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… ("comprising" leaves "the claim open for the inclusion of unspecified ingredients even in major amounts")'. This open-ended definition has been taken into consideration in the following rejections.
Claims 9-11, 14, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over KR20110078007A to Yang et al. (hereinafter Yang) using a machine translation.
Regarding claims 9 and 21, Yang discloses an ink composition (page 1) for use in the deposition of a photoactive layer of an optoelectronic device, the ink composition comprising:
- a colloidal suspension (dispersion) of nanoparticles in a printable liquid medium (page 2, para 3) comprising a polar solvent (pages 3 and 9), wherein the nanoparticles are capped with a shell of ligands (capping molecules), wherein the ligands have a molecular architecture including:
a thiol head (tail) group bound to a surface site of said nanoparticle;
an ionically charged tail (head) group having a counter ion associated therewith; and
an alkyl spacer separating the head group and the tail group having a total number of carbon atoms n in a range of 2 to 20, which overlaps the instantly claimed range of from 1 to 3 (page 2, para 3).
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’.
Yang further discloses wherein the polar solvent comprises a mixture of water and ethylene glycol (mixture of solvents including aqueous solvents and ethylene glycols, page 2, para 3). The reference is silent regarding the limitation “wherein the volume fraction of ethylene glycol in the mixture is in a range between five and fifty percent”. 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’. One of ordinary skill in the art is expected to arrive at the optimal volume ratios of water and ethylene glycol to facilitate efficient inkjet printing, via routine experimentation.
The preamble of the claims recites, “for use in the deposition of a photoactive layer of an optoelectronic device”, which is an intended use limitation. See MPEP 2111.02(II), which states that “to satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim’. In the instant case, Yang teaches that the ink can be used to make printed electronics (page 2, para 2). Therefore the Yang ink is deemed capable of performing the intended use.
As discussed above, Yang discloses an overlapping ink. Yang does not expressly recite the product by process limitation “wherein the nanoparticles are capped with a shell of second ligands replacing an initial shell of different first ligands”. However, MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
MPEP 2113 also states “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)”. In the instant case, it is found that the instantly claimed process of ligand exchange does not impart structural or functional characteristics to the claimed product. The “first” ligand that is replaced is not expected to significantly alter the final ink absent evidence to the contrary. The “second” ligands are the only ligands present in the final ink.
Regarding claim 10, Yang discloses the ink composition according to claim 9, wherein the composition is essentially without first (exchanged) ligands or free unbound second ligands as there is no disclosure of additional, free, or unbound ligands. Also see page 10, para 1 of Yang, which discloses the importance of adsorbing ligands/capping molecules to the nanoparticles to maintain high ink stability.
Regarding claims 11 and 20, Yang discloses the ink composition according to claim 9, wherein the (second) ligands/capping molecules are N,N,N-trimethyl(mercaptoalkyl)ammonium chloride (page 7, para 1) which has the formula:
PNG
media_image1.png
80
188
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wherein
"n" is between 1 and 3;
"R1" and "R2" are each independently selected from H and methyl; and
"X" is a halide, Cl.
Regarding claim 14, Yang discloses the ink composition according to claim 9,
comprising a p-type dopant (metals or metal oxides, page 2, para 3).
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Yang in view of US 2009/0246674 A1 to Carlini et al. (hereinafter Carlini).
Regarding claims 12 and 13, Yang discloses the ink composition according to claim 9, but fails to expressly disclose the ink comprising a pyrrolidone additive or one or more polymeric additives.
However, Carlini does teach an inkjet ink (para [0012]) comprising nanoparticles with surface functionality (para [0044]) in a polar solvent (para [0087]) further comprising pyrrolidones and one or more polymeric additives as surface active stabilizers (para [0080]).
It would be obvious to one of ordinary skill in the art to employ the pyrrolidone and polymeric additives of Carlini to the Yang ink to prevent or limit the degree of particle aggregation (Carlini, para [0080]), maximizing dispersibility and stability of the ink suspension (Yang, page 2) to thereby facilitate smooth, continuous inkjet printing of the ink without clogs or blocks (Carlini, para [0012]).
Response to Arguments
Applicant's arguments filed 6/4/26, regarding Yang, have been fully considered but they are not persuasive. Applicant argues that Yang fails to teach an ink composition, in which "the nanoparticles are capped with a shell of second ligands replacing an initial shell of different first ligands," as claimed. However, the instant claims are drawn to a product. The claimed step of replacing an initial shell of different first ligands with a shell of second ligands is a product by process limitation. See MPEP 2113 cited above.
