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 .
Claims 1 and 3-20 are pending in this application.
Election and Status of Claims
Applicant’s election without traverse of carbon dot doped with plant micronutrient as the single species of carbon dot in the reply filed on 8/6/2025 is acknowledged.
Accordingly, claim 11 is withdrawn from further consideration as being directed to non-elected subject matter. Claims 1, 3-10, and 12-20 will presently be examined to the extent that they read on the elected subject matter.
Claim interpretation
“within”
Claim 1 requires, “wherein the doping material is conjugated within and on the surface of the carbon dot” (emphasis added). Instant specification does not explicitly provide a definition of “within,” but the specification discloses that the doping material can be conjugated to the carbon dot on the inside of the carbon dot (sentence bridging pages 13-14). The Oxford English Reference Dictionary defines “within” as “inside.” Thus, claim 1 will be interpreted to require the doping material to be inside the carbon dot as well as on the surface of the carbon dot.
“conjugated” or “conjugation”
Claim 1 requires, “wherein the doping material is conjugated within and on the surface of the carbon dot” (emphasis added). Instant specification at page 3 defines “conjugated” as “association of groups through bonds such as covalent, hydrophobic, ionic, hydrogen, Van der Waals forces, electrostatic interactions, and the like.” Further, claim 12 is evidence that “conjugated” or “conjugation” in Applicant’s invention includes chelation, complexation, or adsorption. Therefore, claims will be interpreted to encompass such scope of “conjugated” or “conjugation.”
Effective filing date of the claims is 10/21/2021
This application is a 371 of an international application which claims benefit of foreign priority application, Singapore 10202010424X (hereinafter, foreign priority application), filed on 10/21/2020. However, benefit of this earlier date of 10/21/2020 cannot be granted with respect to the current claims for numerous reasons, which include the following:
(1) Independent claim 1 recites “silica, plant macronutrients, plant micronutrients, and drug molecules” as doping materials. There is no disclosure of silica, plant macronutrients, or drug molecules in the foreign priority application. With respect to “plant micronutrients,” there is no disclosure of plant micronutrients. Although section 2 of the foreign priority application discloses “Any nutrient required by plant such as Fe, Zn, Mg, Ca, Cu, Mn, B, etc or any combination of those listed can be used in the doping of CD”, it is not clear whether “micronutrients” as a category is reasonably conveyed; and it is not clear whether micronutrients that are not cationic metal or metalloid such as for example chloride, a negatively charged anion, is reasonably conveyed.
(2) Independent claim 1 recites “wherein the doping material is conjugated within and on the surface of the carbon dot” (emphasis added). The following table
compares the disclosure of the foreign priority application –
Instant application/International application
Foreign priority application
Doping material is conjugated within and on the surface of the carbon dot
Carbon dots doped with iron (III) … which is chelated within or on the surface of the produced carbon dots
Conjugated (instant application) vs. chelated (foreign priority):
As discussed previously in this Office action, the term “conjugated” is broader than “chelated,” because “conjugated’ includes “chelated” and more. See e.g., instant claim 12. The instant application defines “conjugated” as “association of groups through bonds such as covalent, hydrophobic, ionic, hydrogen, Van der Waals forces, electrostatic interactions, and the like” (page 3). In contrast, chelation of the foreign priority application involves a coordinate bond. See the entry for “chelation” in The Encyclopedia of Chemistry at pages 228-229. Additionally, see instant claim 12, which is evidence that “conjugation” is a broader term that includes “chelation,” and more. Therefore, the full scope of instant claims is not supported by the disclosure of the foreign priority application.
(3) Claim 3 recites, “wherein the carbon dot is formed by an in situ process selected from the group consisting of hydrothermal processes, assisted hydrothermal processes, and thermal processes of carbonization of a carbon source in the presence of a doping material, wherein during the process, the carbon source and the doping material form carbon dots that contain doping material conjugated within and one the surface of the carbon dots” (emphases added).
First, assisted hydrothermal processes are not disclosed in the foreign priority application. Second, although “thermal decomposition” process is disclosed in section 2 of the foreign priority application, this is not the same thing as the currently claimed and broader “thermal processes of carbonization of a carbon source.” Therefore, the full scope of instant claims is not supported by the disclosure of the foreign priority application.
