DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
This action is in response to Applicant’s Request for Reconsideration dated 12/04/2025.
Claim(s) 1-18 are currently pending.
Claim(s) 1 and 14 have been amended.
Claim(s) 19-20 have been canceled.
Claim Rejections - 35 USC § 112
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 5, 6, 16 and 18 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 5 and 16
The limitation “a polymer donor:squaraine ratio ranging from 1:0.005 to 1:0.2 by weight” is unclear and therefore renders the claims indefinite. Claims 1 and 14, from which claims 5 and 16 depend, require a polymer donor:squaraine ratio ranging from 1:0.005 to 1:0.05 by weight. Instant claims 5 and 16 recite a broader range that is not consistent with the claims from which they depend. Appropriate correction and clarification is required.
Regarding claim 6
Claim 6 is rejected for its dependency on claim 5. It is noted that, as in claim 5, claim 6 recites a range that is not consistent with the narrower range recited in claim 1. Appropriate correction and clarification is required.
Regarding claim 18
The limitation “wherein x represents a number ranging from 0.005 to 0.2” is unclear and therefore renders the claim indefinite. Claim 14, from which claim 18 depends, requires a polymer donor:squaraine ratio ranging from 1:0.005 to 1:0.05 by weight. Accordingly, the range recited in the instant claim is not consistent with that recited in independent claim 14. Appropriate correction and clarification is required.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-18 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pandey in view of US 2012/0248419, Thompson et al. (hereinafter Thompson).
Regarding claims 1, 9 and 14
Pandey teaches an organic photosensitive optoelectronic device (corresponding to an organic thin film solar cell), and method of fabricating thereof [Fig. 2(a), Abstract and Page 402, Cols. 1-2], comprising:
two electrodes (corresponding to ITO and Al electrode layers) in superposed relation [Fig. 2(a) and Page 402, Cols. 1-2],
a photoactive region (corresponding to active layer consisting of P3HT, PCBM and SQ dyes) located between the two electrodes [Fig. 2(a) and Page 402, Cols. 1-2],
wherein the photoactive region (P3HT/PCBM/SQ dyes active layer) comprises a donor mixture (P3HT and SQ-dyes) and an organic acceptor material (PCBM) [Fig. 2(a) and Page 402, Cols. 1-2], the donor mixture comprising at least one organic polymer donor material (corresponding to P3HT) and at least one squaraine donor (corresponding to SQ dyes) [Fig. 2(a) and Page 402, Cols. 1-2].
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Fig. 2a
Pandey teaches the donor mixture comprising the at one organic polymer donor material and the at least one squaraine donor at a polymer donor:squaraine ratio of 1:0.07 [Page 402, Cols. 1-2]. The ratio of Pandey is so close to the end point of the claimed range (1:0.05), that one of ordinary skill would expect for them to have the same properties.
The court has held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) See MPEP 2144.05 (I)
Pandey does not teach the at least one squaraine donor chosen from 2,4-bis[4-(N,N-diisobutylamino)-2,6-dihydroxyphenyl] (DBSQ), 2,4-bis[4-N- carbazolo-2,6-dihydroxyphenyl] squaraine (CBZSQ), 2,4-bis[4-N-phenothiazino-2,6- dihydroxyphenyl] squaraine (PTSQ), 2,4-bis[4-(N,N-diphenylamino)-2,6- dihydroxyphenyl] squaraine (DPSQ), 2,4-bis[4-(N-Phenyl-1-naphthylamino)-2,6- dihydroxyphenyl] squaraine (1 NPSQ), 2,4-bis[4-(N-Phenyl-2-naphthylamino)-2,6- dihydroxyphenyl] squaraine (2NPSQ), {2-[4-(N,N-diisobutylamino)-2,6- dihydroxyphenyl]-4-diphenylamino} squaraine (USSQ), {2-[4-(N,N-diphenylamino)- 2,6-dihydroxyphenyl]-4-diphenylamino} squaraine (DPUSQ), and diphenylamino- squarate (YSQ).
