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 amendments overcome the previous 112 rejection of claim 11. Therefore, the 112 rejection of claim 11 has been withdrawn.
Regarding the 103 rejection of claim 1, Applicant appears to argue that Suh teaches away from a distance between the structures being less than 10 nm because Suh teaches that intervals between protuberant structures are greater than 10 nm.
In response, the examiner notes that the cited portion of Suh (column 7, line 65 to column 8, line 2) reads, "Since the structure with a gap of several nanometers provides significant enhancement of Raman signals, nanogaps of the surface-enhanced Raman spectroscopy may be formed in a range of 1 to 10 nm which may be controlled by the distance between the metal-containing nanoparticles."
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The distances between the protuberant structures (that the applicant refers to in Applicant's arguments) does not correspond to the distance between the structures that is relied upon by the examiner in the rejection, as each structure includes a lower portion (which Suh causes a protuberant structure) and an upper portion (which Suh calls the nanoparticle) as is explained in figure 1 and column 3, lines 55-65). The examiner considers "A distance between" the structures to correspond to the gap between the nanoparticles. The constant intervals (that Applicant references in Suh, column 6, line 64 to column 7, line 5) at which the protuberant structures are spaced apart refers to the intervals of the bases of the structures, which is a different distance, and in fact corresponds to either the farthest distance between the structures or to a center-to-center distance; either way, it is not the distance referred to in the section cited by the examiner. In the portion of the text referenced by the Applicant (column 6, line 64 7, lines 1-10), Suh simply explains that if the distances between the farthest part of the structures is less than 10 nm, then the closest parts of the structures would touch, which is not desired. However, a few paragraphs later, in the section cited by the examiner (column 7, line 65 to column 8, line 2), Suh also explains that the closest distance (that is the distance between the nanoparticles) is desired to be between 1 nm to 10 nm for the benefit described (significant enhancement of Raman signals).
Note that this interpretation of the claimed "an average distance between..." is consistent with Applicant's specification, for example Applicant’s figure 1, which illustrates a distance between (250) as being a shortest distance between, not a longest distance between (regardless, the claim doesn't specify whether it's a shortest or longest distance so it would encompass a shortest distance between).
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.
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 1-2, 4-8, 10, 12, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Nam (Au/SiO2-Nanolaminated Plasmonic Nanoantennas) in view of Suh (US 9,557,272).
Regarding claim 1¸Nam teaches a surface-enhanced Raman spectroscopy (SERS) substrate (title and abstract), comprising:
a substrate base (PET films in section 2.1 and scheme 1); and
a plurality of metal insulator metal (MIMV) nanostructures disposed on the substrate base (scheme 1; figure 1; section 2.1; page 3177, paragraph 2),
wherein each of the plurality of MTM nanostructures comprises one or more metal (gold, AU in section 2.1) or metal oxide layers and one or more insulator layers (SiO2 in section 2.1), and
wherein each of the one or more metal or metal oxide layers has an average thickness from about 20 nm to about 60 nm (30 nm in section 2.1) and each of the one or more insulator layers has an average thickness from about 5 nm to about 10 nm (10 nm in section 2.1).
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Nam doesn’t explicitly teach wherein an average distance between the plurality of MTM nanostructures disposed on the substrate base is less than 10 nm.
Like Nam (and like Applicant), Suh is also directed to a surface-enhanced Raman spectroscopy (SERS) substrate and teaches that having a distance between (“gap” corresponds to distance between) a plurality of nanostructures disposed on the substrate base is from about 1 nm to about 10 nm provides the benefit of a significant enhancement of Raman signals (column 7, line 65 to column 8, line 2).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nam such that an average distance between the plurality of MTM nanostructures disposed on the substrate base is less than 10 nm in order to provide a significant enhancement of Raman signals.
Regarding claim 2¸Nam teaches the SERS substrate is configured to produce a Raman spectrum corresponding to a pathogen sample when examined under a Raman spectroscope (SERS biochemical detection on page 3175).
Regarding claim 4¸Nam teaches at least one of the plurality of MIM nanostructures has two or more metal or metal oxide layers, and wherein at least one of the one or more insulator layers is disposed between the two or more metal or metal oxide layers (section 2.1; scheme 1; figure 1).
