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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/27/2026 has been entered.
Status of Claims
Claims 12-15 are cancelled.
Claims 1-11 are pending and under examination.
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 1-11 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 “kale (Brassica oleracea var Acephala group). Said recitation renders the claim indefinite. Said recitation recites “kale”, which is a species of “Brassica oleracea var Acephala group”. Said recitation also recites “Brassica oleracea var Acephala group” which includes non-heading cultivars that includes kale, collards, ornamental cabbage, ornamental kale, flowering kale and tree cabbage. Given this, it is not clear if the recitation is intended to be limiting to kale or all nonheading cultivars within the Brassica oleracea var Acephala group.
Claim 1 is also indefinite for the being in improper Markush form for missing a conjunction between Markush group members (d) and (e).
Claims 2-11 are also rejected for being dependent on a rejected claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 recites “at least one other plant selected form the group consisting of: (i) artichoke (Cynara cardunculus var scolymus); (ii) red cabbage (Brassica oleracea var. Capitata group var. rubra); (iii) rosemary (Salvia Rosmarinus); and (iv) watercress (Nasturtium officinale).” Said recitation already exist in the parent claim, claim 1. Hence, claim 7 does not further limit the claim upon which it depends on. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
It is noted that Applicant’s specification contains assertion of unexpected and/or synergistic results. A careful of the specification and the data provided shows that unexpected and/or synergistic results has been established. Tables 3-4 of the specification demonstrate variation in data; however, because the samples are not of at least the same concentration, it is found that the assertion of unexpected results cannot be verified. Given this, the following is the obviousness rejection against the cited claims.
Claim(s) 1-5, 7, and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable Hoag (WO 2009140694), in view of:
Korus (Korus. Effect of preliminary processing and method of preservation on the content of selected antioxidative compounds in kale (Brassica oleracea L. var. acephala) leaves. Food Chemistry. Vol. 129, Issue 1, pages 149-154, 2011.), and
Sankar (Sankar. Origanum vulgare mediated biosynthesis of silver nanoparticles for its antibacterial and anticancer activity. Colloids and Surfaces B: Biointerfaces, 108 (2013) 80-84.)
Regarding claims 1 and 7: Hoag teaches a method of producing metal nanoparticles. [Abstract] The method of Hoag includes dissolving metal ions and contacting the dissolved metal ion with a composition comprising plant extracts to produce metal nanoparticles. [0006] Hoag teaches the metal nanoparticles have a diameter between about 50 nm and about 500 nm. [0006] The diameter of Hoag is within the claimed range of 1 nm and 1 um.
Hoag does not teach a composition comprising plant extracts from kale and oregano, and at least one of artichoke, red cabbage, rosemary, sage and watercress.
However, Hoag teaches that “plant extract containing high concentration of reducing agents, including polyphenolic compounds can be used” to produce nanoparticles in addition to those form tea and coffee. And,
Regarding kale, Korus teaches that kale leaves contain high concentration of polyphenols. [Abstract] Given this, it would have been obvious for one of ordinary skill in the art before the effective filing date to include kale extract in the composition comprising plant extract of Hoag. One of ordinary skill in the art would have been motivated to do so to produce metal nanoparticles. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Korus establishes that kale contains high concentration of polyphenols and Hoag establishes that plants with high concentration of polyphenols can be used to produce metal nanoparticles.
Regarding oregano, Sankar teaches that oregano extract may be used to produce metal nanoparticles. [Title] Given this; it would have been obvious for one of ordinary skill in the art before the effective filing date to include oregano extract in the composition comprising plant extract of Hoag. One of ordinary skill in the art would have been motivated to do so to produce metal nanoparticles. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because the art recognizes that oregano can be used to make metal nanoparticles.
Regarding rosemary, Hoag listed extract from rosemary. [0073] In the instant case, it would have been obvious for one of ordinary skill in the art to include rosemary extract in the composition of plant extract of Hoag. One of ordinary skill in the art would have been motivated to do so to make metal nanoparticles. One of ordinary skill would have had a reasonable expectation of success for doing so because Hoag recognized rosemary as a reducing agent for producing metal nanoparticles.
In all, Hoag, Korus and Sankar demonstrate that kale, oregano, and rosemary may be used in the production of metal nanoparticles. And, MPEP 2114.06 states, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Given this, the invention encompassed by claim 1 is rendered obvious.
Regarding claim 2: Hoag teaches gold, silver, copper, platinum, iron, manganese and palladium at [0072-0073]; Chromium at [0075], Zinc at [0087], and Nickel at [0142].
Regarding claim 3: Hoag teaches silver as the metal. [0072-0073]
Regarding claim 4: Hoag teaches gold as the metal. [0072-0073]
Regarding claim 5: in the method of Hoag, the dissolved metal ion is present in the form of a solution of a metal salt. [0008]
Regarding claim 9: Hoag, Korus nor Sankar teaches the claimed % by mass. However Hoag teaches the metal nanoparticles are produced using green synthesis approach. Hoag teaches that metal nanoparticles are synthesized by reducing the corresponding metal ion salt solutions. Green chemistry can be employed, for example, in the (i) choice of solvent, (ii) the choice of reducing agent, and (iii) the choice of capping agent (or dispersing agent) used. [0072] Additionally, Hoag notes that the composition comprising plant extract is concentrated as the concentration process can produce higher concentration of plant polyphenols, enabling a high concentration of dissolved metal to be used to make higher concentrations of metal nanoparticles. [0085]
In the instant case, Hoag establishes that (i)-(iii) as result effective variables. Given this, it would have been obvious for one of ordinary skill in the art to have varied the % by mass of the extract. One of ordinary skill in the art would have been motivated to do so to produce of metal nanoparticles. One of ordinary y skill in the art would have had a reasonable expectation of success for doing so because varying of result effective variable is routinely practiced in the art.
