DETAILED ACTION
STATUS OF THE APPLICATION
Receipt is acknowledged of Applicant’s response to the Requirement for Restriction, filed 6 January 2026, in the matter of Application No. 18/165,465. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending
Claims 11-20 have been withdrawn.
Claims 13-14, 18, and 20 have been amended.
No claims have been cancelled.
Applicants’ election of Group I (claims 1-10), without traverse, is acknowledged.
Election/Restrictions
Applicants’ election without traverse of Group I (claims 1-10) in the reply filed on 6 January 2026 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6 January 2026.
Thus, claims 1-10 are presented and represent all claims currently under consideration.
Priority
Acknowledgment is made of Applicants’ claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the present Application, filed 21 March 2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Applicant claims foreign priority to Application No. KR10-2022-0049103, filed on 20 April 2022.
Foreign Applications:
REPUBLIC OF KOREA 10-2022-0049103 (04/20/2022)
Should Applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement (IDS)
The information disclosure statements submitted on 7 February 2023, 20 September 2023, and 30 March 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the Examiner.
Claim Objections
Claim 3 is objected to because of the following informalities:
In line 3, “…the C2-C16 alkyl moiety…” should read “…the dithio C2-C16 alkyl moiety…”
Claim 4 is objected to because of the following informalities:
In line 2, “…a dithio C2-C10 alkyl moiety and with…” should read “…a dithio C2-C10 alkyl moiety with …”
Appropriate correction is required.
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 3 and 7 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.
Claim 3 recites “…the dithio C2-C16 alkyl moiety…” in line 2. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection. For examination purposes, “…the dithio C2-C16 alkyl moiety…” will be read as “…the dithio C1-C16 alkyl moiety…” in line 2, and “…the C2-C16 alkyl moiety…” will be read as “…the dithio C1-C16 alkyl moiety…” in line 3.
Claim 7 recites “a pentalenyl group” in line 2, “an indacenyl group” in line 3, and “a heptalenyl group” in lines 5-6. However, these functional groups are considered anti-aromatic, and therefore not aromatic (i.e., aryl) as claimed. Claim 7 further recites “a pentaphenyl group” in line 5, however this functional group comprises a substituted phenyl ring and not an unsubstituted aryl group as claimed. Furthermore, although a pentaphenyl groups consists of aromatic phenyl rings, a pentaphenyl group as a whole is non-aromatic as a single conjugated system. These ambiguities render the instant claim indefinite. Further clarification is required. The Examiner notes that adequately addressing these ambiguities would ameliorate this claim rejection.
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 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2020/0231871 A1; IDS of 02-07-2023; hereinafter “Kim”).
Regarding claim 1, Kim teaches a quantum dot surface-modified with one or more compounds, including those represented by Chemical Formula 5:
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wherein R5 is independently a substituted or unsubstituted C1 to C10 alkyl group or a substituted or unsubstituted C6 to C20 aryl group, L10 to L13 are each independently a substituted or unsubstituted C1 to C10 alkylene group, and n5 is independently an integer of 0 to 10 (Kim; Title; Abstract; claim 1; paragraph [0066]).
