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 .
Response to Amendment
The amendment filled on 05/18/2026 has been entered. Claims 1-10 are remain pending in the application.
Applicant’s arguments, see Page 6, filed 05/18/2026, with respect to 35 U.S.C § 112(f) have been fully considered and are persuasive. Accordingly, the claim interpretation of 35 U.S.C § 112(f) of Claim 5 have been withdrawn.
Applicant’s arguments filed on 05/18/2026 with respect to 35 U.S.C § 103 to newly amended limitations in claims 1-5 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-3, 5 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over ROBOTTI et al. (EP 1724584 A1), hereafter Robotti in view of Maul et al. (US 5,955,377 A), hereafter Maul and further in view of Akagi et al. (US 2021/0310945 A1), hereafter Akagi.
Regarding claim 1, Robotti teaches an optical device (Fig. 1 element 104, [0060]) comprising:
a substrate (Figs. 1-2 element 110) configured to transmit light, [0060];
a reflective layer (Figs. 1-2 element 112, [0060]) disposed on the substrate (110), [0065, 0088];
an optical waveguide layer (Figs. 1-2 elements 116 + 118 and/or 113, [0086]) configured to propagate the transmitted light transmitted through the reflective layer (112) or near-field light bled from the reflective layer, the optical waveguide layer (116 + 118 and/or 113) being located on the reflective layer (112), (as shown in Figs. 1-2) and having a surface provided with a functional group, [0068, 0072] that immobilizes a capturing body that captures a specimen, (Figs. 1-2 element 102 + 106 “ligand + “triazole ring linker moiety”, [0060-0061]) ; and
a first layer (Fig. 1 element 114 and/or silicon nitride layer) located between the substrate (110), and the reflective layer (112), [0066], between the optical waveguide layer (116 + 118), and the reflective layer (112), [0065], or both between the substrate and the reflective layer and between the optical waveguide layer and the reflective layer, [0065-0066].
Robotti is silent about the reflective layer comprising amorphous Si (a-Si), the first layer having a refractive index lower than a refractive index of the reflective layer.
However, Maul related to optical measuring devices and thus from the same field of endeavor teaches the reflective layer comprising amorphous Si (a-Si), (Fig. 6F combination of elements 5 + 6, [col. 10, lines 13-20]), (‘amorphous silicon-coated metal substrates”, [col. 15, lines 41-59], [Col. 16, lines 13-16])
Therefore, it would been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Robotti by including the reflective layer comprising amorphous Si (a-Si), (as taught by Maul) for several advantages such as: allow detection of extremely small quantities of analyte in a sample, thus increasing the device efficiency and accuracy, ([col. 2, lines 25-30], Maul).
Even though the modified device of Robotti teaches the first layer and the reflective layer, the modified device is silent about the first layer having a refractive index lower than a refractive index of the reflective layer.
However, Akagi related to optical measuring devices and thus from the same field of the endeavor teaches the first layer having a refractive index (1.5) lower than a refractive index (4.5) of the reflective layer, [0177, 0230]
the first layer having a refractive index lower than a refractive index of the reflective layer.
Therefore, it would been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the modified device of Robotti by including the first layer having a refractive index lower than a refractive index of the reflective layer (as taught by Akagi) allowing to perform a high-accuracy inspection on the test substance at a concentration of around 1 fg/ml, thus enables an inspection for the test substance also in a very low concentration range and enable the concentration of the test substance contained in the blood to be measured with much higher accuracy. ([0184, 0207], Akagi).
Regarding claim 2, Robotti in the combination outlined above teaches the optical device according to claim 1.
Even though Robotti teaches first layer (Fig. 1 element 114 and/or silicon nitride layer) and the optical waveguide layer (Fig. 1 elements 116 + 118 and/or 113). Robotti is silent about the relation expression of refractive index of the layers.
