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 .
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 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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9 in the reply filed on 7/24/2026 is acknowledged. The traversal is on the grounds that the claimed methods of Groups II-V are used to obtain the claimed product of Group I, and that the limitations recited in the claims of Groups II-V directly correspond to structural and/or compositional features of the product of Group I. Further, the claims of Group I and the claims of Groups II-V can be searched and examined based on the same disclosure, the same field of technology, and substantially the same prior art, without imposing a serious burden on search and/or examination. This is not found persuasive because the inventions require different field of search (for example, searching different groups/subgroups or electronic resources, or employing different search queries). Further, the prior art applicable to one invention would not likely be applicable to another invention.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (TWI 731600, see machine translated version) in view of Li et al. (CN 104928746, see machine translated version).
Regarding claim 1, Yu et al. teach a metal nanoparticle free surface enhanced Raman scattering substrate (page 1, paragraph 1, page 2, paragraph 8) comprising an anodic aluminum oxide substrate (page 2, paragraph 8) and a metal nanofilm on the anodic aluminum oxide substrate (page 2, paragraph 8, page 3, paragraph 8).
Yu et al. fail to teach wherein the substrate comprises three dimensional cavities and the three dimensional cavities comprise nano-and-micro-scale pits with nanopores, or nanospikes around nanocavities; and the metal nano-film is on the three-dimensional cavities. However, Li et al. teach a substrate comprising an anodic aluminum oxide substrate (paragraph [0002]) with three-dimensional cavities (paragraph [0002]); the three-dimensional cavities comprise nano and micro scale pits with nanopores (paragraphs [0002], [0015]-[0017]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the metal nanofilm of Yu et al. on the three-dimensional cavities of Li et al. in order to provide wide applicability, low cost, simple process and good repeatability (Li et al., paragraph [0027]).
Regarding claim 2, Yu et al. fail to teach wherein the nano-and-micro-scale pits of the three-dimensional cavities have an average diameter of 0.1 to 5 µm. However, Li et al. teach a substrate comprising an anodic aluminum oxide substrate (paragraph [0002]) with three-dimensional cavities (paragraph [0002]); the three-dimensional cavities comprise nano and micro scale pits with nanopores (paragraphs [0002], [0015]-[0017]), wherein the nano and micro scale pits have a size of about 1.2 micrometers which reads on Applicant’s claimed range of 0.1 to 5 µm (paragraph [0041]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the metal nanofilm of Yu et al. on the three-dimensional cavities of Li et al. in order to provide wide applicability, low cost, simple process and good repeatability (Li et al., paragraph [0027]).
Regarding claim 3, Yu et al. do not disclose wherein the anodic aluminum oxide substrate has an average roughness of 0.1 to 2 µm. However, Yu et al. do teach wherein the substrate has a rough surface (page 7, paragraph 9). Where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in roughness involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the average roughness of the substrate of Yu et al. in order to provide a good sensing effect (Yu et al., page 7, paragraph 9).
Regarding claim 4, Yu et al. teach wherein the metal nanofilm has a thickness of 6-10 nm which reads on Applicant’s claimed range of 6 to 30 nm (page 3, paragraph 8).
Regarding claim 5, Yu et al. fail to teach wherein the nanopores have an average gap between the nanopores of 10 to 300 nm. However, Li et al. teach a substrate comprising an anodic aluminum oxide substrate (paragraph [0002]) with three-dimensional cavities (paragraph [0002]); the three-dimensional cavities comprise nano and micro scale pits with nanopores (paragraphs [0002], [0015]-[0017]).
Li et al. do not disclose wherein the nanopores have an average gap between the nanopores of 10 to 300 nm. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in size involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the gap between nanopores of Li et al. in order to provide wide applicability, low cost, simple process and good repeatability (Li et al, paragraph [0027]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the metal nanofilm of Yu et al. on the three-dimensional cavities of Li et al. in order to provide wide applicability, low cost, simple process and good repeatability (Li et al, paragraph [0027]).
Regarding claims 6-9, Yu et al. do not disclose wherein the metal nanoparticle free surface enhanced Raman scattering substrate has a low detection limit of 0.05 ppm for melamine; and the metal nanoparticle free surface enhanced Raman scattering substrate has a low detection limit of 1x10-10 M for methylene blue. However, Yu et al. do teach wherein the SERS substrate has a high sensitivity (Yu et al., page 2, paragraph 7). Where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in detection limit involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the detection limit of Yu et al. in order to provide high sensitivity (Yu et al., page 2, paragraph 7).
Conclusion
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/Chinessa T. Golden/Primary Examiner, Art Unit 1788 10/9/2026
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