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 March 10, 2026 has been entered. Claims 1, 4, 8, and 13 have been amended; claims 18-20 are new; claim 2 has been cancelled; and claims 14-17 are withdrawn. Claims 1, 3-13 and 18-20 are currently examined herein.
Status of the Rejection
Applicant’s amendments to the Claims have overcome specification objection and 112(b) rejections previously set forth in the Non-Final Office Action mailed October 22, 2025.
New grounds of claim objection for new claim 18 are necessitated by the amendment as outlined below.
New grounds of rejection for new claim 18 under 35 U.S.C. § 112(a) and 112(b) are necessitated by the amendment as outlined below.
All 35 U.S.C. § 102 and 103 rejections from the previous office action are withdrawn in view of the amendment.
New grounds of rejection under 35 U.S.C. § 103 are necessitated by the amendments as outlined below.
All double patenting rejections from the previous office action are withdrawn in view of the amendment.
Claim Objection
Claim 18 is objected to because of the following informalities:
Claim 18: please amend “the uric-acid oxidation peak” to – [[the]] a uric-acid oxidation peak--.
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.
Claim 18 is 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 18 recites “wherein application of a tensile strain between about 0.2% and about 1.2% produces a negative shift in the uric-acid oxidation peak of at least about 10 mV relative to a no-strain condition” is not supported in the specification/figures. The specification discloses “The impact of the piezoelectric effect on the electrochemical sensing performance of the ZnO-rGO-ITO-PET electrodes was further investigated with 0%, −0.2%, −0.4%, −0.6%, −0.9%, −1.2% applied strains, as shown in FIG. 68” [para. 0128 in PGPub]. The disclosed strains of 0%, −0.2%, −0.4%, −0.6%, −0.9%, −1.2% are compressed strain instead of tensile strain. Furthermore, the specification does not disclose that tensile strain between about 0.2% and about 1.2% produces a negative shift in the uric-acid oxidation peak of at least about 10 mV relative to a no-strain condition. Note that Fig.65 only shows a shift of the oxidation peak (0.330 V to 0.315 V) under -0.6% strain relative to no-strain condition [para. 0076 in PGPub]. Therefore, claim 18 is a 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.
Claim 18 is 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 18, claim 18 recites “wherein application of a tensile strain between about 0.2% and about 1.2% produces a negative shift in the uric-acid oxidation peak of at least about 10 mV relative to a no-strain condition”, and it is unclear where the tensile strain is applied (e.g., applied to the entire electrochemical sensor, or the substrate or the piezoelectric semiconductor). Thus, the scope of claim 18 is indefinite.
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.
Claims 1, 3-13 and 18-20 are rejected are rejected under 35 U.S.C. 103 as being unpatentable over Yue et al. (ZnO nanowire arrays on 3D hierarchical graphene foam: biomarker detection of Parkinson’s disease, ACS Nano, 2014, 8, 1639-1646), and in view of Sima et al. (ZnO films and nanorod/shell arrays electrodeposited on PET-ITO electrodes, Materials Research Bulletin, 2013, 48, 1581-1586), Zhang et al. (One-pot facile fabrication of graphene-zinc oxide composite and its enhanced sensitivity for simultaneous electrochemical detection of ascorbic acid, dopamine and uric acid, Sensors and actuators B: Chemical, 2016, 227, 488-496), Marrani et al. (Flexible interfaces between reduced graphene oxide and indium tin oxide/polyethylene terephthalate for advanced optoelectronic devices, ACS Applied Nano Materials, 2019, 2, 5963-5972), Alver et al. (Optical and structural properties of ZnO nanorods grown on graphene oxide and reduced graphene oxide film by hydrothermal method, Applied Surface Science, 2012, 258, 3109-3114), and Ko et al. (Multidimensional graphene and ZnO-based heterostructure for flexible transparent ultraviolet photodetector, Applied Surface Science, 2019, 481, 524-530).
