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 Objections
Claim 21 is objected to because of the following informalities: In line 6, there appears to be a typographical error where the word ‘phosphorous’ is used. The examiner believes the intended term should have been ‘phosphorescent’ or ‘phosphorescence’. Appropriate correction is required.
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.
Claim(s) 13-16 and 21-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li in their publication “Carbon Dot-Silica Nanoparticle Composites for Ultralong Lifetime Phosphorescence Imaging in Tissue and Cells at Room Temperature” (IDS).
Regarding Claim 13: Li teaches the creation of carbon dot (CD)– silica nanoparticle composites. The carbon dots are synthesized according to the method in section 2.1, which does not teach the addition of any metal or precursor that would entrain any metal in the carbon dot. FTIR data also gives no indication of metal being within the carbon dots (See Page 9890). Li teaches that the carbon dots are capable of room temperature phosphorescence (See 9891, Column 1). Based upon the data provided by Li, their carbon dots are considered to be room temperature phosphorescent metal free carbon dots, as claimed. Li teaches that the carbon dots are embedded within continuous SiO2 networks by the methods set forth in sections 2-4. The embedded carbon dots are shown in Figure 2b and their presence within a continuous SiO2 network is confirmed by the presence of Si-O-C bonds in FTIR (See Page 9890).
Product-by-process limitations are noted in the claims. Product-by-process limitations are examined on the basis of the implications of the process rather than the actual manipulations as set forth. The process as set forth implies the creation of the product as is instantly claimed, being a metal-free carbon dot embedded within a SiO2 material. The SiO2 material created by the process may be in the form of a powder or may be provided as a bulk. Li teaches compositions that appear to be of the same composition and structure as that which is implied by these product-by-process limitations as it is a metal free carbon dot embedded within SiO2.
It was previously set forth that the implications of the claimed calcination step were unclear in terms of the structure and/or composition of the as-created material. Applicant points to paragraph 31 and Figure 4a in the originally filed disclosure, which teaches the structure implied by this product-by-process limitation. Paragraph 31 teaches that where the method comprises calcination of the CDs- are confined by a continuous SiO2 network composed of Si-O tetrahedra. The confinement of the CD’s within such a network is said to isolate the CD from quenching factors, such as oxygen and water vapor. Paragraph 31 sets forth that stable covalent bonds are formed between the carbon dot and the network. Thus the product-by-process limitation of calcination further sets forth that the implied structure includes the confinement of the CD’s in the SiO2 network such that they are isolated from quenching factors such as oxygen and water vapor and the creation of covalent bonds between the carbon dot and the SiO2 network.
The product of Li has all of these implied features as is discussed at the paragraph spanning the two columns of page 9888. Li sets forth that the carbon dots are confined within the SiO2 matrix and protected from environmental quenchers such as water and oxygen. Li teaches that during hydrolysis covalent bonds are formed linking the carbon dots to the silica network (Si-O-C covalent bonds are positively identified in FTIR page 9890). Li teaches that the Si-O is present as SiO2, which is inherently disposed in terms of tetrahedrons as each Si atom has 4 Si-O bonds. The carbon-dots as described by Li would thus be ‘multi-confined’ by a plurality of Si-O tetrahedrons within the continuous SiO2 network as described. The product of Li thus meets all of the implied features of the claimed process.
Regarding Claim 14: Li teaches that the carbon dots are embedded within continuous SiO2 networks by the methods set forth in sections 2-4. The embedded carbon dots are shown in Figure 2b and their presence within a continuous SiO2 network is confirmed by the presence of Si-O-C bonds in FTIR (See Page 9890). Li teaches that the silica is in the form of SiO2, which has Si-O bonds (See Page 9890). The Si-O bonds of silica are inherently disposed in terms of tetrahedrons as each Si atom has 4 Si-O bonds. The carbon-dots as described by Li would be ‘multi-confined’ by a plurality of Si-O tetrahedrons within the continuous SiO2 network as described. Li teaches the that the confinement of the CD within the silica protects the CD from environmental quenchers such as water and oxygen (See Page 9888). Thus the product of Li, having the implied features of a calcined sample (confined CD with covalent bonds) would inherently have a greater emission intensity and/or a longer average lifetime of phosphorescent emission when compared to a composite structure of CD and SiO2 that does not undergo the claimed calcination (e.g. wherein the product being compared does NOT have the implied structure of calcination being confined CD’s within SiO2 wherein the CD and SiO2 -are joined through covalent bonds).
Regarding Claim 15: The claim is set forth in terms of product-by-process limitations, which are examined on the basis of the implications of the process rather than the manipulations as set forth. In terms of the instant claim, applicant describes the implication of the process as doping of nitrogen atoms within the carbon dot. Li teaches that Nitrogen may be doped within the dot. Li teaches the doping of N heteroatoms in the CD by the use of ethylenediamine as a precursor (See Section 2.1 and First paragraph of Section 3). The presence of Nitrogen in the carbon dot is verified by FTIR (See Page 9890).
Regarding Claim 16: Li shows that the metal free CDs exhibit an average lifetime of 1.64s. Li calculates this average lifetime based on excitation at 356 nm (See Figure 3). Those of ordinary skill in the art would expect the same or similar decay curves if the excitation wavelength were 365 nm as claimed. The excitation would have the same effect as is shown in Figure 3b and would decay in the same manner. Materials of the same composition and structure must inherently have the same properties.
Regarding Claim 21: Li is silent in terms of the average lifetime of fluorescence when the composition is tested at different wavelengths, such as at 260 nm (and emission at 464 nm) or 254 nm by visual inspection; however, materials of the same composition and structure are expected to have the same properties. Those of ordinary skill in the art would expect the material of Li to inherently have an average lifetime in the range of about 1 to 50s measured at an excitation wavelength of 260 nm and an emission wavelength of 464. Those of ordinary skill would expect this based on the similarity in composition and the fact that Li demonstrates average lifetimes within this range for longer wavelengths of excitation light (See Figure 3).
