DETAILED ACTION
A 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 § 112
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 1-5 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.
The claim’s scope is currently indefinite as the necessary steps as described are internally inconsistent, which leads to a lack of clarity in terms of the scope of the invention as claimed. Instant claims 1 sets forth a preparing step of mixing a solution and a shell precursor together, in order to prepare a reaction solution. The solution contains a solvent and a core. The claim sets forth a heating step, wherein the heating step is a process of exposing the core particles to light in the solution or the reaction solution. This step thus makes clear that heating may occur before or after the creation of the reaction solution. The amended features set forth that the core particles are heated and subsequently, the shell precursor is mixed with the solution.
Thus the original limitation allows for heating before or after the addition of the shell precursors, while the added feature requires heating before the addition of said shell precursors. As this is the case, the claim is internally inconsistent. The claims are examined on the basis of the added limitations requiring that the heating occur prior to the addition of shell precursors.
Claims 2-5 are dependent upon claim 1 and are rejected on the same basis.
Claim Rejections - 35 USC § 102
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.
Claim(s) 11-12 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura in US20070128350, as evidenced by Millipore Sigma’s article “Quantum Dots”.
The instant claims are set forth purely in terms of product-by-process limitations. Product-by-process limitations are examined on the basis of the implications of the claimed process and not on the actual manipulations as set forth. The processes of claim 1, 6, and 13 are cited. Each of these processes creates a quantum dot material having a core and a shell. The processes as set forth do not clearly imply any feature other than the quantum dot having a core and at least one shell.
Nakamura teaches the creation of quantum dots having a core and a shell (coating). Nakamura shows the creation of nanoparticles having a CdSe core and a ZnS shell (See Example 1). The nanoparticles of Nakamura have a diameter of 3 nm and are semiconductor nanocrystals that exhibit a quantum confinement effect (See paragraph 56 and 69). The product of Nakamura would be considered to be quantum dots according to Millipore Sigma’s article, which sets forth that quantum dots are semiconductor nanocrystals having a size from 2-10 nm. The quantum dot materials of Nakamura meet all of the product-by-process implications claimed.
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 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.
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.
Claim(s) 1, 3-10, and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in US20070128350, as evidenced by Millipore Sigma’s article “Quantum Dots”.
Regarding Claim 1: Nakamura teaches a quantum dot production method for producing quantum dots made of core particles and shells formed on outer surfaces of the core particles. Nakamura teaches that the nanoparticles created have a semiconductor nanocrystal as a core and a coating (shell) disposed upon said core (See Paragraph 31). Nakamura teaches that the semiconductor nanocrystals may have a size of 1000 nm or less, particularly 10 nm or less (See Paragraph 30). Nakamura teaches that the core is at least partially crystalline and its properties are subject to quantum confinement effects (See Paragraph 56 and 69). The core shell nanoparticles of Nakamura would be considered to be quantum dots by those of ordinary skill in the art, as is evidenced by Millipore Sigma’s article, which sets forth that quantum dots are semiconductor nanocrystals having a size from 2-10 nm. Thus the particles of Nakamura have a particle size that overlaps the particle sizes instantly claimed.
Nakamura teaches that their quantum dots are created by a method comprising:
A first preparing step of mixing a solution and a shell precursor together in order to prepare a reaction solution (See Paragraph 81). The solution of Nakamura may comprise a core particle in a solvent (See Paragraph 80).
A heating step wherein, the core particles in the solution or a reaction solution is heated by specific means to achieve a temperature at which the shell may be disposed on the core in a suitable thickness (See Paragraph 95-97). Nakamura teaches that this heating may occur before the mixing of the two components or after the two components are mixed (See Paragraph 96). Nakamura thus teaches heating the core particles either in the solution or the reaction solution as claimed. Nakamura teaches that the reactants can be heated in a variety of ways, including by infrared heating apparatus, laser beams, or xenon lamps (See Paragraph 129). Each of these heating means would necessarily irradiate the core particles with light (either in the solution or the reaction solution) and generate heat in order to heat the surroundings of the core particles, as claimed. As Nakamura teaches each of these heating methods as suitable, those of ordinary skill would have found it obvious to incorporate such heating means in a method of creating quantum dots.
