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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Applicant's submission filed on February 12th, 2026 has been entered.
Remarks
This office action fully acknowledges Applicant’s remarks and claim amendments filed on 12 February 2026.
Claims 1-12, 14-20, and 26-35 are pending.
Claims 13 and 21-25 are cancelled.
No claims are withdrawn from consideration.
No claims are newly added.
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed features of the nanosensor device must be shown or the features canceled from the claims. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
“nanosensing elements carrying current from said electrical input electrode to a corresponding said signal output electrode” as in Claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
“A) a planar graphene layer for assaying molecules (compounds) present in a liquid sample and a single layer of SWNTs that assay VOCs in their gas phase. B) a pyramidal disposition of SWNTs with stacked multi-layers providing a 3-D formation multiplying sensing surface over the sensor base providing strong sensitivity and differentiation capabilities for assaying VOCs in their gas phase, and C) a planar graphene layer for assaying molecules (compounds) present in a liquid sample and the pyramidal disposition of SWNTs of B).” as in para. [0008] of Applicant’s instant pre-grant publication US 2022/0317117 A1, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-12, 14-20, and 26-34 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.
Regarding Claim 1, the claim recites a first and second layer in stacked arrangement on a base support, while also requiring the layers be “directly” on the base support. Herein, it is unclear what constitutes the “stacked arrangement” if both layers are “each” supported “directly” on the base support (requiring direct contact with the base support).
Does applicant intend the layers be side-by-side on the base support rather than in a stacked arrangement (interpreted herein and in the previous correspondence as one layer being on top of the other)? If this is the case, Applicant may wish to amend the claims to indicate the layers are adjacent and not stacked.
Herein, the arrangement of layers together are interpreted as being directly supported on the base layer in stacked arrangement. The term “layer” is given its broadest reasonable interpretation as a sheet of material covering a surface or body. As such, it is further unclear how the layers are to be directly supported on the base support. Does applicant intend a sensing “region” covering only a portion of a surface of the base support?
Examiner additionally notes that the instant specification does not remedy the indefinite understanding discussed above, wherein the specification merely further generally discusses the stacked arrangement without providing particular meaning of the actual arrangement/relative positions of the layers thereto. Further, the specification recites “The preferred embodiments comprise at least 2 separate sensing platforms, in a parallel or stacked 3-D arrangement.” Wherein it is further unclear as to how the layers are arranged in the claim given that the claim appears to require both the parallel arrangement through the “directly supported” provision as well as the 3D arrangement through the stacked layers provision. The issue is further compounded by the lack of drawings hindering proper examination. Appropriate clarification is required.
Claim 27 recites “said second sensor layer is on a strand continuous with said first layer” wherein it does not appear that Applicant intends the “a strand” to be an independent distinct element of the claim. If Applicant intends the strand to refer to a strand-shaped layer (as in a thin strip), then Applicant may wish to amend the claim to recite “said second sensor layer is a strand continuous with said first layer”.
Claim 27 recites the limitations "said first layer", “said second layer”. There is insufficient antecedent basis for these limitations in the claim.
Claim 32 recites the limitations “said first layer” and "said second layer". There is insufficient antecedent basis for these limitations in the claim.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (KR 2012/0053797 A), referred to hereinafter as “Park”, as seen through the machine translation available on Google Patents and attached herein.
Regarding Claim 1, Park teaches a nanosensor device sensitive to volatile organic compounds (“…in vivo disease associated gas substance it is possible to selectively detect (for instance nitrogen oxide or the like).”), said device comprising a bio-sensing system comprising:
a first sensing layer 20 (Fig. 1(c) – “The first layer 20 is a layer containing graphene or of graphene itself.”);
a second sensing layer 30 in stacked arrangement with said first sensing layer (Fig. 1(c) -- “The carbon nanotubes 30 are vertically formed on the first layer 20.”);
each supported directly on a base support 10 (“The substrate 10 may be selected from the group consisting of glass, plastic, metal, ceramic, and silicon. However, the type of substrate Is not particularly limited as long as graphene can be deposited or formed thereon.”);
an electrical input electrode; and a signal output electrode (See the <Experimental Example> section which discusses the prior art electrode being used for cyclic voltammetry (CV), which requires an electrical input electrode and a signal output electrode controlled and monitored by a potentiostat to sweep an electric potential through the electrode and read current flowing through the electrode as the potential is swept (CV requires a complete circuit to function.). Thus, Park must necessarily comprise an electrical input electrode and a signal output electrode to enable such cyclic voltammetry measurements.);
said first and said second sensing layers comprising sensing elements, said sensing elements composed of nanosensing elements carrying current from said electrical input electrode to a corresponding signal output electrode when perturbed by close association with a target compound (As discussed above, Park discusses use of the electrode for cyclic voltammetry, which requires a sensor element(s) to carry current from an input to an output when a target compound is bound to the electrode surface. Therein, the sensing elements of Park are considered nanosensing elements given their commensurate use of carbon nanotubes – see the Claim Interpretation section above.);
said first and second sensing layers 20/30 each comprising graphene surfaced nanosensing elements (“The first layer 20 is a layer containing graphene or of graphene itself.” – “The carbon nanotubes 30 are vertically formed on the first layer 20.”),
wherein at least said second sensing layer comprises single walled carbon nanotubes (SWNTs) (“The carbon nanotubes 30 are vertically formed on the first layer 20. The carbon nanotubes 30 are carbon isotopes, each having a carbon atom bonded to another carbon atom in an hexagonal honeycomb pattern to form a tube shape, and have excellent mechanical characteristics, electrical characteristics, and field emission characteristics.”);
said nanosensing elements decorated or functionalized with a bioattractive compound 50 (Fig. 1(c) – “The biomaterial 50 is supported or fixed in the second layer 40 in various ways.”);
at least said second layer 30 configured to assay one or more compounds in a gas phase (“…in vivo disease associated gas substance it is possible to selectively detect (for instance nitrogen oxide or the like).”), as in Claim 1.
