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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 13-15 and newly added 18-28 in the reply filed on 3 June 2026 is acknowledged. All other groups have been cancelled in the reply.
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) 13-15 and 18-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jang et al. (US 2020/0135984, hereinafter referred to as “Jang”).
As to Claim 13: Jang teaches a quantum dot light emitting diode and display device (title) wherein the quantum dot has an organic compound including at least two thiol groups one of which is anchored to the quantum dot (Abstract). Jang further teaches that the quantum dot layer is between a first and a second electrode [0122]. Jang additionally teaches that the ligand further contains a polar bonding group at a site other than where the ligand is connected to the quantum dots (Formula 1, [0039]).
As to Claim 14: Jang teaches the element of claim 13 (supra). Jang further teaches that the element can contain transport layers between the electrode and the light emitting layer [0125] and that a known transport material is ZnO [0128].
As to Claim 15: Jang teaches the element of claim 13 (supra). Jang further teaches that the element can be used in a display (Abstract).
As to Claim 18-25, 27, and 28: Jang teaches the element of claim 13 (supra). Jang further teaches that the ligand can be 2,2’(ethylenedioxy)diethanethiol [0039].
As to Claim 26: Jang teaches the element of claim 13 (supra). Jang further teaches that the quantum dots can be core-shell quantum dots where the shell contains Zn [0036-0037, 0059] and that the two coordinating functional groups are thiol groups [0039].
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.
Claim 13-15 and 18-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6, 8-11, 15-17, 20-22, and 25 of copending Application No. 18/280,460 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claims are drawn to light emitting elements with a light emitting layer between two electrodes and the light emitting layer can be quantum dots with ligands that can be the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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