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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/2025 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Status of Claims
Applicant’s amendment filed 12/29/2025 is acknowledged. Claims 1, 2, 14, 15, 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 non-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 Any rejections or objections not reiterated herein have been withdrawn in light of amendments to the claims or as discussed in this office action.
New Ground(s) of Rejections
Previous Rejections
Status of Prior Rejections/Objections:
The 112(b) rejections to claim(s) 10, 14-15, and 17-21 is/are withdrawn in view of the amendments to or cancellation of the claims.
The 112(d) rejections of claims 5-6 are withdrawn in view of the cancellation of the claims.
The prior art rejection(s) under 35 USC 102 rejections of claims 1-2, 4, 14-15, and 17-19 as unpatentable over Weizmann is/are maintained and modified as necessitated by amendments.
Claim Objections
Claim 14 is objected to because of the following informalities: The claim recites “to form a nanobridge: connecting”; please delete the colon and replace with “thereby” or “by”. Appropriate correction is required.
Claim Interpretation
In evaluating the patentability of the claims presented in this application, claim terms have been given their broadest reasonable interpretation (BRI) consistent with the specification, as understood by one of ordinary skill in the art, as outlined in MPEP 2111.
Regarding claims 1 and 14, claim 1 recites “disposed to face” and claim 14 recites “a first … nanoseed and a second … nanoseed facing each other”. Exemplary nanoseeds include spheres (e.g., Figs. 2 and 8-11). While it is recognized that nanospheres may not have the infinite faces of true spheres, the specification recites that such synthesized nanoparticles [i.e., nanoseeds] have a high degree of symmetry (pg. 2, lines 28-29). Thus, broadly interpreted, any such nanoseed may be interpreted to be “facing” another nanoseed in any configuration.
Likewise, an “end” was broadly interpreted for shapes without distinct “end” portions to refer to an attachment point/side.
Claim Rejections - 35 USC § 112(b)
Claims 1-2, 4, 14-15, and 17-19 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.
Regarding claims 1 and 14, the claims recite “linear metal crystal structure”. The term “linear” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
In the instant case, the specification lacks any reference to “linear metal crystal structure” or similar in the instant specification, let alone a limiting definition for a degree required by the instant claims. The genus of biomolecule scaffold, as evidenced by claim 4, encompasses a variety of species. While some may enable approximate coaxial alignment, others are known for flexibility and/or secondary/tertiary structure. Indeed, even among “linear” examples like dsDNA, the specification provides examples of detection of point mutations, which would be understood by the artisan to be capable of introducing “kinks” (i.e., non-linearity).
Thus, it is unclear what degree of linearity of the metal crystal structure would be expected, absent a limiting definition, clear use in the disclosure, and the large genus of scaffolds claimed. Therefore, the metes and bounds are not clear to one of skill in the art.
Claims 2, 4, 15, and 17-19 are rejected for depending from claim 1 or 14 and not rectifying the deficiency.
Regarding claim 14, the claim recites “inducing crystallization … to form a nanobridge: connecting an end … and an end; and comprising …”. It is not clear what the subject of “and comprising is intended to be. Does the nanobridge comprise those items? One or both of the ends of the nanoseeds or the nanoseeds themselves?
Claims 15 and 17-19 are rejected for depending from claim 14 and not rectifying the deficiency.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-2, 4, 14-15, and 17-19 are 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. This is a new matter and/or written description rejection.
Regarding claims 1-2, 4, 14-15, and 17-19, claims 1 and 14 recites “linear metal crystal structure”. The specification lacks any reference to “linear metal crystal structure” or similar in the instant specification. While the specification contains references to “linear”, they are in the context of mathematical analysis (i.e., “linear” relationships, “linear” fits, slope of a line; see, e.g., pgs. 6-7). While Fig. 11 and “direction-specific growth” is acknowledged, the annotations added in the arguments that recite “linear metal crystal structure” are not present in the original disclosure.
