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 .
Restriction Requirement
Applicant’s election without traverse of Group I in the reply filed on 11/18/2025 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 18 is rejected 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 18 recites “the same conditions.” There is no art-recognized standard meaning of “the same conditions,” nor is the term adequately described in the application. Although the specification at page 10, second paragraph recites “[a]s used herein, the term ‘same conditions’ refers to both environmental conditions and experimental conditions for performing a reaction. Environmental conditions include temperature, pressure, and solvent. Experimental conditions include sample, setup, and optimal parameters under which a reaction progresses optimally,” there is no description of what is an “optimal parameter” under which “a reaction progresses optimally.” “Optimal” means the best or more favorable, conditions that depend on the goal of the practitioner. There is no description of how to determine what is the best or more favorable parameter within the meaning of the invention, nor description of the best or more favorable reaction which progresses optimally. Therefore, there is insufficient description of the definition of “the same conditions.”
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 19 is 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 19 recites the broad recitation “at least 2 times,” and the claim also recites “at least 5 times, at least 10 times, at least 20 times, at least 25 times, at least 30 times, at least 50 times, at least 100 times, at least 150 times, at least 200 times, at least 250 times, at least 300 times, at least 350 times, or at least 400 times, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The claim further recites “at least 5 times,” and also recites “at least 10 times, at least 20 times, at least 25 times, at least 30 times, at least 50 times, at least 100 times, at least 150 times, at least 200 times, at least 250 times, at least 300 times, at least 350 times, or at least 400 times”, which is the narrower statement of the range/limitation. The claim also recites “at least 10 times,” and further recites “aat least 20 times, at least 25 times, at least 30 times, at least 50 times, at least 100 times, at least 150 times, at least 200 times, at least 250 times, at least 300 times, at least 350 times, or at least 400 times,” which is the narrower statement of the range/limitation. The claim also recites “at least 20 times,” and further recites “at least 25 times, at least 30 times, at least 50 times, at least 100 times, at least 150 times, at least 200 times, at least 250 times, at least 300 times, at least 350 times, or at least 400 times, which is the narrower statement of the range/limitation. The claim also recites “at least 25 times,” and further recites “at least 30 times, at least 50 times, at least 100 times, at least 150 times, at least 200 times, at least 250 times, at least 300 times, at least 350 times, or at least 400 times, which is the narrower statement of the range/limitation. The claim also recites “at least 50 times,” and further recites “at least 100 times, at least 150 times, at least 200 times, at least 250 times, at least 300 times, at least 350 times, or at least 400 times, which is the narrower statement of the range/limitation. The claim also recites “at least 150 times,” and further recites “at least 200 times, at least 250 times, at least 300 times, at least 350 times, or at least 400 times,” which is the narrower statement of the range/limitation. The claim also recites “200 times,” and further recites “at least 250 times, at least 300 times, at least 350 times, or at least 400 times,” which is the narrower statement of the range/limitation. The claim also recites “at least 300 times,” and further recites “at least 350 times, or at least 400 times,” which is the narrower statement of the range/limitation. The claim also recites “at least 350 times,” and further recites “at least 400 times,” which is the narrower statement of the range/limitation.
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 1-2 and 4-21 are rejected under 35 U.S.C. 103 as being unpatentable over Peng (Microchimica Acta, 2016; IDS filed 2/27/2023) in view of Jaing (Red-emitted electrochemiluminescence by yellow fluorescent thioglycol/glutathione dual thiolate co-coated Au nanoclusters, Nanoscale, 2017, 9, 9792). Peng teaches an electrochemiluminescence sensor comprising metal nanoclusters (abstract; page 2, paragraph 2). This is an electrochemiluminescence sensor comprising metal nanoclusters, wherein each of the metal nanoclusters comprises a metal core and a plurality of ligands. The metal nanoclusters are organo-soluble or aqueous soluble (page 2, right column, third paragraph; page 3, right column, second paragraph 2). The metal nanocluster comprises a gold core (a metal core comprising atoms of the same type) (page 3, right column, second paragraph) and a plurality of ligands (page 2, top of right column to page 4, bridging paragraph). The sensor further comprises a co-reactant such as hydrogen peroxide and tri-n-propylamine (an amine; a tertiary amine) which is associated with the metal nanoclusters covalently or non-covalently (page 3, columns 1-2, bridging paragraph). The sensor may be rod-shaped (pages 1-2, bridging paragraph). The electrochemiluminescence sensor comprises more than one AuNCs (an array comprising two or more electrochemiluminescence sensors) (abstract; introduction). The difference between Peng and the present invention is that, in Peng, the plurality of ligands contain methionine, whereas in the present invention, the ligands do not contain methionine.
Peng fails to teach “wherein the plurality of ligands do not contain methionine.”
Jiang teaches electrochemiluminescence sensor comprising metal nanoclusters comprising thioglycol/glutathione (TG/GSH) dual ligand-coated Au NCs for the sensitive detection of small biomolecules, antigens/antibodies (glutathione is a thiolate, a ligand, and a targeting agent) (page 9792, columns 1-2, bridging paragraph). The NCs exhibit a desirably lower ECL potential, and a significantly red-shifted emission wavelength, which is an improvement over other sulfur-containing ligands (abstract; page 9794, second column, last paragraph). Jaing further teaches assembly of the nanoclusters on the surface of a carbon substrate (a conductive substrate) (page 9795, right column, second to last paragraph).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to substitute the methionine ligands of Peng for the thioglycol/glutathione dual coating disclosed by Jiang. The motivation for this would have been to prepare stable gold coated NCs for use as an electrochemiluminescence sensor. The artisan would have a reasonable expectation of success in doing so, as Jiang teaches that its dual ligand-coating is an improvement and provides stability over other sulfur-containing ligands in electrochemiluminescence sensors. Regarding claim 8, the claim limits the embodiment of the Markush group in claim 4, “a mixture of metal atoms of difference types.” As the Markush group of claim 4 is satisfied by Peng in “comprises the same metal atoms,” and as claim 8 does not positively recite that the composition comprises a mixture of metal atoms of different types, it is deemed that Peng reads on claim 8. Claim 17 recites “wherein the metal nanoclusters display near-IR electrochemiluminescence,” and claim 18 recites “wherein the metal nanoclusters display electrochemiluminescence higher than tris(bipyridine)ruthenium(II) complex under the same conditions.” These are properties of the claimed electrochemiluminescence sensor. As the electrochemiluminescence sensor rendered obvious by Peng in view of Jiang is structurally identical to the present electrochemiluminescence sensor, it must possess the properties of the present electrochemiluminescence sensor, including displaying near-IR electrochemiluminescence, and wherein the metal nanoclusters display electrochemiluminescence higher than tris(bipyridine)ruthenium(II) complex under the same conditions. “‘[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).” MPEP § 2112, I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL W DICKINSON whose telephone number is (571)270-3499. The examiner can normally be reached on M-F 9 AM to 7:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached on 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL W DICKINSON/Primary Examiner, Art Unit 1618
March 3, 2026