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 .
Response to Amendment
This is an office action in response to Applicant’s arguments and remarks filed on 17 December 2025. Claims 2-3, 5, 8, 10-14, 21, 22, 24, 26-28, 31, 36, and 38-40 are pending in this application. Claims 14, 21, 22, 24, 26-28, 31, 36, and 38-40 were previously withdrawn. Claims 2-3, 5, 8, 10-13 are being examined herein.
Status to Objections and Rejections
The objection to the specification is maintained.
The rejections to claims 2, 5, 8, 11, and 12 under 35 U.S.C. § 102(a)(1) in view of Qing, et. al. (US 20180280968 A1) is withdrawn in view of amendments.
The rejection to claim 3 under 35 U.S.C. § 102(a)(1) in view of Qing, et. al. (US 20180280968 A1) in view of Chou, et. al. (US 20100267158 A1) is withdrawn in view of amendments.
The rejection to claim 10 under 35 U.S.C. § 102(a)(1) in view of Qing, et. al. (US 20180280968 A1) in view of Sadar, et. al. ("Confined Electrochemical Deposition in Sub-15 nm Space for Preparing Nanogap Electrodes”) is withdrawn in view of amendments.
The rejection to claim 13 under 35 U.S.C. § 102(a)(1) in view of Qing, et. al. (US 20180280968 A1) in view of Ivanov, et. al. (US 20180230531 A1)is withdrawn in view of amendments.
The nonstatutory double patenting rejection of claims 2, 3, 5, and 8 is withdrawn in view of amendments.
Response to Arguments
Applicant’s arguments, see remarks page 9-11, filed 17 December 2025, with respect to the rejections of claims 2, 5, 8, 11, and 12 under 35 U.S.C. 102(a)(1) in view of Qing, et. al. (US 20180280968 A1) and of claim 10 under 35 U.S.C. 103 in view of Qing, et. al. (US 20180280968 A1) in view of Sadar, et. al. ("Confined Electrochemical Deposition in Sub-15 nm Space for Preparing Nanogap Electrodes”) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of Qing, et. al. (US 20180280968 A1) and Qing, et. al. (US 20180280968 A1) in view of Kar, et. al. (US 20140224663 A1). See below for further detail.
Specification
The disclosure is objected to because of the following informalities: “between a pair of metal and reliably evaluate…” (par. 0004, line 1-2 of the paragraph). Examiner believes this should read “a pair of metal electrodes.”
Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2, 5, 8, 10, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Qing, et. al. (US 20180280968) or, in the alternative, under 35 U.S.C. 103 as obvious over Qing, et. al. (US 20180280968).
With regards to Claim 2, Qing teaches a chip with fluidic and electrical elements for use with biomolecules (Abstract). Qing teaches a first and second chamber 1 with different potentials connected by a first fluid channel atop a substrate 7 (Fig. 4A-E, 10A; par. 0018, 0024) (a cis-fluidic channel/chamber and a trans-fluidic channel/chamber fabricated on a planar substrate). Qing teaches the first fluid channel 2 has first and second electrode tips 3 on opposite sides (Fig. 4A; par. 0018) and the first and second electrode tips 3 are working electrodes that form a nanogap (Fig. 5; par. 0019) (a nanogap configured in between and connecting the cis-fluidic and trans-fluidic channels/chambers).
Qing teaches first and second electrode tips 3 are embedded in a channel between the substrate 7 and a passivation layer 9 (Fig. 3A-C; par. 0017) (a first electrode and a second electrode sealed inside a channel). The first and second electrode (tips) 3 are electrochemically deposited with metal under a feedback control circuit (Fig. 5; par. 0019, 022, 0105) (wherein the first and second electrodes are configured to be electrochemically deposited with one or more metal materials within the channel and under feed-back control). Qing teaches the nanogap formed in fluid channel 2 by electrodes 3 has a starting gap size at or just below 100 nm with a critical range at 30 nm creating the narrowest space between the first and second chamber 1 (par. 0139) (thereby forming the electronic device with a single path for a molecule to travel from the cis-fluidic channel/chamber to the trans-fluidic channel/chamber and a distance between the first and second electrodes being between about 1-100 nm to form the nanogap which is self-aligned and has a narrowest bottleneck in the path between the cis-fluidic and trans-fluidic channels/chambers).
