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.
Claim 12 is 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 12 recites the limitation "the insulating layer" in line 4. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 3, 6-8, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sugizaki et al. US 2023/0304964 A1 (hereafter "Sugizaki”) in view of Liang et al. WO 2018/214119 A1 based on an EPO machine-generated English language translation (hereafter ‘Liang”).
Addressing claim 1, Sugizaki discloses a biosensor (see the title. Note that the antioxidant used by the sensor may be a biochemical or biological compound. See paragraph [0027]. ) comprising:
a substrate (the Examiner is construing the unlabeled bottommost layer in Error! Hyperlink reference not valid.
Figure 1, which is below layer 2, to be a substrate);
a graphene layer (2 in Figure 1 and paragraph [0024]. Also, note the following in paragraph [0025], “The carbon allotrope film 2 is a film made of a substance composed of carbon atoms (that is, a carbon allotrope), and is a film made of, for example, single-layer graphene, laminated graphene, . . . . [italicizing by the Examiner]“ ) disposed on the substrate (Figure 1);
a source electrode (6 in Figure 1 and paragraph [0024]) formed on one end of the graphene layer and the substrate (Figure 1);
a drain electrode (7 in Figure 1 and paragraph [0024]) separated from the source electrode and formed on the other end of the graphene layer and the substrate
(Figure 1); and
a first passivation layer (the Examiner is construing left protection layer 8 in Figure 1 and paragraph [0024] as this first passivation layer) and a second passivation layer respectively disposed on the source electrode and the drain electrode (the Examiner is construing left protection layer 8 in Figure 1 and paragraph [0024] as the first passivation layer and is construing right protection layer 8 in Figure 1 as the second passivation layer).
Sugizaki, though, does not disclose “a graphene layer disposed on at least one concave pattern formed on the substrate; . . . . [italicizing by the Examiner]” The bottom of the graphene layer is shown in Figure 1 to lie completely in contact with the top surface of the substrate.
Liang discloses a graphene field-effect transistor and preparation method therefore. See the title. The graphene field-effect transistor of Liang comprises
a substrate (1 in Figure 3 and on page 5 (“Wherein, the reference numerals are:
1、a substrate; . . . .”)) ;
a graphene layer (2 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . .; 2, a graphene channel layer; . . . .”) disposed on at least one concave pattern formed on the substrate (101 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . .101、a recessed portion; . . . .”));
a source electrode (3 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . . 3, a source electrode; . . . .)) formed on one end of the graphene layer and the substrate (Figure 3);
a drain electrode (4 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . . 4, a drain electrode; . . . .)) separated from the source electrode and formed on the other end of the graphene layer and the substrate (Figure 3); and
a first passivation layer and a second passivation layer respectively disposed on the source electrode and the drain electrode (the Examiner is construing the portion of gate dielectric layer 5 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . . 5, a gate dielectric layer; . . . .”) on the source electrode as the claimed first passivation layer, and is construing the portion of gate dielectric layer 5 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . . 5, a gate dielectric layer; . . . .”) on the drain electrode as the claimed first passivation layer). 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 have the graphene layer in the biosensor of Sugizaki be disposed on at least one concave pattern formed on the substrate as taught by Liang (see annotated Sugizaki at the end of this claim rejection) because Liang discloses
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See Liang page 1. Also see second full paragraph on page 6, the last paragraph on Liang page 3, and the last paragraph on page 5, bridging to page 6.
In sum, having the graphene layer in the biosensor of Sugizaki be disposed on at least one concave pattern formed on the substrate as taught by Liang will reduce contact between the graphene layer and the substrate, which was recognized to decrease carrier mobility of graphene, and will also avoid the deficiency in the prior art graphene suspension approach shown in Liang Figure 2 of potential collapse or deformation of the graphene layer.
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Addressing claim 3, the additional limitation of this claim may be inferred from annotated Sugizaki Figure 1 at the end of the rejection of underlying claim 1 above, Laing Figure 3 and Figures 5-8, and from their figure descriptions, such as the Figure 5 description on the bottom of page 6, bridging to page 7, and the Figure 6 description in the first full paragraph on page 7.
Addressing claim 6, for the additional limitation of this claim see annotated Sugizaki Figure 1 at the end of the rejection of underlying claim 1 and see paragraph [0024] noting therein gate electrode 5.
