The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s election without traverse of Group I, claims 1-13, 19-20, in the reply filed on October 24, 2025 is acknowledged.
Claims 14-18 have been withdrawn from further consideration by the examiner because they are drawn to non-elected inventions. Claims 1-13, 19-20 are under consideration.
Priority: The instant application has a benefit date of June 27, 2024.
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.
Claim 4-11, 19 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 4 is dependent on claim 1. Claim 4 is still a product claim drawn to the nanoparticle composition. Therefore, it is not clear how claim 4 further limits the composition of claim 1, i.e. it is not clear what additional material or structural feature or element is present or achieved by the steps recited in instant claim 4. Further clarification is requested.
Claims 7-8 are dependent on claim 4 and recite wherein a component is coated with the nanoparticle composition. The claims are confusing because it is not clear if the component recited is comprised in the nanoparticle composition.
Claims 9-10, 19 are dependent on claim 1 and recite wherein a textile is comprised of at least the nanoparticle composition. The claims are still a product drawn to the nanoparticle composition, regardless of the intended use of the nanoparticle composition. Therefore, it is not clear how claims 9-10 further limit claim 1 because there is no additional material or structural feature or element present in the nanoparticle composition.
Claim 11 is dependent on claim 1 and recite additional components in the group from which the at least one protein and at least one polymer can be selected from. Claim 11 is confusing because it does not appear to further limit claim 1.
Claims 5-6 are included in this rejection because they are dependent on the above claim(s) and fail to cure its defects.
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 1-4, 7-13, 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Corgie et al. (US 20150252352). The instant claims are product-by-process claims drawn to a nanoparticle composition comprising a nanoparticle, at least one polymer, and at least one protein. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
On page 15, at least claims 1, 3-6, 9, 11, Corgie et al. teach a composition comprising a scaffold in which is incorporated self-assembled mesoporous aggregates of magnetic nanoparticles and enzymes embedded in the nanoparticles, where the enzyme is peroxidase (claims 5-6), where the enzyme is laccase (claim 9), where the scaffold is a polymeric composition (claim 11). Corgie et al. teach a composition comprising magnetic nanoparticles adsorbed to enzymes referred to as a “bionanocatalyst” or “BNC” (at least paragraphs 0032-033). Corgie et al. teach the nanoparticles or BNCs may also be coated with a noble metal, such as gold, silver (at least paragraphs 0038, 0062). Corgie et al. teach in particular embodiments, the BNCs are incorporated into a continuous macroporous scaffold (at least paragraph 0040), where the scaffold has a polymeric composition, where the polymer is selected from among others polyethylene, polyvinyl alcohol, polysaccharides, etc. (at least paragraph 0046). Corgie et al. teach in particular embodiments, the enzyme is a selected from among others laccase, peroxidase (at least paragraphs 0054, 0056-0057). Corgie et al. demonstrate that the activity and resiliency of peroxidases dramatically increased in association with gold-coated magnetic nanoparticles (at least paragraphs 0103-0107). Therefore, Corgie et al. can be deemed to teach a composition comprising a nanoparticle, at least one polymer, and at least one protein, where the nanoparticle comprises gold or silver, the at least one polymer is polyvinyl alcohol and/or polyethylene glycol, and the at least one protein is peroxidase and/or laccase, thereby anticipating instant claims 1-2.
Regarding instant claims 3-4, Corgie et al. teach in some embodiments, the noble metal coating is applied before enzyme is included with the magnetic nanoparticles, in which case enzyme is later bonded to the noble metal coating; the enzyme can be bonded to the noble metal coating by functionalizing the noble metal coating with difunctional molecules that bind to the noble metal coating and possess another reactive group for binding to the enzyme (at least paragraph 0062). Therefore, Corgie et al. can be deemed to teach conjugation of the protein or enzyme to the nanoparticle. Additionally, regarding instant claim 4, it is noted that the claim is still a product claim drawn to the nanoparticle composition. As noted above, Corgie et al. can be deemed to teach a composition comprising a nanoparticle, at least one polymer, and at least one protein, where the nanoparticle comprises gold or silver, the at least one polymer is polyvinyl alcohol and/or polyethylene glycol, and the at least one protein is peroxidase and/or laccase, where the protein is conjugated to the nanoparticle.
