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 .
Status of the Claims
Claims 1 and 11 have been amended. Claim 12 has been canceled. Claims 2-10 have been previously withdrawn. Claims 1 and 11 are currently examined herein.
Status of the Rejection
Applicant’s amendments to the claims have overcome all claim objections and the 35 U.S.C. § 103 rejection for Claims 1 and 11 previously set forth in the Non-Final Office Action mailed September 17th, 2025.
The 35 U.S.C. § 103 rejection from the previous office action for Claim 1 is essentially maintained and modified only in response to the amendments to the claims.
New grounds of rejection under 35 U.S.C. § 103 rejection for Claims 1 and 11 are necessitated by the Applicant’s amendments as outlined below.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1 is rejected under 35 U.S.C 103 as being unpatentable over Miura (In Situ Synthesis of Gold Nanoparticles on Zinc Oxides Preloaded into a Cellulose Paper Matrix for Catalytic Applications. BioResources. 2011; 6(4), pages 4990-5000) in view of Astana (US 2021/0156804 A1) and Rie (Cellulose-gold nanoparticle hybrid materials. Nanoscale, 2017; 9, 8525-8554).
Regarding Claim 1, Miura teaches a method for functionalizing a cellulose support in situ with metal nanoparticles having electrocatalytical properties (preparation of cellulosic catalyst paper with the in situ synthesis of gold nanoparticles; AuNPs@ZnO paper exhibited a high catalytic efficiency [abstract]) the method comprising the steps of:
depositing on cellulose support (ZnO whisker-preloaded paper using pulp [entire section of Preparation of AuNPs@ZnO Paper, page 4992]) a single aqueous solution of a metal precursor (aqueous aurochloric acid [HAuCl4] was used as the metal precursor [second para. page 4993] and Fig. 1 [page 4993]), wherein the single aqueous solution does not include a reducing agent (single aqueous solution was aqueous aurochloric acid [HAuCl4] with no additional reducing agents [second para. page 4993]), in the form of acid or salt (HAuCl4 solution [second para. page 4993]),
drying the cellulose support (heat-dried [second para. page 4993]).
Miura is silent on wherein the cellulose support is unmodified, the deposit surface is from 0.2 cm2 to 0.6 cm2; in a concentration from 1 to 6 mM; a temperature from 65⁰C to 80⁰C for a time from 10 to 40 minutes; thereby forming hot spots of metal nanoparticles on the cellulose support; wherein the metal nanoparticles have an average diameter of between 175 nm to 220 nm.
Asthana teaches a method for functionalizing a cellulose support with metal nanoparticles (abstract), and teaches wherein the cellulose support is unmodified (gold nanoparticles were prepared on a cellulose-based paper surface [para. 0024]), the deposit surface is 0.2 cm2 (reactive disc 104 has a diameter of 5 mm [para. 0048] that gives an area of 0.2 cm2
a
r
e
a
=
π
r
2
=
π
(
d
2
)
2
=
π
(
0.5
c
m
2
)
2
=
0.2
c
m
2
) in a concentration from 1 to 6 mM (about 0.75 mM to about 10 mM [para. 0042]); a temperature from 65⁰C to 80⁰C (substrate incubated at a temperature from about 40⁰C to 120⁰C [para. 0040, 0043]) for a time from 10 to 40 minutes (a time period of 15 to 60 minutes in Fig. 3B [para. 0052]). The Examiner notes the disclosed concentration of the metal precursor (i.e., about 0.75 mM to about 10 mM), the temperature for the drying (40 to 120oC), and the time for the drying (15 to 60 min), overlap with the claimed ranges of the concentration, temperature and time, respectively.
