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 .
Priority
Applicant claims priority to EP 15158894.4 and EP 15171077.9. Current claim 20 recites the etchable 2D materials to include hBn (hexagonal boron nitride), silicene, transition metal trichalcogenides, metal halides or transition oxides. There is no support in the EP documents for these materials. The PCT/IB2016/051425 filed on 3/12/2016 has support for these materials and therefore the effective filing date of claim 20 is 3/12/2016.
Claim Objections
Claim 20 is objected to because of the following informalities: Claim 20 recites the etchable 2D materials to include hBn silicene. Seemingly there is a “,” missing between hBn (hexagonal boron nitride) and silicene.
Appropriate correction is required.
If this is meant to be hBn silicene as a singular composition, please let the examiner know.
Additional correction would also be required within the specification (paragraphs [0053] and [0055]) as this is where those compositions are recited.
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 8 and 17 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 term “essentially constant voltage” in claim 8 is a relative term which renders the claim indefinite. The term “essentially constant” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination it will be assumed the manner is by application of a DC voltage.
As to claim 17, it is unclear what the range of 800 mV to 2V is describing. As per the claim there are two interpretations.
One is that the decreased value of the voltage is between 800 mV to 2V.
The second is the transmembrane voltage is between 800 mV to 2V which is then decreased by at least 50%.
As per the specification this second interpretation is supported, see [0041], and therefore for the purpose of examination it will be assumed that the transmembrane voltage is between 800 mV to 2 V such that it is decreased to some amount when turned off.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 20 recites that the etchable 2D material is a membrane of hexagonal boron nitride or silicene (or potentially hexagonal boron nitride silicene). Neither of these materials includes a transition metal such that the process of claim 19 can be accurately performed.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 19 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 9,656,293 of Kuan et al.
As to claim 19, Kuan teaches a method of forming a nanopore (Kuan, Abstract), the method comprising:
providing at least one thin layer of an electrochemically etchable 2D material having a thickness less than 5 nm suspended in an electrically conducting liquid (Kuan, col 3 lines 10-33 and 55-63 and Fig. 1);
applying a transmembrane voltage at a value higher than the oxidation potential of a transition metal of the at least one electrochemically etchable thin layer configured for an electrochemical atomic etching of the thin layer (Kuan, col 3 lines 19-25, col 7 line 52 thru col 8 line 15);
measuring an ionic current in the electrically conducting liquid and turning off the transmembrane voltage once the ionic current has reached a value corresponding to an electrical conductance of a pore within the at least one thin layer having the prescribed diameter (Kuan, col 8 line 16 thru col 10 line 6).
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As seen in Fig. 1, there is a membrane (20) of an atomically thin material (the material can be MoS2, thus including a transition metal) such that voltages are applied to nucleate and tune a nanopore in the membrane. The conductance is measured to control and verify the desired pore diameter formed in the membrane.
Claim Rejections - 35 USC § 103
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.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kuan as applied to claim 19 above, and further in view of US 2016/0282326 of Waduge and US 2018/0038001 of Waduge et al. During examination they will be referred to by the last 3 digits of the publication number (Waduge ‘001 and Waduge ‘326).
As to claim 20, Kuan teaches to the method of claim 19.
Kuan does not teach the membrane material is a transition metal trichalcogenide, metal halide or transition metal oxide.
Waduge ‘326 teaches of two dimensional membrane materials such as transition metal dichalcogenides can have nanopores formed therein (Waduge ‘326, [006]).
Waduge ‘326 also teaches that membrane materials can include trichalcogenide materials or transition metal oxides as well as graphene or transition metal dichalcogenides (Waduge ‘326, [0014]).
Waduge ‘326 teaches that nanopores can be formed in the material using electron beams or ion beams (Waduge ‘326, [0072]).
Waduge ‘001 teaches of two dimensional membranes formed of differing transition metal chalcogenide materials (Waduge ‘001, [0011] – [0018]).
Waduge ‘001 teaches that there are many different way to form the nanopores including application of a voltage across the membrane, ion beams or electron beams (Waduge ‘001, [0060]).
