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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Inventorship
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.
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.
Claim(s) 9-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yan et al (article from Nature Nanotechnology, vol. 7, March 2012, pages 191-196, submitted in the Information Disclosure Statement filed on February 11, 2022) in view of Kim et al (KR 20180108226A).
With regards to claim 9, Yan et al teach of a nanowire-based endoscope system comprising a nanoprobe which can safely penetrate the plasma membrane of biological cells. The nanoprobe is used for high throughput gene and drug discovery, biosensing and single-cell electrophysiology. The nanoprobe comprises an optical fiber and a nanowire attached to a tapered tip at one end of the optical fiber. See the abstract of Yan et al where it states “Here, we show that a nanowire waveguide attached to the tapered tip of an optical fiber can guide visible light into intracellular compartments of a living mammalian cell, and can also detect optical signals from subcellular regions with high spatial resolution”. In one embodiment, Yan et al teach that the nanoprobe can be used as a pH-sensitive endoscope for sensing pH in an environment. In this embodiment, a polymer embedded with a pH-sensitive fluorescent dye is coated on a tip part of the nanowire in the nanoprobe. Yan et al teach that this functionalized nanoprobe can sense a change in pH when immersed into microdroplets of buffer solutions having different pH values by passing light through the optical fiber of the nanoprobe and then detecting fluorescence signals emitted from the solutions as a function of pH. See the abstract, Figures 1 and 4, the second and third paragraphs in the second column on page 191, and page 195 of Yan et al, especially the first paragraph in the left-hand column of page 195.
Yan et al fail to teach that the nanowire attached to a tapered tip at one end of the optical fiber is grown on the one end of the optical fiber using a nanowire material solution.
Kim et al teach of a method for manufacturing a nanowire connected to one tapered end of an optical fiber. The method comprises filling a micropipette with a nanowire solution, coaxially aligning the micropipette with a tapered end of an optical fiber, forming a meniscus of the nanowire material solution, and extending the micropipette from the end of the optical fiber and evaporating a solvent of the nanowire solution in order to grow a nanowire on the end of the optical fiber. Kim et al teach that directly growing a nanowire on one tapered end of an optical fiber in this manner is advantageous since it minimizes optical loss at a junction between the optical fiber and the nanowire. Kim et al teach that the nanowire solution used to grow the nanowire comprises an organic conductive polymer, and the electrical and optical properties of the nanowire are controlled through chemical doping of the nanowire polymer solution. Kim et al also teach that nanowire attached to the optical fiber can be used as an optical sensor, and that the optical sensor can transmit light in the direction of the nanowire from the optical fiber or receive light in the direction of the optical fiber from the nanowire. See the abstract, pages 3-5 and the claims in the English-language translation of Kim et al.
Based upon a combination of Yan et and Kim et al, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to attach the nanowire labeled with the pH-sensitive fluorescent dye to the tapered one end of the optical fiber taught by Yan et al by growing the nanowire on the end of the optical fiber using a nanowire solution because Kim et al teach that manufacturing a nanowire attached to a tapered end of an optical fiber in this manner is advantageous since it minimizes optical loss at a junction between the optical fiber and the nanowire.
With regards to claims 10-11, Yan et al teach that the nanowire material used to form the nanowire having a pH-sensitive dye therein on the tapered tip of the optical fiber in the nanoprobe comprises a polymer solution, but fail to specifically teach that the polymer solution is a hydrophobic polymer solution containing one of PVBN3, PVB-alkyne or PVB-COOH. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a hydrophobic polymer solution containing one of the conventionally known polymers PVBN3, PVB-alkyne or PVB-COOH as the polymer solution having a pH-sensitive dye therein taught by Yan et al for forming the nanoprobe because the use of such a hydrophobic polymer solution would ensure that the pH-sensitive fluorescent dye would remain adhered to the nanowire and not leach out into a sample in which the nanoprobe is inserted. In addition, Kim et al also teach of forming a nanowire on the end of an optical fiber using an organic conductive polymer, and both PVBN3 and PVB-alkyne are organic conductive polymers.
With regards to claim 12, Yan et al teach that the optical fiber of the nanoprobe has a tapered tip at one end. See the abstract of Yan et al where it states “Here, we show that a nanowire waveguide attached to the tapered tip of an optical fiber can guide visible light into intracellular compartments of a living mammalian cell, and can also detect optical signals from subcellular regions with high spatial resolution”.
