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 .
Response to Restriction
Applicant’s election of 1) wherein the isotopically enriched element or monoisotopic element is Zn in claim 3; 2) wherein the isotope is ⁶⁸Zn in claim 4; 3) wherein the isotopically enriched element or monoisotopic element is Zn in claim 17; and 4) wherein the isotope is ⁶⁸Zn in claim 18 without traverse is acknowledged.
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 1-7 and 17-18 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. Claim 1 recites “phosphate based glass target material.” It’s unclear in what way the glass target material is “based” on phosphate, if the glass target material comprises phosphate, if phosphate is used in the process of making the glass target material but is not necessarily present in the material, if the glass target material exhibits properties similar to phosphate but it does not necessarily contain phosphate. For these reasons the term is unclear. Further, it’s unclear what the difference is between a “target material” and a “material,” and how “target” limits the claimed invention.
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.
Claims 1-7 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 6667258 to Quinn in view of Larner (Evaluation of Stable Isotope Tracing for ZnO Nanomaterials New Constraints from High Precision Isotope Analyses and Modeling, Environ. Sci. Technol. 2012, 46, 4149−4158). The glass transition temperature is below 450 degrees (Summary of the Invention).
Quinn teaches phosphate containing materials which comprise zinc (phosphate based glass target materials) (Abstract; Detailed description of the invention). The glass may be in the form of a particle (column 9, left column, first full paragraph). The
Quinn fails to teach incorporation of Zn68 into its glass particle. Quinn also fails to tech the present glass transition temperature, the presently claimed density, and the presently claimed isotopic enrichment.
Larner teaches that using the relatively inexpensive 68Zn for labeling provides the ability to trace particles (abstract; results and discussion).
It would have been obvious to one of ordinary skill in the art at the time the invention was fuled to add Zn68 into the composition of Larner. The motivation for this would be to have the ability to trace the particle. It would have been obvious to optimize the glass transition temperature of the composition, and in this way, would find the presently claimed range. The art provides sufficient guidance to this end, as the range taught by Quinn of less than 450 degrees C overlaps with the present range of 200 to 2000 degrees C. It would have been further obvious to optimize the isotopic enrichment of Zn68 for the purpose of tracing the glass particle. In this way, the artisan would have found the present value through routine experimentation. “‘[W]here 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.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)” MPEP § 2144.05, II.
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
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