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 . Admitted
Drawings
Figures 1C1, 1C2, and 1C3 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
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.
Specification
The use of the following terms, which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore each term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
NanoComposix®
PerkinElmer®
Sigma-Aldrich®
ACROS® Organics
Alfa Aesar®
Puratrem®
FEI®
Gatan®
Agilent® 5110
NexION® 350D
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Interpretation
Claim 54 recites the limitation “the particle edge-length is defined as a center-to-center distance between two adjacent corner atoms of a particle.” This limitation is understood to be met by the particle diameter in the case of spherical particles; the cube root of the particle volume for cubic particles; and by Equations 8, 9, 10, 11, and 12 for cuboctahedral, octahedral, truncated octahedral, tetrahedral, and rhombic dodecahedral particles, respectively, as disclosed in pages 12-13 of the instant specification.
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 50 and 57-59 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 50 recites the limitation “the particle of the detected particles” in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, the Examiner has interpreted “the particle of the detected particles” to mean “[[the]]a particle of the detected particles”. Claims 57-59 are rejected because of their dependence on claim 50.
Regarding claim 59, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of compact prosecution, the Examiner has interpreted “determine the particle structure such as core-shell, homogeneously mixed and or heterostructure” to mean “determine the particle structure,wherein the particle structure is core-shell, homogeneously mixed and or heterostructure”.
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.
Claims 48-49, 52, 56, 60, 62-65, and 67 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Bazargan et al. (U.S. Patent Application Publication No. 2015/0235833 A1), hereinafter Bazargan.
Regarding claim 48, Bazargan discloses a single-particle inductively-coupled plasma mass spectrometry particle sizing and counting method, the method comprising the steps of:
- providing or receiving an intensity-versus-counts histogram (FIG. 8A) of particles detected using an inductively-coupled plasma mass spectrometer (paragraph 0089), the intensity representing particle detection and the count representing particle detection frequency (paragraph 0090),
- providing or receiving mass flux calibration data or at least one mass flux calibration curve data relating a value of the intensity measurement or data of the inductively-coupled plasma mass spectrometer to a mass of material detected per acquisition interval or dwell time (paragraph 0072),
- determining a particle mass of the particles detected using the mass flux calibration data or the at least one mass flux calibration curve data (paragraph 0073),
- determining a particle volume of the detected particles using the determined particle mass (paragraph 0077), and
- determining a particle size of the particles detected using the determined particle volume of the particles detected and a determined or attributed geometry or shape of the detected particles (paragraph 0077).
Regarding claim 49, Bazargan as applied to claim 48 discloses the method according to claim 48.
In addition, Bazargan discloses that the inductively-coupled plasma mass spectrometer is a quadrupole (paragraph 0029), time-of-flight or a sector-field based instrument.
Regarding claim 52, Bazargan as applied to claim 48 discloses the method according to claim 48.
In addition, Bazargan discloses that the particle size of the particles detected is determined using a geometrical descriptor associated with the determined geometry or shape of the detected particles (paragraph 0077, “cube, sphere, etc.”).
Regarding claim 56, Bazargan as applied to claim 48 discloses the method according to claim 48.
In addition, Bazargan discloses that the determined or attributed geometry or shape of the detected particles is spherical, cubic, cube octahedral, octahedral, truncated octahedral, tetrahedral, or rhombic dodecahedral (paragraph 0077).
Regarding claim 60, Bazargan as applied to claim 48 discloses the method according to claim 48.
In addition, Bazargan discloses that the particle mass of the particles detected is calculated using a slope value determined from the mass flux calibration data or the at least one mass flux calibration curve data (paragraph 0073).
Regarding claim 62, Bazargan as applied to claim 48 discloses the method according to claim 48.
In addition, Bazargan discloses that the mass flux calibration data or the at least one mass flux calibration curve data is determined by converting dissolved metal calibration data or at least one dissolved metal calibration curve relating a measured intensity to concentration using the following equation (paragraphs 0021, 0072):
Δ
m
=
η
t
t
d
Q
C
in which
η
t
is a transport efficiency factor correcting for ion losses in the inductively-coupled plasma mass spectrometer,
t
d
is a dwell time or acquisition interval time, Q is a sample flow rate of the inductively-coupled plasma mass spectrometer and C is a dissolved ion concentration.
