US 10641699

I'll search for this specific patent number and check for any related litigation.

Both initial searches returned no results. Let me try alternative queries.

Let me check specifically for litigation and PTAB proceedings involving this patent.

US Patent 10,641,699 B2 — Analyst Summary

Sourcing note

The web-search tools returned no results for a CAFC appeal, PTAB proceeding, or district-court case tied to patent 10,641,699. Searches on the bare string "10641699" surface only unrelated hits (a PubMed PMID, a UK company registration number, and a Ukrainian court case number). I therefore cannot confirm or deny litigation — the absence of hits is a limitation of the search, not evidence that no case exists. USPTO PatentCenter / PACER / the CAFC docket would need to be queried directly to be authoritative.

One caveat on the record: the fetched Google Patents page itself labels legal status, priority date, and assignee as assumptions, not legal conclusions.

Bibliographic data

Related applications (cross-referenced, not part of this family): Ser. Nos. 16/122,976; 16/119,607; 16/119,679; 16/124,496.

Abstract (verbatim)

A method for making carrier for use in single molecule detection is related. The method includes following steps: firstly, placing a middle layer on a substrate; secondly, providing a carbon nanotube composite structure, wherein the carbon nanotube composite structure includes a carbon nanotube structure and a protective layer coated on the carbon nanotube structure, the carbon nanotube structure includes a plurality of carbon nanotubes intersected with each other and defines a plurality of openings; thirdly, placing the carbon nanotube composite structure on a surface of the middle layer, wherein parts of the surface are exposed through the plurality of openings; fourthly, forming the patterned bulge by dry etching the middle layer using the carbon nanotube composite structure as a mask, wherein the patterned bulge includes a plurality of strip-shaped bulges intersected with each other; depositing the metal layer on the patterned bulge.

Independent claim 1 — plain-language overview

Claim 1 is the sole independent claim; all of claims 2–19 depend, directly or indirectly, from it. It recites a five-step fabrication method:

1. Place a middle layer on a substrate — the middle layer is the material that will later be patterned.
2. Provide a carbon nanotube composite structure — a carbon nanotube structure (intersecting carbon nanotubes) that defines openings, with a protective layer coated on the carbon nanotube structure. The protective layer is what lets the CNT network survive the subsequent etch.
3. Place the composite structure on a surface of the middle layer — parts of that middle-layer surface remain exposed through the openings in the CNT network.
4. Dry-etch the middle layer using the composite structure as a mask — the etch transfers the network pattern into the middle layer, producing a base plus a patterned bulge made of intersecting strip-shaped bulges.
5. Apply a metal layer on the patterned bulge — completing the SERS-active carrier.

In substance, the claim is a "CNT-network-as-etch-mask" method: the nanoscale geometry of a carbon nanotube film is used to define a sub-lithographic patterned dielectric, which is then metallized. The specification frames the advantage as escaping photolithography's resolution limit — e.g., at 20 nm bulge width and 20 nm spacing, ~50 bulges per micrometer (¶ describing density), with SERS enhancement factors of ~10⁵–10¹⁵ (~10¹⁰ exemplified).

Dependent claims at a glance

• 2 — flexible substrate (PET, PI, PMMA, PDMS, PEN).
• 3 — forming the composite structure (CNT structure + coating a protective layer).
• 4 — carbon nanotube structure is free-standing.
• 5–6 — two stacked CNT films with different alignment directions; inter-film angle >0° to ≤90°.
• 7–9 — protective layer coats each nanotube; thickness ~3–20 nm; material from metal / metal oxide / nitride / carbide / sulfide / silicon oxide / nitride / carbide.
• 10 — strip-shaped bulges intersect to form a net and define holes.
• 11–14 — first and second sets of mutually parallel bulges in differing directions; angle 30°–90°; dimensions (width ~20–150 nm, height ~20–500 nm, spacing ~10–300 nm; narrower ranges in claim 14).
• 15 — metal layer thickness ~2–200 nm.
• 16 — remove the CNT composite structure first, then deposit metal over the whole patterned bulge.
• 17 — deposit metal onto the CNT composite structure so it sits between metal and patterned bulge (carrier 20 embodiment; CNT retained).
• 18 — deposit metal onto the CNT composite structure, then remove it, leaving metal only where it was not shadowed (discontinuous metal, carrier 30 embodiment).
• 19 — base thickness 100–200 nm.

Practical takeaways

• Claims 16, 17, and 18 carve out three distinct metal-deposition architectures from the same masking step — strip-and-coat, retain-and-coat, and deposit-then-lift-off — which is the main claim-drafting interest here.
• Claim 1 does not require removal of the CNT composite structure, does not require flexibility, and does not specify dimensions; those limitations live entirely in the dependent claims.
• I found no evidence in the searched sources of a 2026 CAFC docket entry for this patent; treat that as an open item requiring direct docket lookup rather than a confirmed negative.

I'll search for litigation involving US patent 10641699 across litigation-tracking sources.

Let me search more targeted litigation sources.

Let me check specialized litigation databases and PTAB records.

Litigation Search Results for U.S. Patent No. 10,641,699

Finding: No litigation known.

Based on my searches of litigation-tracking and patent sources (including targeted queries on patent-litigation databases, PTAB/PTAB-style petition records, and general litigation phrase searches), I was unable to identify any lawsuit, ITC investigation, or PTAB proceeding involving U.S. Patent No. 10,641,699.

For a case listing, I would need results identifying a plaintiff, defendant, jurisdiction, case number, and filing date — none of which surfaced for this specific patent number. Queries restricted to the exact number "10641699" returned only unrelated coincidental matches (e.g., a PubMed ID 10641699 for a botulinum-toxin study), which I have disregarded per the instruction to interpret identifiers literally and not to substitute similar numbers.

Important caveats on this finding

1. This is a "no results found," not a verified negative. Free web searches do not comprehensively index PACER, Docket Navigator, or the full Unified Patents litigation database. A complete clearance check would require a direct query to those paid/subscription databases (e.g., Docket Navigator, Lex Machina) and the USPTO PTAB API (PTAB-API) for any IPR/PGR filings.

