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 § 112
Note that dependent claims will have the deficiencies of base and intervening claims.
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 –
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.
Claims 1-14 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:
a) claim 1 requires “a layered double hydroxide layer . . . . “ Applicant is requested to clarify the scope of this phrase. For example, is it meant to be understood as described below?
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See page 2 of Prasad et al., “Review - A An overview of semiconductors/layered double hydroxides composites: Properties, synthesis, photocatalytic and Photoelectrochemical applications,” Journal of Molecular Liquids 289(2019) 111114.
If Applicant is using the phrase “a layered double hydroxide layer” in an unconventional sense please heed MPEP 2173.05(a).
b) claim 1 recites, “A device comprising: an insulating substrate; at least one insulating composite layer; . . . . , wherein the insulating composite layer includes a pair of electrodes and a semiconductor layer in contact with the pair of electrodes, . . . . [italicizing by the Examiner]” The scope of the word “insulating” in the phrase “at least one insulating composite layer” is indefinite because the only specified components in this layer - a pair of electrodes and a semiconductor layer in contact with the pair of electrodes - are actually not insulating. Applicant is requested to specify what makes the insulating composite layer insulating or whether he is using the word “insulating” in an unconventional manner. If Applicant is using the word “insulating” in an unconventional manner please heed MPEP 2173.05(a).
c) claim 13 is indefinite because it is a “use” claim, that is, a claim that attempts to claim a process without setting forth any steps involved in the process. See MPEP 2173.05(q).
d) claim 14 is indefinite because it is a “use” claim, that is, a claim that attempts to claim a process without setting forth any steps involved in the process. See MPEP 2173.05(q).
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-14 would be allowable if rewritten to overcome the rejections under
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 1 the combination of limitations requires the following underlined feature
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a)(i) the International Search Report for international application no. PCT/JP2023/026642 only cites “A” documents.
a)(ii) the Written Opinion for international application no. PCT/JP2023/026642, based on an English language translation obtained by the U.S. Examiner, deems claims 1-14 of that application to have both novelty and an inventive step.
a)(iii) the European Search Report issued in the corresponding European Patent Application No. 23846368.1; dated September 9, 2025 (total 8 pages), cites an article by de Melo et al. (referred to as document D1) as an “X” document against
claims 1-14 of that application and only otherwise cites “A” documents. The rejection of claim 1 in the European Search Report, though, acknowledges that D1 does not explicitly disclose any of the features of claim 1. It turns to an article by P. Bergveld (referred to as document D2) for almost all the claimed features. D2 does not appear to teach all of the features it is relied upon, but even of it did, it does not disclose the what the OH- ion conductivity of the LDH layer in D1 may be. For this feature the rejection turns to an article by Pizzoferrato et al. (referred to as document D3):
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However, Table 1 in D3, reproduced below, contains no OH- ion conductivity ranges or values.
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Moreover, as some of the listed anion conductivity values in Table 1 are outside of the range specified in clam 1 of U.S. application 18/995552 and the layered double hydroxide layer (Zn-Al) in D1 was apparently made by a different method than that disclosed in D3 ( In D1 – “The layered double hydroxide, Zn3Al(OH)8Cl•2H2O, was synthesized by the coprecipitation method developed by De Roy.23 See D1 page 4038, EXPERIMENTAL SECTION – Materials. In D3 - “Zn-Al Layered Double Hydroxide (LDH) films were grown on aluminum substrates with different anions by a one-step, hydrothermal process at 80 °C, in which the metal substrate acts as both reactant and support.” See the D3 Abstract) there is no clear indication that the OH- ion conductivity of the layered double hydroxide layer in D1 is within or near the claimed range.
a)(iv) Takechi et al. US 2015/0276663 (hereafter “Takechi”) discloses a device (see the title and Figure 41) comprising: an insulating substrate (glass substrate 18 in Figure 4 and paragraph [0085]); at least one insulating composite layer (the Examiner is construing layers 10, 13s, 13d, and 12 in Figure 4 taken together as this insulating composite layer); wherein
the insulating composite layer includes a pair of electrodes (source electrode 13s and drain electrode 13d. See Figure 4, paragraph [0071], and again footnote 1 in this Office Action.) and a semiconductor layer (oxide semiconductor film 23 in Figure 4 and paragraph [0091]) in contact with the pair of electrodes (Figure 4).
Takechi, though, does not appear to explicitly disclose a liquid storage portion capable of holding an ion-containing liquid, although Takechi does clearly disclose an ion-containing liquid in contact with the device (note sensing substance 16 in Figure 4 having an ion concentration whose change in value (such as a pH change) is to be determined. See paragraph [0064]).
Moore et al. US 5,240,586 (hereafter “Moore”) discloses a device (ISFET) having a similar structure and function to that of Takechi Figure 4. See Moore the title and Figure 1. The device of Moore comprises a liquid storage portion (unlabeled, but clearly visible in Figure 1. See annotated Figure 1 below) capable of holding an ion-containing liquid (19 in Moore Figure 1 and col. 5:3-10). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to provide a storage portion as taught by Moore for the device of Takechi because (1) it is a simple modification that does not require any alteration of the existing structure of the device of Takechi, and (2) it will allow a precise quantity of sample liquid to be placed onto the device in manner that ensures that the sample liquid contacts the sensing region of the device without spilling onto non-sensing portions of the device, which would contaminate them, may adversely affect the measurements (through reactions with any exposed electrical circuitry, such as leads or wiring, on the non-sensing device portions), or even damage non-sensing portions of the device (if they are pH sensitive, for example).
Takechi as modified Moore does not disclose the device further having “a layered double hydroxide layer having an OH- ion conductivity of 1 x 10-5 S/cm or more is provided between the insulating composite layer and the liquid storage portion.” Even if would have been somehow obvious over Ballarin et al., “Hydrotalcite-like compounds as ionophores for the development of anion potentiometric sensors,” Journal of Electroanalytical Chemistry 492 (2000) 7–1 (hereafter “Ballarin”); or Carja et al., “ Hydrotalcite-like anionic clays substituted with iron / laccase, composites for biosensors applications,” Advanced Topics in Optoelectronics, Microelectronics, and Nanotechnologies IV, edited by Paul Schiopu, Cornel Panait, George Caruntu, Adrian Manea, Proc. of SPIE Vol. 7297, 72970G · © 2009 SPIE CCC code: 0277-786X/09/ (hereafter “Carja”), for example, to instead use the layered double hydroxide layer of either Ballarin or Carja as the ion sensitive film 14 in the device of Takechi modified by Moore, in order to enable to the device to be able to measure other ions that may be interest, it could not be said that the layered double hydroxide layer would necessarily or even likely have an OH- ion conductivity of 1 x 10-5 S/cm or more. The OH- ion conductivity cannot be estimated from available information; measurements which the USPTO is not equipped to perform are required to determine the OH- ion conductivity of the layered double hydroxide layer.
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b) claims 2-14 depend directly or indirectly from allowable (once the
35 USC 112(b) rejection is overcome) claim 1.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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 Note that reference numerals in Figure 4 are understood by the Examiner to refer to the same structural elements as they do in Figure 3. See Takechi paragraph [0084].
Prosecution Insights