DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 Amendment
2. Applicant’s amendments, filed 1 September 2026, with respect to the claims have been entered.
Response to Arguments
3. Applicant’s arguments, filed 1 September 2026, with respect to the rejection of claims 1, 7, and 13 under 35 U.S.C. 103 have been fully considered but they are not fully persuasive for the reasons set forth below.
4. Applicant argues on pg. 13 that the references do not teach or suggest the combination of features as recited in newly amended claim 1. The argument is not persuasive. All the features as recited are taught or suggested by references of record. See detailed rejections below.
5. Applicant argues on pg. 14-18 that Lee is non-analogous art under either the same field of endeavor or the reasonably pertinent tests. The argument is not persuasive. Lee is reasonably pertinent to a problem the inventor aims to solve (instant specification [0055]-[0056], [0065]-[0068] identifies detaching the tip of an inserted probe and leaving the diamond in the sample. [0033] teaches observation of a biological sample). Lee addresses the same problem and teaches a water-soluble sacrificial layer between a tip and a base dissolves upon insertion so that the tip detaches and remains embedded in a sample.
6. Applicant argues on pg. 18 that one would have had no reason to consult Lee’s disclosure. The argument is not persuasive. The rejection is based on reasoning and rationale drawn from the references themselves. Schell teaches that adhesion-based deposition succeeds for only approximately one third of the picked-up nanodiamonds (pg. 3). One of ordinary skill in the art would be motivated to improve the successful rate and look into Lee where the water-soluble layer provides immediate detachment upon insertion without additional actions to induce mechanical breakup.
7. Applicant argues that the combined teachings of the references would not result in the newly amended claim 1, certainly not without inappropriate hindsight analysis of the features, and certainly not with any reasonable expectation of success. The argument is not persuasive. The rejection relies only on knowledge within the level of ordinary skill at the time of the invention, including Schell’s deposition limitations and Lee’s demonstrated fluid-triggered detachment. Such combination would have reasonable expectation of success since the water-soluble film has been tested experimentally on microneedles as taught by Lee.
8. While applicant’s arguments are not fully persuasive, the previous rejections of claims 1, 7, 13, and their dependents under 35 U.S.C. 103 are withdrawn since the claim scope has changed. Applicant’s amendments have necessitated new grounds of rejection as set forth below.
Claim Rejections - 35 USC § 112
9. 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.
10. Claim 13 is 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 13 recites “a tip portion of the probe” twice in the claim. It is unclear whether the second “tip portion” is the same as the first “tip portion”. For purposes of examination, the recitations are interpreted as referring to the same tip portion.
Claim Rejections - 35 USC § 103
11. 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.
12. 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.
13. Claims 1, 7, 13 are rejected under 35 U.S.C 103 as being unpatentable over Schell et al. (2011). A scanning probe-based pick-and-place procedure for assembly of integrated quantum optical hybrid devices. Review of Scientific Instruments, 82(7), 073709. https://doi.org/10.1063/1.3615629 (hereinafter referred to as Schell), in view of Grinolds (US 20150253355), further in view of Lee, Y. J., Park, S. H., Kim, S. I., Lee, K. J., & Ryu, W. H. (2020). Rapidly Detachable Microneedles Using Porous Water‐Soluble Layer for Ocular Drug Delivery. Advanced Materials Technologies, 5(5), 1901145 (hereinafter referred as Lee).
