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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-13, in the reply filed on July 15, 2026 is acknowledged.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 15, 2026.
Therefore, after the election, claims 14-20 are withdrawn, and claims 1-13 are pending for examination as filed July 31, 2023.
Information Disclosure Statement
The information disclosure statement filed July 31, 2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
For the Lee article, only an abstract was provided, note pages 4188-4194 indicated on the NPL listing, which were not provided.
Specification
The disclosure is objected to because of the following informalities: at 0039 of the specification as filed “FIG. 1C” is referred to. However, this should apparently be “FIG. 2C” since there is no FIG. 1C and features shown in FIG. 2C are referred to.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “microfluidic device” in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 2 is objected to because of the following informalities: in claim 2, UV should be spelled out. Appropriate correction is required.
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.
Claims 1-3, 5, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kumacheva et al (US 2011/0129941) in view of Bahng, et al “Anomalous dispersions of ‘hedgehog’ particles” (hereinafter Bahng article) and WO 2018/122101 (hereinafter ‘101).
Claim 1: Kumacheva describes a process for making polymeric particles with pre-designed size and shape (note 0010-0013). The process can include forming spherical droplets of a first liquid/fluid phase containing a polymeric precursor, wherein the spherical liquid droplets are dispersed in a second liquid/fluid phase (note 0088, 0093, 0098, 0099, 0124, figures 21a-21b, where the fluids can be liquids, note 0092, for example). The polymer precursor in the spherical liquid droplets are polymerized to form beads/particles comprising a solid polymeric core (note 0096-0097, 0151). Kumacheva notes that it is possible for material other than polymer to be provided to be in the beads (note 0101, 0104, with additional inorganic material, for example). Kumacheva also notes that the fluids can contain reactive chemicals that lead to reaction on the interface between two fluids (note 0108).
As to the additional use of nanowires as claimed,
Bahng article describes forming spherical polymer particles (here of polystyrene) with inorganic (here ZnO) nanospikes (which can also be considered nanowires, note page 596) extending from the surface of the polymer particles such that multiple nanowires/nanospikes are aligned with their longest axis substantially perpendicular to a surface of the polymer core (note page 596-598, figures 1-2). It is described that providing such a “hedgehog” structure helps provide long term colloidal stability in both hydrophobic and hydrophilic media (page 596).
‘101 further describes how nanowires can be attached to a polymer using two different liquids, where a first liquid phase with polymer precursor is provided (note liquid 12, for example), and a second liquid phase contacting the first liquid phase (note liquid 11, for example), where nanowires are provided to the phases and become located at an interface of the first and second liquid phase and the nanowires extend with their longest axis substantially perpendicular to a surface of the first liquid phase with the polymer precursor (note claims 1, 8, 11-12, page 8, lines 5-20, page 15, lines 20-30, page 20, line 3 to page 21, line 5, figures 1A-1B, 2A, 4E). It is further described that the polymer precursor can be polymerized to form a solid polymer with multiple nanowires aligned with their longest axis perpendicular to a surface of the solid polymer (note figure 4E, page 20, line 2 to page 21, line 10). It is further indicated that the first liquid phase with the polymer precursor can be curved/droplet like, and while the first liquid phase is in this form, the nanowires will still extend with their longest axis substantially perpendicular to a surface of the first liquid phase (note figures 1A-1D, 2A, page 13, lines 20-30). The nanowires can be inorganic with inorganic heads (note figures 3A, 4E, page 8, line 20 to page 9, line 35, page 11, line 30 to page 12, line 10).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kumacheva to provide that when forming the polymer beads/particles as desired by Kumacheva, nanowires are provided at an interface of the first and second liquid phases and the nanowires extend with their longest axis substantially perpendicular to the spherical liquid droplets, and when polymerizing the polymer precursor to form beads, the beads comprise a solid polymer core with multiple nanowires aligned with their longest axis substantially perpendicular to a surface of the solid polymer core as suggested by Bahng article and ‘101 to provide a desirable treatment of the beads to give long term colloidal stability, for example, since Kumacheva teaches a way to form polymer beads with a solid core by providing spherical droplets of a first liquid phase containing a polymer precursor dispersed in a second liquid phase and polymerizing the polymer precursor to form a solid polymer core, and further that additional materials, that are inorganic, can be provided in the beads, and Bahng article indicates how it can be desirable to provide inorganic nanowires extending with their longest axis substantially perpendicular to of a polymer core bead to provide for long term colloidal stability, and ‘101 would further indicate that nanowires can be provided to be connected to a polymer using a two phase liquid system with an interface, where a first liquid phase containing polymer precursor can contact a second liquid phase with an interface between the two and inorganic nanowires can be provided such that the nanowires will locate at the interface to extend with their longest axis substantially perpendicular to a surface of the polymer precursor containing first phase and when polymerizing the polymer this will result in a solid polymer with multiple nanowires aligned with their longest axis substantially perpendicular to a surface of the polymer, suggesting how nanowires can be provided when making polymer beads as described by Kumacheva. ‘101 further suggests that the nanowire attached polymer material also allows for making other desired articles such as bio-sensing platforms (note page 28, lines 5-15), giving further suggested articles to make.
