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 .
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the drawings/graphs appear to be photocopies, but some of the words are hard to read. For example, Fig 3 describes the graph, but the words are hard to read. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Objections
Claims 2, 3, 4, 5, 6, 7, 8 and 11 are objected to because of the following informalities:
Claims 2, 3, 4, 5, 6, 7, 8 and 11 recite the limitation "the structure" in the claims. In order to further provide proper antecedent basis, it is suggested to amend “the structure” to “the aromatic or synthetic hydrocarbon structure.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dong (CN 108865132), see EPO translation.
As to Claims 1 and 5, Dong describes carbon quantum dots (para. 1) that include 1,4-naphthalenedicarboxylic acid combined with a nitrogen source (para. 13). Claim 1 states that the carbon quantum dots can be functionalized by either amines or nitrogen. Therefore, inclusion of nitrogen meets this feature of the claim.
As to the carbon dots having selected adsorption of CO2 over N2 and O2, the specification explains that carbon quantum dots “(CQD) show selective adsorption for CO2 relative to N2 and O2” (see published specification, para. 9). The “magnitude of the selectivity is a function of CQD size and the amount of doping and functionalization” (see published specification, para. 9). Therefore, the presence of CQD already has CO2 over N2 and O2 adsorption. Inclusion of nitrogen and/or amine improves the CO2 feature, but does not impart the CO2 adsorption feature on the CQD. Therefore, the presence of CQD in Dong would meet the CO2 adsorption feature.
As to Claims 2, 3 and 4, the claims further limit that the amine group attached to the structure has at least two amine groups (Claim 2), at least three amine groups (Claim 3) or at least four amine groups (Claim 4), which is an optional embodiment of claim 1 (i.e. amine-functionalized carbon quantum dots or nitrogen-doped carbon quantum dots) and therefore not required. As such, claims 2, 3 and 4 are rejected based on identical/substantially identical reasons as claim 1.
As to Claims 6, 7 and 8, Dong teaches modification of carbon quantum dots with nitrogen (para. 13). As to the amount, Dong explains that the C-N, N-H or other N-containing nitrogen-containing bonds can be adjusted in order to regulate the energy level structure and electron cloud distribution of the carbon quantum dots to improve the optical properties and obtain yield high fluorescence quantum yield and high fluorescence intensity (para. 33). Therefore, by further adjusting the ratio of carbon and nitrogen used and the N-containing surface group functionalized on the carbon quantum dots, this can optimize the fluorescence yield within the desired wavelengths and help improve the accuracy of the fluorescent spectral signal detection (para. 36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the nitrogen-containing groups modifying the carbon quantum dots, as taught by Dong because Dong explains that by adjusting the ratio of nitrogen, this can optimize the fluorescence yield of the carbon quantum dots to the range desired.
Therefore, as to the nitrogen functional groups used on the carbon quantum dots, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum value of a cause effective variable such as nitrogen-containing surface functional groups through routine experimentation in the absence of a showing of criticality. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
As to Claims 9 and 16, Dong teaches that the carbon quantum dot source is naphthalic acid (para. 12).
As to Claims 10 and 17, Dong teaches that the carbon quantum dots have a size of 3-5nm (para. 38, para. 3).
As to Claim 11, the rejection of Claim 1 is re-iterated here. Additionally, Dong teaches use of naphthalic acid or 1,4-naphthalenedicarboxylic acid (para. 36, 12). This can be considered to meet the feature an aromatic hydrocarbon base structure.
Dong does not specifically state that their product has a CO2 adsorptivity. However, Applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all 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”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e.CO2 absorptivity, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
As to Claim 12, the claims further limit that the amine group attached to the structure has certain adsorption selectivity, which is an optional embodiment of claim 1 (i.e. amine-functionalized carbon quantum dots or nitrogen-doped carbon quantum dots) and therefore not required. As such, claim 12 is rejected based on identical/substantially identical reasons as claim 1.
As to Claim 13, the Claim depends from Claim 12. Claim 12 is an optional embodiment of Claim 1. Therefore, the features of Claim 13 are also optional.
