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 .
DETAILED ACTION
Response to Restriction
In response to the restriction requirement of 2/2/26, Applicants elect the invention of group I, claims 1-11, directed to a metal oxide composition, for prosecution on the merits. Furthermore, in accordance with the requirement for an election between species, Applicants elect Condition (2), to which claims 1-11 are readable. This election is made without traverse. Claims 12-20 are directed to a non-elected invention. Accordingly, claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 recites that the second compound is represented by Formula 2-1. In Formula 2-1, zinc is claimed to be present in an amount of greater than 0.5 and less than 1. With the exception of zirconium and tin, variable M’ is claimed to be a metal (Mg, Co, Ni, Zr, Mn, Sn, Y, Al) which does not fall under any of the metals recited in claim 1 (Zn, Ti, Zr, Sn, W, Ta, Ni, Mo, Cu, or V). Embodiments where M’ is exclusive from M as recited in claim 1 does not further limit claim 1 since variable M, which is recited in formula 2-1 to be zinc, cannot satisfy variable p according to formula 2-1 in such embodiments. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements. Applicants could overcome this rejection by amending independent claim 1 to include the limitation that the metal oxide comprises a second compound represented by Formula 2 or represented by Formula 2-1 with all of the limitations of claim 11 being included in claim 1 (and canceling claim 11).
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.
Claims 1-9 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xie (CN-106349815). Copies of the original and a machine translation are included herewith.
Claim 1: Embodiment 1 of Xie is drawn to a ZnO nanoparticle ink which comprises diethylene glycol butyl ether. Diethylene glycol butyl ether, also known as diethylene glycol monobutyl ether has the structure
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. This solvent anticipates Formula 1 of claim 1. As applied to claim 1, this solvent has R1 equal to hydrogen, X1 equal to O, L1 equal to -CH2CH2-, X2 equal to O, n1 equal to 2, and R2 equal to a C3 alkyl group (-CH2CH2CH2-) which is substituted with R10a where R10a is methyl. This solvent satisfies condition 2 of claim 1. The metal oxide anticipates Formula 2 with M equal to Zn, and p and q equal to 1. While diethylene glycol butyl ether is also employed by Applicants in their specification as comparative compound 2, said comparative compound 2 is reads on Formula 1 of claim 1 as described above.
Claim 2: Diethylene glycol butyl ether as shown above has L1 equal to an unsubstituted C2 alkylene group which anticipates claim 2.
Claim 3: In diethylene glycol butyl ether, X1 and X2 are O, which anticipates claim 3.
Claims 4 and 5: Diethylene glycol also anticipates Formula 1-1 of claim 4 with R1 equal to hydrogen, X1 equal to O, L11 equal to a single bond. a11 equal to 1, X2 equal to O, n11 equal to 2, L12 equal to a single bond, and R21 equal to a C3 alkyl group that is substituted with one R10a where R10a is an unsubstituted C1 alkyl group (methyl), which is a group which also anticipates claim 5.
Claim 6-8: Claims 6-8 are drawn to an alternative, optional embodiment where the solvent is one which satisfies Formula 1-2 of claim 4. However, if the limitations of each of claims 6-8 were incorporated into claim 4, example 1 of Xie would still be able to reject these claims as they are not required.
Claim 9: Diethylene glycol butyl ether also anticipates Formula 1-1A of claim 9 with all variable assignments being described in claim 4 above.
Claim 11: For claim 11, Embodiment 2 of Xie is relied upon. Embodiment 2 of Xie et al. is drawn to a ZnxMg1-xO nanoparticle ink which comprises diethylene glycol butyl ether. Diethylene glycol butyl ether, also known as diethylene glycol monobutyl ether has the structure
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. This solvent anticipates Formula 1 of claim 1. As applied to claim 1, this solvent has R1 equal to hydrogen, X1 equal to O, L1 equal to -CH2CH2-, X2 equal to O, n1 equal to 2, and R2 equal to a C1 alkyl group (-CH2-) which is substituted with R10a where R10a is propyl (which is a -CH2Ra group). This solvent satisfies condition 2 of claim 1. The metal oxide anticipates Formula 2-1 of claim 12 with M’ equal to Mg, and p being a number which is greater than 0 and less than or equal to 0.5. This position is inherent as Xie teaches that the ZnO particles prepared therein may be doped with another metal ion including Mg. By doping, it is immediately understood and envisaged that less than 50 wt% of the metal present in the ZnMg metal mixture is Mg. It is also immediately understood and envisaged that that the sum of x and 1-x would be equal to 1, since both zinc and magnesium have an oxidation state of +2 and oxygen has an oxidation state of -2, so as to arrive at the neutral ZnxMg1-xO compound.
