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 .
Claim Objections
Claims 1 and 17 are objected to because of the following informalities:
In claim 1, there is lack of antecedent basis for the limitation, “analyte”, in line 5 This appears to be due to typographical error. Examiner suggest changing “analyte’, line 5 for —the analyte—.
In claim 17, there is lack of antecedent basis for the limitation, “analyte”, in line 7 This appears to be due to typographical error. Examiner suggest changing “analyte’, line 7 for —the analyte—.
Appropriate correction is required.
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 (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 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.
Claims 1, 3, 5-7, 9, 11, 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by X. Miao, T. S. Luk, P. Q. Liu, Liquid-Metal-Based Nanophotonic Structures for High-Performance SEIRA Sensing. Adv. Mater. 2022, 34, 2107950., included in IDS on 03/06/2025), hereafter Miao.
Regarding claim 1, Miao teaches a method of preparing a sample for Raman spectroscopy, [page 3, section 2.2, first paragraph],, “surface enhanced Raman scattering sensing”. [pages 7-8, section conclusion]), the method comprising:
disposing a plurality of metal nanoparticles (array of gold nanostrips) on a first surface of a substrate, (“Sensor chips consisting of arrays of gold nanostrips on a glass or calcium fluoride (CaF2) substrate were fabricated with electron-beam lithography for patterning, followed by the deposition of a 70 nm-thick gold film and a lift-off process”, [page 3, section 2.2, first paragraph],
depositing an analyte of interest on the metal nanoparticles (“Then the analyte molecules were coated on the surface of the gold nanostrips with methods such as physical/chemical adsorption or spin-coating,” [page 3, section 2.2, first paragraph],
coating at least a portion of the first surface of the substrate in a liquid metal (“the sensor chip coated with the analyte thin film was immediately placed on the liquid gallium to form the complete nanopatch antenna structures”, [page 3, section 2.2, first paragraph]), such that the plurality of metal nanoparticles and analyte of interest are encapsulated between the first surface of the substrate and the liquid metal, (as shown in Fig. 2).
Regarding claim 3, Miao teaches the method of claim 1, wherein the plurality of metal nanoparticles (70 nm-thick gold film) are formed by lithography, metal deposition, or lift-off, [page 3, section 2.2, first paragraph]).
Regarding claim 4, Miao teaches the method of claim 1, wherein the plurality of metal nanoparticles (70 nm-thick gold film) are silver or gold, [page 3, section 2.2, first paragraph].
Regarding claim 5, Miao teaches the method of claim 1, wherein the liquid metal is gallium [page 3, section 2.2, first paragraph] or liquid gallium- indium, [page 7, section 2.5, second paragraph].
Regarding claim 6, Miao teaches the method of claim 1, wherein the substrate comprises glass or fused silica, (“Sensor chips consisting of arrays of gold nanostrips on a glass or calcium fluoride (CaF2) substrate”), [page 3, section 2.2, first paragraph]).
Regarding claim 7, Miao teaches the method of claim 1, wherein the analyte of interest is adsorbed on the plurality of metal nanoparticles, (“Then the analyte molecules were coated on the surface of the gold nanostrips with methods such as physical/chemical adsorption or spin-coating”), [page 3, section 2.2, first paragraph]).
Regarding claim 9, Miao teaches the method of claim 1, wherein a diameter of each of the plurality of metal nanoparticles is within 10% of a diameter of the other metal nanoparticles of the plurality of metal nanoparticles, (As shown in Figure 4c, we simulated the reflection spectra of a nanopatch antenna structure with varied gap sizes (“the nanostrip width was fixed at 380 nm”), [page 6, section 2.4, first paragraph- [page 7, first paragraph]).
Regarding claim 11, Miao teaches the method of claim 1, wherein the first surface of the substrate is coated in liquid metal by placing the first surface of the substrate in liquid metal, (“After removing the oxide layer, the sensor chip coated with the analyte thin film was immediately placed on the liquid gallium to form the complete nanopatch antenna structures”, as shown in Fig. 2, [page 3, section 2.2, first paragraph]).
Regarding claim 17, Miao teaches a sensor (Fig. 2) for Raman spectroscopy [page 3, section 2.2, first paragraph],, “surface enhanced Raman scattering sensing”. [pages 7-8, section conclusion]), comprising:
a substrate (Fig. 2 element glass substrate, [page 3, section 2.2, first paragraph]);
a plurality of metal nanoparticles (Fig. 2 element AU, “array of gold nanostrips) disposed on at least a portion of a first surface of the substrate (“Sensor chips consisting of arrays of gold nanostrips on a glass or calcium fluoride (CaF2) substrate were fabricated with electron-beam lithography for patterning, followed by the deposition of a 70 nm-thick gold film and a lift-off process”, [page 3, section 2.2, first paragraph]);
an analyte of interest adsorbed on the plurality of metal nanoparticles (“Then the analyte molecules were coated on the surface of the gold nanostrips with methods such as physical/chemical adsorption or spin-coating,” [page 3, section 2.2, first paragraph]; and
a liquid metal coating on at least a portion of the first surface of the substrate thereby encapsulating the plurality of metal nanoparticles and analyte of interest between the substrate and the liquid metal, (“the sensor chip coated with the analyte thin film was immediately placed on the liquid gallium to form the complete nanopatch antenna structures”, [page 3, section 2.2, first paragraph], as shown in Fig. 2).
