DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-5, 7, 11, 13-14, 19, 23, 26, 30, 38-39, 51-53, 56 and 58-59 are pending.
The examiner recommends deleting “(-NH2)” in claim 1.
Withdrawn Rejections
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn.
Claim Objections
Claim 13 is objected to because of the following informalities: the period after line 4 should be a semicolon. Appropriate correction is required.
The examiner also recommends that Applicant amend claim 13 to delete “or any combination of two or more of these physicochemical properties” since the claim already states “at least one of the following physicochemical properties”.
Claim Rejections - 35 USC § 103
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.
Claims 1-5, 7, 11, 13-14 and 58-59 are rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al. (US 2016/0002438 A1) in view of Okazaki (WO 2019/225051 A1; English language equivalent US 2021/0368802 A1 referred to herein).
Regarding instant claim 1, Yuan et al. teach core-shell nanoparticles comprising metal nanoparticles having thereon primary amino structures and/or secondary amino structures ([0019]-[0021], [0084-[0086]; Claims 1-20). Yuan et al. teach that polyamines serve as a cationic polymer to provide functions such as antimicrobial and antiviral functions to the nanoparticles ([0012]). Yuan et al. teach the metal nanoparticles (A) may be of any suitable size, depending on the purpose, that is on the order of nanometers, i.e., from several nanometers to several hundreds of nanometers. Preferably, the metal nanoparticles (A) have a size of 2 to 1,000 nm, more preferably 2 to 100 nm ([0024], [0084]). Yuan et al. further teach the core-shell metal nanoparticles according to the present invention, which are provided by designing a polyamine present on the surface of metal nanoparticle cores, include a shell layer with a thickness of 20 nm or less, particularly 1 to 10 nm ([0012], [0035], [0071]).
Regarding instant claims 2-3, Yuan et al. teach nanoparticles comprising a silver core ([0085]-[0086], [0090]-[0096]; Claims 5 and 16-17).
Regarding instant claim 4, Yuan et al. teach that the polyamine segment may further comprise additional repeat units, such as polyacrylamide ([0027]-[0028]).
Regarding instant claim 5, Yuan et al. teach that the shell layer comprises polyethyleneimine ([0084]-[0086]; Claims 6, 18-19).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare nanoparticles according to Yuan et al. comprising elemental/metallic silver as the core and a polyethyleneimine coating, wherein the nanoparticles have a size of 2 to 100 nm and the coating has a thickness of 1 to 10 nm. It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare nanoparticles according to Yuan et al. with a particle size of less than about 10 nm, and a thickness of about 1 nm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Also, it would have been prima facie obvious for a person of ordinary skill in the art to further include a polyacrylamide repeat unit in the polyamine segment coating the metallic core, as reasonably suggested by Yuan et al.
Regarding instant claims 7 and 11, Yuan et al. teach silver nanoparticles coated with a polyamine ([0086]; Claims 5-6, 16-19). Yuan et al. teach that the nanoparticles may be prepared by reducing metal ions in the presence of the polyamine compound ([0047], [0086]).
Therefore, the silver nanoparticles according to Yuan et al. comprise the same components as the instant invention and would necessarily comprise a pure crystalline metal core with a face-centered cubic crystal structure.
Regarding instant claims 13-14, Yuan et al. teach nanoparticles that comprise the same components as instantly claimed. Therefore, in the absence of evidence to the contrary, the nanoparticles would necessarily possess the same properties as the instant claims.
Regarding instant claims 58-59, Yuan et al. teach compositions comprising nanoparticles that are within the scope of the instant invention. Therefore, in the absence of evidence to the contrary, the compositions according to Yuan et al. would inherently be non-toxic to off-target organisms.
The examiner respectfully points out the following from MPEP 2112: “The 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). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court stated that “just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel.”
Response to Arguments
Applicant's arguments filed 22 September 2025 have been fully considered but they are not persuasive. Applicant argues that independent claim 1, as amended herein, more particularly points out that the nanoparticle comprises a pure crystalline metal or metal oxide core, and includes all the limitations of previously presented claims 7 and 11, which are not rejected on this basis.
