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 but they are not persuasive.
Applicant appears to argue the following:
1) The inventor has developed new methods and processes to create substrates comprising nanostructures that are less than 10 nm apart, while Nam uses a different manufacturing processes.
In response, the examiner notes that if applicant claims to have developed non-obvious methods and processes for creating the nanostructures, Applicant may file a divisional application for the method of making the nanostructures.
2) Nam requires multilayered MIM nanostructures. It's impossible to modify Nam to use the solid metal particles of Yamada without rendering Nam unsatisfactory for its intended purpose and/or changing the principle of operation.
In response, the examiner notes that the modification isn't to use solid metal particles. Yamada is a general teaching concerning the distance between nanostructures as it relates to the SERS intensity. Yamada teaches varying the distance between nanostructures (18; figure 3) and that having a distance less than 10nm provides the benefit of increasing the SERS intensity and providing a stronger enhancement of the electric field generated by the nanostructure (paragraphs 17, 62, and 72; figures 1-3). More specifically, Yamada teaches that the more the distance is narrowed, the more the SERS intensity increases because the narrower the distance between the nanostructures, the stronger the enhanced electric filed generated between the nanostructures (paragraphs 17, 62, and 72; figures 1-3). The modification is simply adjusting the distances between the nanostructures of Nam (not changing the type of nanostructures). Therefore, in the modification, each nanostructure of Nam still has the insulator and metallic layers. The nanostructures are simply closer together.
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, 6-8, 10, 12, and 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Nam (Au/SiO2-Nanolaminated Plasmonic Nanoantennas) in view of Yamada (US 20150139856 A1)
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, wherein each MIM nanostructure has a top and a bottom, the bottom disposed on the substrate base, wherein the top has a diameter equal or smaller than a diameter of the bottom (scheme 1; figure 1; section 2.1; page 3177, paragraph 2), such that an average diameter of each MIM nanostructure is from 100 nm to 300 nm (see how the nanoholes that create the nanostructures have a diameter of 180nm on page 3178, column 1, which suggest that the nanostructures have a similar diameter; more explicitly, figure 1A has a scale shown, which the examiner has annotated the figure by placing the 100nm mark on top of the middle of the nanostructure showing that the diameter is in the claimed range),
wherein an average distance between the bottoms of the plurality of MIM nanostructures disposed on the substrate base is a shown distance (figure 1),
wherein each of the plurality of MTM nanostructures comprises two or more metal (gold, AU in section 2.1) or metal oxide layers and twp or more insulator layers (SiO2 in section 2.1), at least one of the two or more insulator layers is disposed between the two or more metal or metal oxide layers (“alternating” in section 2.1) and
wherein each of the two 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 two or more insulator layers has an average thickness from about 5 nm to about 10 nm (10 nm in section 2.1).
PNG
media_image1.png
870
1030
media_image1.png
Greyscale
PNG
media_image2.png
220
240
media_image2.png
Greyscale
PNG
media_image3.png
406
944
media_image3.png
Greyscale
Nam doesn’t explicitly teach the distance is less than 10 nm.
In other words, the difference between the primary reference and the claimed invention is the distance of the nanostructures. However, it is well known in the art that the distance between nanostructures is a variable that can be varied to optimize the signal enhancement. For example, see the additional prior art, as well as Yamada. Like Nam (and like the instant application), Yamada is also directed to a surface-enhanced Raman spectroscopy (SERS) substrate and provides a general teaching of varying the distance between nanostructures (18; figure 3) and that having a distance less than 10nm provides the benefit of increasing the SERS intensity and providing a stronger enhancement of the electric field generated by the nanostructure (paragraphs 17, 62, and 72; figures 1-3). More specifically, Yamada teaches that the more the distance is narrowed, the more the SERS intensity increases because the narrower the distance between the nanostructures, the stronger the enhanced electric filed generated between the nanostructures (paragraphs 17, 62, and 72; figures 1-3).
PNG
media_image4.png
282
470
media_image4.png
Greyscale
PNG
media_image5.png
274
354
media_image5.png
Greyscale
PNG
media_image6.png
368
438
media_image6.png
Greyscale
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nam by selecting a closer nanostructure average distance, including a distance between the bottoms of less than 10nm (as a person of ordinary skill would know from figure 1 of Nam and the associated text that the bottoms of the structure of Nam are the parts of the nanostructures that are closest to each other) in order to increase the SERS intensity by providing a stronger enhancement of the electric field generated by the nanostructures.
