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 .
DETAILED ACTION
This Office action is in response to the communication filed on 07/20/2026. Currently claims 1-29 are pending in the application.
Examiner’s Note
The “Replacement Abstract” submitted on 07/20/2026, and amended drawing submitted on 07/20/2026 is entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111 (a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-25, and 28-29 are rejected on the ground of non-statutory double patenting as being obvious over claims 1-29 of Caffio et al. (US patent No. 12,371,325) (reference application), in view of Tour et al. (US Patent Application Publication No. 2019/0308880 A1), hereafter, referred to as “Tour”. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims would be obvious over the claims 1-29 disclosed by of Caffio et al. (US patent No. 12,371,325), in view of Tour et al. (US Patent Application Publication No. 2019/0308880 A1).
Regarding claim 1, Caffio et al. (US patent No. 12,371,325) teaches a method of manufacturing a carbon foam material comprising the steps of:
(a) using a first laser beam to irradiate an encapsulated, sub-surface region of a carbon pre-cursor material below a surface of the carbon pre-cursor material, to create carbon foam in that encapsulated, sub-surface region, and then
(b) using a second laser beam to remove or ablate material sitting above the carbon foam, and to expose or alter at least some of the carbon foam, to produce a resultant carbon foam material.
But Caffio et al. (US patent No. 12,371,325) failed to explicitly teach the configuring the resultant carbon foam material for use as a surface immobilization structure. However, Tour teaches in claim 1, a method of making a 3D graphene material (equivalent to a foam, para. [0031])). Tour also teaches functionalizing graphene oxide (GO) with a branched copolymer surfactant (BCS) to prepare a water-based ink to print 3D graphene (para. [0007]). Tour further teaches that the method can further include incorporating the 3D graphene material into a device (para. [0051]). Tour also teaches that the device can be selected from is a group consisting of electrodes, battery electrodes, capacitors, supercapacitors, batteries, lithium batteries, lithium ion batteries, photovoltaic devices, photovoltaic cells, transistors, current collectors, fuel cell devices, water desalination devices, capacitive deionization devices, water-splitting devices, water-oil separation devices, water/gas purification devices, sensors, mechanical dampening devices, cell scaffolds for artificial wood, scaffolds for growth of bone or animal/human tissue in vivo or in vitro, scaffolds for neuronal growth in vitro or in vivo, and spinal cord regeneration scaffolds (para. [0052]) (equivalent to a surface immobilization structure, which serves as a physical support or matrix (scaffold) that anchors enzymes, cells, or proteins to enhance their stability, activity, and recyclability). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Tour, and combine the feature of configuring the resultant carbon foam material for use as a scaffolds for growth of bone or animal/human tissue in vivo or in vitro, scaffolds for neuronal growth in vitro or in vivo, and spinal cord regeneration scaffolds, because that would allow to make a surface immobilization structure, which serves as a physical support or matrix (scaffold) that anchors enzymes, cells, or proteins to enhance their stability, activity, and recyclability. Since both the reference deal with forming of graphene (foam), one would have reasonable expectation of success from the combination. Additionally, it would also have been obvious to a person of ordinary skill in the art that the parameters of the first and second laser beam would be selected and optimized to form the carbon foam and thereafter an agricultural testing sensor electrode. Moreover, the use of a method to form a surface immobilization structure is also a matter of intended application.
Regarding claim 2, Caffio et al. (US patent No. 12,371,325) teaches in claim 2, that the first laser beam operates at a first band and the second laser beam operates at a second band.
Regarding claim 3, Caffio et al. (US patent No. 12,371,325) teaches in claim 3, that the parameters of the first laser beam that irradiates the sub-surface, encapsulated region include one or more of: intensity, wavelength, pulse frequency, pulse duration, pulse profile, scanning speed, focal distance, heat generated at the sub-surface, encapsulated region., and in which varying the laser parameters of the first laser beam alters the carbon foam material properties, enabling the resultant carbon foam material to be produced with properties that are optimized for different applications.
