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 .
Priority
The limitations of Claims 1-4 and 6 are disclosed in provisional 62/861,090, thus their effecting filing dates are 6/13/2019. Claim 5, and 7-17 contain a limitation “edges that are crystallographically-ordered and parallel on an atomic scale”, that is only supported in the disclosure of the CIP application. Thus, the effective filing dates for claims 5 and 7-17 are 11/11/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/10/2025 has been considered by the examiner.
Election/Restrictions
Applicant's election of Group I and species A, Claims 1-17, without traverse in the reply filed on 06/16/2026 is acknowledged.
Upon consideration of the claims and the elected species, claims 6-13 are drawn to unelected species B since claim 6 recites “a second atomically-thin conducting layer” drawn to species B (Figs. 6-8). Claims 7-13 depend upon claim 6. Claims 16-17 recite “a plurality of alternating atomically-thin conducting layers and insulating layers” drawn to unelected species C (Fig.9). Claims 6-13 and 16-17 are therefore withdrawn as being drawn to non-elected Species B and C. Therefore, claims 1-5 and 14-15 are examined in the current office action.
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 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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Drndic (US 20130309776A1), and in view of Arjmandi-Tash et al. (Zero-depth interfacial nanopore capillaries, Advanced Materials, 2018, 30, 1703602; hereinafter AT). Graphenea (Properties of graphene, https://www.graphenea.com/pages/graphene-properties, 2013) is used as an evidence for claim 2. Drndic and AT were provided in IDS filed on 4/10/2025.
Regarding claim 1, Drndic teaches a heterostructure device (a graphene nanopore in the embodiment of Fig.1 [para. 0106]; or a multilayered graphene nanopore in the embodiment of Fig.44 [para. 0109]), comprising:
a first conducting layer (a graphene sheet in the embodiment of Fig.1 [paras. 0010, 0107]; or the bottom-most graphene sheet disposed on the insulator 1 in the embodiment of Fig.44 [para. 0091]) including a first nanogap (see the nanopore formed in the first conducting layer as shown in Figs.1 and 44) having a width of 10 nm or less (an [Symbol font/0x7E]8 nm diameter graphene nanopore [para. 0013]) and a depth extending through the first conducting layer (see Figs. 1 and 44);
a first insulating layer (SiN insulating layer in Fig.1 [para. 0106]; or the insulator 1 in the embodiment of Fig.44 [para. 0091]) including a second nanogap (the nanopore formed in the first insulating layer as shown in Figs.1 and 44) having a width of 10 nm or less (a graphene sheet or ribbon may sit directly atop a SiN substrate, in which case the pore formed in the graphene and the pore in the SiN has the same cross-sectional dimension [para. 0010]; an [Symbol font/0x7E]8 nm diameter graphene nanopore [para. 0013]; Fig.44 shows that the widths of the nanopores in the insulating layer and the graphene layer are the same) and a depth extending through the first insulating layer (see Figs. 1 and 44); and
a first nanopore formed at a first crossing point (the interface between the first conducting layer and the first insulating layer as shown in Figs.1 and 44) of the first nanogap and the second nanogap wherein the first nanopore extends through the first conducting layer and the first insulating layer (a nanopore extending through the first conducting layer and the first insulating layer as shown in Figs.1 and 44).
Drndic further teaches that although nanopores are shown as being circular for purposes of illustration, nanopores need not actually be circular, and may instead be elliptical, triangular, slit-shaped, or otherwise irregular in shape. The nanopore suitably has at least one cross-section that is within 0.1, 1, 5, 10, or about 20 nm of a cross-sectional dimension of a macromolecule being analyzed [para. 0145].
Drndic is silent to a length of the first nanogap is greater than 100 nm, and a length of the second nanogap is greater than 100 nm.
AT teaches an interfacial nanopore generated at the crossing of two trenches, as shown in Fig.1, for DNA analysis (Fig.3). The dot arrows in Fig.1(i) show the lines of the two crossing parallelepipedic trenches, and the length of each trench is larger than the scalar bar of 20 µm in Fig.1(i). The top/bottom trenches correspond, respectively, to the first nanogap and the second nanogap. Fig.2b shows each trench is a nanoslit having a width of a and depth of h (the 3rd paragraph in Col. 2 on page 1 to the 1st paragraph in Col. 2 on page 2). AT further teaches wherein the width a=10 nm (Fig.2d) and 2 nm (Fig.3d). Thus, AT teaches an interfacial nanopore comprising a first nanogap (the top trench) on top of a second nanogap (the bottom trench), wherein each of the first and second nanogaps is a 3D nanoslit having a length of greater than 20 µm [Fig.1(i)], a width of a and a depth of h (see Fig.2b), wherein the width is a=10 nm in Fig.2d or 2 nm in Fig.3d.
