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 .
The present application has been reassigned to Examiner Monique Jackson (contact information below). Any inconvenience to Applicant is regretted.
Claims 1-3, 5, 58-61, 76-78, 80, and 108-117 are pending in the application.
Election/Restrictions
Applicant's election with traverse of Group III, Claims 76-78, 80, and 108-112, in the reply filed on 11/3/2025 is acknowledged, and although the Examiner does not concede to Applicant’s arguments (see pages 7-9 of the response filed 11/3/2025), particularly in light of the prior art rejections presented below, the Examiner has withdrawn the Restriction requirement as stated in the office action dated 5/1/2025, in the interest of compact prosecution and in view of the interview conducted on 10/29/2025 with Examiner Wang (see Interview Summary dated 10/31/2025).
Claim Objections
Claim 113 is objected to because of the following informalities: on lines 5 and 7-9, “R1” and “R2” should read “R1” and “R2” (respectively, with a superscript as in the formula); on line 5, “Hor” should read “H or” with a space after “H” (hydrogen); on line 7, “carbon” should be inserted before “atom” in light of the claimed formula; on line 11, “-0-“ (with a zero) should read “-O-“ (with a capitalized “O”); on lines 11-13, each “2” should be subscripted in the chemical formulae; and on lines 11-14, each “R3” should read “R3”. Appropriate correction is required.
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 1-3, 5, and 113-116 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. Claim 1 recites, “A functionalized metallic surface comprising a metallic surface bound to a molecule having the structure:
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wherein: R is optionally substituted alkyl, optionally substituted heteroalkyl…or optionally substituted heteroaryl; and wherein the metallic surface comprises at least one metal selected from platinum, gold, palladium, iridium, and rhodium, an oxide thereof, or any combination thereof” (emphasis added); however, it is first noted that given that each of the recited “R” groups on lines 5-8 is preceded by the term “optionally,” it is unclear as to whether the “R” of the above structure is required to be any of the recited groups or if R may be any atom, group, component, etc. It is also noted that although alternative expressions are permissive in the claims, they should be drafted in proper alternative format, e.g., “selected from A, B or C,” or “at least one of A, B, and C," or in proper Markush claim format, e.g., “selected from the group consisting of A, B, C, and combinations thereof,” or in similar alternative format such that there is no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. In the instant case, given the use of both “and” and “or” with only commas utilized to separate the alternative materials that the metallic surface “comprises,” it is unclear whether “or any combination thereof” refers to any combination of the recited metals only; or to any combination of the oxides of the “at least one metal”; or to any combination of any of the recited metal(s) and/or oxide(s) thereof. Lastly, it is unclear as to what is meant to be encompassed by each
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of the claimed structure. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 2-3, 5, and 113-116 do not remedy the above, and hence are indefinite for the same reasons. Dependent claims 3, 5, 113, and 116 are further indefinite for the following reasons:
With respect to claim 3, given the “optionally” recitation before each of the alternative “L” groups, it is unclear as to whether the claimed “L” is required to be either of the recited alternative groups.
Claim 5 recites, “wherein L comprises a chain of one to one hundred atoms, wherein each atom in the chain is independently selected from C, N, O, S, Si, and P” (emphasis added), however, given the “comprises” recitation such that L may “comprise” atoms or components in addition to the claimed “chain” and that the list of atoms does not include H (hydrogen), it is unclear as to what is meant to be encompassed by the claim, e.g., does the claimed “chain” refer only to the main atoms of the backbone of the chain, similar to the “ring” of a “cycloalkyl” as defined in the specification as being one “in which each atom of the ring is carbon” although examples of such “cycloalkyl” include adamantyl, norbornyl, and other “cycloalkyl” groups that actually contain hydrogen atoms (see Paragraph 0201 of the specification as filed); or does the claimed “chain” refer to all atoms of the “chain” given that in the case of an “alkylene chain” or “alkyl chain,” the specification at Paragraph 0193 (as filed) recites that an “alkylene chain” or “alkyl chain” refers “to a straight or branched divalent hydrocarbon chain linking the rest of the molecule to a radical group, consisting solely of carbon and hydrogen” (emphasis added) with hydrogen explicitly recited, and thus hydrogen is excluded from the claimed “chain” given that each atom in the chain “is independently selected from C, N, O, S, Si, and P”?
