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 .
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.
Claims 1, 2, 7, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe et al., “Laser reduced graphene oxide-based interdigitated electrode for sensor applications,” Proc. of SPIE Vol. 10906 1090612-1 (hereafter ‘Watanabe”).
Addressing claim 1, Watanabe discloses a method for preparing a detection component (see the title and Abstract), comprising: a film layer formation step that includes forming a composite material film layer on a substrate (“A TiO2-GO hybrid film was prepared on a PET film by doctor-blade method.[italicizing by the Examiner]” See 2.1 Materials, which is on page 1090612-2.); wherein the composite material film layer includes graphene oxide and a metal oxide (TiO2) (again, (“A TiO2-GO hybrid film was prepared on a PET film by doctor-blade method.” See 2.1 Materials, which is on page 1090612-2.), the metal oxide in the composite material film layer has a first crystal phase, and the first crystal phase is an anatase phase (“The irradiation of a 405 nm blue violet laser to a TiO2 nanoparticle-GO hybrid film caused the crystal phase transition from anatase to rutile TiO2 accompanying the melting of anatase nanoparticles. [italicizing by the Examiner]” See the Abstract. Also, “The structural changes of a TiO2-GO hybrid film caused by 405 nm blue-violet laser irradiation were studied by micro-Raman spectroscopy. Figure 7 shows the Raman spectra of TiO2 nanoparticle, GO, and rGO as reference spectra. The Raman spectrum of anatase (Figure 7a) is characterized by an intense sharp peak at around 153 cm-1 and three peaks in the region from 400 to 650 cm-1. [italicizing by the Examiner]” See page 1090612-6.); and
a surface modification step that includes inducing a crystal phase transformation on a surface of the composite material film layer using an ultrafast laser (as a first matter the Examiner notes that Applicant’s specification does not define “ultrafast”, so this qualifier is vague. In any event, as the laser used in Watanabe is a continuous wave laser (see 2.2 Laser direct writing, which is on page 1090612-2) this laser if not implicitly ultrafast is prima facie not different from an ultrafast laser.), such that the metal oxide is at least partially transformed to a second crystal phase from the first crystal phase ( “The irradiation of a 405 nm blue violet laser to a TiO2 nanoparticle-GO hybrid film caused the crystal phase transition from anatase to rutile TiO2 accompanying the melting of anatase nanoparticles.[italicizing by the Examiner]” See the Abstract.), and the graphene oxide is reduced to reduced graphene oxide (“By laser irradiation, the decrease of the intensity ratio of D to G band (ID/IG) accompanying the narrowing of Raman bands was observed as shown in Figures 7b and 7c. This result suggested the increase of the sp2 domain size of graphitic structure by laser irradiation. The increase
of the intensity of a narrow 2D band was also observed by laser-induced reduction of GO, which suggested the remaining of the few layer graphene structure of the fl-GO even after laser irradiation.” See page 1090612-6. Also, “Because pure anatase TiO2
nanoparticle and GO films are almost insulator, the conductivity of the laser-irradiated TiO2-GO nanoparticle film is attributed to the rGO formation.[italicizing by the Examiner]” See page 1090612-6.), thereby forming a surface modification structure on the substrate to prepare the detection component; wherein the second crystal phase is a rutile phase (“The irradiation of a 405 nm blue violet laser to a TiO2 nanoparticle-GO hybrid film caused the crystal phase transition from anatase to rutile TiO2 accompanying the melting of anatase nanoparticles.[italicizing by the Examiner]” See the Abstract. “In the laser direct writing using a 405 nm blue violet semiconductor laser on a TiO2 nanoparticle-GO hybrid film, the crystal phase transition from anatase to rutile TiO2 was observed even on a flexible transparent polymer film with a low heat resistance.[italicizing by the Examiner]” See page 1090612-2. “The remarkable spectral change was observed for the melted phase by laser irradiation, where the Raman spectrum as shown in Figure 9c can be assigned to rutile TiO2 [27].[italicizing by the Examiner] “ See page 1090612-6.).
