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 .
Response to Arguments
Applicant's arguments filed 6/4/2026 have been fully considered are addressed below:
Applicant’s amendments overcome the objection of claim 18. The objection has been withdrawn.
Applicant’s amendments overcome the 112b rejections. The rejections have been withdrawn.
Applicant argues Hu (US 20190317011 A1) that does not describe nanostructures that can be hexagonally arranged (see remarks page 14, 16), however, the examiner disagrees. Hu teaches the rod-like MIM antenna structures 15 in the sensor array 100 in FIGS. 1A through 1C may be disposed on a base substrate 20 in, for example, a grid, for example, a 5×6 grid, with each antenna structure 15 having the same or substantially the same size, e.g., dimensions (height and width), and shape (cylindrical or substantially cylindrical), as well as periodicity, i.e., spacing between adjacent antenna structures 15. Those of ordinary skill in the art can appreciate that the number and arrangement of the antenna structures 15 in the sensor array 100, as well as the shape, size, and the like of each antenna structure 15 and the periodicity between adjacent antenna structures 15 may be subject to the design and purpose of the array 100. As such, Hu does not teach that the nanostructures cannot be hexagonally arranged. Further, arranging nanostructures in a hexagonal array is a common and well known arrangement taught at least by US20130293884A1 by Lee ([0145] the SERS substrates consist of hexagonal arrays of metallic nanospheres with controllable diameters and lattice spacing. By controlling the size and the spacing between the nanospheres, tunable, tailored plasmonic response is achieved). See also US20180292311A1 by Boamfa (cited in the conclusion) which teaches the interchangeable use of either a square lattice or hexagonal lattice ([0067]).
The applicant further argues that Hu is not capable of enhancing fluorescence (see remarks page 15) or that the chip of Hu cannot be used as a sensor (see remarks page 17). In response to the applicant's argument, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Claim 1 only requires that the “the chip is capable of enhancing the fluorescence of one or more fluorophores”. Further, claim 14 only requires “wherein exposure of the chip to light with a wavelength from at least two different spectral regions induces the formation of a surface plasmon within a portion of the chip”. Hu teaches a surface plasmon sensor ([0056]) with metal nanostructures which are capable of enhancing the fluorescence of one or more fluorophores and further teaches a plasmonic scattering profile resulting from reflected light waves having discrete wavelengths, may be used to characterize the local environment, especially after the metallic nanoparticle surface and, more particularly, electrons located on the surface of the nanoparticle, i.e., the surface plasmons, have been excited by the incident light ([0056]).
In response to applicant's argument that Theodorou is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Theodorou is analogous art because it relates to techniques of surface plasmon resonance. Additionally, Theodorou is only relied upon to teach that plasmonic metals are capable of enhancing fluorescence of fluorophores. Even if Theodorou teaches a different type of nanostructure core, Theodorou still provides teaching that the plasmonic metallic materials are capable of enhancing fluorescence of fluorophores
As such, a new rejection has been made in view of Hu modified by Lee.
Claim Objections
Claim 1 objected to because of the following informalities:
Regarding claim 1, the claim recites “the fluorescence of one or more fluorophores” in the last line which should read “fluorescence of one or more fluorophores”, similar to claim 34, otherwise there is insufficient antecedent basis for this limitation in the claim. The examiner also notes that claim 34 recites “fluorescence from fluorophores” and suggests using consistent phrasing between the claims. Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-13, 15, 15-16, 18, 24, 26, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over US 20190317011 A1 by Hu (previously cited) in view of US20130293884A1 by Lee et al. (hereinafter “Lee”; newly cited).
