DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on January 21, 2026. Claims 1-2 and 4-20 are pending in the application.
Status of Objections and Rejections
All objections from the previous office action are withdrawn in view of Applicant’s amendment.
All rejections from the previous office action are maintained.
Claim Rejections - 35 USC § 102
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(s) 1, 4, 7-8, 15, 17, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tayebi (US 2016/0245774).
Regarding claim 1, Tayebi teaches a nano electronic device (Fig. 9; ¶66: a nanogap transducer device 900) comprising:
first and second nano electrodes (Fig. 9; ¶66: electrodes 902 and 904);
a nanogap defined by the first and second nano electrodes and separating the first and second nano electrodes (Fig. 9: the nanogap between the electrodes 902 and 904);
a solvent present in the nanogap and including a plurality of redox molecules (¶25: detection of a redox-active molecule using redox cycling in nanogap transducers); and
a component (Fig. 3; ¶40: TiO2 coating; or ¶¶42,46: silicon dioxide) configured as a disruptor of solvent atomic structures (this is a functional limitation in apparatus claim; since the disclosed material of the coating, silicon dioxide, which is the same as the disclosed material in the specification (PGpub ¶53), and thus the same material would have the same function, i.e., being a disruptor of solvent atomic structures), the component forming a surface portion on a bulk portion within the device (¶42: above a substrate 400; thus the coating must be on the substrate and deposited on the electrode surface within the device; here the combination of the substrate and the electrodes are together deemed to be the bulk portion of the device), the component being located at a predetermined distance away from the first and second nano electrodes (Fig. 3: the TiO2 coating having a predetermined distance away from the respectively opposite Pt electrode), the surface portion comprising a hydrophobic termination (SiO2 is hydrophobic, and thus it must have a hydrophobic termination on the surface) configured to disrupt the solvent atomic structures at the surface of the component in contact with the solvent (this is a functional limitation in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 4, Tayebi teaches wherein the bulk portion includes a dielectric material (¶47: using plain silicon substrates; silicon is a dielectric material).
Regarding claim 7, Tayebi teaches wherein the bulk portion includes Pt (Fig. 3: Pt electrodes).
Regarding claim 8, Tayebi teaches wherein the device is a DNA sequencing device (¶23: DNA sequencing).
Regarding claim 15, Tayebi teaches a nanoelectronic biosensor (Fig. 9; ¶66: a nanogap transducer device 900) comprising:
a substrate (¶42: above a substrate 400) supporting first and second nano electrodes (Fig. 9: electrodes 902 and 904);
a nano gap separating the first and second nano electrodes (Fig. 9: the gap between the electrodes 902 and 904) and including a solvent with redox molecules (¶25: detection of a redox-active molecule using redox cycling in nanogap transducers) and atomic interfacial structures (e.g., Fig. 10: thiol compound 1004); and
a hydrophobic component (Fig. 3; ¶40: TiO2 coating; or ¶¶42,46: silicon dioxide) configured to disrupt the atomic interfacial structures (the designations “hydrophobic” and configured to disrupt the atomic interfacial structures” are functional limitations in apparatus claim; since the disclosed material of the coating, silicon dioxide, which is the same as the disclosed material in the specification (PGpub ¶53), and thus the same material would have the same function, i.e., being hydrophobic and a disruptor of solvent atomic structures), the component located at a predetermined distance from the electrodes (Fig. 3: the TiO2 coating having a predetermined distance away from the respectively opposite Pt electrode).
Regarding claim 17, Tayebi teaches wherein the hydrophobic component forms a top layer on the substrate (since the hydrophobic coating forms on the electrode surface which is on the substrate, the hydrophobic coating is a top layer on the substrate).
Regarding claim 19, Tayebi teaches wherein the hydrophobic component's distance to the first and second nano electrodes is equal (Fig. 3: the coating on each Pt electrode having an equal distance to the respectively opposite electrode).
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(s) 2, 9-11, 13, 16, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tayebi.
Regarding claims 2 and 16, Tayebi teaches all limitation of claims 1 and 15 respectively, but fails to teach wherein the predetermined distance is about 0.5 to 10 nm away from at least one of the first and second nano electrodes (claim 2) or wherein the predetermined distance is about 0.5 to 10 nm (claim 16).
However, Tayebi teaches two Pt electrodes having a 50 nm gap 302 and each electrode having a 3 nm thick TiO2 coating (Fig. 3; ¶40).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tayebi by adjusting the predetermined distance between the disruptor (i.e., the coating) and the at least one of the first and the second nano electrodes within the claimed range because "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A). Furthermore, there is no indication in the present application that the distance is critical to the invention, which would have supported the non-obvious of the predetermined distance range of about 0.5 to 10 nm.
