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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102
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 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.
Claim 1-4 and 11 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Jen et. al. (JP2021514478A), machine translation.
Regarding claim 1, Jen teaches “a sensor device comprising:” (Abstract, A medical device); “a sensor element” (Page 4 and Fig.3, sensor element 300); “formed of at least one substance selected from the group consisting of graphene, graphene oxide and carbon nanotubes;” (Page 6, The surface-modified graphene layer can be placed on the dielectric layer.); “and a modification molecule immobilized on a surface of the sensor element” (Page 7, self-assembled monolayer on the outer surface of the graphene layer); “via an anchor portion,” (Page 7 and Page 3, π-π stacking interactions to form one or more individual graphenes and π-electron-rich molecules); “the anchor portion including a first moiety containing a polycyclic aromatic ring or a polycyclic heteroaromatic ring” (Page 10, includes polycyclic aromatic hydrocarbons. Examples of polycyclic aromatic hydrocarbons suitable for use in the graphene varicaps described herein can include, but are not limited to, those having 3 to 10 aromatic rings); “and an electron-donating second moiety directly bonded to the first moiety.” (Page 9 and 10, rest of the functional group is directly covalently bonded to one or more carbon atoms of the basic aromatic ring structure. In some embodiments, the polycyclic aromatic hydrocarbon may further comprise a derivative thereof, which may include one or more of hydroxyl, carboxyl, ester, ammonium, amino, diethylamino or boric acid functional groups.)
Regarding claim 2, Jen teaches all of claim 1 as above in addition to “wherein the second moiety contains at least one functional group selected from the group consisting of an amino group, a hydroxy group, an alkoxy group, an alkylamino group and a dialkylamino group.” (Page 10, In some embodiments, the polycyclic aromatic hydrocarbon may further comprise a derivative thereof, which may include one or more of hydroxyl, carboxyl, ester, ammonium, amino, diethylamino or boric acid functional groups.).
Regarding claim 3, Jen teaches all of claim 1 as above in addition to “wherein, the first moiety is selected from the group consisting of anthracene, tetracene, pentacene, benzopyrene, chrysene, pyrene, triphenylene, corannulene, coronene, ovalene, indole, isoindole, benzoimidazole, purine, benzotriazole, quinoline, isoquinoline, quinazoline, quinoxaline, cynoline, pteridine, chromene, isochromene, acridine, xanthene, carbazole and benzo-C-cynoline(en).” (Page 10, In the formula, X .sup.1 .sub.is any linear, branched or cyclic C 1- C .sub.10 alkyl group covalently attached directly to the basic aromatic ring structure, -H, -R .sup.1 OH, -R .sup.2 COOH, -R. .sup.3 COOR .sup.4 , -R .sup.5 NH .sub.3 .sup.+ , -R .sup.6 NH .sub.2 , -R .sup.7 NR .sup.8 , -R .sup.9 NR .sup.10 R .sup.11+ , -R .sup.12 B (OH) .sub.2 or any combination thereof, but these Can be any substituent, not limited to, n is any integer of 3-10, 3-15 or 3-20, and R .sup.1- R .sup.12 are any linear, but not limited to, branched.)
Regarding claim 4, Jen teaches all of claim 2 as above in addition to, “wherein, the first moiety is selected from the group consisting of anthracene, tetracene, pentacene, benzopyrene, chrysene, pyrene, triphenylene, corannulene, coronene, ovalene, indole, isoindole, benzoimidazole, purine, benzotriazole, quinoline, isoquinoline, quinazoline, quinoxaline, cynoline, pteridine, chromene, isochromene, acridine, xanthene, carbazole and benzo-C-cynoline(en).” (Page 10, In the formula, X .sup.1 .sub.is any linear, branched or cyclic C 1- C .sub.10 alkyl group covalently attached directly to the basic aromatic ring structure, -H, -R .sup.1 OH, -R .sup.2 COOH, -R. .sup.3 COOR .sup.4 , -R .sup.5 NH .sub.3 .sup.+ , -R .sup.6 NH .sub.2 , -R .sup.7 NR .sup.8 , -R .sup.9 NR .sup.10 R .sup.11+ , -R .sup.12 B (OH) .sub.2 or any combination thereof, but these Can be any substituent, not limited to, n is any integer of 3-10, 3-15 or 3-20, and R .sup.1- R .sup.12 are any linear, but not limited to, branched.)