Regarding claim 1, Hu teaches (at least Fig. 2, 4A-B, 11B-E) chip comprising a solid substrate (base substrate 110; [0080]) and a plurality of nanostructures (spheroidal MIM antenna structures 105 which includes nanospheres 115; [0081]) wherein:
the plurality of nanostructures are arranged on the surface of the solid substrate and are not in contact with one another (Fig. 2 shows spheres arranges on substrate 110 that are not in contact with each other; [0081]"spacing between adjacent nanospheres may range between about 10 nm and about 2000 nm…") ;
the nanostructures comprise a dielectric core ([0081] nanospheres may be manufactures from a dielectric or insulative material) partially coated in a metallic plasmonic material, wherein the partial coating of the metallic plasmonic material forms a cap structure on the dielectric core ([0082] "each MIM antenna structure 105 in the sensor array 200 may include a thin (e.g., 0.1 nm to several hundreds of nanometers) metallic cap 120 that has been formed or deposited on or at the crown of a first (e.g., top) surface of each nanosphere 115");
the cap structure does not make contact with the underlying substrate and does not form a continuous layer across the dielectric core (see Fig. 2; [0082] " the coupling distance between the upper surface of the metallic backplane (125) and the bottoms of the metallic caps (120) is about one (1) nm to about 2000 nm…"; and
a portion of the dielectric core remains exposed (see Fig. 2; bottom half of spheres 115 remain exposed; [0082]).
Hu is silent as to wherein the plurality of nanostructures are hexagonally arranged. However, Hu teaches those of ordinary skill in the art can appreciate that the number and arrangement of the antenna structures 15 in the sensor array 100, as well as the shape, size, and the like of each antenna structure 15 and the periodicity between adjacent antenna structures 15 may be subject to the design and purpose of the array 100 ([0060])
Further, Lee does address this limitation. Lee and Hu are considered to be analogous to the present invention as they are in the same field of nanoparticles arrays.
Lee teaches a SERS substrates consist of hexagonal arrays of metallic nanospheres with controllable diameters and lattice spacing ([0145]).
It would have been well known to someone of ordinary skill in the art before the effective filing date of the claimed invention to use a hexagonal arrangement for a SERS substrate. Therefore, it would have been obvious to modify Hu to include to wherein the plurality of nanostructures are hexagonally arranged as suggested by Lee in order to achieve tunable, tailored plasmonic response by controlling the size and the spacing between the nanospheres ([0145]).
Further, Hu does not explicitly teach wherein the chip is capable of enhancing the fluorescence of one or more fluorophores.
However, under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). The chip taught by Hu appears to have the same properties as the chip in the applicant's specification and would inherently be capable of enhancing the fluorescence of one or more fluorophores.
However, Lee does address this limitation.
Lee teaches surface enhanced fluorescence (SEF) (also termed metal enhanced fluorescence or MEF) is the term for the phenomenon of the dramatic increase observed in the fluorescence emission when molecules are between ˜3 nm and 60 nm from the surface of metals (e.g., silver and gold nanoparticles or island films) ([0140]). The SEF phenomenon arises from the interaction of the dipole moment of the fluorophore and the surface plasmon of the metal. This interaction can lead to an increase in radiative decay and an increase in fluorescence efficiency. ([0140]).
Since Hu teaches that the nanostructures are partially coated in a metallic plasmonic material, it would have been well known to someone of ordinary skill in the art before the effective filing date of the claimed invention that the chip is capable of metal enhanced fluorescence. Therefore, it would have been obvious to modify Hu to include wherein the chip is capable of enhancing the fluorescence of one or more fluorophores as suggested by Lee in order to transform weakly emitting molecules into more efficient fluorophores ([0110]).
Regarding claim 2, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein the cap structure is positioned distal to the portion of the dielectric core that contacts the surface of the solid substrate (see Fig. 2; [0082] "metallic cap 120 that has been formed or deposited on or at the crown of a first (e.g., top) surface of each nanosphere 115").
Regarding claim 3, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein the portion of the dielectric core that remains exposed is a portion of the dielectric core that is not coated with the metallic plasmonic material and is not in contact with the solid substrate (see Fig. 2, bottom on spheres 115 remain exposed not touching substrate 110 or backplane 125; [0082]) optionally wherein thickness of a film of the metallic plasmonic material between the dielectric cores is zero.
