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 .
Specification
A substitute specification in proper idiomatic English and in compliance with 37 CFR 1.52(a) and (b) is required. The substitute specification filed must be accompanied by a statement that it contains no new matter.
Claim Rejections - 35 USC § 112
Claims 8-14 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. The specification as set forth fails to reasonably describe the following claimed parameters:
The specification fails to teach “obtaining a desired concentration and formation of the Si quantum dots through UV radiation emitting visible light”. It is unclear what this process step is drawn to. The previously presented claims are a machine translation having similar phrases- the previously proposed claims state “Concentration and formation of the Si QDs which can be obtained by UV radiation emitting visible light”. This recitation seems to be in terms of ascertaining the properties of the ‘concentration and formation’ by the luminescent spectrum and not a method of obtaining Si QD’s from a precursor as claimed. Appropriate explanation of how the language previously set forth supports the actual formation and production of quantum dots is necessary.
The specification fails to teach ‘positively charging quantum dots zeta potential in an aqueous environment”. The specification as set forth delineates materials that have a positive charge as-created, but does not teach a method of further charging the zeta potential of the particles. Thus it cannot be said that the specification as originally filed teaches a step of positively charging the materials.
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 8-14 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. In terms of Claim 8, the claim sets forth a method for fabricating Si quantum dots. The means for creating said quantum dots is in terms of using a UV-Vis method (preamble and line 5-6). It is unclear what constitutes ‘using’ such a method as none of the claim steps as set forth delineate the scope of such a ‘use’. One such creation is shown in the obtaining step wherein a ‘desired’ concentration and formation of the Si quantum dots through UV radiation emitting visible light. It is unclear what constitutes “UV radiation emitting visible light”. UV radiation is by definition light within the UV range of the electromagnetic spectrum and is not visible light. UV radiation is light and does not emit light itself. Prior to the step for actually obtaining quantum dots, the claim sets forth modifying the quantum dots and positively charging quantum dots. It is unclear what these steps are drawn to as the quantum dots are formed in a later step. The claim is interpreted as not being drawn to sequential steps. For the sake of examination, the use of the claimed steps in any order is considered to meet the claim limitations. The claims set forth a desired concentration and formation as is discussed previously. It is unclear what constitutes a desired concentration or formation and what actually is considered a ‘formation’ as claimed. Any concentration or ‘formation’ of quantum dots is considered to be a desired amount in terms of concentration and formation. The claim goes on to set forth that said concentration is determined by different parameters of the UV radiation. It is unclear how these features are determined by a parameter of the UV radiation and the specification as set forth does not clarify such a process. It is thought that these features are a result of those parameters and it is unclear if this is a translation issue. It is unclear what applicant means by the statement “quantum dots are sized in a range of 2-3 nm” in terms of scope. For the sake of examination this limitation is considered to be drawn to quantum dots having an average size within the stated range. The claim finally sets forth ‘one or more carboxylic acids or Na, K salts of carboxylic acids are used. It is unclear how these materials are used in the context of the method. It is generally unclear, what precursors and process steps are required to create the materials as claimed. It is generally unclear what constitutes a UV-Vis method as claimed. The specification also fails in properly identifying the metes and bounds of the method or precursors.
In terms of claim 9, the claim sets forth ‘adding quantum dot structures” however it is unclear what these quantum dots are added to and what the previous surfaces of those quantum dots were ‘previously specified’ as. It is unclear what it means for ‘the modification can be expanded in a large band’. Clarification on what applicant means by this limitation is necessary.
In terms of claim 10, applicant sets forth that the UV-Vis energy (no antecedent) belongs to a certain area of EM radiation. The claims previously set forth that this is UV light. It is unclear that this further limits the previously set forth scope.
In terms of claim 11, it is unclear what is being irradiated as claim 8 does not set forth a precursor and it is unclear what “the Si’ refers to.
In terms of claim 13, the claim sets forth multiple use limitations such as a use of a precursor material and use of various small carbon alcohol solvents. It is unclear how these materials are used. The claim also lacks antecedent basis for many terms as is set forth below.
Any claim not particularly discussed is rejected based at least upon its dependence. Correction or explanation of all of the issues as set forth above are necessary to understand the scope of the claim.
Claim 10 recites the limitation "the UV-Vis energy" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is unclear what this limitation refers to as the only recitation of UV-Vis is referred to in the preamble in terms of a method and the radiation used in the process is referred to as UV light particularly.
Claim 11 recites the limitation "the Si" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is unclear what “the Si” refers to as the claim previously only mentions Si quantum dots and does not reference a precursor that is irradiated.