The genus of Chemical Formula 5 of Kim overlaps significantly with the genus of instant claim 1 as described herein. When L10 is C1-C10 alkyl and L11 is C1-C5 alkyl or when L10 is C1-C5 alkyl and L11 is C1-C10 alkyl, this corresponds to a dithio C3-C16 alkyl moiety which resides within the range of a dithio C1-C16 alkyl moiety for the binding portion as recited in instant claim 1. When R5 is an unsubstituted C6-C20 aryl group or an unsubstituted C1-C10 alkyl group, this resides within the range of an unsubstituted C6-C40 aryl group or overlaps with the range of a C2-C10 alkyl group, respectively, for the end portion as recited in instant claim 1. The L12-(O-L13)n5-O- group as a whole corresponds to a hydrophilic linker including oxygen that connects the binding portion and the end portion, as recited in claim 1. Finally, the binding portion and the linker portion are connected by an ester linkage, in a manner consistent with instant claim 1. Therefore, all of the claimed limitations can predictably be incorporated into the compound as detailed above to predictably arrive at any compound of Chemical Formula 5 with the same utility. A graphical summary of Chemical Formula 5 of Kim mapped to the genus of instant claim 1 is shown below:
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Kim further discloses a non-limiting exemplary species representative of the genus of Chemical Formula 5 (Kim; paragraph [0083]; Chemical Formula C):
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This structure nearly anticipates the genus of instant claim 1 when the binding portion is a dithio C3 alkyl moiety, the -CH2-(OCH2CH2O)- group is a hydrophilic linker connecting the binding portion and the end portion, and wherein the binding portion and the linker portion are connected by an ester linkage. The only difference between the species of Chemical Formula C of Kim and the genus of instant claim 1 is that the species of Kim has an end portion that is an unsubstituted C1 alkyl group (i.e., a methyl group), which resides closely to the range of an unsubstituted C2-C10 alkyl group as claimed. However, since the species of Kim differs from the claimed range by a single alkylene unit, one of ordinary skill in the art could reasonably select a structurally homologous higher carbon alkyl group such as ethyl, propyl or butyl, to arrive at a C2-C4 alkyl group end portion in a manner consistent with both the Chemical Formula 5 genus of Kim (wherein R5 is an unsubstituted C1-C10 alkyl group, as detailed above) and the genus of instant claim 1 (wherein the end portion comprises an unsubstituted C2-C10 alkyl group). MPEP § 2144.09(II) states that “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
The prior art as taught by Kim resides in the technical field of compounds with utility in quantum dot compositions, in a manner consistent with the instantly claimed invention. Thus, the cited prior art is in the same field of endeavor as the claimed invention and is therefore deemed analogous art, as described in MPEP § 2141.01(a). As such, the skilled artisan would have been sufficiently motivated to pursue the known compounds described by the genus of Kim that broadly overlaps with the instantly claimed genus to arrive at compound(s) as described in instant claim 1 with a reasonable expectation of success. Such an endeavor would result in choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, as described in MPEP § 2143(I)(E). Furthermore, since Kim teaches that the genus of Chemical Formula 5, which has significant structural similarity with the instantly claimed genus, falls within the scope of ligands for modifying the surface of quantum dots, the skilled artisan could reasonably predict that all of the compounds possess the same utility. MPEP § 2144.08(II)(A)(4)(c) states that “The closer the physical and/or chemical similarities between the claimed species or subgenus and any exemplary species or subgenus disclosed in the prior art, the greater the expectation that the claimed subject matter will function in an equivalent manner to the genus. See, e.g., Dillon, 919 F.2d at 696, 16 USPQ2d at 1904 (and cases cited therein).” Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Kim.
Regarding claim 2 depending from claim 1, the genus of Kim would permit the skilled artisan to arrive at a binding portion including a dithio C3-C16 alkyl moiety when L10 is C1-C10 alkyl and L11 is C1-C5 alkyl or when L10 is C1-C5 alkyl and L11 is C1-C10 alkyl, as detailed above (Kim; claim 1; paragraph [0066]). All of these embodiments would result in a C3-C16 alkyl moiety that is of linear structure and has at least three carbon atoms. Therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of Kim.
Regarding claim 3 depending from claim 2, the genus of Kim teaches that one thiol group of the dithio C3-C16 alkyl moiety is positioned at the terminal carbon of the C3-C16 alkyl moiety (Kim; claim 1; paragraph [0066]), in a manner consistent with the instant claim.
Regarding claim 4 depending from claim 1, the genus of Kim would permit the skilled artisan to arrive at a dithio C3-C10 alkyl moiety with two to five carbons present between the two thiol groups when L10 is C1-C4 alkyl and L11 is C1-C5 alkyl (Kim; claim 1; paragraph [0066]). Thus, the genus of Kim overlaps with the instantly claimed genus and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of Kim.
Regarding claim 5 depending from claim 1 and claim 6 depending from claim 5, the genus of Kim would permit the skilled artisan to arrive at a hydrophilic linker that comprises one or more ethylene glycol units when n5 is 0 and L12 is C2 alkyl or when n5 is 1 to 10 and L13 is C2 alkyl, respectively. In addition, the genus of Kim would permit the skilled artisan to arrive at a hydrophilic linker that comprises one or more propylene glycol units when n5 is 0 and L12 is C3 alkyl or when n5 is 1 to 10 and L13 is C3 alkyl (Kim; claim 1; paragraph [0066]).
