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 .
Response to Amendment
The amendment filed September 1, 2026 has been entered. Claims 1 – 17 remain pending in the application. Applicant’s amendments to the Specification and Claims have overcome every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed on June 2, 2026.
Claim Objections
Claim 15 is objected to because of the use of “cerium oxide nanoparticles” in lines 1 – 2, 3 – 4, 4, and 5. While it is clear that the cerium oxide nanoparticles in claim 15 refers to the “metal oxide nanoparticles comprising the organic ligand comprise cerium oxide nanoparticles, and the organic ligand comprises oleyl ligand” recited in claim 14, upon which claim 15 depends on, the term “cerium oxide nanoparticle” would not be readily recognized by one of ordinary skill in the art as comprising an organic ligand as currently recited. Examiner suggests changing “cerium oxide nanoparticles” to “metal oxide nanoparticles comprising an oleyl ligand” as claim 14, upon which claim 15 depends on, has already defined the metal oxide nanoparticle in claim 15 is cerium oxide.
Appropriate correction is required.
Applicant is advised that should claim 12 be found allowable, claim 17 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-17 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.
Claim 1 recites the limitation “to remove the organic ligand from the surface of the metal oxide nanoparticle so as to expose a bare surface of the metal oxide nanoparticles that is substantially free of the organic ligand” in lines 7 – 10. It is unclear whether the phrase “bare surface of the metal oxide nanoparticles that is substantially free of the organic ligand” means the surface of the metal oxide nanoparticle is free of the organic ligand or if there is no ligand of on the metal oxide nanoparticle surface. While the specification mentions “bare surfaced particles” (see Page 3, line 20), there is not a definition as to what “bare” means. As such, one of ordinary skill in the art would not be reasonably apprised of the scope of the limitation, rendering claim 1 indefinite.
For compact prosecution purposes, examiner will interpret “bare surface of the metal oxide nanoparticles that is substantially free of the organic ligand” as the surface of the metal oxide nanoparticle is free of the organic ligand. Claim 1 recites “a method of removing and/or replacing an organic ligand from the surface of metal oxide nanoparticles” in lines 1 – 2. A ligand replacement is considered to directly replace, or exchange, ligands on a surface, i.e. the surface of the metal oxide nanoparticle would not be completely free of any ligands. Therefore, “replacing an organic ligand from the surface of metal oxide nanoparticles” would not be possible if the bare surface of the metal oxide nanoparticle is interpreted as free of any ligand. Claim 3 (line 2 recites “Na3PO4 and/or H2O2 … also acts as a ligand replacement”) and the specification (the Examples section on Page 5, line 25 – Page 7, line 23 describes the experiment as “ligand exchange”) also disclose the possibility of ligand replacement or exchange, further suggesting the “bare surface of the metal oxide nanoparticles that is substantially free of the organic ligand” is the surface of the metal oxide nanoparticle which is free of the organic ligand.
Furthermore, the term “substantially” is a relative term which renders the claim indefinite. The phrase “substantially free of the organic ligand” in line 9 is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how much of the organic ligand should be removed from the surface of the metal oxide nanoparticles to be considered “substantially free of the organic ligand.”
Claims 2-17 depend upon or otherwise require all of the limitations of claim 1 and are also similarly rejected.
Claim 11 recites the limitation “optionally, the organic ligand involves oleic acid and/or oleylamine” in lines 3 – 4. Oleylamine and oleic acid are both considered functionalized, highly lipophilic species, similar to the recited “functionalized, organic species which is lyophilic” alternative, suggesting that oleylamine and oleic acid are preferences, not alternatives. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. See MPEP § 2173.05(d). Therefore, it is unclear whether oleylamine and oleic acid are limitations.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 recites the limitation “wherein the removal of the organic ligand allows the metal oxide particles nanoparticles to transfer from the organic phase to the aqueous phase” in lines 1 – 3. Claim 1, upon which claim 8 depends on, recites “the removal of the organic ligand causing the metal oxide nanoparticles to transfer from the organic phase into the aqueous phase” in lines 9 – 10. The recited limitation in claim 8 is the same limitation recitation in claim 1, upon which claim 8 depends on. Therefore, as claim 8 does not recite any additional limitations, claim 8 fails to further limit claim 1 upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Son et. al. 2012, (US 2012/0168692 A1), referred to herein as Son.
