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 .
Election/Restrictions
Applicant’s election without traverse of the species of figure 5, corresponding to claims 1-9 and 15-18, in the reply filed on 4/27/2026 is acknowledged. However, claim 17 is directed to a non-elected species (figure 2) and therefore is withdrawn from consideration as being directed to a non-elected invention.
Claim Objections
Claim 7 is objected to because of the following informalities: Line 4 of claim 7 reads “a primary reflector” instead of “the primary reflector.” Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is: spectroscopic unit in claims 15-16 and 18.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 8-9 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.
Claim 8 recites the limitation "the transparent carrier" in line 5. There is insufficient antecedent basis for this limitation in the claim. It’s unclear whether this is intended to refer to any transparent carrier or if it is intended to refer to the transparent carrier in claim 6 (even though claim 8 doesn’t depend on claim 6). For the sake of examination, claim 8 will be interpreted as further comprising a transparent carrier and “the transparent carrier” in line 5 is interpreted as referring to that carrier.
Claim 9 reads “… a secondary reflector configured to receive light propagating into an area surrounding the transmission window…” It’s unclear whether this requires the secondary reflector to be positioned in an arear surrounding the transmission window, such that the it receives the light as it is propagating into the area surrounding the transmission window (similar to Applicant’s figure 5 with the secondary reflector 35E). Or whether it only requires the secondary reflector to be positioned such that it receives light that has propagated into an area surrounding the transmission window (similar to how “receive light propagating” is used in paragraph 113 of Applicant’s specification, with regards to a different reflector). Or whether it encompasses receiving light as it is propagating towards the area surrounding the transmission window, as it seems to encompass based on the ordinary meaning of the language. This lack of clarity causes the scope of the claims to be indefinite. For the sake of examination, it will be interpreted as the second option and third option (and two different rejections are made below). However, for compact prosecution, the examiner has also searched the first option and relevant prior art is in the additional prior art section below.
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.
Claims 1-6, 9, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Matousek (US 20250130173 A1) in view of Chen (US 20180372543 A1).
Regarding claim 1, Matousek teaches a flow cell for performing surface-enhanced Raman spectroscopic (SERS) measurements of at least one measurand of a medium, the flow cell comprising:
a cell body (130) including a flow channel (paragraph 141 and figure 7) extending through the cell body (figure 7) and configured to convey the medium (sample fluid);
a SERS-substrate (10; paragraph 141) disposed on a surface adjacent the flow channel inside the cell body (figure 7), the SERS-substrate comprising a nanostructured layer (paragraphs 141 and 122); and
a transmission window (figure 7 and “transparent windows” in paragraph 141) configured to permit excitation light to be transmitted through the transmission window to the SERS-substrate inside the cell body and to permit measurement light, including Raman scattered light emanating from the medium inside the flow channel, to be received through the transmission window (figure 7 and paragraph 141).
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Matousek doesn’t explicitly teach the SERS substrate comprises a transparent, chemically inert passivation layer covering an outside surface of the SERS-substrate adjacent the flow channel.
Like Matousek (and like the instant application), Chen is directed to flow cells and to surface-enhanced Raman spectroscopic (SERS) measurements and teaches the SERS substrate comprises a transparent, chemically inert passivation layer (204) covering an outside surface of the SERS-substrate (figure 2; paragraphs 7).
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It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the SERS substrate comprises a transparent, chemically inert passivation layer covering an outside surface of the SERS-substrate adjacent the flow channel in order to protect the SERS substrate from contamination.
Regarding claim 2, Matousek teaches at least one of: the nanostructured layer includes a nanostructured noble metal layer or a nanostructured gold layer (paragraphs 141 and 122); the passivation layer is a graphene layer and/or a layer having a thickness of 0.1 nm to 5.0 nm; and the passivation layer is disposed on the nanostructured layer.
