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 of Group II claims 10-20 in the reply filed on 11/20/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected claims, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/20/2025.
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 10-18 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.
In claim 10, which recites, “AxFe3-xO4”, however the claim fails to define the value of x so it is not clear what number or numbers would represent “x”. Clarification is requested. However, for the purpose of examination, Examiner is interpreting the value of x to be any number from 0-10.
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.
Claim(s) 10, 14 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Okana et al. (EP 0622426) in view of Schuhmacher et al. (US 6531221).
Regarding claim 1, Okana discloses coated granular magnetite particles each comprise a granular magnetite core particle coated with a layer of M.sub.xFe.sub.2+yO.sub.z wherein M is Zn or Co, 0.4 ≦ x ≦ 1, x + y = 1, 4.0 ≦ z ≦ 4.3 (abstract). The particle size of the granular magnetite particles to be treated is preferably in the range of 0.1 to 0.5 microns (page 5, lines 45-47) which would meet the limitation of maximum lateral dimension of core. The coated granular magnetite particles according to the present invention have an excellent heat resistance and a high tinting strength, so that they are suitable as materials for coloring pigments for coating materials, printing inks and resins, and materials for magnetic toners and magnetic carriers (page 8, lines 14-16). The granular magnetite particles are black, they are widely used as materials for a black coloring pigment which is dispersed in a vehicle or mixed with a resin (page 2, lines 10-12).
However, Okana fails to disclose that the magnetite core has a thickness in a range of 20-50 nm.
Whereas, Schuhmacher discloses platelet-shaped cholesteric multilayer pigment which comprises the layer sequence A/B/ and if desired C, where A and C independently of one another are at least one partly light-permeable absorption layer, and B is at least one cholesteric layer (abstract). A and/or C comprise preferably absorbing colorants. These can be present in pigmentary form or in solution as a dye in an organic or inorganic binder matrix. Among selectively absorbing pigments particular mention may be made of iron oxides; among those which are nonselectively absorbing, black Fe.sub.3 O.sub.4 (magnetite) and carbon black (col. 3, lines 48-63). The thickness of the individual layers of A and/or C when using inorganic absorption layers for nonselectively absorbing materials of high refractive index, such as metals, black metal oxides and sulfides, is generally from 1 to 100 nm (col. 7, lines 33-37).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to form the magnetite of Okana having a thickness in range of 1-100 nm as taught by Schuhmacher motivated by the desire to have improved optical and reflective properties.
While there is no disclosure that coated granular nanoparticles is anistropic magnetothermal nanoparticle as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. anistropic magnetothermal, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Okano in view of Schuhmacher and further that the prior art structure which is a coated nanoparticle identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 17, with respect to the limitation of magnetite core is hexagonal, Change in size and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). MPEP 2144.04[R-1]
Regarding claim 18, As Okana in view of Schuhmacher discloses anisotropic magnetothermal nanoparticle as presently claimed, therefore nanoparticle would intrinsically have a specific loss power of about 1270 to about 1980.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Okana et al. (EP 0622426) in view of Schuhmacher et al. (US 6531221) as applied to claim 10, further in view of Obaidat et al. (US 2019/0139685).
Regarding claim 11, Okana fails to disclose that the thickness of the layer of M.sub.xFe.sub.2+yO.sub.z is about 5 nm.
Whereas, Obaidat discloses method of synthesizing magnetite/maghemite (Fe.sub.3O.sub.4/γ-Fe.sub.2O.sub.3) core/shell nanoparticles (claim 1). The shell thickness is in a range of 1-5 nm (claim 9).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to form layer M.sub.xFe.sub.2+yO.sub.z of Okana with a thickness in a range of 1-5 nm as taught by Obaidat motivated by the desire to have high magnetic responsivity.
Claim(s) 12-13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Okana et al. (EP 0622426) in view of Schuhmacher et al. (US 6531221) as applied to claim 10, further in view of Pyun et al. (US 2009/0053512).
Regarding claim 12, Okana fails to disclose that coated nanoparticle further comprises a polymer outer layer disposed on layer of M.sub.xFe.sub.2+yO.sub.z and having a hydrophobic chains oriented towards the layer coating and hydrophilic side chains oriented away from the layer coating.
