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 .
Response to Arguments
Applicant's arguments filed October 30, 2025 have been fully considered but they are not persuasive.
With respect to the rejections under 35 U.S.C. 112(b), Applicant has argued that the terms metastructure and metasurface are well-known and generally understood by one of ordinary skill in the art. Applicant has also argued that metastructure refers to artificial materials comprising arrays of engineered nanoscale microstructures that impart unique properties to the structure. The Examiner notes that claim 1 simply recites a metastructure, or a metasurface structure without defining a structural element that makes up the metastructure or metasurface. Claim 1 nor the original specification do not recite any structural elements that make up the metastructure/metasurface, nor does it define any artificial materials or engineered nanoscale microstructures that make up the claimed metastructure or metasurface structure. As such, the Examiner maintains that it is unclear what structural elements make up the metastructure or metasurface structure. Also, given the lack of structural elements regarding the metastructure or metasurface structure, the Examiner maintains that the broad interpretation detailed in the previous Office Action (and below) are wholly reasonable.
With respect to the prior art, Applicant has argued that the Examiner is incorrectly interpreted the instant claims, and that the prior art does not teach the claimed nanosensor. The Examiner contends that reference to Hajimiri et al., meets all the structural elements of independent claim 1 as defined in the instant specification. The Examiner also notes that the claim remains unclear as the metastructure and metasurface structure is not clearly defined. As detailed below, reference to Hajimiri et al., teach an electromagnetic molecular sensor comprising an electromagnetic detector having a surface, a magnet formed on the electromagnetic detector, a magnetic particle, and a nucleic acid probe, all of which meets the structural elements of independent claim 1. Therefore, in light of the teachings of the prior art, and the arguments provided here, the Examiner contends that the limitations of the instant claims are taught by the references cited below, thus the rejection is maintained.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed elements, the structural elements listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
For claim 1, the Examiner notes that the terms "metastructure" and "metasurface" are unclear as the Examiner is unable to determine what structural limitations the terms impart to the claim. Paragraph 0038 of the instant specification (Pre-grant Publication) defines the metastructure sensor as a sensor having meta patterns formed on a metasurface structure. The phrase "meta pattern" does not indicate any specific pattern or structure, thus the Examiner's interpretation if the claimed "metasurface structure" is a surface having a pattern. Given this view, the Examiner will read any surface comprising the additional elements of the claim as a metasurface structure as all surfaces comprise a pattern. For example, surfaces may have a regular pattern (smooth surface) or an irregular pattern (roughened surface). Also, surfaces may comprise electrodes in an interdigitated pattern, or channels in a straight, circular, or spiral pattern. Therefore, absent some definition that describes a structural element that makes up the metasurface structure, the Examiner will broadly interpret the claimed metasurface structure based on the rationale detailed above.
For claim 1, it is unclear what structural element makes up the claimed "hotspot area." First, the Examiner notes that the term area is vague as any part of the surface, or the entirety of the surface can be construed as an area. Second, the term "hotspot" does not define a structural element as the specification does not define what "hotspot" means structurally. As such, the Examiner contends that any prior art sensor meeting the structural elements of the claim will be read as comprising a hotspot area.
For claim 2, the Examiner notes that the claimed "field enhancement phenomenon" is not a structural element of the claim as the specification does not define a structure that makes up the field enhancement phenomenon.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
For claim 1, it is unclear what structural elements are referenced by the terms "metastructure" and "metasurface." The specification does not describe structural elements that make up the metastructure and/or metasurface, thus the Examiner is unable to determine what structural features of the claim are described by metastructure and metasurface. For the purposes of examination, the Examiner will interpret metastructure and metasurface as detailed in the claim interpretation section above. Claims 2-6 depend directly or indirectly from claim 1 and are also indefinite.
For claims 1, 2, and 5 it is unclear what structural element makes up the claimed hotspot area. First, the Examiner notes that the term arca is vague as any part of the surface, or the entirety of the surface can be construed as an area. Second, the term "hotspot" does not define a structural element as the specification does not define what "hotspot" means structurally. As such, the Examiner contends that any prior art sensor meeting the structural elements of the claim will be read as comprising a hotspot area.
For claim 2, it is unclear what structural element makes up the "field enhancement phenomenon" as the specification does not define a structure that makes up the field enhancement phenomenon. Additionally, the Examiner notes that the term enhancement is a relative term of degree as the specification does not provide a relative basis by which one can determine whether an enhancement occurs.
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, 2, and 4-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hajimiri et al., (US 2010/0267169).
For claims 1 and 2, Hajimiri et al., teach an electromagnetic molecular sensor comprising an electromagnetic detector having a surface (metasurface, paragraph 0046), a magnet formed on the electromagnetic detector (fixed binding body, paragraph 0063), a magnetic particle coupled to the magnet by an attractive force (movable binding body, paragraphs 0070, 0071), and a nucleic acid probe attached to the magnetic particle (receptor, paragraphs 0070, 0071). The Examiner notes that the claimed metasurface structure has been interpreted as detailed in the claim interpretation section above. The Examiner also notes that the claims are being read in light of the rejections under 35 U.S.C. 112(b) in which the metasurface structure, specific frequency, and hotspot area are unclear. With respect to claim 2, the Examiner notes that the claim does not recite an additional structural element, thus the prior art sensor as described regarding claim 1 meets the structural limitations of claim 2.
For claim 4, Hajimiri et al., teach the magnet comprising DNA probes as chemical linkers (paragraph 0071) which necessarily comprise sulfur, nitrogen, and oxygen, and magnetic particles comprising polyethylene glycol (paragraph 0137).
For claim 5, Hajimiri et al., teach the chemical linker formed on a surface or substrate of the electromagnetic detector (paragraph 0071).
For claim 6, Hajimiri et al., teach the nucleic acid probes having a complementary sequence to a target analyte (paragraphs 0070, 0071).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hajimiri et al., (US 2010/0267169) in view of Arai et al., (JP 2019/158770).
Regarding claim 3, Hajimiri et al., teach a magnetic particle comprising iron (paragraph 0137), but do not teach a magnet (fixed binding body) comprising ferromagnetic metals and rare earth compounds.
Arai et al., teach a detection device comprising a magnetic force generating unit (paragraph 0013) wherein the magnets of the magnetic force generating unit are formed from ferrite (paragraph 0047) and neodymium (rare earth compound, paragraph 0047). Arai et al., teach that it is advantageous to provide a magnet comprising ferrite and neodymium as a means of generating a magnetic force that decreases from the center of the magnet to the periphery of the magnet (paragraph 0049).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hajimiri et al., wherein the magnet comprises ferrite and neodymium in order to generate a magnetic force that decreases from the center of the magnet to the periphery as taught by Arai et al.
Conclusion
THIS ACTION IS MADE FINAL. 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 DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DWAN A GERIDO/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797