Of youDETAILED 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 .
Election/Restrictions
Applicant’s election without traverse of claims 6-29 in the reply filed on January 7, 2026 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-11, 13, 14-20 and 22-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites the limitation "the aldehyde group" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "said protein solution" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the normal" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "said protein molecules" in lines 5 and 6. There is insufficient antecedent basis for this limitation in the claim.
For claim 7, the phrase “after hydroxylating the surface of said plurality of sensing areas and forming a self-assembled monolayer film including the aldehyde group, dripping said protein solution to said sensing area and applying an external electric field to said sensing layer at an external angle with respect to the normal of said substrate” is a process limitation in a claim directed to a device (MPEP 2173.05(p)). As such, the claim is indefinite as one cannot determine if infringement occurs when the device is formed, or if infringement only occurs when a protein solution and external electric field is applied to the sensing layer.
Claim 8 recites the limitation "the material" in line 2. There is insufficient antecedent basis for this limitation in the claim.
For claim 9, the phrase “further forming a cross-linked molecular film on the self-assembled monolayer film” is a process limitation in a claim directed to a device (MPEP 2173.05(p)). As such, the claim is indefinite as one cannot determine if infringement occurs when the device is formed, or if infringement only occurs when a cross-linked molecular film is formed on a self-assembled monolayer film.
Claim 10 recites the limitation "the receptor binding domain" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the superfamily and subfamily" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim.
For claim 10, it is unclear what structural element is being described by the claim as the claims do not recite an additional structural element of the chip as the receptor binding domain is not properly recited as a structural element in the claim.
For claim 11, it is unclear what structural element is being described by the claim as the external angle with respect to normal is directed to the application of an electric field to the sensing layer, and is not a structural element of the claim.
Claim 13 recites the limitation "the aldehyde group" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "said protein solution" in lines 3 and 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the normal" in 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "said protein molecules" in line 6. There is insufficient antecedent basis for this limitation in the claim.
For claim 13, the phrase “after hydroxylating the surface of said plurality of sensing areas and forming a self-assembled monolayer film including the aldehyde group, dripping said protein solution to said plurality of sensing areas and applying an external electric field to said plurality of sensing areas at an external angle with respect to the normal” is a process limitation in a claim directed to a device (MPEP 2173.05(p)). As such, the claim is indefinite as one cannot determine if infringement occurs when the device is formed, or if infringement only occurs when a protein solution and external electric field is applied to the sensing layer.
Claim 14 recites the limitation "the material" in line 2. There is insufficient antecedent basis for this limitation in the claim.
For claim 15, the phrase “further forming a cross-linked molecular film on the self-assembled monolayer film” is a process limitation in a claim directed to a device (MPEP 2173.05(p)). As such, the claim is indefinite as one cannot determine if infringement occurs when the device is formed, or if infringement only occurs when a cross-linked molecular film is formed on a self-assembled monolayer film.
Claim 16 recites the limitation "the receptor binding domain" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "said protein molecules" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the superfamily and subfamily" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim.
For claim 16, it is unclear what structural element is being described by the claim as the claims do not recite an additional structural element of the chip as the receptor binding domain is not properly recited as a structural element in the claim.
Claim 17 recites the limitation "the normal" in line 2. There is insufficient antecedent basis for this limitation in the claim.
For claim 17, it is unclear what structural element is being described by the claim as the external angle with respect to normal is directed to the application of an electric field to the sensing layer, and is not a structural element of the claim.
Claim 18 recites the limitation "the outer side" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the aldehyde group" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "said protein solution" in lines 3 and 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the normal" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "said protein molecules" in line 6. There is insufficient antecedent basis for this limitation in the claim.
For claim 19, the phrase “after hydroxylating the surface of said plurality of sensing areas and forming a self-assembled monolayer film including the aldehyde group, dripping said protein solution to said plurality of sensing areas and applying an external electric field to said plurality of sensing areas at an external angle with respect to the normal” is a process limitation in a claim directed to a device (MPEP 2173.05(p)). As such, the claim is indefinite as one cannot determine if infringement occurs when the device is formed, or if infringement only occurs when a protein solution and external electric field is applied to the sensing layer.
