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 U.S.C. § 112
The following is a quotation 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.
Claim 6 is 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.
6. The limitation “volume” was not in the original disclosure and is thus new matter.
Claim Rejections - 35 U.S.C. § 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 of this title, 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.
Claims 1, 3, 5, and 8-10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kwok et al., U.S. Patent App. Pub. No. 2015/0108008 [hereinafter Kwok] in view of Yanagi et al., Fabricating nanopores with diameters of sub-1 nm to 3 nm using multilevel pulse-voltage injection, Scientific Reports (2014) [hereinafter Yanagi]; Makiyama, U.S. Patent App. No. 2011/0227193 A1; and alternatively Matsui et al., W.O. Int’l Pub. No. 2017/138149 A1. Matsui et al., U.S. Patent App. Pub. No. 2018/0252696 A1 [hereinafter Matsui] was used as a translation.
The body of the claim is generally written with parentheses following the limitations indicating the prior art’s teachings and/or examiner notes.
1. The following references render this claim obvious.
I. Kwok
A nanopore forming method (fabrication of nanopores, figs. 4A-4D; Kwok title, abstract), comprising:
arranging a SiNx film between a first aqueous solution and a second aqueous solution (membrane 41 between two aqueous solutions; Kwok [0009], [0026], [0032], [0038], figs. 4A-4D);
bringing a first electrode to come into contact with the first aqueous solution and bringing a second electrode to come into contact with the second aqueous solution (electrodes 24 in two reservoirs 33 in salt solution, e.g. 1 M KCl; Kwok [0009], [0025]-[0029], [0038], claims 6-7 & 25, figs. 2A-2B & 4A-4D); and
applying a voltage to the first electrode and the second electrode to form only a single nanopore in the SiNx Film (potential forms a nanopore; [0025], [0029]-[0033], figs. 4A-4D) …, and
wherein at least any one of the first aqueous solution and the second aqueous solution has a pH of from 10 to 11 when a thickness of the SiNx film is less than 20 nm, or at least any one of the first aqueous solution and the second aqueous solution has a pH of higher than 11 when a thickness of the SiNx film is 20 nm or more and 100 nm or less (10 or 30 nm thickness and pH 7-13.5; Kwok [0028], [0032], [0036], [0044], fig. 9B) … .
II. SiNx film ratio - Yanagi
Kwok is silent on wherein the SiNx film has a composition ratio of 1 < x <4/3.
However, Kwok must have some kind of x.
Yanagi teaches that 4/3 is a suitable ratio for a SiNx membrane. Yanagi pp. 1-2.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s x with Yanagi’s 4/3 to yield the predictable result of having a suitable ratio for a SiNx membrane.
III. Density - Makiyama and alternatively Matsui
Kwok is silent on wherein a film density of the SiNx film is 2.8 g/cm3 or more and 3.2 g/cm3 or less.
However, the film needs some density.
Makiyama teaches a method comprising forming a SiN film with a density of 2.8-3.0 g/cm3 which is highly resistant to dielectric breakdown. Makiyama [0062].
Alternative reference Matsui teaches that a thin film may be subjected to a dielectric breakdown due to static electricity 10. Matsui [0049], fig. 5. Thus a person having ordinary skill would have desired high resistance to dielectric breakdown.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s method with Makiyama’s SiN film with a density of 2.8-3.0 g/cm3 which is highly resistant to dielectric breakdown and alternatively to resist dielectric breakdown due to static electricity as taught by alternative reference Matsui.
3. The nanopore forming method of claim 1, further comprising stopping an application of the voltage when a current flowing between the first electrode and the second electrode reaches a predetermined threshold current (stopping voltage in response to abrupt current increase). Kwok [0006], claims 1, 4-5, 16, figs. 6-7.
5. The nanopore forming method of claim 1, wherein a stress of the SiNx film is 600 MPa or more. Kwok is silent on this.
However, the specification teaches that an x where 1<x<4/3 with a high dielectric withstand voltage will usually have a tensile stress of 600 MPa or more. App. Spec. [0088].
Because the prior art teaches 4/3, the prior art’s tensile stress would be 600 MPa or more. See claim 1 rejection.
8. The nanopore forming method of claim 1, wherein at least one of KCl, LiCI, NaCl, CaCl2, MgCl2, and CsC1 is dissolved in the first aqueous solution and the second aqueous solution (KCl). Kwok [0038], [0044].
