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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on September 22, 2025 has been entered.
Response to Arguments
Applicant's arguments filed September 22, 2025 have been fully considered but they are not persuasive.
Applicant once again argues that the Gao publication is not prior art to the claimed invention as a result of the 35 USC 102(b)(1)(A) exception, because Gao was published less than one year before the effective filing date of the instant application, and because Gao is a disclosure by the inventors. While the examiner still agrees that Gao was published less than one year before the effective filing date of the claimed invention, and that the inventors of the instant application are all authors of the Gao publication, the statement made in applicant’s remarks remains insufficient to invoke the 35 USC 102(b)(1)(A) exception and disqualify the Gao publication as prior art.
As previously stated, MPEP 2153.01(a) describes a situation where it is not readily apparent from the publication that it is an inventor-originated disclosure. The MPEP states, “If, however, the application names fewer joint inventors than a publication (e.g., the application names as joint inventors A and B, and the publication names as authors A, B and C), it would not be readily apparent from the publication that it is an inventor-originated disclosure and the publication would be treated as prior art under AIA 35 U.S.C. 102(a)(1) unless there is evidence of record that an exception under AIA 35 U.S.C. 102(b)(1) applies” (emphasis added). The situation highlighted in bold is the case here with the instant application, as the application names three inventors; however, the publication names 13 authors (the three inventors, plus an additional 10 authors). As a result, it is not readily apparent from the publication that it is an inventor-originated disclosure.
The MPEP also provides a mechanism by which an applicant can establish that a disclosure is not prior art using an exception under 35 USC 102(b). The MPEP states, “The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130 ) to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b). See MPEP § 717. In the situations in which it is not apparent from the prior disclosure or the patent application specification that the prior disclosure is an inventor-originated disclosure, the applicant may establish that the AIA 35 U.S.C. 102(b)(1)(A) exception applies by way of an affidavit or declaration under 37 CFR 1.130(a). MPEP § 2155.01 discusses the use of affidavits or declarations to show that the prior disclosure was an inventor-originated disclosure made during the grace period.”
As a result of the above statement from the MPEP, it is clear that the mechanism by which applicant can exclude a reference using 35 USC 102(b)(1)(A) in this situation is by providing an affidavit or declaration under 37 CFR 1.130. The statement made in the remarks in response to the previous Office action, therefore, is not sufficient to exclude the Gao publication as prior art, as that statement is not in the form of an affidavit or declaration. As a result, the Gao publication remains eligible as prior art under 35 USC 102(a)(1), and the claims remain rejected for the reasons set forth below.
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.
Claims 1-2, 5-6, 10-12, 15, 17, 22, 25-27, 30-31, 35-37, 40, and 45-47 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gao et al (“Superabsorbing Metasurfaces with Hybrid Ag-Au Nanostructures for Surface-Enhanced Raman Spectroscopy Sensing of Drugs and Chemicals”).
Regarding claims 1 and 26, Gao (Fig. 1) discloses a method for manufacturing a substrate for Surface-Enhanced Raman Spectroscopy (SERS) (claim 1) and a corresponding structure for Surface-Enhanced Raman Spectroscopy (SERS) (claim 26), the method and structure comprising a ground plate (Ag ground plate, see Fig. 1A), a space layer disposed on the ground plate (spacer layer, see Fig. 1A); a first plurality of metallic nanostructures disposed on the spacer layer such that a portion of the spacer layer is exposed in gaps formed between the nanostructures of the first plurality of metallic nanostructures (see the Ag metallic nanostructures on top of the spacer layer; see Fig. 1B); and a second plurality of metallic nanostructures disposed on the spacer layer in the gaps of the first plurality of metallic nanostructures (see the Au metallic nanostructures on top of the spacer layer in the gaps between the Ag metallic nanostructures; see Fig. 1C) (for the above, see section 2.1 on page 2).
As for claims 2 and 27, Gao teaches that the ground plate is disposed on a substrate (see Fig. 1A and section 2.1).
As for claims 5 and 30, Gao discloses that the ground plate is reflective (this is inherent; the ground plate is made of silver as per Fig. 1A and section 2.1, which is the metal with the highest reflectivity).
As for claims 6 and 31, Gao discloses that the ground plate comprises a metal (as the ground plate is made of silver as per Fig. 1A and section 2.1, the ground plate is made of metal).
As for claims 10 and 35, Gao discloses that the spacer layer comprises a low-loss dielectric (as the spacer layer is made of aluminum oxide as per section 2.1, this means that the spacer layer comprises a low-loss dielectric).
As for claims 11 and 36, Gao discloses that the low-loss dielectric comprises aluminum oxide (see section 2.1).
As for claims 12 and 37, Gao discloses that the low-loss dielectric is configured to transmit more than 80% of incident light (aluminum oxide, which is what the spacer layer is made of as per section 2.1, is known to be transparent or translucent when properly arranged).
As for claims 15 and 40, Gao discloses that the first plurality of metallic nanostructures comprise a material configured for localized surface plasmon resonance (see, for instance, section 2.5 – “The simulation was also performed to compare an Ag–Au metasurface with an Ag–Ag metasurface, confirming that the plasmonic coupling will not be affected much when the material composition changes from Ag–Au to Ag–Ag (see Section S3 in the Supporting Information)”).
As for claim 17, Gao discloses that forming the first plurality of metallic nanostructures on the spacer layer comprises depositing a first metallic layer on the spacer layer, and annealing the first metallic layer at a temperature such that the first metallic layer is transformed into the first plurality of nanostructures disposed on the spacer layer thereby exposing the portion of the spacer layer (see section 2.1 – “Following our previously reported lithography-free fabrication technique, direct deposition of Ag followed by thermal annealing was used to manipulate the average morphology (e.g., size, spacing) of the first layer of Ag NPs (Figure 1b) to tune the effective optical constant and realize the desired light-trapping band”).
As for claim 22, Gao discloses that forming the second plurality of metallic nanostructures comprises depositing a second metallic layer on the first plurality of metallic nanostructures and the exposed portion of the spacer layer; and annealing the second metallic layer at a temperature such that the second metallic layer is transformed into the second plurality of metallic nanostructures disposed in the gaps of the first plurality of nanostructures (see section 2.1 – “Next, a second Au film with the thickness of 5 nm was deposited on top of Ag NPs. The substrate was then annealed at 150 °C to further manipulate the NP size and interparticle distance of Au NPs (Figure 1c)”).
As for claims 25 and 47, Gao discloses that the material of the first plurality of metallic nanostructures (Ag) is different from the material of the second plurality of nanostructures (Au – for both, see Fig. 1C and section 2.1).
As for claim 45, Gao discloses that the first plurality of metallic nanostructures has an average morphology having a pre-determined effective optical constant and light trapping band (see the section 2.1 – thermal annealing is used to manipulate the morphology to tune the optical constant and realize the light-trapping band).
As for claim 46, Gao discloses that the pre-determined effective optical constant is configured such that the first plurality of metallic nanostructures is configured to absorb more than 90% of light having wavelengths in the range of 784 nm to 1030 nm, inclusive (see the red curve in Fig. 1E along with section 2.1).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 Michael A. Lyons whose telephone number is (571)272-2420. The examiner can normally be reached Monday - Friday.
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/Michael A Lyons/Primary Examiner, Art Unit 2877 October 16, 2025