Watanabe, though, does not particularly disclose that the produced detection component is a biological detection component. However, this is an intended use of the detection component that it is inherently capable of performing because the method of Watanabe is identical to that claimed and so will result in the same detection component. “A REJECTION UNDER 35 U.S.C. 102 AND 103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC.” See MPEP 2112 (III). In this regard note that Applicant’s specification discloses using the product of the claimed method to detect lactic acid without further modification, such as adding a lactic acid specific enzyme. See Applicant’s as-filed specification paragraphs [0053]-[0055]. Last, note the following in Watanabe
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Addressing claim 2, as for the claim limitation “wherein the substrate is a flexible polymer substrate, . . . .”, note the following, “It is also unusual that a high temperature phase transition of a metal oxide can be conducted on a flexible transparent polymer film by CW 405 nm blue violet semiconductor laser irradiation. [italicizing by the Examiner]” See page 1090612-5. Also, “The formation of an electrically conductive
micropattern on a flexible and transparent polymer by low temperature manufacturing based on solution process is an important issue in printed electronics.[italicizing by the Examiner]” See page 1090612-2. Additionally, “At the same time, wearable technology is also key to the data accumulation to Big Data and the AI (artificial intelligence)-controlled management systems, which needs light-weight and flexible sensors and portable devices. In addition, the on-demand manufacturing for the wearable devices is also challenging issue in IoT technology because wearable sensors and devices need the customization and personalization to satisfy customers in a
short product life cycle depending on the lifestyle changes [3].[italicizing by the Examiner]” See page 1090612-1.
As for the claim 2 limitation “wherein . . . ., and the metal oxide is titanium dioxide…”, see again the rejection of underlying claim 1 above and see the Abstract and 3.2 Laser direct writing of TiO2/rGO hybrid interdigitated microelectrode on TiO2-GO hybrid film, which is on pages 1090612-5 to 1090612-8.
Addressing claim 7, for the additional claim limitations of this claim see Figures 1a, 5, and 6, and see the first paragraph of 3.2 Laser direct writing of TiO2/rGO hybrid interdigitated microelectrode on TiO2-GO hybrid film, which is on page 1090612-5.
Addressing claim 8, Watanabe discloses a detection component (see the title and Abstract), comprising:
a substrate (“A TiO2-GO hybrid film was prepared on a PET film by doctor-blade method.[italicizing by the Examiner]” See 2.1 Materials, which is on page 1090612-2.); wherein the composite material film layer includes graphene oxide and a metal oxide (TiO2) (again, (“A TiO2-GO hybrid film was prepared on a PET film by doctor-blade method.” See 2.1 Materials, which is on page 1090612-2.); and
a surface modification structure (TiO2/rGO Film) formed on the substrate (see the last three sentences of the Abstract. Also see the last sentence of 1. INTRODUCTION.);
wherein the surface modification structure includes a metal oxide (TiO2) (again, (“A TiO2-GO hybrid film was prepared on a PET film by doctor-blade method.” See 2.1 Materials, which is on page 1090612-2.) and reduced graphene oxide (“By laser irradiation, the decrease of the intensity ratio of D to G band (ID/IG) accompanying the narrowing of Raman bands was observed as shown in Figures 7b and 7c. This result suggested the increase of the sp2 domain size of graphitic structure by laser irradiation. The increase of the intensity of a narrow 2D band was also observed by laser-induced reduction of GO, which suggested the remaining of the few layer graphene structure of the fl-GO even after laser irradiation.” See page 1090612-6. Also, “Because pure anatase TiO2 nanoparticle and GO films are almost insulator, the conductivity of the laser-irradiated TiO2-GO nanoparticle film is attributed to the rGO formation.[italicizing by the Examiner]” See page 1090612-6.), the metal oxide has a first crystal phase and a second crystal phase, the first crystal phase is an anatase phase (“The irradiation of a 405 nm blue violet laser to a TiO2 nanoparticle-GO hybrid film caused the crystal phase transition from anatase to rutile TiO2 accompanying the melting of anatase nanoparticles.[italicizing by the Examiner]” See the Abstract. Also, “The structural changes of a TiO2-GO hybrid film caused by 405 nm blue-violet laser irradiation were studied by micro-Raman spectroscopy. Figure 7 shows the Raman spectra of TiO2 nanoparticle, GO, and rGO as reference spectra. The Raman spectrum of anatase (Figure 7a) is characterized by an intense sharp peak at around 153 cm-1 and three peaks in the region from 400 to 650 cm-1. [italicizing by the Examiner]” See page 1090612-6.), and the second crystal phase is a rutile phase (“The irradiation of a 405 nm blue violet laser to a TiO2 nanoparticle-GO hybrid film caused the crystal phase transition from anatase to rutile TiO2 accompanying the melting of anatase nanoparticles.[italicizing by the Examiner]” See the Abstract. “In the laser direct writing using a 405 nm blue violet semiconductor laser on a TiO2 nanoparticle-GO hybrid film, the crystal phase transition from anatase to rutile TiO2 was observed even on a flexible transparent polymer film with a low heat resistance.[italicizing by the Examiner]” See page 1090612-2. “The remarkable spectral change was observed for the melted phase by laser irradiation, where the Raman spectrum as shown in Figure 9c can be assigned to rutile TiO2 [27].[italicizing by the Examiner] “ See page 1090612-6.).