Regarding claim 4, Caffio et al. (US patent No. 12,371,325) teaches in claim 4, that varying the laser parameters of the first laser beam alters one or more of the following resultant carbon foam material properties or parameters: type of carbon nanostructures present, size of defects, distribution of defects, extent of defects, type of defects, of the Raman D and peaks, relative size of the Raman D and 2D peaks, thickness or depth, flexibility, adhesion, porosity, electrical conductivity, capacitance, absorption of organic solvents and water-based solutions, hydrophilicity, EMI shielding, electrode quality, wettability, contact angle, anti-fouling.
Regarding claim 5, Caffio et al. (US patent No. 12,371,325) teaches in claim 5, that no substantial gas escape pathways to a surface of the pre-cursor material are created by the first laser beam.
Regarding claim 6, Caffio et al. (US patent No. 12,371,325) teaches in claim 6, that the first laser beam has a wavelength with substantially no, or very low, absorbance by the carbon pre-cursor material.
Regarding claim 7, Caffio et al. (US patent No. 12,371,325) teaches in claim 7, that the sub-surface, encapsulated region has a thickness of between 10 μm and 200 μm.
Regarding claim 8, Caffio et al. (US patent No. 12,371,325) teaches in claims 8-10, that the carbon pre-cursor material is made substantially of one of the following: thermo-setting material, non-thermo-plastic material; one or more polymers.
Regarding claim 9, Caffio et al. (US patent No. 12,371,325) teaches in claim 11, that the carbon pre-cursor is positioned on or adjacent to a substrate and in which the surface of the carbon pre-cursor material is converted to a disorganized, amorphous, non-graphene substance by the laser beam and that disorganized, amorphous, non-graphene substance adheres or bonds to the substrate and hence indirectly attaches the 3D carbon material foam to the substrate.
Regarding claim 10, Caffio et al. (US patent No. 12,371,325) teaches in claim 12, that the surface of the carbon pre-cursor material is converted to a disorganized, amorphous, non-graphene substance by the first laser beam.
Regarding claim 11, Caffio et al. (US patent No. 12,371,325) teaches in claim 13, parameters of the second laser beam include one or more of: intensity, wavelength, pulse frequency, pulse duration, pulse profile, scanning speed, focal distance, heat generated at the sub-surface or encapsulated region; in which varying the second laser parameters alters the resultant carbon foam material properties, enabling the resultant carbon foam material to be produced with properties that are optimized for different applications; and in which varying the laser parameters of the second laser beam alters one or more of the following resultant carbon foam material properties or parameters: type of carbon nanostructures present, size of defects, distribution of defects, extent of defects, type of defects, of the Raman D and 2D peaks, relative size of the Raman D and 2D peaks, thickness or depth, flexibility, adhesion, porosity, electrical conductivity, capacitance, absorption of organic solvents and water-based solutions, hydrophilicity, EMI shielding, electrode quality, wettability, contact angle, anti-fouling.
Regarding claim 12, Caffio et al. (US patent No. 12,371,325) teaches in claim 14, that the second laser beam alters the carbon foam to the resultant carbon foam material as part of the process of exposing the carbon foam.
Regarding claim 13, Caffio et al. (US patent No. 12,371,325) teaches in claim 15, that the second laser beam alters the morphology of the carbon foam as part of the process of creating the resultant carbon foam material and exposing the resultant carbon foam material.
Regarding claim 14, Caffio et al. (US patent No. 12,371,325) teaches in claim 16-17, that the resultant carbon foam material is or includes one or both of the following: a multilayer twisted or turbostratic carbon foam; a non-graphene carbon foam.
Regarding claim 15, Caffio et al. (US patent No. 12,371,325) teaches in claim 18, that the resultant carbon foam material is between approximately 50 μm to 300 μm in thickness.
Regarding claim 16, Caffio et al. (US patent No. 12,371,325) teaches in claim 19, that the resultant carbon foam material is or includes a carbon foam with a spatial distribution of defects or vacancy position basal plane defects leading to high electrochemical reactivity.
Regarding claim 17, Caffio et al. (US patent No. 12,371,325) teaches in claim 20, that the resultant carbon foam material has one or more of the following properties compared to conventional graphene foam made using conventional laser processes: a more readily controlled thickness or depth; greater flexibility compared to the highly brittle graphene made using conventional laser processes; stronger adhesion to an underlying flexible substrate; higher porosity; higher electrical conductivity; increased capacitance or charge storage; faster absorption of organic solvents and water-based solutions; higher hydrophilicity; a contact angle of below approximately 20°; enhanced anti-fouling properties; higher EMI shielding; enhanced electrode quality.