Qing teaches the electrochemical deposition of metals on the electrodes to fine-tune the gap size through a series of pulsed currents (par. 0136-0139) (wherein the first and second electrodes are configured to be electrochemically deposited with the one or more metal materials via a pulsed electrochemical deposition operation with a plurality of pulses).
Further, examiner notes the pulsed electrochemical deposition operation, specifically “via a pulsed electrochemical deposition operation with a plurality of pulses and a rest period of between about 500 ms and 2 seconds between pulses” is drawn to a product-by-process claim limitation as it describes the metal coating process that is used to arrive at the final apparatus. Examiner notes, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113 I-III. The end result of the electrode tip structure of Qing appears to be identical to the instantly claimed structure, since Qing teaches the electrochemical deposition of metals on the electrodes to fine-tune the gap size through a series of pulsed currents (par. 0136-0139) (wherein the first and second electrodes are configured to be electrochemically deposited with the one or more metal materials via a pulsed electrochemical deposition operation with a plurality of pulses). There is no apparent difference between the apparatus as claimed and the prior art taught by Qing since they are both formed by electrochemical deposition and serve the same purpose of assisting in the translocation of DNA. Therefore, the teaching of Qing meet the instant limitations or in the alternative, it would have been obvious to one ordinary skill in the art to have the electrode tips of Qing be the same or similar to the instantly claimed structure although produced by a different process since the only difference between the formation of the electrode tips of Qing and the instantly recited structure is the gap time. The burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. See MPEP 2113(II).
With regards to Claim 5, modified Qing teaches the substrate can be made of silicon, that is inherently non-transparent (Qing, par. 0059, #12) (wherein the planar substrate is a non-transparent substrate).
With regards to Claim 8, modified Qing teaches the electrode tips 3 are confined between dielectric surfaces (Qing, par. 0022) (wherein the channel in which the first electrode and second electrode are sealed is formed by one or more dielectric layers).
With regards to Claim 10, modified Qing teaches the metal materials are gold, palladium, and platinum or combinations thereof (Qing, par. 0059, #17) (wherein the one or more metal materials are… gold, palladium, platinum… or combinations thereof). The limitation “a pulse width of the pulsed electrochemical deposition operation is 50 ms or less” is deemed to be a product by process limitation. The end result of the electrode tip structure of Qing appears to be identical to the instantly claimed structure, since Qing teaches the electrochemical deposition of metals on the electrodes to fine-tune the gap size through a series of pulsed currents (par. 0136-0139) (wherein the first and second electrodes are configured to be electrochemically deposited with the one or more metal materials via a pulsed electrochemical deposition operation with a plurality of pulses). There is no apparent difference between the apparatus as claimed and the prior art taught by Qing since they are both formed by electrochemical deposition and serve the same purpose of assisting in the translocation of DNA. Therefore, the teaching of Qing meet the instant limitations or in the alternative, it would have been obvious to one ordinary skill in the art to have the electrode tips of Qing be the same or similar to the instantly claimed structure although produced by a different process since the only difference between the formation of the electrode tips of Qing and the instantly recited structure is the gap time. The burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. See MPEP 2113(II).
With regards to Claim 11, modified Qing teaches the biomolecule is DNA (Qing, par. 0059, #21) (wherein the molecule is DNA).
With regards to Claim 12, modified Qing teaches a biomolecule passes from the first and second chamber 1 through the nanogap with a detector to measure the electrical current between the first and second electrode (Qing, par. 0060-0061, #22, #23) wherein the movement of the biomolecule through the system is done by electroosmotic flow (Qing, par. 0023) (detecting with the electronic device of claim 2 of an individual mounting and/or translocation event of single molecules by a correlated ionic current between channels/chambers and tunneling current between the first and second electrodes through the nanogap and performing electrical and/or optical characterization).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2, 5, 8, 10, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Qing, et. al. (US 20180280968) in view of Kar, et. al. (US 20140224663 A1).