The examiner respectfully argues that Yuan et al. teach metal nanoparticles coated with a polyamine wherein the particles have a particle size of 2 to 100 nm and a coating thickness of 1 to 10 nm. Yuan et al. teach that the nanoparticles may be formed in a one-pot process by reducing metal ions in the presence of the polyamine ([0047]). In the absence of evidence to the contrary, the metal nanoparticles according to Yuan et al. will comprise a pure crystalline metal core coated with a polyamine, as instantly claimed.
Claims 51-53 and 56 are rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al. (US 2016/0002438 A1) as applied claims 1-5, 7, 11, 13-14 and 58-59 above, further in view of Okazaki (WO 2019/225051 A1; English language equivalent US 2021/0368802 A1 referred to herein).
Regarding instant claims 51-53 and 56, Yuan et al. teach polyamines serve as a cationic polymer to provide functions such as antimicrobial and antiviral functions for the nanoparticles ([0012]). Yuan et al. do not explicitly disclose a method of controlling pests, such as mosquitoes.
However, Okazaki teaches composite particles comprising titanium oxide, silver particles and hydroxyapatite have microbicidal action ([0007]). Okazaki further teaches a method for controlling mosquitoes and effectively preventing the spread of a mosquito-borne infection comprising application of a composite particle to the mosquito or an egg thereof in water, wherein the composite particle comprises a titanium oxide particle, a metal particle, and a calcium phosphate particle ([0001], [0012]-[0023]; Claims 1-3, 5-6, 8-16). The metal particle included in the composite particle is, for example, selected from the group consisting of a silver particle, a gold particle, a platinum particle, and a copper particle. The metal particle included in the composite particle is preferably a silver particle ([0035]; Claims 10-11 and 14-16).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to use the metal nanoparticles according to Yuan et al., comprising silver nanoparticles and a polyethyleneimine shell, in compositions for the control of mosquitoes, as reasonably taught by Okazaki et al. A person of ordinary skill in the art would have a reasonable expectation of success because Okazaki et al. teach that titanium oxide particles, metal particles and calcium phosphate particles are effective for the control of mosquitoes. A person of ordinary skill in the art would have a reasonable expectation that the nanoparticles of Yuan et al. would also be suitable for use in the compositions of Okazaki et al. to control mosquitoes and prevent transmission of mosquito-borne diseases.
Response to Arguments
Applicant's arguments are the same as above. Applicant argues that Okazaki fails to cure the deficiencies of Yuan in teaching the nanoparticle as instantly claimed, comprising a pure crystalline metal or metal oxide core, more particularly a core comprising pure polycrystalline silver, and/or a core having a face-centered cubic crystal structure as set forth in the instant claims.
The examiner’s response above is repeated herein.
Claims 19, 26, 30 and 38-39 are rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al. (US 2016/0002438 A1) in view of Okazaki (WO 2019/225051 A1; English language equivalent US 2021/0368802 A1 referred to herein) as applied to claims 1-5, 7, 11, 13-14, 51-53, 56 and 58-59 above, further in view of Tan et al. (Langmuir, 2007).
The teachings of Yuan et al. and Okazaki are discussed above.
Regarding claims 19, 26, 30 and 38-39, Yuan et al. do not explicitly disclose subjecting a mixture of metal salt and a molecule/polymer comprising amino functional groups in a buffered aqueous solution to ultraviolet light exposure.
However, Tan et al. teach UV-assisted reduction of Ag+ to Ag0 in polyamine solutions at low concentration of HEPES that yields positively charged Ag nanoparticles (pg. 9837). The BPEI:AgNO3:HEPES molar ratio had a dramatic effect on the nanoparticle size. Figure 3 shows the UV-visible spectra of Ag [+] nanoparticles formed from aqueous solutions at three different BPEI:AgNO3:HEPES molar ratios of 0.5:1:0.1, 0.75:1:0.1, and 1:1:0.1 as well as the corresponding SEM images of the nanoparticles immobilized on silicon substrates. Note that in these experiments, HEPES and AgNO3 concentrations were kept constant. SEM images showed that an increase in the BPEI to Ag ratio results in a decrease in the particle size. The average Ag [+] nanoparticle sizes were 66 ± 11, 46 ± 11 and 33 ± 8 nm for the BPEI:AgNO3:HEPES molar ratios of 0.5:1:0.1, 0.75:1:0.1, and 1:1:0.1, respectively. The results are consistent with the work of Sun et al., who reported that increasing the molar ratio of PEI to AgNO3 leads to a decrease in the particle size for the reduction of Ag+ ions by linear polyethyleneimine (LPEI) (pg. 9839).