Regarding claim 1, Son teaches a method of replacing an organic ligand from a surface of metal nanoparticles (Abstract, “having hydrophobic groups with hydrophilic groups”) comprising:
mixing a sample of metal nanoparticles comprising an organic ligand (described as hydrophobic ligand, [0016]) in a liquid comprising an organic phase (described as hydrophobic solvent, [0016]) and an aqueous phase, the aqueous phase comprising water and at least one stripping agent (see [0015] – [0019] for the list of steps, where the ligand removal agent is analogous to the stripping agent in the present invention) wherein mixing occurs under conditions to cause the stripping agent to interact with the surface of the metal oxide nanoparticles ([0033] states ligand removal agent coordinates to the metal nanoparticle) and to remove the organic ligand from the surface of the metal nanoparticles so as to expose a bare surface of the metal oxide nanoparticles that is substantially free of the organic ligand (see Abstract; Fig. 1 shows the hydrophobic ligands removed from the metal surface after “hydrophobic ligand elimination,’ making the metal nanoparticle bare of the hydrophobic, or organic, ligand), the removal of the organic ligand causing the metal nanoparticles to transfer from the organic phase into the aqueous phase (see Abstract; Fig. 5 shows the metal nanoparticles transferring from the organic phase to the aqueous phase after the treatment as indication by the color changes to the toluene and aqueous phases before and after the hydrophilic treatment);
removing the aqueous phase, the aqueous phase containing the metal nanoparticle having the bare surface (see the color change of the aqueous phase before and after treatment in Fig. 5; the aqueous phase changed from transparent to opaque after the hydrophilic treatment in Fig. 5, suggesting the metal nanoparticles are present in the aqueous phase after treatment), from the organic phase following mixing (see [0018]; [0034] describes recovering the “hydrophilic metal nanoparticles” by centrifugation, where centrifugation is known to separate immiscible solvents and is capable of removing the aqueous phase from the hydrophobic, or organic, phase);
While Son does not demonstrate the disclosed method using a metal oxide nanoparticle, Son specifically states “the metal nanoparticles may be metals of one or more selected from gold (Au), silver (Ag), cobalt (Co), copper (Cu), iron (Fe), chromium (Cr), nickel (Ni), palladium (Pd), platinum (Pt) and tin (Sn), alloys thereof or oxides thereof” (see [0020]) and further includes a claim wherein the metal nanoparticle is a metal oxide nanoparticle (claim 4 recites “wherein the metal nanoparticles are metal oxides of one or more selected from gold (Au), silver (Ag), cobalt (Co), copper (Cu), iron (Fe), chromium (Cr), nickel (Ni), palladium (Pd), platinum (Pt) and tin (Sn)”).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the method of Son with a metal oxide nanoparticle, a subgenus of the disclosed metal nanoparticle genus, as also taught by Son and to attempt to use the recited method with a metal oxide nanoparticle. One of ordinary skill in the art would have a reasonable expectation of success as Son includes a claim where the metal nanoparticles are metal oxide nanoparticles.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Son, as applied in claim 1, in view of Huang, et. al. 2014 (Surface Functionalization of Semiconductor and Oxide Nanocrystals with Small Inorganic Oxoanions (PO43-, MoO42-) and Polyoxometalate Ligands. ACS Nano 2014, 8, 9388 – 9402; see previous Non-Final Office Action mailed June 2, 2026), referred to herein as Huang and in view of Liu, et. al. 2015 (Hydrogen Peroxide Displacing DNA from Nanoceria: Mechanism and Detection of Glucose in Serum. JACS 2015, 137, 1290 – 1295; see previous Non-Final Office mailed June 2, 2026), referred to as Liu from herein.
