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 the Claims
Claims 1-3, 7-18, and 20-23 are pending and rejected. Claims 1, 12, and 21 are amended. Claims 4-6 and 19 are cancelled.
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.
Claims 1, 2, 10-12, 14, 17, 22, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu, CN 101986145 A.
The following citations for Xu, CN 101986145 A are in reference to the machine translation provided by Espacenet and the figures in the original document.
Regarding claim 1, Xu teaches a nanopore electrical sensor comprising a substrate, a first insulating layer, a nanofunctional layer, and a second insulating layer stacked sequentially from bottom to top, wherein a nanopore is provided in the center of the substrate, the first insulating layer, the nanofunctional layer, and the second insulating layer, and the nanofunctional layer is a thin sheet with a nanopore in the center (0008). They teach using the nanosensor with DNA (0008). They teach that the nanofunctional layer is a conductive material such as graphite, reduced graphene oxide, partially hydrogenated graphene, BNC, MoS2, NbSe2, or Bi2Sr2CaCuOx (0011). They teach that graphite is a graphene film with 1 to 10 layers (0013). They teach that BNC is a layered conductive film hybridized with boron nitride and graphene that includes boron, nitrogen, and carbon (0016). They teach that the material of the substrate is made of a semiconductive material such as Si, GaN, Ge, or GaAs, or an insulating material including one or mixture of SiC, Al2O3, silicon nitride, SiO2, HfO2, etc. (0020). They teach that the first insulating layer and the second insulating layer are SiO2, Al2O3, BN, SiC, SiNx, etc. (0021). They teach that the substrate may be the same material as the first insulating layer (0021). They teach preparing a first insulating layer 2 of 100 nm silicon nitride on a 600-micron thick silicon substrate (0070 and Fig. 4a). They teach forming a 100 nm metal nickel catalyst layer 12 on the silicon nitride insulating layer (0070 and Fig. 4b). They teach that the metal catalyst layer is used to grow the BNC nanofunctional layer 3 (0070 and Fig. 4c). They teach that the BNC layered thin film was prepared as nanofunctional layer 3 by using CVD (0071 and Fig. 4c). They teach that after the BNC film is formed, it is placed in iron chloride to react away the metal catalyst so that the BNC layer automatically remains on the silicon nitride layer (0072 and Fig. 4d). They teach that a platinum electrical contact 5 is formed on the BNC layer (0073 and Fig. 4d). They form an alumina layer over the contact and nanofunctional layer which is planarized to form the second insulating layer 6 (0074 and Fig. 4f). They teach forming a hole in the silicon substrate and a hole in the silicon nitride layer (0075-0076 and Fig. 4g-h). They then use electron beam etching and argon reactive particle beam etching to etch the alumina and BNC layers to prepare nanopores 3 (0077 and Fig. 4i). They teach that the metal catalyst layer used for preparing BNC thin film by CVD include one or more of Cu, Ni, Pt, Pd, Ir, Fe, etc. with a thickness of 15 nm to 600 nm (0080). Therefore, Xu teaches an in-situ fabrication method of making a membrane device (nanopore sensing device with a nanofunctional layer) by providing a substrate having an upper surface, a lower surface, and an aperture, the aperture having one or more walls connecting the upper and lower surfaces and forming a well (as in Fig. 4g), depositing a passivating layer on the lower surface of the substrate (as in fig. 4a), and forming a membrane by CVD directly on the passivating layer, i.e., the layer will be formed by CVD and once the metal is dissolved it will be directly on the passivating layer, such that it will extend across the aperture, thereby forming a floor of the well (Fig. 4h), wherein the membrane is boron carbon nitride or BNC.
Regarding claim 2, Xu teaches the process of claim 1. Xu teaches that the material of the substrate is made of a semiconductive material such as Si, GaN, Ge, or GaAs, or an insulating material including one or mixture of SiC, Al2O3, silicon nitride, SiO2, HfO2, etc. (0020). They teach that the first insulating layer and the second insulating layer are SiO2, Al2O3, BN, SiC, SiNx, etc. (0021). They teach that the substrate may be the same material as the first insulating layer (0021). Therefore, the substrate and the passivation are selected from a list including the claimed materials.
