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 .
DETAILED ACTION
Acknowledgement is hereby made of receipt and entry of the communication filed on Sep. 3, 2025. Claims 1-9, 11-22 and 24-25 are pending and currently examined.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
(Previous Rejection - Withdrawn) Claims 1-15 were rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
This rejection is withdrawn in view of the amendment filed on Sep. 3, 2025.
Claim Rejections - 35 USC § 102
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.
(Previous Rejection - Maintained) Claims 1-9, 11-22 and 24-25 remain rejected under 35 U.S.C. 102 as being anticipated by Yang et al. (Nano Lett. 2019, 19, 8138−8148. Published on Oct. 30, 2019).
This rejection is maintained pending applicant’s submission of a declaration under 37 CFR 1.130.
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 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.
(Previous Rejection – Maintained) Claims 1-9, 11-22 and 24-25 remain rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (Adv. Mater. 2018, 30, 1802762), Dong et al. (US 11,022,610 B1, Date of patent Jun. 1, 2021; filed on Jan. 21, 2019), Khalil et al. (Biosensors and Bioelectronics, Volume 131, 15 April 2019, Pages 214-223), and Jablonska et al. (Current Medicinal Chemistry, 2019, 26, 6878-6895).
Applicant argues that the claims are distinguished over the prior art for their unique and defined nanocone geometry, the integration of a uniform and thin GO nanosheet coating over gold nanocones, and the resulting enhanced and tunable electromagnetic and energy transfer properties, which are not disclosed or suggested by the cited references. Applicant argues that the cited art fails to teach or suggest the claimed nanocone geometry, specifically, none of the cited references either alone or in combination, describes a nanoarray comprising nanocones with the following parameters: base diameter of 200-400 nm, height of 150-350 nm, center-to-center spacing of 300-600 nm, and a graphene oxide nanosheet layer having a thickness of 1 nm - 10 nm as claimed. Applicant argues that a person of ordinary skill in the art would not have had any guidance or motivation to modify the teachings of the prior art to result in the claimed invention. Applicant argues that simply being capable of detecting biomolecules is not a motivation under KSR, where the modification must be directed to the same problem, that the cited references describe different architectures and analytical goals, and that the cited art also includes non-analogous art.
Applicant’s arguments are not persuasive. Lee teaches graphene-Au hybrid nanoelectrode arrays (NEAs), comprising the structural features as claimed. See e.g., Figure 2 of Lee. Geometric dimensions of these structural features are adjustable and may be optimized through routine experimentation. “[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 106 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 2144.05 II A. Unless Applicant can show that the claimed geometric ranges of structural features are critical to the claimed invention, these ranges are considered obvious through routine experimental optimization.
As to applicant’s argument about lack of motivation to combine the cited references and analogy of the cited prior art, cited references are related to GO-AuNPs and arrays of the GO-AuNPs as well as their application in detection of biological agents by light scattering. The cited references are considered to include analogous art. One of skill in the art would have been motivated to combine the teachings of the cited references, e.g., to use the GO-AuNPs platforms disclosed in Lee and Dong in the SERS assay systems disclosed in Lee, Khalil and Jablonska for observation or detection of cells or biomolecules.
Conclusion
No claims are allowed.
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 extension fee 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 NIANXIANG (NICK) ZOU whose telephone number is (571)272-2850. The examiner can normally be reached on Monday - Friday, 8:30 am - 5:00 pm, EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JANET ANDRES, on (571) 272-0867, can be reached. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NIANXIANG ZOU/Primary Examiner, Art Unit 1671