Regarding claim 7 depending from claim 1, the genus of Kim would permit the skilled artisan to arrive at an end portion that significantly overlaps with the genus of the instant claim when R5 is an unsubstituted C6-C20 aryl group (Kim; claim 1; paragraph [0066]). Furthermore, the skilled artisan would recognize that an unsubstituted C6 aryl group is necessarily a phenyl group and an unsubstituted C10 aryl group is necessarily a naphthyl and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of Kim.
Regarding claim 8 depending from claim 1, the genus of Kim teaches wherein R5 is independently a substituted or unsubstituted C1 to C10 alkyl group (Kim; claim 1; paragraph [0066]), such that the skilled artisan could arrive at the C2-C10 unsubstituted alkyl groups recited in the instant claim with a reasonable expectation of success and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of Kim.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2020/0231871 A1; IDS of 02-07-2023; hereinafter “Kim”) as applied to claims 1-8 above, and further evidenced by Susumu et al. (“Enhancing the Stability and Biological Functionalities of Quantum Dots via Compact Multifunctional Ligands”; J. Am Chem. Soc. 2007, 129, 13987-13996; IDS of 02-07-2023, NPL Cite No. 11; hereinafter “Susumu”).
Regarding claims 9-10, claim 1 is rendered obvious over Kim as detailed above.
Kim fails to explicitly teach a compound represented by Formula 1A of instant claim 9, because the genus of Chemical Formula 5 of Kim teaches that the O atom of the ester linkage is proximal to the dithio alkyl binding portion, rather than proximal to the hydrophilic linker, as depicted in Formula 1A of instant claim 9. Kim also fails to explicitly teach the species recited in instant claim 10.
However, Kim does teach a quantum dot surface-modified with one or more compounds, including those represented by Chemical Formula 4:
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wherein R4 is independently a substituted or unsubstituted C1 to C10 alkyl group or a substituted or unsubstituted C6 to C20 aryl group, L7 to L9 are each independently a substituted or unsubstituted C1 to C10 alkylene group, and n4 is independently an integer of 0 to 10 (Kim; Title; Abstract; claim 1; paragraph [0066]).
Kim further teaches a genus represented by Chemical Formula D:
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wherein m1 is an integer of 0 to 10 (Kim; paragraph [0082]). In addition, Kim teaches a species represented by Chemical Formula G (Kim; paragraph [0084]):
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The genus represented by Chemical Formula 4 and Chemical Formula D of Kim and the species represented by Chemical Formula G of Kim correspond to Formula 1A of instant claim 9, with the exception of comprising a dithiol C3-C10 alkyl moiety as represented by component A1 of Formula 1A.
In spite of these differences in the genus and species of Kim detailed above, the teachings of Kim show that all of these compounds possess the same utility as surface-modifying ligands for quantum dot compositions. Thus, the skilled artisan would recognize based on the teachings of Kim that both monothiol and dithiol groups, as well as both types of ester connections are interchangeable in structurally analogous compounds with shared utility (i.e., monothiols with one type of ester connection possess the same utility as dithiols with the opposite ester connection).
Furthermore, Susumu explicitly teaches compounds having the claimed ester linkage which have the same utility as those claimed, which further supports the arguments based on the teachings of Kim (Susumu; page 13988, Col. 1, paragraph 2 and Scheme 1; page 13991, Figure 1, compound 2):
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The skilled artisan would recognize that the bidentate thiol group of Kim represents a dithio C7 alkyl moiety and an ester linkage consistent with component A1 of Formula 1A of instant claim 9 and with species 1-7 and 9-10 of instant claim 10.
The prior art as taught by Kim and Susumu reside in the closely overlapping technical field of compounds for quantum dot compositions that comprise thiol groups, an ester linkage, a hydrophilic linker comprising ethylene glycol units, and end groups whose structure can be varied, in a manner consistent with the instantly claimed invention. Thus, the cited prior art is in the same field of endeavor as the claimed invention and is therefore deemed analogous art, as described in MPEP § 2141.01(a). As such, the skilled artisan would have been sufficiently motivated to arrive at compounds represented by Formula 1A of instant claim 9 based on the teachings of Kim as evidenced by Susumu. Furthermore, the skilled artisan could arrive at species 1 of instant claim 10 by substituting the mono-thiol alkyl group of Kim’s Chemical Formula G with a dithio C7 alkyl group of Kim’s Chemical Formula 5 as evidenced by Susumu who teaches the precise dithio C7 alkyl group within species 1-7 and 9-10 of instant claim 10. In addition, the skilled artisan could arrive at species 2 and 3 of instant claim 10 by substituting the mono-thiol alkyl group of Kim’s Chemical Formula D when m1 is 2 or 3, respectively, with a dithio C7 alkyl group of Kim’s Chemical Formula 5 as evidenced by Susumu who teaches the precise dithio C7 alkyl group, as detailed above. Such an endeavor would endeavor would result in choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, as described in MPEP § 2143(I)(E).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the compounds of Formula 1A of instant claim 9 and the species 1-3 of instant claim 10 based on the teachings of Kim as evidenced by Susumu.
