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 with traverse of Group I in the reply filed on 10 December 2025 is acknowledged. The traversal is on the grounds that the examiner has not adequately demonstrated any of the indications of distinctness as listed in MPEP § 806.05(j) and that the search of all the claims from both Groups I and II would not impose a serious search burden on the Office. Applicant’s arguments regarding the election with traverse have been fully considered and are persuasive. The requirement for restriction/election mailed 10 October 2025 is withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 27 December 2023 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 4-5, 10-12, 17, and 20 are objected to because of the following informalities:
Regarding claim 4, lines 13-14 recites the limitation “the electromagnetic field intensity” which should be amended to recite “the electromagnetic near field intensity” to provide proper antecedence in the claim. Claim 5 depends on claim 4 and is therefore also objected to.
Regarding claim 10, line 1 recites the limitation “The method of claim 9, performing the near field SERS spectroscopy by directing” which appears to be missing a transitional phrase. The examiner assumes line 1 of claim 10 recites “The method of claim 9, wherein performing the near field SERS spectroscopy [[by]] comprises directing”. If this is applicant’s intent, please amend accordingly. Claim 11 depends on claim 10 and is therefore also objected to.
Regarding claim 12, line 1 recites the limitation “the glass substrate” which should be amended to recite “the functionalized glass substrate” to provide proper antecedence in the claim.
Further regarding claim 12, the term “and” found on line 6 should be deleted as it is redundant.
Regarding claim 17, line 4 recites the limitation “identifying interstitials of…” which should be amended to recite “identifying interstitial[[s]] positions of…” to improve the clarity of the claim.
Regarding claim 20, line 6 recites the limitation “based on an identification number” which should be amended to recite “based on [[an]] the identification number” to improve the clarity of the claim.
Further regarding claim 20, lines 9-10 recite the limitation “parallel to a direction of the interparticle axis” which should be amended to recite “parallel to [[a]] the direction of the interparticle axis” to improve the clarity of the claim.
Appropriate correction is required.
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 6-8, 13-14, and 18-20 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.
Regarding claim 6, line 2 recites the limitation “the a-NSOM”. There is insufficient antecedent basis for this limitation in the claim. Neither claim 6 nor claim 1, in which claim 6 depends on, previously recite ‘an a-NSOM’. Claim 4 recites the limitation “an aperture near-field scanning optical microscope (a-NSOM)” on line 9, however, claim 6 does not depend on claim 4.
Further regarding claim 6, lines 2-3 recite the limitation “the incident beam having a p-polarization”. There is insufficient antecedent basis for this limitation in the claim. Neither claim 6 nor claim 1, in which claim 6 depends on, previously recite ‘an incident beam having a p-polarization’. Claim 4 recites the limitation “an incident beam having a p-polarization” on line 10, however, claim 6 does not depend on claim 4.
Therefore, for the reasons outlined above, claim 6 is indefinite and is rejected under 35 U.S.C. § 112(b). Claims 7-8 depend on claim 6 and are therefore also rejected to under 35 U.S.C. § 112(b). The examiner assumes that claim 6 depends on claim 4, thus making line of claim 6 recite ‘The method of claim 4…’. If this is applicant’s intent, please amend accordingly.
Regarding claim 13, line 1 recites the limitation “The method of claim 9, wherein the dye is a Raman-active dye”. There is insufficient antecedent basis for this limitation in the claim. Claim 9 does not previously recite ‘a dye’. While claim 9 recites “a functionalized glass substrate coated with dyed immobilized gold nanoparticles” on lines 2-3, it is unclear if “the dye” of claim 13 is referring to the dye used on the immobilized gold nanoparticles, or if “the dye” is intended to refer to a different dye. Further, claim 12 recites the limitation “a dye” on lines 2 and 3, however, claim 13 does not depend on claim 12. Therefore, claim 13 is indefinite and is rejected under 35 U.S.C. § 112(b). Claim 14 depends on claim 13 and is therefore also rejected to under 35 U.S.C. § 112(b). The examiner assumes claim 13 depends on claim 12, thus making line 1 of claim 13 recite ‘The method of claim 12…’. If this is applicant’s intent, please amend accordingly.
Regarding claim 18, lines 1-2 recite the limitation “wherein identifying the direction of the interparticle axis between the two adjacent dyed immobilized gold nanoparticles at each hotspot comprises”. It is unclear what the limitation “each hotspot” is referring to, as this term is not previously recited in claims 9 and 16, of which claim 18 depends on. Therefore, claim 18 is indefinite and is rejected under 35 U.S.C. § 112(b). The examiner assumes that the term “each hotspot” in claim 18 is referring to the “known positions of high intensity scattering” recited on line 6 of claim 9. Thus, the examiner assumes lines 1-2 of claim 18 to instead convey ‘wherein identifying the direction of the interparticle axis between the two adjacent dyed immobilized gold nanoparticles at each known position of high intensity scattering, wherein each known position of high intensity scattering defines a hotspot, comprises’. If this is applicant’s intent, please amend accordingly.
