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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/19/2025 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application Nos. 62/594,839 and 16/765,625 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. None of the prior-filed applications disclose a luminescent solar concentrator.
For the purpose of this office action, the effective filing date of claim 32, which is directed to a luminescent solar concentrator, is the filing date of the instant application, or 02/13/2023.
Claim Objections
Claims 13-14 are objected to because of the following informalities: Claims 13-14 depend on claim 32, and do not refer to a preceding claim. See MPEP 608.01(n).
Appropriate correction is required.
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) 1-9, 11, 15 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Lunt et al. (WO 2016/176008) in view of Aoki et al. (WO 2012/105578 or JP5884739, see translation) or Jordan et al. (“Anion-controlled morphologies and spectral features of cyanine-based nanoGUMBOS – an improved photosensitizer”).
Regarding claims 1-2, 9 and 38, Lunt et al. discloses a solar panel comprising:
a substrate (12, figs. 1A-B); and
a photoactive material (16, figs. 1A-B) including an organic salt of an ion and a counterion ([0063, claim 1);
wherein:
the ion includes a heptamethine cyanine, Cy7, Cy7.5, C5, etc… (see figs. 11 and 16, pages 13-14, claim 5) as claimed in claims 9-10,
the counterion includes fully halogenated such as tetrakis(pentafluorophenyl)borate (see [0011], [0067] and fig. 10).
Lunt et al. does not explicitly discloses the counterion is selected from the group consisting of D-tris(tetrafluoro-1,.2- benzenediolato~phosphate(V); D-tris(tetrabromo-1,.2-benzenediolato~phosphate(V); D- tris(tetraiodo-1,.2-benzenediolato)phosphate(V),tris(pentafluoroethyl)silane, tetrakis(pentachlorophenyl)borate,tetrakis(pentabromophenyl)borate,tetrakis(pentaiodophenyl)borate,bis(trifluoromethanesulfonyl)imide (TFSI), bis(fluorosulfonyl)- imide (FSI), fluorosulfonyl(trifluoromethanesulfonyl)imide (FTFS), trifluoromethanesulfonate (Tf), perfluorobutanesulfonate (PFBS), bis[(pentafluoroethyl)sulfonyllimide (BETI), 2,2,2-trifluoromethylsulfonyl-N-cyanoamide (TFSAM), 2,2,2-trifluoro-N-(trifluoromethylsulIfonyl) acetamide (TSAC),nonafluorobutanesulfonate (NF), tetracyanoborate, B(CN)4, dicyanamide (DCA), thiocyanate (SCN). cyclic perfluorosulfonylamide (CPFSA), camphorsulfonate (CpSO3), tetrahalogenoferrate(Ill) (FeCl3Br), halogenchromate (CrO3X, X=CI, Br, 1),tetrachloroferrate (FeX4,X = Cl,Br, 1),di(hydrogenfluoro)-fluoride ((FH)2F), tri(hydrogenfluoro)-fluoroide ((FH)3F), dihydrogen phosphate (DHP), difluoro phosphate, dichloro phosphate, tricyanomethanide, acetate, triflouroacetate, trichloroacetate, tribromoacetate, Si(SiCl3)3, or any combination thereof such that an absolute magnitude of a binding energy between the ion and the counterion being less than or equal to about 6.5 as claimed in claim 1, or less than or equal to about 5 as claimed in claim 2.
Aoki et al. discloses anions of aryl borate includes tetrakis(pentachlorophenyl)borate, tetrakis(pentaiodophenyl)borate, tetrakis(pentafluorophenyl)borate (see [0119] and [0133]) of the translation.
Jordan et al. discloses using bis(trifluoromethanesulfonyl)imide (NTf2) or bis(penta-fluoroehtanesulfonyl)imide (BETI) as the counterion for the cyanine salt (see fig. 1). Bis(trifluoromethanesulfonyl)imide (NTf2) of Jordan et al. is the claimed TFSI.
