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 .
Claim 3 has been amended. Claims 1 and 3 are pending and under examination on the merits.
Information Disclosure Statements
Applicants’ Information Disclosure Statement, filed on 07/24/2026, has been considered. Please refer to Applicant’s copy of the PTO-1449 submitted herewith.
Response to Amendment
The Amendment by Applicants’ representative Mr. Christopher W. Brown on 07/24/2026 has been entered.
Response to Arguments/Amendments
Claim rejection under 35 U.S.C.§103(a)
Applicant’s arguments are on the ground that “One would have had no motivation to have combined the methods of Guerrero or Brust with Stucky. …Stucky teaches that the dimension of the nanoparticles can be controlled by temperature control, and as a result, dimensions of 2.1 nm, 3.5 nm, 5.0 nm, 6.2 nm, 6.3 nm, and 8.2 nm were obtained. Gold nanoparticles with smaller dimensions than the above cannot be produced by the methods of Stucky. In Guerrero, the average particle size of AU-SR1 is 2.2 nm and that of AU-SR2 is 2.0 nm, and even in Brust, the peak of the particle size distribution is located at 2.0 to 2.5 nm. Thus, since Stucky only provides particle sizes in a range equal to or larger than those obtained by the methods of Guerrero or Brust, it is evident that one skilled in the art would have had no motivation to combine the references from the viewpoint of particle size.”.
Applicant’s arguments are found not persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, the `562 publication (Stucky, Abstract) discloses metal nanoparticle compositions and methods of making such nanoparticle compositions that are useful for the production of electrically conductive features and catalysts. Specifically, the `562 publication (claim 1) discloses a method of manufacturing a supported nanocatalyst, comprising: (a) providing a support material; (b) contacting the support material with a capped nanoparticle in an aprotic solvent; (c) calcining the support material comprising the capped nanoparticle to generate a supported nanocatalyst anchored to the support material. The `562 publication (claim 5) discloses the capped nanoparticle comprises Au. The `562 publication (claim 3) discloses the support material comprises carbon black, and activated carbon. The `562 publication (claim 13) discloses the capped nanoparticle is generated by mixing a noble metal substrate with an organic solvent and an alkyl-thiol and adding a borane-complexed reducing agent wherein the alkyl-thiol comprises dodecanethiol. The `562 publication (claim 7) discloses alkyl chain of the alkylthiol comprises from about 1 to 30 carbon atoms. In addition, the `562 publication [0134] teaches size control by varying temperature. Therefore, various sizes of gold-supported carbon nanoparticles can be prepared based on the disclosure by the `562 publication.
The difference between Applicant’s invention and the `562 publication is that the prior art is silent on the limitation “the gold fine particles are coordinated by a dodecanethiol or hexadecanethiol at a coverage of from 10% to 70%”, and does not teach the limitation “the gold fine particles have an average particle diameter of from 1.0 nm to 1.5 nm”. Instead, the `562 publication teaches a method of preparing the gold-supported carbon catalyst with a larger average particle diameter, such as the monodisperse silica-containing nanospheres have a size range from 10 to 200 nm (claim 49) by mixing a chloroauric acid aqueous solution and an organic solvent solution containing a phase transfer agent to obtain a liquid mixture and an aqueous solution containing a reducing agent into the mixed solution to provide gold fine particles coordinated by the dodecanethiol or hexadecanethiol.
However, both the `562 publication and Guerrero et al. teaches preparing various sizes of the gold fine particles by controlling parameters such as temperature, and reducing reagent, and reaction time according to the Brust method, wherein Brust et al (at page 802 right column) discloses the elemental analysis of the product composition contains 75% gold and 25% dodecanethiol., and having average gold hydrosols of 1.5 nm average particle diameter. Guerrero et al. (Table 1) teaches the average particle size of AU-SR1 is 2.2 nm, and the average particle size of AU-SR2 is 2.0 nm (Table 1), and the TEM micrography and particle size distribution histogram of the AU-SR1 and AU-SR2 are disclosed in Fig. 2 at p.1726, which are very closed to the claimed average particle diameters of from 1.0nm to 1.5 nm with substantially identical preparation procedures.