Further regarding claim 18, line 4 recites the limitation “the a-NSOM with the tapered probe”. There is insufficient antecedent basis for this limitation in the claim. Neither claim 18 nor claims 9 and 16, in which claim 18 depend on, previously recite ‘an a-NSOM with a tapered probe’. While claim 10 recites the limitation “a tip of a tapered probe of an aperture near-field scanning optical microscope (a-NSOM)” on line 2, claim 18 does not depend on claim 10. Therefore, claim 18 is indefinite and is rejected under 35 U.S.C. § 112(b). The examiner assumes claim 18 to instead depend on claim 10, thus making line 1 of claim 18 instead recite ‘The method of claim 10…’. If this is applicant’s intent, please amend accordingly.
Regarding claim 19, line 18 recites the limitation “the interparticle axes of each hotspot”. There is insufficient antecedent basis for this limitation in the claim. Claim 19 does not previously recite interparticle axes of any kind. While claim 19 previously recites that “each hotspot is located at an interstitial position between two adjacent dyed immobilized gold nanoparticles” on lines 14-15, it is unclear if the interparticle axes are or relate to the limitations recited on lines 14-15. Therefore, claim 19 is indefinite and is rejected under 35 U.S.C. § 112(b). Claim 20 depends on claim 19 and is therefore also rejected to under 35 U.S.C. § 112(b). The examiner assumes line 18 of claim 19 to instead recite ‘show interparticle axes between the two adjacent dyed immobilized gold nanoparticles of each hotspot’. If this is applicant’s intent, please amend accordingly.
Regarding claim 20, line 3 recites the limitation “the unknown solution”. There is insufficient antecedent basis for this limitation in the claim. Neither claim 20 nor claim 19, in which claim 20 depends on, previously recites ‘an unknown solution’ of any kind. Claim 20 recites, on line 2, the limitations “a target analyte” and “an unknown molecule”, however, it is unclear if “the unknown solution” is referring to the “target analyte”, the “unknown molecule”, or if “the unknown solution” is intended to refer to a different element. Therefore, claim 20 is indefinite and is rejected under 35 U.S.C. § 112(b). The examiner assumes “the unknown solution” recited on line 3 of claim 20 to instead recite “the target analyte”. If this is applicant’s intent, please amend accordingly.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 9-18 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 9-18 of copending Application No. 19/365658 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The following table compares the limitations of the claim/claims of the instant application (18/397598) and reference application (19/365658):
Instant Application (18/397598)
Reference Application (19/365658)
Claim 9. A method of identifying a target analyte, comprising: obtaining a functionalized glass substrate coated with dyed immobilized gold nanoparticles; coating the functionalized glass substrate coated with dyed immobilized gold nanoparticles with a target analyte, wherein the functionalized glass substrate coated with dyed immobilized gold nanoparticles has known positions of high intensity scattering from interparticle axes between adjacent dyed immobilized gold nanoparticles; performing near field SERS spectroscopy at the known positions by directing a laser beam having a p-polarization along a direction parallel to a direction of the interparticle axis of each known position; receiving, by a computing device, SERS spectra for each of the known positions; comparing the SERS spectra for each of the known positions to a database record of known SERS spectra of molecules; and identifying molecules in the target analyte based on matching the SERS spectra to the database record of known SERS spectra of molecules.
Claim 9. A method of identifying a target analyte, comprising: obtaining a functionalized glass substrate coated with dyed immobilized gold nanoparticles; coating the functionalized glass substrate coated with dyed immobilized gold nanoparticles with a target analyte, wherein the functionalized glass substrate coated with dyed immobilized gold nanoparticles has known positions of high intensity scattering from interparticle axes between adjacent dyed immobilized gold nanoparticles; performing near field SERS spectroscopy at the known positions by directing a laser beam having a p-polarization along a direction parallel to a direction of the interparticle axis of each known position; receiving, by a computing device, SERS spectra for each of the known positions; comparing the SERS spectra for each of the known positions to a database record of known SERS spectra of molecules; and identifying molecules in the target analyte based on matching the SERS spectra to the database record of known SERS spectra of molecules.
Claim 10. The method of claim 9, performing the near field SERS spectroscopy by directing a tip of a tapered probe of an aperture near-field scanning optical microscope (a-NSOM) in the direction of the interparticle axis of each known position.
