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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 12/4/2025 is acknowledged.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Although nanoparticles, reduced graphene, and Mn3O4 are known in the prior art, the term “hybrid nanoparticles (HRG-Mn3O4)” is not a term that is known or defined in the prior art. Although the application recites “(HRG-Mn3O4)” throughout the specification, and that “HRG” are “highly reduced graphene oxide (HRG) nanoparticles,” (paragraph 13), and teaches a method of synthesising manganese oxide (Mn₃O₄) nanoparticles and synthesizing highly reduced graphene oxide nanoparticles, and preparing highly reduced graphene-Mn3O4 (HRG-Mn₃O₄) hybrid nanoparticles comprising the step of milling (Mn₃O₄) nanoparticles and highly reduced graphene oxide (HRG) nanoparticles, this method of making a single embodiment of the invention does not provide a description of the scope of the term “hybrid nanoparticles (HRG-Mn3O4),” including if the nanoparticles may comprise additional components and how reduced the graphene oxide needs to be to be considered “highly reduced” under the scope of the invention.
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.
Claims 1-12 are 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. It’s unclear why “HRG-Mn3O4” is in parentheses and if the recitation is merely exemplary or if it is part of the claimed invention. The examiner recommends removing the parentheses. Claims 2, 4, recite one of “ “preferably,” and “e.g.,” respectively. It’s unclear if the recitations following following these terms are part of the claimed invention or are merely exemplary. Claim 6 recites “a broad band.” “Broad” is a relative term. It’s unclear how broad the band has to be to be considered “broad” within the meaning of applicants claim. Claim 4 recites “…oxygen, and. In…” The punctuation would appear to separate the claim into two sentences but the wording of the claim is one sentence. The examiner recommends replacing “… oxygen, and. In… with “oxygen, and in” so that it is clear that the claim is only one sentence. Claim 4 is further unclear because it recites “the nanocomposite” of claim 1. As there is no nanocomposite in claim 1, there is insufficient basis for this term and it is unclear what nanocomposite is being limited. Further, it is not clear in what way “the nanocomposite” is “characterized by” an energy dispersive X-ray spectrum as shown in FIG 1(B). Further, the claims whenever possible should be complete within themselves. It’s unclear why the claims reference a figure from the specification for the claimed subject matter instead of including that part of the specification into the claim.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu (Journal of Alloys and Compounds, 2016). Xu teaches nanoparticles comprising highly reduced graphene oxide and manganese oxide, which are deemed to read on applicant’s “hybrid nanoparticles (HRG-Mn3O4)” as they comprise highly reduced graphene oxide manganese oxide nanoparticles (Abstract; Figures 1-2; Experimental; Results and discussion). The present recitation in claim 1 “as photodynamic therapy agent and imaging agent for cancer” is an intended use of the hybrid nanoparticles (HRG-Mn3O4). As the hybrid nanoparticles (HRG-Mn3O4) of Xu are structurally the same as the hybrid nanoparticles HRG-Mn3O4 presently claimed, they must be fully capable of being used in the same intended uses as presently claimed, that is, as photodynamic therapy agent and imaging agent for cancer (claim 1). The hybrid nanoparticles HRG-Mn3O4 of Xu are round and have a diameter of about 8 nm to about 15 nm (Figure 3). A composition cannot be separated from its properties, and as the hybrid nanoparticles (HRG-Mn3O4) of Xu are structurally the same as the present hybrid nanoparticles HRG-Mn3O4, they must have the same properties as the present hybrid nanoparticles (HRG-Mn3O4) of Xu, that is, exhibit Xray photoelectron spectrum comprising the peaks recited in claim 3; exhibit the UV visible spectrum absorption bands as recited in claim 4; exhibit the bands recited in claim 5; exhibit the absence of bands recited in claim 7; exhibit the XRD broad peak recited in claim 8; have the property of losing mass upon heating as recited in claim 9; be hemocompatible as recited in claim 10; do not cause cytotoxicity at physiological conditions as recited in claim 11; and cause cellular damage to cancer cells upon exposure of laser light of 670 nm wavelength at a light intensity of 4 mW cm² as recited in claim 12. “[T]he 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): MPEP 2112, I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL W DICKINSON whose telephone number is (571)270-3499. The examiner can normally be reached on M-F 9 AM to 7:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached on 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL W DICKINSON/Primary Examiner, Art Unit 1618