Therefore, it would have been prima facie obvious to prepare the nanoparticles according to Yuan et al. using the method taught by Tan et al. Such would have been obvious because it is an alternative method for the preparation metal nanoparticles with a positively charged coating, and Tan et al. teach that the molar ratio of PEI to AgNO3 can be adjusted to change the particle size.
Regarding instant claims 38-39, it would have been obvious for a person of ordinary skill in the art to determine through routine experimentation the necessary quantity and ratio of PEI and silver to include in the reaction according to Tan et al. Such would have been obvious because Tan et al. teach that the molar ratio of PEI to AgNO3 can be adjusted to change the particle size.
Response to Arguments
Applicant's arguments are the same as above. Applicant argues that Tan fails to cure the deficiencies of Yuan and Okazaki in teaching the nanoparticle as instantly claimed.
The examiner’s response above is repeated herein.
Claims 1-5, 7, 13-14 and 58-59 are rejected under 35 U.S.C. 103 as being unpatentable over Luinstra et al. (US 2011/0020170 A1).
Regarding instant claims 1-3 and 5, Luinstra et al. teach silver nanoparticles derivatized with polyethyleneimine (Examples 59-134; Claims 16, 18, 22, 24-26 and 28). Luinstra et al. teach nanoparticles of platinum and PEI with a particle size of 2-8 nm (Table 4). The noble metal particles prepared have diameters of from 1 to 10 nm and high crystallinity ([0123]).
Regarding instant claim 4, Luinstra et al. teach that in the context of the present invention, polyethyleneimines are also those polymers comprising ethyleneimine units which are obtainable by grafting polyvinylamines with ethyleneimine or oligomers of ethyleneimine. Polyvinylamines are obtainable by complete or partial hydrolysis of polymers of open-chain N-vinylcarboxamides, wherein the degree of hydrolysis is in general from 5 to 100% ([0030]-[0031], [0033]-[0035]; Claim 16).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare metal nanoparticles according to Luinstra et al. comprising a core of crystalline metal and a coating of polyethyleneimine, wherein the coated nanoparticles have diameters of from 1 to 10 nm and high crystallinity.
Regarding the thickness of the positively charged molecule/polymer coating, Luinstra et al. teach that a metal salt solution is reduced with a reducing agent in the presence of the derivatized polyethyleneimines or polyvinylamines ([0019], [0059], [0074]).
Regarding instant claim 7, Luinstra et al. teach metal nanoparticles that are the same as the instant invention. Therefore, the metal nanoparticles will necessarily comprise a face-centered cubic crystal structure.
Regarding instant claims 13-14, Luinstra et al. teach nanoparticles that comprise the same components as instantly claimed. Therefore, in the absence of evidence to the contrary, the nanoparticles would necessarily possess the same properties as the instant claims.
Regarding instant claims 58-59, Luinstra et al. teach compositions comprising nanoparticles that are within the scope of the instant invention. Therefore, in the absence of evidence to the contrary, the compositions according to Luinstra et al. would necessarily be non-toxic to off-target organisms.
The Office does not have the facilities for examining and comparing applicant’s product with the product of the prior art in order to establish that the product of the prior art does not possess the same coating thickness of the claimed product. Luinstra et al. teach reducing metal salt solutions with a reducing agent in the presence of polyethyleneimines or polyvinylamines, which is the same as the instant invention. In the absence of evidence to the contrary, the burden is upon the applicant to prove that the claimed products are functionally different than those taught by the prior art and to establish patentable differences. See Ex parte Phillips, 28 U.S.P.Q.2d 1302, 1303 (PTO Bd. Pat. App. & Int. 1993), Ex parte Gray, 10 USPQ2d 1922, 1923 (PTO Bd. Pat. App. & Int.) and In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
The examiner respectfully points out the following from MPEP 2112: “The 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). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court stated that “just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel.”