Regarding claim 11 Jen teaches a reagent for modification of a surface of a sensor element (Page 3 and 4 and Fig.3, sensor element 300….. The graphene varactors described herein have one graphene layer surfaced through non-covalent π-π stacking interactions between graphene and other compounds such as pyrene, pyrene derivatives and allyl groups) Therefore, the compounds teach to the reagent. Further taught is “containing a modification molecule” (Page 7, self-assembled monolayer on the outer surface of the graphene layer); “including an anchor portion” (Page 3, π-π stacking interactions to form one or more individual graphenes and π-electron-rich molecules); “including a first moiety, which is a polycyclic aromatic ring or a polycyclic heteroaromatic ring” (Page 9, includes polycyclic aromatic hydrocarbons. Examples of polycyclic aromatic hydrocarbons suitable for use in the graphene varicaps described herein can include, but are not limited to, those having 3 to 10 aromatic rings); “and an electron-donating second moiety directly bonded to the first moiety,” (Page 10, rest of the functional group is directly covalently bonded to one or more carbon atoms of the basic aromatic ring structure); “the reagent for modification of a surface of a sensor element immobilizing the modification molecule via the anchor portion onto the surface of the sensor element formed of at least one substance selected from the group consisting of graphene, graphene oxide and carbon nanotubes.” (Page 6, the surface-modified graphene layer can be placed on the dielectric layer.).
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.
Claims 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jen et. al. (JP2021514478A), machine translation in view of Atsuta et. al. (JP 2020046316 A), machine translation.
Regarding claim 5, Jen teaches all of claim 1 as above but does not teach “wherein the modification molecule further comprises a functional portion bonded to the anchor portion.”
Atsuta teaches a molecule detector having an embodiment comprising a first sensor in addition to “wherein the modification molecule” (Page 7, organic probe 257) further comprises a functional portion (Page 8, reactive group) bonded to the anchor portion (Page 8, (hydrogen bonding property to the molecule to be detected and a base portion is preferably a substituted or unsubstituted polycyclic aromatic hydrocarbon group having a polycyclic structure
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Jen to incorporate the teachings of Atsuta wherein the modification molecule further comprises a functional portion bonded to the anchor portion. Doing so would provide a device which creates stronger bonds of molecules.
Regarding claim 6, Jen teaches all of claim 2 as above but does not teach, “wherein the modification molecule further comprises a functional portion bonded to the anchor portion.”
Atsuta teaches a molecule detector of an embodiment comprising a first sensor in addition to “wherein the modification molecule” (Page 7, organic probe 257) further comprises a functional portion (Page 8, reactive group) bonded to the anchor portion (Page 8, (hydrogen bonding property to the molecule to be detected and a base portion is preferably a substituted or unsubstituted polycyclic aromatic hydrocarbon group having a polycyclic structure).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Jen to incorporate the teachings of Atsuta wherein the modification molecule further comprises a functional portion bonded to the anchor portion. Doing so would provide a device which creates stronger bonds of molecules.
Regarding claim 7, Jen teaches all of claim 3 as above but does not teach, “wherein the modification molecule further comprises a functional portion bonded to the anchor portion.”
Atsuta teaches a molecule detector of an embodiment comprising a first sensor in addition to “wherein the modification molecule” (Page 7, organic probe 257) further comprises a functional portion (Page 8, reactive group) bonded to the anchor portion (Page 8, (hydrogen bonding property to the molecule to be detected and a base portion is preferably a substituted or unsubstituted polycyclic aromatic hydrocarbon group having a polycyclic structure ).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Jen to incorporate the teachings of Atsuta wherein the modification molecule further comprises a functional portion bonded to the anchor portion. Doing so would provide a device which creates stronger bonds of molecules.
Regarding claim 8, modified Jen teaches all of claim 5 as above. Jen does not teach “wherein the functional portion has a function of capturing a specific substance, a function of specifically bonding to a specific substance, or a function of blocking adhesion of the specific substance.”
Atsuta teaches “wherein the functional portion has a function of capturing a specific substance, a function of specifically bonding to a specific substance, or a function of blocking adhesion of the specific substance.”
(Page 8, reactive group that reacts with the molecule to be detected 2 and exchanges electrons is used. As the organic substance probe 257, for example, an organic compound having a hydroxy group (—OH), an amino group (—NH .sub.2 ), a cyano group (—CN), or the like as a reactive group for the molecule to be detected 2 is used. However, the reactive group alone may hardly react with the gas component. In such a case, it is preferable to use an organic compound in which a functional group (adjacent group) having an excellent effect of inducing the molecule to be detected 2 is introduced at a site adjacent to the reactive group in order to enhance the hydrogen bonding property and the like.) Therefore, the adjacent group which is part of the reactive group which enhances the hydrogen bonding property teaches to the functional portion having a function of bonding to specific substance.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Jen to incorporate the teachings of Atsuta wherein the functional portion has a function of capturing a specific substance, a function of specifically bonding to a specific substance, or a function of blocking adhesion of the specific substance. Doing so increases sensitivity and selectivity and accuracy of the device.
