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 February 1, 2026 has been entered. Claims 1-6 have been amended; and claims 7-20 have been withdrawn. Claims 1-6 are currently examined herein.
Status of the Rejection
New grounds of specification objection are necessitated by the amendment as outlined below.
Applicant’s amendments to the Claims have partially overcome the claim objections previously set forth in the Non-Final Office Action mailed October 2, 2025.
New grounds of claim objection are necessitated by the amendment as outlined below.
Applicant’s amendments to the Claims have overcome each rejection under 35 U.S.C. § 112(b) previously set forth in the Non-Final Office Action mailed October 2, 2025.
New grounds of claim rejections under U.S.C. § 112(a) and 112(b) are necessitated by the amendment as outlined below.
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are: the amended claim 1 recites PPn, and [para. 0045] in PG-Pub of the instant specification discloses: “step (1) comprises depositing a PFOA-imprinted PPn film on a gold electrode”. But it is unclear what is PPn. Furthermore, claim 1 recites PFAS, but the specification does not provide the full name of PFAS.
Claim Objection
Claims 1 and 3-6 are objected to because of the following informalities:
Claim 1: please amend “step (A1)” to – the step (A1)--; “PFOA” to -- perfluorooctanoic acid (PFOA)--; “PFAS” to its full name followed by (PFAS); “the initial coating layer” to -- the initial the step (A2)--; “step (A3)” to – the step (A3)--; “removing imprinted PFAS molecules” to --removing the imprinted PFAS molecules--; “eliminate methanol” to --eliminate the methanol solvent--; “steps (A1), (A2) and (A3)” to –the steps (A1), (A2) and (A3)--; “a coating layer” to – the initial layer--; “the coating layer has cavities or holes” to --the initial layer has the cavities or the holes --; “a molecule of the analyte” to – [[a]] the molecule of the analyte--; “the cavities or holes” to -- the cavities or the holes--; “PBS” to -- phosphate buffered saline (PBS)--; “the baseline” to –[[the]] a baseline--; “in a sample solution for a period” to -- in [[a]] the sample solution for a period of time --; “the sample” to – the sample solution--.
Claim 3: please amend “step (A1)” to – the step (A1)--; “base electrodes base electrodes” to -- base electrodes
Claim 4: please amend “said each of said two or more base electrodes” to – [[said]] each of said two or more base electrodes--; “step (A1)” to – the step (A1)--; “monomers” to –the monomers--.
Claim 5: please amend “the electro-polymerization” to -- the electrochemical polymerization--.
Claim 6: please amend “PBS buffer solution” to –the PBS buffer solution--; “step (C5)” to --the step (C5)--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recite “(A2) conducting a crosslinking reaction on the product from step (A1). wherein the crosslinking reaction is conducted in heptane containing azobisisobutyronitrile (AIBN), and wherein the crosslinking reaction is initiated by UV irradiation on vinyl groups in the product from step (A1), and terminated with a radical inhibitor 1,4-benzoquinone in heptane”. The step (A2) is required for both PFOA and PFAS. However, the specification discloses that the step A2 is only required for PFAS, as evidenced by claim 16 and [para. 0046] in PG-Pub of the instant specification. Thus, the claimed limitations of the step A2 for both PFAS and PFOA are new matter, therefore, claim 1 and its dependent claims 2-6 are new matter.
Claim 1 recite “(A3) removing said molecules of the analyte from the initial coating laver from step (A2) and leaving cavities or holes behind, wherein step (A3) comprises soaking the polymerization product from step (A2) in methanol/water mixture and rinsing it with ethanol/water mixture”. The specification discloses that “wherein step (A3) comprises soaking the polymerization product from step (A2) in methanol/water mixture and rinsing it with ethanol/water mixture” is only required for PFOA, as evidenced by claim 15 and [para. 0045] in PG-Pub of the specification. Therefore, claim 1 and its dependent claims 2-6 are new matter.
Claim 1 recite “a sensing electrode is prepared from steps (A1), (A2) and (A3)”. As explained above, the steps (A2) and (A3) are new matters, thus a sensing electrode prepared from the steps (A1), (A2) and (A3) are also new matter. Therefore, claim 1 and its dependent claims 2-6 are new matter.
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 1-6 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 1, claim 1 recites “a conductive surface”, “a gold electrode”, and “the surface of a glassy carbon sensor”. It is unclear if “a gold electrode” or “the surface of a glassy carbon sensor” is the same as or different than “the conductive surface”. Furthermore, it is unclear what is PPn. In addition, claim 1 recites “wherein step (A1) comprises depositing a PFOA-imprinted PPn film on a gold electrode by cyclic voltammetry in de-ionized (DI) water or phosphate buffered saline containing monomers of phenol, 3- hydroxyphenlurea, 2-(trifluoromethyl)acrylic acid and PFOA as the analyte”. It is unclear if the monomers include PFOA. It is unclear if the DI water also contains “monomers of phenol, 3- hydroxyphenlurea, 2-(trifluoromethyl)acrylic acid and PFOA as the analyte” or only phosphate buffered saline contains monomers of phenol, 3- hydroxyphenlurea, 2-(trifluoromethyl)acrylic acid and PFOA as the analyte. Thus the scope of claim 1 is indefinite. Claims 2-6 are further rejected by virtue of their dependence upon and because they fail to cure the deficiencies of indefinite claim 1.
Regarding claim 1, claim 1 recites “wherein the sensing electrode includes a base electrode having a conductive surface”, which is unclear if the base electrode is the same as or different than the gold electrode or the glass carbon sensor, and it is unclear if the conductive surface of the base electrode is the same as or different than “a conductive surface” in step (A1). Thus the scope of claim 1 is indefinite. Claims 2-6 are further rejected by virtue of their dependence upon and because they fail to cure the deficiencies of indefinite claim 1.
Regarding claim 4, “the electrochemical polymerization system” lacks antecedent basis, which is unclear if it refers to the electrochemical sensing system or the electrochemical polymerization in step (A1). Thus, the scope of claim 4 is indefinite.
Response to Arguments
Applicant's arguments, see Remarks Pgs. 10-15, filed 2/1/2026, with respect to the 35 U.S.C. § 103 rejections have been fully considered and all 103 rejections from the previous office have been withdrawn.
Applicant’s Argument #1:
Regarding claim 1, Applicant argues at pages 10-14 that Kazemi, Elfadil and Ugo fail to teach or fairly suggest the electrochemical polymerization of specific monomers containing vinyl groups in step (A1); the specific crosslinking photoreaction of step (A2) on the product from step (A1) for making the coating layer robust and reliable; the specific mediator FCA in PBS buffer solution in step (C1); and the scanning parameters comprising starting potential and quiet time in step (C3) in claim 1 as amended. Claims 2-6 are also allowable at least by reason of depending on an allowable base claim,
Examiner’s Response #1:
Applicant’s arguments have been fully considered, and all 103 rejections from the previous office action are withdrawn. However, the amended claim 1 is still unpatentable as outlined in the rejections under 112(a) and 112(b) above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIZHI QIAN whose telephone number is (571)272-3487. The examiner can normally be reached Monday-Thursday 8:00 am-5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan V Van can be reached on 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIZHI QIAN/Examiner, Art Unit 1795
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