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 I (claims 1-6 and 15-20) in the reply filed on 10 February 2026 is acknowledged.
Claims 7-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10 February 2026.
Claims 1-6 and 15-20 are under current examination.
Drawings
The drawings are objected to because they contain color yet no petition has been filed as discussed below. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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)(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.
Claim(s) 1-6, 15-17, and 19-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kummel et al. (WO 2016/149711 A1; published 22 September 2016; priority to 19 March 2015).
The applied reference has a common applicant and joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Kummel et al. discloses methods for fabricating nanoshells (abstract) wherein a method for fabricating a hollow silica nanoshell includes mixing a particle template with a polyamine polymer and a silica precursor in a solution (i.e., a base solution) to coat the particle with a silica shell and calcinating the particle to form a hollow silica nanoshell wherein the polyamine polymer can be poly-aminated silane N1-(3- Trimethoxysilylpropyl) diethylenetriamine (DETA) (i.e., an organic compound that includes diethylenetriamine (DETA)) and the particle template can be a polystyrene template and the silica precursor is tetramethyl orthosilicate (TMOS) (paragraph [0008]) wherein the hollow silica shells can be 2 microns in size using 2 micron polybead templates and mixing is at room temperature (paragraph [0080]) wherein the poly-aminated silane diethylenetriamine (DETA) can adsorb on the surface of the polystyrene templates (paragraph [0047]) wherein trimethyl borate is added after the TMOS precursor to dope the silica shells with boron to mechanically reinforce the silica shells (paragraph [0053]) wherein templates are in 95% ethanol (paragraph [0076]) wherein nanoshells are washed then dried then calcined at 550 °C (paragraph [0069]) wherein adsorption is due to electrostatic interactions between particles and templates (paragraph [0074]) wherein calcination forms hollow silica nanoshell (i.e., calcining removes template beads to produce hollow silica micro-shells with hollow core configured to retain air) (claim 1).
Regarding claims 19-20, the recitations of “configured to retain air in hollow cores to provide an ultrasound contrast agent for ultrasound imaging” and “configured to retain air as an ultrasound contrast agent” require no steps or structure in addition to the hollow silica nanoshell disclosed by Kummel et al. as discussed above.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 and 15-20 is/are rejected under 35 U.S.C. 103 as being obvious over Kummel et al.
The applied reference has a common applicant and joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Kummel et al. discloses methods for fabricating nanoshells (abstract) wherein a method for fabricating a hollow silica nanoshell includes mixing a particle template with a polyamine polymer and a silica precursor in a solution (i.e., a base solution) to coat the particle with a silica shell and calcinating the particle to form a hollow silica nanoshell wherein the polyamine polymer can be poly-aminated silane N1-(3- Trimethoxysilylpropyl) diethylenetriamine (DETA) (i.e., an organic compound that includes diethylenetriamine (DETA)) and the particle template can be a polystyrene template and the silica precursor is tetramethyl orthosilicate (TMOS) (paragraph [0008]) wherein the hollow silica shells can be 2 microns in size using 2 micron polybead templates and mixing is at room temperature (paragraph [0080]) wherein the poly-aminated silane diethylenetriamine (DETA) can adsorb on the surface of the polystyrene templates (paragraph [0047]) wherein trimethyl borate is added after the TMOS precursor to dope the silica shells with boron to mechanically reinforce the silica shells (paragraph [0053]) wherein templates are in 95% ethanol (paragraph [0076]) wherein nanoshells are washed then dried then calcined at 550 °C (paragraph [0069]) wherein adsorption is due to electrostatic interactions between particles and templates (paragraph [0074]) wherein calcination forms hollow silica nanoshell (i.e., calcining removes template beads to produce hollow silica micro-shells with hollow core configured to retain air) (claim 1).
Regarding claims 19-20, the recitations of “configured to retain air in hollow cores to provide an ultrasound contrast agent for ultrasound imaging” and “configured to retain air as an ultrasound contrast agent” require no steps or structure in addition to the hollow silica nanoshell disclosed by Kummel et al. as discussed above.
Regarding claim 18, although Kummel et al. does not specifically disclose adding the precursor compound after mixing as claimed, changes in sequence of adding ingredients and selection of any order of mixing ingredients is prima facie obvious per MPEP 2144.04(IV)(C), and thus, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to add and mix all ingredients in the method of Kummel et al. as discussed above in any order including the instantly claimed order, with a reasonable expectation of success.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Trogler et al. (US 2015/0273061 A1; published 01 October 2015) discloses silica nanoshells for ultrasonic imaging (title) wherein polystyrene beads are mixed with a polyamine (i.e., an organic compound, a polymeric amine) in a solution (i.e., a base solution), adding an alkoxysilane (i.e., a precursor compound) thereto which is deposited as a layer onto the surface of the degradable nanotemplate to produce a nanostructure (claim 21) wherein the polymer spheres adsorb a monolayer of the amino polymer in aqueous solution (paragraph [0083]) wherein trimethyl borate (i.e., an organoboron compound) is added to the solution (claim 23) wherein the nanostructure is washed and dried (claim 24) wherein the nanostructure is calcinated to produce a hollow silica nanostructure (claim 25) wherein the hollow nanoshell has a diameter between 10 nm to 3000 nm (paragraph [0022]), but although Trogler et al. discloses the polyamine as discussed above as well as labeling the nanoshells with radioactive 111-indium-DTPA (diethylenetriamine pentaacetate) (paragraph [0150]), Trogler et al. does not disclose diethylenetriamine adsorbed onto beads as claimed.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
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