Furthermore, Guerrero et al. and Brust et al. disclosed substantially identical preparation procedures for preparing the gold fine particles. Specifically, Guerrero et al. discloses a method of preparing the alkanethiolate-capped gold nanoparticles (NPs) following the Brust method wherein two different sized Au-thio gold NPs AU-SR1 and AU-SR1 were prepared (see “2.1. Sample preparation” at p.1724), wherein the alkanethiol is dodecanethiol, and the method comprising mixing a chloroauric acid aqueous solution and an organic solvent (toluene) solution containing a phase transfer agent (tetraoctylammonium bromide) to obtain a liquid mixture, separating an organic solvent solution phase from the liquid mixture, mixing a dodecanethiol or hexadecanethiol into the organic solvent solution phase to obtain a mixed solution, and mixing an aqueous solution containing a reducing agent (NaBH4) into the mixed solution to provide gold fine particles coordinated by the dodecanethiol or hexadecanethiol. The presence of dodecanethiol leads to the formation of Au-S bonds, which isolate the metal clusters, thereby preventing cluster agglomeration. Subsequently, the organic phrase was separated from the aqueous phrase and the toluene was removed under reduced pressure. Finally, Au-NPs were precipitated with ethanol, filtered, washed and dried. These steps are substantially identical with the claimed preparation steps of Applicant’s claim 3. The only different is the way to separate the Au-NPs precipitates, wherein Applicant’s claim 3 recites the separation by centrifugation, while Guerrero et al. and the Brust method teaches the separation by filtering. However, one ordinary skilled in the art would have known that both centrifugation and filtration are most common methods for solid separation. Furthermore, Guerrero et al. teaches the Au:thiol ratio is one of the nanocluster size-controlling factors. With the aim of obtaining gold nanoparticles with different average sizes, reactions were carried out for Au:thiol molar ratios ranging from 1:2 (Au-SR2) to 1:1 (Au-SR2). Brust method (at page 802, left column) shows the elemental analysis of the product composition contains 75% gold and 25% dodecanethiol., and having average gold hydrosols of 1.5 nm average particle diameter; the UV-VIS spectrum of the gold solution was similar to that obtained by Duff et al., for gold hydrosols of 1.5 nm average particle diameter; and high resolution TEM photographs of the nanoparticles (Fig. 1) shows that they are diameters in the range 1-3 nm and a maximum in the particle size distribution at 2.0-2.5 nm. Regards the limitation “a gold fine particle treatment step that repeats a series of operations two or more times”, it is a common experimental procedure one ordinary skilled in the art used for carrying out solid purification. Therefore, the method for preparing Au-NPs disclosed by Guerrero et al. and the Brust et al. are substantially identical processes from the claimed process of claim 3. When the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Therefore, the `562 publication in view of Guerrero et al. and/or Brust et al. would have rendered claims 1 and 3 obvious. The rejection is maintained.
The following rejection is necessitated by the amendment filed on 07/24/2026.
Claim Rejections - 35 USC § 103 (revised)
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.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over US2008/0206562 (“the `562 publication”) to Stucky et al. in view of Guerrero et al., Acta Materialia, (2007), v.55, 1723-1730, and Brust et al., J. Chem. Soc. Chem. Commun., (1994).
Applicant’s claim 1 is drawn to a gold-supported carbon catalyst, comprising: carbon black; and gold fine particles supported on the carbon black, wherein the gold fine particles are coordinated by a dodecanethiol or hexadecanethiol at a coverage of from 10% to 70%, and wherein the gold fine particles have an average particle diameter of from 1.0 nm to 1.5 nm.
Applicant’s claim 3 is drawn to a method of producing the gold-supported carbon catalyst of claim 1, the method comprising: a gold fine particle formation step, which includes: mixing a chloroauric acid aqueous solution and an organic solvent solution containing a phase transfer agent to obtain a liquid mixture, separating an organic solvent solution phase from the liquid mixture, mixing a dodecanethiol or hexadecanethiol into the organic solvent solution phase to obtain a mixed solution, and mixing an aqueous solution containing a reducing agent into the mixed solution to provide gold fine particles coordinated by the dodecanethiol or hexadecanethiol; a gold fine particle treatment step that repeats a series of operations two or more times, including: dispersing the gold fine particles coordinated by the dodecanethiol or hexadecanethiol in hexane, adding a polar organic solvent thereto and mixing the resultant to obtain a mixture, and centrifuging the mixture and then removing a supernatant to obtain the gold fine particles coordinated by the dodecanethiol or hexadecanethiol as a precipitate; and a gold fine particle supporting step, which includes: dispersing the gold fine particles, coordinated by the dodecanethiol or hexadecanethiol and obtained through the gold fine particle treatment step, in hexane to prepare a solution, dispersing carbon black in hexane to prepare another solution, and mixing the prepared solutions to cause the gold fine particles coordinated by the dodecanethiol or hexadecanethiol to be supported on the carbon black.
