DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicants’ election without traverse of Group I (claims 1-15; “a process for increasing the optical density of a stable, silver nanoplate solution”) in the reply filed on 01/23/2026 is acknowledged.
3. Claims 16 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/23/2026.
Drawings
4. The drawings filed 05/13/2024 are objected to for the following reason:
The drawings were labeled “Figure 1”, etc…Thus, the applicants are advised to change “Figure 1” to “Fig. 1” and so forth consistent with MPEP section 507 which states “Each figure must be labeled ‘Fig.’ with a consecutive Arabic numeral (1, 2, etc.) or an Arabic numeral and capital letter in the English alphabet (A, B, etc.). See 37 CFR 1.84(u)(1)”.
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.
Claim Objections
5. Claims 1 and 2 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to replace the claimed “between 0.1-10 cm-1” with the new phrase “between 0.1 and 10 cm-1”.
The applicants are also advised to add the phrase “to form a buffer-containing solution” after the claimed step of “adding a buffer to the solution”.
As to Claim 2: The applicants are advised to correct the mis-spelling of “pyrollidone” to “pyrrolidone”.
Appropriate corrections are required.
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.
6. Claims 11-15 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.
As to Claim 11: It is unclear whether “the concentrated nanoplates” recited in claim 11 refer to the concentrated solution recited in claim 1, on which it depends from, or whether the nanoplates were pre-concentrated before addition to the solution.
It is noted that since claim 12 is dependent on claim 11, it is rejected along with claim 11 because it incorporates all the limitation of claim 11, including those that are indefinite for the reasons provided above.
As to Claim 13: It is not clear whether “the stabilizing agent” that is added prior to formation of the silver nanoplates are referring to the same stabilizing agent in claim 1, or an additional/different stabilizing agent (Emphasis added). To the extent the stabilizing agent in claim 13 is referring to the same stabilizing agent in claim 1, it is unclear at what point the stabilizing agent is added because it was previously recited in claim 1 the stabilizing agent is added to a solution of already existing silver nanoplates.
As to Claim 14: Based on the claim, it is not clear at what point the nanoplates are concentrated by tangential flow filtration, whether the nanoplates were pre-concentrated by tangential flow filtration before addition to the solution, or whether the nanoplates were concentrated by tangential flow filtration during the concentration of the solution.
As to Claim 15: It is not clear whether the silver concentration recited in claim 15 is referring to the silver concentration in the solution before it is concentrated or the concentrated solution recited in claim 1, on which claim 15 depends from.
Clarification in the next response by applicants will be helpful to better ascertaining the scope of these claims.
Accordingly, the scope of these claims is deemed indefinite.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Double Patenting I
7. Claims 1-5, 7, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 11-12 of U.S. Patent No. 9,249,3341 (hereinafter referred to as “the patent”).
The claims of the patent and the present application are directed to processes for increasing optional density of a solution of stable, silver nanoplates, comprising providing a solution comprising silver nanoplates having a plate shape and a peak optical density between 0.1 to 10 cm-1, adding a stabilizing agent to the solution of silver nanoplates, forming a concentrated solution by concentrating using a tangential flow filtration, wherein the concentrated solution comprises silver nanoplates having the plate shape and possess a peak optical density greater than 10 cm-1. The claims of the patent and the present application also recite that the stabilizing agent comprises at least one the group consisting of polyvinyl pyrrolidone, polyvinyl alcohol, polyethylene glycol, dextran, polysulphonates, ethylene oxides, phenols and carbohydrates. The claims of the patent further recite that the silver nanoplates have an aspect ratio of between 1.5-25 (which overlaps with the presently claimed aspect ratio of between 1.5-50) and an edge length of 10-250 nm (which overlaps with the presently claimed edge length between 10-300 nm). See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the overlapping portion of the range taught in the prior art and the range claimed by the applicants has been held to be a prima facie case of obviousness.).
However, the claims of the patent do not specify their borate in the step of as a buffer to form the presently claimed buffer-containing solution. Nevertheless, the borate recited in claim 7 of the present application refers to borate as a buffer. Thus, the borate recited in the claims of the patent correspond to the presently claimed buffer in the step of adding a buffer to the solution to form a buffer-containing solution for the purposes of increasing an optical density of a stable, silver nanoplate solution.
Double Patenting II
8. Claims 1-2, 7-10, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6, and 9-10 of U.S. Patent No. 9,212,2942 (hereinafter referred to as “the patent”).