Regarding Claim 22: Li is silent in terms of the effects of strong oxidants, acids and organic solvents, or subjecting the composition to pH’s of from 1 to 14; however, Li teaches composition of the same composition and structure as those that are instantly claimed and disclosed. Those of ordinary skill in the art would expect the SiO2 of Li to protect the carbon dots of Li to the same degree as that which is claimed and thus would expect that at least 85% of the average lifetime is maintained after said treatments. Materials of the same composition and structure must necessarily have the same properties. Additionally Li is noted as showing the treatment of the composition in solutions having a pH from 2-11 and showing that fluorescence is maintained above about 85% (See Figure 3e). Those of ordinary skill would expect other properties of the fluorescence to be maintained to a similar degree.
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.
Claim(s) 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claim 14 above, and further in view of Jochum in US20230409844.
Li teaches the creation of metal free carbon dots according to claim 14, being metal free CDs that are multi-confined by a continuous SiO2 network composed of Si-O tetrahedrons, wherein the carbon-dot/SiO2 meets the implications of the product by process limitations of claims 1 and 6 as they are understood (See Discussion of claim 14 above).
Li teaches the use of the quantum dots in the cell imaging field and is silent in terms of the use of the quantum dots for time-resolved anti-counterfeiting encryption systems including QR codes.
However, the use of luminescent materials in the creation of anti-counterfeiting encryption systems, including systems having QR codes is taught by Jochum. Jochum teaches the creation of inks comprising luminescent materials (See Paragraph 44). Jochum teaches the selection of luminescent materials that have particular luminescent lifetimes to add a time component to the authentication system (time-resolved anti-counterfeiting), although the use of a persistent phosphor in such a system is necessarily time-resolved regardless of whether the phosphor’s persistence is used in authentication or not. Jochum teaches that the ink may be printed in terms of a QR code and the codes may be unique and may involve encryption based on a key(See Paragraph 105 and 111). Jochum notes that suitable inorganic nanocrystals for use as luminescent materials in such an ink include carbon dots (See Paragraph 75). Those of ordinary skill in the art would have found it obvious to use the carbon dots of Li in any known applications that makes use of carbon dots. Those of ordinary skill in the art would have would have been particularly motivated to apply the carbon dots of Li to the application of Jochum based on Li’s teachings that their quantum dots maintain their luminescence and are stable in aqueous, acidic and basic solutions. Generally those of ordinary skill would be motivated to apply the carbon dots of Li to known commercial applications such as that of Jochum.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claim 14 above, and further in view of Yu in CN107129804.
Li teaches the creation of metal free carbon dots according to claim 14, being metal free CDs that are multi-confined by a continuous SiO2 network composed of Si-O tetrahedrons, wherein the carbon-dot/SiO2 meets the implications of the product by process limitations of claims 1 and 6 as they are understood (See Discussion of claim 14 above).
Li teaches the use of the carbon quantum dots in the cell imaging field and is silent in terms of the use of the quantum dots for time-resolved fingerprint detection system.
However, the use of carbon dots in fingerprint detection systems is known and taught by Yu. Yu teaches that carbon dots may be mixed with montmorillonite and used for latent finger print visualization (See Abstract). Those of ordinary skill in the art would have found it obvious to incorporate the SiO2 coated carbon quantum dots in such an application as Yu specifically teaches the use of carbon quantum dots for such. The use of Li’s carbon dots would necessarily create a ‘time-resolved’ fingerprint detection system based on the average luminescent lifetime of Li’s quantum dots. Those of ordinary skill in the art would have would have been particularly motivated to apply the carbon dots of Li to the application of Yu based on Li’s teachings that their quantum dots maintain their luminescence and are stable under a variety of conditions. Generally those of ordinary skill would be motivated to apply the carbon dots of Li to known commercial applications such as that of Yu.
Response to Arguments
Applicant's arguments filed 1/14/26 have been fully considered but they are not persuasive. The amendments to Claims 13-15 and 21 are noted and do not appear to contain new matter. The previous objections and rejections under USC 112 appear to be resolved by the amendments to the claims and are withdrawn with this communication. While the previous objection is withdrawn, the examiner makes a new objection to instant claim 21 as it appears to include a typographical error.
Applicant goes on to address the rejection of the claims under USC 102. Applicant argues that as Li does not teach the calcination of the CDs at a temperature of about 300 to 800C, Li is incapable of meeting the claim limitations. As is set forth above, the claims are set forth in terms of product-by-process limitations. Product-by-process limitations are examined on the basis of the implications of the process and not whether the actual manipulations of the process take place. Applicant sets forth that the implications of calcination are described at paragraph 31 of the originally filed disclosure. The material of Li contains all of the implied structure and properties as described in this section, wherein Li explicitly sets forth that the Si encapsulating the CD’s protect them from environmental quenchers such as water and oxygen and form covalent bonds are formed between the carbon and SiO2 (See above). As Li’s material meets all of the implied compositional and structural implications of the claimed process, it meets the limitations of the product-by-process claim.
Applicant goes on to individually address each claim on the basis of the product-by-process limitations and not on any actual structural/compositional difference between the material of Li and that which is claimed. As is set forth above, Li teaches all of the implied structural limitations of such a process as is described by applicant. As the material of Li contains the implied structural limitations it would necessarily have the same implied benefit when compared to materials not having such structural implications.
Applicant traverses the rejections of claims 23-25 on the basis that the rejection is premised upon Li and these claims ultimately depend from claim 13. As is discussed above, Li teaches a material meeting all of the implications of the product-by-process claims as set forth.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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