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 .
Claim Status
Claims 1, 25, 27, 60, 74, 87, 109, 117 and 119-127 are pending.
Claims 25, 27, 60, 74, 87 and 109 are withdrawn.
Claims 1, 117 and 119-127 are under examination.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 29th, September, 2025 has been entered.
Species Rejoinder
The species election requirement between surface modification with a single molecular formula on the first population of mesoporous silica nanoparticles, as set forth in the Lack of Unity mailed on 31st, May, 2024 has been reconsidered in view of Applicant’s amendments.
The structure of:
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218
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and N,N,N-trimethylpropn-1-ammonium, drawn to a previously non-elected species is no longer withdrawn from consideration.
In view of the above noted withdrawal of the species election requirement, applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a species election requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
New Claim Objections
Claim 126 is objected to because of the following informalities:
Claim 126 recites “conjugated to” which contains the preposition “to” as an option followed by the alternative options “(i) on the” or “(ii) to a” which each also include an additional preposition. Therefore, this would be read as “conjugated to on the” for option (i) or “conjugated to to a” as option (ii) which unnecessarily include two back to back prepositions.
It is recommended that Applicant amend “conjugated to” to “conjugated” to remove the extra preposition.
Appropriate correction is required.
Withdrawn Claim Rejections - 35 USC § 112a
Written Description
The rejection of claim 129 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement as set forth in the previous office action is withdrawn in view of the cancellation of this claim.
New Claim Rejections - 35 USC § 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.
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, 117 and 119-127 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 1 recites the following structure:
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Which includes “X-.” The claim does not define what “X-” encompasses. The instant specification states “X is a functional group”(pg. 38) which does not provide additional structure and causes additional uncertainty as to the scope of “X” because “X” as pictured appears to be a counter-ion, not a functional group. Therefore, because it is uncertain what the scope of “X” encompasses, the metes and bounds of the claim are unclear.
By nature of their ultimate dependency on claim 1, claims 117 and 119-127 are also rejected.
Withdrawn Claim Rejections - 35 USC § 103
The rejection of claims 1 and 117 under 35 U.S.C. 103 as being unpatentable over Ortac et al. (US-2016/0067191-A1; henceforth “Ortac”) in view of Lee et al. (US-2010/0104650-A1; henceforth “Lee”) as set forth in the previous office action is withdrawn in view of Applicant’s amendments.
The rejection of claim 2, 110-111, 116, 118 and 129 under 35 U.S.C. 103 as being unpatentable over Ortac et al. (US-2016/0067191-A1; henceforth “Ortac”) in view of Lee et al. (US-2010/0104650-A1; henceforth “Lee”) as set forth in the previous office action is withdrawn in view of the cancellation of these claims.
The rejection of claims 119-127 under 35 U.S.C. 103 as being unpatentable over Ortac et al. (US-2016/0067191-A1; henceforth “Ortac”) in view of Lee et al. (US-2010/0104650-A1; henceforth “Lee”) as applied to claim 1 above, and in further view of Barrett et al. (US-20180133296-A1; see IDS filed 10th, May, 2022; henceforth “Barrett”) as set forth in the previous office action are withdrawn in view of Applicant’s amendments.
Conclusion
No claim is allowable.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIANA N EBBINGHAUS whose telephone number is (703)756-4548. The examiner can normally be reached M-F 9:30 AM to 5:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Paras can be reached at (571) 272-4517. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIANA N EBBINGHAUS/Examiner, Art Unit 1632 /VALARIE E BERTOGLIO/Primary Examiner, Art Unit 1632