DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of group II, claims 110 and 117-27, in the reply filed on 28 January 2026 is acknowledged.
Claim Objections
Claims 117-120 are objected to because of the following informalities: each of the aforementioned claims states “having a sized” which is a typo of –having a size—. 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 110 and 117-127 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.
Each of claims 110 and 117-120 recites the limitation “particles…having a size selected from the group consisting of between” one range of sizes. This is an improper Markush group, resulting in the intended scope of the claim being unclear with respect to the size (range) of particles. A Markush group recites a list of alternatives to define a limitation. However, the aforementioned claims each only contain one range option, not a list of alternatives. The office does not believe Applicant intended for only one size in a given claimed range to be intended (e.g., where the particles all have a size of 50 nm and no variation thereof). The office recommends amending each of the claims to recite “particles…having a size between” (deleting “selected from the group consisting of”).
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 110 and 117-127 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weitz et al (US 2016/0271513).
Regarding claim 110 and 117-127, Weitz discloses a population of particles having a size between 50 nm and 300 nm, within the claimed ranges (see [0005], “composition comprises a plurality of particles”; [0050], “less than about 300 nm” and “at least about 50 nm”).
The product disclosed in Weitz is considered to be the same as that claimed. The office notes that the patentability of a product does not depend on its method of production. “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
However, the office further notes that Weitz discloses the particles being produced by atomization and exposure to a drying airflow (see [0003], describing spray drying where a fluid to be dried is expelled from a nozzle, i.e., atomized, and the use of air for drying; [0010]; [0120]-[0121]). The drying airflow has a temperature of at least about 40°C (see [0070]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RENEE ROBINSON whose telephone number is (571)270-7371. The examiner can normally be reached Monday - Thursday 8:00a-5:00p and Friday 8:00a-2:00p.
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/Renee Robinson/Primary Examiner, Art Unit 1772
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