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 .
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 7-13 and 18-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Choi et al. (USPGPub 2019/0383770) .
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, Choi teaches forming parallel aligned nano-ribbons [0011] and providing a device structure comprising a pair of electrodes provided in a parallel array on a device structure spaced apart by a nanogap (see cover figure) and transferring a group of parallel aligned nano-ribbons from the substrate onto the electrode pair thereby forming a bridge over a nanogap (see Figs. 3A-3C) and patterning dielectric materials over the parallel aligned nano-ribbons so as to leave openings in the dielectric layer thereby exposing a nano-ribbon disposed over the nanogap and attaching a molecule to the exposed region (see Fig. 5D).
Regarding claim 2, Choi teaches wherein the molecule may be a DNA polymerase [0095].
Regarding claim 7, the nanoribbons of Choi are of TMD type (abstract).
Regarding claim 8, the device may be an SiO2 substrate device [0130].
Regarding claim 9, the electrodes may be made from Au [0131].
Regarding claim 10, given the scale of the nanogap of Choi being 2-20nm [0130], the gap between the dielectric layers as shown in Fig 3C of Choi would read upon the currently claimed range.
Regarding claim 11, Choi teaches wherein the size limited region is of the scale and shape claimed [0132].
Regarding claim 12, Choi teaches forming parallel aligned nano-ribbons [0011] and providing a device structure comprising a pair of electrodes provided in a parallel array on a device structure spaced apart by a nanogap (see cover figure) and transferring a group of parallel aligned nano-ribbons from the substrate onto the electrode pair thereby forming a bridge over a nanogap (see Figs. 3A-3C) and patterning dielectric materials over the parallel aligned nano-ribbons so as to leave openings in the dielectric layer thereby exposing a nano-ribbon disposed over the nanogap and attaching a molecule to the exposed region (see Fig. 5D).
Regarding claim 13, Choi teaches wherein the molecule may be a DNA polymerase [0095].
Regarding claim 18, the nanoribbons of Choi are of TMD type (abstract).
Regarding claim 19, the device may be an SiO2 substrate device [0130].
Regarding claim 20, the electrodes may be made from Au [0131].
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.
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.
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 3-5 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (USPGPub 2019/0383770) as applied to claims 1-2, 7-13 and 18-20 above and further in view of Fernandez-Ceballos et al. (WO2006/125825).
Regarding claim 3, the teachings of Choi are as shown above. Choi teaches providing parallel aligned nanowire structures for transfer to manufacture the products of Choi but is largely silent as to how they are made. However, Fernandez-Ceballos teaches that it is known to form aligned parallel nanowires by growing them on parallel steps as claimed (see Figs. 7-8 and descriptions thereof). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the aligned parallel nanoribbons of Choi as guided by Fernandez-Ceballos as a combination of a prior art aligned parallel nanoribbon manufacture process and an aligned parallel nano-ribbon transfer and use process according to the known methods of the two references in question wherein the results of the combination would be predictable based upon the teachings of Fernandez-Ceballos and wherein the process of forming the nanoribbons and the process of using them are separate processes performing their same functions in combination that they would when referenced as separate processes.
Regarding claims 4-5, given the scale of the nanogap of Choi being 2-20nm [0130], the nanoribbon dimensions would read upon the claimed range for at least the width as claimed in claim 5. Further seemingly the difference between nanoribbons and nanowires seems to be the measurement in width rather than on width implying that the difference is a change in shape from non-round to round. However, this would constitute a mere change in shape of the prior art nano-ribbon shape to a different shape wherein the Court has long held that changes in a prior art shape for a provided structure in the absence of a new and unexpected result arising from said change is shape is not capable of overcoming a prima facie case of obviousness in view of the prior art provided shape. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 14, the teachings of Choi are as shown above. Choi teaches providing parallel aligned nanowire structures for transfer to manufacture the products of Choi but is largely silent as to how they are made. However, Fernandez-Ceballos teaches that it is known to form aligned parallel nanowires by growing them on parallel steps as claimed (see Figs. 7-8 and descriptions thereof). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the aligned parallel nanoribbons of Choi as guided by Fernandez-Ceballos as a combination of a prior art aligned parallel nanoribbon manufacture process and an aligned parallel nano-ribbon transfer and use process according to the known methods of the two references in question wherein the results of the combination would be predictable based upon the teachings of Fernandez-Ceballos and wherein the process of forming the nanoribbons and the process of using them are separate processes performing their same functions in combination that they would when referenced as separate processes.
Regarding claims 15-16, given the scale of the nanogap of Choi being 2-20nm [0130], the nanoribbon dimensions would read upon the claimed range for at least the width as claimed in claim 5. Further seemingly the difference between nanoribbons and nanowires seems to be the measurement in width rather than on width implying that the difference is a change in shape from non-round to round. However, this would constitute a mere change in shape of the prior art nano-ribbon shape to a different shape wherein the Court has long held that changes in a prior art shape for a provided structure in the absence of a new and unexpected result arising from said change is shape is not capable of overcoming a prima facie case of obviousness in view of the prior art provided shape. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (USPGPub 2019/0383770) as applied to claims 1-2, 7-13 and 18-20 above and further in view of Dai et al. (TW96138382).
Regarding claim 6, the teachings of Choi are as shown above. Choi teaches providing parallel aligned nanowire structures for transfer to manufacture the products of Choi but is largely silent as to how they are made. However, Dai teaches that it is known to form aligned parallel nanowires by placing them in a solution of dispersion and dragging a plate over them to create shear alignment on a lower substrate (see description of Fig. 9C). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the aligned parallel nanoribbons of Choi as guided by Dai as a combination of a prior art aligned parallel nanoribbon manufacture process and an aligned parallel nano-ribbon transfer and use process according to the known methods of the two references in question wherein the results of the combination would be predictable based upon the teachings of Dai and wherein the process of forming the nanoribbons and the process of using them are separate processes performing their same functions in combination that they would when referenced as separate processes.
Regarding claim 17, the teachings of Choi are as shown above. Choi teaches providing parallel aligned nanowire structures for transfer to manufacture the products of Choi but is largely silent as to how they are made. However, Dai teaches that it is known to form aligned parallel nanowires by placing them in a solution of dispersion and dragging a plate over them to create shear alignment on a lower substrate (see description of Fig. 9C). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the aligned parallel nanoribbons of Choi as guided by Dai as a combination of a prior art aligned parallel nanoribbon manufacture process and an aligned parallel nano-ribbon transfer and use process according to the known methods of the two references in question wherein the results of the combination would be predictable based upon the teachings of Dai and wherein the process of forming the nanoribbons and the process of using them are separate processes performing their same functions in combination that they would when referenced as separate processes.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/ANDREW J BOWMAN/Examiner, Art Unit 1717