It would have been obvious to one skilled obvious to one skilled to the art before the effective filing date of the claimed invention to modify the cyanine salt of Lunt et al. by using the counterion (X) of tetrakis(pentachlorophenyl)borate or tetrakis(pentaiodophenyl)borate taught by Aoki et al. in place of the tetrakis(pentafluorophenyl)borate counterion; because Lunt et al. explicitly suggests using aryl borates as the counterion for the cyanine salt and Aokia et al. teaches tetrakis(pentachlorophenyl)borate and tetrakis(pentaiodophenyl)borate are equivalent counterions to tetrakis(pentafluorophenyl)borate exemplified by Lunt et al. Such modification would involve nothing more than use of known material for its intended use in a known environment to accomplish entirely expected result. International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). The Courts have held that the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (See MPEP 2144.07).
Alternatively, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have used bis(trifluoromethanesulfonyl)imide (NTf2) or bis(penta-fluoroehtanesulfonyl)imide (BETI) as the counterion for the cyanine salt taught by Jordan et al., because Jordan et al. teaches such counterion would allow the morphologies and spectral properties of the cyanine to be controlled for use in solar cell (see abstract, conclusions, and also see the results and discussion of Jordan et al.).
Modified Lunt et al. discloses using photoactive materials including the same ion and counterion as claimed. The material of modified Lunt et al. will display the property of an absolute magnitude of a binding energy between the ion and the counterion being less than or equal to about 6.5 as claimed in claim 1, or less than or equal to about 5 as claimed in claim 2. Same material will display/exhibit the same property. See MPEP 2112.
Regarding claims 3-4, modified Lunt et al. discloses a solar panel as in claim 1 above; wherein tetrakis(pentachlorophenyl)borate and tetrakis(pentaiodophenyl)borate of Aoki et al. are fully halogenated, and bis(trifluoromethanesulfonyl)imide (NTf2) or bis(penta-fluoroehtanesulfonyl)imide (BETI) of Jordan et al. are fully halogenated.
Regarding claims 5-6, modified Lunt et al. discloses all the material and structural limitations of the claimed solar panel as in claim 1 above. The photoactive material of modified Lunt et al. will display the property of a water contact angle to be greater than or equal to about 65o as claimed in claim 5, or greater than or equal to about 75o as claimed in claim 6. Same material will display/exhibit the same property. See MPEP 2112.
Regarding claims 7-8, modified Lunt et al. discloses all the material and structural limitations of the claimed solar panel as in claim 1 above. The solar panel of modified Lunt et al. will display the property of having a lifetime T50 of greater than or equal to about 500 hours as claimed in claim 7, or greater than or equal to about 5,000 hours as claimed in claim 8. See MPEP 2112.
Regarding claim 11, modified Lunt et al. discloses a solar panel as in claim 1 above, wherein Lunt et al. teaches the solar panel is a photovoltaic comprising: a first electrode (14, figs. 1A-B) on the substrate (12, figs. 1A-B); the photoactive material (16, figs. 1A-B), and a second electrode (18, figs. 1A-B), wherein the photoactive material (16) is between the first electrode (14) and the second electrode (18, figs. 1A-B, [0063]).
Regarding claim 15, modified Lunt et al. discloses a solar panel as in claim 1 above, and teaches at least the ion is an organic (or Cy dye, see claim 1 above).
Claims 13-14 and 32-39 are rejected under 35 U.S.C. 103 as being unpatentable over Lunt et al. (US 2014/0283896, hereinafter Lunt’896) in view of Jordan et al. (“Anion-controlled morphologies and spectral features of cyanine-based nanoGUMBOS – an improved photosensitizer”).