Claim 2: Kumacheva further suggests that the first liquid phase comprises a photoinitiator (note 0096, 0151), and UV radiation is used to photopolymerize the polymer precursor, so exposing the droplets to UV radiation to polymerize (note 0096, 0151).
Claim 3: Kumacheva further suggests that the polymer precursor can be an acrylate based monomer (note 0093, 0151).
Claim 5: ‘101 indicates that it is known to control the density of the nanowires per square micron (note page 13, lines 1-10), and therefore it would be suggested to optimize the density of the nanowires per square micron on the surface for the best results for the specific particle being made, giving results of coverage of at least 50 % of the surface area of each of the solid polymer cores as claimed.
Claim 11: ‘101 would suggest that the wires can be semiconductor wires, for example (note page 8, lines 20-30).
Claim 13: Kumacheva would suggest that the process of forming the polymer beads can include providing the first liquid phase containing the polymer precursor into a microfluidic reactor/device, providing the second liquid phase (suggested to contain nanowires from ‘101 as discussed in the rejection of claim 1, and note page 10, lines 10-30) into the microfluidic reactor/device, and passing the first liquid phase and second liquid phase through the microfluidic reactor/device to form the spherical liquid droplets of the first liquid phase containing the polymer precursor dispersed in the second liquid phase (note figures 21a-21b, 0124). The microfluidic device of Kumacheva is understood to provide the structure corresponding to that shown by applicant under 35 USC 112(f) (note Kumacheva figures 1b, 21a, etc).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kumacheva in view of Bahng article and ‘101 as applied to claims 1-3, 5, 11 and 13 above, and further in view of Gros (US 2004/0013815).
Claim 4: as to the acrylate based monomer, Kumacheva notes using tri(propylene glycol) diacrylate, for example (note 0093, 0151, for example), where photoinitiator of 1-hydroxycyclohexyl phenyl ketone can be used (note 0096).
Gros further describes a coating that is UV cured (note 0009, 0013), where the coating can have polyacrylate material (note 0020), and where the photoinitiator can be 1-hydrocyclohexyl phenyl ketone or benzoin isopropyl ether, for example (note 0044).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kumacheva in view of Bahng article and ‘101 to use as a photoinitator benzoin isopropyl ether as suggested by Gros with an expectation of predictably acceptable results, since Kumacheva uses a 1-hydrocyclohexyl phenyl ketone as a photoinitiator for UV curing, and Gros indicates that 1-hydrocyclohexyl phenyl ketone or benzoin isopropyl ether can be similar used as photoinitiator for UV curing.
Claims 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kumacheva in view of Bahng article and ‘101 as applied to claims 1-3, 5, 11 and 13 above, and further in view of Stoy et al (US 5218039).
Claim 6: as to specifically providing that the first liquid phase has a non-polar solvent and the second liquid phase as a polar solvent, Kumacheva notes that the monomer can be nonpolar (note 0093). In Kumacheva liquids used can be water monomer and oily liquids, including separate water and oil liquids (note 0109). In Kumacheva, particles can be formed with a continuous water phase surrounding monomer-oil (note 0110). ‘101 would indicate that the monomer is added to the phase, that is there can be additional “solvent” in the phase with the polymer precursor (note page 20, lines 2-30). In ‘101 the two different liquids are desirably phase separated, and immiscible with each other (note page 8, lines 5-20).
