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 .
Status of the Claims
The Amendment filed December 29, 2025 has been entered. Claims 6, 8-9, and 21-24 have been amended; claims 30-33 are new; and claims 3, 5, 7, 10-11, 15, 19, and 25-28 have been cancelled. Claims 1-2, 4, 6, 8-9, 12-14, 16-18, 20-24 and 29-33 are currently pending and examined herein.
Status of the Rejection
Applicant’s amendments to the Claims have overcome each objection previously set forth in the Non-Final Office Action mailed October 2, 2025.
New grounds of claim objection as outlined below.
Applicant’s amendments to the Claims have partially overcome the 112(b) rejections previously set forth in the Non-Final Office Action mailed October 2, 2025.
New grounds of claim rejection under 35 U.S.C. § 112(b) as outlined below.
All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment.
New grounds of rejection under 35 U.S.C. § 103 are necessitated by the amendments as outlined below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/29/2025 has been considered by the examiner.
Claim Objection
Claims 21, 23-24 and 31 is objected to because of the following informalities:
Claim 21: please amend “a channel or chamber” to -- a channel or a chamber--.
Claim 23: please amend “proteinaceous material” to – the proteinaceous material
Claim 24: please amend “said coating is applied by applying” to -- said coating is formed by applying--.
Claim 31: please amend “the substrate surface” to --the surface of the substrate
Appropriate correction is required.
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 8, 22 and 31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Regarding claim 8, claim 8 recites “wherein the substrate is a particle, a nano-particle, a micro-particle, a nano-fiber, a micro-fiber, a flake, a chip, a crystal, a porous substrate, a wafer, a wire, a nano-wire, a micro-wire, a rod, a nano-rod, a micro-rod, a foil, a sheet, a web, or combination of these forms”, while claim 1 recites “a substrate that is an electrode”. Claim 8 depends on claim 1, and claims 1 and 8 define the substate as two different things. Thus, it is unclear what is the substrate, and the scope of claim 8 is indefinite.
Regarding claim 22, claim 22 recites “the method of claim 24, wherein the substrate is a micro/nano gap device”. Note that claim 24 is an apparatus claim of a substrate instead of a method. Thus, it is unclear if claim 22 depends from claim 24 or claim 1. If it depends on claim 1, claim 1 recites “a substrate that is an electrode”, and claim 22 redefine the substrate as another different thing of a micro/nanogap device. Thus, it is unclear what is required to be an electrode. Therefore, the scope of claim 22 is indefinite.
Regarding claim 31, claim 31 recites “wherein substrate surface defines a channel or a chamber in a microfluidic device”, and claim 31 depends on claim 21 which recites “wherein the surface of the substrate defines a channel or chamber”. It is unclear if “a channel or a chamber” in claim 31 is the same as or different from “a channel or chamber” in claim 21. Thus, the scope of claim 31 is indefinite.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 6, 8-9, 12-14, 16-18, 20, 23-24, 29-30 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Jolly et al. (WO2019023567A1), and in view of Zhou et al. (Heating induced self-assembly denatured bovine serum albumin film on graphene targeting biomolecules, Transducers, 2017, Kaohsiung, Taiwan, June 18-22, 2017, 1559-1562).
Regarding claim 1, Jolly teaches a method for making a coating on a surface of a substrate that is an electrode (Carbon nanotubes or graphene combined with proteinaceous material forming compositions that can be used as a coating on an electrode [abstract]), the method comprising applying a mixture to the surface of the substrate (a mixture of an allotrope of carbon having atoms arranged in a hexagonal lattice and a proteinaceous material coated on at least a part of a conductive surface of the electrode [claim 10, para. 0013]; Fig.1 shows BSA/CNT coated on the surface of the Au electrode; para. 0070-0076 detail preparation of the mixture of BSA/CNT, and para. 0077-0078 details coating of the mixture of BSA/CNT on the surface of the Au electrode), wherein the mixture comprises a particulate material and a proteinaceous material (a mixture of an allotrope of carbon having atoms arranged in a hexagonal lattice and a proteinaceous material coated on at least a part of a conductive surface of the electrode [claim 10, para. 0013]; the allotropes of carbon having hexagonal lattices of carbon atoms, such as CNTs and rGO, can confer electroactivity (e.g., conductivity) to the compositions and structures herein described. Other conductive elements such as pure graphene, fullerenes, conductive and semi- conductive particles, rods, fibers and nano-particles (e.g., Gold), and conductive polymers (e.g., polypyrrole, polythiophene, polyaniline) can also be used to replace the CNTs and rGO or blended/combined with CNTs to modulate (e.g., improve) the conductivity, improve the stability and/or improve the stability of the coatings [para. 0058]; As used herein "proteinaceous" material includes proteins and peptides, functionalized proteins, copolymers including proteins, natural and synthetic variants of these, and mixtures of these. For example, proteinaceous material can be Bovine Serum Albumin (BSA) [para. 0044]).
