RESPONSE TO AMENDMENT
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 .
WITHDRAWN REJECTIONS
The 35 U.S.C. §112 rejection of the claims made of record in the office action mailed on 09/17/2025 have been withdrawn due to Applicant’s amendment in the response filed 01/16/2026.
REJECTIONS
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 § 103
Claims 1-2 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tyler et al. (U.S. App. Pub. No. 2012/0281213) in view of Pazos Perez et al. (U.S. App. Pub. No. 2017/0326638).
Regarding claim 1, Tyler et al. discloses a sorting process for aggregated metallic nanoparticles containing an SERS reporter molecule which are coated with a silica shell. (Abstract and par. [0009]). Tyler et al. further discloses that the metallic nanoparticles include a SERS reporter molecule on the surface thereof. (par. [0012]). Tyler et al. further discloses the content of dimers, trimers, tetramers pentamer or hexamer mixtures within the metallic nanoparticles as being 84% or 100%. (see Fig. 2(d)(ii) and (iii), par. [0069]).
Tyler et al. therefore discloses every limitation in the claim except for a polymeric stabilizer.
Pazos Perez et al. teaches a method of making SERS encoded nanoparticles containing a Raman code (i.e. SERS reporter molecule) on the surface thereof and including mercaptoundecanoic acid (MUA) as a stabilizer for helping provide a silica coating onto the SERS encoded metallic nanoparticles. (Abstract, Fig. 1, par. [0007]-[0015] and par. [0055]). Polymeric stabilizers are known in the art for providing colloidal stability during hydrolysis/condensation of inorganic precursors to form a silica coating. (par. [0004]). MUA is disclosed to be a good stabilizing agent due to the ability to covalently bind to gold surfaces using the thiol group and providing particle stability with both steric and electrostatic properties of the aliphatic chain and carboxylic group. (par. [0055]).
It would have been obvious to one of ordinary skill in the art to provide a polymeric stabilizer in the form of MUA in the metal nanoparticles of Tyler et al., as taught by Pazos Perez et al.
One of ordinary skill in the art would have found it obvious to incorporate a polymeric stabilizer for the formation of the silica coated SERS encoded metallic nanoparticles of Tyler et al. for the purpose of providing colloidal stability to enable the formation of the silica coating.
Regarding claim 2, the metallic nanoparticles include a silica shell. (par. [0009]).
Regarding claims 8-9, the metallic nanoparticles may be composed of gold. (par. [0009]).
Regarding claim 10, the stabilizers mentioned in Pazos Perez et al. includes mercaptoundecanoic acid which has a thiol group. (par. [0055]).
Regarding claim 11, the Pazos Perez et al. teaches that suitable SERS reporter molecules includes 2-mercaptopyridine benzenethiol; mercaptobenzoic acid; 4-nitrobenzenethiol; 3,4-dicholorobenzenethiol, 3-fluorothiophenol; 4-fluorothiophenol; 3-5-bis(trifluoromethyl)benzenethiol; methylene blue; nile blue A; rhodamine 6G; Toluidine Blue O, 2-Phenylethanethiol, 4-Mercaptophenol, Biphenyl-4-thiol, 7-Mercapto-4-methylcoumarin, 4-Hydroxyphenyl)-1H-tetrazole-5-thiol, 2-Fluorothiophenol, Crystal Violet, 2-Naphthalenethiol, 4-(((3-Mercapto-5-(2-methoxyphenyl)-4H-1,2,4-triazol-4-yl)imino)methyl)phenol, (2-Trifluoromethyl)benzenethiol, 4-Aminothiophenol, 1-Naphthalenethiol, 1,1′,4,1″-Terphenyl-4-Thiol, Biphenyl-4,4′-dithiol, Thiosalicylic acid, 4-(((3-Mercapto-5-(2-pyridinyl)-4H-1,2,4-triazol-4-yl)imino)methyl)-1,2-benzenediol, 4-(((3-Mercapto-5-(2-pyridinyl)-4H-1,2,4-triazol-4-yl)imino)methyl)benzoic, 2,3,4,6-Tetrafluorobenzenethiol, and (5-(4-Methoxyphenyl)-1,3,4-oxidazole-2-thiol). (par. [0023]). Furthermore, the stabilizer used is preferably mercaptoundecanoic acid. (par. [0055]). One of ordinary skill in the art would have a high expectation of success in using any of the SERS reporter molecules and stabilizer in the metallic nanoparticle aggregates in Tyler et al. for forming SERS marked nanoparticles in view of the teachings of the secondary reference that these materials are known in the art to be used for their specific purposes.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tyler et al. (U.S. App. Pub. No. 2012/0281213) in view of Pazos Perez et al. (U.S. App. Pub. No. 2017/0326638), further in view of Eduardo et al. (WO 2021/009090).
Tyler in view of Pazos Perez et al. is relied upon as described in the rejection of claim 1, above.
Tyler in view of Pazos Perez et al. discloses that the metal nanoparticles aggregates and the coated aggregates have a spherical/round shape (par. [0050] and Fig. 1(a)) with a diameter in the range of 10 to 500 nm with a silica shell thickness in the range of 10 to 150 nm, resulting in both coated and uncoated particles substantially overlapping with the presently claimed ranges. (claim 4, par. [0011], [0018] and Fig. 1(a). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Tyler et al. does not disclose the Z potential of the metal nanoparticle agglomerates.
