DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment. For this reason, the present action is properly made final.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claims 1-5, 7-10, 13-23 are pending.
Election/Restriction
Applicant’s election of Group I claims 1-5, 7-10, 13-18, 21-23 in the reply filed on 5/7/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-5, 7-10, 13-18, 21-23 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 1 recites …composition comprising metal halide perovskite nanocrystals
dispersed within a liquid phase medium… and later recites …the liquid phase medium comprising (a) an as synthesized, unpurified synthesis solution comprising the metal halide perovskite nanocrystals and binding compounds…
However, it would be clear how the “metal halide perovskite nanocrystals dispersed within a liquid phase medium” are also present in the liquid phase medium, since the liquid phase medium also requires the presence of the metal halide perovskite nanocrystals. In other words, it would not be clear if the metal halide perovskite nanocrystals are dispersed in the liquid phase medium, or if the liquid phase medium comprises metal halide perovskite nanocrystals.
Claims 2-5, 7-10, 13-18, 21-23 are subsumed by this rejection because of their dependence.
Claim 1 recites …as synthesized, unpurified synthesis solution… and it would not be clear the scope and meaning of “as synthesized”. In other words, it would not be clear what would not be considered “as synthesized”. The specification does not define “as synthesized” and therefore, applicant’s specification does not supply a proper definition of “as synthesized”, noting that, in the absence of a proper definition, the phrase “as synthesized” would be subjective in scope depending on who was imparting a meaning to it.
Claims 2-5, 7-10, 13-18, 21-23 are subsumed by this rejection because of their dependence.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
Claims 1-5, 7-10, 13-18, 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over CN 111171814 to Shanghai University (hereinafter, "Shanghai").
Regarding Claim 1: Shanghai is directed to a stabilized colloidal composition comprising metal halide perovskite nanocrystals dispersed within a liquid phase medium comprising:
The synthesis solution comprising an as synthesized unpurified synthesis solution comprising the metal halide perovskite nanocrystals and binding compounds of oleylamine and oleic acid that covalently bind to surfaces of the nanocrystals, which are the same binding compounds of the present invention.
A stability promoter (the stabilizing auxiliary agent) including hexane solvent utilized in the method for synthesis as a mixture of toluene/n-hexane/n-octane, which is the same stability promoter used in the present invention.
Shanghai doesn't specifically recite binding ligands in the as-synthesized, unpurified synthesis solution derived from the binding compounds covalently bind to surfaces of the metal halide perovskite nanocrystals, reversibly bind and unbind from the surfaces, and undergo exchange with other binding ligands in the as-synthesized, unpurifed synthesis solution. Shanghai also doesn't specifically recite the stability promoter promotes covalent binding of one type of binding ligand in the liquid phase medium over another, different type of binding ligand in the liquid phase medium.
However, the stabilized colloid composition produced in Shanghai is substantially identical to the stabilized colloid composition produced in the instant invention. Specifically, the metal halide perovskite nanocrystals and binding compounds of oleylamine and oleic acid that covalently bind to surfaces of the nanocrystals, which are the same binding compounds of the present invention. Likewise, hexane is disclosed, which is the same stability promoter of the present invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Shanghai suggests a stabilized colloid composition having properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
The as synthesized, unpurified synthesis solution is not subjected to a purification step. Specifically, the as synthesized unpurified synthesis solution comprises the metal halide perovskite and binding ligands. These are disclosed in step a) of Shanghai wherein oleic or olelyamine are added to the metal halide perovskite. It is later in step c) that it is precipitated from solution. Present claim 1 does not exclude such a later precipitation. Component (b) does not require it be added to an “as synthesized unpurified synthesis solution”. Hexane is later added in step e), although this is not excluded by the present claims.
In the event that claim 1 somehow excludes a purification step of the entire stabilized colloidal composition, it is well settled that even 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113
Regarding claim 2: Shanghai discloses the composition of claim 1, wherein the metal halide perovskite nanocrystals have formula APb(X1)z(X2)3-z, wherein A is selected from alkali metals, X is selected from halogens, and z ranges from Oto 3 (abstract. the APbX3 nanorod solution; claim 1, A is Methylamine (MA), Formamidine (FA) or Cs, and X is Cl, Br or I).
Regarding claim 3: Shanghai discloses the composition of claim 2, wherein A is Cs (abstract, the APbX3 nanorod solution; claim 1, A is methylamine (MA), Formamidine (FA) or Cs, and X is Cl, Br or I).
