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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8 January 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
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 1 and 4-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bedford et al. (“Nanostructured and Spiky Gold Shell growth on Magnetic Particles for SERS Applications”, Nanomaterials 2020, 10, 2136, hereinafter referred to as “Bedford”).
As to Claim 1: Bedford teaches a nanostructured and spiky gold shell on magnetic particles wherein the iron oxide aggregate particles have a silica coating (i.e., buffer) (Abstract).
As to Claim 4: Bedford teaches the magnetic structure of claim 1 (supra).
Bedford does not expressly teach the ratio of the second length to the first length is in a range of 3 to 5 and the cross-sectional shape of the bottom surface is at least one of a circular, triangular, square, and polygonal shapes. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Bedford. However, Bedford teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there are no teachings of specific additives or steps to form the materials with these properties. Therefore, the claimed effects and physical properties, i.e. the ratio of the second length to the first length is in a range of 3 to 5 and the cross-sectional shape of the bottom surface is at least one of a circular, triangular, square, and polygonal shapes, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 5: Bedford teaches the magnetic structure of claim 4 (supra).
Bedford does not expressly teach the first length is in a range of 10-35 nm and the second length is in the range of 30 to 80 nm. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Bedford. However, Bedford teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there are no teachings of specific additives or steps to form the materials with these properties. Therefore, the claimed effects and physical properties, i.e. the first length is in a range of 10-35 nm and the second length is in the range of 30 to 80 nm, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 6: Bedford teaches the magnetic structure of claim 1 (supra). Bedford further teaches that the magnetic nanoparticles need to be smaller than 20 nm to have superparamagnetic properties and that the aggregates have a size of 150-300 nm (Pg. 2). Bedford further shows examples wherein the size of the magnetic structure is approx. 700 nm (Fig. 4).
As to Claim 7: Bedford teaches the magnetic structure of claim 1 (supra). Bedford further teaches that the core includes Fe3O4, the buffer includes amine silica, thiol silica, or silica, and that the shell and spike structure includes gold (Pg. 2, 2.2.2 surface functionalization of silica-coated particles).
As to Claim 8: Bedford teaches the magnetic structure of claim 1 (supra).
Bedford does not expressly teach the average thickness of the buffer is 10-100 nm and the shell has an average thickness of 10-20 nm. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Bedford. However, Bedford teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there are no teachings of specific additives or steps to form the materials with these properties. Therefore, the claimed effects and physical properties, i.e. the average thickness of the buffer is 10-100 nm and the shell has an average thickness of 10-20 nm, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 9: Bedford teaches the magnetic structure of claim 1 (supra). Bedford further teaches that the magnetic structure has a superparamagnetic property (Pg. 2).
Bedford does not expressly teach the movement of the magnetic structure is controlled under application of an external magnetic field, as the average diameter of the core increases a movement speed of the magnetic structure increases and a stab movement of a vertex of the spike structure of stabbing a surrounding object is controlled based on the movement speed of the magnetic structure. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Bedford. However, Bedford teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there are no teachings of specific additives or steps to form the materials with these properties. Therefore, the claimed effects and physical properties, i.e. the movement of the magnetic structure is controlled under application of an external magnetic field, as the average diameter of the core increases a movement speed of the magnetic structure increases and a stab movement of a vertex of the spike structure of stabbing a surrounding object is controlled based on the movement speed of the magnetic structure, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claims 10 and 11: Bedford teaches the magnetic structure of claim 1 (supra). Bedford shows a plurality of the magnetic structures connected to each other to form an aggregate (Fig. 4).
As to Claim 12: Bedford teaches the magnetic structure of claim 1 (supra).
Bedford does not expressly teach the shell includes at least one of a (111) (100) or (110) crystal plane and the spike structure has a bottom surface in contact with the shell and the bottom surface extends from at least a portion of the (111) crystal plane. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Bedford. However, Bedford teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there are no teachings of specific additives or steps to form the materials with these properties. Therefore, the claimed effects and physical properties, i.e. the shell includes at least one of a (111) (100) or (110) crystal plane and the spike structure has a bottom surface in contact with the shell and the bottom surface extends from at least a portion of the (111) crystal plane, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Claims 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bedford et al. (“Nanostructured and Spiky Gold Shell growth on Magnetic Particles for SERS Applications”, Nanomaterials 2020, 10, 2136, hereinafter referred to as “Bedford”).
As to Claim 13: Bedford teaches a nanostructured and spiky gold shell on magnetic particles wherein the iron oxide aggregate particles have a silica coating (i.e., buffer) (Abstract). Bedford further teaches that the magnetic structures are prepared by preparing a core comprising magnetic nanoparticles, coating silica on the outer surface and surface functionalizing the silica, and then forming gold seeds and growing gold structures from the seeds (Sections 2.2.1-2.2.3).
As to Claim 14: Bedford teaches the method of claim 13 (supra). Bedford further shows that the spike structure has a bottom surface in contact with the shell and has a cone shape extending in one direction and having a vertex (Fig. 4).
Bedford does not expressly teach the shell includes at least one of a (111) (100) or (110) crystal plane and the spike structure has a bottom surface in contact with the shell and the bottom surface extends from at least a portion of the (111) crystal plane. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Bedford. However, Bedford teaches a process using the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. According to the original specification, there are no teachings of specific additives or steps to form the materials with these properties. Therefore, the claimed effects and physical properties, i.e. the shell includes at least one of a (111) (100) or (110) crystal plane and the spike structure has a bottom surface in contact with the shell and the bottom surface extends from at least a portion of the (111) crystal plane, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
Allowable Subject Matter
Claims 2, 3, and 15-23 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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