Regarding claim 1, Yue teaches an electrochemical sensor (an electrochemical sensor in Fig.1), wherein the sensor comprises:
a substrate (ITO glass in Fig.1a [Synthesis of ZnO NWA/GF in Col. 2 on page 1644]); and
a piezoelectric semiconductor (ZnO nanowire arrays [ZnO NWA] in Fig.1) coupled to the substrate (see Fig.1a; the ZnO-seeded GF was fixed onto the ITO glass [Synthesis of ZnO NWA/GF in Col. 2 on page 1644]), wherein the piezoelectric semiconductor includes a nanostructured semiconducting zinc oxide catalyst (ZnO NWA in Fig.1).
Yue is silent to wherein the piezoelectric semiconductor is “mechanically” coupled to the substrate.
Sima teaches ZnO films and nanorod/shell arrays on PET-ITO electrodes (title and abstract). ITO coated polyethylene terephthalate (PET) substrates are attractive for flexible electronic and optoelectronic devices because they are lightweight, bendable and inexpensive (the first paragraph in Col. 2 on page 1581).
Zhang teaches reduced graphene oxide-zinc oxide (RGO-ZnO) composite for enhanced sensitivity for simultaneous electrochemical detection of AA, DA and UA (title and abstract).
Marrani teaches fabrication of rGO on flexible ITO/PET substrate to form a flexible rGO/ITO/PET interface for the development of wearable electronics (abstract, title and the 2nd paragraph in Col. 2 on page 5963).
Alver teaches vertically aligned zinc oxide nanorods grown on graphene oxide and reduced graphene oxide film by hydrothermal method (title, Fig.1). Note that ZnO nanorods are “mechanically” coupled to the rGO film since ZnO is hydrothermally grown on the rGO film.
Ko also teaches vertically aligned zinc oxide nanorods grown on rGO film which is disposed on ITO/PET substrate by hydrothermal method (Fig.1a and section 2.3). Note that ZnO nanorods are “mechanically” coupled to the rGO-coated ITO/PET substrate since ZnO nanorods are hydrothermally grown on the rGO-coated ITO/PET substrate.
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 ITO glass in Yue with ITO coated PET, as taught by Sima and Marrani, since it would make sensor become flexible and improve electrical stability under mechanical stress (the first paragraph in Col. 2 on page 1581 in Sima) and provide flexible and transparent support (abstract in Marrani). With the above modification, the electrochemical sensor comprises ZnO/graphene/ITO-PET structure.
Given the teachings of modified Yue regarding ZnO/graphene/ITO-PET for selective detection of UA, DA, and AA; the teachings of Zhang regarding rGO-ZnO on an electrode substrate for simultaneous electrochemical detection of AA, DA and UA with enhanced sensitivity; the teachings of Marrani regarding a flexible rGO/ITO/PET interface for wearable electronics; and the teachings of Ko regarding ZnO/rGO/ITO/PET, 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 graphene foam in modified Yue with a rGO layer to provide a rGO layer disposed between ZnO and ITO-PET, as taught by combined Zhang, Marrani and Ko, since Marrani teaches a flexible rGO/ITO/PET interface would promote the development of wearable electronics (abstract and the 2nd paragraph in Col. 2 on page 5963); Zhang teaches rGO is a suitable alternative to graphene for the detection of UA, AA and DA; and Ko teaches the rGO layer would act as a template layer to enable uniform coating of the ZnO seed layer on the ITO surface (the 2nd paragraph in Col. 2 on page 524). With the above modification, the electrochemical sensor comprises ZnO/rGO/ITO-PET structure.
