DETAILED ACTION
Status of the Claims
1. Claims 1-20 are pending.
Specification
2. The disclosure is objected to because of the following informalities: Formula 1 shown on pages 2 and 7 shows arrows without indicating/describing what they represent. Paragraphs [0005] and [0032] define Y, X, X+R1 R2 and R3, but is unclear what they represent in the formula, also integer n is not defined for the formula.
Appropriate correction is required.
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.
3. Claims 11, 12 and 20 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 20 recites a compound represented by formula (I):
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245
232
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(I)
wherein Y is a propyl or larger CH2 spacer group; wherein X is a nitrogen, oxygen or carbonyl containing moiety; wherein if X is nitrogen, R1 is a carbonyl moiety; wherein if X is carbonyl, R1 is a nitrogen or oxygen; wherein X+R1 is an amide or an ester; wherein R2 is a CH2 containing moiety from 1-12 units, polyethyleneimine or a polyethylene glycol polymer where the number of repeating units of the polymers are from 1-1000; and wherein R3 is a moiety that includes an amine, hydrazine, aldehyde or biotin.
The claim as written is indefinite because it is unclear to the examiner if all four structures represent formula (I). Furthermore, it is unclear what does the arrows represent in the formula (1). Additionally, claim defines elements, Y, X, X+R1, R2 and R3, but it is unclear what they represent in the formula, also integer n is not defined for the formula.
Claim 11 recites “wherein the metal oxide comprises an oxide of copper, tungsten, cobalt, ruthenium, vanadium, hafnium, zirconium, aluminum, but does not include silicon or its oxide.” The claim as written is indefinite because it is not clear what is the scope of the claim. It is unclear if the metal oxide includes all the metals listed or these are in the alternative. The claim is interpreted as these in the alternative.
Claim 12 recites “wherein the metal oxide includes nitrogen”. The claim as written is indefinite because it is not clear what is the scope of the claim. It is unclear what type of metal oxide is being claimed that includes nitrogen or how the nitrogen is “included.” Applicant’s disclosure also does not define or list an example of metal oxide comprising nitrogen.
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 12 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. Claim 12 recites “wherein the metal oxide includes nitrogen”. The limitation does not further limit metal oxides listed in claim 11 from which it depends. And metal oxide that includes nitrogen, i.e. oxynitride, is not a metal oxide.
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.
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 Fig 2) 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 (forming surface agent as a monolayer patterned on the material layer i.e. sensor surface; see Figs 2 and 5 and [0032]).
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);
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); 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 and [0032]).
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 [0035] 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]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cited prior art, Mutin et al. teach organophosphorus acid and their derivatives for functionalizing surface of biosensors (see Table 1 and Sections 2 and 4).
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/GURPREET KAUR/
Primary Examiner
Art Unit 1759