Whereas, Pyun discloses polymer coated nanoparticle containing a metallic core and a polymer shell encapsulating said metallic core is useful, for example, in magnetic tapes and supercapacitors (abstract). The metallic core is not particularly limited. Preferred examples include magnetite (para 0087). The polymer of the shell is functionalized using groups to impart specific properties such as hydrophobic, hydrophilic, rubbery, glassy, fluorescent, electro-active, conductive electrical, heat). Other preferred functional groups include polyelectrolyte functional groups, bio-conjugates such as proteins and peptides, coordinating functional groups such as alcohols, amines, thiols, hetero-atom functional groups, fluorinated groups and chromophores (para 0094) functional groups and their combinations are preferably selected for their compatibility with the core and the remainder of the polymer structure. For example, functional side chain groups in the copolymer should not compete with the ligating end-group for coordination to the nanoparticle surface (PARA 0096).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to coat polymer shell along with functional groups such as polyelectrolyte functional groups, bio-conjugates such as proteins and peptides of Pyun on to the layer of Okana having hydrophobic and hydrophilic properties as taught by Pyun motivated by the desire to have improved mechanical properties and to get hydrophobic and hydrophilic characteristics.
Regarding claim 13, Okana fails to disclose that coated nanoparticle further comprises a component conjugated with the polymer outer layer and enabling formation of a bond with a material pairable with a tag for tissue to be heated with the anistropic magnetothermal nanoparticle.
Whereas, Pyun discloses polymer coated nanoparticle containing a metallic core and a polymer shell encapsulating said metallic core is useful, for example, in magnetic tapes and supercapacitors (abstract). The metallic core is not particularly limited. Preferred examples include magnetite (para 0087). The polymer of the shell is functionalized using groups to impart specific properties such as hydrophobic, hydrophilic, rubbery, glassy, fluorescent, electro-active, conductive electrical, heat). Other preferred functional groups include polyelectrolyte functional groups, bio-conjugates such as proteins and peptides, coordinating functional groups such as alcohols, amines, thiols, hetero-atom functional groups, fluorinated groups and chromophores (para 0094). Pyun discloses process for preparing the above nanoparticle, comprising: exchange of a polymer onto a nanoparticle by a ligand exchange reaction using a ligand that has a higher affinity toward the metallic core than the ligand already attached to the metallic core (para 0026-0027).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include ligand conjugated with the polymer shell of Pyun on to the layer of Okana motivated by the desire to have improved mechanical properties and strength.
As Pyun discloses component such as ligand conjugated with polymer layer as presently claimed, it therefore would be intrinsically enable formation of a bond with a material pairable with a tag for tissue to be heated.
Regarding claims 15-16, Pyun discloses polymer shell may be one layer or a combination of two or more layers (para 0086). Particularly preferred polymer shells contain polystyrenics, poly(methacrylate), polyacrylates, polyacrylonitrile, vinylic derived polymers, conjugated polymers such as polythiophene, polypyrrole, polyaniline (para 0089). Based on the teaching of Pyun, it would be obvious to one of ordinary skill in the art to form one layer with conjugated polymer such as polyaniline and second layer with polyacrylates etc.
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.
Claim(s) 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cassignol et al. (WO 2015-003850).
Regarding claims 19-20, Cassignol discloses highly filled matrix-bonded anisotropic high-performance permanent magnets and method for their production (page 1, para 1). Cassignol discloses anisotropic means in particular having a direction-dependent property. In particular, nanoparticles have dimensions or lateral dimensions which are nanoscale or in the nanometer range. Magnetic nanoparticles are particularly single-phased and enforce a one-domain behavior (page 4, last two paragraphs). The core of the anisotropic nanoparticles may consist of a soft magnetic material and the shell of a hard magnetic material (page 5, first paragraph).
While there is no disclosure that anisotropic nanoparticle is anistropic magnetothermal nanoparticle as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. anistropic magnetothermal, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Cassignol and further that the prior art structure which is a anisotropic nanoparticle identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
As Cassignol discloses anisotropic nanoparticle comprising soft magnetic core having anisotropic shape and a hard magnetic coating as presently claimed, therefore the anisotropic nanoparticle would inherently provide magnetic crystalline anisotropy via spin coupling effects at an interface between soft and hard magnetic bonding and anisotropic nanoparticle would inherently have a specific loss power of about 1270 to about 1980.
Conclusion
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/RONAK C PATEL/Primary Examiner, Art Unit 1788