DETAILED ACTION
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 of Group I in the reply filed on 12/4/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Status of the Application
Claim(s) 1-20 is/are pending.
Claim(s) 6-9, 15-19 is/are withdrawn.
Claim(s) 1-5, 10-14, 20 is/are rejected.
Information Disclosure Statement
Priority document 63/400321 filed 8/23/22 appears to be a combination of two documents. First, figures (page 1-5 of the document) appear to be the same images eventually reproduced in Chuchuan Hong & Justus C. Ndukaife, Scalable trapping of single nanosized extracellular vesicles using plasmonics, Nature Communications volume 14, (Aug. 9, 2023). However pages 6-35 of the priority document appear to be excerpts from a larger PowerPoint presentation. Examiner was unable to locate this document in the IDS or through a database search. To assist in efficient examination, examiner respectfully requests that this entire presentation be shared, including the date(s) it was disseminated and/or presented.
The Examiner would like to note the latest Information Disclosure Statement (IDS) submittals are extremely long. By an initial estimate, it includes 1242 pages of NPL documents alone. Some of them (e.g. page 261 of the Jackson E&M textbook) are presented without context. The Examiner has considered all of the references submitted as part of the Information Disclosure Statements, based upon the time and resource constraints set forth by office examination procedures, but has not found most of them to be particularly relevant. If Applicant is aware of particularly pertinent material in the references, he/she should so state in a response to this Office action. Applicant is reminded of section 2004, paragraph 13, of the MPEP:
It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff ’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-5, 10-14, 20 is/are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 8-10, 12-15 of US 11823807 B2 (hereinafter patent 807). Although the conflicting claims are not identical, they are not patentably distinct from each other because the different configurations of nanohole arrays would have been obvious variations of each other as a routine skill in the art to obtain a desired size for the trapping region.
Claims 1-5, 10-14, 20 is/are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim(s) 12-14, 19 of US 10656311 B2 (hereinafter patent 311). Although the conflicting claims are not identical, they are not patentably distinct from each other because the different configurations of nanohole arrays would have been obvious variations of each other as a routine skill in the art to obtain a desired size for the trapping region.
Claim Rejections – 35 U.S.C. § 101
35 U.S.C. 101 reads as follows:
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Claim(s) 1-5, 10-14, 20 is/are rejected under 35 U.S.C. § 101.
The claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because under their broadest reasonable interpretation, the claim(s) can be directed to naturally occurring phenomenon, as discussed in the § 102 rejection in view of Hu, as discussed below.
Claim Rejections – 35 U.S.C. § 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 –
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Claim(s) 1, 11 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Hu et al., In situ 3-D mapping of pore structures and hollow grains of interplanetary dustparticles with phase contrast X-ray nanotomography, Meteoritics & Planetary Science 51, Nr 9, 1632-1642 (2016).
Regarding claim 1, Hu teaches a nanotweezer comprising:
a first electrode (e.g. a metal ore in space);
a second electrode (e.g. another metal ore on earth struck by lightning) including a central region (ore) surrounded by a plurality of nanoholes (inside interplanetary dust, see Hu, abstract);
a fluidic chamber (e.g. earth’s atmosphere) between the first electrode and the second electrode; and
a voltage source (lightning) configured to generate an electric field between the first electrode and the second electrode (natural result of being struck by lightning).
Claim 11 is rejected for similar reasons as claim 1.
Claim(s) 1-5, 10-14, 20 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Ndukaife (US 20200241177 A1).
Regarding claim 1, Ndukaife teaches a nanotweezer comprising:
a first electrode (see e.g. fig 3: 322);
a second electrode (see e.g. 312) including a central region (region without nanoholes) surrounded by a plurality of nanoholes (see e.g. fig 7, [0040]);
a fluidic chamber (see 330) between the first electrode and the second electrode; and
a voltage source (see 340) configured to generate an electric field between the first electrode and the second electrode (see e.g. claim 1).
Regarding claim 2, Ndukaife teaches the plurality of nanoholes includes a circular array of nanoholes surrounding the central region (see Ndukaife, fig 7).
Regarding claim 3, Ndukaife teaches the circular array of nanoholes includes nanoholes arranged in concentric circles around the central region (see Ndukaife, fig 7).
Regarding claim 4, Ndukaife teaches the plurality of nanoholes includes a square array of nanoholes surrounding the circular array of nanoholes (see Ndukaife, fig 7).
Regarding claim 5, Ndukaife teaches a plasmonic nanocavity (see 313) formed through the central region (see Ndukaife, fig 3); and a light source (see claim 1) configured to illuminate the plasmonic nanocavity with a coherent focused light beam (see laser, e.g. [0037]).
Regarding claim 10, Ndukaife teaches the second electrode includes a plurality of central regions (see e.g. between Ndukaife, fig 7: 710) surrounded by a plurality of nanoholes (see fig 7); each central region is surrounded by a first plurality of nanoholes arranged in concentric circles around each central region (see fig 7); and a second plurality of nanoholes is arranged in a square array around the first plurality of nanoholes (see fig 7).
Regarding claim 11, Ndukaife teaches a method of operating a nanotweezer including:
generating an electric field (see e.g. claim 1) between a first electrode (see e.g. fig 3: 322) and a second electrode (see e.g. 312);
wherein the second electrode includes a central region (region without nanoholes) surrounded by a plurality of nanoholes (see e.g. fig 7, [0040]); and
wherein a fluidic chamber (see 330) is defined between the first electrode and the second electrode (see fig 3).
Regarding claim 12, Ndukaife teaches the plurality of nanoholes includes a circular array of nanoholes surrounding the central region (see Ndukaife, fig 7).
Regarding claim 13, Ndukaife teaches the circular array of nanoholes includes nanoholes arranged in concentric circles around the central region (see Ndukaife, fig 7).
Regarding claim 14, Ndukaife teaches the plurality of nanoholes includes a square array of nanoholes surrounding the circular array of nanoholes (see Ndukaife, fig 7).
Regarding claim 20, Ndukaife teaches the second electrode includes a plurality of central regions (see e.g. between Ndukaife, fig 7: 710) surrounded by a plurality of nanoholes (see fig 7); each central region is surrounded by a first plurality of nanoholes arranged in concentric circles around each central region (see fig 7); and a second plurality of nanoholes is arranged in a square array around the first plurality of nanoholes (see fig 7).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Choi whose telephone number is (571) 272 – 2689. The examiner can normally be reached on 9:30 am – 6:00 pm M-F.
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/JAMES CHOI/Examiner, Art Unit 2881