DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 Application; Restriction
Applicant’s election of Group I (Claims 1-18) in the reply filed on 12/9/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim(s) 1-28 is/are pending.
Claims 19-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected methods, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/9/2025.
Claim(s) 5, 6, 7, 8, 10, 11, 15, 16, 17, 18, 24, and 25 is/are currently amended.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on:
4/12/2023
4/7/2023
are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC §§ 102-103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
I. Claim(s) 1, 2, 3, 4, 6, 7, 8, 9, 11, 12, 13, 14, 15, 16, 17 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0093429 to Star, et al.
With respect to Claim 1, this claim recites in the preamble “[a] method of performing an electrochemical assay to detect an analyte comprising an oxidizable phenolic group.” Star teaches tetrahydrocannabinol, interpreted as an analyte comprising an oxidizable phenolic group. (Star 1-2: [0010]; passim).
Claim 1 further requires “contacting a sample suspected of containing the analyte with a modified electrode.” A modified electrode is taught. (Star 4: [0066] et seq.; Fig. 1A-1B; passim). A sample is applied to the electrode. See e.g. (Star 1-2: [0010]: “In another aspect, a method of detecting tetrahydrocannabinol or THC includes applying a sample to a sensor medium of a sensor or sensors.”).
Claim 1 further requires “the modified electrode comprises a nanocomposite, the nanocomposite comprising a carbon nanomaterial and an electrocatalyst.” Nanocomposites are taught. See e.g. (Star 4: [0068]).
Claim 1 further requires “incubating the sample with the modified electrode.” A sample is ‘incubated.’ (Star 7: [0089]).
Claim 1 further requires “applying a potential suitable for electrochemically oxidizing the oxidizable phenolic group of the analyte.” A potential is applied. (Star 6: [0081] – 7: [0083]; passim).
Claim 1 further requires “detecting an assay signal associated with electrochemical oxidation of the analyte.” Results are detected. (Star 7: [0091]; passim).
As to Claim 2, carbon nanotubes are taught. (Star 4: [0064]).
As to Claim 3, reduced graphene oxide is interpreted as graphene. (Star 4: [0065]). If this is incorrect, please construe graphene and how much oxygen is or isn’t allowed for something to be called “graphene.” This is necessary to treat the matter.
As to Claim 4, nanoribbons are taught. Nanoribbons are taught. (Star 4: [0065]).
As to Claim 6, metals and metal oxides are taught. (Star 4: [0068]).
As to Claim 7, processing is taught. (Star 3: [0058] et seq). A concentration is determined. (Star 8: [0095] et seq.; passim).
As to Claim 8, cannabinoids are taught. (Star 4: [0068]; passim).
As to Claim 9, delta 9-THC is taught. (Star 1: [0003]).
As to Claim 11, saliva is taught. (Star 4: [0063]). Note also discussion of detection in the liquid phase. (Star 4: [0066]).
As to Claim 12, a time less than 3 minutes is taught. (Star 7: 0089]).
As to Claim 13, a time less than 2 minutes is taught. (Star 7: 0089]).
As to Claim 14, a time less than 1 minutes is taught. (Star 7: 0089]).
As to Claim 15, the parameters are so-configured. (Star 9: [0103]-[0104], accompanying Figs)
As to Claim 16, pre-conditioning / balancing / calibrating is taught. (Star 7: [0082]-[0083]).
As to Claim 17, as understood, a voltametric measurement is carried out. (Star 7: [0082]-[0083]).
II. Claim(s) 5 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0093429 to Star, et al. in view of:
(i) Rabti, et al., Bio(Sensing) devices based on ferrocene-functionalized graphene and carbon nanotubes, Carbon 2016; 108: 481-514 (cited by Applicants, hereinafter “Rabti at __”).
The discussion accompanying “Rejection I” is incorporated herein by reference.
As to Claim 5, to the extent Star may not teach e.g. ferrocene, these are known in the art as useful in biosensing devices. (Rabti entire reference; 506 – 5.5.2 Sensing of drugs). One would be motivated to use ferrocene functionalized graphene or carbon nanotubes for any number of reasons, like achieving lower detection limits. (Rabti at 506, col. 2).
III. Claim(s) 10 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0093429 to Star, et al. in view of:
(i) Senati, et al., A voltametric sensor based on NiO/CNTs ionic liquid carbon paste electrode for determination of morphine in the presence of diclofenac, Materials Science and Engineering C 2014; 35: 379-385 (hereinafter “Senati at __”).
The discussion accompanying “Rejection I” is incorporated herein by reference.
As to Claim 10, to the extent Star may not teach the claimed analytes, in a similar method Senati teaches a method of testing for morphine (an opiate). Like Star and like the claims, the method involves contacting a sample with a modified electrode containing nanotubes. (Sanati at 280 – 2. Experimental). Substituting one modified electrode for another to detect different analytes is an obvious expedient as it reflects substituting known components to achieve predictable results. This does not impart patentability. MPEP 2143; KSR.
Allowable Subject Matter
Claim 18 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Star does not teach or reasonably suggest contacting the sample with a suspension comprising capped magnetic particles in the manner claimed in Claim 18.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony J. Zimmer can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736