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 .
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.
Priority
Acknowledgment is made of the present application as a proper National Stage (371) entry of PCT Application No. PCT/US20/24658, filed 03/25/2020, which claims benefit under 35 U.S.C. 119(e) to provisional application No. 62/823,158, filed 03/25/2019.
Status of the Claims
Claims 1 and 3 have been amended. Claims 1-12 are pending and are examined herein.
Drawings
Replacement drawings submitted 4/29/2025 have been received.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as obvious over Kante et al., WO2018/049052 A1 in view of Ozdemir et al. US PG Pub No. 2018/0306696 A1.
Regarding claim 1, Kante discloses a method for detecting an analyte (para [00047]), comprising providing a sensor that includes a plurality of coupled polaritonic structures having polaritonic resonances, operating the sensor at an exceptional point (paras [00010], [00036], claim 1), and identifying a presence of the analyte on the surface when a degeneracy of resonant frequencies and linewidths is lifted and a splitting of the resonant frequencies and linewidths occurs (para [00032]). Kante specifically teaches a system where EP is realized with two coupled polaritonic structures (i.e. the structures having different polaritonic resonances) (para [0074] and Figure 9.) Kante teaches implementing EP with the two-bar system greatly simplify fabrication. By coupling the two metallic bars that are in an asymmetric environment due to the presence of the substrate that are intentionally asymmetric by using bars of different size, an EP can be attained. Modes are not of orthogonal symmetries due to the asymmetry of the system and thus can reach an EP when the coupling is controlled. The two bars system has the advantage of minimizing the number of fabrication steps and greatly simplifies the implementation of the device (para [0074]).
While Kante fails to specifically disclose functionalizing a surface of at least one of the polaritonic structures in the sensor by providing a receptor for binding the analyte to the surface, it is not clear whether or not the method of the reference inherently possesses properties that would allow for the binding of an analyte to the surface of the resonator. For use as a nanoscale biosensor, it would appear that the functionalization and use of a receptor for an analyte would need to be included in the referenced invention, although this limitation is not explicitly disclosed.
However, Ozdemir teaches a method of detecting analytes bound to a microresonator surface (para [0198]) wherein “for biosensing applications, selectivity can be achieved by functionalization of the resonator surface with antibodies that can bind with targeting antigens or chemicals that can capture targeting molecules” (para [0224]).
It would have been prima facie obvious to one of ordinary skill in the art to apply the functionalization of the resonator surface taught by Ozdemir to the resonator surface taught by Kante in order to detect analytes with a reasonable expectation of success. In particular, analyte detection was successful when performed by Ozdemir using the functionalized resonator at a nanoscale level using whispering mode galleries, which indicate that use of this technology at nanoscale and single particle levels is possible. One would be motivated to combine the functionalization of the resonator surface described by Ozdemir with the method of determining presence of an analyte using exceptional points taught by Kante to obtain increased sensitivity of biosensing while reducing size (Kante para [0009]) and giving rise to enhanced detection capabilities by splitting resonant frequencies faster than in traditional nanosensors (para [00032]).
Regarding claim 2, Kante discloses the method of claim 1, which can be combined with the functionalization of the resonator surface taught by Ozdemir for the purpose of detecting analytes, wherein the plurality of coupled polaritonic structures is arranged as a multilayer structure (para [00046] and FIG 1A and Figures 3A and 3B).
Regarding claim 3, Kante discloses the method of claim 2, wherein the plurality of coupled polaritonic structures is arranged as a bilayer structure (para [00074] and FIG 9).
Regarding claim 4, Kante discloses the method of claim 2, wherein the plurality of coupled polaritonic structures is arranged as a plasmonic structure (para [00011]). It is noted that plasmonic structures are inherently polaritonic.
Regarding claim 5, Kante discloses the method of claim 4, wherein the plasmonic structures formed from a metallic material (Au/Cr metals) (para [00071]).
Regarding claim 6, Kante discloses the method of claim 5, wherein the metallic material includes gold (Au) (para [00071]).
Regarding claim 7, Kante discloses the method of claim 1, which can be combined with the functionalization of the resonator surface taught by Ozdemir for the purpose of detecting analytes, wherein each of the polaritonic structures are nanoscale structures (para [00011]).
Regarding claim 8, Kante discloses the method of claim 1, which can be combined with the functionalization of the resonator surface taught by Ozdemir for the purpose of detecting analytes, wherein the operating includes controlling symmetry compatible modes (paras [00008], [0011], [0033]).
Regarding claim 9, Kante discloses the method of claim 4, wherein the operating includes controlling symmetry compatible modes via near field and/or far field interactions. (para [00008]).
Regarding claim 10, Kante discloses the method of claim 3, wherein the modes are hybridized modes (para [00011]).
Regarding claim 11, Kante discloses the method of claim 2, further comprising a dielectric spacer disposed between layers of the multilayer structure (para [00015] and FIG 1A).
