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 .
Response to Amendment
The Amendment filed on 12/22/2025 has been entered. Claims 18, 19, 21-30, 32 and 34-37 remain pending in the application. Applicant’s amendments to the claims have overcome each and every objection and 112(b) rejection previously set forth in the non-final Office Action mailed 7/30/2025.
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.
Claim 26 is 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. Claim 26 recites “a fluorinated polymer dielectric, an amorphous fluorinated polymer dielectric.” However, the specification only teaches Teflon AF and Cytop and nothing about their generic forms. The recitations of a fluorinated polymer dielectric, an amorphous fluorinated polymer dielectric are broader than what is taught in the specification as both recitations would cover more chemicals which are not just Teflon AF and Cytop. Therefore, the recitations of a fluorinated polymer dielectric, an amorphous fluorinated polymer dielectric do not have written support in the specification.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 18, 19, 21-25, 27, 29, 30, 32 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Application Publication No. 2016/0011216, hereinafter Feller in view of Yuan, Y. et al., “Electrochemical Surface Plasmon Resonance Fiber-Optic Sensor: In Situ Detection of Electroactive Biofilms,” Analytical Chemistry 2016 88(15) 7609-7616, hereinafter Yuan.
Regarding claim 18, Feller teaches a measuring configuration for simultaneous measurement of optical and electrical properties of a dielectric medium to be investigated, as well as analytes contained therein (paragraph [0051]), the measuring configuration comprising: a field-effect transistor (item 200) having a gate electrode (items 90, 209 and 215); a surface plasmon resonance sensor (item 90) having an active surface (paragraph [0057]), said gate electrode of said field-effect transistor forming said active surface of said surface plasmon resonance sensor (figure 8A), and containing charge carriers (paragraph [0056]) which are oscillated by electromagnetic radiation (paragraph [0051]); a sample chamber for receiving the dielectric medium (abstract, paragraph [0052] and item 111), said sample chamber disposed such that the optical and electrical properties of the dielectric medium can be recorded simultaneously (paragraph [0052]); an electromagnetic radiation source (item 85) arranged and configured such that a portion of the energy of the electromagnetic radiation incident on the surface of the gate electrode is absorbed by the gate electrode (figure 8A); a detector (item 95) of said surface plasmon resonance sensor for measuring the intensity of the electromagnetic radiation reflected from the surface of the gate electrode (figure 8A).
Feller fails to teach said surface plasmon resonance sensor including an optical fiber including an electrical contact, said optical fiber having an optically reflective and electrically conductive surface; said electrical contact of said optical fiber forming the gate electrode of the measuring configuration; and the reflective surface of said optical fiber being guided into said sample chamber such that said dielectric medium can be contacted with the reflective surface.
Yuan teaches an electrochemical surface plasmon sensor which utilizes an optical fiber which is coated in gold which allows for the detection of both the electrochemical information and the plasmon wave and allows for the insertion into various hard-to-reach environments for in situ detection (Yuan, page 7610, columns 1-2, paragraphs 2-1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized an optical fiber having an optically reflective and electrically conductive surface which forms the gate electrode in each of the sample chambers because it would allow for the insertion of the sensor into various hard-to-reach environments for in situ detection (Yuan, page 7610, columns 1-2, paragraphs 2-1).
Regarding claim 19, Feller teaches wherein said field-effect transistor has a source electrode (paragraph [0056] and item 211), a drain electrode (paragraph [0056] and item 212), a substrate (paragraph [0056]), a floating gate electrode (paragraph [0056] and item 208) and a semiconducting material (paragraph [0056]); said sample chamber is: disposed spatially separate from said field-effect transistor, wherein said gate electrode of said field-effect transistor is connected to said active surface of said surface plasmon resonance sensor contacting the dielectric medium in said sample chamber where a Ag/AgCI reference electrode is used to set a stable reference potential (paragraph [0056]).
Regarding claim 21, modified Feller teaches further comprising a number of metal layers formed of gold disposed on said gate electrode (Yuan, page 7610, columns 1-2, paragraphs 2-1 and page 7611, column 2, paragraph 3).
Regarding claim 22, modified Feller teaches wherein selected ones of said metal layers are attached to said gate electrode in a planar manner, or in a form of nanostructures (Yuan, page 7610, columns 1-2, paragraphs 2-1 and page 7611, column 2, paragraph 3).
Regarding claim 23, modified Feller teaches said nanostructures have a spherical, ellipsoid, tetrahedral, pyramid, cuboidal, cylindrical, tetrapod, or stellate shape, or combinations thereof (page 7611, column 1, paragraph 1 and column 2, paragraph 2).
