DETAILED ACTION
This is the final office action for 18/418,382, filed 1/22/2024, which claims priority to Chinese application CN202310744701.5, filed 6/5/2023.
Claims 1-4, 6-15, 17-20 are pending. Claims 1-4 and 6-12 are considered herein.
In light of the amendments filed 8/28/2025, the objection to Claim 6 is withdrawn, the rejections under 35 U.S.C. 112(b) are withdrawn, the prior art rejections are withdrawn, and new grounds of rejection are presented herein.
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 .
Additional Prior Art
The Examiner wishes to apprise the Applicant of the following references, which are not currently applied in a rejection.
Dai, et al. (Prog. Photovolt. Res. Appl. 2019; 27: 283-289)
Xie, et al. (J. Mater. Chem. C, 2016, 4, 9879-9886)
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “esther” in the final line of Claim 1. It is the Examiner’s position that this limitation should be written as “ester.” Appropriate correction is required.
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 1-4 and 6-12 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 that the light-conversion film comprises a “thermoplastic elastomer.” Therefore, the metes and bounds of Claim 1 are indefinite, because it appears from the instant specification that the “thermoplastic elastomer” underdoes crosslinking in the process to form the film, which would render the thermoplastic starting material a thermoset material in the final film (see, e.g. paragraph [0052]).
Claims 2-4 and 6-12 are indefinite, because of their dependence on Claim 1.
Claim 6 is indefinite, because it depends on canceled claim 5. Therefore, the metes and bounds of Claim 6 are indefinite.
Claim 10 recites that the ultraviolet cutoff-layer comprises a “thermoplastic elastomer.” Therefore, the metes and bounds of Claim 10 are indefinite, because it appears from the instant specification that the “thermoplastic elastomer” underdoes crosslinking in the process to form the film, which would render the thermoplastic starting material a thermoset material in the final film (see, e.g. paragraph [0052]).
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-4, 6, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Wu, et al. (Carbon 207 (2023) 77-85, and its supplemental information), in view of Maeda, et al. (U.S. Patent Application Publication 2013/0147345 A1).
In reference to Claim 1, Wu teaches an insulation light-conversion film, corresponding to the film made by combining 5% (i.e. 0.052 g, or 5.2 parts) siloxane-coated carbon quantum dots, 1.0 g PDMS (i.e. 100 parts PDMS), and 0.01 g Tyzor (i.e. 1 part Tyzor), and then subjected to curing (Supplemental information, Table 1, further described in sections 2.1-2.3).
It is noted that the siloxane coating on the carbon quantum dots is described in paragraph 3 of column 1 of page 80.
This disclosure teaches the limitations of Claim 1, wherein the film comprises a thermoplastic elastomer, i.e. PDMS, siloxane-coated quantum dots, and a crosslinking agent (i.e. Tyzor).
This disclosure teaches the limitations of Claim 1, wherein the thermoplastic elastomer (PDMS) is present at 100 parts.
This disclosure teaches the limitations of Claim 1, wherein the siloxane-coated quantum dots are present in 1-5 parts, i.e. 5.2 parts.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 I.
In the instant case, the claimed range of 1-5 parts does not overlap, but is sufficiently close to, the taught value of 5.2 parts, as to render the claimed range obvious.
It is noted that Claim 1 does not require that the “crosslinking agent” and the “co-crosslinking agent” are different materials.
Therefore, it is the Examiner’s position that, because Wu teaches that the crosslinking agent is present at a level of 1 part, 0.5 part of this quantity meets the limitations of Claim 1, wherein the crosslinking agent is present at 0.2-2 parts, i.e. 0.5 parts.
It is further the Examiner’s position that, because Wu teaches that the crosslinking agent is present at a level of 1 part, 0.5 part of this quantity meets the limitations of Claim 1, wherein the co-crosslinking agent is present at 0.2-0.5 parts, i.e. 0.5 parts.
Wu does not teach that the composition of his invention comprises an antioxidant or a photostabilizer.
To solve the same problem of providing a wavelength conversion filter for a photovoltaic device (Abstract), Maeda teaches that optical functional layers comprising binder resins may suitably further include photostabilizers and antioxidants (paragraph [0078]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have included a photostabilizer and an antioxidant in the film of Wu, based on the disclosure of Maeda.
It is further the Examiner’s position that one of ordinary skill in the art at the time the instant invention was filed would have been motivated to optimize the amount of photostabilizer and antioxidant in the film of modified Wu, in order to balance the desired photostability and antioxidant properties of the film (which would improve with increasing quantities of these components), with the film cost (which would also increase with increasing quantities of these components).
It is the Examiner’s position that this routine optimization would have led one of ordinary skill in the art at the time the instant invention was filed to have arrived at the claimed amounts of photostabilizer and antioxidant recited in Claim 1, without undue experimentation.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
It is noted that “wherein the silane coated carbon quantum dots are obtained by….outer-most coating of the siloxane-coated carbon quantum dots” are product-by-process limitations of the claim.
