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 .
Priority
This application is a CIP of PCT/US2021/019868 (02/26/2021) which has PRO 62/982,861 (02/28/2020).
Claim Status
Claims 1-11, 13, 17 are pending.
Any claim rejection not reiterated herein is withdrawn.
New Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-11, 13, 17 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
Applicant amended claim 1 and stated the following with respect to support for the amendment:
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The cited paragraphs of the specification were reviewed and support for the amendment was not found therein. As filed paragraphs [0043]-[0044] are as follows:
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which does not reference “A quantum computer” or provide support for the new claim language either literally or implicitly. In addition, based on the original disclosure one of skill in the art would not recognize that Applicant possessed such a scope.
As per MPEP 2163 II A: With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP §§ 714.02 and 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims."). The inquiry into whether the description requirement is met is a question of fact that must be determined on a case-by-case basis. AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1297, 111 USPQ2d 1780, 1788 (Fed. Cir. 2014) ("Whether a patent claim is supported by an adequate written description is a question of fact."); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) ("Precisely how close [to the claimed invention] the description must come to comply with Sec. 112 must be left to case-by-case development."); In re Wertheim, 541 F.2d at 262, 191 USPQ at 96 (inquiry is primarily factual and depends on the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure).
The examiner could not locate support for the new claim language, nor does there appear to be a written description of the limitation in the application as filed. See Hyatt v. Dudas, 492 F.3d 1365, 1370, 83 USPQ2d 1373, 1376 (Fed. Cir. 2007) (holding that "[MPEP] § 2163.04 (I)(B) as written is a lawful formulation of the prima facie standard for a lack of written description rejection."). There is no literal support for the added limitation and one of skill in the art would not recognize that Applicant possessed the claim scope. Thus, the claim and those that depend therefrom are rejected.
Claim Rejections - 35 USC § 103
Claims 1-11, 13, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Jimenez et al. (WO 2018/197715) in view of Bai et al. (J. Phys. Chem. C 2016, 120, 3595−3601), Park et al. (Nano Lett., Vol. 7, No. 3, 2007, p. 766-772), Rizvi (“Synthesis And Size Dependent Properties Of Multiferroic BiFeO3 Nanoparticles,” Thesis, Bangladesh Univ., 2015, 97 pages), and Wang et al. (Inorg. Chem. Front., 2020, 7, 300–339, First published 30 Oct 2019).
Regarding claim 1, Jimenez teaches photocatalytic composite metal organic framework (MOF) materials comprising nanoparticles (NP) encapsulated in the MOF body where the nanoparticle diameter is in the range of 3-200nm (title, abstract). Jimenez teaches in preferred embodiments the nanoparticles are photocatalytic and are BiFeO3 (p. 4, line 25-35; p. 6, lines 29-32; claim 6).
Although Jimenez teaches the composite MOF comprises BiFeO3 (“BFO”) nanoparticles, Jimenez is silent regarding the nanoparticles multiferroic compound consists of antiferromagnetic core surrounded by a ferromagnetic shell as in the claim.
Bai teaches BiFeO3 (“BFO”) nanoparticles and how the size affects photocatalytic properties (title, abstract). Bai teaches that the BFO nanoparticles are multiferroic (p. 3595: “Among useful ferroelectrics for photoinduced applications, the so-called multiferroic BiFeO3 (BFO) is the most promising candidate because of its relatively small band gap”) whose photocatalytic activity is a function of a skin layer or shell of the same BFO compound (p. 3596: “skin layer of BFO, which is known to have its own properties and to be an intrinsic property of many other oxides with ABO3 perovskite structure.”; Fig. 2).
Park teaches the size dependence of properties of single-crystalline multiferroic BiFeO3 nanoparticles (title, abstract). Park teaches the importance of size and the ferromagnetic surfaces and the antiferromagnetic cores (p. 767: “the favorable magnetic properties of BiFeO3 nanoparticles with typical dimensions below 62 nm strongly correlate with the size of the nanostructures themselves due to their grain size confinement,”; p. 769: “the presence of exchange coupling between the ferromagnetic surfaces and the antiferromagnetic cores.”).