Regarding claim 3, Matousek teaches a primary reflector, wherein, at least one of: the primary reflector is configured to reflect incident light towards the SERS-substrate (mirror in paragraph 57 and element 22 in figure 7).
Regarding claim 4, Matousek teaches
a secondary reflector (where the secondary reflector is the same mirror, 22) configured to reflect incident light towards a section of the flow channel adjacent the SERS-substrate, wherein the secondary reflector is given by an individual component (the mirror).
Regarding claim 5, Matousek teaches
the transmission window and the SERS- substrate are disposed on opposing sides of the flow channel (figure 7).
Regarding claim 6, Matousek teaches
the SERS-substrate (10) is disposed or deposited on a carrier (132), and the carrier is disposed in an opening extending through a wall section of the cell body (figure 7).
Regarding claim 9, Matousek teaches
a secondary reflector (mirror in paragraph 57 and element 22 in figure 7) configured to receive light propagating into an area surrounding the transmission window and to reflect incident light towards a section of the flow channel adjacent the SERS-substrate (figure 7). Note: For the sake of compact prosecution, also see additional prior art, Fang (CN 116990281 A)
Regarding claim 15, the above combination comprises a measurement apparatus for performing surface-enhanced Raman spectroscopic measurements of at least one measurand of a medium, the measurement apparatus comprising:
the flow cell according to claim 1 (see citations with respect to claim 1, above);
an excitation light source (Matousek: 20) configured to generate excitation light;
an optical system (Matousek: 22 and 28) configured to transmit excitation light from the excitation light source through the transmission window of the flow cell and to receive measurement light, including Raman scattered light, exiting the flow cell through the transmission window;
a spectrometric unit (Matousek: 30; paragraph 55) configured to receive the measurement light or the Raman scattered light from the optical system and configured to determine and to provide measured spectra of the medium; and
a processing unit (Matousek: 50) connected to and/or communicating with the spectrometric unit and configured to determine and to provide measurement results of each measurand of the medium based on the measured spectra provided by the spectrometric unit (Matousek: figure 7; paragraph 65).
Claims 7 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Matousek and Chen as applied to claims 5 and 15 above, and further in view of Kuo and Lascola (US 9007576 B2).
Regarding claim 7, Matousek teaches the SERS substrate (10) is disposed or deposited on a carrier (132) disposed in an opening extending through a wall section of the cell body (figure 7).
Matousek doesn’t explicitly teach the carrier is transparent; and a primary reflector is disposed outside the flow channel opposite the transmission window and configured to receive light propagating through the SERS-substrate and the transparent carrier to the primary reflector and to reflect the incident light towards the SERS-substrate.
Like Matousek (and like the instant application), Kuo is directed to a flow cell comprising a SERS substrate and teaches the carrier is transparent (column 11, lines 10-20; column 6, lines 5-20); and a primary reflector is disposed opposite the transmission window and configured to receive light propagating through the SERS-substrate and the transparent carrier to the primary reflector and to reflect the incident light towards the SERS-substrate (figure 14; column 11, lines 10-20).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination by having a transparent and carrier and adding the primary reflector in order to increase the signal by redirecting the beam back into the measurement area.
The above combination doesn’t explicitly teach the reflector is disposed outside the flow channel.
Like Matousek (and like the instant application), Lascola is directed to SERS and flow cells and teaches having the reflector (80) disposed outside the flow channel (figure 15A). Additionally, Lascola teaches this is a recognized alternative to having reflector be a part of the flow path and provides the benefit of preventing the excitation light from leaving the system and instead redirecting it so that more of the light signal can be collected and detected (column 8, lines 50-65).
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It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the primary reflector is disposed outside the flow channel because this is an art recognized substitute for having the reflector be a part of the flow cell and in order to prevent the excitation light from leaving the system and instead redirect it so that more of the light signal can be collected and detected.
