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 .
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 1-11 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11753589. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims teach a quantum dot comprising an overlapping structure and composition.
Regarding Claim 1: The patented claims teach a quantum dot comprising a core and a first shell covering the core (See Claim 1). The core (first semiconductor) may comprise a group III-V compound such as InGaP, which is a composition comprising indium, phosphorus, and a first element, which may be a group III element (Ga) (See Claim 14). The first shell may comprise a group III-VI compound, which is a composition comprising a second element which is a Group III element (such as Ga) and a third element which is a Group VI element (such as S). The patented claims are silent in terms of the claimed inequality wherein the content of the first, second and third element are more than 7 times the content of Indium in the core; however the patented claims teach that the core may comprise Indium and the shell may comprise Gallium and the ratio of Gallium to Indium may be up to 4.5:1 (See Claim 21). The shell further contains an anion such as Sulfur (See Claim 17). The sulfur content in such a composition may be up to 1.5 times greater than Gallium (See Claim 17). Thus the ratio of the second and third element to indium may be (Ga+S)/In=(4.5+1.5*4.5)/1=11.25. It is noted that the patented claims teach that the core may also contain a first element as claimed, which is added to the numerator in this ratio. The patented claims thus teach an overlapping range of compositions. Overlapping ranges establish a prima facie case of obviousness. Those of ordinary skill in the art would only need to select from the overlapping portion of the range to arrive at the invention as claimed.
Regarding Claim 2: The patented claims teach that the second shell may an alloy of several elements and the composition may be (M22-xM3x)(X23-yX3y), wherein M2 is the second element as claimed and may be Ga and X2 is a third element as claimed and may be S (See patented Claim 17). Where the value of y is greater than 0, the ratio of (M1+M2)/M3 as claimed may be less than 1.5.
Regarding Claim 3-4: Both the first and second element may be Ga and the third element may be S (See patented claim 14 and 17).
Regarding Claim 5: The patented claims teach that the core may be any III-V compound, which may include any element selected from In, Ga, Al, and B (See Patented claim 1).
Regarding Claim 6-7: The first shell comprises a group III-VI compound (See patented claim 1), and may be based on GaS, In2S3, and InaGaS3 (See Patented claim 17).
Regarding Claim 8: The patented claims teach that the first shell may be made from Ga2Ss. The thickness of at least one monolayer of such a composition would at least overlap the claimed thickness.
Regarding Claim 9-10: The patented claims teach that the quantum dot may comprise a second shell may comprise a Group II-VI compound, which comprises a sixth element selected from Group II elements and seventh element selected from Group VI elements (See Patented claim 1).
Regarding Claim 11: The patented claims are silent in terms of the maximum emission wavelength of the quantum dots. However, the patented claims teach an overlapping range of quantum dots having the same layer structure and compositions as instantly claimed. As the composition and structure of the patented quantum dots are the same as those instantly claimed, those of ordinary skill in the art would expect them to have the same properties as claimed.
Regarding Claim 19-20: The patented claims teach the use of the quantum dots discussed above in an electronic device having a first and second electrode and the quantum dots disposed there between. The device described is a photovoltaic device (See Patented Claim 35).
Claims 1-11 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40 of U.S. Patent No. 12371617. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims teach a quantum dot comprising an overlapping structure and composition.
Regarding Claim 1: The patented claims teach a quantum dot comprising a core and a first shell covering the core (See Claim 1). The core (first semiconductor) may comprise a group III-V compound such as InGaP, which is a composition comprising indium, phosphorus, and a first element, which may be a group III element (Ga) (See patented Claim 8). The first shell may comprise a group III-VI compound, which is a composition comprising a second element which is a Group III element (such as Ga) and a third element which is a Group VI element (such as S). The patented claims are silent in terms of the claimed inequality wherein the content of the first, second and third element are more than 7 times the content of Indium in the core; however the patented claims teach that the core may comprise Indium and the shell may comprise Gallium and the ratio of Gallium to Indium may be up to 4.5:1 (See Claim 21). The shell further contains an anion such as Sulfur (See Claim 11). The sulfur content in such a composition may be up to 1.5 times greater than Gallium (See Claim 11). Thus the ratio of the second and third element to indium may be (Ga+S)/In=(4.5+1.5*4.5)/1=11.25. It is noted that the patented claims teach that the core may also contain a first element as claimed, which is added to the numerator in this ratio. The patented claims thus teach an overlapping range of compositions. Overlapping ranges establish a prima facie case of obviousness. Those of ordinary skill in the art would only need to select from the overlapping portion of the range to arrive at the invention as claimed.
Regarding Claim 2: The patented claims teach that the second shell may an alloy of several elements and the composition may be (M22-xM3x)(X23-yX3y), wherein M2 is the second element as claimed and may be Ga and X2 is a third element as claimed and may be S (See patented Claim 11). Where the value of y is greater than 0, the ratio of (M1+M2)/M3 as claimed may be less than 1.5.
Regarding Claim 3-4: Both the first and second element may be Ga and the third element may be S (See patented claim 8 and 11).
Regarding Claim 5: The patented claims teach that the core may be any III-V compound, which may include any element selected from In, Ga, Al, and B (See Patented claim 1).
Regarding Claim 6-7: The first shell comprises a group III-VI compound (See patented claim 1), and may be based on GaS, In2S3, and InaGaS3 (See Patented claim 11).
Regarding Claim 8: The patented claims teach that the first shell may be made from Ga2Ss. The thickness of at least one monolayer of such a composition would at least overlap the claimed thickness.
Regarding Claim 9-10: The patented claims teach that the quantum dot may comprise a second shell may comprise a Group II-VI compound, which comprises a sixth element selected from Group II elements and seventh element selected from Group VI elements (See Patented claim 1).
Regarding Claim 11: The patented claims are silent in terms of the maximum emission wavelength of the quantum dots. However, the patented claims teach an overlapping range of quantum dots having the same layer structure and compositions as instantly claimed. As the composition and structure of the patented quantum dots are the same as those instantly claimed, those of ordinary skill in the art would expect them to have the same properties as claimed.
Regarding Claim 19-20: The patented claims teach the use of the quantum dots discussed above in an electronic device having a first and second electrode and the quantum dots disposed there between. The device described is a photovoltaic device (See Patented Claim 34).
Allowable Subject Matter
Claims 12-18 are allowed.
The following is an examiner’s statement of reasons for allowance: The closest relevant art to the claimed method is considered to be US11725142, which teaches the creation of similar quantum dots, wherein the core may be a III-V compound alloyed with Ga and the shell may be a group III-VI. The various elements in the patented claims are provided in amounts that do not meet the instantly claimed inequality 1 (See patented claim 1 setting forth the atomic percentages relative to the group III element in the core, which may be Indium). It is noted that this patent has a common assignee with the instant application.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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
Prosecution Insights