DETAILED CORRESPONDENCE
Summary
This is the initial Office Action based on the Doi, et al. application filed with the Office on 13 December 2023.
Claims 1-20 are currently pending and have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement(s) (IDS(s)) submitted regarding the present application filed on 3 June 2025 and 13 December 2023, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) have/has been considered by the Examiner.
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.
Claims 1, 2, 5, 7, 11 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a published paper by M.Y. Mulla, et al. (“UV crosslinked poly(acrylic acid): a simple method to bio-functionalize electrolyte-gated OFET biosensors” Journal of Materials Chemistry B, 3(25): p. 5049-5057, 2015; hereinafter, “Mulla”).
Regarding claim 1, Mulla discloses electrolyte-gated organic field-effect transistors (EGOFETs) have become the focus of intense research activity aiming at the development of new sensing platforms in bioelectronics (1st ¶, Introduction, P. 5049; which reads upon the instantly claimed, “[a] sensor”). Mulla teaches interdigitated gold source (S) and drain (D) electrodes (5 mm channel length and 10 mm channel width) were photo-lithographically defined on Si/SiO2 substrates using titanium as an adhesion promoting layer (1st ¶, EGOFET device fabrication, p. 5050-5051; which reads upon “a first electrode; [and] a second electrode”). Mulla also teaches a gold gate electrode (Caption to Figure 1, p. 5051; which reads on “a third electrode”). Mulla additionally teaches poly[2,5-bis(3-hexadecyllthiophen-2-yl)thieno[3,2-b]thiophene] (PBTTT) organic semiconductor is spin-coated on to substrate and source/drain electrodes (Figure 1a; 1st ¶, EGOFET device fabrication, p. 5050-5051; which reads upon “a semiconductor film configured to connect the first electrode and the second electrode”). Mulla further teaches a poly(acrylic acid) (PAA) solution spin-coated on the PBTTT film, then subsequent crosslinking of the PAA layer (Figure 1b; Deposition of PAA on PBTTT and UV-induced crosslinking, p. 5051; which reads on “a solid electrolyte membrane configured to cover the first electrode, the second electrode and the semiconductor film”). Mulla teaches electrical and sensing measurement are performed with an electrolyte gated organic filed-effect transistor comprising a gold gate electrode and a droplet of PBS as a dielectric medium (Caption for Figure 1d; which read on “wherein the solid electrolyte membrane has an exposed surface exposed to an outside”). Mulla also teaches the gold gate electrode is disposed and electrically connected to a voltage source (VG) (Figure 1d; which reads on “the third electrode is configured to be disposed in a position where, when the exposed surface of the solid electrolyte membrane is in contact with a conductive liquid, it is possible to apply an electric field to the exposed surface of the solid electrolyte membrane through the conductive liquid”).
Regarding claim 2, Mulla teaches the first electrode, second electrode and the semiconductor film are arranged on one substrate (Figure 1a).
Regarding claims 5 and 11, Mulla teaches a poly(acrylic acid) layer.1
Regarding claims 7 and 15, Mulla teaches bioprobes, as biotinylated phospholipids (B-PL), anchored to the PAA layer for capture of streptavidin (Figure 1c; Figure 5).
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.
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Mulla in view of a published paper to S. Casalini, et al. (“Organic field-effect transistor for label-free dopamine sensing”, Organic Electronics, 14(1):p. 156-163, Jan 2013; hereinafter, “Casalini”).
Regarding claims 8 and 17, Mulla teaches the limitations of instant claims 1 and 2, as outlined above.
Mulla does not teach a holding part intended for holding the conductive liquid around the exposed surface of the solid electrolyte membrane.
However, Casalini teaches electrolyte-gated organic field effect transistors for sensing (Abstract), wherein is taught a poly(dimethylsiloxane) (PDMS) pool for confining droplets for sensing with the transistors (Figure 1a).
At the time of the filing of the present application, it would have been obvious to adapt the PDMS pool taught by Casalini into the sensor disclosed by Mulla as it would allow confinement of the test liquid to the testing surface.
Allowable Subject Matter
Claims 3, 4, 6, 9, 10, 12-14, 16, and 18-20 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Mulla is considered the closest prior art reference to the instant claims. However, Mulla does not anticipate nor render obvious i) a conductive material film and a solid electrolyte film laminated between the substrate and the first electrode/second electrode/semiconductor film, as required by instant claim 3 (claims 10, 12, 14, 15, 18 and 20 are dependent from claim 3); ii) the third electrode is disposed on the substrate, as required by instant claim 4; iii) the claim composition of the solid electrolyte membrane, as required by claims 6 and 13; and, iv) the method as required by claims 9 and 19.
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached M - F, 9 am - 5:30 pm.
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 at (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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/J. Christopher Ball/ Primary Examiner, Art Unit 1795
17 September 2025
1 As evidenced in a published paper by Z. Chen, et al. (“A salt-free poly(acrylic acid) hydrogel electrolyte with self-released ions for quasi-solid-state electrochromic devices”, Solar Energy Materials and Solar Cells, 266, p. 112644-1 – 112644-8, 2024); Abstract: PAA ion conductivity 3.7 x 10-3 S cm-1.