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 the Claims
Claims 1-9, 11-12, and 20-21 are pending in the application.
Claims 20-21 are withdrawn.
Claims 1-9 and 11-12 are the subject of this office action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8 June 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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.
Claim(s) 1-9, 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poponin (US 2006/0034729 A1; previously cited) in view of Fukuura et al (US 2017/0097447 A1).
Regarding claim 1, Poponin teaches a composite particle comprising:
A core particle (Fig. 14A; Par. 111: spherical bead 210);
A metal-based particle assembly layer arranged on at least a portion of a surface of the core particle, wherein the metal-based particle assembly layer comprises a plurality of metal-based particles arranged apart from each other; wherein the metal-based particle assembly layer comprises a plurality of particle formed of a material selected from the group consisting of a metal, an alloy, and a metal compound (Fig. 14A; Par. 111: the bead is covered by NPs 100; Par. 80: the particles forming the particle layer are substantially uniform in size and shape, and may be made of one material such as silver or gold).
Poponin is generic regarding the aspect ratio of the particles, however it does teach that the particles may comprise a variety of different shapes and sizes which would inherently have different aspect ratios (Par. 45, 80: the particles may have high symmetry or reduced symmetry shape, and more generally, may be spheroid, rod like, cylindrical, nanowire, tubes, toroid, or other shapes that, when uniform, can be arranged with regular periodicity) wherein some of the recited shapes are understood to imply an aspect ratio of greater than one.
Regarding claim 1, Fukuura teaches a metal-based particle assembly layer arranged on a surface, wherein the metal-based particle assembly layer comprises a plurality of particle formed of a material selected from the group consisting of a metal, an alloy, and a metal compound, the plurality of particles being arranged apart from each other, and wherein the plurality of particles have an aspect ratio of 1.5 or more and 7 or less (Abstract; Par. 18-20; Par. 50, 52, 57, 65: to effectively obtain the features of items (1)-(3) it falls within a range preferably of 2-8, more preferably 2.5-8. Wherein features (1)-(3) are: (1) the metal based particle assembly and metal based particle assembly film layered substrate of the presence invention can present significantly intense plasmon resonance, (2) plasmon resonance has an effect over a significantly extended range, (3) a plasmon peak’s maximum wavelength presence a unique shift depending on the metal based particles average particle diameter and average interparticle distance).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Popnin such that the metal based particle assembly layer comprises a plurality of particles having an aspect ratio of 1.5 or more or 7 or less, because Fukuura teaches that aspect ratios between 2 and 8 are advantages in increasing the intensity and range of plasmon resonance and in influencing peak maximum wavelength. One of ordinary skill in the art would have a reasonable expectation of success in making this modification because both Poponin and Fukuura disclose plasmon resonance applications comprising metal-based particle assembly layer arranged on a surface, wherein the metal-based particle assembly layer comprises a plurality of particle formed of a material selected from the group consisting of a metal, an alloy, and a metal compound, the plurality of particles being arranged apart from each other.
Regarding claim 2, Poponin further teaches the composite particle wherein the plurality of metal-based particles have an average particle diameter between 5nm and 1600nm (Par. 80: the particles forming the pearticle layer are substantially uniform in size and shape, in a size range between 50-200nm; Par. 111).
Regarding claim 3, Poponin further teaches the composite particle wherein the plurality of metal-based particles are each arranged so that an average distance between metal-based particles adjacent to each other is between 1nm and 150nm (Par. 80: the periodicity of the particle layers, i.e. the specing between adjacent particles in any direction may vary from a close packed arrangement in which the particles are separated from one another by a spacing of between particle size plus 0-20nm or less than the wavelength of the laser excitation beam; claim 9; Par. 45; Par. 47: spacing of 0-20nm).
Regarding claim 4, Poponin further teaches the composite particle wherein a standard deviation of the average distance is 50nm or less (Par. 45, 47, 80; Par. 91: NP sizes in a range of 50-200nm and a regular periodicity (particle-to-particle spacing), preferably in both directions in the particle layer, and preferably a close packed arrangement having a periodicity of the NP size plus up to 20nm. Any deviation from perfect periodicity and from uniformity in NP size will reduce the enhancement effect since it results in disruption of synchronization and broadening of plasmon resonance shape).
