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 .
Response to Amendment
Upon entry of the reply filed on 15 December 2025, Claim(s) 13-26 is/are withdrawn. The currently pending claims are Claims 1-2 and 4-26.
Based on applicants’ remarks (e.g. the specific polypeptide), the rejections based on the Yan or Xu reference are withdrawn. However, they are not found persuasive regarding the Zhou or Enomoto reference and the rejections are maintained.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2, 6 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou (US2013/0171363A, cited in the IDS).
Claims 1, 2 and 6: Zhou discloses a composite with silver nanoparticles surface coated with polyglutamic acid (abs, 17, 20, 64 et seq., examples – especially Table 4 with accompanying text). It is noted that the nitrogen bonding is expected since the Zhou discloses the same composite with the same polyglutamic acid-silver np synthesized via a similar process. Applicant is welcome to provide evidence that the claimed bonding would be absent.
Claim 9: Zhou discloses the water medium (¶24 and examples).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2, 4-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enomoto (US2019/0367694A1, cited in the IDS).
Claims 1 and 2: Enomoto discloses a metal-resin composite with the resin such as polypeptide/polyglutamic acid on the surface of the metal (abs, Fig 1 with accompanying text, ¶70-74, 93, 98-117 and 137). The Enomoto reference discloses the claimed invention with the feature of the polypeptide/polyglutamic acid but does not disclose the composition with the polypeptide/polyglutamic acid element with enough specificity to anticipate the claimed invention. Nevertheless, given that the Enomoto reference discloses the component of the polypeptide/polyglutamic acid is known in the art, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught resin component since the Enomoto reference teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success with the benefit gain of modulating and tuning the durability, stability and sensitivity of the composition. It is also noted that the fact that many components are disclosed would not have made any of them, such as the polypeptide/polyglutamic acid, less obvious. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 841 (CCPA 1964). It is noted that the nitrogen bonding is expected since the Enomoto discloses the same composite with the same polyglutamic acid-metal np synthesized via a similar process. Applicant is welcome to provide evidence that the claimed bonding would be absent.
Claims 4 and 5: The Enomoto reference discloses the claimed invention but does not explicitly disclose the claimed polypeptide mass content range. It is noted that the claimed polypeptide mass content range is construed as a result-effective variable, i.e., a variable which achieves a recognized result such as the stabilization level, aggregation prevention and/or size regulation. In particular, Enomoto discloses tuning the loading concentration (examples). Given that the Enomoto reference discloses a similar composition and is motivated to optimize the loading amounts/grafting levels, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the amount of the polypeptide, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. the polypeptide level, since the reference also discloses a similar end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claims 6-12: Enomoto discloses the gold nanoparticles having a size of 1-100 nm, the aqueous medium and the additional resin such as PVA, polystyrene and/or polyimide (abs, ¶32, 70-74, 93, 98-117, 137 and examples).
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou.
The Zhou reference discloses the claimed invention but does not explicitly disclose the claimed polypeptide mass content range. It is noted that the claimed polypeptide mass content range is construed as a result-effective variable, i.e., a variable which achieves a recognized result such as the stabilization level, aggregation prevention and/or size regulation. In particular, Zhou discloses tuning the loading concentration (Zhou: ¶19-22 and examples). Given that the Zhou reference discloses a similar composition and is motivated to optimize the loading amounts/grafting levels, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the amount of the polypeptide, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. the polypeptide level, since the reference also discloses a similar end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components/steps would be repugnant to a skilled artisan.
Response to Arguments
Applicant’s arguments, see pg. 2-5, filed 15 December 2025, with respect to the Yan or Xu reference have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant's arguments filed 15 December 2025 regarding the Zhou or Enomoto reference have been fully considered but they are not persuasive.
Applicant argues that Zhou or Enomoto does not disclose the claimed nitrogen to metal particle bonding since the synthetic route is performed at around room temperature which would not lead to the claimed bonding configuration based on applicant’s specification (pg. 6-8).
The examiner respectfully disagrees and notes that applicant’s specification does not seem to specifically indicate the lack of nitrogen to metal particle bonding (the quoted section does not provide any evidence that the synthetic route of Zhou or Enomoto with the disclosed experimental conditions would invariably lead to the absence of the claimed bond limitation). In particular, it is noted that Zhou discloses the adsorption of the polypeptide onto the metal particle via the nitrogen atom (¶14) and Enomoto discloses the nitrogen of the polypeptide attached to the metal particle (¶69-75, 105 and 109) – thus meeting the claimed nitrogen to metal particle bond limitation under BRI. Applicant is welcome to provide any experimental evidence that the specific synthetic route of Zhou or Enomoto would not achieve the claimed bond.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764