Jolly is silent to while maintaining the substrate at an elevated temperature of at least 50 oC.
Zhou teaches BSA protein molecules could self-assembly on the graphene surface induced by heating at 80 oC (the 3rd paragraph in Introduction on page 1559). Native BSA dissolved in PBS were dropped on the graphene substrate with heating at 80 oC for 3 min (section of self-assembly BSA modified graphene and Fig.1). Fig.2 shows graphene/BSA composite film on a substrate.
Given the teachings of Jolly regarding forming a coating of carbon nanotubes or graphene combined with proteinaceous material such as BSA forming compositions that can be used as a coating on an electrode (abstract; [para. 0044]); and the teachings of Zhou regarding forming a graphene/BSA composite film with heating the graphene substrate at 80 oC for 3 min, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coating method of Jolly to include maintaining the substrate at an elevated temperature of 80 oC, as taught by Zhou, since it would self-assembly BSA protein molecules on the graphene surface to form a graphene/BSA composite film (the 3rd paragraph in Introduction on page 1559 and section of self-assembly BSA modified graphene in Zhou). The disclosed 80 oC falls within the claimed temperature range of at least 50 oC.
Furthermore, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." MPEP § 2144.05(II)(A). Therefore, it would have been obvious to one skilled in the art to use an elevated temperature of at least 50 oC for drying the mixture to form the graphene/BSA composite film.
Regarding claim 2, modified Jolly teaches the method of claim 1, and Jolly teaches wherein the mixture further comprises a cross-linking agent (the proteinaceous material is cross-linked [para. 0012]; the method further comprises cross-linking the proteinaceous material [para. 0015]; the cross-linking agent is a molecule such as glutaraldehyde [para. 0046]; prior to coating of an electrode's surface, e.Block was mixed with glutaraldehyde [para. 0078]).
Regarding claim 6, modified Jolly teaches the method of claim 1, and Jolly teaches further comprising denaturing the proteinaceous material (wherein the proteinaceous material is non-reversibly denatured [para. 0012]).
Regarding claim 8, modified Jolly teaches the method of claim 1, and Jolly teaches wherein the substrate is a porous substrate, a wire, a rod, or a sheet ( the electrode comprises a conductive surface [para. 0013]; a "conductive surface" is an outer surface of a bulk conductive material. For example, any surface of a metal sheet, bar, wire, electrode, contact, etc. This can include porous materials, polished materials or materials with any surface roughness, surfaces that are substantially flat or have some curvature [e.g., concave or convex] [para. 0037]).
Regarding claim 9, modified Jolly teaches the method of claim 1, and Jolly teaches wherein the substrate comprise a material selected from the group consisting of metals, polymers, and carbon based materials, ceramics, and any combinations thereof (electrodes can include metals, metal alloys, semiconductors, doped materials, conducting ceramics and conducting polymers. Without limitation, electrode materials can include carbon [e.g., graphite, glassy carbon, conductive polymers], copper, titanium, brass, mercury, silver, platinum, palladium, gold, rhodium, zinc, lead, tin, iron, Indium Tin Oxide [ITO], silicon, doped silicon, II-VI semiconductors [e.g., ZnO, ZnS, CdSe], III-V [para. 0042]).
