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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 17 April 2026 has been entered.
Response to Amendment
Upon entry of the amendment filed on 17 April 2026, Claim(s) 1 and 2 is/are amended; Claim(s) 13-26 is/are withdrawn; and Claim(s) 3 is/are cancelled. The currently pending claims are Claims 1-2 and 4-26.
Based on applicants’ remarks and amendments (see the fibroin component), the 102 and 103 rejections are withdrawn. However, new grounds of rejections are provided necessitated by the amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The originally filed specification does not seem provide a proper description of the composition having both the fibroin and the polyglutamic acid components.
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 and 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fei "Green Synthesis of Silk Fibroin-Silver Nanoparticle Composites with Effective Antibacterial and Biofilm-Disrupting Properties." Biomacromolecules 2013, 14, 4483-4488.
Claims 1 and 6: Fei discloses a composition with silver nanoparticles surface coated with silk fibroin (abs & Figure with accompanying text). It is noted that the nitrogen bonding is expected since the Fei discloses the same composition with the same fibroin-silver nanoparticles. Applicant is welcome to provide evidence that the claimed bonding would be absent. Regarding the conductivity property, if a prior art reference teaches the substantially identical material, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Claims 7 and 8: Fei discloses the claimed diameter values such as 5 nm (Fig 2 with accompanying text).
Claim(s) 1 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Qi (NPL previously cited).
Claims 1 and 6: Qi discloses a conductive composition with silver nanowires bonded to silk fibroins (abs, Fig 1 with accompanying text, pp. 50880-80881). It is noted that the nitrogen bonding is expected since the Fei discloses the same composition with the same fibroin-silver nanoparticles. Applicant is welcome to provide evidence that the claimed bonding would be absent.
Claims 7 and 8: Qi discloses the claimed diameter range (based on a visual inspection of Fig 1).
Claim 9: Qi discloses the aqueous medium (pp. 50880).
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) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fei or Qi.
The Fei or Qi reference discloses the claimed invention but does not explicitly disclose the claimed polypeptide mass content range and diameter range. It is noted that the claimed fibroin 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, Fei or Qi discloses tuning the loading concentration (experimental and example sections). Given that the Fei or Qi 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.
Claim(s) 1, 2 and 4-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US-20030114568-A1).
Claims 1 and 2: Sato discloses a conductive metal-polymer hybrid with a polymer such as fibroin and polyglutamic acid (abs, Fig 1 with accompanying text, ¶7, 46-55, 65-75 and examples). The Sato reference discloses the claimed invention with fibroin and polyglutamic acid but does not disclose the composition with the fibroin and polyglutamic acid elements with enough specificity to anticipate the claimed invention. Nevertheless, given that the Sato 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 Sato 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 conductivity 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 fibroin and the 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 Sato discloses the same composite with the same polyglutamic acid/fibroin to metal nanoparticles. Applicant is welcome to provide evidence that the claimed bonding would be absent.
Claims 4 and 5: The Sato reference discloses the claimed invention but does not explicitly disclose the claimed fibroin mass content range. It is noted that the claimed fibroin 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, Sato discloses tuning the loading concentration (examples). Given that the Sato 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 fibroin, 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 fibroin 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: Sato discloses various metal nanoparticles such as Ag and Au having a size of nanometer range, the aqueous medium and the additional resins (abs, ¶41-55, Figs 2 and 16 with accompanying text and examples).
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) in view of Qi
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 being fibroin. In an analogous art, the Qi reference , the Qi reference discloses that fibroin bonded to metal nanoparticles is well known in the art to provide enhanced stability, sensitivity, conductivity, flexibility and/or dispersion (see above). One of ordinary skill in the art would have recognized that applying the known technique of Qi to the teachings of Enomoto would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhanced stability, sensitivity, conductivity, flexibility and/or dispersion. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution would be repugnant to a skilled artisan.
Claims 4 and 5: The Enomoto and Qi reference discloses the claimed invention but do 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 and Qi disclose tuning the loading concentration (examples). Given that the Enomoto and Qi references disclose 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 and Qi disclose the gold nanoparticles having a size of 1-100 nm, the aqueous medium and the additional resin such as PVA, polystyrene and/or polyimide (Enomoto: abs, ¶32, 70-74, 93, 98-117, 137 and examples and Qi: see above).
Response to Arguments
Applicant’s arguments, see pp. 6-8, filed 04/17/2026, with respect to Zhou and Enomoto have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant’s arguments with respect to claim(s) 1-2 and 4-12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. In particular, it is noted that the Qi reference is relied upon to teach the fibroin component in the combination with Enomoto.
Conclusion
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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