[Note: references were supplied in previous correspondence]
14. Regarding claim 1:
Schell teaches a detection probe of a probe microscope, the detection probe (pg. 1 section II teaches an atomic force microscope combined with a confocal microscope. Pg. 2 section III teaches that the AFM tip picks up the nanodiamond. The AFM tip with the nanodiamond attached to it as a whole corresponds to the detection probe) comprising:
a probe including at least one nitrogen-vacancy center (pg. 2 section III teaches that the AFM tip picks up the nanodiamond. Pg. 1 abstract teaches nanodiamonds containing single nitrogen vacancy centers. The nanodiamond containing a single NV center corresponds to the probe); and
a support portion supporting the probe (pg. 2 section III teaches that the AFM tip is pressed on the nanodiamond and the nanodiamond attaches to the tip by surface adhesion. Pg. 4, fig. 6 teaches that the tip is a metal coated silicon tip. The silicon tip is the support portion), wherein, the detection probe includes, between the nitrogen-vacancy center and the support portion, at least a cut-off portion cutting off the nitrogen-vacancy center from the support portion (pg. 3 fig. 4(e)-(f) teach that nanodiamond is deposited at a desired position by pressing the tip on the target surface, detaching the nanodiamond containing the NV center from the tip. The interface between the tip and the nanodiamond is the cut-off portion),
the support portion is formed of a first material having a first heat conductivity and the probe is formed of a second material having a second heat conductivity that is higher than the first heat conductivity (pg. 4 teaches that the tip is a silicon tip. Pg. 1-2 teach nanodiamonds containing single nitrogen vacancy centers attached to the AFM tip. The silicon tip here is the support portion, and the nanodiamond containing the NV centers is the probe. Diamond has a higher heat conductivity than the heat conductivity of silicon),
Schell teaches measuring fluorescence from an NV center in a nanodiamond (pg. 2), but does not specifically note that the probe microscope measures a temperature of a sample.
However, Grinolds teaches a probe microscope measuring a temperature of a sample using a diamond probe including a nitrogen-vacancy center ([0020] teaches an atomic force microscope, which is a probe microscope. [0031] teaches a single-crystalline diamond scanning probe containing a single NV center. [0023] teaches that the system can be configured to detect a temperature using the NV defects, by measuring variation of axial zero-field splitting (ZFS) parameter of the NV centers. [0077] teaches that by measuring the ZFS the NV center additionally can operate as a sensitive thermometer. [0071] teaches that microwave excitation at the resonance frequency causes a fluorescence drop, allowing the resonance frequency to be measured by fluorescence measurement).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Schell in view of Grinolds such that the probe microscope measures a temperature of a sample via the nitrogen-vacancy center. The modification is an application of a known technique to a known device ready for improvement to yield predictable results. One of ordinary skill in the art would have been motivated to make such modification so that Schell’s NV center positioned with nanometer precision can serve as a sensitive thermometer (Grinolds [0077]).
Schell in view of Grinolds does not teach that the cut-off portion includes a water-soluble film disposed between the nitrogen-vacancy center and the support portion, and the water-soluble film is dissolved when the probe is inserted into the sample, to cut off, from the support portion, a tip portion of the probe including the nitrogen-vacancy center, such that a temperature measuring capability of the probe at the nitrogen-vacancy center is maintained because no thermal gradient is generated due to heat being conducted from the probe to the support portion (Claim language that does not limit a claim to a particular structure does not limit the claim scope. See MPEP 2111.04. The "such that" clause merely states the result of the stated claim limitations, which does not patentably distinguish the claimed invention from the prior art).
Lee teaches that the cut-off portion includes a water-soluble film disposed between a tip portion and the support portion (pg. 2 fig. 1 teaches a sacrificial porous layer between the tip portion and the base portion, which corresponds to the support portion. The porous layer was comprised of water-soluble polymers), and the water-soluble film is dissolved when the probe is inserted into the sample, to cut off, from the support portion, the tip portion of the probe (pg. 5 fig. 6A teaches that when the microneedle pen is dipped into PBS, the water-soluble layer is dissolved, and the tip is detached from the base).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Schell in view of Grinolds, further in view of Lee, to include a water-soluble film disposed between the nitrogen-vacancy center and the support portion, the water-soluble film being dissolved when the probe is inserted into the sample to cut off, from the support portion, a tip portion of the probe including the nitrogen-vacancy center. In combination, the released nanodiamond containing the NV center is the tip portion of the probe including the nitrogen-vacancy center. Once the tip portion of Schell in view of Grinolds, further in view of Lee is cut off from the support portion, no heat conduction path from the probe to the support portion exists, and no thermal gradient due to such conduction can be generated. Such modification would allow for a tip portion to be quickly detached from a needle upon dipping into a sample without additional actions to induce mechanical breakup (as taught in Lee pg. 1).