Watanabe, though, does not particularly disclose that the produced detection component is a biological detection component. However, this is an intended use of the detection component that it is inherently capable of performing because defection component is otherwise the same as that claimed. “A REJECTION UNDER 35 U.S.C. 102 AND 103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC.” See MPEP 2112 (III). In this regard note that Applicant’s specification discloses using the product of the claimed method to detect lactic acid without further modification, such as adding a lactic acid specific enzyme. See Applicant’s as-filed specification paragraphs [0053]-[0055]. Last, note the following in Watanabe
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Addressing claim 9, for the additional claim limitations of this claim see Figures 1a, 5, and 6, and see the first paragraph of 3.2 Laser direct writing of TiO2/rGO hybrid interdigitated microelectrode on TiO2-GO hybrid film, which is on page 1090612-5.
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.
Addressing claim 10, as a first matter Watanabe meets all of the limitations of underlying claim 9. See the rejection of claim under 35 U.S.C 102(a)(1) above. As for the additional claim limitations of this claim consider Watanabe Figure 1(a)1. To make this interdigitated electrode pair have a spiral shape is prima facie obvious as a change in shape with no material effect on the operation of the detection component. See MPEP 2144.04(IV)(B).
Other Relevant Prior Art
Qiu et al.,” Laser‑induced CdS/TiO2/graphene dual photoanodes for ratiometric self‑powered photoelectrochemical sensor: an innovative approach for aflatoxin B1 detection,” Microchimica Acta (20242) 191:630 with Supporting Information (hereafter “Qiu”) discloses a method for preparing a biological detection component (see the title, Abstract, Simulates testing of actual samples, which is on page 630, and S1.2 Preparation of the CdS/TiO2/Graphene/ITO photoanode, which is on pages S2-S3 (Supporting Information) comprising:
a film layer formation step that includes forming a composite material film layer on a substrate (see Scheme 1 noting therein the “Spin-coating” step. Also, note the following in S1.2 Preparation of the CdS/TiO2/Graphene/ITO photoanode, “The above dark yellow solution was then spin-coated onto the conductive surface of the washed ITO electrode at a speed of 1000 r/min for 60 seconds.” ); wherein the composite material film layer includes graphene and a metal oxide (TiO(acac)2Titanium(IV) oxideacetylacetonate (Ti4+-OAA)(see S1.1. Reagent and chemical and see S1.2 Preparation of the CdS/TiO2/Graphene/ITO photoanode; and a surface modification step that includes inducing a crystal phase transformation on a surface of the composite material film layer using an ultrafast laser (see the second sentence of Ratiometric self‑powered PEC sensing of aflatoxin B1, which is on page 2 of 9; Scheme 1, noting therein ‘laser”; and S1.2 Preparation of the CdS/TiO2/Graphene/ITO photoanode, noting therein After cooling to room temperature, the electrodes were placed under the laser equipment, and laser direct writing was performed after adjusting the relevant parameters of the laser program to generate CdS/TiO2/Graphene composites.“), such that the metal oxide is at least partially transformed to a second crystal phase from the first crystal phase (in Characterization of CdS/TiO2/Graphene on page 3 of 9 note the following, “ High-resolution transmission electron microscopy (Fig. 1C) shows not only the lattice spacings of 0.316 nm and 0.359 nm corresponding to the CdS (101) and