Regarding claims 4-5: Shanghai discloses the composition of claim 1, wherein the dynamic binding compound is selected from a fatty acid, a fatty amine, and combinations (Oleic Acid (OA), oleylamine or oleylamine halide).
Regarding claim 7: Shanghai discloses the composition of claim 4, wherein the dynamic binding compound is selected from a group consisting of 1-octadecene, oleylamine, oleic acid, trioctylphosphine, oleic acid (OA), or oleylamine halide and combinations thereof.
Regarding Claim 8, Shanghai discloses the composition of claim 1. Shanghai fails to explicitly disclose wherein the synthesis solution and the stability promoter are present at a volume ratio of (as-synthesized unpurified synthesis solution):(stability promoter) of 1:5 or greater. Shanghai teaches forming a plurality of solutions, each solution with a mixing ratio (paragraphs [0018]-[0020], [0025]) and combining formed solutions with (paragraph [0030]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to use a volume ratio of (synthesis solution): (stability promoter) of 1:5 or greater, since discovering the optimum value of a result effective variable involves only routine skill in the art as the amounts and ratios to combine solutions (Shanghai; paragraphs [0018]-[0020], [0030]) are easily modified to impart desired morphology, stability and luminous efficiency (Shanghai; abstract).
Regarding Claim 9: Modified Shanghai discloses the composition of claim 8.
Shanghai fails to explicitly disclose wherein the volume ratio is in a range of from 1:5 to 1:20. Shanghai teaches forming a plurality of solutions, each solution with a mixing ratio (paragraphs [0018]-[0020], [0025]) and combining formed solutions with (paragraph [0030]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to the volume ratio is in a range of from 1:5 to 1:20, since discovering the optimum value of a result effective variable involves only routine skill in the art as the amounts and ratios to combine solutions (Shanghai; paragraphs [0018]-[0020], [0030]) are easily modified to impart desired morphology, stability and luminous efficiency (Shanghai; abstract).
Regarding Claim 10: Shanghai discloses the composition of claim 1.
Shanghai fails to explicitly disclose wherein the liquid phase medium comprises at least 5% by volume of the as synthesized unpurified synthesis solution and no more than 95% by volume of the stability promoter. Shanghai teaches wherein the stabilizing auxiliary agent adopts at least one solvent and wherein the solvent adopts octane, octadecane or dodecane (paragraph [0021]} and adopts alkenes such as octadecene such as reaction solvent (claim 1 ).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to the liquid phase medium comprises at least 5% by volume of the synthesis solution and no more than 95% by volume of the stability promoter, since discovering the optimum value of a result effective variable involves only routine skill in the art to adjust volume amounts (Shanghai; claim 1; paragraph [0021] including amount of the stabilizing auxiliary agent to assist in reducing reaction rate to improve properties of formed nanocrystals by improving a control of morphology and size and decrease defects and improve stability (Shanghai; abstract; paragraphs [0006]-[0008]).
Regarding Claim 13: Shanghai discloses the composition of claim 1, wherein the stability promoter is an alkane including octane, octadecane or dodecane.
Regarding Claim 14: Shanghai discloses the composition of claim 13, wherein the :stability promoter is an unsubstituted, linear alkane including a solvent of octane, octadecane or dodecane.
Regarding Claim 15: Shanghai discloses the composition of claim 13, wherein the alkane has from 5 to 59 carbon atoms (the stabilizing auxiliary agent adopts at least one solvent. .. the alkane solvent adopts octane, octadecane or dodecane).
Regarding claim 16: Hexane solvent is utilized in the method for synthesis as a mixture of toluene/n-hexane/n-octane.
Regarding Claim 17: Shanghai discloses the composition of claim 1, characterized by a photoluminescence spectrum having a peak that exhibits a reduction in intensity of no more than 25% after 90 days at ambient as compared to day 0 (stable luminescence has PLQY up to more than 90%; figure 3a, remnant PLQY, as seen in figure 3a, decreases linearly from 100, i.e., day 0, to about 85% in 60 days = 7.5% in 30 days which by extrapolation following the linear trend would be about 22.5% decrease, i.e., a reduction in intensity of no more than 25% after 90 days at ambient).
