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 with respect to claim(s) 1-7 and 9-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 and 9-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “the second thin film equally being composed of at least one two-dimensional material and having a thickness of less than 10 nm”. It is unclear whether the term “equally” implies that the first thin film and the second thin film have the same dimensions, material, thickness, or all of these, or if the term “equally” implies that the second thin film is merely similar to the first thin film. Therefore, the precise scope of the claim cannot be ascertained.
Claims 2 and 3 inherit the limitations of claim 1.
Claim 4 recites “a cell having a circumference formed by the second thin film locally being in contact with the second thin film”. It is unclear what structural arrangement is embodied by the second thin film being in contact with the second thin film.
Claim 4 recites “a cell having a circumference formed by the second thin film locally being in contact with the second thin film” but then recites that “the at least one spherical nanoparticle defining a thickness of the cell”. It is unclear how the spherical nanoparticle alone can define the thickness of the cell since claim 1 specifies that the second thin film (which is part of the cell, as claimed in claim 4) has a thickness, and is separate from the spherical nanoparticle “functionally constituting a spacer between the first thin film and the second thin film”.
Claims 5-7 and 9-12 inherit the limitations of claim 1
Claim 13 recites “the organic material” in claim 7. There is insufficient antecedent basis for this limitation in the claim. Although claim 12 recites an organic material, claim 13 does not depend upon claim 12.
Claim 14 inherits the limitations of claim 1.
Claim 15 recites “the thin film” in claim 1. It is unclear whether this refers to the “first thin film” in claim 1 or the “second thin film” in claim 1.
16 inherits the limitations of claim 1.
Claim 17 recites “the second thin film equally being composed of at least one two-dimensional material and having a thickness of less than 10 nm”. It is unclear whether the term “equally” implies that the first thin film and the second thin film have the same dimensions, material, thickness, or all of these, or if the term “equally” implies that the second thin film is merely similar to the first thin film. Therefore, the precise scope of the claim cannot be ascertained.
Claim 18 recites “forming a cell by bringing the second thin film locally in contact with first thin film”, but claim 17, upon which claim 18 depends, recites that “at least one spherical nanoparticle is comprised between the second thin film and the support base, whereby the at least one spherical nanoparticle functionally constitute a spacer between the first thin film and second thin film”. If the spherical nanoparticles constitute a spacer between the first and second thin films (as in claim 17), then it is impossible for the for the first and second thin films to contact one another (as in claim 18). It is therefore unclear whether the second thin film contacts the first thin film, or the at least one spherical nanoparticle functionally constitutes a spacer between the first thin film and the second thin film.
Claim 19 inherits the limitations of claim 17.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4, 5, 6, 9, 10, 15, 17, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Al-Hazmi et al. U.S. PGPUB No. 2017/0203968.
Regarding claim 1, Al-Hazmi discloses a thin-film-based assembly, comprising: a support base comprising a first thin film (the first of the “1-20 layers of graphene” [0070]) composed of at least one two-dimensional material (“As used herein, “graphene nanosheets” refers to solid graphene material having one, two or three dimensions of less than 100 nm” [0068]), the first thin film having a thickness of less than 10 nm (“the graphene nanosheets produced by the method described herein in any of its embodiments have an average thickness of less than 10 nm” [0070]); and a second thin film (the third of the “1-20 layers of graphene” [0070]) placed on the support base (“the graphene nanosheets produced by the method described herein in any of its embodiments comprise 1-20 layers of graphene” [0070]), the second thin film equally being composed of at least one two-dimensional material (“As used herein, “graphene nanosheets” refers to solid graphene material having one, two or three dimensions of less than 100 nm” [0068]) and having a thickness of less than 10 nm (“the graphene nanosheets produced by the method described herein in any of its embodiments have an average thickness of less than 10 nm” [0070]), wherein the thin-film-based assembly comprises at least one spherical nanoparticle (“In one embodiment, the graphene produced by the method described herein may be synthesized and formed into a variety of morphologies and forms including, but not limited to, nanosheets… nanoparticles… nanospheres” [0068]) comprised between the second thin film and the support base, the at least one spherical nanoparticle functionally constituting a spacer between the first thin film and the second thin film (the support base is the first of the “1-20 layers of graphene” [0070], the spherical nanoparticle is the second of the “1-20 layers of graphene” [0070], where paragraph [0068] identifies that this layer may be nanospheres, and the third of the “1-20 layers of graphene” [0070] is the claimed second thin film).