Claim 13 recites the limitation "the carboxylic acid solution" in line 3 and 6. There is insufficient antecedent basis for this limitation in the claim. The claims previous note a carboxylic acid material but do not set forth a solution or the means in which the carboxylic acid material is used
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 8-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inartaglia in their publication “ Influence of organic solvent on optical and structural properties of ultra-small silicon dots synthesized by UV laser ablation in liquid” in view of May in their publication “Enhancing silicon quantum dot uptake by pancreatic cancer cells via Pluronic encapsulation and antibody targeting”.
Regarding Claim 8: Inartaglia teaches a method for creating silicon quantum dots (SiQD) using a UV-vis method comprising: obtaining a desired concentration and formation of SiQD through UV radiation (See Section 2.1). The formation and concentration of the nanoparticles are shown in Figure 1 and represents a ‘desired’ concentration and formation. The average particle size is 2 nm (See Section 3.1). Inartaglia teaches that the parameters of the UV light, namely the time period of irradiation, determines the structure and concentration of the as-created quantum dots (See Section 3.1).
Inartaglia is silent in terms of the use of carboxylic acids and modifying the quantum dots with different functional groups, positively charging the zeta potential in an aqueous environment.
However, various surface modifications of SiQD are known in the art and taught by May. May shows that SiQD can be functionalized with a carboxylic acid terminated Pluronic ligand (different functional group) by providing the Pluronic in a polar solvent with SiQD within a rotary evaporator (See Micelle encapsulation- ‘modifying the quantum dots with different functional groups’; ‘use of one or more carboxylic acids’). May teaches that such a composite structure may be provided in water and the zeta potential of the surface may be increased by providing various dilutions, including buffer solutions with NaCl. May teaches that providing such a solution positively charges the zeta potential of the quantum dot in an aqueous environment (See Figure 4A). Those of ordinary skill in the art would have found it obvious to modify the SiQD of Inartaglia with the process of May based on Inartaglia’s teachings in terms of the various uses for SiQD in their Introduction. Inartaglia expressly teaches the use of SiQD for bio-tagging, bioimaging, fluorescent labeling and therapy. Those of ordinary skill would have found it obvious to provide Pluronic-COOH functionalization and positive zeta-potential adjustment of May to the nanoparticles of Inartaglia so that the nanoparticles of Inartaglia could be used in the fluorescent tagging applications shown by May. Those of ordinary skill would have been motivated to apply the SiQD of Inartaglia in the various applications noted in the Introduction section and would have found the modifications of May as suitable for using the SiQD in such applications.
Regarding Claim 9: May teaches adding quantum dot structures with different functional groups, which are previously specified, to biological samples. May teaches that the quantum dots are further modified with second or third functional groups such as folic acid, anti-mesothelin, anti-claudin-4. May further teaches the creation of amide functional groups coupled wo the carboxylic group of Pluronic-COOH (See Bioconjugation). The use of various functional groups would not be expected to effect the luminescent properties of the SiQD. As is noted above- it is unclear what applicant means by “modification can be expanded in a large band”. It is thought that the modification of May would be to the same extent as that which is claimed.
Regarding Claim 10 and 12: Inartaglia teaches that a 2 ml colloidal solution (solvent is water in water-synthesized SiQD) may be extracted and tested for photoluminescence (See Section 2.2). The SiQD emit light at various wavelengths from 400 to 525 nm (See Figure 3). Inartaglia teaches that the ‘UV-Vis energy’ belongs to the UV area of electromagnetic radiation (See Section 2.1).
Regarding Claim 11: Inartaglia teaches that the irradiation may occur for 60 minutes (See Section 2.1). Inartaglia is silent as to the creation of from 10 mL to 1 L of quantum dots; however, those of ordinary skill in the art would have found it obvious to scale the experimental method of Inartaglia to create any volume of quantum dots whether by providing a plurality of lasers or by an iterative process. Thus the creation of certain volumes of quantum dots from 10 mL to 1L would have been obvious to those of ordinary skill in the art based on the teachings of Inartaglia.
Regarding Claim 13: Inartaglia teaches the use of a precursor material in terms of an Si wafer (See Section 2.1). May teaches that the Pluronic-COOH is prepared separately (in a separate container) as a solution and added to the SiQD (See May- Preparation of F127COOH). Thus May teaches preparing the carboxylic acid solution in a container separate from the precursor material.
Regarding Claim 14: May shows that the zeta potential of the quantum dot surfaces may be positive (See Figure 4A- 100x NaCl). As the surfaces of the quantum dots are positively charged, they are attachable to surfaces with negatively charged polymers to the same extent claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734