It is the Examiner’s position that the structural features required by these limitations include carbon quantum dots with an insulating exterior coating of siloxane.
Wu teaches that the carbon quantum dots are coated with an insulating exterior coating of siloxane (Fig. 2, scheme 1, further described in paragraph 3, column 1, page 80).
The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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) (see MPEP § 2113).
In reference to Claim 2, Claim 2 is considered product-by-process Claim 2.
It is the Examiner’s position that the structural features required by Claim 2 include carbon quantum dots with an insulating exterior coating of siloxane.
Wu teaches that the carbon quantum dots are coated with an insulating exterior coating of siloxane (Fig. 2, scheme 1, further described in paragraph 3, column 1, page 80).
The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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) (see MPEP § 2113).
In reference to Claim 3, Wu teaches that the carbon quantum dots comprise fluorescent carbon particle quantum dots (Fig. 1, Abstract).
In reference to Claims 4 and 6, it is the Examiner’s position that the structural features required by Claims 4 and 6 include carbon quantum dots with an insulating exterior coating of siloxane.
Wu teaches that the carbon quantum dots are coated with an insulating exterior coating of siloxane (Fig. 2, scheme 1, further described in paragraph 3, column 1, page 80).
The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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) (see MPEP § 2113).
In reference to Claim 7, it is the Examiner’s position that Claim 7 does not structurally limit the layer of Claim 2. Therefore, it is the Examiner’s position that modified Wu as applied to Claim 2 teaches Claim 7.
In reference to Claim 9, modified Wu as applied to Claim 1 does not teach the double-layer film of Claim 9, because he does not teach an ultraviolet cutoff-layer adhesive film.
To solve the same problem of providing a wavelength conversion filter for a photovoltaic device (Abstract), Maeda teaches that optical functional layers comprising binder resins may suitably further include UV absorbers (paragraph [0078]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have included a UV absorber in the luminescent film of Wu, based on the disclosure of Maeda.
This modification teaches the limitations of Claim 9, of a double-layer light-conversion adhesive film, comprising the insulation light-conversion film, and an ultraviolet cutoff-layer adhesive film.
Specifically, the outer half of the film of modified Wu corresponds to the layer of Claim 1, and the inner half of the film of modified Wu (which comprises the ultraviolet absorber layer of Maeda), corresponds to the “ultraviolet cutoff-layer adhesive film.”
This modification teaches the limitations of Claim 12, of a photovoltaic assembly (taught by Wu as the “single-layer LSC” solar cell configuration in section 2.5, pages 78-79) comprising the double-layer light conversion adhesive film according to Claim 9.
In reference to Claim 10, as described in the rejection of Claim 9 above, the ultraviolet cutoff layer film corresponds to the inner half of the film of modified Wu (which comprises the ultraviolet absorber layer of Maeda).
As described in the rejection of Claim 1 above, modified Wu teaches that the film of his invention (a portion of which corresponds to the “ultraviolet cutoff layer” of Claim 10) comprises 5% (i.e. 0.052 g, or 5.2 parts) siloxane-coated carbon quantum dots, 1.0 g PDMS (i.e. 100 parts PDMS), 0.01 g Tyzor (i.e. 1 part Tyzor), (Supplemental information, Table 1, further described in sections 2.1-2.3), and a photostabilizer and an antioxidant (per the teachings of Maeda).
This disclosure teaches the limitations of Claim 10, wherein the thermoplastic elastomer (PDMS) is present at 100 parts.
It is noted that Claim 10 does not require that the “crosslinking agent,” the “co-crosslinking agent,” and the “silane coupling agent” are different materials.
Therefore, it is the Examiner’s position that, because Wu teaches that the crosslinking agent is present at a level of 1 part, 0.35 part of this quantity meets the limitations of Claim 10, wherein the crosslinking agent is present at 0.2-2 parts, i.e. 0.35 parts.
It is further the Examiner’s position that, because Wu teaches that the crosslinking agent is present at a level of 1 part, 0.35 part of this quantity meets the limitations of Claim 10, wherein the co-crosslinking agent is present at 0.2-0.5 parts, i.e. 0.35 parts.
It is further the Examiner’s position that, because Wu teaches that the crosslinking agent is present at a level of 1 part, 0.35 part of this quantity meets the limitations of Claim 10, wherein the silane coupling agent (i.e. the remaining portion of the Tyzor, which is structurally capable of coupling to a silane) is present at 0.3-1 parts, i.e. 0.3 parts.
Alternatively, the “silane coupling agent” can be interpreted as “1 part” of the portion of the APTES-coated carbon quantum dots. These quantum dots meet the limitations of a “silane coupling agent,” because they are structurally capable of coupling to a silane and are made from a silane precursor.
This interpretation teaches the limitations of Claim 10, wherein the silane coupling agent is present at 0.3-1 parts, i.e. 1 part.
Modified Wu does not teach that the composition of his invention (a portion of which corresponds to the ultraviolet cutoff layer of Claims 9-10) comprises a UV absorbent.