Though Poponin does not explicitly teach that the standard deviation of the average distance is 50nm or less, the teachings of Poponin are understood to read on this limitation of the claim. That is, an exemplary particle layer in Poponin may have a particle spacing of 50nm or less, and Poponin emphasizes that perfect periodicity in the NP layer (i.e. uniformity of particle spacing) is critical to the function of the disclosed composite particle, while a standard deviation that is equal to or greater than the average distance itself would indicate very high variability in the particle-to-particle spacing. As such, the teachings of Poponin are understood to indicate that the disclosed composite particle may have a NP layer with an average particle-to-particle distance with a standard deviation of 50nm or less, absent evidence to the contrary.
Regarding claim 5, Poponin further teaches the composite particle wherein the surface of the core particle comprises a curved surface (Fig. 14A; Par. 111: spherical beads 210).
Regarding claim 6, Poponin further teaches the composite particle wherein the metal-based particle assembly layer is arranged at least on the curved surface (Fig. 14A; Par. 111: the bead is covered by NPs 100).
Regarding claim 7, Poponin further teaches the composite particle wherein the core particle has a diameter between 0.3um and 10um (Par. 111: spherical beads 210 having diameter in the range of 3-10 microns).
Regarding claim 8, Poponin further teaches the composite particle wherein the metal-based particle layer is arranged on an entire surface of the core particle (Par. 111: the bead is covered by NPs 100).
Regarding claim 9 and 11, Poponin further teaches the composite particle further comprising a protective layer that covers at least surface of the plurality of metal-based particles, wherein the protective layer comprises an insulating material, and wherein the protective layer has a thickness between 3nm and 200nm (Fig. 14A; Par. 111: the spherical bead 210 and NPs 100 are covered by a dielectric coating 30, having a thickness in a range of 2-40nm).
Regarding claim 12, Poponin further teaches the composite particle wherein the protective layer covers entire surface of the core particle and the metal-based particles (Fig. 14A; Par. 111: the spherical bead 210 and NPs 100 are covered by a dielectric coating 30).
Claim(s) 1-9, 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poponin (US 2006/0034729 A1; previously cited) in view of Fukuura et al (US 2017/0097447 A1) and Fleger et al (Controlling the optical spectra of gold nano-islands by changing the aspect ratio and the inter-island distance: theory and experiment. Eur. Phys. J. B 81, 85–93 (2011).)
Regarding claim 1, Poponin teaches a composite particle comprising:
A core particle (Fig. 14A; Par. 111: spherical bead 210);
A metal-based particle assembly layer arranged on at least a portion of a surface of the core particle, wherein the metal-based particle assembly layer comprises a plurality of metal-based particles arranged apart from each other; wherein the metal-based particle assembly layer comprises a plurality of particle formed of a material selected from the group consisting of a metal, an alloy, and a metal compound (Fig. 14A; Par. 111: the bead is covered by NPs 100; Par. 80: the particles forming the particle layer are substantially uniform in size and shape, and may be made of one material such as silver or gold).
Poponin is generic regarding the aspect ratio of the particles, however it does teach that the particles may comprise a variety of different shapes and sizes which would inherently have different aspect ratios (Par. 45, 80: the particles may have high symmetry or reduced symmetry shape, and more generally, may be spheroid, rod like, cylindrical, nanowire, tubes, toroid, or other shapes that, when uniform, can be arranged with regular periodicity) wherein some of the recited shapes are understood to imply an aspect ratio of greater than one.
The prior art differs from the claimed invention only with respect to the particular aspect ratio of the plurality of particles. The Court has stated that, generally, such differences amount to mere optimization and will not support patentability unless there is evidence indicating the claimed feature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421.
MPEP 2144 sets forth Applicant' s burden for rebuttal of a prima facie case of obviousness based upon routine optimization. Applicant must provide either a showing that the particular amount or range recited within the claims is critical; and/or a showing that the prior art reference teaches away from the claimed amount. In the instant case, the specification as filed provides no evidence that the particular amount or range recited within the claims is critical because the specification indicates that different and/or broader ranges of aspect ratios can be used for the plurality of particles (See Specification Pg. 32, Par. 1).
Further, such optimization would have been obvious to one of ordinary skill in the art, because it was known in the art before the effective filing date of the claimed invention, that adjustment of the aspect ratio of the plurality of particles is a key result effective variable for controlling plasmon resonance frequency and the maximum wavelength of the plasmon peak, as evidenced by Fukuura, Par. 50, 52, 57, 65; and Fleger, Abstract and Pg. 86, Col. 1, Par. 2. One of ordinary skill in the art would have a reasonable expectation of success in optimizing the aspect ratio within the claimed range because Fukuura and Fleger also specifically teach that aspect ratios within the claimed range of 1.5-7 are known and used in the art for similar applications(see Fukuura Par. 65 and Fleger Fig. 2).