As to Claims 14 and 15, Dong describes carbon dots with nitrogen doping (see rejection of Claim 1 above). As to the carbon dots having selected adsorption of CO2 over N2 and O2, the specification explains that carbon quantum dots “(CQD) show selective adsorption for CO2 relative to N2 and O2” (see published specification, para. 9) and that the “magnitude of the selectivity is a function of CQD size and the amount of doping and functionalization” (see published specification, para. 9). Therefore, the presence of CQD already has CO2 over N2 and O2 adsorption. Inclusion of nitrogen and/or amine improves the CO2 feature, but does not impart the CO2 adsorption feature on the CQD. Therefore, the presence of CQD in Dong would meet the CO2 adsorption feature.
As to the CO2 adsorption selectivity ranging from 1.4 to 2.4, Dong explains that the C-N, N-H or other N-containing nitrogen-containing bonds can be adjusted in order to regulate the energy level structure and electron cloud distribution of the carbon quantum dots to improve the optical properties and obtain yield high fluorescence quantum yield and high fluorescence intensity (para. 33). Therefore, by further adjusting the ratio of carbon and nitrogen used and the N-containing surface group functionalized on the carbon quantum dots, this can optimize the fluorescence yield within the desired wavelengths and help improve the accuracy of the fluorescent spectral signal detection (para. 36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the nitrogen-containing groups modifying the carbon quantum dots, as taught by Dong because Dong explains that by adjusting the ratio of nitrogen, this can optimize the fluorescence yield of the carbon quantum dots to the range desired.
Therefore, as to the nitrogen functional groups used on the carbon quantum dots, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum value of a cause effective variable such as nitrogen-containing surface functional groups through routine experimentation in the absence of a showing of criticality. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Dong does not specifically state that their product has a CO2 adsorptivity. However, since the Claims describe a product, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same composition would be effective to perform the same method steps.
As to the carbon quantum dots derived from lignin, this is a product by process feature. Therefore, although Dong does not explicitly teach that the dots are derived from lignin, as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Dong meets the requirements of the claimed product, Dong clearly meets the requirements of the present claim.
As to Claims 18 and 20, Dong teaches Dong describes carbon quantum dots (para. 1) that include 1,4-naphthalenedicarboxylic acid combined with a nitrogen source (para. 13). Claim 1 states that the carbon quantum dots can be functionalized by either amines or nitrogen. Therefore, inclusion of nitrogen meets this feature of the claim.
Dong teaches that the carbon quantum dots have a size of 3-5nm (para. 38, para. 3). Dong teaches modification of carbon quantum dots with nitrogen (para. 13). As to the amount, Dong explains that the C-N, N-H or other N-containing nitrogen-containing bonds can be adjusted in order to regulate the energy level structure and electron cloud distribution of the carbon quantum dots to improve the optical properties and obtain yield high fluorescence quantum yield and high fluorescence intensity (para. 33). Therefore, by further adjusting the ratio of carbon and nitrogen used and the N-containing surface group functionalized on the carbon quantum dots, this can optimize the fluorescence yield within the desired wavelengths and help improve the accuracy of the fluorescent spectral signal detection (para. 36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the nitrogen-containing groups modifying the carbon quantum dots, as taught by Dong because Dong explains that by adjusting the ratio of nitrogen, this can optimize the fluorescence yield of the carbon quantum dots to the range desired.
Therefore, as to the nitrogen functional groups used on the carbon quantum dots, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum value of a cause effective variable such as nitrogen-containing surface functional groups through routine experimentation in the absence of a showing of criticality. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
As to the carbon dots having selected adsorption of CO2 over N2 and O2, the specification explains that carbon quantum dots “(CQD) show selective adsorption for CO2 relative to N2 and O2” (see published specification, para. 9). The “magnitude of the selectivity is a function of CQD size and the amount of doping and functionalization” (see published specification, para. 9). Therefore, the presence of CQD already has CO2 over N2 and O2 adsorption. Inclusion of nitrogen and/or amine improves the CO2 feature, but does not impart the CO2 adsorption feature on the CQD. Therefore, the presence of CQD in Dong would meet the CO2 adsorption feature.
As to the how the carbon quantum dots are made, although Dong does not explicitly teach that the carbon dots are made from lignin, as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Dong meets the requirements of the claimed product, Dong clearly meets the requirements of the present claim.
As to Claim 19, the claims further limit that the carbon quantum dots are amine-modified, which is an optional embodiment of claim 1 (i.e. amine-functionalized carbon quantum dots or nitrogen-doped carbon quantum dots) and therefore not required. As such, Claim 19 is rejected based on identical/substantially identical reasons as claim 1.
Conclusion
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 February 20, 2026