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 .
Election/Restrictions
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/25/2025.
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.
(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 1-7, 10, 13, and 15-16 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Masuda et al. (JP-2013040836-A, Machine Translation).
As to claim 1, Masuda discloses a method for selectively positioning a biomaterial molecule on a substrate [Abstract; Example 3] comprising:
adhering a mask 1 upon an active substrate 3, wherein the mask includes one or more nanopores of configured size [Example 3, “immobilizing an alumina mask on an Au substrate”; pg. 2, Description of Fig. 2, “mask 1…adheres by the physical adsorption action”]; and
conjugating at least one biomaterial to the active substrate 3 within the one or more nanopores [Example 3, “immobilizing the DNA on the exposed portion of the Au substrate”].
As to claim 2, Masuda discloses the method of claim 1, further comprising exposing a solution with the biomaterial to the masked active substrate [Example 3].
As to claim 3, Masuda discloses the method of claim 2, further comprising rinsing the solution off the mask [Example 3].
As to claim 4, Masuda discloses the method of claim 3, further comprising removing the mask after conjugating [Example 3].
As to claim 5, Masuda discloses the method of claim 1, wherein the at least nanopore is selectively positioned [Example 3].
As to claim 6, Masuda discloses the method of claim 5, further comprising depositing an initial mask on the active substrate and generating the at least one nanopores in the initial mask [Example 2].
As to claim 7, Masuda discloses the method of claim 6, wherein the generating the at least one nanopores utilized lithography techniques [pg. 1-2, Background].
As to claim 10, Masuda discloses the method of claim 1, wherein the at least one nanopores are between about 2-50nm in diameter [Example 3, “pore diameter of 50 nm”, which is an explicit example within the claimed range, and therefore anticipates the claimed range].
As to claim 13, Masuda discloses the method of claim 1, wherein the active substrate is a sensor covered in an active layer [Example 8].
As to claim 15, Masuda discloses the method of claim 13, wherein the active layer includes at least one of linker molecules, altered hydrophobicity, metallic deposition, or some combination thereof [Example 8].
As to claim 16, Masuda discloses the method of claim 1, wherein the adhering the mask includes at least one of Van Der Waals interaction [Example 3, “immobilizing an alumina mask on an Au substrate”; pg. 2, Description of Fig. 2, “mask 1…adheres by the physical adsorption action”], ultraviolet curing, and pi-pi stacking.
Claims 1-7, 11-13, and 15-16 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Horiike et al. (US 20090269742 A1).
As to claim 1, Horiike discloses a method for selectively positioning a biomaterial molecule on a substrate [Abstract] comprising:
adhering a mask 2 upon an active substrate 1, wherein the mask includes one or more nanopores of configured size [Fig. 1; para. 0034-36]; and
conjugating at least one biomaterial to the active substrate within the one or more nanopores [para. 0039-40; Fig. 3A].
As to claim 2, Horiike discloses the method of claim 1, further comprising exposing a solution with the biomaterial to the masked active substrate [para. 0039].
As to claim 3, Horiike discloses the method of claim 2, further comprising rinsing the solution off the mask [para. 0041].
As to claim 4, Horiike discloses the method of claim 3, further comprising removing the mask after conjugating [para. 0041].
As to claim 5, Horiike discloses the method of claim 1, wherein the at least nanopore is selectively positioned [Fig. 1; para. 0034-36].
As to claim 6, Horiike discloses the method of claim 5, further comprising depositing an initial mask on the active substrate and generating the at least one nanopores in the initial mask [para. 0036].
As to claim 7, Horiike discloses the method of claim 6, wherein the generating the at least one nanopores utilized lithography techniques [para. 0036].
As to claim 11, Horiike discloses the method of claim 1, wherein the at least one nanopore is about the same diameter as the biomaterial [Fig. 3A-3B].
As to claim 12, Horiike discloses the method of claim 1, wherein the at least one nanopore is larger in diameter as the biomaterial and smaller in diameter as two biomaterials [Fig. 3A-3B].
As to claim 13, Horiike discloses the method of claim 1, wherein the active substrate is a sensor covered in an active layer [para. 0034, para. 0040].
As to claim 15, Horiike discloses the method of claim 13, wherein the active layer includes at least one of linker molecules, altered hydrophobicity, metallic deposition [para. 0034, para. 0040], or some combination thereof.
As to claim 16, Horiike discloses the method of claim 1, wherein the adhering the mask includes at least one of Van Der Waals interaction [para. 0036], ultraviolet curing, and pi-pi stacking.
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.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Horiike et al. (US 20090269742 A1) as applied to claims 1-7, 11-13, and 15-16 above, in view of Huff et al. (US 20180095067 A1).
As to claim 8, Horiike discloses the method of claim 1, but is silent towards wherein the mask is a dielectric membrane with a thickness of about 2-20nm.
Horike teaches the mask 2 is formed of a positive electron beam resist [para. 0036] and forms nanopores having an inner diameter of 50 to 400 nm [para. 0040], which is a dielectric material, but fails to explicitly disclose a thickness of the mask.
However, Huff discloses a method of forming 50 nm micropores within a dielectric, with high precision and minimal cost, by a controlled dielectric breakdown in a dielectric membrane that is 10 nm thick [para. 0739].
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of forming 50 nm nanopores within a mask, of Horiike, to include a method of forming 50 nm nanopores within a mask using a controlled breakdown dielectric in a 10 nm thick dielectric membrane, of Huff, because the method provides high precision and minimal cost, as taught by Huff [para. 0739].
As to claim 9, modified Horiike discloses the method of claim 8, wherein the at least one nanopores are generated within the dielectric membrane using Controlled Breakdown (CBD) methodology [Huff, para. 0739].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Horiike et al. (US 20090269742 A1) as applied to claims 1-7, 11-13, and 15-16 above.
As to claim 10, Horiike discloses the method of claim 1, but fails to explicitly disclose wherein the at least one nanopores are between about 2-50nm in diameter.
However, Horiike discloses a broad range of a“inner diameter of 50 to 400 nm”, which overlaps and therefore supports a prima facie case of obviousness over the claimed range. See MPEP 2144.05, I.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Horiike et al. (US 20090269742 A1) as applied to claims 1-7, 11-13, and 15-16 above, in view of Qing (CN 110006975 A, Machine Translation).
As to claim 14, Horiike discloses the method of claim 13, but fails to disclose wherein the sensor is a graphene sensor.
However, Qing discloses a method of forming a graphene sensor comprising forming a pattern photoresist before functionalizing exposed portions of the sensor with a biomolecule [claim 1].
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of forming regions of biomolecules, of Horiike, to include forming a graphene sensor comprising regions of biomolecules, of Qing, in order to form a graphene sensor, as taught by Qing [claim 1; Abstract].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: The additionally cited references are cited to show biomolecules which are embedded or pass through nanopores and/or methods of forming nanopores [Abstracts].
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/CHRISTOPHER REMAVEGE/Examiner, Art Unit 1713