In the same field of endeavor of organic photosensitive devices comprising architectural arrangements chosen from planar, bulk heterojunctions, hybrid-planar mixed, nanocrystalline bulk heterojunctions, and the like [Fig. 1 and paragraph 0143], Thompson teaches squaraine compounds that may be used alone or in addition to other donor materials [paragraph 0126], wherein the squaraine compounds may be selected from one or more of CBZSQ, PTSQ, DPSQ, 1NPSQ, 2NPSQ, DPUSQ, and YSQ [paragraph 0095].
Thompson further teaches that using at least two different squaraine donor compounds provides more efficient light harvesting at wavelengths ranging from 500 to 850 nm [paragraph 0125], said wavelength range being the same with which Pandey is concerned [see Pandey, Page 404, Cols. 1-2].
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the squaraine compound disclosed in Panday with the mixture of squaraine compounds taught by Thompson in order to improve the light harvesting efficiency of the organic photosensitive optoelectronic device in the far-red wavelength range. Furthermore, because Thompson teaches choosing from a finite number of identified, predictable squaraine compounds, one of ordinary skill in the art would have found obvious to pursue the known options with reasonable expectation of success [see MPEP 2143]. Since Thompson teaches that CBZSQ, PTSQ, DPSQ, 1NPSQ, 2NPSQ, DPUSQ, and YSQ donor compounds lead to the anticipated success, said squaraine compounds are not of innovation but of ordinary skill and common sense [see MPEP 2143].
With regards to the limitation “a first squaraine donor and a second squaraine donor such that an absorption of the first squaraine donor and an absorption of the second squaraine donor partially overlap”, Pandey in view of Thompson teaches the squaraine compounds may be selected from one or more of CBZSQ, PTSQ, DPSQ, 1NPSQ, 2NPSQ, DPUSQ, and YSQ [Thompson, paragraph 0095]. The prior art further teaches using at least two squaraine donors for the purpose of improving light harvesting efficiency at wavelengths ranging from 500 to 850 nm [Thompson, para. 0125]. Therefore, because the squaraine donors disclosed in modified Pandey are the same as those listed in instant claim 9, the claimed properties or functions are presumed to be inherent.
The court has held that products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 2
Modified Pandey teaches the device as set forth above, wherein the at least one squaraine donor (SQ dye) has a maximum absorptivity at a longer wavelength (670-680 nm) than a maximum absorptivity of the at least one organic polymer donor material (P3HT exhibits maximum absorption at 525 nm) [Pandey: Fig. 3, Page 402, Col. 2, 3. Results and discussion].
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Regarding claim 3
With regards to the at least one squaraine donor has an absorptivity of at least 103 cm-1 at one or more wavelengths ranging from 450 to 950 nm, because the at least one squaraine donor of the prior art is the same as the one claimed [see paragraphs 0095 and 0125-0126 of Thompson], the claimed properties or functions are presumed to be inherent.
The court has held that products of identical chemical composition can not have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Regarding claim 4
With regards to the at least one squaraine donor has an absorptivity of at least 105 cm-1 at one or more wavelengths ranging from 450 to 950 nm, because the at least one squaraine donor of the prior art is the same as the one claimed [see paragraphs 0095 and 0125-0126 of Thompson], the claimed properties or functions are presumed to be inherent.
The court has held that products of identical chemical composition can not have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Regarding claim 5
Modified Pandey teaches the device as set forth above, wherein the donor mixture comprises the at least one organic polymer donor material and the at least one squaraine donor at a polymer donor: squaraine ratio ranging from 1:0.005 to 1:0.2 by weight (the active layer consisting of P3HT, PCBM and SQ-dyes in the ratio of 1.0:0.8:0.07 (w/v) from chloroform solution was spin coated) [Pandey: Page 402, Cols. 1-2].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Regarding claim 6
Modified Pandey teaches the device as set forth above, wherein the polymer donor: squaraine ratio ranges from 1:0.01 to 1:0.1 by weight (the active layer consisting of P3HT, PCBM and SQ-dyes in the ratio of 1.0:0.8:0.07 (w/v) from chloroform solution was spin coated) [Pandey: Page 402, Cols. 1-2]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Regarding claim 7
Modified Pandey teaches the device as set forth above, wherein the donor mixture and the organic acceptor material form a donor-acceptor heterojunction [Pandey: Fig. 2(a) and Pages 401-402].