Regarding claim 63, Bazargan as applied to claim 48 discloses the method according to claim 48.
In addition, Bazargan discloses that the intensity-versus-counts histogram is provided by obtaining or measuring intensity measurements (paragraph 0057) representing particle detection as a function of time using a inductively-coupled plasma mass spectrometer (paragraph 0080), and removing a background intensity signal from the intensity measurements as a function of time (paragraph 0082).
Regarding claim 64, Bazargan as applied to claim 63 discloses the method according to claim 63.
In addition, Bazargan discloses that removing the background signal is carried out by averaging over all intensity values and determining a standard deviation (paragraph 0061), and defining a particle detection as any intensity value that is at least 3 times the standard deviation σ + the mean μ above a background intensity value (paragraph 0061), and arranging the particle detections based on their respective intensity values and as a counts-versus-intensity histogram (FIG. 8A).
Regarding claim 65, Bazargan as applied to claim 48 discloses the method according to claim 48.
In addition, Bazargan discloses the step of providing an inductively-coupled plasma mass spectrometer configured to carry out single-particle inductively coupled plasma mass-spectrometry (paragraph 0089), or an inductively-coupled plasma mass spectrometer equipped with a microdroplet generator (paragraph 0029).
Regarding claim 67, Bazargan as applied to claim 48 discloses the method according to claim 48.
In addition, Bazargan discloses that the method is a computer implemented method (paragraph 0105).
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.
Claim 61 is rejected under 35 U.S.C. 103 as being unpatentable over Bazargan.
Regarding claim 61, Bazargan as applied to claim 48 discloses the method according to claim 48.
In addition, Bazargan discloses that the particle mass of the particles detected is calculated using the following equation (paragraph 0073):
m
p
=
I
p
a
m
f
η
i
wherein a is a slope value determined from the mass flux calibration data or the at least one mass flux calibration curve data,
η
i
is an ionization efficiency correction factor having a positive value between 0 and 1, and
m
f
is a mass fraction factor having a positive value between 0 and 1.
Bazargan fails to disclose that
η
i
has a positive value between 0 and 1, and
m
f
has a positive value between 0 and 1. However, optimizing the values of the ionization efficiency correction factor and the mass fraction factor is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Bazargan teaches that the particle mass of the particles is inversely related to the ionization efficiency correction factor and the mass fraction factor (Bazargan, paragraph 0073). As such, Bazargan identifies the values of the ionization efficiency correction factor and the mass fraction factor as variables which achieve a recognized mathematical result, i.e., smaller magnitudes of the ionization efficiency correction factor and the mass fraction factor result in a larger calculated particle mass and vice versa. Therefore, the prior art teaches adjusting the values of the ionization efficiency correction factor and the mass fraction factor and identifies said factors as result-effective variables. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize the values of the ionization efficiency correction factor and the mass fraction factor to meet the claimed values since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Claims 50 and 57-58 are rejected under 35 U.S.C. 103 as being unpatentable over Bazargan as applied to claim 48 above, in view of Yamaguchi (U.S. Patent Application Publication No. 2016/0343558 A1), hereinafter Yamaguchi.
Regarding claim 50, Bazargan as applied to claim 48 discloses the method according to claim 48.
Bazargan fails to disclose determining a particle atomicity or number of atoms in the particle of the detected particles using the determined particle mass.
However, Yamaguchi discloses determining a particle atomicity or number of atoms in the particle of the detected particles using the determined particle mass (paragraph 0062).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bazargan to include determining a particle atomicity or number of atoms in the particle of the detected particles using the determined particle mass, based on the teachings of Yamaguchi that using the particle mass results in a highly accurate determination of the composition of the particle (Yamaguchi, paragraph 0062).
Regarding claim 57, Bazargan in view of Yamaguchi as applied to claim 50 discloses the method according to claim 50.
