DETAILED ACTION
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 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.
Product by Process Limitations
Initially, and with respect to claim(s) 23-26 note that a "product by process" claim is directed to the product per se, no matter how actually made. See In re Thorpe et ah, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein which makes it clear that it is the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or not. As stated in Thorpe, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935).
Note that Applicant has burden of proof in such cases as the above case law makes clear.
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 21-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20020162798 A1 to Johnson et al. (Johnson).
Johnson discloses:
Regarding claim 21:
A delivery device (figure 6) comprising: an aggregation of a plurality of individual particles (11-13) in a host fluid (see fluid mentioned in ¶0014), wherein one or more individual particles (11-13) of the plurality of individual particles (11-13) has a density of less than the host fluid (see how the mixture of particles makes the assembly shown in figure 6 buoyant; ¶0014), and a bonding property (see the active material 14 which bonds 11-13 as indicated in ¶0049) for connecting the individual particles to one another by physical or chemical interactions that are stronger than thermal forces, wherein the thermal forces act to keep the individual particles from connecting (the material 14 performs this function since it keeps the individual particles bound together physically whatever the thermal forces may be that want to keep the particles apart), which permits the individual particles (11-13) to initially aggregate in said host fluid to form the aggregation (see the aggregation as shown in figure 6), wherein the individual particles (11-13) have a size in at least one dimension selected in the range of 0.1 µm to 1 mm (particles can be in the range of 5 µm to 200µm which overlaps with 0.1 µm to 1mm; ¶0044), and the device has a size in at least one dimension selected in the range of 1µm to 10 mm (the aggregate can range in size of 10 µm to 300 µm which overlaps with 0.1 µm to 1 mm; ¶0044).
Regarding claim 22:
The delivery device according to claim 21, wherein the delivery device (figure 6) is a device carrying a cargo (active material 14; ¶0058) that can be deployed at a target site (target substance; ¶0057).
Regarding claim 23:
The delivery device according to claim 21, wherein the bonding property comprises a magnetic property (magnetic materials 12; ¶0038), which brings about the aggregation of the individual particles (11-13)(as indicated above this is interpreted as product by process limitation that yields the structure as required by claim 21 and since the Johnson reference teaches the required structure the limitation is rejected).
Regarding claim 24:
The delivery device according to claim 21, wherein the bonding property comprises a magnetic property (magnetic materials 12; ¶0038) which, on the application of a magnetic field, brings about the aggregation of the individual particles (11-13) (as indicated above this is interpreted as product by process limitation that yields the structure as required by claim 21 and since the Johnson reference teaches the required structure the limitation is rejected).
Regarding claim 25:
The delivery device according to claim 24, wherein the magnetic property is actuated in the presence of at least one of a homogenous magnetic field and a non- homogenous magnetic field (as indicated above this is interpreted as product by process limitation that yields the structure as required by claim 21 and since the Johnson reference teaches the required structure the limitation is rejected).
Regarding claim 26:
The delivery device according to claim 24, wherein the magnetic field comprises a field strength in the range of 0.1 mT to 20 T (as indicated above this is interpreted as product by process limitation that yields the structure as required by claim 21 and since the Johnson reference teaches the required structure the limitation is rejected).
Regarding claim 27:
The delivery device according to claim 21, wherein the individual particle is shaped spherical (see the spherical shape of 11, 12 and 13), cylindrical, streamlined or a combination of the foregoing or randomly shaped.
Regarding claim 28:
The delivery device according to claim 22, wherein the cargo is selected from the group of drugs, genetic materials, contrast agents, viruses, bacteria, cells, polymeric materials, metals or metallic compounds, sensors, cameras, biopsy tools, radioactive materials, reactive chemicals, dyes and colorants, fluorophores, biological materials (cargo 14 can be “streptavidin, biotin, guanidine”; ¶0058), needles or a combination of the foregoing and/or a combination of both agents and/or pharmaceutically active compounds and/or biological materials, such as enzymes or genetic materials or materials configured to seal a leak or dissolve a blockage in pipelines.
Regarding claim 30:
The delivery device according to claim 21, wherein the host fluid is the fluid of the urological system (¶0073-0074 indicates the fluid the particles can be inserted in is urine), the gastrointestinal system, the peripheral and the central nervous system, the cerebral spinal fluid, the blood circulation system, the immune system, the reproductive system, the ophthalmological system, the extracellular system, microfluidics, pipeline systems, fluidic capillaries or fluidic nozzles.
Regarding claim 31:
The delivery device according to claim 21, wherein the individual particles comprise a biocompatible and/or biodegradable material, a low density material, such as oil, gas, polymer, protein-containing materials (“proteins”; ¶0058), vesicles, gas-filled protein nanostructures, aerogels, fibrous materials, carbohydrate-containing materials, multi-materials, highly porous materials, and/or or imaging contrast agents, such as gas, iodine, barium, gold and/or silver nanoparticles, gadolinium, hyperpolarized gases, vesicles and/or gas-filled protein nanostructures.
Regarding claim 32:
The delivery device according to claim 21, wherein the individual particles comprise an inherent dipole moment (ferromagnetic material as indicated in ¶0039) or form a dipole moment on the application of an external field.
Regarding claim 33:
The delivery device according to claim 21, wherein the bonding property comprises a chemical bonding property which, on the application of an external infrared light or acoustic physical field, causes the activation of the chemical bonding property to bring about the aggregation of the individual particles (not shown); and/or
wherein the chemical bonding property which, on the insertion of the plurality of individual particles (11-13) into the host fluid, causes the activation of the chemical bonding property to bring about the aggregation of the individual particles (as shown in figure 6, the chemical compound 14 bonds the different particles 11-13 together chemically)(11-13).
Allowable Subject Matter
Claim 29 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 5/9/26 have been fully considered but they are not persuasive.
Regarding the 35 USC 102 claim 21 rejection:
The applicant has argued that the above rejection is improper because of the claim amendment “a bonding property for connecting the individual particles to one another by physical or chemical interactions that are stronger than thermal forces, wherein the thermal forces act to keep the individual particles from connecting” (see page 10 of the remarks). The applicant further argues that the amendment requires the features of bonding and buoyancy should be provided by the plurality of particles and not different particles (see page 10 of the remarks). However, the office disagrees with this argument. The claim limitation only requires a bonding property for the individual particles and the term “bonding property” is broad. In the case of this application, the office has interpreted the bonding property to be material 14 which holds the particles together despite the thermal forces the particles maybe exposed to. While, the applicant appears to interpret this amendments to require some intrinsic property of the individual particles themselves the claim limitation is written broad enough that the office has interpreted this to not be the case and can be read on by the material 14 that holds and bonds the individual particles together.
For this reason, the above rejection is maintained.
Regarding the 35 USC 112(b) claim rejection:
The applicant’s amendments to the claim have addressed the previous claim rejections and for this reason they are withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WESLEY HARRIS whose telephone number is (571)272-3665. The examiner can normally be reached M to F, 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Tsai can be reached on (571) 270-5246. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WESLEY G HARRIS/Examiner, Art Unit 3783
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