Addressing claim 7, for the additional limitations of this claim see annotated Sugizaki Figure 1 at the end of the rejection of underlying claim 1.
Addressing claim 8, for the additional limitations of this claim see annotated Sugizaki Figure 1 at the end of this claim rejection
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Addressing claim 13, Sugizaki discloses a biosensor (see the title. Note that the antioxidant used by the sensor may be a biochemical or biological compound. See paragraph [0027]. ) comprising:
a substrate (the Examiner is construing the unlabeled bottommost layer in Error! Hyperlink reference not valid.
Figure 1, which is below layer 2, to be a substrate);
a graphene layer (2 in Figure 1 and paragraph [0024]. Also, note the following in paragraph [0025], “The carbon allotrope film 2 is a film made of a substance composed of carbon atoms (that is, a carbon allotrope), and is a film made of, for example, single-layer graphene, laminated graphene, . . . . [italicizing by the Examiner]“ ) formed on the substrate (Figure 1);
a source electrode (6 in Figure 1 and paragraph [0024]) formed on one end of the graphene layer and the substrate (Figure 1);
a drain electrode (7 in Figure 1 and paragraph [0024]) separated from the source electrode and formed on the other end of the graphene layer and the substrate
(Figure 1); and
a first passivation layer (the Examiner is construing left protection layer 8 in Figure 1 and paragraph [0024] as this first passivation layer) and a second passivation layer respectively disposed on the source electrode and the drain electrode, respectively (the Examiner is construing left protection layer 8 in Figure 1 and paragraph [0024] as the first passivation layer and is construing right protection layer 8 in Figure 1 as the second passivation layer).
Sugizaki, though, does not disclose “wherein at least a portion of the lower surface of the graphene layer is separated from the substrate; . . . . [italicizing by the Examiner]” The bottom of the graphene layer is shown in Figure 1 to lie completely in contact with the top surface of the substrate.
Liang discloses a graphene field-effect transistor and preparation method therefore. See the title. The graphene field-effect transistor of Liang comprises
a substrate (1 in Figure 3 and on page 5 (“Wherein, the reference numerals are:
1、a substrate; . . . .”)) ;
a graphene layer (2 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . .; 2, a graphene channel layer; . . . .”) formed on the substrate (101 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . .101、a recessed portion; . . . .”));
a source electrode (3 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . . 3, a source electrode; . . . .)) formed on one end of the graphene layer and the substrate (Figure 3);
a drain electrode (4 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . . 4, a drain electrode; . . . .)) separated from the source electrode and formed on the other end of the graphene layer and the substrate (Figure 3); and
a first passivation layer and a second passivation layer respectively disposed on the source electrode and the drain electrode (the Examiner is construing the portion of gate dielectric layer 5 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . . 5, a gate dielectric layer; . . . .”) on the source electrode as the claimed first passivation layer, and is construing the portion of gate dielectric layer 5 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . . 5, a gate dielectric layer; . . . .”) on the drain electrode as the claimed first passivation layer), wherein at least a portion of the lower surface of the graphene layer is separated from the substrate ((101 in Figure 3 and on page 5 (“Wherein, the reference numerals are: . . . .101、a recessed portion; . . . .”)) ). 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 have at least a portion of the lower surface of the graphene layer be separated from the substrate in the biosensor of Sugizaki as taught by Liang (see annotated Sugizaki at the end of this claim rejection) because Liang discloses
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See Liang page 1. Also see second full paragraph on page 6, the last paragraph on Liang page 3, and the last paragraph on page 5, bridging to page 6.
In sum, having at least a portion of the lower surface of the graphene layer be separated from the substrate in the biosensor of Sugizaki as taught by Liang will reduce contact between the graphene layer and the substrate, which was recognized to decrease carrier mobility of graphene, and will also avoid the deficiency in the prior art graphene suspension approach shown in Liang Figure 2 of potential collapse or deformation of the graphene layer.
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Addressing claim 14, for the additional limitation of this clam see again annotated Sugizaki Figure 1 at the end of rejection of underlying claim 13 above.
Addressing claim 15, for the additional limitation of this clam see again annotated Sugizaki Figure 1 at the end of rejection of underlying claim 13 above
Claims 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sugizaki in view of Liang as applied to claims 1, 3, 6-8, and 13-15 above, and further in view of Hwang et al. US 2023/0080531 A1 (herafetr “Hwang”).