Miura and Ashtana are considered analogous art to the claimed inventions because they are in the same field of methods to create cellulose supports functionalized with metal nanoparticles. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method of cellulose support functionalization of Miura wherein the cellulose support is unmodified, the deposit surface is from 0.2 cm2 and to use a metal precursor solution wherein the deposit surface is from 0.2 cm2 in a concentration from 1 to 6 mM and a drying temperature from 65⁰C to 80⁰C for a time from 10 to 40 minutes, as taught by Ashtana, as these parameters are suitable for cost-effective functionalization of metal nanoparticles on cellulose substrates with high sensitivity [para. 0001]. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." MPEP § 2144.05(II)(A).
Modified Miura is silent on thereby forming hot spots of metal nanoparticles on the cellulose support; wherein the metal nanoparticles have an average diameter of between 175 nm to 220 nm; thereby creating a region or regions of enhanced conductivity and/or sensitivity for use in electrochemical sensing.
Rie teaches nanocomposites of cellulose fibers modified with gold nanoparticles (abstract), and teaches wherein the metal nanoparticles have an average diameter of 10 nm to 200 nm (average gold nanoparticle size ranged from 10 nm to 200 nm [second para. col. 2, page 8529]).
Modified Miura and Rie are considered analogous art to the claimed inventions because they are in the same field of methods to create cellulose supports functionalized with metal nanoparticles. Given the teachings of Rie regarding the average diameter of gold nanoparticles from 10 nm to 200 nm, it would be obvious to one of ordinary skill in the art prior to the effective date of the claimed invention to modify the metal nanoparticles of modified Miura to have an average diameter within the disclosed range, including those amounts that overlap within the claimed range, as gold-cellulose composites have a wide variety of catalytic, antimicrobial, sensing, and antioxidant capabilities (Rie, abstract). It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I);
the limitations “thereby forming hot spots of metal nanoparticles on the cellulose support; thereby creating a region or regions of enhanced conductivity and/or sensitivity for use in electrochemical sensing” are intended results of a positively recited step. The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)).
Claim 11 is rejected under 35 U.S.C 103 as being unpatentable over Miura Astana, and Rie, as applied to claim 1 above, and in further view of Dong (Synthesis of Precision Gold Nanoparticles Using Turkevich Method. KONA Powder and Particle Journal. 2019; 37, pages 224-232)
Regarding Claim 11, modified Miura teaches the method of claim 1.
Miura is silent on wherein the metal nanoparticles have a polydispersity index ≤ 0.15.
Dong teaches a method for synthesizing gold nanoparticles for a variety of applications (abstract), and teaches wherein the metal nanoparticles have a polydispersity index ≤ 0.15 (AuNPs have a polydispersity index ≤ 0.20 [second para. second col. page 224]).
Modified Miura and Dong are considered analogous art to the claimed inventions because they are in the same field of methods to create cellulose supports functionalized with metal nanoparticles. Given the teachings of Dong regarding the polydispersity index ≤ 0.20, it would be obvious to one of ordinary skill in the art prior to the effective date of the claimed invention to modify the metal nanoparticles of modified Miura to have a polydispersity index ≤ 0.20, as gold nanoparticles with a narrow size distribution to yield accurate and reliable performance (Dong, abstract). It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Response to Arguments
Applicant's arguments, see Remarks pgs. 5-11, filed 12/22/2025, with respect to U.S.C 103 rejections and amended claims have been fully considered.
Applicant's Argument #1:
Applicant argues on pages 5-6 that amendments have been made to clarify the single solution, unmodified cellulose support. Independent claim 1 is directed to process features (single solution on unmodified cellulose, no external reductant/template, and defined deposit area) that cause the structural outcome (large particle size, distinct aggregates) that enables improved electrochemical sensing. Applicant argues that since Rie discloses nanoparticles of 10 to 200 nm, and the method of Rie utilizes largely differs from that of Miura and Asthana, and a person of ordinary skill in the art would not consider combining Rie. Applicant also argues the prior art discloses the generation of nanoparticles are heterogeneous sizes and shapes, which are not suitable for electrochemical sensing.
