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 Amendment
Applicant’s arguments filed 10/27/2025 have been entered. Claims 1, 2, 5, -7, 10 are pending in the application, the 112(b) rejections previously set forth are withdrawn in view of the arguments and amendment.
Response to Arguments
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument that the instant invention is based on materials used in the field of display devices, examiner notes, applicant’s arguments are not commensurate in scope with the claim language.
In response to applicant’s argument that Kikuchi’s ligand is “sparingly soluble in most organic solvents” as taught by Kikuchi, and as such “the dispersion degree of the zwitterion (ligand) in ‘n-hexane’ is less than its dispersion degree in water” in contrast to the instant ligand which is required to be great than its dispersion degree in water, and that the dispersion degree of the silane coupling agent in -n-hexane is required to be greater than in water, applicant’s arguments are not commensurate in scope with the claims, examiner notes instant claim 1 requires a dispersion degree of the particle modified by the ligand in the first purification solution (water) is greater than a dispersion degree of the particle modified by the ligand in the second purification solution (alkane), and a dispersion degree of the free-state ligand in the first purification solution is greater than a dispersion degree of the free-state ligand in the second purification solution, and wherein the first purification solution is water, and the second purification solution is alkane comprising 6 to 30 carbon atoms or olefin comprising 6 to 30 carbon atoms, such that a dispersion degree of the particle modified by the ligand in the first purification solution (water) is greater than a dispersion degree of the particle modified by the ligand in the second purification solution (alkane), and a dispersion degree of the free-state ligand in the first purification solution (water) is greater than a dispersion degree of the free-state ligand in the second purification solution (alkane).
In response to applicant’s argument that there is no motivation to combine Sharma and Kikuchi, In response to applicant's argument that there is no motivation to combine Kikuchi and Sharma, examiner notes, Kikuchi teaches metal particles, which contain iron oxide, in particular iron oxide, useful as contrasting agents in MRI imaging (0002-0022); Sharma teaches particle contrasting agents for imaging (abstract, 0001-0038), including particles comprising ferromagnetic and iron doped particles (0057, 0035) contrasting agents in imaging include, but are not limited to ferromagnetic particles and quantum dots (0032), particles include quantum dots, and cores of for example silicon dioxide (0003, 0034), silane ligands (0054), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kikuchi’s taught method to include particles including SiO2 or quantum-dot particles as taught by Sharma, as SiO2 and quantum-dot particles are known in the art for use in contrast agents in imaging as shown by Sharma and the courts have held that combining prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. Further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant’s arguments with respect to the limitation of a silane coupling agent have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Kikuchi (UP PG Pub 2022/0089455), in view of Sharma (US PG Pub 2010/0254911), in view of Wang (US PG Pub 2012/0267585).
With respect to claim 1, Kikuchi teaches a method for producing nanoparticles bonded with ligands (abstract, 0020-0090), isolating the nanoparticles using known methods such as centrifugal separation, filtrations, liquid separation alone, and the like (0191, a method of purifying a particle), comprising steps;
In an embodiment a polar solvent and a non-polar solvent are added into a reaction mixture comprising the nanoparticles (0191-0194, 0126-0132, preparing a purification solution, wherein the purification solution comprises a first purification solution and a second purification solution, and the first purification solution and the second purification solution are immiscible with each other);
polar solvent and the non-polar solvent used herein are preferably a combination that is separated into two layers (0194), fully mixing a mixed solution to be purified with the purification solution (0263), isolating using known methods such as liquid separation as discussed above and examples with the mixtures left to stand, and supernatant removed (0130-0132, 0191-0194, examples, including, 0284 with separation with a separatory funnel, letting stand until a plurality of separated layers appear (0256, 0258, 0259, 0268, 0277), zwitterions are polar and are generally highly soluble in water and sparingly soluble in most organic solvents, and the method produces metal particles with one or more hydrophilic zwitterionic ligands (0093-0117, 0133-0138) and a concentrated dispersion of particles in a mixed solvent that can include, water, acetone, ethanol, a dispersion degree of the particle modified by the ligand in the first purification solution is greater than a dispersion degree of the particle modified by the ligand in the second purification solution), particles are prepared by known means (0077, 0215-0217), particles produced in a solvent which can comprise alcohols (0124-0126), nanoparticles dispersed in examples in acetone and methanol (examples, wherein the mixed solution to be purified comprises a particle modified by a ligand, a free-state ligand, and a dispersant, and a dispersion degree of the free-state ligand in the first purification solution is greater than a dispersion degree of the free-state ligand in the second purification solution); isolating the nanoparticles using known methods such as centrifugal separation, filtrations, liquid separation alone, and the like (0191), and examples where layers are removed (0279-0293, removing a layer of liquid where the second purification solution is located), the particles extracted (0130-0131, examples, in particular example 5, extracting a layer of liquid where the first purification solution is located); and concentrated liquid is freeze-dried to obtain purified particles (freezing and drying the extracted layer of liquid to obtain a purified particle, 0131-0132, 0268-0304).