Regarding Claim 18: Shanghai discloses the composition of claim 1 , wherein the metal halide perovskite nanocrystals have formula APb(X1)z(X2)3-z, wherein A is selected from alkali metals, X is selected from halogens, and z ranges from Oto 3 (abstract, the APbX3 nanorod solution; claim 1, A is Methylamine (MA), Formamidine (FA) or Cs, and X is Cl, Br or I), wherein the stability promoter is an alkane
(paragraph [0021], the stabilizing auxiliary agent adopts at least one solvent... the alkane solvent adopts octane, octadecane or dodecane). and the dynamic binding compound (paragraph [0021], Oleic Acid (OA), oleylamine or oleylamine halide.
Shanghai fails to explicitly disclose wherein the liquid phase medium comprises at least 5% by volume of the synthesis solution and no more than 95% by volume of the stability promoter and wherein the dynamic binding compound comprises oleylamine and oleic acid. Shanghai teaches wherein the stabilizing auxiliary agent adopts at least one solvent and wherein the solvent adopts octane, octadecane or dodecane (paragraph [0021]) and adopts alkenes such as octadecene such as reaction solvent (claim 1). It would have been obvious to one of ordinary skill in the art at the time the invention was made to wherein the liquid phase medium comprises at least 5% by volume of the synthesis solution and no more than 95% by volume of the stability promoter, since discovering the optimum value of a result effective variable involves only routine skill in the art to adjust volume amounts (Shanghai; claim 1; paragraph [0021] including amount of the stabilizing auxiliary agent to assist in reducing reaction rate to improve properties of formed nanocrystals by improving a control of morphology and size and decrease defects and improve stability (Shanghai; abstract; paragraphs [0006]-[0008]).
Regarding claim 21: The as synthesized, unpurified synthesis solution is not subjected to a purification step. Specifically, the as synthesized unpurified synthesis solution comprises the metal halide perovskite and binding ligands. These are disclosed in step a) of Shanghai wherein oleic or olelyamine are added to the metal halide perovskite. It is later in step c that it is precipitated from solution. Present claim 1 does not exclude such a later precipitation. Component (b) does not require it be added to an “as synthesized unpurified synthesis solution”. Hexane is later added in step e), although this is not excluded by the present claims.
In the event that claim 21 somehow excludes a purification step of the entire stabilized colloidal composition, it is well settled that even 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113
Regarding claim 22: The metal halide perovskite nanocrystals APbX3 X is Cl, Br or I, the binding compound further comprises 1-octadecene, trioctylphosphine, and hexane solvent.
Regarding claim 23: The composition of Shanghai and Global does not require components beyond the metal halide perovskite nanocrystals, the as synthesized solution, and the stability promoter.
Response to Arguments
Applicant's arguments filed 5/7/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 5-6 Remarks) the present application distinguishes itself from those subjected to a purification step. In the claimed as synthesized unpurified solution, those chemicals include binding compounds (oleylamine and oleic acid) which generate binding ligands that covalently bind to surfaces of the nanocrystal, reversibly bind/unbind, and undergo exchange with other binding ligands, (¶4, 20, 21, 49).
The present inventors have realized the exchange process leaves nanocrystal surface unprotected and leads to instability. The inventors found that certain stability promoters (e.g. hexane) to as synthesized unpurified solution this exchange may be suppressed by favoring the binding ligands having stronger bonds to the nanocrystal surface, thereby improving stability. For example, the as synthesized unpurified solutions were improved by two orders of magnitude by adding hexane. (¶4, 37, FIG. 4C).
This argument is not found persuasive since none of the present claims exclude a further purification step of the metal halide perovskite nanocrystals comprising bound ligands and stability promoter. For example, claim 1 recites as synthesized unpurified synthesis solution and stability promoter in the composition. Prior to a purification step in Shanghai the synthesis solution and stability promoter are added via as synthesized and unpurified.
Assuming arguendo the claims exclude a metal halide perovskite nanocrystal that has not be purified by precipitation, even 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113
In the present case, there is no evidence to suggest a composition comprising a purification step comprising precipitation is not the same or obvious from a product that does not comprise a purification step comprising precipitation. Specifically, one skilled in the art would understand a purification step results in less impurities including binding compounds of oleylamine and oleic acid removed during the purification process.
Applicant argues (p. 8 Remarks) Global teaches synthesizing TlMX3 perovskite nanoparticles and comprises a purification step using ethyl acetate, and does not lead a person of skill to add the claimed stability promoter, but rather a capping agent.
The rejection over Global and been withdrawn in light of the amendments of the claims.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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