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 Claims
Applicant' s amendment filed 03/31/2026 is acknowledged. Claims 1, 14, and 18 have been amended. Claims 3, 5-13, 16, and 20-21 have been cancelled. Claims 1-2, 4, 14-15, and 17-19 are pending in the instant application and the subject of this final office action.
All of the amendments and arguments have been reviewed and considered. Any rejections or objections not reiterated herein have been withdrawn in light of amendments to the claims or as discussed in this office action.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Previous Rejection
Status of Prior Rejections/Objections:
The 112(b) rejections to claim(s) 1-2, 4, 14-15, and 17-19 are withdrawn in view of the amendments to the claims.
The 112(a) written description (new matter) rejections of claims 1-2, 4, 14-15, and 17-19 are withdrawn in view of the amendments to the claims.
The prior art rejection(s) under 35 USC 102 directed to claim(s) 1-2, 4, 14-15, and 17-19 as being anticipated by Weizmann, evidenced by Brown are withdrawn in view of the amendments to the claims. See new art rejections necessitated by amendment.
New Ground(s) of Rejections
The new ground(s) of rejections were necessitated by applicant’s amendment of the claims.
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 Rejections - 35 USC § 102/103
Claim(s) 1-2, 4, 14-15, and 17-19 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wang (US 2012/0107242 A1; published 05/03/2012), as evidenced by Brown (Brown KR, Natan MJ. Hydroxylamine seeding of colloidal au nanoparticles in solution and on surfaces. Langmuir. 1998 Jan 22;14(4):726-8).
Regarding claims 1-2, 4, 14-15, and 17-19, Wang teaches a method for constructing a metal nanobridge structure that may be used as a biosensor and the corresponding metal nanobridge structure (e.g., Fig. 21, Example 7; para [0097-0111], [0127-129], [0164-165]) comprising:
disposing a biomolecule entirely between two nanoseeds (para [0111], [0127], [0162-164]: e.g., “T30”; Fig. 21 b and c: see annotations below), wherein the nanoseed is gold and the biomolecule is ssDNA (para [0111]; instant claims 2, 4, 15, and 17); and
inducing crystallization from the two nanoseeds using the reductant NH2OH to reduce metal ions on the surfaces of the two metal nanoseeds (para [0056] and [0162]; instant claims 18-19), thereby connecting an end of each of the two metal nanoseeds via directional growth (para [0056], [0164]) to form a nanobridge comprising directionally grown metal crystal structures surrounding the ends of the biomolecule (Fig. 21 b and c; para [0056] and [0127]).
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Wang teaches that the metal ions are reduced on the surfaces of the metal nanoseeds by teaching the use of the reductant NH2OH, gold nanoparticles, and that the nanoparticle seeds are grown [i.e., enlarged] in solution (e.g., para [0164]), evidenced by Brown. While Wang does not explicitly teach that the metal ions on the surfaces of the metal nanoseed are reduced, it is inherently taught because hydroxylamine seeding of Au nanoparticles that grows existing nanoparticles reduces surface metal ions, as evidenced by Brown (pg. 726, col 2, para 1: “enlargement of colloidal Au nanoparticles called ‘seeding’, based on the colloidal Au surface-catalyzed reduction of Au3+ by NH2OH”; instant claims 18-19).
Wang teaches that the data support that gold deposited onto the DNA-functionalized nanoseeds “buries” a portion of the DNA strand, thereby firmly attaching the DNA oligomer to the nanoparticle (para [0108]), i.e., that the end of the biomolecule is completely surrounded by the directionally grown crystal metal structure, as required by the amended claims. See also Fig. 21 c, which shows approximately symmetric growth on at least some particles.
While it is not explicitly taught by Wang, the artisan would understand from Fig. 21, that the structures require two nanoparticles to create the structures of Fig. 21 b and c. For contrast, see the asymmetric structures of Ma – 2016 cited in the Conclusion and the asymmetric growth show in Wang, e.g., Fig. 8b.
It is also noted, for the sake of compact prosecution, that while Wang teaches such directionally grown structures, such would be a matter of product-by-process. See MPEP 2113.
In teaching the length of the oligomers (as cited above) and that the threshold at which oligomers were capable of influencing nanoparticle morphology was known (para [0100] and Fig. 7; i.e., the portion bound to/interacting with the nanoparticle rather than acting as a bridge, see Figs. 12 and 21), Wang teaches that the metal nanoseeds were disposed at a predetermined distance, as determined by at least the choice of sequence length.
Wang, as evidenced by Brown, teaches each and every limitation of claims 1-2, 4, 14-15, and 17-19 and therefore, Wang, as evidenced by Brown, anticipates claims 1-2, 4, 14-15, and 17-19.
However, under narrower interpretation of predetermined distance and of the teachings of the connection between the functionalized oligonucleotides and the nanoparticles, Wang also teaches that thiol chemistry can be used to conjugate DNA and RNA to gold surfaces (para [0107]; see also para [0147]), wherein the thiolated nucleic acid is adsorbed onto the gold nanoparticles (para [0107]) as Wang teaches the DNA oligomers in the working embodiments are adsorbed onto gold nanoparticles (para [0105]).
Therefore, it also would have been obvious to one of skill in the art before the effective filing date of the claimed invention to have utilized thiol chemistry to adsorb the DNA onto the nanoparticle, wherein thiolated oligonucleotides of known length would inherently enable disposing nanoparticles at a predetermined distance (see instant specification pg. 14, 1-3: Conjugation of AuNS with ssDNA), as both “burying” in gold and thiolation are taught as methods attaching DNA to a gold nanoparticle and it is prima facie obvious to combine equivalents known for the same purpose. See MPEP 2144.06. There would have been a strong expectation of success as both are taught by Wang and both 5’- and 3’- thiolation were known in the art at the time of filing.
It is noted for the sake of compact prosecution that Wang also teaches that the nucleic acid oligomer may be RNA (para [0097]).
Response to Arguments
Applicant’s arguments, see pg. 8-13, filed 03/31/2026, with respect to the rejection(s) of claim(s) 1-2, 4, 14-15, and 17-19 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wang, as evidenced by Brown.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ma - 2016 (Ma, Xingyi, et al. "Gold nanocrystals with DNA-directed morphologies." Nature Communications 7.1, 2016; as cited in the IDS dated 02/05/2021) teaches DNA-directed asymmetric crystallization from a single nanoparticle (Fig. 1), which contrasts morphologically from the “nanopeanuts” and “dogbone-like” bridged structures of Wang (as cited in the 102 rejection above, e.g., Fig. 21). Ma – 2016 also teaches PEG treatment of nanoparticles (entire document (e.g., pg. 2 Mechanism of DNA-directed crystallization) and use of dsDNA (entire document, e.g., Fig. 1).
Biosynthesis (How thiol linker is attached to an oligo at 5’ and 3’ end [Internet]. Biosynthesis; 2018 [cited 2026 Apr 17]. Available from: https://www.biosyn.com/faq/Can-you-show-me-how-thiol-linker-is-attach-to-an-oligo-at-5-and-3-end.aspx) teaches 5’- and 3’-thiol linkers of a DNA oligo.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Emma R Hoppe whose telephone number is (703)756-5550. The examiner can normally be reached Mon - Fri 11:00 am - 7:00 pm.
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/EMMA R HOPPE/Examiner, Art Unit 1683
/NANCY J LEITH/Primary Examiner, Art Unit 1636
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