Regarding claim 12, modified Jolly teaches the method of claim 9, and Jolly teaches wherein the substrate includes an organic polymer (electrodes can include conducting polymers [e.g., poly(acetylene)s, poly(p-phenylene vinylene), poly(fluorenes)s, polyphenylenes, polypyrenes, polyazulenes, polynaphthalenes, polyanilines, polyazepines, polyindoles, polycarbazoles, poly(pyrrole)s, poly(thiophene)s, and poly(3,4- ethylenedioxythiophene)] [para. 0042]; the listed conducting polymers are organic polymers).
Regarding claim 13, modified Jolly teaches the method of claim 1, and Jolly teaches wherein the particulate material is a rod, a particle, or combinations of these (The allotropes of carbon having hexagonal lattices of carbon atoms, such as CNTs and rGO, can confer electroactivity [e.g., conductivity] to the compositions and structures herein described. Other conductive elements such as pure graphene, fullerenes, conductive and semi- conductive particles, rods, fibers and nano-particles [e.g., Gold], and conductive polymers [e.g., polypyrrole, polythiophene, polyaniline] can also be used to replace the CNTs and rGO or blended/combined with CNTs to modulate [e.g., improve] the conductivity, improve the stability and/or improve the stability of the coatings [para. 0058]).
Regarding claim 14, modified Jolly teaches the method of claim 1, and Jolly teaches wherein the particulate material is a conductor or semi-conductor (The allotropes of carbon having hexagonal lattices of carbon atoms, such as CNTs and rGO, can confer electroactivity [e.g., conductivity] to the compositions and structures herein described. Other conductive elements such as pure graphene, fullerenes, conductive and semi- conductive particles, rods, fibers and nano-particles [e.g., Gold], and conductive polymers [e.g., polypyrrole, polythiophene, polyaniline] can also be used to replace the CNTs and rGO or blended/combined with CNTs to modulate [e.g., improve] the conductivity, improve the stability and/or improve the stability of the coatings [para. 0058]).
Regarding claim 16, modified Jolly teaches the method of claim 1, and Jolly teaches wherein the particulate material comprises an allotrope of carbon atoms arranged in a hexagonal lattice (The allotropes of carbon having hexagonal lattices of carbon atoms [para. 0058]; a mixture of an allotrope of carbon having atoms arranged in a hexagonal lattice and a proteinaceous material [para. 0012]).
Regarding claim 17, modified Jolly teaches the method of claim 1, and Jolly teaches further comprising pre-treating the substrate prior to applying the mixture (The method comprises coating at least a portion of a conducting surface with a mixture of an allotrope of carbon having carbon atoms arranged in a hexagonal lattice [e.g., CNTs, reduced graphene oxide] and a proteinaceous material [para. 0015]; As used here a "conductive surface" is an outer surface of a bulk conductive material. This can include polished materials [para. 0037]; polishing is deemed as pre-treating).
Regarding claim 18, modified Jolly teaches the method of claim 1, and Jolly teaches wherein applying the mixture comprises drop casting (the mixture was drop-casted onto electrochemical sensors [para. 0077, 0090]).
Regarding claim 20, modified Jolly teaches the method of claim 1, and Jolly teaches wherein the method further comprises a step of denaturing the proteinaceous material and subsequently adding a temperature sensitive material to the mixture prior to coating the substrate (the proteinaceous material is non-reversibly denatured prior to or after mixing with the allotrope of carbon [para. 0014]; The method comprises coating at least a portion of a conducting surface with a mixture of an allotrope of carbon having carbon atoms arranged in a hexagonal lattice (e.g., CNTs, reduced graphene oxide) and a proteinaceous material, wherein the proteinaceous material is non-reversibly denatured [para. 0015]; Other conductive elements such as conductive polymers [e.g., polypyrrole, polythiophene, polyaniline] can also be used to replace the CNTs and rGO or blended/combined with CNTs to modulate [e.g., improve] the conductivity, improve the stability and/or improve the stability of the coatings [para. 0058]. The added conductive polymer such as polypyrrole is deemed as the claimed temperature sensitive material, which is supported by the instant application: where the particulate material is a temperature sensitive material or nano-particle such as polymers (e.g., polypyrrol, agarose, or a gel) [para. 0076] in PGPub of the instant specification).