Regarding claim 5, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein each nanostructure of the plurality of nanostructures comprises the same:
a) dielectric core ([0081]); and/or
b) metallic material ([0082]; [0091] nanospheres formed or disposed in a sensor array on a single base substrate share the same or substantially the same size, shape, periodicity, and so forth; each nanosphere comprises the dielectric core and cap).
Regarding claim 6, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein the dielectric core is formed of a polymer ([0081] molecularly imprinted polymer (MIP) material, from a dielectric or insulative material (e.g., glass, SiO2, polymer, and so forth)), optionally wherein the polymer is polystyrene, silica or any combination thereof, optionally wherein the dielectric core is polystyrene.
Regarding claim 7, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein the metallic plasmonic material is selected the group consisting of a noble metal; a base metal or a salt thereof; and any combination thereof; or
wherein the metallic plasmonic material is selected from the group consisting of silver, gold, copper, and aluminum ([0082] portions of each antenna nanostructure 105 in a sensor array may be made from metallic materials, e.g., platinum, gold, silver, aluminum, copper, tungsten, and combinations thereof.).
Regarding claim 8, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein:
at least 30%, 35%, 40%, 45%, 50%, 55%, 60%, 65%, 70%, 75%, 80%, 85%, 90%, 95%, 96%, 97%, 98%, 99%, 100% of the surface of each of the dielectric cores is coated with the metallic material; and/or
wherein less than 100%, 99%, 98%, 97%, 96%, 95%, 90%, 85%, 80%, 75%, 70%, 65%, 60%, 55%, 50%, 45%, 40%, 35%, 30% of the surface of each of the dielectric cores is coated with the metallic material; and/or
wherein each of the dielectric cores is not 100% coated in the metallic plasmonic material (see Fig. 2 approximately less than 50% of the nanospheres 115 are covered by the metallic cap 120; [0082]).
Regarding claim 9, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein the average diameter (a) of each metallic material-coated nanostructure of the plurality of nanostructures is:
from 1 nm to 1000 nm , optionally from 50 nm to 900 nm; 100 nm to 800 nm; 200 nm to 700 nm; 300 nm to 600 nm, 400 to 500 nm; and/or
at least 1 nm, 50 nm, 100 nm, 200 nm, 300 nm, 400 nm, 500 nm, 600 nm, 700 nm, 800 nm, 900 nm and 1000 nm; and/or
less than 1000 nm, 900 nm, 800 nm, 700 nm, 600 nm, 500 nm, 400 m, 300 nm, 200 nm, 100 nm, 50 nm, 25 nm, or 5 nm, or 1 nm ([0081]-[0082] "Typical diameters of the nanospheres may range between about 1 nm and about 2000 nm, or between about 5 nm and about 1000 nm, or between about 10 nm and about 500 nm. " and "thin (e.g., 0.1 nm to several hundreds of nanometers) metallic cap 120 "; the nanosphere and cap for the metallic material-coated nanostructure of the plurality of nanostructures).
Regarding claim 10, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein the average diameter of the dielectric core is:
from 1 nm to 1000 nm, optionally from 50 nm to 900 nm; 100 nm to 800 nm; 200 nm to 700 nm; 300 nm to 600 nm, 400 to 500 nm; and/or
at least 1 nm, 50 nm, 100 nm, 200 nm, 300 nm, 400 nm, 500 nm, 600 nm, 700 nm, 800 nm, 900 nm and 1000 nm; and/or
less than 1000 nm, 900 nm, 800 nm, 700 nm, 600 nm, 500 nm, 400 m, 300 nm, 200 nm, 100 nm, 50 nm, 25 nm, or 5 nm, or 1 nm ([0081] Typical diameters of the nanospheres may range between about 1 nm and about 2000 nm, or between about 5 nm and about 1000 nm, or between about 10 nm and about 500 nm. ).
