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 .
Specification
The disclosure is objected to because of the following informalities: on page 12, line 4, the word "Becker" is believed to be a misspelling of "beaker".
Appropriate correction is required.
Applicant is reminded of the proper language and format for an abstract of the disclosure. The instant abstract recites “the present invention relates to…”.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Drawings
The drawings are objected to because reference number 102 of figure 1 recites "PURIFYING IL MMA". The term "IL" may be mistakenly kept through the translation process since it is the Italian word which translates to the English article "the". 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.
Claim Interpretation
The following interpretations are provided for clarity and do not pertain to rejected or objected subject matter:
Claim 1 step 1.b. recites “merging the suspension”, the term “merging” is taken to mean any form of combination including terms like “mixing” and “combining”.
Claim 2 recites “particles of gadolinium oxide have dimension…” the term “dimension” is taken to reference any measurement of the particle including average diameter, average circumference, average particle size, thickness, length, or width.
Claim Objections
Claims 1-9 objected to because of the following informalities:
Claim 1 in line 1 recites “Process for preparing…” it should instead say “A process for preparing” for appropriate grammar.
Claim 1 in step 1.b. recites “Merging the suspension obtained from step a. to methylmethacrylate”, the preposition “to” should instead be “with”, so the phrase reads as “Merging the suspension obtained from step a. with methylmethacrylate”.
Claims 2-7 which are dependent on claim 1 and recite “Process for preparing… according to claim 1”. The claims should instead say “The process for preparing” since they are properly dependent and the referenced process has antecedent basis in claim 1.
Claims 8 and 9 recite “Element”, instead claim 8 should use the definite article “An” in combination with “element” to say “An element”. Further, assuming that it is the applicant’s intent to have claim 9 dependent on claim 8, it should recite “The element” instead. However, if the applicant does not intend for claim 9 to depend on claim 8, the above suggestion can be disregarded.
Appropriate correction is 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.
Claims 1-9 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.
Regarding claims 1-9, the term “nanometric” has no widely accepted definition and is not given special definition in the disclosure, rendering the term and the claims that contain it indefinite.
Further regarding claim 1:
In step 1.a. the claim recites “between 0.1% and 4.0% by mass”, however it is unclear if this limitation is in reference to the gadolinium oxide or the surfactant used. For examination purposes, this is taken to be either the surfactant or the gadolinium oxide can be present in the claimed amounts in the suspension.
In step 1.b. the claim recites that methylmethacrylate is “first depured by inhibitors”. It is unclear what is meant by this phrase with respect to the methylmethacrylate, rendering the claim further indefinite. For examination purposes, this limitation is considered as carrying no weight.
Further, step 1.b. recites that step occurs at “room temperature”. There is no concise widely accepted definition for “room temperature” nor any special definition set forth in the disclosure. For examination purposes, it is taken to mean a temperature that a room is, in the absence of any explicit heating or cooling pertinent to the process step.
Additionally, for step 1.b. with respect to the methylmethacrylate being “first depured by inhibitors” and the merging (mixing) it is unclear what parts of the step occur “at room temperature”.
In steps 1.c. and 1.e. it says, “at a temperature comprised between 70°C and 100°C”. The MPEP 2111.03 defines the term “comprise” or “comprising” or “comprised” as “inclusive or open-ended and does not exclude additional, unrecited elements or method steps”. The term “comprised” as applied to a closed temperature range renders the range unclear since it is unknown what elements not listed are able to be included.
Further regarding claim 2, the claim recites the phrase “particles of gadolinium oxide have dimension comprised between 10 nm and 100 nm”. The MPEP 2111.03 defines the term “comprise” or “comprising” or “comprised” as “inclusive or open-ended and does not exclude additional, unrecited elements or method steps”. The term “comprised” as applied to a closed dimension range renders the range unclear since it is unknown what elements not listed are able to be included.
Further regarding claim 4, the claim recites “HLB comprised between 10 and 25”. The MPEP 2111.03 defines the term “comprise” or “comprising” or “comprised” as “inclusive or open-ended and does not exclude additional, unrecited elements or method steps”. The term “comprised” as applied to a closed HLB range renders the range unclear since it is unknown what elements not listed are able to be included.
Further regarding claim 8, the claim uses the phrase "preferably", this renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are a mandatory part of the claimed invention or merely optional. See MPEP § 2173.05(d). For examination purposes, the broader of two ranges claimed will be treated as the claimed range.
Further regarding claim 9, the claim lacks antecedent basis as claiming “Element according to claim 7”. Claim 7 is drawn to a process and is dependent on claim 1. For examination purposes, claim 9 is taken to be referencing claim 8 which is drawn to an “Element”.
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 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Samuel (Homogeneous dispersion of gadolinium oxide nanoparticles into a non-aqueous-based polymer by two surface treatments) in view of Colombo (Nanoparticle-doped large area PMMA plates with controlled optical diffusion).
