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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed 1 July 2026, with respect to rejections of claims 1, 4, and 10 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. Applicant has amended the claims such that they overcome the rejections of record or in the case claim 1 clarified the amount of time and amended the claim language. Accordingly, the 35 U.S.C. § 112(b) rejections of claims 1, 4, and 10 have been withdrawn.
Applicant's arguments filed 1 July 2026 have been fully considered but they are not persuasive.
Applicant has amended claims 7, 15, and 16 but it is still unclear as to whether there is a process step requiring the CQDs to be dispersed or whether this is the property when the CQDs are dispersed in the claimed amount. Based on the claim language and dependency it appears to be a property of what would happen if it was added to a fuel in the recited amount. Applicants arguments that greenish yellow is often described as a shade of yellow heavily tinged with green is not persuasive in overcome the 112(b) rejection as there is no clear wavelength spectrum recited or taught that would lead one having ordinary skill in the art to know what is being claimed. Further, “heavily tinged” in the arguments does not provide clarity as to an amount or final color.
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.
Claims 7 and 14-16 are 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.
As to Claim 7: It is unclear if the instant claim language is a hypothetical drawn to a property of if the claim is positively reciting a step wherein CQDs are added in the recited amount. For the purposes of further consideration, the claim is considered to require adding the CQDs to a non-polar hydrocarbon-based fuel in an amount ranging from 10 to 200 ppm.
As to Claim 14: The claim recites the limitation "greenish yellow color". It is unclear what colors would be
considered greenish yellow as compared to yellow or green as "greenish yellow" is a relative color description.
As to Claim 15: It is unclear if the instant claim language is drawn to a property that would be present
under the recited conditions or if the claim is drawn to a positive step of adding 2-100 ppm of CQDs to a non-polar
hydrocarbon-based fuel. For the purposes of further consideration, the claim is considered to require adding the
CQDs to a non-polar hydrocarbon-based fuel in an amount ranging from 2 to 100 ppm
As to Claim 15: The claim recites the limitation "greenish yellow light". It is unclear what colors would be
considered greenish yellow as compared to yellow or green as "greenish yellow" is a relative color description.
As to Claim 16: It is unclear if the instant claim language is drawn to a property that would be present
under the recited conditions or if the claim is drawn to a positive step of adding 10-50 ppm of CQDs to a non-polar
hydrocarbon-based fuel. For the purposes of further consideration, the claim is considered to require adding the
CQDs to a non-polar hydrocarbon-based fuel in an amount ranging from 10 to 50 ppm.
As to Claim 16: The claim recites the limitation "greenish yellow light". It is unclear what colors would be
considered greenish yellow as compared to yellow or green as "greenish yellow" is a relative color description.
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 1-10 and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Isaji et al. (US Patent #11,066,599, hereinafter referred to as “Isaji”).
As to Claims 1, 3, 4, and 9: Isagi teaches a method for producing carbon based light emitting material comprising mioxing and heating a starting material comprising ascorbic acid and a solvent (Abstract). Isaji further teaches that the solvent can be oleyl amine (Col. 3, Lines 45-50), the heating can be at 200°C (Col. 4, Lines 15-25), and the mixing time can be 12-30 hours (Col. 4, Lines 37-45).
As to Claim 2: Isagi teaches the method of claim 1 (supra).
Isagi does not expressly teach that the particles have a size from 2-7 nm. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Isagi. However, Isagi teaches a process using the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. According to the original specification, there are no additional steps or ingredients added which result in the recited property. Therefore, the claimed effects and physical properties, i.e. that the particles have a size from 2-7 nm, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
As to Claims 5 and 10: Isagi teaches the method of claim 1 (supra).
Isagi does not expressly teach that the particles are stable upon adding to non-polar hydrocarbon-based fuels. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Isagi. However, Isagi teaches a process using the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. According to the original specification, there are no additional steps or ingredients added which result in the recited property. Therefore, the claimed effects and physical properties, i.e. that the particles are stable upon adding to non-polar hydrocarbon-based fuels, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
As to Claim 6: Isagi teaches the method of claim 5 (supra).
Isagi does not expressly teach that adding the CQDs to non-polar hydrocarbon based fuels reduces wear scar diameter by about 30%. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Isagi. However, Isagi teaches a process using the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. According to the original specification, there are no additional steps or ingredients added which result in the recited property. Therefore, the claimed effects and physical properties, i.e. that adding the CQDs to non-polar hydrocarbon based fuels reduces wear scar diameter by about 30%, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
As to Claim 7: Isagi teaches the method of claim 5 (supra).
