DETAILED ACTION
Status of the Claims
1. Claims 1, 2, 5, 7, 10, 11, 14, 16, 18, 20, 23 and 25 are being examined in this application.
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/30/2026 has been entered.
Status of the Rejections
3. Rejection of claims 5 and 7 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph is withdrawn in view of applicant’s arguments.
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.
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.
4. Claim(s) 1, 2, 5, 7, 10, 11, 14, 16, 18, 23 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (Sensors and Actuators B, 2016, 600-606) in view of Soleymani et al. (WO2010/025547).
Claims 1, 5 and 11. Yang et al. teach a method of preparing a functionalized electrode (see section Micro-electrode array fabrication and Formulation of Microelectrode array biosensor on pages 3 and 5), comprising:
depositing a conductive material onto the surface of a substrate by droplet-based printing, of particles comprising an electrically-conductive material (aerosol jet printing of silver nanoparticle ink (reads on protuberances) onto transparent glass slide as substrate; see section Micro-electrode array fabrication on page 3), and
functionalizing the surface of the conductive material with a binding reagent that binds to an analyte (functionalized the silver nanoparticles with glucose oxidase; Formulation of Microelectrode array biosensor on page 5).
Yang et al. teach size of nanoparticles is of about 30-50 nm (see section Micro-electrode array fabrication on page 3) but do not teach nanoparticles/protuberances having a height of at least 75 microns, wherein the height of the plurality of protuberances is at least 3x larger than diameter of a protuberance of the plurality of the protuberances.
However, Soleymani et al. teach nanostructured electrodes for biosensing devices wherein the nanostructures could have variety of shapes such as CNT, fiber or hemispherical and comprised of noble metals having height in the range of about 0.5 to 100 microns and diameter in the range of 1 to about 10 microns (page 3, ll. 13-31).
Therefore, it would have been obvious to one of ordinary skill in the art to substitute nanoparticles of Yang et al. with wire-like or nanotube shaped nanostructures because simple substitution of one known element for another is likely to be obvious when predictable results, nanostructure functionalized electrode, are achieved (see MPEP § 2143, B.).
Combined teachings of Yang et al. and Soleymani et al. do not explicitly teach wherein the height of the plurality of protuberances is at least 3x larger than diameter of a protuberance of the plurality of the protuberances. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 I), thus a prima facie case of obviousness exists for constructing nanostructure/protuberances in the claimed range over the ranges disclosed by the prior art.
Claim 2. Yang et al. in view of Soleymani et al. teach the protuberances have a diameter of not greater than 10 millimeter (Soleymani et al. teach diameter in the range of 1 to about 10 microns (page 3, ll. 13-31) and the area of the substrate comprising the protuberances is less than or equal to 200 square millimeter (mm2) and comprise at least one protuberance per mm2 (Yang et al. teach surface area of 15X 30 um2 which is less than or equal to 200 square millimeter (mm2) and comprise at least one nanostructure therein; see conclusion).
Claim 7. Modified Yang et al. teach the particles are nanoparticles having a diameter of at least 4 nanometers to not greater than 1 micron (particles are nanostructures having diameter of about 1 microns (page 3, ll. 13-31).
Claim 10. Yang et al. teach the droplets comprise a solvent, and substrate is maintained at a temperature of 50°C or greater during the deposition of the protuberances to evaporate the solvent (solvent based nanoparticles (reads on protuberances) with droplet size were deposited; see Micro-Electrode Array Fabrication on page 3 and during printing platen temperature was set to 80oC; see Additive Fabrication of Micro electrode; see page 4).
Claim 14. Modified Yang et al. teach the protuberances are individual pillars having a height ranging from 1 micron to 1000 micron and diameter ranging from 0.1 microns to 500 microns (Soleymani et al. teach height in the range of about 0.5 to 100 microns and diameter in the range of 1 to about 10 microns; page 3, ll. 13-31).
Claim 16. Yang et al. teach the protuberances form an open cell lattice (see Fig 2b).
Claim 18. Yang et al. teach sintering the deposited conductive material (sintering was performed after deposition of silver; see page 4, Additive Fabrication of Micro-Scale Polymer Trace). Examiner is construing the limitation of “optionally at a temperature above 100oC for at least 10 minutes” to be an optional method step in the method claim and not a required step of the claimed method.
Claim 23. Yang et al. teach coating the deposited conductive material with a linking molecule comprising a first portion, a second portion, and a linking portion, wherein the first portion of the linking molecule comprises a functional group for attachment of the linking molecule to the surface of the protuberance, the second portion comprises a functional group for attachment of the linking molecule to the binding reagent, and the linking portion of the molecule extends between the first portion and the second portion (glutaraldehyde is used to immobilize glucose oxidase; see page 5, glutaraldehyde inherently comprised of first portion as first aldehyde group, carbon chain as linking portion and second portion as second aldehyde group).
Claim 25. Yang et al. teach reacting the second portion of the linking molecule with the binding reagent, to link the binding reagent to the deposited conductive material (glucose oxidase teach immobilize to electrode via glutaraldehyde, see page 5, i.e. second portion of glutaraldehyde connects the glucose oxidase to the electrode). Examiner is construing the limitation of “binding agent optionally comprises: a protein, such as lectin, an antibody or an antibody fragment…..” to be an optional and not a required for the claimed method.
5. Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. and Soleymani et al. as applied to claim 1 above, and further in view of Cantu et al. (Sensors 2018, 3719).
Claim 20. Yang et al. Soleymani et al. do not teach coating the deposited conductive material with an electrically active material such as carbon nanotubes.
However, Cantu et al. teach aerosol jet printing to design and fabricate electrochemical sensor (see abstract) comprised of printing additional layer of multiwall carbon nanotubes (MWCNT) over carbon working electrode to increase surface area for biofunctionalization of the electrode and improve electronic performance (see section 2.1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention in view of Cantu et al. teaching to print layer of MWCNT’s onto the conductive material of Yang et al. because the MWCNT’s would provide increase in surface area of the electrode for biofunctionalization of the electrode with glucose oxidase and thereby increase performance of the sensor.
Response to Arguments
Applicant's arguments filed 6/30/2026 have been fully considered but they are not persuasive. Applicant argues that Yang teaches the array disclosed are flat, two dimensional and do not teach droplet-based printing as claimed. In response, applicant disclose aerosol jet printing method of fabricating electrode by spraying the substrate with silver nanoparticles of size about 30-50 nm, thus the disclosed aerosol jet printing is droplet-based printing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kumar et al. (WO2009/105045) teach jet printing ink for forming nanostructure such as CNT, metal nanoparticles, needles and biofunctionalized the particles.
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/GURPREET KAUR/
Primary Examiner
Art Unit 1759
Prosecution Insights