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 .
Election/Restrictions
Claims 7-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected election, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/1/2025.
Response to Amendment
The amendment filed on 11/14/2025 has been entered. Claim(s) 1-6 is/are currently amended. Claim(s) 1-13 is/are pending with claim(s) 7-13 withdrawn from consideration. Claim(s) 1-6 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 11/14/2025, with respect to 112(b) rejection has been fully considered and is persuasive. The 112(b) rejection is withdrawn.
Applicant's argument filed on 11/14/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Dehn does not teach "elemental gold is present as single crystal gold platelets", amyloid fibrils, "said elemental gold is homogenously distributed within said polymer", and lacks the defined microstructure and physical properties (Tg, porosity). While Li teaches amyloid fibrils and single crystal gold platelets, Li does not teach the polymer matrix, "said elemental gold is homogenously distributed within said polymer".
In response, Dehn and Li are in the same field of endeavor of making composites for sensor application. It would have been obvious to one of ordinary skill in the art at the time of filing to combine Li with Dehn. The combination of Dehn and Li makes the claimed limitations obvious, as stated in the 103 rejection.
Applicant argued that Dehn and Li, taken alone or in combination, neither teach nor suggest "said elemental gold is homogenously distributed within said polymer" as recited in claim 1 of the present arrangement.
In response, Dehn teaches that the indicator particles (gold nanopatterned particles) are distributed within the polymeric network [0005-0006]; and that particles are uniformly dispersed in a homogeneous polymer-solvent solution that is transformed (e.g. by a change in temperature or solvent concentration) into a continuous three-dimensional polymer matrix composite [0018]. Therefore, "said elemental gold is homogenously distributed within said polymer" is obvious.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dehn et al (US 20190144626 A1) and Li et al (WO 2014124546 A1).
Regarding claim 1, Dehn teaches a polymer matrix composite used for sensor application [0023] comprising a porous polymeric network with indicator particles distributed within the polymeric network [0005-0006]. The indicator particles can be gold nanopatterned particles [0100].
Dehn does not teach that the gold nanoparticles are present as single crystal gold platelets.
In the same field of endeavor, Li teaches a hybrid nanocomposite material comprising amyloid fibrils and gold elemental single crystal platelets used for sensor application [P1L3-20]. Li teaches that such single crystal platelets have high aspect ratio; and high aspect ratio gold single crystals provide fluorescence feature [P6L7-14].
It would be obvious for one of ordinary skill in the art at the time of filing to use gold as single crystal platelets in Dehn’s composition, since fluorescence feature is desired by Dehn [0106].
Dehn does not teach the claimed amyloid fibrils.
Li teaches that amyloid fibrils have colloidal stabilization, tight packing and adhesion and consolidate the platelets into compact films [P5L29-32].
It would be obvious for one of ordinary skill in the art at the time of filing to incorporate amyloid fibrils in Dehn’s composition, for the benefits of colloidal stabilization, tight packing and adhesion and consolidate the platelets into compact films.
Dehn teaches that the composite has a density of 0.05-4 g/cm3 [0006]. It would be obvious for one of ordinary skill in the art at the time of filing to make the composite with a density of 0.05-4 g/cm3, since Dehn discloses that this is a suitable range for this application. The density of 0.05-4 g/cm3 overlaps the claimed density of 0.7-3.9 g/cm3. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claim 2, Li teaches that the single crystal gold platelets have typical sizes up to 20 μm and the thickness only of 100 nm or less [P6L7-11]; elemental gold amounts to 10-99 wt.%, preferably 30 - 99 wt . % of the total weight of the composite material [P6L22-24].
Regarding claim 3, Dehn teaches that the polymer can be polyacrylates or polystyrene [0046, 0048]. The recited “said polymer is obtained from a colloidal latex” is a product-by-process limitation and does not gain patentable weight (see MPEP 2113).
Regarding claim 4, Li teaches that the amyloid fibrils have high aspect ratio, preferably with ≤ 10 nm in diameter and ≥ 1 μm in length [P5L33-35]; the amyloid fibrils have a highly charged surface showing electrophoretic mobilities of the order 2 μm.cm/V.s at pH 4 [P5L35-P6L3] (equivalent to 2*10-8 m2/V.S).
Regarding claim 5, Dehn teaches that the indicator particles distributed within the polymeric network structure [abstract] forming a uniform defect-free polymer matrix composite [0067]. Therefore, a homogeneous microstructure with the gold embedded in the polymer matrix is expected to be present. The recited “retain a golden shining”, density and Tg are a properties of the product. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited properties are expected to be present. Besides, Dehn teaches a density of 1-6 g/cm3 [0039], overlapping the claimed range of 1.5-3.9 g/cm3. Li teaches that the composite material provides a homogenous metallic gold color, with smooth and shiny surface [P14L21-25].
Regarding claim 6, Dehn teaches that the composite can form a coated article or shaped article [0091], a film [0097], or coated on to a substrate [0061]. Li also teaches that the composite materials are formed into shaped articles, films and coatings [P1L6-7, Fig. 3].
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762