DETAILED CORRESPONDENCE
Summary
This is the initial Office Action based on the Wang, et al. application filed with the Office on 19 December 2023.
Claims 35-47 are currently pending and have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The preliminary amendment filed on 15 March 2024, is acknowledged and has been entered.
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 43 and 44 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 43 recites the limitation "the irregular hexagon". There is insufficient antecedent basis for this limitation in the claim.
Claim 44 recites the limitation "the irregular hexagon". There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 35-47 are rejected under 35 U.S.C. 103 as being unpatentable over a published international patent application to Roche Sequencing Solutions, Inc. (WO 2018/136497 A1; hereinafter, “Roche”).
Regarding claim 35, Roche discloses a nanopore sensor (Abstract: “A method for forming a nanopore device …”) comprising:
a sapphire substrate ([0005]: “…the present invention provide a low-noise nanopore structure in a sapphire substrate …”);
a first oxide layer on a first side of the sapphire substrate, wherein the first oxide layer defines a first opening; a second oxide layer on a second side of the sapphire substrate, wherein the second side of the sapphire substrate is opposite the first side of the sapphire substrate ([0044]: “… a first dielectric layer 212 is formed on a front side of sapphire substrate 210, and a second dielectric layer 214 is formed on a back side of sapphire substrate 210. These dielectric layers can be made of the same material or different materials, and they can be deposited in the same process step or different steps. For example, the first dielectric layer 212 and the second dielectric layer 214 can both be a layer of silicon dioxide SiO2.”),
the second oxide layer defines a second opening in the shape of an equilateral triangle, and an edge of the equilateral triangle is aligned at an offset angle a from a crystalline plane of the sapphire substrate ([0008]: “The mask opening in the etch mask can be triangular-shaped, and each of three sides of the triangular-shaped mask opening is aligned with a hexagonal crystalline orientation of the sapphire substrate. In a specific example, the etch mask has a triangular-shaped mask opening, and each of three sides of the triangular-shaped mask opening is aligned parallel to a crystalline plane in the sapphire substrate or forms a 60° or 120° angle from said crystalline plane in the sapphire substrate.”);
a silicon nitride membrane extending across the first opening ([0050]: “In order to further thin down the effective membrane thickness, a different dielectric material, e. g., silicon nitride (Si3N4), can be deposited on top of the on the first oxide layer 212.”) and defining a nanopore therethrough (Figure 5G),
wherein the first opening and the second opening are superimposed (Figure 5G).
Roche teaches the mask opening in the etch mask can also have a polygon shape ([0008]), but Roche does not specifically make mention of the silicon nitride membrane is in the shape of a nonagon for 20°<α<40°.
However, it has been held that the shape configuration of an element is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape configuration was significant (MPEP 2144.04 IV B). Nothing in the application points to the nonagon shape being significant.
Regarding claim 36, Roche teaches a nanopore diameter of 5 nm ([0032]).
Regarding claim 37, Roche teaches the sapphire substrate thickness typically ranges from 100 µm to 1 mm ([0062]).
Roche does not explicitly teach a dimension of a surface of the sapphire substrate in the range from about 1 mm to about 20 cm.
However, it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A).
Regarding claim 38, Roches discloses a nanopore sensor (Abstract: “A method for forming a nanopore device …”) comprising:
a sapphire substrate ([0005]: “…the present invention provide a low-noise nanopore structure in a sapphire substrate …”);
a first oxide layer on a first side of the sapphire substrate, wherein the first oxide layer defines a first opening; a second oxide layer on a second side of the sapphire substrate, wherein the second side of the sapphire substrate is opposite the first side of the sapphire substrate ([0044]: “… a first dielectric layer 212 is formed on a front side of sapphire substrate 210, and a second dielectric layer 214 is formed on a back side of sapphire substrate 210. These dielectric layers can be made of the same material or different materials, and they can be deposited in the same process step or different steps. For example, the first dielectric layer 212 and the second dielectric layer 214 can both be a layer of silicon dioxide SiO2.”),
a silicon nitride membrane extending across the first opening and defining a nanopore therethrough ([0050]: “In order to further thin down the effective membrane thickness, a different dielectric material, e. g., silicon nitride (Si3N4), can be deposited on top of the on the first oxide layer 212.”) and defining a nanopore therethrough (Figure 5G),
wherein the first opening and the second opening are superimposed (Figure 5G).
