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 .
Status of the Claims
The Amendment filed August 31, 2026 has been entered. Claims 1-2 have been amended; and claims 3-11 have been cancelled previously. Claims 1-2 are currently pending and are examined herein.
Status of the Rejection
Applicant’s amendments to the Claims have overcome each objection and 112(a) rejection previously set forth in the Non-Final Office Action mailed June 3, 2026.
New grounds of rejection under 35 U.S.C. § 112(a) and 112(b) are necessitated by the amendments as outlined below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-2 recite “preparing a mixed solution by mixing the solution comprising GO and the solution comprising EDOT and PSS at a volume ratio of 5:1”, which is not supported by the instant specification. The instant specification discloses “To prepare a GO/PEDOT:PSS electrode, a graphene oxide solution (4 mg/mL) in water and a PEDOT:PSS solution (a mixture of 0.01 M EDOT and 0.1 M PSS) were mixed at a ratio of 5:1, and uniformly mixed with vortexing” in [para. 0039] of PG-Pub. In the above disclosure, it discloses a ratio of 5:1, but does not disclose a “volume” ratio of 5:1. Therefore, claims 1-2 are new matters.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 claims 1-2, claims 1-2 recite “wherein a detection limit of the dopamine-sensitive sensor is 0.008 µM”. A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In reHammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970) [see MPEP 2173.03]. In instant case, the recited limitations for the sensor are disclosed in Example 1 of instant specification (see [para. 0039] in PG-Pub). Table 1 in [para. 0040] in PG-Pub shows the detection limit for GO: (EDOT:PSS) ratio=5:1 is 0.01 µM. In the table at the bottom of Fig.10, the detection of limit is 0.01 µM. [para. 0045] discloses: the working electrode of GO/PEDOT:PSS composite showed excellent sensitivity to dopamine (17.2 μA/μM·cm2 in a range of 0.01 μM to 0.7 μM, a detection limit of 0.01 μM) compared with the bare gold electrode and the GO-adsorbed electrode, and showed a significantly improved detection limit of down to 0.008 μM and high linearity. Thus, there is an inconsistency on the detection limit. It is unclear if the detection limit is 0.01 μM or 0.008 μM. Therefore, the scopes of claims 1-2 are indefinite.
Response to Arguments
Applicant's arguments, see Remarks Pgs. 4-6, filed 8/31/2026, with respect to the 35 U.S.C. § 112(a) rejections have been fully considered.
Applicant’s Argument #1:
Applicant argues at pages 4-6 that the amended claims 1-2 recite the exact, specific parameters explicitly disclosed in Example 1 and the resulting characteristics disclosed in Experimental Example 3.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection under 112(a) and 112(b) above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIZHI QIAN whose telephone number is (571)272-3487. The examiner can normally be reached Monday-Thursday 8:00 am-5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan V Van can be reached on 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIZHI QIAN/Primary Examiner, Art Unit 1795
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