Claim 10. The method of claim 9, performing the near field SERS spectroscopy by directing a tip of a tapered probe of an aperture near-field scanning optical microscope (a-NSOM) in the direction of the interparticle axis of each known position.
Claim 11. The method of claim 10, wherein the tip of the tapered probe is coated with gold.
Claim 11. The method of claim 10, wherein the tip of the tapered probe is coated with gold.
Claim 12. The method of claim 9, wherein the glass substrate having immobilized gold nanoparticles is coated with a dye by the steps of: selecting a dye based on the target analyte; obtaining the selected dye; applying a drop of the selected dye to the glass substrate having immobilized gold nanoparticles; and inserting the functionalized glass substrate coated with the immobilized gold nanoparticles into a spin coating machine; and spin coating the dye onto each functionalized glass substrate coated with the immobilized gold nanoparticles, wherein the spin coating distributes the dye across each functionalized glass substrate coated with the immobilized gold nanoparticles.
Claim 12. The method of claim 9, wherein the glass substrate having immobilized gold nanoparticles is coated with a dye by the steps of: selecting a dye based on the target analyte; obtaining the selected dye; applying a drop of the selected dye to the glass substrate having immobilized gold nanoparticles; and inserting the functionalized glass substrate coated with the immobilized gold nanoparticles into a spin coating machine; and spin coating the dye onto each functionalized glass substrate coated with the immobilized gold nanoparticles, wherein the spin coating distributes the dye across each functionalized glass substrate coated with the immobilized gold nanoparticles.
Claim 13. The method of claim 9, wherein the dye is a Raman-active dye.
Claim 13. The method of claim 9, wherein the dye is a Raman-active dye.
Claim 14. The method of claim 13, wherein the Raman-active dye is Rhodamine 6G.
Claim 14. The method of claim 13, wherein the Raman-active dye is Rhodamine 6G.
Claim 15. The method of claim 9, wherein the gold nanoparticles each have a diameter in a range of 96.0 nm to 104.0 nm.
Claim 15. The method of claim 9, wherein the gold nanoparticles each have a diameter in a range of 96.0 nm to 104.0 nm.
Claim 16. The method of claim 9, wherein each functionalized glass substrate coated with dyed immobilized gold nanoparticles is tagged with a substrate identification number.
Claim 16. The method of claim 9, wherein each functionalized glass substrate coated with dyed immobilized gold nanoparticles is tagged with a substrate identification number.
Claim 17. The method of claim 16, further comprising: identifying hotspots on each functionalized glass substrate coated with dyed immobilized gold nanoparticles by detecting positions of high intensity scattering; identifying interstitials of adjacent dyed immobilized gold nanoparticles at each hotspot; identifying a direction of an interparticle axis of each interstitial of each respective hotspot; storing, in the database record, the location of each interstitial position of each hotspot, the direction of the interparticle axis of each respective hotspot, and an electromagnetic near field intensity of the respective hotspot with the substrate identification number.
Claim 17. The method of claim 16, further comprising: identifying hotspots on each functionalized glass substrate coated with dyed immobilized gold nanoparticles by detecting positions of high intensity scattering; identifying interstitials of adjacent dyed immobilized gold nanoparticles at each hotspot; identifying a direction of an interparticle axis of each interstitial of each respective hotspot; storing, in the database record, the location of each interstitial position of each hotspot, the direction of the interparticle axis of each respective hotspot, and an electromagnetic near field intensity of the respective hotspot with the substrate identification number.
Claim 18. The method of claim 16, wherein identifying the direction of the interparticle axis between the two adjacent dyed immobilized gold nanoparticles at each hotspot comprises: performing sheer force measurements simultaneously during the near-field SERS measurements using the a-NSOM with the tapered probe; generating a contour map based on the sheer force measurements; determining the hotspots from the positions of high intensity scattering observed from the near-field SERS measurements; determining the interparticle axes of each hotspot from the contour map; and determining a direction of the interparticle axis of each hotspot by observing the strength of the high intensity scattering along each interparticle axis.
Claim 18. The method of claim 16, wherein identifying the direction of the interparticle axis between the two adjacent dyed immobilized gold nanoparticles at each hotspot comprises: performing sheer force measurements simultaneously during the near-field SERS measurements using the a-NSOM with the tapered probe; generating a contour map based on the sheer force measurements; determining the hotspots from the positions of high intensity scattering observed from the near-field SERS measurements; determining the interparticle axes of each hotspot from the contour map; and determining a direction of the interparticle axis of each hotspot by observing the strength of the high intensity scattering along each interparticle axis.
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.
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suh et al. (US 2013/0029360 A1), hereinafter Suh.
