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 § 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 instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0129947 A1 to Peng et al. (hereinafter Peng).
Regarding claim 1, Peng discloses a method for preparing core-shell quantum dots (core-shell nanocrystals, para [0007]), wherein, the method comprises:
preparing a solution comprising alloy quantum dot cores, purifying the alloy quantum dot cores (para [0159]);
heating a mixture comprising a cation precursor of the shell (Cd), a carboxylic acid (fatty acid), the alloy quantum dot cores and a solvent (ODE) for a certain period of time, after the certain period of time, the carboxylic acid presents in the mixture being free carboxylic acid; adding a fatty amine (octadecylamine) and an anion precursor (S) of the shell to the mixture, coating the alloy quantum dot cores to obtain core-shell quantum dots (para [0155]-[0158]) via alternating injections (para [0152]); upon termination of the reaction, the surface of the core-shell quantum dots in the product system comprises a ligand selected from fatty acid ligands and fatty amine ligands (para [0184]). When the ligand is a fatty amine, the fatty amine ligand accounts for 100% of the ligands at the surface, which falls within the instantly claimed range of at least 80% of all ligands on the surface,
wherein the step of adding the fatty amine and the anion precursor of the shell to the mixture comprises: first adding the fatty amine (ligand) and then adding the anion precursor of the shell to the mixture (alternating injections, para [0152]), time interval of the additions of the fatty amine and the anion precursor of the shell being every 3-5 minutes (para [0405]), which falls within the instantly claimed range of 30 minutes or less.
The reference is silent regarding the molar ratio of the fatty amine to the free carboxylic acid, particularly a ratio of greater than 2:1. However, see MPEP 2144.05(II)(A), which states that ‘Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical’.
It would be obvious to one of ordinary skill in the art to optimize the molar ratio of the fatty amine to the free carboxylic acid, particularly to a ratio of greater than 2:1, to optimize the thickness of each shell layer (para [0011] and [0433]) and ultimately optimize the optical properties of the quantum dots (para [0013]).
Regarding claim 2, Peng discloses the method for preparing core-shell quantum dots according to claim 1, wherein the time interval of the additions of the fatty amine and the anion precursor of the shell is 3-5 minutes (para [0405], as discussed above), which falls within the instantly claimed range of less than or equal to 10 minutes.
Regarding claim 3, Peng discloses the method for preparing core-shell quantum dots according to claim 1, wherein, preparing the solution comprising alloy quantum dot cores comprises:
preparing a solution comprising quantum dot cores, and alloying the quantum dot cores (para [0429]) to obtain the solution comprising the alloy quantum dot cores (para [0155]).
Regarding claim 4, Peng discloses the method for preparing core-shell quantum dots according to claim 1, wherein the fatty amine is selected from a group that includes primary amines having a carbon chain length of up to about 30 carbon atoms (para [0184]), which overlaps the instantly claimed range of 8 to 22. See MPEP 2144.05(I), which states that ‘In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists’.
Regarding claim 5, Peng discloses the method for preparing core-shell quantum dots according to claim 1, wherein the carboxylic acid is selected from fatty acids having a carbon chain length of up to about 45 carbon atoms (para [0184]), which overlaps the instantly claimed range of 8 to 22. See MPEP 2144.05(I), cited above.
Regarding claim 6, Peng discloses the method for preparing core-shell quantum dots according to claim 3 comprising:
S1a, heating a mixture comprising a first group II element precursor (Cd) selected from a group that includes carboxylates (CdO), a first carboxylic acid (oleic) and a solvent for a certain period of time, adding a first group VI element (Se) precursor for further reaction (para [0397]-[0398]), and after the reaction is terminated, purifying to obtain II-VI quantum dot cores (para [0398] and [0406]);
S2a, heating a mixture comprising the first group II element precursor (Cd) selected from a group that includes carboxylates (CdO), a second group II element precursor (Cd) selected from a group that includes carboxylates (CdO) a second carboxylic acid (one or more acids may be selected, para [0156]) and the solvent to a first temperature and purging with gas (argon) for a certain period of time, heating to a second temperature and adding the II-VI quantum dot cores (para [0397]), the fatty amine (ligand, para [0013]), and the first group VI element precursor for reaction (S), after the reaction is terminated, purifying to obtain II-VI@II-II-VI quantum dots (para [0406]), dispersing the purified II-VI@II-II-VI quantum dots (CdSe@CdS, para [0398] where the first and second group II elements are both Cd) in the solvent to obtain a solution comprising the II-VI@II-II-VI quantum dots (para [0398]).
