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 Group I, claims 1-15, in the reply filed on 06/04/2026 is acknowledged.
Claim Interpretation
For purpose of examination, “one-dimensional substrate” is interpreted to be a string or a spline in light of Fig. 4 of the Drawing and lines 14-17 of page 17 of the specification.
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.
Claim 14-15 is/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.
Regarding claims 14-15, “one-dimensional substrate” of parent claim 1 is interpreted as a string/spline/piece of fiber according to Fig. 4-5 of the Drawing and lines 14-17 of page 17 of the specification. Claims 14-15 recite contradictory matter as the claims recite a two-dimensional substrate, paper (specifically 300 gsm paper). Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
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) 1is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (KR 20210034375 A).
Regarding claim 1, Kim discloses a sensor for detecting the presence of a pathogen, the sensor comprising a one-dimensional substrate (conductive sensing line 1100, Fig. 3; para. [0062] and [0092]).
Claim(s) 1is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (KR 101846084 B).
Regarding claim 1, Lee discloses a sensor (The conductive fiber fabricated according to the present invention can be applied to various devices and sensors… para. [0022]) for detecting the presence of a pathogen, the sensor comprising a one-dimensional substrate (a conductive fiber, para. [0001]; Fig. 5).
Claim(s) 1-3, 11, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anjali (Polyaniline-pectin nanoparticles immobilized paper based colorimetric sensor for detection of Escherichia coli in milk and milk products, May 7, 2022).
Regarding claim 1, Anjali discloses a sensor (Fig. 4A) for detecting the presence of a pathogen (E. coli, Abstract), the sensor comprising a one-dimensional substrate (paper strip, Fig. 3A).
Regarding claims 2-3, Anjali discloses the claimed invention as discussed above in claim 1. Anjali discloses the sensor further comprises a coating on the substrate wherein the coating comprising polyaniline (polyaniline-pectin nanoparticles; PANI- PEC solution of optimized concentration was printed on Whatman filter paper grade 4 using Easy Printer (Model LPM-02). 2.3. Construction of colorimetric sensor strips).
Regarding claim 11, Anjali discloses the claimed invention as discussed above in claim 2. Anjali discloses the substrate has a linear configuration (the paper strip is inherently linear).
Regarding claim 14, Anjali discloses the claimed invention as discussed above in claim 2. Anjali discloses the substrate comprise paper (Whatman filter paper grade 4; 2.3. Construction of colorimetric sensor strips).
Claim(s) 1-2 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seo (KR101798192B1).
Regarding claim 1, Seo discloses a sensor comprising a one-dimensional substrate (coating yarn, para. [0001] and Fig. 9).
Regarding claim 2, Seo discloses the claimed invention as discussed above in claim 1. Seo discloses the sensor further comprising a coating on the substrate (coating yarn, para. [0001]), the coating comprising an electrically-conducting polymer (polyurethane resin, para. [0001]).
Regarding claim 12, Seo discloses the claimed invention as discussed above in claim 2. Seo discloses the substrate has a zig-zag configuration (Fig. 9).
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) 2 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 101846084 B) in view of Seo Seo (KR101798192B1).
Regarding claim 2, Lee discloses the claimed invention as discussed above in claim 1. Lee discloses the sensor further comprises a coating on the substrate (Pt thin film, para. [0001]) but does not disclose the coating comprises electrically-conductive polymer.
In an analogous art, Seo discloses a sensor comprising a one-dimensional substrate (coating yarn, para. [0001] and Fig. 9). Seo discloses the sensor further comprising a coating on the substrate (coating yarn, para. [0001]), the coating comprising an electrically-conducting polymer (polyurethane resin, para. [0001]). Seo discloses polyurethane resin has advantage being excellent in adhesion to surface of natural fiber such as yarn while maintaining the electrical conductivity (para. [0047]).
Therefore, it would have been obvious to one of ordinary skill in the art to have substituted polyurethane resin coating of Seo to the metallic coating of conductive polymer of Lee to derive the claimed invention. One of ordinary skill in the art is motivated to doing so as manufacturing coated conductive fiber with polyurethane resin has lower manufacturing cost while maintaining the electrical conductivity of the fiber (Seo, para. [0036])
Regarding claim 4, Modified Lee discloses the claimed invention as discussed above in claim 2. Lee discloses the substrate comprises cellulose (hemp fiber; para. [0011]).
Regarding claim 5, Modified Lee discloses the claimed invention as discussed above in claim 2. Lee discloses the substrate comprises a single-strand filament (Fig. 5, the individual filament).
Regarding claims 6-7, Modified Lee discloses the claimed invention as discussed above in claim 2. Lee discloses the substrate comprises silk thread, which is also a natural fiber (para. [0011]).
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seo (KR101798192B1).
Regarding claims 8-10, Seo discloses the claimed invention as discussed above in claim 2. Seo discloses the thickness of the substrate to be between 10 and 35 microns, which overlaps with the claimed range of 20 to 25 microns.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seo (KR101798192B1) in view of Zhou (Structural Design and Performance Research of a Knitted Flexible Sensor, June, 2022).
Regarding claim 13, Seo discloses the claimed invention as discussed above in claim 2. Seo does not disclose the substrate/conductive yarn has a criss-cross configuration.
In an analogous art, Zhou discloses research on knitted flexible conductive yarn sensor (carbon black conductive yarn, Abstract) knitted in a criss-cross configuration (Fig. 2-3 and 6-8). Zhou discloses as the number of wales increases, the electrical conductivity of the fabric gradually decreases, and with the increase in the number of courses, the electrical conductivity of the fabric gradually increases (Conclusions).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have arranged the substrate of Seo in a criss-cross configuration as taught by Zhou. Arranging the substrate in criss-cross configuration allows one of ordinary skill in the art to manipulate the electrical conductivity of the finished product as taught by Zhou (Conclusions).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anjali in view of Loane (US 20220390439 A1).
Regarding claim 15, Anjali discloses the claimed invention as discussed above in claim 14. Anjali discloses the paper used is Whatman filter paper grade 4 (2.3. Construction of colorimetric sensor strips) which has 80-100 grams square meter (gsm) but does not disclose the substrate has gsm of aboue 300.
Ananlogous art Loane discloses a paper test strip affixed with a chemical dry using solid paper support such as a white paper card with a gsm of 300 (para. [0033] and [0117]). Paper density (gsm) is correlated with durability, with higher gsm associating with greater durability—better resistance to tearing, bending, and wear. As the durability and resistance to tearing, bending, and wear are variables that can be modified, among others, by adjusting the paper density, with durability and resistance to tearing, bending, and wear both increasing as the paper density is increased, the precise material with the paper density (gsm) 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 gsm 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 paper density in Anjali using solid substrate such as the white paper card from Loane to obtain the desired balance between durability and paper density (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). “[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.). “[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.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICKEY HUANG whose telephone number is (571)272-7690. The examiner can normally be reached M-F 9:30-5:30 PM ET.
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/M.H./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758
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