Regarding claims 10 and 11, Xu teaches the process of claim 1. Xu further teaches forming the nanopore using electron beam etching (0077 and 0087).
Regarding claim 12, Xu teaches the features of claim 12 including performing an in-situ fabrication method of making a membrane device comprising steps (a), (b), and (d) as discussed above. Further, they teach forming the metal layer as the catalyst for forming the BNC layer, where the catalyst is subsequently removed to form the BNC layer directly on the passivating layer such that they also provide depositing a sacrificial layer having an upper surface and a lower surface on the passivating layer and across the aperture so as to form the floor of the well, where the membrane is formed by CVD directly on the upper surface of the sacrificial layer and/or the passivating layer and extending across the aperture, where the sacrificial layer is subsequently removed leaving the membrane as the floor of the well and in Fig. 4h.
Regarding claim 14, Xu teaches the features of claim 12, where Xu teaches using copper, platinum, iron, and nickel as the catalytic layer for depositing BNC by CVD (0080).
Regarding claim 17, Xu teaches the process of claim 12. Xu teaches that the material of the substrate is made of a semiconductive material such as Si, GaN, Ge, or GaAs, or an insulating material including one or mixture of SiC, Al2O3, silicon nitride, SiO2, HfO2, etc. (0020). They teach that the first insulating layer and the second insulating layer are SiO2, Al2O3, BN, SiC, SiNx, etc. (0021). They teach that the substrate may be the same material as the first insulating layer (0021). Therefore, the substrate and the passivation are selected from a list including the claimed materials.
Regarding claims 22 and 23, Xu teaches the process of claim 12. Xu further teaches forming the nanopore using electron beam etching (0077 and 0087).
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Xu, CN 101986145 A as applied to claim 12 above.
The following citations for Xu, CN 101986145 A are in reference to the machine translation provided by Espacenet and the figures in the original document.
Regarding claim 13, Xu teaches the process of claim 12, as discussed in the 102(a)(1) rejection above. Xu further teaches forming an electrical contact layer by vacuum thermal evaporation, where the metal of the contact can be copper or nickel (0085). From this, 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 deposited the catalytic material using thermal evaporation because Xu teaches that such a method is suitable for forming a nickel layer during the fabrication process such that it will be expected to provide the layer as desired.
Regarding claim 15, Xu teaches the process of claim 12, as discussed in the 102(a)(1) rejection above. They further teach that the thickness of the catalyst layer is 15 nm to 600 nm (0080), so as to overlap the claimed range. According to MPEP 2144.05, “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Claims 1, 2, 10-15, 17, and 22-23 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Xu, CN 101986145 A in view of Kim, US 2010/0317124 A1.
The following citations for Xu, CN 101986145 A are in reference to the machine translation provided by Espacenet and the figures in the original document.
Regarding claim 1, as discussed above, Xu is considered to teach the features of claim 1.
In an alternative interpretation, they do not specifically teach that the membrane is formed directly on the passivating layer during the CVD process.
Kim teaches a sensor that includes a first support having at least one opening, a metal-containing nanomembrane associated with the at least one opening and configured to interact with at least one molecular species, and at least one electrode configured to sense one or more interaction of the at least one molecular species with the metal-containing nanomembrane (abstract). They teach forming the sensor by depositing a first layer of insulating material on one side of a base layer (0024-0025 and Fig. 3A). They teach that the base layer may be glass, silicon, quartz, etc. (0025). They teach that the insulating material may be silicon nitride or silicon oxide (0026). They teach forming an opening in the base material (0027-0028 and Fig. 3B). They teach depositing a layer of metal-containing material on the insulating layer, where the layer of metal containing material may be nickel, copper, platinum, etc. (0029, 0032, and Fig. 3C). They teach forming an opening in the insulating material to expose the metal-containing material (0031 and Fig. 3D). They teach that the layer of metal-containing material may further include CNTs, where a layer of CNTs is deposited on the metal layer (0030, 0033, and Fig. 4A). They teach treating the metal/CNT layer to penetrate the CNTs into the metal and then removing the insulating material in the opening (0036-0037 and Fig. 4C). Therefore, Kim teaches forming a substrate layer, an insulating layer, forming a hole in the insulating layer, depositing a metal layer on to the insulating layer and then removing the insulating layer to expose the metal layer, where the metal layer can be nickel or copper which Xu indicates is a catalytic metal for BNC growth.