Response to Arguments
Applicant's arguments filed 22 September 2025 have been fully considered but they are not persuasive. Applicant argues that independent claim 1, as amended herein, more particularly points out that the nanoparticle comprises a pure crystalline metal or metal oxide core, and includes all the limitations of previously presented claim 11, which is not rejected on this basis.
The examiner respectfully argues that Luinstra et al. teach that a metal salt solution is reduced with a reducing agent in the presence of the derivatized polyethyleneimines or polyvinylamines ([0019], [0059], [0074]).
The Office does not have the facilities for examining and comparing applicant’s product with the product of the prior art in order to establish that the product of the prior art does not possess the same coating thickness of the claimed product. Luinstra et al. teach reducing metal salt solutions with a reducing agent in the presence of polyethyleneimines or polyvinylamines, which is the same as the instant invention. In the absence of evidence to the contrary, the burden is upon the applicant to prove that the claimed products are functionally different than those taught by the prior art and to establish patentable differences. See Ex parte Phillips, 28 U.S.P.Q.2d 1302, 1303 (PTO Bd. Pat. App. & Int. 1993), Ex parte Gray, 10 USPQ2d 1922, 1923 (PTO Bd. Pat. App. & Int.) and In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
The examiner respectfully points out the following from MPEP 2112: “The 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). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court stated that “just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel.”
Claims 19, 23, 26 and 38-39 are rejected under 35 U.S.C. 103 as being unpatentable over Luinstra et al. (US 2011/0020170 A1) as applied to claims 1-5, 7, 13-14 and 58-59 above, further in view of Tan et al. (Langmuir, 2007).
The teachings of Luinstra et al. are discussed above and incorporated herein by reference.
Regarding instant claims 19, 23, 26 and 38-39, Luinstra et al. teach silver nanoparticles derivatized with polyethyleneimine, including polyvinylamines obtainable by complete or partial hydrolysis of polymers of open-chain N-vinylcarboxamides. Luinstra et al. also teach particle sizes of 2-8 nm. Luinstra et al. do not explicitly disclose subjecting a mixture of metal salt and a molecule/polymer comprising amino functional groups in a buffered aqueous solution to ultraviolet light exposure.
However, Tan et al. teach UV-assisted reduction of Ag+ to Ag0 in polyamine solutions at low concentration of HEPES that yields positively charged Ag nanoparticles (pg. 9837). The BPEI:AgNO3:HEPES molar ratio had a dramatic effect on the nanoparticle size. Figure 3 shows the UV-visible spectra of Ag [+] nanoparticles formed from aqueous solutions at three different BPEI:AgNO3:HEPES molar ratios of 0.5:1:0.1, 0.75:1:0.1, and 1:1:0.1 as well as the corresponding SEM images of the nanoparticles immobilized on silicon substrates. Note that in these experiments, HEPES and AgNO3 concentrations were kept constant. SEM images showed that an increase in the BPEI to Ag ratio results in a decrease in the particle size. The average Ag [+] nanoparticle sizes were 66 ± 11, 46 ± 11 and 33 ± 8 nm for the BPEI:AgNO3:HEPES molar ratios of 0.5:1:0.1, 0.75:1:0.1, and 1:1:0.1, respectively. The results are consistent with the work of Sun et al., who reported that increasing the molar ratio of PEI to AgNO3 leads to a decrease in the particle size for the reduction of Ag+ ions by linear polyethyleneimine (LPEI) (pg. 9839).
Therefore, it would have been prima facie obvious to prepare the nanoparticles according to Luinstra et al. using the method taught by Tan et al. Such would have been obvious because it is an alternative method for the preparation metal nanoparticles with a positively charged coating, and Tan et al. teach that the molar ratio of PEI to AgNO3 can be adjusted to change the particle size.
Regarding instant claims 38-39, it would have been obvious for a person of ordinary skill in the art to determine through routine experimentation the necessary quantity and ratio of PEI and silver to include in the reaction according to Tan et al. Such would have been obvious because Tan et al. teach that the molar ratio of PEI to AgNO3 can be adjusted to change the particle size.
Response to Arguments
Applicant's arguments are the same as above. Applicant argues that Tan fails to cure the deficiencies of Luinstra in teaching the nanoparticle as instantly claimed.
The examiner’s response above is repeated herein.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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/N.W.S/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616