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 .
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.
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 1-18 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.
Claim 2 depends from itself.
Claim 6 is unclear. It appears that the molar ratio is actually 1:3-3:1. Does claim 6 intend that the batch size be limited to the number of moles recited? Note that claim 7 is correct and should be used as a guide for amending claim 6.
Claim 1b is incorrect and self-contradictory- an aging step precludes dialysis. See Drake col. 14, which teaches aging then dialysis.
The alternate ranges-within-a-range of claim 11 is improper and unclear. See also claims 15 and 16.
The wherein clause of claim1 is unclear and apparently self-contradictory. It is unclear how can the dialysate in the third container (which has already passed through the second container) interact with the barrier in the second container. The term ‘infusing dialysate’ is unclear and apparently duplicative since it is by definition the material escaping from the second container.
In the wherein clause of claim 1, it is unclear as to what ‘waste products’ refers. It is taken that small residual ions escape the second container and go into the third container because they are smaller than the product nanoparticles.
In the last line of claim 1, ‘the outlet’ is without antecedent. It is presumed to not return directly to the second container (since it can pass through the barrier through which it previously passed) but go to waste/recovery/recycling to step a. The clause is entirely unclear.
In claim 1 the term ‘metal/metal oxide’ is unclear and should refer to a composition of the two reagents.
In claim 4, ‘and the like’ is unclear as the basis for determination.
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.
(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 18 is rejected under 35 U.S.C. 102a1 as being anticipated by Neal article.
Neal teaches, in the abstract, the claimed material. The Office is under no obligation to show the process steps of a product-by-process claim.
Claim 18 is rejected under 35 U.S.C. 102a2 as being anticipated by Drake 12599698.
Drake teaches, especially in col. 5 and 13, Ag doped Cerium oxide nanoparticles, formed by reacting silver nitrate with Ce nitrate in the presence of H2O2. Even though the process differs, no difference is seen in the actual product claimed given that it is a product-by-process claim.
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.
Claims 1, 3-5, 8-11, 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Drake taken with Kauffman et al. 20050037435.
Drake, above teaches dialysis in col. 14 but does not teach the specific dialysis system (as understood, however Kauffman teaches, especially on pg. 8, para 71 the dialysis can be performed with one bag inside another. Using this system in the process of is obvious to attain the desired level of purity.
For claim 3-5, see Drake col. 13 lines 60-65.
For claims 8 and 9, it is obvious as a matter of scale to make more valuable product.
For claim 10, Drake uses water, see col. 14.
For claim 11, the aging is up to 3 weeks, which overlaps the claimed range and thus rendering it obvious.
For claim 15, no difference is seen since the reagents are the same.
For claim 16, Drake uses 5 x 10E-5 moles of AgNO3 and 35 x 10E-5 moles cerium nitrate hexahydrate. The concentration of Ag is .995 millimoles/l. (the volume is 50.25 ml). In any event, the concentration is obvious to control batch since especially since claim 16 does not specify the reactant ratio.
For claim 17, light is included in ‘radiation’ and microwaves are not required.
For claim 18, no difference is seen in the particle.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Drake/Kauffman as applied to claim 1 above, and further in view of Allston et al. 20100152077.
In so far as claim 2 is supposed to depend upon claim 1, it is not taught.
Allston teaches, especially in para 24-25, nanoparticle dialysis including cerium oxide which can be metal-doped. Also taught is the formation of the particles in para 30.
For claim 2, the equivalent of a 2 kilodalton size mesh is used.
Allowable Subject Matter
Claims 12-14 are allowable since the features therein are not taught or suggested.
The Guo document had no abstract, nor any meaningful information.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STUART L HENDRICKSON whose telephone number is (571)272-1351. The examiner can normally be reached on Monday-Friday from 9 to 5. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anthony Zimmer, can be reached on 571-270-3591. 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 the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736
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