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 .
Claim Rejections - 35 USC § 102
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 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 19 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hanagan et al. (USPN 5,520,787).
With respect to claim 19, Hannagan et al. disclose a method of making a flow cell working electrode, the method comprising: a) depositing a conductive electrode layer (30 & 32 & 22) onto a substrate (10); b) depositing an electrically resistive layer (40) onto the conductive electrode layer such that the conductive electrode layer is positioned between the substrate and the electrically resistive layer; c) depositing a macroscopically non-conductive plasmonic metal layer (80) (column 5, lines 13-19) onto the electrically resistive layer such that the electrically resistive layer is positioned between the conductive electrode layer and the macroscopically non-conductive plasmonic metal layer.
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 1-8 and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hanagan et al. (USPN 5,520,787).
With respect to claim 1, Hanagan et al. disclose a flow cell working electrode comprising a first layered structure, the first layered structure comprising: a substrate (10); a conductive electrode layer (30 & 32 & 22) contacting the substrate; an electrically resistive layer (40) contacting the conductive electrode layer such that the conductive electrode layer is positioned between the substrate and the electrically resistive layer,
Hanagan et al. do not specifically disclose the electrically resistive layer having an electrically resistive thickness tailored to reduce electrical conductivity across the electrically resistive layer but to allow an electric field associated with a voltage applied to the conductive electrode layer to be felt across the electrically resistive layer. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hanagan et al. to have the electrically resistive layer having an electrically resistive thickness tailored to reduce electrical conductivity across the electrically resistive layer but to allow an electric field associated with a voltage applied to the conductive electrode layer to be felt across the electrically resistive layer, as a matter of design choice, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art.
With respect to claim 2, Hanagan et al. do not specifically disclose the electrically resistive layer (40) having an electrically resistive layer thickness of between 3 nm and 5 nm. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hanagan et al. to have the electrically resistive layer have an electrically resistive layer thickness of between 3 nm and 5 nm, as a matter of design choice, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art.
With respect to claim 3, Hanagan et al. do not specifically disclose the macroscopically non-conductive plasmonic metal layer (80) having a plasmonic metal layer thickness of between 1 nm and 8 nm. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hanagan et al. to have the macroscopically non-conductive plasmonic metal layer have a plasmonic metal layer thickness of between 1 nm and 8 nm, as a matter of design choice, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art.
With respect to claim 4, Hanagan et al. do not specifically disclose the conductive electrode layer (30 & 32 & 22) having a conductive electrode layer thickness of between 5 nm and 100 nm. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hanagan et al. to have the conductive electrode layer have a conductive electrode layer thickness of between 5 nm and 100 nm, as a matter of design choice, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art.
With respect to claim 5, Hanagan et al. do not specifically disclose wherein the conductive electrode layer (30 & 32 & 22) is a semiconductor material layer. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hanagan et al. to have the conductive electrode layer (30 & 32 & 22) be a semiconductor material layer, as a matter of design choice, since semiconductor materials are known to be used as a conductive electrode layer.
With respect to claim 6, Hanagan et al. do not specifically disclose wherein the conductive electrode layer (30 & 32 & 22) has an amorphous crystalline structure. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hanagan et al. to have the conductive electrode layer (30 & 32 & 22) have an amorphous crystalline structure, as a matter of design choice, since amorphous crystalline structures are known to be used as a conductive electrode layer.
With respect to claim 7, Hanagan et al. disclose wherein the macroscopically non-conductive plasmonic metal layer (80) comprises a macroscopically non-conductive plasmonic metal layer material selected from the group consisting of Au, Pt, Ag, and combinations thereof (column 5, lines 13-19).
With respect to claim 8, Hanagan et al. do not specifically disclose wherein applying light from a coherent or incoherent light source to the conductive electrode layer provides a surface-enhanced two-dimensional infrared or Fourier transform infrared spectroscopy surface on the macroscopically non-conductive plasmonic metal layer. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hanagan et al. to have applying light from a coherent or incoherent light source to the conductive electrode layer provide a surface-enhanced two-dimensional infrared or Fourier transform infrared spectroscopy surface on the macroscopically non-conductive plasmonic metal layer, as a matter of design choice, depending on the specific application being done.
It is noted that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function alone. See MPEP 2114. In this case, it should be recognized that the wherein clause is functional in nature and does not distinguish structurally the instant claim over the prior art. See MPEP 2114 and 2111.04.