Regarding claim 8
Modified Pandey teaches the device as set forth above, wherein the donor-acceptor heterojunction is chosen from a mixed heterojunction, a bulk heterojunction, a planar heterojunction, and a hybrid planar-mixed heterojunction (“[t]hree types of thin film solar cells such as planer bilayer heterojunction solar cells, dye-sensitized bulk heterojunction solar cells and bulk heterojunction solar cells…”) [Pandey: Fig. 2(a) and Page 402, Col. 1].
Regarding claim 10
Modified Pandey teaches the device as set forth above, wherein the at least one organic polymer donor material is chosen from polythiophene, polycarbazole, polyfluorene, polydithienosilole, polybenzodithiophene, and copolymers thereof (the organic polymer donot material comprises P3HT) [Pandey: Fig. 2(a) and Page 402, Col. 1].
Regarding claim 11
Modified Pandey teaches the device as set forth above, wherein the at least one organic polymer donor material is chosen from poly[2-methoxy-5-(2'-ethylhexyloxy)-p-phenylene vinylene], poly(3-hexylthiophene) (P3HT), poly[2,6-(4,4-bis-(2-ethylhexyl)-4H-cyclopenta[2,1- b;3,4-b']dithiophene-alt-4,7-(2,1,3-benzothiadiazole)], poly[N-9"-hepta-decanyl-2,7- carbazole-alt-5,5-(4',7'-di-2-thienyl-2',1',3'-benzothiadiazole)], poly(4,4- dioctyldithieno(3,2-b:2',3'-d)silole)-2,6-diyl-alt-(2,1,3-benzothiadiazole)-4,7-diyl), poly{2,6-4,8-di(5-ethylhexylthienyl)benzo[1,2-b;3,4-b]dithiophene-alt-5-dibutyloctyl- 3,6-bis(5-bromothiophen-2-yl)pyrrolo[3,4-c]pyrrole-1,4-dione}, poly[2,7-(9,9- didecylfluorene)-alt-5,5-(4,7-di-2-thienyl-2,1,3-benzothiadiazole)], and alternating copolymer of thieno[3,4-b]-thiophene and benzodithiophene [Pandey: Fig. 2(a) and Page 402, Cols. 1-2].
Regarding claim 12
Modified Pandey teaches the device as set forth above, wherein the organic acceptor material comprises at least one compound chosen from perylenes, naphthalenes, fullerenes, and derivatives thereof (the acceptor material comprises PCBM) [Pandey: Fig. 2(a) and Page 402, Cols. 1-2].
Regarding claim 13
Modified Pandey teaches the device as set forth above, wherein the at least one organic polymer donor material is P3HT and the organic acceptor material comprises a fullerene or a derivative thereof (PCBM) [Pandey: Fig. 2(a) and Page 402, Cols. 1-2].
Regarding claim 15
Pandey teaches the method as set forth above, wherein the deposition of a photoactive region (P3HT/PCBM/SQ dyes active layer) over a first electrode (ITO) comprises co-depositing the at least one organic polymer donor material (P3HT) and the at least one squaraine donor (SQ-dye) over the first electrode [Fig. 2(a) and Page 402, Cols. 1-2], and depositing the organic acceptor material (PCBM) over the first electrode (ITO) [Fig. 2(a)].
While the embodiment disclosed in Fig. 2(a) of Pandey does not specifically teach the co-deposition of the at least one organic polymer donor material and the at least one squaraine donor occurring before or after the deposition of the organic acceptor material over the first electrode, as seen in Fig. 2(b), the donor material may be deposited before the organic acceptor material.
In the absence of criticality or unexpected results, the court has held that in the absence of criticality or new and unexpected results, the selection of any order of performing process steps is prima facie obvious (See MPEP § 2144.04).
