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 .
Election/Restrictions
Newly submitted claims 40-42 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claims 40-42 are recite the same scope as the previously Group IV, directed towards a fluorimeter, which the Applicants declined to elect, without traverse, in the Response filed 10/19/2025.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 40-42 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Interpretation
Regarding limitations recited in claims 1-8, 24, 29, 32, and 34-39, which are directed to a manner of operating disclosed reactor, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115.
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.
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.
Claim(s) 1-5, 7, 24, 32, and 35-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akgonullu et al. (SPR nanosensor based on molecularly imprinted polymer film with gold nanoparticles for sensitive detection of aflatoxin B1), in view of Jiang et al. (Surface-plasmon-coupled chemiluminescence amplification of silver nanoparticles modified immunosensor for high-throughput ultrasensitive detection of multiple mycotoxins) and Sergelen (Reversible Plasmonic Biosensors Based on Aptamers and Hydrogels).
Regarding claim 1, Akgonullu discloses a sensor chip (Scheme 1) comprising a molecularly imprinted polymer (MIP) layer formed as a membrane or thin film (see: AFB1 imprinted polymer) having embedded gold nanoparticles (see: AuNPs), whereby the MIP selectively binds a fluorophore of interest, and whereby fluorescence emission from the bound fluorophore is enhanced upon ultraviolet irradiation by the gold nanoparticles (see: enhanced-SPR chip for sensing AFB1).
Akgonullu does not explicitly disclose the nanoparticles being silver nanoparticles.
Jiang teaches an analogous surface plasmon immunosensor (Scheme 1) for ultrasensitive detection of mycotoxins including AFB1 (see: AFB1) comprising modified silver nanoparticles (see: AgNPs).
Sergelen teaches a plurality of other equivalent metals for use in SPR sensing were well known in the art, including silver (pg. 9/1.5. SPR biosensor surface architecture).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to select silver as the material for the nanoparticles in the device disclosed by Akgonullu, as taught by Jiang and Sergelen, in order to provide for a less expensive and more easily obtainable device (Jiang: pg. 59/col. 1/para. 4, see: respective advantages of AuNPs vs. AgNPs). Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 2, Akgonullu further discloses the MIP selectively binds a fluorophore selected from the group consisting of aflatoxin B1 (AFB1), aflatoxin B2 (AFB2), aflatoxin G1 (AFG1), aflatoxin G2 (AFG2), deoxynivalenol (DON), zearalenone (ZEA), fumonisin B1 (FB1), fumonisin B2 (FB2), fumonisin B3 (FB3), ochratoxin (OhA), and trichothecene (Scheme 1, see: AFB1 imprinted polymer).
Regarding claim 3, Akgonullu further discloses the fluorophore of interest is a mycotoxin (Scheme 1, see: AFB1 imprinted polymer).
Regarding claim 4, Akgonullu further discloses the fluorophore of interest is an aflatoxin. (Scheme 1, see: AFB1 imprinted polymer).
Regarding claim 5, Akgonullu further discloses the aflatoxin is selected from the group consisting of aflatoxin B1, aflatoxin B2, aflatoxin G1, and aflatoxin G2. (Scheme 1, see: AFB1 imprinted polymer).
Regarding claim 7, modified Akgonullu further discloses the silver nanoparticles are nanoparticles are substantially uniformly distributed throughout the MIP layer (Akgonullu: Scheme 1, see: even distribution of nanoparticles in the imprinted polymer).
Regarding claim 24, Akgonullu discloses a detection element (Scheme 1) comprising a molecularly imprinted polymer (MIP) layer formed as a membrane or thin film (see: AFB1 imprinted polymer), the MIP layer comprising gold nanoparticles embedded within the polymer matrix (see: AuNPs), wherein the MIP selectively binds a target analyte, and wherein the gold nanoparticles increase fluorescence emission intensity of the bound analyte under ultraviolet irradiation relative to an otherwise identical MIP layer that does not contain the gold nanoparticles (see: enhanced-SPR chip for sensing AFB1).
Akgonullu does not explicitly disclose the nanoparticles being silver nanoparticles.
Jiang teaches an analogous surface plasmon immunosensor (Scheme 1) for ultrasensitive detection of mycotoxins including AFB1 (see: AFB1) comprising modified silver nanoparticles (see: AgNPs).
