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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Kulkarni et al (Korean Patent Application No. KR 20190137882 A) hereinafter Kulkarni in view of Nick et al (US Patent Application No. 20140027673 A1) hereinafter Nick.
Regarding Claim 1, Kulkarni teaches continuously supplying a suspension of nanoparticles in a solvent to a centrifuge (i.e., a system of purifying nanoparticles, the system comprising; Paragraph 0019, Machine Translation) where the separation is performed in a continuous flow mode (i.e., continuous centrifuge; Paragraph 0020, Machine Translation) where the number of steps of centrifugation can be calculated from the stage efficiency of a batch run (Paragraph 0038, Machine Translation) with two examples of batch separation processes including a colloid of nanoparticles (i.e., a crude solution for nanoparticle synthesis) mixed with solvent (i.e., a first mix solvent) for 10 minutes via sonication (i.e., a first mix tank configured to prepare a first reaction mixture by mixing a crude solution for nanoparticle synthesis and a first mix solvent) prior to centrifugation (i.e., a first centrifuge configured to primarily separate nanoparticles and a first filtrate by centrifuging the first reaction mixture supplied from the first mix tank; Paragraphs 0040, Machine Translation) and including centrifugation followed by supernatant collection, addition of solvent to the supernatant with mixing (i.e., a second mix tank configured to prepare a second reaction mixture by mixing the first filtrate supplied from the first continuous centrifuge and a second mix solvent), and then another centrifugation step (i.e., a second centrifuge configured to secondarily separate the nanoparticles and a second filtrate by centrifuging the second reaction mixture supplied from the second mix tank; Paragraph 0042, Machine Translation) and teaches that recovery rates of the nanoparticles are improved by increasing the number of alternating centrifugation and mixing steps (Paragraph 0042, Machine Translation). Kulkarni further teaches the use of the same centrifuge multiple times in series (i.e., wherein the capacity of the second continuous centrifuge is equal to the capacity of the first continuous centrifuge; Paragraph 0042, Machine Translation) and that it is known to scale up nanomaterial separation with industrial centrifuges (Paragraph 0014, Machine Translation).
Kulkarni does not teach wherein the nanoparticles are quantum dot nanoparticles, wherein each of the first continuous centrifuge and the second continuous centrifuge includes an inert gas supply for supplying an inert gas into the first continuous centrifuge and the second continuous centrifuge, and are configured to centrifuge the respective reaction mixture under an inert gas atmosphere supplied by the inert gas supply.
However, Nick teaches that quantum dots can be grown, isolated from growth solution via centrifugation (i.e., wherein the nanoparticles are quantum dot nanoparticles), and redispersed all under inert gas conditions (i.e., wherein each of the first continuous centrifuge and the second continuous centrifuge includes an inert gas supply for supplying an inert gas into the first continuous centrifuge and the second continuous centrifuge, and are configured to centrifuge the respective reaction mixture under an inert gas atmosphere supplied by the inert gas supply) for the purpose of making quantum dots that are substantially free of oxygen and water (Paragraph 0045).
Nick is analogous to the claimed invention because it pertains to the technical field of quantum dots (Paragraph 0002). According to KSR Rationale A, combining prior art elements according to known methods to yield predictable results, (1) the prior art teaches all of the claim limitations, with the only difference being the combination of elements in a single reference, (2) Kulkarni teaches the centrifugation process and Nick teaches that quantum dots can be centrifuged under inert gas, and (3) the results would predictably result in the separation of quantum dots that are also free of oxygen and water (MPEP 2143(I)(A)).
Furthermore, Kulkarni in view of Nick does not teach an apparatus having the combination of mixing tank followed by a continuous centrifuge followed by mixing tank followed by another continuous centrifuge in a single embodiment. Kulkarni teaches all the limitations of Claim 1, and the only qualification to this statement is that all of the limitations are found in different embodiments and teachings that batch and continuous modes are known to be interchangeable, not in one embodiment. Combining embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness, Boston Scientific Scimed Inc. v. Cordis Corp., 89 USPQ2d 1704, 1712 (Fed. Cir. 2009). One of ordinary skill in the art would have been motivated to use the multiple embodiments in a single invention mix solvent and centrifuge two times in a continuous manner because the recovery rates of the nanoparticles would be improved.