Regarding claim 11, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein the metal coating has an average maximum average thickness of:
at least 1 nm, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 20, 30, 40, 50, 60, 70, 80, 90, 100, 150, 200, 250, 300, 350, 400, 450, 500, 550, 600, 650, 700, 750, 800, 850, 900, 950 or at least 1000 nm; and/or
less than 1000 nm, 950, 900, 850, 800, 750, 700, 650, 600, 550, 500, 450, 400, 350, 300, 250, 200, 150, 100, 90, 80, 70, 60, 50, 40, 30, 20, 15, 14, 13, 12, 11, 10, 9, 8, 7, 6, 5, 4, 3, 2 or 1 nm; and/or
from 1 nm to 1000 nm, 2 to 950, 3 to 900, 4 to 850, 5 to 800, 6 to 750, 7 to 700, 8 to 650, 9 to 600, 10 to 550, 11 to 500, 12 to 450, 13 to 400, 14 to 350, 15 to 300, 20 to 250, 30 to 200, 40 to 150, 50 to 100, 60 to 90, 70 to 80 nm ([0082] thin (e.g., 0.1 nm to several hundreds of nanometers) metallic cap 120).
Regarding claim 12, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein the nanostructures have a shape selected from the group consisting of spherical , substantially spherical, star-shaped, ovoid, pyramidal, cube, and cuboid or any combination thereof, optionally wherein the nanostructures are spherical or substantially spherical or star-shaped ([0081] nanospheres 115).
Regarding claim 13, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein exposure of the chip to light induces the formation of one or more surface plasmons within a portion of the chip ([0056]" incident light, striking near or between metallic nanoparticle surfaces and having a specific wavelength, excites surface plasmons, causing them collectively to oscillate"; [0059] "in the presence of an analyte target molecule and when struck by incident light of a particular wavelength, an observable change in color within the visible spectrum"), optionally wherein the surface plasmon forms on the surface of the metallic material that coats the nanostructure,
optionally wherein the light is selected from the group consisting of ultraviolet (UV) light, visible light, near-infra-red (NIR) light, and NIR-II light, or any combination thereof, optionally wherein UV light has a wavelength of between 100-400 nm; visible light has a wavelength of between 380-700; NIR I has a wavelength of between 650-900 nm; and NIR II has a wavelength of between 1000-1400 nm.
Regarding claim 15, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein a capture agent capable of binding specifically to a target analyte is bound to the chip ([0071] "MIP protective layer can include a chemical moiety (e.g., a “receptor” or “binding site”) that can form a complex (e.g., host-guest chemistry) with an analyte target molecule of interest via a non-covalent bond"; molecularly imprinted polymer (MIP) 135), optionally bound to the substrate, the metallic plasmonic coating the substrate, and/or to the nanostructures,
optionally wherein the capture agent is:
a protein, optionally wherein the protein is selected from the group consisting of an antibody or antigen binding fragment thereof, actin, albumin, casein, collagen, dystrophin, fibrinogen, fibronectin, flagellin, gelatin, keratin, α-lactalbumin, β-lactalbumin, lactoferrin, myosin, titin, and tubulin, or any combination thereof; or
a nucleic acid, optionally wherein the nucleic acid is DNA or RNA, optionally wherein
the DNA is selected from the group consisting of cccDNA, ccfDNA, cDNA, cfDNA, cffDNA, circular DNA, cpDNA, ctDNA, dsDNA, eccDNA, ecDNA, eDNA, exogenous DNA, gDNA, i-DNA, linker DNA, microDNA, mtDNA, msDNA, ncDNA, rDNA, and ssDNA, or any combination thereof; and/or
the RNA is selected from the group consisting of 7SK RNA, asRNA, cfRNA, circRNA, crRNA, diRNA, dsRNA, eRNA, exRNA, gRNA, lncRNA, miRNA, natsiRNA, ncRNA, piRNA, pre-mRNA, rasiRNA, RNase MRP, RNase P, rRNA, scaRNA, sgRNA, shRNA, siRNA, SL RNA, SmY RNA, snRNA, snoRNA, ssRNA, tasiRNA, telomerase RNA, tmRNA, tRNA, tracrRNA, and Y RNA, or any combination thereof.