Regarding claim 2, Son teaches a method of replacing an organic ligand from a surface of metal oxide nanoparticles according to claim 1, and Huang teaches Na3PO4 acting as a stripping agent and PO43- exchanging with the organic ligand on the surface of metal oxide nanoparticles (see “Small Oxoanions As Surface Ligands for NCs” section on Pages 9390 – 9391). Son and Huang are both considered to be analogous to the present invention since they are in the same field of removing or replacing ligands on the surface of metal or metal oxide nanoparticles. While Son teaches a ligand removal agent, the ligand removal agents provided only include quaternary ammonium salts ([0032]). However, Huang uses Na3PO4 to replace the organic ligand on the metal oxide nanoparticle (Abstract and Table 2 on Page 9392). The specification discloses that ligands such as phosphates are chosen due to their compatibility in biological systems (Page 3, lines 15 – 19). Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Son to incorporate the teachings of Huang and to attempt to use Na3PO4 as the ligand removal agent for biological applications.
However, Son and Huang do not teach H2O2 as the stripping agent. Liu teaches the stripping agent is H2O2 (describes H2O2 displacing DNA absorbed to the nanoceria surface in the “Introduction” section on Page 1290; describes H2O2 as a capping ligand in the “Conclusion” section on Page 1294). Liu is considered to be analogous to the claimed invention since it is in the same field of modifying the surface of metal oxide nanoparticles. Hydrogen peroxide, or H2O2, is a key molecule in biological processes and may be more suitable for biological applications (see Abstract and the “Introduction” section on Page 1290 in Liu and Page 3, lines 15-19 in the specification). The specification further teaches that hydrogen peroxide is able to remove surface ligands without furthering altering the solution (Page 3, lines 21-24). It would be obvious for one of ordinary skill in the art before the effective filing date to modify Son with the H2O2 stripping agent as taught by Liu to preserve the solution after the ligand removal or replacement and/or for the intended use in biological environments.
Regarding claim 3, Son teaches a method of replacing an organic ligand from a surface of metal oxide nanoparticles according to claim 1, and Huang teaches Na3PO4 acting as a stripping agent and PO43- exchanging with organic ligands on the surface of metal oxide nanoparticles and metal nanoparticles (“Small Oxoanions As Surface Ligands for NCs” section on Pages 9390-9391). However, Son and Huang do not teach H2O2 as the stripping agent. Liu teaches the stripping agent is H2O2 (describes H2O2 displacing DNA absorbed to the nanoceria surface in the “Introduction” section on Page 1290; describes H2O2 as a capping ligand in the “Conclusion” section on Page 1294). It would be obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Son and use Na3PO4 as the stripping as taught by Huang or use H2O2 as the stripping agent as taught by Liu due to the same reasoning as in claim 2.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Son.
Regarding claim 4, Son teaches a method of replacing an organic ligand from a surface of metal oxide nanoparticles according to claim 1 and further teaches the method comprising of a ligand replacement following mixing (Abstract, “modifying the surface of metal nanoparticles having hydrophobic ligands with hydrophilic groups”).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Son, as applied in claim 1, in view of Krishnan, et. al. 2013 (One-pot Synthesis of Ultra-small Cerium Oxide Nanodots Exhibiting Multi-colored Fluorescence. Journal of Colloid and Interface Science 2013, 389, 16-22; see previous Non-Final Office Action mailed June 2, 2026 and IDS from January 9, 2024), referred to herein as Krishnan.