Furthermore, the limitation “wherein the nanoparticles are quantum dot nanoparticles” is directed toward materials or articles worked upon by the claimed invention and is therefore not subject to patentability. The inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus holds no patentable weight. See MPEP §2115.
Furthermore, Kulkarni in view of Nick does not explicitly teach wherein the capacity of the first continuous centrifuge is in a range of 4 to 8 liters, based on the size of the bowl for collecting solids. However, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); See MPEP 2144.04(IV)(A)). Kulkarni does teach that it is known to scale up nanomaterial separation with industrial centrifuges (Paragraph 0014, Machine Translation) and so it would be obvious to one of ordinary skill in the art to scale up the system made obvious by Kulkarni in view of Nick to be industrial scale if a greater volume of nanoparticles is required.
Regarding Claim 2, Kulkarni in view of Nick makes obvious the system of purifying nanoparticles of claim 1. Kulkarni further teaches in an example that a third step is performed in a similar manner with supernatant separation from the second centrifuge followed by addition of solvent and mixing (i.e., further comprising: a third mix tank configured to prepare a third reaction mixture by mixing the second filtrate supplied from the second continuous centrifuge and a third mix solvent) and then finishing with another centrifugation step (Paragraph 0042).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kulkarni in view of Nick as applied to claim 2 above, and further in view of Kurz (US Patent Application No. 20100152326 A1) hereinafter Kurz.
Regarding Claim 3, Kulkarni in view of Nick makes obvious the system of purifying nanoparticles of claim 2. Kulkarni in view of Nick does not teach further comprising: a distillation device configured to separate, in a distillation manner, a mix solvent and the nanoparticles from the third reaction mixture of the third mix tank or from the second filtrate separated by the second continuous centrifuge.
However, Kurz teaches that it is well known to recycle a solvent containing dispersed nanoparticles by performing centrifugation to remove the particles followed by distillation to recover and separate the solvent (i.e., a distillation device configured to separate, in a distillation manner, a mix solvent and the nanoparticles from the third reaction mixture of the third mix tank or from the second filtrate separated by the second continuous centrifuge; Paragraph 0162).
Kurz is analogous to the claimed invention because it pertains to the field of preparing nanocomposite materials (Paragraph 0002). It would have been obvious to one of ordinary skill in the art to modify the continuous centrifugation process made obvious by Kulkarni in view of Nick with the distillation as taught by Kurz because the distillation would allow solvent to be recycled and thus reduce waste of materials.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kulkarni in view of Nick in view of Kurz as applied to claim 3 above, and further in view of Shimizu et al (US Patent Application No. 20190060782 A1) hereinafter Shimizu.
Regarding Claim 4, Kulkarni in view of Nick in view of Kurz makes obvious the system of purifying nanoparticles of claim 3. Kulkarni in view of Nick in view of Kurz does not teach wherein the distillation device comprises: a distillation heat exchanger into which the third reaction mixture or the second filtrate is supplied; and at least one heater disposed in contact with the distillation heat exchanger.
However, Shimizu teaches a purification device (Fig. 1, #100) including a distillation column (i.e., wherein the distillation device comprises; Fig. 1, #101) with both a reboiler (i.e., a distillation heat exchanger into which the third reaction mixture or the second filtrate is supplied; and at least one heater disposed in contact with the distillation heat exchanger Fig. 1, #104) which heats the bottom product and a condenser (i.e., a distillation heat exchanger into which the third reaction mixture or the second filtrate is supplied; Fig. 1, #106) which cools the supplied vapor, and the purpose of the reboiler heat exchanger/heater is to supply the vapor to the distillation column (Paragraph 0071).
