DETAILED ACTION
Status of the Claims
1. Claims 1-6, 8, 10-18 and 21 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/22/2026 has been entered.
Status of the Objections
2. Amendments to specification on 9/10/2026 are acceptable.
Status of the Rejections
3. Rejection of claim 12 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph is withdrawn in view of applicant’s amendment.
Rejection of claim 20 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph is withdrawn in view of cancellation of the claim.
Claim Rejections - 35 USC § 112
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.
4. Claims 5 and 13 are 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.
Claim 13 recites “at least one phosphonic acid from group A” in lines 6-7. Limitation as written is vague because there is no listing of group A to select the phosphonic acid from.
Claim 5 recites the limitation "the phosphonic acid" in line 1. There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
5. Claim(s) 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cicero et al. (US 2016/0003768).
Claim 21. Cicerco et al. teach compound biotin alkyl phosphonic acid, structure of Fig 10 wherein R represents nitrogen [0036]. The compound satisfies Y is larger CH2 spacer group, X is oxygen, R1 is carbonyl, R2 is Ch2 containing moiety from 4 units and R3 is biotin.
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.
6. Claim(s) 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cicero et al. (US 2016/0003768).
Claim(s) 13-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cicero et al. (US 2016/0003768).
Claim 13. Cicero et al. teach a method of making a semiconductor device-based sensing platform (method for making chemFETsensor; [0018]), the method comprising:
providing a substrate having isolation regions (regions on either side of source/drain reads on isolation region disposed on substrate; see annotate Fig 2 below) and metal containing patterned regions (a material layer 216 patterned on the substrate made up of oxide of zirconium hafnium or aluminum; [0019]);
forming a mixed layer on the metal containing patterned regions of the substrate but not on the isolation regions (forming surface agent as a monolayer patterned on the material layer 216 i.e. sensor surface inside the well 201; see Figs 2 and 5 and [0032]);
adding a biomolecule layer on the mixed layer (analyte attached to solid phase support layer 212 disposed on the material layer 216; [0021] and Fig 2) wherein the mixed layer and the biomolecule layer form a sensing layer on top of the metal containing patterned region (the surface agent and analyte attached to solid phase form sensing layer on top of mixed layer 216 and amount of charge 224 present in material layer 216 cause change in current; see Fig 2 and [0020]).
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Cicero et al. teach the surface agent could include combination of phosphonic acid based surface agents [0035], wherein the surface agent comprises surface reactive functional group such as phosphonic acid and distal from the surface reactive functional group, the surface agent includes distal functional group such as primary amine or biotin ([0032][0033] and Fig 10), the distal functional group is separated from the surface reactive functional group with either alkyl or polyether chain or combination thereof, thus combination of alkyl moiety (preferably 1 to 6 carbons) and polyether would yield polyethylene glycol based phosphonic acid comprising 1 to 10 ether units each unit comprising 1to 4 CH2 groups with upto 6 carbon alkyl chain [0034]).
Cicero et al. do not explicitly teach the combination of a phosphonic acid of polyethylene glycol and at least one phosphonic acid of an amine terminated long-chain compound, and a biotin terminated compound. However, combining known elements (i.e. combining known phosphonic acid-based surface agents) is obvious to try and therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person of ordinary skill in the art. (see MPEP § 2143, E.).
Claim 14. Cicero et al. teach the mixed layer comprises an amine terminated phosphonic acid (surface agent comprises surface reactive functional group such as phosphonic acid and distal from the surface reactive functional group, the surface agent includes distal functional group such as primary amine ([0032][0033]).
Claim 15. Cicero et al. teach the mixed layer comprises a biotin terminated phosphonic acid (see Fig 10).
Claim 16. Cicero et al. teach adding a receptor on the mixed layer (the biotin is the receptor of the biotin terminated phosphonic acid; see Fig 10).
Claim 18. Cicero et al. teach the surface agent could include combination of phosphonic acid based surface agents [0036] and solvent [0054], wherein the surface agent comprises surface reactive functional group such as phosphonic acid and distal from the surface reactive functional group, the surface agent includes distal functional group such as primary amine ([0032][0033]), the distal functional group is separated from the surface reactive functional group with amide, alkyl, alkoxy or polyethyer or combination thereof, thus alkyl chain having 1 to 102 carbons chain (reads on H2N-(CH2)nPO(OH)2 where n can be from 3 to 12; [0034]).
Cicero et al. do not explicitly teach the combination of a phosphonic acid of polyethylene glycol and at least one phosphonic acid of group A such as H2N-(CH2)n-PO(OH)2 where n can be from 3 to 12.
