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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-11 and 13-19) in the reply filed on 5/13/2026 is acknowledged. The traversal is on the ground(s):
Arguments regarding Groups I and II are that the “Office has not shown a lack of a distinct lack of overlap in scope, lack of capability of use together, or substantially different design, mode of operation, function, or effect….provides no examples in support of that determination” . These arguments are not found persuasive because the (A) the inventions as claimed do not overlap in scope: Claimed method steps of the Group II relate to four steps in detection whereas the Group I Claimed method steps are two steps of making an ECL electrode (B) the inventions claimed are not obvious variants as they are different methods, manufacturing and method of detecting (C) the inventions have material different effect: one for making an electrode and the other to detecting).
Arguments regarding Groups I and III that “no evidence to support the assertion that the claimed product can be made as the Office has alleged” are not found persuasive because the product ECL electrode can be made by another materially different process such as dip-coating, since the electrocatalytic solution and metal nanoparticles are capable of providing a solution for dip-coating.
Arguments regarding Groups II and III, that “the Office has not established that the product can be used in a materially different process” are not found persuasive because the Group III ECL sensor can be used in materially different process such as using Exo III-driven DNA walkers to detect antigens (See Fan et al Scheme 1).
The requirement is still deemed proper and is therefore made FINAL.
Claims 12, 20-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/13/2026.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-2, 4-9, 13-19 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Fan et al, “Electrochemiluminescence aptasensor for Siglec-5 detection based on MoS2@Au nanocomposites emitter and exonuclease III-powered DNA walker” Sensors & Actuators: B. Chemical 334 (2021) 129592.
Regarding claim 1, Fan et al teach a manufacturing method for an ECL (electrochemiluminescence)-based electrode, comprising a step of mixing an electrocatalytic solution and metal nanoparticles (p. 3 col. 1, para. 2.3 Preparation of MoS2@Au) and thereafter dropping a mixed particle suspension onto a surface of an electrode and obtaining a base electrode co-modified by an electrocatalyst-metal nanoparticles. (p. 3 col. 1 para. 2.5: Fabrication of ECL biosensor: MoS2@Au solution dropped onto the spotless glassy carbon electrode).
Regarding claim 2, Fan et al teach the electrocatalyst is a transition metal compound. (p. 3 col. 1, para. 2.3 Preparation of MoS2@Au: molybdenum disulfide)
Regarding claims 4-5, Fan et al teach the metal nanoparticles are at least one of gold (Au) nanoparticles, silver (Ag) nanoparticles, platinum (Pt) nanoparticles, copper (Cu) nanoparticles, cobalt (Co) nanoparticles, iron (Fe) nanoparticles, nickel (Ni) nanoparticles, and multi-alloy nanoparticles thereof; the metal nanoparticles are gold (Au) nanoparticles. (p. 3 col. 1, para. 2.3 Preparation of MoS2@Au: 50nm gold colloid)
Regarding claims 6-7, Fan et al teach the electrode is one of a glass carbon electrode, an ITO (Indium Tin Oxide) electrode, and a screen printing electrode; the electrode is a glass carbon electrode. (p. 3 col. 1 para. 2.5: Fabrication of ECL biosensor: MoS2@Au solution dropped onto the spotless glassy carbon electrode)
Regarding claims 8-9, Fan et al teach an exfoliation time of the electrocatalyst is five hours or longer; an exfoliation time of the electrocatalyst is five hours or longer and shorter than 25 hours. (p. 3 col. 1, para. 2.3 Preparation of MoS2@Au: sonication for 6h and 2.5h)
Specifically regarding claims 13-18, Fan et al teach a step of binding a terminal-modified capture nucleic acid to a surface of the base electrode; the terminal-modified capture nucleic acid is a mercapto-modified capture nucleic acid, an amino-modified capture nucleic acid, or a biotin-modified capture nucleic acid; the terminal-modified capture nucleic acid is a mercapto-modified capture nucleic acid; a step of blocking, with a blocking agent, the surface of the electrode to which the capture nucleic acid is bound; the blocking agent is at least one of a small molecule blocking agent and a protein blocking agent; the small molecule blocking agent is 6-mercapto-1-hexanol (MCH). (p. 3 col. 1 para. 2.5; Scheme 1: MoS2@Au with MCH to passivate the free position of the electrode)
Regarding claim 19, Fan et al teach using non-specific proteins such as bovine serum albumin to compare with the sensing array. (p. 8 col. 2 Para. 3.8)
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) 3, 10, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al in view of Hun et al ("An enzyme linked aptamer photoelectrochemical biosensor forTau-381 protein using AuNPs/MoSe2as sensing material" Journal of Pharmaceutical and Biomedical Analysis 192 (2021) 113666).
