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 Group I, claims 34-44 and the following species of Group I:
Furthermore, the Applicant hereby elects in the species selection, with respect to step (a) of claim 34, ammonium hydroxide; (b) of claim 34, detecting the released tracer; with respect to claim 35, hours and temperature; with respect to claim 37, prong (ii); with respect to claim 39, the tracer is complexed to the nanoparticle ionically; with respect to claim 40, a silica nanoparticle (SNP): and, with respect to claim 41, the average minimum diameter of the tracer-nanoparticle core,
in the reply filed on 11/12/2025 is acknowledged.
The traversal is on the ground(s) that Applicant respectfully submits that these claims share a single unifying general inventive concept. This is not found persuasive because examination is not limited to search. In addition to the search, much of the examination is devoted to determining patentability of claims. Said determination requires the formulation of rejection and responding to applicant’s arguments with regard to the same. The additional search and the determination of patentability for multiple, patentability distinct species would place serious burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
The drawings are objected to because Figs 2-6 are difficult to see and understand, mainly when they are reduced to print. 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
Claim 37 is objected to because of the following informalities: The limitation CRISPR-based detection should have the CRISPR spelled out. 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 35 recites the broad recitation at least 72 hours, and the claim also recites at least 3, 3.5, 4, 4.5, 5, 6, 7, 8, 9, 10, 11, 12, 24, 36, 48, 60 hours which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 35 also recites the broad recitation at least 70°C., and the claim also recites at least 45, 50, 55, 60, 65°C which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 35 is 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 35 recites “at least 3, 3.5, 4, 4.5, 5, 6, 7, 8, 9, 10, 11, 12, 24, 36, 48, 60, or 72 hours; …… at least 45, 50, 55, 60, 65, or 70°C. These are ranges with unbounded upper limits, and as such, it is unclear as to the extent of hours and temperature Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 41 recites the broad recitation at least 500 nm, and the claim also recites at least at least 1, 25, 50, 75, 100, 125, 150, 175, 200, 250, 300, 350, 400, 450 nm which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 41 is 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 41 recites “at least 1, 25, 50, 75, 100, 125, 150, 175, 200, 250, 300, 350, 400, 450, or 500 nm. These are ranges with unbounded upper limits, and as such, it is unclear as to the extent of size Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Regarding claim 42, 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).
Claim 43 recites the limitation "the use" in line 2. There is insufficient antecedent basis for this limitation in the claim.
The term “highly” in claim 43 is a relative term which renders the claim indefinite. The term “highly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “rapid” in claim 44 is a relative term which renders the claim indefinite. The term “rapid” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 102
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.
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.
Claims 34-35, and 37-44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blair et al. (US 2015/0322776 A1) (“Blair" herein)
(Claims contain only selected species)
Claim 34
Blair discloses a method for recovering a tracer encapsulated in a silica outer shell, said method comprising: [0003]
(a) contacting the silica outer shell with an etching solution comprising ammonium hydroxide as an etching agent at a sufficient concentration and for a sufficient time to enable release of the tracer into solution; [0122 ,0126-0130], and
(b) detecting the released tracer. [0052-0056, 0093, 0109]
Since Blair discloses the same tracer encapsulated in a silica outer shell with ammonium hydroxide, it would be an etching solution at sufficient concentration that would enable release of the tracer into solution.
"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 disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 35.
Blair discloses the method of claim 34, wherein the silica outer shell is contacted with the etching solution for at least 3, 3.5, 4, 4.5, 5, 6, 7, 8, 9, 10, 11, 12, 24, 36, 48, 60, or 72 hours; and at a temperature of at least 45, 50, 55, 60, 65, or 70°C. [0122-0123]
Claim 37
Blair discloses the method of claim 34, wherein:
(ii) the tracer is or comprises a polynucleotide or polynucleotide analog capable of Watson-Crick base pairing, and the detecting comprises amplification, hybridization, sequencing, CRISPR-based detection, or any combination thereof. [0003, 0052-0053, 0072-0078]
Claim 38
Blair discloses the method of claim 34, wherein the tracer is complexed with a nanoparticle to form a tracer-nanoparticle core, which is encapsulated in the silica outer shell. [0016, 0109]
Claim 39.
Blair discloses the method of claim 38, wherein the tracer is complexed to the nanoparticle ionically. [0016-0017, 0092]
Claim 40
Blair discloses the method of claim 38, wherein the nanoparticle comprises or consists of a silica nanoparticle (SNP). [0098, 0109]
Claim 41
Blair discloses the method of claim 38, wherein the nanoparticle, or the tracer-nanoparticle core encapsulated in the silica outer shell, has an average minimum diameter of at least 1, 25, 50, 75, 100, 125, 150, 175, 200, 250, 300, 350, 400, 450, or 500 nm. [0081, 0083]
Claim 42
Blair discloses the method of claim 34, wherein the tracer encapsulated in the silica outer shell is from a fluid sample, such as a fracture fluid sample. [0093,0095]
Claim 43
Blair discloses the method of claim 34, wherein the etching of the silica outer shell is carried out without the use of hydrofluoric acid or other highly corrosive acid. [0095]
Claim 44
Blair discloses the method of claim 34, wherein the tracer is detected via a lateral flow or other suitable rapid point-of-use test. [0052-0053, 0093, 0095]
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Grass et al. (US 2018/0119220 A1) PARTICULATE DISTRIBUTED SENSING ELEMENTS teaches The present invention relates to core-shell particles comprising encapsulated nucleic acids—a sensing sequence and a control sequence; the invention further relates to the use of such particles as a sensing element; to methods for measuring a property of interest in a setting employing such particles; to measuring systems and analytical kits comprising such particles, Claussen et al. (US 2020/0368117 A1) MICROCAPSULE WITH A POROUS OR HOLLOW CORE AND PH-SENSITIVE SHELL AND USE THEREOF teaches The invention relates to a microcapsule comprising a hollow or porous core, the hollow or porous core being composed of a polymeric material and containing a component of a redox-initiator system, a shell, the shell being composed of a pH-sensitive material. The microcapsule can be used for formulating dental materials, and Mohanty et al. (US 2022/0017815) TRACER ELUTING PROPPANTS FOR HYDRAULIC FRACTURING teaches Described are tracer eluting proppants, such as proppants that have polymeric coatings on them that include tracers, such as a fluorescent dye. The tracer eluting proppants can comprise proppant particles coated with a polymeric coating that can elute tracer under some, but not all conditions. For example, the tracer can be eluted at elevated temperature, pH, and/or salinity conditions, but not elute at lower temperature, pH, and/or salinity conditions. Methods of making and using tracer eluting proppants are also disclosed, including methods for characterizing subterranean reservoirs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 12/08/2025
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