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 .
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.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 14-25, drawn to a method of preparing a copper-nanocluster containing solution, classified in C0G 3/04.
II. Claim 26, drawn to a method of detecting Fe3+, classified in B82Y 15/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have materially different function. Invention I is functions to provide a colloidal solution and Invention II functions to detect Fe3+. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
--the inventions have acquired a separate status in the art in view of their different classification; and,
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with My Chau Ta on 10 October 2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 14-25. Affirmation of this election must be made by applicant in replying to this Office action. Claim 26 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Specification
The disclosure is objected to because of the following informalities:
In paragraph [0009], the formula for EuW10 should have a capital W: “Na9[EuW10O36].32H2O”
Appropriate correction is required.
Claim Interpretation
The abbreviation Cu4I4 is defined as “a kind of tetranuclear copper nanocluster with triphenylphosphine as a ligand” ([0008]); this is interpreted as referring to the particular cluster [(Ph3P)CuI]4, where Ph3P is triphenylphosphine, as depicted in Fig. 1.
Claim Objections
Claim 14 is objected to because of the following informalities:
Though the specification defines EuW10 in paragraph [0009], for the sake of clarity in the claims and to avoid confusion with a europium-tungsten alloy, the compound for which this abbreviation substitutes should also be specified in the claim itself.
Similarly, the abbreviation Cu4I4 is easily mistaken for a molecule consisting of only four coppers and four iodine atoms; a definition of this abbreviation that is consistent with the originally filed specification should be specified in the claim.
Appropriate correction is required.
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.
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 22-25 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.
Claim 22 recites the limitation "the ultrasonic dispersion" in line 1. There is insufficient antecedent basis for this limitation in the claim because none of claim 22, claim 20, or claim 14 recite “an ultrasonic dispersion.” For the purposes of further examination this limitation is interpreted as referring to the “ultrasonic treatment” in lines 5-6 of claim 20, upon which claim 22 depends.
Claim 23 recites the limitation "the dimethyl sulfoxide solution" in line 10. While claim 20 does recite “a dimethyl sulfoxide solution,” this solution is formed from the mixture of the first solid powder and dimethyl sulfoxide; it is therefore unclear if the 10 mg of the first solid powder in claim 23 is being added to a solution that already contains some additional amount of the powder or if it being added to fresh dimethyl sulfoxide (see paragraphs immediately below). For the purposes of further examination this will be interpreted as being added to a fresh source of dimethyl sulfoxide.
Claim 23 depends upon claim 20 but recites steps that are already recited in claim 20. It is therefore indefinite if these steps must be completed a second time to meet the limitations of claim 23, or if only the further details contained in claim 23 are to be considered. For the purposes of further examination, either interpretations may be used.
Similarly, claim 24 depends upon claim 14, but claim 24 recites a mixing step (3) that seem duplicative of the step recited in claim 14. It is therefore indefinite if two separate mixing steps are to occur or if these are the same step.
Claim 25 depends upon claim 24 without resolving the indefiniteness and is likewise rejected.
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.
Claims 14-19 and 24-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (Colloids and Surfaces A: Physicochem. Eng. Aspects 2023, 664, 131147; published 15 February 2023).
Regarding claim 14, Wang discloses a method of preparing a hydrophobic copper nanoclusters-containing colloidal solution comprising mixing a solution of Cu4I4 in an organic solvent with an aqueous solution of EuW10 to obtain the hydrophobic copper nanocluster-containing colloidal solution (p.2, col. 1, ¶ 4 and p.2, col. 2, Section 2.3).
Regarding claims 15-18, Wang discloses the method of claim 14, where the volume ratio of the solution of Cu4I4 in the organic solvent to the aqueous solution of EuW10 is 4:6 (0.44 mL : 0.6 mL), the organic solvent is dimethyl sulfoxide (DMSO), the concentration of Cu4I4 in DMSO is 0.6 mg/mL (4 mM and 1548.6 g/mol for [Cu4I4(PPh3)4]), and the concentration of EuW10 in water is 2.3 mg/mL (0.7 mM and 3349.7 g/mol for Na9[EuW10O36].32H2O) (Section 2.3), thereby meeting the further limitations of claims 15-18.
Regarding claim 19, Wang discloses the method of claim 14 where after mixing the hydrophobic nanoclusters-containing colloidal solution has a total concentration of EuW10 of 1.3 mg/mL (0.4 mM and 3349.7 g/mol for Na9[EuW10O36].32H2O) and a total concentration of Cu4I4 of 1.5 mg/mL (1 mM and 1548.6 g/mol for [Cu4I4(PPh3)4]; one stable dispersion as a typical sample (CCu4=1 mM, CEuW10=0.4 mM); p. 4, col. 1, ¶ 1).
Regarding claims 24 and 25, which are interpreted here as not duplicating steps recited in claim 14 (see Claim Rejections – 35 USC § 112) , Wang discloses the method of claim 14, where Wang also discloses:
(1) preparation of a solution of Cu4I4 in dimethyl sulfoxide by weighing a Cu4I4 powder, and adding dimethyl sulfoxide to the Cu4I4 powder to prepare the solution of Cu4I4 in dimethyl sulfoxide (this is how one of ordinary skill would understand the 0.4 mL of 4 mM Cu4I4 clusters in DMSO used in Section 2.3 was prepared);
(2) preparation of an aqueous solution of EuW10 by weighing a EuW10 powder, and adding ultrapure water (Section 2.1) to the EuW10 powder to prepare the aqueous solution of EuW10 (this is how one of ordinary skill would understand the 0.6 mL of 7 mM EuW10 in water used in Section 2.3 was prepared);
(3) preparation of the hydrophobic copper nanoclusters-containing colloidal solution adding the aqueous solution of EuW10 to the solution of Cu4I4 in dimethyl sulfoxide (Section 2.3).