Given the teachings of Alver regarding vertically aligned zinc oxide nanorods hydrothermally grown on reduced graphene oxide film (title, Fig.1), and the teachings of Ko regarding hydrothermal growth of ZnO nanorods on rGO/ITO/PE, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention use the hydrothermal method to grow the ZnO nanorods on the rGO/ITO-PET substrate, as taught by Alver and Ko, since Alver teaches ZnO nanorods can be grown on rGO film by using the hydrothermal method (title and Fig.1) and Ko teaches ZnO nanorods can be fabricated by inexpensive and simple growth technique such as hydrothermal growth on a variety of flexible substrate such as PET (the 1st paragraph in Col. 2 on page 524). Since the ZnO nanorods are grown on the rGO-coated ITO/PET substrate by the hydrothermal method, the formed piezoelectric semiconductor is “mechanically” coupled to the ITO/PET substrate.
the limitation “wherein the piezoelectric semiconductor is configured to generate piezoelectric polarization charges in response to mechanical deformation and to detect uric acid using piezo-electrocatalysis” is a functional limitation of the piezoelectric semiconductor. 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, the disclosed piezoelectric semiconductor includes a nanostructured semiconducting zinc oxide catalyst (ZnO NWA in Fig.1 of Yue), which is also a zinc oxide nanorod (ZnO nanowire arrays having diameter of ~ 40 nm and height of ~ 2 µm [caption Fig.1f in Yue]). Thus, the disclosed piezoelectric semiconductor is essentially the same as that in this instant application (as evidenced by instant claims 1 and 3). ZnO nanorods are also mechanically coupled to the flexible ITO/PET substrate, as outlined in the rejection above. Since the material and geometry of the disclosed piezoelectric semiconductor are the same as that of the instant application, and Yue further teaches the ZnO NWA/GF electrode configured to detect uric acid [UA] (see Fig.1a), the disclosed piezoelectric semiconductor is configured to perform the claimed functions of generating piezoelectric polarization charges in response to mechanical deformation and detecting uric acid using piezo-electrocatalysis. Furthermore, the courts have held that “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (II). Since the prior art does disclose the piezoelectric semiconductor comprising substantially the same elements or components of ZnO nanorod as that of the application, and is mechanically coupled to the flexible ITO/PET substrate, it is contended that the piezoelectric semiconductor of the prior art is capable of generating piezoelectric polarization charges in response to mechanical deformation and to detect UA using piezo-electrocatalysis. Accordingly, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. the ZnO catalyst is capable of generating piezoelectric polarization charges in response to mechanical deformation and detecting UA using piezo-electrocatalysis), is necessarily present in the prior art material of ZnO NWA.
Regarding claim 3, modified Yue teaches the electrochemical sensor of Claim 1, and Yue teaches wherein the nanostructured semiconducting zinc oxide catalyst is a zinc oxide nanorod (ZnO nanowire arrays having diameter of ~ 40 nm and height of ~ 2 µm [caption Fig.1f]).
Regarding claim 4, modified Yue teaches the electrochemical sensor of Claim 3, wherein the zinc oxide nanorod has a terminal end connected to the substrate (as outlined in the rejection of claim 1 above, the vertically aligned ZnO NWA is grown on the rGO-coated ITO/PET substrate by the hydrothermal method, thus the vertically aligned ZnO NWA has a terminal end [bottom end] connected to the substrate).
Regarding claim 5, modified Yue teaches the electrochemical sensor of Claim 1, wherein the substrate is constructed from a conducting material (as outlined in the rejection of claim 1 above, the substrate is ITO/PET, wherein ITO is a conducting material).
Regarding claim 6, modified Yue teaches the electrochemical sensor of Claim 1, wherein the substrate is flexible (as outlined in the rejection of claim 1 above, ITO/PET is flexible).
Regarding claim 7, modified Yue teaches the electrochemical sensor of Claim 6, wherein the substrate is an indium tin oxide coated polyethylene terephthalate (the substrate is ITO/PET, as outlined in the rejection of claim 1 above).
