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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/30/2026 has been entered.
Response to Arguments
Applicant’s arguments have been considered but are not found to be persuasive.
Applicant argues:
At p. 7 para 5 that Chen teaches “Applicant disagrees that Chen teaches "a nanoscale patterned elliptical enhancement structure disposed upon the nanoscale patterned dielectric adhesion layer."…”
Examiner response:
The examiner respectfully disagrees. Fig. 4 of Chen teaches the limitation "a nanoscale patterned elliptical enhancement structure disposed upon the nanoscale patterned dielectric adhesion layer". Also, Zhang and Chen are proper to combine because Chen is an extension of Zhang, for having an adhesion layer 22 as shown in fig. 4.
Applicant argues:
At p. 14 last para that Wilson teaches “The nanoparticle of Wilson is released from the substrate after fabrication…”
Examiner response:
The examiner respectfully disagrees. Wilson teaches the Raman active nanoparticles are on a substrate (para [0041], claim 23). Similar to Chen, Wilson is an extension of Zhang Chen, by extending the element 108 as shown in fig. 1h.
The response of the examiner to the arguments in p. 17 to p. 18 para 1 last para is the same as in line 3 above.
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.
Claim 42, 43, 48, 56, 60, 61, 62, 63 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang, X. et al., US 8685743 B2 (hereinafter Zhang), and in view of Chen, F. F. et al., US 20160146736 A1 (hereinafter Chen), and further in view of Verre, Ruggero, et al. "Optical magnetism and plasmonic Fano resonances in metal–insulator–metal oligomers." Nano letters 15.3 (2015): 1952-1958 (hereinafter Verre).
Regarding claim 42, Zhang teaches an apparatus for optical analysis, said apparatus comprising: a substrate (Fig. 1a “Quartz Substrate”); “a three dimensional nanoscale patterned enhancement structure (fig. 1(a) “Ag-SiO2-Ag”)”; and a laser illumination source positioned to provide illumination to said enhancement structure (fig. 1(g), col 20 lines 51-55) “wherein said illumination is polarized in a direction parallel to said major axis of said MIM structure and wherein a thickness, a length of said major axis, and a length of said minor axis of said elliptical enhancement structure are selected so that an electric dipole resonance of said MIM structure is matched to a predetermined wavelength of said illumination” (this is shown in fig. 1(a); the E-field direction is parallel to the MIM; the E-field is coming from the laser and is polarized in a direction parallel to the MIM).
Zhang fails to teach a nanoscale patterned dielectric adhesion layer on a portion of a top surface of said substrate; an elliptical enhancement structure disposed upon said nanoscale patterned dielectric adhesion structures deposited elliptical enhancement structure comprising an elliptical metal-insulator- metal (MIM) structure having a major axis longer than a minor axis, a magnetic dipole resonance of said MIM structure is matched to a predetermined Stokes and/or fluorescence wavelength associated with emission from scattering moieties adjacent to said MIM structure.
Chen, from the same field of endeavor as Zhang, teaches a nanoscale patterned dielectric adhesion layer on a portion of a top surface of said substrate (fig. 4 element 22); an “elliptical enhancement structure disposed upon said nanoscale patterned dielectric adhesion structures deposited elliptical enhancement structure comprising an elliptical metal-insulator- metal (MIM) structure having a major axis longer than a minor axis” (fig. 4 NPR 20 disks are oval in shape; para [0019] lines 1-5).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Chen to Zhang to have a nanoscale patterned dielectric adhesion layer on a portion of a top surface of said substrate; an elliptical enhancement structure disposed upon said nanoscale patterned dielectric adhesion structures deposited elliptical enhancement structure comprising an elliptical metal-insulator- metal (MIM) structure having a major axis longer than a minor axis in order to enhance the Raman intensity (para [0004] last sentence).
Zhang, when modified by Chen, does not explicitly teach a magnetic dipole resonance of said MIM structure is matched to a predetermined Stokes and/or fluorescence wavelength associated with emission from scattering moieties adjacent to said MIM structure (Zhang suggesting NPR using magnetic fields, col 3 last para).
Verre, from the same field of endeavor as Zhang, teaches a magnetic dipole resonance of said MIM structure is matched to a predetermined Stokes and/or fluorescence wavelength associated with emission from scattering moieties adjacent to said MIM structure (Abstract lines 8-15).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Verre to Zhang, when modified by Chen, to have a magnetic dipole resonance of said MIM structure is matched to a predetermined Stokes and/or fluorescence wavelength associated with emission from scattering moieties adjacent to said MIM structure in order to increase the signal of the scattering (Abstract lines 8-15).