The claims of the patent and the present application are directed to processes for increasing optional density of a solution of silver nanoplates, comprising providing a solution comprising silver nanoplates having a plate shape, adding a stabilizing agent comprising polyvinyl based polymer, such as polyvinyl pyrrolidone and polyvinyl alcohol, and borate such as sodium borate (buffer), to the solution of silver nanoplates, forming a concentrated solution by concentrating the solution containing buffer using a tangential flow filtration, wherein the concentrated solution comprises silver nanoplates having the plate shape. The claims of the patent and the present application also recite that the stabilizing agent can also be a polyethylene glycol and a thiol-containing molecule, such as dihydrolipoic acid.
However, the claims of the patent do not mention that their solution comprising silver nanoplates have a peak optical density between 0.1- 10 cm-1 as required by the claims of the present application.
Nevertheless, claim 2 of the patent does recite that the peak optical density of the concentrated solution is at least 100 cm-1 (which is encompassed by the presently claimed peak optical density of greater than 10 cm-1) and is at least ten times higher than the peak optical density of the solution comprising silver nanoplates (which is inclusive of the presently claimed peak optical density of between 0.1-10 cm-1). Thus, it would have been obvious to one of ordinary skill in the art to use the solution comprising silver nanoplates having the presently claimed peak optical density for the purposes of preparing a concentrated solution of silver nanoplates as suggested by the claims of the patent.
Additionally, the patent does not specify its silver nanoplate solution as being stable as required by the claims of the present application. However, the presently claimed stable property would have naturally followed from the suggestion of the patent since the claims of the patent would have suggested the same silver nanoplate solution for the reasons provided above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. 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.”
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.
9. Claims 1-6 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ahern et al. (WO 2010/116346; utilized US 2012/01010073 as its Equivalent).
It is noted that Ahern et al. (WO 2010/116346) is used for date purposes, and all paragraph numbers cited below refer to its Equivalent, namely, US 2012/0101007.
The claims are directed to a process for increasing an optical density of a stable, silver nanoplate solution, comprising providing a solution comprising a plurality of silver nanoplates having a plate shape and having a particular peak optical density, followed by addition of a stabilizing agent and buffer to the solution, and concentrating the buffer-containing solution to form a concentrated solution, wherein the concentrated solution has a particular peak optical density.
It is noted that some guidance for measuring the stability is given in the instant Specification [0006], however, in the absence of a definition for the term “stable”, the broadest reasonable interpretation of the term “stable” is given.
As to Claims 1-6 and 14: Ahern et al. disclose a process for increasing an optical density of a stable silver nanoplate solution (Paragraphs [0002], [0015]-[0016] and [0122]), comprising the steps of providing a solution comprising silver nanoplates having a plate shape, adding a stabilizing agent to the solution (Paragraphs [0059] and [0105]), adding a phosphate buffer to the solution comprising the silver nanoplates, and finally, concentrating the solution comprising phosphate buffer and stabilizing agent via cross-flow filtration (tangential flow filtration) to form a concentrated solution comprising the silver nanoplates having a plate shape (Paragraphs [0122] and [0557]). Ahern et al. also disclose that the stabilizing agent may be selected from trisodium citrate, polyvinyl alcohol, polyvinyl pyrrolidone, and polysulphonates (Paragraphs [0031], [0071], [0092], and [0151]) as required by present claims 2-3 and 6. Ahern et al. further disclose that the stabilizing agent may also be added prior to the formation of silver nanoplates (Paragraphs [0015]-[0016] and [0122]) as required by claim 13. Moreover, Ahern et al. disclose that the silver nanoplates have an aspect ratio which is greater than 2 (Paragraph [0141]), which overlaps with the aspect ratio of between 1.5-50 recited in present clam 4, and an edge length of 10-200 nm (Paragraph [0134]), which is encompassed by the edge length of between 10 nm and 300 nm recited in claim 5.
However, Ahern et al. do not specify their solution comprising silver nanoplates having a peak optical density of between 0.1-10 cm-1 and concentrated solution having a peak optical density greater than 10 cm-1 as required by the claims.
Nevertheless, Ahern et al. do disclose increasing the concentration of the silver nanoplate in the solution to highest possible concentration for the purposes of reaching desired optical density at peak wavelengths to ultimately highly stabilize the silver nanoplates (Paragraphs [0008], [0455] and [0773]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to increase the concentration of the silver nanoplate in the solution for the purposes of reaching optimum or workable optical densities at peak wavelengths, inclusive of those claimed, i.e., peak optical densities of between 0.1-10 cm-1 and greater than 10 cm-1, with a reasonable expectation of successfully ultimately obtaining highly stabilized silver nanoplates solution as suggested by Ahern et al.
10. For record purposes, it is noted that there are no prior art rejections of present claims 7-12 and 15 at this time.
Correspondence
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)-270-5456. The examiner can normally be reached 8-5 PM; M-F.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 05/13/2024.
2 Cited in the IDS submitted by 05/13/2024.
3 Cited in the IDS submitted by applicants on 05/13/2024.