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success of arriving at the instantly claimed compounds. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/637,269.
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claim 1, claim 8 of copending Application No. 18/637,269 teaches a quantum dot surface-modified with one or more compounds, including those represented by Chemical Formula 8:
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wherein R15 is independently a substituted or unsubstituted C1 to C10 alkyl group or a substituted or unsubstituted C6 to C20 aryl group, L20 to L23 are each independently a substituted or unsubstituted C1 to C10 alkylene group, and n5 is independently an integer of 0 to 10.
The genus of Chemical Formula 8 of copending Application No. 18/637,269 overlaps significantly with the genus of instant claim 1 as described herein. When L20 is C1-C10 alkyl and L21 is C1-C5 alkyl or when L20 is C1-C5 alkyl and L21 is C1-C10 alkyl, this corresponds to a dithio C3-C16 alkyl moiety which resides within the range of a dithio C1-C16 alkyl moiety for the binding portion as recited in instant claim 1. When R15 is an unsubstituted C6-C20 aryl group or an unsubstituted C1-C10 alkyl group, this resides within the range of an unsubstituted C6-C40 aryl group or overlaps with the range of a C2-C10 alkyl group, respectively, for the end portion as recited in instant claim 1. The L22-(O-L23)n5-O- group as a whole corresponds to a hydrophilic linker including oxygen that connects the binding portion and the end portion, as recited in claim 1. Finally, the binding portion and the linker portion are connected by an ester linkage, in a manner consistent with instant claim 1. Therefore, all of the claimed limitations can predictably be incorporated into the compound as detailed above to predictably arrive at any compound of Chemical Formula 8 with the same utility. A graphical summary of Chemical Formula 8 of copending Application No. 18/637,269 mapped to the genus of instant claim 1 is shown below:
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The teachings of copending Application No. 18/637,269 reside in the technical field of compounds with utility in quantum dot compositions, in a manner consistent with the instantly claimed invention. Thus, copending Application No. 18/637,269 is in the same field of endeavor as the claimed invention and is therefore deemed analogous art, as described in MPEP § 2141.01(a). As such, the skilled artisan would have been sufficiently motivated to pursue the known compounds described by the genus of copending Application No. 18/637,269 that broadly overlaps with the instantly claimed genus to arrive at compound(s) as described in instant claim 1 with a reasonable expectation of success. Such an endeavor would result in choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, as described in MPEP § 2143(I)(E). Furthermore, since copending Application No. 18/637,269 teaches that the genus of Chemical Formula 8, which has significant structural similarity with the instantly claimed genus, falls within the scope of ligands for modifying the surface of quantum dots, the skilled artisan could reasonably predict that all of the compounds possess the same utility. MPEP § 2144.08(II)(A)(4)(c) states that “The closer the physical and/or chemical similarities between the claimed species or subgenus and any exemplary species or subgenus disclosed in the prior art, the greater the expectation that the claimed subject matter will function in an equivalent manner to the genus. See, e.g., Dillon, 919 F.2d at 696, 16 USPQ2d at 1904 (and cases cited therein).” Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of copending Application No. 18/637,269.
Regarding instant claim 2, the genus of copending Application No. 18/637,269 would permit the skilled artisan to arrive at a binding portion including a dithio C3-C16 alkyl moiety when L20 is C1-C10 alkyl and L21 is C1-C5 alkyl or when L20 is C1-C5 alkyl and L21 is C1-C10 alkyl, as detailed above. All of these embodiments would result in a C3-C16 alkyl moiety that is of linear structure and has at least three carbon atoms. Therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of copending Application No. 18/637,269.
Regarding instant claim 3, the genus of copending Application No. 18/637,269 teaches that one thiol group of the dithio C3-C16 alkyl moiety is positioned at the terminal carbon of the C3-C16 alkyl moiety, in a manner consistent with the instant claim.