Regarding claim 43, Zhang teaches the apparatus of claim 42, further comprising: illumination optics to direct said illumination onto said enhancement structure and direct polarization of said illumination along the said MIM structure (this is shown in figs. 1a and 1g); “collection optics to collect light emitted from moieties illuminated by said illumination source; and detection optics to spectrally analyze said collected light and provide an interface to a computer or other electronic instrumentation” (fig. 5A shows an optical instrument implementing the NPR).
Zhang does not teach an elliptical enhancement structure and illumination along said major axis.
Chen, from the same field of endeavor as Zhang, teaches elliptical enhancement structure (fig. 4 NPR 20 disks are oval in shape; para [0019] lines 1-5) and illumination along said major axis (fig. 4 NPR 20 disks are oval in shape; para [0019] lines 1-5; replacing NPR 20 of Chen to fig. 1a of Zhang discloses the limitation “illumination along said major axis”).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Chen to Zhang to have an elliptical enhancement structure and illumination along said major axis in order to enhance the Raman intensity (para [0004] last sentence).
Regarding claim 48, Zhang does not teach the apparatus of claim 42, wherein regions of high signal enhancement for surface-enhanced Raman scattering (SERS) or surface-enhanced fluorescence- based analysis provide a hot spot that is located at opposed portions of a perimeter of said MIM structure in the direction of polarization of said illumination at an interface between said elliptical enhancement structure and said dielectric adhesion layer.
Chen, from the same field of endeavor as Zhang, teaches the apparatus of claim 42, wherein regions of high signal enhancement for surface-enhanced Raman scattering (SERS) (para [0019] lines 5-10) or surface-enhanced fluorescence- based analysis provide “a hot spot that is located at opposed portions of a perimeter of said MIM structure” (para [0019 lines 5-8]) in the direction of polarization of said illumination at an interface between said elliptical enhancement structure and said dielectric adhesion layer (the hot spot occurred within elements 30, 28, 26 and element 22, same direction as polarization of the illumination; also Zhang teaches this limitation in fig. 6).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Chen to Zhang to have the apparatus of claim 42, wherein regions of high signal enhancement for surface-enhanced Raman scattering (SERS) or surface-enhanced fluorescence- based analysis provide a hot spot that is located at opposed portions of a perimeter of said MIM structure in the direction of polarization of said illumination at an interface between said elliptical enhancement structure and said dielectric adhesion layer in order to enhance the Raman intensity (para [0004] last sentence).
Regarding claim 56, Zhang does not teach the apparatus of claim 42, wherein said elliptical enhancement structure is one member of a plurality of nanoscale enhancement structures forming an array disposed upon nanoscale dielectric adhesion layers positioned on said top surface of the substrate.
Chen, from the same field of endeavor as Zhang, teaches wherein said elliptical enhancement structure is one member of a plurality of nanoscale enhancement structures forming an array disposed upon nanoscale dielectric adhesion layers positioned on said top surface of the substrate (Fig. 2 “22”, para [0035] last sentence; see US 20190292047 A1 as an evidentiary reference that SiO2 is a strong adhesion layer, para [0040] lines 18-23).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Chen to Zhang to have wherein said elliptical enhancement structure is one member of a plurality of nanoscale enhancement structures forming an array disposed upon nanoscale dielectric adhesion layers positioned on said top surface of the substrate in order to adhere the nanoplasmonic resonator to the substrate in order to enhance the Raman intensity (para [0004] last sentence).
Regarding claim 60, Zhang teaches the apparatus of claim 56, wherein said substrate comprises glass, silicon dioxide (SiO2) (Fig. 1a “Quartz Substrate” has silicon dioxide), or an amorphous sapphire material.
Regarding claim 61, Zhang teaches the apparatus of claim 56, wherein said elliptical enhancement structure is an MIM structure with an insulator comprising at least one of silicon dioxide (SiO2) (Fig. 1 “Ag-SiO2-Ag”), silicon nitride (Si3N4), or aluminum oxide (A1203) and a metal comprising at least one of gold (Au), silver (Ag) (Fig. 1 “Ag-SiO2-Ag”), aluminum (Al), or one or more alloys thereof.
Regarding claim 62, Zhang teaches the apparatus of claim 48, further comprising a nanochannel in communication with said hot spot (the nanochannels are the spaces between the NPR array as shown in fig. 1d).