(4) Claims 15 and 20 recite a zinc-iron co-doped carbon dot. Although the foreign priority application discloses1 that Fe or any other nutrients such as Zn, Mg, Ca, Cu, Mn, B, etc., or “any combination of those listed” can be used in the doping of CD, specific Zn-Fe co-doped carbon dot was not disclosed or reasonably conveyed. All examples in the foreign priority application are directed to Fe-doped carbon dots, with no additional guidance as to co-doping or combined doping.
Regarding this issue, the court held in Lockwood v. American Airlines, Inc., 41 USPQ2d 1961, 1966 (Fed. Cir. 1997) (emphases added):
Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed. While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.
Therefore, the foreign priority application did not describe Zn-Fe co-doped carbon dots in sufficient detail that one skilled in the art could reasonably conclude that the inventor had possession of this embodiment of the claimed invention.
The above provided examples and reasons, though non-limiting, are sufficient grounds for denying the benefit of the earlier filed foreign priority application. As these reasons definitively establish 10/21/2021 as the effective filing date of all claims, further discussion of additional rationales is unnecessary.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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.
Claim 7 is 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.
Claim 7 recites “duration of at least about 1 hour.” The concomitant recitation of “at least” and “about” renders the duration indefinite under the facts of this application. The term “at least” sets the floor for the minimum duration, but “about” makes that unclear.
35 U.S.C. 102 or 103 (over CN 113213997)
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 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.
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.
Claims 1, 3-10, and 12-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 113213997.
It is noted again that the effective filing date of all claims under examination is 10/21/2021. CN 113213997 was published on 8/6/2021.
Machine translation of CN 113213997 is provided herewith. All paragraph references are to the machine translation unless otherwise noted.
CN 113213997 discloses multi-element doped carbon quantum dots made by:
- dissolving 1:10:2 weight ratio of thiourea, urea, and ferric chloride in ultrapure water,
- adding to a hydrothermal reactor,
- heating at 180 °C for 1.0 hour,
- cooling, centrifuging, dialyzing the supernatant, and freeze drying to provide the doped carbon dots.
See Example 2, paragraph 57; see also claims 1-4 for broader ranges of weight ratio, temperature, and duration of heating. CN 113213997 also discloses multi-element doped carbon quantum dots made by (Example 7, paragraphs 85-90, which refer to Example 3 for several of the steps):
- dissolving 9:2 weight ratio of β-cyclodextrin and ferric chloride in ultrapure water,
- adding to a hydrothermal reactor,
- heating at 168 °C for 1.0 hour,
- cooling, centrifuging, dialyzing the supernatant, and freeze drying to provide the doped carbon dots.
The doped carbon quantum dots are added to pre-wetted raw material (perishable waste) to make composted, decomposed fertilizer (paragraphs 55-66, 85-90; claims 5-10). It is noted that “carbon quantum dot” is a type of carbon dot.
CN 113213997 does not explicitly state that the “multi-element doped carbon quantum dots” are doped with iron, but its carbon quantum dots are formed in an in situ hydrothermal process that uses a carbon source in the presence of ferric chloride; that is to say, the process used in the instant application invention and the process used in CN 113213997 are the same. Thus, iron-doped carbon quantum dots would have been necessarily obtained by CN 113213997.
CN 113213997 does not explicitly state that the doping material is “conjugated within and on the surface of the carbon dot.” However, “multi-element doped carbon quantum dots” of CN 113213997 are formed in an in situ hydrothermal process that uses a carbon source in the presence of ferric chloride; that is to say, the process used in the instant application invention and the process used in CN 113213997 are the same. Thus, the ferric iron dopant of CN 113213997 would necessarily be conjugated within and on the surface of the carbon dot, because the same hydrothermal process is used as in the instant application invention.
Instant claims are directed to a method for promoting plant growth comprising at least one part of a plant to a carbon dot, e.g., iron-doped carbon dot, as discussed above. CN 113213997 teaches the same iron-doped carbon dot added to a fertilizer, which is applied as a base fertilizer or top dressing fertilizer to plants (claim 10). Plant growth promotion from a fertilizer would have been necessarily obtained.
