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 amendment filed 5/11/2026 has been entered. Claims 4-57, 62-75, 79, 81-107 and 114 have been canceled. Claims 1-3, 58-61, 76-78, 80, 108-113, and 115-117 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-3, 58-61, 76-78, 80, 108-113, and 115-117 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar (US2019/0361011A1) in view of Niegelhell (Adsorption Studies of Organophosphonic Acids on Differently Activated Gold Surfaces) for generally the reasons recited in the prior office action, and incorporated herein by reference, and summarized below with respect to the amended claims, wherein the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Kumar in view of Niegelhell, particularly in the absence of any clear showing of criticality and/or unexpected results of the claimed invention with respect to a metallic surface that comprises platinum or an oxide thereof.
As discussed in the prior office action, 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). 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, 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, and also reading upon the broadly claimed “substituted” R group of instant claim 1), 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), the Examiner again takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a phosphonate or phosphonic acid surface binding functionality with any of the substrates taught by Kumar such as gold or any metal or metal oxide that “can be modified with self-assembled layers” as 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, and that in general, it is well known in the art that platinum and/or platinum oxide surfaces, like gold surfaces, “can be modified with self-assembled layers” and thus would have been an obvious species of metal and/or metal oxide substrate based upon the teachings of Kumar.
Further, although Kumar does not specifically recite that the metal or metal oxide substrate comprising platinum or an oxide thereof is functionalized with a SAM bound via the phosphonic acid or phosphonate binding unit as in the instantly claimed invention(s), it is again noted that 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 as taught by Niegelhell, and that one having ordinary skill in the art before the effective filing date of the claimed invention would have reasonably expected similar results for a noble platinum surface as those for a noble gold surface given the known equivalence thereof with respect to the formation of self-assembled monolayers (as evidenced, for example, by Vercelli, Polypyrrole Self-Assembled Monolayers and Electrostatically Assembled Multilayers on Gold and Platinum Electrodes for Molecular Junctions; or Cheng, Comparative Study of Electrochemically Directed Assembly versus Conventional Self-Assembly of Thioacetyl-Terminated Oligo(phenylene ethynylene)s on Gold and Platinum Surfaces; or Yagyu, Adsorption of Phenylphosphonic Acid on Gold and Platinum Surfaces), the Examiner maintains her position that the claimed invention as recited in instant claims 1-3, 58-61, 76-78, 80, 108-113, and 115-117 would have been obvious over the teachings of Kumar in view of Niegelhell for the detailed reasons recited in the prior office action and incorporated herein by reference, 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.
Response to Arguments
Applicant's arguments filed 5/11/2026 have been fully considered but they are not persuasive with respect to the rejection over Kumar in view of Niegelhell as discussed in detail in the prior office action and summarized above with respect to the amended claims. The Applicant first argues that the generic teaching of Kumar regarding “metals” and “metal oxides” allegedly “does not and cannot render the species of platinum or platinum oxide obvious, at least because not all metals support the same self-assembled layer chemistries, and because functionalization mechanisms are highly group- and surface-specific”, further arguing that Kumar “notably fails to refer to Group 10 metals, of which platinum is a member” wherein “platinum (a Group 10 metal) is known to exhibit markedly different surface properties, including a partially filled d-band and strong catalytic activity,” and hence, argues that “Kumar’s selective disclosure of Groups 6, 11, and 12, and omission of Group 10 [allegedly] would have signaled to the person of ordinary skill that the suitability of metals for self-assembled functional is material-dependent, and that [allegedly] platinum would not have been expected to behave similarly” (see pages 13-14 of the response). However, the Examiner respectfully disagrees and notes that Kumar clearly recites that the metals of Groups 6, 11, and 12 are “Examples of metals” with respect to “any substrate that can be modified using self-assembled layers such as metals, metal oxides…” (Paragraph 0037), and hence, one skilled in the art would have clearly understood that the invention taught by Kumar was not limited to metals of Groups 6, 11, and 12 only, and could be applied to any metal that “can be modified using self-assembled layers” as taught by Kumar. It is also noted that although the Examiner agrees with the Applicant in that functionalization mechanisms, in general, are group- and surface-specific, Kumar clearly teaches that the substrate may be any substrate, e.g., metal or metal oxide, that can be modified using self-assembled layers, and given that in general, a platinum or platinum