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 .
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.
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 2-3, 10 and 15-27 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 term “substantially similar” in claims 2 and 15 is a relative term which renders the claim indefinite. The term “substantially similar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In other words, while the specification provides examples of suitable fluids for suspending the second portion of concentrated microspheres (see pg. 2, 1st paragraph), the specification also states the invention is not limited to said fluid examples. The only parameter provided for selecting said fluid is having a refractive index substantially similar to that of a material used to manufacture the microspheres, however, substantially similar is indefinite and does not provide a defined refractive index range for choosing a fluid to suspend the second portion of concentrated microspheres.
Claim 3 is rejected for depending upon rejected claim 2.
Claims 16-20 and 22-27 are rejected for depending upon rejected claim 15.
Claims 10 and 21 recite the limitation "the provided polystyrene microspheres" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. No where in the claims prior to this limitation is the microspheres comprising polystyrene introduced.
Claim Rejections - 35 USC § 102
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.
Claims 1-9, 12-13, 15-20, 22-23, and 25-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication US 2013/0189706 to Poetter et al. (herein Poetter).
Regarding claim 1, Poetter discloses a method of production and labeling of Quantum Dot labeled microspheroidal particles (see Example 1), comprising: mixing silica beads with an aqueous PEI solution (i.e., “providing an aqueous suspension of the microspheres”); centrifuging the solution to remove excess polymer (i.e., “concentrating the microspheres to form a first portion of concentration microspheres and an aqueous supernatant; removing aqueous supernatant from the first portion of the concentrated microspheres”); adding a suspension of QDs in chloroform to a suspension of the beads in dry 2-propanol; separating the QD coated beads by centrifugation; suspending the QD coated beads in a PVP/chloroform/2-propanol solution (i.e., “suspending the first portion of the concentrated microspheres in a solvent miscible with the aqueous supernatant to form solvent-suspended microspheres”); and centrifuging the microspheres (i.e., “concentrating the solvent-suspended microspheres to form a second portion of concentrated microspheres and a solvent supernatant; and removing the solvent supernatant from the second potion of concentrated microspheres”) (see [0153-0158]; Fig. 1).
Regarding claim 2, Poetter discloses all the limitations of claim 1 above and suspending the second portion of concentrated microspheres in NH3/TEOS (see [0158], Fig. 1), wherein TEOS is used in the manufacture of microspheres (see [0182]) thus providing “a fluid having a refractive index substantially similar to that of a material used to manufacture the microspheres” as recited in the instant claim.
Regarding claim 3, Poetter discloses all the limitations of claim 2 above, wherein TEOS is an ester.
Regarding claim 4, Poetter discloses all the limitations of claim 1 above and wherein concentrating the microspheres or the solvent-suspended microspheres occurs under centrifugation (see [00153-0158]).
Regarding claim 5, Poetter discloses all the limitations of claim 4 above and centrifuging for 5 sec. 5 seconds which falls within the claimed range of about 1 second to about 20 minutes.
Regarding claim 6, Poetter discloses all the limitations of claim 1 above and wherein the provided microspheres have a diameter of 1 micron to 100 microns (see [0159]).
Regarding claim 7, Poetter discloses all the limitations of claim 6 above and wherein the provided microspheres comprise QDs (i.e., nanoparticles) bound to the surface of the beads (i.e., silica microspheres) (see [0154]; Fig. 1).
Regarding claim 8, Poetter discloses all the limitations of claim 6 above and wherein the provided microspheres comprise QDs (i.e., nanoparticles) bound to the surface of the beads (i.e., silica microspheres) (see [0154]; Fig. 1), wherein QDs exhibit fluorescence (i.e., fluorochrome (see [0026]).
Regarding claim 9, Poetter discloses all the limitations of claim 6 above and wherein the provided microspheres comprise QDs (i.e., nanoparticles) embedded within a layer of the provided microsphere (see [0155, 157-159]; Fig. 1), wherein QDs exhibit fluorescence (i.e., fluorochrome (see [0026]).
