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 .
Claims 1-20 are pending. Applicant's election with traverse of claims 1,3-5 and 7-15 in the reply filed on February 17, 2026 is acknowledged. The traversal is on the ground(s) that all groups require the technical feature of silk manufactured with silkworms with an XRF-identifiable marker and that they make a contribution over the prior art. This is not found persuasive because the prior art as shown in the rejections below anticipate the limitations of claim 1 and therefore claim 1 does not make contribution over the prior art. The requirement is still deemed proper and is therefore made FINAL. Claims 2,6 and 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 should define the acronym “XRF” in its first occurrence in claim 1 as x-ray fluorescent for clarity Appropriate correction is required.
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.
Claim 1,3,5,12 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zamboni (EP 3282043).
Zamboni teaches marking silk manufactured from silk worms by feeding the silk worms with a security taggant to produce silk fibroin with a XRF-detectable security marker, which meets the claimed limitation of feeding silkworms with a feeding composition enriched with a formulation comprising at least one first XRF-identifiable marker under conditions permitting said marker to be taken up by the silkworms (paragraphs 0021). Zamboni teaches applying one, two or three or more security taggants (paragraph 0015-0016,0020). Zamboni teaches further applying security taggants by spin coating or ink jet printing (paragraph 0022). Zamboni teaches the marker is a metal nanoparticle, or metal oxide wherein the metal can be nickel or iron or cobalt (paragraph 0026,0029-0032). Zamboni teaches the taggant provides a unique chemical fingerprint for the respective security document, which meets the claimed limitation of identify information relating to the processed silk (paragraph 0037,0041,0046). Since the silk is marked by the one or more security taggants, it identifies the silk and therefore identifies information relating to the silk. Regarding claim 5, the limitation “configured to identify” is not a positive limitation but a capability. The same XRF marked silk can be configured in the same ways as claimed. It has been held that the recitation that an element is "adapted to" perform or is "capable of” performing a function is not a positive limitation but only requires the ability to so perform. The recitation of a new intended use for an old product does not make a claim to that old product patentable, see In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). Claim 15 if written in independent form who still make a halide-based marker optional. Accordingly, the broad teachings of Zamboni are sufficient to anticipate the material limitations of the instant claims.
Claims 1,3,5,12,13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cai et al. (Reinforced and Ultraviolet Resistant Silks from Silkworms Fed with Titanium Dioxide Nanoparticles. ACS Sustainable Chem. Eng. 2015, 3, 2551-2557).
Cai teaches feeding silkworms a diet containing titanium dioxide (TiO2), which meets the claimed limitation of XRF-identifiable marker, and mulberry leaf powder (page 2552, left column, preparation of artificial diet, silkworm raising) wherein the silk produced contains TiO2 (page 2555, right column, Table 3 and paragraph below), which meets the claimed limitation of feeding silkworms with leaves treated with a formulation comprising at least one XRF-identifiable marker or feeding silkworms with a feeding composition enriched with a formulation comprising at least one first XRF-identifiable marker under conditions permitting said marker to be taken up by the silkworms. Since the silk is marked by the TiO2 it identifies the silk and therefore identifies information relating to the silk. Regarding claim 5, the limitation “configured to identify” is not a positive limitation but a capability. The same XRF marked silk can be configured in the same ways as claimed. It has been held that the recitation that an element is "adapted to" perform or is "capable of” performing a function is not a positive limitation but only requires the ability to so perform. The recitation of a new intended use for an old product does not make a claim to that old product patentable, see In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). Claim 15 if written in independent form who still make a halide-based marker optional. Accordingly, the broad teachings of Cai are sufficient to anticipate the material limitations of the instant claims.
Claims 1,3,5,7 and 10-15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Kimura (JPS62282012A).
Kimura teaches applying one or more metal salts to reeling silk cocoons wherein titanium oxide and aluminum oxide are preferred metal salts applied (page 1, abstract). The titanium oxide and aluminum oxide are Xray-identifiable markers as claimed by applicant in claim 14 and inherently have that property even if not explicitly recited by the prior art. Kimura teaches the aluminum and titanium salts or oxides are applied in a water dispersion or solution by immersion during reeling (page 3, examples 1,4,5 and 8). Kimura teaches the process happens simultaneously with sericin loosening or removal (page 2). The titanium and aluminum salts and oxides are whitening colorants so meet the claimed limitation of a dye solution and reeling a cocoon into the solution of titanium oxide and/or aluminum oxide meets the claimed limitation of immersion the cocoon in a water based solution comprising one or more markers. Since the silk is marked by the one or more aluminum or titanium salts, it identifies the silk and therefore identifies information relating to the silk, as this can be any information such as the identity of the silk as it makes the silk identifiable by x-ray fluorescence. Regarding claim 5, the limitation “configured to identify” is not a positive limitation but a capability. The same XRF marked silk can be configured in the same ways as claimed. It has been held that the recitation that an element is "adapted to" perform or is "capable of” performing a function is not a positive limitation but only requires the ability to so perform. The recitation of a new intended use for an old product does not make a claim to that old product patentable, see In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). Claim 15 if written in independent form who still make a halide-based marker optional. Accordingly, the broad teachings of Kimura are sufficient to anticipate the material limitations of the instant claims.
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.
Claims 4,12,13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Zamboni (EP 3282043).
Zamboni is relied upon as set forth above.
Zamboni does not teach in a single embodiment that the XRF-identifiable marker is a metal atom, metal oxide or metal salt or that the silk fiber is treated more than once with different marker formulations but one of ordinary skill in the art could arrive at the claimed invention by selecting from the broad teachings of Zamboni.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to treat the silks of Zamboni with more than one XRF-identifiable security taggant at different times as Zamboni teaches taggants such as metal nanoparticle or metal oxides wherein the metal can be nickel or iron or cobalt which can applied during silkworm feeding or during spin coating or inkjet printing to form different substrates particularly security documents wherein the taggant provides a unique chemical fingerprint for the respective security document. Selecting the types of security taggants and the process steps in which they are applied would be obvious to provide a security document with unique chemical fingerprints in unique locations to ensure their authenticity.
Allowable Subject Matter
Claims 8 and 9 are 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. Claims 8 and 9 are allowable because the prior art does not specify treating 3 times with three different XRF-identifiable markers to encode for three parameters particularly 1) treating the cocoon or bave with a formulation comprising a first set of XRF-identifiable markers encoding at least one parameter relating to the facility or process conditions, 2) treating the silk fiber during reeling with a formulation comprising a second set of one or more XRF-identifiable markers that encode for at least one parameter relating to the grade of the silk after undergoing treatment, and 3) Treating the silk after reeling with a formulation comprising a third set of one of one or more XRF-identifiable markers encoding for at least one parameter relating to the destination of the silk fiber or intended further processing.
Conclusion
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/AMINA S KHAN/
Primary Examiner, Art Unit 1761