Regarding claim 16, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein the chip is in the form of a slide, a dish, a lateral flow strip, a multi-well plate, or a bead coated with the nanostructures according to any of the proceeding claims (Fig. 12; [0125] sensor arrays described herein may be operatively disposed upon or integrated within a surface of a substrate 700 shown in Fig. 12, sensor array disposed upon or integrated within that surface are exposed to a liquid 705 in which an analyte target molecule of interest may or may not be present, for example straw 710, a swizzle stick or stirrer 715, a fluid receptacle 720; a fluid receptacle is a dish).
Regarding claim 18, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein the chip has been produced using a method that comprises:
a) arranging nanoparticles of a dielectric material on the surface of the solid substrate (Fig. 11B; [0130]);
b) etching the dielectric nanoparticles to form a dielectric core (Fig. 11C; [0121]), optionally wherein the etching is performed using oxygen plasma (RIE) ([0121] oxygen plasma etching so that the diameter of the nanospheres becomes smaller due to the etching process); and
c) depositing a metallic material on the dielectric core to form metallic-capped nanostructures (Fig. 11D; [0122]), optionally wherein said depositing is by sputtering ([0122]).
Regarding claim 24, Hu modified by Lee teaches the chip according to claim 1, and further teaches a method of detecting a target analyte wherein the method comprises detecting the analyte using the chip according to claim 1 ([0086]; [0090] The binding of analyte target molecules results in an observable color change, e.g., from blue to red, within the visible light spectrum; [0126]).
Regarding claim 26, Hu modified by Lee teaches the chip according to claim 1, and further teaches wherein the method comprises the detection of a plurality of target analytes ([0085] the cavities are shaped to receive discrete analyte target molecules, [0090] Each formed cavity in a MIP should have an affinity for a corresponding analyte target molecule of interest; a plurality of target analytes is listed) , optionally wherein the method comprises the detection of at least two, at least three, at least four, at least five, or at least six target analytes.
Regarding claim 32, Hu teaches the chip according to claim 1, but Hu does not explicitly teach a kit comprising the chip of claim 1, and one or more of:
One or more corresponding fluorophores; and/or
One or more fluorophore labelled oligonucleotides; and/or
One or more fluorophore labelled antibodies or antigen binding fragments thereof,
optionally wherein the kit comprises 2, 3 or 4 or more fluorophores or fluorophore labelled oligonucleotides or antibody or antigen binding fragments thereof where the max excitation of the two or more fluorophores are in different spectral regions.
However, Lee does address this limitation.
Lee teaches surface enhanced fluorescence (SEF) (also termed metal enhanced fluorescence or MEF) is the term for the phenomenon of the dramatic increase observed in the fluorescence emission when molecules are between ˜3 nm and 60 nm from the surface of metals (e.g., silver and gold nanoparticles or island films) ([0140]). The SEF phenomenon arises from the interaction of the dipole moment of the fluorophore and the surface plasmon of the metal. This interaction can lead to an increase in radiative decay and an increase in fluorescence efficiency. ([0140]).
It would have been well known to someone of ordinary skill in the art before the effective filing date of the claimed invention to make a kit comprising the chip with metallic nanoparticles and fluorophores to enhance fluorescence. Therefore, it would have been obvious to modify Hu to include a kit comprising the chip of claim 1 and one or more corresponding fluorophores as suggested by Hu in order to improve the fluorescence of weak fluorophores ([0110]).
Claim 14 under 35 U.S.C. 103 as being unpatentable over Hu in view of Lee as applied to claim 1 above and in further view of Aluminum film over nanosphere surface for Deep Ultraviolet plasmonic nanosensors by Venkatesh et al. (previously cited).
