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 .
Request for Continued Examination (RCE)
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/25/25 has been entered.
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, 15-17 are pending.
Any claim rejection not reiterated herein is withdrawn.
NEW Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 uses the language “nanoparticles consists of comprises BiFeO3" in a manner which is confusing and possibly a typo in the amendment. Correction of clarification of the meaning of “consists of comprises” is required.
NEW 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 1-11, 13, 15-17 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 15, specifying a “system … for use in quantum information processing (QIP),” the claim uses language that is considered an intended use and raises a question as to whether the composition of matter claim is limited by such language. MPEP 2111.02 (“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”); MPEP § 2103(I)(C). Thus, the intended use in the product claim is not such that it defines "discrete physical structures or materials" but is merely a "statement of intended use or field of use." Accordingly, the claim language is construed to only read on the structure of the product. The language “comprising a qubit wherein the qubit comprises” is such that the modified Jimenez MOF-NP renders the claim obvious because the products share the same structure. In addition, Wang teaches the MOF-NPs can be considered semiconductor quantum dots such that one of ordinary skill in the art would consider their use as such a system.
Regarding claim 16, the language “comprising a qubit wherein the qubit comprises” is such that the modified Jimenez MOF-NP renders the claim obvious because the products share the same structure. In addition, Wang teaches the MOF-NPs can be considered semiconductor quantum dots such that one of ordinary skill in the art would consider their use as such a sensor.
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 that Jimenez teaches the use of different components for the core and shell. This argument is not persuasive because although Jimenez teaches several nanoparticles in the MOF, Jimenez specifically teaches a nanoparticle of BFO in a preferred embodiment without any requirement for different core-shell components.
Applicant argues that one of ordinary skill in the art would not produce nanoparticles that consist of a single compound having antiferromagnetic core surrounded by a ferromagnetic shell as amended. This is not persuasive because Bai, Park, and Rizvi all teach a single BFO compound possessing a antiferromagnetic core surrounded by a ferromagnetic shell as detailed in the rejection above.
Applicant also argues that one of ordinary skill in the art would not have combined the references to arrive at the invention as claimed. This is not persuasive because Jimenez teaches BFO nanoparticles which the secondary references are directed to and each points out the interesting properties of BFO nanoparticles due in part to the antiferromagnetic core surrounded by a ferromagnetic shell. Thus, one of ordinary skill in the art following the combined teaching of the art had a reasonable expectation of success in arriving at the claimed invention.
Conclusion
No claim allowed.
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/ROBERT H HAVLIN/Primary Patent Examiner, Art Unit 1626