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 .
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 7, 2026 has been entered.
Status of the Claims
Claims 1 and 16(w) have been amended; claim 22 is new; and claims 13-21 have been withdrawn previously. Claims 1-12 and 22 are examined herein.
Status of the Rejection
All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment.
New grounds of rejection under 35 U.S.C. § 102 and 103 are necessitated by the amendment as outlined below.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abdelrahim et al. (Study of the electrocatalytic activity of cerium oxide and gold-studded cerium oxide nanoparticles using a sonogel-carbon material as supporting electrode: electroanalytical study in apple juice for babies, Sensors, 2013, 13, 4979-5007). Rubio et al. (US20210255132A1) is used as an evidence for claim 7.
Regarding claim 1, Abdelrahim teaches a sensing composition (gold-studded cerium oxide nanoparticles using a sonogel-carbon material as supporting electrode [title, abstract]; AuSNPs/CeO2 nanoparticle-modified SNGC sensors [section 2.7]), a composition [claim 1; para. 0011]) comprising:
a conductive support (a sonogel-carbon [SNGC] material as supporting electrode [title and section 2.7]); and
a sensing matrix on the conductive support (AuSNPs/CeO2 nanocomposites were deposited on the SNGC electrode surface [section 2.7]), wherein the sensing matrix comprises cerium oxide nanoparticles on or intermingled with, metal nanoparticles (AuSNPs/CeO2 nanocomposite [sections 2.6-2.7]; CeO2 nanoparticles studded with AuSNPs shown in Figs. 1A-1B; AuSNPs are deemed as the metal nanoparticles);
wherein the cerium oxide nanoparticles comprise agglomerations decorating the metal nanoparticles (the rectangular and cubic forms in Fig.1A correspond to CeO2 nanoparticles, and Fig.1A shows many squares and rectangles agglomerate [section 3.1.1]; thus the cerium oxide nanoparticles comprise agglomerations decorating the gold nanoparticles).
Regarding claim 2, Abdelrahim teaches the sensing composition of claim 1, wherein the metal nanoparticles comprise gold nanoparticles (as outlined in the rejection of claim 1 above, the metal nanoparticles comprise gold nanoparticles [AuSNPs/CeO2 nanocomposite in section 2.7]).
Regarding claim 7, Abdelrahim teaches a sensor (AuSNPs/CeO2 nanoparticle-modified SNGC sensor [section 2.7]) comprising the sensing composition of claim 1 (Abdelrahim teaches the sensing composition of claim 1) in electrical communication with an electrode (AuSNPs/CeO2 nanoparticles are deposited on the SNGC electrode surface [section 2.7]),
“wherein the electrode is configured to act as a transducer for the sensing composition, and the sensor is capable of detecting hydroxyl radicals generated by the Fenton reaction” is functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Abdelrahim teaches the SNGC electrode to support the AuSNPs/CeO2 nanocomposite, and the electrode was used to determine ascorbic acid in commercial apple juices for babies based on the DPV technique (section 3.3 and the last row in Table 4), thus, the electrode is configured to act as a transducer for the sensing composition. Since the sensing composition comprises CeO2 nanoparticles, and as evidence by Rubio which teaches a sensor comprising cerium oxide nanoparticles disposed on a carbon-based substrate and the sensor is capable of detecting hydroxyl radicals generated by the Fenton reaction (the sensing composition comprises cerium oxide nanoparticles deposited on a carbon-based substrate [para. 0025], wherein the working electrode comprises a sensing composition configured to detect free radicals [para. 0024 in Rubio]; Cyclic voltammetry was used to characterize the interaction of the composite sensor with ●OH radicals in the Fenton reaction [para. 0072 in Rubio]; thus the sensor is capable of detecting hydroxyl radicals generated by the Fenton reaction), thus, the disclosed sensor of Abdelrahim is capable of detecting hydroxyl radicals generated by the Fenton reaction due to the presence of the CeO2 nanoparticles.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Abdelrahim, as applied to claim 2 above.
Regarding claim 3, Abdelrahim teaches the sensing composition of claim 2, and is silent to wherein the sensing matrix includes an atomic ratio of Au:Ce of about 1:0.075.
Abdelrahim further teaches electrocatalytic activity of gold sononanoparticles (AuSNPs)/CeO2 nanocomposite, deposited on the surface of a Sonogel-carbon matrix used as supporting electrode, using different AuSNPs:CeO2 w/w ratios (abstract, section 2.6). Table 2 shows electrodes modified with higher proportion of AuSNPs seem to offer better sensitivity (consider that the higher percentage, the lower the CeO2 concentration) (the first paragraph on page 4995, Table 2). Thus, the AuSNPs:CeO2 w/w ratio affects the sensitivity of the sensing composition. Note that an atomic ratio of Au: Ce affects the AuSNPs:CeO2 w/w ratio, which further affects the sensitivity of the sensing composition.