Regarding claim 7, Peng discloses the method for preparing core-shell quantum dots according to claim 6, further comprising S3a, heating the first carboxylate of group II element precursor, the second carboxylate of group II element precursor and the solution comprising II-VI@II-II-VI quantum dots (as discussed above) to the first temperature and purging with gas for a certain period of time, heating to a second temperature (para [0397]), and adding the fatty amine and the second group VI element precursor to obtain a solution (para [0398]) comprising II-VI @II-VI/II-II-VI quantum dots (CdSe@CdS/CdS, multiple monolayers of CdS shell (para [0207]). One of ordinary skill in the art would expect the process to be repeated to form multiple monolayers.
Regarding claim 8, Peng discloses the method for preparing core-shell quantum dots according to claim 3, comprises:
S1b, heating a mixture comprising a first carboxylate of group II element precursor, a first carboxylic acid and a solvent mixture for a certain period of time, adding a first group VI element precursor for further thermal reaction, and after the reaction is terminated, purifying to obtain II-VI quantum dot cores (para [0397] and [0406], as discussed above)
S2b, heating a mixture comprising a second carboxylate of Group II element precursor, a second carboxylic acid and the solvent to a first temperature reaction (and purging with gas for a certain period of time, heating to a second temperature and adding the II-VI quantum dot cores (para [0397]), the fatty amine, the first group VI element precursor and the second group VI element precursor (para [0398]), after the reaction is terminated, purifying to obtain II-VI@II-VI-VI group quantum dots (para [0406]), and dispersing the purified II-VI @II-VI-VI quantum dots in the solvent (CdSe@CdS, para [0398], where both group VI elements are S).
Regarding claim 9, Peng discloses the method for preparing core-shell quantum dots according to claim 8, further comprising S3b, adding a second carboxylate of group II element precursor, the II-VI@II-II-VI group quantum dots (as discussed above) and the solvent and heating to a first temperature reaction and purging with gas for a certain period of time, heating to a second temperature and adding the fatty amine and the second group VI clement precursor to obtain a solution comprising II-VI@II-VI-VI/II-VI quantum dots (CdSe@CdS/CdS, para [0398], as discussed above including multiple monolayers, para [0207], where both group II elements are Cd). One of ordinary skill in the art would expect the process to be repeated to form multiple monolayers.
Regarding claim 10, Peng discloses the method for preparing core-shell quantum dots according to claim 3, comprising:
S1c, heating a mixture of a first carboxylate of group II element precursor, a first carboxylic acid and a solvent for a certain period of time, and adding a first group VI element precursor for further thermal reaction, and after the reaction is terminated, purifying to obtain the II-VI quantum dot cores (para [0397] and [0406])
S2c, heating a mixture of a second carboxylate of Group II element precursor, a second carboxylic acid and the solvent to a first temperature reaction and purging with gas for a certain period of time, heating to a second temperature and adding the II-VI quantum cores, the fatty amine and the second group VI element precursor, after the reaction is terminated, purifying to obtain II-VI@II-VI quantum dots dispersing the purified II-VI@II-VI (CdSe@CdS) quantum dots in the solvent (para [0397]-[0398]).
Regarding claim 11, Peng discloses the method for preparing core-shell quantum dots according to claim 1, comprises:
S1d, heating a mixture of the second carboxylate of Group II element precursor, the first carboxylic acid and a solvent for a certain period of time, adding the first Group VI element precursor to react for a certain period of time, adding the first carboxylate of Group II element precursor and the first group VI element precursor to react for a certain period of time, and after the reaction is terminated, purifying to obtain II-II-VI quantum dot alloy cores (para [0397] and [0406]),
S2d, heating the mixture of the second carboxylate of Group II element precursor, a second carboxylic acid and the solvent to a first temperature reaction and purging with gas for a certain period of time, heating to a second temperature and adding the II-II-VI of quantum dot alloy cores, the fatty amines, and the second group VI element precursor (para [0397]-[0398]), after termination of the reaction, purifying to obtain II-II-VI@II-VI quantum dots (CdSe@CdS, where both Group II elements are Cd).
