DETAILED ACTION
This Office action details a final action on the merits for the above referenced application No. Claims 1-8 are pending in this application.
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 .
Status of Claims
Claims 1-8 are original.
Response to Amendment
The amendments filed on 30 Jun. 2026 have been entered.
Response to Arguments
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) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suh et al. (US 9,482,618 B2; issued 1 Nov. 2016), in view of Zhou et al. (Anal. Bioanal. Chem.; published 5 Jul. 2019) for the reasons cited in the Office action filed on 31 Mar. 2026.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suh et al. (US 9,482,618 B2; issued 1 Nov. 2016), in view of Zhou et al. (Anal. Bioanal. Chem.; published 5 Jul. 2019), in further view of Kuo et al. (J. Phys. Chem.; published 2018) for the reasons cited in the Office action filed on 31 Mar. 2026.
Applicants Arguments
Applicants assert that Zhou does not teach a configuration in which the interior of the nanogap is filled with β-CD and a Raman active material. Rather, Zhou discloses β-CD as a functional group attached to the outer surface of Ag@Fe3O4@Ag nanoparticles. β-CD is located on the outer surface of the nanoparticles and functions to capture BBP. Nowhere in Zhou provide suggests relocating β-CD from the particle surface into a nanogap. The substance captured by β-CD in Zhou is primarily BBP and Zhou discloses that β-CD and BBP are in a host guest relationship. Zhou merely uses MG as a SERS probe molecule to evaluate the sensitivity of reproducibility of SERS-active substrate. The function of the β-CD in Zhou is fundamentally different from the function of the material located in the nanogap of Suh. In Suh the polymer located in the nanogap of Suh serves as a spacer for nanogap formation. Zhou does not remedy the deficiencies of Suh with respect to the claimed method for synthesizing nanoparticles recited in claim 6. Zhou does not teach or suggest the claimed sequence of steps. Zhou first prepares an Ag@Fe3O4@Ag particle, then modifies the outer surface of the particle with β-CD, and finally exposes the resulting structure to a BBP-containing sample. Kou does not remedy the deficiencies of Suh and Zhou.
Applicant's arguments filed 30 Jun. 2026 have been fully considered but they are not persuasive. Suh provides for a nanoparticle comprising all of a Au core and Au shell structure covering the core structure and separated from the core structure by a nanogap and wherein a Raman active molecule is provided on the surface of the core structure and fills the nanogap. Regarding the spacer molecule that helps form the nanogap, Suh exemplifies a thiol or sulfhydryl modified oligonucleotide spacer molecule and also contemplates range of polymer material as a spacer molecule. Regarding the Raman active material, at col. 7, Suh teaches organic Raman active material including malachite green isothiocyanate. Regarding the location of the Raman active material, in one embodiment, Suh teaches and suggests the Raman active material attached to the oligonucleotide whereby ensuring the at the Raman active molecule is located intra gap allowing a Raman signal with the highest uniformity and reproducibility. However, this embodiment would have been expected to require chemical modification of the spacer molecule and/or Raman active molecule whereby increasing complexity and limiting the scope of the Raman active molecules. Zhou provides for HS-β-CD functionalized Ag@Fe3O4@Ag nanoparticles and Zhou teaches surface-enhanced Raman spectroscopy. In this case, Zhou teaches the advantageous covalent attachment of HS-β-CD as linker or spacer molecule to the surface Ag@Fe3O4@Ag nanoparticles for purpose of capturing hydrophobic molecules. According to Zhou, β-CD can encapsulate a compound comparable in size with its cavity. β-CD has proven useful in Raman detection because CD is a weak Raman scatterer. At pg. 5696 and Fig. 2, Zhou describes the sensitivity and repeatable of SERS detection using MG, which is comparable in size to BBP, as a SERS probe to evaluate the sensitivity and effectiveness of the SERS substrate. A detection limit of 5x10-8 was achieved, demonstrating the substrate possesses high sensitivity. Zhou demonstrated the ability of Ag@Fe3O4@Ag/β-CD nanoparticles to capture by obtaining SERS spectra of BBP using Ag@Fe3O4@Ag and Ag@Fe3O4@Ag/β-CD. The β-CD modified substrate improves the detection limit of BBP by two orders of magnitude to 10-8. A recognized advantage is strongest reason to combine. It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the nanoparticles of Suh so that the spacer molecule that helps form the nanogap is HS-β-CD/Raman active material with a reasonable expectation of success because that spacer molecule would have advantageously enable the capture of a wide range of hydrophobic chemical unmodified hydrophobic SERS probes including MG whereby advantageously positioning the SERS probe in the bandgap at a uniform distance providing Raman signal with the highest uniformity and reproducibility and advantageously without chemical modification of either the spacer molecule or the Raman probe.
Regarding the method of synthesizing a nanoparticle in claim 6, Suh provides and suggests a first step of attaching a spacer molecule onto the surface of a core structure to for a modified core structure, a second step of attaching a Raman active material, and a third step of synthesizing a shell structure on the surface of the modified core structure with the Raman active material and wherein the nanogap filled with Raman active material is provided between the core structure and the shell structure. In view of Zhou, it would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the method of Suh by attaching a macrocyclic host molecule onto the surface of a core structure to form an unmodified core structure and then insert the Raman active molecule into the macrocyclic host molecule before synthesizing the shell structure because that method would have been expected to enable facile attachment of a chemically unmodified Raman active material into the nanogap to provide a Raman signal with the highest uniformity and reproducibility.
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.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,482,618 B2, in view of Suh et al. (US 9,482,618 B2; issued 1 Nov. 2016), Zhou et al. (Anal. Bioanal. Chem.; published 5 Jul. 2019) and Kuo et al. (J. Phys. Chem.; published 2018) for the reasons cited in the Office action filed on 31 Mar. 2026.
Applicants Arguments
Applicants assert that claims 1-8 are patently distinct and not rendered obvious by the combination of Suh, Zhou, and Kuo for at least the reasons discussed above.
Applicant's arguments filed 30 Jun. 2026 have been fully considered but they are not persuasive. The ‘618 patent claims the nanoparticles described above in Suh. The combination of Suh, Zhou, and Kuo were not found deficient for the reasons discussed above.
Conclusion
THIS ACTION IS MADE FINAL. 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 SEAN R DONOHUE whose telephone number is (571)270-7441. The examiner can normally be reached on Monday - Friday, 8:00 - 5:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached on (571)272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618
/SEAN R. DONOHUE/
Examiner, Art Unit 1618
Prosecution Insights