For claim 20, the phrase “further forming a cross-linked molecular film on the self-assembled monolayer film” is a process limitation in a claim directed to a device (MPEP 2173.05(p)). As such, the claim is indefinite as one cannot determine if infringement occurs when the device is formed, or if infringement only occurs when a cross-linked molecular film is formed on a self-assembled monolayer film.
Claim 22 recites the limitation "the receptor binding domain" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the superfamily and subfamily" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim.
For claim 22, it is unclear what structural element is being described by the claim as the claims do not recite an additional structural element of the chip as the receptor binding domain is not properly recited as a structural element in the claim.
For claim 23, it is unclear what structural element is being described by the claim as the external angle with respect to normal is directed to the application of an electric field to the sensing layer, and is not a structural element of the claim.
Claim 24 recites the limitation "the outer side" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 25 recites the limitation "the aldehyde group" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 25 recites the limitation "said protein solution" in lines 3 and 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 25 recites the limitation "the normal" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 25 recites the limitation "said protein molecules" in line 6. There is insufficient antecedent basis for this limitation in the claim.
For claim 25, the phrase “after hydroxylating the surface of said plurality of sensing areas and forming a self-assembled monolayer film including the aldehyde group, dripping said protein solution to said plurality of sensing areas and applying an external electric field to said plurality of sensing areas at an external angle with respect to the normal” is a process limitation in a claim directed to a device (MPEP 2173.05(p)). As such, the claim is indefinite as one cannot determine if infringement occurs when the device is formed, or if infringement only occurs when a protein solution and external electric field is applied to the sensing layer.
Claim 26 recites the limitation "the material" in line 2. There is insufficient antecedent basis for this limitation in the claim.
For claim 27, the phrase “further forming a cross-linked molecular film on the self-assembled monolayer film” is a process limitation in a claim directed to a device (MPEP 2173.05(p)). As such, the claim is indefinite as one cannot determine if infringement occurs when the device is formed, or if infringement only occurs when a cross-linked molecular film is formed on a self-assembled monolayer film.
Claim 28 recites the limitation "the receptor binding domain" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 28 recites the limitation "the superfamily and subfamily" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim.
For claim 28, it is unclear what structural element is being described by the claim as the claims do not recite an additional structural element of the chip as the receptor binding domain is not properly recited as a structural element in the claim.
For claim 29, it is unclear what structural element is being described by the claim as the external angle with respect to normal is directed to the application of an electric field to the sensing layer, and is not a structural element of the claim.
Claim Rejections - 35 USC § 102
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(s) 6, 7 and 9-11 is/are rejected under 35 U.S.C. 102(a)91) as being anticipated by Wang et al., (US 2011/0152654).
For claim 6, Wang et al., teach an analyte sensor comprising a base layer (substrate, paragraph 0077, figure 2A #102), a conductive layer comprising one or more electrodes (circuit layers, paragraph 0077, figure 2A # 104), an analyte sensing layer disposed on the conductive layer (sensing layer, paragraph 0079, figure 2A #110), and an analyte modulating layer formed on the analyte sensing layer (shielding layer, paragraphs 0012, 0081, figure 2A #112) wherein the analyte modulating layer includes an opening corresponding to the analyte sensing layer (paragraph 0078, figure 2A #108).
For claims 7 and 9, Wang et al., teach that analyte modulating layer comprising a hydroxyl layer (paragraphs 0011, 0043). The Examiner notes that the claims are being read in light of the rejections under 35 U.S.C. 112(b) in which the claims are indefinite for reciting a process limitation in a claim directed to a device.
For claim 10, the Examiner notes that the claims do not positively recite a chip comprising a receptor binding domain from the superfamily or subfamily of CoV_Spike_S1_RBD, thus the claim does not recite a structural element. As such, the Examiner contends that the device of Wang et al., is capable of being treated with a receptor binding domain from the superfamily or subfamily of CoV_Spike_S1_RBD, and therefore meets the claim limitations.
