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, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/02/2026 has been entered.
Claims 1, 3-12 and 35-51 are pending. Claims 1-10 are being examined. Claims 2 and 13-34 are canceled. Claims 11-12 and 35-51 are withdrawn from further consideration. Claim 1 is amended with no new subject matter being introduced.
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.
Claims 1 and 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lv et al. (Lv et al., "A simple method for detecting and quantifying microplastics utilizing fluorescent dyes – Safranine T, Fluorescein isophosphate, Nile red based on thermal expansion and contraction property”, Environmental Pollution, 55 (2019), 11 pages) in view of Qu et al. (Qu et al., “Using acs-22 mutant Caenorhabditis elegans to detect the toxicity of nanopolystyrene particles”, Science of the Total Environment 643 (2018) 119-126).
Considering claims 1 and 3, Lv teaches a nanoplastic or microplastic particle comprising a nanoplastic or microplastic polymer/polymer composite/polymeric matrix (i.e., polyethylene, polystyrene, polyvinyl chloride and polyethylene terephthalate plastic particles) and a fluorescent tag (i.e., fluorescent dyes to stain four common plastic particles) (Lv, abstract).
Lv teaches the fluorescent tag is Fluorescein isophosphate (FITC), Nile Red, or Safranine T (Lv, section 2.2 on page 2), he does not explicitly teach that it is rhodamine-B.
However, Qu teaches labeling particles of nanopolystyrene with rhodamine-B to assess the potential toxicity of nano plastics on environmental organisms (Qu, section 2.1 and 3.2). Thus, Qu teaches tagging nanopolystyrene particles with rhodamine-B to track the distribution and location of the nanopolystyrene particles.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use rhodamine-B as the fluorescent tag for the nanoplastic polymer. One of ordinary skill in the art, before the effective filing date of the claimed invention would have been motivated to do so because rhodamine-B is known to be suitable as a fluorescent tag for a nanoplastic polymer.
Considering claims 4 and 6-7, Lv teaches the fluorescent tag comprises a bioconjugate, the nanoplastic/microplastic particle comprises a functionalized surface selected from the claimed chemical groups wherein the fluorescent tag is associated with the functionalized surface by teaching that the amino group at one end of the silane reagent can be bonded to the isothiocyano group on the FITC dye, and the siloxy group at the other end can be bonded to the hydroxyl group on the plastic, thereby allowing the plastic to be fluorescently labeled (Lv, section 2.3 on page 2).
Considering claim 5, Lv teaches the fluorescent tag is distributed throughout the polymer matrix by teaching the dye molecules can enter inside the microplastics (Lv, 1st column, 2nd paragraph on page 2).
Considering claims 8-10, Lv teaches particle sizes of less than 100 microns (Lv, section 2.1 on page 2). A prima facie case of obviousness exists because the claimed ranges of about less than one micron, less than about 500 nm, and less than about 100 nm overlap the range taught by Lv (see MPEP §2144.05(I)).
Response to Arguments
Applicant’s arguments filed regarding Lv teaches a post-labeling approach that requires two steps in contrast to the nanoplastic or microplastic particle of the instant claims wherein the labeling of the nanoplastic or microplastic occurs during the generation of the particle have been fully considered but are not persuasive.
The claims are directed to a nanoplastic or microplastic particle comprising a fluorescent tag. The claims are not directed to the process by which the claimed product is produced and the claim does not comprise any product by process language nor does it comprise any structural limitations which would differentiate it from the nanoplastic/microplastic of Lv.
In addition, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Applicant’s arguments filed regarding Qu discusses nanopolystyrene particles comprising a rhodamine-B fluorescent tag enveloped by polystyrene and not the claimed nanoplastic/microplastic polymers have been fully considered but are not persuasive.
It should be noted that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, Lv is directed to detecting microplastic contaminants such as polyethylene, polystyrene, polyvinyl chloride and polyethylene terephthalate for aquatic environmental through fluorescent staining. Lv teaches examples of dyes which include Nile red, Fluorescein isophosphate and Safranine T. Qu teaches microplastics are being released into the environment (i.e., ocean) which may be potentially degraded into nanoparticles, Qu teaches staining/labelling of microplastics (i.e., polystyrene) with rhodamine-B in order to track the polystyrene microplastics. Thus, Qu suggests that rhodamine-B is a suitable dye for tagging/staining microplastics that are released into the aquatic environment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANITA NASSIRI-MOTLAGH whose telephone number is (571)270-7588. The examiner can normally be reached M-F 6:30-3:00.
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/ANITA NASSIRI-MOTLAGH/Primary Examiner, Art Unit 1734
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