Regarding claim 8, modified Yue teaches the electrochemical sensor of Claim 7, wherein the ITO-PET substrate is coated with a reduced-graphene-oxide (rGO) coating, and the piezoelectric semiconductor is disposed on the rGO coating (as outlined in the rejection of claim 1 above, the rGO is coated on ITO/PET, and ZnO nanorods are grown on the rGO coating of the rGO/ITO/PET substrate by the hydrothermal method).
The limitation “drop-casted” is a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed sensor. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). In this instant case, modified Yue teaches a rGO layer is disposed between ZnO NWA and the ITO coated PET substrate, which is the same as the instant claim 8.
Furthermore, Marrani does teach a drop-casting method to prepare rGO/ITO/PET (see “drop-casting” in scheme 1 and section of preparation of the rGO/ITO/PET interface through the two step electrochemical reduction approach on page 5965). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the drop-casting method to coat rGO on ITO/PET to form a drop-casted rGO coating, as taught by Marrani, since Marrani teaches rGO layer could be fabricated on ITO/PET with the drop casting method (scheme 1).
Regarding claim 9, modified Yue teaches the electrochemical sensor of Claim 8, and Yue teaches wherein an aspect ratio of the piezoelectric semiconductor is at least 15 (diameter and height of ZnO NWA are, respectively, ~ 40 nm and ~ 2 µm [caption of Fig.1f], leading to an aspect ratio of height/diameter= ~ 2 µm/40 nm= ~ 50, falling within the claimed range).
Regarding claim 10, modified Yue teaches the electrochemical sensor of Claim 8, and “wherein the piezoelectric semiconductor has redox peaks ranging from at least one of around 0.3V to 0.4V and around 0V to 0. 1V” is found to be an inherent property of the ZnO NWA. Since the prior art does disclose the piezoelectric semiconductor of ZnO, which comprises substantially the same elements or components of ZnO as that of the application, it is contended that the piezoelectric semiconductor of zinc oxide in the prior art also has redox peaks ranging from at least one of around 0.3V to 0.4V and around 0V to 0. 1V. Accordingly, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. redox peaks ranging from at least one of around 0.3V to 0.4V and around 0V to 0. 1V), is necessarily present in the prior art material of ZnO NWA. The courts have held that “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (II).
Regarding claim 11, modified Yue teaches the electrochemical sensor of Claim 1, and “ wherein the piezoelectric semiconductor is hydrothermally synthesized to the substrate” is a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed sensor. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). In this instant case, modified Yue teaches the piezoelectric semiconductor is mechanically coupled to the substrate, which is the same as the instant application, as outlined in the rejection of claim 1 above. Furthermore, as outlined in the rejection of claim 1 above, the piezoelectric semiconductor is hydrothermally grown on the rGO/ITO/PET substrate such that the ZnO nanorods are “mechanically” coupled to the substrate. Thus, modified Yue also teaches the claimed limitation.
Regarding claim 12, modified Yue teaches a wearable electrocatalytic device (ZnO MWA/GF/ITO glass device as shown in Fig.1a of Yue is modified to ZnO/rGO/ITO/PET device as outlined in the rejection of claim 1 above; Note that “wearable” is a functional recitation of the device. 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 since ITO/PET is flexible, it allows the device to be worn) comprising the electrochemical sensor according to Claim 1 (modified Yue teaches the electrochemical sensor of claim 1 above).
Regarding claim 13, modified Yue teaches the wearable electrocatalytic device of Claim 12, and “wherein the wearable electrocatalytic device non-invasively monitors the uric acid” is an intended use limitation. 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, the disclosed wearable electrocatalytic device is configured to selectively detect uric acid, dopamine, and ascorbic acid, and can be used to detect UA levels in the serum of patients with Parkinson’s disease (abstract in Yue). Furthermore, since the prior art does disclose the wearable electrocatalytic device comprising substantially the same elements or components as that of the application, it is contended that the wearable electrocatalytic device of the prior art is capable of non-invasively monitors the uric acid.