Regarding claim 12, Peng discloses the method for preparing a core-shell quantum dot according to claim 5, wherein the first temperature is about 200 °C, which overlaps instantly claimed range 150 to 200 °C and the second temperature is 280 °C (para [0012]), which is the lower limit of instantly claimed range 280 to 310 °C. See MPEP 2144.05(I), cited above. It would also be obvious to one of ordinary skill in the art to optimize the temperature based on the heating time and thereby increase the efficiency of the process without compromising the optical properties of the quantum dots. Conventionally, higher heating temperatures typically correspond to shorter heating times. Lower heating temperatures typically correspond to longer heating times.
Regarding claim 13, Peng discloses the method for preparing a core-shell quantum dot according to claim 6, wherein the first carboxylate of Group II element precursor is selected from a group that includes cadmium carboxylate (para [0198]), and the second carboxylate of Group II element precursor is selected from a group that includes zinc carboxylate (para [0198]) in an alternate embodiment that forms CdSe@ZnS (para [0340]). The reference is silent regarding the number of carbon atoms in the carboxylates.
However, it would be obvious to one of ordinary skill in the art to select particular carboxylate precursors with the desired number of carbon atoms to facilitate growth of high quality core-shell quantum dots (para [0012]) ultimately produce quantum dots with the desired optical properties (para [0013]).
Regarding claim 14, Peng discloses the method for preparing a core-shell quantum dot according to claim 6, wherein the first group VI element precursor is a Se precursor, and the second group VI element precursor is a S precursor (para [0340for multiple shells such as ZnSe/ZnS).
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 § 2146 et seq. 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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 15 of U.S. Patent No.11618853 B2 (hereinafter 853) in view of CN101168663 A to Le et al. (hereinafter Le), provided in the IDS filed 4/15/21. Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping methods for preparing core shell quantum dots comprising the steps of heating anion and cation precursors in a solution comprising a carboxylic acid and fatty amine such that the surface of the core-shell product comprises a fatty amine ligand wherein the fatty amine ligand accounts for at least 80% of all ligands on the surface.
The 853 claims recite a similar method but do not expressly claim a time interval for the addition of the fatty amine and anion precursor.
However, Le does teach a method of making core/shell quantum dots comprising the addition of fatty amines, carboxylic acids and anion (S, Se) precursors (para [0008]-[0010]) over a time interval of 1 to 5 minutes (para [0014]), which falls within the instantly claimed range of 30 minutes or less.
It would be obvious to one of ordinary skill in the art to optimize the time interval for adding precursors, particularly the fatty amine and anion precursor, to control the thickness of the shell layers (Le, para [0015]) in a simple and cost-effective manner.
Response to Arguments
Applicant’s arguments, see page 7, filed 11/15/24, with respect to the 112 rejection have been fully considered and are persuasive. The most recent amendment to the claims resolves the issues.
Therefore, the 112(b) rejection of claims 2 and 13 has been withdrawn.
Applicant’s arguments, see pages 7-13, filed 11/15/24, with respect to Liu have been fully considered and are persuasive. Liu does not teach or suggest the interval time of additions as set forth in the newly amended claims.
Therefore, the 103 rejection of claims 1-14 as obvious over Liu has been withdrawn.
Applicant’s arguments, see page 8, filed 11/15/24, with respect to the rejection of claims 1-5 under obviousness double patenting over the claims of 853 have been fully considered and are persuasive. Therefore, the rejection over 853 as a single reference has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Le. The 853 claims recite a similar method but do not expressly recite a time interval. However, Le does teach a method of making core/shell quantum dots comprising the addition of fatty amines and carboxylic acids (para [0008]-[0010]) over a time interval of 1 to 5 minutes (para [0014]), which falls within the instantly claimed range of 30 minutes or less.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/L.E./ Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734