Examiner's Answer #1:
Applicant's arguments have been considered but are not persuasive. First, Rie teaches nanocomposites of cellulose fibers modified with gold nanoparticles (abstract), which is an analogous method to Asthana and Miura as they are methods to create cellulose supports functionalized with metal nanoparticles. In addition, regarding nanoparticles are heterogeneous sizes and shapes, claim 1 does not require the size distribution, only claim 11 requires it. The new reference of Dong teaches gold nanoparticles with a low polydispersity index used for electrochemical sensing (see Claim 11 rejection above).
Applicant's Argument #2:
Applicant argues on pages 7-10 that Miura relies on zinc oxide whiskers preloaded into a paper matrix, which is immersed in an aqueous solution of HAuCl4 for 6 hours, followed by drying at 105⁰C for 3 hours, forming ~5 nm AuNPs templated by the ZnO whiskers within the matrix. This is different from the instant application as the cellulose support is unmodified, and immersed in aqueous solution is not the same as “deposited” in instant claim 1. In addition, Asthana uses a polymer assisted reduction route by using chitosan to act as a reducing/stabilizing agent to form 10-12 nm AuNPs. The mixture is then added to a paper substrate and kept in a humid chamber at 100⁰C for 60 mins. In addition, Asthana teaches that paper alone is insufficient without chemical reducing agent, and thus teaches away from the single claimed solution.
Examiner's Answer #2:
Applicant's arguments have been considered but are not persuasive. First, both Miura and the instant application use a solution of HAuCl4 with no reducing agent (Miura, [second para. page 4993]), which maps to the claim 1 limitation of "wherein the single aqueous solution does not include a reducing agent". Given the broadest reasonable interpretation of independent claim 1, immersing a cellulose support in HAuCl4 can be reasonably interpreted as "depositing on a cellulose support a single aqueous solution of a metal precursor. Note that the secondary reference of Astana also teaches depositing the HAuCl4 solution in a drop manner (Astana, [para. 0049]) as discussed in the instant application. In addition, the secondary reference Astana teaches overlapping ranges of concentration, temperature, and time for independent claim 1, and differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." MPEP § 2144.05(II)(A). Note that although The Examiner agrees that the secondary reference of Astana does use a reducing agent (chitosan in Astana [para. 0024]), a person or ordinary skill in the art would reasonably consider using Miura in view of Astana for cases of temperature, concentration of HAuCl4, and incubation time as both references focus on forming gold nanoparticles on a cellulose substrate.
Applicant's Argument #3:
Applicant argues on page 11 that the large diameter metal nanoparticles taught by Rie are formed using complexation of gold ions with anime groups; reduction by unreacted hydroxyl groups; and growth of nuclei over time. In contrast, the instant application uses unmodified cellulose, no anime grafting, no immersion, and no external reductant to achieve nanoparticles of 175-220 nm, which provides unexpected results in the form of “hot spots” that differ in structure and spatial arrangement to provide the enhanced sensitivity.
Examiner's Answer #3:
Applicant's arguments have been considered but are not persuasive. Forming hot spots from the 175 nm to 220 nm metal nanoparticles to create “hot spots” and regions of “enhanced conductivity and/or sensitivity for use in electrochemical sensing are intended results of a positively recited step, "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). In addition, Examiner notes that metal nanoparticles, such as gold nanoparticles, are commonly utilized to enhance catalytic activity (Miura, [second para. page 4991]), and the secondary reference of Astana also teaches depositing the HAuCl4 solution in a drop manner (Astana, [para. 0049]) to form metal nanoparticles similar to the instant application.
Applicant's Argument #4:
Applicant argues on page 11 that, regarding dependent claim 11, that none of the cited prior art references teach a highly uniform nanoparticle population (PDI ≤ 0.15).
Examiner's Answer #4:
Applicant's arguments have been considered but are moot in view of the new grounds of rejection above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDALL LEE GAMBLE JR whose telephone number is (703)756-5492. The examiner can normally be reached Mon - Fri 10:00-6:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.L.G./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
Prosecution Insights