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/Restriction
Claims 9-12 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/10/26.
Applicant’s election without traverse of claims 1-8 and 13-17 in the reply filed on 7/10/26 is acknowledged.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0095239 A1 to Chun et al. (hereinafter Chun)
Regarding claim 1, Chun discloses a quantum dot (14, Fig. 1A) comprising:
a surface including:
inherently polar planes (para [0013]). Chun does not expressly recite that polar planes account for an area percentage of 70% or more.
However, Chun does teach an example where all surfaces are polar (para [0012]).
It would be obvious to one of ordinary skill in the art to employ a quantum dot where all surfaces are polar to provide chemical compatibility for systems including a variety of materials and ultimately facilitate tailoring the quantum dots for particular applications (para [0012]).
Claims 1, 2, 8, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0185251 A1 to Wang et al. (hereinafter Wang)
Regarding claim 1, Wang discloses a quantum dot (semiconductor nanocrystals, para [0006]) comprising:
a polar dominated ZnO surface (para [0016]). The reference does not expressly recite the polar planes accounting for an area percentage of 70% or more.
However, Wang does teach a polar dominated surface (para [0016]) and teaches an embodiment where the nanocrystals comprise large top and bottom surfaces that are polar (0001) facets (para [0045] and Fig 1).
It would be obvious to one of ordinary skill in the art that a polar dominant plane suggests a polar plane with an area percentage of greater than 50%. Polar planes (0001) in Fig. 1 account for a large portion, significantly greater than 50%, of the area of the crystal. Therefore, one of ordinary skill in the art would expect the Chun quantum dot to have a polar area percentage of greater than 50%, absent evidence to the contrary. An area percentage of greater than 50% overlaps the instantly claimed area percentage of 70% or more. See MPEP 2144.05(I), which states that ‘In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists’.
Regarding claim 2, Wang discloses the quantum dot according to claim 1, wherein the surface can include only the polar planes. As discussed above, Chen discloses a polar dominant plane, with an area percentage of greater than 50%. See para [0045] and Fig 1. Greater than 50% overlaps and includes 100%, which would include only the polar planes. See MPEP 2144.05(I) cited above.
Regarding claim 8, Wang discloses the quantum dot according to claim 1, further comprising:
a wurtzite crystal system, wherein the surface includes two planes, ±(0001), consisting of a (0001) plane and a (000-1) plane (para [0043]).
Regarding claim 14, Wang discloses the quantum dot according to claim 1, further comprising:
a sodium chloride crystal system,
wherein the surface includes six planes consisting of a (100) plane, a (-100) plane, a (010) plane, a (0-10) plane, a (001) plane, and a (00-1) plane (para [0069]).
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 1-3 and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 12, and 14 and of U.S. Patent No. 12302670 B2 (hereinafter 670). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping quantum dots having only nonpolar planes instant claims 1 and 2 and 670 claims 4 and 12). Only (all) nonpolar planes fall within the instantly claimed range of an area percentage of 70% or more. Both teach overlapping core/shell quantum dots (instant claim 3 and 670 claims 1, 3, and 6). Both also teach quantum dots comprising a wurtzite system with at least six planes/faces (hexagonal prism, 670 claim 5) wherein the surface includes the same planes (instant claim 15 and 670 claims 2 and 14, first crystal plane), (instant claim 16 and 670 claims 2 and 14, first and second crystal planes), and (instant claim 17 and 670 claims 4 and 12). 670 claim 6 recites II-VI semiconductors, which include ZnS. The 670 claims do not expressly recite the term “wurtzite”. However, the planes as disclosed in 670 claims 2, 4, and 12 are drawn to wurtzite crystal systems.
Claims 1, 2, 4-6, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7 and 13 of U.S. Patent No. 12497289 B2 (hereinafter 289). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping quantum dots having only polar planes instant claims 1 and 2 and 289 claims 1 and 7). Only (all) polar planes falls within the instantly claimed range of an area percentage of 70% or more. Both teach quantum dots comprising a zinc-blende system with multiple planes/faces wherein the surface includes the same planes (instant claim 4 and 289 claim 1, tetradecahedron), (instant claim 5 and 289 claims 1(a) and 7(a), quadrangular faces), (instant claim 6 and 289 claim 1(b), hexagonal faces), and (instant claim 13 and 289 claim 13, dodecahedron). The quantum dots are defined as II-VI crystals (col 11, ln 10-11 of the 289 disclosure), which include ZnS. The 289 claims do not expressly recite the term “zinc-blende”. However, the planes as disclosed in 289 claims 1, 7 and 13 are drawn to zinc-blende crystal systems.
Claims 1-3, 5-7, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8-13 of copending Application No. 19/118840 (hereinafter 840). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping quantum dots having 70% of or more of the quantum dot surface constituted by one type of equivalent crystal plane (instant claims 1 and 2 and 840 claims 1, 2, 4 and 13). 840 claim 4 expressly recites polar planes. 840 claim 13 recites the (11-20) plane, which is nonpolar. 840 claim 1 recites 80% or more, which falls within the instantly claimed range of 70% or more as set forth in instant claim 1. Both teach overlapping core/shell structures (instant claim 3 and 840 claim 3). Both also teach overlapping quantum dots having a zinc-blend structure with equivalent crystal planes. See instant claim 5 and 840 claims 8 and 9, (100) equivalent plane, defined in para [0052] of the printed publication, US 2026/0143862 A1 (hereinafter 862), instant claim 6 and 840 claim 10, (111) equivalent plane, defined in 862 para [0055], and instant claim 13 and 840 claim 11, (110) equivalent plane, defined in 862 para [0057] .Both also teach overlapping quantum dots having a sodium chloride structure with equivalent crystal planes (instant claim 7 and 840 claim 12 (111) equivalent plane).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/L.E./ Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
Prosecution Insights