Regarding instant claim 4, the genus of copending Application No. 18/637,269 would permit the skilled artisan to arrive at a dithio C3-C10 alkyl moiety with two to five carbons present between the two thiol groups when L20 is C1-C4 alkyl and L21 is C1-C5 alkyl. Thus, the genus of copending Application No. 18/637,269 overlaps significantly with the instantly claimed genus and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of copending Application No. 18/637,269.
Regarding instant claims 5-6, the genus of copending Application No. 18/637,269 would permit the skilled artisan to arrive at a hydrophilic linker that comprises one or more ethylene glycol units when n5 is 0 and L22 is C2 alkyl or when n5 is 1 to 10 and L23 is C2 alkyl, respectively. In addition, the genus of copending Application No. 18/637,269 would permit the skilled artisan to arrive at a hydrophilic linker that comprises one or more propylene glycol units when n5 is 0 and L22 is C3 alkyl or when n5 is 1 to 10 and L23 is C3 alkyl.
Regarding instant claim 7, the genus of copending Application No. 18/637,269 would permit the skilled artisan to arrive at an end portion that significantly overlaps with the genus of the instant claim when R15 is an unsubstituted C6-C20 aryl. Furthermore, the skilled artisan would recognize that an unsubstituted C6 aryl group is necessarily a phenyl group and an unsubstituted C10 aryl group is necessarily a naphthyl and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of copending Application No. 18/637,269.
Regarding instant claim 8, the genus of copending Application No. 18/637,269 teaches wherein R15 is independently a substituted or unsubstituted C1 to C10 alkyl group, such that the skilled artisan could arrive at the C2-C10 unsubstituted alkyl groups recited in the instant claim with a reasonable expectation of success and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of copending Application No. 18/637,269.
Regarding instant claim 9, the genus of Chemical Formula 8 of copending Application No. 18/637,269 teaches every limitation of Formula 1A of instant claim 9, with the exception of the O atom of the ester linkage being proximal to the dithio alkyl binding portion, rather than proximal to the hydrophilic linker, as depicted in Formula 1A of instant claim 9.
However, claim 8 of copending Application No. 18/637,269 further teaches a quantum dot surface-modified with one or more compounds, including those represented by Chemical Formula 7:
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wherein R14 is independently a substituted or unsubstituted C1 to C10 alkyl group or a substituted or unsubstituted C6 to C20 aryl group, L17 to L19 are each independently a substituted or unsubstituted C1 to C10 alkylene group, and n4 is independently an integer of 0 to 10.
In spite of these differences in the genus of Chemical Formulae 7-8 detailed above, the teachings of copending Application No. 18/637,269 show that all of these compounds possess the same utility as surface-modifying ligands for quantum dot compositions. Thus, the skilled artisan would recognize based on the teachings of copending Application No. 18/637,269 that both monothiol and dithiol groups, as well as both types of ester connections are interchangeable in structurally analogous compounds with shared utility (i.e., monothiols with one type of ester connection possess the same utility as dithiols with the opposite ester connection). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the compounds of Formula 1A of instant claim 9 based on the teachings of copending Application No. 18/637,269.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 8 of copending Application No. 19/027,901.
