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 .
Claims 1-20 are currently pending.
The Drawings filed 08/07/2024 and 09/03/2024 are approved by the examiner.
The IDS statements filed 08/07/2024 and 01/09/2025 have been considered. Initialed copies accompany this action.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 5 and 7 are objected to because of the following informalities:
Claim 5 recites “the self-assembled monolayer”. Claim 7 recites “wherein a thickness of the self-assembled monolayer is …”.
Note that parent claim 1 specifically quantifies the self-assembled monolayer as “a first self-assembled monolayer”. Applicant is suggested to amend claims 5 and 7 to recite “the first self-assembled monolayer” in order to precisely match the antecedent basis and quantification of the term of the parent claim and improve clarity in the claim.
Appropriate correction is required.
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 3 and 20 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 3 recites “wherein the Raman-active nanoparticle has a strong Raman signal” at several wavelength ranges when irradiated with a 785 nm light source. The term “strong” in the is a relative term which renders the claim indefinite. The term “strong” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what would differentiate a strong Raman signal from others, e.g., a normal or weak Raman signal.
Claim 20 recites “further comprising, after step c), d) fixing a receptor that binds to an analyte to the plasmonic metal shell.” However, parent claim 14 specifically recites a step that forms a second self-assembled monolayer on the plasmonic shell.
It is unclear how the step of claim 20 can be formed (and/or further limit and/or include all the limitations of claim 14 under an indefiniteness rationale rather than a clear-cut 112(d) rationale) to further provide/fix a receptor to the plasmonic metal shell when the steps/structure prior to the claim places a second monolayer on the plasmonic metal shell and therefore between the plasmonic metal shell and the supposed provided receptor. In other words, the parent claim already recites there is another structure in the way of the plasmonic metal shell (the second monolayer). How can a receptor be provided and fixed to the plasmonic metal shell when the plasmonic metal shell already requires the second monolayer on the plasmonic metal shell?
Appropriate correction/clarification is required.
Claim Interpretation
The claims recite the term “satisfying” as a sort of transitional phrase within limitations (e.g., “a first self-assembled monolayer … comprises a Raman reporter satisfying the following Chemical Formula 1:”). For purposes of claim interpretation, the term “satisfying” is construed as synonymous with “comprising” as open-ended and not excluding additional, unrecited elements.
Additionally, there are many limitations in the claims that recite the terms “the core”, “the metal core”, and “the shell”. However, the independent claims clearly recite only one core (“a spherical plasmonic metal core”) and one shell (“a plasmonic metal shell”). For purposes of examination, the terms “the core” and “the metal core” are construed as clearly referring to the “spherical plasmonic metal core” and the term “the shell” is construed as clearly referring to the “plasmonic metal shell”.
Claim 12 recites the Raman-active nanoparticle is used for near-infrared excitation light having a wavelength of 780 to 790 nm, which is merely an intended use recitation of the recited nanoparticle that does not require the utility, use, or provision recited. See, e.g., MPEP 2111.02.
Claim Rejections - 35 USC § 102 & 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-13, and 16-19 are rejected under 35 U.S.C. 102(a)(1,2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over You et al. (US 2022/0349826 A1).
As to claim 1, You et al. teach a comparative example where a self-assembled monolayer was formed on an Au core in the same manner as in Example 1, except that 2,3,5,6-Tetrafluoro-4-mercaptobenzoic acid (TFMBA) was used as the Raman reporter (para. 0122). TFMBA is the claimed Raman reporter of Chemical Formula 1. See para. 0113-0117 for the process of Example 1 that, per at least para. 0013, ultimately forms a Raman-active nanoparticle comprising a spherical plasmonic metal core, a plasmonic metal shell having surface irregularities, and a self-assembled monolayer which binds to each of the core and the shell, is positioned between the core and the shell, and includes a Raman reporter. Thus, while cited example is a comparative example, it nevertheless directly meets each and every claimed limitation.
As to claims 3 and 11, while You et al. does not teach the Raman signal performance under irradiation with 785 nm light for the cited comparative example, the claimed Raman signal performance is regarded as inherent from the cited example as the structure is exactly the same as claimed absent a showing to the contrary. See MPEP 2112. The same is true for the claimed capability of detection for the nanoparticle to exhibit a surface-enhanced Raman scattering signal in Raman mapping in 80% or more of the total number of nanoparticles.