Eduardo et al. teaches a method of making SERS tags having a narrow size distribution and a high ratio of low-number aggregates. (Abstract). Eduardo et al. teaches that the Z potential of the nanoparticles having a stabilizing agent absorbed onto the surface thereof should be lower than or equal to -25 mV (page 3, lines 19-33).
It would have been obvious to one of ordinary skill in the art to optimize the Z potential of the metallic nanoparticle aggregates in Tyler et al.based on the teachings of Eduardo et al.
One of ordinary skill in the art would have found it obvious to optimize the Z potential of the nanoparticles in view of the teachings of the result effective nature of the Z potential in forming aggregates that are stable and monodisperse for use as SERS tags. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the Z potential of the metal nanoparticles in Tyler et al. (see 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tyler et al. (U.S. App. Pub. No. 2012/0281213) in view of Pazos Perez et al. (U.S. App. Pub. No. 2017/0326638), further in view of Biris et al. (U.S. App. Pub. No. 2021/0041431).
Tyler in view of Pazos Perez et al. is relied upon as described in the rejection of claim 1, above.
Tyler in view of Pazo Perez et al. discloses that the metal nanoparticles may be gold and the reporter may be MBA. (par. [0009] and [0023]). Tyler in view of Pazo Perez et al. does not disclose that the polymeric stabilizing agent is one of the carboxy-PEG-thiol compounds of claim 12.
Biris et al teaches a method of making a nanocomposite including gold nanorod coated with a silver layer including a SERS detection molecule bound to the surface thereof. (Abstract). The nanorods include a thiolated PEG carboxylic acid compound containing layer bound to the surface thereof (par. [0009]) which helps stabilize the nanocomposites by making them easier to disperse in the aqueous medium (par. [0174]) having a molecular weight of 1-10 kD (par. [0040]).
It would have been obvious to one of ordinary skill in the art to use a thiolated PEG carboxylic acid compound having a molecular weight of 1-10 kD as a stabilizing agent for the metallic nanoparticles in Tyler et al. in view of the teachings in Biris et al. that the compound is known in the art to stabilize the surface of metallic nanocomposites. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
One of ordinary skill in the art would therefore have a reasonable expectation of success in using such the compound to stabilize the metallic nanoparticle aggregates disclosed in Tyler et al in view of Pazo Perez et al. to further provide the silica shell surrounding the outer surface of the materials.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 01/16/2026 regarding the 35 U.S.C. §103 rejections made of record in the office action mailed on 09/17/2025 have been carefully considered but are deemed unpersuasive.
Applicant argues that Tyler et al. is concerned with aggregated SERS-encoded NPs with decreased monomer populations. It is the objective of Tyler et al. to sort the SERS-encoded NPs into fractions with increasing concentration of NP agglomerates for use in SERS-based sensors. (Applicant’s arguments page 6, citing Tyler et al., par. [0009]). Applicant further argues that the disclosure of Perez et al. relates to nanoparticles having an optimal MUA concentration (0.8 molecules for nm2) to prevent aggregation and maximize the SERS signal. (Applicant’s arguments page 6, citing Perez, par. [0055]-[0056]). Applicant therefore argues that one of ordinary skill in the art would not have combined the references due to the different objectives wherein Tyler et al. desires aggregated nanoparticles whereas Perez et al. wants monomer populations of metal particles.
A prior art reference must be considered as a whole and if a given modification has simultaneous advantages and disadvantages, this does not necessarily obvious motivation to combine. MPEP 2141 VI. Despite the difference is stated goals, Perez et al. teaches that aggregated nanoparticles into clusters of different sizes and geometry leads to very active SERS structures, but with an inhomogeneous response (par. [0004]) indicating that there may be applications wherein the tradeoff between activity and the homogeneity of the response would be worthwhile. Furthermore, the disclosure in Perez et al. indicates that the presence of MUA results in improved formation of the silica shell and that at specific concentrations, the aggregation may not be completely prevented (par. [0055]-[0056]). It would therefore have been obvious to one of ordinary skill in the art to use MUA for the improved effect of ease of silica shell formation without excessive concentration as to prevent agglomeration to encourage the formation of aggregates in Tyler et al. As such, the disclosure of Perez et al. does not teach away from the disclosure of Tyler et al. and would not render the prior art unsatisfactory for its intended purpose.
It is further worth noting that Tyler et al. relates explicitly to a method of separating aggregated populations from monomer populations of SERS-encoded NPs (Abstract), with the goal to achieve a population with as many particles with 2 or more clusters as possible. (par. [0007]). However, the initial population that is sorted includes monomers and they are merely removed from the sorting process. (see Fig. 1 and Example 1). Therefore, one of ordinary skill in the art would not have been taught against using the MUA, which makes silica shell formation on the nanoparticle clusters easier, given that any resulting monomers in the population would be sorted out using the process disclosed in the primary reference.
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.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 03/02/2026