Regarding claims 32, 33 and 38-39, Lunt’896 discloses a luminescent solar concentrator or a solar panel comprising:
a waveguide including
a substrate (115 in fig. 1, 315 in figs. 3-4 or substrate shown in figs. 5 and 7A), and
a photoactive material (or redirecting material 120 in fig. 1, 320 in figs. 3-4, or luminophore described in [0039] or shown in fig. 7B) in contact with the substrate (see figs. 1, 3-5 and 7); and
a photovoltaic device (105 in fig. 1, 305 in figs. 3-4, or solar arrays described in [0039]) coupled to the substrate (see figs. 1, 3-5 and 7);
wherein the photoactive material (or redirected material or luminophore or dye) is of cyanine salt including cyanine ion Cy7, Cy7NHS Ester, Cy7.5 NHS Ester, Cy7m (or Cy7 maleimide), Cy7.5m (or Cy7.5 maleimide, see [0046], claim 22, fig. 6J).
Lunt’896 discloses the cyanine salts (dyes) is tailored through anion modification such as Cl-, I-, ClO4-, etc. for a given bandgap, the quantum yield ([0045]).
Lunt’896 does not teach using a counterion selected from D-tris(tetrafluoro- 1,2-benzenediolato)phosphate(V), D-tris(tetrabromo-1,2-benzenediolato)phosphate(V), D-tris(tetraiodo-1 ,2-benzenediolato)phosphate(V), tris(pentafluoroethyl)silane,tetrakis(pentachlorophenyl)borate,tetrakis(pentabromophenyl)borate,tetrakis(pentaiodophenyl)borate,bis(trifluoromethanesulfonyl)imide (TFSI), bis(fluorosulfonyl)- imide (FSI), fluorosulfonyl(trifluoromethanesulfonyl)imide (ETES), trifluoromethanesulfonate (Tf), perfluorobutanesulfonate (PFBS), bis[(pentafluoroethyl)sulfonyllimide (BETI), 2,2,2-trifluoromethylsulfonyl-N-cyanoamide (TFSAM), 2,2,2-trifluoro-N-(trifluoromethylsulfonyl) acetamide (TSAC), nonafluorobutanesulfonate (NF), tetracyanoborate, B(CN)4, dicyanamide (DCA), thiocyanate (SCN), cyclic perfluorosulfonylamide (CPFSA), camphorsulfonate (CpSO3), tetrahalogenoferrate(ll) (FeCl3Br), halogenchromate (CrO3X, X=CI, Br, I), tetrachloroferrate (FeX4,X = CI,Br, I),di(hydrogenfluoro)-fluoride ((FH)2F), tri(hydrogenfluoro)-fluoroide ((FH)3F), dihydrogen phosphate (DHP), difluoro phosphate, dichloro phosphate, tricyanomethanide, acetate, triflouroacetate, trichloroacetate, tribromoacetate, Si(SiCl)3, or any combination thereof such that the an absolute magnitude of a binding energy between the ion and the counterion being less than or equal to about 6.5.
Jordan et al. discloses using bis(trifluoromethanesulfonyl)imide (NTf2) or bis(penta-fluoroehtanesulfonyl)imide (BETI) as the counterion for the cyanine salt (see fig. 1). Bis(trifluoromethanesulfonyl)imide (NTf2) of Jordan et al. is the claimed TFSI.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the cyanine salt of Lunt’896 by have using bis(trifluoromethanesulfonyl)imide (NTf2) or bis(penta-fluoroehtanesulfonyl)imide (BETI) as the counterion for the cyanine salt taught by Jordan et al., because Jordan et al. teaches such counterion would provide a cyanine salt with higher fluorescence quantum yields and lifetimes compared to halide such as iodide counterion (see table 1).
Modified Lunt’896 discloses using photoactive materials including the same ion and counterion as claimed. The material of modified Lunt’896 will display the property of an absolute magnitude of a binding energy between the ion and the counterion being less than or equal to about 6.5 as claimed. Same material will display/exhibit the same property. See MPEP 2112.
