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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15, in the reply filed on October 31st, 2025 is acknowledged. Claims 16-20 are withdrawn from consideration.
Claim Interpretation
The recitation of claim 4 to the “the light absorbing layer is configured to absorb more than 99% of incoming light in an ultraviolet to NIR wavelength range” is construed as black silicon coincident with Applicant’s disclosure as seen through pre-grant publication US 2024/0198346 pars.[0043,0053].
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 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.
The metes and bounds of the sought “photothermal nanostructure device for photothermal heating, the photothermal nanostructure device comprising…” of independent claim 1 and that of the “photothermal diagnostics system comprising…” as in independent claim 11 are indefinitely defined herein.
Both of independent claims 1 and 11 set forth “a photothermal nanostructure device,” however, the body of the claims are absent any nanostructure(s).
Claim 1 is drawn to a substrate/platform with two layers appended thereon, and claim 11 similarly provides such substrate/platform with two layers appended thereon along with a light source and controller functionally provided therewith.
None of these items are nanostructured.
Examiner notes that dependent claim 3, for example, provides that the light absorbing layer comprises a plurality of nanostructures…the nanostructures are non-uniform in size and shape and configured to reduce native reflection of a bulk material forming the substrate” in which it appears that Applicant intends to provide this or a likewise recitation within the independent claims in order to breathe life and clarity into the sought nanostructured aspect of the set forth claims.
With regard to claim 2, the recitation “the same material” lacks proper antecedent basis in the claims. Applicant may recite “a same material.”
With regard to claim 3, the metes and bounds of the sought material(s) of construction and the sought layering to the substrate and light absorbing layer are indefinitely defined.
Presently, the claim provides an unclear, inferential recitation to this aspect by way of “…etched out of a same silicon bulk forming the substrate.”
First, does Applicant intend to recite initially “wherein the substrate is formed from bulk silicon”?
Secondly, is it the intention that the light absorbing layer is also made of silicon bulk? And are the nanostructures are also made of the silicon bulk of the light absorbing layer as they are merely drawn to etched nanostructures therewithin?
Secondly, independent claim 1 sets forth a layered arrangement in which the light absorbing layer is on a first side of the substrate, however, the recitation herein to “etched out of a same silicon bulk forming the substrate” appears to read contradictory to the established layered arrangement.
By this, it appears Applicant should rearrange the recitation to “etched out of…” to make clear that there are still two distinct elements (light absorbing layer on a side of the substrate) in which both in which such distinct elements are made of the same material.
Lastly, the recitation at the end of the claim to “…configured to reduce native reflection of a bulk material forming the substrate” is indefinitely understood. This reads on a choosing of a different bulk material from that the bulk silicon already provided previously to the substrate, and to this end it appears that Applicant intends to recite “…reduce native reflection from the bulk silicon forming the substrate.”
For example, in total, Applicant may recite something on the order of “…device of claim 1, wherein the substrate is formed of a bulk silicon, the light absorbing layer is formed of a same bulk silicon as the substrate, wherein the light absorbing layer comprises a plurality of nanostructures etched out of the bulk silicon, and wherein the nanostructures are non-uniform in size and shape, and are configured to reduce native reflection of the bulk silicon forming the substrate.” ***Likewise amendments would apply to dependent claim 12 to that of independent claim 11.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 5, 6, 10, 11, and 13 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Kang et al. (“Ultrafast and real-time nanoplasmonic on-chip…”, ACS Nano 2021, Vol. 15, pp.10194-10202), hereafter Kang as evidenced through material properties thereof the disclosure in Kang provided in Yoon et al. (Wearable porous PDMS layer…” Scientific Reports, Nature Research, (2021)11:938), hereafter Yoon, evidenced through Technical Data Sheet material data sheet Glass0500 for Borosilicate Glass, hereafter Technical Data Sheet, and evidenced through Cruz-Felix (PDMS samples characterization with variations…Heliyon 6, pages 1-8, accepted Dec. 12, 2019), hereafter Cruz-Felix.
