surface. The absorption removal rate of the dye from the aqueous sample with addition of a laminar zinc hydroxide composite prepared with stearic acid (LZH-S) in the dark, is approximately 50%. Dye removal from solution occurs within the first 30 minutes, to then remain constant over time.
Degradation kinetics of Methyl Orange (MO) in solution under light irradiation in the presence of catalyst was monitored by observing Methyl Orange absorption spectrum and its solution concentration was determined by absorption intensity at 665 nm. It is observed that the dye in solution is completely degraded.
Specification at page 11. However, neither the Example 2 dye (methyl orange) nor test procedure can be imported into claim 1 as limitations. MPEP § 2111.01(II). As such, the broadest reasonable interpretation of the subject claim 1 phrase is that any dye and any UV/simulated-solar-light wavelength/intensity, and other conditions (e.g., temperature) can be chosen in the determination of whether the claim 1 function is met. MPEP § 2173.01(I).
Thus, one particular claim 1 nanocomposite may be found to adsorb and degrade a particular dye under a particular UV/simulated-solar-light wavelength, at room temperature and thus can be interpreted to infringe claim 1. However, the same claim 1 nanocomposite may be found not to adsorb and/or degrade a different dye, under different (or even the same) wavelength/temperature conditions and interpreted not to infringe claim 1.
Maintained Claim Rejections - 35 USC § 102 (AIA )
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
§ 102(a)(1) Rejection M. Segovia et al., 46 Materials Research Bulletin, 2191-2195 (2011) (“Segovia”)
Claims 1, 3 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by M. Segovia et al., 46 Materials Research Bulletin, 2191-2195 (2011) (“Segovia”).
Segovia teaches the synthesis, characterization as well as some relevant properties of ZnO/carboxylic acid nanocomposites. Segovia at page 2191, col. 1; Id. at Abstract. Segovia teaches that the obtained products, which may be described as hybrid nanocomposites constituted by double-layer sheets of the inorganic component sandwiched between organic layers, are photocatalytically active in the photodegradation of organic dyes. Segovia at page 2191, col. 1; Id. at Abstract.
Segovia teaches the following experimental procedure:
The typical synthetic procedure to prepare ZnO/carboxylic acid nanocomposites was as follows:
10 ml of ZnSO4 (1 M) solution was mixed with 10 ml Na2CO3 (1 M)/NaOH (1 M) (1:1) to bear a ZnO hydrogel.
Then 5 ml of carboxylic acid 4.0 [Symbol font/0xB4] 10-1 M (0.4 M) aqueous solution of the carboxilic acids were added to the ZnO hydrogel solution under stirring at room temperature.
The carboxylic acid are: myristic acid (C14H28O2), palmitic acid (C16H32O2) and stearic acid (C18H36O2).
Thereafter the solution was stirred during 30 h at 60 °C followed by aging during 24 h at room temperature. The thus formed white precipitate was separated by centrifugation, washed with water/acetone (1:1) mixture,
dried at 80 °C for 72 h and storage under nitrogen.
Segovia at page 2192, col. 1. The above procedure of Segovia is essentially identical to the three respective specification working examples, also employing the same Segovia carboxylic acids (myristic acid, palmitic acid, and stearic acid). Specification at pages 8-12 (Examples 1-3). Specification Working Example 2 is reproduced below.
Example 2
Example of Obtaining Zinc Hydroxide-Stearic Acid Nanocomposite and Methyl Orange Degradation
To 10.0 mL of 1.0 M zinc sulfate (ZnSO4) aqueous solution was dropwise added 5.0 mL of a 1.0 M sodium carbonate (Na2CO3) aqueous solution. A white precipitate immediately formed after addition. The resulting suspension was left under constant stirring at 600 rpm for 10 minutes at 55 °C. Then, 10.0 mL of a 1.0 M sodium hydroxide (NaOH) aqueous solution was dropwise added until obtaining a suspension with pH equal to 9.
The latter was left under constant stirring at 600 rpm for 10 minutes at the same temperature.
In the final step, 5.0 mL of a previously prepared 0.4 M stearic acid solution was added using a 1:1 v/v water: acetone mixture as solvent, in a water bath. The resulting suspensions were left under constant stirring at 600 rpm for 48 hat 55 °C.
After that, the suspensions were left standing for 24 h at room temperature.
The obtained solids were separated by centrifugation at 6,000 rpm and washed 3 times with a 1: 1 water: acetone solution.
Finally, the products were dried in an oven at 60 °C for 48 hand grinded in an agate mortar. This process produced lamellar solids with a stacked layer structure (FIG. 1).
Specification at pages 10-11. The Segovia procedure is compared side-by-side to specification Example 2 in the Table below.
