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 was filed on 09/12/2025.
Withdrawn Rejection(s)
The claim objections and rejections under 35 USC 112, second paragraph, and 35 USC 103 are withdrawn in view of the remarks filed on 09/12/2025.
New Rejection(s)
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.
Claims 1-3, 5-8 and 10 are 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.
Applicant describes a method of making a hollow silk nanocapsule. As this Examiner understands the method, this is accomplished by placing alternating layers of silk fibroin and 3- aminopropyl triethoxysilane on a functionally modified polystyrene microcapsule. After the layers are laid down, the functionally modified polystyrene microcapsule is removed using a template-removing reagent. This is where applicant’s description is inconsistent. In claiming to form a hollow nanocapsule, applicant uses a microcapsule template, orders of magnitude larger than the claimed nanocapsule. In defining the particle size of the polystyrene microparticle, applicant sets out a size of 0.05 – 0.5 pm meaning that it is measured in micrometers (see Summary at page 2). Applicant is requested to clarify how a microparticle template which is then layered upon before removal yields a nanoparticle, many orders of magnitude smaller than the template. The method as claimed is unclear. Further, the newly added limitation of 0.05 – 0.5 um is considered new matter since applicant has set out micrometers for this range in the specification. Clarification is requested.
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 1-3, 5-8 and 10 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.
Similar to the rejection above, applicant described a method of forming a hollow silk nanocapsule by using a polystyrene microcapsule. However, now applicant defines the diameter of the particulate template using nanometers rather than the microns defined in the specification. However, applicant sets out a “polystyrene microsphere” template on which to build its final product.. How is applicant forming a nanocapsule using a microsphere template many orders of magnitude larger than the resultant nanoparticle. Further applicant’s changeable use of measurement units from microns to nanometers further makes the claims indefinite. In summary, how does the claimed hollow silk nanocapsule form from a microsphere template much larger than the resultant product? Further , the diameter size range for the polystyrene particle is in derogation of accepted terminology of a microparticle. As defined by the claimed diameter, the polystyrene template can not be defined as a microsphere. Instead, it too appears to be a nanoparticle. Applicant may be his or her own lexicographer but must not violate the use of the accepted terminology. Clarification and correction is requested
Conclusion
No claims are allowed.
WO 2010059963 (Mather et al) is cited for its disclosure of a method of making silk nanoparticles.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS A AZPURU whose telephone number is (571)272-0588. The examiner can normally be reached 9 am- 3 pm, 4 pm-8pm.
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/CARLOS A AZPURU/Primary Examiner, Art Unit 1617 caz