Regarding claim 5¸Nam teaches at least half of the plurality of MTM nanostructures has three or more metal or metal oxide layers (figure 1A; scheme 1).
Regarding claim 6¸Nam teaches the plurality of MIM nanostructures exhibit plasmonic activity in response to electromagnetic excitations having a frequency corresponding to a plasmon resonance frequency of the plurality of MIM nanostructures (pages 3175-3177).
Regarding claim 7¸Nam teaches the substrate base is flexible and comprises an elastomer, the elastomer comprising one or more of a flexible polymer, silicone, polysiloxane, latex, or combinations thereof (section 2.1, since the flexible PET base is a flexible polymer).
Regarding claim 8¸Nam teaches the one or more metal or metal oxide layers comprise at least one of gold (gold, AU), silver, copper, aluminum, or alloys or combinations thereof, and wherein the plurality of MIM nanostructures further comprise one or more adhesion layers disposed between at least two of the one or more insulator layers, the one or more metal or metal oxide layers, or the substrate base (section 2.1; Cr and Ti layers were used for adhesion).
Regarding claim 10¸Nam teaches the one or more insulator layers comprise at least one of aluminum oxide, indium tin oxide, tin oxide, silicon dioxide, zinc oxide, or combinations thereof (silicon dioxide, SiO2 in section 2.1).
Regarding claim 12¸Nam teaches a Surface Enhanced Raman Spectroscopy (SERS) biosensor, comprising the SERS substrate, wherein the SERS biosensor is configured to produce a Raman spectrum corresponding to a pathogen sample when examined under a Raman spectroscope (pages 3175-3177).
Regarding claim 24¸Nam teaches the substrate base is resilient and configured to stretch and retract without ripping or other structural damage (flexible PET on page 3182 and flexible polymer films on page 3175).
Regarding claim 25¸Nam teaches the substrate base is pre-stretched and released to reduce the average distance between the plurality of MIM nanostructures disposed on the substrate base (Nam has the structured implied by this product-by-process limitation because it can flexible and therefore capable of being stretched and pre-stretched).
Regarding claim 26¸Nam teaches the substrate base is configured to be stretched and released to decrease the average distance between the MIM nanostructures (Nam has the structured implied by this product-by-process limitation because it can flexible and therefore capable of being stretched and released).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nam and Suh as applied to claim 1 above, and further in view of Chen (US 2016/0146736).
Regarding claim 3¸Nam doesn’t explicitly teach at least one of the one or more insulator layers is disposed directly on the substrate base between at least one of the one or more metal or metal oxide layers and the substrate base.
Like Nam (and like Applicant), Chen is directed to a surface-enhanced Raman spectroscopy substrate and teaches that when having layers of metal and insulator on the substrate, one can either form the metal (gold) layer directly on a non-conducting substrate or have one of the insulating layers (such as SiO2) directly on a substrate base, and having the insulating layer directly on the substrate base is preferred (paragraph 35).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination by having one of the insulating layers of Nam directly on a substrate base because Chen teaches this is preferred and also because it allows one to adopt the structure of Nam to a wider variety of substrate bases, including ones made from conducting materials.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nam and Suh as applied to claim 1 above, and further in view of Lee (US 20220136972 A1) and Xie (US 20140368817 A1).
Regarding claim 9, Nam doesn’t explicitly teach the one or more metal or metal oxide layers comprise at least one Al/Ge doped zinc oxides, heavily doped indium tin oxides, metal nitrides, graphene, molybdenum disulfide, tungsten disulfide, or combinations thereof.
Like Nam (and like Applicant), Lee is also directed to a Surface Enhanced Raman Spectroscopy substrate and teaches that having one or more metal or metal oxide layer comprise graphene (graphen-Au hybrid in paragraph 18) provides the benefit of a high signal-to-noise ratio (paragraph 18).