Thus, the claim amendment adds new matter by reciting limitations that were not disclosed in the specification as filed, and now change the scope of the instant disclosure as filed. Such limitations recited in the present claims, which did not appear in the instant specification nor in the provisional, PCT, or Korean priority applications to which priority is claimed, introduce new concepts and do not comply with the written description requirements under 35 USC 112.
Although the PCR and Korean priority documents were checked for relevant support using machine translations, it is acknowledged that machine translations not always convey the full or perfect meaning of the original document. Thus, this is alternatively or additionally a written description rejection. Incorporation by reference of essential material (i.e., claimed features) is only effective for US patents and US patent applications. See 37 CFR 1.57 and MPEP 2172.01. The incorporation by refence of PCT/KR2019/010370 and Korean applications KR10-2019-0099454 and KR10-2018-0095140 are acknowledged; however, as the limitation in question is “essential material” this is not effective to provide written description support.
If Applicant believes there is sufficient support in the Korean documents for the limitation, Applicant must amend the specification to include the support for the essential material that has been incorporated by reference along with a translation of the relevant document(s).
Claim Rejections - 35 USC § 102
Claim(s) 1-2, 4, 14-15, and 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weizmann (Weizmann Y, et al. Telomerase-generated templates for the growing of metal nanowires. Nano Letters. 2004 Apr 3;4(5):787–92), 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 and 14, Weizmann teaches a metal nanobridge structure (entire document, e.g., Scheme 1, Fig. 1) comprising:
two metal “nanoseeds” disposed at a predetermined distance (Scheme 1: Au-nanoparticle-functionalized nucleic acid comprising a segment of repeat sequence hybridized to corresponding complementary sequence on telomere templates; see also pg. 788, col 1, para 1, spanning col 2), wherein the metal nanospheres face one another by their spherical nature (Scheme 1; Fig 1)
a nanobridge connecting ends of the respective nanoseeds, wherein the nanobridge comprises two linear metal crystal structures each comprising two ends, wherein the first is attached to the an “end” of the respective nanoseed and the other is attached to a surface of a biomolecule (Scheme 1, e.g., pg. 788, col 1, para 1, spanning col 2; Fig. 1).
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Weizmann teaches that the metal crystal structures are “linear” (Scheme 1; pg. 791, lines 16-17: “the crystals grow with the characteristics fcc equilibrium morphology”, wherein fcc; Fig. 1D) and that the crystal structures are attached to both the nanoseeds and the biomolecule (pg. 790, col 1: “the TEM images of the resulting nanowires do not always show direct contact between the enlarged particles”, i.e., some particles do show direct contact enlargement of the nanoparticle [attachment to the nanoparticle] and growth along the DNA [attachment to a first surface of a biomolecule]; pg. 788, col 1, para 1, spanning col 2: “enlargement of the Au nanoparticles on the DNA template”).
It is noted for the purposes of compact prosecution that the claim does not require complete growth along the biomolecule. Accordingly, the nanoparticles that show growth along the DNA between them also meet the limitations.
Weizmann likewise teaches method of constructing (entire document, e.g., Scheme 1), comprising:
disposing a biomolecule between two metal nanoseeds at a predetermined distance (as cited above; pg. 791, Experimental Section); and
inducing crystallization from the nanoseeds to form a nanobridge connecting an end of the first metal nanoseed to the second metal nanoseed, wherein the nanobridge comprises a first linear metal crystal structure, a biomolecule, and a second linear metal crystal structure (as cited above),
wherein the linear metal crystal structures are grown from the surface of the metal nanoseeds toward the biomolecule and surround the surface of the biomolecule (Scheme 1; pg. 788, col 1, para 1, spanning col 2: “enlargement of the Au nanoparticles on the DNA template”; see annotated Fig. 1D above).
As above, it is noted that while Weizmann teaches that some nanoparticles do not fully grow, both this statement and Fig. 1D teach that some have fully connected the end of one nanoseed to the other, as required by the method claim. For the purposes of compact prosecution, it is noted that Weizmann teaches optimizing the method to produce continuous interconnected metallic nanowires (pg. 791, col 1).