A shell forming step, wherein Nakamura describes the creation of the shell by setting forth reaction conditions. Nakamura teaches that several reaction conditions have to be met in order to grow said shell. The cores must be present in the presence of a suitable concentration of the raw materials for said coating layer and the reaction temperature must be met in order to form said shell. When all conditions are met, a reaction occurs causing the shell precursors on the outer surface of the core particles to form shells on said core particles (See Paragraph 95-97).
Nakamura teaches that the creation of such a shell requires a particular temperature to be achieved within the reaction solution (See Paragraph 95). This particular temperature is the claimed ‘lowest shell growth temperature’. As shells are grown, this temperature is achieved in the regions surrounding the core particles. As is noted above, the heating of the particles may occur and, subsequently, the shell precursor may be mixed with the solution.
Regarding Claim 3: Nakamura teaches that after heating, the reaction stream is cooled(See Paragraph 130). The cooling of the reaction necessarily reduces the temperature in the surroundings of the core particles below the necessary reaction temperature (lowest shell growth temperature) and the reaction of the shell would stop as reaction conditions are no longer met. Nakamura generally teaches that reaction conditions such as maintaining a reaction temperature above the shell growth temperature are only sustained for a certain period of time (See Paragraph 97-98).
Regarding Claim 4: Nakamura shows by way of example that the quantum dot core solution may contain ligands such as trioctyl phosphine, trioctyl phoshine oxide, and stearic acid (See Example 1 and 2).
Regarding Claim 5: Nakamura teaches a method of forming particles in-situ with ligands and a solvent. It is noted that the material of Nakamura is a liquid and is thus heated above its melting point at all times. Nakamura teaches that the core particles may be synthesized in a prior step (as shown in the Examples) or may be provided. Those of ordinary skill in the art would have found it obvious to provide the solution of Nakamura by providing pre-synthesized cores and mixing these cores with the other components taught by Nakamura, which are solvents and ligands in a liquid state (heated to a melting point of the ligand or above). Any order of mixing the components of the core forming solution would have been prima facie obvious to those of ordinary skill in the art (See MPEP 2144.04(IV)(C)).
Regarding Claim 6: Nakamura teaches a quantum dot production method for producing quantum dots made of core particles and shells formed on outer surfaces of the core particles. Nakamura teaches that the nanoparticles created have a semiconductor nanocrystal as a core and a coating (shell) disposed upon said core (See Paragraph 31). Nakamura teaches that the semiconductor nanocrystals may have a size of 1000 nm or less, particularly 10 nm or less (See Paragraph 30). Nakamura teaches that the core is at least partially crystalline and its properties are subject to quantum confinement effects (See Paragraph 56 and 69). The core shell nanoparticles of Nakamura would be considered to be quantum dots by those of ordinary skill in the art, as is evidenced by Millipore Sigma’s article, which sets forth that quantum dots are semiconductor nanocrystals having a size from 2-10 nm.
Nakamura teaches that their quantum dots are created by a method comprising:
A first preparing step of mixing a solution and a shell precursor together in order to prepare a reaction solution (See Paragraph 81). The solution of Nakamura may comprise a core particle in a solvent (See Paragraph 80).
A heating step wherein, the core particles in the solution or a reaction solution is heated by specific means to achieve a temperature at which the shell may be disposed on the core in a suitable thickness (See Paragraph 95-97). Nakamura teaches that this heating may occur before the mixing of the two components or after the two components are mixed (See Paragraph 96). Nakamura thus teaches heating the core particles either in the solution or the reaction solution as claimed. Nakamura teaches that the reactants can be heated in a variety of ways, including by infrared heating apparatus, laser beams, or xenon lamps (See Paragraph 129). Each of these heating means would necessarily irradiate the core particles with light (either in the solution or the reaction solution) and generate heat in order to heat the surroundings of the core particles, as claimed. As Nakamura teaches each of these heating methods as suitable, those of ordinary skill would have found it obvious to incorporate such heating means in a method of creating quantum dots.
A shell forming step, wherein Nakamura describes the creation of the shell by setting forth reaction conditions. Nakamura teaches that several reaction conditions have to be met in order to grow said shell. The cores must be present in the presence of a suitable concentration of the raw materials for said coating layer and the reaction temperature must be met in order to form said shell. When all conditions are met, a reaction occurs causing the shell precursors on the outer surface of the core particles to form shells on said core particles (See Paragraph 95-97).
