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 without traverse of claims 1-15 in the reply filed on 5/8/2026 is acknowledged. Applicant has cancelled claim 16-21 in an amendment filed with the election.
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 11 and 14 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 11 recites the limitation "the slurry" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the third step" in line 2. There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 is directed to an intended use of a method of manufacturing a metal nanostructure according to claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-2, 7-8, 10-13, and 15 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al (US 2017/0304805).
Xu teaches a method for making colloidal precious metals nanoparticles with controlled size and morphology, the method comprising preparing a solution of precious group metal precursor selected from salts of Pt, Pd, Au, Ag, Ru, Rh, Ir, Os and alloys in the presence of a dispersion medium and a water-soluble polymer suspension stabilizing agent; combining the solution with a reducing agent to provide a precious group metal nanoparticle dispersion (see [0011], [0054-0056]).
Xu further teaches where the dispersion medium is selected from a group including water and glycerol among other solvents (See [0037]).
Xu further teaches where the reducing agent is selected from a group including oxalic acid among other reducing agents (see [0041]).
Xu does not specifically teach the specific combination of glycerol and oxalic acid. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method for forming metal nanoparticles as taught by Xu where the reducing agent is any combination of the taught reducing agents including glycerol and oxalic acid since Lu suggests that the combination would form the metal nanoparticles.
Regarding claim 2, Xu teaches a method where the reducing agent is present to convert at least about 90% of the PGM precursor (See [0063]). One of ordinary skill in the art would recognize that Xu therefore teaches that the molar ratio of salt to reducing agent is therefore 1:0.9 or greater. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Lu where the molar ratio of metal ion to the oxalic acid reducing agent is in any range overlapping with 1:0.9 or greater as taught by Xu including the claimed range.
Regarding claim 7, Xu teaches a method where mixture is heated to a temperature ranging up to 200°C (see [0058]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Xu where the reaction is in any workable or optimum range overlapping with up to 200°C including the claimed range.
Regarding claim 8, as applied above Xu teaches a method where a reducing agent is added after preparation of a solution comprising the dispersion medium and precursor. However, Xu does not specifically teach a method where glycerol is formed in an aqueous solution in a first step, reacting the aqueous glycerol solution with the aqueous metal salt solution in a second step, and reacting the reaction product of the second step with aqueous oxalic acid solution. However, it has been held that selection of any order of mixing ingredients is prima facie obvious. See MPEP 2144.04.IV.C. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Xu where the water, metal salt, glycerol, and oxalic acid are combined in any order including the claimed order as an obvious selection of mixing ingredients.
Regarding claim 10, Xu teaches a method where metal nanoparticle concentrations are 2 wt% to 80 wt% of the colloidal dispersion (See [0033]). One of ordinary skill in the art would recognize that the concentration of the metal salt in the reaction to correlate to the wt% of the nanoparticles in the dispersion. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Xu where the salt solution to water ratio is in any workable or optimum range overlapping with 2:98 to 80:20 wt% including the claimed range.
Regarding claim 11, Xu teaches a method where mixture is heated to a temperature ranging up to 200°C (see [0058]). Xu further teaches a process comprising reacting wherein the reaction is performed for a period of at least about 30 minutes (i.e., comprising an aging time of at least about 30 minutes) (see Col 4, Ln 23-28). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method steps in any temperature and duration overlapping with the ranges as taught by Xu including the claimed ranges.
Regarding claim 12, Xu further teaches examples where the reducing agent is a 1M ascorbic acid solution (i.e., where assuming the density is approximately equal to water then the ratio of reducing agent to water is about 15:100) (see Examples). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Xu where the reducing agent is in a ratio to water of 15:100 as taught by Xu.
Regarding claim 13, Xu teaches a method where mixture is heated to a temperature ranging up to 200°C (see [0058]). Xu further teaches a process comprising reacting wherein the reaction is performed for a period of at least about 30 minutes (i.e., comprising an aging time of at least about 30 minutes) (see Col 4, Ln 23-28). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method steps in any temperature and duration overlapping with the ranges as taught by Xu including the claimed ranges.
Regarding claim 15, the claim limitation is directed to a use of metal nanostructure and is not further limiting to a method of manufacturing a metal nanostructure. However, Xu teaches a method where supported catalysts are prepared by dispersing a colloidal dispersion of the metal nanoparticles on a metal oxide or carbon support (see [0077]).
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu as applied to claim 1 and in further view of Chemzipper (https://www.chemzipper.com/2020/01/what-are-different-products-obtained.html published on 1/14/2020).