Regarding claim 24, modified Feller teaches said optical fiber has a core which functions as said gate electrode and is coated with said number of metal layers (Yuan, page 7610, columns 1-2, paragraphs 2-1 and page 7611, column 2, paragraph 3).
Regarding claim 25, Feller teaches further comprising a dielectric intermediate layer disposed on said gate electrode (paragraph [0058], AgCl).
Regarding claim 27, Feller teaches further comprising a conductive layer disposed on said gate electrode (item 112).
Regarding claim 29, modified Feller teaches said number of metal layers is a plurality of said metal layers and the gold layer having a thickness of from 10 nm to 200 nm (Yuan, page 7611, column 2, paragraph 3).
Feller and Yuan fail to teach all of the metal layers have a thickness of from 10 nm to 200 nm.
It would have been obvious to one of ordinary skill in the art before the effective fling date of the claimed invention, to determine, through routine experimentation, the optimum metal layer thickness to a range of 10 to 200 nm which would allow the desired adhesion of the gold to the fiber (Yuan, page 7611, column 2, paragraph 3) (MPEP § 2144.05 (II)).
Regarding claim 30, modified Feller teaches wherein all of said metal layers are attached to said gate electrode in a planar manner (Yuan, page 7610, columns 1-2, paragraphs 2-1 and page 7611, column 2, paragraph 3).
Regarding claim 32, Feller teaches wherein said electromagnetic radiation source is configured to output light having a wavelength of from 360 nm to 2000 nm (paragraph [0052]).
The claimed range overlaps or falls within the prior art range; in cases where the claimed range overlaps or falls within the prior art range, a prima facie case of obviousness of the range exists. It would have been obvious to one having ordinary skill in the art to have selected the portion of wavelength in the range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding claim 37, Feller teaches all limitations of claim 32; however, Feller fails to teach wherein said electromagnetic radiation source is configured to couple light into said optical fiber.
Yuan teaches an electrochemical surface plasmon sensor which utilizes an optical fiber which is coating in gold which allows for the detection of both the electrochemical information and the plasmon wave and allows for the insertion into various hard-to-reach environments for in situ detection (Yuan, page 7610, columns 1-2, paragraphs 2-1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized an optical fiber having an optically reflective and electrically conductive surface which forms the gate electrode in the sample chamber because it would allow for the insertion of the sensor into various hard-to-reach environments for in situ detection (Yuan, page 7610, columns 1-2, paragraphs 2-1).
Claim(s) 26 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feller and Yuan as applied to claims 25 and 27, respectively, above, and further in view of Gandhi, M. S. A. et al., “Recent Advances in Plasmonic Sensor-Based Fiber Optic Probes for Biological Applications,” Applied Sciences 2019 9(5) 949, hereinafter Gandhi.
Regarding claim 26, Feller and Yuan teach all limitations of claim 25; however, they fail to teach said dielectric intermediate layer is formed of a material selected from the group consisting of: a fluorinated polymer dielectric, an amorphous fluorinated polymer dielectric, a self-assembled monolayer of organic molecules, a polymer layer, and a metal oxide layer.
Gandhi teaches a plasmonic sensor which has a Teflon AF layer as the dielectric buffer for long-range surface plasmons wavelength-modulated sensor (Gandhi, page 9, paragraph 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized a layer of Teflon AF as the dielectric buffer because it would provide a long-range surface plasmons wavelength-modulated sensor (Gandhi, page 9, paragraph 1).
Regarding claim 28, Feller and Yuan teach all limitations of claim 27; however, they fail to teach said conductive layer is formed of indium tin oxide, fluorine-doped tin oxide, aluminum zinc oxide, antimony tin oxide, molybdenum(IV) sulfide, or graphene.
Gandhi teaches a plasmonic sensor which has a layer of graphene added to the metal layer to enhance the sensitivity and resolution of SPR sensors (Gandhi, page 2, paragraph 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have added a graphene layer to the conductive layer because it would enhance the sensitivity and resolution of SPR sensors (Gandhi, page 2, paragraph 2).
Claim(s) 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feller and Yuan as applied to claim 18 above, and further in view of United States Application Publication No. 2012/0134880, hereinafter Kurkina.
Regarding claim 34, Feller and Yuan teach all limitations of claim 31; however, they fail to teach a control and processing unit being: connected to said source electrode, said drain electrode, and said gate electrode of said field-effect transistor, and is configured to specify a voltage at said gate electrode and to determine the conductivity of said semiconducting material; and/or connected to said detector and is configured to chart an intensity of reflected electromagnetic radiation.
