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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/04/22 has been considered by the examiner.
Amendment Entered
In response to the amendment filed on July 6, 2026, amended claims 1, 2, and 12 have been entered.
Response to Arguments
Applicant’s arguments filed with respect to the prior art rejections raised in the previous office action were fully considered and are moot in view of the current combination of references that were necessitated by amendment. Please see prior art section below for more detail, updated citations (Pan and Ko references), and updated rationale
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Yue (“ZnO nanowire arrays on 3D hierarchical graphene foam: biomarker detection of Parkinson’s disease”, ACS Nano, 2014, 8, 1639-1646) as supported by Pan ("Piezotronic effect on the sensitivity and signal level of Schottky contacted proactive micro/nanowire nanosensors." Acs Nano 7.2 (2013): 1803-1810.)
Yue was applied in the previous office action
Regarding claim 1, Yue teaches an electrochemical sensor configured to detect ascorbic acid using piezo-electrocatalysis [fig. 1a, pg. 1639 col. 2, par. 2;], wherein the sensor comprises: a substrate [pg. 1644, col. 2, par. 2 “The GF was transferred onto ITO glass to prepare the ZnO NWA/GF”]; and a piezoelectric semiconductor coupled to the substrate [fig. 1a; Examiner notes ZnO nanowires have piezoelectric properties], wherein the piezoelectric semiconductor includes a nanostructured semiconducting zinc oxide catalyst [pg. 1642, col. 1, par. 2], wherein the zinc oxide catalyst is free of an enzyme immobilized thereon that catalyzes oxidation of ascorbic acid [pg. 1642, col. 1, par. 1, 2], and wherein the ascorbic acid is electro-oxidized at the surface of the zinc oxide catalyst [pg. 1642, col. 1, par. 1, 2].
Although Yue does not explicitly teach during detection of ascorbic acid mechanically strains the zinc oxide catalyst to generate piezoelectric polarization charges at a surface of the zinc oxide catalyst, and the ascorbic acid is electro-oxidized by the strain-induced piezoelectric polarization charges, this would be obvious to one having ordinary skill in the art when the invention was filed since Yue also suggests the adsorption of biomolecules on the ZnO during oxidation induces a dipole interaction at the interface through the charge transfer, which further modifies the oxidation potential [pg. 1642, col. 1, par. 3]. Examiner notes that generating strain-induced piezoelectric polarization charges at a surface is an inherent property of the nanostructured semiconducting zinc oxide catalyst. Therefore, incorporating a nanostructured semiconducting zinc oxide catalyst is configured to be mechanically strained during detection and to generate strain-induced piezoelectric polarization charges at a surface of the zinc oxide catalyst would only involve routine skill in the art
Additionally, since the prior art does disclose the nanostructured semiconducting zinc oxide catalyst comprising substantially the same elements or components of ZnO as that of the application, it is contended that the nanostructured semiconducting zinc oxide catalyst of the prior art is capable of inducing piezoelectric polarization charges while under mechanical deformations. Accordingly, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. the ZnO catalyst is capable of inducing piezoelectric polarization charges while under mechanical deformations), is necessarily present in the prior art material of ZnO NWA. The courts have held that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (II).
However, Yue does not teach wherein bending of the flexible substrate mechanically strains the zinc oxide catalyst to generate strain-induced piezoelectric polarization charges at a surface of the zinc oxide catalyst,
Pan teaches wherein bending of the flexible substrate mechanically strains the zinc oxide catalyst to generate strain-induced piezoelectric polarization charges at a surface of the zinc oxide catalyst, [pg. 1807: col. 1, par. 2-col. 2, par. 1]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue as supported by Yue to incorporate wherein bending of the flexible substrate mechanically strains the zinc oxide catalyst to generate strain-induced piezoelectric polarization charges at a surface of the zinc oxide catalyst, for increasing sensor signal and sensitivity, as evidence by Pan [pg. 1807: col. 1, par. 2].
