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 species b – claims 5-7 in the reply filed on 12/26/25 is acknowledged.
Claims 4 and 12 and are withdrawn as being directed to a non-elected species.
Priority
3. Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 6/17/2022. It is noted, however, that applicant has not filed a certified copy of the JP 2022-098318 application as required by 37 CFR 1.55.
4. Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 5/26/2023. It is noted, however, that applicant has not filed a certified copy of the JP 2023-086755 application as required by 37 CFR 1.55.
5. For the purposes of prior art rejections, the instant application is accorded the effective filing date of 6/6/2023 because Applicants have not provided copies of the foreign applications. Translations would also be appreciated in case intervening art is found.
Claim Rejections - 35 USC § 102
6. 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.
7. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
8. Claim(s) 1-3 and 5-11 is/are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Luo et al (WO 2021/225519 A1; herein referred to as Luo).
Luo discloses a magnetic particle comprising a magnetic core, one or more polymer layer(s) arranged on the magnetic core, wherein the magnetic core comprises a plurality of magnetic nanoparticles and the polymer layer contains at least one functional group selected from amino, carboxyl, or epoxy groups for covalent attachment of a ligand or antibody. The magnetic particles can be an iron oxide such as Fe3O4 (see Figure 12 and pages 1-19).
With respect to claims 2, the magnetic particles can have an average diameter of 5-15 nm (page 8).
With respect to claim 7, the external polymer layer providing the functional groups on the surface of the magnetic particles can be composed of glycidyl methacrylate (page 23). With respect to claim 6, since the polymer in Luo is the same material as the instant invention, the polymer is also considered hydrophobic.
With respect to claim 8, the magnetic particles can have an average diameter of 1 micron (page 39).
9. Claim(s) 1, 8, and 9-11 is/are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Kakegawa et al (JP2022071981A; herein referred to as Kakegawa).
Kakegawa disclose a magnetic particle comprising a magnetic core, a polymer layer arranged on the magnetic core, wherein the magnetic core comprises a plurality of magnetic nanoparticles and the polymer layer contains at least one functional group selected from amino or thiol groups for covalent attachment of a ligand or antibody (Figure 1, [0021], [0031] – [0036]).
With respect to claim 8, the average particle size of the magnetic particles in the core can be 0-20 nm which includes 0.1 microns to 2 microns.
Claim Rejections - 35 USC § 103
10. 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.
11. Claim(s) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kakegawa et al (JP2022071981A; herein referred to as Kakegawa).
See above for the teachings of Kakegawa.
With respect to claims 2 and 3, the magnetic particles in the core can be an iron oxide such as Fe3O4 or Fe2O3. The average particle size can be 500 nm to 2500 nm or less ([0037]).
It has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value for a result effective variable. “[W}here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum of workable ranges by routine experimentation”, In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235-236 (CCPA 1955). The discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill if the art. Since Applicant has not disclosed that the specific particle size recited in claim 2 are for any particular purpose or solve any stated problem, absent unexpected results, it would have been obvious for one ordinary skill to discover the optimum workable ranges of the particle size disclosed by the prior art by normal optimization procedures known in the magnetic particle art.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER L CHIN whose telephone number is (571)272-0815. The examiner can normally be reached Monday - Friday, 10:00am - 6:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bao-Thuy Nguyen can be reached at 571-272-0824. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER L CHIN/Primary Examiner, Art Unit 1677
5/2/2026
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