Regarding claim 18, modified Yue teaches the electrochemical sensor of claim 1, and “wherein application of a tensile strain between about 0.2% and about 1.2% produces a negative shift in the uric-acid oxidation peak of at least about 10 mV relative to a no-strain condition” is a functional recitation of the electrochemical sensor. 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, since the prior art does disclose the electrochemical sensor comprising substantially the same elements or components as that of the applicant, as outlined in the rejection of claim 1 above, it is contended that the electrochemical sensor of the prior art is capable of performing the same function.
Regarding claim 19, modified Yue teaches the electrochemical sensor of Claim 1, wherein the substrate includes ITO-РЕT coated with a reduced-graphene-oxide (rGO) layer, and the nanostructured zinc oxide is hydrothermally grown on the rGO-coated substrate (as outlined in the rejection of claim 1 above, modified Yue teaches the substrate includes ITO-РЕT coated with a rGO layer, and ZnO nanorods are hydrothermally grown on the rGO-coated substrate to form ZnO/rGO/ITO/PET structure).
The limitation “drop-casted” is a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed sensor. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). In this instant case, modified Yue teaches a rGO layer is disposed between ZnO NWA and the ITO coated PET substrate, which is the same as the instant claim.
Furthermore, Marrani does teach a drop-casting method to prepare rGO/ITO/PET (see “drop-casting” in scheme 1 and section of preparation of the rGO/ITO/PET interface through the two step electrochemical reduction approach on page 5965). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the drop-casting method to coat rGO on ITO/PET to form a drop-casted rGO layer on ITO/PET, as taught by Marrani, since Marrani teaches a rGO layer could be formed on ITO/PET with the drop casting method (scheme 1).
Regarding claim 20, modified Yue teaches the electrochemical sensor of claim 8, wherein the nanostructured zinc oxide includes nanorods having an aspect ratio of at least about 20 (Yue teaches diameter and height of ZnO NWA are, respectively, ~ 40 nm and ~ 2 µm [caption of Fig.1f], leading to an aspect ratio of height/diameter= ~ 2 µm/40 nm= ~ 50, falling within the claimed range) on the drop-casted rGO-coated ITO-PET substrate (as outlined in the rejection of claims 1 and 8 above, ZnO nanorods are hydrothermally grown on the rGO-coated ITO-PET substrate).
“hydrothermally grown” is a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed sensor. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). In this instant case, modified Yue teaches the piezoelectric semiconductor is mechanically coupled to the rGO/ITO/PET, which is the same as the instant application, as outlined in the rejection of claim 1 above. Furthermore, as outlined in the rejection of claim 1 above, the piezoelectric semiconductor is hydrothermally grown on the rGO/ITO/PET substrate such that the ZnO nanorods are “mechanically” coupled to the substrate.
Response to Arguments
Applicant's arguments, see Remarks Pgs. 7-18, filed 3/10/2026, with respect to the 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 103 rejections have been fully considered, and all 102 and 103 rejections from the previous office action have been withdrawn.
Applicant’s Argument #1:
Regarding claim 1, Applicant argues at pages 7-8 that the claim requires a semiconductor capable of generating piezoelectric polarization charges under mechanical deformation to effect UA detection-capabilities absent from Yue's static architecture. Yue contains no disclosure of applying mechanical strain, inducing piezoelectric charge separation, generating piezoelectric potentials, or employing strain to modulate catalytic performance. Yue never applies mechanical strain to the ZnO nanostructures, nor does it disclose any flexible architecture capable of transferring strain to induce piezoelectric potentials. Given that the present application demonstrates that the claimed piezo-electrocatalytic behavior arises only under specific mechanical deformation conditions, with engineered ZnO morphologies and flexible substrates tailored to enable piezotronic coupling, the Examiner has not satisfied the requirement that an inherent feature must be an "inevitable result" of practicing the prior art. Yue's rigid ITO-glass system is neither configured nor capable of the strain-modulated piezoelectric charge generation required by the claims, and thus cannot inherently anticipate claim 1.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection for the amended claim 1 above.