Applicant amended to require: wherein a ratio of a size of the mixed solution to a size of the purification solution ranges from 1:1 to 1:5; wherein a ratio of a size of the first purification solution to a size of the second purification solution ranges from 1:0.5 to 1:50; wherein the ligand is a silane coupling agent; wherein the particle comprises one or more of a SiO2 particle, a ZrO2 particle, an organic microsphere particle, and a quantum-dot particle; wherein the first purification solution is water, and the second purification solution is alkane comprising 6 to 30 carbon atoms or olefin comprising 6 to 30 carbon atoms.
Kikuchi teaches various solvents mixed with nanoparticles as discussed above (0130-0132, 0191-0194, examples), in examples the mixtures of nanoparticles are discussed with respect to a mass, not a volume or size, however while Kikuchi does not explicitly teach a ratio of a size of the mixed solution to a size of the purification solution ranges from 1:1 to 1:5, as the specification is silent to unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the ratio of particle solution to solvent solution of Kikuchi’s taught method based on routine experimentation, for in order to optimizing the extraction and washing. Such modifications would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the amount of solvent to obtain the ratio of a size of the mixed solution to a size of the purification solution ranges from 1:1 to 1:5 (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Alternatively, Kikuchi teaches metal particles, which contain iron oxide, in particular iron oxide, useful as contrasting agents in MRI imaging (0002-0022). Sharma teaches particle contrasting agents for imaging (abstract, 0001-0038), including particles comprising ferromagnetic and iron doped particles (0057, 0035) contrasting agents in imaging include, but are not limited to ferromagnetic particles and quantum dots (0032), particles include quantum dots, and cores of for example silicon dioxide (0003, 0034), silane ligands (0054) where particles in an embodiment are separated after stirring and isolated from immiscible layers solvents, and by manipulation of the ratios of microemulsion and reactant concentrations of nanoparticles and silane reagent in microemulsion the sizes of the nanoparticles can be tuned (0040-0052).
it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kikuchi’s taught method to include the recited ratio of solvents as taught by Sharma, as the ratio is known in the art for use in producing contrast agents in imaging as shown by Sharma and the courts have held that combining prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143.
Kikuchi teaches various amounts of solvent in the examples, and mixed solvents of heptane, 2-Me-THF, CPME, MTBE, chloroform, toluene, xylene, ethyl acetate, methyl acetate, isopropyl acetate, methanol, ethanol, 1-propanol, IPA, 1-butanol, 2-butanol, isobutanol, tert-butyl alcohol, 2-methyl-2-butanol, water, and the like (0131), a zwitterionic ligands which are polar and are generally highly soluble in water and sparingly soluble in most organic solvents (0097), but does not explicitly teach wherein a ratio of a size of the first purification solution to a size of the second purification solution ranges from 1:0.5 to 1:50; as the specification is silent to unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the ratio of particle solution to solvent solution of Kikuchi’s taught method based on routine experimentation, for in order to optimize the extraction and washing. Such modifications would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the amount of solvent to obtain the a ratio of a size of the first purification solution to a size of the second purification solution ranges from 1:0.5 to 1:50 (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Alternatively, Kikuchi teaches metal particles, which contain iron oxide, in particular iron oxide, useful as contrasting agents in MRI imaging (0002-0022); Sharma teaches particle contrasting agents for imaging (abstract, 0001-0038), including particles comprising ferromagnetic and iron doped particles (0057, 0035) contrasting agents in imaging include, but are not limited to ferromagnetic particles and quantum dots (0032), particles include quantum dots, and cores of for example silicon dioxide (0003, 0034), silane ligands (0054) where particles in an embodiment are separated after stirring and isolated from immiscible layers solvents, where the top layer was removed and the particles repeatedly washed and centrifuged where the solvents are prepared by mixing solvents at 1:4, 2:1 v/v (0040).