Regarding claim 63, Zhang does not teach the apparatus of claim 48, wherein said patterned dielectric adhesion layer is between 0.1 nm and 10 nm in thickness.
Chen, from the same field of endeavor as Zhang, teaches the apparatus of claim 48, wherein said patterned dielectric adhesion layer is 1000 nm or less than 1000 nm in thickness (para[0017] last sentence).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Chen to Zhang to have the apparatus of claim 48, wherein said patterned dielectric adhesion layer is 1000 nm or less than 1000 nm in thickness in order to enhance the Raman intensity (para [0004] last sentence).
Zhang, when modified by Chen, does not explicitly teach between 0.1 nm and 10 nm in thickness.
MPEP2144.05 II.A states “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, for example in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. This means the limitation “between 0.1 nm and 10 nm in thickness” is simply a routine experimentation.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the limitation “between 0.1 nm and 10 nm in thickness” to Zhang, when modified by Chen, in order to optimize the Raman signal of the device.
Claim 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Chen and Verre, as applied to claim 42 above, and further in view of Gray, S. K. et al., US 20130286467 A1 (hereinafter Gray).
Regarding claim 47, the modified device of Zhang does not teach the apparatus of claim 42, wherein a pump wavelength is about 633 nm and/or a Stokes / fluorescence wavelength is about 666 nm.
Gray, from the same field of endeavor as Zhang, teaches the apparatus of claim 42, wherein a pump wavelength is about 633 nm (para [0034] lines 8-12) and/or a Stokes / fluorescence wavelength is about 666 nm.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Gray to the modified device of Zhang to have the apparatus of claim 42, wherein a pump wavelength is about 633 nm and/or a Stokes / fluorescence wavelength is about 666 nm in order to a strong Raman signal (para [0034] lines 8-12).
Claim 49, 50, 51, 52, 57, 58, 59 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Chen and Verre, as applied to claim 48, 56 above, and further in view of Wilson, R., et al., US 20110250464 A1 (hereinafter Wilson).
Regarding claim 49, the modified device of Zhang does not teach the apparatus of claim 48, further comprising an additional dielectric layer on said top surface of said substrate, adjacent said elliptical enhancement structure, wherein a top of said additional dielectric layer is positioned, in at least one place, to match a height above said substrate of the interface. Regarding claim 50, the modified device of Zhang does not teach the apparatus of claim 49, wherein a refractive index of said additional dielectric layer at said wavelength of the illumination is approximately matched to said refractive index of the dielectric adhesion layer. Regarding claim 51, the modified device of Zhang does not teach the apparatus of claim 49, wherein said additional dielectric layer is tilted relative to said top surface of said substrate whereby portions of the top of said additional dielectric layer are below and/or above said interface.
Wilson, from the same field of endeavor as Zhang, teaches the apparatus of claim 48, further comprising an additional dielectric layer on said top surface of said substrate (Fig. 1(h) para [0039] lines 1-5), adjacent said elliptical enhancement structure (Fig. 1(h) shows “108” is adjacent to “104”), wherein a top of said additional dielectric layer is positioned (“108” is at the top of the substrate as shown Fig. 1(h)), in at least one place, to match a height above said substrate of the interface (Fig. 1(h) “108” same height as “104”), the apparatus of claim 49, wherein a refractive index of said additional dielectric layer at said wavelength of the illumination is approximately matched to said refractive index of said dielectric adhesion layer (Fig. 1(h) “108” is SiO2 and the base is also SiO2, para [0039] lines 1-5), and the apparatus of claim 49, wherein the additional dielectric layer is tilted relative to said top surface of the substrate whereby portions of said top of said additional dielectric layer are below and/or above said interface (Fig. 1(h) shows “108” is tilted relative to the top of the substrate).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Wilson to the modified device of Zhang to have the apparatus of claim 48, further comprising an additional dielectric layer on said top surface of said substrate, adjacent said elliptical enhancement structure, wherein a top of said additional dielectric layer is positioned, in at least one place, to match a height above said substrate of the interface, the apparatus of claim 49, wherein a refractive index of said additional dielectric layer at said wavelength of the illumination is approximately matched to said refractive index of the dielectric adhesion layer, and the apparatus of claim 49, wherein said additional dielectric layer is tilted relative to said top surface of said substrate whereby portions of the top of said additional dielectric layer are below and/or above said interface in order to provide magneto-Raman multifunctional nanoparticles which can be useful in biology and medicine (para [0051] lines 3-7).