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 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 21¸in the above combination the average distance between the bottoms of the plurality of MIM nanostructures is from 1 nm to 7 nm (Yamada, figure 3).
Regarding claim 22¸in the above combination the average distance between the bottoms of the plurality of MIM nanostructures is from 1 nm to 5 nm (Yamada, figure 3).
Regarding claim 23¸in the above combination the average distance between the bottoms of the plurality of MIM nanostructures is 5 nm or less (Yamada, figure 3).
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 Yamada 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 two or more insulator layers forms a bottom of the MIM nanostructure and is disposed directly on the substrate base between at least one of the two 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 form a bottom of the MIM nanostructure and disposed 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.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Nam and Yamada as applied to claim 1 above, and further in view of Song (Scalable High-Performance Nanolaminated SERS Substrates Based on Multistack Vertically Oriented Plasmonic Nanogaps).
Regarding claim 4¸Nam teaches at least one of the plurality of MIM nanostructures has three or more metal or metal oxide layers, and wherein at least one of the two or more insulator layers is disposed between the three or more metal or metal oxide layers (section 2.1; scheme 1; figure 1).
Nam doesn’t explicitly teach the two or more insulator layers are three or more.
Like Nam (and like Applicant), Song is directed to a surface-enhanced Raman spectroscopy substrate and teaches the two or more insulator layers are three or more (figure 1).
PNG
media_image7.png
764
1008
media_image7.png
Greyscale
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the two or more insulator layers be three or more in order to optimize the desired SERS effect.
Regarding claim 5¸in the above combination at least half of the plurality of MTM nanostructures has three or more metal or metal oxide layers and three or more insulator layers, and wherein at least two of the three or more insulator layers are disposed between the three or more metal or metal oxide layers (Nam: figure 1A and scheme 1; Song: figure 1).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nam and Yamada 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 Yamada 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 Yamada 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 forming the bottom of the MIM nanostructures 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 two 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 forming the bottom of the MIM nanostructures and is disposed directly on the substrate base is hydroxyl functionalized in order to ensure quality adhesion.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Nam and Yamada as applied to claim 1 above, and further in view of Nam2 (US 20110124008 A1).
Regarding claims 27-28, Nam teaches the two or more insulator layers comprise silicon dioxide (SiO2 in section 2.1)
Nam doesn’t explicitly teach the two or more metal or metal oxide layers comprise silver.
However, Nam teaches the two 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 two 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.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Nam, Yamada, and Song, as applied to claim 5 above, and further in view of Nam2 (US 20110124008 A1).
Regarding claim 28, the above combination teaches the three or more insulator layers comprise silicon dioxide (SiO2 in section 2.1; three in figure 1 of Song)
Nam doesn’t explicitly teach the three or more metal or metal oxide layers comprise silver.
However, Nam teaches the three 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 two 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).
PNG
media_image8.png
344
376
media_image8.png
Greyscale
PNG
media_image9.png
443
426
media_image9.png
Greyscale
US 20220244186 A1 discloses
PNG
media_image10.png
480
646
media_image10.png
Greyscale
PNG
media_image11.png
264
702
media_image11.png
Greyscale
PNG
media_image12.png
530
600
media_image12.png
Greyscale
PNG
media_image13.png
506
590
media_image13.png
Greyscale
US 20070118936 A1 reads, “[0022] Such that a high sensitivity analysis may be made, and such that a reproducible analysis may be made, the fine structure body in accordance with the present invention should preferably be designed such that a proportion of the metal nanorods located in a region, in which a distance between the metal nanorods adjacent to each other is equal to at most 10 nm, with respect to the region, in which all of the metal nanorods are located, is equal to at least 15%.”
PNG
media_image14.png
150
500
media_image14.png
Greyscale
Zhang US 20110053794 A1 discloses a distance between the nanostructures of “metallic nanopillars 150 having an inter-pillar distance 195 in a range of about 1, 10 or 20 nm to about 200 or 500 nm,” (paragraph 61)
PNG
media_image15.png
164
370
media_image15.png
Greyscale
Wang (US 20070229817 A1) teaches “3) Nano rod inter-particle distance, D: 0.5-1000 nm”
Kwon (US 20180136136 A1): 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.
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.
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
Prosecution Insights