Regarding claim 13, modified Lunt’896 discloses a luminescent solar concentrator as in claim 32 above, wherein Lunt’896 discloses the photoactive active material (or redirecting material/lumiphore) is embedded in the substrate (see figs. 1, 3-4), present in a layer (or mirror 505) on a surface of the substrate (see figs. 5).
Regarding claim 14, modified Lunt’896 discloses a luminescent solar concentrator as in claim 32 above, wherein Lunt’896 discloses the photovoltaic device (105 in fig. 1, 305 in figs. 3) is coupled to an edge surface of the substrate (see figs. 1, 3 and 7A).
Regarding claims 34 and 35, modified Lunt’896 discloses a solar panel as in claim 34 above, wherein bis(trifluoromethanesulfonyl)imide (NTf2) or bis(penta-fluoroehtanesulfonyl)imide (BETI) of Jordan et al. are fully halogenated.
Regarding claims 36-37, modified Lunt’896 discloses all the material and structural limitations of the claimed solar panel as in claim 33 above. The photoactive material of modified Lunt’896 will display the property of a water contact angle to be greater than or equal to about 65o as claimed in claim 36, or greater than or equal to about 80o as claimed in claim 37. Same material will display/exhibit the same property. See MPEP 2112.
Claim(s) 33-39 are rejected under 35 U.S.C. 103 as being unpatentable over Lunt’896 (US 2014/0283896) in view of Fabricius et al. (EP 0591820).
Regarding claims 33 and 38-39, Lunt’896 discloses a solar panel comprising a substrate (115 in fig. 1, 315 in figs. 3-4 or substrate shown in figs. 5 and 7A) and a photovoltaic material (redirecting material 120 in fig. 1, 320 in figs. 3-4, or luminophore described in [0039] or shown in fig. 7B) of cyanine dye including a cyanine ion such as Cy7m, Cy7NHS Ester, Cy7.5m, Cy7.5NHS Ester and a counterion of halide such as iodide, chloride (see [0045]).
Lunt’896 does not explicitly disclose using a counterion of D-tris(tetrafluoro-1,2-benzenediolato)phosphate(V), D-tris(tetrabromo-1,2-benzenediolato)phosphate(V), D-tris(tetraiodo-1,2- benzenediolato)phosphate(V), Tris(pentafluoroethyl)silane,tetrakis(pentachlorophenyl)borate, tetrakis(pentabromophenyl)borate, tetrakis(pentaiodophenyl)borate, Bis(trifluoromethanesulfonyl)imide (TFSI), Bis(fluorosulfonyl)- imide (FSI), Fluorosulfonyl(trifluoromethanesulfonyl)imide (FTFS), Trifluoromethanesulfonate (Tf), Perfluorobutanesulfonate (PFBS), bis[(pentafluoroethyl)sulfonyl]imide (BETI), 2,2,2-trifluoromethylsulfonyl-N-cyanoamide (TFSAM), 2,2,2-trifluoro-N-(trifluoromethylsulfonyl) acetamide (TSAC),nonafluorobutanesulfonate (NF), Tetracyanoborate, B(CN)4Dicyanamide (DCA), Thiocyanate (SCN), Cyclic perfluorosulfonylamide (CPFSA), Camphorsulfonate (CpSO3), Tetrahalogenoferrate(lll) (FeCl3Br), Halogenchromate (CrO3X, X=Cl, Br, I), Tetrachloroferrate (FeX4, X = CI, Br, I), Di(hydrogenfluoro)-fluoride ((FH)2F), Tri(hydrogenfluoro)-fluoroide ((FH)3F), Dihydrogen phosphate (DHP), Difluoro phosphate, Dichloro phosphate, tricyanomethanide, acetate, triflouroacetate, trichloroacetate, tribromoacetate, Si(SiCs)3, or any combination thereof.
