DETAILED ACTION
Applicant’s reply, filed 19 February 2026 in response to the non-final Office action mailed 5 December 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1-17 are pending, wherein: claims1, 9 and 13 have been amended, and claims 2-8, 10-12 and 14-17 are as originally filed.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the as-amended recitation of “wherein when R1 is a substituted or unsubstituted C1 to C2 alkyl group, it is not substituted with a terminal methyl group” is indefinite and it is not clear what the metes and bounds of this limitation were intended to be. Notably, substituting a C1 alkyl group, i.e. a methyl group, with a terminal methyl group results in an ethyl group (similarly substituting a C2 alkyl group, i.e. an ethyl group, with a terminal methyl group results in a propyl, etc… continuing thru C20 alkyl groups). It is not clear if the limitation is intending to recite that R1 cannot be an ethyl group (and cannot be a propyl group, butyl group, etc…thru C20+1), if the limitation is intending to recite that R1 cannot be a methyl group, i.e. cannot be a C1 alkyl group (an interpretation that would further render the claim indefinite as the range recites C1-C20; noting that by the structure R1 is a terminal group and any selection of C1 would be a terminal methyl) and/or cannot be a terminal methyl group itself (interpretations that would result in dependent claims 4 and 6 rejected under 35 U.S.C. 112(d)), or some other meaning not made either clear or chemically reasonable. This includes claims 2-17 as they depend from claim 1.
Regarding claim 4, the claim is indefinite as the definition of R1 in claim 4 with respect to formula 1-1 and 1-2 is restated by the claim without including the as-amended negative recitation of independent claim 1 thus rendering the meaning of claim 4 unclear. Further the structures of formula 1-1 and 1-2 include R1 as a terminal group which can be selected from a C1 alkyl.
Regarding claim 6, the claim is indefinite as chemical formula 1A contains a terminal methyl group equivalent to R1 of independent claim 1 as a C1 alkyl i.e. methyl group, which by Applicant’s arguments cannot be present thus rendering the compliance of claim 6 within the meaning of claim 1 further unclear.
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.
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.
Claims 1-4, 6 and 8-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kido et al. (WO 2020/241873 A1; using US PGPub 2022/0228053 as English language equivalent for citations) in view of Sasaki (EP 3425021 A1).
Regarding claims 1 and 4, Kido teaches semiconductor nanoparticle complex compositions (abstract; [0026]-[0027]; [0098]-[0099]) comprising a monomer or prepolymer ([0099])(instant polymerizable compound) and a semiconductor nanoparticle ([0031]-[0032]), having a particle size of 10 nm or less ([0040]) (instant quantum dots), which is surface-coordinated with at least one ligand I having one mercapto coordinating group and at least one ligand II having at least two or more mercapto coordinating groups ([0041]-[0044]). Kido teaches ligand I is an alkyl thiol having an alkyl group of 6 to 14 carbon atoms and aids in heat resistance properties ([0047])(instant second surface-modifying material having a different structure from that of the first surface-modifying material) and teaches ligand II is a divalent hydrocarbon group which may be substituted and aids in dispersibility as well as heat resistance ([0048]).
Kido teaches the combination of ligand I, having one mercapto coordinating group, and ligand II, having at least two mercapto coordinating groups. Kim does not specifically teach ligand II having the structure of instant Chemical Formula 1 (instant claim 1) or instant Chemical formula 1-1 (instant claim 4). However, Sasaki teaches semiconductor nanoparticles which have been surface modified with mercapto coordinating ligands containing two or more mercapto groups (abstract) comprising a combination of Formula (Ib) or (Ic) and Formula (IIa)(instant first surface-modifying material):
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, where R is an aliphatic hydrocarbon group having 1-8 carbons and n is an integer of 1-8 (pg3; [0034]-[0040]). Sasaki further teaches the ligands having structures of (IVb) and (IVc)([0047]):
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, which are readable over instant Chemical Formula 1 for R meeting instant L2 = a substituted or unsubstituted C1-C20 alkylene group, the terminal methyl group (right side) of the structure meeting instant R1 = C1-C20 alkyl group, where when C1 is a methyl group it is by necessity a terminal methyl group; the n integer being from 1-8 readable over instant n1; the ethyl EO-group being readable over instant L1; the 1,3-dithiol group meeting instant R-1 where X is H or CR, and L5 and L6 being a single bond or a C1-C20 alkylene group. Sasaki teaches the semiconductor nanoparticles which are surface-coordinated by ligands having two mercapto coordinating groups have, as a result of the mercapto groups, improved nanoparticle durability due to the increased coordination force of the multiple mercapo groups resulting in reduced ligand desorption ([0031]) and where the ligands further prevent aggregation ([0035]) and allow for dispersibility in various solvents ([0036]). Sasaki and Kido are analogous art and are combinable because they are concerned with the same field of endeavor, namely semiconductor nanoparticles having surface-coordinated thereon ligands having two or more mercapto groups. At the time of filing a person having ordinary skill in the art would have found it obvious to select the ligands of Sasaki as the ligand II of Kido and would have been motivated to do so as Kido invites a divalent hydrocarbon having two or more mercapto coordinating groups which improve dispersibility and further as Sasaki teaches the above noted ligands will result in not only dispersibility in a range of solvents but will further advantageously result in increased durability with reduced ligand desorption.
Regarding claims 2-3, Kido in view of Sasaki render obvious the nanoparticle complex composition as set forth above. Kido further teaches the mass ratio of ligand I (= instant second surface-modifying material) to ligand II (=instant first surface-modifying material) of from 0.2 to 1.5 (ligand I/ligand II)(substantially overlaps with and renders taught first =/< second (claim 2); substantially overlaps with and renders taught instant 1:9 to 5:5 first:second).
