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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/14/2026 was considered by the examiner.
Response to Amendment
The amendment filed 06/05/2026 has been entered. Claims 1-2 and 4 remain pending in the application. Claim 3 has been canceled by Applicant. Applicant's amendments to the claims have overcome the 103 rejections previously set forth in the non-final office action mailed on 04/02/2026, thus rendering the rejections upon claims 1-2 and 4 moot. The Examiner has therefore withdrawn these rejections.
Response to Arguments
Applicant’s arguments, see page 3, filed 06/05/2026, with respect to the rejection(s) of claim(s) 1-2 and 4 under U.S.C. 102(a)(1) have been fully considered and are persuasive. Specifically, Applicant asserts that Liu does not teach the mass percent of nitrogen in the organic compound; the Examiner finds this argument persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, new grounds of rejection are set forth in this action, based on the combination of Liu et al. 2020, which teaches a solvent-free method of forming carbon quantum dots, and CN 110003899 A (Liu 2). Applicant’s amendments to the claims have rendered the previous nonstatutory double patenting rejections moot, and the rejections over copending 18/846,912 and 18/551,332 have been withdrawn. However, new grounds of rejection over copending 18/846,912 are set forth in this action.
Claim Rejections - 35 USC § 103
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.
Claims 1-2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. 2020, One-pot synthesis of highly fluorescent boron and nitrogen co-doped graphene quantum dots for the highly sensitive and selective detection of mercury ions in aqueous media, Journal of Photochemistry and Photobiology A: Chemistry, Volume 389, 2020, 112255, ISSN 1010-6030, referred to herein as Liu, in view of CN 110003899 A, referred to herein as Liu 2, previously cited in the Office action mailed 04/02/2026.
Regarding claim 1, Liu teaches a method for producing carbon quantum dots (“synthesis strategy to synthesize B,N-GQDs,” p. 2 col. 1), the carbon quantum dots being solid at 25°C under 1 atm (“the brownish black, B,N-GQDs solid powder was generated,” p. 2 col. 2 Section 2.3), the method comprising: preparing a mixture by mixing an organic compound (CA + urea) and a boron compound (boric acid, Section 2.3), the organic compound having a reactive group and not containing a boron atom; and preparing carbon quantum dots by heating the mixture with substantially no solvent at 1000C or higher and 300°C or lower (200 C, Section 2.3; no solvent is disclosed until after the obtaining of the powder: B,N-GQDs aqueous solution; see also Scheme 1), wherein the organic compound comprises a nitrogen-containing organic compound (urea) and a nitrogen-free organic compound (CA, citric acid); the nitrogen-free organic compound is at least one selected from a group consisting of a carboxylic acid, an alcohol, and phenols (CA being a carboxylic acid); and an amount of a nitrogen atom in the organic compound is 20 mass% or greater (urea having the formula CO(NH2)2 which has a nitrogen mass percentage of 28/60 or 47%.
Liu does not teach that an amount of the boron compound with respect to a total amount of the organic compound and the boron compound is 20 mass% or greater (Liu teaches 0.1 g of boric acid, which is 11% by mass of the total mixture). However, Liu teaches that the 0.1 g of boric acid is used in a typical synthesis routine (Section 2.3) and further teaches that the doping of boron on the GQDs is a known parameter in the art that affects the electronic properties of these materials advantageously (p. 2 col. 1 pp. 1). It would therefore be obvious to one skilled in the art that the amount of boric acid with respect to the total amount of organic compound and boron compound is a result effective variable that directly affects the electronic properties of the invention, therefore motivating one skilled in the art to optimize the amount of boric acid added. Further, Liu 2 teaches an analogous method of producing boron-doped carbon quantum dots (0008) teaching a range of ratios of boron compound relative to organic compounds that overlaps with the presently claimed range as well as with the ratio taught by Liu (Liu 2 teaches 0.2-1 g of boric acid relative to 1.1-2.5 g of organic compounds, 0009). It would therefore be obvious to one skilled in the art to optimize the value taught by Liu within the range of values taught in the prior art including the range of values taught by Liu 2, and reasonably expect predictable behavior, therefore one skilled in the art would arrive at the claimed invention prior to the effective filing date with reasonable expectation of success.
Regarding claim 2, Liu and Liu 2 teach the method as applied to claim 1. Liu further teaches that a maximum emission wavelength of the carbon quantum dots is 440 nm or higher and 700 nm or lower (464 nm, p. 3 col. 2 Section 3.2). Liu and Liu 2 do not teach an emission quantum yield being 30% or greater. However, the emission quantum yield being a property of the quantum dots thus produced, it would be obvious to one skilled in the art that the carbon quantum dots produced by the same invention as the claimed invention must have the same properties as the claimed invention; see MPEP Section 2112.01 (I) and (II). Therefore, given that the instant application provides evidence that the claimed invention leads to carbon quantum dots with a structure capable of having an emission quantum yield of 30% or greater, it follows that the invention taught by Liu and Liu 2, which teach a preparation method to arrive at carbon quantum dots having the same structure as the instant invention, must necessarily be capable of producing an emission quantum yield of 30% or greater. Additionally, Liu discloses the high quantum yield of the carbon quantum dots as an advantage in the technology (0004). Therefore one skilled in the art would be reasonably motivated to optimize the invention taught by Liu in order to produce carbon quantum dots having a high quantum yield, including within the claimed range of 30% or greater, thus arriving at the claimed invention.
Regarding claim 4, Liu and Liu 2 teach the method as applied to claim 1. Liu further teaches that the nitrogen-containing organic compound is urea (Section 2.3), which is known in the art to be an amine compound since the formula is CO(NH2)2.
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 1-2 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-6 of copending Application No. 18/846,912 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims of '912 fully anticipate and encompass the instant claims. Claim 4 of '912 recites each and every limitation of the instant claim 1, with the ranges of ‘912 of mass% for both the nitrogen atom and the boron compound falling within the instant claimed ranges of 20% or greater and 20% or greater respectively. Claim 6 of '912 in view of claim 4 of ‘912 recites each and every limitation of the instant claim 2, with ranges of max emission wavelength and emission quantum yield both falling within the instant claimed ranges of 440-700 nm and 30% or greater respectively. Claim 5 of '912 recites each and every limitation of the instant claim 4.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eileen Moudou whose telephone number is (571)272-1768. The examiner can normally be reached M-Th 8 AM - 4 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eileen Moudou/Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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