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 of Group I, Claims 1-10, in the reply filed on 12/1/2025 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)).
Claims 11-22 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/1/2025.
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 6-7 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 6 recites that “the nanowires are irregularly distributed” while claim 7 recites that “the nanowires are regularly distributed,” however, in looking to the specification as to what would be considered “regularly” distributed versus “irregularly” distributed, it is noted that the claims nor the specification clearly define what is considered “regularly” distributed versus “irregularly” distributed other than referring to Fig. 2B for “irregularly distributed” nanowires and Fig. 4 for “regularly distributed” nanowires (both figures copied below), wherein Paragraph 0036 specifically recites, “Please refer to FIG. 4, a signal enhancement structure 100a of the present embodiment is similar to the signal enhancement structure 100 of FIG. 2B, and the difference between the two is that the nanowires 110 of the signal enhancement structure 100a are regularly distributed, such as arranged in various geometric shapes” (emphasis added).
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However, given that claim 1, from which claims 6 and 7 depend, recites that “an included angle of the nanowires is varied in planes perpendicular to the first direction, the second direction, and the third direction” (emphasis added), wherein such limitation is discussed in the specification in Paragraph 0031 with respect to FIG. 2B, which shows the included angles θ of two nanowires (110) as being different, such that the limitation of the varied angles between the nanowires in the planes perpendicular to the first direction, the second direction, and the same direction appears to be the same as stating that the nanowires are “irregularly distributed”. Hence, if the included angle of the nanowires is required to be varied as recited in claim 1 which is the same as saying the nanowires are “irregularly distributed”, it is unclear how the “irregularly distributed” limitation of claim 6 differs from the varied angle limitation of claim 1, from which claim 6 depends, and also unclear how the nanowires could be “regularly distributed” as claim 7 if the included angle between nanowires is required to be varied in a manner as recited in claim 1, from which claim 7 depends. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
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.
Claims 6-7 are 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. As noted above, claim 6 recites that “the nanowires are irregularly distributed” while claim 7 recites that “the nanowires are regularly distributed,” however, given that claim 1 recites that “an included angle of the nanowires is varied in planes perpendicular to the first direction, the second direction, and the third direction” (emphasis added), which as discussed above is the same as the nanowires being “irregularly distributed”, claim 6 does not further limit claim 1 while claim 7 appears to contradict the varied angle limitation of 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.
Claims 1, 2, 6-8, and 10 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Jung (WO2020/017797A1, also printed as US 2021/0247319 A1, please refer to the US document for the below cited sections).
As discussed in detail in the parent application (17/366,029), Jung discloses a surface-enhanced Raman scattering (SERS) patch and an attachable sensor using the same wherein the SERS patch allows continuous monitoring of drug administration and harmful substance detection to be accurately and easily performed (Abstract). Jung discloses that the SERS patch comprises a metal-containing nanostructure layer (20) formed on a film (10) configured to allow penetration of detection-target molecules T, including in any of solid, liquid, and gaseous states (Paragraph 0074, e.g., “particle of the specimen”) through the film (10) and into the metal-containing nanostructure (20) as shown in Fig. 1 for detection thereof with a Raman laser as shown in Fig. 7D; wherein the metal-containing nanostructure layer (20) is desirably composed of nanowires (22) stacked in irregular directions to form multiple cross points, as shown in Fig. 4B (copied below), thereby forming nanogaps near the cross points that act as hot spots that generate plasmon resonance and greatly facilitate Raman signal enhancement during irradiation, and given that the irregularly-oriented metal-containing nanowires (22) do not have a certain directionality, “there is the advantage that the results of analyses using Raman signals are largely independent of the direction of the laser” (Entire document, particularly Paragraphs 0011-0014, 0026, 0037, 0054, 0074, 0080; reading upon the claimed “signal enhancement structure comprising: a plurality of nanowires stacked in a first direction, a second direction, and a third direction, wherein the nanowires are extended along at least two directions, an included angle of the nanowires is varied in planes perpendicular to the first direction, the second direction, and the third direction, and a particle of the specimen is on the nanowires or in a gap among the nanowires or the nanowires are on the specimen” as in instant claim 1).
