DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Amendment
1- The amendment filed on 03/30/2022 has been entered and fully considered. Claims 1-16 remain pending in the application.
Response to Arguments
2- Applicants’ arguments, with respect to the rejection(s) of the pending claims under 35 USC §103 have been fully considered but are found not persuasive.
3- Here is a brief response to the Arguments presented by the Applicants to explain further the rationale behind the rejections and the Examiner’s interpretations.
Applicants argue in their response (pp. 5-6) that Li fails to teach the claimed viscous liquid with the claimed viscosity and shear rate, citing p. 4 and 2nd paragraph and Li’s using of ethanol to prepare the POSS polymer, and that the presence of ethanol contradicts the final product to be viscous with the given properties.
The Examiner respectfully disagrees with Applicants and submits that the cited paragraph: “ grinding the POSS polymer obtained in the step (1) uniformly dispersed in ethanol solution, then adding the silver nitrate and sodium borohydride to in-situ reduction, after finishing reaction, filtering and washing and drying the product, to obtain nanometer silver-loaded POSS polymer composite, preferably, adding silver nitrate and sodium borohydride and then stirring magnetically 1-2h the mixed uniformly, the reaction condition is as follows: stirring at room temperature 30-120min;, drying condition is: 60-100 degrees centigrade vacuum drying at 24-72h.”, clearly mentions that ethanol is only used in the preparation of the final polymer and that the solution, in preparation, is submitted to filtering, washing and drying, construed as drying of the ethanol, leaving POSS, as the known viscous gel. The claimed properties are deemed obviated by Ouaer and the general information provided in the references provided as evidence, but not relied upon in the rejection.
Claim Rejections - 35 USC § 103
5- 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
6- Claims 1-2, 4, 6-8 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Li et al. (CN 111269577, cited by Applicants) in view of Ouaer et al. (The rheological behaviour of a water-soluble polymer (HEC) used in drilling fluids; J. Brazilian Society of Mech. Sci. and Eng., 2018, 40:380)
As to claims 1, 6-8, Li teaches a surface-enhanced Raman scattering agent, its method of use in a SERS technique, and its method of making comprising pulverizing a noble metal-supporting sheet; (claim 6) a surface-enhanced Raman scattering measurement kit comprising the surface-enhanced Raman scattering agent described in claim1 (Abstract, Figs. 1-8), and noble metal-supporting flakes dispersed in the viscous liquid (Figs. 1-2, Abstract, and page/parag. 4/1, 7/1-2, 8/1 for ex.; Silver nanostructures in a POSS polymer, i.e. gel, with structural viscosity. 3/2 clearly provides the method of obtaining POSS after filtering and drying ethanol), the viscous liquid being a gelatinous dispersion (The POSS gel is known to be gelling and thickening agent that has gelatinous characteristics. See links indicated in the Conclusion, presented as mere evidence and not used in this rejection. References also cited and attached present HEC as a mere suitable alternative to gelatin. See MPEP § 2144.07 for ex.).
Li does not teach expressly the viscous liquid has a viscosity of 50 mPa-s or greater at 25°C and a shear rate of 10 (1/s).
However, selecting a particular/arbitrary set of characteristics for a material is construed to be obvious and a mere matter of optimization that involves a routine skill in the art (since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 205 USPQ 215 (CCPA 1980).) Moreover, and in the HEC field, Ouaer teaches the behavior of a water-soluble polymer HEC used in drilling fluids (Abstract and Figs. 1-7) wherein flow curves description, Sect. 3.1 and Fig. 3, provides examples of HEC, close and between the diamond and upright-triangle curve in Fig. 3, with shear rate of 1E+01 1/s and a viscosity of about 5E-02 mPa.s, at a temperature of 25 degrees (Abstract).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Li in view of the evidence provided by Ouaer so that the viscous liquid has a viscosity of 50 mPa-s or greater at 25°C and a shear rate of 10 (1/s), as one of the parameters available for the viscous substance.
As to claims 2, 4, the combination of Li and Ouaer teaches the surface-enhanced Raman scattering agent according to claim 1
Moreover, Li teaches wherein the noble metal is gold, silver, or copper (Abstract, ¶ 4-14 for ex).
Li does not teach expressly wherein the flakes are flakes made of an inorganic oxide having a hydroxyl group.
However, one PHOSITA would be aware of the hydroxyl POSS group as an obvious species of the limited genus of POSS ((See MPEP 2144.08 II A- 4(a). Sections 4 (c-e) can also be considered). See also Sahoo’s reference cited in the Conclusion as a mere evidence for such fact.
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Li/Ouaer in view of general considerations in the art so that the flakes are flakes made of an inorganic oxide having a hydroxyl group, with the advantage of optimizing the SERS signals.