With regard to claim 1, Kang discloses a photothermal nanostructure for photothermal heating comprising a substrate (borosilicate glass) having a first thermal conductivity (about 1.2 W/mK, page 1 of Technical Data Sheet, and clearly providing at least the relative qualitative differentiation as discussed below), a light absorbing layer (HSQ-coated plasmonic nanopillar array, PNA, that is etched out of the glass substrate and provided with gold nano-islands) on a first side of the substrate, and a thermally-insulative layer on the light absorbing layer (high gas permeability [HPL] PDMS layer and as in cl. 6; see page 10196-10197 “Results and Discussion,” fig. 1a-b, for example) wherein the high gas permeable PDMS layer has a second thermal conductivity less than the first thermal conductivity (high gas permeable PDMS having a thermal conductivity of about 0.219 W/mK as evidenced through ‘Yoon’; see “Thermal conductivity” on page 8, and which also provides conventional nonporous PDMS as 0.166 W/mK, and clearly providing at least the relative qualitative differentiation as being less than the borosilicate glass). With regard to claim 5, the thermally-insulative layer of PDMS is configured to be optically transparent in an ultraviolet to NIR wavelength range (as evidenced through Cruz-Felix; see page 1, Introduction, page 2, section 2.5 transmission 200-1100nmm, and further wherein PDMS coincides with Applicant’s own disclosure in providing such as seen in par.[0045] of Applicant’s specification).
With regard to claim 10, Kang discloses a fluidic circuit integrated at a second side of the substrate opposite from the first side and being configured to contain a sample with a plurality of target molecules (see page 10195, fig. 1 and the vacuum-assisted microfluidics provided for on-chip PCR and quantitative molecular diagnostics).
With regard to claim 11, Kang discloses a photothermal diagnostics system as recited therein, including the photothermal nanostructure device as claimed as likewise discussed above with respect to claim 1, and further providing a light source configured to heat the light absorbing layer by shining a light toward a backside of the photothermal nanostructure device and a controller configured to control activation and deactivation of the light source (see page 10197 and the real-time nano-plasmonic on-chip PCR proved by alternating LabVIEW-controlled WLED illumination and fluorescence imaging, as well as through the modulation of the LED intensity as in page 10200, and Fig. S1 appended thereto, for example). With regard to claim 13, Kang discloses the substrate comprise a fluidic circuit at a topside of the substrate and the light source is configured to heat the sample via the absorbing layer as likewise discussed above with respect to cl. 10.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kang (and as evidenced through Yoon, Technical Data Sheet, and Cruz-Felix) in view of Joseph et al. (US 2006/0030037), hereafter Joseph.
Kang has been discussed above.
Kang does not specifically disclose a cooling device configured to cool a topside of the substrate opposite from the backside wherein the controller is further configured to control operations of the cooling device, and to perform thermocycling on a sample within a fluidic circuit as claimed.
Joseph discloses a thermo-controllable high-density chip for multiplex analyses, including thermal cycling for PCR (abstract; pars.[0011,0014,0018,0110,0111], for example). Joseph discloses a cooling device configured to cool a topside of the substrate opposite from the backside (TEC heater/cooler with programmable controller), wherein the controller is further configured to control operations of the cooling device, and to perform thermocycling on a sample within a fluidic circuit as claimed (pars.[0011,0014,0018,0067,0110,0111], fig, 1, 17a, for example).
It would have been obvious to one of ordinary skill in the art to modify Kang so as to provide a cooling device and controller configured therewith as claimed such as suggested by the analogous art of Kang to thermally-controlled chip for PCR that provides for particular and selective control to carry out such temperature-dependent chemical reactions as desired in a controlled and tunable fashion.
Allowable Subject Matter
Claims 2-4, 7-9, 12, and 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 2-4, 7-9, 12, and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record does not teach or fairly suggest, as best understood herein, a photothermal nanostructure comprising those features as particularly recited in claims 2-4 and 7-9. Further, the prior art of record does not teach or fairly suggest, as best understood herein, a photothermal diagnostics system, comprising those features as particularly recited in claims 12 and 14.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Son et al. (US 2019/0283023) discloses a microfluidic system incorporating light absorbing materials such as in metallic thin-film, graphite, graphene, carbon nanotube, or paint and wherein a light source is pulsed for the photothermal heating of the light absorbing material such as for carrying out PCR that is relevant to Applicant’s field of endeavor.
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/NEIL N TURK/ Primary Examiner, Art Unit 1798