Regarding claim 2, Poponin further teaches the composite particle wherein the plurality of metal-based particles have an average particle diameter between 5nm and 1600nm (Par. 80: the particles forming the pearticle layer are substantially uniform in size and shape, in a size range between 50-200nm; Par. 111).
Regarding claim 3, Poponin further teaches the composite particle wherein the plurality of metal-based particles are each arranged so that an average distance between metal-based particles adjacent to each other is between 1nm and 150nm (Par. 80: the periodicity of the particle layers, i.e. the specing between adjacent particles in any direction may vary from a close packed arrangement in which the particles are separated from one another by a spacing of between particle size plus 0-20nm or less than the wavelength of the laser excitation beam; claim 9; Par. 45; Par. 47: spacing of 0-20nm).
Regarding claim 4, Poponin further teaches the composite particle wherein a standard deviation of the average distance is 50nm or less (Par. 45, 47, 80; Par. 91: NP sizes in a range of 50-200nm and a regular periodicity (particle-to-particle spacing), preferably in both directions in the particle layer, and preferably a close packed arrangement having a periodicity of the NP size plus up to 20nm. Any deviation from perfect periodicity and from uniformity in NP size will reduce the enhancement effect since it results in disruption of synchronization and broadening of plasmon resonance shape).
Though Poponin does not explicitly teach that the standard deviation of the average distance is 50nm or less, the teachings of Poponin are understood to read on this limitation of the claim. That is, an exemplary particle layer in Poponin may have a particle spacing of 50nm or less, and Poponin emphasizes that perfect periodicity in the NP layer (i.e. uniformity of particle spacing) is critical to the function of the disclosed composite particle, while a standard deviation that is equal to or greater than the average distance itself would indicate very high variability in the particle-to-particle spacing. As such, the teachings of Poponin are understood to indicate that the disclosed composite particle may have a NP layer with an average particle-to-particle distance with a standard deviation of 50nm or less, absent evidence to the contrary.
Regarding claim 5, Poponin further teaches the composite particle wherein the surface of the core particle comprises a curved surface (Fig. 14A; Par. 111: spherical beads 210).
Regarding claim 6, Poponin further teaches the composite particle wherein the metal-based particle assembly layer is arranged at least on the curved surface (Fig. 14A; Par. 111: the bead is covered by NPs 100).
Regarding claim 7, Poponin further teaches the composite particle wherein the core particle has a diameter between 0.3um and 10um (Par. 111: spherical beads 210 having diameter in the range of 3-10 microns).
Regarding claim 8, Poponin further teaches the composite particle wherein the metal-based particle layer is arranged on an entire surface of the core particle (Par. 111: the bead is covered by NPs 100).
Regarding claim 9 and 11, Poponin further teaches the composite particle further comprising a protective layer that covers at least surface of the plurality of metal-based particles, wherein the protective layer comprises an insulating material, and wherein the protective layer has a thickness between 3nm and 200nm (Fig. 14A; Par. 111: the spherical bead 210 and NPs 100 are covered by a dielectric coating 30, having a thickness in a range of 2-40nm).
Regarding claim 12, Poponin further teaches the composite particle wherein the protective layer covers entire surface of the core particle and the metal-based particles (Fig. 14A; Par. 111: the spherical bead 210 and NPs 100 are covered by a dielectric coating 30).
Response to Arguments
Applicant’s arguments filed 1 September 2026 have been fully considered.
Applicant’s arguments regarding the previous 112(b) and 112(d) rejections are persuasive in view of the amendments to the claims, and the previous 112(b) and 112(d) rejections are withdrawn.
Applicant’s arguments regarding the previous 102 rejections are persuasive in view of the amendments to the claims and the 102 rejections are withdrawn. New grounds of 103 rejections are presented above, as necessitated by amendment.
Conclusion
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 ELLIS LUSI whose telephone number is (571)270-0694. The examiner can normally be reached M-Th 8am-6pm ET.
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/ELLIS FOLLETT LUSI/Examiner, Art Unit 1677
/CHRISTOPHER L CHIN/Primary Examiner, Art Unit 1677