7- Claims 3, 5 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Li and Ouaer, in view of Motofumi et al. (JP 4783907, cited by Applicants)
As to claims 3, 5, the combination of Li and Ouaer teaches the surface-enhanced Raman scattering agent according to claim 1
The combination does not teach expressly wherein each of the noble metal-supporting flakes is a structure including: a flake; and nanorods standing close together on a surface of the flake, where at least a part of the nanorods comprises a noble metal layer or a noble metal particle; and (claim 5) wherein the flakes are glass flakes, silica flakes, talc flakes, mica flakes, or titanium oxide flakes.
However, in a similar field of endeavor, Motofumi teaches a SERS sensor and manufacturing thereof (Abstract, Figs. 1-14), wherein silver particles 32 are used on columnar bodies 3 or 31 of the sensor (Figs. 1-11), with glass is used as a substate (¶ 19, 43 for ex.)
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Li/Ouaer in view of Motofumi’s teachings so that each of the noble metal-supporting flakes is a structure including: a flake; and nanorods standing close together on a surface of the flake, where at least a part of the nanorods comprises a noble metal layer or a noble metal particle; wherein the flakes are glass flakes, silica flakes, talc flakes, mica flakes, or titanium oxide flakes, with the advantage of optimizing the SERS signal.
8- Claims 9-16 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Li in view of Ouaer, and further in view of Graca et al. (Mica sheets with embedded metal nanorods: Chemical imaging in a topographically smooth structure, 2007, cited by Applicants)
As to claims 9-16, the combination of Li and Ouaer teaches the surface-enhanced Raman scattering agent according to claim 1.
Moreover, Li teaches a layer including at least one selected from SiO2, Ta205, TiO2, and LiF (¶ 56-57 for ex; Silicon wafer is used); where at least a part of the nanorods comprises a noble metal layer (Silver as the noble metal).
The combination does not teach expressly (claim 9) wherein the flakes have an average value of circle equivalent diameters of from 10 to 500 mm as measured by an image analysis method; (claim 10) wherein the flakes are mica flakes; (claims 11-13) wherein each of the noble metal-supporting flakes is a structure including: a flake/mica flake or a sheet/mica sheet; and nanorods standing close together on a surface of the flake; (claims 13-16) wherein each of the noble metal-supporting flakes is a structure including: nanorods standing close together on a surface of the flake, and the nanorods have a ratio of a length in a longitudinal direction to a length in a widthwise direction of a cross session, created by cutting a nanorod along a plane substantially parallel to the flake, of 2 or more.
However, in a similar field of endeavor of making/using SERS materials/structures, Graca teaches mica sheets with embedded metal nanorods (Abstract and Figs. 1-5) wherein the sheets, i.e. flakes, are mica sheets (Abstract, pp. 3-4; mica triangles are used), and the sizes of the flakes are to range from 100 nm to many microns, which overlaps with and obviates the claimed range, since it has been held that “In the case where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (In re Wetheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990))”. Moreover, in Fig. 1, the ratio of length of the nanorods to the diameter of the same nanorods is visibly greater than 2.
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Li/Ouaer in view Graca’s teachings so that the flakes have an average value of circle equivalent diameters of from 10 to 500 mm as measured by an image analysis method; wherein each of the noble metal-supporting flakes is a structure including: a flake/mica flake; and nanorods standing close together on a surface of the flake; wherein each of the noble metal-supporting flakes is a structure including: nanorods standing close together on a surface of the flake, and the nanorods have a ratio of a length in a longitudinal direction to a length in a widthwise direction of a cross session, created by cutting a nanorod along a plane substantially parallel to the flake, of 2 or more, with the advantage to optimize the SERS signals; and so that the flakes are mica flakes, as mere suitable alternatives to the glass flakes (See MPEP § 2144.07 for ex).
Conclusion
“Construction and evaluation of environment-friendly POSS multi-crosslinked mulch film based on bone gelatin” to Bin et al. (Int. Journal of Bio. Macromolecules; 247, 2023); “Polyhedral Oligomeric Silsesquioxanes (POSS)-Based Hybrid Soft Gels: Molecular Design, Material Advantages, and Emerging Applications” to Huihui et al. (ACS Mat. Lett. 2, 2020). (which appears to be relevant to the independent claim)
End of Section 1; Kozlowska “Modification of Collagen/Gelatin/Hydroxyethyl
Cellulose-Based Materials by Addition of Herbal Extract-Loaded Microspheres Made
from Gellan Gum and Xanthan Gum”; Materials (Basel), 2020 Aug 8;13(16),
downloadable from https://pmc.ncbi.nlm.nih.gov/articles/PMC7476022/#B37-
materials-13-03507
“POLYHEDRAL OLIGOMERIC SILSESQUIOXANE (POSS) NANOPARTICLES AS NEW CROSSLINKING AGENT FOR FUNCTIONALIZED RUBBER”; Sahoo et al. November 2007;Rubber Chemistry and Technology (Relevant to claim 4)
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached on (571)272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohamed K AMARA/
Primary Examiner, Art Unit 2877
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