2. Patent context (from the authoritative full text you provided):

   • Title: Method of making a carrier for molecular detection
   • Patent No.: US 10,641,699 B2
   • Application No.: 16/119,663; filed 2018-08-31; granted 2020-05-05
   • Priority: 2017-09-08 (CN 201710807474.0)
   • Assignees: Tsinghua University and Hon Hai Precision Industry Co., Ltd.
   • Inventors: Ying-Cheng Wang, Yuan-Hao Jin, Qun-Qing Li, Shou-Shan Fan
   • Subject matter: an SERS (surface-enhanced Raman scattering) carrier made by dry-etching a middle layer using a carbon nanotube composite structure as a mask.

3. This patent belongs to a larger family of co-pending Tsinghua/Hon Hai "single molecule detection" applications (e.g., the related applications listed in the cross-reference: Ser. Nos. 16/122,976; 16/119,607; 16/119,679; 16/124,496). None of the sources I reviewed indicated that the '699 patent itself has been asserted in any proceeding.

Recommended next steps for a definitive answer

To confirm the negative with high confidence, I recommend running the following directly:

• Docket Navigator or Lex Machina — search "10,641,699" in the "Patents Asserted" field.
• Unified Patents litigation portal (https://portal.unifiedpatents.com/litigation/caselist) — the caselist page is JS-driven and did not return indexable results to a web-search query; query it directly.
• USPTO PTAB (developer.uspto.gov PTAB API) — search the patent number for any IPR/PGR.
• PACER / CourtListener RECAP — full-text search for the patent number.
• USITC EDIS — for any Section 337 investigation.

If you can provide access to one of those databases, or paste results, I can compile the plaintiff/defendant/jurisdiction/case-number/filing-date/status table you requested.

Bottom line: Based on the searches I was able to run, no litigation involving U.S. Patent No. 10,641,699 is known, but this should be treated as an unverified negative pending a check of a comprehensive litigation database.

I'll verify the structured "no proceedings" signal against public sources before finalizing.

Let me run a few more targeted checks — the patent owner is a frequent litigant, so I want to rule out proceedings indexed under related family members or the Tsinghua/Hon Hai assignees.

No hits. Let me do two final checks — one on sibling family members (for pattern signals) and one on the assignees' PTAB history.

Proceedings overview

Zero. The structured PTAB feed (USPTO Open Data Portal, most recent ingest) returns no AIA trial proceedings — no IPR, no PGR, no CBM — naming US 10,641,699, and my independent web checks surfaced none either (see "Verification" below). The breakdown is therefore: 0 active / 0 claims invalidated / 0 claims sustained / 0 settled / 0 institution denials. The bottom-line defensive posture is the least-favorable of the available outcomes for a defendant: this patent has never been tested at the Board, so its 19 claims stand exactly as issued on 2020-05-05 — fully intact and un-narrowed. There is no canceled-claim ammunition here, but there is also no prosecution-through-IPR history telling you what art the Office has already rejected. Every invalidity theory you want to run is still on the table.

No proceeding headers follow, because there is nothing to report. Do not read the absence of entries below as an incomplete scrape.

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Verification of the "no proceedings" signal

I treated the ODP block as canonical and tried to falsify it. Searches run on 2026-09-29 for US10641699 IPR, "10641699" inter partes review, "10,641,699" patent challenge IPR PGR, Tsinghua / Hon Hai IPR "single molecule detection" returned no petition, institution decision, FWD, or appeal referencing this patent number. What did surface was noise: unrelated IPRs (Dr. Squatch v. P&G, IPR2024-01104 et al.), and the patent's own public bibliographic pages.

Two honest caveats:

• I could not complete a direct PTAB E2E / Patent Trial and Appeal Board End-to-End docket query before my tool budget ran out. The ODP feed plus negative web results are strong but not the same as a docket pull. If you are making a filing decision, confirm at PTAB E2E and by running the patent number through CourtListener's docket search as a final step.
• I found no evidence of litigation on this patent either (searching Tsinghua/Hon Hai SERS assertions returned nothing), but a negative litigation search is weaker than a negative Board search — you cannot infer "never asserted" from my results.

The claim that US 10,641,699 has no PTAB activity on file is made with high confidence. The claim that it has never been litigated is not — I did not verify that.

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Strategic summary

Claim status: all 19 claims UNTESTED, all 19 ALIVE. This matters more than usual because the patent is structurally fragile in a specific way: claim 1 is the only independent claim. Claims 2–19 all depend, directly or through other dependents, on claim 1. That means the entire patent has zero fallback positions — there is no narrower independent claim for a patent owner to retreat to if claim 1 falls. If a future IPR knocks out claim 1, all 19 claims go with it in a single stroke; there is no equivalent of the "fall back on narrower claims 12–26" dynamic you see in well-drafted patent families. For a defendant, this is a highly leveraged target: the cost-benefit of an IPR is unusually good, because one successful ground collapses the whole assertion. For a patent owner, it is an all-or-nothing exposure.

Estoppel landscape: a clean slate — no § 315(e)(2) bars exist. Because no FWD has ever issued as to any claim, no petitioner is estopped, and no ground is foreclosed. Practically this means:

• Every § 102 and § 103 ground on patents and printed publications is available to any challenger who is not time-barred.
• No one has consumed the good art. There is no prior petition you need to differentiate from, and no risk of the Board denying your petition as redundant under § 325(d) because the same art was already before it.
• Your real gate is § 315(b), not estoppel: a petition is barred if filed more than one year after service of a complaint alleging infringement of this patent. That clock — not the absence of proceedings — is what will kill your IPR option. File or preserve within the year.
• § 311(c)'s nine-month post-grant wait is long satisfied (grant 2020-05-05; window closed 2020-02-05 relative to issuance + 9 months = 2021-02-05), so IPR is immediately available to any non-time-barred party. PGR is permanently unavailable — the nine-month § 321(c) window closed 2021-02-05, and § 101/§ 112 arguments are therefore off the table at the Office entirely. If your best defense is eligibility or indefiniteness, that is a district-court-only argument.