Fabricius et al. discloses the counterion (or X) for a cyanine dye (formula 1) is halide, or trifluoromethanesulfonate, or acetate (see page 4, lines 52-54). In other words, Fabricius et al. discloses trifluoromethanesulfonate and acetate are equivalent counterion to halide for the cyanine salt/dye.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the solar panel of Lunt’896 by using counterion such as trifluoromethanesulfonate or acetate as taught by Fabricius et al. in place of the halide as it is merely the selection of functionally equivalent counterion recognized in the art and one of ordinary skill in the art would have a reasonable expectation of success in doing so. Such modification would involve nothing more than use of known material for its intended use in a known environment to accomplish entirely expected result. International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). The Courts have held that the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (See MPEP 2144.07).
Regarding claims 34-35, modified Lunt’896 discloses a solar panel as in claim 33 above, wherein trifluoromethanesulfonate of Fabricius et al. is fully halogenated.
Regarding claims 36-37, modified Lunt’896 discloses all the material and structural limitations of the claimed solar panel as in claim 33 above. The photoactive material of modified Lunt’896 will display the property of a water contact angle to be greater than or equal to about 65o as claimed in claim 36, or greater than or equal to about 80o as claimed in claim 37. Same material will display/exhibit the same property. See MPEP 2112.
Claim(s) 29 and 33-37 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Lunt et al. (WO 2016/176008) in view of Aoki et al. (WO 2012/105578 or JP5884739, see translation) or Jordan et al. (“Anion-controlled morphologies and spectral features of cyanine-based nanoGUMBOS – an improved photosensitizer”), and further in view of Lunt’896 (US 2014/0283896).
Regarding claims 29 and 39, modified Lunt et al. discloses a solar panel as in claims 1 and 38above, wherein Lunt et al. discloses using cyanine ion (or Cy) for the cyanine salt.
Modified Lunt et al. does not explicitly disclose using cyanine ion (Cy) of Cy7m, Cy7NHS Easter, Cy5m Cy5NHS Ester, Cy7.5m, Cy7.5NHS Ester, Cy3m, Cy3NHS or any combination thereof.
Lunt’896 discloses cyanine salt including cyanine ion of Cy7(IR780), Cy7NHS Ester, Cy7.5NHS Ester, Cy7m (or Cy7 maleimide), Cy7.5m (or Cy7.5 maleimide; see [0046], claim 22, fig. 6J). In other words, Cy7NHS Ester, Cy7.5 NHS Ester, Cy7m (or Cy7 maleimide), Cy7.5m (or Cy7.5 maleimide) are equivalent ions to Cy7 in cyanine salts (dyes).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the cyanine salt (CyX) of Lunt et al. or Suddard-Bangsund et al. by using the ion (or Cy) of Cy7NHS Ester, Cy7.5NHS Ester, Cy7m, Cy7.5m as taught by Lunt’896, because Lunt’896 discloses Cy7NHS Ester, Cy7.5NHS Ester, Cy7m, Cy7.5m are equivalent ions (Cy) to Cy7 in the cyanine salts (or dyes) and one of ordinary skill in the art would have a reasonable expectation of success in selection of functionally equivalent ion for cyanine salts (dyes) recognized in the art. Such modification would involve nothing more than use of known material for its intended use (ion Cy in the cyanine salts/dyes) in a known environment to accomplish entirely expected result. International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). The Courts have held that the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (See MPEP 2144.07).
Regarding claim 33, Lunt et al. discloses a solar panel comprising:
a substrate (12, figs. 1A-B); and
a photoactive material (16, figs. 1A-B) including an organic salt of an ion and a counterion ([0063, claim 1);
wherein:
the ion includes a heptamethine cyanine, Cy7, Cy7.5, C5, etc… (see figs. 11 and 16, pages 13-14, claim 5) as claimed in claims 9-10,
the counterion includes fully halogenated such as tetrakis(pentafluorophenyl)borate (see [0011], [0067] and fig. 10).