it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kikuchi’s taught method to include the recited ratio of solvents as taught by Sharma, as the ratio is known in the art for use in producing contrast agents in imaging as shown by Sharma and the courts have held that combining prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143.
Kikuchi teaches mixed solvents of heptane, 2-Me-THF, CPME, MTBE, chloroform, toluene, xylene, ethyl acetate, methyl acetate, isopropyl acetate, methanol, ethanol, 1-propanol, IPA, 1-butanol, 2-butanol, isobutanol, tert-butyl alcohol, 2-methyl-2-butanol, water, and the like (0131), wherein the first purification solution is water. Additionally, Sharma teaches water as a solvent (0040-0050).
Kikuchi teaches mixed solvents of heptane, 2-Me-THF, CPME, MTBE, chloroform, toluene, xylene, ethyl acetate, methyl acetate, isopropyl acetate, methanol, ethanol, 1-propanol, IPA, 1-butanol, 2-butanol, isobutanol, tert-butyl alcohol, 2-methyl-2-butanol, water, and the like (0131), a zwitterionic ligands which are polar and are generally highly soluble in water and sparingly soluble in most organic solvents (0097), heptane, hexane, 2-Me-THF, diphenyl ether, CPME, MTBE, chloroform, toluene, xylene, ethyl acetate, methyl acetate, and isopropyl acetate (0194, 0281, 0294, 0302), the second purification solution is alkane comprising 6 to 30 carbon atoms or olefin comprising 6 to 30 carbon atoms). Additionally, Sharma teaches cyclohexane (0039-0050).
Kikuchi teaches metal particles, which contain iron oxide, in particular iron oxide, useful as contrasting agents in MRI imaging (0002-0022), but does not explicitly teach the particle comprises one or more of a SiO2 particle, a ZrO2 particle, an organic microsphere particle, and a quantum-dot particle.
Sharma teaches particle contrasting agents for imaging (abstract, 0001-0038), including particles comprising ferromagnetic and iron doped particles (0057, 0035) contrasting agents in imaging include, but are not limited to ferromagnetic particles and quantum dots (0032), particles include quantum dots, and cores of for example silicon dioxide (0003, 0034), silane ligands (0050-0054) where particles in an embodiment are separated after stirring and isolated from immiscible layers of immiscible solvents, where the top layer was removed and the particles repeatedly washed and centrifuged (0040-0050), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kikuchi’s taught method to include particles including SiO2 or quantum-dot particles as taught by Sharma, as SiO2 and quantum-dot particles is known in the art for use in contrast agents in imaging as shown by Sharma and the courts have held that combining prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143.
Kikuchi teaches production of nanoparticles, using ligands which include ligands having a silane-functionalized zwitterionic moiety (0096) and Sharma teaches nanoparticles and silane ligands (0050-0054) as discussed above, while the taught combination does not explicitly teach a silane coupling agent, however the use of silane coupling agents is known in the art for use in the production of nanoparticles as shown by Wang, Wang teaches nanoparticles or nano sized objects such as quantum dots, with applications including contrast agents (abstract, 0004, 0021), where a marker is incorporated within the nanosized object, such a s silicon dioxide, the objects can include iron or zirconium oxide (0006-0032), if functionalization is desired the use of silane coupling agents (0087, 0093), this type of functionalization is known in the art (0044-0047).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use silane coupling agents, as the use of silane coupling agents are known in the art for functionalizing nanoparticles for use in contrasting agents as shown by Wang, and the courts have held that combining prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143.
