DETAILED ACTION
Applicant’s reply, filed 10 June 2026 in response to the requirement for restriction mailed 6 May 2026, has been fully considered. As per Applicant’s election of Group I, claims 19 and 21-33 are pending under examination and claims 20 and 34-36 have been withdrawn (see below).
Election/Restrictions
Claims 20 and 34-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10 June 2026.
Applicant's election with traverse of Group 1, claims 19 and 21-33, in the reply filed on 10 June 2026 is acknowledged. The traversal is on the ground(s) that groups are ‘intimately related’. This is not found persuasive because, as was set forth in the restriction, under PCT Rule 13.1 the technical feature is not a special one (see restriction requirement of 6 May 2026). Outside of alleging intimately related inventions, Applicant has not pointed out any supposed errors in the restriction.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 21 is objected to because of the following informalities: the ending punctuation of the instant claim is missing (MPEP 608.01(m)). Appropriate correction is required.
Claim 26 is objected to because of the following informalities: the recitation of “at least one of R9, R10 and R11 is a (meth)acyl group and the other one is a hydrogen…” should recite –and the remaining are-- instead of “and the other one is”. Appropriate correction is required.
Claim 30 is objected to because of the following informalities: “consisting of;” should be –consisting of:-- (i.e. a colon not a semi colon). Appropriate correction is required.
Claim 31 is objected to because of the following informalities: i) “so that said polymer enables to the scattering particles to be dispersed” is grammatically incorrect; and ii) “or a combination of thereof” should instead be –or a combination thereof--. Appropriate correction is required.
Claim 32 is objected to because of the following informalities: “the composition comprises a solvent 10wt% or less based on the total amount of the composition” should instead be –the composition further comprises 10 wt% or less of a solvent, based on the total composition—(see the 112(b) below). Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 21, 23, 26-28 and 30-33 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.
Regarding claim 21, there is a lack of antecedent basis for “the ligand” and it is not clear what the instant claim is referring to as no coordination center is claimed or otherwise identified in either claim 21 or claim 19, from which it depends. Further claim 19 recites/requires only “a chemical compound” and comparing the number of carbon atoms present to a ‘ligand’ not recited renders the claim indefinite. As such, the claimed formula (Q) cannot be fairly determined or assessed. In addition the claim is awkwardly written.
Regarding claim 23, the claim is indefinite as the claim recites a definition of Y including selecting from alkyl groups, alkenyl groups, and alkoxyl groups (as recited), and further recites (see last line) “wherein Y contains at least one carbon-carbon double bond” (i.e. an alkenyl). It is not clear what Y can or cannot be.
Regarding claim 26, firstly the recitation that the composition ‘further comprises a (meth)acrylate monomer’ is indefinite. It is not clear if the claim is intending to further limit the i) reactive monomer of claim 19 or is intending to recite an additional monomer component. Secondly, the recitation of R3 renders the claim indefinite as no recited structure contains an R3 substituent/group. Thirdly, it is not clear what is meant by “independently or dependently of each other”.
Regarding claim 27, there is a lack of antecedent basis for “the (meth)acrylate monomer” as neither claim 27 nor claim 19, from which it depends, recites (meth)acrylate monomer. Additionally there is a lack of antecedent basis: for “chemical formula (II)” as no formula (II) is recited/defined in any claim present; and for “chemical formula (I) as neither claim 27 nor claim 19, from which it depends, recites a chemical formula (I), such being found only in claim 26 from which claim 27 does not claim dependency. As such the claimed ratio cannot be fairly determined or assessed at this time.
Regarding claim 28, there is a lack of antecedent basis for “said (meth)acrylate monomer” as neither claim 28 nor claim 19, from which it depends, recites (meth)acrylate monomer. Additionally, there is a lack of antecedent for “chemical formula (I) and/or chemical formula (II)” as neither claim 28 nor claim 19, from which it depends, recites either chemical formula (I) or (II). Additionally, chemical formula (II) is not recited in any claim present/defined and chemical formula (I) is found only in claim 26 from which claim 28 does not claim dependency. As such the boiling point cannot be fairly determined or assessed at this time.
Regarding claim 30, the recitation of “iv) another (meth)acrylate monomer” lacks antecedent basis and renders the claim indefinite as claim 19, from which claim 30 depends, does not recite a (meth)acrylate monomer.