15. Regarding claim 7:
Schell teaches a probe microscope scanning the sample using a detection probe (pg. 1 section II teaches an atomic force microscope combined with a confocal microscope. Pg. 2 section III teaches that the AFM tip picks up the nanodiamond. The AFM tip with the nanodiamond attached to it as a whole corresponds to the detection probe. Pg. 3 teaches scanning the targeted structure with the AFM while the nanodiamond remains attached to the tip), wherein the detection probe (the AFM tip with the nanodiamond attached to it as a whole corresponds to the detection probe.) includes
a probe including at least one nitrogen-vacancy center (pg. 2 section III teaches that the AFM tip picks up the nanodiamond. Pg. 1 abstract teaches nanodiamonds containing single nitrogen vacancy centers. The nanodiamond containing a single NV center corresponds to the probe), and
a support portion supporting the probe (pg. 2 section III teaches that the AFM tip is pressed on the nanodiamond and the nanodiamond attaches to the tip by surface adhesion. Pg. 4, fig. 6 teaches that the tip is a metal coated silicon tip. The silicon tip is the support portion), and includes, between the nitrogen-vacancy center and the support portion, at least a cut-off portion cutting off the nitrogen-vacancy center from the support portion (pg. 3 fig. 4(e)-(f) teach that nanodiamond is deposited at a desired position by pressing the tip on the target surface, detaching the nanodiamond containing the NV center from the tip. The interface between the tip and the nanodiamond is the cut-off portion),
the support portion is formed of a first material having a first heat conductivity and the probe is formed of a second material having a second heat conductivity that is higher than the first heat conductivity (pg. 4 teaches that the tip is a silicon tip. Pg. 1-2 teach nanodiamonds containing single nitrogen vacancy centers attached to the AFM tip. The silicon tip here is the support portion, and the nanodiamond containing the NV centers is the probe. Diamond has a higher heat conductivity than the heat conductivity of silicon).
Schell teaches measuring fluorescence from an NV center in a nanodiamond (pg. 2), but does not specifically note that the probe microscope measures a temperature of a sample.
However, Grinolds teaches a probe microscope measuring a temperature of a sample using a diamond probe including a nitrogen-vacancy center ([0020] teaches an atomic force microscope, which is a probe microscope. [0031] teaches a single-crystalline diamond scanning probe containing a single NV center. [0023] teaches that the system can be configured to detect a temperature using the NV defects, by measuring variation of axial zero-field splitting (ZFS) parameter of the NV centers. [0077] teaches that by measuring the ZFS the NV center additionally can operate as a sensitive thermometer. [0071] teaches that microwave excitation at the resonance frequency causes a fluorescence drop, allowing the resonance frequency to be measured by fluorescence measurement).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Schell in view of Grinolds such that the probe microscope measures a temperature of a sample via the nitrogen-vacancy center. The modification is an application of a known technique to a known device ready for improvement to yield predictable results. One of ordinary skill in the art would have been motivated to make such modification so that Schell’s NV center positioned with nanometer precision can serve as a sensitive thermometer (Grinolds [0077]).
Schell in view of Grinolds does not teach that the cut-off portion includes a water-soluble film disposed between the nitrogen-vacancy center and the support portion, and the water-soluble film is dissolved when the probe is inserted into the sample, to cut off, from the support portion. a tip portion of the probe including the nitrogen-vacancy center, such that a temperature measuring capability of the probe at the nitrogen-vacancy center is maintained because no thermal gradient is generated due to heat being conducted from the probe to the support portion (Claim language that does not limit a claim to a particular structure does not limit the claim scope. See MPEP 2111.04. The "such that" clause merely states the result of the stated claim limitations, which does not patentably distinguish the claimed invention from the prior art).