However, combining known elements (i.e. combining known phosphonic acid-based surface agents) is obvious to try and therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person of ordinary skill in the art. (see MPEP § 2143, E.).
7. Claim(s) 1-6, 8 and 10-12, is/are rejected under 35 U.S.C. 103 as being unpatentable over Cicero et al. (US 2016/0003768).
Claim 1-3 and 11. Cicero et al. teach a semiconductor device-based sensing platform comprising (chemFET sensor; [0018]):
a source and drain on a substrate (source and drain on a substrate; see Fig 2 below);
a channel region between the source/drain region (current passes between source and drain; [0020], thus a channel region is present);
a metal oxide layer on the channel region (a material layer 216 on the channel region made up of oxide of zirconium hafnium or aluminum; [0019]);
an isolation region adjacent the source/drain and channel regions (regions on either side of source/drain reads on isolation region; see Fig 2 below); and
a mixed layer on the metal oxide layer but not on the isolation region (surface agent as a monolayer disposed on the material layer i.e. sensor surface in the well and not on the isolation region; see Fig 2 below and [0032]),
a biomolecule layer on the mixed layer (analyte attached to solid phase support layer 212 disposed on the material layer 216; [0021] and Fig 2) and the mixed layer and the biomolecule layer form a sensing layer on top of the metal oxide layer (the surface agent and analyte attached to solid phase form sensing layer on top of mixed layer 216 and amount of charge 224 present in material layer 216 cause change in current; see Fig 2 and [0020]).
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Cicero et al. teach the surface agent could include combination of phosphonic acid based surface agents [0035], wherein the surface agent comprises surface reactive functional group such as phosphonic acid and distal from the surface reactive functional group, the surface agent includes distal functional group such as primary amine or biotin ([0032][0033] and Fig 10), the distal functional group is separated from the surface reactive functional group with either alkyl or polyether chain or combination thereof, thus combination of alkyl moiety (preferably 1 to 6 carbons) and polyether would yield polyethylene glycol based phosphonic acid comprising 1 to 10 ether units each unit comprising 1to 4 CH2 groups with upto 6 carbon alkyl chain [0034]).
Cicero et al. do not explicitly teach the combination of a phosphonic acid of polyethylene glycol and at least one phosphonic acid of an amine terminated long-chain compound, and a biotin terminated compound. However, combining known elements (i.e. combining known phosphonic acid-based surface agents) is obvious to try and therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person of ordinary skill in the art. (see MPEP § 2143, E.).
Claims 4 and 8. Cicero et al. teach the at least one phosphonic acid of the amine terminated long-chain compound contains a consecutive carbon chain of 6 to 12 CH2 groups (phosphonic acid with amine has 1 to 12 alkyl groups including methyl groups; [0033][0034]); .
Claim 5. Cicero et al. teach the phosphonic acid binds to the metal oxide layer (phosphonic acid binds to material layer/sensor surface [0036]).
Claim 6. Cicero et al. teach the phosphonic acid of polyethylene glycol contains a consecutive carbon chain of 6 to 12 CH2 groups (phosphonic acid of polyether contains consecutive 1 to 10 ether units having CH2 groups; [0034]).
Claim 10. Cicero et al. teach the biotin terminated compound contains a consecutive carbon chain of 6 to 12 CH2 groups (see Fig 10).
Claim 12. Cicero et al. teach the metal oxide layer comprises metal oxynitride (oxides of metal or nitrides or combination thereof; [0030]).
Response to Arguments
Applicant's arguments filed 9/22/2026 have been fully considered but they are not persuasive.
Applicant argues on page 11 of remarks regarding claim 13, that claim 13 requires the mixed layer and the biomolecule form a sensing layer on top of the metal containing pattern region whereas Cicero teaches material layer 216 separates the sensor plate 220 and the solid phase support 212, therefore Cicero’s sensor plate 220 is below the material layer 216 and solid phase support 212 is above the material layer 216.
In response, examiner respectfully disagrees with applicant’s assertion. In making the rejection, examiner indicated material layer 216 which is comprised of metal oxide as the metal containing pattern region and not sensor plate 220 (see annotated Fig 2 below).
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Cicero teaches the mixed layer/surface agent and analyte (reads on biomolecule layer) which form the claimed sensing layer is disposed on top of the material layer 216.
Same argument applies to claim 1.
Conclusion
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/GURPREET KAUR/
Primary Examiner
Art Unit 1759
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