With regards to Claim 2, Qing teaches a chip with fluidic and electrical elements for use with biomolecules (Abstract). Qing teaches a first and second chamber 1 with different potentials connected by a first fluid channel atop a substrate 7 (Fig. 4A-E, 10A; par. 0018, 0024) (a cis-fluidic channel/chamber and a trans-fluidic channel/chamber fabricated on a planar substrate). Qing teaches the first fluid channel 2 has first and second electrode tips 3 on opposite sides (Fig. 4A; par. 0018) and the first and second electrode tips 3 are working electrodes that form a nanogap (Fig. 5; par. 0019) (a nanogap configured in between and connecting the cis-fluidic and trans-fluidic channels/chambers).
Qing teaches first and second electrode tips 3 are embedded in a channel between the substrate 7 and a passivation layer 9 (Fig. 3A-C; par. 0017) (a first electrode and a second electrode sealed inside a channel). The first and second electrode (tips) 3 are electrochemically deposited with metal under a feedback control circuit (Fig. 5; par. 0019, 022, 0105) (wherein the first and second electrodes are configured to be electrochemically deposited with one or more metal materials within the channel and under feed-back control). Qing teaches the nanogap formed in fluid channel 2 by electrodes 3 has a starting gap size at or just below 100 nm with a critical range at 30 nm creating the narrowest space between the first and second chamber 1 (par. 0139) (thereby forming the electronic device with a single path for a molecule to travel from the cis-fluidic channel/chamber to the trans-fluidic channel/chamber and a distance between the first and second electrodes being between about 1-100 nm to form the nanogap which is self-aligned and has a narrowest bottleneck in the path between the cis-fluidic and trans-fluidic channels/chambers).
Qing teaches the electrochemical deposition of metals on the electrodes to fine-tune the gap size through a series of pulsed currents (par. 0136-0139) (wherein the first and second electrodes are configured to be electrochemically deposited with the one or more metal materials via a pulsed electrochemical deposition operation with a plurality of pulses).
However, Qing is silent to a rest period of between about 500 ms and 2 seconds between pulses.
Kar teaches a method for coating electrode surfaces by pulsed electrochemical deposition (Abstract). Kar teaches the method starts by submerging electrodes into a heated solution with a metal catalyst and pulsing a current between the electrodes (par. 0011, 0024). Kar teaches the pulses are characterized by their on:off time ratio, on time being when a current is sent and off time when no current is sent. Kar teaches the on:off time ratio can be 1:500 or 1:1000 milliseconds (par. 0028). Therefore, for every 1 millisecond the pulse current is on, it is then off for 500 or 1000 milliseconds (a rest period of between about 500 ms and 2 seconds between pulses). Kar teaches changing the on:off time ratio of the pulses can cumulatively positive effect the deposition process when creating the resultant anode and cathode (par. 0030-0031).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify the pulsed electrochemical deposition technique of Qing to include on:off pulse ratios wherein the off time is 0.5 or 1 second long as taught by Kar because it is a known technique in the art that positively cumulative effects on the resulting cathode and anode. Because both techniques use a pulsed electrochemical deposition, modifying the rest time as provided by Kar, provides likewise sought functionality with reasonable expectation of success. MPEP 2143(I)(G).
With regards to Claim 5, modified Qing teaches the substrate can be made of silicon, that is inherently non-transparent (Qing, par. 0059, #12) (wherein the planar substrate is a non-transparent substrate).
With regards to Claim 8, modified Qing teaches the electrode tips 3 are confined between dielectric surfaces (Qing, par. 0022) (wherein the channel in which the first electrode and second electrode are sealed is formed by one or more dielectric layers).
With regards to Claim 10, modified Qing teaches the metal materials are gold, palladium, and platinum or combinations thereof (Qing, par. 0059, #17) (wherein the one or more metal materials are… gold, palladium, platinum… or combinations thereof).
Qing in view of Kar teaches the pulse has an on:off time ratio, on time being when a current is sent and off time when no current is sent. Kar teaches the on:off time ratio can be 1:500 or 1:1000 milliseconds (par. 0028). Therefore, for every 1 millisecond the pulse current is on, it is then off for 500 or 1000 milliseconds (and wherein a pulse width of the pulsed electrochemical deposition operation is 50 ms or less).