Addressing claim 4, while Sugizaki as modified by Liang does disclose “wherein the graphene layer is disposed on a plurality of concave patterns formed on the substrate, . . . .” (see annotated Sugizaki Figure 1 at the end of the rejection of underlying claim 1 above), Sugizaki as modified by Liang does not disclose “. . . ., and a plurality of convex patterns are formed on the graphene layer, the plurality of convex patterns being adjacent to the plurality of concave patterns.”
Hwang discloses an ultrasensitive biosensor using bent and curved field effect transistor by Debye length modulation. See the title. As seen in Hwang Figures 1A and 2A a plurality of convex patterns is formed on the graphene layer (“crumpled graphene”). See also Hwang paragraphs [0054] and [0055]. 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 similarly form a plurality of convex patterns on the graphene layer as taught Hwang on the graphen layer in the biosensor of Sugizaki as modified by Liang because Hwang discloses
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As for the additional claim 4 limitation “. . . . the plurality of convex patterns being adjacent to the plurality of concave patterns…”, 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 be so in order to still have the benefit of the supporting projections adopted from Liang into the biosensor of Sugizaki as discussed in the rejection of underlying claim 1. See in this regard Sugizaki Figure 1 further annotated below.
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Addressing claim 16, while Sugizaki as modified by Liang does disclose “wherein a plurality of concave patterns are formed in a partial area of the lower surface of the graphene layer within the substrate, . . . .” (see annotated Sugizaki Figure 1 at the end of the rejection of underlying claim 13 above), Sugizaki as modified by Liang does not disclose “. . . ., and a plurality of convex patterns are formed in a partial area of the upper surface of the graphene layer.”
Hwang discloses an ultrasensitive biosensor using bent and curved field effect transistor by Debye length modulation. See the title. As seen in Hwang Figures 1A and 2A a plurality of convex patterns is formed on the graphene layer (“crumpled graphene”). See also Hwang paragraphs [0054] and [0055]. 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 similarly form a plurality of convex patterns on the graphene layer as taught Hwang on the graphen layer in the biosensor of Sugizaki as modified by Liang because Hwang discloses
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Further annotated Sugizaki Figure 1 below will help in visualize the modification resulting from use of Hwang.
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Claims 9, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Sugizaki in view of Liang as applied to claims 1, 3, 6-8, and 13-15 above, and further in view of Hoffman et al. US 2016/0178569 A1 (hereafter “Hoffman”).
Addressing claim 9, 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 have the length of the second area or the fourth area of the graphene layer be shorter than the length of the third area because
(1) although not indicated to be drawn to scale this feature is strongly suggested by annotated Sugizaki Figure 1 at the end of rejection of underlying claim 8; and
(2) it is prima facie obvious as a change is size (lengths) or proportion (of lengths) with no material effect on the operation of the biosensor. See MPEP 2144.04(IV)(A). In this regard note Hoffman, which discloses a chemically-sensitive field effect transistor having a graphene layer whose acceptable length between the drain and source has a very large range -from 0.05 microns to 3 microns. See in Hoffman the title, Figure 1, claim 4, and paragraph [0057].
Addressing claim 10, Sugizaki as modified by Liang and Hwang appears silent as to whether the length of the second area or the fourth area of the graphene layer is 100 nm or less. Hoffman discloses a chemically-sensitive field effect transistor having a graphene layer whose acceptable length between the drain and source may be as short as 0.05 microns, that is 50 nm. See in Hoffman the title, Figure 1, claim 4, and paragraph [0057]. Barring evidence to the contrary, such as unexpected results, to the length of the second area or the fourth area of the graphene layer be 100 nm or less, if not already so, is prima facie obvious as a change is size (length) with no material effect on the operation of the biosensor.
