DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/12/2026 has been entered.
3. Claims 1-10, 15-19, 21-24 are pending. Claims 1-10, 22-24 are under examination on the merits. Clam 1,15 are amended. Claims 12, 20 are cancelled. Claims 21-24 are newly added. Claims 11, 13-14 are previously cancelled. Claims 15-19, 21 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1-10, 22-24 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 102/103
6. 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.
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.
7. Claims 1-2, 4, 7-10, 22-24 are rejected under 35 U.S.C. 102 (a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Peng et al. (Synthesis and photolumine- scence of ZnS:Cu nanoparticles, Optical Materials 29, 2006, 313-317, hereinafter “Peng”).
Regarding claims 1,22-24: Peng discloses the room-temperature photoluminescence (PL) of copper (b) doped zinc sulfide (a) (ZnS:Cu) nanoparticles (Page 313, Abstract, line 1) of about 3.5 nm (Page 317, left Col., Conclusions, lines 102). Peng discloses the concentrations of copper ions are adjusted by controlling the quantity of copper acetate in the above mixture, varying from 0.5% to 2% (in molar ratio of copper ions to zinc ions). Peng discloses α-methacrylic acid (MA) (c) is also added to the reaction medium as the capping agent (Page 314, left Col., Experimental, 1st para, lines 6-10) in order to acts as stabilizer to prevent ZnS:Cu nanoparticles from clumping (aggregating) and controlling their size, shape, and properties (Page 315, left Col., Results and discussion, 1st para to Page 371, left Col., 1st para, lines 1-5). Peng is silent regarding the photochromic composition is characterized in that solid-state reversible chromatism takes place on a time scale of about 20 seconds or less.
Pertaining specifically to claims 1, 24, since Peng discloses the identical or substantially identical composition comprising the limitation (a) to (c) as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. reversible chromatism, would inherently/ implicitly be achieved by Peng (i.e., the photochromic composition is characterized in that solid-state reversible chromatism takes place on a time scale of about 20 seconds or less). If there is any difference between the product of Peng and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where applicant claims a composition in terms of a function, property or characteristic
and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
It is submitted that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Regarding claims 2,4: Peng discloses the composition, wherein said semiconductor nanoparticles are selected from the group consisting of two- element nanoparticles such as ZnS (Page 3214, left Col., 2. Experimental, lines 1-2; Fig. 1).
Regarding claim 7: Pen discloses the composition, wherein said transition-metal dopant particles contain a transition metal selected from the group consisting of Cu (Page 3214, left Col., 2. Experimental, lines 1-2; Fig. 1).
Regarding claims 8-10: ‘085 discloses the composition, wherein said organic ligands contain at least one carbon-carbon double bond, and containing 12 or fewer carbon atoms such as α-methacrylic acid (MA) as the capping agent (Page 314, left Col., Experimental, 1st para, lines 6-10).
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 3, 6 are rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (Synthesis and photoluminescence of ZnS:Cu nanoparticles, Optical Materials 29, 2006, 313-317, hereinafter “Peng”) in view of Seo et al. (US Pub. No. 2022/0006036 A1, hereinafter “Seo”).
Regarding claims 3,6: The disclosure of Peng is adequately set forth in paragraph 7 above and is incorporated herein by reference. Peng does not expressly teach said single-element nanoparticles are selected from the group consisting of Si, Ge, and combinations thereof, and said four-element nanoparticles are selected from the group consisting of copper indium gallium selenide, copper zinc tin sulfide, and combinations thereof.
However, Seo teaches a light emitting device 10 comprising a first electrode 11 and a second electrode 15 each having a surface opposite the other, a light emitting layer 13 including quantum dots, and disposed between the first electrode 11 and the second electrode 15, a hole auxiliary layer 12 between the first electrode 11 and the light emitting layer 13, and an electron auxiliary layer 14 disposed between the second electrode 15 and the light emitting layer 13 (Page 3, [0070], Fig. 1). Seo teaches the light layer 13 comprises the Group IV compound as single-element nanoparticles of (Page 4, [0077]) may be a single substance such as Si, Ge, or a mixture thereof; or a binary element compound such as SiC, SiGe, or a mixture thereof (Page 4, [0078]; the Group II-VI compound may be a binary element compound such as CdSe, CdTe, ZnS, ZnSe, ZnTe or a mixture thereof, a ternary element compound such as CdSeS, CdSeTe, CdSTe, ZnSeS, and examples of the Group I-II-IV-VI compound as a quaternary element compound may include CuInGaSe, CuZnSnSe or CuZnSnS (Page 4, [0078]), wherein the quantum dots may include for example an organic ligand having a hydrophobic moiety. The organic ligand moiety may be bound to a surface of the quantum dots. The organic ligand may include RCOOH (Page 5, [0088]) with benefit of providing the quantum dots having a controlled absorption/photoluminescence wavelength by adjusting a composition and a size of the quantum dots (Page 5, [0083], a high quantum efficiency, and a relatively narrow photolumine- scence wavelength spectrum (Page 5, [0084].
In an analogous art of the composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the semiconductor nanoparticles by Peng, so as to include a single or a binary or a ternary or quaternary element compound as taught by Seo, and would have been motivated to do so with reasonable expectation that this would result in providing
the quantum dots having a controlled absorption/photoluminescence wavelength by adjusting a composition and a size of the quantum dots (Page 5, [0083], a high quantum efficiency, and a relatively narrow photoluminescence wavelength spectrum as suggested by ‘036 (Page 5, [0084].
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two quantum dots) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
10. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (Synthesis and photoluminescence of ZnS:Cu nanoparticles, Optical Materials 29, 2006, 313-317, hereinafter “Peng”) in view of Ren et al. (US Pub. No. 2011/0175030 A1, hereinafter “Ren”).
Regarding claim 5: The disclosure of Peng is adequately set forth in paragraph 7 above and is incorporated herein by reference. Peng does not expressly teach said three-element nanoparticles are selected from the group consisting of ZnxCd1-xS, and ZnxCd1-xSe.
However, Ren teaches a method of making a colloidal solution of ternary AIA IIB nanocrystals that have an aspect ratio less than 2 and a diameter greater than 10 nm (Page 3, [0019] such as nanocrystals having the composition ZnxCd1-xSe, ZnxCd1-xS, ZnxCd1-xTe, or HgxCd1-xSe (Page 5, [0048]), wherein in the ternary nanocrystals, the index x has a value of 0.001<x<0.999, preferably of 0.01<x<0.99, or more preferred of 0.05<x<0.95 (Page 5, [0050]) with benefit of providing the colloidal ternary nanocrystals exhibit the desirable properties of high crystallinity, narrow size distribution, high emission efficiency, ability to form polycrystalline films with less than 5% by volume of organic material, high temperature stability, stable fluorescence after removal of organic passivating ligands, and robustness for high temperature anneals (Page 3, [0020]).
In an analogous art of the composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the semiconductor nanoparticles by Peng, so as to include three-element nanoparticles are selected from the group consisting of ZnxCd1-xS, and ZnxCd1-xSe as taught Ren, and would have been motivated to do so with reasonable expectation that this would result in providing the colloidal ternary nanocrystals exhibit the desirable properties of high crystallinity, narrow size distribution, high emission efficiency, ability to form polycrystalline films with less than 5% by volume of organic material, high temperature stability, stable fluorescence after removal of organic passivating ligands, and robustness for high temperature anneals as suggested by ‘030 (Page 3, [0020]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two quantum dots) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Response to Arguments
11. Applicant’s arguments with respect to claims 1-10, 22-24 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Examiner Information
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
03/23/2026
bijan.ahvazi@uspto.gov