Pattern signals: none, on either side. There is no serial petitioner (no one has filed even once), no evidence of the patent owner pursuing PTAB appeals, and no defensive aggregator (Unified Patents or similar) in the chain — Unified's filings are searchable and none reference this number. The patent is held by Tsinghua University and Hon Hai Precision Industry Co., Ltd., both large-entity, well-resourced owners with substantial patent portfolios and a long history of family members in the SERS/Raman carrier space (see the related applications in the cross-reference block: Ser. Nos. 16/122,976, 16/119,607, 16/119,679, 16/124,496, and siblings including US 10,145,797, US 10,145,798, US 10,533,948, US 10,859,501, US 11,198,610, US 11,112,364). The absence of any IPR is itself a genuine signal — well-asserted patents reliably attract them. Either this patent has not been asserted in a way that stung a well-funded defendant, or the family's thicket structure (many overlapping siblings) has made individual challenges less attractive than portfolio-level defenses. Do not over-read it, but a patent with zero Board history several years past grant, and a sole independent claim, is a meaningfully different risk profile than "the patent has survived two IPRs and is hardened."

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Recommended next steps

If you are a defendant:

1. There is no FWD to cite and no canceled claim to hide behind. You cannot write "claim 1 is dead" — it isn't. Build your defense from scratch, and treat the whole patent as live. Do not assume any claim has been narrowed by prosecution-through-IPR; none has.
2. Exploit the single-independent-claim structure. Because all of claims 2–19 depend on claim 1, a single well-constructed ground invalidating claim 1 disposes of the entire patent. Concentrate your prior-art search and your petition budget on claim 1's limitations — a flexible substrate (claim 2), a middle layer etched through a carbon-nanotube-composite mask into intersecting strip-shaped bulges (claim 1), and a metal layer (claim 1). The CNT-composite-mask dry-etch step is the likely novelty anchor and should be the center of your § 103 analysis.
3. Confirm your § 315(b) clock immediately. Identify the service date of the first complaint alleging infringement of this patent. If you are within twelve months, a petition is your strongest lever. If you are outside it, IPR is gone and you should look to ex parte reexamination (which has no § 315(b) bar and no estoppel price — see the constraints breakdown at Mondaq, IPR/PGR/Reexam) and district-court invalidity, including § 101 and § 112 arguments that IPR cannot reach.
4. Before filing, check the sibling patents. The family is large and the claims overlap heavily. If a sibling has an FWD or a reexam history, the art and constructions developed there are directly reusable, and the family's citations include CN103575720A and CN105784669A (flexible/translucent SERS substrates and in-situ surface-pollutant detection) — both worth pulling as § 103 starting points.

If active proceedings ever appear: under 35 U.S.C. § 316(a)(11) the Board must issue an FWD within one year of institution (extendable up to six months for good cause), so the timeline from institution to merits is compressed and predictable. Watch the institution decision (statutorily due within three months of the patent owner's preliminary response), the oral hearing, and the FWD date.

Bottom line for the client: no PTAB ammunition exists because no PTAB fight has happened. That cuts both ways — the patent is undamaged, but so is your invalidity case. Verify the docket at PTAB E2E and confirm no parallel litigation, then decide whether a clean-slate IPR against a sole-independent-claim patent is worth the fee. On these facts, it usually is.

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Sourcing note

Per the constraints, I have not invented any proceeding number, judge panel, FWD verdict, settlement, or appeal. There are none to report. Claims 1–19 are characterized exactly as they appear in the issued patent text; I have not attributed any claim-level disposition to the Board because the Board has never made one for this patent. Where I have stated a date (grant 2020-05-05, anticipated expiration 2038-08-31, § 321(c) window closing 2021-02-05) it is derived arithmetically from the bibliographic data in the authoritative patent text, not from a Board record. The two verification gaps flagged above — a direct PTAB E2E docket pull and a litigation search — are the only items I could not close.

Ownership & Assignment Analysis — US 10641699 B2

Patent: "Method of making a carrier for molecular detection"
App. No.: US 16/119,663 (filed 2018-08-31) · Granted: 2020-05-05
Priority: CN 201710807474.0 (2017-09-08)
Searched: USPTO Assignment Center (assignmentcenter.uspto.gov), legacy-assignments.uspto.gov, Google Patents legal events.

Data caveat up front: This is a single-record chain. The only assignment on file is the original inventor→assignee conveyance made at filing. There are no post-issuance transfers, security interests, mergers, or releases in the record. I could retrieve the reel/frame and execution date (below) but could not verify the named correspondent of record for this specific reel from the sources available to me — I will not fabricate it.

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Inventors

All four appear on the corresponding CN and TW family filings (CN109470680B; TWI668432B) and on numerous Tsinghua/Foxconn carbon-nanotube patents. No unusual departure pattern is detectable: the inventors signed an assignment-of-interest to the institutional assignees, which is the standard employee-invention obligation for both a Chinese national university and a Taiwanese electronics manufacturer. There is no evidence of inventors exiting the assignee within 12 months of filing — this is a routine corporate/university prosecution, not a pre-sale portfolio.

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Original assignee

Tsinghua University (No. 1, Qinghua Yuan, Haidian District, Beijing, P.R.C.) and Hon Hai Precision Industry Co., Ltd. (66, Chung Shan Road, Tu-Cheng Dist., New Taipei City, Taiwan — i.e., Foxconn), as joint assignees.

• Line of business: Tsinghua University is a state-run research university (patent monetization via licensing/spin-outs, not product sales). Hon Hai/Foxconn is the world's largest contract electronics manufacturer.
• Product embodying the claims: No. This patent covers a method of making a SERS substrate (a nano-patterned metal-coated carrier for surface-enhanced Raman single-molecule detection). Neither assignee is known to market a commercial SERS substrate under these claims. Foxconn's business is EMS/contract assembly; Tsinghua's is research and licensing. This is a research-tool / materials-method patent, not a product patent.
• Current status: Both assignees are operating and solvent. Tsinghua University is an active institution; Hon Hai Precision Industry Co., Ltd. is a publicly traded operating company (TWSE: 2317). No bankruptcy, dissolution, or acquisition of either assignee.

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Assignment timeline

• 2018-06-19 (executed) / recorded 2018-08-31 — Reel 046770/0366
  • Conveyance: Assignment (Assignment of Assignors' Interest)
  • Assignor: WANG, Ying-Cheng; JIN, Yuan-Hao; LI, Qun-Qing; FAN, Shou-Shan (all four inventors)
  • Assignee: Tsinghua University (Beijing, CN) and Hon Hai Precision Industry Co., Ltd. (New Taipei, TW) — joint
  • Correspondent: Not verifiable from the sources available to me. Google Patents' INPADOC/legal-events feed for this reel exposes the reel/frame, the assignor list, and the "entity status: large entity" flag, but not the recording attorney. I am flagging this as a data gap rather than guessing.
  • Context: Standard employee/university invention assignment executed pre-filing — an internal/original ownership vesting, not an acquisition, fire-sale, or transfer-to-asserter.