Regarding claim 9, Tayebi teaches a nanoelectronic system (Fig. 9; ¶66: a nanogap transducer device 900) comprising:
a substrate (¶42: above a substrate 400) supporting first and second nano conductors separated by a nanogap (Fig. 9: electrodes 902 and 904 and the gap in between);
a solvent including redox molecules present in the nanogap (¶25: detection of a redox-active molecule using redox cycling in nanogap transducers); and
a disruptor of solvent atomic structures (Fig. 3; ¶40: TiO2 coating; ¶¶42,46: silicon dioxide; the designation “of solvent atomic structures” is a functional limitation in apparatus claim; since the disclosed material of the coating, silicon dioxide, which is the same as the disclosed material in the specification (PGpub ¶53), and thus the same material would have the same function, i.e., being a disruptor of solvent atomic structures), the disruptor being spaced apart from the first and second nano conductors (Fig. 3).
Tayebi does not disclose there is about 0.5 to 10 nm between at least the first nano conductor and the disruptor.
However, Tayebi teaches two Pt electrodes having a 50 nm gap 302 and each electrode having a 3 nm thick TiO2 coating (Fig. 3; ¶40).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tayebi by adjusting the predetermined distance between the disruptor (i.e., the coating) and the at least one of the first and the second nano electrodes within the claimed range because "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A). Furthermore there is no indication in the present application that the distance is critical to the invention, which would have supported the non-obvious of the predetermined distance range of about 0.5 to 10 nm.
Regarding claim 10, Tayebi teaches wherein the disruptor is a hydrophobic structure (silicon dioxide is hydrophobic; also, since the disclosed material of the coating, silicon dioxide, which is the same as the disclosed material in the specification (PGpub ¶53), and thus the same material would have the same function, i.e., being hydrophobic).
Regarding claim 11, Tayebi teaches wherein the disruptor forms a surface portion on the substrate (since the disruptor forms on the electrode surface which is on the substrate, the hydrophobic coating is a top layer on the substrate).
Regarding claim 13, Tayebi teaches wherein the disruptor is hydrophobic (silicon dioxide is hydrophobic; also, since the disclosed material of the coating, silicon dioxide, which is the same as the disclosed material in the specification (PGpub ¶53), and thus the same material would have the same function, i.e., being hydrophobic).
Regarding claim 20, Tayebi teaches all limitation of claim 15, but fails to teach wherein the hydrophobic component extends an entire length of the nanogap except for 0.5 to 10 nm from each one of the first and second nano electrodes.
However, Tayebi teaches two Pt electrodes having a 50 nm gap 302 and each electrode having a 3 nm thick TiO2 coating over the electrode (Fig. 3; ¶40).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tayebi by adjusting the length of the hydrophobic coating having a predetermined distance from the each one of the first and the second nano electrodes within the claimed range because "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A). Furthermore, there is no indication in the present application that the distance is critical to the invention, which would have supported the non-obvious of the predetermined distance range of about 0.5 to 10 nm.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tayebi in view of Babes-Dornea (US 2010/0040935).
Regarding claim 5, Tayebi discloses all limitation of claim 1, but fails to teach wherein the surface portion includes a halogen.
However, Babes-Dornea teaches an electrode 100, including a hydrophobic graphite support layer 102, a semi-hydrophobic electro-catalyst layer 104 and a hydrophilic electro-catalyst layer 106 (Fig. 2; ¶17). The support layer 102 has been coated with PTFE so as to make it hydrophobic (¶18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tayebi by substituting the hydrophobic surface portion with the one made of PTFE as taught by Babes-Dornea. The suggestion for doing so would have been that PTFE is a suitable material for hydrophobic coating and the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP § 2144.07.
Claim(s) 6, 14, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tayebi in view of Hanssen (B.L. Hanssen, Recent strategies to minimise fouling in electrochemical detection systems, Rev Anal Chem 2016, 35(1), pp. 1-28).
Regarding claims 6, 14, and 18, Tayebi discloses all limitation of claims 1, 9, and 15 respectively, but fails to teach wherein the surface portion has a first porosity and the bulk portion has a second porosity, the first porosity being greater than the second porosity (claim 6) or wherein the disruptor has a first porosity and the substrate has a second porosity, the first porosity being greater than the second porosity (claim 14) or wherein the hydrophobic component has a first porosity and the substrate has a second porosity, the first porosity being greater than the second porosity (claim 18).