Regarding claim 5, Son teaches a method of replacing an organic ligand from a surface of metal oxide nanoparticles according to claim 1 and further teaches of titanium oxide nanoparticles ([0020] also includes “transition metal nanoparticles”). The term “transition metals” is broadly interpreted as elements with partially filled d-orbitals that are found in Groups 3-12 on the periodic table. Therefore, one of ordinary skill in the art would recognize titanium as a transition metal, and it would be reasonable for one of ordinary skill in the art to attempt to use titanium oxide as the metal oxide nanoparticle.
However, Son does not teach the metal nanoparticles comprising of cerium oxide nanoparticles. Krishnan teaches the synthesis of cerium oxide nanoparticles capped with oleic acid (Abstract). Krishnan is considered to be analogous to the claimed invention since it is in the same field of modifying the surface of metal oxide nanoparticles. Cerium oxide nanoparticles possess optical properties that show promise for their application in bioimaging (Page 22, “Conclusion” section). It would be obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Son with the cerium oxide nanoparticles taught by Krishnan for further usage in spectroscopic or imaging applications.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Son.
Regarding claim 6, Son teaches a method of replacing an organic ligand from a surface of metal nanoparticles according to claim 1, and further teaches the organic phase comprises a non-polar solvent or dispersant ([0022] describes the hydrophobic solvent). The term “hydrophobic solvent” is broadly interpreted as any solvent immiscible with water-based or aqueous solvents, which are generally considered to be classified as non-polar. Son further provides a list of hydrophobic solvents in [0022] wherein the list includes toluene, hexane, heptane and tetradecane. It would be obvious for one of ordinary skill in the art before the effective filing date to attempt to use a non-polar solvent as the hydrophobic solvent and would reasonably conclude that a hydrophobic solvent in Son is analogous to a non-polar solvent in the present invention.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Son, as applied in claim 1, in view of Nag, et. al. 2014, (US 2014/0346442 A1), referred to as Nag herein.
Regarding claim 7, Son teaches a method of replacing an organic ligand from a surface of metal oxide nanoparticles according to claim 1 and the organic phase comprises a non-polar solvent or dispersant according to claim 6, and further teaches toluene, hexane, and heptane as the non-polar solvent ([0022]). However, Son does not teach xylenes, benzene, mesitylene, cyclohexane, octanes, methylene chloride, methylene bromide, ethylene dichloride, and ethylene dibromide as the non-polar solvent in the organic phase. Nag teaches benzene, cyclohexane, and octane ([0104] lists nonpolar solvents for metal nanoparticles with organic capping agent). Son and Nag are both considered to be analogous to the claimed invention since they are both in the same field of removing or replacing ligands on the surface of metal nanoparticles by mixing immiscible phases. It would be obvious to one of ordinary skill of the art before the effective filing date of the invention to modify Son with Nag and try each of the numerous possible choices provided by both Son and Nag until one possibly arrived at a successful result.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Son.
Regarding claim 8, Son teaches a method of replacing an organic ligand from a surface of metal oxide nanoparticles according to claim 1 and further teaches the removal of the organic ligand allows the metal oxide nanoparticles to transfer from the organic phase to the aqueous phase (see the color change of the aqueous phase before and after treatment in Fig. 5; the aqueous phase changed from transparent to opaque after the hydrophilic treatment in Fig. 5, suggesting the metal nanoparticles are present in the aqueous phase after treatment).
Regarding claim 9, Son teaches a method of replacing an organic ligand from a surface of metal oxide nanoparticles according to claim 1 and further teaches drying the aqueous phase removed from the organic phase (Examples 8 and 9 include sintering the hydrophilic phase with the metal nanoparticle to prepare conductive metal films, [0066] – [0067]). The term “drying” is broadly interpreted as removing liquid or moisture. Since metal conductive films are considered to be solids, the liquid from the hydrophilic phase would have been removed in order for the metal conductive film to be made. Therefore, while Son does not specifically teach the term drying, one of ordinary skill in the art would conclude making the metal conductive films disclosed in Son requires the removal of the liquid in the hydrophilic phase and is analogous to drying.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Son, as applied in claim 1, in view of Liu.
