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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 24, 2026, has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 32 is 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.
Claim 32 recites “The method of claim 13.” However, claim 13 is a product claim. It is unclear if claim 32 is meant to be a product claim dependent on claim 13 or a method claim. For purposes of examination, the claim will be interpreted as “The electrode of claim 13,” such that it is a product claim dependent on claim 13.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 13-20 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0232725 Lin et al in view of US 2009/0259112 Hyde et al.
Regarding claim 13, Lin teaches a stretchable (paragraph 0020) wrinkled (paragraph 0019) electrode (paragraph 0002) comprising:
a) an elastomer (paragraph 0021); and
b) a shrunken (paragraph 0019) metallic film (paragraph 0018) disposed on the elastomer (paragraph 0018), the metallic film comprising a surface for selective sensing using capacitive detection methods (paragraph 0002);
wherein the shrunken metallic film is fabricated by
depositing a metallic film 304 (paragraph 0018) on top of a polymer layer 104 (paragraph 0016) by a sacrificial layer 204 (paragraph 0017),
placing the polymer layer, the sacrificial layer, and the metallic film in an oven such that a shrunken polymer layer, a shrunken sacrificial layer, and the shrunken metallic film are created (paragraph 0019), and
dissolving the shrunken sacrificial layer to detach the shrunken polymer layer (paragraph 0023);
wherein the shrunken metallic film has been treated with a first solution, such that the first solution promotes bonding between the shrunken metallic film and the elastomer (paragraph 0020);
wherein the shrunken metallic film attaches to the elastomer (paragraph 0021); and
wherein the electrode is placed in a chemical bath and dried after construction and prior to use (paragraph 0023).
Lin teaches the electrode used in sensors (paragraph 0002) but does not teach a surface functionalized with materials for selective sensing of specific analytes. Hyde teaches a method of making a sensor (paragraph 0116) where each detector includes a piezoelectric layer with a metallic film on the surface (paragraph 0116), wherein the surface of the metallic film is functionalized with materials for selective sensing of specific analytes (aptamers or antibodies, paragraph 0116). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the aptamers or antibodies of Hyde on the film of Lin because these are useful in making sensors or detectors for analytes (paragraph 0116).
Regarding claim 14, Lin teaches that the polymer layer and the shrunken polymer layer comprise polyolefin (paragraph 0016).
Regarding claim 15, Lin teaches that the metallic film and the shrunken metallic film comprise gold (paragraph 0018).
Regarding claim 16, Lin teaches that the sacrificial layer and the shrunken sacrificial layer comprise poly(methyl methacrylate) (PMMA) (paragraph 0017). Lin does not teach the use of toluene. However, this is product by process language.
The discussion above tends to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to Applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113. In this case, the process of Lin appears to form the same product as that of the instant invention. Applicant may provide evidence proving an unobvious difference between the products. dissolved in toluene.
Regarding claim 17, Lin teaches that the shrunken sacrificial layer is dissolved using a second solution comprising acetone (paragraph 0023).
Regarding claim 18, Lin teaches that the first solution comprises silane (paragraph 0020).
Regarding claim 19, Lin teaches that the chemical bath comprises acetone (paragraph 0023).
Regarding claim 20, Lin teaches that the elastomer is silicon-based (paragraph 0020).
Regarding claim 32, Hyde further teaches that the surface of the metallic film is functionalized with aptamers or antibodies (paragraph 0116). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the aptamers or antibodies of Hyde on the film of Lin because these are useful in making sensors or detectors for analytes (paragraph 0116).
Response to Arguments
Applicant’s arguments with respect to Lin have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument, where Hyde teaches the deficiencies of Lin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781
Prosecution Insights