Sergelen teaches a plurality of other equivalent metals for use in SPR sensing were well known in the art, including silver (pg. 9/1.5. SPR biosensor surface architecture).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to select silver as the material for the nanoparticles in the device disclosed by Akgonullu, as taught by Jiang and Sergelen, in order to provide for a less expensive and more easily obtainable device (Jiang: pg. 59/col. 1/para. 4, see: respective advantages of AuNPs vs. AgNPs). Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 32, Akgonullu discloses a detection element (Scheme 1) comprising a molecularly imprinted polymer (MIP) layer (see: AFB1 imprinted polymer) having gold nanoparticles embedded within the polymer matrix (see: AuNPs), wherein the MIP selectively binds a fluorophore, and wherein the gold nanoparticles increase fluorescence emission intensity of the bound fluorophore under ultraviolet irradiation relative to an otherwise identical MIP layer that does not contain the gold nanoparticles (see: enhanced-SPR chip for sensing AFB1).
Akgonullu does not explicitly disclose the nanoparticles being silver nanoparticles.
Jiang teaches an analogous surface plasmon immunosensor (Scheme 1) for ultrasensitive detection of mycotoxins including AFB1 (see: AFB1) comprising modified silver nanoparticles (see: AgNPs).
Sergelen teaches a plurality of other equivalent metals for use in SPR sensing were well known in the art, including silver (pg. 9/1.5. SPR biosensor surface architecture).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to select silver as the material for the nanoparticles in the device disclosed by Akgonullu, as taught by Jiang and Sergelen, in order to provide for a less expensive and more easily obtainable device (Jiang: pg. 59/col. 1/para. 4, see: respective advantages of AuNPs vs. AgNPs). Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 35, Akgonullu further discloses the silver nanoparticles are substantially uniformly distributed throughout the MIP layer (Akgonullu: Scheme 1, see: even distribution of nanoparticles in the imprinted polymer).
Regarding claim 36, Akgonullu further discloses the silver nanoparticles are formed in situ within the MIP layer during polymerization of the MIP layer (Akgonullu: Scheme 1; pg. 2-3/2.4.1. SPR chip modification, see: ABF1-MAPA pre-complex mixed with AuNPs and UV polymerized).
Regarding claim 37, modified Akgonullu further discloses the silver nanoparticles are embedded within the MIP layer at a distance of about 5 nm to about 90 nm from binding sites of the MIP layer (Jiang: pg. 59/col. 1/para. 2, see: distance between metal and CL species is within 5-20 nm).
Regarding claims 38-39, modified Akgonullu further discloses the silver nanoparticles have a localized surface plasmon resonance peak wavelength of about 390 nm to about 420 nm (Jiang: pg. 59/col. 1/para. 4, see: SPR peak of AgNPs is ~390 nm).
Claim(s) 6, 8, 29, and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akgonullu et al. (SPR nanosensor based on molecularly imprinted polymer film with gold nanoparticles for sensitive detection of aflatoxin B1), in view of Jiang et al. (Surface-plasmon-coupled chemiluminescence amplification of silver nanoparticles modified immunosensor for high-throughput ultrasensitive detection of multiple mycotoxins) and Sergelen (Reversible Plasmonic Biosensors Based on Aptamers and Hydrogels), as applied to claim 1, in further view of Abargues et al. (Optical properties of different polymer thin films containing in situ synthesized Ag and Au nanoparticles).
Regarding claim 6, modified Akgonullu further discloses silver nanoparticles are roughly spherical in shape (Akgonullu: Fig. 1, see: round shape; Jiang: Fig. 1, see: round shape).
Modified Akgonullu does not explicitly disclose the silver nanoparticles having a size of about 30-70 nm.
Abargues (Table 1) teaches that it was known in the art that increasing the diameter of an Ag nanocomposite will increase the λLSPR. Therefore the λLSPR is a variable that can be modified, among others, by varying the diameter of said Ag nanocomposite. For that reason, the size of the AgNP, would have been considered a result effective variable by one having ordinary skill in the art, before the effective filing date of the claimed invention. As such, without showing unexpected results, the size of the AgNP cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have optimized, by routine experimentation, the size of the AgNP in the apparatus of modified Akgonullu to obtain the desired λLSPR (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 8, modified Akgonullu does not explicitly disclose the MIP comprises a polymer selected form the group consisting of acrylamide (AA), poly(ethyleneimine), poly(hydroxyethyl methacrylate), poly(vinylpyrrolidone), novolak, poly(4-vinylphenol), poly(4-vinylphenol)-co-(methyl methacrylate), and poly(styrene-co-allyl alcohol).
Abargues teaches a plurality of nanocomposite polymer films suitable for SPR including PEI, PVP, OHEMA, PS6-co-AA4, Novolak, P4VP, and P4VP5-co-MMA5 (Table 1). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to substitute any one of a plurality of appropriate polymers as the material in the device disclosed by modified Akgonullu, as taught by Abargues, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 29, modified Akgonullu does not explicitly disclose the silver nanoparticles have an average diameter of about 30 nm to about 70 nm.