Regarding claim 52, Zhang, when modified by Chen teaches “the apparatus of claim 49, wherein polarization of said illumination is approximately parallel to said major axis of said elliptical enhancement structure” (see rejection claim 42), and
Zhang, when modified by Chen, does not teach wherein said additional dielectric layer is approximately the same thickness as said dielectric adhesion layer at a position along said major axis of said elliptical enhancement structure.
Wilson, from the same field of endeavor as Zhang, teaches wherein said additional dielectric layer is approximately the same range thickness as said dielectric adhesion layer at a position along said major axis of said elliptical enhancement structure (para [0039] lines 7-10).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Wilson to the modified device of Zhang to have wherein said additional dielectric layer is approximately the same range thickness as said dielectric adhesion layer at a position along said major axis of said elliptical enhancement structure in order to provide magneto-Raman multifunctional nanoparticles which can be useful in biology and medicine (para [0051] lines 3-7).
MPEP 2144.04 V-D, In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954), states the court held that adjustability is not patentable. This means adjusting the thickness of the additional dielectric layer and the dielectric adhesion layer to have approximately the same thickness is simply MPEP 2144.04 V-D.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have the additional dielectric layer is approximately the same thickness as the dielectric adhesion layer at a position along the major axis of the elliptical enhancement structure to Zhang in order to optimize the performance of the device.
Regarding claim 57, the modified device of Zhang does not teach the apparatus of claim 56, further comprising an additional dielectric layer on the top surface of said substrate, adjacent said plurality of nanoscale enhancement structures. Regarding claim 58, the modified device of Zhang does not teach the apparatus of claim 56, wherein an upper surface of the additional dielectric layer is approximately coplanar with top surfaces of the nanoscale dielectric adhesion layers.
Wilson, from the same field of endeavor as Zhang, teaches the apparatus of claim 56, further comprising an additional dielectric layer on the top surface of said substrate, adjacent said plurality of nanoscale enhancement structures (Fig. 1h “108” is adjacent to “104”) and the apparatus of claim 56, wherein an upper surface of the additional dielectric layer is approximately coplanar with top surfaces of the nanoscale dielectric adhesion layers (“108” is coplanar to “104”).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Wilson to the modified device of Zhang to have the apparatus of claim 56, further comprising an additional dielectric layer on the top surface of said substrate, adjacent said plurality of nanoscale enhancement structures and the apparatus of claim 56, wherein an upper surface of the additional dielectric layer is approximately coplanar with top surfaces of the nanoscale dielectric adhesion layers in order to provide magneto-Raman multifunctional nanoparticles which can be useful in biology and medicine (para [0051] lines 3-7).
Regarding claim 59, the modified device of Zhang does not teach the apparatus of claim 56, wherein said additional dielectric layer and said nanoscale dielectric adhesion layers comprise a metal oxide.
Wilson, from the same field of endeavor as Zhang, teaches the apparatus of claim 56, wherein said additional dielectric layer (“108” is SiO2, para [0039] lines 1-5) and said nanoscale dielectric adhesion layers comprise a metal oxide (Fig. 1h shows below “104” is SiO2).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Wilson to the modified device of Zhang to have the apparatus of claim 56, wherein said additional dielectric layer and said nanoscale dielectric adhesion layers comprise a metal oxide in order to provide magneto-Raman multifunctional nanoparticles which can be useful in biology and medicine (para [0051] lines 3-7).
Claim 53 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang, Chen, Verre, and Wilson as applied to claim 49 above, and further in view of Zheng, Mengjie, et al. "Three-dimensional donut-like gold nanorings with multiple hot spots for surface-enhanced raman spectroscopy." Nanotechnology 28.4 (2016): 045303 (hereinafter Zheng).
Regarding claim 53, Zhang, when modified by Chen, Verre, and Wilson, does not teach the apparatus of claim 49, wherein the illumination laser source provides light at about 633 nm.
Zheng, from the same field of endeavor as Zhang, discloses the apparatus of claim 49, wherein the illumination laser source provides light at about 633 nm (p. 6 col 1 para 1 lines 4 to col 2 para 1 line 1).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Zheng to Zhang, when modified by Chen, Verre, and Wilson, to have the apparatus of claim 49, wherein the illumination laser source provides light at about 633 nm in order to enhance Raman emission to contribute to the overall SERS signal (p. 6 col 1 para 1 lines 4 to col 2 para 1 line 1).
Conclusion
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/ROBERTO FABIAN JR/Examiner, Art Unit 2877
/Kara E. Geisel/Supervisory Patent Examiner, Art Unit 2877
