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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
2. Claims 5 and 7 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 recites the conductive material is deposited as an ink comprising nanoparticles or microparticles. The recitation of “nanoparticles” does not further limit the conductive material being protuberances having a height of at least 75 microns as recited in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
3. 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 Robinson et al. (CN109071610) and Radzilowski et al. (US 2018/0242458).
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.
However, Robinson et al. teach a method for diagnosing and testing virus infection using a functionalized with conductive nanoparticles/microparticles of different sizes depending on the application on a substrate (see pages 4-5 and 33). Moreover, Radzilowski et al. teach preparing conductive trace by dispensing conductive ink comprising either nanoparticles or microparticles on a substrate using jet printing method [0007]. Therefore, it would have been obvious to one of ordinary skill in the art to substitute nanoparticles of Yang et al. with microparticles to yield functionalized electrode for different application such as to detect virus.
Claim 2. Yang et al. in view of Robinson et al. teach the protuberances have a diameter of not greater than 10 millimeter 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 (nanoparticles (reads on protuberances) have diameter/width of nanostructure is less than 1 millimeter (see page 33) and surface area of 100 nm2 to about 250000nm2 which is less than or equal to 200 square millimeter (mm2) and comprise at least one nanostructure therein; see pages 25 and 33-34).
Claim 7. Yang et al. teach the particles are nanoparticles having a diameter of at least 4 nanometers to not greater than 1 micron (nanoparticle size of about 30-50 nm; see section Micro-electrode array fabrication on page 3).
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. Yang et al. in view of Robinson 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 (Robinson et al. teach nanostructure with length, width and height in 1000 microns to 1 microns; see page 33).
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.
4. Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al., Robinson et al. and Radzilowski et al. as applied to claim 1 above, and further in view of Cantu et al. (Sensors 2018, 3719).
Claim 20. Yang 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 11/25/2025 have been fully considered but they are not persuasive. Applicant argues that Yang mentions 3-D printing, however the array disclosed are flat, two dimensional. 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 nanoparticles which inherently has a height disposed on the substrate would yield 3-D array.
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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/GURPREET KAUR/
Primary Examiner
Art Unit 1759
Prosecution Insights