Regarding claim 10, Son teaches a method of replacing an organic ligand from a surface of metal oxide nanoparticles according to claim 1, and Liu teaches the stripping agent is H2O2 (describes H2O2 displacing DNA absorbed to the nanoceria surface in the “Introduction” section on Page 1290; describes H2O2 as a capping ligand in the “Conclusion” section on Page 1294). It would be obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Son and use H2O2 as the stripping agent as taught by Liu due to the same reasoning as in claim 2.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Son.
Regarding claim 11, Son teaches a method of replacing an organic ligand from a surface of metal oxide nanoparticles according to claim 1, and further teaches the organic ligand comprising of amino- ([0021] includes fatty acid amine such as oleyl amine, butyl amine and octyl amine) and carboxyl- ([0021] includes stearic acid and caproic acid) terminated organic species and optionally, the organic ligand involving oleic acid and oleylamine ([0021] lists both oleic acid and oleylamine and [0056] describes an example where oleic acid is the hydrophobic ligand).
Claims 14 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over Son, as applied in claim 1, in view of Krishnan.
Regarding claim 14, Son teaches a method of replacing an organic ligand from a surface of metal oxide nanoparticles according to claim 1 and further teaches oleic acid as the hydrophobic ligand ([0053] – [0056] describes using silver nanoparticles with oleic acid as the hydrophobic ligand). However, Son does not teach the metal oxide nanoparticles comprising the organic ligand comprise cerium oxide nanoparticles. Krishnan teaches the attachment of oleic acid to the surface of cerium oxide nanoparticles (Abstract). It would be obvious to one of ordinary skill in the art before the effective filing date to substitute the metal nanoparticle of Son with the cerium oxide nanoparticles comprising oleic acid as taught by Krishnan.
Regarding claim 15, Son in view of Krishnan wherein the metal oxide nanoparticles comprising the organic ligand comprise cerium oxide nanoparticles, and the organic ligand comprises an oleyl ligand according to claim 14. Krishnan further teaches the synthesis of cerium oxide nanoparticles by mixing cerium acetate, oleic acid, and oleylamine in an organic diphenyl ether under conditions to produce cerium oxide nanoparticles; and, optionally, washing the cerium oxide nanoparticles in an organic solvent, and dispersing the cerium oxide nanoparticles in an organic solvent (Page 17, section 2.2 includes the synthesis of cerium oxide nanodots). It would be obvious to one of ordinary skill of the art before the effective filing date to prepare cerium oxide nanoparticles using the experimental procedures taught by Krishnan.
Regarding claim 16, Son teaches a method of replacing an organic ligand from a surface of metal nanoparticles according to claim 1 and Krishnan teaches cerium oxide nanoparticles comprising an organic ligand comprising a predominant 4+ charge (oleic acid capped cerium oxide nanoparticles contain 41.67 % Ce3+ according to Table 1 on Page 21). It would be obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Son with the cerium oxide nanoparticles taught by Krishnan to yield cerium oxide nanoparticles after ligand replacement with a predominant 4+ surface charge.
Response to Arguments
Applicant's arguments filed June 2, 2026 have been fully considered but they are not persuasive with respect to the rejection of claims 1 – 11 and 14 – 16 under 35 USC § 103.
Regarding claim 1, Applicant argues that Son does not teach a metal oxide nanoparticle and fails to provide an example or working embodiment (see Page 11 and beginning of Page 12 of Applicant’s Remarks). Applicant further argues that a reasonable expectation of success cannot rely on a metal oxide nanoparticle being mentioned in a list (see beginning of Page 12 of Applicant’s Remarks).
