DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-3, in the reply filed on 10/02/2025 is acknowledged.
Claims 4-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/02/2025.
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 2 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 2 recites “dissolving the niobium compounds, containing between 1 and 5 g/L of niobium.” It is not clear how one dissolves a compound that appears to be in solution because of the unit of the concentration given. Therefore the claim is indefinite.
Claim Rejections - 35 USC § 103
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 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) 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over De Oliveira et al. (BR102019024108, English translation).
De Oliveira et al. disclose a nanometric material derived from the reaction of negatively charged niobium oxide with hydrogen peroxide and subsequently methylene blue in a ratio of niobium to quaternary ammonium, i.e. methylene blue ranging between 1:0.5 and 1:2 (paragraphs 14, 16 and 27).
In regard to claim 2, De Oliveira et al. disclose the nanostructure material of instant claim 1. Even 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 of 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.
The prior art discloses the use of 1:0.5 and 1:2 of niobium to quaternary ammonium, the prior art differs from the instant claims insofar as it does not disclose the particular endpoints recited therein, i.e. 10 to 2000 mg/L of quaternary ammonium for concentration s between 100 and 3000 mg/L of niobium. It is well-settled, however, that even a slight overlap in range establishes a prima facie case of obviousness. In re Peterson, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003). Accordingly, since an overlap plainly exists here, it would have been obvious to have selected values within the overlap, consistent with the reasoning of the Peterson decision.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over De Oliveira et al. (BR102019024108, English translation) in view of Karlinsey (US Patent Pub. 2009/014242).
De Oliveira et al. is discussed above and differs from the instant claims insofar as they do not disclose an alcohol gel.
Karlinsey discloses bioactive niobium formed in gels which comprise alcohol ([0004] and [0123]).
It would have been obvious to one of ordinary skill in to art to have formed the composition of De Oliveira into a gel since it is known to form niobium into gel formulations at taught by Karlinsey.
Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05. Therefore, it would be obvious to have varied the amount of niobium material within the gel motivated by the desire to achieve the desired effect.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NANNETTE HOLLOMAN whose telephone number is (571)270-5231. The examiner can normally be reached Monday-Friday 9am-6pm.
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/NANNETTE HOLLOMAN/ Primary Examiner, Art Unit 1612