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claim 1, claim 2 of copending Application No. 19/027,901 teaches a quantum dot complex comprising a first ligand represented by Formula 1:
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The genus of Formula 1 of copending Application No. 19/027,901 overlaps significantly with the genus of instant claim 1 when a2 is 0 to 3 and a3 is 1 or 2 (to arrive at a binding portion including a dithio C4-C8 alkyl moiety, which resides within the range of the dithio C1-C16 alkyl moiety recited in instant claim 1); R1 is a C2 alkyl group (to arrive at an end portion that resides within the range of an unsubstituted C2-C10 alkyl group, as recited in instant claim 1); a1 is 2 to 4 and R2 is hydrogen or a C1-C2 alkyl group that represents a hydrophilic linker including oxygen that connects the binding portion and the end portion; and wherein the binding portion and the linker portion is connected by an ester group. Therefore, all of the claimed limitations can predictably be incorporated into the compound as detailed above to predictably arrive at any compound of Formula 1 with the same utility. A graphical summary of Formula 1 of copending Application No. 19/027,901 mapped to the genus of instant claim 1 is shown below:
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The teachings of copending Application No. 19/027,901 reside in the technical field of compounds with utility in quantum dot compositions, in a manner consistent with the instantly claimed invention. Thus, copending Application No. 19/027,901 is in the same field of endeavor as the claimed invention and is therefore deemed analogous art, as described in MPEP § 2141.01(a). As such, the skilled artisan would have been sufficiently motivated to pursue the known compounds described by the genus of copending Application No. 19/027,901 that broadly overlaps with the instantly claimed genus to arrive at compound(s) as described in instant claim 1 with a reasonable expectation of success. Such an endeavor would result in choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, as described in MPEP § 2143(I)(E). Furthermore, since copending Application No. 19/027,901 teaches that the genus of Formula 1, which has significant structural similarity with the instantly claimed genus, falls within the scope of ligands for modifying the surface of quantum dots, the skilled artisan could reasonably predict that all of the compounds possess the same utility. MPEP § 2144.08(II)(A)(4)(c) states that “The closer the physical and/or chemical similarities between the claimed species or subgenus and any exemplary species or subgenus disclosed in the prior art, the greater the expectation that the claimed subject matter will function in an equivalent manner to the genus. See, e.g., Dillon, 919 F.2d at 696, 16 USPQ2d at 1904 (and cases cited therein).” Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of copending Application No. 19/027,901.
Regarding claim 2 depending from claim 1, the genus of copending Application No. 19/027,901 would permit the skilled artisan to arrive at a binding portion including a dithio C4-C8 alkyl moiety when a2 is 0 to 3 and a3 is 1 or 2. All of these embodiments would result in a C4-C8 alkyl moiety that is of linear structure and has at least three carbon atoms. Therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of copending Application No. 19/027,901.
Regarding claim 3 depending from claim 2, the genus of copending Application No. 19/027,901 teaches that one thiol group of the dithio C4-C8 alkyl moiety is positioned at the terminal carbon, in a manner consistent with the instant claim.
Regarding claim 4 depending from claim 1, the genus of copending Application No. 19/027,901 would permit the skilled artisan to arrive at a dithio C4-C8 alkyl moiety with two to five carbons present between the two thiol groups when a2 is 0 to 3 and a3 is 1 or 2. Thus, the genus of copending Application No. 19/027,901 overlaps significantly with the instantly claimed genus and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of copending Application No. 19/027,901.
Regarding claim 5 depending from claim 1 and claim 6 depending from claim 5, the genus of copending Application No. 19/027,901 would permit the skilled artisan to arrive at a hydrophilic linker that comprises one or more ethylene glycol units when a1 is 2 to 4 and R2 is hydrogen. In addition, the genus of copending Application No. 19/027,901 would permit the skilled artisan to arrive at a hydrophilic linker that comprises one or more propylene glycol units when a1 is 2 to 4 and R2 is a C1 alkyl group. The range of 2 to 4 ethylene or propylene glycol units resides within the range recited in instant claim 6.
Regarding claim 8 depending from claim 1, the genus of copending Application No. 19/027,901 teaches wherein R1 is a C1-C2 alkyl group, such that the skilled artisan could arrive at an ethyl group as recited in the instant claim with a reasonable expectation of success and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of copending Application No. 19/027,901.
Regarding instant claim 9, the genus of Formula 1 of claim 2 of copending Application No. 19/027,901 overlaps significantly with the genus of Formula 1A of instant claim 9 when a2 is 0 to 3 and a3 is 1 or 2 (to arrive at a binding portion including a dithio C4-C8 alkyl moiety, which resides within the range recited in component A1 of Formula 1A of instant claim 9); a1 is 2 to 4 and R2 is hydrogen or a C1 alkyl group (to arrive at a hydrophilic linker comprising 2 to 4 ethylene glycol units or 2 to 4 propylene glycol units, which resides within the range recited in component A2 of Formula 1A of instant claim 9); and when R1 is a C2 alkyl group (to arrive at a moiety that resides close to the range recited in component A3 of Formula 1A of instant claim 9).
Claim 2 of copending Application No. 19/027,901 fails to explicitly teach wherein A3 is an unsubstituted C3-C10 alkyl group, an unsubstituted C6-C20 aryl group, or an unsubstituted C7-C30 aryl alkyl group, as recited in instant claim 9.
