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 .
Response to Amendment
The amendment filed 12/11/2024 has been entered.
Any previous rejections not reiterated herein have been withdrawn.
Claim Objections
Claim 4 is objected to because of the following informalities: The HAuCl4 should be HAUCl4 to be consistent with claim. Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. US 9789154 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are drawn to the same plasmonics-active gold nanostars, resulting from the same process as instantly claimed, see claim 1 of ‘154. While instant claim 1 contains some additional wherein clauses providing additional limitations to the nanostars not present in claim 1 of the patent, these additional limitations are present in dependent claims of the ‘154 patent. The size range and the plasmon peak in instant claim 1 is set forth in claim 5 of the ‘154 patent. The optical label of claim 1 and 12 is met by claim 6 of the patent. Nucleic acid of claim 1 and siRNA of claim 20 is met by claim 12 of the patent. Note, the near-infrared as recited in claim 1 is defined as 780-2500 nm via the broadest reasonable interpretation thereof and a range overlapping this range is recited in claim 5 of ‘154 of 600-1000nm. Note claims 2 and 3 have the same limitations as claims 2 and 3 of the patent. Concentrations of claim 5 are met by claim 4 of the patent. The various concentrations, etc. set forth in the dependent claims are found in the claims of the ‘154 patent.
It would have been obvious to one of ordinary skill in the art to prepare the same gold nanostars as claimed from the disclosure set forth in the claims of the ‘154 patent given the claims of the patent significantly overlap with the instant claims by having the same components in various dependent claims and the same and/or overlapping ranges of concentrations, sizes, etc. as instantly claimed.
Conclusion
No claims are allowed at this time.
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/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618