Fig. 4B of Jung
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Jung discloses that “hot spots can be formed vertically and can be formed horizontally” and that “[w]hile increasing the thickness to which the metal-containing nanowires 22 are stacked can enhance the Raman signals, the effect of the Raman signals enhancement can become negligible beyond a particular thickness” (Paragraph 0081), and that thus the metal-containing nanostructure layer (20) can have a thickness of 1 nm to 1 µm (fully encompassing the claimed thickness range of from 350 nm to 550 nm with respect to the “film layer” of nanowires as recited in instant claim 1), wherein “smaller than 1 nm can make it difficult for the metal-containing nanostructure layer 20 to sufficiently absorb the detection-target molecules T, while a thickness greater than 1 µm would no longer yield a meaningful increase in the Raman signals enhancement with increased thickness” (Paragraph 0082; reading upon “wherein the nanowires are stacked in the third direction to form a film layer, the third direction is a thickness direction of the film layer, the first direction and the second direction are both perpendicular to the third direction and a thickness of the film layer in the third direction ranges from 350 nanometers to 550 nanometers”). Jung discloses that the metal-containing nanostructure 20 can be composed of one or more types of nanoparticles and nanowires having diameters of 5 to 100 nm (Paragraph 0083), and given that Jung specifically discloses examples wherein the metal-containing nanostructure layer (20) is composed of silver nanowires (as in instant claim 10) coated from a dispersion as in Fig. 2B, with one example having a thickness of the silver nanowire nanostructure layer (20) of about 240 nm as shown in Fig. 5A (copied below, see particularly the thickness measurement to the far right), and another example having a thickness of the silver nanowire nanostructure layer of about 280 nm as shown in Fig. 5B (copied below, see thickness measurement to the far right), the Examiner takes the position that Jung discloses the claimed invention with sufficient specificity to anticipate instant claims 1 and 10.
Fig. 5A of Jung
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Fig. 5B of Jung
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With respect to instant claim 2, Jung discloses that the detection-target molecules T of a certain size or smaller penetrate into the nanostructure layer 20 which has a thickness to sufficiently absorb the detection-target molecules T (Entire document, particularly Paragraphs 0078, 0082, 0116, and 0137; Fig. 1), and given that the nanowires of the nanostructure layer 20 are stacked in irregular directions with nanogaps formed vertically and horizontally, as discussed above, such that a distance of a given detection-target molecule would inherently have different distances from different nanowires in the third or thickness direction as instantly claimed, the Examiner takes the position Jung anticipates instant claim 2.
With respect to instant claim 6, as noted above, Jung discloses that the nanowires are stacked in irregular directions (Paragraph 0080) and as shown in Figs. 4A-B, are irregularly distributed as instantly claimed and hence Jung anticipates instant claim 6.
With respect to instant claim 7, given the lack of clarity thereof as discussed in detail above and that Jung discloses that the operation of forming the metal-containing nanostructure layer 20 can include placing and coating a metal-containing nanostructure dispersion over the protein film 10 as shown in Figs. 2A-2B, e.g., by drop casting, spraying, or spin coating, such that the nanowires are irregularly oriented in different directions as discussed above but “regularly distributed” over the entire surface of the protein film as shown in Figs. 1-2 and 4-5 (Paragraph 0107-0111), the Examiner takes the position that Jung anticipates instant claim 7, particularly given the lack of clarity thereof.
With respect to instant claim 8, given that nanowires in general are inherently either straight or non-straight, i.e. curved, Jung anticipates the broadly claimed invention as recited in instant claim 8.
With respect to instant claim 10, Jung specifically discloses silver nanowires as noted above, and also discloses that the metal of the metal-containing nanostructure layer may be gold (Au) or platinum (Pt), thereby anticipating instant claim 10 (Paragraphs 0021, 0084, 0109, 0128, and 0132; Claim 8).
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.
Alternatively, claims 1, 2, 6-8, and 10 as well as claims 3-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Jung, as applied to claims 1, 2, 6-8, and 10 above and further discussed below.