Lunt et al. does not explicitly discloses the counterion is selected from the group consisting of D-tris(tetrafluoro-1,.2- benzenediolato~phosphate(V); D-tris(tetrabromo-1,.2-benzenediolato~phosphate(V); D- tris(tetraiodo-1,.2-benzenediolato)phosphate(V),tris(pentafluoroethyl)silane, tetrakis(pentachlorophenyl)borate,tetrakis(pentabromophenyl)borate,tetrakis(pentaiodophenyl)borate,bis(trifluoromethanesulfonyl)imide (TFSI), bis(fluorosulfonyl)- imide (FSI), fluorosulfonyl(trifluoromethanesulfonyl)imide (FTFS), trifluoromethanesulfonate (Tf), perfluorobutanesulfonate (PFBS), bis[(pentafluoroethyl)sulfonyllimide (BETI), 2,2,2-trifluoromethylsulfonyl-N-cyanoamide (TFSAM), 2,2,2-trifluoro-N-(trifluoromethylsulIfonyl) acetamide (TSAC),nonafluorobutanesulfonate (NF), tetracyanoborate, B(CN)4, dicyanamide (DCA), thiocyanate (SCN). cyclic perfluorosulfonylamide (CPFSA), camphorsulfonate (CpSO3), tetrahalogenoferrate(Ill) (FeCl3Br), halogenchromate (CrO3X, X=CI, Br, 1),tetrachloroferrate (FeX4,X = Cl,Br, 1),di(hydrogenfluoro)-fluoride ((FH)2F), tri(hydrogenfluoro)-fluoroide ((FH)3F), dihydrogen phosphate (DHP), difluoro phosphate, dichloro phosphate, tricyanomethanide, acetate, triflouroacetate, trichloroacetate, tribromoacetate, Si(SiCl3)3, or any combination thereof such that an absolute magnitude of a binding energy between the ion and the counterion being less than or equal to about 6.5 as claimed in claim 1, or less than or equal to about 5 as claimed in claim 2.
Aoki et al. discloses anions of aryl borate includes tetrakis(pentachlorophenyl)borate, tetrakis(pentaiodophenyl)borate, tetrakis(pentafluorophenyl)borate (see [0119] and [0133]) of the translation.
Jordan et al. discloses using bis(trifluoromethanesulfonyl)imide (NTf2) or bis(penta-fluoroehtanesulfonyl)imide (BETI) as the counterion for the cyanine salt (see fig. 1). Bis(trifluoromethanesulfonyl)imide (NTf2) of Jordan et al. is the claimed TFSI.
It would have been obvious to one skilled obvious to one skilled to the art before the effective filing date of the claimed invention to modify the cyanine salt of Lunt et al. by using the counterion (X) of tetrakis(pentachlorophenyl)borate or tetrakis(pentaiodophenyl)borate taught by Aoki et al. in place of the tetrakis(pentafluorophenyl)borate counterion; because Lunt et al. explicitly suggests using aryl borates as the counterion for the cyanine salt and Aokia et al. teaches tetrakis(pentachlorophenyl)borate and tetrakis(pentaiodophenyl)borate are equivalent counterions to tetrakis(pentafluorophenyl)borate exemplified by Lunt et al. Such modification would involve nothing more than use of known material for its intended use in a known environment to accomplish entirely expected result. International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). The Courts have held that the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (See MPEP 2144.07).
Alternatively, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have used bis(trifluoromethanesulfonyl)imide (NTf2) or bis(penta-fluoroehtanesulfonyl)imide (BETI) as the counterion for the cyanine salt taught by Jordan et al., because Jordan et al. teaches such counterion would allow the morphologies and spectral properties of the cyanine to be controlled for use in solar cell (see abstract, conclusions, and also see the results and discussion of Jordan et al.).
Modified Lunt et al. does not explicitly disclose using cyanine ion (Cy) of Cy7m, Cy7NHS Easter, Cy5m Cy5NHS Ester, Cy7.5m, Cy7.5NHS Ester, Cy3m, Cy3NHS or any combination thereof.