Abargues (Table 1) teaches that it was known in the art that increasing the diameter of an Ag nanocomposite will increase the λLSPR. Therefore the λLSPR is a variable that can be modified, among others, by varying the diameter of said Ag nanocomposite. For that reason, the size of the AgNP, would have been considered a result effective variable by one having ordinary skill in the art, before the effective filing date of the claimed invention. As such, without showing unexpected results, the size of the AgNP cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have optimized, by routine experimentation, the size of the AgNP in the apparatus of modified Akgonullu to obtain the desired λLSPR (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 34, modified Akgonullu does not explicitly disclose the silver nanoparticles have an average diameter of about 30 nm to about 70 nm.
Abargues (Table 1) teaches that it was known in the art that increasing the diameter of an Ag nanocomposite will increase the λLSPR. Therefore the λLSPR is a variable that can be modified, among others, by varying the diameter of said Ag nanocomposite. For that reason, the size of the AgNP, would have been considered a result effective variable by one having ordinary skill in the art, before the effective filing date of the claimed invention. As such, without showing unexpected results, the size of the AgNP cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have optimized, by routine experimentation, the size of the AgNP in the apparatus of modified Akgonullu to obtain the desired λLSPR (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Response to Arguments
Applicant's arguments filed 06/11/2026 have been fully considered but they are not persuasive.
Regarding the Applicant’s remarks directed towards Claim Interpretation, even assuming arguendo, that the instantly recited functional limitations are not a not merely a recitation of the inherent material properties of the instantly recited composition/structure, the Examiner respectfully disagrees with the Applicant’s assertion that the prior art device would be incapable of performing the instantly recited functions. Jiang explicitly teaches AgNPs bring a 2 fold chemiluminescence enhancement (pg. 61/ 3.2. SPCC amplification of the AgNPs modified immunosensor), therefore it is the position of the Examiner that the AgNPs in the device disclosed by modified Akgonullu would be fully capable of enhancing the florescence emission from a bound ABF1 molecule upon UV irradiation.
The Examiner respectfully disagrees with the Applicant’s assertion that Akgonullu fails to demonstrate that the nanoparticles are incorporated throughout the bulk of the polymer matrix. Akgonullu discloses the AuNPs being substantially uniformly distributed throughout the MIP layer (Scheme 1., see: AuNPs evenly dispersed within the MIP layer after UV polymerization). The Examiner further notes that the prior art device is manufactured in the same manner as instantly claimed (see: Claim 36), and therefore it is the opinion of the Examiner that the devices would have identical structures and properties resulting from the same materials being arranged in the same structure with the same techniques.
In response to applicant's argument that Akgonullu is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both the instant invention and Akgonullu are directed plasmon enhanced sensing techniques and devices.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references (E. Argument), the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, one having ordinary skill in the art would have been motivated to select silver as the nanoparticle material in order to provide for a “less expensive” and a more easily produced device arising from “reagents for synthesis of AgNPs are more convenient to be obtained”.
The Examiner respectfully disagrees with the Applicant’s assertion that gold and silver are not art recognized as suitable for the same intended purpose (F. Argument). Jiang explicitly teaches the respective advantages of AuNPs and AgNPs in the field of SPR (pg. 59/col. 1/para. 4). It would have been obvious to one having ordinary skill in the art to have weighed the respective advantages of AuNPs and AgNPs that were well known in the art and disclosed by Jiang, and select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (stability, cost, ease of sourcing, optical characteristics). It is also noted that the Applicant’s cited prior art, Kelani et al. (cited in IDS filed 06/11/2026), also discloses the use of both silver and hold nanoparticles in LSPR sensing applications.
Regarding the Applicant’s argument that the cited prior art teaches away from the invention and renders the prior art unsatisfactory for its intended purpose (G. Argument, ; J. Argument), a prior art reference that "teaches away" from the claimed invention is a significant factor to be considered in determining obviousness. However, "the nature of the teaching is highly relevant and must be weighed in substance. 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). Akgonullu disclosing that stability is a desirable sensor characteristic is not a teaching or suggestion that AgNPs are not suitable for use in the disclosed AFB1-MIP SPR chip.
The Applicant’s argument that the nanoparticle size claims are not defeated by the result-effective variable doctrine (H. Argument) is not persuasive as the Applicants have failed to establish the size of the nanoparticles critical by showing unexpected results.
Regarding the Applicant’s K Argument, Claims 40-42 are withdrawn from consideration as being directed to a non-elected invention (see: Election/Restrictions above).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J EOM whose telephone number is (571)270-7075. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at 5712721254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J EOM/Primary Examiner, Art Unit 1797
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