From the teachings of Kim, 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 formed the device structure by applying the first insulating layer to the substrate, forming an aperture in the substrate, forming a nickel or copper metal layer on the first insulating layer, remove the first insulating layer to expose the nickel or copper metal layer, and then to have deposited the BNC layer on the metal followed by removing the metal to result in forming the BNC layer on the first insulating layer because Kim provides a method of forming a molecule sensor having a patterned substrate, patterned insulating layer, and a nickel or copper metal layer overlying the structure as desired by Xu, and Xu teaches nickel and copper are catalytic metals for growing BNC by CVD which can be etched away so as to be removed from the structure, where BNC can be directly deposited on the metal followed by removing the metal to result in the layer on the insulating layer such that it will be expected to provide the BNC layer on the desired structure having apertures as in Fig. 4h of Xu. Therefore, Xu in view of Kim provide the process of claim 1 by providing a substrate having an upper surface, a lower surface, and an aperture, the aperture having one or more walls connecting the upper and low surfaces and forming a well (as in Fig. 3B of Kim), depositing a passivating layer on the lower surface of the substrate (as in Fig. 3A of Kim), and forming a membrane by CVD directly on the passivating layer by depositing on the metal nickel, copper, or platinum layer that is subsequently removed to as to provide the membrane directly on the passivating layer, where the membrane is boron carbon nitride. Further, since they provide the process of claim 1, where the metal is exposed and in contact with the passivating layer, at least some of the BNC layer will be deposited so as to directly contact the passivating layer during deposition. Additionally, since they provide the process of claim 1, with the suggestion to have the exposed catalyst layer as in Fig. 1 of the instant specification, BNC material is also expected to directly deposit on the passivating layer as well as in Fig. 1 of the instant specification. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Regarding claim 2, Xu in view of Kim suggests the process of claim 1. Xu teaches that the material of the substrate is made of a semiconductive material such as Si, GaN, Ge, or GaAs, or an insulating material including one or mixture of SiC, Al2O3, silicon nitride, SiO2, HfO2, etc. (0020). They teach that the first insulating layer and the second insulating layer are SiO2, Al2O3, BN, SiC, SiNx, etc. (0021). They teach that the substrate may be the same material as the first insulating layer (0021). Therefore, the substrate and the passivation are selected from a list including the claimed materials.
Regarding claims 10 and 11, Xu in view of Kim suggests the process of claim 1. Xu further teaches forming the nanopore using electron beam etching (0077 and 0087) such that 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 formed the nanopore in the membrane using electron beam etching because it is indicated as being a suitable method for forming nanopores.
Regarding claim 12, Xu in view of Kim suggests the features of claim 12 including performing an in-situ fabrication method of making a membrane device comprising steps (a), (b), and (d) as discussed above. Further, they suggest forming the metal layer as the catalyst for forming the BNC layer, where the catalyst is subsequently removed to form the BNC layer directly on the passivating layer such that they also provide depositing a sacrificial layer having an upper surface and a lower surface on the passivating layer and across the aperture so as to form the floor of the well, where the membrane is formed by CVD directly on the upper surface of the sacrificial layer and/or the passivating layer and extending across the aperture, where the sacrificial layer is subsequently removed leaving the membrane as the floor of the well.
Regarding claim 13, Xu in view of Kim suggests the process of claim 12. Xu teaches forming an electrical contact layer by vacuum thermal evaporation, where the metal of the contact can be copper or nickel (0085). Kim further teaches depositing the metal-containing layer by thermal evaporation, where the metal containing material is nickel or copper (0029 and 0032). 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 deposited the catalytic material using thermal evaporation because both Xu and Kim teach that such a method is suitable for forming a nickel layer such that it will be expected to provide the layer as desired.
Regarding claim 14, Xu in view of Kim suggests the features of claim 12, where Xu teaches using copper, platinum, iron, and nickel as the catalytic layer for depositing BNC by CVD (0080).