Regarding claim 18, Caffio et al. (US patent No. 12,371,325) teaches in claim 24, the step of using computer-controlled laser scanning technology for the first and the second laser beams.
Regarding claim 19, Caffio et al. (US patent No. 12,371,325) teaches in claims 24-25, the step of using high-speed, high-volume reel-to-reel or reel-to-sheet production systems to pass reels or sheets of the carbon pre-cursor material past computer-controlled laser scanning technology that delivers the first and the second laser beams.
Regarding claim 20, Caffio et al. (US patent No. 12,371,325) in claims 1, and 26-27, and Tour et al. (US Patent Application Publication No. 2019/0308880 A1) together teaches a method to form a sensor electrode/counter electrode, and a surface immobilization structure. Caffio et al. (US patent No. 12,371,325) teaches in claim 28, that sensor electrode/counter electrode would comprise of resultant carbon foam material, and the method would include further step of adding, at the same or a different manufacturing facility, functionalized groups to the working electrode.
Regarding claim 21, Caffio et al. (US patent No. 12,371,325) in claims 1, and 21-22, and Tour et al. (US Patent Application Publication No. 2019/0308880 A1) together teaches a method to form a surface immobilization structure. It would have been obvious to any ordinary artisan that a surface immobilization structure would be formed by adding a receptor that is specific to a target or analyte, and a linker that enables the receptor to attach to the carbon foam, and the receptor is selected from the following: crown ethers, catalysts, boric acids, concept, ligands, aptamers, proteins, enzymes, antibodies, antigens, microorganisms, nucleic acids, fatty acids, fatty acid esters, molecularly imprinted polymers, metal-organic frameworks, polypeptides or oligopeptides capable of forming a ligand binding, cells, cell organelles, or other cellular components, or mixtures thereof, preferably selected from proteins, nucleic acids, antibodies, enzymes, or mixtures thereof.
Regarding claim 22, Caffio et al. (US patent No. 12,371,325) teaches in claim 27, a method when used for manufacturing a sensor including the sensor electrodes, a working electrode, and a counter electrode, each comprising the resultant carbon foam material configured as a surface immobilization structure and where the method includes printing electrical connection tracks over each sensor electrode and at least partly covering the sensor electrode and connection tracks with a printed dielectric, such as a screen printed dielectric.
Regarding claims 23-25, Caffio et al. (US patent No. 12,371,325) teaches in claim 29, a method where the sensor electrode is formed onto an electrical connection track that has been previously printed on to the carbon pre-cursor material, and where the sensor electrode is formed onto previously printed electrical connection tracks, a dielectric layer and a reference electrode, and where the sensor electrode has a bottom face or base and electrical connections are positioned on the bottom face or base; by teaching that when used for manufacturing a sensor including sensor electrodes, such as a working electrode. and a counter electrode, each comprising the resultant carbon foam material, and the method includes the steps of (a) printing a carbon layer on the substrate; (b) printing electrical connection tracks and a reference electrode; (c) printing a dielectric layer over the carbon layer and the electrical connection tracks and the reference electrode; and then (d) creating the resultant carbon foam material sensor electrodes.
Regarding claims 28-29, Caffio et al. (US patent No. 12,371,325) teaches a method of manufacturing a carbon foam material comprising the steps of:
(a) using a first laser beam to irradiate an encapsulated, sub-surface region of a carbon pre-cursor material below a surface of the carbon pre-cursor material, to create carbon foam in that encapsulated, sub-surface region, and then
(b) using a second laser beam to remove or ablate material sitting above the carbon foam, and to expose or alter at least some of the carbon foam, to produce a resultant carbon foam material.