Regarding claim 9, modified Jen teaches all of claim 6 as above. Jen does not teach, wherein the functional portion has a function of capturing a specific substance, a function of specifically bonding to a specific substance, or a function of blocking adhesion of the specific substance.” (Page 8, reactive group that reacts with the molecule to be detected 2 and exchanges electrons is used. As the organic substance probe 257, for example, an organic compound having a hydroxy group (—OH), an amino group (—NH .sub.2 ), a cyano group (—CN), or the like as a reactive group for the molecule to be detected 2 is used. However, the reactive group alone may hardly react with the gas component. In such a case, it is preferable to use an organic compound in which a functional group (adjacent group) having an excellent effect of inducing the molecule to be detected 2 is introduced at a site adjacent to the reactive group in order to enhance the hydrogen bonding property and the like.) Therefore, the adjacent group which is part of the reactive group which enhances the hydrogen bonding property teaches to the functional portion having a function of bonding to specific substance.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Jen to incorporate the teachings of Atsuta wherein the functional portion has a function of capturing a specific substance, a function of specifically bonding to a specific substance, or a function of blocking adhesion of the specific substance. Doing so increases sensitivity and selectivity and accuracy of the device.
Regarding claim 10, modified Jen teaches all of claim 6 as above. Jen does not teach, wherein the functional portion has a function of capturing a specific substance, a function of specifically bonding to a specific substance, or a function of blocking adhesion of the specific substance.” (Page 8, reactive group that reacts with the molecule to be detected 2 and exchanges electrons is used. As the organic substance probe 257, for example, an organic compound having a hydroxy group (—OH), an amino group (—NH .sub.2 ), a cyano group (—CN), or the like as a reactive group for the molecule to be detected 2 is used. However, the reactive group alone may hardly react with the gas component. In such a case, it is preferable to use an organic compound in which a functional group (adjacent group) having an excellent effect of inducing the molecule to be detected 2 is introduced at a site adjacent to the reactive group in order to enhance the hydrogen bonding property and the like.) Therefore, the adjacent group which is part of the reactive group which enhances the hydrogen bonding property teaches to the functional portion having a function of bonding to specific substance.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Jen to incorporate the teachings of Atsuta wherein the functional portion has a function of capturing a specific substance, a function of specifically bonding to a specific substance, or a function of blocking adhesion of the specific substance. Doing so increases sensitivity and selectivity and accuracy of the device.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Jen et. al. (JP2021514478A), machine translation in view of Atsuta et. al. (JP 2020046316 A), machine translation
Regarding claim 12, Jen teaches all of claim 12 as above but does not teach “wherein the modification molecule further comprises a functional portion bound to the anchor portion.”.
Atsuta teaches “wherein the modification molecule” (Page 7, organic probe 257) further comprises a functional portion (Page 8, reactive group) bonded to the anchor portion (Page 8, (hydrogen bonding property to the molecule to be detected and a base portion is preferably a substituted or unsubstituted polycyclic aromatic hydrocarbon group having a polycyclic structure ).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Jen to incorporate the teachings of Atsuta wherein the modification molecule further comprises a functional portion bonded to the anchor portion. Doing so would provide a device which creates stronger bonds of molecules.
Response to Amendments
Claim Amendments
Applicant’s amendments to claims 1 and 11 have overcome the claim objections set forth in the non-final dated 10/24/2025. Applicant has traversed the 112 rejections set forth in the non-final office action however amended. Examine maintains the rejection prior to amendments however as amendments were filed they have overcome the 112 rejections in the non-final office action dated 10/24/2025.
Information Disclosure Statement Amendments
Examiner has considered all documents listed in the IDS dated 1/3/2023. Examiner has updated IDS forms accordingly.
Response to Arguments
Applicant's arguments filed 1/23/2026 have been fully considered.
Applicant argues that Jen contains no description or suggestion of this direct bonding between the electron-donating second moiety and the first moiety. Therefore, Jen fails to disclose, or even teach or suggest, at least, the anchor portion including a first moiety containing a polycyclic aromatic ring or a polycyclic heteroaromatic ring and an electron-donating second moiety directly bonded to the first moiety.
Examiner maintains the rejection using Jen and further clarified and provided examples of the functional groups found on page 9. Jen (Page 9, The polycyclic aromatic hydrocarbon may further comprise a derivative thereof, which may include one or more of hydroxyl, carboxyl, ester, ammonium, amino, diethylamino or boric acid functional groups.)
Applicant argues as claimed the anchor portion includes "an electron-donating second moiety directly bonded to the first moiety [containing a polycyclic aromatic ring or a polycyclic heteroaromatic ring]," results in a difference in binding affinity between the modification molecule and the sensor element.
Examiner has provided further clarification to the functional groups which teach this binding.
Applicant highlights that the specification states that such binding as above enables a resonance effect that increases the rr-electron density of the aromatic first moiety, thereby enhancing the n-r interaction with the sensor element in a manner not taught or suggested by the prior art.
Examiner maintains that the claimed features are taught by the cited prior art.
Applicant argues that neither reference teaches nor suggests the structural feature recited in claim 1, namely, "an electron-donating second moiety directly bonded to a polycyclic aromatic first moiety," that gives rise to the unexpected technical effect.
Examiner maintains the art rejection set in the non-final dated 10/24/2025 and provided further details surrounding the binding of electron-donating second moiety.
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.
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/V.E.H./Examiner, Art Unit 1798
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798