Regarding the lack of an example or working embodiment with a metal oxide nanoparticle, it is noted that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP § 2123.I. Furthermore, the selection of a subgenus from a genus is prima facie obvious when considering whether one of ordinary skill in the art would have had a reason to select the claimed species or subgenus (see MPEP § 2144.08.II.4). More specifically, Son includes a claim wherein the metal nanoparticle is a metal oxide nanoparticle (see claim 4 of Son), further suggesting that the disclosed method would yield reasonably successful results when using metal oxide nanoparticles. Furthermore, Son including a claim wherein the metal nanoparticle is a metal oxide nanoparticle also address Applicant’s arguments regarding the lack of reasonable expectation of success.
Applicant argues that Son cannot be combined or modified to make a prima facie case of obviousness as Son fails to teach “[stripping] to a bare surface”. Applicant points out that Son includes a surfactant layer in their method, suggesting that the surfactant layer teaches away stripping to a bare surface (see second paragraph on Page 12 of Applicant Remarks).
Regarding Son teaching away from stripping to a bare surface, examiner notes that the limitation pertaining to a bare surface, namely the newly amended recited limitation “to remove the organic ligand from the surface of the metal oxide nanoparticles so as to expose a bare surface of the metal oxide nanoparticles that is substantially free of the organic ligand, the removal of the organic ligand causing the metal oxide nanoparticles to transfer from the organic phase into the aqueous phase,” renders itself to multiple claim interpretations as currently written (see “Claim Rejections – 35 USC § 112” above). As such, examiner interpreted the amended limitation as the surface of the metal oxide nanoparticle is bare of the organic ligand as this would allow for the present method to perform a ligand replacement in addition to a ligand removal as recited in the preamble of claim 1 as ligand replacement bypasses the exposure of bare surface of the nanoparticle by directly exchanging ligands. Thus, the provided example by the Applicant would not necessarily teach away from “[stripping] to a bare surface” as the surface of the metal oxide nanoparticle is still bare of the organic ligand, regardless of the presence of a surfactant layer.
Applicant argues that Son teaches away from using a metal oxide nanoparticle as Son adds an antioxidant to prevent any surface oxidation. Applicant further concludes that one of ordinary skill in the art would not have been motivated to use a metal oxide nanoparticle in the method of Son (see third paragraph on Page 12 of Applicant Remarks).
Regarding Son teaching away from using a metal oxide nanoparticle, it is noted that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP § 2123.I. Furthermore, Son claims the metal nanoparticle is a metal oxide nanoparticle (see claim 4 of Son), suggesting that not only would the method of Son likely yield successful results, but also suggesting that it is encouraged to use a metal oxide nanoparticle as the metal nanoparticle, contradicting Applicant’s arguments regarding Son teaching away from using a metal oxide nanoparticle.
Furthermore, while Applicant touches upon the inability for the metal nanoparticle in Son to undergo surface oxidation, it is noted that there is no requirement or limitation recited in claim 1 pertaining to the metal oxide nanoparticle undergoing oxidation or reduction while performing the method of the present invention. Therefore, it is noted that the feature upon which applicant relies (i.e., oxidation of the metal oxide nanoparticle) is not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Son does not disclose a metal oxide nanoparticle having a bare surface substantially free of the organic ligand, removing the organic ligand to expose a bare surface, and removing an aqueous phase containing bare-surfaced metal oxide nanoparticles (see end of Page 12 and beginning of Page 13 of Applicant Remarks).
Regarding Son not disclosing a metal oxide nanoparticle having a bare surface substantially free of the organic ligand, examiner notes that the newly amended claim limitation, namely “to remove the organic ligand from the surface of the metal oxide nanoparticles so as to expose a bare surface of the metal oxide nanoparticles that is substantially free of the organic ligand, the removal of the organic ligand causing the metal oxide nanoparticles to transfer from the organic phase into the aqueous phase,” renders itself to multiple claim interpretations (see “Claim Rejections – 35 USC § 112” above). As such, examiner interpreted the amended limitation as the surface of the metal oxide nanoparticle is bare of the organic ligand as this would allow for the present method to perform a ligand replacement in addition to a ligand removal as recited in the preamble of claim 1, where ligand replacement does not involve the surface of the bare metal oxide nanoparticle to be exposed as ligand replacement is understood to directly exchange ligands, bypassing exposure of the pristine, metal oxide nanoparticle surface. Therefore, Son still discloses a bare surface substantially free of the organic ligand as Son teaches a method that removes the organic ligand from the surface of the metal nanoparticle (see Fig. 1 of Son) wherein the metal nanoparticle may be a metal oxide nanoparticle, as discussed above.