However, since copending Application No. 19/027,901 teaches wherein R1 is a C2 alkyl group (i.e., an ethyl group), which differs from the claimed range of C3-C10 alkyl group by a single alkylene unit, one of ordinary skill in the art could reasonably select a structurally homologous higher carbon alkyl group such as propyl or butyl, to arrive at a C3 or C4 alkyl group in a manner consistent with component A3 of Formula 1A of instant claim 9, with a presumed expectation of success. MPEP § 2144.09(II) states that “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of copending Application No. 19/027,901.
Regarding instant claim 10, claim 8 teaches a quantum dot ligand of the following structure:
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This compound is structurally similar to compound 4 recited in instant claim 10, with the exception of the end group moiety comprising a methyl group instead of a butyl group as recited in instant claim 10.
However, since the compound of claim 8 of copending Application No. 19/027,901 teaches a C1 alkyl group (i.e., a methyl group), which differs from the claimed range of C4 alkyl group by three alkylene units, one of ordinary skill in the art could reasonably select a structurally homologous higher carbon alkyl group such as butyl, to arrive at the species 4 of instant claim 10, with a presumed expectation of success. MPEP § 2144.09(II) states that “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of copending Application No. 19/027,901.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,866,624 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claim 1, claim 4 of U.S. Patent No. 11,866,624 B2 teaches a quantum dot surface-modified with one or more compounds, including those represented by Chemical Formula 5:
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wherein R5 is independently a substituted or unsubstituted C1 to C10 alkyl group or a substituted or unsubstituted C6 to C20 aryl group, L10 to L13 are each independently a substituted or unsubstituted C1 to C10 alkylene group, and n5 is independently an integer of 0 to 10.
The genus of Chemical Formula 5 of U.S. Patent No. 11,866,624 B2 overlaps significantly with the genus of instant claim 1 as described herein. When L10 is C1-C10 alkyl and L11 is C1-C5 alkyl or when L10 is C1-C5 alkyl and L11 is C1-C10 alkyl, this corresponds to a dithio C3-C16 alkyl moiety which resides within the range of a dithio C1-C16 alkyl moiety for the binding portion as recited in instant claim 1. When R5 is an unsubstituted C6-C20 aryl group or an unsubstituted C1-C10 alkyl group, this resides within the range of an unsubstituted C6-C40 aryl group or overlaps with the range of a C2-C10 alkyl group, respectively, for the end portion as recited in instant claim 1. The L12-(O-L13)n5-O- group as a whole corresponds to a hydrophilic linker including oxygen that connects the binding portion and the end portion, as recited in claim 1. Finally, the binding portion and the linker portion are connected by an ester linkage, in a manner consistent with instant claim 1. Therefore, all of the claimed limitations can predictably be incorporated into the compound as detailed above to predictably arrive at any compound of Chemical Formula 5 with the same utility. A graphical summary of Chemical Formula 5 of U.S. Patent No. 11,866,624 B2 mapped to the genus of instant claim 1 is shown below:
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The teachings of U.S. Patent No. 11,866,624 B2 reside in the technical field of compounds with utility in quantum dot compositions, in a manner consistent with the instantly claimed invention. Thus, U.S. Patent No. 11,866,624 B2 is in the same field of endeavor as the claimed invention and is therefore deemed analogous art, as described in MPEP § 2141.01(a). As such, the skilled artisan would have been sufficiently motivated to pursue the known compounds described by the genus of U.S. Patent No. 11,866,624 B2 that broadly overlaps with the instantly claimed genus to arrive at compound(s) as described in instant claim 1 with a reasonable expectation of success. Such an endeavor would result in choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, as described in MPEP § 2143(I)(E). Furthermore, since U.S. Patent No. 11,866,624 B2 teaches that the genus of Chemical Formula 5, which has significant structural similarity with the instantly claimed genus, falls within the scope of ligands for modifying the surface of quantum dots, the skilled artisan could reasonably predict that all of the compounds possess the same utility. MPEP § 2144.08(II)(A)(4)(c) states that “The closer the physical and/or chemical similarities between the claimed species or subgenus and any exemplary species or subgenus disclosed in the prior art, the greater the expectation that the claimed subject matter will function in an equivalent manner to the genus. See, e.g., Dillon, 919 F.2d at 696, 16 USPQ2d at 1904 (and cases cited therein).” Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of U.S. Patent No. 11,866,624 B2.
