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 1-3, 5, and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0153171 A1 to LeQueux et al. (hereinafter LeQueux ).
Regarding claim 1, LeQueux discloses a quantum dot (para [0002]) comprising:
a nanoparticle; and
at least one ligand on a surface of the nanoparticle (para [0029]), wherein:
the nanoparticle is selected from III-V, II-VI, III-VI, IV, and I-III-VI group semiconductors (para [0305]) which do not require Cd or Hg (para 0306]-[0311]);
wherein the at least one ligand (para [0046]) comprises a moiety (MA, para [0066]-[0067], dithiol group, para [0103]) and at least one hydrophilic group (MB, para [0066] and [0068]); and
the moiety is represented by Formula A-1 (para [0137]).
The reference is silent regarding the limitation “* indicates a binding site to a neighboring atom”. However, one of ordinary skill in the art would recognize that the dithiol is bound to the rest of the structure, conventionally through a binding site, absent evidence to the contrary.
Regarding claims 2 and 7, LeQueux discloses the quantum dot of claim 1, wherein the at least one ligand is represented by the formula -LA-MA (para [0127] and [0137]),
which overlaps and encompasses instantly claimed Formula 1: A1---(L1)n1---T1, written in the order T1---(L1)n1---A1,
wherein
T1 is a hydrophilic group,
L1 is a single bond ,
n1 is 4, which falls within the instantly claimed range of 1 to 10, and
A1 is the dithiol moiety.
Regarding claim 3, LeQueux discloses the quantum dot of claim 1, wherein the at least one hydrophilic group is selected from a group that includes hydroxyl (para [0077]), carboxyl (CO), and amine (NH, NR) groups (para [0127] and [0137]).
Regarding claim 5, LeQueux discloses the quantum dot of claim 2, wherein A1 is an anchoring group bonded to the surface of the nanoparticle (para [0127]).
Regarding claim 8, LeQueux discloses the quantum dot of claim 1, wherein the nanoparticle has a core-shell structure in which a core comprises a first semiconductor material and a shell comprises a second semiconductor material (para [0314]-[0319]). Neither the first semiconductor material nor the second semiconductor material are required to contain mercury (Hg) or cadmium (Cd), as discussed above.
Regarding claim 9, LeQueux discloses the quantum dot of claim 8, wherein the first semiconductor material and the second semiconductor material each independently comprise III-V, II-VI, III-VI, IV, and I-III-VI group semiconductors and combinations thereof (para [0320] such as II-VI semiconductors which includes but is not limited to ZnS, ZnSe, ZnTe and combinations thereof; III-V semiconductors which includes but is not limited to GaN, GaP, GaAs, GaSb, AIN, AIP, AlAs, AlSb, InP, InAs, InSb, GaNP, and combinations thereof ; PbS, PbSe; group IV materials including but not limited to Si, Ge; or any combination thereof (para [0325]-[0326]).
Regarding claim 10, LeQueux discloses the quantum dot of claim 8, wherein the first semiconductor (core) is selected from III-V, II-VI, III-VI, IV, and I-III-VI group semiconductors and combinations thereof (para [0320]) which includes but is not limited to ZnS, ZnSe, ZnTe, PbSe, PbS, GaN, GaP, GaAs, InP, InAs, or any combination thereof (para [0325]-[0326]), and the second semiconductor material (shell) is selected from III-V, II-VI, III-VI, IV, and I-III-VI group semiconductors and combinations thereof (para [0320]) which includes but is not limited to ZnS, ZnSe, ZnTe, InP, InS, GaP, GaN, PbS, or any combination thereof (para [0325]-[0326]).
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5, and 7-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 8-11 of U.S. Patent No. 12,448,566 B2 (hereinafter 566). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping quantum dots comprising overlapping ligands represented by overlapping formulas, comprising moieties represented by A-2 and comprising similar hydrophilic groups (instant claims 1-3, 5, 7 and 566 claims 1, 2, and 8). Both teach core/shell quantum dots wherein the cores and shells are selected from overlapping semiconductors that do not require either Cd or Hg (instant claims 8-10 and 566 claims 9-11).
Response to Arguments
It is noted that the amendment to claim 1, filed 1/6/26, clarifies the claim interpretation. The current Office Action is based on this interpretation as set forth by Applicant.
Applicant’s arguments, see pages 8-10, filed 1/6/26, with respect to Bawendi have been fully considered and are persuasive. The reference does not teach or suggest the particular moieties required by the newly amended claims.
Therefore, the 103 rejection of claims 1-3, 5, and 7-11 as obvious over Bawendi has been withdrawn.
The 103 rejection of claims 4 and 6 as obvious over Bawendi is moot because the claims have been canceled.
Applicant’s arguments, see pages 7-8, filed 1/6/26, with respect to the double patenting rejections have been fully considered and are persuasive. The conflicting claims do not teach or suggest the particular moieties required by the newly amended claims.
Therefore, the obviousness double patenting rejection of claims 1, 3, and 8-10 as unpatentable over the claims of 703 has been withdrawn.
The provisional obviousness double patenting rejection of claims 1-3, 5, and 7-10 as unpatentable over the copending claims of 417 has been withdrawn.
The provisional obviousness double patenting rejection of claims 4 and 6 as unpatentable over the copending claims of 417 is moot because the claims have been canceled.
The provisional obviousness double patenting rejection of claims 1-3, 5, and 7-10 as unpatentable over the copending claims of 665 has been withdrawn.
The provisional obviousness double patenting rejection of claims 4 and 6 as unpatentable over the copending claims of 665 is moot because the claims have been canceled.
Allowable Subject Matter
Claim 11 is 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, LeQueux, teaches a similar quantum dot comprising a similar ligand but does not teach or suggest any of the particular ligand formulas as set forth in the instant claim.
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
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