Given the teachings of Drndic regarding the nanopores may be slit-shaped, and the teachings of AT regarding the slit-shaped first and second nanogaps each having a length of greater than 20 µm and a width of 10 nm or 2 nm, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the circular shape of the first and second nanogaps in Drndic to be slit-shape, as taught by both Drndic and AT, wherein each of the modified first and second nanogaps have a length of greater than 20 µm and a width of 10 nm or 2 nm, as taught by AT, since both Drndic and AT teach stacked slit-shaped nanopores would be also suitable for DNA analysis ([para. 0145 in Drndic] and [abstract and Fig. 3 in AT]), and it would reduce biomolecule translocation speed and lower electronic and ionic noise (abstract in AT). Furthermore, the change in form or shape, without any new or unexpected results, is an obvious engineering design choice. See In re Dailey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04).
The disclosed ranges for the lengths of the first and second nanogaps (i.e., larger than 20 µm) fall within the claimed length range of greater than 100 nm. Furthermore, the disclosed widths of the first and second nanogaps (i.e., a=10 nm and 2 nm) fall within the claimed width range of 10 nm or less.
Regarding claim 2, modified Drndic teaches the heterostructure device of claim 1, and Drndic is silent to wherein the first conducting layer is atomically thin having a thickness of about 1.0 nm or less.
However, Drndic teaches the graphene sheet may be from 1 to about 50 atomic layers in thickness [para. 0103]. As evidenced by Graphenea, one atomic layer of graphene has a thickness of 0.345 nm (the first paragraph on page 2 in Graphenea). Thus, Drndic teaches wherein the first conducting layer having a thickness of about 0.345 nm to 50x0.345=17.25 nm, and the disclosed thickness overlaps with the claimed thickness of about 1.0 nm or less.
It would have been obvious to have selected and utilized a thickness of the first conducting layer within the disclosed range, as taught by Drndic, including those amounts that overlap within the claimed range, since one of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that Drndic specifically teaches the range to be suitable for the thickness of the graphene sheet of the first conductive layer. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding claim 3, modified Drndic teaches the heterostructure device of claim 2, and Drndic is silent to wherein the first insulating layer is atomically thin having a thickness of about 1 nm or less.
Drndic further teaches wherein the insulating material may have a thickness of from about 0.1 nm to about 1000 nm [para. 0088], and the disclosed thickness of the insulating layer overlaps with the claimed thickness of about 1 nm or less.
It would have been obvious to have selected and utilized a thickness of the insulating layer within the disclosed range, as taught by Drndic, including those amounts that overlap within the claimed range, since one of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that Drndic specifically teaches the range to be suitable for the thickness of the insulating layer. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding claim 4, modified Drndic teaches the heterostructure device of claim 3, and Drndic teaches wherein the first nanogap forms a first electrode pair (Fig.55 shows a first electrode pair formed in graphene ribbons in the device of the embodiment of Fig.1 [para. 0108]. Fig.50 shows the measurement of ion current through the graphene [In] using the first electrode pair [para. 0082]).
Allowable Subject Matter
Claim 5 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 14-15 allowed.
The following is a statement of reasons for the indication of allowable subject matter.
Regarding claim 5, the limitation “wherein the first nanogap and the second nanogap are etched” is considered as a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). Examiner also notes that AT does teach wherein the two crossing trenches (i.e., the first and second nanogaps) are formed by etching (see “etching” in Fig.1(e) in AT). The prior art of the record does not teach and/or suggest wherein the first and second nanogaps include edges that are crystallographically-ordered and parallel on an atomic scale.
Regarding claim 14, Strachan (US20200393407A1) teaches all limitations of claim 14 (see claims 1, 12 and [para. 0042]). Strachan and the references listed in Conclusion do not teach and/or suggest “wherein the first and second nanopores include edges that are crystallographically-ordered and parallel on an atomic scale. Claim 15 further depends on claim 14, and it is allowable for the same reason of claim 14 above.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure: Dogan et al. (Magnetism and interlayer bonding in pores of Bernal-stacked hexagonal boron nitride, PCCP, 2022, 24, 20882) teaches stacked nanopores in bilayer h-BN with parallel multilayer edges. Strachan (EAGER: Interfacing nanotubes and graphene into ordered crystallographic orientations through substrate-induced strain, 2016) teaches cross-gap nanopore structure utilizing overlapping and crossing arrays of an atomically-scaled insulators like hBN and conductors like graphene. Xu et al. (Nucleation and growth of stacking-dependent nanopores in bilayer h-BN, Nanoscale, 2022, 14, 17182) teaches stacked nanopores in bilayer h-BN with open edges.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIZHI QIAN whose telephone number is (571)272-3487. The examiner can normally be reached Monday-Thursday 8:00 am-5:00 pm.
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/SHIZHI QIAN/Primary Examiner, Art Unit 1795
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