DETAILED CORRESPONDENCE
Summary
This Office Correspondence is based on the Response After Final filed with the Office on 6 January 2026, regarding the Yang, et al. application.
Claims 1-14 are currently pending and have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6 January 2026, has been entered.
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.
Claims 1-3, 6, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a published paper by T. Kaji, et al. (“Enhanced Photocurrent Generation from Bacteriorhodopsin Photocells Using Grating-Structure Transparent Conductive Oxide Electrodes”, Journal of Nanoscience and Nanotechnology, 16(4): p. 3206-3212, April 2016; hereinafter, “Kaji”).
Regarding claim 1, Kaji discloses a photocurrent apparatus provides a signal as a current (Figure 2b). Kaji teaches a chamber for electrolyte (Figure 1a; which reads on “a photo-induced-voltage-generating solution chamber for receiving a photoreceptor-protein-containing solution”). Kaji teaches an indium zinc oxide (IZO) electrode with a grating structure (Figures 1a inset and 1b; which reads on “a compound layer on one side of the photo-induced-voltage-generating solution chamber, wherein the compound layer is responsive to changes in the amount of protons in the solution, and the compound layer is provided with a gap corresponding in position to the photo-induced-voltage-generating solution chamber and is thus rendered discontinuous within the photo-induced-voltage-generating solution chamber”).
Regarding claims 2 and 3, Kaji teaches the photoreceptor-protein is a bacteriorhodopsin, as the bR protein was purified from Halobacterium salinarum strains (1st ¶, 2. Experimental Section, p. 3207).
Regarding claim 6, Kaji teaches IZO as the electrode (Figure 1a).
Regarding claim 12, Kaji teaches irradiation by a linearly polarized 568-nm continuous-wave semiconductor laser (3rd ¶, 2. Experimental Section, p. 3208).
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.
Claims 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kaji.
Regarding claim 14, Kaji teaches a linearly polarized 568-nm continuous-wave semiconductor laser (3rd ¶, 2. Experimental Section, p. 3208).
Kaji does not explicitly teach a plurality of laser sources.
However, it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04 VI B).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kaji in view of a referenced paper by T. Yamada, et al. (“Orientation of a Dip-Coated Bacteriorhodopsin Thin Film Studied by Second Harmonic Generation Interferometry”, Japanese Journal of Applied Physics, 52, paper 05DB03, 5 pages, May 2013; hereinafter, “Yamada”).
Regarding claim 13, Kaji teaches the limitations of instant claims 1 and 12, as outlined above.
Kaji does not explicitly teach a reflective mirror provided between the laser source and the photo-induced-voltage-generating solution chamber or a sample chamber.
However, Kaji states “apparatus used for the photocurrent measurement
from the bR photocells was described in detail in our previous studies” (3rd ¶, 2. Experimental Section, p. 3208), and cites the Yamada reference.
Yamada teaches two reflective mirrors between the laser source and a sample (Figure 1).
Allowable Subject Matter
Claims 4, 5, and 7-11 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.
The following is a statement of reasons for the indication of allowable subject matter: the cited Kaji reference is the closest prior art to the indicated claims. However, Kaji does not anticipate nor render obvious: connection to positive electrode and a negative electrode of an oscilloscope respective (as required in claims 4 and 5); at least one sample chamber provided on the compound layer (as require by instant claim 7-9); or, two end are connected to a pair of electrically conductive probe respectively (required by instant claims 10 and 11).
Response to Arguments
Applicant's arguments filed 6 January 2026, have been fully considered but they are not persuasive. In the response, Applicant argues (Remarks, p. 3), “[i]n the present application, “a gap” specifically refers to an electrically isolating discontinuity, i.e., a region of the compound layer in which no electrical conduction path exists, such that the compound layer is separated into two electrically independent ends.” Applicant has provided an explicit definition of the term, “gap,” at paragraph [0067] of the specification as filed:
“As used herein, the term “gap” refers to a line cut into the surface of a compound layer by a physical or chemical method so as to divide the compound layer into two sides that are disconnected from each other.”
It is noted that there is no part of the gap definition refers to it specifically causing an electrically isolating discontinuity. Thus, the Kaji teaching do meet the broadest reasonable interpretation of the limitations recited in instant claim 1. Applicant has further argued (Remarks, p. 3), “… the “discontinuous compound layer” in the present application refers to an electrical isolation of the compound layer in a region corresponding to the phot-induced-voltage-generating solution chamber, resulting in the absence of a conductive communication path therein …” However, the term, “discontinuous compound layer” does not appear anywhere in the instant disclosure. Therefore, this argument is not persuasive. Additionally, Applicant states (Remarks, p. 4), “… the IZO electrode of Kaji function solely as transparent conductive layer for receiving photocurrent and does not respond to changes in proton concentration within the solution. It is thus clear that Kaji fails to disclose “the compound layer is responsive to changes in the amount of protons in the solution” recited in claim 1 of the present application.” However, the IZO electrode is the same material as the claimed compound layer (see limitations of present claim 6); therefore, as the chemical characteristics are inherent, the teaching of Kaji would respond to proton concentration changes, even if enabling the circulation of the photo-induced current may not be the resultant response (which is not required by present claim 1). The previous rejections have been maintained.
Interview with the Examiner
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The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached on M - F, 9 am - 5:30 pm.
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/J. Christopher Ball/ Primary Examiner, Art Unit 1795