Claim 113 recites, “wherein: each R1 and R2 is independently Hor [sic] optionally substituted alkyl, optionally substituted alkenyl…or optionally substituted heteroaryl” on lines 5-10; and “each R3 is independently H, optionally substituted alkyl…or optionally substituted heteroaryl” on lines 14-17, such that the presence of “optionally” before each group renders it unclear as to what is meant to be encompassed by each R1, R2, and R3.
Claim 116 recites, “wherein the polymer comprises a polyethylene, a polypropylene…a poly(N-acryloyl morpholine), or any combination or derivative thereof” (emphasis added), however, given that the specification does not clearly define what is meant to be encompassed by the claimed “derivative thereof” with respect to the broad list of recited polymer(s) such that the “derivative” limitation essentially incorporates elements not actually disclosed, e.g., similar to “or the like”, the recitation “or derivative thereof” renders the claim indefinite because the scope of the claim is unascertainable, especially given that the “polymer” which “L comprises” can be one that “comprises” components other than a “polymer”.
Claims 58-61 and 117 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. It is first noted that claim 58 recites the limitation “the metal surface” (emphasis added) on line 5 (versus “metallic surface” as recited on lines 1, 2, 4, and 6), however, there is insufficient antecedent basis for the limitation in the claim. The claim also recites, “wherein the metallic surface comprises platinum, gold, palladium, iridium, or rhodium, an oxide thereof, or any combination thereof” (emphasis added), however, given the positioning of the “or” recitations and the use of only commas in the listing of alternatives, it is unclear whether “or any combination thereof” refers only to combinations of the claimed “platinum, gold, palladium, iridium, or rhodium” or to a combination of oxide(s) thereof or to any combination of any of these metal(s) and/or oxide(s) thereof. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 59-61 and 117 do not remedy of the above and hence are indefinite for the same reasons.
Claims 76-78, 80, and 108 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. Claim 76 recites, “wherein the metallic surface comprises platinum, gold, palladium, iridium, or rhodium, or an oxide thereof, or any combination thereof” (emphasis added, which is similar to but slightly different from the wording in claims 1 and 58), however, given the positioning of the multiple “or” recitations and the use of only commas in the listing of alternatives, it is unclear whether “or any combination thereof” refers only to combinations of the claimed “platinum, gold, palladium, iridium, or rhodium” or to any combination of any one of the recited metals with their respective oxide(s), or to any combination of only the oxide(s) of the recited metals, or to any combination of any of these metal(s) and/or oxide(s) thereof. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, especially given the differing wording between claim 76 and each of claims 1 and 58.
Dependent claims 77-78, 80, and 108 do not remedy the above and hence are indefinite for the same reasons.
Dependent claim 78 is (further) 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. The term “small molecule” in claim 78 is a relative term which renders the claim indefinite. The term “small” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Hence, it is unclear as to how small a molecule must be in order to meet the claimed “small molecule” limitation, e.g., at what size is a molecule considered “large” versus “small” or how “large” can a molecule be and still be considered a “small” molecule according to the claimed invention?
Claims 109-112 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. Claim 109 recites, “wherein the surface comprises platinum, gold, palladium, iridium, or rhodium, an oxide thereof, or a combination thereof” (emphasis added, which is similar to but slightly different from the wording in claims 1, 58, and 76), however, given the positioning of the multiple “or” recitations and the use of only commas in the listing of alternatives, it is unclear whether “or a combination thereof” refers only to a combination of the claimed “platinum, gold, palladium, iridium, or rhodium” or to a combination of any one of the recited metals with their respective oxide(s), or to a combination of only the oxide(s) of one of the recited metals, etc. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, especially given the differing wording between claim 109 and each of claims 1, 58, and 76.