Regarding claim 12, Kante discloses the method of claim 1, which can be combined with the functionalization of the resonator surface taught by Ozdemir for the purpose of detecting analytes, wherein the operating includes operating at the EP based on the hybridization of detuned resonators in the coupled polaritonic structures (para [00044]).
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.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-10, and 14-20 of U.S. Patent No. 10,942,376, hereafter referred to as ‘376, in view of Ozdemir et al., US PG Pub 2018/0306696 A1.
Regarding claim 1, US ‘376 recites a method comprising a “plurality of nanostructures…operating…as coupled plasmonic resonators” (claim 2) that operate “at the exceptional point singularity to perform a function” (claim 1), wherein the function is a “sensing function” that “senses…biologically relevant substances” (claim 10). The claimed invention of ‘376 includes modes that “coalesce in terms of resonance frequency and/or linewidth” (claim 7). The invention is thus able to sense biologically relevant substances when the modes no longer coalesce due to interference by the biological substance, resulting in splitting of the resonant frequencies and linewidths. Claim 1 of the present application recites the same sensor that includes coupled polaritonic structures having polaritonic resonances that operates at an exceptional point. Because plasmonic structures are inherently polaritonic, the claimed subject matter of plasmonic structures in the patent ‘376 is understood to be a “species” of the generic polaritonic structures of application claim 1. Further, the biologically relevant substance claimed in ‘376 (see at claim 9 of ‘376) is understood to be a “species” of the generic analyte of application claim 1.
Patent ‘376 fails to recite functionalizing a surface of at least one of the polaritonic structures in the sensor by providing a receptor for binding the analyte to the surface.
However, Ozdemir teaches a method of detecting analytes bound to a microresonator surface (para [0198]) wherein “for biosensing applications, selectivity can be achieved by functionalization of the resonator surface with antibodies that can bind with targeting antigens or chemicals that can capture targeting molecules” (para [0224]).
It would have been prima facie obvious to one of ordinary skill in the art to apply the functionalization of the resonator surface taught by Ozdemir to the resonator surface claimed in ‘376 in order to detect analytes with a reasonable expectation of success. In particular, analyte detection was successful when performed by Ozdemir using the functionalized resonator at a nanoscale level using whispering mode galleries, which indicate that use of this technology at nanoscale and single particle levels is possible. One would be motivated to combine the functionalization of the resonator surface described by Ozdemir with the method utilizing exceptional points recited by ‘376 to obtain increased sensitivity of biosensing.
Regarding claims 2-3, ‘376 recites “a sensor, comprising a tunable structure” (claim 20) that is “operable at an exceptional point, comprising a plurality of nanostructures” (claim 14) wherein “the plurality of nanostructures includes a respective plurality of nano bars” (claim 15) and “the plurality comprises three nanobars” (claim 18) or “two nanobars” (claim 19) with the inclusion of “a dielectric spacer at least partially between each of the plurality of nanostructures” (claim 17), indicating a layered structure (see FIG. 9 of ‘376) as cited in application claims 2 and 3. The bilayer structure cited by ‘376 and depicted in ‘376 FIG. 9 is a species of the generic multilayer structure of application claim 2 encompassing the same species of a bilayer structure of application claim 3. The claimed sensor of ‘376 can be applied to the method of detecting an analyte described in ‘376 claims 1-2, 7, and 10 in conjunction with the functionalized surface of Ozdemir as described above.
Regarding claim 4, ‘376 recites a sensor comprising a tunable structure wherein “the plurality of nanostructures are structured and configured as coupled plasmonic resonators” (claim 14) which can be applied to the detection of analytes when functionalized using the method of Ozdemir as described above. The claimed plurality of coupled polaritonic structures arranged as plasmonic structures of application claim 4 is patentably indistinct from the structure configuration of patent ‘376 claim 14 in view of Ozdemir.
Regarding claims 5-6, ‘376 recites a sensor comprising a tunable structure wherein “each nano bar is made of gold” (claim 16) which can be applied to the detection of analytes when functionalized using the method of Ozdemir as described above. The claimed subject matter of gold plasmonic structures in ‘376 is understood to be a “species” of the generic metallic material of application claim 5. Further, the claimed gold plasmonic structure of ‘376 is patentably indistinct from the use of gold as the metallic material in application claim 6.
Regarding claim 7, ‘376 recites plasmonic nanoscale structures (claim 2) which can be applied to the detection of analytes when functionalized using the method of Ozdemir as described above. Plasmonic structures are inherently polaritonic, thus, the claimed subject matter of nanoscale plasmonic structures in the patent ‘376 is understood to be a “species” of the generic nanoscale polaritonic structures of application claim 7.
Regarding claim 8, ‘376 recites a sensor which can be applied to the detection of analytes when functionalized using the method of Ozdemir as described above, wherein driving the structure “includes controlling symmetry compatible modes” (claim 3) which is patentably indistinct from application claim 8.
