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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-4, 6, 8-13, 15-17 and 19 in the reply filed on 5/20/2026 is acknowledged.
Claims 20-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claims.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-4, 6, 13, 16-17, 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Poselt, et al. (WO 2012/001012 A2).
Regarding claim 1, Poselt et al. teach a plurality of surfactants co-assembled with hydrophobic ligands on the surface of a nanoparticle (Figure 1) thereby reading on the system of claim 1,
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Wherein, in a preferred embodiment (Example 2, [0115]), Poselt et al. teach:
iron oxide nanoparticles thereby reading on the metallic nanoparticles;
Polysorbate-80 thereby reading on the polyfunctional surfactant;
AIBN thereby reading on a reactive additive;
Wherein the Polysorbate-80 is a surfmer which is a polymerizable surfactant [0079] thereby capable of forming a polymer when reacted with the initiator/reactive additive.
Regarding claim 2, Poselt et al. teach iron oxide nanoparticles, among other metals [0080] thereby reading on the d-Block transition metal.
Regarding claim 3, Poselt et al. teach the nanoparticles having a distribution of sizes with an average diameter of less than 1 micron (Figure 4).
Regarding claims 4, Poselt et al. teach the surfactants contain affinity molecules wherein the affinity molecules contain functional groups such as thiols and fluoro atoms [108] thereby reading on nucleophilic as required by the instant claim 4.
Regarding claim 6, Poselt et al. teach the initiator AIBN, among others [0080], thereby reading on the reactive additive having electrophilic groups.
Regarding claims 16-17, Poselt et al. teach the initiator can function through thermal, photochemical or redox stimulus wherein some of the initiators are considered non-nucleophilic (water soluble polymerization initiator) and further reading on the claimed catalyst.
Regarding claim 19, Poselt et al. teach the nanoparticles are magnetic [0003], [0025].
Claim Rejections - 35 USC § 103
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.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Poselt, et al. (WO 2012/001012 A2).
Regarding claims 8 and 9, Poselt et al. teach the system according to claim 1 as set forth above and incorporated herein by reference.
Poselt et al. do not particularly teach the stoichiometric balance of the functional groups of the reactive group to the functional groups of the free (unbound) polyfunctional surfactant as required by claim 8 and are further silent on the mass ratio of the metal nanoparticles to the surfactant as required by instant claim 9.
However, Poselt et al. teach the surfactant/surfmer and the initiator/reactive additive are mixed and a polymerization reaction is performed to generate the encapsulation of the nanoparticle [0026].
The stoichiometric balance between the functional groups of the reactive group/intiator to the functional groups of the unbound surfactant and the mass ratio of the surfactant to the nanoparticle will affect the resulting polymerization on the surface of the nanoparticle. Therefore, the stoichiometric balance of the initiator and surfactant and the mass ratio of the surfactant to the nanoparticle can be optimized to reach the desired polymerization via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative stoichiometric amounts and the mass ratios of the compounds for the intended application via a routine optimization, thereby obtaining the present invention.
Further, case law has held that differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of ranges is the optimum combination of values (MPEP 2144.05.II.A.). This decision is clearly analogous to other process parameters.
Claims 10-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Poselt, et al. (WO 2012/001012 A2) in view of Ramadas (WO 2014/178798 A1).
Regarding claims 10-13 and 15, Poselt et al. teach the system according to claim 1 as set forth above and incorporated herein by reference.
Poselt et al. do not particularly teach the carbon-carbon based aromatic material.
However, Ramadas, in the same field of endeavor, namely encapsulated nanoparticles, having an encapsulating material that is a polymerizable compound such as a surfactant (claim 53 and Abstract). Ramadas further teaches a metal nanoparticle is functionally equivalent to a carbon material such as a carbon nanotube [0071] wherein the particle size of the carbon material is 0.8 to 100 nm [0071] thereby reading on the less than 1 micron of claim 11. Case law has held that substituting known equivalents for the same purpose is prima facie obvious. (MPEP 2144.08.I.). Therefore it would have been obvious to one of ordinary skill in the art to substitute the metal nanoparticle of Poselt et al. with the carbon material of Ramadas, thereby arriving at the claimed invention.
Regarding claim 12, Ramadas teaches the surfactants are chemically anchored or physically absorbed on nanomaterials to form a layer of stabilization on the nanoparticles [Ramadas, 0179] thereby reading on the polyfunctional surfactant stabilizing the nanoparticle dispersion of the aromatic carbon-based material as required by claim 12.
Poselt et al. teach the surfactant having functional groups comprising fluorine [Poselt, 108] as required by the instant claim 13. Ramadas also teaches fluorosurfactants [Ramadas, 0159].
Regarding claim 15, Poselt in view of Ramadas do not particularly teach the stoichiometric balance of the functional groups of the reactive additive to functional groups of the free unbound polyfunctional surfactant.
However, Poselt et al. teach the surfactant/surfmer and the initiator/reactive additive are mixed and a polymerization reaction is performed to generate the encapsulation of the nanoparticle [0026].
The stoichiometric balance between the functional groups of the reactive group/intiator to the functional groups of the unbound surfactant will affect the resulting polymerization on the surface of the nanoparticle. Therefore, the stoichiometric balance of the initiator and surfactant can be optimized to reach the desired polymerization via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative stoichiometric amounts for the intended application via a routine optimization, thereby obtaining the present invention.
Further, case law has held that differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of ranges is the optimum combination of values (MPEP 2144.05.II.A.). This decision is clearly analogous to other process parameters.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LANEE REUTHER whose telephone number is (571)270-7026. The examiner can normally be reached M-F 7:30-3:30.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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