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 .
This action is in response to papers filed 1/06/2026.
Claims 1, 3, 5-11, 14-17 are pending. Claims 14-17 are withdrawn. Claims 2,4,12-13 have been cancelled.
The following rejections are maintained. Response to arguetmsn follows.
This action is FINAL.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Republic of Korea on 10/24/2022 and 11/11/2021. It is noted, however, that applicant has not filed a certified copy of the Republic of Korea applications as required by 37 CFR 1.55.
Withdrawn Rejections and Objections
The objection to claim 18 is withdrawn based upon cancellation of the claim.
The 35 USC 112b rejection made in the pervious office action is withdrawn based upon amendments to the claims.
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)(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) 1,3,7-8,10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sim et al. (US Patent Application Publication 2019/0360026 Nov 28, 2019)
With regard to claims 1, Sim et al. teaches a SERS biosensor (paragraph 58). Nagpal et al. teaches that the nanosubstrate comprises head flocked metal nanopillar structures (para 557-62). Nagpal et al. teaches capture and detection probes (para 32 and figure 14). Sim et al. teaches the biomarkers is miR-21 (para 32, 34). As miRNA is a structure that is claimed (claim 8), Sim et al. teaches a probe that binds to a prostate cancer derived target biomarker. Sim et al. teaches metal nanopillars and a substate covered in gold (e.g. metal plate) (para 6-8).
Sim et al. teaches that the capture probe is linked to the hade of a metal nanopillar structure (figure 3 and para 21). Sim et al. teaches that the detection probes are conjugated to nanoparticles in the nano gaps (para 103-104). Sim et al. teaches head flocked nanopillars that amplify the Raman signal (para 42).
Sim et al. teaches that the nanosubstrate is attached to a Raman microscope and a measurement unit that measures an amplified Raman signal (para 74 and 78).
With regard to claim 3, the metal can be gold (para 9).
With regard to claims 7-8, Sim et al. teaches the biomarkers miR-21 (para 32, 34).
With regard to claim 10, Sim et al teaches a thiol group at the end (para 13).
With regard to claim 11, Sim et al teaches use of DNA or LNA (para 8).
Response to Arguments
The reply traverses the rejection. A summary of the arguetmsn is provided below with response to arguments following.
The reply asserts that Sim does not teach a plurality of metallic nanopillars with the first half probes and the SAP-AuNPs with the second half probe (p. 6-7). The reply asserts that the structure provides technical advantages (p. 7). These arguetmsn have been reviewed but have not been found persuasive.
First it is noted that the technical advantages do not overcome an anticipatory rejection. However, it is noted that the reply is pointing to examples that are not commensurate in scope to the independent claim as the examples use specific metals and probes. Further it is noted that Sim does teach a plurality of metal nanopillars (Sim et al. teaches metal nanopillars and a substate covered in gold (e.g. metal plate) (para 6-8)). The instant specification does not definite “first half” and “second half” probes, and as such it is interpreted as any probes that are nucleic acid and are attached in some manner to a non-nucleic acid structure. Nagpal et al. teaches that the nanosubstrate comprises head flocked metal nanopillar structures (para 557-62). Nagpal et al. teaches capture and detection probes (para 32 and figure 14). Sim et al. teaches the biomarkers is miR-21 (para 32, 34). These would be considered SAP-AuNPs comprising gold and a nucleic acid.
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.
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) 5,6,9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sim et al. (US Patent Application Publication 2019/0360026 Nov 28, 2019) in view Tomas et al. (UK Patent Application GB2594532 06/26/2020).
Sim et al. teaches a SERS biosensor (paragraph 58). Nagpal et al. teaches that the nanosubstrate comprises head flocked metal nanopillar structures (para 557-62). Nagpal et al. teaches capture and detection probes (para 32 and figure 14). Sim et al. teaches the biomarkers is miR-21 (para 32, 34). As miRNA is a structure that is claimed (claim 8), Sim et al. teaches a provide that binds to a prostate cancer derived target biomarker. Sim et al. teaches that the capture probe is linked to the hade of a metal nanopillar structure (figure 3 and para 21). Sim et al. teaches that the detection probes are conjugated to nanoparticles in the nano gaps (para 103-104). Sim et al. teaches that the nanosubstrate is attached to a Raman microscope and a measurement unit that measures an amplified Raman signal (para 74 and 78).
However, Sim et al. does not teach that nanoparticle, nanogap or probe sizes.
Tomas et al. teaches structures that include nanoparticles and probes (abstract). With regard to claim 5, Tomas et al. teaches that metal nanoparticles can be 50nm (p. 11 lines 25-29).
With regard to claim 6, Tomas et al teaches that nanogaps can have a size of less than 20nm (p. 29 lines 18-20).
With regard to claim 9, Tomas et al. teaches that probes attached to biosensors can be 100bp in length (p. 21 lines 28-35).
Therefore it would be prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify the method of Sim et al. to use known sizes for nanoparticles, nanogaps and probes as taught by Tomas et al. These sizes appear to be functional equivalents of the structures used on the biosensor. As such the ordinary artisan would have a reasonable expectation of success that these equivalent structure sized would functionally perform on the biosensor of Sim et al.
Response to Arguments
The reply traverses the rejection. A summary of the arguetmsn is provided below with response to arguments following. The reply asserts that that the rejection has not provided a reason to combine or reasonable expectation of success (p. 8). This arguetmsn has been reviewed but have not been found persuasive. As discussed about with regard to the nanoparticles, Tomas et al teaches these sizes appear to be functional equivalents of the structures used on the biosensor. As such the ordinary artisan would have a reasonable expectation of success that these equivalent structure sized would functionally perform on the biosensor of Sim et al.
Conclusion
No claims are allowed.
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 KATHERINE D SALMON whose telephone number is (571)272-3316. The examiner can normally be reached 9-530.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wu Cheng (Winston) Shen can be reached at 5712723157. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE D SALMON/Primary Examiner, Art Unit 1682
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