Regarding instant claim 2, the genus of U.S. Patent No. 11,866,624 B2 would permit the skilled artisan to arrive at a binding portion including a dithio C3-C16 alkyl moiety when L10 is C1-C10 alkyl and L11 is C1-C5 alkyl or when L10 is C1-C5 alkyl and L11 is C1-C10 alkyl, as detailed above. All of these embodiments would result in a C3-C16 alkyl moiety that is of linear structure and has at least three carbon atoms. Therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of U.S. Patent No. 11,866,624 B2.
Regarding instant claim 3, the genus of U.S. Patent No. 11,866,624 B2 teaches that one thiol group of the dithio C3-C16 alkyl moiety is positioned at the terminal carbon of the C3-C16 alkyl moiety, in a manner consistent with the instant claim.
Regarding instant claim 4, the genus of U.S. Patent No. 11,866,624 B2 would permit the skilled artisan to arrive at a dithio C3-C10 alkyl moiety with two to five carbons present between the two thiol groups when L10 is C1-C4 alkyl and L11 is C1-C5 alkyl. Thus, the genus of U.S. Patent No. 11,866,624 B2 overlaps with the instantly claimed genus and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of U.S. Patent No. 11,866,624 B2.
Regarding instant claims 5-6, the genus of U.S. Patent No. 11,866,624 B2 would permit the skilled artisan to arrive at a hydrophilic linker that comprises one or more ethylene glycol units when n5 is 0 and L12 is C2 alkyl or when n5 is 1 to 10 and L13 is C2 alkyl, respectively. In addition, the genus of U.S. Patent No. 11,866,624 B2 would permit the skilled artisan to arrive at a hydrophilic linker that comprises one or more propylene glycol units when n5 is 0 and L12 is C3 alkyl or when n5 is 1 to 10 and L13 is C3 alkyl.
Regarding instant claim 7, the genus of U.S. Patent No. 11,866,624 B2 would permit the skilled artisan to arrive at an end portion that significantly overlaps with the genus of the instant claim when R5 is an unsubstituted C6-C20 aryl group. Furthermore, the skilled artisan would recognize that an unsubstituted C6 aryl group is necessarily a phenyl group and an unsubstituted C10 aryl group is necessarily a naphthyl and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of U.S. Patent No. 11,866,624 B2.
Regarding instant claim 8, the genus of U.S. Patent No. 11,866,624 B2 teaches wherein R5 is independently a substituted or unsubstituted C1 to C10 alkyl group, such that the skilled artisan could arrive at the C2-C10 unsubstituted alkyl groups recited in the instant claim with a reasonable expectation of success and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of U.S. Patent No. 11,866,624 B2.
Regarding instant claim 9, the genus of Chemical Formula 5 of U.S. Patent No. 11,866,624 B2 teaches every limitation of Formula 1A of instant claim 9, with the exception of the O atom of the ester linkage being proximal to the dithio alkyl binding portion, rather than proximal to the hydrophilic linker, as depicted in Formula 1A of instant claim 9.
However, claim 4 of U.S. Patent No. 11,866,624 B2 further teaches a quantum dot surface-modified with one or more compounds, including those represented by Chemical Formula 4:
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wherein R4 is independently a substituted or unsubstituted C1 to C10 alkyl group or a substituted or unsubstituted C6 to C20 aryl group, L7 to L9 are each independently a substituted or unsubstituted C1 to C10 alkylene group, and n4 is independently an integer of 0 to 10.
In spite of these differences in the genus of Chemical Formulae 4-5 detailed above, the teachings of U.S. Patent No. 11,866,624 B2 show that all of these compounds possess the same utility as surface-modifying ligands for quantum dot compositions. Thus, the skilled artisan would recognize based on the teachings of U.S. Patent No. 11,866,624 B2 that both monothiol and dithiol groups, as well as both types of ester connections are interchangeable in structurally analogous compounds with shared utility (i.e., monothiols with one type of ester connection possess the same utility as dithiols with the opposite ester connection). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the compounds of Formula 1A of instant claim 9 based on the teachings of U.S. Patent No. 11,866,624 B2.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,331,234 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claims 1-9, Chemical Formulae 4-5 of claim 1 of U.S. Patent No. 12,331,234 B2 renders obvious these instant claims in a manner consistent with the nonstatutory double patenting rejections of claims 1-9 over claim 4 of U.S. Patent No. 11,866,624 B2, and these rejections are incorporated as detailed above.
Conclusion
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/D.R./Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
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