Regarding claim 9, Suh teaches a method of identifying a target analyte (paragraphs 0044-0048), comprising:
obtaining a functionalized glass substrate coated with dyed immobilized gold nanoparticles (see abstract, paragraphs 0032, 0040, 0048, 0058, 0076);
coating the functionalized glass substrate coated with dyed immobilized gold nanoparticles with a target analyte (paragraph 0045, 0076), wherein the functionalized glass substrate coated with dyed immobilized gold nanoparticles has known positions of high intensity scattering from interparticle axes between adjacent dyed immobilized gold nanoparticles (paragraphs 0010, 0062, 0078-0081);
performing near field SERS spectroscopy at the known positions (paragraphs 0010, 0045-0049) by directing a laser beam (paragraph 0045) having a p-polarization along a direction parallel to a direction of the interparticle axis of each known position (paragraph 0081; since the incident laser is polarized parallel to the longitudinal axis of the heterodimer, it is the examiner’s position the incident beam is p-polarized);
receiving, by a computing device (paragraphs 0050, 0054-0055), SERS spectra for each of the known positions (paragraphs 0010, 0050, 0055, 0076);
comparing the SERS spectra for each of the known positions to a database record of known SERS spectra of molecules (paragraph 0055); and
identifying molecules in the target analyte based on matching the SERS spectra to the database record of known SERS spectra of molecules (paragraphs 0045, 0050, 0055).
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.
Claims 10-11 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Suh (US 2013/0029360 A1) in view of Hossain et al. (Hossain, Mohammad Kamal, et al. "Interstitial-dependent enhanced photoluminescence: A near-field microscopy on single spheroid to dimer, tetramer, and few particles gold nanoassembly." The Journal of Physical Chemistry C 121.4 (2017): 2344-2354.), hereinafter Hossain.
Regarding claim 10, Suh teaches the method of claim 9, as outlined above, but does not teach wherein performing the near field SERS spectroscopy comprises directing a tip of a tapered probe of an aperture near-field scanning optical microscope (a-NSOM) in the direction of the interparticle axis of each known position.
Hossain, which relates to microscope systems for performing SERS spectroscopy, teaches performing the near field SERS spectroscopy (see Hossain section 3.1. Nanoassemblies and Interstitials which discusses performing SERS spectroscopy) comprises directing a tip of a tapered probe of an aperture near-field scanning optical microscope (a-NSOM) (see Hossain Fig. 1, section 2.2 NSOM Setup and Measurements) in the direction of the interparticle axis of each known position (see Hossain abstract, section 4. Conclusions, pg. 2345 right col. second paragraph).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the instant application to modify the method of Suh to have the performing the near field SERS spectroscopy comprise directing a tip of a tapered probe of an aperture near-field scanning optical microscope (a-NSOM) in the direction of the interparticle axis of each known position, as taught by Hossain, for the benefit of enhancing the SERS signal generated and received from the high intensity sites (Hossain: pg. 2345 left col. first paragraph discussing SERS spectroscopy and an a-NSOM’s ability to detect optical characteristics beyond diffraction limits).
Regarding claim 11, Suh, as modified by Hossain, teaches the method of claim 10, as outlined above, and further teaches the tip of the tapered probe is coated with gold (see Hossain Fig. 1, section 2.2 NSOM Setup and Measurements).
Regarding claim 18, Suh, as modified by Hossain, teaches the method of claim 10 (see examiner’s interpretations of claim 18 in view of the 35 U.S.C. § 112(b) rejection above), as outlined above, but does not teach wherein identifying the direction of the interparticle axis between the two adjacent dyed immobilized gold nanoparticles at each known position of high intensity scattering, wherein each known position of high intensity scattering defines a hotspot, comprises (see examiner’s interpretations of claim 18 in view of the 35 U.S.C. § 112(b) rejection above): performing sheer force measurements simultaneously during the near-field SERS measurements using the a-NSOM with the tapered probe; generating a contour map based on the sheer force measurements; determining the hotspots from the positions of high intensity scattering observed from the near-field SERS measurements; determining the interparticle axes of each hotspot from the contour map; and determining a direction of the interparticle axis of each hotspot by observing the strength of the high intensity scattering along each interparticle axis.
