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 Arguments
Applicants arguments and amendments, filed on 7/30/26, have been fully considered but they do not confer patentability on the instantly filed claims. Claims 4, 5, and 11 have been canceled via amendment. Applicants have amended independent claim 1 such that the metal oxide is represented by Formula 2-1 and that the first compound is represented by Formula 1-1 or Formula 1-2 (which comprises the subject matter of canceled claims 4, 5 and 11). The 112(d) rejection of claim 11 has been withdrawn as claim 11 has been canceled. The anticipatory prior art rejections to Wang et al. (CN-110964371) and Asano et al. (JP-2013256593) have been withdrawn as they do not teach a metal oxide satisfying Formula 2-1 of claim 1. The prior art rejection to Xie (CN-106349815) is maintained but modified due to Applicants amendments, for the reasons described below. The double patenting rejection has been withdrawn in light of Applicants amendments.
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 1-3 and 6-9 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 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
PNG
media_image1.png
36
278
media_image1.png
Greyscale
. This solvent anticipates Formula 1-1 of claim 1. As applied to Formula 1-1, diethylene glycol monobutyl ether solvent has R1 equal to hydrogen, X1 equal to O, L11 equal to -CH2-, a11 equal to zero, X2 equal to O, n11 equal to 1, L12 equal to a -CH2CH2-, and R21 equal to a C3 alkoxy group which is substituted with a methyl group (-OCH2CH2CH2doped 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. Because embodiment 2 shows Mg in the formula, one would understand that Mg would be present.
Claim 2: Under the variable assignments above, both L11 and L12 are alkylene groups which satisfy claim 2.
Claim 3: In diethylene glycol butyl ether, X1 and X2 are O, which anticipates claim 3.
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 1, 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 1 above.
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 is incorrect, any correction of the statutory basis 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.
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Xie et al. (CN-106349815), as applied to claim 1 above.
While Xie et al. does not exemplify metal oxide composition comprising ZnxMg1-xO and a first compound which is one of compounds 1-26 of claim 10, the overall teachings of Xie et al. render obvious to one having ordinary skill in the art the preparation of such a composition. Specifically, Xie et al. explicitly teaches that the alcohol ether solvent present in the ZnO-based nanoparticles ink includes tripropylene glycol methyl butyl ether which is the same as Compound 10 of claim 10 and tripropylene glycol methyl ether, which is the same as compound 11 of claim 10 (see page 3 of the machine translation which is already of record). Xie et al. is not limited only to the alcohol ether solvents employed in the working examples but rather to all of the alcohol ether solvents described therein. As such, the employment of any one of the alcohol ether solvent taught by Xie et al., including the two described above, would have been prima facie obvious to one having ordinary skill in the art.
Conclusion
Applicant's amendment necessitated the new grounds 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.
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.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/Robert S Loewe/Primary Examiner, Art Unit 1766
Prosecution Insights