As to claims 4-10, You et al. teach: the plasmonic shell includes plasmonic metal fine particles having an average size of 0.3D to 1D, based on a diameter (D) of the metal core, and has surface irregularities due to the plasmonic metal fine particles (para. 0016 & 0050); in the plasmonic metal shell, an inner shape of the shell in contact with the self-assembled monolayer is spherical (para. 0017 & 0044); the plasmonic metal core may have an average diameter of 20 to 100 nm (para. 0018 & 0057); the self-assembled monolayer may have a thickness of 0.5 to 2.0 nm (para. 0019 & 0066); the plasmonic metal core and the plasmonic metal shell may be independently of each other one or more metals selected from gold, silver, platinum, palladium, nickel, aluminum, and copper and the plasmonic metal core and the plasmonic metal shell may be the same metal (para. 0020, 0021, & 0103), however, in the cited comparative example, the core and shell are each gold; the nanoparticle further include a receptor which is fixed to the plasmonic metal shell and binds to an analyte (para. 0022 & 0069). See also the discussion of the examples among para. 0113-0134.
As to claim 12, this is an intended use claim. The prior art’s comparative example meets the intended use limitations. Nevertheless, note that You et al. teach the nanoparticles are indeed for use with near-infrared excitation light at wavelengths of about 780-790 nm (para. 0038, 0074, & 0131).
As to claim 13, You et al. teach a comparative example where a self-assembled monolayer was formed on an Au core in the same manner as in Example 1, except that 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid (TFMBA) was used as the Raman reporter (para. 0122). TFMBA is the claimed Raman reporter of Chemical Formula 1. In view of the steps disclosed to form Example 1 at para. 0113-0117 (utilizing TFMBA instead of 4-NBT), the process of forming Comparative Example 5 comprises mixing a dispersion of Au core nanoparticles with a solution comprising the reporter (TFMBA) to form a self-assembled monolayer comprising TFMBA on the Au metal core (i.e., para. 0114 substituted with TFMBA), and adding a buffer and HAuCl4 (a plasmonic metal precursor) to the Au core dispersion with the self-assembled monolayer to form a plasmonic metal shell thereon (i.e., para. 0115-0116). Furthermore, per at least para. 0013, the disclosed process ultimately forms a Raman-active nanoparticle comprising a spherical plasmonic metal core, a plasmonic metal shell having surface irregularities, and a self-assembled monolayer which binds to each of the core and the shell, is positioned between the core and the shell, and includes a Raman reporter. Thus, while cited example is a comparative example, it nevertheless directly meets each and every claimed limitation.
As to claim 16, the example indicates there is 50 mM of buffer in the buffer solution and 5 mM of plasmonic metal precursor (para. 0115), meaning the comparative example has a mole ratio obtained by dividing the number of moles of a buffer in the buffer solution by the number of moles of the plasmonic metal precursor of 10. However, You et al. also teach a mole ratio obtained by dividing the number of moles of the buffer in the buffer solution by the number of moles of the plasmonic metal precursor in the buffer solution is 10 to 100 (para. 0027).
As to claim 17, the example indicates there is 50 mM of buffer in the buffer solution (para. 0115), meaning the comparative example also has 50 mM of buffer in the buffer solution. However, You et al. also teach a molar concentration of the buffer in the buffer solution is 10 to 200 mM (para. 0028).
As to claim 18, the example indicates the spherical gold colloid have a diameter of 50 nm (para. 0113), meaning the comparative example also has a plasmonic metal core diameter of 50 nm. However, You et al. also teach the plasmonic metal core has a diameter of 20 to 100 nm (para. 0029).
As to claim 19, You et al. further teach after step b), c) fixing a receptor which binds to an analyte to the plasmonic metal shell (para. 0030).
In view of the foregoing, the cited teachings of the reference are anticipatory of claims 1, 2, and 4-12 to the nanoparticle and claims 13 and 16-19 to the method of making the nanoparticle due to the reference’s specificity of substituting TFMBA in place of the 4-NBT, even as a comparative example. The fact that the reference teaches TFMBA as a monolayer between a plasmonic metal core and a plasmonic metal shell might be less than optimal than their inventive 4-NBT Raman reporter does not vitiate the fact that it is still disclosed.
