DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Election/Restrictions
Applicant's election with traverse of electing Group I (claims 1-10) in the reply filed on May 11, 2026 is acknowledged. The traversal is on the ground(s) that search and examination of the entire application could be made without serious burden. This is not found persuasive because Group I, Claims 1-10, drawn to a surface enhanced Raman spectroscopy (SERS) substrate, classified in CPC group/subgroup: C03C 17/007, Group II Claims 11-13, drawn to a method of making the nanocomposite, classified in CPC group/subgroup: B22F 3/00, Group III Claims 14-18, drawn to a method of performing SERS, classified in CPC group/subgroup: C23C 20/02, so the inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries).
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 11, 2026.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (NPL titled: Preparation and optical properties of Au nanoparticle “Sandwich” structure (AuNPs/ZNNs/AuNPs) substrate based on ZnO nanosheets template, attached).
Regarding claim 1, Zhang teaches a surface enhanced Raman spectroscopy (SERS) substrate (Abstract), comprising: a substrate such as ITO; zinc oxide nanosheets (ZnO NSs or ZNNs); and gold nanoparticles, wherein the ZnO NSs have a thickness, wherein the gold nanoparticles are embedded within the ZnO NSs to form a nanocomposite, and wherein the nanocomposite is dispersed on a surface of the substrate to form the SERS substrate as shown in Fig. 1 (page 2, Fig. 1, abstract). Zhang does not explicitly teach wherein the ZnO NSs have an average thickness of 40-70 nm. However, Zhang recognizes the thickness is adjusted by changing the electrodeposition time and current density (2.3.1 Preparation of ZnO nanosheets (ZNNs) with network structure, page 3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the ZnO NSs or ZNNs thickness to yield a desired highly sensitive 3D SERS substrates for chemical and biological sensing applications (page 8). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 2, Although Zhang does not explicitly teach the claimed shape & configuration, modifying the product of Zhang in the present application to have the shape & configuration recited in the claim is not expected to alter the operation of the device in a patentably distinct way. Where the configuration of the claimed subject matter is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed subject matter was significant is not patent eligible subject matter. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)
Regarding claim 3, Zhang teaches wherein the ZnO in the ZnO NSs has a wurtzite or hexagonal crystal structure (Abstract, page 3, as disclosed by current Specification Wurtzite defined as hexagonal ([0068]).
Regarding claim 4, Zhang teaches wherein gold is not doped within the crystal structure of the ZnO in the ZnO NSs (Abstract).
Regarding claim 5, Zhang teaches wherein gold nanoparticles comprise only gold (page 2).
Regarding claim 6, Zhang teaches wherein gold nanoparticles are crystalline (Abstract).
Regarding claim 7, Zhang teaches wherein gold nanoparticles are spherical with diameter as shown in Fig. 1 (page 2, Fig. 1, abstract). However, Zhang recognizes the diameter is adjusted by changing the film thickness (2.3.1 Preparation of ZnO nanosheets (ZNNs) with network structure, page 3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the gold nanoparticles size to yield a desired highly sensitive 3D SERS substrates for chemical and biological sensing applications (page 8). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 8, Zhang teaches wherein the nanocomposite does not comprise a surfactant (2.3.1 Preparation of ZnO nanosheets (ZNNs) with network structure, page 3).
Regarding claim 9, Zhang teaches wherein the nanocomposite is not aggregated on the surface of the substrate as shown in Fig. 1 (page 2, Fig. 1, abstract).
Regarding claim 10, Zhang teaches wherein the substrate is ITO for example (page 2, Fig. 1, abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 5712721295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAI Y ZHANG/ Primary Examiner, Art Unit 1717
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