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 .
Drawings
The Drawings filed 06 October 2023 are approved by the examiner.
Information Disclosure Statement
The information disclosure statement(s) (IDS) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner and an initialed copy is attached.
Priority
Receipt is acknowledged of the certified copies of papers required by 37 CFR 1.55.
Citation Notation
The following citations are made for the convenience of the reader:
Citations to PG publications are made to paragraph number under the ¶ format. Citations to other publications made under the format “ col 1/2” or pp 1 are directed to column and line number or to a page - whichever is appropriate. It is noted that any reference to a figure or a table is also directed to any accompanying text in the specification or the document. Notwithstanding those citations, the reference(s) is (are) relied upon for the teachings as a whole.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 11 February 2026 is acknowledged. The traversal is on the ground(s) that none of the cited reference discloses a technical feature of the surface roughness and mixed functionalization. This is not found persuasive because the common technical feature is the functionalization of graphene by PBASE – which is taught by the cited references. The requirement is still deemed proper and is therefore made FINAL. Claims 5 and 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11 February 2026.
Claim Objections
Claims 1-3, 6 and 9 are objected to because of the following informalities:
In claim 1, the word “with” should be added before “respect to the surface”;
In claims 2, 3 and 6, there is a discrepancy between the singular and plural forms of the limitations;
In claim 6, the first recitation of “the molar ratio” lacks antecedent basis; and
In claim 9, typographical error for “PHA” – should be “PAH”.
Appropriate correction is required.
Claim Rejections - 35 USC § 101 & 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.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a substantial asserted utility or a well-established utility.
Claim 15 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a substantial asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
It is noted that claim 15 is construed as an improper definition of a process (101) and/or attempts to claim a process without setting forth any steps involved in the process (112) since the claim merely recites a use of a composition.
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.
Claim(s) 1-3, 6-10 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneider (US-20160060124-A1) in view of Johnson (WO-2017160724-A1).
Claims 1 and 10: Schneider discloses a graphene structure coated with a mixture of moieties such as polycyclic aromatic hydrocarbons and hydroxysuccinimide ester derivatives of pyrene to analyze biomolecules such as DNA (abs, ¶23-24, 37-63, examples and Figs 1-3 with accompanying text). Further, Schneider discloses optimizing the surface of the graphene to achieve the desired topology and the inspection via AFM to inspect for defects, deformity and heights (Figs 1-3 with accompanying text). The Schneider reference discloses the claimed invention but does not explicitly disclose the feature of one of the attached PAH being 1-pyrenebutanoic acid succinimidyl ester (PBASE) and the specific surface roughness. It is noted that the Schneider reference discloses a mixture of PAH and the pyrene succinimidyl ester and the claim(s) call(s) for a specific pyrene succinimidyl ester. In an analogous art, the Johnson reference discloses that a graphene surface functionalized with various PAHs to detect DNA is well known in the art (abs, ¶ 12-28, 55-63, Fig 2 with accompanying text). Further, Johnson discloses the claimed PBASE being a known in the art as especially suitable and monitoring the surface via AFM (¶28, 35-37, 58 and Fig 3 with accompanying text). One of ordinary skill in the art would have recognized that applying the known technique and component of Johnson to the teachings of Schneider would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of achieving a suitable component to attach biomolecules. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution/implementation would be repugnant to a skilled artisan. Regarding the surface roughness, both Schneider and Johnson discloses optimizing the surface of the graphene and monitoring via AFM – thus it would have been well within the purview of a skilled artisan to arrive at the claimed surface roughness via optimization to achieved enhanced bonding and detection.
Claims 2 and 3: Schneider and Johnson disclose the claimed PAHs such as pyrene, anthracene, phenanthrene, tetracene, chrysene, triphenylene, pentacene, benzo[a]pyrene, corannulene, coronene and/or ovalene (Schneider: ¶56 & Johnson: ¶38).
Claims 6-9: Schneider and Johnson disclose the incubation methodology at various concentrations (Schneider: ¶ 22-25, 70, 71 and Figs 1-3 with accompanying text & Johnson: ¶35, 49). It is noted that the claimed concentration is construed as a result-effective variable, i.e., a variable which achieves a recognized result. Given that the Schneider and Johnson references discloses a similar incubation method, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the reaction concentration, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. a concentration, since the reference also discloses a similar end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components/steps would be repugnant to a skilled artisan.
Claims 10 and 15: Schneider and Johnson disclose the implementation structure (Schneider: abs, ¶7 and examples & Johnson: abs, ¶28 and examples).
Claim(s) 1-4, 6-10 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohno (NPL, cited in the IDS) in view of Johnson (WO-2017160724-A1).
Claims 1, 4 and 10: Ohno discloses a graphene structure coated with 1-pyrenebutanoic acid succinimidyl ester (PBASE) to detect/analyze antibody biomolecules (abs, pg. 1-3 and Figs 1-3 with accompanying text). Further, Ohno discloses optimizing the surface of the graphene to achieve the desired topology and the inspection via AFM to inspect for defects, deformity and heights from 6 to 10 nm (Fig 3 with accompanying text) – thus meeting the claimed surface roughness. The Ohno reference discloses the claimed invention but does not explicitly disclose the feature of additional. In an analogous art, the Johnson reference discloses that a graphene surface functionalized with various PAHs to detect biomolecules is well known in the art (abs, ¶ 12-28, 55-63, Fig 2 with accompanying text). Further, Johnson discloses the claimed PBASE being a known in the art as especially suitable and monitoring the surface via AFM (¶28, 35-37, 55-58 and Fig 3 with accompanying text). One of ordinary skill in the art would have recognized that applying the known additional PAH components of Johnson to the teachings of Ohno would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of achieving a suitable component to attach biomolecules. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the implementation would be repugnant to a skilled artisan.
Claims 2 and 3: Ohno and Johnson disclose the claimed PAHs such as pyrene, anthracene, phenanthrene, tetracene, chrysene, triphenylene, pentacene, benzo[a]pyrene, corannulene, coronene and/or ovalene (Johnson: ¶38, 56-63).
Claims 6-9: Ohno and Johnson disclose the incubation methodology at various concentrations (Ohno: pg. 2-4 and Figs 1-3 with accompanying text & Johnson: ¶35, 49). It is noted that the claimed concentration is construed as a result-effective variable, i.e., a variable which achieves a recognized result. Given that the Ohno and Johnson references discloses a similar incubation method, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the reaction concentration, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. a concentration, since the reference also discloses a similar end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components/steps would be repugnant to a skilled artisan.
Claims 10 and 15: Ohno and Johnson disclose the implementation structure (Ohno: abs, Fig 1 with accompanying & Johnson: abs, ¶28 and examples).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneider and Johnson and further in view of Ho (US-20230194520-A1).
The Schneider and Johnson references discloses the claimed invention but does not explicitly disclose the feature of antibody detection. It is noted that the Schneider and Johnson references disclose various biomolecules and the claim(s) call(s) for the biomolecule to be an antibody. In an analogous art, the Ho reference discloses detecting an antibody with a FET based on graphene and PAHs is well known in the art (abs, examples). One of ordinary skill in the art would have recognized that applying the known technique of Ho to the teachings of Schneider and Johnson would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of detecting various biomolecules. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution/implementation would be repugnant to a skilled artisan.
Conclusion
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764