Rizvi reviews BFO nanoparticles including their interesting properties determined by the antiferromagnetic core and ferromagnetic surface (p. 42; p. 72: “antiferromagnetic core and ferromagnetic surface”). Rizvi teaches the synthesis and characterization of BFO nanoparticles using a sol-gel method (p. 49-52: Pechini sol-gel method using bismuth nitrate pentahydrate (Bi(NO3)3·5H2O), iron nitrate nonahydrate (Fe(NO3)3·9H2O), citric acid (C6H8O7), ethylene glycol (C2H6O2) and glacial acetic acid (CH3COOH)), which corresponds to the same technique as in the instant specification on page 17. Rizvi teaches impurities in the nanoparticles is undesirable (p. 24: “Presence of such impurities results in high leakage current and poor ferroelectric hysteresis behavior.”).
Wang reviews the success of a number of MOF photocatalysts including MOF-NP comprising BFO (Abstract, p. 319-321).
One of ordinary skill in the art following Jimenez teaching of a photocatalytic MOF-NP would have considered utilizing Bai’s BFO multiferroic NP because they are in the same field of endeavor and Jimenez teaches the same BFO NPs are useful. One of ordinary skill in the art would have considered the teachings of Park and Rizvi also to BFO nanoparticles in considering the synthetic process, and importance of impurities, as well as the significance of the antiferromagnetic core and ferromagnetic surface. One of ordinary skill in the art would have had a reasonable expectation of success because Jimenez teaches BFO NPs are preferred embodiments and Bai, Park, Rizvi teach how to synthesize and control the size while Wang describes the successful application of the technique. Regarding the claim language of “consists of a single compound” Bai, Park and Rizvi all teach that the nanoparticle is pure and the importance of avoiding impurities, while the antiferromagnetic core surrounded by a ferromagnetic shell is a property of the particles as taught by Bai, Park and Rizvi. Thus, one of ordinary skill in the art would have combined the teaching of the prior art and arrive at the invention as claimed.
Regarding claim 2, Jimenez, Bai, Park and Rizvi all teach the multiferroic compound is BFO.
Regarding claim 3, reciting a process step (“nanoparticles calcined at a temperature …”), this claim is being interpreted as a product-by-process as per MPEP 2113 (“[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)). Regardless, Jimenez and Bai both teach calcined/heating within the claimed range (Jimenez p. 26, line 16; Bai p. 3596: “calcined under controlled heating conditions at temperatures ranging from 450 to 600 °C to tune the particle sizes.”).
Regarding claims 4-10, as with claim 3, is interpreted as a product-by-process and is rendered obvious by the same product. Regardless, Bai teaches the solution process including use of ethylene glycol, and tartaric acid. Furthermore, Rizvi teaches the synthesis of BFO nanoparticles using a sol-gel method (p. 49-52: Pechini sol-gel method using bismuth nitrate pentahydrate (Bi(NO3)3·5H2O), iron nitrate nonahydrate (Fe(NO3)3·9H2O), citric acid (C6H8O7), ethylene glycol (C2H6O2) and glacial acetic acid (CH3COOH)), which corresponds to the same technique as in the instant specification on page 17.
Regarding claim 11, Bai teaches the BFO NPs has a rhombohedral perovskite structure with an R3c space group symmetry (p. 3596), as does Park (p. 767, 770) and Rizvi (p. 3).
Regarding claim 13, Jimenez teaches incorporating the NPs in the MOF using solvent techniques (claim 14) such that one of ordinary skill in the art would have considered the known techniques including a double solvent method or liquid impregnation to incorporate the NP in the MOF.