Hossain teaches identifying the direction of the interparticle axis between the two adjacent immobilized gold nanoparticles at each known position of high intensity scattering, wherein each known position of high intensity scattering defines a hotspot (see Hossain Fig. 3-5 and corresponding captions, and sections 3.1. Nanoassemblies and Interstitials, 3.2.1. TPI-PL of Monomer and Dimer, 3.3. Near EM-Field), comprises: performing sheer force measurements simultaneously during the near-field optical measurements using the a-NSOM with the tapered probe (Hossain: pg. 2345 left col. first paragraph, section 3. Result and Discussion); generating a contour map based on the sheer force measurements (see Hossain Fig. 3-5 and corresponding captions and sections 3.2.1-3.2.3 on pg. 2349-2351); determining the hotspots from the positions of high intensity scattering observed from the near-field optical measurements (Hossain: sections 3. Result and Discussion, 3.1. Nanoassemblies and Interstitials, 3.3. Near EM-Field); determining the interparticle axes of each hotspot from the contour map (see Hossain Fig. 3-5 and corresponding captions, sections 3.2.1-3.2.3 on pg. 2349-2351); and determining a direction of the interparticle axis of each hotspot by observing the strength of the high intensity scattering along each interparticle axis (see Hossain Fig. 3-5 and corresponding captions, sections 3.2.1-3.2.3 on pg. 2349-2351; see also sections 3. Result and Discussion, 3.1. Nanoassemblies and Interstitials, 3.3. Near EM-Field).
Therefore, since Suh is related to SERS spectroscopy and identifying hotspot locations, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the instant application to modify the method of Suh to have the identifying the direction of the interparticle axis between the two adjacent dyed immobilized gold nanoparticles at each known position of high intensity scattering, wherein each known position of high intensity scattering defines a hotspot, comprises (see examiner’s interpretations of claim 18 in view of the 35 U.S.C. § 112(b) rejection above): performing sheer force measurements simultaneously during the near-field SERS measurements using the a-NSOM with the tapered probe; generating a contour map based on the sheer force measurements; determining the hotspots from the positions of high intensity scattering observed from the near-field SERS measurements; determining the interparticle axes of each hotspot from the contour map; and determining a direction of the interparticle axis of each hotspot by observing the strength of the high intensity scattering along each interparticle axis, as taught by Hossain, for the benefit of improving the localization of hotspots for more efficient SERS spectroscopic measurements (see Hossain Section 1. Introduction).
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Suh (US 2013/0029360 A1).
Regarding claim 12, Suh teaches the method of claim 9, as outlined above, and further teaches the functionalized glass substrate having immobilized gold nanoparticles is coated with a dye (paragraphs 0031-0032, 0045, 0076) by the steps of:
selecting a dye based on the target analyte (paragraph 0032, 0045);
obtaining the selected dye (paragraphs 0031-0035, 0070-0076);
applying a drop of the selected dye to the glass substrate having immobilized gold nanoparticles (paragraphs 0024, 0031-0035, 0070-0076); and spin coating the dye onto each functionalized glass substrate coated with the immobilized gold nanoparticles (paragraph 0076), wherein the spin coating distributes the dye across each functionalized glass substrate coated with the immobilized gold nanoparticles (paragraph 0076; spin coating inherently distributes a solution across a surface).
Suh is silent to inserting the functionalized glass substrate coated with the immobilized gold nanoparticles into a spin coating machine. However, Suh teaches spin coating a glass substrate (see paragraph 0076). Spin coating a solution onto a substrate requires the use of some sort of spin coating machine. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the instant application to modify the method of Suh to include the step of inserting the functionalized glass substrate coated with the immobilized gold nanoparticles into a spin coating machine, for the benefit of efficiently distributing the Raman dye solution across the glass substrate in a uniform manner.
Regarding claim 13, Suh teaches the method of claim 12 (see examiner’s interpretation of claim 13 in view of the 35 U.S.C. § 112(b) rejection above), as outlined above, and further teaches the dye is a Raman-active dye (paragraphs 0008, 0031-0032).
Regarding claim 14, Suh teaches the method of claim 13, as outlined above, and further teaches the Raman-active dye is Rhodamine 6G (paragraphs 0008, 0032).
Regarding claim 15, Suh teaches the method of claim 9, as outlined above, but does not teach the gold nanoparticles each have a diameter in a range of 96.0 nm to 104.0 nm.
However, Suh teaches the gold nanoparticles have a diameter that ranges from 5 nm to 300 nm (see paragraph 0022). Suh teaches that when the diameter is less than 5 nm, a decreased SERS enhancement effect is obtained and, when the diameter exceeds 300 nm, many limitations on the biological applications of the nanoparticles would be imposed (see paragraph 0022). Thus, the diameter of the gold nanoparticles is result-effective variable.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the instant application to modify the gold nanoparticles of Suh to have the diameter be in a range of 96.0 nm to 104.0 nm, since determining the optimum gold nanoparticle diameter to ensure a sufficient SERS enhancement effect is obtained that does not impose any limitations on the biological applications of the gold nanoparticles is based on a result-effective variable, and would require routine skill in the art. Furthermore, it has been held that determining the optimum value of a result-effective variable involves only routine skill in the art. See MPEP § 2144.05 section II. Additionally, the courts have held that in cases where the claimed ranges "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). See MPEP § 2144.05 section I.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Suh (US 2013/0029360 A1) in view of The National Glass Association with Gana (“Viracon Introduces Glass Identification Numbers for IGUs”, 20 March 2023, https://www.glassmagazine.com/news/2023/viracon-introduces-glass-identification-numbers-igus), hereinafter NGA, and Wagner (EP 1465254 A).
