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, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/6/2025 has been entered.
Response to Amendment
The Amendment filed on 11/6/2025 has been entered. Claims 1-6 and 8-20 remain pending in the application. Applicant’s amendments to the claims have overcome each and every 112(a) and 112(b) rejection previously set forth in the final Office Action mailed 9/11/2025.
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.
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(s) 1-4, 6 and 8-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Application Publication No. 2022/0291194, hereinafter Majima in view of United States Application Publication No. 2011/0036994, hereinafter Frayling, United States Application Publication No. 2007/0020146, hereinafter Young and United States Application Publication No. 2010/0044211, hereinafter Kwon.
Regarding claim 1, Majima teaches an apparatus (figure 13) for identifying molecules, the apparatus comprising :a) a membrane (items 104, 106 and 108) that defines first and second chambers (items 202 and 204), the membrane including a pore (item 102) that permits a molecule to pass through and move between the first and second chambers (figure 13); b) a first set of electrodes (items 206, 208 and 212) wherein one electrode (item 206) of the first set of electrodes is disposed in the first chamber (figure 13) and another electrode (items 208 and 212) of the first set of electrodes is disposed in the second chamber (figure 13) and wherein the first set of electrodes is configured to generate a first electric field (item 220) in a conducting media between the first and second chambers (paragraph [0134]); c) a first current detector (items 224 and 228) configured to measure a first current between the first set of electrodes (figure 13); f) a plasmonic feature (item 116 and paragraph [0156]) disposed on the membrane adjacent to, but not within, the pore (figure 13, the pore is defined by the edges of item 116 and therefore is not within the pore); g) a light source (item 230) configured to emit light onto the plasmonic feature (figure 13); h) a light collector (item 232) configured to collect the light scattered from the plasmonic feature (figure 13).
Majima fails to teach the plasmonic feature is spaced apart form the pore at a distance from 1 nm to 10 nm.
Frayling teaches a nanopore sequencer which utilizes plasmonic features which are spherical or substantially spherical in shape with a diameter of 50-150 nm (paragraph [0030]) which is placed around or adjacent to the pore (paragraph [0073]) and that the EMF between two plasmon resonating surfaces increases when the distance them decreases (paragraph [0074]) and that the surface of the metallic moiety (plasmonic feature) should be positioned 30 nm or less from the molecule as it passes through the pore (paragraph [0035]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilized a spherical or substantially spherically plasmonic feature which is placed around or adjacent to the pore and to have determined, through routine experimentation, the optimum distance from the plasmonic feature to the pore to a range of 1 nm to 10 nm which would allow the desired amount of EMF between the plasmonic features and so that the distance between the plasmonic feature and the molecule is 30 nm or less (MPEP § 2144.05 (II)).
Majima and Frayling fail to teach a second set of electrodes disposed in the first chamber, the second set of electrodes electrically contacting the membrane and configured to generate a second electric field across the pore of the membrane wherein the second set of electrodes is formed separately from the membrane and a second current detector configured to measure a second current between the second set of electrodes.
Young teaches a nanopore structure which has multiple sets of electrodes with a first and second electrodes (Young, items 22 and 25) attached to the membrane (Young, figure 1) with a voltage source (Young, item 23) and signal monitor (Young, item 24) connected to the electrodes so that the geometry of the molecule in the nanopore affects the longitudinal conductance of the nanopore and therefore further analysis of the molecule is possible (Young, paragraph [0020]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have added a second set of electrodes contacting the membrane and configured to generate a second electric field across the pore of the membrane and a second current detector configured to measure a second current between the second set of electrodes because the geometry of the molecule in the nanopore affects the longitudinal conductance of the nanopore and therefore further analysis of the molecule is possible (Young, paragraph [0020]).
Majima, Frayling and Young fail to teach at least one computing device configured to identify at least one attribute of the molecule that passes through the pore of the membrane based on at least one of the first current, the second current, and the scattered light.