Additionally, Xie is also directed to a Surface Enhanced Raman Spectroscopy substrate and teaches one or more metal or metal oxide layers comprise at least one Al/Ge doped zinc oxides, heavily doped indium tin oxides, metal nitrides, graphene, molybdenum disulfide, tungsten disulfide, or combinations thereof (graphene in paragraph 36). Additionally, Xie teaches this provides the benefit of a large SERS enhancement factor while providing a protective coating (paragraph 36).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that at least one of the gold layers of Nam also includes graphene in order to obtain a high signal-to-noise ratio, a large SERS enhancement factor, and a protective coating.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nam and Suh as applied to claim 1 above, and further in view of Yanik (US 20210041607 A1).
Regarding claim 9, Nam doesn’t explicitly teach the one or more metal or metal oxide layers comprise at least one Al/Ge doped zinc oxides, heavily doped indium tin oxides, metal nitrides, graphene, molybdenum disulfide, tungsten disulfide, or combinations thereof.
Like Nam (and like Applicant), Yanik is also directed to optical sensors that used enhanced plasmonic activity and teaches that gold and graphene, metal nitrides are suitable substitutes for the purpose of enhancing a signal (paragraphs 13 and 40).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination by replacing the gold layers of Nam with graphene layers or metal nitride layers since these are recognized in the art as substitutes for the purposes of enhancing a signal through plasmonic activity and in order to provide the benefit of achieving a more light weight device.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Nam and Suh as applied to claim 1 above, and further in view of Jeong (KR 102212483 B1).
Regarding claim 11, Nam doesn’t explicitly teach at least one of the substrate base and the at least one of the one or more insulator is hydroxyl functionalized.
Like Nam (and like Applicant), Jeong is also directed to nano plasmonic devices and teaches at least one of the substrate base and the at least one of the one or more insulator layers is hydroxyl functionalized (page 3 of translation). Additionally, Jeong teaches this provides the benefit of ensuring quality adhesion (page 3 of translation).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that at least one of the substrate base and the at least one of the one or more insulator layers is disposed directly on the substrate base is hydroxyl functionalized in order to ensure quality adhesion.
Claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Nam and Suh as applied to claim 1 above, and further in view of Kwon (US 20180136136 A1).
Regarding claims 21-23, Nam doesn’t explicitly teach the average distance between the plurality of MIM nanostructures is from 1 nm to 7 nm (claim 21); the average distance between the plurality of MIM nanostructures is from 1 nm to 5 nm (claim 22); the average distance between the plurality of MIM nanostructures is 5 nm or less (claim 23).
However, in the above combination, Suh teaches that having a distance between (“gap” corresponds to distance between) a plurality of nanostructures disposed on the substrate base is from about 1 nm to about 10 nm provides the benefit of a significant enhancement of Raman signals (column 7, line 65 to column 8, line 2). Additionally, it’s known in the field of enhanced Raman spectroscopy to have average distances between 1 nm and 5 nm (including less than 5 nm), for example, see Kwon, paragraphs 25-26. It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination to try a variety of average distances including average distances between 1 nm and 5nm (including less than 5 nm) order to optimize the Raman signal enhancement.
Claims 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Nam and Suh as applied to claims 1 and 5 above, and further in view of Nam2 (US 20110124008 A1).
Regarding claims 27-28, Nam teaches the one or more insulator layers comprise silicon dioxide (SiO2 in section 2.1)
Nam doesn’t explicitly teach the one or more metal or metal oxide layers comprise silver.
However, Nam teaches the one or more metal or metal oxide layers comprise gold (gold, AU in section 2.1). Nam2 is also concerned with surface enhanced Raman scattering and teaches that gold and silver can both be used as the metal in surface enhanced Raman scattering, each has their own advantages, with the advantages of silver including having a superior Raman scattering effect (paragraphs 4-5).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the one or more metal or metal oxide layers comprise silver because silver is an art-recognized substitute/equivalent for the purpose of enhancing the Raman scattering and in order to achieve a superior Raman scattering effect.
Additional Prior Art
US 20170052114 A1 (figures 5A and 10A-10B).
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US 20220244186 A1 discloses
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Conclusion
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.
THIS ACTION IS MADE FINAL. 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 RUFUS L PHILLIPS whose telephone number is (571)270-7021. The examiner can normally be reached M-Th, 2 -10 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, Michelle Iacoletti can be reached at (571) 270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RUFUS L PHILLIPS/ Examiner, Art Unit 2877