But Caffio et al. (US patent No. 12,371,325) failed to explicitly teach the using the resultant carbon foam material for use as a sensor electrode in an assay device. However, Tour teaches in claim 1, a method of making a 3D graphene material (equivalent to a foam, para. [0031])). Tour also teaches functionalizing graphene oxide (GO) with a branched copolymer surfactant (BCS) to prepare a water-based ink to print 3D graphene (para. [0007]). Tour further teaches that the method can further include incorporating the 3D graphene material into a device (para. [0051]). Tour also teaches that the device can be selected from is a group consisting of electrodes, battery electrodes, capacitors, supercapacitors, batteries, lithium batteries, lithium ion batteries, photovoltaic devices, photovoltaic cells, transistors, current collectors, fuel cell devices, water desalination devices, capacitive deionization devices, water-splitting devices, water-oil separation devices, water/gas purification devices, sensors, mechanical dampening devices, cell scaffolds for artificial wood, scaffolds for growth of bone or animal/human tissue in vivo or in vitro, scaffolds for neuronal growth in vitro or in vivo, and spinal cord regeneration scaffolds (para. [0052]) (equivalent to a surface immobilization structure, which serves as a physical support or matrix (scaffold) that anchors enzymes, cells, or proteins to enhance their stability, activity, and recyclability). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Tour, and combine the feature of using the resultant carbon foam material for use as a scaffolds for growth of bone or animal/human tissue in vivo or in vitro, scaffolds for neuronal growth in vitro or in vivo, and spinal cord regeneration scaffolds, because that would allow to make a surface immobilization structure, which serves as a physical support or matrix (scaffold) that anchors enzymes, cells, or proteins to enhance their stability, activity, and recyclability. Since both the reference deal with forming of graphene (foam), one would have reasonable expectation of success from the combination. Additionally, it would also have been obvious to a person of ordinary skill in the art that the parameters of the first and second laser beam would be selected and optimized to form the carbon foam and thereafter an agricultural testing sensor electrode. Moreover, the use of a method to form a surface immobilization structure is also a matter of intended application.
It would also have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to use the device in a diagnostic capacity by applying or adding a sample to the sensor electrode and the assay device (formed as described in this rejection), and taking measurements of the behaviour of the sensor electrode to indicate the presence or absence of the target or analyte in the sample. It would also have been obvious to any ordinary artisan to providing a quantitative digital result relating to the target or analyte in the sample, the concentration of the target or analyte.
Claims 26-27 are rejected on the ground of non-statutory double patenting as being obvious over claims 1-29 of Caffio et al. (US patent No. 12,371,325) (reference application), in view of Tour et al. (US Patent Application Publication No. 2019/0308880 A1), in view of deSa et al. (US Patent Application Publication Number 2017/0370866 A1), hereafter, referred to as “deSa”.
Regarding claims 26-27, Caffio et al. (US patent No. 12,371,325), and Tour et al. (US Patent Application Publication No. 2019/0308880 A1) together teaches a method to form sensor electrode. But Caffio et al. (US patent No. 12,371,325) and Tour failed to explicitly teach that the sensor electrode is positioned in a layer below one or more sample wells, and electrode connections are positioned in layer below the sensor electrode. However, deSa teaches a sensor comprising a microfluidic channel. deSa teaches a design, where there is one sensor along each channel. The fluidic channel is etched into the top of the biochip substrate. A well is etched into the bottom of the substrate. The electrodes for exciting the sensor are deposited to sandwich the quartz between the channel on the top and the well on the bottom. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of deSa and form a sensor electrode, that is positioned in a layer below one or more sample wells, and electrode connections are positioned in layer below the sensor electrode to obtain predictable results. Based on the teaching of deSa, it would also have been obvious to any ordinary artisan that the sensor electrode is formed in a multi-layer structure, in which an upper layer or layers includes one or more sample wells and a microfluidics channel, and one or more sensor electrodes, such as reference, working and counter electrodes, are positioned below these upper layer or layers to receive a test fluid distributed by the microfluidics channel, and electrode connections to the or each sensor electrodes are positioned in a layer below the or each sensor electrode.
Allowable Subject Matter
Claims 1-29 would be allowable, if the double patenting rejection is overcome by submitting a Terminal Disclaimer, and approval thereupon. Please see the double patenting rejection section for details.