(100) planes, respectively [22], but also the lattice spacing of 0.248 nm corresponding to the TiO2 (101) crystal plane [23].[italicizing by the Examiner]”), thereby forming a surface modification structure on the substrate to prepare the biological detection component; wherein the second crystal phase is a rutile phase (in Characterization of CdS/TiO2/Graphene on page 4 of 9 note the following, “The diffraction peaks appearing at 36°, 41.3°, and 62.7° for TiO2/Graphene material correspond to the (101) of the monocrystalline rutile TiO2 phase, respectively, (111) and (002) planes [23] (JCPDS 88–1175).[italicizing by the Examiner]” Also, in Characterization of CdS/TiO2/Graphene on page 5 of 9 note the following, “When CdS/TiO2/Graphene composites were generated by laser direct writing, the materials possessed the characteristic peaks of graphene, single-crystal rutile TiO2 phase with hexagonal phase CdS, which proved the formation of CdS/TiO2/Graphene in the prepared materials.[italicizing by the Examiner]” Additionally, in Characterization of CdS/TiO2/Graphene on page 5 of 9 note the following, Meanwhile, the peaks at ≈ 450 cm−1 and ≈609 cm−1 correspond to the A1g vibration mode of TiO2.”3).
However, in contrast to the method of Applicant’s claim 1 the surface modification step does not cause the graphene oxide to be reduced to reduced graphene oxide.4 In fact, the surface modification step creates graphene from the polymer PES (polyethersulfone). “As shown in Fig. 2A, graphene has a distinct characteristic peak at 26°, which corresponds to the (002) plane of multilayer graphene, indicating that the PES material was successfully converted to graphene after laser direct writing [24].[italicizing by the Examiner]” See page 4 of 9. Also see S1.2 Preparation of the CdS/TiO2/Graphene/ITO photoanode. Also, even if may be assumed the TiO in Ti4+-OAA has a first crystal phase, this first crystal phase is not necessarily an anatase phase.
Allowable Subject Matter
Claims 3-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
a) in claim 3 the combination of limitations requires the following underlined limitations
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In contrast, Watanabe makes no mention of the drying step. Watanabe only states, “A TiO2-GO hybrid film was prepared on a PET film by doctor-blade method.” See 2.1 Materials, which is on page 1090612-2. Presumably drying occurs during surface modification using the laser. For example, “The
unirradiated area sandwiched between laser-scanned lines showed black color, which may be attributed to the formation of rGO by heat diffusion from laser irradiated area.[italicizing by the Examiner]” See page 1090612-5.). Also, Watanabe discloses adding TiO2 nanoparticles, not in solution, to a liquid containing graphene oxide:
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b) claim 4 depends from allowable claim 3.
c) in claim 5 the combination of limitations requires the following underlined limitations
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In contrast, in Watanabe the laser wavelength is 405 nm. See 2.2 Laser direct writing, which is on page 1090612-2, and see the last sentence on page 1090612-5 (“It is also unusual that a high temperature phase transition of a metal oxide can be conducted on a flexible transparent polymer film by CW 405 nm blue violet semiconductor laser irradiation.”). Also, Watanabe is silent as to the laser maximum output power and its energy density.
d) claim 6 depends from allowable claim 5.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER STEPHAN NOGUEROLA whose telephone number is (571)272-1343. The examiner can normally be reached on Monday - Friday 9:00AM-5:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached on 571 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER S NOGUEROLA/ Primary Examiner, Art Unit 1795
1 The TiO2/rGO embodiment is understood to be similarly interdigitated. See Figures 5 and 6, and 3.2 Laser direct writing of TiO2/rGO hybrid interdigitated microelectrode on TiO2-GO hybrid film.
2 Published online: 27 September 2024
3 This sentence is referring to Figure S1.
4 In claim 1 “. . . ., and the graphene oxide is reduced to reduced graphene oxide, . . . .”
Prosecution Insights