The teachings of Jung are discussed in detail above and although the Examiner is of the position that the reference is anticipatory with respect to claims 1, 2, 6-8, and 10 for the reasons discussed in detail above wherein it is again noted that Jung clearly teaches a thickness of the metal-containing nanostructure (20), i.e., of metal nanowires and/or nanoparticles, from 1 nm to 1 µm, with data points at about 240 nm and 280 nm for a nanostructure (20) formed of silver nanowires, the Examiner alternatively takes the position that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize any thickness within the range taught by Jung, and more specifically, given that Jung teaches that for a given detection patch system, increasing the thickness to which the metal-containing nanowires 22 are stacked can enhance the Raman signal, but that the effect of the Raman signal enhancement can become negligible beyond a particular thickness, e.g., a thickness at which the increase in Raman signals is saturated, one skilled in the art would have been motivated to determine the optimum thickness of a particular nanostructure (20) for a given system to optimize the signal enhancement as taught by Jung (Entire document, particularly Paragraphs 0081-0084 and 0117). Hence, absent any clear showing of criticality and/or unexpected results with respect to the narrower thickness range of from 350 nm to 550 nm as recited in instant claim 1 over the broader thickness range taught by Jung that fully encompasses the claimed range, the Examiner takes the position that the claimed invention as recited in instant claims 1, 2, 6-8, and 10 (alternatively) would have been obvious over the teachings of Jung given that a prima facie case of obviousness exists where the claimed ranges lie inside ranges disclosed by the prior art.
With respect to instant claim 3, Jung teaches that the metal-containing nanostructure layer (20) is desirably composed of nanowires (22) stacked in irregular directions to form multiple cross points thereby forming nanogaps near the cross points that act as hot spots that generate plasmon resonance and greatly facilitates Raman signal enhancement as discussed above, and although Jung teaches that the sizes and density of the metal-containing nanowires (22) can be adjusted such that the metal-containing nanowires (22) form the nanogaps with adjacent metal-containing nanowires (22) to induce surface plasmon resonance, wherein adjusting the density or thickness can be achieved with various factors, particularly the concentration of metal-containing nanowires (22) within the dispersion used to form the metal-containing nanostructure layer (Paragraphs 0080, 0114-0115), with an example utilizing 20-25nm diameter silver nanowires in a concentration of 0.15wt% ethanol dispersion applied at a coating weight of 35 µL/cm2, Jung does not teach a ratio of a width of a largest gap to a smallest gap among the nanowires within a range of 50 to 2000 as instantly claimed. However, given that Jung teaches that the sizes and density of the nanowires can be varied to form the nanogaps, wherein the nanowires have a diameter of 5 to 100 nm and a length of 1~30 µm, and can be provided in a nanostructure layer thickness of up to 1 µm (Claims 4-7) by spraying a dispersion of the nanowires (e.g., as in the instant invention) to provide a random or irregular structure (e.g., as in the instant invention), with Fig. 4B being a scanning electron microscopy image of an example nanowire layer depicting nanogaps as small as one nanowire width apart, e.g. 5 to 100nm, which at a width of 5 nm for the smallest “nanogap” and a ratio of 2000 as instantly claimed would equate to a width of a largest gap of 10 microns, e.g., much greater than the size of a “nanogap” or a thickness of the nanostructure, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize routine experimentation to determine the optimum size and density of the nanowires to provide the desired sizes of nanogaps that act as hot spots as taught by Jung wherein given the above teachings and SEM image disclosed by Jung, a ratio as instantly claimed would have been obvious to one having ordinary skill in the art. Thus, the invention as recited in instant claim 3 would have been obvious over the teachings of Jung, particularly given the absence of any clear showing of criticality and/or unexpected results with respect to the claimed ratio.