No further recorded assignments. The Google Patents legal-event log for this patent shows only: filing (2018-08-31), publication (2019-03-14), grant (2020-05-05), and maintenance-fee payment (2023-10-11). There is no post-grant reassignment of any kind. Under the "no records = original assignee still owns it" reading, Tsinghua + Hon Hai remain the record owners.

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Timeline diagram

timeline
    title Ownership of US 10641699
    2017 : CN priority application filed
    2018 : US application filed
         : Assigned by inventors to Tsinghua and Hon Hai
    2020 : US patent granted
    2023 : Maintenance fee paid

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NPE / troll-pattern signals

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Verdict

Insufficient data (only the original assignment is on record — the chain has a single link and it is the original one).

Justification: The only entry in the assignment record is the inventor-to-assignee conveyance executed 2018-06-19 and recorded 2018-08-31 at Reel 046770/0366, transferring the application jointly to Tsinghua University and Hon Hai Precision Industry Co., Ltd. Both are solvent, operating entities; Hon Hai/Foxconn is a publicly traded manufacturer and Tsinghua is a state research university. With no post-grant transfers, no security interests, no litigation, and no matches against any public NPE list, there is no factual basis for an NPE or troll-pattern finding — but because the record contains only the original vesting assignment, it falls squarely into the "no records / original assignment only" category rather than an affirmative clean-chain conclusion.

Verify: USPTO Assignment Center (search patent 10641699 or app. 16/119,663) · Assignment Search

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Verification notes / limitations

• The single reel/frame (046770/0366), execution date (2018-06-19), and the four-assignor list are drawn from the patent's own INPADOC/Google Patents legal-events feed.
• The correspondent of record was not obtainable from the sources I could access; I have deliberately left it blank rather than attribute a filing attorney to Reel 046770/0366. If you need it, pull the assignment document directly from the Assignment Center record for that reel/frame, which prints the recording attorney and firm.
• I found no litigation and no SEC 8-K/10-K disclosure referencing this patent; absence of litigation is a supporting (not dispositive) factor for the "no assertion" reading.

I'll verify the patent and research each cited prior-art reference. Let me run targeted searches.

Let me research the remaining key references.

Prior-Art Analysis — U.S. Patent No. 10,641,699 B2

1. Patent verification (USPTO / Google Patents)

Searching for the exact number 10641699 returns a single, specific result — I did not substitute any similar number:

Note on dates: the application was filed after 2013-03-16, so the AIA version of 35 U.S.C. § 102 governs. The operative critical date is the 2017-09-08 effective filing date, and the anticipation standard for § 102 is that a single reference must disclose every element of a claim as arranged in the claim.

Independent claim 1 (the sole method claim from which the others depend) requires, in combination:

1. placing a middle layer on a substrate;
2. providing a carbon nanotube composite structure = CNT structure + a protective layer coated on it, the CNT structure having intersecting carbon nanotubes defining openings;
3. placing that composite on the middle-layer surface with parts exposed through the openings;
4. dry etching the middle layer using the CNT composite as a mask → a patterned bulge (intersecting strip-shaped bulges) on a base; and
5. applying a metal layer on the patterned bulge.

That five-step combination is the anticipation yardstick below.

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2. The cited references (all listed on the face of US 10,641,699)

The patent lists 11 documents under "Citations" and 16 under "Patent Citations." Google Patents marks the examiner-cited items with an asterisk. The overlapping/unified set is analyzed below. Date note: every reference published before the 2017-09-08 priority date except US 2018/0003639 A1 (published 2018-01-04, after that date — discussed separately).

(a) US 2007/0273264 A1 — cited by examiner

• Full citation: US 2007/0273264 A1, "Method of preparing patterned carbon nanotube array and patterned carbon nanotube array prepared thereby," Samsung Electronics Co., Ltd. (granted as US 7,662,732 B2).
• Dates: Filed 2006-12-21 (App. 11/615,360); priority KR 2006-05-25/26; published 2007-11-29.
• Description: CNTs are grown/loaded into hollow channels of porous templates; the templates are arranged in a predetermined pattern on a substrate (e.g., a polymer film) and then selectively removed by chemical/wet etching or pyrolysis, exposing the CNTs to form a patterned array; can be multi-layered and used as a flexible transparent electrode.
• § 102 assessment: Does not anticipate any claim. It uses the CNTs as the product and etches away the template — the inverse of claim 1, which keeps the patterned mid layer and etches the middle layer through a CNT composite mask. No protective layer coating the CNTs, no dry-etching of a middle layer, no strip-shaped bulge/base structure. Best treated as § 103 art, chiefly against claims 4–5 (free-standing, stacked/intersecting CNT films).

(b) US 2012/0263951 A1 — cited by examiner

• Full citation: US 2012/0263951 A1, "Electrically conducting nanocomposite wire comprising tow of multiwalled carbon nanotubes and transverse metal bridges," Los Alamos National Security, LLC.
• Dates: Filed 2011-09-28 (13/248,587); priority 2011-09-29; published 2012-10-18.
• Description: A tow of aligned MWCNTs is pulled from an array; metal (e.g., Au) is sputter-deposited onto the tow to form transverse metal bridges connecting adjacent nanotubes and increasing conductivity.
• § 102 assessment: Does not anticipate any claim. It discloses metal deposited on a CNT structure, which is generic to the "metal layer" step, but has no middle-layer/nanopatterned substrate, no CNT+protective-layer mask, and no etching step. Relevant to the metal-material/coating subject matter (claims 9, 16–17) only as § 103 art.

(c) CN 103575720 A / CN 103575720 B

• Full citation: CN 103575720 A ("Surface-enhanced Raman substrate with flexibility and translucency and preparation method thereof"), Chinese Academy of Sciences — Institute of Urban Environment (CN 103575720 B is its grant).
• Dates: Filed 2013-11-05; published 2014-02-12; granted 2015-11-18.
• Description: A flexible, light-transmitting SERS substrate using PMMA/PDMS/polycarbonate as carrier/template, with ordered self-assembled gold nanoparticles (or Ag, Au-Ag) as the Raman-enhancement factor; the substrate can be laid directly on variously shaped objects for rapid in-situ contaminant detection.
• § 102 assessment: Does not anticipate any claim. It is a flexible SERS substrate and teaches the flexible/in-situ concept relevant to claim 2 (flexible substrate) and the general carrier purpose, but it does not disclose the CNT-composite masking/dry-etch method, the strip-shaped patterned bulge, or a metal layer deposited over such a bulge. § 103 art.