Regarding Claim 2, the prior art meets the limitations of Claim 1 as discussed above. Further, Park teaches the nanosensor device discussed above wherein said first sensing layer 20 comprises non-tubular graphene (ntG) (“The first layer 20 is a layer containing graphene or of graphene itself. These graphenes have a two-dimensional planar shape”), said first sensing layer 20 disposed to accept and assay compounds present in a liquid (As water travels quickly through carbon nanotubes, and the carbon nanotubes of park are oriented vertically connecting the sensor’s headspace with the first layer, the first sensor layer 20 is thus able to accept compounds that travel through the nanotubes of the second sensor layer 30.), as in Claim 2.
Regarding Claims 3-5, the claims appear to be drawn to intended use of the nanosensor device discussed above, wherein limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function – see MPEP 2111.02(II). -- "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II).
Herein, whether the nanosensor device is used for sensing volatile and/or non-volatile organic compounds as in Claim 3, for compounds of various molecular weight as in Claims 4-5, or for nucleic acids comprising nucleotides as in Claims 6-7 is immaterial as the structure of the device and its function of sensing organic compounds remains the same. As such, the recitations of Claims 3-7 are considered matters of intended use and do not impart novelty to the claimed invention over Park, wherein the commensurately structured nanosensor of Park is fully capable of performing any of the claimed intended uses discussed.
Regarding Claims 6-7, the prior art meets the limitations of Claim 1 as discussed above. Further, Park teaches the nanosensor device discussed above wherein said bioattractive compound comprises a nucleic acid (“Preferably, the biomaterial is selected from the group consisting of an antibody, an enzyme, a protein, a nucleic acid, a microorganism, a cell, a lipid, a hormone, DNA, PNA, RNA and a mixture thereof.”), and wherein said nucleic acid comprises a plurality of bases selected from the group consisting of: adenine (A), cytosine (C), guanine (G), thymine (T), and uracil (U) (As DNA is inherently made up of the building blocks A, T, C, and G as claimed, one of ordinary skill in the art would understand that the DNA of Park is commensurately made up of A, T, C, and G), as in Claims 6-7
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Reed et al. (US 2014/0191186 A1), referred to hereinafter as “Reed”.
Regarding Claim 35, Reed teaches a method for fabricating a nanosensor device, said method comprising:
disposing a first SWNT layer on said support at a site on said support having an electrical terminal ([0061]: “…the present invention encompasses any type of nanostructure, including those that are deposited or placed onto a substrate. For example, in certain embodiments, nanostructures are grown, using techniques such as chemical vapor deposition, vapor-liquid-solid method (VLS), and the like.” Given that Reed is drawn to a field-effect type sensor, an electrical terminal is implied.);
decorating said first SWNT layer with a bioattractive compound (“[0081]: “the nanostructure surface may be functionalized using one or more different functionalization substances that are applied or deposited onto the nanostructure surface.”);
disposing a second SWNT layer atop said decorated first SWNT layer in an amount resulting in a diameter of said second SWNT layer being less than the diameter of said first SWNT layer; and decorating said second SWNT layer with a bioattractive compound (“…in certain embodiments the coating is a multi-layer coating, where one or more layers of the coating may be controllable and selectively released from the nanostructure surface, thereby allowing for the future adsorption of the same or different functionalized coating and the reuse of the device for detection of the same or different species of interest.” As Reed teaches a multi-layered functionalized substrate wherein the substrate is functionalized via decoration with a bioattractive compound, as discussed above, the method of producing the multi-layered substrate must necessarily comprise a second step of deposition and decorating.