Lee teaches that the cut-off portion includes a water-soluble film disposed between a tip portion and the support portion (pg. 2 fig. 1 teaches a sacrificial porous layer between the tip portion and the base portion, which corresponds to the support portion. The porous layer was comprised of water-soluble polymers), and the water-soluble film is dissolved when the probe is inserted into the sample, to cut off, from the support portion, the tip portion of the probe (pg. 5 fig. 6A teaches that when the microneedle pen is dipped into PBS, the water-soluble layer is dissolved, and the tip is detached from the base).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Schell in view of Grinolds, further in view of Lee, to include a water-soluble film disposed between the nitrogen-vacancy center and the support portion, the water-soluble film being dissolved when the probe is inserted into the sample to cut off, from the support portion, a tip portion of the probe including the nitrogen-vacancy center. In combination, the released nanodiamond containing the NV center is the tip portion of the probe including the nitrogen-vacancy center. Once the tip portion of Schell in view of Grinolds, further in view of Lee is cut off from the support portion, no heat conduction path from the probe to the support portion exists, and no thermal gradient due to such conduction can be generated. Such modification would allow for a tip portion to be quickly detached from a needle upon dipping into a sample without additional actions to induce mechanical breakup (as taught in Lee pg. 1).
16. Regarding claim 13:
A sample temperature measuring method of measuring a temperature of a sample using a probe microscope scanning the sample using a detection probe, the method comprising:
Schell teaches forming a detection probe using a probe including at least one nitrogen-vacancy center (pg. 2 section III teaches that the AFM tip picks up the nanodiamond. Pg. 1 abstract teaches nanodiamonds containing single nitrogen vacancy centers. When the AFM tip picks up the nanodiamond, it includes a nitrogen-vacancy center. The nanodiamond containing a single NV center corresponds to the probe) and a support portion supporting the probe (pg. 2 section III teaches that the AFM tip is pressed on the nanodiamond and the nanodiamond attaches to the tip by surface adhesion. Pg. 4, fig. 6 teaches that the tip is a metal coated silicon tip. The silicon tip is the support portion. The assembled tip and nanodiamond is the detection probe);
cutting off, from the support portion, a tip portion of the probe including the nitrogen- vacancy center, inserting the cut-off tip portion of the probe, including the nitrogen-vacancy center, into the sample at a predetermined point to leave the tip portion in the sample (Under the broadest reasonable interpretation, inserting into the sample encompasses placing the tip portion within the sample at a target position. Pg. 3 fig. 4(e)-(f) teach that nanodiamond is deposited at a desired position by pressing the tip on the target surface, detaching the nanodiamond containing the NV center from the tip); and wherein the support portion is formed of a first material having a first heat conductivity and the probe is formed of a second material having a second heat conductivity that is higher than the first heat conductivity (pg. 4 teaches that the tip is a silicon tip. Pg. 1-2 teach nanodiamonds containing single nitrogen vacancy centers attached to the AFM tip. The silicon tip here is the support portion, and the nanodiamond containing the NV centers is the probe. Diamond has a higher heat conductivity than the heat conductivity of silicon).
Schell teaches measuring fluorescence from an NV center in a nanodiamond (pg. 2), but does not specifically note measuring the temperature of the sample via the left nitrogen-vacancy center.
However, Grinolds teaches a probe microscope measuring a temperature of a sample using a diamond probe including a nitrogen-vacancy center ([0020] teaches an atomic force microscope, which is a probe microscope. [0031] teaches a single-crystalline diamond scanning probe containing a single NV center. [0023] teaches that the system can be configured to detect a temperature using the NV defects, by measuring variation of axial zero-field splitting (ZFS) parameter of the NV centers. [0077] teaches that by measuring the ZFS the NV center additionally can operate as a sensitive thermometer. [0071] teaches that microwave excitation at the resonance frequency causes a fluorescence drop, allowing the resonance frequency to be measured by fluorescence measurement).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Schell in view of Grinolds such that the probe microscope measures a temperature of a sample via the nitrogen-vacancy center. The modification is an application of a known technique to a known device ready for improvement to yield predictable results. One of ordinary skill in the art would have been motivated to make such modification so that Schell’s NV center positioned with nanometer precision can serve as a sensitive thermometer (Grinolds [0077]).