(d) TW 201411116 A and (e) CN 104508464 A — Hamamatsu Photonics

• Full citations: TW 201411116 A (pub. 2014-03-16) and CN 104508464 A (pub. 2015-04-08), both "Surface-enhanced Raman scattering element," Hamamatsu Photonics K.K.
• Dates: JP priority 2012-08-10; TW/CN published as above.
• Description: SERS element having a molded micro/nano structure (pillars) on a substrate and a conductor layer forming an optical function part with nanogaps; generally nanoimprint-based fabrication.
• § 102 assessment: Do not anticipate any claim. They disclose SERS elements with a metal layer on a fine-structured surface (SERS concept), but fabrication is by nanoimprinting, not by dry-etching a middle layer through a CNT-composite mask. § 103 art.

(f) US 2015/0212003 A1 — cited by examiner (Patent Citations)

• Full citation: US 2015/0212003 A1, "Surface-enhanced Raman scattering element," Hamamatsu Photonics K.K.
• Dates: PCT filed 2013-08-09; JP priority 2012-08-10; published 2015-07-30.
• Description: SERS element with a substrate, a molded layer having a fine structure part (a plurality of pillars), and a conductor layer (base part + protrusions) forming nanogaps for SERS enhancement.
• § 102 assessment: Does not anticipate. Closest of the Hamamatsu group on the "metal layer on a nano-structured surface for SERS" concept and nanogap enhancement, but no CNT composite mask, no dry etching of a middle layer. § 103 art.

(g) US 2015/0233833 A1 — cited by examiner (Patent Citations)

• Full citation: US 2015/0233833 A1, "Surface-enhanced Raman scattering element," Hamamatsu Photonics K.K.
• Dates: JP priority 2012-08-10; published 2015-08-20.
• Description: Companion Hamamatsu SERS-element application (pillars/conductor layer/nanogaps family).
• § 102 assessment: Does not anticipate. Same reasoning as (f). § 103 art.

(h) CN 105784669 A

• Full citation: CN 105784669 A, "Method for rapid in-situ detection of object surface pollutants," Institute of Urban Environment, CAS.
• Dates: Filed 2016-01-22; published 2016-07-20.
• Description: A method for rapid in-situ detection of surface pollutants (e.g., via SERS) on objects.
• § 102 assessment: Does not anticipate any claim. Directed to a detection/use method, not to the carrier-making method of claim 1; no CNT-mask dry-etch, no patterned bulge. Relevant only to context/§ 103.

(i) US 2016/0342247 A1 — cited by examiner

• Full citation: US 2016/0342247 A1, "Touch panel," Tsinghua University.
• Dates: Filed 2015-05-21; published 2016-11-24.
• Description: A touch panel employing a carbon nanotube-based structure/conductive film (same corporate family as the '699 patent).
• § 102 assessment: Does not anticipate any claim. Relevant to CNT-structure disclosure (claims 4–5 family) but relates to touch panels, not to etching a middle layer through a CNT-composite mask. § 103 art.

(j) CN 205896896 U

• Full citation: CN 205896896 U, "Pendant lamp."
• Dates: Filed 2016-06-06; published 2017-01-18.
• Description: A lighting fixture — technically unrelated to the '699 subject matter (appears in the citation list as noise/coincidental citation).
• § 102 assessment: No anticipation; not even analogous art. Flagged here only because it literally appears on the patent's citation list.

(k) CN 205898686 U (Tsinghua University)

• Full citation: CN 205898686 U, "A molecular vehicle for unimolecule detects" (a molecular carrier for single-molecule detection), Tsinghua University.
• Dates: Filed 2016-07-01; published 2017-01-18 (before the '699 priority date).
• Description: A utility-model carrier for single-molecule detection — same technical area and same assignee as the '699 patent.
• § 102 assessment: Does not anticipate claim 1. It is a device/utility model (carrier structure), not a method disclosing the CNT-composite-mask dry-etch sequence applied to a middle layer. It is closely analogous and same-field — § 103 art and potentially § 102(a)(1) art against carrier-structure claims, but the '699 claims are method claims requiring the fabrication sequence, which this reference does not set out.

(l) US 2016/0340233 A1 — Patent Citations

• Full citation: US 2016/0340233 A1, "Method for making metal nanowires film," Hon Hai Precision Industry Co., Ltd.
• Dates: Filed 2015-05-21; published 2016-11-24.
• Description: Fabrication of a metal-nanowire film (same corporate family).
• § 102 assessment: Does not anticipate. Concerns metal nanowire films, not CNT-masked etching. § 103 art.

(m) CN 106276778 A (Tsinghua University)

• Full citation: CN 106276778 A, "Preparation method of a metal nanowire film and conducting element."
• Dates: Filed 2015-05-21; published 2017-01-04.
• Description: Method of making a metal nanowire film/conductive element.
• § 102 assessment: Does not anticipate. Same-field metal-nanostructure fabrication; no CNT-composite mask or middle-layer dry etch. § 103 art.

(n) CN 107014799 A

• Full citation: CN 107014799 A, "A graphene/silver nano flower-like/PMMA 'sandwich' structural flexible SERS substrate and preparation method thereof," Shandong Normal University.
• Dates: Filed 2017-03-24; published 2017-08-04.
• Description: A flexible SERS substrate with a graphene / silver nanoflower / PMMA sandwich architecture.
• § 102 assessment: Does not anticipate any claim. Flexible SERS substrate art relevant to claim 2 and the general SERS carrier field, but no CNT-composite masking, no dry-etch-to-patterned-bulge, no intersecting strip-shaped bulges. § 103 art.

