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 1-21 are pending in the application.
Claims 14-16 and 20-21 are withdrawn.
Claims 1-13 and 17-19 are the subject of this office action.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-13 and 17-19 in the reply filed on 14 April 2026 is acknowledged.
Claims 14-16 and 20-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 April 2026.
Priority
The instant application is a 371 National Stage of PCT/JP2022/028198, filed 20 July 2022. The instant application claims foreign application JP 2021-123210, filed 28 July 2021. The instant application claims foreign application JP 2021-209090, filed 23 December 2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11 September 2023, 5 October 2023, 21 August 2025, and 11 February 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Claim Rejections - 35 USC § 112(b)
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 1-13 and 17-19 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.
Claims 1-3, 6, 8-9, 12, and 17 are rejected as indefinite over the term “metal-based”. The metes and bounds of this term are unclear because it is not clear what exactly is required of a component for it to be considered “metal-based” (e.g. materials, properties, minimum percentage composition of a metal element, etc.). Clarification is required.
Claim 4 is vague regarding “the average distance” there is no prior introduction of an “average distance” in claim 4 or in claim 1 from which it depends, therefore there is insufficient antecedent basis for this limitation in the claim and it is unclear what particular distance is limited by the recitation. For the purposes of applying prior art in the present office action, claim 4 is interpreted to depend from claim 3, such that the “average distance” recited in claim 4 is interpreted to refer to the average distance between metal-based particles adjacent to each other. Clarification is required.
Claims 9-12 and 17-19 are rejected as indefinite due to the term “protective layer”. The metes and bounds of the term are unclear because it is not clear what properties are or are not required of a layer in order for it to be considered “protective”. It is not clear what is being protected or how. Clarification is required.
Dependent claims 2-13 and 18-19 are rejected as indefinite because they depend from an indefinite claim and fail to remedy its deficiencies.
Claim Rejections - 35 USC § 112(d)
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 13 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 13 depends from claim 1 and is directed to a composite particle, however claim 13 fails to further limit the composite particle of claim 1. Claim 13 recites only an intended use of the claimed composite particle. A recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the recitation of intended use in claim 13 does not further limit the physical structure of the claimed composite particle, it fails to further limit claim 1.
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)(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.
(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.
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.
Claims 1-13 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Poponin (US 2006/0034729 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 (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).
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 9-11, 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).
Regarding the limitation of claim 13 "the composite particle according to claim 1, which is for a sensor element", it is noted that this limitation is a recitation of intended use, as the limitation is directed to the context in which the claimed particle is used and does not further limit the claimed particle itself (i.e. by further limiting its structure or physical features). A recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. In the instant case, Poponin teaches all structural features of the claimed composite particle, and therefore is sufficient to meet the claim regardless of whether or not it teaches the same intended use.
As it applies to the instant case, Poponin does teach that composite particle is for a sensor element, and this teaching is addressed below for the sake of compact prosecution.
Regarding claim 13, Poponin teaches the composite particle according to claim 1, which is for a sensor element (Figs. 14A-B; Par. 111-112).
Regarding claim 17, Poponin teaches a composite particle comprising:
A core particle (Fig. 14A; Par. 111: spherical bead 210);
A metal based material layer arranged on at least a portion of a surface of the core particle (Fig. 14A; Par. 111: spherical bead 210 covered by silver layer 20 and by metal NP layer 100);
A protective layer that covers a surface of the metal-based material layer (Fig. 14A; Par. 111: Both the coated spherical bead and the metal NPs are covered by dielectric layer 30).
Regarding claim 18, Poponin further teaches the composite particle wherein the protective layer comprises an insulating material (Par. 111: dielectric layer 30).
Regarding claim 19, Poponin further teaches the composite particle wherein the protective layer has a thickness between 3nm and 200nm (Par. 111: dielectric layer 30 having thickness in a range of 2-40nm).
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bao-Thuy Nguyen can be reached at (571) 272-0824. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELLIS FOLLETT LUSI/Examiner, Art Unit 1677
/CHRISTOPHER L CHIN/Primary Examiner, Art Unit 1677
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