Schell in view of Grinolds does not specifically teach forming the detection probe further comprises forming a water-soluble film on the tip portion of the probe such that the water-soluble film on the tip portion is disposed between the nitrogen-vacancy center and the support portion, and the water-soluble film is dissolved when the probe is inserted into the sample, to cut off, from the support portion, a tip portion of the probe including the nitrogen-vacancy center, such that a temperature measuring capability of the probe at the nitrogen-vacancy center is maintained because no thermal gradient is generated due to heat being conducted from the probe to the support portion.
Lee teaches forming a water-soluble film on the tip portion such that the water-soluble film is disposed between the tip portion and the support portion (pg. 8-9 conclusion and fig. 9 teach forming the porous water-soluble sacrificial layer between the tip and the base), and that the water-soluble film is dissolved when the probe is inserted into the sample, to cut off, from the support portion, a tip portion (pg. 5 fig. 6A teaches that when the microneedle pen is dipped into PBS, the water-soluble layer is dissolved, and the tip is detached from the base).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Schell in view of Grinolds, further in view of Lee, to include a water-soluble film disposed between the nitrogen-vacancy center and the support portion, the water-soluble film being dissolved when the probe is inserted into the sample to cut off, from the support portion, a tip portion of the probe including the nitrogen-vacancy center. In combination, the released nanodiamond containing the NV center is the tip portion of the probe including the nitrogen-vacancy center. Once the tip portion of Schell in view of Grinolds, further in view of Lee is cut off from the support portion, the result is necessarily present that no heat conduction path from the probe to the support portion exists, and no thermal gradient due to such conduction can be generated. Thus, a temperature measuring capability of the probe at the nitrogen-vacancy center is maintained (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. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). See MPEP 2112.02). Such modification would allow for a tip portion to be quickly detached from a needle upon dipping into a sample without additional actions to induce mechanical breakup (as taught in Lee pg. 1).
17. Claims 6, 12 are rejected under 35 U.S.C 103 as being unpatentable over Schell in view of Grinolds, further in view of Lee, further in view of Duan, W., Li, X., Shen, Y., Yang, K. & Zhang, H. (2021). Synthesis of highly branched water-soluble polyester and its surface sizing agent strengthening mechanism. e-Polymers, 21(1), 027-037. https://doi.org/10.1515/epoly-2021-0004 (hereinafter referred to as Duan).
[Note: references were supplied in previous correspondence].
18. Regarding claim 6:
The modified invention above teaches the detection probe according to claim 1. Schell in view of Grinolds, further in view of Lee fails to teach that wherein the water-soluble film is formed of a water-soluble polyester resin or a water-soluble acrylic resin.
However, Duan discloses that wherein the water-soluble film is formed of a water-soluble polyester resin or a water-soluble acrylic resin (pg. 28 teaches that water soluble polyester, which is a type of polyester resin, has water-soluble, good film-forming, and excellent mechanical properties).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Schell in view of Grinolds, further in view of Lee, further in view of Duan to include that wherein the water-soluble film is formed of a water-soluble polyester resin or a water-soluble acrylic resin. Such modification would allow for a water-soluble film with good film-forming and excellent mechanical properties (as taught in Duan pg. 28).
19. Regarding claim 12:
The modified invention above teaches the probe microscope according to claim 7. Schell in view of Grinolds, further in view of Lee fails to disclose that wherein the water-soluble film is formed of a water-soluble polyester resin or a water-soluble acrylic resin.
However, Duan discloses that wherein the water-soluble film is formed of a water-soluble polyester resin or a water-soluble acrylic resin (pg. 28 teaches that water soluble polyester, which is a type of polyester resin, has water-soluble, good film-forming, and excellent mechanical properties).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Schell in view of Grinolds, further in view of Lee, further in view of Duan to include that wherein the water-soluble film is formed of a water-soluble polyester resin or a water-soluble acrylic resin. Such modification would allow for a water-soluble film with good film-forming and excellent mechanical properties (as taught in Duan pg. 28).
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.
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/LARRY LI/
Examiner, Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