In the event the cited teachings of the reference are somehow found not anticipatory of any of the above-identified claims, it/they are nevertheless obvious over the same cited teachings of the reference. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to formulate a nanoparticle and practice the method of making a nanoparticle comprising TFMBA as a self-assembled monolayer between a plasmonic metal core and a plasmonic metal shell utilizing the aspects and parameters of You et al.’s plasmonic metal core and plasmonic metal shell (e.g., para. 0016-0030, etc.) in order to better test and more closely compare the Raman activity and any related aspects of their inventive NO2-Ar-SH reporter to the identified comparative TFMBA reporter. Additionally, any properties resulting from the structure of the nanoparticle (e.g., those of claims 3 and 11) would certainly flow naturally from the substantially same structure taught and motivated by the reference under an obviousness rationale, too. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Claims 1, 3-13, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over You et al. (WO 2021/045287 A1, utilizing US 2023/0103705 A1 as an English language equivalent) in view of any one of Lai et al. ("Raman-encoded microbeads for spectral multiplexing with SERS detection", RSC Adv., 2015, 5, 13762), Cheng et al. (US 2022/0308047 A1), and Li et al. (CN 115212861 A).
As to claim 1, You et al. teach a Raman-active particle which is a Raman-active particle for surface-enhanced Raman analysis, the particle including: a spherical plasmonic metal core; a plasmonic metal shell having surface unevenness; and a self-assembled monolayer which is bonded to each of the core and the shell and positioned between the core and the shell, and includes a Raman reporter (abstract). The particle is a nanoparticle (see, e.g., Figures, para. 0052, 0054, etc.).
You et al. further teach the Raman reporter is a molecule selected from various genera and species (para. 0056-0059) and may comprise a benzene ring such as 4-merceptobenzoic acid (4-MBA) but fail to teach the Raman reporter comprises 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid (TFMBA) as claimed.
However, Lai et al. is similarly drawn to Raman-active nanoparticles for surface-enhanced Raman spectroscopy where 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid (TFMBA) is disclosed as an alternative Raman reporter to 4-merceptobenzoic acid (MBA) for coating metal core nanoparticles in order to obtain, vary, and/or modify distinct spectroscopic peaks (p.13763).
Alternatively, Cheng et al. is similarly drawn to Raman-active metal nanoparticles (abstract) where 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid is disclosed as an alternative Raman reporter to 4-merceptobenzoic acid to affect the scattering signal of the particle (para. 0072).
Li et al. is also similarly drawn to Raman-active particles with a surface-enhanced Raman scattering effect shell layer and a Raman coding, i.e., reporter, molecule (abstract) where 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid is disclosed as an alternative Raman reporter to 4-merceptobenzoic acid to affect the scattering signal of the particle (p.3 of English language machine translation).
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid (TFMBA) as a Raman reporter as taught by Lai et al., Cheng et al., or Li et al. with or in place of the 4-mercaptobenzoic acid Raman reporter or simply as the Raman reporter in You et al. in order to obtain a Raman-active nanoparticle with a reasonable expectation of success. The prior art as a whole teach and recognize 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid and 4-mercaptobenzoic acid as equivalent Raman reporter molecules; it is prima facie obvious to substitute equivalents known for the same purpose.
As to claims 3 and 11, while not explicitly disclosed or anticipated, the claimed properties of a strong Raman signal at certain wavelengths when irradiated with a 785 nm light source and detection of a surface-enhanced Raman scattering signal in Raman mapping in 80% or more of the total number of Raman-active nanoparticles would flow naturally from the combined teachings of the reference as provision of TFMBA taught via the secondary reference(s) as the Raman reporter/monolayer in the You et al. primary reference with the parameters of You et al.’s core and shell of their Raman active nanoparticle ultimately arrives at the same structure/scope of the instant claims.
As to claim 4, You et al. teach the plasmonic metal shell may include plasmonic metal fine particles having an average size of 0.1D to 0.6D, based on a diameter (D) of the metal core, and may have surface unevenness due to the plasmonic metal fine particles (para. 0012), which overlaps that claimed.
As to claim 5, You et al. teach, in the plasmon metal shell, an inner shape of the shell in contact with the self-assembled monolayer may be spherical (para. 0016).
As to claim 6, You et al. teach the plasmon metal core has an average diameter of 20 to 100 nm (para. 0017).