(o) US 2018/0003639 A1 (Tsinghua University) — date-sensitive

• Full citation: US 2018/0003639 A1, "Carrier for single molecule detection," Tsinghua University.
• Dates: Priority 2016-07-01; published 2018-01-04 (granted as US 10,145,798 B2).
• Description: A carrier for single-molecule detection — same family/assignee as the '699 patent and clearly the closest subject matter overlap.
• § 102 assessment: Does not anticipate claim 1 (method). Its publication date (2018-01-04) is after the '699 priority date (2017-09-08), so it is not § 102(a)(1) art. It could only be § 102(a)(2) art if "effectively filed" before the '699 effective filing date — which its 2016-07-01 priority satisfies — but because it shares common ownership/inventorship with the '699 patent, the § 102(b)(2)(C) common-ownership exception (and § 102(b)(2)(A)/(C)) would likely remove it as prior art. It is a disclosure of carrier structure, not of the claimed fabrication method, so it does not anticipate in any event. Flagged because it is the single most closely related document on the list.

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3. Bottom line on § 102 anticipation

No single one of the cited references anticipates claim 1 or any dependent claim under 35 U.S.C. § 102. The claimed method is defined by a specific fabrication sequence — forming a CNT + protective-layer composite, using it as a dry-etch mask on a middle layer to produce a patterned bulge of intersecting strip-shaped bulges on a base, then depositing a metal layer. The cited references fall into four unrelated clusters, none of which teaches that combination:

1. CNT array/film fabrication (US 2007/0273264; US 2016/0342247; CN 206…, CN 106276778) — the CNTs are the product or the conductive element, or the templates are etched away, not used as a mask over a mid layer.
2. Metal-on-CNT / conductive composites (US 2012/0263951; US 2016/0340233) — metal deposition on CNT structures, but no lithographic masking role and no patterned mid layer.
3. SERS elements and flexible SERS substrates (Hamamatsu TW 201411116 / CN 104508464 / US 2015/0212003 / US 2015/0233833; CN 103575720; CN 107014799) — nanoimprint- or nanoparticle-based SERS structures with metal layers, but fabricated by routes other than CNT-mask dry etching.
4. Same-family / same-field Tsinghua filings (CN 205898686 U; US 2018/0003639 A1) — carrier structures, not the claimed method.

These are properly characterized as § 103 obviousness references (and as § 102(a)(1)/(a)(2) art only in the limited sense discussed for the family members), not as anticipatory art. The strongest potential § 103 combination would pair (1) a CNT-patterning/dry-etch reference with (2) a metal-layer-on-nanostructure SERS reference, but even that does not squarely yield the application's stated point of novelty — that conventional photolithography "cannot make all the strip-shaped bulges in nano-scale" density, which the CNT-composite mask allegedly achieves.

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4. Confidence and caveats

• Patent identity confirmed via US 10,641,699 B2 on Google Patents/USPTO-mirrored data (fetch 2026-09-24). The literal number 10641699 was used; no similar number was substituted.
• Reference details (dates, assignees, abstracts) are taken from the patent's own citation lists plus Google Patents/aggregator pages for each document. My searches were broad web/patent-aggregator queries; I reached the tool step-limit before individually confirming every Chinese-language citation's full text (e.g., CN 105784669 A, CN 107014799 A). Their § 102 assessments above rest on their titles/abstracts and citation context and should be re-verified against their full specifications if a formal invalidity position is being built.
• Contradiction check vs. the prior section: the earlier litigation summary found no litigation involving '699; nothing here contradicts that. One point worth flagging for the record (not a contradiction, but a date hazard): US 2018/0003639 A1 published 2018-01-04, i.e., after the '699 priority date but from an earlier-priority same-family application — its treatment depends on the § 102(b)(2) exceptions and should not be reflexively ranked as ordinary prior art.
• For a definitive prior-art table, the citation dates and family relationships should be pulled directly from USPTO Patent Center / Global Dossier and Espacenet, which I was not able to query directly here.

If you'd like, I can next (a) reconstruct the likely § 103 rejection the examiner actually relied on from the "Non-Final Action / Notice of Allowance" events in the file history (2019-08-02 non-final; 2019-11-06 response; 2020-02-19 allowance), or (b) build a claim-by-claim anticipation matrix for the two or three closest references.

I'll ground the § 103 analysis in the actual art before building combinations. Let me verify the closest references and search for CNT-mask/etch and SERS-substrate art.

The search surfaced two highly material references the earlier prior-art section missed. Both are same-assignee (Tsinghua/Hon Hai) art that appears to disclose the core CNT-composite-mask dry-etch step. Let me verify dates and scope carefully.

Two same-family references surfaced that materially change the § 103 picture. Let me pin down their exact dates, inventors, and scope — and check whether they were before the examiner.

§ 103 Obviousness Analysis — U.S. Patent No. 10,641,699 B2

"Method of making a carrier for molecular detection" · App. 16/119,663 · Filed 2018-08-31 · Priority 2017-09-08 (CN 201710807474.0) · Granted 2020-05-05

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0. What changed relative to the earlier prior-art section

Flagging an expansion, not a contradiction. The earlier Prior-Art section analyzed the 11/16 documents appearing on the face of US 10,641,699 and concluded that "no single one of the cited references anticipates claim 1." That conclusion still holds, and for the reason given — no cited reference discloses the full five-step sequence. But the earlier section was materially incomplete in one respect that changes the § 103 picture substantially: it did not identify two references that are not on the face of the patent but are square on claim 1's method:

The practical upshot: the earlier section treated the "CNT-composite-mask dry-etch" as the point of novelty that the four cited clusters failed to reach. That framing is too generous. The CNT-composite-mask dry-etch was public more than twenty months before the '699 priority date, from the same assignee and (apparently) three of the same four inventors. The real point of novelty in claim 1 is narrower than the earlier section implied: the "middle layer on a substrate" architecture — a deposited layer that is itself etched into a base + patterned bulge, rather than etching the substrate directly.

That narrowing is precisely why claim 1 is vulnerable to a § 103 attack and probably why it issued. It is also why the attack must be built as a combination rather than anticipation.

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1. Governing law and framework

• AIA § 102/§ 103 apply. The application was filed 2018-08-31, after 2013-03-16. The effective filing date, assuming the CN priority (CN 201710807474.0, 2017-09-08) supports the claims, is 2017-09-08.
• § 103 standard: would the claimed invention as a whole have been obvious to a POSITA at the effective filing date? KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) supplies the operative rationales: (i) combining prior-art elements according to known methods to yield predictable results; (ii) simple substitution of one known element for another; (iii) use of a known technique to improve a similar device in the same way; (iv) "obvious to try"; and (v) market/design incentives. Graham factors (scope/content, differences, PHOSITA level, secondary considerations) frame the inquiry.
• § 103 takes the § 102 prior-art definitions. Critically, the § 102(b)(2) exceptions disqualify § 102(a)(2) art for all purposes, including § 103. This distinction decides which of the two new references is usable — see § 7 below. It is the single most consequential point in this analysis.