With regards to claims 13-14, Yan et al teach that the pH-responsive fluorescent material labeled on a part of the nanowire at the tip of the optical fiber is a fluorescein molecule (e.g. N-fluorescein acrylamide, FLAC), but does not specifically teach that the fluorescein molecule has a functional group capable of being conjugated to the nanowire, such as one of DBCO-FAM, Azide-FAM or Amine-FAM. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a fluorescein molecule having a functional group capable of being conjugated to the nanowire, such as one of DBCO-FAM, Azide-FAM or Amine-FAM, as the pH-responsive fluorescent material labeled on a part of the nanowire of the nanoprobe taught by Yan et al because a fluorescein molecule capable of being conjugated to the nanowire would ensure that the pH-responsive fluorescent dye remains adhered to the nanowire during use of the nanoprobe to measure a pH of a sample.
With regards to claims 15-16, Yan et al fail to specifically teach a value of the length of the nanowire which is wetted or coated with the pH-responsive fluorescent material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust a length of the nanowire which is wetted or coated with the pH-responsive fluorescent material taught by Yan et al to be within a range of 100 nm to 900 nm or 100 nm to 500 nm in order to ensure that the nanowire is wetted with the pH-responsive fluorescent material to the same extent or length with which the nanoprobe is to be inserted into a sample for measurement of a pH so that the nanowire is fully reactive with the sample.
With regards to claims 17-19, Yan et al teach that the nanoprobe has a uniform diameter of 300-500 nm, which is within the range of 10 nm to 900 nm recited in claim 18 and overlaps with the range of 10 nm to 400 nm recited in claim 19. See the section entitled “Nanowire endoscope fabrication” on page 195 of Yan et al.
With regards to claims 20-21, Yan et al fail to teach that the nanoprobe has a length of from 1 µm to 10 µm or from 1 µm to 5 µm. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust a length of the nanoprobe taught by Yan et al to a length of from 1 µm to 10 µm or from 1 µm to 5 µm because the length of the nanoprobe is dependent upon a sample into which the nanoprobe is intended to be inserted for pH measurement, and thus, one of ordinary skill in the art would be motivated to experimentally change the length of the nanoprobe to be between 1 µm to 10 µm or from 1 µm to 5 µm if this were equivalent to a depth required of the nanoprobe to be inserted into a sample.
Response to Arguments
Applicant's arguments filed September 23, 2025 have been fully considered but they are not persuasive.
The previous objections to the abstract and the specification made in the last Office action mailed on June 12, 2025 have been withdrawn in view of the amendments made to the abstract and the specification in the substitute specification filed on September 23, 2025. This substitute specification has been approved and entered. The previous objections to the claims and rejections of the claims under 35 USC 112(b) made in the last Office action have also been withdrawn in view of the amendments made to the claims.
Applicant’s arguments with regards to the previous rejection of the claims under 35 USC 102(a)(1) as being anticipated by Yan et al, and with regards to the previous rejection of the claims under 35 USC 103 as being obvious over Yan et al are now moot since these rejections have been withdrawn. In response to Applicant’s argument that Yan et al fail to teach of growing a nanowire solution on one end of an optical fiber since the nanowire taught by Yan et al is physically attached or bonded to one end of an optical fiber using a glue, it is noted that the claims are now rejected under 35 USC 103 as being obvious over Yan et al in view of Kim et al (KR 20180108226A) for the reasons set forth above. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to attach the nanowire labeled with the pH-sensitive fluorescent dye to the tapered one end of the optical fiber taught by Yan et al by growing the nanowire on the end of the optical fiber using a nanowire solution because Kim et al teach that manufacturing a nanowire attached to a tapered end of an optical fiber in this manner is advantageous since it minimizes optical loss at a junction between the optical fiber and the nanowire.
This Office action is not being made final in view of the new rejection of the claims under 35 USC 103.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAUREEN M WALLENHORST whose telephone number is (571)272-1266. The examiner can normally be reached on Monday-Thursday from 6:30 AM to 4:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander, can be reached at telephone number 571-272-1254. 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 Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/MAUREEN WALLENHORST/Primary Examiner, Art Unit 1797 October 27, 2025