As applied to claim 1, Xu teaches a method for a metal nanostructure comprising reacting an aqueous precursor solution including a metal salt, glycerol, and oxalic acid.
Regarding claims 3-4, Xu does not specifically teach that the mixture comprises formic acid.
Chemzipper teaches that when glycerol is heated with oxalic acid at 100-110°C, formic acid is produced from the oxalic acid. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Xu where the temperature of the reaction is in any range overlapping with up to 200°C (see [0058]) including a temperature of 100-110°C since Xu teaches the temperature is suitable for the reaction. One of ordinary skill in the art would reasonably expect the reaction to also produce formic acid from the oxalic acid since Chemzipper teaches that formic acid forms from oxalic acid in the presence of glycerol.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu as applied to claim 1 and in further view of JP-3740528.
As applied to claim 1, Xu teaches a method for a metal nanostructure comprising reacting an aqueous precursor solution including a metal salt, glycerol, and oxalic acid.
Regarding claim 5, Xu does not specifically teach a viscosity of the aqueous precursor solution is 10 cP to 1000 cP or less.
JP-3740528 teaches a method for producing metal fine particles having a particle size of nanometer order from reacting a solution containing soluble metal compound and reducing agent and heating (see [0001], [0008], [0021-0022]). JP-3740528 teaches that as viscosity of the solution increases, the reaction becomes non-uniform preventing the smooth formation of fine particles (see [0024]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a process as taught by Xu where the viscosity of the reaction mixture is in any workable or optimum range including the claims range since JP-3740528 teaches that viscosity of reaction mixtures for producing metal nanoparticles by reacting soluble metal compound and reducing agent is a results effective variable on the uniformity of the metal nanoparticles produced.
Claim(s) 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Xu as applied to claim 1 or 8 and in further view of Munir et al (“Novel Size-Tunable and Straightforward Ultra-Small Nanoparticle Synthesis in a Varying concentration Range of Glycerol as a Green Reducing Solvent”, ACS Omega, (2023), 8, 28456-28466).
As applied to claim 1, Xu teaches a method for a metal nanostructure comprising reacting an aqueous precursor solution including a metal salt, glycerol, and oxalic acid.
As applied to claim 8, Xu further suggests a method where there is a first step of preparing a glycerol aqueous solution and second step of reacting with an aqueous metal salt solution, and a third step of reacting with an aqueous oxalic acid solution.
Regarding claim 6, Xu does not teach a content of water is 10 wt% to 99 wt% based on 100% of the aqueous precursor solution.
Munir teaches a method of synthesizing metal nanoparticles using glycerol with water as a green reducing solvent in varying concentrations 10-100% (i.e. water wt% is 0 to 90 wt%. Munir teaches that the concentration of glycerol from 10-100% (i.e., where the concentration of water from 0 to 90 wt%) is a results effective variable on the particle size (see Table 1). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the process as taught by Xu and Munir where the concentration of water in the precursor solution is in any workable or optimum range overlapping with Munir including the claimed range to produce a desired metal nanoparticle size.
Regarding claim 9, Xu does not teach an aqueous glycerol solution includes glycerol and water in a weight ratio of 10:90 to 80:20.
Munir teaches that the concentration of glycerol from 10-100% is a results effective variable on the particle size (see Table 1). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the process as taught by Xu and Munir where the concentration ratio of glycerol to water is in any workable or optimum range overlapping with Munir including the claimed range to produce a desired metal nanoparticle size.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu as applied to claim 1, and in further view of Mohamed et al (US 2021/0070629).
As applied to claim 1, Xu teaches a method for a metal nanostructure comprising reacting an aqueous precursor solution including a metal salt, glycerol, and oxalic acid.
Regarding claim 14, Xu further teaches a process comprising reacting wherein the reaction is performed for a period of at least about 30 minutes (i.e., comprising an aging time of at least about 30 minutes) (see Col 4, Ln 23-28). Xu further teaches a method where the metal nanoparticles are isolated as solid nanoparticles by removal of the solvent (i.e., drying) (see [0053]).
Xu does not teach a method comprising filtering, washing, and drying.
Mohamed teaches a method for preparing noble metal/transition metal oxide nanoparticles comprising noble metal salt and filtering, washing and drying the noble metal nanoparticle (see Abstract and [0076]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a method as taught by Xu where solid nanoparticles are obtained by filtering, washing and drying as taught by Mohamed in order to obtain noble metal nanoparticles as a useful product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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