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 .
The amendment filed 6/2/2026 has been entered. Claims 6-7 have been canceled. Claims 1-5 and 8-22 are pending in the application. Claims 11-22 have been withdrawn from consideration. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Specification
The disclosure is objected to because of the following informalities: “enhacnement” in Paragraphs 0013, 0035, and 0053 is misspelled and should read “enhancement”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 1-5 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jung (WO2020/017797A1, also printed as US 2021/0247319 A1, please again refer to the US document for the below cited sections) for generally the reasons recited in the prior office action and restated below.
As discussed in detail in the prior office action, Jung teaches 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 teaches 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).
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Fig. 4B of Jung
Jung teaches 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 teaches 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 teaches examples wherein the metal-containing nanostructure layer (20) is formed as a single layer (as in amended claim 1) 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 maintains her position that absent any clear showing of criticality and/or unexpected results with respect to the claimed thickness of 350-550 nm over the teachings of Jung, the claimed invention as recited in instant claims 1 and 10 would have been obvious over the teachings of Jung.
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Fig. 5A of Jung
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Fig. 5B of Jung
With respect to instant claim 2, Jung teaches 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 have different distances from different nanowires in the third or thickness direction as instantly claimed, the Examiner maintains her position that the claimed invention as recited in instant claim 2 would have been obvious over the teachings of Jung.
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.
With respect to instant claim 8, given that nanowires in general are either straight or non-straight, i.e. curved, the claimed invention as recited in instant claim 8 would have been obvious over the teachings of Jung.
Claims 1-5 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR2018/0069980A, please again refer to the machine translation for the below cited sections), for generally the reasons recited in the prior office action and restated below.
As discussed in the prior office action, 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, in a single layer (as in amended claim 1), 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; Figs. 1a, 2a-4).
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; as in instant claim 10).
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), with the film layer being a single layer, 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 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 1-5 and 8-10 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) for generally the reasons recited in the prior office action and restated below.
The teachings of Jung or Kim are discussed in detail above and incorporated herein by reference, wherein it is again noted that Jung teaches a broad thickness range of 1 nm to 1 µm (1000 nm) fully 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 limit the thickness of the network of nanowires (120) and bacteriophage (140) to any particular range, and given that both references teach 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 (e.g., clearly teaching that the thickness is a result-effective variable that can be optimized), 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, 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 1-5 and 8-10 would have been obvious over the teachings of Jung or Kim, in further view of Chen.
Response to Arguments
Applicant's arguments filed 6/2/2026 have been fully considered but they are not persuasive with respect to the obviousness rejections over Jung or Kim. With respect to the teachings of Jung, the Applicant argues that the claimed thickness of “350 nanometers to 550 nanometers” is narrower than the 1 nm to 1 µm range of Jung, and allegedly “has criticality and achieves an unexpected result,” wherein each of paragraphs [0013] and [0053] recites that “since the thickness of the film layer ranges from 350 nanometers to 550 nanometers, the single enhacnement [sic] is more significant” which is allegedly “the unexpected result and [allegedly] can be proved by the data of FIGs 10A and 10B” (see page 9 of the response). However, the Examiner first notes that aside from the first data points at “1L”, the data presented in Figs. 10A and 10B correspond to the embodiment wherein the nanowire layer is a multilayered nanostructure formed by a plurality of layers not a “single layer” as required by the amended claims (particularly in light of Applicant’s arguments on page 10 of the response with respect to the multiple layers of Chen), and hence, the Applicant cannot rely upon said data given that it is not commensurate in scope with the instant claims. It is also noted that even if the data were commensurate in scope with the instant claims, the data would not support a showing of “unexpected results” given that Fig. 10A actually plots theoretical data or “finite integration technique (FIT) simulated electric field values” while Fig. 10B plots experimental data that as described by the specification in Paragraph 0047 support the theoretical data such that the results would actually be “expected” not “unexpected” as argued by the Applicant. Therefore, Applicant’s arguments with respect to the teachings of either Jung or Kim taken alone are not persuasive, and given that each of Jung and Kim teaches a single layer of nanowires as in the claimed invention, with Chen relied upon to support the Examiner’s position that the thickness is a known result-effective variable and that one skilled in the art would have been motivated to utilize an optimized thickness as taught by Chen for the layer of nanowires in the teachings of Jung or Kim, Applicant’s arguments over the teachings of Jung or Kim, and in further view of Chen area also unpersuasive.
With respect to instant claim 3, the Applicant argues that “Jung and Kim aim at absorption detection of a specific single type of target molecule, and therefore they tended to optimize the gap size to a single average value,” arguing that “[c]onversely, claim 3 of this application (according to paragraph [0032], the last three lines of the originally filed application) aims to accommodate samples of varying sizes (from nanoparticles to large viruses, cells, etc.), and therefore deliberately creates 3D structural gaps with such a large difference (maximum to minimum ratio of 50 to 2000)” which is “a motivation not taught in Jung or Kim, and is the criticality of claim 3” (see page 11 of the response). However, the Examiner respectfully disagrees and notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Hence, given that the each of Jung and Kim clearly teaches that the nanowires are randomly deposited, as in the claimed invention, forming a 3D network of said nanowires stacked to a given thickness, as in the claimed invention, wherein nanogaps are formed between the randomly-oriented nanowires and the thickness and density of the layer or network, for a given end use, can be adjusted by adjusting the concentration of the nanowires in the solution utilized to form the layer/network, and given that one skilled in the art before the effective filing date of the claimed invention would clearly recognize that the size of said nanogaps, or range thereof, would control the size or range thereof of a target substance, such that absent any clear showing of unexpected results with respect to the claimed ratio of 50 to 2000, the Examiner maintains her position that the claimed invention as recited in instant claim 3 would have been obvious over the teachings of Jung or Kim, taken alone and/or in further view of Chen.
With respect to instant claims 4, 5, and 9, the Applicant argues that “Jung only teaches mixing particles of different shapes with nanowires, and does not teach or imply the specific ‘top-to-bottom stacking’ hierarchical structure design [allegedly] in claims 4, 5, and 9,” and that each of Kim and Chen “also fails to teach the specific ‘top-to-bottom stacking’ hierarchical structure design in claims 4, 5, and 9” (see page 12 of the response). However, the Examiner first notes that the claims do not require “top-to-bottom stacking” as argued by the Applicant, and given that Jung clearly teaches that “the metal-containing nanostructure layer 20 can be composed of one or more types of nanoparticles and nanowires”, wherein the “nanoparticles can be of various shapes such as spheres, triangles, stars, rods, tubes, etc., with no particular limits on the shapes of the nanoparticles” such that a layer comprising a random mixture of a plurality of nanoparticles and nanowires would provide nanowires “stacked on the nanoparticles” as claimed, while Kim clearly teaches a plurality of nanoparticles 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 Examiner maintains her position that the claimed invention as recited in instant claims 4, 5, and 9 would have been obvious over the teachings of the cited prior art references.
Any rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 6/2/2026.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kim (US2016/0146737A1), similar to the teachings of Kim (KR2018/0069980A), teaches “a substrate for surface enhanced Raman scattering having excellent surface enhanced Raman scattering effects by randomly stacking of Ag nanowires in a simple way by utilizing a substrate having a filtering function,” wherein the size and density of the nanowires may be adjusted to form nanogaps, for example, when the density of the nanowires increases, the nanogaps are gradually reduced, and specifically teaches that two types of nanogaps may be formed between the nanowires of which one is formed due to irregular distance between the nanowires having irregular orientation and the other is formed around cross points which are formed when the nanowires having irregular orientation are aggregated.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
Prosecution Insights