With respect to instant claims 4-5 and 9, Jung teaches that the metal-containing nanostructure layer can be composed of one or more types of nanoparticles and nanowires, and thus it would have been obvious to one having ordinary skill in the art to utilize any combination of nanoparticles and nanowires, including a composite or layered structure thereof given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results, thereby reading upon the broadly claimed “further comprising a plurality of nanoparticles, wherein the nanowires are stacked on the nanoparticles” as recited in instant claim 4, and hence rendering instant claim 4 obvious over the teachings of Jung. Similarly, given that Jung also teaches that the nanoparticles can be of various shapes such as spheres, triangles, stars, etc., wherein nanoparticles in the shape of “stars” would read upon and/or suggest the broadly claimed “nano-dendrimers” of instant claim 5, the claimed invention as recited in instant claim 5 would have been obvious over the teachings of Jung for similar reasons as discussed above with respect to instant claim 4 when the nanoparticles are nanoparticle “stars” and given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. Lastly, with respect to instant claim 9, it is again noted that Jung teaches that the metal-containing nanostructured layer can be composed of one or more types of nanoparticles and nanowires, and given that Jung teaches that the shape of the nanoparticles is not particularly limited and that the instant specification does not limit the “chip” to any particular type, structure, or shape, wherein a nanoplatelet or “chip” shape is an obvious species of particle shape in the art, the claimed invention as broadly recited in instant claim 9 would have been obvious over the teachings of Jung for generally the reasons discussed above with respect to instant claim 4 and further given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR2018/0069980A, please see attached machine translation for the below cited sections). Kim teaches a surface enhanced Raman scattering (SERS) substrate for detecting target substances, having improved selectivity and sensitivity for target material detection (Paragraph 0001), wherein the SERS substrate comprises a supporting substrate (110), a network of metal-containing nanowires (120) supported by the substrate (110) and formed by stacking metal-containing nanowires (120) thereon, and bacteriophage (140) that can be applied to the metal-containing nanowires (120) as shown in Figs. 2(a) and 6, or mixed into the metal-containing nanowires (120) network as shown in Figs. 1(a) and 4, to provide selectivity and sensitivity to the target material to the entire substrate (110); and further, nanoparticles (130) can be formed on the bacteriophage (140) and/or on the metal-containing nanowires (120) to further enhance or amplify the SERS signal due to a multidimensional Raman signal enhancement effect, e.g., resulting from a combination of a nanogap(s) between metal-containing nanowires (120), a nanogap(s) between metal-containing nanoparticles (130) formed on the metal-containing nanowires (120) and bacteriophage (140), and a nanogap(s) between metal-containing nanoparticles (130) formed on bacteriophage (140), into which an analyte can be adsorbed and detected (Entire document, particularly Paragraphs 0017, 0037, 0103, 0123, 0127, 0135, 0218, 0222, 0224, 0230, and 0232). Kim teaches that the bacteriophage (140) has target substance detection selectivity (Paragraph 0011), and in one embodiment may be M13 bacteriophage which “is a filamentous bacteriophage composed of a long cylindrical protein coat with a circular single-stranded DNA, and has a structure of approximately 880 nm in length and approximately 8 nm in diameter” (Paragraph 0113; thus also a “nanowire”). Kim teaches that the metal-containing nanowires (120) and bacteriophages (140) are accumulated in an irregular direction on the substrate (110) to form a plurality of cross points or intersections, with nanogaps formed nearby these intersections, resulting in numerous hotspots that cause plasmon resonance formed near the intersection and in the nanogap, both vertically and horizontally, so that the Raman signal can be enhanced when irradiated with light; and that the metal-containing nanowires (120) are laminated thickly to enhance the Raman signal, wherein given that the Raman signal does not increase significantly beyond a certain thickness, this thickness can be recorded and set to be utilized in the manufacturing process such that the thickness at which the metal-containing nanowires (120) and bacteriophage (140) are accumulated is greater than this preset thickness at which the signal increase is saturated (Paragraphs 0046-0047, 0088, 0138, 0141, and 0184).
Kim teaches that the thickness as well as the density at which the metal-containing nanowires (120) and the bacteriophage (140) are accumulated can be controlled by using the concentration of the nanowires (120) and bacteriophage (140) in solution (200) and the filtration amount of the solution (200) during the manufacturing process (Paragraphs 0186 and 0188), while the nanoparticles (130) can be formed by vacuum depositing a Raman-active material and may have a diameter of 2 to 500 nm (Paragraphs 0165 and 0167). Kim also teaches that in one embodiment, the wavelength of the plasmon resonance may be controlled by using at least one of the material, diameter, and length of the metal-containing nanowire and metal containing-nanoparticle (Paragraphs 0051 and 0190); wherein the metal of the metal-containing nanowire (120) and the metal-containing nanoparticles (13) may be any of the metals as recited in Paragraph 0163 or alloys thereof, with the nanowires preferably of silver and the nanoparticles preferably of gold or silver (Paragraph 0163).