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yue and Pan and in further view of Ko ("Controllable electrochemical synthesis of ZnO nanorod arrays on flexible ITO/PET substrate and their structural and optical properties." Applied surface science 259 (2012): 99-104.).
Regarding claim 2, Yue and Pan teach an electrochemical sensor configured to detect ascorbic acid using piezo-electrocatalysis, as disclosed above.
However, Yue and Pan do not teach flexible substrate comprises an indium tin oxide coated polyethylene terephthalate film and is configured to be bent during detection of ascorbic acid to mechanically strain the zinc oxide catalyst
Ko teaches flexible substrate comprises an indium tin oxide coated polyethylene terephthalate film and is configured to be bent during detection of ascorbic acid to mechanically strain the zinc oxide catalyst [pg. 100: col. 1: par. 2]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan to incorporate flexible substrate comprises an indium tin oxide coated polyethylene terephthalate film and is configured to be bent during detection of ascorbic acid to mechanically strain the zinc oxide catalyst, for its bending properties, as evidence by Ko [pg. 100: col. 2, par. 2].
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Yue and Pan and in further view of Abubakar (“Fabrication and characterization of nanostructured zinc oxide on printed microcontact electrode for piezoelectric applications” Journal of Materials Research and Technology 9.6 (2020): 15952-15961.).
Abubakar was applied in the previous office action
Regarding claim 3, Yue and Pan teach an electrochemical sensor configured to detect ascorbic acid using piezo-electrocatalysis, as disclosed above.
However, Yue and Pan do not teach the nanostructured semiconducting zinc oxide catalyst is capable of inducing piezoelectric polarization charges while under mechanical deformations
Abubakar teaches the nanostructured semiconducting zinc oxide catalyst is capable of inducing piezoelectric polarization charges while under mechanical deformations [pg. 15957, col. 1: par. 1-col. 2: par. 1, pg. 15960, col. 2: par. 1]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan to incorporate, the nanostructured semiconducting zinc oxide catalyst is capable of inducing piezoelectric polarization charges while under mechanical deformations, for detecting deformations, as evidence by Abubakar [pg. 15960, col. 2: par. 1].
Claims 4, 5, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yue and Pan and in further view of Ibupoto (“L-Ascorbic Acid Biosensor Based on Immobilized Enzyme on ZnO Nanorods” Journal of Biosensors and Bioelectronics 2.3 (2011): 1).
Ibupoto was applied in the previous office action
Regarding claim 4, Yue and Pan teach an electrochemical sensor configured to detect ascorbic acid using piezo-electrocatalysis, as disclosed above.
However, Yue and Pan do not teach the nanostructured semiconducting zinc oxide catalyst is a zinc oxide nanorod
Ibupoto teaches the nanostructured semiconducting zinc oxide catalyst is a zinc oxide nanorod [pg. 2, col. 1: par. 4].
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan, to incorporate an electrochemical sensor configured to detect ascorbic acid, as nanorods are favorable because of their high surface to volume ratios, as evidence by Ibupoto [pg. 5, col. 2: par. 1].
Regarding claim 5, Ibupoto further teaches the zinc oxide nanorod has a terminal end connected to the substrate [pg. 2, col. 1: par. 4, 5; Examiner notes the nanorods are vertically oriented]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan, to incorporate the zinc oxide nanorod has a terminal end connected to the substrate, as nanorods are grown vertically on the substrate, as evidence by Ibupoto [pg. 2, col. 1: par. 5].
Regarding claim 12, Pan further teaches mechanical strain applied by bending of the flexible substrate during detection reduces the limit of detection [pg. 1807: col. 2, par. 2]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue, to incorporate mechanical strain applied by bending of the flexible substrate during detection reduces the limit of detection, as the piezotronic effect increases the signal level of the device and enhances the sensitivity of the device by tuning the effective heights of the two SBs and thus the characteristic of the NW sensor, as evidence by Pan [pg. 1807: col. 2, par. 2].