However, it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions (see MPEP 2144.05 Section II-A).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the index of refraction (as taught by the modified device of Robotti) with wherein the refractive index of the first layer is greater than a refractive index of the optical waveguide layer, without deviating from the general teaching concept of Robotti, since such modification constitutes only a change of form, proportions, or degree, which has been held to be a matter of obviousness (see MPEP 2144.05 Section II-A) in order to attain a particular design choice and as result of routine optimization in order to optimize sensor performance, specifically by enhancing sensitivity, improving detection accuracy, or minimizing background noise.
Regarding claim 3, Robotti in the combination outlined above teaches the optical device according to claim 1.
Robotti further teaches wherein a film thickness of the first layer (Fig. 1 element 114 and/or silicon nitride layer, [0066]) is smaller than a film thickness of the reflective layer (Fig. 1 element 112, [0065]), [0065-0066], Additionally, it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions (see MPEP 2144.05 Section II-A).
Regarding claim 5, Robotti teaches a biosensor (Fig. 1 element 100, and Fig. 2) comprising:
an optical device (Fig. 1 element 104),
a light incidence mechanism (Fig. 1 element 120), [0061] and
a light detection mechanism (Fig. 2 element 144), [0087-0088],
a substrate (Figs. 1-2 element 110) configured to transmit light, [0060];
a reflective layer (Figs. 1-2 element 112, [0060]) disposed on the substrate (110), [0065, 0088];
an optical waveguide layer (Figs. 1-2 elements 116 + 118 and/or 113, [0086]) configured to propagate the transmitted light transmitted through the reflective layer (112) or near-field light bled from the reflective layer, the optical waveguide layer (116 + 118 and/or 113) being located on the reflective layer (112), (as shown in Figs. 1-2) and having a surface provided with a functional group, [0068, 0072] that immobilizes a capturing body that captures a specimen, (Figs. 1-2 element 102 + 106 “ligand + “triazole ring linker moiety”, [0060-0061]) ; and
a first layer (Fig. 1 element 114 and/or silicon nitride layer) located between the substrate (110), and the reflective layer (112), [0066], between the optical waveguide layer (116 + 118), and the reflective layer (112), [0065], or both between the substrate and the reflective layer and between the optical waveguide layer and the reflective layer, [0065-0066].
Robotti is silent about the reflective layer comprising amorphous Si (a-Si), the first layer having a refractive index lower than a refractive index of the reflective layer.
However, Maul related to optical measuring devices and thus from the same field of endeavor teaches the reflective layer comprising amorphous Si (a-Si), (Fig. 6F combination of elements 5 + 6, [col. 10, lines 13-20]), (‘amorphous silicon-coated metal substrates”, [col. 15, lines 41-59], [Col. 16, lines 13-16])
Therefore, it would been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Robotti by including the reflective layer comprising amorphous Si (a-Si), (as taught by Maul) for several advantages such as: allow detection of extremely small quantities of analyte in a sample, thus increasing the device efficiency and accuracy, ([col. 2, lines 25-30], Maul).
Even though the modified device of Robotti teaches the first layer and the reflective layer, the modified device is silent about the first layer having a refractive index lower than a refractive index of the reflective layer.
However, Akagi related to optical measuring devices and thus from the same field of the endeavor teaches the first layer having a refractive index (1.5) lower than a refractive index (4.5) of the reflective layer, [0177, 0230]
the first layer having a refractive index lower than a refractive index of the reflective layer.
Therefore, it would been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the modified device of Robotti by including the first layer having a refractive index lower than a refractive index of the reflective layer (as taught by Akagi) allowing to perform a high-accuracy inspection on the test substance at a concentration of around 1 fg/ml, thus enables an inspection for the test substance also in a very low concentration range and enable the concentration of the test substance contained in the blood to be measured with much higher accuracy. ([0184, 0207], Akagi).
Regarding claim 8, Robotti in the combination outlined above teaches the optical device according to claim 1.