Regarding Son not disclosing a method for the removal of the organic ligand, the preamble of claim 1 specifically states “a method of removing and/or replacing an organic ligand from a surface of metal oxide nanoparticles” wherein “and/or” in the context of the recited limitation is broadly interpreted as the method of the present invention may accomplish at least one of three of the possible outcomes: (1) removal of an organic ligand, (2) the replacement of the organic ligand, or (3) the removal and replacement of the organic ligand. Therefore, since Son discloses the replacement of the organic ligand, Son does not necessarily need to teach the other alternatives to still the limitation recited in the preamble of claim 1. It is noted that the features upon which applicant relies (i.e., the removal of the organic ligand) is not recited in the rejected claim.
Regarding Son not teaching removing an aqueous containing bare-surfaced metal oxide nanoparticles, examiner notes that the amended limitation “to remove the organic ligand from the surface of the metal oxide nanoparticles so as to expose a bare surface of the metal oxide nanoparticles that is substantially free of the organic ligand, the removal of the organic ligand causing the metal oxide nanoparticles to transfer from the organic phase into the aqueous phase” does not require the metal oxide nanoparticles to be “bare-surfaced,” just substantially free of the organic ligand on the bare surface (see “Claim Rejections – 35 USC § 112” above).
Furthermore, while Son may not explicitly state the removal of the aqueous phase, Son does teach the recovery of the metal nanoparticles free of the organic ligand ([0034] describes recovering the hydrophilic metal nanoparticles). Son specifically mentions that the metal nanoparticles free of the organic ligand may be recovered via centrifuging, where centrifuging is known to separate two immiscible solvents, similar to the hydrophobic and hydrophilic solvents in Son (Fig. 5 shows a clear interface between the toluene and aqueous layer, suggesting the two are immiscible). Therefore, one of ordinary skill of the art would be motivated to remove the aqueous phase after performing the method of Son using centrifugation, as also taught by Son, to ultimately recover the metal nanoparticles free of the organic ligand.
Regarding claims 2 and 3, Applicant argues that Huang and Liu cannot be relied on due to the shortcomings of Son as discussed for claim 1 (see Page 13 of Applicant’s Remarks; see above discussion for arguments regarding Son).
Regarding Applicant’s argument that there is no motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant’s arguments regarding Son were not found to be persuasive, rendering the argument that Huang and Liu cannot be relied on moot.
Regarding claim 4, Applicant argues that Son cannot be relied on as discussed for claim 1 (see Page 13 of Applicant’s Remarks; see above discussion for arguments regarding Son).
Regarding Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant’s arguments regarding Son were not found to be persuasive, rendering the argument that Son cannot be relied on moot.
Regarding claim 5, Applicant argues that Krishnan cannot be relied on due to the shortcomings of Son as discussed for claim 1 (see Page 13 – 14 of Applicant’s Remarks; see above discussion for arguments regarding Son).
Regarding Applicant’s argument that there is no motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant’s arguments regarding Son were not found to be persuasive, rendering the argument that Krishnan cannot be relied on moot.
Regarding claim 6, Applicant argues that Son cannot be relied on as discussed for claim 1 (see Page 14 of Applicant’s Remarks; see above discussion for arguments regarding Son).
Regarding Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant’s arguments regarding Son were not found to be persuasive, rendering the argument that Son cannot be relied on moot.
