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 .
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.
Claim(s) 1, 3-7,12,23, and 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tyagi et al. (US 2012/0300203).
Regarding claim 1, 3, and 28 Tyagi discloses a chip for surface-enhanced Raman spectroscopic detection of at least one biomolecule present in a sample, said chip having a support of which a solid surface at least partly is provided with a layer of a fractal-patterned multi-creviced sintered agglomerate of metal nanoparticles and/or metal compound nanoparticles. (See Tyagi Abstract [0041], [0044]-[0045], and [0052] and Figs. 5(a)-6(c) wherein a chip for SERS detection of a biomolecule comprises a support solid surface 10 being provided with a layer of fractal patterned multi-creviced sintered metal nanoparticle aggregates 26/28.)
In regards to the nanoparticles layer being in the absence of residuals it is noted that Tyagi discloses that such residuals may be removed by heat or other means after application and thus the nanoparticle layer is in absence of residuals. (See Tyagi [0046] wherein residuals are not incorporated into the nanoparticle layer after removal.)
Tyagi discloses all the claim limitations as set forth above as well as the device wherein said metal nanoparticles and/or metal compound nanoparticles are obtainable through formation of nanoparticles in a qas flow by spark ablation and deposition of the nanoparticles from the qas flow by impaction deposition and sinterinq on the surface wherein the nanoparticles are sintered at the surface upon impact deposition.
It is noted that Tyagi discloses the metal nano-particles may be deposited by any suitable technique and sintered. Such limitations are directed to the method of making the chip which do not define structural elements which differentiate the claimed invention from the cited art.
Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a 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.).
Regarding claim 4 Tyagi discloses all the claim limitations as set forth above as well as the device wherein an average distance between nanoparticles or compositions thereof (or metal compound nanoparticles) is at most 32 nm, more preferably at most 16 nm, more preferably at most 8 nm, more preferably at most 4 nm, more preferably at most 2 nm, from each other.(See Tyagi [0008] and [0059] wherein spacing between nanoparticles or compositions thereof is less than 32nm.)
Regarding claim 5 Tyagi discloses all the claim limitations as set forth above as well as the device wherein the size of said nanoparticles ranges from 1 nm to about 20 nm, preferably from about 1 nm to at about 10 nm, more preferably ranges from about 1 nm to at about 7 nm, size most preferably ranges from about 3 nm to about 5 nm, and a particularly useful nanoparticle size is at around 4 nm. (See Tyagi [0060] wherein nanoparticles are from 15-20 nm.)
Regarding claim 6 Tyagi discloses all the claim limitations as set forth above as well as the device wherein said metal is selected from [[the]] a group of silver, nickel, aluminium, silicon, gold, platinum, palladium, titanium, copper, cobalt, zinc, and combinations thereof, and/or selected from an alloy of at least two metals selected from said group, or wherein said metal compound comprises an oxide, nitride, silicide, phosphide, oxynitride, or carbide of said metal and combinations thereof. (See Tyagi [0077] wherein the metal is silver.)
Regarding claim 7 Tyagi discloses all the claim limitations as set forth above as well as the device wherein the support comprises a material selected from [[the]] a group of silicon, silica, alumina, polymer and paper, and combinations thereof. (See Tyagi [0077] wherein the substrate is filter paper.)
Regarding claim 12 Tyagi discloses all the claim limitations as set forth above as well as the device wherein said biomolecule originates from a micro-organism, bacterium, or communicable disease agent, such as a virus, such as a coronavirus. (See Tyagi [0041] wherein the biomolecule may originate from a micro-organism bacteria of disease agent.) It is noted that such limitations are directed to intended uses and materials worked on by the device which do not define structural elements which differentiate the claimed invention from the cited prior art. See MPEP 2114 and 2115.
Regarding claim 23 Tyagi discloses all the claim limitations as set forth above as well as the device wherein conditioned for surface enhanced Raman spectroscopic detection of at least one biomolecule present in a sample, preferably wherein said at least one biomolecule originates from a micro-organism, bacterium, or communicable disease agent, such as a virus, preferably such as a coronavirus, and wherein the size of said nanoparticles ranges from about 1 nm to at about 20 nm. (See Tyagi [0041] wherein the biomolecule may originate from a micro-organism bacteria of disease agent. And See Tyagi [0060] wherein nanoparticles are from 15-20 nm ) It is noted that limitations regarding the biomolecule and source thereof are directed to intended uses and materials worked on by the device which do not define structural elements which differentiate the claimed invention from the cited prior art. See MPEP 2114 and 2115.
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.
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tyagi et al. (US 2012/0300203).
Regarding claim 9 Tyagi discloses all the claim limitations as set forth above but does not specifically disclose wherein said agglomerate is deposited in a spot surface size of at least 1 square millimeter, preferably at least 4 square millimeters, more preferably at least 9 square millimeters.
