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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 12, 2024 is being considered by the examiner.
Claim Interpretation
The claims are replete with recitation of method steps, even though the claimed invention is directed to a device. The patentability of the claimed invention is based on the features attributable to the claimed device, not how the claimed device is used or altered. Consequently, limitations that recite methods of using/manipulating/modifying the claimed device are deemed to convey intended use of the device. For example, claim 1 is being interpreted as conveying a device comprising un-engineered silk biopolymer-interlayer sensors that can be engineered to co-monitor nutrients, rather than a device comprising sensors that have been multi-scale engineered such that they are configured to co-monitor nutrients. That said, the abilities and properties recited in the dependent claims are considered hypothetical abilities and properties of the device after the device has been “engineered”. In other words, the subject matter of the dependent claims is deemed anticipated by prior art if the prior art device is merely capable of being “engineered” to exhibit the claimed properties/abilities, regardless of whether the prior art actually teaches a device having the claimed properties/abilities. This interpretation is supported by claims 17 and 18, which are directed to “the base unmodified sensor”, which appears to be the embodiment corresponding to the claimed invention.
Claim Rejections - 35 USC § 112
In the event the determination of the status of the application as subject to AIA (or as subject to pre-AIA ) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the rationale supporting the rejection would be the same under either status.
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.
Claims 2-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
There are no antecedent basis for the following limitations:
-claim 2, “such biosensors”;
-claim 3, “these passive, wireless nutrient monitors”
-claim 4, “the base sensing element”
-claim 8, ”the solid protein film”
-claim 9, “the water-carrying silk fibroin”
-claim 10, “the dielectric”
-claim 12, “the capacitance”
-claim 14, “the porous section”
-claim 15, “the holes”
-claim 17, “the base unmodified sensor” and “the spun-coat biopolymer”, and
-claim 20, “this wireless sensor”
In claim 2, the limitation “such biosensors” renders the claim indefinite. Even assuming that the limitation “biosensors” refers to the sensors of claim 1, the limitation “such” does not limit the scope of the claim to the sensors of claim 1. Consequently, the metes and bounds of claim 2 is indefinite (what is considered “such” biosensors and what is the relationship of “such” biosensors to the claimed invention?).
In claim 5, the limitation “can be represented as a parallel combination of a capacitor and a resistor” is indefinite. It is unclear what the limitation intends to convey. As indicated above (see “claim interpretation”), the patentability of the claimed invention is based on the device itself. That sad, does the claimed device comprise separate capacitor and a separate resistor?
In claim 8, it is unclear whether the limitations in parenthesis are intended to be limiting.
In claim 11, there is insufficient context for the limitation “the thickness”. It will be presumed that the limitation refers to the thickness of the protein, which appears to refer to the interlayer.
In claim 12, the limitation “such as” renders the claim indefinite because it is unclear whether the limitation is intended to be further limiting.
In claim 17, it is unclear to what the “base unmodified sensor” refers and how it relates to the claimed invention. In other words, is the claimed invention directed to a modified sensor or the “base unmodified sensor”?
In claims 19 and 20, it is unclear to which of the many sensors the limitation “the sensor” refers.
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 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tseng et al. (“Tseng”) (WO 2020/102713 A1).
With respect to claim 1, Tseng discloses a device comprising silk biopolymer-interlayer sensors for co-monitoring of nutrients (see abstract and [0059]).
With respect to claims 2-16, 19 and 20, as discussed above (see “claim interpretation”), the subject matter of the claims is generally directed to:
-properties and/or abilities of the claimed device after engineering or further modification; and/or
-a method of using or further modifying the device.
Because the device taught by Tseng is compositionally identical to the claimed device (a device comprising silk fibroin biopolymer situated between a pair of metal electrodes, see Fig. 8), the device taught by Tseng is deemed capable of being modified and/or used in the manners recited in the claims. Consequently, the claims are deemed anticipated by Tseng. Nevertheless, the claims are hereby individually addressed as appropriate.
With respect to claim 2, Tseng explicitly discloses that the sensitivity and selectivity of the sensors have been programmed to detect and measure salts, sugars, and oils/fats (see [0059]).
With respect to claims 3 and 20, the device is a programmable biosensor for wireless readout (see [0045]).
With respect to claims 4-16, the sensors comprise engineered, porous, silk fibroin biopolymer sandwiched between two metal electrodes (see Fig. 8 and [0064]), wherein the biopolymer comprises a solid phase (fibers) and an open phase (space between fibers) that, together, acts as a dielectric material that changes properties (physical and dielectric) in response to interaction with nutrients (see [0059]-[0060]). Regarding the rest of the limitations not explicitly addressed in the rejections, given that the biopolymer taught by Tseng is the same as the claimed biopolymer (silk fibroin polymer) and responds to nutrients in the same manner as the claimed biopolymer (see [0059]-[0060]), the claimed properties are deemed to be encompassed by the biopolymer taught by Tseng, or the biopolymer can be modified to encompass the claimed properties.
With respect to claims 17 and 18, given that the biopolymer taught by Tseng is the same as the claimed biopolymer (silk fibroin polymer), the claimed properties are deemed to be exhibited by the biopolymer.
With respect to claim 19, the device comprises a broadside-coupled split ring resonator (bcSRR) format (see Fig. 8 and [0064]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
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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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/PAUL S HYUN/ Primary Examiner, Art Unit 1796
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