Nakamura teaches that the preparing step may further include a step of forming the cores. Nakamura teaches that a core forming solution is prepared that contains a solvent and a core precursor. The solution is heated to a certain temperature under particular reaction conditions to cause a reaction of the core precursors in the core forming solution in order to form the core particles. The core forming solution containing these core particles is then used in the other method steps outlined above (See Paragraph 106-109).
Regarding Claim 7: Nakamura teaches that the creation of the shell requires a particular temperature to be achieved within the reaction solution (See Paragraph 95). This particular temperature is the claimed ‘lowest shell growth temperature’. As shells are grown, this temperature is achieved in the regions surrounding the core particles. As is noted above, the heating of the particles may occur and, subsequently, the shell precursor may be mixed with the solution.
Regarding Claim 8: Nakamura teaches that after heating, the reaction stream is cooled (See Paragraph 130). The cooling of the reaction necessarily reduces the temperature in the surroundings of the core particles below the necessary reaction temperature (lowest shell growth temperature) and the reaction of the shell would stop as reaction conditions are no longer met. Nakamura generally teaches that reaction conditions such as maintaining a reaction temperature above the shell growth temperature are only sustained for a certain period of time (See Paragraph 97-98).
Regarding Claim 9: Nakamura shows by way of example that the quantum dot core forming solution may contain ligands such as trioctyl phosphine, trioctyl phoshine oxide, and stearic acid (See Example 1 and 2).
Regarding Claim 10: Nakamura shows in Examples 1 and 2 the creation of the claimed mixture containing the ligand, solvent and core precursor. The mixture is provided as a liquid and the various ligands must necessarily be heated to their melting point or above in order to be provided as such. Nakamura teaches the various components are mixed together but does not set forth a definitive order of mixing (i.e. a mixture of ligands and solvents created prior to a mixture containing the precursor); however, any order of mixing the components of the core forming solution would have been prima facie obvious to those of ordinary skill in the art (See MPEP 2144.04(IV)(C)).
Regarding Claim 13: : Nakamura teaches a quantum dot production method for producing quantum dots made of core particles and shells formed on outer surfaces of the core particles. Nakamura teaches that the nanoparticles created have a semiconductor nanocrystal as a core and a coating (shell) disposed upon said core (See Paragraph 31). Nakamura teaches that the semiconductor nanocrystals may have a size of 1000 nm or less, particularly 10 nm or less (See Paragraph 30). Nakamura teaches that the core is at least partially crystalline and its properties are subject to quantum confinement effects (See Paragraph 56 and 69). The core shell nanoparticles of Nakamura would be considered to be quantum dots by those of ordinary skill in the art, as is evidenced by Millipore Sigma’s article, which sets forth that quantum dots are semiconductor nanocrystals having a size from 2-10 nm. Thus the particles of Nakamura have a particle size that overlaps the particle sizes instantly claimed.
Nakamura teaches that their quantum dots are created by a method comprising:
A first preparing step of mixing a solution and a shell precursor together in order to prepare a reaction solution (See Paragraph 81). The solution of Nakamura may comprise a core particle in a solvent (See Paragraph 80).
A heating step wherein, the core particles in the solution or a reaction solution is heated by specific means to achieve a temperature at which the shell may be disposed on the core in a suitable thickness (See Paragraph 95-97). Nakamura teaches that this heating may occur before the mixing of the two components or after the two components are mixed (See Paragraph 96). Nakamura thus teaches heating the core particles either in the solution or the reaction solution as claimed. Nakamura teaches that the reactants can be heated in a variety of ways, including by infrared heating apparatus, laser beams, or xenon lamps (See Paragraph 129). Each of these heating means would necessarily irradiate the core particles with light (either in the solution or the reaction solution) and generate heat in order to heat the surroundings of the core particles, as claimed. As Nakamura teaches each of these heating methods as suitable, those of ordinary skill would have found it obvious to incorporate such heating means in a method of creating quantum dots.