Segovia
Specification Example 2
10 ml 1.0 M zinc sulfate (ZnSO4)
5 ml Na2CO3 (1 M)
5 ml NaOH (1 M)
Stirred together at room temperature
10 ml 1.0 M zinc sulfate (ZnSO4)
5 ml Na2CO3 (1 M)
Stirred at 55 °C,
then add 10 ml NaOH (1 M)
The latter was left under constant stirring at 600 rpm for 10 minutes at 55 °C
Then 5 ml of carboxylic acid 0.4 M aqueous solution of [steric acid was] added to the ZnO hydrogel solution under stirring at room temperature.
5 ml 0.4 M stearic acid solution was added using a 1: 1 v/v water: acetone mixture as solvent, in a water bath.
Thereafter the solution was stirred during 30 h at 60 °C
followed by aging during 24 h at room temperature.
The thus formed white precipitate was separated by centrifugation,
washed with water/acetone (1:1) mixture
The resulting suspensions were left under constant stirring at 600 rpm for 48 h at 55 °C.
After that, suspensions were left standing for 24 hat room temperature.
The obtained solids were separated by centrifugation at 6,000 rpm
washed 3 times with a 1: 1 water: acetone solution.
As can be seen, specification Example 2 employs identical reagents, at identical concentrations. The small difference between Segovia and specification Example 2 are:
Difference 1: Segovia uses 5 ml 1 M NaOH solution in the initial ZnSO4/Na2CO3/NaOH mixture versus the specification Example’s use of 10 ml 1 M NaOH solution. And the addition order of the 1 M NaOH solution differs between the two.
Difference 2: Segovia stirs the initial mixture of ZnSO4/Na2CO3/NaOH at room temperature, whereas the specification Example stirs the initial mixture of ZnSO4/Na2CO3/NaOH at 55 °C.
Difference 3: Segovia adds the 0.4 M stearic acid as an aqueous solution to the ZnSO4/Na2CO3/NaOH mixture at room temperature and then heats and stirs for 30 h at 60 °C. Specification Example 2 adds the 0.4 M stearic acid to the ZnSO4/Na2CO3/NaOH mixture, as a 1: 1 v/v water: acetone mixture, at 55 °C, then stirs for 48 h at 55 °C.
Thus, the Segovia products obtained are presumed to be identical to those claimed because, per the specification, they are prepared using almost identical conditions, regents, and reagent concentrations and both Segovia and the specification Example stir the same ZnSO4/Na2CO3/NaOH and stearic acid mixture at about the same temperature (55 °C versus 60 °C) for similar extended times of 30 h and 48 h respectively.
With respect to the laminar structure of the so prepared ZnO/stearic acid, palmitic acid, and stearic acid nanocomposites, Segovia teaches that:
The lamellar nature of these products is confirmed by their X-ray diffraction patterns which, as shown in Fig. 2a, display low angle reflections characteristic of well ordered laminar arrangements. As shown in Table 1, displaying diffraction data concerning Braggs reflections (0 0 l) for reported products, repeat distances are in the range of 39–49 Å . Increase of basal spacing, in respect to that in pristine oxide (5.2 Å ), correlates well with the molecular lengths of corresponding carboxylic acids.
. . .
According to available data, the products, which due to their reproducible and commensurate stoichiometries may be classified as hybrid nanocomposites, can be described as ultra thin laminas constituted by Zn–O inorganic sheets flanked by self-assembled surfactant layers. In bulk, these laminas are stacked, generating layered solids stabilized by van der Waals interactions. Alternatively these solids could be seen as intercalation products between inorganic layers and surfactant bilayers.
Segovia at page 2192, col. 2 (emphasis added).
Further the X-ray diffractograms disclosed by Segovia, for the stearic acid nanocomposites (ZnO-Steric Acid, page 2193), have the same 2 theta diffraction peak values as disclosed by the instant specification x-ray diffractograms for LZH-S. (compare Segovia Fig. 2a (ZnO-Steric Acid, Fig. 2a, page 2193) with specification Fig. 2 LZH-S (first/top diffractogram in Fig. 2).
In sum, the Segovia ZnO/carboxylic acid nanocomposites are asserted by the Examiner, with good reason, to be the same nanocomposites per the following language of claim 1.
Claim 1 “Nanocomposites . . .
wherein said nanocomposites including zinc hydroxides and carboxylic acids
are capable of adsorbing said dyes and degrading said adsorbed dyes under ultraviolet or natural or simulated solar light exposure,
wherein said nanocomposites are laminar solids with stacked structure of hybrid layers, and wherein each layer comprises sheets of zinc hydroxide and carboxylic acids.
Claim 1 is therefore anticipated by Segovia. Segovia’s products “are capable” of performing the claim 1 function of “of adsorbing said dyes and degrading said adsorbed dyes” because they are the same products disclosed in the specification.
In this regard, where the claimed and prior art products are identical or substantially identical in composition to a claimed composition, a prima facie case of either anticipation or obviousness has been established subject to Applicant’s rebuttal. MPEP § 2112.01(I) (citing In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (holding that a prior art structure anticipated a claimed structure even though a claimed functional recitation was not specifically taught in the prior art reference because applicant had failed to show that the prior art did not possess the functional characteristics of the claims)). Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
The limitations of claim 3 are met for the same reasons. That is, the Segovia ZnO/carboxylic acid nanocomposites prepared using essentially the same synthetic procedure as the specification’s only working examples (specification working Examples 1-3, as discussed above), as well as giving x-ray diffractograms with the same diffraction peaks, are presumed to be the same as the specification’s working examples and the same products of claim 3.