Kwon teaches an apparatus for detecting target molecules which utilizes a processor to process, analyze, store, or transmit the electrical signals detected by the electrical detector (Kwon, paragraph [0021]) and to process, analyze, store or transmit the optical information detected by the optical detector (Kwon, paragraph [0023]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have added a computing device configured to identify at least attribute because it would process, analyze, store, or transmit the electrical signals and optical information (Kwon, paragraphs [0021] and [0023]).
Regarding claim 2, Majima teaches wherein the membrane is a two-dimensional membrane (figure 13).
Regarding claim 3, Majima teaches wherein the two-dimensional membrane is graphene or silicon-based material (paragraph [0069]).
Regarding claim 4, Majima teaches wherein the membrane is comprised of two or more stacked membranes (items 104, 106 and 108).
Regarding claim 6, the method of depositing the plasmonic feature on a membrane lacking pores and the plasmonic feature is used to create the pores is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process and is therefore taught by Majima, Frayling, Young and Kwon (MPEP § 2113). The burden is on applicants to show product differences in product by process claims. Here, the limitations as to the depositing the plasmonic feature on a membrane lacking pores and the plasmonic feature is used to create the pore is given minimal patentable weight.
Regarding claim 8, modified Majima teaches a diameter of the plasmonic feature is between 1 nm and 100 nm (see supra).
Regarding claim 9, Majima teaches wherein the plasmonic feature is a metallic plasmonic feature (paragraph [0156]).
Regarding claim 10, the method of depositing the plasmonic feature by chemical vapor deposition is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process and is therefore taught by Majima, Frayling, Young and Kwon (MPEP § 2113). The burden is on applicants to show product differences in product by process claims. Here, the limitations as to the depositing the plasmonic feature by chemical vapor deposition is given minimal patentable weight.
Regarding claim 11, these limitations are directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by Majima, Frayling, Young and Kwon and the apparatus of modified Majima is capable of having the molecule be a nucleic acid. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of modified Majima (see MPEP §2114). Further Majima provides this teaching in paragraph [0146]).
Regarding claim 12, modified Majima teaches wherein the at least one attribute of the molecule is a sequence of the nucleic acid (see supra).
Regarding claim 13, modified Majima teaches wherein the attribute of the molecule includes at least one of a size, a charge, or a weight of the molecule (see supra).
Regarding claim 14, modified Majima teaches wherein the at least one computing device is configured to identify the at least one attribute of the molecule based on surface plasmon resonance (see supra).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Majima, Frayling, Young and Kwon as applied to claim 1 above, and further in view of United States Application Publication No. 2018/0074039, hereinafter Soper.
Regarding claim 5, Majima, Frayling, Young and Kwon teaches all limitations of claim 1; however, they fail to teach wherein the first set of electrodes of step c) are insulated with a dielectric material.
Soper teaches a device with a pore and the electrodes can have a dielectric insulator applied to the electrode so that a capacitance coupling between electrodes can be created (Soper, paragraph [0102]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have insulated the first set of electrodes with a dielectric insulator because it would allow for the formation of a capacitance coupling between electrodes can be created (Soper, paragraph [0102]).
Response to Arguments
Applicant’s arguments, see pages 7-10, filed 11/6/2025, with respect to the rejection(s) of claim(s) 1-4 and 6-14 under 103(a) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Majima, Frayling, Young and Kwon.
Regarding applicant’s argument that Majima does not teach the second set of electrodes as being separate from the membrane is not found persuasive. Item 210, to which applicant points to as the second set of electrodes, is not being utilized as the second set of electrodes in the rejection above. Rather, the reference of Young is being utilized for the teaching of the second set of electrodes which are separate from the membrane itself. The applicant further argues that the placing of the second set of electrodes on the bottom of the membrane does not read on the instant claims, this argument is correct. However, as described in the rejection above, the plasmonic features of Majima have been modified such that they are spherical in shape and positioned near the pore. There is therefore a section of the membrane which does not have the plasmonic feature on it and in this location is where the second set of electrodes described by Young is being added to as Young teaches the second set of electrodes on the membrane itself and not the plasmonic feature.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW D KRCHA whose telephone number is (571)270-0386. The examiner can normally be reached M-Th 7am-5pm.
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/MATTHEW D KRCHA/Primary Examiner, Art Unit 1796