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 .
Amendment
1- The amendment filed on 07/22/2026 has been entered and fully considered. Claims 1-17, and 19 remain pending in the application, where the independent claims have been amended. New claims 22-24 have been added.
Response to Arguments
2- Examiner has considered Applicants’ proposed amendments and acknowledges they overcome the 35 USC 112 rejection of the pending claims as set forth in the non-final office action mailed on 4/23/2026. The above rejections are therefore withdrawn.
3- Applicants’ amendments and their corresponding arguments with respect to the rejections of the pending claims under 35 USC § 102 and 103 have been fully considered but are found not persuasive to overcome the prior art used in the previous office action, despite the fact that the amendments have changed the scope of the invention and overcome the rejection as written in the previous office action.
4- Therefore, the amendments necessitated, upon further consideration, new grounds of rejection using additional teachings from the same references used in the previous office action. The new limitations are addressed in the rejections here under in more details.
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- Claim 22 is 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 “…the plurality of insulating pillars and the insulating part are made of a same insulating material ”, the underlined clauses appear to present antecedence issues.
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, 14-17, 19, 22 and 24 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 amended 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.) including a textured surface (the textured surface is formed by the NPs/Al2O3 bumps in Figs. 2; Alumina known to be electrically insulating), the textured surface of the substrate including a plurality of insulating pillars (Figs. 1-2, 10-11, ¶ 96, 102, 105 for ex.); a metal layer encasing the plurality of insulating pillars; and (Claim 1) 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 to the metal layer for a second pass of light-matter interaction (¶ 22; 78).
(claims 16, 4) wherein each of the plurality of insulating pillars has a width that changes from a top end to a base, resulting in changes in a gap distance between two adjacent insulating pillars along a top end 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 layer is made of at least one of: gold, silver, aluminum, copper, palladium, nickel, and platinum, or wherein the substrate includes a fused silica (FS) substrate, quartz substrate or A1203 sapphire substrate (Fig. 2, ¶ 22-24 for ex.; a gold, Silver, or Aluminum or palladium film is used. Also, Figs. 1-2 Al2O3, alumina, is used).
(claim10) wherein the substrate includes a fused silica (FS) substrate, quartz substrate or Al2O3, sapphire substrate (Fig. 2; ¶ 80, 111 for ex.)
(claim 19) wherein pillar heights of the plurality of insulating pillars vary from 100 – 1500nm, and a periodicity varies from 50 – 500nm, wherein the chip further comprises at least one additional layer of material for adhesion, molecule functionalization, or passivation, or wherein the metal layer has a thickness of at least 50nm (¶ 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. The Ag layer is clearly greater than 50nm in thickness).
(claim 2) before the depositing of the metal layer, further comprising coating the surface of the textured substrate with at least one additional layer 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 an average pillar height, an average pillar width and/or a pillar density of the plurality of insulating pillars 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 the depositing of the metal layer includes depositing multiple metals simultaneously or sequentially on the plurality of insulating pillars (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 a side of the substrate with metal coating and an 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 22) wherein the plurality of insulating pillars longitudinally extend from an insulating part of the substrate (Figs. 1-2; in the vertical direction), the plurality of insulating pillars and the insulating part are made of a same insulating material (the NPs/Al2O3 pillars are made with the insulating part Al2O3), and the metal layer is continuously formed on the plurality of insulating pillars, and on the insulating part (Figs. 1-2 for ex).
(claim 24) wherein the plurality of insulating pillars include at least first and second insulating pillars that have different pillar heights and different pillar widths (Figs. 2 for the widths, and 10 for the heights).
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, 23 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Gan.
As to claims 9, 23, Gan teaches the chip of claim 14 and the method of claim 1.
Moreover, Gan teaches (Claim 23) wherein the metal layer includes: a top metal part formed on a top end of a first insulating pillar of the plurality of insulating pillars, the top metal part having a first dimension, above the top end of the first insulating pillar, that is measured in a longitudinal direction of the first insulating pillar; and a side metal part formed on a side surface, between the top end and a base of the first insulating pillar, of the first insulating pillar, the side metal part having a second dimension measured in a lateral direction perpendicular to the longitudinal direction of the first insulating pillar (See Fig. 2; top and side covering of the bumps/pillars with Au film).
Gan does not teach expressly wherein the metal layer has a thickness of at least 50nm; (Claim 23) wherein the first dimension of the top metal part of the metal layer is greater than the second dimension of the side metal part of the metal layer.
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. Moreover, in Fig. 10 and given the 200 nm scale therein, the Ag layer appears clearly to be greater than 50 nm. Moreover, and as for claim 23, in Fig. 2b; the bumps extend vertically with an Au metal coating with a given thickness on top of the bumps, and a later thickness that can be arbitrarily chosen to be less than the thickness on top of the bumps.
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 layer has a thickness of at least 50nm; wherein the first dimension of the top metal part of the metal layer is greater than the second dimension of the side metal part of the metal layer, 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
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).
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.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED 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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