Regarding claim 18, Miao teaches the sensor of claim 17, wherein the plurality of metal nanoparticles (70 nm-thick gold film) are silver or gold, [page 3, section 2.2, first paragraph].
Regarding claim 19, Miao teaches the sensor of claim 17, wherein the liquid metal is gallium [page 3, section 2.2, first paragraph] or liquid gallium- indium, [page 7, section 2.5, second paragraph].
Regarding claim 20, Miao teaches the sensor of claim 17, wherein the substrate comprises glass or fused silica, (“Sensor chips consisting of arrays of gold nanostrips on a glass or calcium fluoride (CaF2) substrate”), [page 3, section 2.2, first paragraph]).
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.
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 2, 8, 22 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Miao, in view of GAN QIAOQIANG et al. (WO 2020227450 A1), hereafter Gan.
Regarding claim 2, Miao teaches the method of claim 1, wherein the plurality of metal nanoparticles are disposed on the first surface of the substrate by: depositing a thin film of the metal (deposition of a 70 nm-thick gold film) onto the first surface of the substrate (a glass or calcium fluoride (CaF2) substrate), [page 3, section 2.2, first paragraph].
Miao fail to teach annealing the thin film to form the plurality of metal nanoparticles
However, Gan related to spectroscopy devices and thus from the same field of endeavor teaches annealing the thin film to form the plurality of metal nanoparticles, (“The deposited metal may be annealed at a temperature to form the first plurality of metallic nanostructures”, [0054, 0071]).
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 Miao by including annealing the thin film to form the plurality of metal nanoparticles, (as taught by Gan) for several advantages such as: generating randomness in the surface morphology to excite hot spots at the edges and gaps between the nanoparticles at different wavelengths thus enhance sensing resolution, ([0065, 0067], Gan).
Regarding claims 8 and 22, Miao teaches the sensor and method, wherein the plurality of metal nanoparticles (70 nm-thick gold film), [page 3, section 2.2, first paragraph]).
Miao fail to teach wherein the plurality of metal nanoparticles comprises nanoparticles of varying diameters.
However, Gan further teaches wherein the plurality of metal nanoparticles comprises nanoparticles of varying diameters, (random nanoparticles (NPs), [0046]).
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 Miao by including wherein the plurality of metal nanoparticles comprises nanoparticles of varying diameters, (as taught by Gan) for several advantages such as: generating randomness in the surface morphology to excite hot spots at the edges and gaps between the nanoparticles at different wavelengths thus enhance sensing resolution, ([0065, 0067], Gan).
Regarding claim 29, Miao teaches the sensor of claim 17.
Miao fail to teach wherein the metal nanoparticles of the plurality of metal nanoparticles are separated by distances ranging from 2 nm to 100 nm, inclusive.
However, further teaches wherein the metal nanoparticles of the plurality of metal nanoparticles are separated by distances ranging from 2 nm to 100 nm, inclusive, [0077], 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).
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 Miao by including wherein the metal nanoparticles of the plurality of metal nanoparticles are separated by distances ranging from 2 nm to 100 nm, inclusive, (as taught by Gan) for several advantages such as: generating randomness in the surface morphology to excite hot spots at the edges and gaps between the nanoparticles at different wavelengths thus enhance sensing resolution, ([0065, 0067], Gan).
Claims 10, 12, 24 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Miao, in view of He et al. (US 20180113075 A1, included in IDS on 03/06/2025), hereafter He.
Regarding claims 10 and 24, Miao teaches the sensor and method.
Miao fail to teach wherein the average diameter of the plurality of metal nanoparticles is between 20 nm and 30 nm, inclusive.
He related to spectroscopy devices and thus from the same field of endeavor teaches wherein the average diameter of the plurality of metal nanoparticles is between 20 nm and 30 nm, inclusive, [0030], 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).
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 Miao by including wherein the average diameter of the plurality of metal nanoparticles is between 20 nm and 30 nm, inclusive, (as taught by He) for several advantages such as: allowing to achieve a specific penetration depth and signal intensity needed, thus increase the device efficiency, ([0035], He).
Regarding claims 12 and 27, Miao teaches the sensor and method.
Miao fail to teach wherein each metal nanoparticle of the plurality of metal nanoparticles has a diameter in the range of 10 nm to 100 nm, inclusive.
He further teaches wherein each metal nanoparticle of the plurality of metal nanoparticles has a diameter in the range of 10 nm to 100 nm, inclusive, (“the gold nanoparticles have a diameter of 50 nm “, [0035]), 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).
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 Miao by including wherein each metal nanoparticle of the plurality of metal nanoparticles has a diameter in the range of 10 nm to 100 nm, inclusive. (as taught by He) for several advantages such as: allowing to achieve a specific penetration depth and signal intensity needed, thus increase the device efficiency, ([0035], He).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim et al. (US 20170030836 A1), discloses a spectroscopic sensor for analyzing a biological or non-biological target based on surface plasmon resonance and a method for manufacturing the spectroscopic sensor.
Wang et al. (US 20140268128 A1), discloses a sensor wherein the nanoparticle includes a SERS-enhancing material. In particular, a material of the nanoparticle are configured to enhance Raman scattering from an adjacent analyte.
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/CARLOS PEREZ-GUZMAN/ Examiner, Art Unit 2877
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