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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 4-6 in the reply filed on August 19th, 2026 is acknowledged.
Claims 1-3 and 7-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 19th, 2026.
Claim Rejections - 35 USC § 112
Claims 4-6 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.
The term “increased affinity for anionic per- and poly-fluoroalkyl substances” in claim 4 is a relative term which renders the claim indefinite. The term “increased affinity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree of affinity, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. No basis for comparison is provided with which to assess the recited increase in affinity. For assessing the scope and meaning of the claim for prior art purposes, any degree of affinity will be interpreted to read on “increased affinity”, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Claims 5-6 are indefinite due to their dependence on the indefinite claim 4 and because they do not cure the indefiniteness of “increased affinity” as recited therein.
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 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu (CN 107880879 A, 2018) (the translation provided with the attached original document is referenced below).
Regarding claim 4, Wu teaches a polyethyleneimine-based carbon dot, the carbon dot being produced through a hydrothermal reaction of branched polyethyleneimine and citric acid producing polyethyleneimine-based carbon dots (Wu, [0036], “2 g of citric acid and 1 g of BPEI were added to 30 ml of deionized water and stirred at 60° C. in a water bath until the BPEI was completely dissolved and transferred to a 50 ml PTFE reactor. The reaction was heated at 200° C. for 5 hours.”).
Wu does not explicitly teach that the polyethyleneimine-based carbon dot has increased affinity for anionic per- and poly-fluoroalkyl substances. However, the structure of Wu’s polyethyleneimine-based carbon dot is the same as recited by the claim — namely, that of a carbon dot formed by the reaction of branched polyethyleneimine with citric acid. It has been held that where claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Therefore, Wu’s polyethyleneimine-based carbon dot has increased affinity for anionic per- and poly-fluoroalkyl substances, despite Wu’s silence to this property.
Regarding claims 5-6, Wu teaches the polyethyleneimine-based carbon dot of claim 4, as discussed above, but does not explicitly teach that the hydrothermal reaction occurred in a microwave. However, insofar as the claim contains this product-by-process limitation, it is not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113.I, citing, e.g., In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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 the instant case, there is no evidence of record to suggest that the reaction occurring in a microwave (i.e., being subject to microwave heating) would impart distinctive structural characteristics to the claimed polyethyleneimine-based carbon dots when compared to those taught by Wu (claim 5). Claim 5 is therefore anticipated by Wu. Nonetheless, Wu’s hydrothermal reaction occurred at a temperature of 200°C (claim 6) (Wu, [0036]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
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