Regarding claim 16, Suh teaches the method of claim 9, as outlined above, but does not teach each functionalized glass substrate coated with dyed immobilized gold nanoparticles is tagged with a substrate identification number.
However, the examiner takes official notice (MPEP § 2144.03) that tagging substrates with an identification number is well known in the art of manufacturing various substrates (see NGA’s article “Viracon Introduces Glass Identification Numbers for IGUs” describing the assignment of ID numbers to glass substrates, Wagner abstract and description describing generating ID numbers for semiconductor substrates).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the instant application to modify the method of Suh to have each functionalized glass substrate coated with dyed immobilized gold nanoparticles is tagged with a substrate identification number, as doing so beneficially enables improves tracking and storage accessibility of the functionalized glass substrates.
Allowable Subject Matter
Claims 1-8 are allowable in view of the prior art.
Claims 19-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the prior art of record, taken alone or in combination, neither anticipates nor renders obvious a method for functionalizing substrates for use in near field surface-enhanced Raman scattering (SERS) spectroscopy, comprising: coating each functionalized glass substrate of a set of glass substrates functionalized with trimethoxy-[3-(methylamino)propyl] silane with a colloidal solution of gold nanoparticles suspended in water, wherein the trimethoxy-[3-(methylamino)propyl] silane immobilizes the gold nanoparticles on each functionalized glass substrate; applying a Raman-active dye to the glass substrate having immobilized gold nanoparticles; performing near field SERS spectroscopy of each functionalized glass substrate coated with dyed immobilized gold nanoparticles; and identifying, from the near field SERS spectroscopy, for each functionalized glass substrate coated with dyed immobilized gold nanoparticles, hotspots which produce high intensity scattering from the dyed immobilized gold nanoparticles, wherein each hotspot is located at an interstitial position between two adjacent dyed immobilized gold nanoparticles; identifying for each functionalized glass substrate coated with dyed immobilized gold nanoparticles, a direction of an interparticle axis between the two adjacent dyed immobilized gold nanoparticles and an electromagnetic near field intensity of the high intensity scattering along the direction of the interparticle axis for each hotspot; mapping for each functionalized glass substrate coated with dyed immobilized gold nanoparticles, by a computing device, a location of each interstitial position of each hotspot, the direction of the interparticle axis of the respective hotspot, and the electromagnetic near field intensity of the respective hotspot; assigning a substrate identification number to each glass substrate coated with dyed immobilized gold nanoparticles; and storing, in a database, the location of each interstitial position of each hotspot, the direction of the interparticle axis of the respective hotspot, and the electromagnetic near field intensity of the respective hotspot with the substrate identification number (emphasis added via bolded words, extra emphasis added via underlined words).
Yang et al. (Yang, Guang, et al. "Self-assembly of large gold nanoparticles for surface-enhanced Raman spectroscopy." ACS Applied Materials & Interfaces 9.15 (2017): 13457-13470.), hereinafter Yang, teaches a method of functionalizing substrates for near-field SERS spectroscopy comprising coating a glass substrate with gold nanoparticles from a colloidal solution, applying a Raman-active dye to the substrate, identifying hotspots from SERS spectroscopy, and mapping the hotspot locations with corresponding enhancement factors (Yang: abstract, pg. 13462-13467, Fig. 8-9). Yang teaches the identification of a deviation angle between the nanoparticle center-to-hot spot line and the nanoparticle center-to-center axis that is mapped along with the location of the hotspot and field intensity (Yang: Fig. 9, see the FDTD Simulation and Analytical Calculation section), however, this deviation angle is different from the direction of an interparticle axis between two adjacent dye immobilized nanoparticles. Yang is silent to identifying and mapping the interparticle axis between two adjacent dye immobilized nanoparticles of the respective hotspot. Furthermore, Yang does not teach, among other elements, assigning a substrate identification number to each glass substrate coated with dyed immobilized gold nanoparticles; and storing, in a database, the location of each interstitial position of each hotspot, the direction of the interparticle axis of the respective hotspot, and the electromagnetic near field intensity of the respective hotspot with the substrate identification number.