Isagi does not expressly teach when the CQDs are added to a non-polar hydrocarbon-based fuels in an amount ranging from 10 to 200 ppm it improves the lubricity. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Isagi. However, Isagi teaches a process using the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. According to the original specification, there are no additional steps or ingredients added which result in the recited property. Therefore, the claimed effects and physical properties, i.e. when the CQDs are added to a non-polar hydrocarbon-based fuels in an amount ranging from 10 to 200 ppm it improves the lubricity, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
As to Claim 8: Isagi teaches the method of claim 1 (supra).
Isagi does not expressly teach that the particles are stable upon adding to synthetic and mineral base oils. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Isagi. However, Isagi teaches a process using the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. According to the original specification, there are no additional steps or ingredients added which result in the recited property. Therefore, the claimed effects and physical properties, i.e. that the particles are stable upon adding to synthetic and mineral base oils, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
As to Claim 15: Isagi teaches the method of claim 5 (supra).
Isagi does not expressly teach that a non-polar hydrocarbon0based fuel emits a greenish yellow light when irradiated with a laser at a wavelength 450-500 nm upon addition of 2-100 ppm CQDs. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Isagi. However, Isagi teaches a process using the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. According to the original specification, there are no additional steps or ingredients added which result in the recited property. Therefore, the claimed effects and physical properties, i.e. that a non-polar hydrocarbon0based fuel emits a greenish yellow light when irradiated with a laser at a wavelength 450-500 nm upon addition of 2-100 ppm CQDs, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
As to Claim 16: Isagi teaches the method of claim 5 (supra).
Isagi does not expressly teach that a non-polar hydrocarbon-based fuel emits a greenish yellow light when irradiated with a laser at a wavelength 480 nm upon addition of 10-50 ppm CQDs. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Isagi. However, Isagi teaches a process using the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. According to the original specification, there are no additional steps or ingredients added which result in the recited property. Therefore, the claimed effects and physical properties, i.e. that a non-polar hydrocarbon-based fuel emits a greenish yellow light when irradiated with a laser at a wavelength 480 nm upon addition of 10-50 ppm CQDs, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
As to Claim 17: Isagi teaches the method of claim 5 (supra).
Isagi does not expressly teach that a fluorescence intensity of the CQDs dispersed in a non-polar hydrocarbon-based fuel increases with an increasing amount of the CQDs. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Isagi. However, Isagi teaches a process using the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. According to the original specification, there are no additional steps or ingredients added which result in the recited property. Therefore, the claimed effects and physical properties, i.e. that a fluorescence intensity of the CQDs dispersed in a non-polar hydrocarbon-based fuel increases with an increasing amount of the CQDs, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
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.
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Isaji et al. (US Patent #11,066,599, hereinafter referred to as “Isaji”) in view of Shtein et al. (US 2020/0072753, hereinafter referred to as “Shtein”).
As to Claims 11 and 12: Isaji teaches the process of claim 1 (see above).
Isaji does not that 10-200 ppm of the CQDs are added to a fuel sample and irradiated.
However, Shtein teaches that 30-200 ppm of a carbon nanostructure [0037] can be added to synthetic motor oil [0076] and exciting the fuel at 485 nm [0040]. Isaji and Shtein are analogous art in that they are from the same field of endeavor, namely carbon nanostructures. At the time of filing it would have been obvious to add the steps of bulk liquid tagging, identifying, and authenticating of Shtein with the process of Isaju because Shtein teaches tha this helps to prevent adulteration, counterfeiting, tampering, unauthorized distribution and sale of working bulk liquids [0002].
As to Claim 13: Isaji and Shtein render obvious the process of claim 11 (supra). Shtein teaches that the additized fuel has a different color emission [0010].
As to Claim 14: Isaji and Shtein render obvious the process of claim 11 (supra). Shtein further teaches that the emission is higher than the excitation wavelength and 485 exitation can lead to 525 emission which can be considered greenish yellow [0040].
Conclusion
Applicant's amendment necessitated the new ground(s) 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Andrew J. Oyer/ Primary Examiner, Art Unit 1767
Prosecution Insights