DETAILED ACTION
Status of the Claims
1. Claims 1-20 are pending.
Status of the Objections
2. Objection to specification is maintained in view of applicant’s amendments
Status of the Rejections
3. Rejection of claims 11 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is being withdrawn in view of applicant’s amendments.
Rejection of claim 12 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph is being withdrawn in view of applicant’s amendments.
Specification
4. The amended disclosure submitted on 4/07/2026 is objected to because of the following informalities: Paragraphs [0005] and [0032] shows Formula 1 obtained by following reaction:
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Reaction between the two components as indicated would not yield Formula I wherein Y satisfy larger CH2 spacer group OR X is oxygen, or carbonyl containing moiety OR X is carbonyl OR R2 is CH2 containing moiety from 1-12 units, polyethyleneimine or a polyethylene glycol polymer wherein the number of repeating units of the polymers are from 1-1000 OR R3 is hydrazine, aldehyde or biotin.
In other words, the reaction between the components as indicated would yield only following compound:
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Appropriate correction is required.
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.
5. Claim 12 is 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.
Claim 12 recites channel region further comprise a metal oxynitride. The limitation is not supported by specification. The specification discloses, the metal oxide 106 is disposed on the channel, wherein the metal oxide is either metal oxide OR metal oxynitride (see PGPUB 0049). Claim 12 depends from claim 1, which recites, a metal oxide layer on the channel region. The disclosure does not support claim 12 combination of metal oxide and metal oxynitride disposed on the channel region.
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.
6. Claim 20 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.
Amended claim 20 recites a compound represented by formula (I):
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The claim as written is indefinite because it is unclear to the examiner how does Formula I claim elements, wherein Y satisfy larger CH2 spacer group OR X is oxygen, or carbonyl containing moiety OR X is carbonyl OR R2 is CH2 containing moiety from 1-12 units, polyethyleneimine or a polyethylene glycol polymer wherein the number of repeating units of the polymers are from 1-1000 OR R3 is hydrazine, aldehyde or biotin would be satisfied by the reacting components.
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.
Claim(s) 13-17 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]); and 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]).
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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 17. Cicero et al. teach 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).
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.
4. Claim(s) 1-11, 18 and 19 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]).
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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 having 1 to 10 ether units each having 1 to 4 carbons (2 carbons reads on polyethylene glycol); [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]).
Claims 6 and 9. 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 7. Cicero et al. teach 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).
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 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 either alkyl chain having 1 to 102 carbons (reads on H2N-(CH2)n-PO(OH)2 where n can be from 3 to 12 or polyether chain having 1 to 10 ether units each having 1 to 4 carbons (2 carbons reads on polyethylene glycol); [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.).
Claim 19. Cicero et al. teach polyethylene glycol phosphonic acid 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]).
Response to Arguments
Applicant's arguments filed 4/07/2026 have been fully considered but they are not persuasive.
Applicant argues on page 11 of remarks regarding claim 13, that Cicero teaches sidewalls can be formed of silicon dioxide, silicon nitride, TEOS… and a surface agent can bind to the sidewalls 520 and the sensor surfaces [0032] and thus teaches away from a structure in which a mixed layer is formed on a metal oxide layer while being absent from an isolation region as claimed.
In response, examiner respectfully disagrees with applicant’s assertion. In making the rejection, examiner indicated material layer 216 which is comprised of metal oxide is disposed on the channel region which is different from isolation region disposed on either side of source/drain and channel region (see annotated Fig 2 below).
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Cicero teaches a well 201/504/506/508 is comprised of sidewalls and sensor surfaces [0032] and Figs 2 and 5, wherein the mixed layer/surface agent is disposed on the sidewalls and sensor surface of 216 located within the well and is absent on isolation region as indicated above.
Same argument applies to claim 1.
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 GURPREET KAUR whose telephone number is (571)270-7895. The examiner can normally be reached M-F 9:30-6.
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/GURPREET KAUR/
Primary Examiner
Art Unit 1759
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