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 .
Status of claims
The amendment filed on 8/5/2025 is acknowledged. Claims 1, 8, 32 are amended. Claim 40 is newly added. Claims, 7 and 13-14 are canceled. Currently, claims 1-6, 8-9, 11, 15, 29, 32-40 are pending in the instant application.
Previous objection is withdrawn in view of the above amendment.
Previous prior art rejections are maintained and modified to address the amendment.
Claims 1-6, 8-9, 11, 15, 29 and 32-40 are rejected.
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 claims 32 and 40, which is directed to a luminescent solar concentrator, is the filing date of the instant application, or 02/13/2023.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 32 and 40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As amended, claim 32 claims solid luminescent solar concentrator comprising a waveguide including a solid film comprising photovoltaic material, the solid film in contact with the substrate, the photoactive material including an ion and a counterion, an absolute magnitude of a binding energy between the ion and the counterion being less than or equal to about 6.5, and a photovoltaic device coupled to the substrate” in lines 1-9. Applicant has no support for such solid luminescent solar concentrator in the originally filed disclosure. Contradictory to the claims, Applicant discloses a luminescent solar concentrator (figs. 12A-B and 13A), in which the photoactive material including an ion and a counterion (or the luminophore 310, [0127]) is not in a solid film in contact with the substrate, but luminophore composition scattering in the substrate of the waveguide (302, figs. 12A-B and 13A).
Claim 40 is rejected on the same ground as claim 32.
For the purpose of this office action, the solid luminescent solar concentrator as claimed in claims 32 and 40 is construed to have the structure as disclosed in figs. 12A-B and 13A.
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, and 15 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, 8-9, 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. shows the solar panel to be solid in figs. 1A-B and 2C and discloses the counterion were chosen on solid state photophysical properties and device performance (see [0078]), Cy cation is seen in crystalline solids salt ([0086]), and discloses the photoactive material (or the salt) is solid state and in solid state packing ([0006]). As such, Lunt et al. teaches the solar panel is a solid solar panel comprising a solid film comprising photoactive material.
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, and the solar panel of modified Lunt et al. will have the lifetime T50 of greater than or equal to about 500 hours as claimed in claim 1; or the property of the absolute magnitude of the binding energy is less than less than or equal to about 5 as claimed in claim 2; or the property of a lifetime T50 of greater than or equal to about 5,000 hours as claimed in claim 8. Same material will display/exhibit the same property, and same structure using the 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 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).
Claim(s) 29 is rejected under 35 U.S.C. 103 as being unpatentable over modified Lunt et al. (WO 2016/176008) as applied to claims 1 and 38 above, and further in view of Lunt’896 (US 2014/0283896).
Regarding claim 29, modified Lunt et al. discloses a solar panel as in claims 1 above, 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).
Claims 32-37 and 40 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, 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 solid film (see or the waveguide itself in figs. 1, 3-4 and 7, or mirror 505 in fig. 5) comprising a photoactive material (or redirecting material 120 in fig. 1, 320 in figs. 3-4, or luminophore described in [0039] used in the mirror 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(pentalfluoroethanesulfonyl)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 using bis(trifluoromethanesulfonyl)imide (NTf2) or bis(penta-fluoroethanesulfonyl)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 claims 34 and 35, modified Lunt’896 discloses a solar panel as in claim 33 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.
Regarding claim 40, modified Lunt’896 discloses a luminescent solar concentrator as in claim 32 above, wherein Lunt ‘896 discloses the photovoltaic device is coupled to an edge surface of the substrate (see figs. 5 and 7A).
Claim(s) 33-37 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 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.
Claim(s) 33-39 are rejected under 35 U.S.C. 103 as being unpatentable over Lunt’896 (US 2014/0283896) in view of Wittwer et al. (US 2018/0066137).
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.
Wittwer et al. discloses the counterion (counter-ions) for a methine or polymethine salt/dye to be halide, diphosphate, trifluoroacetate (see [0070]).
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 diphosphate (or dihydrogen phosphate) or trifluroacetate as taught by Wittwer 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 trifluoroacetate of Wittwer 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.
Response to Arguments
Applicant's arguments and Declaration under 37 C.F.R 1.132 have been fully considered but they are not persuasive.
Declaration under 37 C.F.R 1.132 of Richard Royal Lunt III:
Applicant points to a journal article reference to Traverse et al. (“Anions for Near-Infrared Selective Organic Salt Photovotlaics”) and argues that combining Cy heptamethine cation to different anions (or counterions) would obtain different characteristics as shown in tables 1-2.
Applicant then concludes that the anions of tetrakis(pentachlorophenyl)borate, tetrakis(pentaiodophenyl)borate, and tetrakis(pentafluorophenyl)borate disclosed by Aoki, trifluoromethanesulfonate, and acetate disclosed by Fabricus are not functional equivalents of one another.
The examiner replies that tetrakis(pentachlorophenyl)borate, tetrakis(pentaiodophenyl)borate, and tetrakis(pentafluorophenyl)borate, trifluoromethanesulfonate, and acetate are functional equivalents, or functioning as a counterion, as explicitly claimed and disclosed by Applicant (see Applicant’s claims and disclosure).
Furthermore, the counterions in Traverse et al. are disclosed by Lunt et al. (WO 2016/176008), but not claimed by Applicant. As such, Applicant has not shown any unexpected results of the claimed invention over prior art.
Applicant’s arguments:
Applicant argues Aoki discloses electrolyte solution and its liquid electrolyte does not read on the claimed solid solar panel and solid film as claimed.
The examiner replies that Aoki is not relied for using liquid electrolyte, but to use a functional equivalent counterions (or anions) disclosed by Aoki in place of the counterions disclosed by Lunt (WO 2016/176008 and US 2014/0283896). One skilled in the art would find it obvious to do so since Applicant explicitly discloses such counterions are equivalent counterions.
Similarly, Applicant argues Jordan discloses using the salt in dye sensitized solar cell. Applicant then concludes dye sensitized solar cell contains liquids and electrolytes.
The examiner replies that Jordan explicitly teaches the salts are essentially ionic solid resembling IL (see the paragraph bridging columns of page 5032). Not all dye sensitized solar cell contains liquids and electrolytes as concluded and alleged by Applicant.
Applicant points to the Declaration of Richard Royal Lunt III and argues the counterions disclosed by Aoki and Jordan are not equivalent to the counterions disclosed by Lunt (WO 2016/176008 and US 2014/0283896). The examiner replies that Applicant explicitly discloses and originally claimed the counterions are equivalent counterions. Just because Applicant deleted the counterions disclosed by Lunt (WO 2016/176008) from the original claims, that does not mean the counterions are not equivalents. Furthermore, the evidence to Traverse provided by Applicant shows that the counterions disclosed by Lunt (WO 2016/176008), but not claimed.
Showing unexpected results of the materials disclosed by the reference is not showing unexpected results of the claimed invention. See MPEP 716.02.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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THANH-TRUC TRINH
Primary Examiner
Art Unit 1726
/THANH TRUC TRINH/Primary Examiner, Art Unit 1726
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