Regarding claim 2, Al-Hazmi discloses that the at least one spherical nanoparticle (“In one embodiment, the graphene produced by the method described herein may be synthesized and formed into a variety of morphologies and forms including, but not limited to, nanosheets… nanoparticles… nanospheres” [0068]) has a diameter in a range between 1 nanometer and 1 micrometer (“the graphene nanosheets produced by the method described herein in any of its embodiments have an average diameter or longest dimension width of 1-200 μM” [0071]).
Regarding claim 4, Al-Hazmi discloses a cell having a circumference (“In one embodiment, the graphene nanosheets produced by the method described herein in any of its embodiments have an average diameter or longest dimension width of 1-200 μM” [0071] – since the sheet has a diameter, then it also has a circumference) formed by the second thin film locally being in contact with the second thin film (since one local portion of the second thin film necessarily contacts an adjacent local portion of the second thin film), the at least one spherical nanoparticle defining a thickness of the cell (“the graphene nanosheets produced by the method described herein in any of its embodiments have an average thickness of less than 10 nm” [0070]).
Regarding claim 5, Al-Hazmi discloses that the cell has lateral dimensions in a range between 10 nanometer and 50 micrometer (“In one embodiment, the graphene nanosheets produced by the method described herein in any of its embodiments have an average diameter or longest dimension width of 1-200 μM” [0071]).
Regarding claim 6, Al-Hazmi discloses that the cell comprises a liquid (“a method for producing graphene nanosheets comprising i) treating graphite material with a liquid intercalating agent solution comprising at least one dicarboxylic acid for a first period of time to form a graphite intercalation compound” [0011]).
Regarding claim 9, Al-Hazmi discloses that the at least one spherical nanoparticle has a main body of inorganic material (“In one embodiment, the graphene produced by the method described herein may be synthesized and formed into a variety of morphologies and forms including, but not limited to, nanosheets… nanoparticles… nanospheres” [0068]) wherein the inorganic material comprises at least one of the followings: a polymer, a metal, a metal oxide, a silicate and a ceramic (Zhang et al. U.S. PGPUB No. 2019/0195856 evinces that the graphene material of Al-Hazmi is an example of a metal: “Suitable metals include… graphene” [Zhang: 0057]).
Regarding claim 10, Al-Hazmi discloses that the at least one spherical nanoparticle has a main body of inorganic material (“In one embodiment, the graphene produced by the method described herein may be synthesized and formed into a variety of morphologies and forms including, but not limited to, nanosheets… nanoparticles… nanospheres” [0068]) wherein the inorganic material comprises at least one of the followings: a polymer, a metal, a metal oxide, a silicate and a ceramic (Zhang et al. U.S. PGPUB No. 2019/0195856 evinces that the graphene material of Al-Hazmi is an example of a metal: “Suitable metals include… graphene” [Zhang: 0057]).
Regarding claim 15, Al-Hazmi discloses that the thin film comprises graphene (“In a preferred embodiment, the graphene nanosheets produced by the method described herein in any of its embodiments comprise 1-20 layers of graphene” [0070]).
