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 .
DETAILED ACTION
Status of Claims
Claims 16-30 are pending.
Election/Restrictions
Applicants’ election of Group I, in the reply filed on 1/15/2026 is acknowledged. The election was made with traverse.
The traversal is on the ground that no lack of unity was raised by the International Search Authority. Applicant’s arguments have been considered but are unpersuasive. The International Search Authority did not make any determination about lack of unity of the case during the examination. The USPTO is certainly not bound by what the International Bureau determines. The USPTO can, at any time before the final action, find that a national stage application lacks unity of invention and restrict the case accordingly. 37 CFR 1.499:
PNG
media_image1.png
295
1142
media_image1.png
Greyscale
Herein, the examiner determined that this national stage application lacks unity of invention under 1.475 because the common technical feature of the claimed inventions have been previously disclosed in the cited prior art. See the restriction requirement sent on 12/5/2025. Therefore, even if there was a common technical feature shared between the groups, this would not be a "special" technical feature. Thus, the requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 19-24 and 26-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Claims 16-18 and 25 are under examination in the instant office action.
Claim Rejections - 35 USC § 112 (b)
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.
Claim 16-18 and 25 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 pre-AIA the applicant regards as the invention. All the dependent claims are included.
In claim 16, the term, "preferably” in lines 5, 6, and 9 renders the claims indefinite because it is unclear whether the limitation following the phrase is part of the claimed invention. See MPEP § 2173.05(d).
In claim 18, the phrase “such as” in line 9 renders the claims indefinite because it is unclear whether the limitation following the phrase is part of the claimed invention. See MPEP § 2173.05(d).
For examination purpose, the features introduced by "preferably” and “such as” are considered as not part of the claimed invention.
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 16-18 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 105965028 (cited in the IDS filed on 11/2/2023).
CN 105965028 teaches copper clusters prepared by using histidine as a stabilizing agent and ascorbic acid as reducing agent (abstract and claim 1). CN 105965028 discloses the synthesis of the copper nanocluster, wherein histidine water solution is mixed with copper acetate aqueous solution for obtaining mixed solution; ascorbic acid is added to the mixed solution to obtain the average grain diameter size is 1.9 nm of histidine stabilized copper clusters (example 9). The diameter of the copper nanocluster falls within the claimed range. The ingredients and synthesis described in Example 9 are the same as claimed, thus the copper nanocluster of the prior art implicitly discloses formula CuNC@HisAc as claimed. Also, CN 105965028 discloses the copper nanoclusters in liquid form (example 9).
The temporal stability, spectrophotometric properties, shape of the copper nanocluster, and diameter of the metallic core recited in claim 16 and the features recited in claim 18 are inherent properties of the CuNC@HisAc nanocluster obtained. While the prior art is silent about those features, it teaches the same copper nanocluster prepared by using the same components as claimed, thus those features are necessarily present. It is noted that products of identical chemical composition cannot have mutually exclusive properties and 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicants are advised that In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) states: "Where, as here, the claimed and prior art product is identical or substantially identical, or is produced by an identical or substantially identical process, the PTO can require an applicant to prove that the prior art product does not necessarily or inherently possess the characteristics of his claimed product ........ Whether the rejection is based on 'inherency' under 35 USC 102, on 'prima facie obviousness' under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products [footnote omitted]."
As to claim 25, which further recites “use as medication”, the instant claims are directed to a product, an intended use, does not have a patentable weight. An 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. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In this case, the prior art teaches the same copper nanocluster comprising the same ingredients as the instant claims, thus it would be capable of performing the intended use as claimed. Also, the copper nanocluster of the prior art does not include any components that would make it unfit for use as a medication. In accordance with the patent statutes, an article or composition of matter, in order to patentable, must not only be useful and involve invention, but must also be new. If there is no novelty in an article or composition itself, then a patent cannot be properly granted on the article or composition, regardless of the use for which it is.
As such, the instant claims are anticipated by CN 105965028.
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 of this title, 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.
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 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 16-18 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (Microchimica Acta, 186(1): 1-8, December 7, 2018; cited in the IDS filed on 11/2/2003) in view of CN 103820106.