Regarding instant claims 7-8, it is noted that the claims are still a product claim drawn to the nanoparticle composition, regardless of the wherein clause reciting an intended use of the nanoparticle composition. Nevertheless, Corgie et al. teach contacting a lignin-containing material with the any of the BNC-scaffold structures by combining them in an aqueous solution (at least paragraphs 0076-0078); Therefore, Corgie et al. can be deemed to teach the nanoparticle composition comprising a coated component.
Regarding instant claims 9-10, 19, it is noted that the claims are still a product claim drawn to the nanoparticle composition, regardless of the wherein clause reciting an intended use of the nanoparticle composition. Therefore, since Corgie et al. teach a nanoparticle composition comprising the same components recited, i.e. a nanoparticle, protein, polymer (see above), Corgie et al. can be deemed to anticipate instant claims 9-10, 19.
Regarding instant claim 11, Corgie et al. teach in another aspect, the BNC-scaffold structure includes an oxygen-transfer enzyme such as lipase (at least paragraph 0084) and the polymer includes polysaccharides (at least paragraph 0046).
Regarding instant claims 12, 20, Corgie et al. teach in another aspect, the BNC-scaffold structure includes lactoperoxidase, which exhibits broad antifungal and antibacterial activity (at least paragraphs 0088-0089).
Regarding instant claims 13, 20, Corgie et al. teach the BNCs are incorporated into a continuous macroporous scaffold (at least paragraph 0040), the scaffold having pore sizes of 50 nm to 100 µm (at least paragraph 0042, also p. 15 claims 1, 12).
Claims 1-4, 7-10, 12-13, 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Galliker et al. (2010 Journal of Colloid and Interface Science 349: 98-105). Galliker et al. teach laccase enzymes have high stability and are versatile oxidative enzymes that are used in a wide range of industrial processes in various fields including food, paper, textile, cosmetic industries, environmental applications such as treating contaminated effluents, etc. (at least p. 98). Galliker et al. teach a composition comprising silica nanoparticles, 3-amino-propyl-triethoxyl-silane (APTES), and a laccase, where the enzyme is conjugated to the nanoparticle (at least p. 98-101). Therefore, Galliker et al. can be deemed to anticipate instant claims 1-3.
Regarding instant claims 4, 7-10, 19, it is noted that the claims are still a product claim drawn to the nanoparticle composition, regardless of the wherein clauses reciting an intended use of the nanoparticle composition. Therefore, since Galliker et al. teach a nanoparticle composition comprising the same components recited, i.e. a silica nanoparticle, laccase enzyme, polymer (see above), Galliker et al. can be deemed to anticipate instant claims 4, 7-10, 19.
Regarding instant claims 12-13, 20, as noted above, Galliker et al. teach a nanoparticle composition comprising silica nanoparticles, laccase enzymes, polymer. Since Galliker et al. teach laccase has a wider range of industrial processes uses, including treating contaminated material, Galliker et al. can be deemed tot each that the nanoparticle composition comprises antimicrobial properties (instant claims 12, 20). Additionally, Galliker et al. teach aggregates of the silica nanoparticles, where it would be expected that the silica nanoparticles in the nanoparticle composition of Galliker et al. will form together and reasonable form pores between the nanoparticles in the nanoparticle composition (instant claim 13).
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.
Claims 1, 4, 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Corgie et al. (US 20150252352) or Galliker et al. (2010 Journal of Colloid and Interface Science 349: 98-105) in view of Gonzalez-Ortiz et al. (2020 Materials Today Advances 8:100107, 20 pages). The teachings of Corgie et al. or Galliker et al. over at least instant claims 1, 4 are noted above.
Regarding instant claims 5-6, Gonzalez-Ortiz et al. disclose that among nanostructured materials, the interest for boron nitride (BN) – based materials has progressively increased because of their high chemical stability, mechanical strength, resistance to oxidation, etc. (at least p. 1-2). Gonzalez et al. disclose BN as a functional material for nanostructures and/or nanoparticles (at least p. 3-4, 13-14), including gold nanoparticles (at least p. 16-17) and silica (at least p. 3, 7, 13). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further incorporate boron nitride as a functional material with the nanoparticle in the nanoparticle composition comprising a nanoparticle, laccase enzyme, polymer, of Corgie et al. or Galliker et al. noted above. The motivation to do so is given by the prior art, which disclose BN based materials are used to fabricate nanostructures, including nanoparticles. One of ordinary skill would have a reasonable expectation of success because BN is a recognized material for producing nanostructures.
No claim is allowed.
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/Marsha Tsay/Primary Examiner, Art Unit 1656