Regarding claim 17, Al-Hazmi discloses a method of forming a thin-film-based assembly (“the graphene nanosheets produced by the method described herein in any of its embodiments comprise 1-20 layers of graphene” [0070]), comprising: laying out spherical nanoparticles (“In one embodiment, the graphene produced by the method described herein may be synthesized and formed into a variety of morphologies and forms including, but not limited to, nanosheets… nanoparticles… nanospheres” [0068]) on a support base comprising a first thin film (the first of the “1-20 layers of graphene” [0070]) composed of at least one two-dimensional material (“As used herein, “graphene nanosheets” refers to solid graphene material having one, two or three dimensions of less than 100 nm” [0068]), the first thin film having a thickness of less than 10 nm (“the graphene nanosheets produced by the method described herein in any of its embodiments have an average thickness of less than 10 nm” [0070]); and placing a second thin film (the third of the “1-20 layers of graphene” [0070]) on the support base (“the graphene nanosheets produced by the method described herein in any of its embodiments comprise 1-20 layers of graphene” [0070]), the second thin film equally being composed of at least one two-dimensional material (“As used herein, “graphene nanosheets” refers to solid graphene material having one, two or three dimensions of less than 100 nm” [0068]) and having a thickness of less than 10 nm (“the graphene nanosheets produced by the method described herein in any of its embodiments have an average thickness of less than 10 nm” [0070]), the second thin film being placed on the support base so that at least one spherical nanoparticle is comprised between the second thin film and the support base, whereby the at least one spherical nanoparticle functionally constitute a spacer between the first thin film and second thin film (the support base is the first of the “1-20 layers of graphene” [0070], the spherical nanoparticle is the second of the “1-20 layers of graphene” [0070], where paragraph [0068] identifies that this layer may be nanospheres, and the third of the “1-20 layers of graphene” [0070] is the claimed second thin film).
Regarding claim 18, Al-Hazmi discloses forming a cell by bringing the second thin film locally in contact with first thin film at least one of the spherical nanoparticle defining a thickness of the cell (“the graphene nanosheets produced by the method described herein in any of its embodiments comprise 1-20 layers of graphene” [0070] – “the graphene nanosheets produced by the method described herein in any of its embodiments have an average thickness of less than 10 nm” [0070]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Al-Hazmi et al. U.S. PGPUB No. 2017/0203968.
Regarding claim 3, Al-Hazmi discloses the claimed invention except that there is no explicit disclosure that several spherical nanoparticles account for 50% to 90% in a least a portion of a space between the first thin film and the second thin film. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to distribute the several spherical nanoparticles so as to account for 50% to 90% in a least a portion of a space between the first thin film and the second thin film since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to distribute the several spherical nanoparticles so as to account for 50% to 90% in a least a portion of a space between the first thin film and the second thin film for the purpose of controlling a porosity of a graphene layer thereby determining the hydrophilicity of the structure when used for liquid applications. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
Claim(s) 7, 16, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Al-Hazmi et al. U.S. PGPUB No. 2017/0203968 in view of Russo et al. U.S. PGPUB No. 2022/0185674.
Regarding claim 7, Al-Hazmi discloses the claimed invention except there is no explicit disclosure that the cell formed by the graphene sheets comprises a sample to be analyzed.
Russo discloses a nanoparticle is laid out on a graphene support base together with a sample to be analyzed whereby the at least one nanoparticle and the sample are comprised in a medium (“Functionalized graphene surfaces can be used to orient and distribute biological molecules within a thin vitreous ice film, and they reduce the motion of the specimen, improving the image quality” [0059] – “gold nanoparticles… in ice on graphene (darker crosses)” [0196]).
It would have been obvious to one possessing ordinary skill in the art before the effective filing date of the claimed invention to have modified Al-Hazmi with the sample of Russo in order to utilize the graphene structure of Al-Hazmi as a support in electron microscopy, where the methods of Al-Hazmi allow greater control over the formation of the graphene, and Russo expresses that such control allows for the formation of an optimal support using the graphene (see paragraph [0007] of Russo).
Regarding claim 16, Al-Hazmi discloses the claimed invention except there is no explicit disclosure that the cell formed by the graphene sheets comprises a sample to be analyzed.
Russo discloses a nanoparticle is laid out on a graphene support base together with a sample to be analyzed whereby the at least one nanoparticle and the sample are comprised in a medium (“Functionalized graphene surfaces can be used to orient and distribute biological molecules within a thin vitreous ice film, and they reduce the motion of the specimen, improving the image quality” [0059] – “gold nanoparticles… in ice on graphene (darker crosses)” [0196]).
It would have been obvious to one possessing ordinary skill in the art before the effective filing date of the claimed invention to have modified Al-Hazmi with the sample of Russo in order to utilize the graphene structure of Al-Hazmi as a support in electron microscopy, where the methods of Al-Hazmi allow greater control over the formation of the graphene, and Russo expresses that such control allows for the formation of an optimal support using the graphene (see paragraph [0007] of Russo).