Further, Reed teaches “the small diameter of NWFET devices provides extremely high sensitivity because the binding of target molecules causes accumulation/depletion of carriers” as in para. [0003] wherein, given this teaching one of ordinary skill in the art would thereby find it obvious to manufacture the outermost sample-contacting layer to be as thin as possible so as to achieve high sensitivity while being supported by thicker layers underneath.), as in Claim 35.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Fan et al. (US 2017/0369659 A1), referred to hereinafter as “Fan”. Park has been discussed above.
Regarding Claim 8, the prior art meets the limitations of Claim 1 as discussed above. Further, Park teaches the nanosensor device discussed above wherein said second sensing layer 30 has a diameter approximately equal to or less than a diameter of said first sensing layer 20 (Fig. 1(c) shows the second layer 30 as having a diameter less than the first layer 20.),
said first and second sensing layers 20/30 stacked upon the same base support 10 (Fig. 1(c) shows the first and second sensor layers 20/30 stacked upon the graphene base 10.),
and wherein said first and second sensing layers detect gas phase VOCs and modify an electronic signal of their base support (“Such a biosensor is constituted by a bio-sensing membrane and a signal transducer so that the measured information can be converted into a recognizable signal.”)
as in Claim 8.
Further regarding Claim 8, Park does not specifically teach the nanosensor device discussed above wherein the first sensing layer comprises SWNTs, as in Claim 8.
However, Fan teaches a respective sensor device wherein both the first and second sensing layers are carbon nanotube layers (Fan Claim 1), wherein carbon nanotubes are isotropic conductors with slightly more resistivity than graphene.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the nanosensor device of Park such that both the fist and second sensing layers comprise carbon nanotubes, such as suggested by Fan, as the use of graphene and carbon nanotubes are mere alternatives for conducting a current, and wherein carbon nanotubes offer the added benefit of isotropic conductance, allowing for further control over the electrical properties of the device for more precise results; and would have a reasonable expectation of success therein.
Regarding Claim 9, the prior art meets the limitations of Claim 8 as discussed above. Further, Park teaches the nanosensor device discussed above further comprising a third sensing layer 40 (“A second layer 40 may be formed on the carbon nanotubes 30 [the second layer as claimed]. The bio-material 50 may be supported or fixed on the second layer 40 in various manners.”),
said third sensing layer 40 spaced from said first layer 20 by at least said second sensing layer 30 (Fig. 1(a)), as in Claim 9.
Further regarding Claim 9, Park does not specifically teach the nanosensor device discussed above wherein said second sensing layer 30 has a diameter greater than a diameter of said third sensing layer 40, as in Claim 9.
However, mere change in size (where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device) absent evidence to criticality, non-obviousness, or unexpected results associated with the claimed shape is an obvious matter of design choice – see MPEP 2144.04(IV)(A).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the nanosensor device of park such that the second layer has a diameter greater than the third layer as such a modification would be seen merely as an obvious matter of design choice depending on the biomaterial 50 disposed in the third layer.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Boileau et al. (WO 2020/232532 A1), referred to hereinafter as “Boileau”, as seen through the machine translation available on Google Patents and attached herein. Park has been discussed above.
Regarding Claims 10-12, the prior art meets the limitations of Claim 1 as discussed above. Further, Park does not specifically teach the nanosensor device discussed above further comprising a heat source to excite said volatile organic compounds or placed in conjunction with said sensing elements, which augments volatilizing compounds from a liquid phase, wherein said heat source heats said base support, as in Claims 10-12.
However, Boileau teaches a respective field-effect transistor-based nanosensor device comprising heating elements as heat sources which vaporize a plant sample and expose the nanosensor to the vapor, wherein the heat source heats a base support of the sensor (given that “The liquid phase of the extract may be applied directly to the chip…”) ([0025]), wherein this arrangement allows for a “two-in-one” sensor capable of use with both liquid and gaseous samples.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the nanosensor device of Park to include a heat source which augments volatilizing compounds from a liquid phase, wherein said heat source heats said base support, such as suggested by Boileau, so as to provide a device capable of use with both gaseous and liquid samples; and would have a reasonable expectation of success therein.
Claims 14-15 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Park. Park has been discussed above.
Regarding Claims 14-15, the prior art meets the limitations of Claim 1 as discussed above. Further, Park does not specifically teach the nanosensor device discussed above comprising a plurality of sensing elements, comprising at least about 28 sensing elements, nor comprising at least about 210 sensing elements, as in Claims 14-15.
However, mere duplication of parts has no patentable significance unless a new and unexpected result is produced – see MPEP 2144.04(VI)(B). Herein, it appears that the sensing elements of Claim 1 would behave the same regardless of operating as a single sensor element or a plurality of sensor elements, wherein the plurality of sensor elements merely provides for increased redundancy and/or coverage area which would be expected by one of ordinary skill in the art. As such, an unexpected result would not be produced, and the amount of sensor elements therefore holds no patentable significance.