Determination of the scope and content of the prior art (MPEP §2141.01)
The `562 publication (Stucky, Abstract) discloses metal nanoparticle compositions and methods of making such nanoparticle compositions that are useful for the production of electrically conductive features and catalysts. Specifically, the `562 publication (claim 1) discloses a method of manufacturing a supported nanocatalyst, comprising: (a) providing a support material; (b) contacting the support material with a capped nanoparticle in an aprotic solvent; (c) calcining the support material comprising the capped nanoparticle to generate a supported nanocatalyst anchored to the support material. The `562 publication (claim 5) discloses the capped nanoparticle comprises Au. The `562 publication (claim 13) discloses the capped nanoparticle is generated by mixing a noble metal substrate with an organic solvent and an alkyl-thiol and adding a borane-complexed reducing agent wherein the alkyl-thiol comprises dodecanethiol. The `562 publication (claim 7) discloses alkyl chain of the alkylthiol comprises from about 1 to 30 carbon atoms. The `562 publication (claim 3) discloses the support material comprises carbon black, and activated carbon. In addition, the `562 publication [0134] teaches size control by varying temperature: To study the temperature effect on the size of gold nanoparticles, the two stock solutions were prepared: (A) 20 mL benzene containing 0.25 mmol ClAuPPh3 and 125 µL dodecanethiol; (B) 20 mL benzene containing 2.50 mmol tert-butylamine-borane complex. To a thick-wall glass vial were mixed 2 mL of solution A and 2 mL of solution B. The sealed glass vial was then stirred in a silicon oil bath which controlled the reaction temperature. At the temperatures of 55, 85 and 100 °C, the mixtures were stirred for 1 hour before the mixtures were cooled. For the reaction at room temperature, the mixture was stirred for 4 hours to ensure the completion of reaction. The `562 publication [0135] teaches preparation of dodecanethiol-capped 3.5-nm Au nanoparticles: 0.25 mmol ClAuPPh3 was mixed together with 0.125 ml of dodecanethiol in 10 ml of CHCl3 to form a clear solution to which 2.5 mmol of tert-butylamine-borane complex were added in the form of powder. The mixture was then heated with stirring at 65 °C for 5 hours before it was cooled down. The `562 publication [0136] teaches preparation of dodecanethiol-capped 2.1-nm Au nanoparticles: 1.000 g of ClAuPPh3 and 1.000 g of dodecanethiol were mixed in 50 mL of CHCl3 to form a clear solution. Another solution, containing 1.689 g of tert-butylamine-borane, 50 mL CHCl3 and 20 mL ethanol, was then added to the gold precursor solution. The mixture was kept stirring at room temperature for one day to complete the reaction. Therefore, various sizes of gold-supported carbon nanoparticles can be prepared based on the disclosure by the `562 publication.
