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 .
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 22 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.
Regarding Claim 22, the phrase "preferentially" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 5-9, 11, 13-14, 16-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2018079556A1, hereinafter ‘Konnai’.
All references to the foreign language text of Konnai are made herein according to the English language equivalent filing of this document, US20200062603A1.
Regarding Claim 1, Konnai discloses a method for removing at least one impurity from at least one metal-based nanoparticle ([0197]: surfactant is removed from halloysite particles by the method), comprising at least two heating steps:
heating step 1 during which the at least one nanoparticle is heated to a temperature that is between 50° C. and 500° C. and remains or is maintained at a heating temperature that is between 50° C. and 500° C. for a heating time that is between 1 second and 1 month ([0196]: halloysite powder after spray-drying was heated with an electric furnace by increasing the temperature of the electric furnace from room temperature to 400° C. over 1 hour and 10 minutes – by this, the nanoparticles are heated to a temperature between 50 and 500 °C for a heating time between 1 second and one month), and
heating step 2 during which the at least one nanoparticle is heated to a heating temperature that is between 350° C. and 1600° C. and remains or is maintained at the temperature that is between 350° C. and 1600° C. for a heating time that is between 1 second and 1 month ([0196]: after increasing the temperature, the temperature was maintained at 400° C. for 1 hour – by this, the nanoparticles are heated to a temperature between 350 and 1600 °C for a heating time between 1 second and one month),
wherein each of the heating step 1 and the heating step 2 comprises at least two phases:
(i) a second phase of each of the heating step 1 and heating step 2 during which the temperature of the at least one nanoparticle remains or is maintained at the heating temperature ([0196]: the heating as described is considered to maintain the nanoparticle temperature within the heating temperature),
(ii) at least one other phase selected from the groups consisting of:
a first phase during which the temperature of the at least one nanoparticle increases or is increased from an initial temperature to the heating temperature of the second phase, wherein the initial temperature is smaller than 102° C. or smaller than the heating temperature of the second phase ([0196]: the particles are heated from room temperature to 400 °C), and
wherein the at least one nanoparticle has a crystalline structure, and the heating temperature of the second phase and the final temperature reached by the at least one nanoparticle of the third phase do not induce one of the following modifications selected in the group consisting of ii) the destruction of the at least one nanoparticle or of its crystalline structure, partly or fully ([0096]: The firing temperature is preferably not higher than 420° C. at which the crystalline structure of halloysite is maintained in the XRD measurement after firing; [0197]: XRD measurement showed no change before and after firing, implying no change to the crystallinity after firing),
wherein the at least one nanoparticle has at least one property selected from the group consisting of magnetic, diamagnetic, ferromagnetic, ferrimagnetic, superparamagnetic, non-zero magnetization or remanent magnetization, non-zero coercivity and paramagnetic (halloysite is a diamagnetic material), and
wherein the at least one impurity is removed from the at least one nanoparticle by the method ([0197]: surfactant, considered an impurity, is removed from the powder).
Regarding Claim 2, Konnai discloses the temperature of the at least one nanoparticle is increased during at least one of the heating step 1 and the heating step 2 at a rate that is between 10−5 and 105° C./min ([0196]: the particles are heated from room temperature, about 25 °C, to 400 °C over 1 hour and 10 minutes, or 70 minutes. This implies a heating rate of 375°C/70 min, or 5.3 °C/min. The actual temperature of the nanoparticles heated during this stage would be expected to change at a reasonably similar rate, at least within the claimed 10-5 to 105 °C/min).
Regarding Claim 5 and 6, Konnai discloses the at least one impurity consists of or comprises or originates from carbon or carbonaceous material, and the at least one nanoparticle has a percentage in mass of carbonaceous material or carbon that is lower than 90% after the at least one of the heating step 1 and the heating step 2 (as discussed above, the impurity in Konna is a surfactant, which comprises carbon or carbonaceous material ([0185]: the surfactant is POIZ 520, which contains carbon). Konnai discloses removing the surfactant, implying little surfactant remains in the powder after treatment, and implying at least less than 90% percentage in mass of carbonaceous material or carbon in the nanoparticle, and greater than 10% removal of said carbon).