Further regarding Claims 14-15, as the accuracy and precision of a sensor are properties that can be modified by adjusting the number of sensor elements, the number of sensor elements would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed range of the amount of the plurality of sensing elements cannot be considered critical. Thus, one of ordinary skill in the art would have optimized through routine experimentation the amount of the plurality of sensing elements to maximally obtain the desired accuracy and precision of the results output by the sensor (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Claim 27, the prior art meets the limitations of Claim 1 as discussed above. Further, Park does not specifically teach the nanosensor device discussed above wherein said second sensing layer is on a strand continuous with said first layer, said second layer being disposed in a spiraling wrapped pattern atop said first layer, as in Claim 27.
However, mere change in shape absent evidence to criticality, non-obviousness, or unexpected results associated with the claimed shape is an obvious matter of design choice – see MPEP 2144.04(IV)(B). Herein, given the commensurate arrangement of conductive layers and a bioattractive species of a sensing element in Park, the device of Park would not function differently than the claimed device merely because of the claimed spiral shape of the second layer.
Thus, one of ordinary skill in the art would find it obvious that the device having the claimed spiral shape of the second layer would not perform differently than the prior art device, absent evidence of criticality, non-obviousness, or unexpected results associated with the claimed spiral shape of the second layer. As such, one of ordinary skill in the art would conclude that the spiral shape of the second layer is a mere matter of design choice.
Further, as discussed in the 35 USC 112 section above, the claim recitation “on a strand” is indefinitely defined herein, wherein it is unclear if the strand is an additional independent element or of the strand merely refers to the shape of the sensor layer as being a narrow strip.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Samproni et al. (US 2015/0082874 A1), referred to hereinafter as “Samproni”. Park has been discussed above.
Regarding Claims 16-17, the prior art meets the limitations of Claim 1 as discussed above. Further, Park does not specifically teach the nanosensor device discussed above wherein the plurality of sensing elements are disposed on a columnar surface, nor wherein said plurality of sensing elements are disposed on an inner surface of a tube or column, as in Claims 16-17.
However, Samproni teaches a respective sensor array comprising analyte sensors arranged on the interior surface of a tube ([0051]: “The flexible substrate is then configured to define a tube having a fluid inlet, a fluid outlet, an interior surface, and an exterior surface with the surface on which the analyte sensors are formed defining the interior surface of the tube such that the analyte sensors are disposed on the interior surface of the tube.”), wherein this arrangement provides a structure for fluid to flow through the sensor-coated tube interior ([0029]), thereby allowing for continuous monitoring of a flowing fluid.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the nanosensor device of Park such that the sensing elements are arranged on the interior surface of a column/tube, such as suggested by Samproni, so as to provide a structure for fluid to flow through the sensor-coated tube interior, thereby allowing for continuous monitoring of a flowing fluid; and would have a reasonable expectation of success therein.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Deng et al. (Shikai Deng, Vikas Berry, Wrinkled, rippled and crumpled graphene: an overview of formation mechanism, electronic properties, and applications, Materials Today, Volume 19, Issue 4, 2016, Pages 197-212, ISSN 1369-7021), referred to hereinafter as “Deng”, and Hwang et al. (Hwang, M.T., Heiranian, M., Kim, Y. et al. Ultrasensitive detection of nucleic acids using deformed graphene channel field effect biosensors. Nat Commun 11, 1543 (2020)), referred to hereinafter as “Hwang”.
Regarding Claim 18, the prior art meets the limitations of Claim 2 as discussed above. Further, Park does not specifically teach the nanosensor device discussed above wherein said first sensing layer comprises crumpled graphene, as in Claim 18.
However, crumpled graphene is known in the art for its enhanced capacitance and mechanical stability, as taught by Deng, wherein graphene is thereby used in field effect transistors to enhance sensitivity and structural deformability by increasing the surface area of the graphene, as taught by Hwang.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the nanosensor device of Park such that the first sensor layer comprises crumpled graphene, such as suggested by Deng and Hwang, so as to improve the sensitivity and structural deformability of the device; and would have a reasonable expectation of success therein.
Claims 19-20 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Fry et al. (US 2019/0162578 A1), referred to hereinafter as “Fry”. Park has been discussed above.
Regarding Claims 19-20 and 26, the prior art meets the limitations of Claim 1 as discussed above. Further, Park does not specifically teach the nanosensor device discussed above further comprising at least one inert layer, wherein said at least one inert layer comprises graphene, nor wherein at least one inert layer is disposed in a zone between said sensors and said support supporting at least said first and second layers, as in Claims 19-20 and 26.
However, Fry teaches a respective sensor which comprises a protective layer of graphene, wherein said graphene is taught as being chemically inert, thereby protecting the sensor material from oxidation, and wherein graphene is mostly impermeable to liquid and gas, thereby isolating the sensor material ([0083]).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the nanosensor device to include an inert graphene layer between the sensor layers 20/30 and the base support 10, such as suggested by Fry, so as to chemically isolate the base support from the sensor layers, thereby preventing material from binding to the support layer and producing false positive results; and would have a reasonable expectation of success therein.