As per Kuan, conventional methods of nanopore formation in membranes for sequencing applications include focused electron beams such that voltage application methods overcome the issues of repeatability and reliability of the conventional methods (Kuan, col 1 lines 25-50).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kuan as per Waduge ‘326 and Waduge ‘001 so as to be able to utilize the desired membrane composition in producing a predictable result in providing a membrane structure that can undergo nanopore formation for sequencing applications.
Claims 1-3, 5-7, 9-14, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 9,656,293 of Kuan et al in view of Liu et al “Growth of Large-Area and Highly Crystalline MoS2 Thin Layers on Insulating Substrates” Nano Letters, 2012, 12, p. 1538-1544.
As to claims 1-3, Kuan teaches a method of forming a nanopore (Kuan, Abstract), the method comprising:
providing at least one thin layer of a transition metal dichalcogenide having a thickness less than 5 nm suspended in an electrically conducting liquid (Kuan, col 3 lines 10-33 and 55-63 and Fig. 1);
applying a transmembrane voltage at a value higher than the oxidation potential of a transition metal of the at least one transition metal dichalcogenide configured for an electrochemical atomic etching of the thin layer (Kuan, col 3 lines 19-25, col 7 line 52 thru col 8 line 15);
measuring an ionic current in the electrically conducting liquid and turning off the transmembrane voltage once the ionic current has reached a value corresponding to an electrical conductance of a pore within the at least one thin layer having the prescribed diameter (Kuan, col 8 line 16 thru col 10 line 6).
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As seen in Fig. 1, there is a membrane (20) of an atomically thin material (the material can be MoS2, thus including a transition metal) such that voltages are applied to nucleate and tune a nanopore in the membrane. The conductance is measured to control and verify the desired pore diameter formed in the membrane.
Liu teaches of a method to fabricate molybdenum disulfide crystalline materials (Liu, Abstract).
Liu additionally teaches the method and product are useful for atomically thin layered materials that are uniform and have good quality (Liu, Abstract, p. 1540 and Conclusion).
Thus it would be obvious to one of ordinary skill in the art to modify Kuan as per Liu so as to produce a predictable result in a uniform compositional structure of high quality on the desired substrate.
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Kuan as per Liu so as to utilize the desired process in forming a transition metal dichalcogenide crystalline structure of uniform composition and having high quality.
As to claim 5, Kuan in view of Liu teach to the method of claim 1.
Kuan additionally teaches the membrane can include a single layer of material or a double layer of material (Kuan, col 3 lines 19-27).
As to claim 6, Kuan in view of Liu teach to the method of claim 1.
Kuan teaches that the layers are preferably less than 5 nm (thus being “thin” layers and can include MoS-2 as a composition that includes a single layer of material or more than one layer of material (Kuan, col 3 lines 15-33).
As to claim 7, Kuan in view of Liu teach to the method of claim 6.
Kuan additionally teaches that the applied transmembrane voltage to nucleate or tune a nanopore includes voltages that include 1 V (1,000 mV) (Kuan, col 8 lines 3-15, col 9 lines 4-26 and Fig. 5).
As to claim 9, Kuan in view of Liu teaches to the method of claim 1.
Kuan teaches that the ionic current is measured in an ionic current circuit comprising a pair of electrodes located in the conductive liquid on both sides of the membrane (Kuan, col 8 lines 16-44 and Fig. 1).
As to claims 10 and 13, Kuan in view of Liu teaches to the method of claim 1.
Kuan teaches the conductive liquid is an aqueous conductive liquid comprising an electrolyte comprising potassium chloride or sodium chloride (Kuan, col 3 lines 10-15, col 6 lines 1-6 and Fig. 1).
As to claim 11, Kaun in view of Liu teaches to the method of claim 1.
Kuan teaches the membrane is already integrated into a biosensing device (Kuan, col 3 line 63 thru col 4 line 3, col 4 lines 20-23 and Example II).
As to claim 12, Kuan in view of Liu teaches to the method of claim 1.
Kuan additionally teaches the nanopore has a size between 1 and 3 nm (Kuan, col 12 lines 9-25, col 12 lines 48-59 and Fig. 6).