Dependent claims 110-112 do not remedy the above and hence are indefinite for the same reasons.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, 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.) It is also noted that a recitation of the intended use of the claimed invention (e.g., in the preamble or body of a claim) must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Hence, the Examiner has interpreted the claimed “metallic surface” as being one that “comprises” any combination of any of the recited metals and/or any of the oxides of the recited metals in any portion of the “metallic surface”; and has interpreted any limitation following an “optionally” recitation as having no further limiting effect on the scope of the claim(s). With respect to claim 5, the Examiner has interpreted the claimed “chain” as not excluding hydrogen atoms present off of the backbone of the chain formed from the recited atoms.
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.
Claims 1-3, 5, 58-60, and 113-114 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Niegelhell (Adsorption Studies of Organophosphonic Acids on Differently Activated Gold Surfaces). Niegelhell discloses the formation of self-assembled monolayers consisting of three organophosphonic acids (PA) – (a) vinylphosphonic acid (VPA), (b) octylphosphonic acid (OPA), and (c) tetradecylphosphonic acid (TPA), from isopropanol solutions onto gold surfaces activated by different activation procedures, namely treatment with i) O2-plasma, ii) freshly generated ammonia, iii) 2.5 M NaOH, or iv) piranha solution freshly prepared from sulfuric acid and hydrogen peroxide in a 3:1 ratio (v/v) over a period of 15 min; and investigates the resulting adsorption of each PA on the differently activated gold surfaces (Entire document, particularly Abstract, Experimental Methods). Niegelhell discloses that in principle, there are three possible binding mechanisms or binding modes on oxidic surfaces of organophosphonic acids used for the adsorption onto gold surfaces, namely, monodentate, bidentate (as in the instantly claimed invention), and tridentate mode as shown in Fig. 1, wherein based upon various experimental results, it was determined that VPA and OPA adsorb by a bidentate mode and TPA by a mixed mono/bidentate mode, on the activated gold surfaces (Results and discussion, Conclusion), and that piranha pretreatment was most effective (Conclusion). Niegelhell also discloses that the PA is first stabilized on the gold surface by hydrogen bonding and subsequently irreversibly fixed by a tempering step at elevated temperature during which covalent bonds are formed providing a more stable monolayer, with the examples tempered at 90°C (Results and discussion, particularly pp. 1554 and 1556-1557).
Hence, Niegelhell discloses a functionalized metallic surface and a method of functionalizing a metallic surface wherein the functionalized metallic surface comprises a metallic surface bound to a molecule having a structure as instantly claimed, wherein R is an alkyl group (OPA,TPA) or an alkenyl group (VPA) having a structure as in instant claims 1-3, 5, and 113-114 (particularly given the lack of clarity thereof as discussed in detail above), and the metallic surface comprises gold and/or an oxide thereof, thereby anticipating the functionalized metallic surface of instant claim 1, as well as instant claims 2-3, 5, and 113-114 (based upon the chemical structures of VPA, OPA, and TPA, each of which reads upon the claimed R of instant claims 2-3, 5, and 113-114). Further, given that the method of Niegelhell comprises (a) depositing a phosphonic acid or phosphonate ester reagent on a metallic surface comprising gold (as in instant claim 58) by contacting the surface with a solution comprising the phosphonic acid reagent and isopropanol solvent (as in instant claims 59-60), and (b) heating the metallic surface to bind the phosphonic acid reagent with the metal/metallic surface as in instant claim 58, Niegelhell also anticipates instant claims 58-60.
Claims 1-3, 5, 76-78, 80, and 113-114 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jespersen (Alkanephosphonates on Hafnium-Modified Gold: A New Class of Self-Assembled Organic Monolayers). Jespersen discloses a method for assembling organic monolayers on a gold surface employing hafnium ions as linkers between a phosphonate headgroup and the gold surface, particularly monolayers of octadecylphosphonic acid (ODPA) and 2-mercaptoethylphosphonic acid (2-MEPA) formed on gold substrates that had been pretreated with hafnium oxychloride, e.g., as in Scheme 1, wherein the resulting functionalized gold surface comprises a metallic surface, that “comprises” gold, bound to a molecule of OPDA or 2-MEPA having a phosphonate structure as in instant claims 1 and 77, with the latter providing reactive thiol terminal functionality on the pretreated regions (reading upon the claimed “reactive handle” or “capture moiety” X of instant claim 2 and/or the “surface modification group” Y of instant claim 2 and/or the “probe moiety” or “small molecule” of instant claims 76-78, as well as the “L” linker of instant claims 2-3, 5, and 113-114 in light of the lack of clarity thereof as discussed above); and given that Jespersen specifically discloses that the assembly method allows for the ready generation of patterned surfaces, such as for patterned electrode arrays for numerous electronic applications and for creating monolayers with desired terminal functionality, such as for biochip applications, with an example functionalized gold surface provided in a microarray pattern as shown in Fig. 3, reading upon the claimed “metallic surface microarray” of independent claim 76 with the terminal thiol functionality reading upon the claimed “probe moiety” (or “small molecule” of instant claim 78), Jespersen anticipates the claimed functionalized metallic surface comprising gold as recited in instant claim 1 as well as instant claims 2-3, 5, and 113-114 based upon the chemical structures of OPDA and 2-MEPA, and the claimed metallic surface array of instant claims 76-78 (Entire document, particularly Abstract, Introduction, Experimental Section, and Discussion).