Further regarding Claim 26, it is noted that the recitation “said first sensing layer, said second sensing layer preferentially interact with compounds whose molecular weight median value is greater than about 400 g/mol” is drawn to an intended use, wherein limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function – see MPEP 2111.02(II). As discussed above, the commensurately structured substrate and layers of Park are fully capable of interacting with compounds whose molecular weight median value is greater than about 400 g/mol.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Fan and Fry. Park, Fan, and Fry have been discussed above.
Further regarding Claim 28, Park does not specifically teach the nanosensor device discussed above wherein first and second sensing layers comprise SWNTs and wherein a third sensing layer comprising ntG is disposed more proximal to said base support than said first sensing layer, as in Claim 28.
However, Fan teaches a respective sensor device wherein both the first and second sensing layers are carbon nanotube layers (Fan Claim 1), wherein carbon nanotubes are isotropic conductors with slightly more resistivity than graphene.
Further, Fry teaches a respective sensor which comprises a protective layer of graphene, wherein said graphene is taught as being chemically inert, thereby protecting the sensor material from oxidation, and wherein graphene is mostly impermeable to liquid and gas, thereby isolating the sensor material ([0083]).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the nanosensor device of Park such that both the fist and second sensing layers comprise carbon nanotubes, such as suggested by Fan, as the use of graphene and carbon nanotubes are mere alternatives for conducting a current, and wherein carbon nanotubes offer the added benefit of isotropic conductance, allowing for further control over the electrical properties of the device for more precise results, and to modify the nanosensor device to include an inert graphene layer between the sensor layers 20/30 and the base support 10, such as suggested by Fry, so as to chemically isolate the base support from the sensor layers, thereby preventing material from binding to the support layer and producing false positive results; and would have a reasonable expectation of success therein.
Claims 29 and 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Genin et al. (RU 185424 U1), referred to hereinafter as “Genin”, as seen through the machine translation available on Google Patents and attached herein, and in further view of Cai et al. (US20120118751A1), referred to hereinafter as “Cai”. Park has been discussed above.
Regarding Claim 29, the prior art meets the limitations of Claim 2 as discussed above. Further, Park does not specifically teach the nanosensor device discussed above wherein said first and second sensing layers are disposed on a solid or hollow rod or shaft, said device further comprising an elevator controlled to expose liquid sample to the first sensing layer comprising ntG while a SWNT sensing sensor layer remains surrounded by gas, as in Claim 29.
However, regarding the first and second layers being disposed on a solid or hollow rod or shaft, Cai teaches a respective nanosensor device wherein binding sites 108 are disposed on hollow carbon nanotube rods/shafts 102 (Fig. 1A), wherein said rods/shafts 102 are arranged in an array to provide the sensor surface of high surface area due to the protruding rods/shafts, this arrangement being beneficial for offering increased sensor sensitivity due to maximized exposed surface area of the sensor cavities 108 to target molecules 110 ([0015] and Fig. 4).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the nanosensor device of Park to include the first and second layers being disposed on a solid or hollow rod or shaft, such as suggested by Cai, so as to maximize the surface area of the sensor surface, thereby maximizing he sensitivity of the surface; and would have a reasonable expectation of success therein.
Further as in Claim 29, regarding the elevator controlled to expose sample to the sensing layer, Genin teaches a respective apparatus comprising induction sensors 8 for measuring the magnetic properties of a sample, and a sample heating unit 9 for heating the sample, wherein an elevator 10 is controlled to expose sample to the sensors 8 and the heating unit 9 (“If it is necessary to control the PM at an elevated temperature, the test sample is lifted into the heater 9 using the feed elevator 10 and, after heating to the set temperature, automatically moves to the solenoid with induction sensors 8.”). This arrangement allows for controlled exposure to the sensors, eliminating deviations due to inconsistencies and errors when performed manually by a user, thereby improving accuracy and precision.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to mopdify the nanosensor device of Park to include an elevator controlled to expose sample to the sensing layer, such as suggested by Genin, so as to eliminate deviations due to inconsistencies and errors when performed manually by a user, thereby improving accuracy and precision; and would have a reasonable expectation of success therein.
Further regarding Claim 29, while Park/Genin does not specifically discuss “expos[ing] sample to the sensing layer comprising ntG while a SWNT sensor layer remains surrounded by gas” as in Claim 29, this recitation is drawn to a process recitation. As the claims are drawn to a device, such process recitation is not afforded patentable weight. Herein, the commensurately structured layers of the device of Park are fully capable of the sensing layer comprising ntG being exposed to sample while a SWNT sensor layer remains surrounded by gas.
Regarding Claim 31, the prior art meets the limitations of Claim 29 as discussed above. Further, Park does not specifically teach the nanosensor device discussed above comprising a support for a solid sample, and wherein said elevator brings said solid sample in contact with said first sensing layer comprising ntG where said solid sample becomes liquified, as in Claim 31.