Applicant’s Argument #2:
Regarding claim 2 which is incorporated into amended claim 1, Applicant argues at page 9 that Yue does not anticipate claim 2's requirement that the nanostructured ZnO catalyst be "capable of inducing piezoelectric polarization charges while under mechanical deformations." The claimed capability is not a mere material property of ZnO but a functional condition arising from the combination of ZnO morphology, mechanical coupling to a flexible substrate, grounding configuration, and applied strain, all of which is expressly disclosed in the present specification.
Examiner’s Response #2:
Applicant’s arguments have been fully considered but are moot in view of the new grounds of rejection for claim 1 above. In the new grounds of the rejection for claim 1 above, ZnO nanorods are “mechanically” coupled to the flexible ITO/PET substrate, and the nanostructured ZnO catalyst is capable of inducing piezoelectric polarization charges while under mechanical deformations. Note that a flexible substrate, grounding configuration, and applied strain are not recited in amended claim 1.
Applicant’s Argument #3:
Regarding claims 3-5, applicant argues at page 9 that because Yue lacks the piezo-electrocatalytic limitations of claim 1, the dependent claims cannot be anticipated.
Examiner’s Response #3:
As outlined in the new grounds of rejection for claim 1 and Examiner’s Responses #1-#2 above, the amended claim 1 is still unpatentable over the prior art.
Applicant’s Argument #4:
Regarding claim 11, applicant argues at pages 9-10 that the piezoelectric semiconductor is "hydrothermally synthesized to the substrate." Yue does not disclose this limitation. Here, the method of synthesis directly determines whether the ZnO is mechanically bonded in a manner enabling strain transfer and piezotronic coupling.
Examiner’s Response #4:
Applicant’s arguments have been fully considered but are moot in view of the new grounds of rejection for claims 1 and 11 above since ZnO nanorods are hydrothermally grown on the rGO/ITO/PET substrate in the new grounds of rejection for claims 1 and 11 above.
Applicant’s Argument #5:
Regarding claims 6-7, 8-10 and 12-13, applicant argues at page 10 that the cited references address different device architectures and performance objectives, and none teaches or suggests the piezo-electrocatalytic configuration claimed (i.e., intentional, strain-induced piezoelectric polarization within nanostructured ZnO mechanically coupled to a flexible substrate to enhance electrocatalysis).
Examiner’s Response #5:
Applicant’s arguments have been fully considered but are not persuasive since the motivation to combine does not need to be the same as the instant application.
Applicant’s Argument #6:
Regarding claims 6-7, applicant argues at page 11 that the rejection identifies a generic benefit (flexibility) but does not explain how substituting a 3D GF/ITO-glass architecture with a two-dimensional PET-ITO film would preserve the interfacial mechanics and charge-transfer pathways critical to piezo-electrocatalysis, let alone yield the claimed strain-tunable response.
Examiner’s Response #6:
Applicant’s arguments have been fully considered but are not persuasive since Sima teaches ZnO on ITO/PET will make the devices lightweight, bendable and inexpensive. Furthermore, substitution of the rigid ITO glass substrate with ITO/PET substrate does not change the interfacial mechanics and charge-transfer pathways.
Applicant’s Argument #7:
Regarding claims 12-13, applicant argues at page 11 that the Examiner further relies on Sima's flexible PET-ITO to assert obviousness of "wearability." But obviousness requires more than identifying that a substrate is flexible; it requires a persuasive rationale that the combined system-ZnO nanostructures, interfacial layer(s), substrate mechanics, and electrochemical operating mode-would predictably achieve the claimed use.
Examiner’s Response #7:
Applicant’s arguments have been fully considered but are not persuasive since
“wearable” is a functional recitation of the device. 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 since ITO/PET is flexible, it allows the electrochemical sensor device to be worn. Thus, the device is configured to be a wearable device.