Claims 1-9 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (CN-110964371). Copies of the original and a machine translation are included herewith.
Claim 1: Example 1 of Wang et al. is drawn to an ink composition comprising ZnO nanoparticles which anticipate the metal oxide compound of Formula 2 in claim 1, and ethylene glycol mono-octyl ether, which anticipates Formula 1 of claim 1 with R1 equal to hydrogen, X1 and X2 equal to -O-, L1 equal to -CH2CH2-, n1 equal to 1, and R2 equal to a C1 alkyl group that is substituted by one R10a where R10a is equal to a C7H15 group. In other words, the n-octyl group in the solvent can arbitrarily be assigned as being a heptyl-substituted methylene group, thereby anticipating claim 1. The solvent in example 1 of Wang et al. satisfies condition 2 of claim 1
Claim 2: In ethylene glycol monooctyl ether, L1 is an unsubstituted ethylene group, thereby anticipating claim 2.
Claim 3: In ethylene glycol monooctyl ether, X1 and X2 are both -O-, thereby anticipating claim 3.
Claim 5: Ethylene glycol monooctyl ether anticipates Formula 1-1 of claim 4 with R1 equal to hydrogen, X1 and X2 equal to -O-, L11 equal to a single bond, a11 equal to 1, n11 equal to 1, L12 equal to a C1 alkyl group that is substituted with one R10a, and R10a is an unsubstituted C7 alkyl group, which also anticipates claim 5.
Claims 6-8: Claims 6-8 are drawn to an alternative, optional embodiment where the solvent is one which satisfies Formula 1-2 of claim 4. However, if the limitations of each of claims 6-8 were incorporated into claim 4, example 1 of Wang et al. would still be able to reject these claims as they are not required.
Claim 9: Ethylene glycol monooctyl ether also anticipates Formula 1-1A of claim 9 with all variable assignments being described in claim 4 above.
Claims 1-3 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Asano et al. (JP-2013256593). Copies of the original and a machine translation are included herewith.
Claims 1 and 10: Example 19 of Asano et al. is drawn to a composition comprising 0.1 wt% of ZnO1 and 3 wt % of isopropyl diglycol (component c-2) which as applied to general formula (2) of Asano et al. is identical to compound 2 of claim 10 [see formula (2) of Asano et al. and the bottom of page 15 of the machine translation]. Example 19 is therefore a metal oxide composition comprising a metal oxide which satisfies Formula 2 of claim 1 with M equal to Zn, and p and q equal to 1, and a solvent which satisfies Formula 1 with R1 equal to hydrogen, X1 and X2 equal to O, L1 equal to -CH2CH2-, n1 equal to 2, and R2 equal to isopropyl, which can be referred to as a C2 alkyl group [-CH(CH3)R10a] where R10a is equal to methyl. The solvent satisfies condition 2 of claim 1.
Claim 2: In solvent c-2 of Asano et al. L1 is an unsubstituted C2 alkylene group, thereby anticipating claim 2.
Claim 3: In solvent c-2 of Asano et al. both X1 and X2 are O, thereby anticipating claim 3.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8 of copending Application No. 18/652,634 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. Independent claim 1 of the reference application is drawn to an electron transport composition (or simply, a composition) which comprises an inorganic particle of Formula 1 and a solvent represented by formula 2. Claim 11 of the instant application reads on Formula 1 of claims 1-3. The solvent represented by Formula 1 of the reference application overlaps in scope with Formula 1 of the instant application. Further, the solvents of Formulae 3-1 through 3-3 in claim 4 of the reference application and the solvents of Formulae 4-1 through 4-8 in claim 8 of the reference application read on the solvent represented by Formula 1 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S LOEWE whose telephone number is (571)270-3298. The examiner can normally be reached on Monday-Friday from 8 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski, can be reached at telephone number 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert S Loewe/Primary Examiner, Art Unit 1766
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as shown in the table of Asano et al. refers to ZnO in Japanese.
Prosecution Insights