Regarding claim 15, Xu in view of Kim suggests the process of claim 12. Xu further teaches that the thickness of the catalyst layer is 15 nm to 600 nm (0080), so as to overlap the claimed range. According to MPEP 2144.05, “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Regarding claim 17, Xu in view of Kim suggests the process of claim 12. Xu teaches that the material of the substrate is made of a semiconductive material such as Si, GaN, Ge, or GaAs, or an insulating material including one or mixture of SiC, Al2O3, silicon nitride, SiO2, HfO2, etc. (0020). They teach that the first insulating layer and the second insulating layer are SiO2, Al2O3, BN, SiC, SiNx, etc. (0021). They teach that the substrate may be the same material as the first insulating layer (0021). Therefore, the substrate and the passivation are selected from a list including the claimed materials.
Regarding claims 22 and 23, Xu in view of Kim suggests the process of claim 12. Xu further teaches forming the nanopore using electron beam etching (0077 and 0087) such that 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 formed the nanopore in the membrane using an electron beam because it is indicated as being a suitable method for forming nanopores.
Claims 3 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Xu alternatively in view of Kim as applied to claims 1 and 12 above, and further in view of Shim, US 2012/0325664 A1.
Regarding claims 3 and 18, Xu alternatively in view of Kim teach or suggest the process of claims 1 and 12, where Xu teaches that the material of the substrate is made of a semiconductive material such as Si, GaN, Ge, or GaAs, or an insulating material including one or mixture of SiC, Al2O3, silicon nitride, SiO2, HfO2, etc. (0020). They teach that the first insulating layer and the second insulating layer are SiO2, Al2O3, BN, SiC, SiNx, etc. (0021). They teach that the substrate may be the same material as the first insulating layer (0021). Xu teaches that the membrane has a thickness of 0.3 to 1 nm (0012), so as to be within the claimed range.
They do not teach the thickness of the passivating layer.
Shim teaches a nanosensor comprising a substrate having a hole; a first insulating layer disposed on the substrate and having a first nanopore at a location corresponding to the hole in the substrate (abstract and Fig. 1B). They teach forming the nanosensor by forming a first insulating layer on one surface of the substrate; forming graphene on the first insulating layer; forming a metal layer on the graphene, and patterning the metal layer and the graphene; exposing a portion of the graphene by patterning the metal layer; forming a protective layer on the exposed portion of the graphene and the metal layer; exposing a portion of the graphene by removing a portion of the protective layer; and forming a hole in the substrate and forming a first nanopore in the first insulating layer and the graphene to be connected to the hole (0011). They teach that forming the graphene on the first insulating layer may include forming a catalyst layer on the first insulating layer and growing graphene on the catalyst layer (0012). They teach that the substrate may be Si, quartz, glass or the like (0046). They teach that the first insulating layer may be silicon nitride and may have a thickness equal to or less than tens of nanometers, such as from about 10 nm to about 100 nm (0048). They teach using the nanosensor to detect DNA (0064).
From the teachings of Shim, 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 formed the first insulating layer to have a thickness in the range of 10 to 100 nm because Shim teaches that such a thickness is suitable for a first insulating layer used in a nanopore sensor such that it will be expected to provide a suitable thickness in the process of Xu alternatively in view of Kim. Therefore, in the process of Xu in view of Shim and alternatively in view of Kim, the thickness of the first insulating layer will overlap the claimed range and the thickness of the membrane will be within the claimed range. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” According to MPEP 2144.05, “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Claims 7-9 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Xu alternatively in view of Kim as applied to claims 1 and 12 above, and further in view of Russo, WO 2012/125770 A2.
Regarding claims 7 and 20, Xu alternatively in view of Kim teaches or suggest the limitations of instant claims 1 and 12.
They do not teach making a plurality of membrane devices.