Roche teaches the mask opening in the etch mask can also have a polygon shape ([0008]), but Roche does not specifically make mention of the second oxide layer defining a second opening in the shape of a hexagon, and an edge of the hexagon is aligned at an offset angle a from a crystalline plane of the sapphire substrate, where 5° < α < 55°.
However, it has been held that the shape configuration of an element is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape configuration was significant (MPEP 2144.04 IV B). Nothing in the application points to the hexagon shape being significant.
Regarding claim 39, Roche teaches a nanopore diameter of 5 nm ([0032]).
Regarding claims 40-44, Roche does not specifically make mention of the silicon nitride membrane being in the shape of an equilateral triangle, a hexagon, or an irregular hexagon.
However, it has been held that the shape configuration of an element is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape configuration was significant (MPEP 2144.04 IV B). Nothing in the application points to the shapes being significant.
Regarding claim 45, Roche teaches the sapphire substrate thickness typically ranges from 100 µm to 1 mm ([0062]).
Roche does not explicitly teach a dimension of a surface of the sapphire substrate in the range from about 1 mm to about 20 cm.
However, it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A).
Regarding claim 46, Roche discloses a nanopore sensor (Abstract: “A method for forming a nanopore device …”) comprising:
a sapphire substrate ([0005]: “…the present invention provide a low-noise nanopore structure in a sapphire substrate …”);
a first oxide layer on a first side of the sapphire substrate, wherein the first oxide layer defines a first opening (Figure 5G); a second oxide layer on a second side of the sapphire substrate, wherein the second side of the sapphire substrate is opposite the first side of the sapphire substrate (Figure 5G) ([0044]: “… a first dielectric layer 212 is formed on a front side of sapphire substrate 210, and a second dielectric layer 214 is formed on a back side of sapphire substrate 210. These dielectric layers can be made of the same material or different materials, and they can be deposited in the same process step or different steps. For example, the first dielectric layer 212 and the second dielectric layer 214 can both be a layer of silicon dioxide SiO2.”),
the second oxide layer defines a second opening (Figure 5G) in the shape of an equilateral triangle, and an edge of the equilateral triangle is aligned at an offset angle a from a crystalline plane of the sapphire substrate ([0008]: “The mask opening in the etch mask can be triangular-shaped, and each of three sides of the triangular-shaped mask opening is aligned with a hexagonal crystalline orientation of the sapphire substrate. In a specific example, the etch mask has a triangular-shaped mask opening, and each of three sides of the triangular-shaped mask opening is aligned parallel to a crystalline plane in the sapphire substrate or forms a 60° or 120° angle from said crystalline plane in the sapphire substrate.”); and
a silicon nitride membrane extending across the first opening ([0050]: “In order to further thin down the effective membrane thickness, a different dielectric material, e. g., silicon nitride (Si3N4), can be deposited on top of the on the first oxide layer 212.”) and defining a nanopore therethrough (Figure 5G),
wherein the first opening and the second opening are superimposed (Figure 5G).
Roche does not teach wherein the silicon nitride membrane is in the shape of an equilateral triangle for 0°<α<20° or 40°<α<60°.
However, it has been held that the shape configuration of an element is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape configuration was significant (MPEP 2144.04 IV B). Nothing in the application points to the equilateral triangle shape being significant.
Regarding claim 47, Roche teaches the sapphire substrate thickness typically ranges from 100 µm to 1 mm ([0062]).
Roche does not explicitly teach a dimension of a surface of the sapphire substrate in the range from about 1 mm to about 20 cm.
However, it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A).
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached M - F, 9 am - 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571)272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. Christopher Ball/ Primary Examiner, Art Unit 1795
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