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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-20, drawn to a method for synthesizing metallic glass nanoparticles, classified in CPC B01J 37/088.
II. Claim 21, drawn to a composition comprising metallic glass nanoparticles, classified in CPC B01J 35/45.
III. Claims 22-30, drawn to a method comprising using the composition of claim 21 as a catalyst, classified in CPC H01M 4/90.
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product can be made by first melting an alloy, rather than decomposing metal salts.
Inventions I and III are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have different designs, modes, of operation, functions, and effects, with Invention I producing nanoparticles and Invention III performing a chemical reaction using a catalyst. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions II and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product as claimed can be used for plasmonic imaging.
During a telephone conversation with Ross Garsson on October 26th, 2026, a provisional election was made without traverse to prosecute the invention of Invention I, claims 1-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 21-30 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to non-elected inventions.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
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 1-15 and 18-20 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.
The term “rapidly cooling” in claim 1 is a relative term which renders the claim indefinite. The term “rapidly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree of cooling rate, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While the instant Specification at Paragraph [0027] states, “The rapidly cooling can be performed at an ultrafast rate of cooling of at least 102 K/s,” this does not provide a lower bound for what constitutes ‘rapidly cooling’. To demonstrate, instant claim 16 recites that “the rapidly cooling is performed at an ultrafast rate of cooling of at least 102 K/s”. Since this claim further limits claim 1, there must necessarily be cooling rates that are lower than 102 K/s but are nonetheless classified as “rapidly cooling”, but there is no way to assess these rates. For assessing the scope and meaning of the claim for prior art purposes, any cooling that is sufficiently rapid to prepare the metallic glass nanoparticles as claimed will be interpreted to read on “rapidly cooling”, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Claims 2-15 and 18-20 are indefinite due to their dependence on the indefinite claim 1 and because they do not cure the indefiniteness of “rapidly cooling” as it is recited therein. Claims 16-17 are not indefinite because claim 16 cures the indefiniteness of “rapidly cooling” by reciting a cooling rate.
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 1-3, 6-9, 11, 14, 16, 17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hu (WO 2022/204168 A1).
Regarding claim 1, Hu teaches a method for synthesizing metallic glass nanoparticles (Hu, Page 16, lines 4-19), wherein the method comprises:
mixing a metal precursor (Hu, Page 16, line 7, individual metal salts) with a material comprising carbon (Hu, Page 16, lines 9-11, “The homogenously mixed precursor solution was then loaded onto carbon substrates (e.g. reduced graphene oxide).”);
performing a flash Joule heating process using the material mixed with the metal precursor (Hu, Page 16, lines 13-14, “Thermal shock synthesis was triggered by electric Joule heating in an inert gas environment”), wherein the metal precursors are decomposed and fused into alloy melts (Hu, Page 10, lines 20-21, “In some embodiments, the high temperature can be sufficient to melt all of the constituent elements and/or induce high temperature uniform mixing.”; Page 16, lines 20-22 state that the process produces metallic glass nanoparticles, which, by virtue of metal salts being the “precursors”, entails decomposition of the precursors); and
rapidly cooling the alloy melts to vitrify the alloy melts into the metallic glass nanoparticles (Hu, Page 16, lines 18-19, “The cooling rate was estimated to be ~5.1-6.9x104 K/s, which can make metallic glasses.”).
Regarding claim 2, Hu teaches the method of claim 1, as discussed above, wherein the method comprises a kinetically controlled synthesis of the metallic glass nanoparticles (Hu, Page 7, lines 30-32, “The rapid quenching can be fast enough to avoid crystallization (or at least minimize large scale crystallization) during solidification of the component elements.”).
Regarding claim 3, Hu teaches the method of claim 1, as discussed above, wherein the step of mixing comprises dissolving the metal precursor in a solvent to form a solution and wetting the material comprising the carbon with the solution (Hu, Page 16, lines 7-11, “Individual metal salts (e.g., chlorides or their hydrate forms) were dissolved in ethanol at a
concentration of 0.05 mol/L. After completely dissolving with hydrochloric acid, the individual salt precursor solutions with different cations were mixed and sonicated for 30 minutes. The homogenously mixed precursor solution was then loaded onto carbon substrates (e.g., reduced graphene oxide).”).