As the sensitivity of the sensing composition is a variable that can be modified, among others, by adjusting the weight ratio of AuNP: CeO2 through adjusting the atomic ratio of Au: Ce, with higher atomic ratio of Au: Ce resulting in the higher AuNP: CeO2 weight ratio which further leads to the better sensitivity, the precise atomic ratio of Au: Ce 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 atomic ratio of Au: Ce 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 atomic ratio of Au: Ce to obtain the atomic ratio of Au: Ce being about 1:0.075 in order to provide the desired sensitivity, as taught by Abdelrahim. “[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.).
Claims 4-6, 8-10, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Abdelrahim, as applied to claims 1 and 7 above, and further in view of Rubio et al. (US20210255132A1).
Regarding claim 4, Abdelrahim teaches the sensing composition of claim 1, and is silent to wherein the conductive support comprises a conductive, amorphous carbon.
Rubio teaches compositions, devices, and methods for sensing free radicals such as hydroxyl radicals, involving cerium oxide nanoparticles on a carbon-based substrate (abstract), wherein the carbon-based substrate comprises a conductive, amorphous carbon [claim 1, para. 0013].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the conductive support of SNGC in Abdelrahim with a carbon-based substrate comprising a conductive, amorphous carbon, as taught by Rubio, since Rubio teaches the suitable alternative carbon-based substrate comprising conductive, amorphous carbon as the conductive support to support cerium oxide nanoparticles as the sensor [para. 0013].
Regarding claim 5, Abdelrahim teaches the sensing composition of claim 1, and is silent to wherein the conductive support comprises carbon black.
Rubio teaches compositions, devices, and methods for sensing free radicals such as hydroxyl radicals, involving cerium oxide nanoparticles on a carbon-based substrate (abstract), wherein the carbon-based substrate comprises carbon black [para. 0013].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the conductive support of SNGC in Abdelrahim with a carbon-based substrate comprising carbon black, as taught by Rubio, since Rubio teaches the suitable alternative carbon-based substrate comprising carbon black as the conductive support to support cerium oxide nanoparticles as the sensor [para. 0013].
Regarding claim 6, Abdelrahim teaches the sensing composition of claim 1, wherein the sensing composition is free of Prussian blue (section 2 does not use Prussian blue to make AuSNPs/CeO2 nanoparticle-modified SGNC sensor).
since Abdelrahim is silent to wherein the sonogel-carbon material is free of graphene and graphene oxide, thus is silent to wherein the sensing composition is free of graphene and graphene oxide.
Rubio teaches compositions, devices, and methods for sensing free radicals such as hydroxyl radicals, involving cerium oxide nanoparticles on a carbon-based substrate (abstract), wherein the sensing composition is free of Prussian blue, graphene, and graphene oxide (wherein the composition does not include Prussian blue; and or/wherein the carbon-based substrate does not include graphene or graphene oxide [claim 5]; the carbon-based substrate consists of the conductive, amorphous carbon [para. 0013]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the conductive support of SNGC in Abdelrahim with a carbon-based substrate consisting of a conductive, amorphous carbon, as taught by Rubio, since Rubio teaches the suitable alternative carbon-based substrate consisting of conductive, amorphous carbon, which does not include graphene and graphene oxide as the conductive support to support cerium oxide nanoparticles as the sensor [para. 0013].
With the above modification, the sensing composition is free of Prussian blue, graphene, and graphene oxide.
Regarding claim 8, Abdelrahim teaches the sensor of claim 7, and further teaches wherein the electrode is a working electrode (the SNGC electrode operating as working electrode [section 2.4]) and the sensor further comprises a counter electrode (platinum wire as the counter electrode in a three-electrode cell [section 2.2]).
Abdelrahim is silent to wherein the working electrode and the counter electrode are arranged on a sensing area.
Rubio teaches compositions, devices, and methods for sensing free radicals such as hydroxyl radicals, involving cerium oxide nanoparticles on a carbon-based substrate (abstract), and further teaches wherein the electrode is a working electrode on a sensing area and the sensor further comprises a counter electrode on the sensing area (The sensor 10 includes a sensing composition on a working electrode 12, where the sensing composition comprises cerium oxide nanoparticles deposited on a carbon-based substrate. The sensor 10 may further include a counter electrode 14. The working electrode 12 and the counter electrode 14 are best seen in FIG. 8D. The sensor 10 directly interacts with the area where the source of free radical generation is. The sensor 10 may be utilized for real-time free radical detection [para. 0065]; Fig.8D shows the working electrode 12 and the counter electrode 14 are on sensing area 20 [para. 0067]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rearrange the working and counter electrodes in Abdelrahim by integrating the working and counter electrodes on a sensing area of the sensor, as taught by Rubio, since Rubio teaches a suitable alternative configuration of integrating the working and counter electrodes into a sensing area at the distal end of the sensor probe which can be easily inserted into the area to be measured [para. 0066].