As to claim 7, You et al. teach the self-assembled monolayer has a thickness of 0.5 to 2.0 nm (para. 0015). In any event, this would flow naturally from the combination of references as the combination of references provides the same Raman reporter molecule as claimed and discovery/quantification of a monolayer of TFMBA would be expected to have the same thickness as that claimed.
As to claims 8 and 9, You et al. teach the plasmonic metal core and the plasmonic metal shell may be independently of each other one or more metals selected from gold, silver, platinum, palladium, nickel, aluminum, and copper (para. 0013 and 0051). As they are independently selected, the plasmonic metal core and the plasmonic metal shell may certainly/obviously be the same metal. Nevertheless, para. 0110 is an example with an Au core and an Au shell.
As to claim 10, You et al. teach the Raman-active (nano)particle may further include a receptor which is fixed to the plasmonic metal shell and bonded to an analyte (para. 0014).
As to claim 12, while this claim is directed to an intended use and therefore met by the reference(s), You et al. nevertheless teach the particle is for near-infrared excitation light having a wavelength of 750 nm or more (para. 0018) which overlaps the claimed intended irradiation of 780-790 nm. See also para. 0069 & 0079. The Figures/Examples also exemplify irradiation/excitation at 780 nm (see, e.g., para. 0114-0115).
As to claim 13, You et al. teach a method of producing a Raman-active particle comprising a) forming a self-assembled monolayer including a Raman reporter on a spherical plasmonic metal core, and b) using a reaction solution in which a buffer solution, the metal core on which the self-assembled monolayer is formed, and a plasmonic metal precursor are mixed, to form a plasmonic metal shell which surrounds the metal core on which the self-assembled monolayer is formed and has surface unevenness (abstract and para. 0020). The particle is a nanoparticle (see, e.g., Figures, para. 0052, 0054, etc.). Step a) also comprises dispersing the spherical plasmonic metal core in a dispersion with the Raman reporter (para. 0096).
You et al. further teach the Raman reporter is a molecule selected from various genera and species (para. 0056-0059) and may comprise a benzene ring such as 4-merceptobenzoic acid (4-MBA) but fail to teach the Raman reporter comprises 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid (TFMBA) as claimed.
However, Lai et al. is similarly drawn to Raman-active nanoparticles for surface-enhanced Raman spectroscopy where 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid (TFMBA) is disclosed as an alternative Raman reporter to 4-merceptobenzoic acid (MBA) for coating metal core nanoparticles in order to obtain, vary, and/or modify distinct spectroscopic peaks (p.13763).
Alternatively, Cheng et al. is similarly drawn to Raman-active metal nanoparticles (abstract) where 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid is disclosed as an alternative Raman reporter to 4-merceptobenzoic acid to affect the scattering signal of the particle (para. 0072).
Li et al. is also similarly drawn to Raman-active particles with a surface-enhanced Raman scattering effect shell layer and a Raman coding, i.e., reporter, molecule (abstract) where 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid is disclosed as an alternative Raman reporter to 4-merceptobenzoic acid to affect the scattering signal of the particle (p.3 of English language machine translation).
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid (TFMBA) as a Raman reporter as taught by Lai et al., Cheng et al., or Li et al. with or in place of the 4-mercaptobenzoic acid Raman reporter or simply as the Raman reporter in You et al.’s method in order to obtain a Raman-active nanoparticle with a reasonable expectation of success. The prior art as a whole teach and recognize 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid and 4-mercaptobenzoic acid as equivalent Raman reporter molecules; it is prima facie obvious to substitute equivalents known for the same purpose.
As to claim 16, You et al. teach a mole ratio obtained by dividing the number of moles of a buffer of the buffer solution by the number of moles of the plasmonic metal precursor is 10 to 100 (para. 0022).
As to claim 17, You et al. teach the molar concentration of the buffer in the buffer solution is 10 to 100 mM (para. 0023).
As to claim 18, You et al. teach the metal core has a diameter of 20 to 100 nm (para. 0025).
As to claim 19, You et al. teach the method, after step b), further comprises fixing a receptor bonding to an analyte to the metal shell (para. 0026).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over You et al. (WO 2021/045287 A1, utilizing US 2023/0103705 A1 as an English language equivalent) in view of any one of Lai et al. ("Raman-encoded microbeads for spectral multiplexing with SERS detection", RSC Adv., 2015, 5, 13762), Cheng et al. (US 2022/0308047 A1), and Li et al. (CN 115212861 A) as applied to claims 1, 3-13, and 16-19 above, and further in view of Li et al. (CN 113358882 A).