With respect to instant claim 80, given that “nucleic acid” is recited as an alternative in instant claim 78 from which claim 80 depends, and that claim 80 does not positively recite that the probe moiety is or comprises the nucleic acid, the Examiner takes the position that the microarray disclosed by Jespersen comprising a “small molecule” as the claimed “probe moiety” as discussed above also anticipates instant claim 80.
Claims 1-3, 5, and 109-114 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cabrita (Mixed self-assembled monolayers of Co-porphyrin and n-alkane phosphonates on gold). Cabrita discloses the surface immobilization by self-assembly of pure and mixed monolayers of Co-porphyrin phosphonate (Co-Porph-PO3H2) and n-alkane phosphonic acids of different alkyl chain lengths (C4, C5, and C10) from n-butanol solutions on gold substrates (Abstract), wherein the Co-Porph-PO3H2 and n-alkane phosphonic acids are bound to the gold surface as shown in Scheme 1, reading upon the claimed “functionalized metallic surface comprising a metal surface bound to a molecule having the structure” as recited in instant claim 1 with R as in instant claims 2-3, 5 (given the n-alkane phosphonic acids), and 113-114, as well as the claimed “phosphonate residue” of instant claims 109-110 with the Co-porphyrin of the Co-porphyrin phosphonate reading upon the broadly claimed “drug moiety” of instant claim 109 (given that the instant claims and the specification do not limit claimed “drug” or “drug moiety” to any particular type or purpose, e.g., the Co-porphyrin or the cobalt catalyst embedded in the porphyrin ring of the Co-porphyrin phosphonate may be equated to the broadly claimed “drug moiety”) via a linker (as in instant claim 111) that is capable of being cleaved (i.e., a “cleavable” linker as in instant claim 112). Hence, Cabrita anticipates instant claims 1-3, 5, and 109-114.
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 1-3, 5, 58-61, 76-78, 80, and 108-117 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar (US2019/0361011A1). Kumar teaches substrates functionalized with molecular detectors via self-assembly of monolayers wherein the molecular design of the detectors is such that the desorption of the self-assembled monolayer (SAM) from the substrate is suppressed by increasing the mass of the SAM without significantly interfering with the target analyte binding to the functionalized surface (Abstract, Paragraphs 0001-0003 and 0016). Kumar teaches that the substrate (110) for the molecular detector system (100) may be any substrate that can be modified using self-assembled layers, such as metals, metal oxides, metal nitrides, and silicon-containing materials, with examples thereof including Group II metals such as gold (Paragraph 0037, Fig. 1; thereby reading upon the claimed metallic surface that comprises gold). Kumar teaches that the “the self-assembled monolayer comprises: a surface binding unit [120] selected from the group consisting of hydroxamates, phosphonates, catechols, halosilanes, alkoxysilanes, phosphonic acids, alkenes, alkynes, alcohols, 1,2-diols, and thiols; a separator unit [130] bonded to the surface binding unit [120]; a mass altering unit [140] bonded to the separator unit [130]; and a detector unit [150] bonded to the separator unit [130]” (Abstract); wherein the separator unit (130) provides a bonding site for the mass altering unit (140) and a bonding site for the detector unit (150), with examples thereof recited in Paragraph 0041 including C1-C40 hydrocarbyls such as C1 to C16 unsubstituted and substituted alkyl radicals (e.g., a “linking moiety” L as in instant claims 2-3, 5, and 113-114, particularly given the lack of clarity thereof as discussed above; and/or a “linker” as in instant claim 111; Abstract, Paragraphs 0040-0041). Kumar teaches that the mass altering unit (140) can be any unit that can bind to the separator unit (130) and that adds mass, such as polymers and nanoparticles such as gold nanoparticles, wherein any polymer that has a residual reactive group that allows the polymer to bond with the separator unit (130) may be utilized, with examples including polyolefins such as polyethylene and polypropylene (Paragraphs 0042-0043, as in instant claims 115-116 given that the separator unit (130), as the claimed “L” linking moiety, “comprises” the mass altering unit (140) or polymer, e.g., polyethylene as in instant claims 115-116). Kumar teaches that the detector unit (150) can be any unit that can bind to the separator unit (130) and detect a target analyte (e.g., “reactive handle or capture moiety” as in instant claim 2, or “probe moiety” as in instant claim 76”), with examples thereof including biotin (e.g., “drug moiety”) and aptamers that can detect biomolecules, such as peptide aptamers, DNA aptamers, RNA aptamers (as in instant claim 80 as well as instant claim 108 given that a DNA aptamer “comprises a nucleic acid”) as well as antibodies (as in instant claim 78) and crown ethers (Paragraph 0045). Kumar also teaches that various functional groups can be used to attach the detector unit (150) to the separator unit (130) such as esters, amides, phosphonates, and maleimides as shown in Fig. 5 to attach aptamers to the separator unit (130) via a sulfur group, wherein Fig. 5 also shows the use of a phosphonic acid/phosphonate surface binding unit (120) to attach the SAM to the substrate (110); and given that Kumar teaches that the examples in Figs. 2-5 show that the surface binding unit (e.g., phosphonate/phosphonic acid surface binding functionality as shown in Fig. 5 attached to a metal oxide surface in a bidentate mode reading upon the phosphonate residue structure of instant claims 1, 76-77, 109-110), can be used with any of the separator units, mass altering units, and detector units (Paragraph 0057), wherein it is again noted that the substrate may be gold or any metal or metal oxide surface that can be modified using self-assembled layers, the Examiner takes the position that the claimed functionalized metallic surface as recited in instant claims 1-3, 5, and 113-116 would have been obvious over the teachings of Kumar given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to select from any of the suitable units and substrate materials taught by Kumar based upon the intended end use wherein it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. Further, given that the SAM-functionalized substrate taught by Kumar, that may comprise gold or any metal upon which a SAM may be formed as discussed above, is capable of use in the form of a “metallic surface microarray” as in instant claim 76, an obvious format for molecular detectors as taught by Kumar, with the claimed “probe moiety” and limitations of instant claims 77-78, 80, and 108 discussed above; and/or capable of use as a “drug delivery device” as in instant claim 109 with the “drug moiety” and limitations of instant claims 110-111 discussed above, wherein Kumar teaches hydrocarbyls for the separator unit (130) in Paragraph 0041 that are capable of being cleaved and thus “a cleavable linker” as in instant claim 112, the Examiner takes the position that the claimed “metallic surface microarray” and claimed “drug delivery device” as recited in instant claims 76-78, 80, and 108-112 would have been obvious over the teachings of Kumar given again that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to select from any of the suitable units and substrate materials taught by Kumar based upon the intended end use wherein it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to the claimed method of functionalizing a metallic surface as recited in instant claims 58-61 and 117, Kumar broadly teaches that standard procedures may be utilized for producing the functionalized surface, wherein a solution of phosphonic acid, or other unit that will form the monolayers on the substrate, may be made in organic solvent, “e.g., an alcohol solvent such as methanol, ethanol, and isopropanol” (as in instant claims 59-61 and 117), and then the substate, which as discussed in detail above may comprise gold as in the instantly claimed invention, may be pre-cleaned such as with O2 plasma and immersed in the solution, wherein “[s]tandard procedures for solvent removal and purification are then performed” to produce the molecular detector system (Paragraph 0049); and given that a heating step is an obvious “standard” step in the art for solvent removal and/or purification to bind the monolayer to the substrate, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 58-61 and 117 would have been obvious over the teachings of Kumar.