Lunt’896 discloses cyanine salt including cyanine ion of Cy7(IR780), Cy7NHS Ester, Cy7.5NHS Ester, Cy7m (or Cy7 maleimide), Cy7.5m (or Cy7.5 maleimide; see [0046], claim 22, fig. 6J). In other words, Cy7NHS Ester, Cy7.5 NHS Ester, Cy7m (or Cy7 maleimide), Cy7.5m (or Cy7.5 maleimide) are equivalent ions to Cy7 in cyanine salts (dyes).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the cyanine salt (CyX) of Lunt et al. or Suddard-Bangsund et al. by using the ion (or Cy) of Cy7NHS Ester, Cy7.5NHS Ester, Cy7m, Cy7.5m as taught by Lunt’896, because Lunt’896 discloses Cy7NHS Ester, Cy7.5NHS Ester, Cy7m, Cy7.5m are equivalent ions (Cy) to Cy7 in the cyanine salts (or dyes) and one of ordinary skill in the art would have a reasonable expectation of success in selection of functionally equivalent ion for cyanine salts (dyes) recognized in the art. Such modification would involve nothing more than use of known material for its intended use (ion Cy in the cyanine salts/dyes) in a known environment to accomplish entirely expected result. International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). The Courts have held that the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (See MPEP 2144.07).
Regarding claims 34-35, modified Lunt et al. discloses a solar panel as in claim 33 above; wherein tetrakis(pentachlorophenyl)borate and tetrakis(pentaiodophenyl)borate of Aoki et al. are fully halogenated, and bis(trifluoromethanesulfonyl)imide (NTf2) or bis(penta-fluoroehtanesulfonyl)imide (BETI) of Jordan et al. are fully halogenated.
Regarding claims 36-37, modified Lunt et al. discloses all the material and structural limitations of the claimed solar panel as in claim 33 above. The photoactive material of modified Lunt et al. will display the property of a water contact angle to be greater than or equal to about 65o as claimed in claim 36, or greater than or equal to about 80o as claimed in claim 37. Same material will display/exhibit the same property. See MPEP 2112.
Response to Arguments
Applicant's arguments filed 3/19/2025 have been fully considered but they are not persuasive.
Applicant argues that Aoki uses the cyanine salt as an electrolyte. Applicant concludes the counterions tetrakis(pentacholorophenyl)borate, tetrakis(pentaiodophenyl)borate, and tetrakis(pentafluorophenyl)borate are not functional equivalents because Aoki uses the salt in an electrolyte (or an active material of a solar cell).
Similarly, Applicant argues the counterions trifluoromethanesulfonate and acetate disclosed by Fabricus are not functional equivalents, because Fabricus uses the salt in annihilation layer of a photographic element.
The examiner replies that Aoki teaches tetrakis(pentacholorophenyl)borate, tetrakis(pentaiodophenyl)borate, and tetrakis(pentafluorophenyl)borate are functional equivalent counterions, or function as an ion that balances the charges, of cyanine ion. Aoki is not relied upon the use of an entire cyanine salt.
Annihilation layer described in Fabricus is directed the luminescence (or charges are combined/collided/annihilated to emit light). Both Fabricus and Applicant’s claimed invention are directed to the use of cyanine salt as a dye in luminescence. In addition, trifluoromethanesulfonate and acetate are equivalent counterions, or an ion that balances the charges, of cyanine ion.
Applicant has not provided any factually supported objective evidence that the counterion disclosed by Aoki and Fabricus cannot be used as counterion to the cyanine ion when Aoki and Fabricus teach such counterions are used to function as counterion to the cyanine ion. It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Conclusion
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THANH-TRUC TRINH
Primary Examiner
Art Unit 1726
/THANH TRUC TRINH/Primary Examiner, Art Unit 1726