With regards to Claim 11, modified Qing teaches the biomolecule is DNA (Qing, par. 0059, #21) (wherein the molecule is DNA).
With regards to Claim 12, modified Qing teaches a biomolecule passes from the first and second chamber 1 through the nanogap with a detector to measure the electrical current between the first and second electrode (Qing, par. 0060-0061, #22, #23) wherein the movement of the biomolecule through the system is done by electroosmotic flow (Qing, par. 0023) (detecting with the electronic device of claim 2 of an individual mounting and/or translocation event of single molecules by a correlated ionic current between channels/chambers and tunneling current between the first and second electrodes through the nanogap and performing electrical and/or optical characterization).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Qing, et. al. (US 20180280968) as applied to claim 2 above OR Qing, et. al. (US 20180280968) and Kar, et. al. (US 20140224663 A1) as applied to claim 2 above, and further in view of Chou, et. al. (US 20100267158 A1).
With regards to Claim 3, Qing teaches the substrate can be made of glass or quartz (par. 0059, #12) but does not specifically teach the glass or quartz is transparent.
Qing is silent to the planar substrate is a transparent substrate.
Chou teaches a device with a nanoscale gap for the manipulation and detection of small particles/molecules (Abstract). Chou teaches a nanofluidic channel with a nanogap detectors within the channel and nanowires to control electrical signals, all coming together to manipulate molecules like a strand of DNA (Fig. 1, 2; par. 0029). Chou teaches the nanofluidic structure are made of glass, quartz, or fused silica (par. 0032), specifically a substrate of fused quartz (par. 0037). Both fused silica and fused quartz are inherently transparent materials (the planar substrate is a transparent substrate). Chou teaches the device employs electrical and optical detectors (par. 0035) meaning the use of transparent materials for the substrate and fluidic components allows for optical detectors to operate through the material.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the glass or quartz material of Qing to specifically be a transparent glass or quartz as taught by Chou in order to allow for the addition of optical detection. Because both devices use fluidic devices with a nanogap to isolate, manipulate, and detect small molecules, modifying the material of the substrate to be transparent as provided by Chou, provides likewise sought functionality with reasonable expectation of success. MPEP 2143(I)(G).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Qing, et. al. (US 20180280968) as applied to claim 12 above OR Qing, et. al. (US 20180280968) and Kar, et. al. (US 20140224663 A1) as applied to claim 12 above, and further in view of Ivanov, et. al. (US 20180230531 A1).
With regards to Claim 13, Qing teaches the substrate can be made of glass or quartz, that are inherently transparent (par. 0059, #12) (which is a transparent substrate).
Qing is silent to comprising performing optical characterization, including performing Raman spectroscopy by performing tip-enhanced Raman spectroscopy through the substrate.
Ivanov teaches a device for analyzing macromolecules two fluid channels coupled to a measurement channel (Abstract). Ivanov teaches a device comprising a first channel 101 and second channel 104 on opposite sides with a channel connecting the two further comprising two electrodes 112 and a nanopore complex 111 (Fig. 1; par. 0050, 0052, 0053). Ivanov teaches the channel containing electrodes 112 and nanopore complex 112 additionally has a measurement module 108 and a measurement chamber defined by sidewalls 113/114/115/116 (Fig. 1; par. 0050-0054). Ivanov teaches the measurement module can be an optical detector like tip enhanced Raman scattering (par. 0042) (performing optical characterization, including performing Raman spectroscopy by performing tip-enhanced Raman spectroscopy through the substrate). Ivanov teaches optical detectors are able to sense and quantify the translocation of the macromolecule through the nanopore (par. 0042).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to substitute the detector of Qing to instead be an optical detector, specifically performing tip-enhanced Raman spectroscopy, as taught by Ivanov in order to monitor the molecule translocation event through the nanopore. Because both device deal with electrodes moving molecules through nanopores from one channel to an adjacent channel, substituting an electrochemical detector for an optical detector as provided by Ivanov, provides likewise sought functionality in which the substitution would yield predictable results. MPEP 2143(I)(B).
Conclusion
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.
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/M.T.H./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758