Russo teaches a method of forming a nanopore in a nanometric material (abstract). They teach producing a nanometric structure with nanopores where the structure is formed of an impermeable self-supporting nanometric material having a thickness of no greater than about 5 nm (0009). They teach that the nanometric material has a plurality of nanopores of at least about 1000 nanpores/cm2 (0009). They teach that the nanometric materials of the invention include graphene, hexagonal boron nitride, MoS2, WS2, MoSe2, MoTe2, TaSe2, NbSe2, NiTe2, Bi2Sr2CaCu2Ox, and Bi2Te3 (0023). They teach arranging the nanometric material on a continuous or discontinuous underlying support structure in any convenient orientation that accommodates nanopore processing (0024). They teach that the support structure can be discontinuous with openings of a selected masking pattern (0024). They teach that the nanometric material can be synthesized in-position in situ (0024). They teach that the support structure can be provided as any suitable support material including electrically insulating materials (0025). They teach that the support structure is provided as a frame (0025). They teach that a silicon substrate can be configured as a support with a frame membrane, e.g. a silicon nitride or other material frame membrane, having one or more apertures in the frame (0026 and Fig. 2A-B). They teach that the frame membrane 18 thereby operates as a support frame around the apertures 22, to enable a self-supported region 24 of nanometric material across the aperture (0026 and Fig. 2B). They teach that the arrangement can be extended to accommodate any number of distinct areas of nanometric material that are each suspended in an array 26 disposed in a support frame 28 across apertures in the frame membrane on a substrate (0026). They teach that the apertures in the support frame membrane layer can be any suitable geometry and can be, e.g., between about 5-10 nm and about 200 nm in extent or other geometry and extent corresponding to a selected nanopore size and location (0027). They provide an array of nanopores produced in a self-supported nanometric material 24, on a frame 28 and substrate 29 with distinct selected regions of nanometric material in which nanopores are provided in a controllable fashion (0061 and Fig. 5B). They teach that nanopore-articulated nanoscale devices are of great interest for enabling the localization, detection, and characterization of molecules such as single DNA molecules or protein molecules (0005).
From the teachings of Russo, 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 modified the process of Xu alternatively in view of Kim to have made an array of nanopore sensors because Russo teaches that such a configuration is desirable for devices used to detecting molecules such as DNA and Xu provides a nanopore sensor for detecting DNA (0010) such that it will be expected to provide a desirable device arrangement. Therefore, the process will include making a plurality of membrane devices in the form of the sensor array.
Regarding claims 8-9 and 21, Xu in view of Russo and alternatively Kim suggest the process of claims 7 and 20.
They do not teach the percentage of membranes that are intact or the conductance.
However, since they teach the process of claim 1, using the claimed materials, the resulting device is expected to have a percentage of membranes intact and conductance within the claimed ranges. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Alternatively, 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 optimized the process to provide as many intact membranes as possible so as to form as many functional nanosensors as possible. According to MPEP 2144.05 II A, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 8, 9, and 21 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Xu view of Russo and alternately further in view of Kim as applied to claims 7 and 20 above, and further in view of Garaj, US 2012/0234679 A1 and Aleman, “Transfer-Free Batch Fabrication of Large-Area Suspended Graphene Membranes”, 2010.
Regarding claims 8, 9, and 21, Xu in view of Russo and alternatively further in view of Kim suggest the process of claims 7 and 20. Xu teaches forming holes in the silicon nitride film having a diameter of 2 microns (0076 and Fig. 4h).
They do not teach the intact membranes and the conductance.
Garaj teaches self-supported single-layer graphene membranes including a nanopore extending through a thickness of the graphene membrane (abstract). They teach that the graphene nanopore is used for characterizing DNA molecules (0026). They teach that when measuring the conductance of the graphene layer, the highest conductance was attributed to ion transport through defect structures in the free-standing graphene membrane (0063). They teach that conductance changes in the membrane are used for molecular detection (0031).