Regarding claim 14, Hu modified by Lee teaches the chip according to claim 1, but Hu does not explicitly teach to wherein exposure of the chip to light with a wavelength from at least two different spectral regions induces the formation of a surface plasmon within a portion of the chip, optionally wherein the spectral regions are selected from the group consisting of ultraviolet (UV) light, visible light, near-infra-red (NIR) light, and NIR-II light, or any combination thereof, optionally wherein UV spectral region has a wavelength of between 100-400 nm; the visible spectral region has a wavelength of between 380-700 nm; NIR I spectral region has a wavelength of between 650-900 nm; and NIR II spectral region has a wavelength of between 1000-1400 nm,
optionally wherein the excitation light has a wavelength of between 10 nm and 1400 nm, optionally wherein the excitation light has a wavelength selected from the group consisting of between 10 nm and 400 nm, between 400 nm and 700 nm, between 700 nm and 1000 nm, between 1000 nm and 1400 nm, and between 350 nm and 1400 nm.
However, Hu does teach that incident light, striking near or between metallic nanoparticle surfaces and having a specific wavelength, excites surface plasmons, causing them collectively to oscillate ([0056]) and that the MIM antenna structures 15, 105 may be configured to produce, in the presence of an analyte target molecule and when struck by incident light of a particular wavelength, an observable change in color within the visible spectrum ([0059]). Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). The chip taught by Hu appears to have the same properties as the chip in the applicant's specification and would inherently form surface plasmons when exposed to light from at least two different spectral regions.
Further, Venkatesh does address this limitation. Venkatesh and Hu are considered to be analogous to the present invention as they are in the same field of nanostructures.
Venkatesh teaches wherein exposure of the chip to light with a wavelength from at least two different spectral regions (see Fig. 5; page 6 col 1 ¶ 2 “Two distinct regions in the transmission spectra of AlFON were observed. “featureless plateau in the visible region (700–400 nm)”, “deep-UV (DUV) region with transmission peak like profile”) induces the formation of a surface plasmon within a portion of the chip (see Fig. 5; page 6 col 2 ¶ 2 “localized surface plasmon resonance”),
optionally wherein the spectral regions are selected from the group consisting of ultraviolet (UV) light, visible light, near-infra-red (NIR) light, and NIR-II light, or any combination thereof, optionally wherein UV spectral region has a wavelength of between 100-400 nm (page 6 col 1 ¶ 2 “286 nm in the DUV region”); the visible spectral region has a wavelength of between 380-700 nm (page 6 col 1 ¶ 2 visible region (700–400 nm)); NIR I spectral region has a wavelength of between 650-900 nm; and NIR II spectral region has a wavelength of between 1000-1400 nm,
optionally wherein the excitation light has a wavelength of between 10 nm and 1400 nm, optionally wherein the excitation light has a wavelength selected from the group consisting of between 10 nm and 400 nm, between 400 nm and 700 nm, between 700 nm and 1000 nm, between 1000 nm and 1400 nm, and between 350 nm and 1400 nm (page 6 col 2 ¶ 2; see Fig. 5 which corresponds to the excitation of localized surface plasmon resonance).
It would have been well known to someone of ordinary skill in the art before the effective filing date of the claimed invention to expose the chip to light from two different spectral regions to induce the formation of surface plasmons. Therefore, it would have been obvious to modify Hu to include wherein exposure of the chip to light with a wavelength from at least two different spectral regions induces the formation of a surface plasmon within a portion of the chip as suggested by Venkatesh in order to increase the detection range.
Claims 17 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Hu in view of Lee as applied to claim 1 above and in further view of Gold Nanostar Substrates for Metal-Enhanced Fluorescence through the First and Second Near-Infrared Windows by Theodorou et al. (hereinafter Theodorou; cited in the IDS and previous office action dated 06/10/2025).