Wang further discloses letting the combined solutions stand for 1 and 3 days (After standing for one day, the Cu4I4 clusters aggregated into flakes and after standing for three days, the flakes grew obviously and further gather[ed]; Section 3.4, p. 5, col. 1, ¶ 1). Wang therefore anticipates all the limitations of claims 24 and 25.
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.
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 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Colloids and Surfaces A: Physicochem. Eng. Aspects 2023, 664, 131147), as applied to claim 14 above, and further in view of Xin et al. (CN 113025316 A). The provided English machine translation of Xin (CN 113025316 A) is used in the analysis below.
Regarding claim 20, Wang discloses the method of claim 14, and further discloses the Cu4I4 prepared by a process comprising dispersing CuI in a dichloromethane solution (using a suspension of CuI in dichloromethane means it was prepared such) adding triphenylphosphine thereto, and fully stirring at room temperature, to obtain a first mixture (triphenylphosphine was added to a suspension of CuI in dichloromethane…The mixture was then stirred at ambient temperature for 2 h); and subjecting the first mixture to suction filtration to obtain a white powdery solid (filtered into a white solid powder); and adding the white powdery solid into an excess acetonitrile solution (product was added to an excess of acetonitrile solution), performing ultrasonic treatment to disperse the white powdery solid in the excess acetonitrile solution to be uniform, removing excess CuI, to obtain a second mixture (subjected to ultrasound for 30 min to remove excess CuI), and subjecting the second mixture to suction filtration, to obtain a solid powder (it was filtered to obtain a pure white solid powder), dissolving the first solid powder in a dimethyl sulfoxide solution (white solid powder was dissolved in 2 mL of dimethyl sulfoxide), and adding methanol to the solution and diffusing for three days to obtain the Cu4I4 solid (diffused with methanol to obtain colorless crystals after 3 days).
Wang does not specify that the CuI was stirred to form the suspension or that the crude solid product was washed with acetonitrile. Also, while Wang discloses that the solution was “diffused with methanol to obtain colorless crystals” they omit the details that the diffusion mixture was prepared by standing for layering to obtain an upper layer, and adding dropwise a methanol solution to the upper layer. Wang also reports a crystalline product instead of the powder required by the instant claim.
However, Xin teaches a method of preparing the same Cu4I4 material and also teaches stirring the CuI dispersed in dichloromethane until homogenous ([n0027]), washing the crude solid product with acetonitrile, adding methanol dropwise to an upper layer for diffusion, and obtaining a Cu4I4 powder ([n0028]).
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 the preparation reported by Wang to include the extra details provided by Xin. One of ordinary skill in the art would have been motivated to do so because Xin teaches a nearly identical method while filling in some of the details lacking from Wang.
Regarding claim 21, modified Wang teaches the method of claim 20, where the concentration of CuI dispersed in the dichloromethane solution is 2.6 mmol in 10 mL, or equivalently 0.26 mol L-1 or 260 mmol L-1 , and the concentration of triphenylphosphine is 2.0 mmol per 10 mL, or equivalently 0.20 mol L-1 or 200 mmol L-1 (Section 2.2), each of which lies outside the instantly claimed range of concentrations.
However, Xin teaches the concentration of CuI dispersed in dichloromethane is most preferably 2.6 mmol L-1 and the concentration of triphenylphosphine is most preferably 2.0 mmol L-1 ([n0029]), each of which fall in the instantly claimed range of concentrations.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the concentrations used by Wang with the concentrations used by Xin. One of ordinary skill in the art would have been motivated to do so as this represents to the substitution of one known concentration for another known to produce the same product. MPEP 2143(B).
Regarding claim 22, modified Wang teaches the method of claim 20 but Wang does not teach the details of the ultrasonic dispersion of the CuI.
However, Xin traches that preferably the ultrasonic frequency of the ultrasonic dispersion is 30-50 kHz, the ultrasonic power is 80 W, and the ultrasonic time is 20-30 min ([n0030]), each of which are the same ranges as instantly claimed.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the specific ultrasonic treatment taught by Xin in the method of modified Wang. One of ordinary skill in the art would have been motivated to do so because while Wang teaches an ultrasonic treatment, they are silent on the details that Xin provides.
Regarding claim 23, as detailed above (see Claim Rejections – 35 USC § 112), claim 23 will be examined as if the only further limitations of claim 23 are those details appearing in the recitation of claim 23 but missing from the recitation in claim 20, and not that claim 23 requires duplicated steps.
The further limitations of claim 23 are taught by Wang in Section 2.2 are: fully stirring at room temperature for 2 h (stirred at ambient temperature for 2 h), dissolving 10 mg of the first solid powder in 2 mL of a DMSO solution, to obtain third mixture, and diffusing with 2 mL of methanol for 3 days (the white solid powder (10 mg, 0.004 mmol) was dissolved in 2 mL of dimethyl sulfoxide and diffused with methanol (2 mL) to obtain colorless crystals after 3 days). Wang does not teach stirring CuI in dichloromethane for 10 min.
However, Xin teaches stirring the CuI dispersed in dichloromethane for 10 min ([n0032]), in addition to those limitations taught Wang.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to stir the CuI dispersed in dichloromethane in the method of modified Wang for 10 min, as taught by Xin. One of ordinary skill in the art would have been motivated to do so because while Wang is silent on stirring, Xin teaches that stirring for 10 min represents a preferred embodiment of a very similar method ([n0031]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735