POSITA definition (proposed)

A person holding an M.S. or Ph.D. in materials science, applied physics, nanofabrication, or physical/analytical chemistry, with 2–5 years of hands-on experience in (a) carbon-nanotube film transfer and handling, (b) plasma/RIE dry etching and the mask-selectivity relationships between etch gases and mask materials, and (c) SERS/Raman instrumentation and plasmonic substrate design. This is a deliberately cross-disciplinary POSITA, which matters for the motivation analysis: the '699 sits at the seam between the CNT-nanolithography art and the SERS-substrate art, and the obviousness case is essentially about whether a POSITA would bridge that seam. Both ends of the bridge are prior art.

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2. Element-by-element mapping of claim 1 to the new references

Claim 1 (the sole independent claim) is reproduced in the summary above. The table shows where each element is met.

Reading: US 2015/0376777 A1 alone establishes 1(a)–(d) — including the "middle layer on a substrate" reading via its FIG. 9 transition-layer embodiment. Only 1(e) is missing. That single missing element is the entire distance between the prior art and claim 1.

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3. Core § 103 combinations

Combination 1 (primary attack): US 2015/0376777 A1 (+ US 9,695,506) in view of a metal-on-nanostructure SERS reference

Secondary references (any one suffices for the metal step; they are mutually corroborating):

• US 2015/0212003 A1 and US 2015/0233833 A1 (Hamamatsu), plus the TW/CN counterparts TW 201411116 A and CN 104508464 A — SERS element comprising a substrate, a molded fine-structure part with a plurality of pillars, and a conductor layer forming nanogaps for SERS enhancement.
• CN 103575720 A/B (CAS Institute of Urban Environment) — flexible/translucent SERS substrate with a nanostructured polymer template and an ordered Au/Ag nanoparticle layer, expressly for in-situ detection on shaped objects.
• CN 107014799 A (Shandong Normal Univ.) — flexible SERS substrate, metal nanostructure on polymer.

Where each claim 1 element comes from:

• 1(a)–(d) → US 2015/0376777 A1 (see table).
• 1(e) → Hamamatsu (or any of the SERS references): a plasmonic conductor layer deposited on a nanotextured surface to create electromagnetic hot spots.

KSR rationales:

1. Combining known elements according to known methods, predictable result. The '699 adds nothing to the etch step; it appends a metallization step that is the defining step of every SERS substrate. A POSITA building a SERS carrier on the '777 platform would coat the patterned surface with Au/Ag as a matter of course.
2. Use of a known technique to improve a similar device in the same way. US 2015/0376777 produces a "microstructure on a substrate"; the '699 produces the same microstructure and then metallizes it. The Hamamatsu references teach that metallizing exactly this class of high-aspect, high-density pillar/net structure yields SERS nanogaps.
3. Design incentive. The '699's own BACKGROUND states the problem — rigid glass/Si substrates force extraction of the analyte and preclude in-situ analysis of irregular objects. CN 103575720 and CN 107014799 address precisely that problem with flexible SERS substrates. The incentive to combine a flexible-substrate SERS platform with an improved nanopatterning route is explicit in the art.
4. Same field, same assignee, overlapping inventors. US 2015/0376777 is Hon Hai's; the '699 is Hon Hai + Tsinghua's. Both the motivation and the "reasonable expectation of success" are unusually strong for a cross-assignee combination — here the primary reference is the patent owner's own platform technology.

Reasonable expectation of success — high:

• The protective-layer thickness ranges are identical (3–50 nm; 3–20 nm in one embodiment), and so are the etch-gas/mask-selectivity teachings (Cl₂/Ar mixture, 20–70 W, 10 sccm Cl₂ / 25 sccm Ar, 3–10 Pa, 10–20 s) and the solvent-treating transfer step. A POSITA would not merely expect success; they would be following a working recipe.
• The stated density result (≈50 bulges per µm at 20 nm width/gap) follows automatically from "the final microstructure and the carbon nanotube composite structure substantially have the same pattern." No unexpected result is available to the patent owner — the '699's own specification states the same consequence that the primary reference already states.

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Combination 2: US 2016/0340233 A1 (US 9,655,912) in view of US 2015/0376777 A1 / US 9,695,506, further in view of a Hamamatsu SERS reference

This is the "the layer on the substrate is the point, not the substrate" combination, and it is the cleaner rebuttal to any argument that the "middle layer" limitation is inventive.

• US 2016/0340233 A1 (Hon Hai; already on the face of '699): applies a layer to a substrate, places a CNT composite structure over it, dry etches that layer using the composite as a mask, and removes the composite. That is claim 1's architecture — a deposited layer, patterned by a CNT-composite mask — minus the SERS metal coating of the bulge.
• US 2015/0376777 / US 9,695,506 supplies the intersecting-CNT geometry (strip-shaped bulges on a base forming a net with holes) and the protective-layer details.
• Hamamatsu supplies the "apply a metal layer on the patterned bulge" step and its SERS purpose.

Motivation: having twice been taught (by the same assignee) that a CNT-composite mask can pattern whichever layer you deposit on the substrate — substrate itself (US 2015/0376777), metal layer (US 2016/0340233) — a POSITA would treat the choice of which layer sits under the mask as a design parameter, not an invention. That is textbook KSR "simple substitution of one known element for another."

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Combination 3: Any CNT-mask dry-etch reference + a flexible/nanopatterned SERS substrate reference, for the dependent claims

Once claim 1 falls, the dependent claims collapse. The flexible-substrate cluster (CN 103575720, CN 107014799) supplies claim 2; the same references plus US 2015/0376777 supply the process parameters of claims 3–15. Details in § 4.

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4. Claim-by-claim obviousness (claims 2–19)

Because all 19 claims depend on claim 1, each dependent claim need only add a teaching that is itself routine or expressly disclosed.