Regarding claim 9, ‘376 recites a sensor which can be applied to the detection of analytes when functionalized using the method of Ozdemir as described above, wherein driving the structure “includes controlling symmetry compatible modes via near field and/or far field interactions” (claim 4) which is patentably indistinct from application claim 9.
Regarding claim 10, ‘376 recites a sensor which can be applied to the detection of analytes when functionalized using the method of Ozdemir as described above, wherein “the modes are hybridized modes” (claim 5) which is patentably indistinct from application claim 10.
Regarding claim 11, ‘376 recites a sensor which can be applied to the detection of analytes when functionalized using the method of Ozdemir as described above, wherein the multilayer structure comprises “a dielectric spacer at least partially between each of the plurality of nanostructures” (claim 17) which is patentably indistinct from application claim 11.
Regarding claim 12, ‘376 recites “a sensor, comprising a tunable structure” (claim 20) that is “operable at an exceptional point, comprising a plurality of nanostructures…configured as coupled plasmonic resonators” (claim 14) that can be applied to the detection of analytes (biologically relevant substances, claim 10 of ‘376; see further as cited above, the combination of copending ‘376 when functionalized using the method of Ozdemir as described above). As discussed previously above, Ozdemir for the purpose of detecting analytes, teach operating includes operating at the EP based on the hybridization of detuned resonators in the coupled polaritonic structures (para [00044]).
It would have been further prima facie obvious to one skilled in the art to apply the tunable resonator of ‘376 claims 14 and 20 as detuned resonators, wherein the modes are hybridized modes for the intended use of detecting an analyte on the surface. One would have been motivated to make said modification as an obvious matter of applying a known technique (the technique of operating at the PE based on the hybridization of detuned resonators in such structures) to a known method (methods of using such polaritonic structures as in ‘376 for detection of biological substances). As discussed previously above, Ozdemir teaches detecting analytes bound to a microresonator surface (para [0198]) wherein “for biosensing applications, selectivity can be achieved by functionalization of the resonator surface with antibodies that can bind with targeting antigens or chemicals that can capture targeting molecules” (para [0224])), and as such, one having ordinary skill would have a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 4/29/2025 have been fully considered but they are not persuasive.
Applicant argues amended claim 1 recites a sensor having two coupled polaritonic structures having different polaritonic resonances differs from Kante and Ozdemir because these references, either individually or together, do not teach a structure having even number of layers (e.g. nanobars). Applicant argues that Kante shows a structure that requires an odd number of layers to achieve an exception point.
This is not persuasive. Kante shows in Figure 9 and paragraph [0074] a sensor having two coupled polaritonic structures having different polaritonic resonances. The sensor of Kante is able to achieve EP with two nanobars.
Applicant argues that the use of only two layers is important because it significantly simplifies fabrication. As a result, the claimed invention is able to shrink the wavelength of light to electronic and molecular length scales.
This argument is not persuasive. Kante clearly discloses and provides motivation for a system having two bars because Kante teaches the same advantages as argued. Kante further teaches substances relevant to sensing are usually very small, and a very small wavelength is required to detect them (para [0075]). Since the system of Kante appears to be the same as those claimed, they would be expected to be able to work in the same manner, i.e. able to shrink the wavelength of light to electronic and molecular length scales. Kante clearly recognize this problem and specifically addressed it in their disclosure.
Applicant argues that Ozdemir employs coupled dielectric structures that do not shrink the wavelength of light by a sufficient amount and thus cannot achieve the degree of nano sensing that is achieved by the instant claims.
This argument is not persuasive. Ozdemir is cited for its teaching of a method of detecting analytes bound to a microresonator surface (para [0198]) wherein “for biosensing applications, selectivity can be achieved by functionalization of the resonator surface with antibodies that can bind with targeting antigens or chemicals that can capture targeting molecules” (para [0224]). The sensor system is taught by Kante as discussed above. A skilled artisan would have had a reasonable expectation of success by applying the functionalization of the resonator surface taught by Ozdemir to the resonator surface taught by Kante in order to detect analytes because analyte detection was successful when performed by Ozdemir using the functionalized resonator at a nanoscale level using whispering mode galleries, which indicate that use of this technology at nanoscale and single particle levels is possible. One would be motivated to combine the functionalization of the resonator surface described by Ozdemir with the method of determining presence of an analyte using exceptional points taught by Kante to obtain increased sensitivity of biosensing while reducing size (Kante para [0009]) and giving rise to enhanced detection capabilities by splitting resonant frequencies faster than in traditional nanosensors (para [00032]).
With respect to the nonstatutory double patenting rejection, this rejection is maintained until such time as a proper Terminal Disclaimer is filed.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/BAO-THUY L NGUYEN/Supervisory Patent Examiner, Art Unit 1677 July 30, 2025