DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1- This office action is a response to an application filed on 10/03/2024, in which claims 1-21 are currently pending.
The Application Claims Priority from Provisional Application 63542884 , filed 10/06/2023. 18905494 Claims Priority from Provisional Application 63542143, filed 10/03/2023.
Information Disclosure Statement
2- The submitted information disclosure statement(s) (IDS) is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is(are) being considered by the examiner.
Specification
3- The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which application may become aware in the specification.
Drawings
4- The drawings were received on 10/03/2024. These drawings are acceptable.
Claim Rejections - 35 USC § 112
5- 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.
6- Claims 4, 16 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 pre-AIA the applicant regards as the invention.
As to claims 4. 16, which read “…wherein each pillar has its width changes from the tip to the base… ”, the underlined clauses appear to present antecedence issues.
Claim 5 is similarly rejected by virtue of its dependence on claim 4.
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 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 (MPEP 706.02(m)).
7- 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.
8- Claims 1-8, 10, 12 and 14-20 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Gan et al. (PGPUB No. 2022/0228992, cited by Applicants).
As to claims 14 and 1, Gan teaches a chip, and its method of making, for surface enhanced Raman spectroscopy -SERS- (Abstract, ¶ 9, 13-17 and Figs. 1-19), comprising: a substrate (Figs. 1-2, 10-11; Glass substrate, Spacer layer or the Glass/Ag/Spacer combination for ex.) having a surface that is textured with a plurality of pillars formed randomly on the surface (13/14) with a desired average pillar height, average pillar width and/or pillar density (¶ 96, 102, 105 for ex.); wherein the plurality of pillars are encased by a layer of thermally annealed metal (Figs. 1-2; Abstract, ¶ 12, 16, 39, 67, 71-75 for ex.).
Moreover, Gan discloses:
(claims 15, 3) further comprising a metallic mirror placed under the substrate such that transmitted light through the substrate is reflected back onto the metal layer for a second pass of light-matter interaction (¶ 22; 78).
(claims 16, 4) wherein each pillar has its width changes from the tip to the base, resulting in changes in a gap distance between two adjacent pillars along the tip to base direction (Fig. 2 for ex.; the widths of each pillar vary from the top to the base).
(claims 17, 7) wherein the metal comprises at least one of: gold, silver, aluminum, copper, palladium, nickel, and platinum (Fig. 2, ¶ 22-24 for ex.; a gold, Silver, or Aluminum or palladium film is used).
(claims 18, 10) wherein the substrate is a fused silica (FS) substrate, quartz substrate or Al2O3, sapphire substrate (Fig. 2; ¶ 80, 111 for ex.).
(claim 19) wherein the pillar height varies from 100 – 1500nm, and the periodicity varies from 50 – 500nm (¶ 47-48; in the 3D perspective of Fig. 10d, given the scale bar at 200 nm, some pillars appear to be at least 100 nm in height, and many gaps appear to be around 50-100 nm. Fig. 11 and the scale bar being 500 nm, gaps appear to present scales of 50-500 nm depending on the direction of the gaps. See also, ¶ 96-98).
(claims 20, 2) further comprising one or more additional layers of material for adhesion, molecule functionalization, or passivation (Figs. 1-2, 10; Epoxy layers, ground layers or spacer layers are comprised by the chip).
(claim 5) wherein the desired average pillar height, average pillar width and/or pillar density are selected to support multiple localized surface plasmon resonance -LSPR- modes when the surface is illuminated by a laser light of a specific wavelength (¶ 5, 7, 63, 67, 77, 81, 108, 112-114 for ex.)
(claim 8) wherein multiple metals are simultaneously or sequentially deposited on the textured surface (Figs. 1, 10, 18 for ex.; Silver and Gold deposited on different parts of the surface according to ¶ 68-72 for ex.)
(claim 12) further comprising configuring the chip for SERS from both the side of the substrate with metal coating and the opposite side of the substrate without metal coating (Figs. 2; since the glass substrate is transparent, it is configurable for SERS from both sides).
Claim Rejections - 35 USC § 103
9- 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 of this title, 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
10- Claims 9, 21 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Gan.
As to claims 21 and 9, Gan teaches the chip of claim 14 and the method of claim 1.
Gan does not teach expressly wherein the metal has a thickness of at least 50nm.
However, Gan discloses, in ¶ 73 “Such a first metallic layer may be deposited at a thickness of, for example, 12 nm-15 nm, inclusive, although the thickness may be greater than or less than these exemplary values depending on parameters such as, for example, the material used”, which clearly teaches the obviousness of using metal thicknesses of 15 nm or more, i.e. at least 50 nm.
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the chip and the method of Gan so that the metal has a thickness of at least 50nm, with the advantage of effectively matching the metal thickness to the material used for optimal functionality.
11- Claim 11 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Gan in view of Wang (US Patent 8958070, cited by Applicants)
As to claim 11, Gan teaches the chip of claim 14 and the method of claim 1.
Gan does not teach expressly wherein the texturing of the surface of the substrate comprises a reactive ion etching (RIE), dry etching, wet etching, laser ablation or chemical wet process.
However, in a similar field of endeavor, Wang teaches a microstructure for SERS sensing substance (Abstract, Col./ll 1/23-34 and Figs. 1-24) wherein the texturing of the surface of the substrate comprises a reactive ion etching (RIE), dry etching, wet etching, laser ablation or chemical wet process (Col/ll. 7/31-51, wet etching is used to form the nanostructure, and deposition such as used by Gan is also disclosed.)
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the chip and the method of Gan according to Wang’s suggestions so that the texturing of the surface of the substrate comprises a reactive ion etching (RIE), dry etching, wet etching, laser ablation or chemical wet process, with the advantage of optimally controlling the structure and sizes of the nanostructures, as an suitable alternative to the chemical deposition of Gan (See MPEP § 2144.07 for ex.)
12- Claim 13 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Gan in view of Zaretski et al (US Patent 10641710)
As to claim 13, Gan teaches the chip of claim 14 and the method of claim 1.
Gan does not teach expressly wherein the annealing is under an atmosphere comprising at least one of N2, H2 and Ar.
However, in a similar field of endeavor, Zaretski teaches a SERS multi-modal sensor (Abstract, Col./ll 1/23-34 and Figs. 1-24) wherein a texturing of the surface of the SERS surface involves annealing the metal by using hydrogen and Argon (Col/ll. 14/22-28 and 40-65.)
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the chip and the method of Gan according to Zaretski’s suggestions so that he annealing is under an atmosphere comprising at least one of N2, H2 and Ar, with the advantage of optimally controlling the thermal process of the annealing.
Conclusion
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED K AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached on (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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/Mohamed K AMARA/
Primary Examiner, Art Unit 2877
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