Ibupoto further teaches the sensor has a limit of detection less than three micromolars [Table 2; pg. 2, col. 1: par. 4].
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan, to incorporate the sensor has a limit of detection less than three micromolars, as zinc oxide nanorods provide good reliability, as evidence by Ibupoto [pg. 5, col. 2: par. 1].
Additionally, since the prior art does disclose the nanostructured semiconducting zinc oxide catalyst comprising substantially the same elements or components of ZnO as that of the application, it is contended that the nanostructured semiconducting zinc oxide catalyst of the prior art is capable of the sensor LOD being achieved when the zinc oxide catalyst is mechanically strained. Accordingly, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. the ZnO catalyst is capable of the sensor LOD being achieved when the zinc oxide catalyst is mechanically strained), is necessarily present in the prior art material of ZnO. The courts have held that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (II).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yue and Pan, and Ibupoto and in further view of Abubakar
Regarding claim 6, Yue, Pan and Ibupoto teach an electrochemical sensor configured to detect ascorbic acid using piezo-electrocatalysis, as disclosed above.
Ibupoto teaches the nanostructured semiconducting zinc oxide catalyst is a zinc oxide nanorod [pg. 2, col. 1: par. 4].
However, Yue, Pan and Ibupoto do not teach the zinc oxide nanorod has a substantially hexagonal cross-section
Abubakar teaches the zinc oxide nanorod has a substantially hexagonal cross-section [pg. 15955, col. 1: par. 3]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue, Pan and Ibupoto, to incorporate the zinc oxide nanorod has a substantially hexagonal cross-section, as is standard nanorod structure, as evidence by Abubakar [pg. 15955, col. 1: par. 3].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yue and Pan and in further view of Bayandori Moghaddam ("Electrodeposited nanoscale zinc oxide particles: facilitating the electron transfer of immobilised protein and biosensing." Micro & Nano Letters 12.7 (2017): 425-429).
Bayandori Moghaddam was applied in the previous office action
Regarding claim 7, Yue and Pan teach an electrochemical sensor configured to detect ascorbic acid using piezo-electrocatalysis, as disclosed above.
However, Yue and Pan do not teach the nanostructured semiconducting zinc oxide catalyst is a zinc oxide nanosheet.
Bayandori Moghaddam teaches the nanostructured semiconducting zinc oxide catalyst is a zinc oxide nanosheet [pg. 428, col. 1: par. 5]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan, to incorporate the nanostructured semiconducting zinc oxide catalyst is a zinc oxide nanosheet, as is known zinc oxide structure, as evidence by Bayandori Moghaddam [pg. 428, col. 1: par. 5].
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Yue and Pan and in further view of Soleymani (U.S. Patent Application Document 2022/0347665).
Soleymani was applied in the previous office action
Regarding claim 8, Yue and Pan teach an electrochemical sensor configured to detect ascorbic acid using piezo-electrocatalysis, as disclosed above.
However, Yue and Pan do not teach the substrate is constructed from a conducting material.
Soleymani teaches the substrate is constructed from a conducting material [par. 11]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan, to incorporate the substrate is constructed from a conducting material, for allowing activation of a substrate, as evidence by Soleymani [par. 19].
Regarding claim 9, Soleymani further teaches the substrate includes an indium tin oxide substrate [par. 11]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan, to incorporate the substrate includes an indium tin oxide substrate, for providing conductive material on the substrate, as evidence by Soleymani [par. 11].
Regarding claim 10, Soleymani further teaches the substrate includes an indium tin oxide coated polyethylene terephthalate film [par. 11]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan, to incorporate the substrate includes an indium tin oxide coated polyethylene terephthalate film, for providing a polymer on the substrate, as evidence by Soleymani [par. 11].
