Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 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.
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/25/2026 has been entered.
Status of claims
The amendment filed on 08/25/2026 is acknowledged. Claims 3 and 4 have been canceled. Claims 1, 2 and 5-11 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 08/25/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 102(e) rejection of claims 1, 2, 4-7 and 10 over Chen et al. (US 2010/0278923 A1) as evidenced by Oh et al. (US 2008/0070011 A1), 35 U.S.C. 102(b) rejection of claims 1, 2, and 4-10 over Zhu (WO 2007/048326 A1, US 2011/0177153 A1 as English translation) as evidenced by Oh et al. (US 2008/0070011 A1), and 35 U.S.C. 103(a) rejections of claims 1, 2, 4-7, 10, and 11 over Chen et al. (US 2010/0278923 A1) as evidenced by Oh et al. (US 2008/0070011 A1), of claims 1, 2, 4-7, 10, and 11 over Chen et al. (US 2010/0278923 A1) and Anthony et al. (US 2002/0112407 A1), and of claims 1, 2, and 4-10 over Zhu (WO 2007/048326 A1, US 2011/0177153 A1 as English translation) and Anthony et al. (US 2002/0112407 A1) from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New ground of rejection necessitated by Applicant’s amendment
The amendments necessitate the following new ground of rejection.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 1, 2, and 5-11 are rejected under 35 U.S.C. 103(a) as being unpatentable over Karandikar et al. (US 2007/0003603 A1) in view of Williams et al. (US 2009/0035837 A1).
Karandikar et al. teach a method of making a non-aqueous antimicrobial silver (Ag)-nanoparticle composition comprising
forming Ag nanoparticles in aqueous solution (the claimed water as the 1st solvent and the 1st mixture in the instant claims 1 and 2) follow by
extracting Ag nanoparticles from water with a non-aqueous solution (claims 8, 10, 15); and
exemplified as the non-aqueous solution (the claimed water as the 2nd solvent and the 2nd mixture in the instant claim 1) (paragraph 213);
wherein the composition is in form of cosmetic cream (implies a step of combining the Ag nanoparticles in chloroform with a cream base → the claimed combining the 2nd mixture with a carrier in the instant claim 1 and claim 10) (paragraph 16 and 140) comprising 0.1-5% of Ag content in nanoparticles (the instant claim 11) (paragraph 135) and < 5% w/v surfactants including sodium lauryl sulfate (the instant claims 8 and 9) as stabilizer (paragraph 68, 75-94, 98, and 137).
The instant claims 5-7 are further limitations of alternative components.
Although Karandikar et al. do not teach Ag nanoparticles in the claimed method of preparation being thermoablative plasmonic, i.e., intended use of Ag nanoparticles for thermoablative plasmonic or inherent property of Ag nanoparticles being thermoablative plasmonic. Ag nanoparticles have the property of thermoablative plasmonic and thus having the intended use of thermoablative plasmonic according to the instant specification paragraph 14. Thus, the composition comprising Ag nanoparticles taught by Karandikar et al. would have the property of thermoablative plasmonic and thus having the intended use of thermoablative plasmonic as the claimed method of forming a composition comprising nanoparticles (encompassing Ag nanoparticles); whether recognized by Karandikar et al. or not. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Please refer to MPEP 2112.01 II:
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Karandikar et al. do not teach the same claimed step of solvent exchange such as precipitation.
This deficiency is cured by Williams et al. who teach fractionation or separation processes for particles including size exclusion chromatography (liquid chromatography), solvent extraction, etc., (paragraph 38 and 52).
It would have been prima facie obvious at the time of the invention to a person of ordinary skill in the art based on the teachings in Karandikar et al. and Williams et al. to replace solvent extraction taught by Karandikar et al. with size exclusion chromatography. Both solvent extraction and size exclusion chromatography being suitable for separating particles from the medium was well known to a person of ordinary skill in the art at the time of the invention. The motivation for replacing solvent extraction taught by Karandikar et al. with size exclusion chromatography flows from both having been used in the prior art, and from both being recognized in the prior art as useful for the same purpose.
Karandikar et al. do not specify the same weight percentages of nanoparticles and surfactant in the composition (0.1-5% being by weight according to paragraph 95 → about 0.1-5% w/v based on the density of cosmetic cream being about 1 g/mL vs the claimed 1-20% w/v in the instant claim 11 and < 5% w/v → < about 5% v/v based on the density of sodium lauryl sulfate and the density of cosmetic cream being about 1 g/mL vs the claimed 0.5-2% v/v in the instant claim 8).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with or lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed range of nanoparticles is 1-20% w/v and the range of nanoparticles taught in the prior art is 0.1-5% w/v and therefor, overlaps with the claimed range.
The claimed range of surfactant is 0.5-2% v/v w/v and the range of surfactant taught in the prior art is < about 5% v/v and therefor, includes the claimed range.
Response to Applicants’ arguments:
Applicant’s arguments, filed on 08/25/2026, have been fully considered but they are moot in view of new ground of rejections.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
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/HONG YU/
Primary Examiner, Art Unit 1614
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