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 .
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.
Claims 1-5, 7, 9, 12-13 and 15-18 are 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.
Re claim 1, the phrase “wherein at least a first portion of an upper surface of the nanomaterial is directly exposed to an ambient environment and is free of any dielectric or passivation layer” was not described in the original specification.
Re claim 4, the phrase “wherein organic or inorganic molecules are deposited on a second portion of the upper surface of the nanomaterial” was not described in the original specification.
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 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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.
Re claim 4, the phrase “wherein organic or inorganic molecules are deposited on a second portion of the upper surface of the nanomaterial” is unclear and indefinite (e.g., which portion of 102 in Fig. 1d is considered as the second portion of the upper surface of the nanomaterial?).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5, 7, 12-13 and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shepard et al., US Pub. No. 2016/0240692 A1.
Re claim 1. Shepard et al. disclose an electrical connection structure for an electronic device, the electrical connection structure comprising: a nanomaterial 202 (fig. 2) or 602&606 (e.g., 606 is graphene, which is the same material as recited in instant claim 3, see fig. 6) of at least one dimension carried by a substrate 208 (fig. 2/6), the nanomaterial comprising an edge portion (note: the portion of 602&606 that is in contact with 604 is considered as the edge portion, e.g., fig. 6) adjacent to a substrate surface portion (fig. 2/6), wherein at least a first portion of an upper surface of the nanomaterial 606 (e.g., a portion of 606 that is not in contact with 604) is directly exposed (e.g., see fig. 6 and paragraph 76 note: 606 is graphene) to an ambient environment and is free of any dielectric or passivation layer (e.g., fig. 6), and a metal contact 604 (i.e., fig. 6 paragraph 76) anchored to the substrate surface portion and connected to the edge portion of the nanomaterial 602&606 (fig. 6), such that the metal contact makes electrical connection with the nanomaterial solely through contacting the edge portion (fig. 6), see figs. 1-23 and pages 1-9 for more details.
Re claim 2. The electrical connection structure according to claim 1, wherein the nanomaterial 602/606 is a layer of two-dimensional material or a nanotube (paragraphs 58, 75-76).
Re claim 3. The electrical connection structure according to claim 2, wherein the two-dimensional material is graphene (paragraphs 58 and 75-76).
Re claim 5. The electrical connection structure according to claim 2, wherein the two-dimensional material is a single layer or multilayer two-dimensional material (fig. 2/6, paragraph 58).
Re claim 7. An electronic device comprising the electrical connection structure according to claim 1, wherein the electrical connection structure (e.g., fig. 6) is configured to provide an electrical connection for the electronic device to additional electrical circuitry. It should be noted that a recitation of the intended use and/or function 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 and/or function, then it meets the claim.
Re claim 12. The electrical connection structure according to claim 1, wherein the substrate is comprised of silicon-carbide or silicon (i.e., fig. 2/6 paragraph 60).
Re claim 13. The electrical connection structure according to claim 1, wherein the nanomaterial is functionalized with organic or inorganic molecules 204/206/606/608 (fig. 2/6).
Re claim 15. The electrical connection structure according to claim 1, the metal contact 604 being connected primarily to the edge portion of the nanomaterial 602 (fig. 6), such that the metal contact makes electrical connection with the nanomaterial primarily through contacting the edge portion (fig. 6).
Re claim 16. The electrical connection structure according to claim 1, the metal contact being connected to the edge portion in parallel with the plane of the substrate (fig. 6, i.e., the portion that is in horizontal contact).
Re claim 17. The electrical connection structure according to claim 1, the metal contact 604 being anchored to the substrate in an opening in the nanomaterial (fig. 6, i.e., opening is formed on both side of the 602).
Re claim 18. The electrical connection structure according to claim 1, the metal contact 604 being substantially T-shaped (fig. 6).
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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Shepard et al., US Pub. No. 2016/0240692 A1.
Shepard et al. disclosed above; however, Shepard does not explicitly state that electrical connection structure is used in a Hall effect sensor. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co., Inc. v. Interchemical Corp. , 325 U.S. 327, 65 USPQ 297 (1945). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig - saw puzzle." 65 USPQ at 301.). Furthermore, a recitation of the intended use and/or functions 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 and/or functions, then it meets the claim.
Therefore, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the invention was made to select the electrical connection structure as taught by Shepard et al. in any suitable electronic device (such as Hall effect sensor etc) in order to provide good electrical contact to the 2D layer etc.
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive for reasons herein above.
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 JACK CHEN whose telephone number is (571)272-1689. The examiner can normally be reached Monday to Friday, 8am to 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yara J. Green can be reached at (571)270-3035. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACK S CHEN/Primary Examiner, Art Unit 2893
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