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 10/15/2015 has been entered. Claim 4 has been canceled. Claims 1-3 and 5-9 are pending in the application. Claims 5-9 have been withdrawn from consideration as being directed to a non-elected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed 6/21/2025. 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 § 112
Claims 1-3 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 the limitations "the specific preparation process" in lines 13-14, “the surface of the substrate” on lines 15-16, and “the distance” in line 20. There is insufficient antecedent basis for these limitations in the claim.
Dependent claims 2-3 do not remedy the above and hence are indefinite for the same reasons.
Further, claim 3 remains indefinite for the reasons discussed in detail in the prior office action, see Paragraph 9, and incorporated herein by reference.
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 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. It is also noted that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “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 art product was made by a different process.” In re Thorpe, 227 USPQ 964,966 (Fed. Cir. 1985.)
Claim Rejections - 35 USC § 103
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Sahibbeyli (The Role of Molecular Structure of Phenylalanine Peptides on the Formation of Vertically Aligned Ordered Bionanostructures: Implications for Sensing Application) in view of Bodanszky (o-Nitrophenyl Esters of tert-Butyloxycarbonylamino Acids and Their Application in the Stepwise Synthesis of Peptide Chains by a New Technique) or Jham (Determination of coupling rate constants of N-t-Butyloxycarbonyl-amino acid-active esters) or Schwyzer (USPN 3,247,182) and as further evidenced by the National Center for Biotechnology Information (NCBI) webpage for BOC-PHE-ONP aka tert-butyloxycarbonyl-L-phenylalanine (hereinafter referred to as “NCBI BOC-PHE-ONP webpage”; Entire document, particularly Title and Summary, Sections 1, 3.4, 6, and 7), or the Sigma-Aldrich® Safety Data Sheet for BOC-PHE-ONP (obtained from the Sigma-Aldrich® webpage linked under Section 6 Chemical Vendor of the NCBI BOC-PHE-ONP webpage, hereinafter referred to as “Sigma-Aldrich® SDS for BOC-PHE-ONP”, Entire document, particularly Sections 1, 3, and 9).
Sahibbeyli teaches structured biomolecular thin films produced by vapor deposition of phenylalanine biomolecules of varying numbers of phenylalanine (PHE) units from a single PHE amino acid unit to a tetrapeptide having four PHE units, with various end and/or protecting groups including tert-butyloxycarbonyl (BOC) and fluorenylmethylooxycarbonyl (FMOC), onto a solid silicon substrate, wherein under a given set of deposition parameters including a short source-substrate distance of ~5-7 cm (as in the instant invention) to facilitate uniform and reproducible growth of the deposited material, the role of the molecular structure of the phenylalanine biomolecules was investigated, particularly with respect to π-π stacking and hydrogen bonding, wherein quantum chemical calculations based on the molecular structures and mechanisms of intermolecular interactions supported the resulting self-assembled 2-D and 3-D film morphologies (Entire document, particularly Abstract; Scheme 1; Section 3. Results and Discussion). Sahibbeyli teaches that “[i]n the light of experimental data obtained, it can be surmised that the strong π-π stacking between aromatic rings in molecular structures drives the formation of 2-D films in vapor deposition,” while “[i]n 3-D films, there were slightly weaker intermolecular interactions and edge-on molecular packing leads to the observed ordered morphologies” (p. 4310); and that the BOC and FMOC protecting groups interact with the peptide and are considered in the calculated stabilizations, wherein BOC groups create steric hindrance for stacking of the phenyl groups and formation of optimal H-bonding, while FMOC groups cause strong π-π stacking due to the π-electron density such that augmented stacking in the π-system wins nonoptimal H-bonding (p. 4311).
Sahibbeyli also teaches that in general, “vapor-phase deposition of biomolecules is a solvent free, environmentally friendly, and material-independent method that offers unique advantages compared with the previously demonstrated techniques for fabrication of 3-D vertically aligned biomolecular thin films”, including eliminating undesired impurities and degradation of the underlying layer, eliminating changes in the mechanical/chemical properties associated with the use of solvents, and allowing for large-area fabrication of ordered biomolecular films; and although Sahibbeyli further teaches that “[m]olecular and morphological engineering of biomolecules is undoubtedly instrumental in realization of promising functional materials for applications in sensing and tissue engineering,” wherein the molecular structure of biological molecules has an important role in the fabrication of ordered morphologies through vapor phase deposition, with the study focused on PHE biomolecules of different lengths and end groups that are vapor deposited under the same deposition conditions including a source-substrate distance of ~5-7 cm (reading upon the claimed distance of 1-5 cm), Sahibbeyli does not specifically teach a vapor deposited film utilizing BOC-L-PHE nitrophenyl ester (ONP) or BOC-D-PHE-ONP as the amino acid source or “raw material” as in instant claim 1.
However, given BOC-PHE-ONP is an obvious species of known BOC-protected PHE biomolecule in the art as taught by Bodanszky (Entire document, particularly Table I; p. 3568, fourth full paragraph) or Jham (Entire document, particularly Abstract, Table II), or Schwyzer (Entire document, particularly Example 5, Claim 13), and is commercially available (as evidenced by the NCBI BOC-PHE-ONP webpage, particularly Section 6 as well as Section 7 that refers to various literature in the art that cites BOC-PHE-ONP; or the Sigma-Aldrich® SDS for BOC-PHE-ONP which recites synthesis of substances as an identified end use), wherein the ONP end group is an active/functional aromatic-ring-containing end group, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any known BOC-protected PHE amino acid or biomolecule in the art such as BOC-PHE-ONP in the invention taught by Sahibbeyli, utilizing routine experimentation to determine the optimum deposition conditions to provide a nanostructured thin film having the desired properties, e.g., morphology, thickness, density, etc., for a particular end use of the vapor-deposited film taught by Sahibbeyli in view of Bodanszky or Jham or Schwyzer, 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 choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. Further, given that Sahibbeyli specifically teaches that the vapor deposited films are formed utilizing a short source-substrate distance of ~5-7 cm as in the instantly claimed invention, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instantly claimed invention to reasonably expect the resulting vapor deposited film utilizing BOC-PHE-ONP as the amino acid source to exhibit the same helical array structure as in the instantly claimed invention, including rotation direction and size as in instant claim 2. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-2 would have been obvious over the teachings of Sahibbeyli in view of Bodanszky or Jham or Schwyzer (and as evidenced by the NCBI BOC-PHE-ONP webpage or the Sigma-Aldrich® SDS for BOC-PHE-ONP).
With respect to instant claim 3, Sahibbeyli utilizes a silicon wafer as the substrate in the examples as discussed in the Experimental Section, reading upon the claimed “conductive or insulating, transparent or opaque, thermally conductive, organic or inorganic, flexible or rigid” substrate, and given the lack of clarity of instant claim 3 and/or that a metal, glass or polymer substrate is an obvious alternative substrate material in the art to the silicon substrate taught by Sahibbeyli, particularly based upon the recitation of siliconized glass in the Introduction section of Sahibbeyli, the claimed invention as recited in instant claim 3 would have been obvious over the teachings of Sahibbeyli in view of Bodanszky or Jham or Schwyzer (and as evidenced by the NCBI BOC-PHE-ONP webpage or the Sigma-Aldrich® SDS for BOC-PHE-ONP) given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Response to Arguments
Applicant’s arguments with respect to claims 1-3 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 10/15/2025.
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.
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