However, Genin teaches a respective apparatus comprising induction sensors 8 for measuring the magnetic properties of a sample, and a sample heating unit 9 for heating the sample, wherein an elevator 10 is controlled to expose sample to the sensors 8 and the heating unit 9. Herein, the elevator comprises a support for a solid sample (the floor of the elevator). This arrangement allows for controlled exposure to the sensors, eliminating deviations due to inconsistencies and errors when performed manually by a user, thereby improving accuracy and precision.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the nanosensor device of Park to include an elevator controlled to expose sample to the sensing layer, wherein said elevator comprises a support for a solid sample, such as suggested by Genin, so as to eliminate deviations due to inconsistencies and errors when performed manually by a user, thereby improving accuracy and precision; and would have a reasonable expectation of success therein.
Further, the recitation “where said solid sample becomes liquified” is drawn to a process recitation. As the claims are drawn to a device, such process recitation is not afforded patentable weight when the prior art device is capable of performing the claimed process. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II).
Further regarding Claim 31, while Park/Genin does not specifically discuss “wherein said elevator brings said solid sample in contact with said sensing layer comprising ntG” as in Claim 31, this recitation is drawn to a process recitation. As the claims are drawn to a device, such process recitation is not afforded patentable weight. Herein, the commensurately structured elevator of Park/Genin is fully capable of pressing a solid sample in contact with a sensing layer of Park in the obvious combination of Park and Genin discussed above.
Regarding Claim 32, the prior art meets the limitations of Claim 29 as discussed above. Further, Park does not specifically teach the nanosensor device discussed above wherein said first layer is disposed on a wall of said rod or shaft in a location more proximal to a sample contact point than said second layer, as in Claim 32.
However, mere change in orientation or position of elements absent any criticality or unexpected result is an obvious matter of design choice – see MPEP 2144.04(VI)(C). Herein, given the commensurate arrangement of first and second sensor layers of Park, the device of Park would perform the same function of field-effect transistor type biosensing regardless of each layer’s position on the rod/shaft (as provided by the obvious combination of Park and Cai discussed above) relative to the sample contact point. Examiner further notes that the sample contact point is indefinitely defined as discussed in the 35 USC 112 section above.
Thus, one of ordinary skill in the art would find it obvious that the device having the claimed relative arrangement of a first sensor layer and a second sensor layer would not perform differently than the prior art device, absent evidence of criticality, non-obviousness, or unexpected results associated with the position of the first sensor layer and the second sensor layer.
Regarding Claim 33, the prior art meets the limitations of Claim 32 as discussed above. Further, Park does not specifically teach the nanosensor device discussed above wherein said first sensing layer is disposed on an inner or an outer wall of said rod or shaft and said second sensing layer is disposed on the outer or the inner wall of said rod or shaft, respectively, as in Claim 33.
However, Cai teaches a respective nanosensor device wherein binding sites 108 are disposed on the outer surfaces of hollow carbon nanotube rods/shafts 102 (Fig. 1A), wherein said rods/shafts 102 are arranged in an array to provide the sensor surface of high surface area due to the protruding rods/shafts, this arrangement being beneficial for offering increased sensor sensitivity due to maximized exposed surface area of the sensor cavities 108 to target molecules 110 ([0015] and Fig. 4).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the nanosensor device of Park to include the first and second layers being disposed on the outer surface of a solid or hollow rod or shaft, such as suggested by Cai, so as to maximize the surface area of the sensor surface, thereby maximizing he sensitivity of the surface; and would have a reasonable expectation of success therein.
Regarding Claim 34, the prior art meets the limitations of Claim 29 as discussed above. Further, Park does not specifically teach the nanosensor device discussed above wherein said elevator separately controls the first sensing layer comprising ntG and at least one said SWNT sensing layer, as in Claim 34.
However, this recitation is drawn to an intended use and as a process recitation in a device claim, wherein limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function – see MPEP 2111.02(II).
Herein, the elevator being used for the ntG sensing layer or the SWNT sensor layer is immaterial as the function of elevating a sample is the same. Further, the commensurate sample elevator of Park/Genin discussed above is fully capable of elevating a solid sample to either a sensing layer comprising ntG or at least one SWNT sensor layer.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Genin and Cai, as applied to Claims 29, 31, and 34 above, and in further view of Boileau. Boileau has been discussed above.
Regarding Claim 30, the prior art meets the limitations of Claim 29 as discussed above. Further, Park/Genin does not specifically teach the nanosensor device discussed above further comprising a heating element configured to heat sample liquid and augment vaporization of VOCs, as in Claim 30.