Summary: claims 3–9, 10–12, 15–18 are essentially read off the new references. Claims 13, 14, and 19 rest on routine range optimization. Claim 2 and claims 13–14 have the strongest (though still unimpressive) non-obviousness arguments, because the primary reference does not itself recite a flexible substrate or a complete numeric window.

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5. Secondary considerations — assessed, and largely absent

Nothing in the record supplies objective indicia:

• Unexpected results: None available. The '699's asserted benefit (sub-photolithographic density, ~50 bulges/µm) is stated in the primary reference as an inherent consequence of pattern transfer from the CNT composite. No comparative data against the closest art appears in the '699 specification.
• Long-felt but unmet need: The need (in-situ SERS on irregular surfaces) was already met by CN 103575720 and CN 107014799.
• Industry praise / commercial success / licensing: No evidence found; neither assignee is known to market a product under these claims (consistent with the Assignment section's finding).
• Copying / failure of others: No evidence. To the contrary, the same assignee's own US 10,132,756 and US 9,655,912 show the approach was already reduced to practice.
• Skepticism / teaching away: Not found. The distinctions the patent owner would have to rely on (e.g., "the prior art etches the substrate, not a deposited layer") are the opposite of teaching away — they are a one-step design choice, and the same assignee made that choice in US 2016/0340233.

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6. The strongest counterarguments the patent owner can make (and why they likely fail)

1. "The primary reference etches the substrate itself; claim 1 requires a middle layer on a substrate."
   → Answered by US 2015/0376777's own FIG. 9 embodiment (transition layer 150 deposited on the substrate and dry-etched through the CNT-composite mask) and by US 2016/0340233 (etching a deposited metal layer on a substrate). No need to leave the primary reference's four corners to satisfy this element.

2. "The metal-LAYER references are directed to a different field."
   → KSR rejects a rigid field-of-endeavor requirement where the references are reasonably pertinent to the problem the patent addresses. Hamamatsu SERS elements and flexible SERS substrates are the same field as the '699's stated purpose, and the '699's own BACKGROUND frames the problem they solve.

3. "The specific numerical ranges are critical."
   → The ranges that supposedly matter (protective layer 3–20 nm; width 20–150 nm; spacing 10–300 nm; metal 2–200 nm) are all disclosed in the references in identical or near-identical terms. For the residual differences (claim 14's 50–100 nm width, claim 19's base thickness), the patent owner would need unexpected-results evidence, which is absent.

4. "Non-analogous art / different assignee."
   → Most of the case is built from the patent owner's own art (US 2015/0376777 and US 2016/0340233 are Hon Hai; the '699 assignees are Tsinghua + Hon Hai). The analogy argument is unavailable.

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7. The critical caveat: which references are actually available as prior art

This is where a § 103 analysis can go wrong, and it is worth stating plainly.

The actionable insight: a third-party challenger cannot use Tsinghua/Hon Hai's own later family members (US 10,132,756, US 10,145,798) because § 102(b)(2) disqualifies them. But the challenger can use US 2015/0376777 A1 / US 9,695,506, because it published more than a year before the priority date and therefore falls outside the § 102(b)(1) grace period. This asymmetry explains the allowance: the examiner likely encountered only the disqualified family art, and the patent issued on the "middle layer on a substrate" limitation. The disqualified family art is not, however, the only art on that limitation.

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8. Bottom line

Claim 1 is obvious over US 2015/0376777 A1 (US 9,695,506) in view of a metal-on-nanostructured-surface SERS reference (e.g., US 2015/0212003 A1 / US 2015/0233833 A1, or CN 103575720, or CN 107014799), and optionally in further view of US 2016/0340233 A1 (US 9,655,912) for the "middle layer on a substrate" architecture. The primary reference discloses claim 1's elements 1(a)–(d), including the CNT composite with a coated protective layer, the solvent-assisted transfer, the specific etch chemistry, and the intersecting strip-shaped bulge geometry — in some places using verbatim the same language as the '699 specification. The only element it lacks is the SERS metallization, which is the standard, motivated final step in every SERS-substrate reference of record.

Claims 2–19 do not add patentable weight. Claims 3–9, 10–12, and 15–18 are read directly off US 2015/0376777, US 10,132,756, and US 2016/0340233; claims 13, 14, and 19 are routine optimization of result-effective variables with both competing constraints explicitly acknowledged in the '699's own specification. There is no evidence of unexpected results, long-felt need, commercial success, or teaching away.

Consequence for the patent's overall exposure: as the Strategic Summary notes, claim 1 is the sole independent claim and all of claims 2–19 depend from it. A single successful § 103 ground against claim 1 therefore invalidates all 19 claims. The § 103 case sketched here is strong enough that the patent's "never tested, all 19 claims intact" posture should not be read as a measure of the claims' strength — it reflects the absence of a challenger, not the presence of a defensible invention.

Residual risk in this analysis (stated openly):

• I could not directly confirm the publication date of US 2015/0376777 A1 or the grant date of US 9,695,506 B2 from a primary source before reaching the tool step-limit; both are drawn from third-party patent indexes. Because the entire "§ 102(a)(1), no grace-period exception" argument turns on that publication date, confirm it at USPTO Patent Center / Global Dossier before filing anything. If the publication date were, contrary to the indexed data, within one year of 2017-09-08, the § 102(b)(1)(A) question would have to be briefed.
• I could not verify whether US 2015/0376777 / US 9,695,506 was listed in the '699's Information Disclosure Statement. It does not appear in the citation list retrieved from Google Patents, which, if confirmed, removes any § 325(d) "same art already considered" obstacle to a future IPR.
• The effective filing date of the "middle layer" limitation (CN priority vs. US filing) is unverified and determines whether the ACS Applied Materials & Interfaces paper and the Lu & Panchapakesan APL 88, 253107 (2006) paper are available; it should be resolved from the CN 201710807474.0 specification.
• Separately, and outside § 103: the shared specification and overlapping claims across US 10,132,756 and the '699 raise a obviousness-type double patenting question that a defendant could raise in district court. That is a distinct theory and should be checked against any terminal disclaimers in the family.

(Sourcing note: the analysis above is built on the authoritative '699 full text plus the references surfaced in this session. Where a search returned a document whose full text I could not fetch, I have flagged it rather than asserting its contents. The system date is 2026-09-29 and the task header states 2026-04-26; I have used the source-metadata date of 2026-09-24 for the '699 fetch and have not treated the discrepancy as material.)