Regarding claim 23, modified Jolly teaches the method of claim 1, and Jolly teaches further comprising applying a layer of a second substrate on the coating of the proteinaceous material (the coatings can be functionalized with capture agents such as capture Ab in Fig.1 [abstract, Fig.1, para. 0017]; the layer of capture agents is deemed as a layer of a second substrate).
Regarding claim 24, Jolly teaches a substrate comprising a coating on a surface thereof (an electrode comprising a coating of a mixture of an allotrope of carbon having atoms arranged in a hexagonal lattice and a proteinaceous material on a conductive surface of the electrode [claim 10]), wherein said coating is formed by a mixture comprising a particulate material and a proteinaceous material (Carbon nanotubes or graphene combined with proteinaceous material forming compositions that can be used as a coating on an electrode [abstract]; wherein carbon nanotubes or graphene is deemed as a particulate material).
Note that “wherein said coating is applied by applying a mixture to the surface of the substrate while maintaining the substrate at an elevated temperature of at least 50 °C” is a product-by-process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.). As outlined in the rejection above, Jolly teaches the coating is formed by applying a mixture comprising a particulate material and a proteinaceous material on the surface of the substrate. The composition of the disclosed mixture is the same as the claimed one. Thus, the formed coating is substantially the same as the claimed one. If given full patentable weight, however, the limitation “wherein said coating is applied by applying a mixture to the surface of the substrate while maintaining the substrate at an elevated temperature of at least 50 °C” is further rejected in view of Zhou as outlined below.
Zhou teaches BSA protein molecules could self-assembly on the graphene surface induced by heating at 80 oC (the 3rd paragraph in Introduction on page 1559). Native BSA dissolved in PBS were dropped on the graphene substrate with heating at 80 oC for 3 min (section of self-assembly BSA modified graphene and Fig.1). Fig.2 shows graphene/BSA composite film on a substrate.
Given the teachings of Jolly regarding forming a coating of carbon nanotubes or graphene combined with proteinaceous material such as BSA forming compositions that can be used as a coating on a substrate (abstract; [para. 0044]); and the teachings of Zhou regarding forming a graphene/BSA composite film with heating the graphene substrate at 80 oC for 3 min, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coating method of Jolly to form the coating by applying the mixture to the surface of the substrate while maintaining the substrate at 80 oC, as taught by Zhou, since it would self-assembly BSA protein molecules on the graphene surface to form a graphene/BSA composite film (the 3rd paragraph in Introduction on page 1559 and section of self-assembly BSA modified graphene in Zhou). The disclosed 80 oC falls within the claimed temperature range of at least 50 oC.
Furthermore, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." MPEP § 2144.05(II)(A). Therefore, it would have been obvious to one skilled in the art to use an elevated temperature of at least 50 oC for drying the mixture to form the graphene/BSA composite film.
Regarding claim 29, modified Jolly teaches the method of claim 6, and Jolly is silent to wherein said denaturing the proteinaceous material is after applying the mixture to the substrate.
Since there are only two finite number of predictable results: (A) denaturing the proteinaceous material is before applying the mixture to the substrate; and (B) denaturing the proteinaceous material is after applying the mixture to the substrate. Therefore, there is a finite number of identified, predictable solutions with a reasonable expectation of success. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try by choosing from the above finite number of identified solutions, which would lead to choose the 2nd solution: denaturing the proteinaceous material is after applying the mixture to the substrate. Choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143 (I)(E)).
Regarding claim 30, modified Jolly teaches the method of claim 9, and Jolly teaches wherein the substrate comprises gold (a gold electrode that has been coated with a BSA/CNTs composition [para. 0017]; thus the substrate comprises gold).
Regarding claim 32, modified Jolly teaches the method of claim 23, and Jolly teaches further comprising coating a second mixture comprising a second particulate material and second proteinaceous material on the second substrate (a second mixture comprising captured antigen IL6, a biotinylated detection antibody, and streptavidin-polyHRP disposed on the capture antibody layer as shown in Fig.1 [para. 0017]; biotinylated detection antibody is deemed as the second proteinaceous material, and is deemed as a second particulate material), providing a layered material having alternating layers of substrate and proteinaceous/particulate material (see Fig.1).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Jolly and Zhou, as applied to claim 1 above, and further in view of Zhou et al. (Investigation of Controllable Nanoscale Heat-Denatured Bovine Serum Albumin Films on Graphene, Langmuir, 2016, 32, 12623-12631; hereinafter Zhou_Langmuir).