Applicant argues that the rejection states that the process steps are not expected to impart distinctive functional characteristics to the product and points to MPEP 2113 to support this position. However, applicant argues that this is not true because the claimed ink is both structurally and functionally distinguishable from the composition described in Yang. Although applicant argues that the claimed ink is both structurally and functionally distinguishable from the composition described in Yang, applicant does not provide evidence to support this argument. Applicant also argues that the method of manufacturing the ink is essential for obtaining an ink composition with good properties, but applicant does not provided evidence to support this allegation. Neither does applicant provide evidence that ligand replacement is required to arrive at the instantly claimed ink or to provide an ink with particular properties. On page 8 of the remarks, applicant argues that the instant ink composition is monodisperse yet the Yang composition is not monodisperse. However, the instant disclosure does not recite monodisperse nanoparticles or a monodisperse ink. Page 9, ln 11-21 of the instant disclosure recites colloidal quantum dots synthesized from solution. The instant disclosure does teach homogeneous growth of the nanoparticles which provides colloidal stability to the growth solution. However, the growth solution is not the ink. This section does not teach or suggest ligand replacement, monodisperse nanoparticles or monodisperse ink. Page 12, ln 27-29 broadly states that the type of nanoparticles is not limited to quantum dots. This section does not teach monodisperse nanoparticles or ink and does not teach a requirement for ligand replacement. The disclosure does not teach monodisperse nanoparticles or monodisperse ink and does not provide evidence that monodispersity is related to or dependent upon ligand replacement in the instant case. Neither do these sections of the specification provide evidence that ligand replacement is required to obtain the instantly claimed ink.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., monodisperse nanoparticles or monodisperse ink) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant also argues that the present specification shows that the instantly claimed ink composition has excellent optical properties and points to Fig. 8A. Applicant states that this indicates that the nanocrystals are well passivated. While this may be true, Fig. 8A does not provide evidence that ligand replacement is required. As discussed above in the rejection, Yang teaches an ink comprising a nanoparticle passivated with a similar ligand. The ligand has not been replaced/exchanged in Yang. Applicant has not provided evidence that a similar ligand, present without replacement does not adequately passivate the nanocrystal and/or adequately prevent nanocrystal surfaces from interacting with the environment. Note that Yang (page 5) teaches that the nanocrystal surface enhances dispersibility and stability of the ink and prevents aggregation of the nanoparticles, which suggests successful passivation of the nanoparticles.
Applicant further argues that Yang discloses multiple ligands, including first ligands and unbound (first and second) ligands. Applicant argues that the presence of first and second ligands including unbound ligands without ligand replacement provides a basis for distinction over Yang. It is not clear where free/unbound ligands appear in Yang. However, if such free/unbound ligands are present, note that the instant claims contain the transitional phrase “comprising” which allows for the presence of additional components. See MPEP 2111.03, cited above. Also note that the Office Action does teach ligands comprising a thiol head group, an ionically charged tail group having a counter ion, and alkyl spacer group (Yang, page 2, para 3) as set forth in the instant claims. The Office Action specifically states the importance of these ligands capping the nanoparticles to maintain ink stability (Yang, page 10, para 1). This stability is maintained without ligand replacement.
On pages 9-10, applicant again argues that Yang does not teach ligand exchange. The examiner agrees. Yang teaches ligands that closely overlap the instantly claimed ligands that cap nanoparticles. There is no ligand exchange/replacement, yet the ink compositions overlap as discussed above. The product by process limitation of replacing an initial shell of different ligands is not taught in Yang. This is not a modification of composition but rather a modification of process. See MPEP 2111.03, cited above. Applicant has not provided evidence that the instantly recited ligand replacement product by process limitation is required and/or provides a substantially different product than the Yang product.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., purified ink or ink substantially free of first and/or free/unbound ligands) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Yang discloses an overlapping ink composition comprising overlapping nanoparticles containing overlapping ligands in an overlapping solvent. Yang does not teach the product by process limitations related to ligand replacement set forth in the instant product claims. However, see MPEP 2113, cited above. Applicant has not provided evidence that the instantly recited ligand exchange process is required to arrive at the instantly claimed ink.
Therefore, the 103 rejection of claims 9-11, 14, and 20 as obvious over Yang stands.
The 103 rejection of claims 12 and 13 as obvious over Yang in view of Carlini also stands.
New claim 21 further limits the first ligand of the product by process limitation. Therefore, Yang also reads on new claim 21.
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 LYNNE EDMONDSON whose telephone number is (571)272-2678. The examiner can normally be reached M-F 10-6:30.
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/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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