Regarding claims 2 and 15, Weizmann teaches that the metal is gold (entire document, e.g., Scheme 1).
Regarding claims 4 and 17, Weizmann teaches that the biomolecule is a double-stranded DNA (Scheme 1, Fig. 1; pg. 788, col 1, para 1).
Regarding claims 18-19, Weizmann teaches reducing metal ions with a reductant from the two from the two metal nanoseeds such that the metal crystal structure grows metal crystal structures, wherein the reductant is NH2OH (Schemes 1 and 2; Fig. 1D: see image above in the rejection of claims 1 and 14; pg. 788, col 1, para 1: “The resulting nanoparticle-decorated double stranded DNA is then reacted with HAuCl4 and hydroxylamine (NH2OH) to enlarge the Au nanoparticles and to yield a continuous gold nanowire”).
Weizmann teaches that the metal ions are reduced on the on the surfaces of the metal nanoseeds by teaching the use of a reductant NH2OH, gold nanoparticles, and that the nanoparticle seeds are enlarged in solution (pg. 788, col 1, para 1, spanning col 2; pg. 791, line 5), evidenced by Brown. While Weizmann does not explicitly teach that the metal ions on the surfaces of the metal nanoseeds 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”).
Weizmann, as evidenced by Brown, teaches each and every limitation of claims 1-2, 4, 14-15, and 17-19, and therefore Weizmann, as evidenced by Brown, anticipates claims 1-2, 4, 14-15, and 17-19.
Response to Arguments
Applicant's arguments filed 1/26/2026 have been fully considered but they are not persuasive.
Applicant argues that Weizmann does not anticipate the amended claims at least because it is silent on “a nanobridge connecting an end of the first metal nanoseed and an end of the second metal nanoseed, … a first linear metal crystal structure comprising a first end attached to the end of the first surface of a biomolecule …” because Weizmann is allegedly silent on the recited nanobridge structure.
First, it is noted that the term “linear” is not defined (not even used in the context of the claim) in the instant specification. A large genus of scaffolds is set forth in claims 4/17, some of which may have a high degree of flexibility while others have a high degree of secondary/tertiary structure. Indeed, examples of the dsDNA in the specification include detection of point mutations (e.g., Fig. 13-15), which are known to introduce kinks.
Second, as shown in the annotated Fig. 1D, Weizmann shows crystal structures grown from the metal nanoseeds toward the DNA and surrounding the biomolecule (see also pg. 788, col 1, para 1, spanning col 2: “enlargement of the Au nanoparticles on the DNA template”) in what appears to be a linear direction between the two nanoparticles. Further, the cartoon of Scheme 1 teaches growth along the whole of the dsDNA segment, seeded by the nanoparticles.
Third, both claims 1 and 14 recite “comprising”/”comprises”. Fcc equilibrium morphology of the crystal growth would encompass “linear” metal crystal segment(s), even if the overall morphology were, for example, approximately octahedral. Some portion of crystals would extend out from the center along the direction of the biomolecule, even there were zero influence of the biomolecule.
Further, it is noted that the instant application and Weizmann share the metal/nanosphere shape, the dsDNA biomolecule, specific reductant, etc. Applicant is encouraged to point out specific differences as Weizmann teaches optimization of its method, as cited, which may be expected to alter characteristics such as degree and shape of crystallization.
For these reasons, the arguments are not found to be persuasive.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wang (US 20120107242 A1; published 05/03/2012) teaches gold nanoseeds functionalized with DNA oligomers that produce dumbbell- or peanut-shaped nanoparticles (para [0111]; Fig. 21) and depositing an optimal layer of gold around the oligomer (para [0113]). Wang teaches that the nanoseed may be gold and nanoparticle growth is achieved through gold ion reduction onto the nucleic acid-nanoseed, where hydroxylamine may be used for reducing HAuCl4, catalyzed by the gold surface (para [0103]).
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/EMMA R HOPPE/Examiner, Art Unit 1683
/NANCY J LEITH/Primary Examiner, Art Unit 1636