However, Boileau teaches a respective field-effect transistor-based nanosensor device comprising heating elements as heat sources which vaporize a plant sample and expose the nanosensor to the vapor, wherein the heat source heats a base support of the sensor (given that “The liquid phase of the extract may be applied directly to the chip…”) ([0025]), wherein this arrangement allows for a “two-in-one” sensor capable of use with both liquid and gaseous samples.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the nanosensor device of Park to include a heating element configured to heat sample liquid and augment vaporization of VOCs, such as suggested by Boileau, so as to provide a device capable of use with both gaseous and liquid samples; and would have a reasonable expectation of success therein.
Further, it is noted that the “sample liquid” as claimed is merely an intended workpiece, wherein the device of the obvious combination of Park and Boileau is fully capable of heating a sample liquid.
Response to Arguments
Drawings
Applicant asserts that drawings are not essential for understanding the device of the instant application, indicating that Examiner’s requirement is allegedly not proper.
Examiner traverses this assertion. As discussed above in the Drawings section, Applicant is required to furnish a drawing under 37 CFR 1.81.
On the present record, the disclosure requires structural relationships which cannot unambiguously and without a doubt be understood from the text of the specification alone, such as for example what constitutes the “stacked” arrangement of layers. While Applicant has pointed out that drawings are only required when necessary to understand the invention, Applicant has not provided a persuasive rationale as to why the instant claims do not require drawings to be understood aside from the words of the specification being allegedly sufficient. As such, Examiner respectfully maintains the drawings requirement set forth by the previous office action.
Applicant indicates that drawings would confuse rather than aid understanding and would distract from the words of the claims. Examiner disagrees, drawings are necessary for clear understanding of the instant invention, drawings do not distract from or add to/subtract from claim language but rather aid in understanding of the claims which, at present, are not well-understood given particular contradictory language in the claims (see the 35 USC 112 section above). The drawings requirement is maintained. Even hand-drawn schematic-type representations will satisfy the drawings requirement so long as the structural arrangement of elements in the claims are shown and labeled.
Regarding the drawings objection, Rule 1.83(a) applies in the absence of drawings when drawings are required and is set forth as a supplemental objection indicating that the drawings must show every feature of the invention specified in the claims.
35 USC 112(b)
Applicant’s remarks and amendments overcome the majority of the indefiniteness rejections set forth by the previous action under 35 USC 112b. However, the following rejections were not addressed and remain on the record:
Regarding Claim 27, Applicant did not address the rejection under 35 USC 112b by argument or amendment. It remains unclear as to what structure or arrangement of layers the “strand” refers and how the strand is “continuous with” the first layer. While Applicant has made it clear that the layers are on the strand, it remains unclear what structural limitations this recitation requires, if any. As discussed above, drawings showing the strand are required for further examination hereafter. Thus, the rejection of Claim 27 under 35 USC 112(b) is maintained. Claim 27 further remains with antecedent basis issues.
Claim 32 further remains as having antecedent basis issues.
Regarding Claim 1, Examiner has set forth an additional indefiniteness rejection under 35 USC 112b relating to ambiguous understanding of the arrangement of layers given the general understanding of the plain meaning of “layer” as a covering of a surface, “stacked” indicating the layers are stacked like a deck of cards, and “directly” appearing to indicate the layers as a whole being supported by the base support rather than having individual contacting portions given the above discussion of the meanings of layers and stacked.
35 USC 102
Applicant’s arguments are on the grounds that Park’s layers are present in a single sensing electrode whereas Applicant’s layers are independent sensing electrodes, Applicant has added the “directly” supported language to indicate they are separate.
Applicant’s arguments are not persuasive because Park commensurately teaches the stacked layer arrangement recited in Claim 1 wherein the first and second layers comprise graphene and the second layer comprising SWNTs, wherein the sensor is decorated with bioattractive compounds. Park teaches these layers stacked on a base support wherein, in view of the contradiction between this “directly” requirement and the layers being “stacked” (see the 35 USC 112 section above), the layers of Park are commensurately interpreted as together being directly supported by the base support. Thus, Park commensurately discloses a structure wherein each layer is capable of sensing such as the liquid/gas sensing indicated by Applicant, given that the structure is the same -- MPEP 2112.01, "Products of identical chemical composition cannot have mutually exclusive properties.". Claim 1 does not require separate, independently addressable sensing electrodes, instead merely providing a single input electrode and a single output electrode. Thus, Park’s working electrode with commensurate sensing layers anticipates the claimed bio-sensing system. Applicant further states that the layers of the device are distinct electrodes stacked similarly as in Park, but to simultaneously detect different compounds. However, Applicant fails to describe how the instant stacking of layers differs from the identically stacked layers of Park. A graphene layer in contact with liquid and a CNT-containing layer configured to assay gasses are both taught by park, satisfying the functional claim language (See Fig. 1C, reproduced below, showing the first layer which may be exposed to liquid or gas comprising carbon nanotubes which are easily permeated by certain compounds, enabling dual detection.).
By this, Examiner respectfully maintains those claim rejections under 35 USC 102 set forth in the previous office action.