Stoy describes how when making emulsions, there can be water in oil types and oil in water types (note column 3, lines 5-10), and where an aqueous phase can be considered polar and a water insoluble phase as non-polar (note column 2, lines 25-35), where the non-polar phase can be various oils (note column 3, lines 25-35).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kumacheva in view of Bahng article and ‘101 to provide the first phase as with the polymer precursor as containing a non-polar solvent and the second phase with a polar solvent as suggested by Stoy with an expectation of predictably acceptable results, since Kumacheva indicates that the phases can include forming droplets with an oil-monomer material and the continuous phase with water, where Stoy would indicate that when forming emulsions, there can be oil in water types where water can be used to make polar phases and oil can be used for non-polar phases, so it would be suggested that the oil with the monomer of Kumacheva can be a non-polar solvent and the water as a polar solvent.
Claim 7: as to first ends of the nanowires functionalized by affinity ligands, this would be suggested by ‘101 (note page 11, line 14 to page 13, line 15).
Claim 8: ‘101 would suggest first ends of the nanowires functionalized by a polar affinity ligand (hydrophilic) and the other end functionalized by non-polar affinity ligand (hydrophobic) (note page 11, lines 10-30, and note as discussed for claim 6, water being polar).
Claim 9: as to the nanowires having a metal catalyst particle as a second end, this would be suggested by ‘101, note head portion 23 as a seed/catalyst particle (note page 11, line 30 to page 12, line 10), where this head portion 23 would have a first functionalization (note page 12, lines 1-10), where this functionalization can be more hydrophobic, so more non-polar affinity ligands) (note page 12, lines 15-20), and there can be a semiconductor wire that extends from the catalyst particle as a side and first end of the nanowire (note figure 3A, 3B, page 11 line 30 to page 12, line 10) and the second end can be functionalized by polar affinity ligands (note page 11, lines 10-30, page 12, lines 15-20, more hydrophilic).
Claim 10, as to the first liquid phase further having a functionalization affinity compound that has an affinity for the nonpolar affinity ligands such that the metal catalyst particles are disposed in the spherical liquid droplets, and the semiconductor wires extend from the spherical liquid droplets and are disposed in the second phase, this would be suggested by ‘101, noting the affinity ligands discussed above, the placement of the heads/catalyst particles in the first phase and wires in the second phase and use of affinity ligands to align based on composition of liquids 11, 12, including the functionalizing component in the liquid 12, for example, (note figure 4E, and page 12, line 20 to page 13, line 15).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kumacheva in view of Bahng article and ‘101 as applied to claims 1-3, 5, 11 and 13 above, and further in view of WO 2018/158469 (hereinafter ‘469).
Claim 12: as to functionalizing the beads with a protein or fluoresecent label, this would be suggested by Kumacheva (note 0090, fluorescent dye that can be considered a label, and 0106, with proteins). ‘101 would further suggest that the nonwire attached polymer product can be used for bio-sensing (note page 28, lines 5-10).
As to the beads as a sensing element in a optical sensor to detect an analyte having an affinity for the functionalized beads,
‘469 describes how bio-sensors can be provided to use biosensor particles (note page 6, lines 5-15, Figure 1A), where the biosensing surface (that is, the particles) change optical properties on dependence of analyte (page 7, lines 15-25), describing a sensing surface with sensing particles that can contain fluorescent dyes, etc. and changes optical properties in dependence on the presence of the target analyte (note page 15, line 1 to page 16, line 10) and thus the sensor can be considered an optical sensor that detects analyte having an affinity for the sensor particles.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kumacheva in view of Bahng article and ‘101 to provide functionalizing the beads with a fluorescent dye/label and using the beads in a sensing element in an optical sensor to detect an analyte having an affinity for the functionalized beads as suggested by ‘469 to provide a desirable use for the formed beads, since Kumacheva notes that the bead can be provided with fluorescent dye and ‘101 indicates that nanowire attached polymer can be used for bio-sensing, and ‘469 indicates that known bio-sensors are optical sensors that used fluorescent dye containing particles that detect analyte having an affinity for the sensor particles.
Garting et al (US 2015/0102284) also discusses nanowire aligning (note the abstract).
Note that Bahng article was provided with the PTO-892 of April 22, 2026.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
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