Since the instant specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art to change the size of the agglomerate spots in order to optimize sensing space and, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 10 Tyagi discloses all the claim limitations as set forth above as well as wherein said agglomerate is deposited with a layer thickness of between 100 - 1500 nm, more preferably between 200 and 1100 nm, more preferably between 300 and 800 nm, most preferably between 450 and 650 nm. (See Tyagi [0044] wherein the thickness is provided.)
It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Regarding claim 11 Tyagi discloses all the claim limitations as set forth above but does not specifically disclose wherein the support is provided with a surface dimension of at least 5x5 millimeters, preferably at least 10x10 millimeters.
Since the instant specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art to change the size of the support in order to optimize sensing space and, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tyagi et al. (US 2012/0300203) as applied to claims above, and further in view of Bratkovski et al. (US 2007/0252979).
Regarding claim 8 Tyagi discloses all the claim limitations as set forth above as well as the device wherein the support may comprise various materials but does not disclose the use of ITO
Bratkovski et al. discloses a sensing device comprising nanoparticles placed on a support wherien the support comprises ITO. (See Bratkovski Abtract and [0035])
It would have been obvious to one of ordinary skill in the art at the time of filing to provide an ITO support in the device of Tyagi as described by Bratkovski because such a support does not exhibit undesired plasmon resonance frequencies and allows for accurate signal detection as would be desirable in the device of Tyagi.
Response to Arguments
Applicant's arguments filed 2/17/2026 have been fully considered but they are not persuasive.
Applicant argues “Notably, and in support of this distinction between the disclosure of Tyagi and the requirements of Applicant's claim 1, the present application notes that porous materials would not be desirable in SERS. In contrasting solid surfaces from porous materials, the present disclose mentions:
These sieve-like nanoporous surfaces do not support or improve SERS applications in detecting a communicable disease agent. Sensitive SERS detection is in practice not provided through filter deposition due to the inhomogeneity of the surface layer to reach a sufficiently high number of hotspots. With filter deposition, deposits are only built up on the walls of fibers or filter-matrix structures, a process that results in nanoporous surfaces.
This reduces the required density and homogeneity of the layer in comparison to impaction deposition and does not provide a sufficiently dense and homogenous SERS signal to allow for specific or reproducible detection of Raman spectra. Present application publication, paragraph [0070]. Thus, Applicant's disclosure further supports that the disclosure of Tyagi, which requires a porous substrate with filtering capabilities, fails to arrive at the solid surface limitation of the pending claims.
It is noted that while the substrate of Tyagi mya have pores therein it is formed from solid materials onto which the nanoparticle layer is applied and it is thus a solid surface, i.e. firm and stable in shape and not a fluid or gas. It appears as if applicant wishes the support to not be non-porous however this is not recited in the claims and applicant’s broad claim language, i.e the surface being solid is not so limited.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a solid surface which is non-porous) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant also argues that “Applicant traverses the anticipation rejection, as set forth above, and submits that even without the amendments presented herein, Tyagi does not teach each and every limitation of claim 1 and its dependent claims. Applicant nevertheless notes that Tyagi further fails to teach the limitations of amended claim 1, which requires a solid surface at least partly is provided with a layer of a fractal-patterned multi-creviced sintered agglomerate of metal nanoparticles and/or metal compound nanoparticles in the absence of residuals, wherein said metal nanoparticles and/or metal compound nanoparticles are obtainable through formation of nanoparticles in a gas flow by spark
ablation and deposition of the nanoparticles from the gas flow by impaction deposition and sintering on the surface.
As detailed in the present disclosure, the formation of the nanoparticles in a gas flow by spark ablation and deposition of the nanoparticles from the gas flow by impact deposition and sintering on the solid surface results in a substrate that is distinct from the substrate of Tyagi, in that the nanoparticles are formed and deposited on the surface in a pure form, without contaminants. Resultingly, the chip of the present disclosure is free from residuals. In fact, the present application notes these differences over Tyagi's substrate, and how the process of Tyagi yields a distinctly different substrate than that according to Applicant's disclosure:
For some silver inks, and depending on the stabilizing ligand and liquid vehicle, the sintering according to US 2012/0300203 [Tyagi] is said to take place at 50-60° C., for others at 1800 C., whereas for some gold inks the prescribed temperatures can be as high as 300-350° C., with a typical heating duration or thermal window of at least 5, and preferably between 5-30 minutes, and typically said heating according to US 2012/0300203 always leaves residual, and often decomposed, stabilizer, or other ink residuals together with the desired nanoparticles within the substrate. Furthermore, the effect of post-deposition thermal treatment also increases the likelihood of sintering of nanoparticles into much larger particles then desired.