Regarding claim 19, Al-Hazmi discloses the claimed invention except that while Al- Hazmi discloses nanospheres on a graphene support base (“In one embodiment, the graphene produced by the method described herein may be synthesized and formed into a variety of morphologies and forms including, but not limited to, nanosheets… nanoparticles… nanospheres” [0068] – “the graphene nanosheets produced by the method described herein in any of its embodiments comprise 1-20 layers of graphene” [0070]), there is no explicit disclosure that the nanoparticle is laid out on the support base together with a sample to be analyzed whereby the at least one spherical nanoparticle and the sample are comprised in a medium.
Russo discloses a nanoparticle is laid out on a graphene support base together with a sample to be analyzed whereby the at least one nanoparticle and the sample are comprised in a medium (“Functionalized graphene surfaces can be used to orient and distribute biological molecules within a thin vitreous ice film, and they reduce the motion of the specimen, improving the image quality” [0059] – “gold nanoparticles… in ice on graphene (darker crosses)” [0196]).
It would have been obvious to one possessing ordinary skill in the art before the effective filing date of the claimed invention to have modified Al-Hazmi with the sample of Russo in order to utilize the graphene structure of Al-Hazmi as a support in electron microscopy, where the methods of Al-Hazmi allow greater control over the formation of the graphene, and Russo expresses that such control allows for the formation of an optimal support using the graphene (see paragraph [0007] of Russo).
Claim(s) 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Al-Hazmi et al. U.S. PGPUB No. 2017/0203968 in view of Peyman U.S. PGPUB No. 2019/0030190.
Regarding claim 11, Al-Hazmi discloses the claimed invention except that there is no explicit disclosure that the at least one spherical nanoparticle comprises a coating on the main body of inorganic graphene.
Peyman discloses at least one spherical nanoparticle (“Nanoparticles may be of any shape: e.g., spheres” [0024]) having a main body of inorganic graphene (“functionalized quantum dot nanoparticles, such as… graphene” [0029]) wherein the at least one spherical nanoparticle comprises an organic coating on the main body (“a method for delivering antibody coated nanoparticles such as… graphene” [0345]), wherein “the method uses a ribbon of piezoelectric nanoparticles attached to an “on”/“off” switch of a small implantable battery of a small diode” [0294].
It would have been obvious to one possessing ordinary skill in the art before the effective filing date of the claimed invention to have modified Al-Hazmi with the organic coating of Peyman in order to expand the usefulness of the graphene structure of Al-Hazmi for delivering antibodies, as suggested by Peyman, thereby relying upon the piezoelectric qualities of the graphene to deliver antibodies in a healthcare method.
Regarding claim 12, Al-Hazmi discloses the claimed invention except that there is no explicit disclosure that the at least one spherical nanoparticle comprises a coating on the main body of inorganic graphene.
Peyman discloses at least one spherical nanoparticle (“Nanoparticles may be of any shape: e.g., spheres” [0024]) having a main body of inorganic graphene (“functionalized quantum dot nanoparticles, such as… graphene” [0029]) wherein the at least one spherical nanoparticle comprises an organic coating on the main body (“a method for delivering antibody coated nanoparticles such as… graphene” [0345]), wherein “the method uses a ribbon of piezoelectric nanoparticles attached to an “on”/“off” switch of a small implantable battery of a small diode” [0294].
It would have been obvious to one possessing ordinary skill in the art before the effective filing date of the claimed invention to have modified Al-Hazmi with the organic coating of Peyman in order to expand the usefulness of the graphene structure of Al-Hazmi for delivering antibodies, as suggested by Peyman, thereby relying upon the piezoelectric qualities of the graphene to deliver antibodies in a healthcare method.
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Al-Hazmi et al. U.S. PGPUB No. 2017/0203968 in view of Jaiswal U.S. PGPUB No. 2016/0085003.
Regarding claim 13, Al-Hazmi discloses the claimed invention except that while Lee is directed generally to transparent coatings (“introducing graphite powder to double-sided adhesive tapes and repeating the cleavage process several times until the graphite flakes become transparent with a thickness of approximately 15-110 nm” [0008]) comprising nanoparticles (“In one embodiment, the graphene produced by the method described herein may be synthesized and formed into a variety of morphologies and forms including, but not limited to, nanosheets… nanoparticles… nanospheres” [0068]), there is no explicit disclosure that the nanoparticles are coated with an organic material.