Xie et al. (US Patent No. 11,428,638 B2), hereinafter Xie, teaches a method for characterizing samples comprising coating a substrate with gold nanopyramids, applying a van der Waals material on the substrate over the gold nanopyramids, performing SERS spectroscopy of the substrate coated with the gold nanopyramids, identifying hotspots located at interstitial positions between adjacent gold nanopyramids, and identifying electromagnetic field intensity (Xie: abstract, col. 10 line 18-col. 11 line 28, col. 20 line 56-col. 21 line 40, Fig. 1-10). Xie does not teach, among other elements, identifying for each functionalized glass substrate coated with dyed immobilized gold nanoparticles, a direction of an interparticle axis between the two adjacent dyed immobilized gold nanoparticles and an electromagnetic near field intensity of the high intensity scattering along the direction of the interparticle axis for each hotspot; mapping for each functionalized glass substrate coated with dyed immobilized gold nanoparticles, by a computing device, a location of each interstitial position of each hotspot, the direction of the interparticle axis of the respective hotspot, and the electromagnetic near field intensity of the respective hotspot; assigning a substrate identification number to each glass substrate coated with dyed immobilized gold nanoparticles; and storing, in a database, the location of each interstitial position of each hotspot, the direction of the interparticle axis of the respective hotspot, and the electromagnetic near field intensity of the respective hotspot with the substrate identification number. Moskovits et al. (US Patent No. 7,898,658 B2) has similar teachings and deficiencies as Xie.
Suh et al. (US 2013/0029360 A1), hereinafter Suh, teaches a method comprising coating a glass substrate with gold nanoparticles, applying a Raman active dye to the glass substrate having the gold nanoparticles, performing SERS spectroscopy of the glass substrate coated with dyed gold nanoparticles, identifying hotspots located at interstitial locations between two adjacent nanoparticles from the SERS measurements, and identifying an interparticle axis and the Raman scattering intensity between adjacent nanoparticles (Suh: paragraphs 0010, 0031-0032, 0062, 0076, 0078, Fig. 1 and 4). While Suh discuses interparticle axes/junctions between adjacent nanoparticles, Suh is silent as to whether the directions of the interparticle axes are identified. Further, while Suh mentions the capture and storage of SERS data, Suh does not teach, among other elements, mapping for each functionalized glass substrate coated with dyed immobilized gold nanoparticles, by a computing device, a location of each interstitial position of each hotspot, the direction of the interparticle axis of the respective hotspot, and the electromagnetic near field intensity of the respective hotspot; assigning a substrate identification number to each glass substrate coated with dyed immobilized gold nanoparticles; and storing, in a database, the location of each interstitial position of each hotspot, the direction of the interparticle axis of the respective hotspot, and the electromagnetic near field intensity of the respective hotspot with the substrate identification number. Halas et al. (US 2010/0022020 A1) has similar teachings and deficiencies as Suh.
Gwo et al. (US 2017/0261434 A1), hereinafter Gwo, teaches a method for forming SERS substrates comprising coating a glass substrate with gold nanoparticles from a colloidal solution, applying a Raman active dye to the glass substrate of gold nanoparticle, and performing SERS spectroscopy of the glass substrate coated with the dyed gold nanoparticles (Gwo: abstract, paragraphs 0013, 0027-0031, 0043-0056). Gwo does not teach, among other elements, identifying for each functionalized glass substrate coated with dyed immobilized gold nanoparticles, a direction of an interparticle axis between the two adjacent dyed immobilized gold nanoparticles and an electromagnetic near field intensity of the high intensity scattering along the direction of the interparticle axis for each hotspot; mapping for each functionalized glass substrate coated with dyed immobilized gold nanoparticles, by a computing device, a location of each interstitial position of each hotspot, the direction of the interparticle axis of the respective hotspot, and the electromagnetic near field intensity of the respective hotspot; assigning a substrate identification number to each glass substrate coated with dyed immobilized gold nanoparticles; and storing, in a database, the location of each interstitial position of each hotspot, the direction of the interparticle axis of the respective hotspot, and the electromagnetic near field intensity of the respective hotspot with the substrate identification number. Yap et al. (US 2013/0045877 A1), Pi et al. (US 2021/0147288 A1, of record), and Hossain et al. (US Patent No. 10,161,874 B2, of record) have similar teachings and deficiencies as Gwo.