Robotti fail to teach wherein the optical waveguide layer comprises SiO2.
Maul further teaches wherein the optical waveguide layer (Fig. 6E element 2, [col. 10, lines 13-20]) comprises SiO2, [Col. 4, lines 7-11].
Therefore, it would been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the modified device of Robotti by including wherein the optical waveguide layer comprises SiO2. (as taught by Maul) for several advantages such as: allow detection of extremely small quantities of analyte in a sample, thus increasing the device efficiency and accuracy, ([col. 2, lines 25-30], Maul).
Regarding claim 9, Robotti in the combination outlined above teaches the optical device according to claim 8.
Robotti further teaches wherein a film thickness of the first layer (Fig. 1 element 114 and/or silicon nitride layer, [0066]) is smaller than a film thickness of the reflective layer, (Fig. 1 element 112, [0065]), [0065-0066], Additionally, it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions (see MPEP 2144.05 Section II-A).
Claims 4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Robotti in view Maul and Akagi and in further view of Blair et al. (US 2016/0355869 A1), hereafter Blair.
Regarding claims 4 and 10, Robotti in the combination outlined above teaches the optical device.
The modified device of Robotti fail to teach wherein the first layer contains SiON.
However, Blair related to biosensor devices and thus from the same field of endeavor teaches wherein the first layer (Fig. 1a element 96) contains SiON, [0079].
Therefore, it would been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the modified device of Robotti by including wherein the wavelength adjustment layer contains SiON (as taught by Blair) for several advantages such as: allowing to enhance fluorescence excitation thus improved by surface plasmon cross-coupling, ([0079, Blair).
Allowable Subject Matter
Claims 6-7 are allowed.
Regarding Claim 6, the prior art of record, taken either alone or in combination, fails to disclose, teach, or suggest or render obvious “A method of setting a film thickness of a wavelength adjustment layer of an optical device, the optical device comprising: a substrate configured to transmit light; a reflective layer disposed on the substrate; an optical waveguide layer configured to propagate the transmitted light transmitted through the reflective layer or near-field light bled from the reflective layer, the optical waveguide layer being located on the reflective layer and having a surface provided with a functional group that immobilizes a capturing body that captures a specimen; and a wavelength adjustment layer located on a substrate side, an optical waveguide layer side, or both the substrate side and the optical waveguide layer side of the reflective layer, and configured to shift a peak wavelength in a waveform indicating a first relationship between (i) a wavelength of the light and (ii) an intensity of the light reflected by a surface of the reflective layer on the optical waveguide layer side or a surface of the optical waveguide layer on a side opposite to the reflective layer under a total reflection condition, the method comprising: measuring, for an optical device not comprising the wavelength adjustment layer while changing the wavelength of the light, a first reflection intensity, obtained when the light is incident on the substrate with the specimen being captured by the capturing body, on a surface of the reflective layer on thethe reflective layer, and a second reflection intensity, obtained when the light is incident on the substrate without the specimen being captured, on the surface of the reflective layer on the optical waveguide layer side or the surface of the optical waveguide layer opposite to the reflective layer; identifying a peak wavelength in a characteristic waveform indicating a difference between the first reflection intensity and the second reflection intensity measured in the measuring of the first reflection intensity and the second reflection intensity; and setting a film thickness of the wavelength adjustment layer by referring to a second relationship between the peak wavelength in the characteristic waveform and the film thickness obtained in advance, based on the peak wavelength identified in the identifying of the peak wavelength. ”, in the combination required by the claim.
Regarding Claim 7 are directly/indirectly dependent on claim 6 and are allowable based on their dependencies.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS G PEREZ-GUZMAN whose telephone number is (571)272-3904. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached at (571) 272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARLOS PEREZ-GUZMAN/ Examiner, Art Unit 2877
/TARIFUR R CHOWDHURY/ Supervisory Patent Examiner, Art Unit 2877
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