Aleman teaches a process for bath production of large-area patterned free-standing graphene membranes on Cu scaffolds using CVD-grown graphene (abstract). They teach that the technique avoids transfer of graphene and that the intrinsic strength and integrity of CVD-grown graphene films is sufficient for sub-100-micron width membrane applications (abstract). They teach that transfer processes require meticulous optical identification and are delicate in nature (pg. 4762). They teach forming a suspended graphene membrane by CVD of methane and hydrogen to grow graphene on 10- and 25-micron thick Cu foils (pg. 4762, Results and Discussion). They teach removing graphene from one side of the Cu foil using an oxygen etching process, covering both sides of the foil with a positive photoresist, patterning the resist, etching the copper from the graphene, and then removing the resist (pg. 4762-4763, Results and Discussion, and Scheme 1). They teach that many membranes are fully intact, especially when their width is on the order of 15 microns or less (pg. 4763, Results and Discussion). They teach that the process can be used for sensors and for electrical measurements and applications (pg. 4766, Results and Discussion). Aleman teaches that the yield of intact graphene membranes depends strongly on the hole diameter, where yields of intact suspended graphene of 75% were obtained using 25-micron thick foil when using a hole diameter or 30-60 microns (pg. 4764, Results and Discussion). They teach that when the hole diameter is decreased to 20 microns, the yield for the 25-micron foil surpassed 90% and for diameters less than or equal to 15 microns, the yield was nearly 100% for both the 10- and 25-micron foils (pg. 4764, Results and Discussion).
As noted above, Xu indicates that BNC is hybridized boron nitride and graphene (0016), such that it is expected to have properties similar to graphene.
From this, 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 optimized the process of Xu in view of Russo and alternatively in view of Kim to have maximized the percent of intact membranes because Garaj teaches that the conductance is used for molecular detection, where defects in the graphene change the conductance and that the nanopores are formed for the purpose of translocating molecules for detection such that by reducing or minimizing the defects, holes, rips, etc., in the membrane layer it will be expected to provide an improved device because the conductance changes can be attributed to molecular detection as opposed to defects and further because Aleman teaches that holes with a diameter of 15 microns or less (larger than the frame holes of Xu in the silicon nitride or passivating layer) can be formed with 100% intact graphene layers such that the process is expected to be capable of forming the BNC membrane with a percentage of intact membranes within the claimed range since BNC is indicated as being similar to graphene. Further, since Garaj teaches that defects increase the conductance, by minimizing the defects it will also be expected to result in providing a membrane with a conductance within the range of claims 9 and 21.
Further, since Xu in view of Russo, Garaj, Aleman and alternatively Kim suggest the process of claims 7 and 20, using a BNC membrane as required by claim 1, with the suggestion of minimizing the defects, the resulting membrane is also expected to have a conductance within the claimed range. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Xu alternately further in view of Kim as applied to claim 14 above, and further in view of Aleman, “Transfer-Free Batch Fabrication of Large-Area Suspended Graphene Membranes”, 2010.
Regarding claim 16, Xu alternatively in view of Kim teach or suggest the process of claim 14, where the metal is nickel or copper.
Xu teaches removing a nickel layer from the structure using iron chloride (0072).
Aleman teaches using copper as the surface for CVD growth of graphene (pg. 4762, Results and Discussion). They teach etching the sacrificial layer using iron chloride (pg. 4763, Results and Discussion and Scheme 1). They teach that the process resulted in the formation of iron oxides on the surface, but that to avoid such formation, alternative Cu etchants such as ammonium persulfate can be used (pg. 4765, Results and Discussion).
From the teachings of Aleman, 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 used copper as the sacrificial layer and to have etched the copper sacrificial layer using ammonium persulfate because Xu teaches using copper as the catalytic material for depositing BNC, where ferric chloride can be used as an etchant for nickel, and Aleman teaches that copper can be removed or etched using ammonium persulfate as an alternative to ferric chloride so as to avoid the formation of iron oxides such that copper will be expected to successfully deposit the BNC layer and then be removed using the ammonium persulfate solution to provide the desired structure without leaving behind iron oxides. Further, since Aleman indicates that ammonium persulfate can etch copper to provide a graphene structure and BNC is indicated by Xu as being similar to graphene, and it is an alternative to an etchant taught by Xu, it is also expected to be compatible in the process of Xu in view of Aleman and alternatively Kim.
Response to Arguments
Applicant's arguments filed 12/4/2025 have been fully considered and are persuasive in light of the claim amendments. Therefore, the rejection has been modified as indicated above.
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 CHRISTINA D MCCLURE whose telephone number is (571)272-9761. The examiner can normally be reached Monday-Friday, 8:30-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. 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.
/CHRISTINA D MCCLURE/Examiner, Art Unit 1718 /GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718