The disclosure of You et al. in view of Lai et al., Cheng et al., and Li et al. is relied upon as set forth above.
While You et al.’s process entails dispersing the spherical plasmonic metal core in a dispersion, You et al. fail to teach the dispersion is an aqueous trisodium citrate solution.
However, Li et al. ‘882 teach methods of making Raman-active nanoparticles comprising a noble metal particle, a Raman signal/reporter molecule, and a coating layer (abstract and p.6 of the English language machine translation) where gold colloid nanoparticles are dispersed in an aqueous trisodium citrate solution in the process of coating the gold nanoparticles with a 4-mercaptobenzoic acid Raman reporter molecule (p.13 of the English language machine translation).
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide an aqueous trisodium citrate solution as taught by Li et al. ‘882 as/with the aqueous dispersion of You et al. in order to sufficiently coat a metal core with a Raman reporter molecule and/or obtain a Raman-active nanoparticle with a reasonable expectation of success.
Double Patenting
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, and 4-12 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 2, and 4-12 of copending Application No. 18/800,869 (reference application), respectively. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 3, 13, 14, and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/800,869 (reference application).
Note claims 1, 2, and 4-12 are rejected under statutory double patenting (Id.). The reference claims recite the same Raman-active nanoparticle with the same spherical plasmonic metal core, the same plasmonic metal shell having surface irregularities, and a first self-assembled monolayer that binds to each of the core and shell, is positioned between the core and the shell, and comprises a Raman reporter comprising 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid.
Regarding instant claim 3, although the reference claims do not recite the Raman-active nanoparticle has a strong Raman signal at the recited wavelengths when irradiated with a 785 nm light source, the claim limitation would flow naturally from, if not be inherent of, the recited Raman-active nanoparticle of the copending application as the two Raman-active nanoparticles as recited are exactly the same. Products of identical composition/structure can not have mutually exclusive properties.
Regarding claims 13, 14, and 16-20, the copending claims a method of making the Raman-active nanoparticles comprising forming a first self-assembled monolayer comprising a Raman reporter comprising 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid on a spherical plasmonic metal core, forming a plasmonic metal shell that surrounds the metal core on which the self-assembled monolayer is formed and has surface irregularities using a reaction solution in which a buffer solution, the metal core on which the self-assembled monolayer is formed and a plasmonic metal precursor are mixed; further comprising, after step b), c) forming a second self-assembled monolayer comprising a Raman reporter comprising 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid on the plasmonic metal shell; wherein a mole ratio obtained by dividing the number of moles of a buffer in the buffer solution by the number of moles of the plasmonic metal precursor is 10 to 100; wherein a molar concentration of a buffer in the buffer solution is 10 to 200 mM; wherein a diameter of the plasmonic metal core is 20 to 100 nm; further comprising, after step b), d) fixing a receptor that binds to an analyte to the plasmonic metal shell; and further comprising, after step c), d) fixing a receptor that binds to an analyte to the plasmonic metal shell. See claims 13-19 of the copending application.
While the copending application claims fails to recite the self-assembled monolayer is formed with the spherical plasmonic metal core in a dispersion, the claims are nevertheless so close in scope that the methods are patentably indistinct from one another. A person of ordinary skill in the art would recognize formation of the self-assembled monolayer of the 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid would form or need to form on the spherical plasmonic metal core in a dispersion or solution as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, and 4-12 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 2, and 4-12 of copending Application No. 18/802,356 (reference application), respectively. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 3, 13, 14, and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/802,356 (reference application).
Note claims 1, 2, and 4-12 are rejected under statutory double patenting (Id.). The reference claims recite the same Raman-active nanoparticle with the same spherical plasmonic metal core, the same plasmonic metal shell having surface irregularities, and a first self-assembled monolayer that binds to each of the core and shell, is positioned between the core and the shell, and comprises a Raman reporter comprising 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid.
Regarding instant claim 3, although the reference claims do not recite the Raman-active nanoparticle has a strong Raman signal at the recited wavelengths when irradiated with a 785 nm light source, the claim limitation would flow naturally from, if not be inherent of, the recited Raman-active nanoparticle of the copending application as the two Raman-active nanoparticles as recited are exactly the same. Products of identical composition/structure can not have mutually exclusive properties.