Claims 1-3, 5, 58-61, 76-78, 80, and 108-117 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar (US2019/0361011A1), as applied above, and in further view of Niegelhell. The teachings of Kumar are discussed in detail above and incorporated herein by reference, wherein Kumar teaches substrates functionalized with molecular detectors via SAMs and a method of producing the SAM-functionalized substrates such that desorption of the SAM from the substrate is suppressed by increasing the mass of the SAM by incorporating a mass altering unit in addition to a surface binding unit and a molecular detector unit, with suitable surface binding units that attach the SAM to the substrate including phosphonates and phosphonic acids as discussed above. Kumar broadly teaches that the substrate can be any substrate that can be modified using self-assembled layers such as metals, metal alloys, and metal oxides, with examples of metals including those metals in Group 11 such as silver and gold, with one non-limiting example utilizing a phosphonic acid that is attached to a hafnium oxide surface in a bidentate manner via the two hydroxyl groups of the phosphonic acid structure as shown in Fig. 5 (e.g., similar to the structure of the instant invention), and although Kumar does not specifically teach a metallic surface that comprises at least one of platinum, gold, palladium, iridium, or rhodium, or an oxide thereof, or any combination thereof, that is functionalized with a SAM bound via the phosphonic acid or phosphonate binding unit as in the instantly claimed invention(s), the Examiner again takes the position that it would have been obvious to one having ordinary skill in the art before the claimed invention to select from any of the suitable units and substrate materials taught by Kumar given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. Further, Niegelhell teaches a similar process for functionalizing a surface, particularly a gold surface, by forming an organophosphonic acid SAM on the surface (similar to Kumar), wherein the process includes activating the surface such as by utilizing O2 plasma (e.g., as in Kumar for cleaning the surface), contacting the surface with an alcohol solution comprising the organophosphonic acid (as in Kumar) to adsorb the organophosphonic acid to the gold surface, and then heating the surface in a tempering step that leads to irreversible attachment of the organophosphonic acid to the gold substrate in a bidentate manner by reaction of hydroxyl groups present on the surface of the gold substrate with the two OH groups of the phosphonic acid in order to form a covalent bond therebetween, thereby reducing the desorption of the SAM from the substrate (e.g., as in Kumar) in comparison to examples that are not subjected to a tempering step (Entire document, particularly as discussed in detail above, see also Abstract, Fig. 1, p. 1554, and Conclusion). Niegelhell also teaches that the adsorption results of their SAM process may lead to the development of new applications for organophosphonic acids on the basis of noble metal surfaces in general and not just gold (Conclusion), thereby clearing teaching and/or suggesting the claimed gold as well as platinum, palladium, iridium, and rhodium as metal substrates “that can be modified using self-assembled layers” as in Kumar, and given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to incorporate a heating or tempering step as in Niegelhell in the invention taught by Kumar to further reduce the desorption of the phosphonic acid SAM from the metallic surface and/or to facilitate the reaction of the organophosphonic acid at the metallic surface, the claimed invention as recited in instant claims 1-3, 5, 58-61, 76-78, 80, and 108-117 would have been (further) obvious over the teachings of Kumar in view of Niegelhell given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results and/or prima facie obviousness to use a known technique to improve similar devices in the same way.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Queffélec (Surface Modification Using Phosphonic Acids and Esters) discloses a general review of surfaces organically modified by phosphonic acids and esters thereof, as well as the design and methods for producing the modified surfaces that possess tunable properties for diverse application areas such as “derivatization of substrates with reactive end groups for further modification, protective layers, analytical or biological sensors [such as biological microarrays], catalysis, biomedical devices [such as for drug delivery], solar batteries, etc.” (Introduction, Sections 5.1.1 and 5.1.4) specifically noting that “[b]iomedical research has been one of the most significant growth areas for phosphonate surface modification” and that “[s]ome of the exciting developments coming out of this research have been in analytical chemistry with biological microarrays and biologics purifications using phosphonate coated surfaces” (Concluding Remarks).
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787