The following is an examiner’s statement of reasons for Allowable Subject Matter:
Regarding claims 1, Tour et al. (US Patent Application Publication No. 2019/0308880 A1) teaches in Fig. 2A, and 2B, a method of forming 3D graphene material (equivalent to carbon foam material). Tour teaches that the method includes mixing a metal powder and a carbon source to form a metal and carbon source mixture. The carbon source is not graphene, graphene oxide, or a graphene derivative. At least some of the metal powder is covered by the carbon source. The method farther includes utilizing a 3D printing process to fuse the metal powder into a specific structure. The method further includes converting the carbon source into graphene sheets that cover the metal powder (para. [0010]). Tour also teaches that a laser can be utilized to convert the carbon source into the graphene sheets that cover the metal powder, and the laser can be a CO2 laser (para. [0014-15]). Tour further teaches that the carbon source can include a material selected from a group consisting of step growth polymers, chain growth polymers, condensation polymers, vinyl polymers, and combinations thereof (para. [0024]). The carbon source can include a material selected from a group consisting of sucrose, polymethyl methacrylate, glucose, poly (phenylene sulfide), carbohydrates, poly (acrylonitrile), polysaccharides, polyimide, and combinations thereof (para. [0025}]). Additionally, Tour also teaches that the 3D graphene material can have a porosity of at least 98% (para. [0029], and the 3D graphene material can be a graphene foam (para. [0031]). The method further includes removing the metal to form the 3D graphene material (para. [0010]).
Rode et al. (A. V Rode et al.: “Formation of cluster-assembled carbon nano-foam by high-repetition-rate laser ablation”, Appl. Phys A. 70, Year 2000, Page 135-144) teaches a high-repetition-rate laser ablation and deposition of carbon vapours results in the formation of quite different carbonaceous structures depending on the pressure of the ambient Argon gas in the chamber (abstract). Rode teaches in Section 1.2, that the diamond-like carbon (DLC) films were deposited in the vacuum of ~ 10-6 Torr. Transformation to a different form of carbon material occurs in an Ar-filled chamber at a pressure around 0.1 Torr. At this pressure the Ar number density in the chamber is ~ 3 X 1015 cm-3, and the mean free path for collisions of the evaporated carbon atoms is in the order of 1 cm. Thus, carbon–carbon and carbon–argon collisions in the chamber start to play a dominant role in the formation of carbonaceous structures in Ar-filled chamber. The high-repetition-rate laser evaporation of a carbon target in a 1–100 Torr Ar atmosphere produces a higher evaporation rate of carbon atoms and ions than conventional laser ablation techniques.
Caffio et al. (US Patent Application Publication No. 2020/0180963 A1) (hereafter, referred to as “Caffio ‘963”) teaches a method of forming a 3D graphene material adhered to a surface of a substrate comprises: providing a carbon source on the surface of the substrate; and exposing at least a portion of the carbon source and/or at least a portion of the substrate to a laser beam, thereby converting at least a portion of the carbon source into a 3D graphene material adhered to the surface of the substrate (abstract). “Caffio ‘963” also teaches that the step of converting at least a portion of the carbon source into the 3D graphene material adhered to the surface of the substrate typically comprises concurrently (i.e., at the same time) transferring carbon from the carbon source to the surface of the substrate, forming the 3D graphene material, and adhering the 3D graphene material to the surface of the substrate (para. [0007]).
Additionally, Glass (GB 2585842 A) teaches to form a graphene layer structure on a surface of the first layer of the substrate, and selectively laser ablating the graphene to expose one or more portions of the surface of the first layer of the substrate, and selectively laser ablating the surface of the first layer of the substrate to expose one or more portions of the second layer of the substrate, wherein the first layer is an electrically conductive layer and the second layer is an electrically insulative layer, or wherein the second layer is an electrically conductive layer and the first layer is an electrically insulative layer (abstract).
However, the prior art of references (of record) does not teach or fairly suggest the subject matter of independent claims 1 and 28, especially with the combination of the following limitations:
“using a first laser beam configured to irradiate an encapsulated, sub-surface region of a carbon pre-cursor material below a surface of the carbon pre-cursor material”;
in combination with -
“using a second laser beam configured to remove or ablate the carbon-based material sitting above the carbon foam”.
Claims 2-27 directly or indirectly depend on claim 1, and claim 29 depends on claim 28.
Conclusion
Applicant’s amendment necessitated the rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD M AMEEN whose telephone number is (469) 295 9214. The examiner can normally be reached on M-F from 9.00 am to 6.00 pm (Central Time).
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/MOHAMMAD M AMEEN/ Primary Examiner, Art Unit 1742
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