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 with traverse of claims 1-10 in the reply filed on 7/21/26 is acknowledged. The traversal is on the ground(s) that the cited reference did not anticipate claim1. This is not found persuasive because: see the rejections below.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-10 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.
Claims 1-3 and 6-9 an inorganic carrier, polymers with amine groups, and crosslinking. The inorganic carrier, and the polymers with amine groups are open-ended with limitless possibilities, making the claims indefinite. Claims 4 and 5, even though limited by the amine compounds, still are indefinite for the remaining reasons. Claim 10, even though limited by silane coupling, still have limitless possibilities of inorganics and polymers.
Claim 1 also recites “others of the polymer(s) are linked to the polymer(s) carried on the inorganic carrier by crosslinking.” However, the disclosure does not appear to clearly define or disclose what the “others of the polymer(s) are. The disclosure, on page 12, appears to describe them as possible variations of the same anionic polymers. The only [anionic] polymers disclosed are PEI or allyl polymers, and they are crosslinked with cross-linking agent like epichlorohydrin, EDGE or dichloropropane (working examples.) The corresponding disclosure reads: “at least some of the polymer(s) are carried on the inorganic carrier, and others of the polymer(s) are crosslinked to the polymer(s) carried on the inorganic carrier.” [0013], page 6. Therefore, under the broadest reasonable interpretation, and considering applicant’s working examples, it is assumed that the “others of the polymer(s)” are polymer molecules that are not directly attached to the inorganic support.
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.
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) 1-8 are rejected under 35 U.S.C. 102(a1) as being anticipated by, or in the alternative, under 35 USC 103 as being obvious over, Ghoul et al., “Uptake of heavy metals from synthetic aqueous solutions using modified PEI—silica gels,” Water Research 37 (2003) 729–734
At the outset, “[a]n agent for use in blood cell separation” is only intended use in the preamble.
A claim term is functional when it recites a feature "by what it does rather than by what it is" (e.g., as evidenced by its specific structure or specific ingredients). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" [underlined by examiner] if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Ghoul teaches PEI having primary, secondary and tertiary amino groups coated on to silica gel, particle size 35-75 microns, and then crosslinked with glutaraldehyde (introduction; section 2.2). The described PEI is not a single type of polymer molecule but different kinds of PEI molecules by its nature. While Ghoul does not explicitly teach the molecular weight, they obtained PEI commercially (Aldrich.) See: 21. “Materials.” Applicant also discloses that commercial PEI can be used, and that the molecular weight is not critical: [0045] of the disclosure.
The “adsorption” or “electrostatic interaction” of PEI and silica in claim 7 would have been inherent – same composition.
Claim(s) 1-10 are rejected under 35 U.S.C. 102a1 as being anticipated by, or under 35 USC 103 as obvious over, Kang et al, “Synthesis of poly(ethyleneimine)-functionalized mesoporous silica gel with dual loading of host ion and crosslinking for enhanced heavy metal removal in multinary solutions,” Microporous and Mesoporous Materials 311 (2021) 110698
As in rejection 1, this reference teaches coating and crosslinking PEI on silica particles of overlapping particle size range (35-60 mesh: 250-600 microns). This reference teaches that crosslinking can be: ”[t]he grafting method has been used to fix PEI to the silica surface by silane coupling agents, such as (3-Chloropropyl) trimethoxysilane [24,27–30,38–43], [3-(2,3-Epoxypropoxy)-propyl] trimethoxysilane [44,45], and (3-Aminopropyl) trimethoxysilane and glutaraldehyde.” Therefore, the silane coupling in claims 9 and 10 are also anticipated by this reference. See introduction.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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/KRISHNAN S MENON/Primary Examiner, Art Unit 1771
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