Regarding claim 12-13, Poetter discloses all the limitations of claim 1 above and wherein the solvent comprises 2-propanol (i.e., alcohol) (see [0157]; Fig. 1).
Regarding claim 15, Poetter discloses a method of production and labeling of Quantum Dot labeled microspheroidal particles (see Example 1), comprising: mixing silica beads with an aqueous PEI solution (i.e., “providing an aqueous suspension of the microspheres”); centrifuging the solution to remove excess polymer (i.e., “concentrating the microspheres to form a first portion of concentration microspheres and an aqueous supernatant; removing aqueous supernatant from the first portion of the concentrated microspheres”); adding a suspension of QDs in chloroform to a suspension of the beads in dry 2-propanol; separating the QD coated beads by centrifugation; suspending the QD coated beads in a PVP/chloroform/2-propanol solution (i.e., “suspending the first portion of the concentrated microspheres in a solvent miscible with the aqueous supernatant to form solvent-suspended microspheres”); and centrifuging the microspheres (i.e., “concentrating the solvent-suspended microspheres to form a second portion of concentrated microspheres and a solvent supernatant; and removing the solvent supernatant from the second potion of concentrated microspheres”) (see [0153-0158]; Fig. 1). Poetter further discloses suspending the second portion of concentrated microspheres in NH3/TEOS (see [0158], Fig. 1), wherein TEOS is used in the manufacture of microspheres (see [0182]) thus providing “a fluid having a refractive index substantially similar to that of a material used to manufacture the microspheres” as recited in the instant claim.
Regarding claim 16, Poetter discloses all the limitations of claim 15 above, wherein TEOS is an ester.
Regarding claim 17, Poetter discloses all the limitations of claim 15 above and wherein concentrating the microspheres or the solvent-suspended microspheres occurs under centrifugation (see [00153-0158]).
Regarding claim 18, Poetter discloses all the limitations of claim 17 above and centrifuging for 5 sec. 5 seconds which falls within the claimed range of about 1 second to about 20 minutes.
Regarding claim 19, Poetter discloses all the limitations of claim 15 above and wherein the provided microspheres have a diameter of 1 micron to 100 microns (see [0159]).
Regarding claim 20, Poetter discloses all the limitations of claim 15 above and wherein the provided microspheres comprise QDs (i.e., nanoparticles) bound to the surface of the beads (i.e., silica microspheres) (see [0154]; Fig. 1).
Regarding claim 22, Poetter discloses all the limitations of claim 15 above and wherein the provided microspheres comprise QDs (i.e., nanoparticles) bound to the surface of the beads (i.e., silica microspheres) (see [0154]; Fig. 1), wherein QDs exhibit fluorescence (i.e., fluorochrome (see [0026]).
Regarding claim 23, Poetter discloses all the limitations of claim 15 above and wherein the provided microspheres comprise QDs (i.e., nanoparticles) embedded within a layer of the provided microsphere (see [0155, 157-159]; Fig. 1), wherein QDs exhibit fluorescence (i.e., fluorochrome (see [0026]).
Regarding claim 25-26, Poetter discloses all the limitations of claim 15 above and wherein the solvent comprises 2-propanol (i.e., alcohol) (see [0157]; Fig. 1).
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.
Claims 10-11, 14, 21, 24, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication US 2013/0189706 to Poetter et al. (herein Poetter).