Regarding claim 17, Hu modified by Lee teaches the chip according to claim 1, but Hu does not explicitly teach wherein the one or more fluorophores comprise inorganic/Organic fluorophores, emitting in UV, visible and NIR optical windows, and optionally wherein the one or more fluorophore are selected from:
fluorescent dyes, Single-Walled Carbon Nanotubes (SWCNTs), Quantum Dots, Rare-Earth-Doped Nanoparticles (RENPs) including upconversion nanoparticles and downconversion nanoparticles, optionally wherein the chip is capable of enhancing the fluorescence from each fluorophore simultaneously or sequentially.
However, Theodorou can be relied upon to teach this limitation. Theodorou and Hu are considered to be analogous to the present invention as they are in the same field of nanostructures.
Theodorou teaches metal enhanced fluorescence (MEF) which is an optical process in which the near-field interaction of fluorophores with metallic nanoparticles could, under specific conditions, produce large fluorescence enhancements (page 2 ¶3), thus enhancing the fluorescence of one or more fluorophores. Theodorou further teaches NIR/NIR-II fluorophores exhibit much lower fluorescence emission than UV/visible dyes and that the enhancement in the NIR/NIR-II are highly desirable for improving detection sensitivity (page 3 lines 16-38). Additionally, Theodorou teaches the use of organic dyes emitting in the ranges of 760–830 and 785–850 nm (page 9 liens 37-46).
It would have been well known to someone of ordinary skill in the art before the effective filing date of the claimed invention to use organic fluorophores emitting in NIR optical windows. Therefore, it would have been obvious to modify Theodorou to include wherein the one or more fluorophores comprise inorganic/Organic fluorophores, emitting in UV, visible and NIR optical windows as suggested by Theodorou in order to improve detection sensitivity of weaker fluorophores (page 3 lines 16-38).
Regarding claim 34, Hu modified by Lee teaches the chip according to claim 1, but Hu does not explicitly teach wherein the chip is capable of enhancing fluorescence from fluorophores with maximum excitation wavelengths in different spectral regions.
However, under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). The chip taught by Hu appears to have the same properties as the chip in the applicant's specification and would inherently be capable of enhancing the fluorescence of one or more fluorophores.
Further, Theodorou can be relied upon to teach this limitation.
Theodorou teaches the use metal-enhanced fluorescence (MEF) of fluorophores with metallic nanoparticles (page 2 ¶3) and further teaches an example in which fluorescence from fluorophores with maximum excitation wavelengths in different spectral regions is enhanced (fluorescent enhancement in both the NIR and NIR-II regions (page 4 ¶3).
Since Hu teaches that the nanostructures are partially coated in a metallic plasmonic material, it would have been well known to someone of ordinary skill in the art before the effective filing date of the claimed invention that the chip is capable of metal enhanced fluorescence and that the fluorophores with maximum excitation wavelengths in different spectral regions may be enhanced. Therefore, it would have been obvious to modify Hu to include wherein the chip is capable of enhancing fluorescence from fluorophores with maximum excitation wavelengths in different spectral regions as suggested by Theodorou in order to make a more robust measurement.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20110250402 A1 by Oldham teaches a plasmonic nanostructure for enhanced light excitation where a plurality of nanowells 914 is arranged in a regular pattern. For example, the regular patterns can be rectangular, square, hexagonal, or any other regular pattern ([0134]).
US20180292311A1 by Boamfa a teaches fluorescence calibration slide with metal nanostructures arranged to produce plasmon resonances that allow absorbing light at an excitation wavelength to produce photo-luminescence and/or fluorescence light for generating a fluorescent image (abstract). Further, Boamfa teaches metal nanostructures 16 may be arranged periodically along the surface 18 of the substrate 12. For example, in FIG. 1B, the metal nanostructures 16 are arranged in a two-dimensional square lattice. The metal nanostructures 16 may also be arranged differently, e.g. in a two-dimensional hexagonal lattice ([0067]).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached at 571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KAITLYN E KIDWELL/Examiner, Art Unit 2877
/TARIFUR R CHOWDHURY/Supervisory Patent Examiner, Art Unit 2877
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