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
Claims 5-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 12, 2026.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description that would be helpful to understand the invention.
Figs. 2-6 lack reference numerals.
Fig. 5 lacks reference numeral 20.
Fig. 7 includes only 2 reference numerals ( 20,30) .
Fig. 7 includes an “angle 84” that is not large enough to see.
It is unclear if the shading and in particular the light checkerboard shading in Figs. 1 and 5 are intentional. Additionally, the shadow under the ring in Fig. 4 is unclear.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 2-3 in Fig. 7.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Claim Objections
Claim 2 objected to because of the following informalities.
Claim 2 recites “reach cone” a suggested revision is “each cone of the plurality of cones”.
Claim 3 recites “all the cones are located” a suggested revision is “all of the plurality of cones extend”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-4 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “cone” in claims 1-4 is used by the claim to mean “ conical section portion extending through a plane parallel to a central axis of the cone” or “ conical section part” or “planar conical portion” while the accepted meaning is :
“a solid shape with a round or oval base that narrows to a point, or an object that has this shape “ (See Cambridge Dictionary, definition for “cone”. )
The term is indefinite because the specification does not clearly redefine the term.
Claims 2-4 are rejected for their dependence on an indefinite term.
A suggested revision based on the Drawings (Figs. 1 and 4-7) and Specification (paragraphs 17, 33, 43) : is a “planar conical portion” .
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 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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20090280244 A1 to Mitchell et al (hereinafter Mitchell) in view of US Pat. Pub. No. 20100040979 A1 to Wayne A. Weimer (hereinafter Weimer)
Regarding claim 1, Mitchell teaches a substrate holder for mass production of surface-enhanced Raman scattering (SERS) substrates, comprising a ring-shaped body (101) and a support frame (17, 19) thereof, wherein the ring-shaped body have slots with a plurality of cones (36, 101) clamped in the slots of the ring-shaped body. (See Mitchell, Abstract, Figs. 1-3, and paragraphs 16-22.)
Mitchell does not explicitly teach a plurality of substrates are pasted on two surfaces of each cone.
Weimer is directed to using deposition to form systems for rapid detection and identification of chemicals and biomaterials using surface enhanced Raman spectroscopy.
Weimer teaches the shape of the substrates (i.e. SERS film) may be optimized for the detection of specific analytes. (See Weimer, Abstract, paragraph 75, and Figs. 1-13.)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute different metals and their alloy, through routine experimentation, with a reasonable expectation of success, to the include a plurality of substrates are pasted on two surfaces of each cone, as a result-effective variable, in order to provide the optimal detection properties for the specific chemical analyte. (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1969)) (See Weimer, Abstract, paragraph 75, and Figs. 1-13.)
Mitchell does not explicitly teach a substrate holder for mass production of surface-enhanced Raman scattering (SERS) substrates.
Weimer is directed to using deposition to form systems for rapid detection and identification of chemicals and biomaterials using surface enhanced Raman spectroscopy.
Weimer teaches the shape of the substrates (i.e. SERS film) may be optimized for the detection of specific analytes. (See Weimer, Abstract, paragraph 75, and Figs. 1-13.)
The selection of something based on its known suitability for its intended use has been held to support a prima facie case of obviousness. Sinclair & Carroll Co. v. lnterchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07. Therefore, taking the references as a whole, it would have been obvious to have a substrate holder for mass production of surface-enhanced Raman scattering (SERS) substrates. with a reasonable expectation of success, because this enable the desired number of substrates for the particular analyte to be produced. (See Weimer, Abstract, paragraph 75, and Figs. 1-13.)
Intended use language is located in the preamble of claim 1 (substrate holder for mass production of surface-enhanced Raman scattering (SERS) substrates). A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Regarding claim 2, Mitchell does not explicitly teach upper and bottom edges of each cone are circular curves.
Weimer teaches the shape of the substrates (i.e. SERS film) may be optimized for the detection of specific analytes. (See Weimer, Abstract, paragraph 75, and Figs. 1-13.)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute different metals and their alloy, through routine experimentation, with a reasonable expectation of success, to the include upper and bottom edges of each cone are circular curves, as a result-effective variable, in order to provide the optimal detection properties for the specific chemical analyte. (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1969)) (See Weimer, Abstract, paragraph 75, and Figs. 1-13.)
Regarding claim 3, Mitchell does not explicitly teach where all the cones (36) are located in a vertical direction. (See Mitchell, Abstract, Figs. 1-3, and paragraphs 16-22.)
Regarding claim 4, Mitchell does not explicitly teach wherein each circular curve has a cone angle of 6-8 degrees, and a bisector of the cone angle is in the vertical direction.
Weimer teaches the shape of the substrates (i.e. SERS film) may be optimized for the detection of specific analytes. (See Weimer, Abstract, paragraph 75, and Figs. 1-13.)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute different metals and their alloy, through routine experimentation, with a reasonable expectation of success, to the include each circular curve has a cone angle of 6-8 degrees, and a bisector of the cone angle is in the vertical direction, as a result-effective variable, in order to provide the optimal detection properties for the specific chemical analyte. (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1969)) (See Weimer, Abstract, paragraph 75, and Figs. 1-13.)
Allowable Subject Matter
The following claim 1 drafted by the examiner and considered to distinguish patentably over the art of record in this application, presented to applicant for consideration:
“A substrate holder for mass production of surface-enhanced Raman scattering (SERS) substrates, comprising a ring-shaped body and a support frame thereof, wherein ring-shaped body is located above the support frame, and the support frame is located above a crucible , said crucible is located under the center of a circle of the ring-shaped body, the ring-shaped body have slots [[with]] which receive a plurality of planar conical portions received each of said planar conical portions having an upper edge and a lower edge, said upper edge of said planar conical portions are located around a perimeter of the ring-shaped body to form a conical profile, the upper edge and the lower edge of the plurality of planar conical portions form two concentric circle openings which are concentric with the circle of the ring-shaped body, and a plurality of substrates are deposited planar conical portion .”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARL V KURPLE whose telephone number is (571)270-3477. The examiner can normally be reached Monday-Friday 8 AM-5 PM.
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/KARL KURPLE/Primary Examiner
Art Unit 1717
Prosecution Insights