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 .
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.
Claim(s) 1-5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li in their publication “Reactive AgAuS and Ag3AuS2 synthons enable the sequential transformation of spherical nanocrystals into asymmetric multicomponent hybrid nanoparticles”.
Regarding Claim 1: Li teaches the creation of nanoparticles comprising AgAuS and Ag3AuS2 compositions (See Figure 1 and Section: “Synthesis of Au1–xAgx–AgAuS and Au1–xAgx–Ag3AuS2 Hybrid Nanoparticles”). The nanoparticles of Li are highly crystalline and are of the same composition as the nanoparticles instantly claimed and thus the nanoparticles of Li must inherently be semiconductors. Materials of the same structure and composition must necessarily have the same properties. The semiconductor nanoparticles of Li contain Ag, Au, and S as essential constitutional elements. The compound of Li does not contain any other material or element and thus the Ag, Au, and S content of Li is considered to be essentially 100%, which is greater than 95 mass%.
Regarding Claim 2: Li teaches the creation of semiconductor nanoparticles, wherein the compound is an AgAuS ternary compound which may be represented by the general formula Ag(nx)Au(ny)S(nz). Li teaches compositions of formula AgAuS and Ag-3AuS2. Li thus teaches compounds falling within the claimed general formula, wherein x=y=z=n=x/y=1 and also where n=4, x=3/4, y=1/4, z=1/2 and x/y=3. The compounds in the nanoparticle of Li thus meet the claimed general formula (See Figure 1 and Section: “Synthesis of Au1–xAgx–AgAuS and Au1–xAgx–Ag3AuS2 Hybrid Nanoparticles”).
Regarding Claim 3: In each of the compounds of Li, z=(x+y/2), meeting the claimed inequality (See Figure 1 and Section: “Synthesis of Au1–xAgx–AgAuS and Au1–xAgx–Ag3AuS2 Hybrid Nanoparticles”).
Regarding Claim 4: In the compound AgAuS, the value of x/(x+y) is 0.5. In the compound Ag3AuS2, the value of x/(x+y) is 0.75. Both of these values are real numbers between 0.33 and 0.78 (See Figure 1 and Section: “Synthesis of Au1–xAgx–AgAuS and Au1–xAgx–Ag3AuS2 Hybrid Nanoparticles”).
Regarding Claim 5: While Li is silent in terms of the average particle diameter of the semiconductor nanoparticles, Li does show TEM imagery of several collections of the semiconductor nanoparticles comprising the claimed compound. Figure 3 shows a collection of nanoparticles comprising AgAuS. Figure 4 shows a collection of nanoparticles comprising Ag3AuS2. In each of the collections of particles, all of the particles have a size shown have a size between 2 nm and 20 nm. Thus the average particle size in each of these collections of semiconductor nanoparticles would inherently be between 2 nm and 20 nm.
Regarding Claim 7: Li is silent in terms of the semiconductor nanoparticles, as created, having a long wavelength-side absorption edge wavelength in the absorption spectrum being 600 nm or higher; however, the nanoparticle of Li are of the same composition as those nanoparticle compounds instantly claimed. Materials of the same composition must inherently have the same properties. Thus the semiconductor nanoparticles of Li must inherently have a long wavelength-side absorption edge wavelength in the absorption spectrum being 600 nm or higher.
Claim(s) 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li in their publication “Reactive AgAuS and Ag3AuS2 synthons enable the sequential transformation of spherical nanocrystals into asymmetric multicomponent hybrid nanoparticles” as evidenced by Lee in their publication “Chemical Reactivity-Controlled Synthesis of Silver Chalcogenide Colloidal Quantum Dots for Efficient Shortwave Infrared Photodetectors”
Li teaches the creation of nanoparticles comprising AgAuS and Ag3AuS2 compositions (See Figure 1 and Section: “Synthesis of Au1–xAgx–AgAuS and Au1–xAgx–Ag3AuS2 Hybrid Nanoparticles”). The nanoparticles of Li are highly crystalline and are of the same composition as the nanoparticles instantly claimed and thus the nanoparticles of Li must inherently be semiconductors. Materials of the same structure and composition must necessarily have the same properties. The semiconductor nanoparticles of Li contain Ag, Au, and S as essential constitutional elements. The compound of Li does not contain any other material or element and thus the Ag, Au, and S content of Li is considered to be greater than 95 mass%.
Li shows the creation of these semiconductor nanoparticles by providing Ag-Au seed particles in a sulfur-oleylamine (S-OLA) complex solvent (See Section: Synthesis of Au1–xAgx–AgAuS and Au1–xAgx–Ag3AuS2 Hybrid Nanoparticles). Li is silent in terms of providing a protective agent bonded to its surface as claimed. However, those of ordinary skill in the art would have expected the use of a sulfur-oleylamine precursor to provide oleylamine (C18 alkyl amine) on the surface of the nanoparticle as a protective coating. The fact that the use of S-OLA in the process of making Ag-chalcogenide nanoparticles provides for surface bonded oleylamine is evidenced by Lee, who also shows the creation of Silver chalcogenide nanoparticles. Lee clearly shows that the use of oleylamine in the synthesis of silver chalcogenides provides oleylamine bonded to the surface of the particles (See Figure 1 and 2; Page 3). Those of ordinary skill in the art would expect the oleylamine provided as a solvent in Li to coat the surface of the nanoparticles in the same manner as is shown by Lee. It is noted that Lee is not used as prior art and is only referenced in an evidentiary capacity to support the expectation that oleylamine passivates the surface of the nanoparticles of Li.
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 and 5-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12441938. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are drawn to an overlapping range of compositions. The patented claims are drawn to a semiconductor nanoparticle comprising Ag, Au, S and a metal M (See Claim 1). The metal M may be present in an amount as low as 1 atomic% (See Claim 2). A semiconductor nanoparticle comprising Ag, Au, S and 1 atomic% of M comprises Ag, Au, and S in an amount of 95 mass% or more. Claim 5 corresponds to patented claim 6. Claim 6 corresponds to patented claim 7. Claim 7 corresponds to patented claim 8. Instant claim 2-4 all set forth that the claimed compound is ternary. The patented compound is at least quaternary.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US20230247846 is noted. The CN priority dated 1/20/21 does not appear to provide ample support for the disclosed embodiments. This publication is not considered prior art in terms of the creation of AuAgS nanoparticles.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Matthew E. Hoban/Primary Examiner, Art Unit 1734