Regarding claims 13, 14, and 16-20, the copending claims a method of making the Raman-active nanoparticles comprising forming a first self-assembled monolayer comprising a Raman reporter comprising 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid on a spherical plasmonic metal core, forming a plasmonic metal shell that surrounds the metal core on which the self-assembled monolayer is formed and has surface irregularities using a reaction solution in which a buffer solution, the metal core on which the self-assembled monolayer is formed and a plasmonic metal precursor are mixed; further comprising, after step b), c) forming a second self-assembled monolayer comprising a Raman reporter comprising 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid on the plasmonic metal shell; wherein a mole ratio obtained by dividing the number of moles of a buffer in the buffer solution by the number of moles of the plasmonic metal precursor is 10 to 100; wherein a molar concentration of a buffer in the buffer solution is 10 to 200 mM; wherein a diameter of the plasmonic metal core is 20 to 100 nm; further comprising, after step b), d) fixing a receptor that binds to an analyte to the plasmonic metal shell; and further comprising, after step c), d) fixing a receptor that binds to an analyte to the plasmonic metal shell. See claims 13-19 of the copending application.
While the copending application claims fail to recite the self-assembled monolayer is formed with the spherical plasmonic metal core in a dispersion, the claims are nevertheless so close in scope that the methods are patentably indistinct from one another. A person of ordinary skill in the art would recognize formation of the self-assembled monolayer of the 2,3,5,6-tetrafluoro-4-mercaptobenzoic acid would form or need to form on the spherical plasmonic metal core in a dispersion or solution as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Prior Art Cited But Not Applied
The prior art of record fail to teach or suggest a Raman-active nanoparticle or method of making thereof comprising, inter alia, a second self-assembled monolayer comprising a Raman reporter satisfying Chemical Formula 1 on the surface of the shell such as in claims 2 and 14. However, claims 2 and 14 are still subject to double patenting rejections and thus cannot be allowed or indicated as allowable.
You et al. (US 2022/0349826 A1) teach a comparative example where a self-assembled monolayer was formed on an Au core in the same manner as in Example 1, except that 2,3,5,6-Tetrafluoro-4-mercaptobenzoic acid (TFMBA) was used as the Raman reporter (para. 0122). TFMBA is the claimed Raman reporter of Chemical Formula 1. See para. 0113-0117 for the process of Example 1 that, per at least para. 0013, ultimately forms a Raman-active nanoparticle comprising a spherical plasmonic metal core, a plasmonic metal shell having surface irregularities, and a self-assembled monolayer which binds to each of the core and the shell, is positioned between the core and the shell, and includes a Raman reporter. The process also has the steps of dispersing a spherical plasmonic metal core (Au) in a dispersion and forming a first self-assembled monolayer comprising the Raman reporter, and forming a plasmonic metal shell surrounding the metal core with the self-assembled monolayer using a reaction solution in which a buffer solution, the metal core, and a plasmonic metal precursor are mixed (Id. at para. 0113-0117). However, You et al. fail to teach or suggest forming a second self-assembled monolayer comprising a Raman reporter comprising TFMBA on the plasmonic shell as claimed.
You et al. (WO 2021/045287 A1, utilizing US 2023/0103705 A1 as an English language equivalent) teach a Raman-active particle which is a Raman-active particle for surface-enhanced Raman analysis and method of making thereof comprising a spherical plasmonic metal core; a plasmonic metal shell having surface unevenness; and a self-assembled monolayer which is bonded to each of the core and the shell and positioned between the core and the shell, and includes a Raman reporter (abstract). The particle is a nanoparticle (see, e.g., Figures, para. 0052, 0054, etc.). You et al. further teach the Raman reporter is a molecule selected from various genera and species (para. 0056-0059) and may comprise a benzene ring such as 4-merceptobenzoic acid (4-MBA). However, You et al. fail to teach or suggest forming a second self-assembled monolayer comprising a Raman reporter comprising TFMBA on the plasmonic shell as claimed. You et al. also teach since the Raman reporter is not exposed to the surface of the Raman-active particle and is instead surrounded by the metal shell, the organic substance to be detected including the Raman-active particle may be stably protected from an external environment (para. 0094), which discourages provision on a second self-assembled monolayer on the shell as claimed.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
Correspondence
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
September 25, 2026