Hu et al. teach synthesis of copper nanoclusters (CuNCs) by utilizing copper chloride, L-histidine as stabilizer and ascorbic acid (AA) as reductant (abstract and p2, Materials and Chemicals). Hu et al. further discloses that the copper nanoclusters have very good fluorescence properties with excitation/emission peaks at 390/485, have a spherical shape and a diameter of about 3 to 4 nm, where said diameter is evaluated by transmission electronic microscope (abstract and p3, col 2, para 2).
Hu et al. disclose that typically, 20 μL CuCl2 solution (0.10 M) was mixed with L-histidine solution (0.10 M, 2.0 mL) in a small vial at room temperature, followed by the addition of AA solution (0.10 M, 100 μL), after stirring for 2.5 h at 70 °C, the mixture turned from light blue to brown gradually, which indicated the formation of CuNCs, then the product was purified by dialysis for 12 h at room temperature and was defined as a concentration of 1X CuNCs (p5, Synthesis of His-CU NCs). Hu et al. further disclose that for long-term preservation, the CuNCs solutions (liquid form) were stored in the refrigerator at 4 °C before use (p5, Synthesis of His-CU NCs).
Also, Hu et al. disclose that the CuNCs showed great stability (Fig. S2) and performed many merits, including strong green luminescence under UV light, excellent fluorescence stability and pH tolerance (p3, col 2, para 1).
In addition, Hu et al. disclose that the CuNCs possess better biocompatibility, low toxicity, and unique catalysis properties and thus can be widely used in chemical sensing, catalysis, and biological imaging (p2, col 1, para 1) and teach the use of the CuNCs for determining alkaline phosphatase (ALP) activity in human serum samples (p3, col 1, para 2).
Hu et al. do not specifically disclose the use of copper acetate.
However, it was well known in the art that for preparing copper nanoclusters, various known copper salts including copper chloride and copper acetate can be used as evidenced by CN 103820106 (abstract and [0017]). CN 103820106 also teaches that copper nanoclusters have excellent fluorescent property, has good biocompatibility, and can be prepared in a simple and eco-friendly manner (abstract).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use copper acetate in place of copper chloride because both are well-known copper salts and taught to be suitable for preparing copper nanocluster as evidenced by CN 103820106. The person of ordinary skill in the art would have found it obvious to make the substitution because the ordinarily skilled artisan would have predicted that both copper chloride and copper acetate would be safe and effective based on their suitability for preparing copper nanoclusters with excellent fluorescent property and good biocompatibility. One of ordinary skill in the art would have been able to carry out such a substitution, and the results were reasonably predictable.
The temporal stability, spectrophotometric properties, shape and diameter of the copper nanocluster, and diameter of the metallic core recited in claim 16 and the features recited in claim 18 are inherent properties of the CuNC@HisAc nanocluster obtained. While the prior art is silent about those features, the prior art in combination teaches, motivate, suggest the same copper nanocluster prepared by using the same components as claimed, thus those features would be necessarily present. It is noted that products of identical chemical composition cannot have mutually exclusive properties and 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicants are advised that In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) states: "Where, as here, the claimed and prior art product is identical or substantially identical, or is produced by an identical or substantially identical process, the PTO can require an applicant to prove that the prior art product does not necessarily or inherently possess the characteristics of his claimed product ........ Whether the rejection is based on 'inherency' under 35 USC 102, on 'prima facie obviousness' under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products [footnote omitted]."
As to claim 25, which further recites “use as medication”, the instant claims are directed to a product, an intended use, does not have a patentable weight. An 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. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In this case, the prior art in combination teaches, motivate, suggest the same copper nanocluster comprising the same ingredients as the instant claims, thus it would be capable of performing the intended use as claimed. Also, the copper nanocluster of the prior art does not include any components that would make it unfit for use as a medication.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BONG-SOOK BAEK whose telephone number is 571-270-5863. The examiner can normally be reached 9:00AM-6:00PM Monday-Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/BONG-SOOK BAEK/Primary Examiner, Art Unit 1611