Regarding claim 6, Hu teaches the method of claim 3, as discussed above, wherein the step of wetting comprises impregnating the metal precursor on the material comprising the carbon (Hu, Page 16, lines 9-11, “The homogenously mixed precursor solution was then loaded onto carbon substrates (e.g., reduced graphene oxide).”).
Regarding claim 7, Hu teaches the method of claim 3, as discussed above, wherein the solvent is alcohol (Hu, Page 16, lines 7-8, “Individual metal salts (e.g., chlorides or their hydrate forms) were dissolved in ethanol at a concentration of 0.05 mol/L.”).
Regarding claim 8, Hu teaches the method of claim 3, as discussed above, wherein the solvent comprises ethanol (Hu, Page 16, lines 7-8, “Individual metal salts (e.g., chlorides or their hydrate forms) were dissolved in ethanol at a concentration of 0.05 mol/L.”).
Regarding claim 9, Hu teaches the method of claim 1, as discussed above, wherein the carbon in the material serves as a conductive additive and a supporting substrate in the flash Joule heating process (Hu, Fig. 3A, Page 11, lines 19-22, “In some embodiments, the thermal shock profile for forming a metallic glass material can be provided by a Joule heating element in conductive thermal communication with the precursors. For example, FIG. 3A illustrates an exemplary fabrication configuration 300 where a substrate 302 (e.g., carbon-based substrate) is used as a Joule heating element.”).
Regarding claim 11, Hu teaches the method of claim 1, as discussed above, wherein the metallic glass nanoparticles and Pd- and Pt-based metallic glass nanoparticles (Hu, Page 8, line 15, (PdPt)40(CuZn)30(FeCoNi)10P20 nanoparticle).
Regarding claim 14, Hu teaches the method of claim 1, as discussed above, wherein the flash Joule heating process comprises providing millisecond current pulses through the metal precursor at a heating rate of at least 103 K/s (Hu, Page 10, lines 23-26; Page 16, lines 17-18, 55 millisecond pulses).
Regarding claim 16, Hu teaches the method of claim 1, as discussed above, wherein the rapidly cooling is performed at an ultrafast rate of cooling of ~5.1-6.9x104 K/s (Hu, Page 16, lines 18-19).
Regarding claim 17, Hu teaches the method of claim 16, as discussed above, wherein the ultrafast rate of cooling is by thermal radiation (Hu, Page 16, lines 11-13, “Each sample (e.g., substrate with mixed precursors thereon) was suspended on a trench and connected with copper electrodes by silver paste for both heating and effective cooling as a giant heat sink.” As the silver paste-connected copper electrodes act as heat sinks, the sample necessarily radiates heat into them.).
Regarding claim 19, Hu teaches the method of claim 1, as discussed above, wherein the metal precursor comprises a metal salt (Hu, Page 16, lines 7-8, “Individual metal salts (e.g., chlorides or their hydrate forms) were dissolved in ethanol at a concentration of 0.05 mol/L.”).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hu (WO 2022/204168 A1), as applied to claim 1 above.
Regarding claim 4, Hu teaches the method of claim 1, as discussed above, but does not explicitly teach that a phosphorus source is dissolved in the solvent when forming the solution. Hu only provides direction for precursors of the metal components of the alloy (Hu, Page 9, lines 24-26, “In some embodiments, the precursors can include metal salts in solution (e.g., chloride or hydrate forms in ethanol.”). Hu does not classify phosphorus as a metal (Hu, Page 8, Table 1, “Reactive Non-metal”), so there is no direction for providing the phosphorus precursor for the (PdPt)40(CuZn)30(FeCoNi)10P20 nanoparticle discussed on Page 8, line 15. Nonetheless, it would be necessary to provide a phosphorus source when forming the precursor solution in the preparation of a nanoparticle having the above composition, and it would correspondingly be obvious to do so.
Regarding claim 15, Hu teaches the method of claim 1, as discussed above. In the embodiment of Hu relied upon in the rejection of claim 1 under 35 U.S.C. 102(a)(1) above, the Joule heating process raises the temperature of the metal precursors to 1763 K (Hu, Fig. 10, Page 16, lines 17-18), which differs from the claimed range of at least 1800 K. However, Hu teaches generally that a temperature range of ~2000 K or greater is suitable (Hu, Page 10, lines 17-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the temperatures because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claims 5 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hu (WO 2022/204168 A1), as applied to claim 1 above, and further in view of Zhao (“Fabrication of Pd-Ni-P metallic glass nanoparticles and their application as highly durable catalysts in methanol electro-oxidation”, 2013).
