DETAILED ACTION
Table of Contents
I. Notice of Pre-AIA or AIA Status 3
II. Claim Objections 3
III. Claim Rejections - 35 USC § 102 3
A. Claims 11, 12, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the article by Himori, et al. entitled “Control of Potential Response to Small Biomolecules with Electrochemically Grafted Aryl-Based Monolayer in Field-Effect-Transistor-Based Sensors”, Langmuir, 2019, pp. 3701-3709 (“Himori”). 4
B. Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2003/0230338 (“Menezes”). 4
IV. Claim Rejections - 35 USC § 103 5
A. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Menezes. 6
V. Allowable Subject Matter 6
Conclusion 7
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I. 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 .
II. Claim Objections
Claims 3, 11, and 13 are objected to because of the following informalities:
In claim 3, line 1, after “Claim” insert a “1” or a “2” since a number is lacking.
In claim 11, replace “nm2” with “nm2” for correct nomenclature.
In claim 14, replace “cm2” with “cm2” for correct nomenclature.
Appropriate correction is required.
III. 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
A. Claims 11, 12, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the article by Himori, et al. entitled “Control of Potential Response to Small Biomolecules with Electrochemically Grafted Aryl-Based Monolayer in Field-Effect-Transistor-Based Sensors”, Langmuir, 2019, pp. 3701-3709 (“Himori”).
With regard to claims 11 and 12, Himori discloses,
11. (Original) A thin film comprising:
[1] a layer with an aminophenyl group [Fig. 1b, p. 3702],
[2] wherein the aminophenyl group has a denseness of 10 molecules/nm2 or more.
12. (Original) The thin film according to Claim 11, wherein the thin film has a thickness of 10 nm or less [Table 2, p. 3704].
Table 2 (p. 3704) gives a thickness of 10 nm for the 5-cycle process that has a surface density of 3.48×10-9 mol/cm2. Using the conversion factors of 107 nm/cm and Avogadro’s number 6.022×1023/mol, the surface density of the nitrophenyl molecules that are reduced to the aminophenyl molecules is about 21 molecules/nm2.
With regard to claims 14 and 15, Himori further discloses,
14. (Currently Amended) An electrochemical biosensor comprising the thin film according to Claim 11 on a surface of an electrode [abstract; Fig. 1a; Introduction].
15. (Original) The electrochemical biosensor according to Claim 14, further comprising a field-effect transistor including the electrode, or a field-effect transistor including a gate electrode coupled to the electrode [abstract; Fig. 1a; Introduction].
B. Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2003/0230338 (“Menezes”).
With regard to claims 1, Menezes discloses,
1. (Currently Amended) A method for producing a thin film, comprising (a)-(e) in order:
(a) providing an electrically conductive substrate 12 [i.e. ITO on glass (¶ 39) or Cu foil or “other metal substrate” (¶ 45)];
(b) using a first precursor to form a first layer [first CIS molecular sub-layer of absorber 13 formed by first electrodeposition cycle] on a surface of the electrically conductive substrate 12 [¶ 44: “The plating electrolyte 20 contains dissolved ions of each of the elements of Cu, In and/or Se needed to produce the desired composition.” Also ¶ 59];
(c) removing at least part of an unreacted material from the first layer [¶ 59: “The solution is flushed out after each CIS molecular layer.”];
(d) electrochemically bonding a second precursor onto a surface of the electrically conductive substrate 12 or to the first layer to form a second layer [¶ 59: “The deposition is by applying a potential pulse to produce a molecular layer of CIS under quiescent conditions to avoid the mass transport and polycrystallinity.” (emphasis added)]; and
(e) repeating (c) and (d) [¶ 59: “The process is repeated until a desired thickness is attained for the absorber layer 13.”].
With regard to claim 5, Menezes further discloses,
5. (Currently Amended) The production method according to Claim 1, wherein the first and second precursors are the same material [i.e. the same solution described in ¶ 44 is applied after each time the solution is flushed].
IV. 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 of this title, 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.
A. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Menezes.
Claim 2 reads,
2. (Currently Amended) The production method according to Claim 1, wherein (e) is repeated two or more times.
Although the number of cycle repetitions is not stated, repeating step (e), i.e. steps (c) and (d) two more times is obvious in order to obtain the desired thickness. As such, the number of repetitions amounts to obvious duplication or process steps. The courts have held that mere duplication of parts has no patentable significance unless a new or unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
V. Allowable Subject Matter
Claim 3, 4, 6-10, 13, and 16-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 3, 4, 6-10, 13, and 16-20 read,
3. (Currently Amended) The production method according to Claim [[ 1 or 2]], wherein the step (c) is electrochemically performed.
4. (Currently Amended) The production method according to Claim 1, wherein the step (c) is performed by an ultrasonic cleaning.
6. (Currently Amended) The production method according to Claim 1, wherein the first and second precursors are each individually selected from diazo aromatic compounds.
7. (Currently Amended) The production method according to Claim 1, wherein the first and second precursors are nitrophenyl diazonium, and the first and second layers are converted into an aminophenyl group by an electrochemical reduction treatment.
8. (Currently Amended) The production method according to Claim 1, wherein the electrically conductive substrate is an electrode of an electrochemical biosensor, and the thin film is formed on a surface of the electrode.
9. (Original) A method for producing an electrochemical biosensor including an electrode, the method comprising: forming the thin film on a surface of the electrode by the method according to Claim 8.
10. (Original) The method for producing an electrochemical biosensor according to Claim 9, further comprising a field-effect transistor including the electrode, or a field-effect transistor including a gate electrode coupled to the electrode.
13. (Currently Amended) The thin film according to Claim 11, wherein the thin film has a charge transfer resistance (Rct) of 50 Ω-cm2 or more.
16. (New) The production method according to Claim 2, wherein (c) is electrochemically performed.
17. (New) The production method according to Claim 2, wherein (c) is performed by an ultrasonic cleaning.
18. (New) The production method according to Claim 2, wherein the first and second precursors are the same material.
19. (New) The production method according to Claim 3, wherein the first and second precursors are the same material.
20. (New) The production method according to Claim 4, wherein the first and second precursors are the same material.
The prior art does not reasonably teach or suggest—in the context of each of the above claims—the features recited therein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIK KIELIN whose telephone number is (571)272-1693. The examiner can normally be reached Mon-Fri: 10:00 AM-7:00 PM.
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Signed,
/ERIK KIELIN/
Primary Examiner, Art Unit 2814