Jaiswal discloses a transparent thin-film-based assembly (“In general this disclosure relates to optical elements used independently or inside systems or subsystems that may use either UV, DUV, EUV and soft X-rays. The element can be a… transmissive element” [0011]) comprising: a support base (“the material [316] is sandwiched between the top and bottom layers of the mask 310” [0091]); and a thin film placed on the support base (“the material [316] is sandwiched between the top and bottom layers of the mask 310” [0091]), wherein the thin-film-based assembly comprises at least one spherical nanoparticle (“the nanostructural features are either the spheres” [0042]) comprised between the thin film and the support base, the at least one spherical nanoparticle functionally constituting a spacer between the thin film and the support base (“the material [316] is sandwiched between the top and bottom layers of the mask 310” [0091]). The coating comprises an organic material comprising at least one of the following: an antibody and a protein (“The material may be an organic material or a biomaterial. The material may further comprise micro or nano structural features of the organic or bio material. Examples of organic materials or biomaterials, include DNA, proteins, or other molecular or genomic material which have lower absorption in the wavelengths” [0054]), such that the organic material has an affinity with respect to a sample comprised in the cell, the affinity having a fixing effect on the sample within the cell (“The materials can further improve performance in non-lithography systems which may use UV, EUV, or soft X-ray wavelengths. For example… imaging and microscopy systems” [0037]).
It would have been obvious to one possessing ordinary skill in the art before the effective filing date of the claimed invention to have modified Al-Hazmi with the protein of Jaiswal in order to optimize the material of the device for transmission of light of specific wavelengths for controlling a light irradiating apparatus.
Regarding claim 14, Al-Hazmi discloses the claimed invention except that while Lee is directed generally to transparent coatings (“introducing graphite powder to double-sided adhesive tapes and repeating the cleavage process several times until the graphite flakes become transparent with a thickness of approximately 15-110 nm” [0008]) comprising nanoparticles (“In one embodiment, the graphene produced by the method described herein may be synthesized and formed into a variety of morphologies and forms including, but not limited to, nanosheets… nanoparticles… nanospheres” [0068]), there is no explicit disclosure that the nanoparticles are coated with an organic material.
Jaiswal discloses a transparent thin-film-based assembly (“In general this disclosure relates to optical elements used independently or inside systems or subsystems that may use either UV, DUV, EUV and soft X-rays. The element can be a… transmissive element” [0011]) comprising: a support base (“the material [316] is sandwiched between the top and bottom layers of the mask 310” [0091]); and a thin film placed on the support base (“the material [316] is sandwiched between the top and bottom layers of the mask 310” [0091]), wherein the thin-film-based assembly comprises at least one spherical nanoparticle (“the nanostructural features are either the spheres” [0042]) comprised between the thin film and the support base, the at least one spherical nanoparticle functionally constituting a spacer between the thin film and the support base (“the material [316] is sandwiched between the top and bottom layers of the mask 310” [0091]). The coating comprises an organic material comprising at least one of the following: an antibody and a protein (“The material may be an organic material or a biomaterial. The material may further comprise micro or nano structural features of the organic or bio material. Examples of organic materials or biomaterials, include DNA, proteins, or other molecular or genomic material which have lower absorption in the wavelengths” [0054]), such that the organic material has an affinity with respect to a sample comprised in the cell, the affinity having a fixing effect on the sample within the cell (“The materials can further improve performance in non-lithography systems which may use UV, EUV, or soft X-ray wavelengths. For example… imaging and microscopy systems” [0037]).
It would have been obvious to one possessing ordinary skill in the art before the effective filing date of the claimed invention to have modified Al-Hazmi with the protein of Jaiswal in order to optimize the material of the device for transmission of light of specific wavelengths for controlling a light irradiating apparatus.
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 JASON L MCCORMACK whose telephone number is (571)270-1489. The examiner can normally be reached M-Th 7:00AM-5:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Kim can be reached at 571-272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON L MCCORMACK/ Examiner, Art Unit 2881
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