As to claims 14 and 16, Kuan in view of Liu teaches to the method of claim 1.
Kaun teaches that after the total nanopore formation process is performed, turning off the voltage to stop the process (Kuan, col 8 lines 16-60 and Figs. 5 and 6).
As to claim 17, Kuan in view of Liu teach to the method of claim 16.
Kuan additionally teaches that the applied transmembrane voltage to nucleate or tune a nanopore includes voltages that include 1 V (1,000 mV) (Kuan, col 8 lines 3-15, col 9 lines 4-26 and Fig. 5).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kuan in view of Liu as applied to claim 1 above, and further in view of US 2016/0282326 of Waduge et al.
As to claim 4, Kuan in view of Liu teaches to the method of claim 1.
Kuan in view of Liu does not teach the transition metal dichalcogenide is NbS2 or NbSe2.
Waduge ‘326 teaches of thin film membranes for sequencing devices (Waduge ‘326, Abstract).
Waduge ‘326 additionally teaches that membrane materials can include graphene, boron nitride, MoS2 as well as NbS2 or NbSe2 as equivalent composition for thin film membrane construction (Waduge ‘326, [0014]).
As Kuan teaches MoS2, graphene and boron nitride as materials that the membrane can be composed of (Kuan, col 3 lines 19-22), it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kuan as per Waduge ‘326 so as to utilize the desired composition in producing a predictable result in membrane formation within the sequencing device.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kuan in view of Liu as applied to claim 1 above, and further in view of US 2015/0108008 of Kwok et al.
As to claim 8, Kuan in view of Liu teach to the method of claim 1.
Kuan in view of Liu do not teach the use of a DC voltage application for the transmembrane voltage.
Kwok teaches of nanopore formation and control in thin film membranes (Kwok, Abstract).
Kwok teaches that atomically thin membranes can have hole formation by utilization of DC voltage such that the current is monitored and application is ceased once the pore diameter is formed within the membrane (Kwok, [0028] – [0030], [0033]).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Kuan in view of Liu as per Kwok so as to utilize a DC voltage application to provide an alternatively mechanism for the nanopore formation within the membrane.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kuan in view of Liu as applied to claim 1 above, and further in view of US 9,777,390 of Godin et al.
As to claim 15, Kuan in view of Liu teach to the method of claim 1.
Kuan teaches measuring a current the current and when the desired pore diameter is formed, stopping the process when the desired pore size is made (Kuan, Example I).
Kuan does not teach a feedback control or switch.
Godin teaches of nanopore formation and control (Godin, Abstract).
Godin additionally teaches that once the desired diameter of the pore is formed, the system will automatically turn off the process (thus switch off the voltage in relation to a feedback loop and switch in a controller) (Godin, col 4 line 61 thru col 5 line 14, col 7 lines 9-16 and col 7 line 39 thru col 8 line 6).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Kuan in view of Liu as per Godin so as to stop the process when the desired pore diameter is formed.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kuan in view of Liu as applied to claim 1 above, and further in view of US 2017/0138899 of Itabashi et al.
As to claim 18, Kuan in view of Liu teaches to the method of claim 1.
Kaun in view of Liu do not teach parallel nanopore formation within a plurality of transition metal dichalcogenides.
Itabashi teaches of nanopore formation within thin film compositions (Itabashi, [0016]).
Itabashi additionally teaches that multiple membranes can have nanopore formation formed in parallel for simultaneous hole formation (Itabashi, [0094] and Fig. 21).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Kuan in view of Liu as per Itabashi so as to utilize parallel nanopore formation in order to simultaneously form the desired pores within the membranes.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 of U.S. Patent No. 10,947,637 or claim 3 of US 11,401,625. Although the claims at issue are not identical, they are not patentably distinct from each other because each require a voltage application to be applied and a current to be measured such that the voltage is reduced (or turned off which can also mean being reduced, see current claim 16) when the desired nanopore diameter is formed.
Conclusion
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BRIAN W. COHEN
Primary Examiner
Art Unit 1759
/BRIAN W COHEN/Primary Examiner, Art Unit 1759