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 .
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.
Claims 1-3 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US 12,125,668 [Van Putte] in view of US 2020/0385516 A1 [Nakasuga].
Regarding Claim 1:
Van Putte teaches a grid for cryo-electron microscopy (abstract) having
a graphene grid (6:54-55) and
a structural analysis target substance to be analyzed by cryo-electron microscopy (6:18-21 – analyte),
wherein the structural analysis target substance is bonded to the graphene grid (6:18-21 – bonded by the linkers).
However, Van Putte does not specify that the graphene grid is a graphene surface treated with a halogen oxide radical so as to modify the graphene surface and introduce at least one substituent, the substituent is introduced by oxidation of C=C bonds present on the graphene surface, or that a functional group is introduced to the modified graphene surface through the substituent being reacted.
Nakasuga teaches a functionalized graphene grid having a graphene surface treated with a halogen oxide radical so as to modify the graphene surface and introduce at least one substituent (see Formulae 1 and 7 below),
the substituent is introduced by oxidation of C=C bonds present on the graphene surface (para 47, formula 9- the carboxyl substituent is introduced by oxidizing C=C bonds on the edge of the graphene surface),
wherein a functional group is introduced to the modified graphene surface through the substituent being reacted. See Formulae 1 and 7 below.
Both the “treated with…” and the “…being reacted” limitations are product-by-process limitation. Regarding these product-by-process limitations, the applicant is advised that, even 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.” In re Thorpe, 227 USPQ 964, (Fed. Cir. 1985). In this case, the cited limitations failed to distinguish the claimed structure from Formulae 1 and 7 of Nakasuga. See MPEP § 2113. This is because the chemical appears to be identical to the claimed chemical apart from their respective methods of manufacture, and there is no evidence that the claimed chemical would exhibit materially different characteristics than the chemical of Nakasuga due to the claimed method of manufacture.
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It would have been obvious to one of ordinary skill in the art before the effective time of filing to substitute the generic graphene film of Van Putte with the functionalized graphene of Nakasuga noted above, since substituting one graphene film with another would yield predictable results to one of ordinary skill in the art. Further, one would have been motivated to make such a substitution since the functionalized nature of the Nakasuga graphene could provide an opportunity to manipulate analyte attachment in a desirable fashion. Van Putte 10:48-58.
Regarding Claim 2:
The above modified invention teaches the graphene grid according to claim 1, having a graphene surface into which at least one substituent selected from the group consisting of a hydroxy group, a carboxy group, and an aldehyde group is introduced, and the functional group is introduced by a reaction of the substituent. As described in Nakasuga paras 75-76.
Regarding Claim 3:
The above modified invention teaches the graphene grid according to claim 1, wherein
the functional group is at least one group selected from the group consisting of a hydroxy group, a carboxy group, an aldehyde group, a carbonyl group, an ether bond, an ester bond, an amino group, an imino group, a sulfonyl group, a sulfonyloxy group, and a fluoroalkyl group. Nakasuga Paras 56, 66, 70.
Regarding Claim 16:
The above modified invention teaches the graphene grid according to claim 1, wherein the grid is configured so as to allow bonding of the structural analysis substance over an entire surface of the graphene surface. Van Putte describes patterning the graphene with an E-beam so as to allow for functionalization of and bonding to an entire surface of the graphene surface. 16:64-17:37.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Van Putte in view of Nakasuga and further in view of US 9,040,013 B2 [Sadana]
Regarding Claim 4:
The above modified invention teaches the teaches the graphene grid according to claim 1, but does not specify that
the functional group is an ether bond. Sadana teaches a graphene grid with an ether bond as a functional group. 4:40-43. It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the ether bond functional group taught by Sadana to the graphene of Nakasuga, since Sadana demonstrates that this is an effective functionalization and Nakasuga explains that the selected functional group is not particularly limited (Nakasuga para 38).
Regarding Claim 5:
The above modified invention teaches the teaches the graphene grid according to claim 1, but does not specify that the functional group is an epoxy group. Sadana teaches a graphene grid with an epoxy group as a functional group. 4:40-43. It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the epoxy group functional group taught by Sadana to the graphene of Nakasuga, since Sadana demonstrates that this is an effective functionalization and Nakasuga explains that the selected functional group is not particularly limited (Nakasuga para 38).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 16 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 16 is a new claim and recites, “the grid is configured so as to allow bonding of the structural analysis substance over an entire surface of the graphene surface.” Applicant looks to Figs. 7, 11, 24, and 25 to support this limitation, since they show that “structural analysis target substance is widely distributed on the graphene surface evenly.” “Widely” and “evenly” distributed is not explicitly, inherently, or implicitly a disclosure that the entire surface of the graphene is configured for bonding. Rather, it is a disclosure that a “wide” and “even” distribution of the graphene is configured for bonding. As such, the limitation is new matter and the claim is rejected for failing the written description requirement.
Response to Arguments
Applicant argues that the prior art of record fails to teach that the substituent is introduced by oxidation. This is not persuasive. Nakasuga teaches introducing a carboxyl substituent by oxidizing C=C bonds on the edge of the graphene surface.
Applicant argues that the graphene surface of the prior art can only support substituents and functional groups at its periphery, and thus fails to teach the limitation of claim 16. This is not persuasive. Van Putte teaches patterning the graphene surface to create peripheries at any point across the surface, thus allowing substituents and functional groups across the entire surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
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