Regarding claim 4, modified Jolly teaches the method of claim 1, and is silent to wherein the elevated temperature is maintained for at least 10 seconds and less than two minutes.
Zhou further teaches forming the graphene/BSA composite film at 80 oC for 3 min (section of Self-assembly BSA modified graphene on page 1559).
Zhou_Langmuir also teaches self-assembly BSA on graphene by heating at 80 oC for 1 min, 3 min, and 5 min (Figs. 1-2; section of Protein Denaturation on page 12625). When the denaturation time was 1 min, the thickness of the denatured BSA films was about 9 nm. When the denaturation time was extended to 5 min, the thickness of the denature BSA films quickly increased to several hundred nanometers with RMS of approximately 16 nm. The longer the denaturation time, the thicker and the rougher the denatured BSA films become (the 1st paragraph in Col. 2 on page 12626). Since the denaturation time affects the thickness and roughness of the BSA film, the denaturation time would be a result effective variable.
As the thickness and roughness of the formed BSA film are variables that can be modified, among others, by adjusting the denaturation time (the heating time), the precise heating time would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed elevated temperature maintained for at least 10 seconds and less than 2 minutes cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the heating time in modified Jolly to maintain the elevated temperature of 80 oC for at least 10 seconds and less than 2 minutes in order to obtain the desired BSA thickness and roughness, as taught by Zhou_Langmuir. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claims 21 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Jolly and Zhou, as applied to claim 1 above, and further in view of Vos et al. (US20180149643A1).
Regarding claims 21 and 31, modified Jolly teaches the method of claim 1, and is silent to wherein the surface of the substrate defines a channel or a chamber (of claim 21); wherein the substrate surface defines a channel or a chamber in a microfluidic device (of claim 31).
Vos teaches a biosensor for detecting an analyte in a sample, wherein an analyte-recognizing molecule 1 is immobilized on a surface 2 of the sensor [para. 0001, 0183; Fig.1]. Vos further teaches wherein the surface may be the bottom or top of a microfluidic channel. The method of the first aspect is especially useful for immobilizing analyte-recognizing molecules in a microfluidic channel in a microfluidic device [para. 0078]. The surface may be coupled with a transducer for generating a readable signal output upon interaction (e.g. binding) of an analyte with the immobilized analyte-recognizing molecule. The combined presence of the surface with analyte-recognizing molecules immobilized thereon and of the transducer form the major elements of a sensor permitting the detection of the analyte [para. 0082]. The surface may be a surface of the transducer. Another example of transducer is interdigitated electrodes comprising the surface on which the analyte-recognizing molecules are immobilized [para. 0180].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and the substrate in modified Jolly to provide the surface of the substrate defining a channel in a microfluidic device, as taught by Vos, since it would provide an improved methods and apparatus for immobilizing an analyte-recognizing molecule on a surface [para. 0031 in Vos].
Claims 22 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Jolly and Zhou, as applied to claims 1 and 24 above, and in view of Zhou et al. (Novel Graphene Biosensor Based on the Functionalization of Multifunctional Nano‑bovine Serum Albumin for the Highly Sensitive Detection of Cancer Biomarkers, Nano-Micro Letters, 2019, 11, 20; hereinafter Zhou_NML).
Regarding claim 22, modified teaches the method of claim 1, and is silent to wherein the substrate is a micro/nano gap device wherein the coating can be used to coat surfaces of a gap in the micro/nano gap device and/or the coating is applied for surface modification to enable linking of specific probes and antifouling properties.