Regarding claim 6, Kido in view of Sasaki render obvious the nanoparticle complex composition as set forth above. Sasaki teaches the above noted ligand compound being a combination of Formula (Ib) or (Ic) and Formula (IIa)
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which are relevant to instant Chemical Formula 1A for R being 1-9C aliphatic hydrocarbon group meeting instant L2 = a substituted or unsubstituted C1-C20 alkylene group, the terminal methyl group meeting instant -CH3 as noted above; the n integer being from 1-8 readable over instant 3EO groups; and the EO-group being readable over instant EO groups (see above). Sasaki teaches a 1,3-propane dithiol structure and as such does not specifically teach the 1,2-ethane dithiol structure but teaches a base structure which differs by only one -CH2-. However, it is noted that a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities (see In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979); In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963); and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990); MPEP 2144).
Regarding claims 8-9, Kido in view of Sasaki renders obvious the nanoparticle complex composition as set forth above. Kido further teaches that a monomer or prepolymer can be selected as the dispersion medium ([0098]) (instant solvent-free). Kido further teaches the semiconductor nanoparticles are present in the complex liquid from 20 mass% or more, preferably from 30 to 95 mass% ([0097]; [0107]), where the dispersion medium (monomer or prepolymer) is the remainder (see Table 1-1, IBOA dispersion liquid = isobornyl acrylate).
Regarding claims 10-11, Kido in view of Sasaki renders obvious the nanoparticle complex composition as set forth above. Kido further teaches the optional inclusion of initiators, scattering agents, catalysts, binders, surfactants, etc. ([0105]), wherein scattering agents include zinc oxide, titanium oxide, etc. ([0106]).
Regarding claims 12-13, Kido in view of Sasaki renders obvious the nanoparticle complex composition as set forth above. Kido further teaches dispersing the semiconductor nanoparticles in a solvent dispersion medium ([0096]), and teaches organic solvent diluted compositions ([0109]-[0110]). Kido teaches the semiconductor nanoparticles are present in the complex liquid from 20 mass% or more, preferably from 30 to 95 mass% ([0097]; [0107]), where the dispersion medium (monomer or prepolymer) is the remainder and which may be diluted with organic solvents to obtain a suitable dispersion liquid to produce membrane uniformity at the time of coating ([0104]; [0110]-[0111]).
Kido does not specifically teach the claimed 40-80 wt% solvent. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of organic solvent and would have been motivated to do so in order to obtain a suitable dispersion liquid and to obtain membrane uniformity at the time of coating. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding claim 14, Kido in view of Sasaki renders obvious the nanoparticle complex composition as set forth above. Kido further teaches the optional inclusion of crosslinking agents including polyfunctional silanes ([0103]).
Regarding claims 15-17, Kido in view of Sasaki renders obvious the nanoparticle complex composition as set forth above. Kido further teaches forming a cured membrane (instant cured layer)([0112]-[0113]) and a patterning membrane comprising the cured membrane (instant color filter), and a display element comprising the patterning membrane ([0121]-[0123]).
Response to Arguments/Amendments
The objections to claims 1, 9 and 13 are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 103 rejection of claims 1-5 and 7-17 as unpatentable over Kim (US PGPub 2020/0231871) is withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 103 rejection of claims 1-4, 6 and 8-17 as unpatentable over Kido (WO 2020/241873 A1) in view of Sasaki (EP 3425021 A1) is maintained. Applicant’s arguments (Remarks, pages 10-12) have been fully considered and were not found persuasive.
The Examiner notes the above set-forth 35 U.S.C. 112(b) rejection to the as-amended claim recitation of “wherein when R1 is a substituted or unsubstituted C1 to C20 alkyl group, then R1 is not substituted with a terminal methyl group” as a means of overcoming the structures of Sasaki. The Examiner notes that the terminal methyl group (right side of structure, ‘terminating’ the EO groups) of Sasaki readable on the instant R1 still meets the recitation of R1 being an unsubstituted C1 alkyl group, i.e. a methyl. Further, that terminal methyl group of Sasaki and the terminal R1 of instant claims 1 formula 1, instant claim 4 formulas 1-1 and 1-2 and the terminal methyl group of claim 6 formula 1A are structurally the same, i.e. the oxygen of an EO group terminated by a methyl: –(CH2-CH2-O)-CH3. Applicant’s assertion of a ‘significant structural distinction’ with respect to the instant R1 and the methyl group of Saskai is neither accurate nor persuasive. It is noted that where Applicant points out that the (IVb) and (IVc) structures of Sasaki ‘necessarily need a terminal methyl group as R1’ that Applicant’s own structures not only allow for the very same structure, but in some claims also require that structure. Furthermore, given that an unsubstituted C1 alkyl group is a methyl, the terminal unsubstituted methyl group of Saskai also still applies.
Applicant argues the ratios of dependent claims 2-3 were met by the Examiner via invoking In re Bozek. The Examiner notes that this is not an accurate assessment of the rejection of claims 2-3 as rejected by Kido in view of Sasaki (see above maintained rejection) where In re Bozek was not relied upon.
Regarding Applicant’s concluding remarks that Sasaki cannot “satisfy the no terminal methyl at R1” statement. The Examiner notes this is not what the as-amended claim limitations states, this renders the claims indefinite, and this is in direct contradiction to Applicant’s own dependent claim structures.
The nonstatutory double patenting rejections of the instant claims over the cited claims of A) granted U.S. Patent No. 12,331,234, B) copending Application No. 19/026130, C) copending Application No. 19/469264, D) copending Application No. 18/605678, and E) copending Application No. 18/516818, are withdrawn as a result of Applicant’s filed claim amendments.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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