Regarding claim 10: As noted above, Hoag teaches a method of producing metal nanoparticles. [Abstract] The method of Hoag includes dissolving metal ions and contacting the dissolved metal ion with a composition comprising plant extracts to produce metal nanoparticles. [0006]
Hoag does not teach that the solution of metal ions is added to the composition comprising plant extract.
In the instant case, given that the process includes contacting the dissolved metal ion with a composition comprising plant extracts to produce metal nanoparticles, it logical follows that contact can be made in a finite number of ways. One way includes adding the solution of metal ions to the composition comprising plant extract. The other way includes adding the composition comprising plant extract to the solution of metal ions.
Given that finite choices exist, it would have been obvious for one of ordinary skill to have added the solution of metal ions to the composition comprising plant extract. One of ordinary skill in the art would have been motivated to do so to produce metal nanoparticles. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because given adding the solution of metal ions to the composition comprising plant extract would result contacting the dissolved metal ion with a composition comprising plant extracts to produce metal nanoparticles.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable Hoag (WO 2009140694), in view of:
Korus (Korus. Effect of preliminary processing and method of preservation on the content of selected antioxidative compounds in kale (Brassica oleracea L. var. acephala) leaves. Food Chemistry. Vol. 129, Issue 1, pages 149-154, 2011.),
Sankar (Sankar. Origanum vulgare mediated biosynthesis of silver nanoparticles for its antibacterial and anticancer activity. Colloids and Surfaces B: Biointerfaces, 108 (2013) 80-84.), and
Pethakamsetty (Pethakamsetty, Green synthesis, characterization and antimicrobial activity of silver nanoparticles using methanolic root extracts of Diospyros sylvatica. J. Environ Sci (China). 2017 May: 55:157-163. doi: 10.1016/j.jes.2016.04.027. Epub 2016 Aug 26.)
Regarding claim 6: While Hoag teaches the use of metal salt; Hoag does not explicit teach the use metal acetate salt.
However, Pethakamsetty teaches the use of silver acetate as the metal in producing metal nanoparticles using plant extracts. It would have been obvious to one of ordinary skill in the art before the effective filing date to have used silver acetate as the metal in the process of Hoag. One of ordinary skill in the art would have been motivated to do so to produce silver nanoparticles. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because both Hoag and Pethakamsetty demonstrates the use of metal salt to produce metal nanoparticles.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable Hoag (WO 2009140694), in view of:
Korus (Korus. Effect of preliminary processing and method of preservation on the content of selected antioxidative compounds in kale (Brassica oleracea L. var. acephala) leaves. Food Chemistry. Vol. 129, Issue 1, pages 149-154, 2011.),
Sankar (Sankar. Origanum vulgare mediated biosynthesis of silver nanoparticles for its antibacterial and anticancer activity. Colloids and Surfaces B: Biointerfaces, 108 (2013) 80-84.), and
Erdogan (Erdogan. Green synthesis of silver nanoparticles via Cynara scolymus leaf extracts: The characterization, anticancer potential with photodynamic therapy in MCF7 cells. PLoS. 2019 Jun 20;14(6):e0216496. doi: 10.1371/journal.pone.0216496. eCollection 2019.)
Regarding claim 8: Hoag does not teach artichoke plant extract.
However, Erdogan teaches that artichoke extract may be used to produce metal nanoparticles. [Title] Given this; it would have been obvious for one of ordinary skill in the art before the effective filing date to include artichoke extract in the composition comprising plant extract of Hoag. One of ordinary skill in the art would have been motivated to do so to produce metal nanoparticles. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because the art recognizes that artichoke can be used to make metal nanoparticles.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable Hoag (WO 2009140694), in view of:
Korus (Korus. Effect of preliminary processing and method of preservation on the content of selected antioxidative compounds in kale (Brassica oleracea L. var. acephala) leaves. Food Chemistry. Vol. 129, Issue 1, pages 149-154, 2011.),
Sankar (Sankar. Origanum vulgare mediated biosynthesis of silver nanoparticles for its antibacterial and anticancer activity. Colloids and Surfaces B: Biointerfaces, 108 (2013) 80-84.), and
Lu (Lu. Biochemistry, Dissolution and Solubility. [Updated 2020 Sep 15]. In: StatPearls [Internet]. Treasure Island (FL): StatPearls Publishing; 2020 Jan-. Available from: https://www.ncbi.nlm.nih.gov/books/NBK431100/.)
Regarding claim 11: Hoag does not teach pre-heating before combining the dissolved metal ion with the composition comprising plant extract.
However, Lu teaches that solubility is the maximum concentration of a solute that can dissolve in a solvent at a given temperature. [Introduction] In the instant case, Lu establishes that dissolution is temperature dependent.
Given this, it would have been obvious for one of ordinary skill in the art before the effective filing date to have heated the metal salt in solution. One of ordinary skill in the art would have been motivated to do so to adjust the solubility of the metal salt to make a metal ion solution. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because the adjustment of result effective variable is routinely practiced in the art.
Conclusion
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/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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