Zhou_NML teaches coating graphene/BSA composite film on surfaces of a gap in a micro/nano gap device (see Figs. 1-2), wherein the graphene/BSA film is coated on surfaces of gap between source and drain electrodes (see Figs. 1-2), and the BSA-functionalized graphene channel was 60 µm in width and 30 µm in length (the first paragraph in Col. 2 on page 20). Native BSA dissolved in DI water was dropped on the graphene and the native BSA was denatured on the graphene surface at 80 oC as shown in Fig.1e (the first paragraph in Col. 1 on page 20). Thus, the substrate is a micro/nano device since the BSA-functionalized graphene channel was 60 µm in width and 30 µm in length.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate in modified Jolly to a micro/nano gap device, wherein the coating can be used to coat surfaces of a gap in the micro/nano gap device, as taught by Zhou_NML, since it would make highly sensitive graphene/BSA FET for applications such as biosensing (title, highlights and abstract in Zhou_NML).
Note: Examiner interprets claim 22 depends from claim 1 instead of claim 24 since claim 22 recites “The method of claim”.
Regarding claim 33, modified Jolly teaches the substrate of claim 24, and is silent to wherein the substrate is a capacitor, a bio-Field Effect transistor (bio-FET), a transistor, micro/nano gap device, or an optical device.
Zhou_NML teaches coating graphene/BSA composite film on a bio-FET (see Figs. 1-2), wherein the graphene/BSA film is coated on surfaces of gap between source and drain electrodes of the bio-FET (see Figs. 1-2). Native BSA dissolved in DI water was dropped on the graphene and the native BSA was denatured on the graphene surface at 80 oC as shown in Fig.1e (the first paragraph in Col. 1 on page 20). Thus, the substrate is a bio-FET for the highly sensitive detection of cancer biomarkers (title and Fig.2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate in modified Jolly to a bio-FET, as taught by Zhou_NML, since it would make highly sensitive graphene/BSA bio-FET for applications such as biosensing (title, highlights and abstract in Zhou_NML).
Response to Arguments
Applicant's arguments, see Remarks Pgs. 6-10, filed 12/29/2025, with respect to the 35 U.S.C. § 112(b) and 35 U.S.C. § 103 rejections have been fully considered and all 103 rejections from the previous office action are withdrawn.
Applicant’s Argument #1:
Regarding 112(b) rejections for claims 8 and 22, Applicant argues at page 6 that claim 8 has been amended to remove recitation of a channel, a nano-channel, and a micro-channel. It is believed the remaining materials of claim 8 are capable of conducting electricity, and thus are suitable materials for use as the substrate as defined in the specification. claim 22 has been amended to delete recitation of "higher sensitivity" and to depend from claim 24 to clarify the alleged ambiguity of "substrate."
Examiner’s Response #1:
Applicant’s arguments have been fully considered. But claims 1 and 8 define the substrate as two different things, thus claim 8 is still indefinite. Amended claim 22 recites the method of claim 24 while claim 24 is an apparatus claim of a substrate. It is unclear if claim 22 depends from claim 24 or a method claim such as claim 1. Based on the list of the substrate recited in claims 8 and 22, Examiner suggests applicant to remove “that is an electrode” in claim 1.
Applicant’s Argument #2:
Regarding the 103 rejections for claims 1-2, 4,6, 8-9, 12-14, 16-18, 20, and 24, Applicant argues at pages 7-8 that the coatings in Wang are concerned with shielding implanted medical devices from macroscopic effects that occur during MRIs. These coatings have no relevance to the surface fouling properties of the implanted medical device. It is accordingly not seen why those of ordinary skill in the art would have looked to modify the methods to form conductive coatings for electrodes to prevent fouling in complex matrices in Jolly with the methods for forming insulating coatings for radiation and magnetic signal shielding during MRIs in Wang.
Examiner’s Response #2:
Applicant’s arguments are convincing and the previous rejections have been withdrawn. But claim 1 is still unpatentable over the prior art as outlined in the new grounds of rejection above.
Applicant’s Argument #3:
Regarding claims 21-23, applicant argues at pages 8-9 that they depend from claim 1, thus are also patentable over the prior art for at least the same reasons as claim 1.
Examiner’s Response #3:
Claim 1 is still unpatentable over the prior art as outlined in the new grounds of rejection above.
Examiner suggests applicant to amend claim 1 to incorporate limitations of claims 23 and 32, and further recite a third mixture comprising a third particulate material and a third proteinaceous material coated on a third substrate to provide at least three alternating layers of substrate and proteinaceous/particulate material.
Conclusion
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/SHIZHI QIAN/Examiner, Art Unit 1795