With respect to claim 2, the method of claim 1 is taught above. Kikuchi teaches producing particles by preparing a first solution containing a precursor and a solution (0050-0057, 0167-017), a “two-layer solvent of an organic layer and an aqueous layer” is a mixed solvent that is separated into two layers of an organic solvent (0022, 0035-0055, 0126-130), after reaction extracting multiple times after adding solvent, and washing multiple times with solvent (0130-0131, 0194, examples), separation of layers and extracting multiple times (examples, in particular 0286, 0194, examples, adding the second purification solution into the layer of liquid where the first purification solution is located and letting completely mix with each other and stand until layers appear, and removing the layer of liquid where the second purification solution is located again, and extracting the layer of liquid where the first purification solution is located), Kikuchi teaches multiple extractions and washings, and addition of solvents (added second purification solution), but does not explicitly teach the a size of the layer of liquid where the first purification solution is located and added solvent, however, as the specification is silent to unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the amount or volume (volume) of Kikuchi’s addition of solution based on routine experimentation, for the purpose of optimizing the extraction and washing. Such modifications would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the amount of solvent to obtain the desired size of the layer of liquid where the first purification solution is located and added solvent are same (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
With respect to claims 5 and 6, the method of claim 4, Kikuchi teaches mixed solvents of heptane, 2-Me-THF, CPME, MTBE, chloroform, toluene, xylene, ethyl acetate, methyl acetate, isopropyl acetate, methanol, ethanol, 1-propanol, IPA, 1-butanol, 2-butanol, isobutanol, tert-butyl alcohol, 2-methyl-2-butanol, water, and the like (0131), a zwitterionic ligands which are polar and are generally highly soluble in water and sparingly soluble in most organic solvents (0097), mixed solvent to ensure water solubility (0008), and isolation of particles of obtained hydrophilic ligands using a publicly known method such as liquid separation operation, centrifugal separation, filtration, providing a polarity of the first purification solution is greater than a polarity of the particle and a polarity of the dispersant (particles produced in a solvent which can comprise alcohols (0124-0126), nanoparticles dispersed in examples in acetone and methanol (examples, dispersant), the polarity of the particle and the polarity of the dispersant are both greater than a polarity of the ligand, and the polarity of the ligand is greater than a polarity of the second purification solution, and mutual solubility between the dispersant and the first purification solution is greater than a mutual solubility between the dispersant and the second purification solution.
With respect to claim 7, the method of claim 6, is taught above. Kikuchi teaches particles produced in a solvent which can comprise alcohols (0124-0126), nanoparticles dispersed in examples in acetone, methanol, ethanol (examples, dispersant), wherein the dispersant is an alcohol dispersant or a ketone dispersant; and silane and fatty acid ligands (0096, 0004, 0023, the ligand comprises one or more of mercaptan, fatty acid, and fatty amine),
With respect to claim 10, the method of claim 1, Kikuchi teaches mixed solvents of heptane, 2-Me-THF, CPME, MTBE, chloroform, toluene, xylene, ethyl acetate, methyl acetate, isopropyl acetate, methanol, ethanol, 1-propanol, IPA, 1-butanol, 2-butanol, isobutanol, tert-butyl alcohol, 2-methyl-2-butanol, water, and the like (0131), a zwitterionic ligands which are polar and are generally highly soluble in water and sparingly soluble in most organic solvents (0097), heptane, hexane, 2-Me-THF, diphenyl ether, CPME, MTBE, chloroform, toluene, xylene, ethyl acetate, methyl acetate, and isopropyl acetate (0194, 0281, 0294, 0302), the second purification solution is n-hexane or cyclohexane. Additionally, Sharma teaches cyclohexane (0039-0050).
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/JEANNIE MCDERMOTT/Examiner, Art Unit 1777
/BRADLEY R SPIES/ Primary Examiner, Art Unit 1777