Regarding claim 7, Applicant argues that Nag cannot be relied on due to the shortcomings of Son as discussed for claim 1 (see Page 14 of Applicant’s Remarks; see above discussion for arguments regarding Son).
Regarding Applicant’s argument that there is no motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant’s arguments regarding Son were not found to be persuasive, rendering the argument that Nag cannot be relied on moot.
Regarding claims 8 and 9, Applicant argues that Son cannot be relied on as discussed for claim 1 (see Page 14 of Applicant’s Remarks; see above discussion for arguments regarding Son).
Regarding Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant’s arguments regarding Son were not found to be persuasive, rendering the argument that Son cannot be relied on moot.
Regarding claim 10, Applicant argues that Liu cannot be relied on due to the shortcomings of Son as discussed for claim 1 (see Page 14 of Applicant’s Remarks; see above discussion for arguments regarding Son).
Regarding Applicant’s argument that there is no motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant’s arguments regarding Son were not found to be persuasive, rendering the argument that Liu cannot be relied on moot.
Regarding claim 11, Applicant argues that Son cannot be relied on as discussed for claim 1 (see Page 14 of Applicant’s Remarks; see above discussion for arguments regarding Son).
Regarding Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant’s arguments regarding Son were not found to be persuasive, rendering the argument that Son cannot be relied on moot.
Regarding claims 14 – 16, Applicant argues that Krishnan cannot be relied on due to the shortcomings of Son as discussed for claim 1 (see Page 13 – 14 of Applicant’s Remarks; see above discussion for arguments regarding Son).
Regarding Applicant’s argument that there is no motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant’s arguments regarding Son were not found to be persuasive, rendering the argument that Krishnan cannot be relied on moot.
Allowable Subject Matter
Claims 12, 13, and 17 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.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art, namely Son and Celardo, et. al. 2011 (Ce3+ Ions Determine Redox-Dependent Anti-apoptotic Effect of Cerium Oxide Nanoparticles. ACS Nano 2011, 5(6), 4537 – 4549), referred herein to as Celardo, do not teach the limitations of claim 12 and claim 17, its duplicate, as well as its dependent claim, claim 13.
While Son teaches all of the limitations of claim 1, upon which claim 12 depends on, Son does not disclose, motivate, or suggest that the metal oxide nanoparticle in the removed aqueous phase comprise a predominant 3+ surface charge. More specifically, Son does not disclose any information as to the exact surface charge before and after the treatment.
Celardo discloses a direct correlation between the presence of Ce3+ and the antioxidant and anti-apoptotic effects of cerium oxide nanoparticles (see Section titled “Antioxidant and Anti-apoptotic Effects of Nanoceria Correlate with the Amount of Ce3+ Ions and Not with Oxygen Vacancies” on Pages 4544 – 4546; also see Table 1). However, while Celardo discloses the desirable benefits of Ce3+ and may provide motivation as to why one of ordinary skill would want cerium oxide nanoparticles with a predominant 3+ surface charge, the disclosed methods of preparing the pristine cerium oxide nanoparticles are significantly different than the method of the present invention (first paragraph of Section titled “Nanoceria in Aqueous Suspension” describes preparing the nanoceria using a “wet-chemical route”). Furthermore, the surface charge of the metal oxide nanoparticle in the removed aqueous phase is dependent on the synthesis of the metal oxide nanoparticles and cannot be determined through route experimentation and optimization. Therefore, the surface charge of the metal oxide nanoparticle cannot be considered to be a result effective variable.
Therefore, it is clear that Son and Celardo, either alone or in combination, do not disclose or suggest claim 12 or 17.
Furthermore, it is clear that Son and Celardo, either alone or in combination, do not disclose or suggest claim 13 as Son and Celardo fail to disclose or suggest claim 12, upon which claim 13 depends on.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/V.F.C./Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738