However, Hanssen teaches a protective layer or barrier on an electrode to prevent the fouling agent from reaching the electrode surface ([Abstract]). For example, base-hydrolysed cellulose acetate-modified electrodes have most resistance to fouling because the cellulose film offers a steric barrier that prevents macromolecules from diffusing to the surface and its porosity can be progressively increased by controlled hydrolysis (p. 13, col. 1, para. 1), which renders the porosity of the protective layer a result-effective variable.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tayebi by adjusting the porosity of the protective layer (the surface portion or the disruptor of the hydrophobic component) as recited, e.g., having a porosity greater than the porosity of the substrate, because porosity of the protective layer is a result-effective variable and can be optimized through routine experimentation. MPEP 2144.05 (II)(B).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tayebi in view of Yang (US 2020/0080958).
Regarding claim 12, Tayebi discloses all limitation of claim 9, but fails to teach the nanoelectronic system further comprising current collectors connected to the first and second nanoconductors, and the disruptor forming a surface portion of the current collectors.
However, Yang teaches a gas sensor assembly, including an electrolyte 12 disposed between a sensing electrode 14 and a counter electrode 16 (Fig. 1; ¶25). Current collectors 15 and 17 are attached to the electrodes and are connected to circuit 20, which includes measurement and/or control device 19 (Fig. 1; ¶25).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tayebi by incorporating two current collectors on two electrodes as taught by Yang because the current collectors would connect the electrodes and the circuit for measurement (¶25). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A). Further, the combined Tayebi and Yang would necessarily result in the disruptor on the electrodes (Tayebi, Fig. 3) forming a surface portion of the current collectors.
Response to Arguments
Applicant’s arguments have been considered but are unpersuasive.
Applicant argues the specification discloses “in at least one embodiment, the component is not present on the electrodes, but rather is spatially removed from the electrodes such that the electrodes are free of the component. As such, the component is located at a predetermined distance from at least one of the electrodes or both electrode” (Response, p. 6). Applicant further argues Tayebi does not teach “the component being located at a predetermined distance away from the two electrodes because it discloses the TiO2 coating layers are on platinum electrodes, but not spatially removed from the electrodes (p. 9). The similar arguments are made for claim 9 (pp. 12-13). Regarding claim 17, Applicant argues the oxide coating of Tayebi is formed on the electrode surfaces, no on the substrate itself (p. 11, para. 2). These arguments are unpersuasive. First, Examiner notes that claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). For example, claim 1 recites a component forming a surface portion on a bulk portion within the device, which is very broad and fails to define the alleged claim scope as Applicant argued, because there is no recited substrate, no positional relationships between the electrodes and the bulk portion.
PNG
media_image1.png
504
774
media_image1.png
Greyscale
Based on Applicant’s argument, it seems that it intends to only claim the component on the substrate 20 and between electrodes 22 and 24 (Fig. 5: the thick line inside the circle). However, the reference number 40 for the component is on the surface of the electrodes 22 and 24 (Fig. 5; PGpub ¶57). Thus, the recited component is interpreted as electrode coating and a top layer on the substrate. The distance between the left component 40 and electrode 24 is at the same distance as that between the right component 40 and electrode 22. Examiner suggests Applicant to amend the independent claims 1, 9, and 15 to particularly point out and distinctly claim the subject matter, if it does intend to only claim the component inside the circle, and an amended drawing adding the reference number 40 to this component is requested.
Applicant argues silicon dioxide is commonly hydrophilic in its native, hydroxylated state, and Tayebi describes its coatings as hydrophilic and biocompatible, which is inconsistent with the hydrophobic surface required by claims 1 and 15 (Response, pp. 7-8). This argument is unpersuasive because Tayebi discloses the self-assembled layer of hydrophilic and biocompatible organic compounds, e.g., polyethylene glycols, anilines, phosphonates, thiols, peptides (¶51), not the dielectric film formed from the material of TiO2 or SiO2 (¶107). In response to Applicant’s argument on the limitations “a component configured as a disruptor of solvent atomic structure” and “a hydrophobic component configured to disrupt the atomic interfacial structures” (p. 10), they are functional limitations in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)). All the structural limitations of the recited device are taught in the prior art, and the component is made of the same material, SiO2, and thus the same material would have the same property and function as a disruptor of solvent atomic structures. Even if the silicon dioxide can be either hydrophilic or hydrophobic depending on its processing conditions, it would be obvious to one of ordinary skill in the art to use hydrophobic silicon dioxide because choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is prima facie obvious. MPEP 2141(III)(E).
Applicant is welcome to request an interview to discuss further prosecution.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 CAITLYN M SUN whose telephone number is (571)272-6788. The examiner can normally be reached M-F: 8:30am - 5:30pm.
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, Luan 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.
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.
/C. SUN/Primary Examiner, Art Unit 1795