Shimizu is analogous to the claimed invention because it pertains to a purification device that obtains a solvent with a reduced impurity content (Abstract), especially of small metal particles (Paragraphs 0128-0131). It would have been obvious to one of ordinary skill in the art to modify the continuous centrifugation process as made obvious by Kulkarni in view of Nick in view of Kurz with the reboiler as taught by Shimizu because the reboiler would provide vapor for the distillation column to function.
Regarding Claim 5, Kulkarni in view of Nick in view of Kurz makes obvious the system of purifying nanoparticles of claim 3. Kulkarni in view of Nick in view of Kurz does not teach further comprising at least one solvent storage tank connected to the distillation device and configured to store a solvent recovered by distillation.
However, Shimizu teaches a filling portion (Fig. 2, #204) that includes a storage tank coated with a corrosion resistant material for the purpose of further reducing the impurities of the purified product (i.e., further comprising at least one solvent storage tank and configured to store a solvent recovered by distillation; Paragraphs 0285-0288) which is downstream of the distillation column (i.e., connected to the distillation device; Fig. 2, #202; Paragraph 0280).
It would have been obvious to one of ordinary skill in the art to modify the continuous centrifugation process made obvious by Kulkarni in view of Nick in view of Kurz with the storage tank as taught by Shimizu because the storage tank would further reduce impurities in the purified solvent.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kulkarni in view of Nick in view of Kurz in view of Shimizu as applied to claim 5 above, and further in view of Spiegel et al (US Patent Application No. 20180021791 A1) hereinafter Spiegel.
Regarding Claim 6, Kulkarni in view of Nick in view of Kurz in view of Shimizu makes obvious the system of purifying nanoparticles of claim 5. Kurz further teaches that solvents can be recycled through centrifugation followed by distillation (i.e., such that the recovered solvent is reused; Paragraph 0162). Kulkarni in view of Nick in view of Kurz in view of Shimizu does not teach further comprising a plurality of solvent supply tanks, wherein the solvent storage tank is connected to at least one of the plurality of solvent supply tanks and the first to third mix tanks.
However, Spiegel teaches a system (Fig. 1, #10) fluidly connected to an ultracentrifuge (Fig. 1, #12) that controls the flow of loading and filling reservoirs, jars, bottles, and other containers for the ultracentrifuge (i.e., a plurality of solvent supply tanks, wherein the solvent storage tank is connected to at least one of the plurality of solvent supply tanks and the first to third mix tanks; Figs. 3, 6; Paragraphs 0047-0052) for the purpose of automating the use of the ultracentrifuge and integrating with a customer’s network (Paragraph 0038).
Spiegel is analogous to the claimed invention because it pertains to a fluid handling system for ultracentrifuges (Paragraph 0002). It would have been obvious to one of ordinary skill in the art to modify the continuous centrifugation process made obvious by Kulkarni in view of Nick in view of Kurz in view of Shimizu with the solvent supply tanks as taught by Spiegel because the solvent supply tanks would automate the loading of the centrifuges.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kulkarni in view of Nick as applied to claim 1 above, and further in view of Burgin (International Patent Application No. WO 03106337 A1) hereinafter Burgin.
Regarding Claim 7, Kulkarni in view of Nick makes obvious the system of purifying nanoparticles of claim 1. Kulkarni in view of Nick does not teach further comprising a monitoring unit installed at a predetermined position in a pipe where the first continuous centrifuge and the second mix tank are connected.
However, Burgin teaches the steps of mixing, centrifugating, and decanting and repeating said steps while monitoring the optical opacity of the supernatant to determine when to end the cycle (i.e., a monitoring unit installed at a predetermined position in a pipe where the first continuous centrifuge and the second mix tank are connected; Claims 1-3) for the purpose of determining when the nanoparticles are more completely removed by the centrifugation (Paragraph 0042).