Farcau et al. (Farcau, Cosmin, and Simion Astilean. "Mapping the SERS efficiency and hot-spots localization on gold film over nanospheres substrates." The Journal of Physical Chemistry C 114.27 (2010): 11717-11722.), hereinafter Farcau, teaches a method for functionalizing substrates for SERS spectroscopy comprising coating a glass substrate with gold nanoparticles, performing SERS spectroscopy, identifying hotspots from the SERS spectroscopy, identifying field intensities, and mapping the locations of the hotspots with the field intensity (see Farcau abstract, Fig. 3-5, and pg. 11718-11720). However, Farcau does not teach, among other elements, identifying for each functionalized glass substrate coated with dyed immobilized gold nanoparticles, a direction of an interparticle axis between the two adjacent dyed immobilized gold nanoparticles and an electromagnetic near field intensity of the high intensity scattering along the direction of the interparticle axis for each hotspot; mapping for each functionalized glass substrate coated with dyed immobilized gold nanoparticles, by a computing device, a location of each interstitial position of each hotspot, the direction of the interparticle axis of the respective hotspot, and the electromagnetic near field intensity of the respective hotspot; assigning a substrate identification number to each glass substrate coated with dyed immobilized gold nanoparticles; and storing, in a database, the location of each interstitial position of each hotspot, the direction of the interparticle axis of the respective hotspot, and the electromagnetic near field intensity of the respective hotspot with the substrate identification number. Wang et al. (Wang, Xiang, et al. "Probing the location of hot spots by surface-enhanced Raman spectroscopy: toward uniform substrates." ACS nano 8.1 (2014): 528-536.) and Qi et al. (Qi, Z.; Akhmetzhanov, T.; Pavlova, A.; Smirnov, E., “Reusable SERS Substrates Based on Gold Nanoparticles for Peptide Detection”, Sensors (2023), 23, 6352.) have similar teachings and deficiencies as Farcau.
Additionally, the remaining references cited on applicant’s information disclosure statement, that are not specifically mentioned above, have been considered by the examiner. None of these references teach the bolded and/or underlined limitations outlined above, in combination with the remaining limitations from the claim.
Therefore, for the reasons outlined above, claim 1 is indicated as having allowable subject matter. Claims 2-8 depend on claim 1 and are therefore also indicated as having allowable subject matter.
Regarding claim 19, the prior art of record, taken alone or in combination, neither anticipates nor renders obvious a system for functionalizing glass substrates for use in detecting target molecules with near field surface-enhanced Raman scattering (SERS) spectroscopy, comprising: a glass substrate coated with immobilized gold nanoparticles, wherein each glass substrate has an identification number; a coating of Raman-active dye configured to adhere to the molecule in the target analyte, wherein the coating of Raman-active dye is applied by spin coating; an aperture near-field scanning optical microscope (a-NSOM) configured to perform near field SERS spectroscopy of each functionalized glass substrate coated with the dyed immobilized gold nanoparticles; and a computing device connected to the a-NSOM, wherein the computing device includes electrical circuitry, a memory configured to store program instructions and at least one processor configured to execute the program instructions to identify, for each functionalized glass substrate coated with the dyed immobilized gold nanoparticles, positions of hotspots which produce high intensity scattering from the dyed immobilized gold nanoparticles, wherein each hotspot is located at an interstitial position between two adjacent dyed immobilized gold nanoparticles, wherein the a-NSOM is further configured to perform sheer force measurements simultaneously with the near-field SERS spectroscopy and generate a contour map configured to show interparticle axes between the two adjacent dyed immobilized gold nanoparticles of each hotspot, wherein the a-NSOM is further configured to measure an electromagnetic near field intensity along the interparticle axes of each hotspot, wherein the computing device is further configured to identify a direction of the interparticle axis between the two adjacent dyed immobilized gold nanoparticles of each hotspot based on the contour map; and a database connected to the computing device, wherein the database is configured to store the identification number of each glass substrate, the position of each hotspot, the direction of the interparticle axis between the two adjacent dyed immobilized gold nanoparticles of each hotspot, the electromagnetic near field intensity along the interparticle axes of each hotspot and the contour map (emphasis added via bolded words, extra emphasis added via underlined words).
Claim 19 recites similar limitations to the limitations indicated as allowable subject matter in claim 1. Additionally, none of the prior art recited above teaches or suggests the a-NSOM is further configured to perform sheer force measurements simultaneously with the near-field SERS spectroscopy and generate a contour map configured to show the interparticle axes of each hotspot in combination with a database connected to the computing device, wherein the database is configured to store the identification number of each glass substrate, the position of each hotspot, the direction of the interparticle axis between the two adjacent dyed immobilized gold nanoparticles of each hotspot, the electromagnetic near field intensity along the interparticle axes of each hotspot and the contour map.
Therefore, for the reasons outlined above, claim 19 is indicated as having allowable subject matter. Claim 20 depends on claim 19 and is therefore also indicated as having allowable subject matter.
Note that the allowability of the aforementioned claims depends on the resolution of all objections and rejections presented above.
Examiner Note
A statement on the status of claim 17 in view of the prior art is not made at this time in light of the provisional statutory double patenting and the 35 U.S.C. § 112(b) rejections outlined above.
Conclusion
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/NOAH J. HANEY/ Examiner, Art Unit 2877
/MICHELLE M IACOLETTI/ Supervisory Patent Examiner, Art Unit 2877