Kurkina teaches a device for the detection of analytes using surface plasmons and FETs in which a computer is utilized for the control of the processes so that there is a unique association between each sample and the FETs on the chip and an equally unique and unambiguous association between the detector readouts and the individual FETs (Kurkina, paragraph [0017]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have added a control and processing unit connected to the source, drain and gate electrode to specify a voltage at the gate and determine the conductivity because it would allow for a unique association between each sample and the FETs on the chip and an equally unique and unambiguous association between the detector readouts and the individual FETs (Kurkina, paragraph [0017]).
Regarding claim 35, Feller and Yuan teach all limitations of claim 31; however, they fail to teach said sample chamber is one of a plurality of sample chambers for receiving the dielectric medium; and said gate electrode is one of a plurality of gate electrodes, wherein each of said gate electrodes is allocated to one of said sample chambers and forms the active surface and/or is connected to said active surface of said surface plasmon resonance sensor of a respective one of said sample chambers.
Kurkina teaches a device for the detecting of one or more analytes in which a plurality of FETs are utilized for the detecting of the same or a plurality of analytes across multiple sensors (Kurkina, paragraph [0017]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized a plurality of sample chambers and a plurality of gate electrodes because it would allow for the detection of the same or a plurality of analytes across multiple sensors (Kurkina, paragraph [0017]).
Regarding claim 36, modified Feller teaches said optical fiber is a plurality of electrically conductive optical fibers each having an optically reflective surface (see supra, an optical fiber is added to each sample chamber), wherein said optically reflective surface of each of said optical fibers is guided into a respective one of said sample chambers (see supra), such that the dielectric medium can be contacted with said optically reflective surface and wherein each of said optical fibers contains an electrical contact and forms said gate electrode of said respective sample chamber (see supra).
Response to Arguments
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive.
Regarding applicant’s argument that a person of ordinary skill in the art would understand that dielectric products sold under the trademarks “Teflon AF” and “Cytop” are fluorinated polymer dielectrics and amorphous fluorinated polymer dielectrics and therefore is not new matter is not found persuasive. The recitations of fluorinated polymer dielectrics and amorphous fluorinated polymer dielectrics are broader than the recitations of “Teflon AF” and “Cytop” and the specification lacks written description for the broader recitations as the broader recitations would include other chemicals which are not “Teflon AF” and “Cytop.” As such claim 26 lacks written description and is rejected under 112(a).
Regarding applicant’s argument that Yuan does not teach, suggest or otherwise provide any motivation to use the optical fiber to make FET-based measurements is not found persuasive. The examiner does agree that Yuan does not specifically teach using the optical fiber to make FET-based measurements, however, Yuan does teach that the electrically conductive coatings on the optical fiber is utilized as an electrode. Feller teaches a glass surface which is in contact with an electrode which contacts the gate of the FET. Therefore, the glass surface of Feller is considered to already have an electrically conductive surface (the claim does not specify what amount or where the electrically conductive surface is on the optical fiber (glass surface) and therefore as long as there is a portion of the glass surface which touches an electrically conductive surface, the glass surface would read on this limitation). Therefore, the only modification that needs to occur is to change the electrically conductive glass surface of Feller with the electrically conductive optical fiber of Yuan to arrive at the claimed invention.
In response to applicant's argument that Yuan is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Yuan is analogous art as Yuan is teaching an SPR device which has a secondary function which utilizes an electrical measurement. The fact that Yuan doesn’t teach any FET-based measurements, doesn’t change that Yuan is analogous art since Yuan is teaching a combination sensor which has one of the same functions and a second function which utilizes similar functions.
Regarding applicant’s argument that Yuan does not provide any teaching or suggestion to the skilled person that would guide that person on how such an optical fiber could be integrated into a combined SPR and FET measuring configuration is not persuasive. As discussed above, Feller teaches most of the limitations including an electrically conductive glass surface with the only different being that Feller uses a glass surface and Yuan using an optical fiber. One of ordinary skill in the art would have been able to replace the electrically conductive glass surface of Feller with the electrically conductive optical fiber of Yuan to arrive at the claimed invention as both structures function as an electrode and an optically transmissible surface.
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 MATTHEW D KRCHA whose telephone number is (571)270-0386. The examiner can normally be reached M-Th 7am-5pm.
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/MATTHEW D KRCHA/ Primary Examiner, Art Unit 1796