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 .
Claims 1-18 are pending in this application.
Claims 8-12 stand withdrawn from further consideration as being directed to non-elected subject matter. Claims 1-7 and 13-18 will presently be examined.
Withdrawn ground of rejection
The outstanding ground of rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is withdrawn in view of the amendment filed on 1/14/2026, which further defines the claimed nano-binder particles as comprising chitosan, corn zein, at least one organic binder (list of alternatives given), and at least one inorganic solid particles selected from silicon dioxide or zinc oxide.
Comment on corn zein
It is noted that applicant’s response filed on 1/14/2026 amended “zein” as “corn zein” in claims 1, 13, and 18. The term “corn zein” was not disclosed explicitly in the originally filed specification or claims. However, a person skilled in the art would have readily recognized that the inventors were in possession of the invention as claimed because zein is derived from corn. See for example, Theuer et al., which is a technical report on zein by the USDA.1
Antecedent basis lacking for claimed subject matter
Claims 1, 13, and 18 recite the limitation "corn zein.” There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to amend the specification to correspond to the amended claims.
New grounds of rejection necessitated by amendment – 35 U.S.C. 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The last “wherein” clause of claim 13 recites, “wherein the nano-binder particles comprise chitosan, corn zein, and zinc oxide, synergistically constructing a three-dimensional nanonetwork” (emphases added). The emphasized feature fails to find adequate descriptive support from the originally filed disclosure.
The only disclosure of synergistic effect in the originally filed disclosure is in regard to the at least two antimicrobial components demonstrating “a synergistic effect with fast action and long-lasting properties” (specification paragraph 12). There is no disclosure of synergistic construction of a three-dimensional nanonetwork. Therefore, claims 13-18 fail to find adequate descriptive support from the originally filed disclosure. Claims 14-18 are included in this ground of rejection because they depend on claim 13 and fail to cure the deficiency of claim 13.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 and 13-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
(1) Claim 1 is copied in part with marking below:
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The indefinite part of claim 1 is in the phrase, “at least one inorganic solid particle selected from silicon dioxide or zinc oxide.” List of alternatives can be recited in a Markush group (i.e., “at least one inorganic solid particle selected from the group consisting of silicon dioxide, zinc dioxide, and a mixture thereof”), but the current claim language fails to recite a closed group, thereby creating uncertainty that the group could be open. Also, the “or” contributes to the failure to recite a closed group. Although “or” can be used to recite a list of alternatives in a format such as for example, “at least one inorganic solid particle, wherein said at least one inorganic particle is silicon dioxide, zinc oxide, or a mixture thereof,” the current format that starts with “selected from” raises uncertainty as to full metes and bounds of the claim.
(2) Claim 13 recites, “wherein the nano-binder particles comprise chitosan, corn zein, and zinc oxide, synergistically constructing a three-dimensional nanonetwork” (emphases added). It is unclear what is meant by synergistically constructing a three-dimensional nanonetwork – the specification does not recite or define this language. One skilled in the art would not be able to determine the metes and bounds of synergistic construction of a three-dimensional nanonetwork, i.e., what is not synergistic and what is synergistic construction of such a network. Also, one skilled in the art would not be able to determine what exactly is a three-dimensional nanonetwork and what is not such a nanonetwork.
Dependent claims are included in this ground of rejection because they do not cure the deficiencies of their base claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13-18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 depends on claim 3, and claims 14-18 depend on claim 13.
Claims 13-18 do not reflect the changes made to claim 1, which carry over to its dependent claim 3; consequently, claims 13-18 fail to include all the limitations of the claim from which it depends, claim 3.
The actual scope and limitation placed on the nano-binder particles of claim 1 can be discerned by the spacing utilized below (emphasis added):
“the nano-binder particles comprise
chitosan,
corn zein,
at least one organic binder component selected from the group consisting
of gelatin, cellulose, alginate, pectin, acrylic latex, polyurethane, and
at least one inorganic solid particle selected from silicon dioxide or zinc oxide”.
Hence, the nano-binder particles of independent claim 1 and thereby its dependent claim 3 require at least 4 ingredients: chitosan, corn zein, organic binder, and inorganic solid particle. However, the last “wherein” clause of claim 13 recites, “wherein the nano-binder particles comprise chitosan, corn zein, and zinc oxide, synergistically constructing a three-dimensional nanonetwork.” What is missing from this wherein clause is the at least one organic binder as recited in claim 1 and required in claim 3.
For these reasons, claims 13-18 fail to include all the limitations of the claim upon which they depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 See the attached PTO-892, non-patent document U, page 1, lines 34-55; page 3, lines 148-164; page 6, lines 280-285.
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