With respect to claim 12, Hanagan et al. do not specifically disclose wherein applying the voltage to the conductive electrode layer produces an electric-field-applied surface. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hanagan et al. to have applying the voltage to the conductive electrode layer produce an electric-field-applied surface, as a matter of design choice, depending on the specific application being done.
It is noted that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function alone. See MPEP 2114. In this case, it should be recognized that the wherein clause is functional in nature and does not distinguish structurally the instant claim over the prior art. See MPEP 2114 and 2111.04.
With respect to claim 13, Hanagan et al. do not specifically disclose the conductive electrode layer having the voltage applied thereto, such that the electric field is felt at a surface of the macroscopically non-conductive plasmonic metal layer. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hanagan et al. to have the conductive electrode layer having the voltage applied thereto, such that the electric field is felt at a surface of the macroscopically non-conductive plasmonic metal layer, as a matter of design choice, depending on the specific application being done.
It is noted that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function alone. See MPEP 2114. In this case, it should be recognized that the wherein clause is functional in nature and does not distinguish structurally the instant claim over the prior art. See MPEP 2114 and 2111.04.
With respect to claim 14, Hanagan et al. do not specifically disclose wherein at least one beam of infrared light having a frequency of between 1500 cm-1 and 3500 cm-1 is incident the macroscopically non-conductive plasmonic metal layer. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hanagan et al. to have at least one beam of infrared light having a frequency of between 1500 cm-1 and 3500 cm-1 is incident the macroscopically non-conductive plasmonic metal layer, depending on the specific application being done.
It is noted that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function alone. See MPEP 2114. In this case, it should be recognized that the wherein clause is functional in nature and does not distinguish structurally the instant claim over the prior art. See MPEP 2114 and 2111.04.
With respect to claim 15, Hanagan et al. disclose a pair of flow cell electrodes in operable orientation relative to one another comprising the flow cell working electrode (Fig. 4 - 30) of claim 1 and a counter electrode (80).
With respect to claim 16, Hanagan et al. disclose a flow cell (Fig. 3) having a detection channel (320) in fluidic communication with an inlet (300) and an outlet (310), the detection channel including at least one of the flow cell working electrodes of claim 1 oriented to sense molecules of interest in the detection channel.
With respect to claim 17, Hanagan et al. disclose the flow cell further comprising a counter electrode (Fig. 4 - 80) positioned within the detection channel (320).
With respect to claim 18, Hanagan et al. disclose a spectroscopic system comprising: a light source (Fig. 7 - 510); an optical detector (520); and the flow cell of claim 16 operably positioned in an optical path between the light source and the optical detector.
Allowable Subject Matter
Claims 9-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Prior art fails to disclose a flow cell working electrode comprising a first layered structure, wherein a portion of the flow cell working electrode comprises a second layered structure laterally adjacent to or laterally surrounding the first layered structure, the second layered structure comprising: the substrate; the conductive electrode layer; and a conductive metal layer contacting the conductive electrode layer, as claimed in claim 9. Claims 10-11 are allowable by virtue of their dependency on claim 9.
Claim 20 is allowed.
The following is an examiner’s statement of reasons for allowance: Prior art fails to disclose a method of using a flow cell working electrode comprising sequentially a substrate, a conductive electrode layer, an electrically resistive layer, and a macroscopically non-conductive plasmonic metal layer, the method comprising: c) applying a second voltage to the conductive electrode layer, wherein the second voltage is different than the first voltage; d) during the applying of step c), acquiring an infrared spectrum of the molecules of interest, the molecules of interest experiencing a second electric field associated with the second voltage; e) generate a report including field-dependent infrared spectra, wherein the field-dependent infrared spectra have a sufficiently low background signal to resolve an OH stretching mode, a CO stretching mode, a CN stretching mode, or a CH stretching mode, as claimed in claim 20.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nelson et al. (US 2011/0017592 A1) disclose a biosensor including a substrate, a conductive electrode layer, and an electrically resistive layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JURIE YUN whose telephone number is (571)272-2497. The examiner can normally be reached 10:30 am - 7:30 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, David J Makiya can be reached at 571 272-2273. 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.
/JURIE YUN/Primary Examiner, Art Unit 2884
September 24, 2026
Prosecution Insights