Regarding claim 1, Samuel teaches gadolinium oxide polymethylmethacrylate composites made by incorporating dispersed nanoparticles of gadolinium oxide into a polymer matrix. The nanoparticle dispersion is disclosed as comprising the following process (analogous to step 1.a. of instant claim 1):
Adding gadolinium oxide at a concentration of 1% by mass, Igepal CO-250 non-ionic surfactant at a concentration of 0.1% and 1% by weight to 2-butanone (a non-polar solvent) (page 2420, Non-hybrid approach with the surfactants).
Samuel does not teach preparing the particle dispersion using sonication, nor method steps where the nanoparticle dispersion is added to methyl methacrylate (MMA) prior to prepolymerization and then a final polymerization and temperature treatment.
Colombo teaches a process of creating a nanoparticle dispersion using ultrasonication (a form of sonication) and then teaches a method of incorporating the nanoparticle dispersion into MMA and then forming a PMMA composite. The process is as follows:
MMA is purified using an alumina column, prepolymerized at temperatures up to 374 K (about 100 C) using azobisisobutyronitrile (AIBN) as a primary initiator to form a "syrup", then the nanoparticles are added. The prepolumerized MMA is then mixed with the nanoparticle dispersion and is then polymerized using a lauroyl peroxide (a secondary initiator). The polymerized product is then treated at a temperature of 328 K (54.85 C) to obtain the final product (section 2.4).
Colombo further teaches a plate comprising the nanoparticle-PMMA composite (section 1, page 2928).
The examiner notes that the temperature range of prepolymerization as taught by Colombo has substantial and significant overlap with the claimed range and is disclosed with sufficient specificity so as to anticipate the claimed range. See MPEP 2131.03. Additionally, Colombo is silent as to at what temperature the nanoparticle dispersion is added to the MMA, since there is no cited temperature, this step is taken to be performed at room temperature. Further, regarding the claimed step of adding the suspension to the MMA, the examiner notes that this step is not described as required to occur prior to the prepolymerization of the MMA and further, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04(C).
A person having ordinary skill as of the effective filing date of the instant application would have found it obvious to use the method step of creating a gadolinium oxide nanoparticle dispersion as taught by Samuel to form the PMMA composite according to the method as taught by Colombo and to use ultrasound to treat the gadolinium oxide during the creation of the nanoparticle dispersion and to create plates from the resulting PMMA composite as a combination of prior art elements.
Regarding claim 3, as described above, Samuel teaches 2-butanone as an apolar (non-polar) solvent.
Regarding claims 4 and 5, the non-polar surfactant Igepal CO-250 in Samuel is taught to have an HLB of 10.2 (as shown in table 1) and is the surfactant exemplified by the applicant and described in page 3, lines 24-27, by the applicant as poly(oxyethylene)nonylphenyl ether ((C2H4O)5·C15H24O) and also has an alkyl chain between 12 and 64 carbons.
Regarding claims 6 and 7, first and second initiators as taught by Colombo are the claimed AIBN and lauroyl peroxide.
Regarding claim 8, the process of Samuel in view of Colombo applies as described above regarding the amount of gadolinium oxide used and with regard to the plate as described in Colombo.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Samuel in view of Colombo and further in view of US Research Nanomaterials, inc. (Gadolinium oxide nanoparticle webpage and SDS)
Regarding claim 2, the process of Samuel in view of Colombo applies as described above, but both references fail to disclose gadolinium oxide nanoparticles with particle size or diameter between 10 nm and 100 nm.
US Research Nanomaterials, inc. (hereafter referred to as URN) discloses gadolinium oxide nanoparticles with an average particle size (APS) of 10-100nm available for purchase prior to the effective filing date of the instant application (as evidenced by the included SDS and webpage).
A person having ordinary skill in the art as of the effective filing date of the instant application would have found it obvious to substitute the gadolinium oxide nanoparticles of Samuel with the nanoparticles of URN in the process of Samuel in view of Colombo and the results would have been predictable.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Samuel in view of Colombo and further in view of De Vita (US 10107934 B2).
Regarding claim 9, the process of Samuel in view of Colombo applies as described above with regard to the amount of gadolinium oxide used in the process and the plate produced. However, both references fail to disclose a plate with a thickness of greater than 1 cm.
De Vita teaches scintillator plates comprising gadolinium oxide with a thickness of 5-100 mm (0.5-10) and particularly approximately 20 mm (2 cm).
A person having ordinary skill in the art as of the effective filing date of the instant application would have found it obvious to apply the teaching described in De Vita to use the method of Samuel view of Colombo to produce a plate having a thickness of 2 cm and the results would have been predictable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KOLTON JONES whose telephone number is (571)272-9802. The examiner can normally be reached Generally Monday-Friday 8:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (517)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KOLTON JONES/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
