DETAILED ACTION
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 Arguments
The Amendment filed 08DEC2025 has been entered. No new matter has been entered. Applicant’s amendments have overcome each and every claim objections previously set forth in the Non-Final Office Action mailed 09SEPT2025.
Applicant's arguments filed 08DEC2025 have been fully considered but they are not persuasive.
With respect to claim 3, please clarify the desired claim scope.
Regarding the 102, the Examiner disagrees.
The independent claim 1 sets forth an ultraporous mesostructured nanoparticle suitable for uptake by a plant. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. WANG’s nanoparticle is capable of the intended use. Just because WANG’s nanoparticle is suitable for a different application or is capable of regeneration at high temperatures does not mean it is not capable of Applicant’s intended purpose. See e.g. WYSZKOWSKI 2023 “Molecular sieve, halloysite, sepiolite and expanded clay as a tool in reducing the content of trace elements in Helianthus annuus L. on copper-contaminated soil”.
Furthermore, the independent claim 1 sets forth an ultraporous mesostructured nanoparticle being modified with e.g. APTES. WANG’s silica nanoparticle is modified with e.g. APTES: “the 3-amino-propyl triethoxy silane (APTES) was introduced to react with the silicon hydroxyl groups in the MCM-48 channels” (P2/right C/2.1. Preparation of Au/MCM-48 absorbent). Similarly, WANG’s silica nanoparticle is modified with e.g. TMCS: “the 3-amino-propyl triethoxy silane (APTES) was introduced to react with the silicon hydroxyl groups in the MCM-48 channels” (P2/right C/2.1. Preparation of Au/MCM-48 absorbent). If there are doubts about the materials and methods, see the supplemental data of WANG.
The Applicant has not adequately described in the claims a difference in structure. The claims do not claim a surface-modified ultraporous mesostructured nanoparticle nor require silylation or a surface-grafting step.
In response to applicant's argument that the references fail to show certain features of the invention (e.g. surface modification or silica only or dual-scale pore structure, very large internal mesopores, and substantial pore volumes, hierarchical pore structure), it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Respectfully, the claims are directed towards an ultraporous mesostructured nanoparticle, not a method of synthesis.
WANG’s mesostructure is ultraporous, which is why these materials are used as catalysts and molecular sieves.
Product-by-Process Claims
Note that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. (See MPEP §2113). Claims 1-3,5 are interpreted as product-by-process claims and will be examined upon the merits of such claims.
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.
Claim 3 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 3 sets forth the limitation “the ultraporous mesostructured silica nanoparticle is further modified with chlorotrimethylsilane”. Claim 3 is dependent on claim 1, which already claims “an ultraporous mesostructured nanoparticle […] modified with […] chlorotrimethylsilane”. The scope is unclear as to whether the nanoparticle is only modified with chlorotrimethylsilane or is a combination of chlorotrimethylsilane and another species of the modification genus.
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(s) 1-3,5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WANG et. al. “Ultrafine Au nanoparticles confined in three-dimensional mesopores of MCM-48 for efficient and regenerable Hg0 removal sorbent in H2S and H2O containing natural gas”.
Regarding claims 1-3,5, WANG teaches an ultraporous mesostructured nanoparticle (”ultraporous” by being a fine mesoporous nanoparticle with a large surface area; title, P2/left C/last paragraph leading into P2/right C) being modified with (3-aminopropyl)triethoxysilane (APTES) and chlorotrimethylsilane (TMS or trimethylchlorosilane (TMCS); P2/left C/last paragraph leading into P2/right C). Note that MCM-48 is a mesoporous silica (zeolite; P2/right C/2.1. Preparation of Au/MCM-48 absorbent).
Telephonic Inquiries
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~08:00~15:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LIAM A. ROYCE
Primary Examiner
Art Unit 1777
/Liam Royce/ Primary Examiner, Art Unit 1777