Present application publication, paragraph [0017] (emphasis added).
Thus, the substrate of Tyagi fails to meet the requirements of amended claim 1, in which a solid surface is at least partly is provided with a layer of a fractal- patterned multi-creviced sintered agglomerate of metal nanoparticles and/or metal compound nanoparticles in the absence of residuals, wherein said metal nanoparticles and/or metal compound nanoparticles are obtainable through formation of nanoparticles in a gas flow by spark ablation and deposition of the nanoparticles from the gas flow by impaction deposition and sintering on the surface.
Not only does Applicant's disclosure highlight the distinctions between the substrate of Tyagi, which contains residuals as a results of the process for obtaining its substate, Tyagi itself explicitly acknowledges that the layer of nanoparticles comprises residuals, stating:
... a residual amount of one or more of the stabilizer, decomposed stabilizer, and the liquid may be present in the nanoparticle layer. Tyagi, paragraph [0047].
Tyagi namely teaches, that a nanoparticle ink or colloid film is deposited on the substrate. However, the ink or colloid structure contaminates the surface of the substrate. See, e.g., Tyagi paragraphs [0043]-[0047]. To address this, Tyagi tries to remove the ink and stabilizer by heating, however residuals always remain on the surface. The presence of residuals on such a chip significantly influences the accuracy of the detection of biomolecules by using this chip. The chip of the present disclosure is free of residuals by the fact that the nanoparticles are formed in a gas flow by spark ablation and deposited from the gas flow by impact deposition and sintering on the surface, which cannot influence the detection of biomolecules. Thus, the chip of the present invention has an improved accuracy for detecting biomolecules compared to Tyagi.”
It is noted that Tyagi discloses that the process used to create the nanoparticles “may” result in residuals also being present but does not state that this is always the case. Additionally Tyagi discloses that heating and or light may be used after application such that the residuals “are not incorporated into the nanoparticle layer”. Since Tyagi specifically discloses that such residuals may be removed from the nanoparticles the device reads on the claimed invention.
While applicant argues that “residuals always remain on the surface” despite Tyagi explaining that they are removable by various methods. Applicant provides no evidence showing this to be the case and such mere argument without any evidence in light of Tyagi specifically disclosing that such residuals are removed is not persuasive.
Applicant argues that “Although the Office Action alleges that the language of now-canceled claim 2, which has been incorporated into amended claim 1, is directed to a process, the product made by spark ablation and deposition of the nanoparticles from the gas flow by impaction deposition and sintering is different than that made by the process of Tyagi. As indicated in MPEP @2113.1:
The structure implied by the process steps should be considered when
assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding "interbonded by interfusion" to limit structure of the claimed composite and noting that terms such as "welded,""intermixed,""ground in place,""press fitted," and "etched" are capable of construction as structural limitations). See also In re Nordt Dev. Co., 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018)(holding "the specification demonstrates that 'injected molded' connotes an integral structure," and discussing several cases since Garnero that held "limitations to convey structure even when they also describe a process of manufacture"). (Emphasis added.)
As evidenced by both the disclosure of Tyagi, and the present disclosure, the distinct processes for obtaining the respective substrates confer evident structural differences therein, at least in the absence of (versus presence of) residuals.
Because Tyagi fails to teach each and every limitation of independent claim 1 as amended herein, the reference fails to anticipate the claim.”
It is noted that while Tyagi may disclose a different process for forming the nanoparticle layer than presently cited applicant has not provided any evidence that such a process confers a structural difference than the cited prior art process. Tyagi specifically discloses that the process utilized removes any unwanted residuals and thus results in the same structure as claimed by applicant. Applicant’s arguments without further evidence are not persuasive to show that Tyagi does not have residuals even after stating they are removed by heating and/or other means.
Applicant finally argues that “Applicant further notes that in asserting the rejection against claim 10, the Office Action turns to paragraph [0044] of Tyagi to purport that the claimed agglomerate layer thickness is obvious. See Office Action, p. 8. However, the thickness of the cited disclosure of Tyagi is referring to that of the deposited ink, rather than that of the nanoparticle agglomerate itself. Thus, the reference fails to teach at least the thickness limitation of claim 10, and therefore a prima facie case of obviousness has not been established for this claim.”
It is noted notes that the “the agglomerate is deposited with a layer thickness between 100-1500nm”. The claim does not require that the agglomerate itself has such a thickness but that a layer in which it is applied has such a thickness. Thus the ink layer of Tyagi, which is the layer in which the agglomerate is deposited, reads on the claim language.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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 JONATHAN M HURST whose telephone number is (571)270-7065. The examiner can normally be reached on M-F 7AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Marcheschi can be reached on 571-272-1374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN M HURST/ Primary Examiner, Art Unit 1799