Hence, with respect to the claimed invention as recited in instant claim 1, Kim teaches a signal enhancement structure configured to enhance a signal of a specimen, the signal enhancement structure comprising a plurality of nanowires, e.g., nanowires (120) and bacteriophage (140), stacked in a first direction, a second direction, and a third direction, wherein the nanowires are extended along at least two directions (as shown in the figures), an included angle of the nanowires is varied in planes perpendicular to the first direction, the second direction, and the third direction (as shown in the figures, and given that each of the nanowires (120) and bacteriophage (140) are accumulated in irregular directions forming a network structure), and a target substance, or “particle of the specimen”, is on the nanowires or in a gap among the nanowires or the nanowires are on the specimen, and wherein the nanowires are stacked in a third direction to form a film layer (network structure of accumulated thickness), the third direction is a thickness direction of the film layer, the first direction and the second direction are both perpendicular to the third direction (as shown in the figures and discussed above), and although Kim teaches that the thickness of the accumulated network structure as the claimed “film layer” is greater than a thickness at which the increase in the Raman signal of the SERS substrate is saturated, Kim does not specifically limit the thickness to a range from 350 nanometers to 550 nanometers as in instant claim 1. However, given that Kim teaches that the accumulated thickness can be greater than a preset or saturation thickness and that the metal-containing nanoparticles (130) which can be present in the accumulated thickness may have a diameter of 2 to 500 nm, it would have been obvious to one having ordinary skill in the art before the effective filing date to utilize routine experimentation to determine the optimum thickness for a particular signal enhancement system as taught by Kim, wherein a thickness on the same order of magnitude or greater than the diameter of the nanoparticles which can be present as part of the thickness would have been obvious to one having ordinary skill in the art and would render the claimed range of from 350 nanometers to 550 nanometers obvious to one skilled in the art. Hence, absent any clear showing of criticality and/or unexpected results with respect to the claimed range, the claimed invention as recited in instant claim 1 would have been obvious over the teachings of Kim.
With respect to instant claim 2, Kim teaches that in one embodiment, the formation of nano-gaps can be concentrated on the surface portion of the SERS substrate (100) wherein by limiting the Raman scattering effect and target material capture to the outermost surface of the SERS substrate (100), the Raman signal enhancement and target material concentration effect can be improved (Paragraph 0135), and hence, a target material captured at the outermost surface of the SERS substrate (100) would have different distances from different nanowires in the third or thickness direction as in instant claim 2. Additionally, given that Kim teaches that the nanogaps and/or hotspots may be formed throughout the accumulated thickness of the nanowires in both the vertical and horizontal directions as discussed above and illustrated in the figures such that an analyte or target material located or placed at a given nanogap or hotspot point would have different distances from different nanowires in the third direction as instantly claimed, the claimed invention as recited in instant claim 2 would have been obvious over the teachings of Kim.
With respect to instant claim 3, given that the nanowires (120) and bacteriophage (140) are accumulated in irregular directions forming a network structure as taught by Kim wherein the resulting nanogaps are of various sizes and formed throughout the accumulated thickness as discussed above and illustrated in the figures, the nanogaps may range in size providing bigger and smaller nanogaps as in the instantly claimed invention, and although Kim does not specifically teach or limit a ratio of a largest gap to a smallest gap within a range of 50 to 2000 as instantly claimed, given that the width of a smallest “nanogap” may be 1 nm or may be controlled by the size of the nanoparticles (130), e.g., 2 to 500 nm, while the width of the largest gap may be controlled by the accumulated thickness, or more particularly, by the size/length of the bacteriophage (140), e.g., approximately 880 nm for a ratio falling within and/or overlapping the claimed range, and/or nanowires (120) which is not particularly limited but is long enough to not allow them to pass through pores in the substrate (Paragraphs 0088, 0182) and are depicted as being about 2 to 3 times longer than the bacteriophage (140), thus also suggesting a ratio falling within and/or overlapping the claimed range, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 3 would have been obvious over the teachings of Kim wherein one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to determine the optimum size, concentration, and filtration amount of the nanowires (120) and bacteriophage (140) to provide nanogaps of a desired size for a particular analyte or target material to be adsorbed into said nanogaps.
With respect to instant claims 4-5 and 9, Kim teaches nanoparticles as instantly claimed and given that the nanoparticles are present on the nanowires and/or bacteriophage and that additional nanowires and/or bacteriophage are stacked upon previously deposited nanowires and/or bacteriophage as discussed above and depicted in the figures such that the latter deposited nanowires are stacked on the previously deposited nanoparticles, the claimed invention as recited in instant claim 4 would have been obvious over the teachings of Kim. Further, given that Kim does not specifically limit the type or shape of metal nanoparticles as utilized for the metal-containing nanoparticles (130) and that metal nanoparticles in the form of metal dendrimer particles or in the form of chips is known in the art such that the claimed “nano-dendrimers” and “nanostructure chip” are obvious species of metal-containing nanoparticles in the art, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 5 and 9 also would have been obvious over the teachings of Kim, particularly given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claims 6 and 7, given the lack of clarity thereof as discussed in detail above, and that Kim clearly teaches that the metal-containing nanowires (120) and bacteriophages (140) are accumulated in an irregular direction on the substrate (110) to form a plurality of cross points or intersections, with nanogaps formed both vertically and horizontally, as discussed in detail above, such that the nanowires (120) and bacteriophage (140) do not have a constant orientation as shown in the figures, and thus are “irregularly distributed” within the network structure which is “regularly distributed” over the substrate (110) surface, the Examiner takes the position that the claimed invention as recited in instant claims 6 and 7 would have been obvious over the teachings of Kim, particularly given the lack of clarity thereof (Entire document, particularly Paragraphs 0045, 0147, 0184, Figures).