35 USC 103
Claim 35, Reed
Applicant’s arguments are on the grounds that the claim requires a diameter of an upper layer be less than that of a lower layer while Reed is relied upon for a thickness of the upper layer being less than a lower layer.
Applicant’s argument is not persuasive because a diameter of an object may be with regard to its thickness. A diameter is merely a straight line passing from side to side through the center of a body or figure. Applicant may wish to further specify which dimension the diameter refers to, such as being parallel with or perpendicular to a surface of the base support in contact with the layers.
Claims 8-9, Park in view of Fan
Applicant’s arguments are on the alleged grounds that Claims 8-9 are allowable for their dependence on Claim 1 which is allegedly allowable. Applicant further argues that the features of Claim 9 permit signaling in accord with the exposed areas.
Applicant’s arguments are not persuasive because Claim 1 is maintained as rejected under 35 USC 102 as discussed above. Thus, Claims 8-9 are not allowable merely by virtue of their dependence on Claim 1.
Further, while the particular benefit of signaling in accord with the exposed areas is not specifically mentioned by Park, it is not necessary that the prior art suggest the same advantage or result discovered by applicant. As the device of Park is commensurately structured as in the instant Claims 1 and 8-9, Park is commensurately expected to display the benefits specified by Applicant given their same structure.
Thus, Examiner maintains the rejection of Claims 8-9 under 35 USC 103 over Park in view of Fan.
Claims 10-12, Park in view of Boileau
Applicant argues that Boileau does not remedy the alleged deficiencies of Park as discussed above.
Applicant’s arguments are not persuasive because, as discussed above, Park commensurately teaches the stacked arrangement of graphene and carbon nanotube first and second layers as in the instant Claim 1. Thus, Applicant’s assertion that Boileau does not cure the deficiencies of Park is moot given that no such deficiencies exist in Park.
Thus, Examiner maintains the rejection of Claims 10-12 under 35 USC 103 over Park in view of Boileau.
Claims 14-15 and 27, Park
Applicant argues that Park does not remedy the alleged deficiencies of Park as discussed above.
Applicant’s arguments are not persuasive because, as discussed above, Park commensurately teaches the stacked arrangement of graphene and carbon nanotube first and second layers as in the instant Claim 1. Thus, Applicant’s assertion that Park does not cure the deficiencies of Park is moot given that no such deficiencies exist in Park, and is also nonsensical as a single reference would not be expected to cure a deficiency of itself.
Thus, Examiner maintains the rejection of Claims 14-15 and 27 under 35 USC 103 over Park.
Claim 18, Park in view of Deng and Hwang
Applicant argues that Deng and Hwang do not remedy the alleged deficiencies of Park as discussed above.
Applicant’s arguments are not persuasive because, as discussed above, Park commensurately teaches the stacked arrangement of graphene and carbon nanotube first and second layers as in the instant Claim 1. Thus, Applicant’s assertion that Deng and Hwang do not cure the deficiencies of Park is moot given that no such deficiencies exist in Park.
Thus, Examiner maintains the rejection of Claim 18 under 35 USC 103 over Park in view of Deng and Hwang.
Claims 19-20 and 26, Park in view of Fry
Applicant argues that Fry does not remedy the alleged deficiencies of Park as discussed above.
This is not found persuasive because, as discussed above, Park commensurately teaches the stacked arrangement of graphene and carbon nanotube first and second layers as in the instant Claim 1. Thus, Applicant’s assertion that Fry does not cure the deficiencies of Park is moot given that no such deficiencies exist in Park.
Thus, Examiner maintains the rejection of Claims 19-20 and 26 under 35 USC 103 over Park in view of Fry.
Claims 29 and 31-34, Park in view of Genin and Cai
Applicant argues that Genin and Cai do not remedy the alleged deficiencies of Park as discussed above.
This is not found persuasive because, as discussed above, Park commensurately teaches the stacked arrangement of graphene and carbon nanotube first and second layers as in the instant Claim 1. Thus, Applicant’s assertion that Genin and Cai do not cure the deficiencies of Park is moot given that no such deficiencies exist in Park.
Thus, Examiner maintains the rejection of Claims 29 and 31-34 under 35 USC 103 over Park in view of Genin and Cai.
Claim 30, Park in view of Genin, Cai, and Boileau
Applicant argues that Genin, Cai, and Boileau do not remedy the alleged deficiencies of Park as discussed above.
This is not found persuasive because, as discussed above, Park commensurately teaches the stacked arrangement of graphene and carbon nanotube first and second layers as in the instant Claim 1. Thus, Applicant’s assertion that Genin, Cai, and Boileau do not cure the deficiencies of Park is moot given that no such deficiencies exist in Park.
Thus, Examiner maintains the rejection of Claim 30 under 35 USC 103 over Park in view of Genin, Cai, and Boileau.
Conclusion
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/B.J.K./Examiner, Art Unit 1798
/NEIL N TURK/Primary Examiner, Art Unit 1798
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