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yue and Pan and in further view of Biswas (“Nanostructured ZnO thin film with improved optical and electrochemical properties prepared by hydrothermal electrochemical deposition technique”, Micro & Nano Letters 11.7 (2016): 351-355).
Biswas was applied in the previous office action
Regarding claim 11, Yue and Pan teach an electrochemical sensor configured to detect ascorbic acid using piezo-electrocatalysis, as disclosed above.
However, Yue and Pan do not teach the substrate is constructed from a conducting material.
Biswas teaches the piezoelectric semiconductor is hydrothermally synthesized to the substrate [pg. 351, col. 1: par. 2]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan, to incorporate the piezoelectric semiconductor is hydrothermally synthesized to the substrate, as hydrothermally synthesized deposition is an economical process for depositing zinc oxide, as evidence by Biswas [pg. 354, col. 2: par. 4].
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Yue and Pan and in further view of Zhang (“One-pot facile fabrication of graphene-zinc oxide composite and its enhanced sensitivity for simultaneous electrochemical detection of ascorbic acid, dopamine and uric acid” Sensors and Actuators B: Chemical 227 (2016): 488-496)
Zhang was applied in the previous office action
Regarding claim 13, Yue and Pan teach an electrochemical sensor configured to detect ascorbic acid using piezo-electrocatalysis, as disclosed above.
However, Yue and Pan do not teach the sensor also detects at least one of uric acid, lactate. glucose, and caffeine.
Zhang teaches the sensor also detects at least one of uric acid, lactate, glucose, and caffeine [pg. 492, col. 2: par. 1]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan, to incorporate the sensor also detects at least one of uric acid, lactate. glucose, and caffeine, for detecting multiple parameters at once, as evidence by Zhang [pg. 239, col. 1: par. 1].
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Yue and Pan and in further view of Alam (“Flexible and Linker-Free Enzymatic Sensors Based on Zinc Oxide Nanoflakes for Noninvasive L-Lactate Sensing in Sweat” IEEE Sensors Journal 20.10 (2020): 5102-5109).
Alam was applied in the previous office action
Regarding claim 14, Yue and Pan teach an electrochemical sensor configured to detect ascorbic acid using piezo-electrocatalysis, as disclosed above.
Yue teaches mechanical deformation of the device during detection of ascorbic acid while worn induces the strain-generated piezoelectric polarization charges
Since the prior art does disclose the nanostructured semiconducting zinc oxide catalyst comprising substantially the same elements or components of ZnO during ascorbic acid detection as that of the application, it is contended that the device during detection of ascorbic acid of the prior art is capable of mechanical deformation of the device during detection of ascorbic acid while worn induces the strain-generated piezoelectric polarization charges. Accordingly, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. the ZnO catalyst is capable of inducing piezoelectric polarization charges while under mechanical deformations), is necessarily present in the prior art material of ZnO NWA. The courts have held that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (II).
However, Yue and Pan do not teach a wearable electrocatalytic device comprising an electrochemical sensor according to Claim 1.
Alam teaches a wearable electrocatalytic device comprising an electrochemical sensor according to Claim 1 [pg. 5109, col. 1: par. 2]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan, to incorporate a wearable electrocatalytic device comprising an electrochemical sensor according to Claim 1, for continuous analyte monitoring, as evidence by Alam [pg. 239, col. 1: par. 1].
Regarding claim 15, Alam further teaches a biomedical device comprising an electrochemical sensor according to Claim 1 [pg. 5109, col. 1: par. 2]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Yue and Pan, to incorporate a biomedical device comprising an electrochemical sensor according to Claim 1, for providing real time analysis of human body fluids, as evidence by Alam [pg. 5109, col. 1: par. 2].
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 extension fee 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 date of this final action.
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/GRACE L ROZANSKI/Examiner, Art Unit 3791
/ALEX M VALVIS/Supervisory Patent Examiner, Art Unit 3791
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