Regarding Claim 7, Konnai discloses at least one of the at least two heating steps is carried out in the presence of oxygen ([0196]: air is supplied to the furnace).
Regarding Claim 8, Konnai discloses the at least one impurity is removed from the at least one nanoparticle, and the at least one impurity is located at a depth of less than 100 nm inside the at least one nanoparticle ([0185]: the nanopowder is mixed with the surfactant in such a way that at least some surfactant would remain on a surface of the nanoparticles, i.e., when removed, surfactant would be removed from the particle at the surface, which is located at a depth of less than 100 nm inside the nanoparticle).
Regarding Claim 9, the impurity removed in the process of Konnai comprises carbon as discussed above.
Regarding Claim 11, the impurity removed in the process of Konnai is carbonaceous, and is removed from the nanoparticles, as discussed above.
Regarding Claims 13-14, Konnai discloses the method is carried out in the presence of a carrying gas or CO2, wherein the carrying gas or CO2 removes the at least one impurity from the at least one nanoparticle ([0196]: to promote burning off of the surfactant, ventilation was performed while a certain amount of air was supplied into the furnace – this air acts as a carrier gas, wherein ventilation carries away surfactant from the nanoparticles).
Regarding Claim 16, Konnai discloses the treatment of halloysite, which contains iron, a metal atom.
Regarding Claim 17-19, Konnai discloses the treatment of halloysite, which is diamagnetic at room temperature.
Regarding Claim 20-21, Konnai discloses the halloysite particles have a crystalline structure before treatment, as discussed above, wherein crystalline structure implies ordered atomic arrangement.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12129502. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the claims of the patent recite an identical method of removing an impurity from a nanoparticle by heat treatment.
Allowable Subject Matter
Claims 3, 4, 10, 15, and 22 objected to as being dependent upon a rejected base claim and rejected on the grounds of nonstatutory double patenting but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if the nonstatutory double patenting rejections are overcome.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not disclose or reasonably suggest the limitations of Claim 3, requiring the heating time for the second phase in each of the heating step 1 and the heating step 2, ti in minutes, is proportional to a quantity of heated nanoparticles, Qnano in milligrams, which is a property that is mathematically expressed as: ti =α:Qnano, where α is a proportionality coefficient that is between 10-5 and 105. Konnai does not disclose such a quantity, nor does it disclose process conditions that meet the claimed requirement.
Further, the prior art does not disclose or reasonably suggest the limitations of Claim 4, requiring the duration of at least one phase is decreased by reducing the percentage of humidity of the at least one nanoparticle. Konnai is silent regarding the humidity of the disclosed process.
Further, the prior art does not disclose or reasonably suggest the limitations of Claim 10, requiring the at least one impurity consists of or comprises or originates from a cell synthesizing the at least one nanoparticle. Konnai discloses the treatment of halloysite, which is not produced by cells.
Further, the prior art does not disclose or reasonably suggest the limitations of Claim 10, requiring the metal-based nanoparticle is a magnetosome.
Further, the prior art does not disclose or reasonably suggest the limitations of Claim 15, requiring at least one nanoparticle comprises a core and a coating, and the least one impurity is removed from the coating of the at least one nanoparticle. Konnai is silent regarding the use of any coatings in the disclosed process.
Further, the prior art does not disclose or reasonably suggest the limitations of Claim 22, requiring the at least one impurity is at least one atom or ion. Konnai discloses removing a surfactant, which is a molecule, not one atom or ion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOGAN LACLAIR whose telephone number is (571)272-1815. The examiner can normally be reached M-F, 9:30-5:30 PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LOGAN LACLAIR
Examiner
Art Unit 1736
/L.E.L./ Examiner, Art Unit 1736
/ANTHONY J ZIMMER/ Supervisory Patent Examiner, Art Unit 1736
Prosecution Insights