Applicant’s Argument #8:
Regarding claims 8-10, applicant argues at pages 11-12 that: (1) the claimed architecture achieves a synergistic effect: the rGO layer promotes dense, vertical ZnO nanorod growth with higher aspect ratio and improved interfacial charge transfer (as evidenced by ECSA and impedance changes), which in turn enables strain-induced catalytic enhancement. This interplay is neither taught nor suggested by Zhang's composite or Marrani's optoelectronic interface and thus cannot be dismissed as a routine substitution. (2) Marrani's focus on optoelectronic devices does not provide an enabling or motivating disclosure for hydrothermal growth of high-aspect ZnO nanorods on rGO-coated PET-ITO in aqueous conditions that can challenge interlayer adhesion and integrity. (3) The record demonstrates unexpected results from the claimed configuration. These performance gains arise from the piezotronic coupling engineered by the particular stack (rGO| ZnO NRs|ITO-PET) and are not predictable from the mere presence of rGO (Zhang) or flexible ITO-PET (Sima; Marrani). (4) the proposed combinations implicitly assume that features from disparate systems-Yue's 3D GF-supported ZnO, Sima's electrodeposited ZnO on PET-ITO, Zhang's rGO-ZnO composites, and Marrani's rGO/ITO-PET for optics-can be interchanged without degrading (and indeed while enhancing) the mechanically mediated electron-transfer phenomena central to the claims. But obviousness cannot be predicated on picking and choosing elements from different references with hindsight, absent evidence that the art as a whole taught their compatibility for the same purpose. (5) to the extent the rejection treats the claimed rGO placement and ZnO growth sequence as a "product-by-process" that does not confer patentable distinction, that approach is inapposite.
Examiner’s Response #8:
Applicant’s arguments have been fully considered but are moot in view of the new grounds of rejections for claims 1 and 8-10 above.
Firstly, the substitution of graphene with rGO does not need to have the same motivation as the instant application.
Secondly, as outlined in the new grounds of rejection for claim 1 above,
Alver teaches hydrothermal growth of ZnO nanorods on rGO film, and Ko teaches hydrothermal growth of ZnO nanorods on rGO/ITO/PET substrate, thus it would be obvious to grow ZnO nanorods on the rGO coated ITO/PET substrate with the hydrothermal method.
Thirdly, the features that applicant relied on (i.e., the particular stack [rGO|ZnO NRs|ITO-PET) is even not claimed since claim 8 recites ITO-PET is coated with rGO, and the piezoelectric semiconductor is disposed on the rGO coating. To establish unexpected results, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)). In this instant case, applicant has not compared the results with different configurations to demonstrate unexpected results from the claimed configuration.
Fourth, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this rejection, the rejection is based on teachings of the prior art and does not include knowledge gleaned only from the applicant's disclosure. Thus such a reconstruction is proper.
Finally, the arguments regarding the product-by-process limitations are moot in view of the new grounds of rejection above. Note that Marrani teaches the drop-casting method to form a drop-casted rGO. Alver and Ko teach the hydrothermal growth of ZnO nanorods on rGO and rGO/ITO/PET, respectively.
Applicant’s Argument #9:
Regarding new claims 18-20, applicant argues at pages 15-17 that Yue lacks the very electromechanical behavior that claim 18 requires. Yue neither employs rGO as an interfacial layer on ITO-PЕТ nor grows ZnO directly on such an rGO-coated flexible substrate. These claims therefore overcome the art and recite performance-critical configurations rather than arbitrary design selections.
Examiner’s Response #9:
Applicant’s arguments have been fully considered but are moot in view of the new grounds of rejections for new claims 18-20 above.
Examiner suggests applicant to amend claim 1 by further reciting a distance controller configured to apply a strain on the piezoelectric semiconductor, which generates the mechanical deformation.
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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