Burgin is analogous to the claimed invention because it pertains to the separation of nanoparticles (Paragraph 0001). It would have been obvious to one of ordinary skill in the art to modify the continuous centrifugation process made obvious by Kulkarni in view of Nick with the opacity monitor for the supernatant because the opacity monitor would determine if the nanoparticles have been effectively removed from the supernatant after a given number of centrifugation steps.
Response to Amendment
The amendment filed on 29 OCTOBER 2025 has been entered.
In view of the amendment to the claims, the amendment of claims 1 and 6 and the cancellation of claim 8 have been acknowledged.
In view of the amendment to the specification, the objections to the specification have been withdrawn.
In view of the amendment to claims 1 and 6, the objections to the claims have been withdrawn.
In view of the cancellation of claim 8, the rejection under 35 U.S.C. 103 for claim 8 has been withdrawn.
In view of the amendment of claim 1, the rejections under 35 U.S.C. 103 have been modified.
Response to Arguments
Applicant’s arguments filed on 29 OCTOBER 2025 have been fully considered.
Applicant argues, regarding claim 1, that Kulkarni et al (Korean Patent Application No. KR 20190137882 A) hereinafter Kulkarni teaches a centrifugal extractor that is not used in series and the volume of the centrifuge is not large enough to read upon the centrifuges of the instant claim (Arguments filed 29 OCTOBER 2025, Page 9, Paragraph 4 to Page 10, Paragraph 2).
Applicant argues, regarding claim 1, that Kulkarni does not teach that the centrifugation is accomplished under an inert gas blanket and Ghoda et al (US Patent Application No. 20180327269 A1) hereinafter Ghoda is unrelated art because it pertains to nanoparticles that are not quantum dots (Arguments filed 29 OCTOBER 2025, Page 10, Paragraphs 3-6).
Applicant argues that Kulkarni in view of Ghoda would not provide the benefit of the instant application of purifying nanoparticles at a high yield, while preventing oxidation, and precisely controlling the photoluminescence wavelength of the nanoparticles (Arguments filed 29 OCTOBER 2025, Page 10, Paragraph 7 to Page 11, Paragraph 2).
Applicant argues, regarding claims 2-7, that claim 1 is allowable and claims 2-7 depend upon claim 1 and are thus allowable (Arguments filed 29 OCTOBER 2025, Page 11, Paragraph 3).
The Examiner respectfully disagrees.
Regarding applicants arguments for the series centrifuge configuration and the size of the centrifuges, Kulkarni teaches that the series process is developed from batch scale experiments and that industrial size centrifuges are known. Applicant is arguing differences in the centrifuge of the instant claims and the centrifuge taught by Kulkarni, but there are details in claim 1 that separate the centrifuges of Kulkarni from the centrifuges of the instant claim. Furthermore, Kulkarni does not explicitly teach wherein the capacity of the first continuous centrifuge is in a range of 4 to 8 liters, based on the size of the bowl for collecting solids. However, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); See MPEP 2144.04(IV)(A)).
Applicant’s arguments with respect to claim 1 and the inert gas for the atmosphere of the centrifugation steps have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding Applicant’s arguments that Kulkarni in view of Ghoda would not provide the advantages describe in the instant claim, Applicant has not tied said advantages to any features of the instant application that are distinct from Kulkarni in view of Nick et al (US Patent Application No. 20140027673 A1) hereinafter Nick. How does the system create a higher yield and how does the system precisely control the photoluminescence wavelength of the nanoparticles compared to the system taught by Kulkarni in view of Nick? The size of the system appears to be unrelated to these features and the remaining limitations are made obvious by Kulkarni in view of Nick. Applicant needs to link claimed features to unexpected results or needs to add limitations to the system that would produce the advantages described.
Regarding Applicant’s arguments that claims 2-7 are allowable, claim 1 is not allowable and so the dependent claims 2-7 are also not allowable.
Applicant’s arguments have been fully considered but are not persuasive. All other arguments have been indirectly addressed.
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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/A.A.G./Examiner, Art Unit 1777
/Ryan B Huang/Primary Examiner, Art Unit 1777