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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/22/26 and 5/01/26 has been entered.
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 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).
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); 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 and Abstract; emission lifetime of 1.64s, falling within the claimed range).
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 when the method comprises calcination, 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 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 13 above, and further in view of Jochum in US20230409844.
Li teaches the creation of metal free carbon dots according to claim 13, 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 as they are understood (See Discussion of claim 13 above). Li teaches a material that is expected to have the same average lifetime at the cited excitation wavelength (See 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 13 above, and further in view of Yu in CN107129804.
Li teaches the creation of metal free carbon dots according to claim 13, 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 as they are understood (See Discussion of claim 13 above). Li teaches a material that is expected to have the same average lifetime at the cited excitation wavelength (See 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.
Allowable Subject Matter
Claims 26-27 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: The closest prior art is considered to be Li. Li shows the creation of carbon quantum dots entrained within SiO2, wherein the structure of Li meets all of the implied product-by-process limitations instantly set forth (See Discussion of claim 13 above). The product of Li shows a maximum average lifetime of 1.64s (See Abstract), which is less than 3s or 20s claimed. Li also notes that the QY is 7.5-9.8% (See Column 2, pg 9890), which is less than the quantum yield instantly claimed.
Response to Arguments
Applicant's arguments filed 5/01/26 have been fully considered but they are not persuasive. The amendments to Claims 13 and addition of new claims 26-27 are noted and do not appear to contain new matter.
Applicant’s description of an agreement made during a previous interview in terms of the instant claims is noted; however, it appears that this agreement was not clear or there was miscommunication as is evidenced by the difference between the scope of the claims as was discussed in the examiner’s interview summary (See: Proposed Amendment section; discussion in terms of 4/22/26 proposed claim 21, which included a lower bound of 3s in terms of average lifetime) and applicant’s summary/filing.
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 cites MPEP 2112.01. Applicant attempts to extend the interpretation of the product-by-process limitations to include only those properties explicitly shown by applicant. It is noted that materials having the same or similar structures may be made by a plurality of processes. It is noted that applicant shows that the average lifetimes derived from such a process range from 0.55 to 5.72s, which include the average lifetime shown by Li (See Table 1). It is further noted that the results shown by applicant on this basis are not commensurate in scope with the claim and thus do not represent the scope of the claim as set forth.
Applicant goes on to argue that the examiner has not considered the product-by-process limitations of ‘calcining at a temperature of about 300 to about 800’. The examiner has clearly considered and discussed the calcination limitation in the claim (See rejection of claim 13 and 14 above). Li clearly shows products having improved properties commensurate in scope with those of applicants and shows the same improvements. As is discussed above, the composition of Li meets all of the implied limitations on a compositional and structural basis.
Applicant sets forth argument against the rejections of claims 23-25 on the basis that it would not have been obvious to those of ordinary skill in the art to arbitrarily substitute the luminescent compositions of Li for those of Jochum or Yu. The rejection of the claims is not made on this basis. The rejection is not made over ‘Jochum in view of Li’ or ‘Yu in view of Li’ as is discussed by applicant. The rejection of these claims is on the premise that Li teaches a luminescent material having RTP fluorescence. Both Jochum and Yu teach applications that could make use of such a material. It therefore would have been obvious to use the composition of Li in such an application as it has all of the material properties necessary for such a use. Applicant’s various arguments discussing certain features of the secondary reference that are different from the primary reference or the claims are noted; however, the 103 rejection is premised on the use of the material of Li for different purposes and does not require the bodily incorporation of these secondary references.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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