Regarding claim 9, modified Abdelrahim teaches the sensor of claim 7, and Abdelrahim teaches wherein the metal nanoparticles comprise gold nanoparticles (as outlined in the rejection of claim 1 above, the metal nanoparticles comprise gold nanoparticles [section 2.7]).
Regarding claim 10, modified Abdelrahim teaches the sensor of claim 7, and Abdelrahim teaches wherein the electrode is a carbon electrode. “screen-printed” is product-by-process limitation. There is no apparent difference between the carbon electrode as claimed and the carbon electrode as taught by Abdelrahim. MPEP 2113.
Furthermore, Rubio does teach wherein the electrode is a screen-printed carbon electrode (Screen-printed carbon electrodes were used as the sensor base with 2 mm working electrodes [para. 0075]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the SNGC electrode with a screen-printed carbon electrode, as taught by Rubio, since Rubio teaches the suitable alternative carbon-based substrate made by the screen-printing technique as the conductive support/electrode to support cerium oxide nanoparticles as the sensor [para. 0013, 0075].
Regarding claim 12, modified Abdelrahim teaches the sensor of claim 7, and Abdelrahim is silent to wherein the sensor is in a hand-held sensor device.
Rubio does teach wherein the sensor is in a hand-held sensor device (The sensor may be a handheld device capable of real-time, accurate, and consistent sensing of ROS such as, but not limited to, hydroxyl radicals [para. 0053]; The sensor 10 include a working electrode 12 and a counter electrode 14 disposed on sensing area 20 of the sensor probe [para. 0067] ).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sensor by integrating the electrodes on a sensing area of the sensor as a hand-held sensor probe, as taught by Rubio, since it would be easily inserted into the area to be measured [para. 0066 in Rubio].
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Abdelrahim and Rubio, as applied to claim 10 above, and further in view of Duanghathaipornsuk et al. (The effect of size and content of cerium oxide nanoparticles on a composite sensor for hydroxyl radicals detection, Sensors and actuators B: Chemical, 2020, 321, 128467).
Regarding claim 11, modified Abdelrahim teaches the sensor of claim 10, wherein the screen-printed carbon electrode comprises a carbon working electrode (as outlined in the rejection of claim 10 above, AuSNPs/CeO2 nanocomposites were disposed on the screen-printed carbon electrode as the carbon working electrode).
Abdelrahim further teaches a three-electrode system comprising the working electrode, Pt counter electrode and silver/silver chloride reference electrode (section 2.2).
Rubio teaches screen-printed carbon electrodes (Pine Instruments) were used as the sensor base with 2 mm working electrodes [para. 0075].
Modified Abdelrahim is silent to wherein the screen-printed carbon electrode further comprises a carbon auxiliary electrode, and an Ag/AgCl reference electrode.
Duanghathaipornsuk teaches a sensor comprising a screen-printed carbon electrode for hydroxyl radicals detection (abstract), and further teaches screen-printed carbon electrodes (Pine Instruments) coated with a 2 mm carbon working electrode, Ag/AgCl reference electrode, and carbon counter electrode were used as the sensor base (section 2.1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the screen-printed carbon electrode in modified Abdelrahim to a screen-printed carbon electrode comprises a carbon working electrode, a carbon auxiliary electrode, and an Ag/AgCl reference electrode, as taught by Duanghathaipornsuk, since Duanghathaipornsuk teaches the suitable alternative screen-printed carbon electrode comprising a carbon working electrode, a carbon auxiliary electrode, and an Ag/AgCl reference electrode for a composite sensor comprising cerium oxide nanoparticles for hydroxyl radicals detection (abstract and section 2.1).
Allowable Subject Matter
Claim 22 is allowable.
The following is a statement of reasons for the indication of allowable subject matter.
As outlined in the rejection of claim 1 above, Abdelrahim teaches a sensing composition comprising: a conductive support; and a sensing matrix on the conductive support, wherein the sensing matrix comprises cerium oxide nanoparticles on or intermingled with, metal nanoparticles. The prior art of the record does not teach and/or suggest “wherein the cerium oxide nanoparticles do not directly contact the conductive support”, recited in the new claim 22.
Response to Arguments
Applicant's arguments, see Remarks Pgs. 5-8, filed 5/7/2026, with respect to the 35 U.S.C. § 103 rejections have been fully considered, and all rejections from the previous office action are withdrawn in response to the amendment to claims.
Applicant’s Argument #1:
Applicant argues at pages 5-7 that the prior art does not teach the amended features: wherein the cerium oxide nanoparticles comprise agglomerations decorating the metal nanoparticles, recited in the amended claim 1. Claims 2-12 depend on claim 1 and are allowable for the same reason of the amended claim 1. New Claim 22 is patentable for reciting “wherein the cerium oxide nanoparticles do not directly contact the conductive support”, found in [para. 0044] of the application.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection for claim 1 above. The new claim 22 is allowable for the limitation “wherein the cerium oxide nanoparticles do not directly contact the conductive support”.
Conclusion
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/SHIZHI QIAN/Examiner, Art Unit 1795
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