Regarding claims 3, 10, and 11, Fan et al teach the electrocatalyst is molybdenum disulfide in 30ml and then evaporated and then deioionized water added, then 2mL is added to 4mL of the 50nm gold colloid solution (p. 3 col. 1, para. 2.3 Preparation of MoS2@Au: molybdenum disulfide, reads on "1:2 volume ratio") but is silent to the electrocatalyst is molybdenum diselenide (MoSe2); wherein a mixing ratio of the electrocatalyst and the metal nanoparticles is 1:1 to 1:9 in a volume ratio of 3.5 mg/mL of MoSe2 and 0.5 mg/mL of AuNPs; a mixing ratio of the electrocatalyst and the metal nanoparticles is 1:5 to 1:7 in a volume ratio of 3.5 mg/mL of MoSe2 and 0.5 mg/mL of AuNPs.
Hun et al teach MoSe2/AuNP for modifying an electrochemical biosensor using aptamer bound to the AuNPs/MoSe2 on the electrode. (Scheme 1). It is desirable to use MoSe2 transition metal material as it possesses higher intrinsic electronic conductivity and bound by weak van der Waals interactions that allows MoSe2 to be exfoliated into MoSe2 nanosheets. (p. 2 col. 1 para. 2). It is desirable to provide AuNP to bind aptamers and to increase electrical conductivity (p. 3 col. 1 para. 2). Simple substitution of one known element for another to obtain predictable results is held to be obvious. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the MoS2/AuNP of Fan et al with the MoSe2/AuNP of Hun et al to provide the above advantage of providing an aptamer sensor with an electrode modification that possesses higher intrinsic electronic conductivity, exfoliates to nanosheets, and increases electrical conductivity.
Fan/Hun are silent to a mixing ratio of the electrocatalyst and the metal nanoparticles is 1:1 to 1:9 in a volume ratio of 3.5 mg/mL of MoSe2 and 0.5 mg/mL of AuNPs; and mixing ratio of the electrocatalyst and the metal nanoparticles is 1:5 to 1:7 in a volume ratio of 3.5 mg/mL of MoSe2 and 0.5 mg/mL of AuNPs. In re Boesch (205 USPQ 215) teaches the optimization of a result effective variable is ordinarily within the skill of the art. A result effective variable is one that has well known and predictable results. The choice of a volume ratio and concentration of MoSe2 to AuNPs is a result effective variable that gives the well-known and expected results of providing a modification solution for an electrode capable of binding to an aptamer for detecting and providing the desired electrical conductivity required for detection. In the absence of a showing of unexpected results, the Office maintains the 1:1 to 1:9 in a volume ratio of 3.5 mg/mL of MoSe2 and 0.5 mg/mL of AuNPs; and mixing ratio of the electrocatalyst and the metal nanoparticles is 1:5 to 1:7 in a volume ratio of 3.5 mg/mL of MoSe2 and 0.5 mg/mL of AuNPs would have been within the skill of the art as optimization of a results effective variable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS MICHAEL WHITE whose telephone number is (571)270-3747. The examiner can normally be reached M-F 8:30am-5pm.
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/Dennis White/Primary Examiner, Art Unit 1758
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