In addition, Yamaguchi discloses that the particle atomicity of the detected particles is determined using the determined particle mass (paragraph 0062) and the atomic mass value of the detected particles (paragraph 0042).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bazargan in view of Yamaguchi to include that the particle atomicity of the detected particles is determined using the determined particle mass and the atomic mass value of the detected particles, based on the additional teachings of Yamaguchi that using the particle mass results in a highly accurate determination of the composition of the particle (Yamaguchi, paragraph 0062).
Regarding claim 58, Bazargan in view of Yamaguchi as applied to claim 50 discloses the method according to claim 50.
In addition, Yamaguchi discloses that a particle composition distribution is determined using the atomicity of the detected particles (paragraph 0062).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bazargan in view of Yamaguchi to include that a particle composition distribution is determined using the atomicity of the detected particles, based on the additional teachings of Yamaguchi that utilizing the number of atoms, determined using the particle mass, results in a highly accurate determination of the composition of the particle (Yamaguchi, paragraph 0062).
Claims 51 and 53-55 are rejected under 35 U.S.C. 103 as being unpatentable over Bazargan as respectively applied to claims 48 and 52 above, in view of Mertler et al. (U.S. Patent Application Publication No. 2009/0199623 A1), hereinafter Mertler.
Regarding claim 51, Bazargan as applied to claim 48 discloses the method according to claim 48.
Bazargan fails to disclose that the determined geometry or shape of the detected particles is predetermined using electron microscopy.
However, Mertler discloses that the determined geometry or shape of the detected particles is predetermined using electron microscopy (paragraph 0047).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bazargan to include that the determined geometry or shape of the detected particles is predetermined using electron microscopy, based on the teachings of Mertler that this is advantageous for obtaining reference measurements or relationships according to desired applications (Mertler, paragraph 0047).
Regarding claim 53, Bazargan as applied to claim 52 discloses the method according to claim 52.
Bazargan fails to disclose that the geometrical descriptor comprises or consists of a particle edge-length.
However, Mertler discloses that the geometrical descriptor comprises or consists of a particle edge-length (paragraph 0096).
The disclosure of Mertler demonstrates that the function of a particle edge-length is known in the art of particle mass spectrometry. Mertler also shows that substituting particle edge-length for another geometrical descriptor in particle size identification yields the predictable result of accurate size determination of particles with various shapes. “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” United States v. Adams, 383 U.S. 39 (1966). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bazargan to include that the geometrical descriptor comprises or consists of a particle edge-length because it is not inventive to substitute one known element for another which yields predictable results to one of ordinary skill in the art. See MPEP 2143 I (B).
Regarding claim 54, Bazargan in view of Mertler as applied to claim 53 discloses the method according to claim 53.
In addition, Mertler discloses that the particle edge-length is defined as a center-to-center distance between two adjacent corner atoms of a particle (paragraph 0096 of Mertler discloses that, in the case of a spherical particle, the distance equivalent to the edge-length is the particle diameter; this is in accordance with the instant specification at page 12; see Claim Interpretation above).
The disclosure of Mertler demonstrates that the function of a particle edge-length is known in the art of particle mass spectrometry. Mertler also shows that substituting particle edge-length for another geometrical descriptor in particle size identification yields the predictable result of accurate size determination of particles with various shapes. “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” United States v. Adams, 383 U.S. 39 (1966). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bazargan to include that the geometrical descriptor comprises or consists of a particle edge-length because it is not inventive to substitute one known element for another which yields predictable results to one of ordinary skill in the art. See MPEP 2143 I (B).
Regarding claim 55, Bazargan in view of Mertler as applied to claim 54 discloses the method according to claim 54.
In addition, Mertler discloses that the particle size of the particles detected is determined by determining a particle edge-length of the particles detected (paragraph 0096) using the determined particle volume of the particles detected and the determined or attributed geometry or shape of the detected particles (paragraph 0034).