Instant claim 5 recites many different carbon sources of the carbon dot, including sugars. It is noted that β-cyclodextrin of CN 113213997 falls within the ambit of “sugars.”
Instant claim 12 recites “conjugation is via chelation, complexation or adsorption.” It is noted again that the process used in the instant application invention and the process used in CN 113213997 are the same. Thus, the same conjugation via chelation, complexation or adsorption would have been necessarily obtained.
Claim 13 recites about 0.2 mmol/g to about 30 mmol/g of plant micronutrient in the carbon dot. CN 113213997 exemplifies 9:2 weight ratio of β-cyclodextrin and ferric chloride (MW: 162.2) for in situ hydrothermal process formation of doped carbon quantum dots. Thus, for an 11 gram sample of β-cyclodextrin and ferric chloride (FeCl3), this calculates to about 0.0123 mol of ferric ions/11 g, which is equivalent to about 0.0011 mol ferric ions per 1 g, i.e., about 1.1 mmol/g.
Claim 14 recites “average diameter of the carbon dot is about 3 nm to about 200 nm.” CN 113213997 discloses particle size distribution of its carbon quantum dots as being between 1 and 10 nm (paragraph 42; Example 3 in paragraphs 61-66; Figure 2 of the original document at page 14). Thus, the average diameter of the carbon quantum dots of CN 113213997 would necessarily have been between about 3-200 nm.
Claims 16-18 require that the carbon dots are effective at inhibiting the growth of bacteria such as Xanthomonas campestris pv. campestris 8004, Pseudomonas syringae pv. tomato DC3000, or Ralstonia solanacearum GMI1000. Because CN 113213997 discloses iron-doped carbon quantum dots that the instant application claims are readable on, bacterial inhibition property asserted by the instant claims would have been necessarily possessed by the iron-doped carbon quantum dots of CN 113213997. Instant specification discloses that even without the iron dopant, carbon dots have bacterial inhibitory properties (page 48, lines 1-21). Therefore, the fertilizer use of iron-doped carbon quantum dots of CN 113213997 would have necessarily obtained the same bacterial inhibitory effect as claimed herein.
The claims are thereby anticipated. In the alternative, the claimed invention would have been obvious because CN 113213997 teaches the same iron-doped carbon dots, formed by the same in situ hydrothermal process, as a fertilizer component. Plant growth promotion from a fertilizer would have been obvious. Any additional effect would have been necessarily obtained by applying the fertilizer of CN 113213997 to plants. It is well established that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). In Baxter, the court held that even when the prior art did not expressly disclose hemolysis-suppression feature or property of a blood bag plasticizer, such unrecognized feature or property is insufficient for rebutting a prima facie case of obviousness over a prior art blood bag that utilized the same plasticizer. Id. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”).
For these reasons, all claims are rejected. No claim is allowed.
35 U.S.C. 102 or 103 (over CN 113201330)
Claims 1, 3-10, 12-14, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 113201330.2
It is noted again that the effective filing date of all claims under examination is 10/21/2021. CN 113201330 was published on 8/3/2021.
Machine translation of CN 113201330 is provided herewith.3 All paragraph references are to the machine translation unless otherwise noted.
CN 113201330 discloses magnesium and nitrogen doped carbon dots
(Mg,N-CDs) for improvement of photosynthesis of plants (abstract; claim 6). Example 1 of CN 113201330 discloses Mg,N-CDs prepared by a one-step hydrothermal method with citric acid, ethanolamine, and magnesium hydroxide in molar ratio of 1 : 0.2 : 0.35 in ultrapure water (paragraphs 29-30), wherein reaction is carried out at 200 °C for 6 hours, after which the product is cooled, filtered, dialyzed, and free-dried to obtain the Mg,N-CDs (paragraph 30). Average particle size of Mg,N-CDs is disclosed as 2.53 nm (paragraph 36). Content of Mg in the carbon dots is estimated to be 6.39% (paragraph 38) or 5.58% (paragraph 39). Some Mg is “encapsulated within the carbon core” and Mg doping into the carbon dots “exists in a structure similar to magnesium carbonate” (paragraph 38; see also paragraph 40). Rice seedlings treated with Mg,N-CDs by foliar spraying showed significant growth promotion: increased plant height, increased fresh weight, and increased content of chlorophyll (paragraphs 43-44).