A shell forming step, wherein Nakamura describes the creation of the shell by setting forth reaction conditions. Nakamura teaches that several reaction conditions have to be met in order to grow said shell. The cores must be present in the presence of a suitable concentration of the raw materials for said coating layer and the reaction temperature must be met in order to form said shell. When all conditions are met, a reaction occurs causing the shell precursors on the outer surface of the core particles to form shells on said core particles (See Paragraph 95-97).
Nakamura teaches that the creation of such a shell requires a particular temperature to be achieved within the reaction solution (See Paragraph 95). This particular temperature is the claimed ‘lowest shell growth temperature’. As shells are grown, this temperature is achieved in the regions surrounding the core particles. As is noted above, the heating of the particles may occur and, subsequently, the shell precursor may be mixed with the solution.
Nakamura teaches that after heating, the reaction stream is cooled(See Paragraph 130). The cooling of the reaction necessarily reduces the temperature in the surroundings of the core particles below the necessary reaction temperature (lowest shell growth temperature) and the reaction of the shell would stop as reaction conditions are no longer met. Nakamura generally teaches that reaction conditions such as maintaining a reaction temperature above the shell growth temperature are only sustained for a certain period of time (See Paragraph 97-98).
Regarding Claim 14: Nakamura shows by way of example that the quantum dot core solution may contain ligands such as trioctyl phosphine, trioctyl phoshine oxide, and stearic acid (See Example 1 and 2).
Regarding Claim 15: Nakamura teaches a method of forming particles in-situ with ligands and a solvent. It is noted that the material of Nakamura is a liquid and is thus heated above its melting point at all times. Nakamura teaches that the core particles may be synthesized in a prior step (as shown in the Examples) or may be provided as a pre-synthesized material. Those of ordinary skill in the art would have found it obvious to provide the solution of Nakamura by providing pre-synthesized cores and mixing these cores with the other components taught by Nakamura, which are solvents and ligands in a liquid state (heated to a melting point of the ligand or above). Any order of mixing the components of the core forming solution would have been prima facie obvious to those of ordinary skill in the art (See MPEP 2144.04(IV)(C)).
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 and 3-5 and 11-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12527116. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims teach a method of manufacturing a layer containing quantum dots that obviates the claimed quantum dot production method (and the as-created quantum dots; re: instant claims 11-12 and 16) as set forth. The patented method provides a solution containing a first core and a ligand (See instant Claims 4, 9, 14) wherein the solution is provided at a temperature higher than the melting point of the ligand and less than the boiling point of the solvent. Essentially the solution is provided as a liquid as claimed. The patented claims further set forth adding a shell precursor to the solution as set forth (See patented Claim 1). The reaction mixture is heated prior to such addition as is claimed (See patented claim 1). The mixture is heated to a temperature at which the shell grows on said cores (See patented claim 1). This heating may be accomplished by irradiating the cores with light causing said core to generate heat (See patented claim 5). Thus the patented claim teach the claimed preparing, heating and shell forming steps as claimed and obviate the instant claim 1. The claims are silent as to cooling the reaction solution after the shell is formed on said cores; however, claim 14 teaches that the quantum dots are used in a device. The use thereof necessitates the cooling of the solution and application of a solid material. Those of ordinary skill in the art would have found it obvious to cool the reaction solution to below the lowest shell growth temperature after the reaction in order to stop the reaction. Those of ordinary skill would have found it obvious to cool the reaction to room temperature for handling and the creation of the device being created in claim 14. Thus the cooling step of instant claims 3, 8 and 13 would have been obvious. As is set forth above the solution may be heated to above the melting point of the ligand before the addition of said cores (See patented claim 1; re: instant claim 5, 10 and 15)
Claims 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12527116 in view of Nakamura in US20070128350. The patented claims teach all of the limitations of the claims except for the limitation in claim 6, where the core is formed in a core forming step from a core precursor (See ODP above). The patented claims teach the use of a previously created core and do not teach the claim limitation; however, Nakamura teaches a similar means for creating core/shell nanoparticles. Nakamura shows that the cores of the quantum dots may be created in a first step wherein a core is formed from a solution containing a solvent and a core precursor and causing a reaction of the core precursor in said solution to form core particles. The core particles may then be used for further coating (See Example 1). Those of ordinary skill in the art would have found it obvious to create the core particles used in the patented claims, obviating the instantly claimed subject matter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734