Regarding claim 31, the recitation that the composition of claim 19 “comprises” lacks antecedent basis for iv) and viii) (the claim fails to contain a ‘further’ recitation and no such iv) or vii) is recited by claim 19).
Regarding claim 32, the recitation that the composition comprises a solvent lacks antecedent basis (the claim fails to contain a ‘further’ recitation and no such solvent is recited by claim 19).
Regarding claim 33, the recitation is indefinite (see below) and it is not clear what is meant by a polymer derived or derivable from. Further it is not clear if the claim intended to recite ‘the composition of claim 19’ wherein ‘the i) reactive monomer is polymerized to form a polymer’ or ‘is subjected to polymerization’ or similar.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 33 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim recites “a polymer derived or derivable from one or more of the reactive monomers of the composition of claim 19”. Claim 33 appears to recite dependency to only a portion of claim 19 which is improper. Claim 19 is directed to a composition comprising i) a reactive monomer, ii) a light emitting moiety, and iii) a chemical compound. Claim 33 fails to include all the limitations of the claim upon which it depends as it refers only to the monomer component of claim 19. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 19, 21-25 and 30-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirayama et al. (WO 2018224459; using US PGPub 2020/0190400 for citation purposes).
Regarding claims 19, 25 and 33, Hirayama teaches a composition comprising at least one semiconducting light emitting nanoparticle, a first material and a second material ([0016]; [0026]). Hirayama teaches the light emitting nanoparticle comprises a core and one or more shell layers ([0016]; [0026]; [0064]-[0088]) (instant ii) light emitting moiety). Hirayama teaches the first material is selected from chemical formula (I) XYZ ([0026]; [0052]-[0063]) where Y is selected from a single bond or an alkenyl group of 1-15C, an alkenylene group of 1-15C, or a (poly)alkoxylene group of 1-15C ([0053]) (instant iii) a chemical compound as claimed). Hirayama teaches the second material is selected from matrix forming materials selected from poly-(meth)acrylate and (meth)acrylate monomers ([0029]-[0031]; [0035]-[0038]) (instant i) a reactive monomer (claim 19); (meth)acrylate monomer (claim 25); polymer derived or derivable from (claim 33)).
Regarding claim 21, Hirayama teaches the composition as set forth in claim 19 above. Hirayama teaches chemical formula (I) XYZ, wherein X is a S-containing group as defined ([0052]), Y is a single bond or an alkenyl group of 1-15C, an alkenylene group of 1-15C, or a (poly)alkoxylene group of 1-15C ([0053]), and Z is –[CH(R1)-CH(R2)-Q]x-R3 or –[(CHR1)n-Q]x-R3 where R1, R2 and R3 are H or methyl, Q is O, N or S, n is 2 or 3 and x is from 1-300 ([0053]).
Hirayama teaches that in addition to the first material of chemical formula (I) a further ligand may also be present ([0089]; [0095] ligands recited). Notably the formula (I) XYZ meets the instant formula (Q) recitation for X or Z as ‘ligand’ and Y as the chemical compound. Further the formula (I) XYZ as recited taken as the chemical compound and the compounds recited as ‘additional ligands’ by Hirayama taken as the instant ‘ligand’ also meets the instant formula (Q).
Regarding claims 22-23, Hirayama teaches the composition as set forth in claim 19 above. Hirayama teaches chemical formula (I) XYZ, wherein X is a S-containing group as defined ([0052]), Y is a single bond or an alkenyl group of 1-15C, an alkenylene group of 1-15C, or a (poly)alkoxylene group of 1-15C ([0053]), and Z is –[CH(R1)-CH(R2)-Q]x-R3 or –[(CHR1)n-Q]x-R3 where R1, R2 and R3 are H or methyl, Q is O, N or S, n is 2 or 3 and x is from 1-300 ([0053]) (instant (XA): Z-Y).
Regarding claim 24, Hirayama teaches the composition as set forth in claim 19 above. Hirayama teaches the content of the first material (instant chemical compound) is from 1 to 80 wt% of the nanoparticle ([0057]) (instant 0.6:40 to 1:3 chemical compound : light emitting moiety).
Regarding claims 30-31, Hirayama teaches the composition as set forth in claim 19 above. Hirayama further teaches the presence of additional ligands ([0089]), and additional material including organic light emitting materials, inorganic light emitting materials, charge transporting materials, scattering particles, optically transparent polymers, anti-oxidants, radical quenchers, polymerization initiators, etc. ([0097]). Hirayama further teaches the transparent polymers include poly(meth)acrylates, epoxies, polyurethanes, and polysiloxanes ([0102]-[0111]).