Regarding claim 17 also construed as a product-by-process which is rendered obvious over the same product as the product claim it depends from. Regardless, Rizvi teaches the synthesis of BFO nanoparticles using a sol-gel method wherein the organic acid is citric acid (p. 49-52: Pechini sol-gel method using bismuth nitrate pentahydrate (Bi(NO3)3·5H2O), iron nitrate nonahydrate (Fe(NO3)3·9H2O), citric acid (C6H8O7), ethylene glycol (C2H6O2) and glacial acetic acid (CH3COOH)), which corresponds to the same technique as in the instant specification on page 17.
With each of the claims, the level of skill in the art is very high such that one of ordinary skill in the art would consider routine the combination of elements from the teaching of the art in the same field of endeavor. One of ordinary skill in the art would have recognized that the results of the combination would be predictable due to the well-known nature and optimizations routinely performed in the art. Thus, one of ordinary skill in the art would have arrived at the invention as claimed with a reasonable expectation of success.
Response to Remarks - 35 USC § 103
Applicant argues the claims as amended recites a quantum computer which is structural feature that must be considered when assessing patentability.
Giving the claims their broadest reasonable interpretation in view of the specification in accordance with MPEP 2111.02:
The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use “can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim” as drafted without importing “‘extraneous’ limitations from the specification.” Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (holding that the preamble phrase “which provides improved playing and handling characteristics” in a claim drawn to a head for a lacrosse stick was not a claim limitation). Compare Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333-34, 68 USPQ2d 1154, 1158 (Fed. Cir. 2003) (In a claim directed to a method of treating or preventing pernicious anemia in humans by administering a certain vitamin preparation to “a human in need thereof,” the court held that the preamble is not merely a statement of effect that may or may not be desired or appreciated, but rather is a statement of the intentional purpose for which the method must be performed. Thus the claim is properly interpreted to mean that the vitamin preparation must be administered to a human with a recognized need to treat or prevent pernicious anemia.); Nantkwest , Inc. v. Lee, 686 Fed. App'x 864, 867 (Fed. Cir. 2017) (nonprecedential) (The court found that the preamble phrase “treating a cancer” “’require[s] lysis of many cells, in order to accomplish the goal of treating cancer’ and not merely lysing one or a few cancer cells.”); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1346-48, 64 USPQ2d 1202, 1204-05 (Fed. Cir. 2002) (A claim at issue was directed to a method of preparing a food rich in glucosinolates wherein cruciferous sprouts are harvested prior to the 2-leaf stage. The court held that the preamble phrase “rich in glucosinolates” helps define the claimed invention, as evidenced by the specification and prosecution history, and thus is a limitation of the claim (although the claim was anticipated by prior art that produced sprouts inherently “rich in glucosinolates”)).
During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963) (The claims were directed to a core member for hair curlers and a process of making a core member for hair curlers. The court held that the intended use of hair curling was of no significance to the structure and process of making.); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962) (statement of intended use in an apparatus claim did not distinguish over the prior art apparatus). To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board’s factual finding that the reference dispenser (a spout disclosed as useful for purposes such as dispensing oil from an oil can) would be capable of dispensing popcorn in the manner set forth in appellant’s claim 1 (a dispensing top for dispensing popcorn in a specified manner)) and cases cited therein. See also MPEP § 2112 - MPEP § 2112.02.
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See also Catalina Mktg. Int’l, 289 F.3d at 808-09, 62 USPQ2d at 1785 (“[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.…Without such reliance, however, a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.”
In this case, an evaluation of the preamble in view of the specifications lack of any basis for structure results in the conclusion that the language does not limit the structure because the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations. Thus, the prior art meets the limitations recited in the body of the claim and the preamble does not distinguish the claims over the art. Furthermore, the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.
Conclusion
No claim allowed.
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 ROBERT H HAVLIN whose telephone number is (571)272-9066. The examiner can normally be reached 9am - 6pm.
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/ROBERT H HAVLIN/Primary Patent Examiner, Art Unit 1626
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