Addressing claim 12, Sugizaki does not disclose “an insulating layer disposed on the substrate, wherein the source electrode, the drain electrode, and the graphene layer are disposed on the insulating layer.” However, as shown by Liang and by Hoffman it was known to have the substrate of a graphene-containing FET biosensor be a silicon substrate with a silicon oxide insulating layer formed on the top surface. See in Liang the second full paragraph on page 7 and see in Hoffman the title, Figure 1, and paragraph [0056]. In light of Liang and Hoffman to have in the biosensor of Sugizaki as modified by Liang and Hwang an insulating layer disposed on the substrate, wherein the source electrode, the drain electrode, and the graphene layer are disposed on the insulating layer is just the result of simple substitution of one known element (FET sensor substrate) for another to obtain predictable results. See MPEP 2143(I)(B).
Allowable Subject Matter
Claims 2, 5, and 11 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) the International Search Report for international application PCY/KR2022/015247 cites KR 10-2109-0136580 A as a “Y” document against claims 1-16 of that application; cites KR 10-1763515 B1 as a “Y” document against claims 1-16 of that application; and cites KR 10-1541084 B1 as a “Y” document against claims 12 of that application. The corresponding Written Opinion deems claim 1-6 to have novelty, but lack novelty. The claims are rejected using the aforementioned “Y” documents, which are referred to respectively as documents D1-D3. US 20210239636 is an English language equivalent to D1, the U.S. Examiner has obtained an English language translation of D2, and US 20150243917 A1 is an English language equivalent to D3. D1-D3 taken together do not appear to meet all of the limitations of either independent claim 1 or independent claim 13 of US application. 19/119645 in particular, it will be noted that D2, which is relied upon for a concave pattern formed on a substrate, does not disclose a FET sensor. In any event, D1-D3 are at best redundant with the prior art applied in the rejections under 35 U.S.C. 103 above.
b) the European Patent Office Application Serial Number 22962139.6, Search Report dated October 20, 2025, 9 pages, cites WO 2018/214119 A1 as a “X” document against claims 1-3, 6, and 11-13; cites US 2017/059514 A1 as a “X” document against claims 1,2, and 6-13; cites US 2019/346403 A1 as a “X” document against claims 1-3, 6-11, and 13; and cites KR 102338282 B1 as a “X” document against claims 1-3 and 6-13.
WO 2018/214119 A1 is Liang applied in the rejections under 35 U.S.C. 103 above. It will be noted that WO 2018/214119 A1 does not appear to disclose using the FET in or as a biosensor.
US 2017/059514 A1 discloses neither “a graphene layer disposed on at least one concave pattern formed on the substrate; . . . .” nor “. . . ., wherein at least a portion of the lower surface of the graphene layer is separated from the substrate.”
US 2019/346403 A1 discloses neither “a graphene layer disposed on at least one concave pattern formed on the substrate; . . . .” nor “. . . ., wherein at least a portion of the lower surface of the graphene layer is separated from the substrate.”
KR 102338282 B1, based on an English language translation obtained by the US Examiner, discloses neither “a graphene layer disposed on at least one concave pattern formed on the substrate; . . . .” nor “. . . ., wherein at least a portion of the lower surface of the graphene layer is separated from the substrate.”
c) in claim 2 the combination of limitations requires the following underlined features
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In contrast, in the biosensor of Sugizaki as modified by Liang the first passivation layer and the second passivation would only be formed above respective ends of the graphene layer. Consider Sugizaki Figure 1 in light of Liang Figure 3.
d) in claim 5 the combination of limitations requires the following underlined feature
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In contrast, in the biosensor of Sugizaki as modified by Liang and Hwang while the plurality of convex patterns would apparently be formed of SiO2 (see Sugizaki paragraph [0083]) while the composition of the first passivation layer and the second passivation layer is not indicated. Presumably it would be an encapsulant material, such as silicone rubber as disclosed in the last sentence of Hwang paragraph [0150] or an epoxy-based resin, as disclosed in related prior art Walsh et al. US 2019/0293595 A1 (hereafter ‘Walsh”). See in Walsh the title, Figure 2, and the last two sentences in paragraph [0055].
e) in claim 11 the combination of limitations requires the following underlined feature
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In contrast, Sugizaki is silent as to the composition of the source electrode and the drain electrode. Liang discloses, “The source electrode 3 and the drain electrode 4 are each a composite metal layer including a titanium layer, a palladium layer, and a gold layer, . . . .” See the last paragraph on page 7. Hwang discloses “To fabricate transistor, conducting silver paste was used as source and drain electrodes at both ends of the graphene.” See Hwang paraph [0150].
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
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