For claim 11, the Examiner notes that the claimed external angle is not a structural element of the device, and contends that the sensor of Wang et al., meets the claim limitations in that it can be treated at an external angle between -15° and 15°.
Claim(s) 6, 7, 9-13, 15-20, 22-25, and 27-29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Co et al., (US 2004/0200734).
For claim 6, Co et al., teach a sensor for biomolecules comprising a substrate (paragraph 0028, figure 1 #15), a plurality of plurality of electrodes (circuit layers, paragraph 0028, figure 1 #’s 11, 12), a plurality of sensing elements (paragraph 0028, figure 1 #14) and an insulating layer between the electrodes and on the sensing element (shielding layer, paragraph 0028, figure 1 #17), and a junction (opening, paragraph 0028, figure 1 #16). The Examiner notes that reference to Co et al., teach an array of sensors (paragraphs 0034, 0071, figure 7) which reads on the plurality circuit layers and sensing layers.
For claims 7 and 8, the Examiner notes that the claims are being read in light of the rejection under 35 U.S.C. 112(b) in which the claims are indefinite for reciting a process limitation in claims directed to a device. As such, the Examiner contends that the sensor of Co et al., meets the claim limitations in that the prior art sensor is capable of being treated in the manner recited in the claims.
For claim 10, the Examiner notes that the claims do not positively recite a chip comprising a receptor binding domain from the superfamily or subfamily of CoV_Spike_S1_RBD, thus the claim does not recite a structural element. As such, the Examiner contends that the device of Co et al., is capable of being treated with a receptor binding domain from the superfamily or subfamily of CoV_Spike_S1_RBD, and therefore meets the claim limitations.
For claim 11, the Examiner notes that the claimed external angle is not a structural element of the device, and contends that the sensor of Co et al., meets the claim limitations in that it can be treated at an external angle between -15° and 15°.
For claim 12, Co et al., teach a sensor for biomolecules comprising a substrate (paragraph 0028, figure 1 #15), a plurality of plurality of electrodes (circuit layers, paragraph 0028, figure 1 #’s 11, 12), a plurality of sensing elements (paragraph 0028, figure 1 #14) and an insulating layer between the electrodes and on the sensing element (shielding layer, paragraph 0028, figure 1 #17), and a junction (opening, paragraph 0028, figure 1 #16). The Examiner notes that reference to Co et al., teach an array of sensors (paragraphs 0034, 0071, figure 7) which reads on the plurality circuit layers and sensing layers.
For claims 13 and 15, the Examiner notes that the claims are being read in light of the rejection under 35 U.S.C. 112(b) in which the claims are indefinite for reciting a process limitation in claims directed to a device. As such, the Examiner contends that the sensor of Co et al., meets the claim limitations in that the prior art sensor is capable of being treated in the manner recited in the claims.
For claim 16, the Examiner notes that the claims do not positively recite a chip comprising a receptor binding domain from the superfamily or subfamily of CoV_Spike_S1_RBD, thus the claim does not recite a structural element. As such, the Examiner contends that the device of Co et al., is capable of being treated with a receptor binding domain from the superfamily or subfamily of CoV_Spike_S1_RBD, and therefore meets the claim limitations.
For claim 17, the Examiner notes that the claimed external angle is not a structural element of the device, and contends that the sensor of Co et al., meets the claim limitations in that it can be treated at an external angle between -15° and 15°.
For claim 18, Co et al., teach a sensor for biomolecules comprising a substrate (paragraph 0028, figure 1 #15), a plurality of plurality of electrodes (circuit layers, paragraph 0028, figure 1 #’s 11, 12), a plurality of sensing elements contacting the electrodes (paragraph 0028, figure 1 #14) and an insulating layer between the electrodes and on the sensing element (shielding layer, paragraph 0028, figure 1 #17). The Examiner notes that reference to Co et al., teach an array of sensors (paragraphs 0034, 0071, figure 7) which reads on the plurality circuit layers and sensing layers. The Examiner notes that the claim is being read in light of the rejection under 35 U.S.C. 112(b) in which the phrase “the other side” lacks antecedent basis. The claim does not provide an orientation for the circuit layers by which one can determine what structure “the other side” references, thus the Examiner has read the contact points between the prior art sensing element and the electrodes as “the other side.”
