DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/26/2026 has been entered.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 1,3 and 22-24 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ito et al. (US 2006/0134095), alone or alternately in view of Fang et al. “Effect of a Fullerene Water Suspension on Bacterial Phospholipids and Membrane Phase Behavior”, Environ. Sci. Technol. 2007, 41, 2636-2642.
Ito teaches antioxidative compositions for external use that include C60 fullerene and an oil, preferably olive oil, the fullerene was used in amounts of 0.0001 to less than 5 wt%. See entire disclosure especially abstract, [0075],[0080],[0165] and claims. Applicants claimed amounts of fullerene in olive oil would be obvious since the weight range of fullerene in oil 0.0001 to less than 5 wt% incorporates the claimed amounts. A prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection. Therefor, based on the described overlap above, the instant claims would have been obvious to one of ordinary skill in the art. MPEP § 2144.05. Regarding the new limitation that the composition is homogeneous, it follows that since Ito teaches the same composition it will feature the same properties, including forming a homogeneous solution.
Regarding the new product by process limitation in claim 22 on being filtered through a 0.2 micron filter, as there are no physical characteristics recited in the claims that distinguish the fullerene composition it does not distinguish claims 22-24 from Ito. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Alternatively, the product by process limitation is obvious when the disclosure of Fang is considered. Fang teaches use of a cellulose filter with a 0.2 micron membrane, which resulted in fullerene particles ranging from 50 to 200 nm with a mean diameter of 95 nm. See page 2637 lft col. 3rd full ¶. One of ordinary skill in the art would have a high expectation of success in using the filter of Fang in the Ito reference to produce an oil composition featuring fullerene nanoparticles of specific size and dispersity. Thus the claimed invention would have been prima fascia obvious to one of ordinary skill in the art because the technique of filtering fullerenes was part of the ordinary capabilities of a person of ordinary skill in the art.
Claims 1,3 and 22-24 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Moussa et al. (WO 2005/105214), alone or alternately in view of Fang et al., cited above.
Moussa teaches homogeneous solutions comprising C60 fullerene and a carrier including olive oil, the amount of fullerene was from 0.01 to 10%. See entire disclosure, especially abstract, example 1 and claims. Applicants claimed amounts of fullerene in olive oil would be obvious since the weight range of fullerene in oil of 0.01 to 10 wt%, incorporates the claimed amounts. Additionally, a smaller range of 0.1 to 2 wt%, includes a data point 0.1 that is so close to the claimed data point of 0.09, one of ordinary skill would consider the amounts to yield the same properties. See claim 3. A prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection. Therefor, based on the described overlap above, the instant claims would have been obvious to one of ordinary skill in the art. Also, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. MPEP § 2144.05.
Regarding the new product by process limitation in claim 22 on being filtered through a 0.2 micron filter, as there are no physical characteristics recited in the claims that distinguish the fullerene composition it does not distinguish claims 22-24 from Moussa. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Alternatively, the product by process limitation is obvious when the disclosure of Fang is considered. Fang teaches use of a cellulose filter with a 0.2 micron membrane, which resulted in fullerene particles ranging from 50 to 200 nm with a mean diameter of 95 nm. See page 2637 lft col. 3rd full ¶. One of ordinary skill in the art would have a high expectation of success in using the filter of Fang in the Moussa reference to produce an oil composition featuring fullerene nanoparticles of specific size and dispersity. Thus the claimed invention would have been prima fascia obvious to one of ordinary skill in the art because the technique of filtering fullerenes was part of the ordinary capabilities of a person of ordinary skill in the art.
Response to Arguments
Applicant's arguments filed 5/26/2026 have been fully considered but they are not persuasive.
With regard to Ito applicants assert since the fullerenes are modified or chlathrated with organic compounds it does not read on pristine C60 fullerene alone.
The transitional phrase “comprising” does not exclude additional elements from the composition including organic molecules which may modify or clathrate the fullerene. The transitional term “comprising”, which is synonymous with “including”, “containing”, or “characterized by”, is inclusive or open ended and does not exclude additional elements or method steps recited in the prior art. Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003).
Applicants assert that since Ito’s fullerene is modified or clathrated the percent is not recited for fullerene alone.
The amounts claimed are still encompassed by the broader percents recited within Ito since the fullerene is modified or chathrated with organic molecules such as crown ether that have a smaller molecular weight then fullerene. That is even if the MW of fullerene is higher over the ranges recited applicants range would still be encompassed.
Applicants assert Moussa preferred range is 0.1-2 %, outside of the claimed range.
Moussa still clearly teaches a range of fullerene was from 0.01 to 10%, encompassing the claimed range, rendering it obvious. Additionally, the smaller range of 0.1 to 2 wt%, includes a data point 0.1 that is so close to the claimed data point of 0.09 that one of ordinary skill would consider the amounts to yield the same properties. Therefor, based on the described overlap above, the instant claims would have been obvious to one of ordinary skill in the art. Also, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. MPEP § 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES W ROGERS whose telephone number is (571)272-7838. The examiner can normally be reached 9:30-6:00 PM.
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/JAMES W ROGERS/ Primary Examiner, Art Unit 1618