The disclosure of Mertler demonstrates that the function of a particle edge-length is known in the art of particle mass spectrometry. Mertler also shows that substituting particle edge-length for another geometrical descriptor in particle size identification yields the predictable result of accurate size determination of particles with various shapes. “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” United States v. Adams, 383 U.S. 39 (1966). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bazargan to include that the geometrical descriptor comprises or consists of a particle edge-length because it is not inventive to substitute one known element for another which yields predictable results to one of ordinary skill in the art. See MPEP 2143 I (B).
Claim 59 is rejected under 35 U.S.C. 103 as being unpatentable over Bazargan in view of Yamaguchi as applied to claim 58 above, and further in view of Grier et al. (U.S. Patent Application Publication No. 2011/0043607 A1), hereinafter Grier.
Regarding claim 59, Bazargan in view of Yamaguchi as applied to claim 58 discloses the method according to claim 58.
Bazargan in view of Yamaguchi fails to disclose that the particle composition distribution is used to determine the particle structure such as core-shell, homogeneously mixed and or heterostructure.
However, Grier discloses that the particle composition distribution is used to determine the particle structure such as core-shell (paragraph 0033, coated spheres), homogeneously mixed and or heterostructure.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bazargan in view of Yamaguchi to include that the particle composition distribution is used to determine the particle structure such as core-shell, homogeneously mixed and or heterostructure, based on the teachings of Grier that particle composition and structure analysis is beneficial for quality control (Grier, paragraph 0033).
Claim 66 is rejected under 35 U.S.C. 103 as being unpatentable over Bazargan as applied to claim 48 above, in view of Rosen et al. (“Exceptionally Mild Reactive Stripping of Native Ligands from Nanocrystal Surfaces by Using Meerwein’s Salt”, 2012), hereinafter Rosen.
Regarding claim 66, Bazargan as applied to claim 48 discloses the method according to claim 48.
Bazargan fails to disclose a sample or dilution preparation step comprising using an alkylating agent or weak alkylating agent to carry out surfactant stripping on a plurality of particles to be sized and counted, to remove native surfactants and replace the native surfactants with at least one inorganic counter ion.
However, Rosen discloses a sample or dilution preparation step comprising using an alkylating agent or weak alkylating agent to carry out surfactant stripping (page 684, column 2, paragraph 1) on a plurality of particles to be sized and counted, to remove native surfactants (page 687, column 2, paragraph 1) and replace the native surfactants with at least one inorganic counter ion (page 687, column 1, last paragraph).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Bazargan to include a sample or dilution preparation step comprising using an alkylating agent or weak alkylating agent to carry out surfactant stripping on a plurality of particles to be sized and counted, to remove native surfactants and replace the native surfactants with at least one inorganic counter ion, based on the teachings of Rosen that this advantageously enables activation of nanocrystal surfaces with more robust chemical treatments (Rosen, page 684, column 2, paragraph 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Newman et al. (“Improved single particle ICP-MS characterization of silver nanoparticles at environmentally relevant concentrations”, 2016), hereinafter Newman, teaches a single-particle inductively-coupled plasma mass spectrometry particle sizing and counting method, the method comprising the steps of: providing or receiving an intensity-versus-counts histogram of particles detected using an inductively-coupled plasma mass spectrometer, the intensity representing particle detection and the count representing particle detection frequency.
Mavrakis et al. (“Investigating the Uptake of Arsenate by Chlamydomonas reinhardtii Cells and its Effect on their Lipid Profile using Single Cell ICP-MS and Easy Ambient Sonic-Spray Ionization-MS”, 2019), hereinafter Mavrakis, teaches determining a particle atomicity or number of atoms in the particle of the detected particles using the determined particle mass.
Sandkuijl et al. (U.S. Patent Application Publication No. 2023/0013375 A1), hereinafter Sandkuijl, teaches determining the particle atomicity of the detected particles using the determined particle mass and the atomic mass value of the detected particles.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALINA R KALISZEWSKI whose telephone number is (703)756-5581. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm EST.
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/A.K./Examiner, Art Unit 2881 /MICHAEL J LOGIE/ Primary Examiner, Art Unit 2881
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