Regarding claim 5, Hu renders the method of claim 4 obvious, as discussed above, but does not explicitly teach that the phosphorus source is PPh3. However, Zhao teaches that PPh3 is a suitable phosphorus source in the preparation of metallic glass nanoparticles (Zhao, Page 1057, Col. 1, Paragraph 1 and Col. 2, Paragraph 2, TPP is triphenylphosphine, or PPh3).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected PPh3 as the phosphorus source in Hu’s method. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, Hu does not explicitly teach a phosphorus source, whereas Zhao teaches that PPh3 serves as a phosphorus source for preparing Pd-Ni-P metallic glass nanoparticles (Zhao, Page 1057, Col. 1, Paragraph 1 and Col. 2, Paragraph 2), so it would be obvious to use PPh3 for this purpose in Hu’s method.
Regarding claims 12 and 13, Hu teaches the method of claim 1, as discussed above, wherein the metallic glass nanoparticles comprise Co, Ni, Ru, Rh, Pd, Ag, Ir, Pt, Zr, Cu, Fe, Al, Mg, Ti, Zn, P, or any combination of the foregoing (Hu, Page 8, lines 11-13). Zhao teaches that PdNiP metallic glass nanoparticles specifically function as methanol electro-oxidation catalysts (Zhao, Abstract). PdNiP is recited in claim 12, and results from selecting Pd as M1 and Ni as M2 in claim 13.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected, from among Hu’s list of possible components, a PdNiP alloy, as Zhao teaches that PdNiP metallic glass nanoparticles function as methanol electro-oxidation catalysts (Zhao, Abstract). A person having ordinary skill in the art would have both a reasonable expectation of success of preparing this material based on Hu’s disclosure and a motivation to do so based on Zhao’s teachings toward its catalytic activity in fuel cell applications.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hu (WO 2022/204168 A1), as applied to claim 1 above, and further in view of Li (“Synthesizing carbon-supported, high-loading, ultra-small Pt3Ni nanoparticles via tuning the surface electrostatic effect”, 2022).
Regarding claim 10, Hu teaches the method of claim 1, as discussed above, but does not explicitly teach that the material comprises carbon black. However, Hu teaches generally that the material is a carbon-based substrate (Hu, Page 9, lines 14-15, “In some embodiments, the provision of process block 102 can include fabrication of the carbon-based substrate from a starting material.”). Li teaches that carbon black is a suitable carbon-based substrate for producing Pt3Ni nanoparticles by thermal shock of metal salt precursors (Li, Abstract).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected carbon black as the material (i.e., the substrate) in Hu’s method. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, with Hu’s general teaching toward carbon-based substrates (Hu, Page 9, lines 14-15), and Li’s specific teaching that carbon black is a suitable carbon-based substrate for a similar reaction (Li, Abstract), it would be an obvious choice to select carbon black in Hu’s method.
Claims 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hu (WO 2022/204168 A1), as applied to claim 1 above, and further in view of ‘551 (U.S. 2022/0288551 A1).
Regarding claims 18 and 20, Hu teaches the method of claims 1 and 19, respectively, as discussed above, wherein the metal precursor is a Pd chloride or hydrate (Hu, Page 8, line 15, (PdPt)40(CuZn)30(FeCoNi)10P20 nanoparticle; Page 16, lines 7-8, “Individual metal salts (e.g., chlorides or their hydrate forms) were dissolved in ethanol at a concentration of 0.05 mol/L.” Therefore, Pd chloride or hydrate is a metal precursor in Hu’s method). ‘551 teaches that PdCl2 is a suitable palladium chloride to serve as a metal salt precursor loaded onto carbon nanofibers in a thermal shock synthesis of palladium alloy nanomaterials (‘551, [0132]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected PdCl2 as the Pd metal precursor in Hu’s method. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, PdCl2 was known to be suitable as a precursor in a similar process to that of Hu (‘551, [0132]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3590. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
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