CN 113201330 does not explicitly state that the doping material is “conjugated within and on the surface of the carbon dot.” However, given the broad scope of “conjugated” as discussed previously, which includes “association of groups through bonds such as covalent, hydrophobic, ionic, hydrogen, Van der Waals forces, electrostatic interactions, and the like” (page 3), as well as “chelation, complexation, or adsorption” (claim 12), the Mg,N-CDs taught by CN 113201330, formed by same hydrothermal process with same materials, would have necessarily possessed claimed structural features. This is further supported by the disclosure of encapsulation of Mg within the carbon core and structural similarity to magnesium carbonate, as discussed above.
Instant claim 12 recites “conjugation is via chelation, complexation or adsorption.” It is noted that the hydrothermal or assisted hydrothermal process of the instant application invention (e.g., claim 3) is readable on the process of CN 113201330. Thus, the same conjugation via chelation, complexation or adsorption would have been necessarily obtained.
Claim 13 recites about 0.2 mmol/g to about 30 mmol/g of plant micronutrient in the carbon dot. CN 113201330 discloses for example 6.39% magnesium content in Mg,N-CDs (paragraph 38). This calculates to about 2.6 mmol of magnesium per gram of Mg,N-CDs (6.39 ÷ 24.3 ÷ 100 ≈ 0.0026 mol).
Claim 14 recites “average diameter of the carbon dot is about 3 nm to about 200 nm.” Average particle size of Mg,N-CDs taught by CN 113201330 is 2.53 nm (paragraph 36).
Claims 16-18 require that the carbon dots are effective at inhibiting the growth of bacteria such as Xanthomonas campestris pv. campestris 8004, Pseudomonas syringae pv. tomato DC3000, or Ralstonia solanacearum GMI1000. Because CN 113201330 discloses magnesium-doped quantum dots that the instant application claims are readable on, bacterial inhibition property asserted by the instant claims would have been necessarily possessed by the micronutrient (Mg)-doped carbon dots of CN 113201330. Instant specification discloses that carbon dots without a dopant still have bacterial inhibitory properties (page 48, lines 1-21); and instant claim 1 is evidence that doping with various plant macronutrients as well as micronutrients obtains the invention. Therefore, the plant growth improvement application of Mg,N-CDs taught by CN 113201330 would have necessarily obtained the same bacterial inhibitory effect as claimed herein.
In the alternative, the claimed invention would have been obvious because CN 113201330 teaches the same micronutrient-doped carbon dots, formed by the same in situ hydrothermal process, as a plant growth improvement substance. Any additional effect would have been necessarily obtained by applying the Mg,N-CDs of CN 113201330 to plants. It is well established that “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). In Baxter, the court held that even when the prior art did not expressly disclose hemolysis-suppression feature or property of a blood bag plasticizer, such unrecognized feature or property is insufficient for rebutting a prima facie case of obviousness over a prior art blood bag that utilized the same plasticizer. Id. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”).
For these reasons, all claims are rejected. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
US 2023/0339823 was reviewed. US 2023/0339823 is a member of the patent family that includes BR 1020200021724 and EP 40986115. US 2023/0339823, BR 102020002172, and EP 4098611 do not teach a carbon dot that is doped with a doping material that is “conjugated within and on the surface of the carbon dot,” as required by instant claim 1. The instant specification discloses that the doping material is conjugated to the carbon dot on the inside of the carbon dot as well as being adsorbed on the surface of the carbon dot (paragraph bridging pages 13-14), which allows for slower dopant release profile (page 15, lines 7-9). This feature is not disclosed by US 2023/0339823, BR 102020002172, or EP 4098611.
1 See “Statements of the Invention” section and section 2 of the foreign priority application.
2 Cited in the IDS of 5/26/2023.
3 Applicant provided a machine translation by Google in the IDS of 5/26/2023. The Espacenet machine translation provided with this Office action is the translation relied on and discussed in this Office action.
4 Cited by the International Search Authority (Intellectual Property Office of Singapore) for the counterpart International Application, PCT/SG2021/050634.
5 Cited by the EPO, Supplementary Search Report. See the IDS of 3/13/2025.