Regarding claim 18, the above combination comprises a holder (Lascola, figure 15A); wherein: the flow cell includes a transparent window or a transparent carrier disposed in an opening extending through the wall section of the cell body opposite the transmission window; and the holder includes: two side elements delimiting a receptacle configured to accommodate the flow cell and an opening extending through a first one of the side elements such that the opening exposes the transmission window of the flow cell disposed in the holder; and a reflector (80) disposed opposite the opening in the first side element and configured to receive light exiting the flow cell disposed in the holder through the transparent window, or the transparent carrier, of the flow cell and to reflect the incident light through the transparent window or the transparent carrier to the SERS-substrate, wherein the reflector is: a flat reflector including a flat reflective surface, a curved reflector including a curved reflective surface, a focusing mirror adapted to reflect incident light onto the SERS- substrate or onto a point or a line on the SERS-substrate, or a collimating mirror adapted to reflect the incident light onto an area of the SERS-substrate; and/or given by an individual component attached to the second side element, by a coating disposed or deposited on the second side element, or by a reflective and/or polished surface of the second side element (Lascola, figure 15A).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Matousek and Chen as applied to claim 5 above, and further in view of Kuo (US 8559003 B2).
Regarding claim 8, Matousek doesn’t explicitly teach a primary reflector is disposed on, space apart from, or air-spaced from a rear side of the transparent carrier facing away from the SERS-substrate; or the primary reflector is a curved reflector including a curved reflective surface disposed on an outer surface of a transparent extension of the transparent carrier having a shape corresponding to the curved shape of the primary reflector.
Like Matousek (and like the instant application), Kuo is directed to a flow cell comprising a SERS substrate and teaches a primary reflector (50) is disposed on, space apart from, or air-spaced from a rear side of the transparent carrier facing away from the SERS-substrate (figure 14; column 11, lines 10-20).
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It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination by having a transparent and carrier and adding the primary reflector in order to increase the signal by redirecting the beam back into the measurement area.
Regarding claim 9, the above combination comprises a secondary reflector (Kuo, 50) configured to receive light propagating into an area surrounding the transmission window and to reflect incident light towards a section of the flow channel adjacent the SERS-substrate (Kuo, figure 14; see 112b interpretation above).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Matousek and Chen as applied to claim 15 above, and further in view of Koo (US 20050084980 A1).
Regarding claim 16, Matousek teaches the transmission window and the SERS-substrate (10) are disposed on opposing sides of the flow channel of the flow cell (figure 7).
Matousek doesn’t explicitly teach the optical system includes an objective adapted to transmit the excitation light into the flow cell and to receive the measurement light exiting the flow cell; and the objective is given by: a focusing objective adapted to focus the excitation light onto the SERS- substrate or onto a focusing point or a focusing line on the SERS-substrate and to collect the measurement light exiting the flow cell.
Like Matousek (and like the instant application), Koo is directed to flow cells and SERS substrates and teaches the optical system includes an objective (165) adapted to transmit the excitation light into the flow cell and to receive the measurement light exiting the flow cell; and the objective is given by: a focusing objective adapted to focus the excitation light onto the SERS- substrate or onto a focusing point or a focusing line on the SERS-substrate and to collect the measurement light exiting the flow cell (paragraph 35).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that it comprises an objective lens (as taught by Koo) in order to have a simplified setup with fewer optical components that uses common optical elements to both focus and collect.
Additional Prior Art
Chan (US 20060215154 A1) discloses a flow cell (330), light source (370), detector (380)
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US 20170108439 A1 discloses (window
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Fang (CN 116990281 A) discloses mirrors (31) and windows (32)
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Liu (A Tunable Freeform-Segmented Reflector in a Microfluidic System for Conventional and Surface-Enhanced Raman Spectroscopy) discloses
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUFUS L PHILLIPS whose telephone number is (571)270-7021. The examiner can normally be reached M-Th, 2 -10 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at (571) 270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUFUS L PHILLIPS/ Examiner, Art Unit 2877
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