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 .
Status of Application
Claims 1-21 are pending and presented for examination.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (see paragraph 0007). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claims 4 and 14 are objected to because of the following informalities:
In claim 4, “onto to” should correctly be “onto”.
In claim 14, “dimeter” should correctly be “diameter”.
Appropriate correction is required.
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
1. Claims 1-21 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-21 of copending Application No. 18/630239 (reference application). Claims 1-21 are identical to claims 1-21 of copending Application No. 18/630239. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Nonstatutory 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.
2. Claims 1, 9 and 13-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12403225 in view of Choi et al. (WO 2005/085339). Claim 14 recites a process which teaches all the elements of claims 1, 9 and 13-15 but fails to teach the metal nanoparticles provided as a solution. However, Choi teaches a process for forming an antibacterial polymer composite product (abstract) comprising: applying a nonionic silver nanoparticle solution in water to polypropylene (which is a thermoplastic) polymer granules. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify U.S. Pat. No. 12403225’s process by applying the metal nanoparticles from a nanoparticle solution. One would have been motivated to make this modification as one could have utilized a nanoparticle solution in place of the generic application of nanoparticles as Choi teaches that this ensures uniform dispersion of the nanoparticles in the resultant composite (see Choi at page 10, lines 13-17).
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.
3. Claims 7, 14 and 15 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 7 recites both that “the nanoparticle solution comprises a precursor polymer compound” and also “mixing the precursor component with the nanoparticle solution”. It is unclear how the solution can both already include the precursor compound and also mixing that solution with the precursor polymer component. Therefore, claim 7 is indefinite. For examination purposes, mixing a nanoparticle solution that includes a precursor polymer component will be interpreted as reading upon the claim.
Claim 14 recites the limitation "the spherical-shaped metal nanoparticles". There is insufficient antecedent basis for this limitation in the claim. There is no initial recitation in the parent claim that the nanoparticles are spherical. Therefore, claim 14 is indefinite. Claim 15 depends from claim 14 and are indefinite for the same reasons. For examination purposes, the limitation has been interpreted as “wherein the nanoparticle solution comprises spherical-shaped metal nanoparticles and the spherical-shaped metal nanoparticles”.
Claim Rejections - 35 USC § 102
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.
4. Claim(s) 1 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barcikowski et al. (“Solid solution magnetic FeNi nanostrand-polymer composites by connecting-coarsening assembly”).
Regarding claim 1, Barcikowski teaches generating a nonionic FeNi metal alloy nanoparticle solution by laser ablation (Sections 2.1 and 3.1); mixing this solution with a PMMA polymer composition (Section 2.1 and Figures 1a-1e); and forming the composition into a polymer product incorporating the nanoparticles (Section 2.1 and Figure 1a-1e). Barcikowski teaches all the limitations of the process as claimed in claim 1 and the nanostrand product as produced by the method meets all the limitations of the product as claimed in claim 19. Therefore, Barcikowski anticipates claims 1 and 19.
5. Claim(s) 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Quintero-Quiroz et al. (“Synthesis and characterization of a silver nanoparticle-containing polymer composite with antimicrobial abilities for application in prosthetic and orthotic devices”).
Regarding claim 21, Quintero-Quiroz teaches a process for forming a polymer product comprising: adding silver nanoparticles into a liquid component of a multi-component thermosetting polymer composition (see Figure 1 where the silver nanoparticles are added to a liquid catalyst component); mixing multiple components of a thermosetting polymer composition to disperse the nanoparticles in the thermosetting polymer composition (see Figure 1 and Composite formulation section); followed by forming the composition into a desired film shape and then curing to solidify into the desired shape wherein the metal nanoparticles are dispersed in the thermoset polymer product (Figure 1 and Composite formulation section). Quintero-Quiroz teaches all the limitations of claim 21; therefore, Quintero-Quiroz anticipates the claim.
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.
6. Claim(s) 1-3, 7-9, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (WO 2005/085339) in view of Schwenke et al. (“Laser-Based Generation of Matrix Binder-Free Nanoparticle Polymer Composites for Bioactive Medical Devices”, reference is made to the provided English machine translation).
I. Regarding claims 1-3, 9 and 20, Choi teaches a process for forming an antibacterial polymer composite product (abstract) comprising: applying a nonionic silver nanoparticle solution in water (a volatile solvent) to polypropylene (which is a thermoplastic) polymer granules in a container (Example 2, pages 13-14); removing the water solvent leaving the nanoparticles on the granules (Example 2, page 14); heating the granules to melt the polymer to disperse the nanoparticles through the polymer melt and then forming the molten polymer into the polymer product incorporating the silver nanoparticles (Example 2, page 14 and Example 7, page 16). Choi fails to teach the silver nanoparticles formed by laser ablation.
However, Schwenke teaches a similar process for forming an antibacterial product using silver nanoparticles (abstract and title) that are mixed with polymer to generate a polymer product incorporating the silver nanoparticles (Figure 1 and Section 2, page 741). Schwenke further teaches that the silver nanoparticles are produced by laser ablation (abstract and Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute silver nanoparticles produced by laser ablation for Choi’s generic silver nanoparticles. One would have been motivated to make this modification as Schwenke teaches that generating the silver nanoparticles by laser ablation can prevent their agglomeration and provide products with improved properties with improved nanoparticle distribution (Section 4, pages 745-746).