To solve the same problem of providing a wavelength conversion filter for a photovoltaic device (Abstract), Maeda teaches that optical functional layers comprising binder resins may suitably further include a UV absorber (paragraph [0078]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have included a UV absorber in the film of Wu, based on the disclosure of Maeda.
It is further the Examiner’s position that one of ordinary skill in the art at the time the instant invention was filed would have been motivated to optimize the amount of UV absorber in the film of modified Wu, in order to balance the desired UV absorption properties of the film (which would improve with increasing quantities of this component), with the film cost (which would also increase with increasing quantities of this components).
It is the Examiner’s position that the routine optimization of the amount of UV absorber in the film would have led one of ordinary skill in the art at the time the instant invention was filed to have arrived at the claimed amount of UV absorber recited in Claim 10, without undue experimentation.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
As described in the rejection of Claim 1 above, it is the Examiner’s position that the routine optimization of the amount of photostabilizer and antioxidant in the film would have led one of ordinary skill in the art at the time the instant invention was filed to have arrived at the claimed amounts of photostabilizer and antioxidant recited in Claim 10, without undue experimentation.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
In reference to Claim 11, Wu teaches a photovoltaic assembly comprising the film of Claim 1 as a single-layer light-conversion film, corresponding to the “single-layer LSC” solar cell configuration in section 2.5, pages 78-79.
Claims 2-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Wu, et al. (Carbon 207 (2023) 77-85, and its supplemental information), in view of Maeda, et al. (U.S. Patent Application Publication 2013/0147345 A1), and further in view of Chen (U.S. Patent Application Publication 2018/0315898 A1).
The following alternate rejections are presented below, if it is found that Wu in view of Maeda does not teach the limitations of Claims 2-4 and 6-7.
In reference to Claim 2, Claim 2 is considered product-by-process Claim 2.
Claim 2 will be interpreted to require that the carbon quantum dots are coated with a siloxane coating comprising a silicate ester and a silane coupling agent. The other components of Claim 2 are interpreted to be used in the formation of the coated carbon quantum dots, and are not necessarily present in the final material.
As described in the rejection of Claim 1 above, Wu teaches that the film comprises a silane coupling agent, corresponding to the APTES, because he teaches that APTES is chemically connected to the carbon core (second paragraph, column 1, page 80).
Modified Wu as applied to Claim 1 does not teach that the siloxane coating comprises a silicate ester.
To solve the same problem of providing a quantum dot containing layer for an optoelectronic device, Chen teaches that encapsulating quantum dots within a siloxane layer comprising tetramethyl orthosilicate prevents the optical core of the quantum dot from photooxidizing (paragraph [0053]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have incorporated a siloxane made from tetramethyl orthosilicate as part of an encapsulation layer on each of the quantum dots of modified Wu, based on Chen’s disclosure that such an encapsulation layer provides the benefit of preventing the optical core of the quantum dot from photooxidizing (paragraph [0053]).
This modification teaches the structural limitations of Claim 2, wherein the siloxane coating is partially formed from a silicate ester.
This modification teaches the limitations of Claims 4 and 6, wherein the silicate ester is tetramethyl orthosilicate.
In reference to Claim 3, Wu teaches that the carbon quantum dots comprise fluorescent carbon particle quantum dots (Fig. 1, Abstract).
In reference to Claim 7, it is the Examiner’s position that Claim 7 does not structurally limit the layer of Claim 2. Therefore, it is the Examiner’s position that modified Wu as applied to Claim 2 teaches Claim 7.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wu, et al. (Carbon 207 (2023) 77-85, and its supplemental information), in view of Maeda, et al. (U.S. Patent Application Publication 2013/0147345 A1), and further in view of Buller, et al. (U.S. Patent Application Publication 2008/0047599 A1).
In reference to Claim 8, modified Wu does not teach that the thermoplastic elastomer is POE or EVA.
Instead, as described above, Wu teaches that the thermoplastic elastomer is PDMS.
To solve the same problem of providing a luminescent layer for a photovoltaic cell, Buller teaches a luminescent layer 310 (Fig. 7, paragraphs [0083]-[0085]) comprising quantum dots (paragraph [0085]) in a polymer matrix (paragraph [0076]).
Buller further teaches that the matrix polymer for this luminescent solar cell outer layer may suitably be PDMS or EVA (paragraph [0076]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used EVA in place of the PDMS within the luminescent layer of modified Wu, based on Buller’s disclosure that both PDMS and EVA are suitable polymer matrices for use in luminescent outer layers for solar cells.
This modification teaches the limitations of Claim 8, wherein the thermoplastic elastomer is EVA.
Response to Arguments
Applicant’s arguments regarding the claim objections, the rejections under 35 U.S.C. 112(b), and the prior art rejections have been fully considered and are persuasive. These rejections have been withdrawn, and new grounds of rejection are presented herein.
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.
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/SADIE WHITE/Primary Examiner, Art Unit 1721