Regarding claim 10, Poetter discloses all the limitations of claim 7 above, however, the method of Poetter fails to explicitly disclose polystyrene microspheres having surface-bound nanoparticles with a diameter from about 40 nm to about 150 nm as recited in the instant claim. Poetter discloses nanoparticles with a diameter of about 2 nm to about 30 nm, wherein about 30 nm is relatively close to about 40 nm. According to MPEP 2144.05 I., in the case where the claimed ranges are merely close to ranges disclosed by the prior art a prima facie case of obvious exists. Therefore, it would have been obvious to one of ordinary skill in the art for the surface-bound nanoparticles to have a diameter of about 40 nm to about 150 nm as recited in the instant claim. Furthermore, Poetter discloses QD functionalized microspheres coated with polystyrene sulfonate (PSS) (see [0027]; Fig. 4). Therefore, it would have been obvious to one of ordinary skill in the art to modify the provided microspheres with a coating of PSS for the benefit of shifting the observed spectra as desired (see [0027]; Fig. 4).
Regarding claim 11, Poetter discloses all the limitations of claim 1 above, however, the method of Poetter fails to explicitly disclose “wherein providing the aqueous suspension of the microspheres comprises providing an aqueous suspension of polystyrene microspheres” as recited in the instant claim. Poetter discloses QD functionalized microspheres coated with polystyrene sulfonate (PSS) (see [0027]; Fig. 4). Therefore, it would have been obvious to one of ordinary skill in the art to modify the method by including PSS beads in the aqueous suspension for the benefit of shifting the observed spectra as desired (see [0027]; Fig. 4).
Regarding claim 14, Poetter discloses all the limitations of claim 13 above, however, fails to explicitly disclose “wherein the alcohol is ethanol” as recited in the instant claim. Poetter does disclose ethanol can be used in the silica growth step prior to the addition of TEOS/NH3 (see [0157]; Fig. 1). Therefore, it would be obvious to one of ordinary skill in the art to substitute the 2-propanol in the solvent with ethanol. See MPEP 2144.07.
Regarding claim 21, Poetter discloses all the limitations of claim 20 above, however, the method of Poetter fails to explicitly disclose polystyrene microspheres having surface-bound nanoparticles with a diameter from about 40 nm to about 150 nm as recited in the instant claim. Poetter discloses nanoparticles with a diameter of about 2 nm to about 30 nm, wherein about 30 nm is relatively close to about 40 nm. According to MPEP 2144.05 I., in the case where the claimed ranges are merely close to ranges disclosed by the prior art a prima facie case of obvious exists. Therefore, it would have been obvious to one of ordinary skill in the art for the surface-bound nanoparticles to have a diameter of about 40 nm to about 150 nm as recited in the instant claim. Furthermore, Poetter discloses QD functionalized microspheres coated with polystyrene sulfonate (PSS) (see [0027]; Fig. 4). Therefore, it would have been obvious to one of ordinary skill in the art to modify the provided microspheres with a coating of PSS for the benefit of shifting the observed spectra as desired (see [0027]; Fig. 4).
Regarding claim 24, Poetter discloses all the limitations of claim 15 above, however, the method of Poetter fails to explicitly disclose “wherein providing the aqueous suspension of the microspheres comprises providing an aqueous suspension of polystyrene microspheres” as recited in the instant claim. Poetter discloses QD functionalized microspheres coated with polystyrene sulfonate (PSS) (see [0027]; Fig. 4). Therefore, it would have been obvious to one of ordinary skill in the art to modify the method by including PSS beads in the aqueous suspension for the benefit of shifting the observed spectra as desired (see [0027]; Fig. 4).
Regarding claim 27, Poetter discloses all the limitations of claim 26 above, however, fails to explicitly disclose “wherein the alcohol is ethanol” as recited in the instant claim. Poetter does disclose ethanol can be used in the silica growth step prior to the addition of TEOS/NH3 (see [0157]; Fig. 1). Therefore, it would be obvious to one of ordinary skill in the art to substitute the 2-propanol in the solvent with ethanol. See MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHRYN E LIMBAUGH whose telephone number is (571)272-0787. The examiner can normally be reached Monday-Thursday 7:00-5:00.
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/KATHRYN ELIZABETH LIMBAUGH/Primary Examiner, Art Unit 1797