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 .
Drawings
The Drawings filed 22 September 2023 are approved by the examiner.
Information Disclosure Statement
The information disclosure statement(s) (IDS) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner and an initialed copy is attached.
Citation Notation
The following citations are made for the convenience of the reader:
Citations to PG publications are made to paragraph number under the ¶ format. Citations to other publications made under the format “ col 1/2” or pp 1 are directed to column and line number or to a page - whichever is appropriate. It is noted that any reference to a figure or a table is also directed to any accompanying text in the specification or the document. Notwithstanding those citations, the reference(s) is (are) relied upon for the teachings as a whole.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 12 December 2025 is acknowledged. The traversal is on the ground(s) that Groups I-III are closely related thus there is a lack of undue burden. This is not found persuasive because Groups I-III are directed to specific inventions (i.e. different process, system and composition) that require differing search strategies and databases (class/subclass) and/or the search for a particular invention would not necessarily lead to the same and overlapping prior art for the supplementary invention - thus leading to an undue burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12 December 2025.
Examiner’s Remarks
It is noted that the phrase "for acridinium ester chemiluminescence" in the preamble is construed as an intended use and therefore the composition only need to be capable of being a preform for acridinium ester chemiluminescence. Case law holds that a recitation of the intended use 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 In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). It is the examiner's position that the preamble does not state any distinct definition of the claimed invention's limitations. Further, the purpose or intended use, i.e. for use in for acridinium ester chemiluminescence, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art invention; thus, the prior art structure - which is a composition identical to that set forth in the present claims - is capable of performing the recited purpose or intended use.
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) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jiang (CN-108203821-A, a machine translation is provided).
Jiang discloses a composition comprising 10-50 mL of citric acid (~ 32 mM), 20-80 mL of hydrogen peroxide and 1-5g of graphene oxide (1-5 μg/ml) (abs, pg. 2 and examples). According to MPEP 2111.03 [R3], the transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements steps.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kwun "Development of 1,1′-oxalyldiimidazole chemiluminescent biosensor using the combination of graphene oxide and hairpin aptamer and its application." Talanta Volume 119, 15 February 2014, Pages 262-267.
Kwun discloses a biosensor sensor reagent comprising 110 μg/ml of graphene oxide, 10 nM of HCl and hydrogen peroxide (abs, experimental section starting on pg. 262 and examples). According to MPEP 2111.03 [R3], the transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.
Claim(s) 1, 2 and 5-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bao (CN-108203821-A, a machine translation is provided).
Bao discloses a composition comprising 30-160 parts of graphene oxide, 2.5-7.5 parts of ascorbic acid and 1.1-3.5 part of hydrogen peroxide (abs, pg. 2 and examples). According to MPEP 2111.03 [R3], the transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Natrajan (US2019/0234883A1, cited in the IDS) in view of Cao (US-20250389736-A1) or Han NPL (cited in the IDS).
Claims 1 and 2: Natrajan discloses a reagent for acridinium ester chemiluminescence comprising a hydrogen peroxide and acid (abs, ¶3-13, 20-28, 31, 39, 49-57, 60-68, 77-79). The Natrajan reference discloses the claimed invention but does not explicitly disclose the feature of the graphene-based material. In an analogous art, the Cao or Han reference discloses that the feature of a graphene-based material in a reagent for acridinium ester chemiluminescence is well known in the art (Cao: abs, ¶ 79, 80, 108, 118-122, 135-144, 152, examples and Figs 1 and 2 with accompanying text & Han: abs, experimental section, Scheme 1 and Fig 5 with accompanying text). One of ordinary skill in the art would have recognized that applying the known technique of Han or Cao to the teachings of Natrajan would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhancing the sensitivity, accuracy and signal sensitivity. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution/implementation would be repugnant to a skilled artisan.
Claims 2-4 and 6-8: Natrajan and Han or Cao disclose varying the concentration of the components to known workable values such as 20 μg/mL for the graphene-based material, less than 20 mM for the acid and less than 20 mM for the hydrogen peroxide (Natrajan: ¶71, Cao: ¶177-187 & Han: experimental section) - thus it would have been well within the purview of a skilled artisan to optimize the concentration levels of known components to gain the benefit of enhanced sensitivity, accuracy and signal sensitivity.
Claim 5: Natrajan and Han or Cao disclose the claimed acid such as nitric acid (Natrajan: ¶ 3, 13, 28, 77-79, claim 32).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRI V NGUYEN whose telephone number is (571)272-6965. The examiner can normally be reached M-F 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuthers can be reached at 571.272.7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TRI V NGUYEN/Primary Examiner, Art Unit 1764