Regarding claim 32, Hirayama teaches the composition as set forth in claim 19 above. Hirayama further teaches a solvent can be present optionally present ([0018]) and teaches an embodiment of the composition that comprises the light emitting nanoparticle, first material and second material ([0016]-[0017]) (where solvent is not required the range of 10 wt% or less, which includes zero, is met).
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.
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 29 is rejected under 35 U.S.C. 103 as being unpatentable over Hirayama et al. (WO 2018224459; using US PGPub 2020/0190400 for citation purposes).
Hirayama teaches the composition as set forth in claim 19 above. Hirayama teaches both an embodiment of the composition that comprises the light emitting nanoparticle, first material and second material ([0016]-[0017]) and embodiment of a formulation further comprising a solvent ([0018]).
Hirayama does not specifically teach a viscosity of the composition. However, Hirayama teaches the composition comprising the three components claimed, of the claimed chemical identities, and present in the claim amounts. 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 In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where 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.”; MPEP 2112.01)).
Additionally, Hirayama further teaches a formulation where solvent may be present. As such, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of solvent to obtain a composition having the desired viscosity for end use applications. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Hirayama et al. (WO 2018224459; using US PGPub 2020/0190400 for citation purposes) in view of Nick (US PGPub 2016/0355730).
Hirayama teaches the composition of claim 19 above and further teaches the second material includes matrix forming materials selected from poly-(meth)acrylates and monomers thereof ([0030]; [0035]-[0038]).
Hirayama does not specifically teach a (meth)acrylate monomer of instant formula (I) or (III). However, Nick teaches similar compositions comprising semiconducting nanoparticles in host/matrix materials (abstract; [0106]-[0112]). Nick teaches that the host material can be selected from monomers or polymers ([0111]-[0112]) or monomer precursors of the polymer ([0116]) and teaches polyacrylate and polymethacrylates ([0108]-[0109]). Nick further teaches the inclusion of additional monomer including 1,3-butanediol dimethacrylate, 1,4-butanediol dimethacrylate, 1,6-hexanediol dimethacrylate, pentaerythritol triacrylate, trimethylolpropane triacrylate, etc. ([0117])((meth)acrylates of instant formula (I) or instant formula (III)). Nick and Hirayama are analogous art and are combinable because they are concerned with the same field of endeavor, namely semiconducting nanoparticle compositions comprising a (meth)acrylate based host matrix. At the time of filing a person having ordinary skill in the art would have found it obvious to include the additional monomers of Nick in the matrix materials of Hirayama and would have been motivated to do so as Hirayama invites the presence of any (meth)acrylate monomer, and combinations thereof, as well as invites further monomer units, to form a suitable matrix material ([0035]-[0039]) and further as Nick teaches it is known to include additional monomers in a (meth)acrylate host material wherein such monomer include dimethacrylates and triacrylates to obtain a host material having characteristics which protect the nanoparticle from environmental factors that can adversely affect them ([0106]).
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.
A) Claims 19 and 21-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-12 and 21 of copending Application No. 18/032912 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending applications are directed to substantially similar compositions comprising substantially similar reactive monomers (instant i); copending i)), light emitting moieties (instant ii); copending ii)), and chemical compounds of substantially the same type/identity (instant iii); copending iii)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
B) Claims 19 and 21-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-30 of copending Application No. 19/128197 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending applications are directed to substantially similar compositions comprising substantially similar reactive monomers (instant i); copending i)), light emitting moieties (instant ii); copending ii)), and chemical compounds of substantially the same type/identity (instant iii); copending iii)/iv)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
C) Claims 19 and 21-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,559,676. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant application and the granted patent are directed to substantially similar compositions comprising substantially similar reactive monomers (instant i); granted patent ii)), light emitting moieties (instant ii); granted patent i)), and chemical compounds of substantially the same type/identity (instant iii); granted patent iii)).
D) Claims 19, 21-23, 25 and 20-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,624,025. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant application and the granted patent are directed to substantially similar compositions comprising substantially similar reactive monomers (instant i); granted patent second material), light emitting moieties (instant ii); granted patent light emitting nanoparticle), and chemical compounds of substantially the same type/identity (instant iii); granted patent first material).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/Primary Examiner, Art Unit 1767
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