In any case, Segovia teaches the claim 3 limitation of “each layer comprises two individual sheets of zinc hydroxide and carboxylic acid” as follows.
According to available data, the products, which due to their reproducible and commensurate stoichiometries may be classified as hybrid nanocomposites, can be described as ultra thin laminas constituted by Zn–O inorganic sheets flanked by self-assembled surfactant layers. In bulk, these laminas are stacked, generating layered solids stabilized by van der Waals interactions. Alternatively these solids could be seen as intercalation products between inorganic layers and surfactant bilayers.
Segovia at page 2192, col. 2 (emphasis added).
ZnO/carboxylic acid nanocomposites . . . may be described as hybrid nanocomposites constituted by double-layer sheets of the inorganic component sandwiched between organic layers.
Segovia at page 2191, col. 2 (emphasis added). Furthermore, the claim 3 limitation of “having an X-ray diffraction pattern in 2 theta, and wherein a number of harmonics in reflections are between 1 up to 10” cannot differentiate over Segovia because this limitation only relates to the x-ray wavelengths used to obtain the x-ray diffractogram and does not further limit the actual structure of the claim 3 nanocomposites themselves.1 Claims 3 is therefore anticipated.
The further limitations of claim 4 are clearly met because Segovia teaches ZnO/myristic acid, palmitic acid, and stearic acid nanocomposites.
Applicant’s Argument
Applicant argues that Zinc Oxide (ZnO) (language used by Segovia) and Zinc Hydroxide (Zn(OH)2) (instant claim language) are chemically distinct compounds with different crystal structures and thermal properties.
This argument is not persuasive for the following reasons. Regardless of the language used, the Segovia’s zinc oxide/carboxylic acid lamellar structures (e.g., Segovia’s ZnO-Steric Acid) are asserted by the Examiner, with good reasons, to be identical to those claimed. The burden has been shifted to Applicant to show otherwise. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). As discussed above, per the specification, Segovia’s products are prepared using almost identical conditions, regents, and reagent concentrations. Further the X-ray diffractograms disclosed by Segovia, for the stearic acid nanocomposites (ZnO-Steric Acid, page 2193), have the same 2 theta diffraction peak values as disclosed by the instant specification x-ray diffractograms for LZH-S. (compare Segovia Fig. 2a (ZnO-Steric Acid, Fig. 2a, page 2193) with specification Fig. 2 LZH-S (first/top diffractogram in Fig. 2).
Applicant further argues that the instant specification (e.g., Figure 6) presents thermogravimetric curves that clearly distinguish the claimed nanocomposite from a simple zinc hydroxide, implying a hybrid structure and composition not anticipated by Segovia's ZnO.
This argument is not persuasive for the following reasons. With respect to Fig. 6 and thermal analysis, the specification teaches that:
FIG. 6: Thermogravimetric curves and their derivatives for zinc hydroxides (A) without addition of surfactants and in nanocomposites with (B) stearic acid, (C) palmitic acid and (D) myristic acid, respectively.
Specification at page 5.
Nature and composition of the solids was investigated by thermal analysis (FIG. 6). This product allows the adsorption of the dye in the solid, favored by the presence of the organic component, as well as the degradation thereof by ultraviolet or solar light excitation (photocatalysis) of the inorganic phase. Thus, these products have an adsorbent and photocatalyst dual capacity.
Specification at page 9.
Thus, specification Fig. 6 (B) is a graph of the specification’s Example 2 zinc Hydroxide-stearic composite (LZH-S) mass loss as a function of temperature by way of thermogravimetric analysis (TGA). However, Segovia does not present any thermogravimetric analysis data regarding his disclosed ZnO/carboxylic acid nanocomposites. As such, comparison of TGA data cannot be used to distinguish Segovia from the claims.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PAGANO whose telephone number is (571)270-3764. The examiner can normally be reached 8:00 AM through 5:00 PM.
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.
ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Ideally, the X-ray beam should consist of a single wavelength (monochromatic). X-ray diffraction harmonics in reflections refer to the phenomenon where X-rays of higher frequencies (harmonics) are produced alongside the fundamental X-ray beam during diffraction. But X-ray sources often emit a spectrum of wavelengths, including the fundamental wavelength and its harmonics (multiples of the fundamental frequency), which can lead to errors. See e.g., Z. Zhong, Using a prism to reject or select harmonic reflections in an X-ray monochromator, 33 Journal of Applied Crystallography, 1082-1087 (2000) (at page 1082, col. 1 teaching that “[a]s a result of the dispersion of the prism, beams of different harmonics travel at slightly different angles after passing through it and then can be discriminated by slightly changing the tuning of the second monochromator crystal”).