For claims 19 and 20, the Examiner notes that the claims are being read in light of the rejection under 35 U.S.C. 112(b) in which the claims are indefinite for reciting a process limitation in claims directed to a device. As such, the Examiner contends that the sensor of Co et al., meets the claim limitations in that the prior art sensor is capable of being treated in the manner recited in the claims.
For claim 22, the Examiner notes that the claims do not positively recite a chip comprising a receptor binding domain from the superfamily or subfamily of CoV_Spike_S1_RBD, thus the claim does not recite a structural element. As such, the Examiner contends that the device of Co et al., is capable of being treated with a receptor binding domain from the superfamily or subfamily of CoV_Spike_S1_RBD, and therefore meets the claim limitations.
For claim 23, the Examiner notes that the claimed external angle is not a structural element of the device, and contends that the sensor of Co et al., meets the claim limitations in that it can be treated at an external angle between -15° and 15°.
For claim 24, Co et al., teach a sensor for biomolecules comprising a substrate (paragraph 0028, figure 1 #15), a plurality of plurality of electrodes (circuit layers, paragraph 0028, figure 1 #’s 11, 12), a plurality of sensing elements contacting the electrodes (paragraph 0028, figure 1 #14) and an insulating layer between the electrodes and on the sensing element (shielding layer, paragraph 0028, figure 1 #17). The Examiner notes that reference to Co et al., teach an array of sensors (paragraphs 0034, 0071, figure 7) which reads on the plurality circuit layers and sensing layers. The Examiner notes that the claim is being read in light of the rejection under 35 U.S.C. 112(b) in which the phrase “the other side” lacks antecedent basis. The claim does not provide an orientation for the circuit layers by which one can determine what structure “the other side” references, thus the Examiner has read the contact points between the prior art sensing element and the electrodes as “the other side.”
For claims 25 and 27, the Examiner notes that the claims are being read in light of the rejection under 35 U.S.C. 112(b) in which the claims are indefinite for reciting a process limitation in claims directed to a device. As such, the Examiner contends that the sensor of Co et al., meets the claim limitations in that the prior art sensor is capable of being treated in the manner recited in the claims.
For claim 28, the Examiner notes that the claims do not positively recite a chip comprising a receptor binding domain from the superfamily or subfamily of CoV_Spike_S1_RBD, thus the claim does not recite a structural element. As such, the Examiner contends that the device of Co et al., is capable of being treated with a receptor binding domain from the superfamily or subfamily of CoV_Spike_S1_RBD, and therefore meets the claim limitations.
For claim 29, the Examiner notes that the claimed external angle is not a structural element of the device, and contends that the sensor of Co et al., meets the claim limitations in that it can be treated at an external angle between -15° and 15°.
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.
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) 8, 14, 21, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Co et al., (US 2004/0200734) in view of Elibol et al., (US 2013/0281325).
Regarding claims 8, 14, 21, and 26, Co et al., do not teach an insulating layer being silicon mononitride or silicon oxynitride.
Elibol et al., teach a sensor array wherein silicon oxynitride is utilized as an insulating layer on a substrate (paragraph 0015, figure 1 #135). The Examiner is reading this combination as a substitution of one known element for another to obtain predictable results which would have been obvious to one of ordinary skill in the art. Silicon oxynitride is known in the art for forming insulating layers, thus one of ordinary skill in the art would have been motivated to utilize silicon oxynitride as an insulating layer as taught by the prior art. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Co et al., wherein silicon oxynitride is utilized as an insulating layer as taught by Elibol et al., as substitution of one known element for another to obtain predictable results requires only routine skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DWAN A GERIDO/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797
Prosecution Insights