9. The nanopore forming method of claim 1, wherein, when the first aqueous solution has a pH of 10 or more and the second aqueous solution has a pH of less than 10 (both within the range of 7-13.5; Kwok [0044]), the voltage is applied to the first electrode and the second electrode such that a potential of the first aqueous solution is lower than a potential of the second aqueous solution (when applying a potential difference the absolute potential of one side must be higher than the other to create the difference, a person having ordinary skill in the art could have found it obvious to choose from the finite number of possibilities of choosing which side is higher and lower to yield the predictable result of having a suitable potential difference to apply).
10. The nanopore forming method of claim 1, wherein a film different from the SiNx film is laminated on a surface or an inside of the SiNx film (membranes may have multiple layers of materials, including dielectric materials and/or conductive materials). Kwok [0028].
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Kwok in view of Yanagi, Makiyama, and alternatively Matsui as applied to claim 1 previously, and further in view of Bhat et al., U.S. Patent App. Pub. No. 2009/0047769 A1 [hereinafter Bhat] and Nishikawa, KR 20040042861. A machine translation was used for Nishikawa.
6. The nanopore forming method of claim 1, wherein the SiNx film has an etching rate of 0.5 nm/mn or less by at least one of the first and second an aqueous solutions comprising diluted hydrofluoric acid with a concentration of 1/200. Kwok is silent on this.
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious. MPEP § 2144.05.
Bhat teaches that the etch rate affects the density, and Nishikawa teaches that the density impacts the mechanical strength. Bhat [0058], Nishikawa p. 5. Thus the two together teach that the etching rate is a variable that achieves the recognized result of affecting the mechanical strength, hence making it a result-effective variable.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have routinely experimented with the variable and determined the optimum or workable range to be inclusive of the claimed range/value(s).
Response to Arguments
Applicant’s latest filed arguments have been fully considered and are addressed below.
The Examiner has considered Applicant’s argument that the cited prior art does not teach amended claim 1, specifically Kwok [0044] teaches effects on the fabrication time.
The Examiner respectfully submits that Kwok is prior art for all it teaches, including the extremes in the ranges it teaches. Kwok does teach 10 or 30 nm thicknesses and a pH of 7-13.5, which teaches amended claim 1.
The Examiner considered Applicant’s argument that there is no reasonable expectation of success regarding Yanagi, Makiyama, and Matsui.
The Examiner respectfully submits that this argument is conclusory and there would be a reasonable expectation of success given that Kwok would have to have these properties and these references give suitable properties to use.
The Examiner considered Applicant’s argument that Kwok’s 7-13.5 pH is too broad.
The Examiner respectfully submits that as any person having ordinary skill in the art would have learned in university chemistry, pH can go outside of 0-14 since it is defined as the negative log of the activity which can go outside of that range. Furthermore, Kwok’s 7-13.5 pH is an overlap and it is within a person having ordinary skill in the art’s ability to use the overlap between Kwok’s pH and the claimed range.
The Examiner considered Applicant’s argument that the claimed pH is critical to form a single nanopore.
The Examiner respectfully submits that there are no data on record comparing the claimed invention to the closest prior art. Without this comparison the argument that the argument of critical results is not proven. Furthermore, Kwok does teach a single nanopore.
The Examiner considered Applicant’s argument that MPEP § 2144.05 teaches overlapping ranges and Takeda doesn’t teach overlapping ranges.
The Examiner respectfully submits that MPEP § 2144.05 not only teaches overlapping ranges, it also teaches result effective variables too. MPEP § 2144.05(II)(B).
The Examiner considered Applicant’s argument regarding unexpected results, particularly the stable formation of a single nanopore and that Applicant’s specification pp. 23-25 found that prior methods such as Kwok doesn’t form a stable nanopore.
The Examiner respectfully submits that any assertions of an unexpected result must be compared to the closest prior art. In this case, Kwok produces a stable nanopore. Applicant’s specification fails to mention the Kwok reference much less its results or any data from the Kwok reference. There is also nothing on record to show this. Thus the unexpected results are not proven.
It is further noted that all the arguments in the Remarks arguing unexpected results lack any data comparing the Kwok’s reference to the claimed invention and thus the alleged unexpected results are not proven.
The Examiner considered the Applicant’s argument that there is no nexus between etch rate, density, and mechanical strength.
The Examiner respectfully submits that the rejection establishes a clear nexus that Bhat teaches the etch rate affects the density and Nishikawa then teaches the density impacts the mechanical strength. Furthermore, a person having ordinary skill in the art would have recognized that the etch rate is affected by the acid concentration.
Conclusion
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 Hosung Chung whose telephone number is (571)270-7578. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794