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 .
Status of Application
Claims 1-10 are pending and presented for examination.
Claim Rejections - 35 USC § 112(b)
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.
1. Claims 3 and 8 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.
Regarding claims 3 and 8, the phrase "preferably" renders the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed inventions. See MPEP § 2173.05(d).
Claim 8 recites the limitations "the roughness" and “the average thickness”. There is insufficient antecedent basis for these limitations in the claim. For examination purposes, this claim has been interpreted as depending from claim 7 for which there is antecedent basis for “the roughness” and “the average thickness”.
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.
2. Claim(s) 1-4 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zaretski et al. (WO 2017/062784).
I. Regarding claims 1 and 4, Zaretski teaches a process for forming a strain sensor device (see claim 16) comprising: forming a graphene film on a substrate (claim 1 and 0025); depositing metal nanoislands to partially cover the graphene film leaving a portion of the graphene film not covered (claims 1, 2, 0025 and 0098), where the metal will modify the physicochemical properties of the graphene; a gas phase deposition of parylene polymer over the graphene film such that the parylene contacts the portion of the graphene film not covered by the nanoislands (0025 and 0098-0099); and a step of removing the substrate by etching (0098). Zaretski teaches all the limitations of claims 1 and 4; therefore, Zaretski anticipates the claims.
II. Regarding claims 2 and 3, Zaretski teaches the process of claim 1, and further teaches the nanoislands can have a diameter (comparable to an average thickness of 4-5 nm) at 0114 and the graphene is a single layer of graphene (0009 and note that a single layer of graphene has a thickness of about 0.34 nm). Therefore, based on the graphene having a small thickness, the roughness of this thin surface will inherently be less than 10% of the average thickness (4-5 nm) of the nanoisland functionalization material. Therefore, Zaretski also anticipates claims 2 and 3.
III. Regarding claims 6 and 9, Zaretski teaches a device comprising: a graphene film functionalized with nanoislands of gold (0098); and a layer of parylene covering the graphene film and the gold nanoislands and in contact with a portion of the graphene film not covered by nanoislands (0098-0099). Zaretski teaches all the limitations of claims 6 and 9; therefore, Zaretski anticipates the claims.
IV. Regarding claims 7 and 8, Zaretski teaches the device of claim 6, and further teaches the nanoislands can have a diameter (comparable to an average thickness of 4-5 nm) at 0114 and the graphene is a single layer of graphene (0009 and note that a single layer of graphene has a thickness of 0.34 nm). Therefore, based on the graphene having a small thickness, the roughness of this thin surface will inherently be less than 10% of the average thickness (4-5 nm) of the nanoisland functionalization material. Therefore, Zaretski also anticipates claims 7 and 8.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
3. Claim(s) 5 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zaretski in view of Lee et al. (“A sensitive electrochemical sensor using an iron oxide/graphene composite for the simultaneous detection of heavy metal ions”).
Regarding claims 5 and 10, Zaretski teaches the method and device of claims 1 and 6, but fails to teach the functionalization material deposited in the form as claimed. However, Lee teaches a similar method and sensor device (abstract) wherein iron oxide (a magnetic material) is deposited as metal containing nanoparticles on a graphene film (Sections 2.3 and 3.1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zaretski’s process/device by substituting magnetic metal nanoislands/nanoparticles as disclosed by Lee in place of Zaretski’s metal nanoislands. One would have been motivated to make this substitution as Lee teaches that this allows for the generation of a highly sensitive electrochemical sensor (See Section 4).
Conclusion
Claims 1-10 are pending.
Claims 1-10 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
July 10, 2026Primary Examiner, Art Unit 1717
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