oxide substrate/surface is a known metal or metal oxide substrate/surface that “can be modified using self-assembled layers” (as evidenced, for example, by Wolf, Surface Functionalization of Platinum Electrodes with APTES for Bioelectronic Applications, of record; or Li, Self-Assembly of Alkanethiol Molecules onto Platinum and Platinum Oxide Surfaces; or Long, Synthesis and characterization of self-assembled monolayers based on redox-active silane compounds on platinum surfaces; or Vercelli, Polypyrrole Self-Assembled Monolayers and Electrostatically Assembled Multilayers on Gold and Platinum Electrodes for Molecular Junctions; or Cheng, Comparative Study of Electrochemically Directed Assembly versus Conventional Self-Assembly of Thioacetyl-Terminated Oligo(phenylene ethynylene)s on Gold and Platinum Surfaces), Applicant’s arguments that the claimed platinum and platinum oxide species would not have been obvious over the broader genus taught by Kumar are not persuasive, particularly given that one having ordinary skill in the art would have readily understood that self-assembling functionalization mechanisms are group- and surface-specific such that surface functionalization mechanisms for a substrate “comprising” platinum and/or platinum oxide may not be the same as utilized for functionalization of, for example, a substrate consisting essentially of aluminum or aluminum alloy. The Applicant also argues that Niegelhell does not “clearly” teach and/or suggest platinum as a metal substrate “that can be modified using self-assembled layers” as in Kumar given again that “the generic teaching by Kumar regarding ‘metals’ and ‘metal oxides’ [allegedly] does not and cannot render the species of platinum or platinum oxide obvious, at least because not all metals support the same self-assembled layer chemistries, and because functionalization mechanisms are highly group- and surface-specific” (see page 14, last two paragraphs) as discussed above. The Applicant argues that although Niegelhell recites in the Conclusion section that their “results may lead to the development of new applications for organophosphonic acids on the basis of noble metal surfaces” as noted by the Examiner in the rejection, the Conclusion statement of Niegelhell is “expressly tentative and aspirational” and given that “Niegelhell explicitly acknowledges that ‘it is not completely clear how the adsorption works,’ underscoring the lack of mechanistic understanding [allegedly] necessary to extrapolate the disclosed results to other materials,” the Applicant “submits that a statement framed in terms of what ‘may’ occur cannot reasonably be relied upon to establish what a person of ordinary skill in the art would have expected to succeed” (see page 15 of the response). The Applicant then argues that “[a]t most, Niegelhell suggests a research direction or possibility, not a reliable basis for predicting that organophosphonic acid SAMs would successfully form on any metal surfaces, including platinum or platinum oxide surfaces,” particularly “given the well-recognized material-dependent nature of self-assembly processes and the distinct chemistry of platinum relative to gold and other metals,” thereby arguing that “Niegelhell [allegedly] does not ‘clearly’ teach or suggest platinum as a suitable substrate for self-assembled layer functionalization, nor does it provide a reasonable expectation of success sufficient to support the Examiner’s obviousness determination.” (see page 15, last three full paragraphs). However, the Examiner respectfully disagrees and again notes that a platinum or platinum oxide substrate/surface is a known metal or metal oxide substrate/surface that “can be modified using self-assembled layers” as evidenced by the above-referenced supporting documents, and given that Niegelhell clearly “suggests” that their results with respect to a gold substrate “may lead to the development of applications for organophosphonic acids on the basis of noble metal surfaces” in general, wherein one having ordinary skill in the art would have reasonably expected similar results for a noble platinum surface as for a noble gold surface and/or would have been motivated to utilize a platinum substrate in the same manner as a gold substrate based upon various functionalization studies applied to both gold and platinum as evidenced by Vercelli, Polypyrrole Self-Assembled Monolayers and Electrostatically Assembled Multilayers on Gold and Platinum Electrodes for Molecular Junctions; or Cheng, Comparative Study of Electrochemically Directed Assembly versus Conventional Self-Assembly of Thioacetyl-Terminated Oligo(phenylene ethynylene)s on Gold and Platinum Surfaces); or even Yagyu, Adsorption of Phenylphosphonic Acid on Gold and Platinum Surfaces which discusses the similar challenges in adsorption of phenylphosphonic acid on gold and platinum surfaces versus on aluminum/aluminum oxide, Applicant’s arguments over Kumar in view of Niegelhell are not persuasive, especially given the absence of any clear showing of criticality and/or unexpected results with respect to the claimed “metallic surface [that] comprises platinum or an oxide thereof” (emphasis added) over any of the other metals taught and/or suggested by Kumar in view of Niegelhell.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 5/11/2026.
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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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