Regarding claim 16
Pandey teaches the method as set forth above, wherein the at least one organic polymer donor material and the at least one squaraine donor are co-deposited at a polymer donor: squaraine ratio ranging from 1:0.005 to 1:0.2 by weight (the active layer consisting of P3HT, PCBM and SQ-dyes in the ratio of 1.0:0.8:0.07 (w/v) from chloroform solution was spin coated) [Page 402, Cols. 1-2].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Regarding claim 17
Pandey teaches the method as set forth above, wherein the deposition of a photoactive region over a first electrode (ITO) comprises co-depositing the at least one organic polymer donor material (P3HT), the at least one squaraine donor (SQ-dye), and the organic acceptor material (PCBM) over the first electrode (the active layer consisting of P3HT, PCBM and SQ-dyes in the ratio of 1.0:0.8:0.07 (w/v) from chloroform solution was spin coated) [Page 402, Cols. 1-2].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Regarding claim 18
Pandey teaches the method as set forth above, wherein the at least one organic polymer donor material (P3HT), the organic acceptor material (PCBM), and the at least one squaraine donor (SQ-dye) are co-deposited at a polymer donor: acceptor: squaraine ratio ranging from 1:0.5:x to 1:1.5:x by weight, wherein x represents a number ranging from 0.005 to 0.2 (the active layer consisting of P3HT, PCBM and SQ-dyes in the ratio of 1.0:0.8:0.07 (w/v) from chloroform solution was spin coated) [Page 402, Cols. 1-2].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Response to Arguments
Applicant's arguments filed 12/04/2025 have been fully considered but they are not persuasive.
Applicant argues that Pandey fails to disclose the particular combination of squaraine donors recited in the independent claims, namely a first squaraine donor and a second squaraine donor, wherein "an absorption of the first squaraine donor and an absorption of the second squaraine donor partially overlap," as recited in independent claims 1 and 14.
Applicant argues that the devices of Pandey include only one squaraine donor each and that Pandey indicates that when the one squaraine donor is varied, the performance of the device also changes.
Applicant further argues that Pandey teaches that SQ-3 has the best performance and that small variations in the alkyl chain can have a large impact on the performance.
Examiner respectfully disagrees. As previously set forth, while Panday may disclose an enhanced performance for SQ-3, which Examiner notes Table 1 of Pandey shows SQ-2 provides better results compared to SQ-3, Pandey teaches that SQ-dyes, including dyes other than SQ-3, exhibit p-type donor behavior with near infra-red harvesting. Furthermore, it is first noted that while Table 1 of Pandey shows results for various squaraine donor materials, such does not preclude the teachings of the combination of references.
Examiner does not agree that recognizing that Pandey discloses in Table 1 that the performance of SQ2 is superior to SQ3 would lead one skilled in the art away from the modifications suggested when taking into consideration the rejection as a whole.
As previously set forth, Thompson teaches that using at least two different donors selected from CBZSQ, PTSQ, DPSQ, 1NPSQ, 2NPSQ, DPUSQ, and YSQ results in more efficient light harvesting at wavelengths ranging from 500 to 850 nm [paras. 0095 and 0126], said wavelength range corresponding to the same far-red wavelength range with which Pandey is concerned. Thomson further discloses that using at least two squaraine donors selected from the above provides improved light harvesting within said far-red wavelength range when compared to a donor-acceptor heterojunction using only one squaraine. Accordingly, Thompson shows a clear improvement over the squaraine donor used in Pandey.
It is noted that both Pandey and Thompson are concerned with enhancing the light harvesting efficiency of organic photosensitive devices in the far-red region (see Pandey, Page 404, Cols. 1-2; see also Thompson, para. 0126].
Regarding the claimed ratio of donor to squaraine, though the claimed range (1:0.005 to 1:0.05) does not overlap with the value disclosed in Pandey (1:0.07), the claimed range is sufficiently close to the value disclosed in Panday such that the claimed subject matter would have been obvious.
The courts have held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985); See also MPEP 2144.05 (I).
Here, the upper limit of the claimed range (1:0.05) is very close to the value disclosed in Pandey (1:0.07), and the claimed range represents only a minor variation from the prior art. Applicant has not provided evidence demonstrating that the claimed range is critical or produces any new or unexpected results relative to the ratio discloses in the prior art. The claimed range appears to have been selected to exclude the specific value disclosed in Pandey, rather than to reflect a critical or patentably distinct range. After inspection of the instant specification, the Examiner has not been able to find any critical or unexpected results associated with the claimed range.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYLA GONZALEZ RAMOS whose telephone number is (571)272-5054. The examiner can normally be reached Monday - Thursday, 9:00-5:00 - EST.
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/MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721