With respect to instant claim 8, given that nanowires in general are either curved or straight, with Kim depicting the metal-containing nanowires as straight nanowires in the figures, the claimed invention as recited in instant claim 8 would have been obvious over the teachings of Kim.
With respect to instant claim 10, as noted above, Kim teaches that the metal-containing nanowires may be formed of any of the metals recited in Paragraph 0163, including silver (Ag), gold (Au), platinum (Pt), and alloys thereof (as in instant claim 10), but are preferably silver nanowires, thereby rendering the claimed invention as recited in instant claim 10 obvious over the teachings of Kim.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jung or Kim, as applied above, and in further view of Chen (Layer-by-Layer Assembly of Ag Nanowires into 3D Woodpile-like Structures to Achieve High Density “Hot Spots” for Surface-Enhanced Raman Scattering). The teachings of Jung or Kim are discussed in detail above and incorporated herein by reference, and although Jung teaches a broad thickness range of 1 nm to 1 µm (1000 nm) encompassing the claimed 350 to 550 nm thickness for the metal-containing nanostructure (20), as the claimed film layer of stacked nanowires, with data points at about 240 nm and 280 nm for a nanostructure (20) formed of silver nanowires, while Kim does not specifically limit the thickness of the network of nanowires (120) and bacteriophage (140) to any particular range, with both teaching that the thickness of the stacked metal nanowires can be increased to enhance the Raman signal up to a saturation thickness at which the effect of the Raman signal enhancement becomes negligible or is no longer significant, and hence, the Examiner again notes that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize routine experimentation to determine the optimum thickness for a particular detection system as taught by Jung or Kim. Further, Chen teaches a similar SERS substrate as in Jung or Kim, comprising silver (Ag) nanowires stacked into a three-dimensional (3D) structure forming SERS hot spots, wherein Chen specifically teaches that the SERS enhancement factor increases from 3.1 x 103 to 2.6 x 104 as the assembled Ag nanowire layer increases from a single monolayer (1L) to three layers (3L), respectively, and that the SERS signals plateau off when the number of layers increases from three (3L) to five (5L), “which can be attributed to limited laser penetration depth” (Entire document, particularly Abstract, Fig. 3, Conclusions), with the experiments conducted utilizing a confocal Raman imaging system with a YAG laser (power output = 50 mW) with a laser excitation wavelength of 532 nm (measurement power of 0.36 mW) as recited in the Experimental Details section. More specifically, Chen teaches that the 1L-5L Ag nanowire layers exhibit average thicknesses of ~70, ~155, ~241, ~320, and ~390 nm, respectively; and although Chen provides the nanowires in a dense, 3D woodpile-like structure or array of parallel and vertically stacked nanowires as shown in Fig. 2, i.e., “regularly distributed” as in instant claim 7, to achieve a high density of hot spots across the entire 3D SERS substrate arising from vertical and lateral gaps within the woodpile layers (similar to the hot spots and gaps of Jung or Kim), and providing a homogeneous SERS Raman intensity over a large area (Entire document, particularly Abstract, Results and Discussion, and Conclusions), as opposed to the irregularly distributed nanowire structures of Jung or Kim, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a similar experimentation process as in Chen to determine the saturation or “plateau” thickness in the invention taught by Jung or Kim, when utilizing a similar Raman system as in Chen, and given that Chen teaches that the saturation of the Raman signal in the higher layers is caused by the limited penetration depth of the confocal laser beam into the closely packed Ag nanowires (Results and Discussion), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a similar thickness as the 5L thickness, ~390 nm, taught by Chen for a similarly dense silver nanowire network/nanostructure and similar Raman laser system in the teachings of Jung or Kim given that as discussed in detail above, each teaches that the thickness can be set to be greater than the saturation thickness.
Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-10 would have been obvious over the teachings of Jung or Kim, in further view of Chen.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787