Guerrero et al. discloses a method of preparing the alkanethiolate-capped gold nanoparticles (NPs) following the Brust method wherein two different sized Au-thio gold NPs AU-SR1 and AU-SR1 were prepared (see “2.1. Sample preparation” at p.1724), wherein the alkanethiol is dodecanethiol. Guerrero et al. (Table 1) teaches the average particle size of AU-SR1 is 2.2 nm, and the average particle size of AU-SR2 is 2.0 nm (Table 1), and the TEM micrography and particle size distribution histogram of the AU-SR1 and AU-SR2 are disclosed in Fig. 2 at p.1726. Brust method (at page 802 right column) shows the elemental analysis of the product composition contains 75% gold and 25% dodecanethiol., and having average gold hydrosols of 1.5 nm average particle diameter.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The difference between Applicant’s invention and the `562 publication is that the prior art is silent on the limitation “the gold fine particles are coordinated by a dodecanethiol or hexadecanethiol at a coverage of from 10% to 70%”, and does not teach the limitation “the gold fine particles have an average particle diameter of from 1.0 nm to 1.5 nm”. Instead, the `562 publication teaches a method of preparing the gold-supported carbon catalyst with a larger average particle diameter, such as the monodisperse silica-containing nanospheres have a size range from 10 to 200 nm (claim 49) by mixing a chloroauric acid aqueous solution and an organic solvent solution containing a phase transfer agent to obtain a liquid mixture and an aqueous solution containing a reducing agent into the mixed solution to provide gold fine particles coordinated by the dodecanethiol or hexadecanethiol.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
However, both the `562 publication and Guerrero et al. teaches preparing various sizes of the gold fine particles by controlling parameters such as temperature, and reducing reagent, and reaction time according to the Brust method, wherein Brust et al (at page 802 right column) discloses the elemental analysis of the product composition contains 75% gold and 25% dodecanethiol., and having average gold hydrosols of 1.5 nm average particle diameter. Guerrero et al. (Table 1) teaches the average particle size of AU-SR1 is 2.2 nm, and the average particle size of AU-SR2 is 2.0 nm (Table 1), and the TEM micrography and particle size distribution histogram of the AU-SR1 and AU-SR2 are disclosed in Fig. 2 at p.1726, which are very closed to the claimed average particle diameters of from 1.0nm to 1.5 nm with substantially identical preparation procedures.
Furthermore, Guerrero et al. and Brust et al. disclosed substantially identical preparation procedures for preparing the gold fine particles. Specifically, Guerrero et al. discloses a method of preparing the alkanethiolate-capped gold nanoparticles (NPs) following the Brust method wherein two different sized Au-thio gold NPs AU-SR1 and AU-SR1 were prepared (see “2.1. Sample preparation” at p.1724), wherein the alkanethiol is dodecanethiol, and the method comprising mixing a chloroauric acid aqueous solution and an organic solvent (toluene) solution containing a phase transfer agent (tetraoctylammonium bromide) to obtain a liquid mixture, separating an organic solvent solution phase from the liquid mixture, mixing a dodecanethiol or hexadecanethiol into the organic solvent solution phase to obtain a mixed solution, and mixing an aqueous solution containing a reducing agent (NaBH4) into the mixed solution to provide gold fine particles coordinated by the dodecanethiol or hexadecanethiol. The presence of dodecanethiol leads to the formation of Au-S bonds, which isolate the metal clusters, thereby preventing cluster agglomeration. Subsequently, the organic phrase was separated from the aqueous phrase and the toluene was removed under reduced pressure. Finally, Au-NPs were precipitated with ethanol, filtered, washed and dried. These steps are substantially identical with the claimed preparation steps of Applicant’s claim 3. The only different is the way to separate the Au-NPs precipitates, wherein Applicant’s claim 3 recites the separation by centrifugation, while Guerrero et al. and the Brust method teaches the separation by filtering. However, one ordinary skilled in the art would have known that both centrifugation and filtration are most common methods for solid separation. Furthermore, Guerrero et al. teaches the Au:thiol ratio is one of the nanocluster size-controlling factors. With the aim of obtaining gold nanoparticles with different average sizes, reactions were carried out for Au:thiol molar ratios ranging from 1:2 (Au-SR2) to 1:1 (Au-SR2). Brust method (at page 802, left column) shows the elemental analysis of the product composition contains 75% gold and 25% dodecanethiol., and having average gold hydrosols of 1.5 nm average particle diameter; the UV-VIS spectrum of the gold solution was similar to that obtained by Duff et al., for gold hydrosols of 1.5 nm average particle diameter; and high resolution TEM photographs of the nanoparticles (Fig. 1) shows that they are diameters in the range 1-3 nm and a maximum in the particle size distribution at 2.0-2.5 nm. Regards the limitation “a gold fine particle treatment step that repeats a series of operations two or more times”, it is a common experimental procedure one ordinary skilled in the art used for carrying out solid purification. Therefore, the method for preparing Au-NPs disclosed by Guerrero et al. and the Brust et al. are substantially identical processes from the claimed process of claim 3. When the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Therefore, the `562 publication in view of Guerrero et al. and/or Brust et al. would have rendered claims 1 and 3 obvious.
Conclusions
Claims 1 and 3 are rejected.
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 extension fee 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 date of this final action.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
/YONG L CHU/Primary Examiner, Art Unit 1731
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