II. Regarding claims 7 and 8, Choi in view of Schwenke make obvious all the limitations of claim 1 (see above).
Additionally, Schwenke teaches that the laser ablated nanoparticle solution can include a precursor polymer component, such as 1,4-butanediol, mixed with the laser ablated nanoparticle solution (Figure 1 and Section 2, page 741) and that the polymer composition can be provided as a liquid in a solvent (Section 2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi in view of Schwenke’s process by providing a precursor (1,4-butanediol) in the nanoparticle solution and also providing the polymer composition as a liquid a disclosed by Schwenke. One would have been motivated to make this modification as Schwenke teaches that this type of process for forming a silver nanoparticle-polymer composite enables agglomerate-free integration of the silver nanoparticles into a polymer matrix (Section 4, page 745).
III. Regarding claim 19, Choi in view of Schwenke make obvious an identical process which yields an antibacterial polymer product (see above). Therefore, the product of Choi in view of Schwenke makes obvious the product as claimed in claim 19.
7. Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi in view of Schwenke as applied to claim 2 above, and further in view of Lee et al. (U.S. PGPUB No. 2009/0155592).
Regarding claim 4, Choi in view of Schwenke teach all the limitations of claim 2 (see above), but fail to teach spraying the nanoparticles onto the polymer granules. However, Lee teaches a similar process of forming a polymer composite (abstract) of silver nanoparticles (0050). Lee teaches that the silver nanoparticles can be applied to polymer granules by spraying from a nanoparticle solution (0037). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi in view of Schwenke’s process by applying the silver nanoparticle solution by spraying as disclosed by Lee. One would have been motivated to make this modification as one could have substituted spraying for the generic method of applying in Choi in view of Schwenke with a reasonable expectation of success (as any method of providing the solution to the polymer granules would result in the same mixture), and the predictable result of providing the polymer granules having silver nanoparticles on the surface.
8. Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi in view of Schwenke as applied to claim 2 above, and further in view of Markelonis et al. (“Nanoparticle film deposition using a simple and fast centrifuge sedimentation method”).
Regarding claim 5, Choi in view of Schwenke teach all the limitations of claim 2 (see above), but fail to teach applying the nanoparticle solution to the polymer granules using a centrifuge. However, Markelonis teaches a similar process of forming a polymer composite (abstract) of metal nanoparticles (Preparation of Au and PbS nanoparticles, page 458). Markelonis teaches that the metal nanoparticles can be applied to polymer substrates by using a centrifuge (Centrifuge deposition method, page 459). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi in view of Schwenke’s process by applying the silver nanoparticle solution to the polymer granules using a centrifuge as disclosed by Markelonis. One would have been motivated to make this modification as Markelonis teaches that a centrifuge application method provides uniform coating on uneven substrates and the nanoparticles show good stability and affinity for the substrate (Conclusion section, page 467).
9. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barcikowski in view of Maurer et al. (“Process Chain for the Fabrication of Nanoparticle Polymer Composites by Laser Ablation Synthesis”)
Regarding claim 6, Barcikowski teaches all the limitations of claim 1, including the nanoparticle solution comprising acetone (Figure 1), a volatile solvent, wherein the volatile solvent is removed by evaporation (Figure 1c) followed by forming into a polymer product (Figure 1e), but fails to teach that the polymer composition is a liquid polymer composition. However, Maurer teaches that the general scheme for forming polymer composites with laser ablated nanoparticles when done in a similar ex-situ process involves the formation of the nanoparticle solution and addition to a liquid polymer solution (see Figure 3) followed by evaporation and then formation into a polymer product (Figure 3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Barcikowski’s process by having the polymer composition be a liquid polymer composition as disclosed by Maurer. One would have been motivated to make this modification as it would allow for greater mixing to form a homogeneous solution and Maurer actually teaches that this is the process followed by Barcikowski (see Section 2.2, page 1537, and note that the reference pointed to disclosing the ex-situ process is Barcikowski).
10. Claim(s) 10-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi in view of Schwenke as applied to claim 1 above, and further in view of Niedermeyer (U.S. PGPUB No. 2016/0082513).
Regarding claims 10-18, Choi in view of Schwenke teach all the limitations of claim 1 (see above), but fail to teach the nanoparticles comprise gold or are spherical shaped, coral shaped, or a combination of silver and gold nanoparticles having mean diameters, particle size distributions and potentials as claimed.
However, Niedermeyer teaches forming, by laser ablation (0049), a mixture of nonionic metal nanoparticles (0023) comprising spherical shaped nanoparticles and coral shaped nanoparticles in a ratio of spherical shaped particles to coral shaped being 5:1 to 20:1 (abstract). Niedermeyer teaches the mixture comprising a mixture of silver and gold nanoparticles (claim 13) in a ratio of 5:1 to 20:1 (claim 13, note that the silver particles are spherical and the gold are coral shaped). Niedermeyer additionally teaches the spherical shaped nanoparticles having a diameter in a range of 40 nm or less (see 0067, and note that overlapping ranges are prima facie evidence of obviousness), 99% of the spherical nanoparticles have a diameter within ±3 nm of the mean diameter (claim 6), and the nanoparticles have a ξ-potential of at least 10 mV (claim 7). Niedermeyer also teaches the nanoparticles used for their antibacterial properties (abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi in view of Schwenke’s process by substituting Niedermeyer’s mixture of laser ablated nanoparticles for the laser ablated nanoparticles of Choi in view of Schwenke. One would have been motivated to make this modification as Niedermeyer teaches that the use of a combination of different shaped nanoparticles can augment, potentiate or ameliorate desired or undesired effects of spherical shaped metal nanoparticles (see Niedermeyer at 0019).
Conclusion
Claims 1-21 are pending.
Claims 1-21 are rejected.
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/ROBERT S WALTERS JR/
November 26, 2025Primary Examiner, Art Unit 1717
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