DETAILED ACTION
Claim 2 has been cancelled by applicant. Claims 1, 3, and 4 are examined in this office 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 .
Drawings
The drawings are objected to because Figures 1a-2c are difficult to decipher. The figures appear to have text at the bottom, including scale bars, that are illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 1, 3 and 4 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 “a crystalline compound,” “an organic compound,” and “the crystalline compound being an organic compound…” It is unclear whether “an organic compound containing a reactive group” is the same or different in identity as “an organic compound” recited to be further limiting “the crystalline compound.” Claim 1 is therefore indefinite in scope, and claims 3 and 4 do not rectify the issue so are similarly rejected.
Claim 3 additionally recites “wherein the crystalline compound is boric acid.” Claim 1 requires that the crystalline compound be organic and have an aromatic ring, while boric acid does not meet these limitations. Claim 3 is therefore indefinite in scope.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 recites boric acid, which does not incorporate the limitation of being an organic compound or the limitation of having an aromatic ring, required in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claim(s) 1, 3, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. 2019, CN 110003899 A, in view of Anju et al. 2020, Nanotechnology 32 025501. A machine English translation of Liu is provided with this office action and is cited herein.
Regarding claim 1, Liu teaches a method for preparing boron-nitrogen co-doped fluorescent carbon quantum dots (0008) comprising
preparing a mixture by mixing a crystalline compound containing boron, sulfur, and/or phosphorus and being solid at 1 atm and 25°C (boric acid, 0093, which is solid at standard temperature and pressure), and an organic compound containing a reactive group (glucose, 0093) (Liu teaches that the compounds are ground (0093), which meets the limitation that the compound is solid at 1 atm and 25°C)
preparing carbon quantum dots by heating the mixture at 100 C or higher and 300°C or lower substantially in the absence of a solvent (0094)
where an amount of the crystalline compound in the mixture being 45 parts by mass or greater and 1000 parts by mass or less with respect to 100 parts by mass of the organic compound (Example 5, 1 g of boric acid to 2 g of glucose, 0093).
Liu does not teach that the crystalline compound, boric acid, is an organic compound and having an aromatic ring in a molecule. However, Anju teaches an analogous preparation method for a water-soluble nitrogen-phosphorus-boron co-doped carbon quantum dot (abstract) wherein the doping of boron is conducted by using 4-hydroxy phenylboronic acid (abstract).
It would be obvious to one skilled in the art prior to the effective filing date of the invention to recognize the suitability of the phenylboronic acid taught by Anju as a substitute for the boric acid used in the invention taught by Liu, because Anju teaches that the phenylboronic acid is the source of the boron doped in the CQDs (p. 2, column 2, pp. 1) and therefore acts predictably and in an analogous function as the boric acid taught in Liu (0010, obtained from boric acid, 0009). Anju further teaches that the phenylboronic acid is an excellent source of carbon for the synthesis of the carbon quantum dots (p. 2, column 2, pp. 1). It would therefore be obvious to one skilled in the art before the effective filing date of the invention that the simple substitution of boric acid taught by Liu with phenylboronic acid taught by Anju would have a predictable outcome and result in the claimed invention. See MPEP 2143(I)B regarding the substitution of known elements.
Regarding claim 3, Liu teaches boric acid (0009), and Liu modified by Anju, Anju teaches 4-hydroxy phenylboronic acid (p. 2, column 2, pp. 1).
Regarding claim 4, Liu teaches that the obtained carbon quantum dots have a fluorescence emission spectrum maximum at 440 nm when excited at 360 nm (0122, Figure 4). This falls within the range of 350 nm or higher and 750 nm or lower, as required by the instant claim. Anju additionally teaches that the obtained carbon quantum dots have a fluorescence emission spectrum maximum at 398 nm when excited at 295 nm (Figures 2b and 3b).
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 and 4 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 2 of co-pending Application No. 18/551,318 in view of Anju.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 of co-pending ‘318 claims “a method for producing carbon quantum dots, the carbon quantum dots being solid at 25° C. under 1 atm, the method comprising: preparing a mixture by mixing an organic compound and a boron compound, 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 100° C. or higher and 300° C. or lower, wherein an amount of a nitrogen atom in the organic compound is 20 mass % or greater; and 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.” The range of parts by mass in the instant claim, of 45 to 1000 per 100 parts of the organic compound, corresponds to a mass % of boron compound of approximately 31% to 91% by mass. Without evidence of the criticality of this range, it is prima facie obvious to vary the range claimed in ‘318 and arrive at the instant claimed range; see MPEP 716,02(d) I and II.
Claim 1 of co-pending ‘318 does not claim a crystalline compound at 1 atm and 25 C, the crystalline compound being an organic compound and having an aromatic ring in a molecule. However, Anju teaches a preparation method for a water-soluble nitrogen-phosphorus-boron co-doped carbon quantum dot (abstract) wherein the doping of boron is conducted by using 4-hydroxy phenylboronic acid (abstract), which is solid under standard conditions.
It would be obvious to one skilled in the art prior to the effective filing date of the invention to recognize the suitability of the phenylboronic acid taught by Anju as a boron compound, because Anju teaches that the phenylboronic acid is the source of the boron doped in the CQDs (p. 2, column 2, pp. 1) and therefore acts predictably and in an analogous function as the boron compound of ‘318 (0016). Anju further teaches that the phenylboronic acid is an excellent source of carbon for the synthesis of the carbon quantum dots (p. 2, column 2, pp. 1), performing an analogous function to the organic compound of ‘318 (0016). It would therefore be obvious to one skilled in the art to use phenylboronic acid in the invention of ‘318.
Regarding claim 4, claim 2 of ‘318 claims the invention of claim 1 as applied above; further, the range claimed in claim 2 of ‘318, 440 nm to 700 nm, falls within the instant claimed range.
Claim 3 is provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 of co-pending Application No. 18/551,318 in view of Anju as applied to claim 1 above, and in further view of Liu.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 3, claim 1 of ‘318 claims the invention of claim 1 as discussed above. Claim 1 of ‘318 does not claim boric acid specifically. However, boric acid would be an obvious selection for the boron compound claimed in claim 1 of ‘318 in view of Liu, who teaches the use of boric acid to synthesize carbon quantum dots (0009). One skilled in the art would be motivated to select boric acid as the boron compound, because Liu teaches that the compounds used avoid further treatment with surface passivating agents (0022). It would therefore be obvious to one skilled in the art to use boric acid in the invention of ‘318.
Conclusion
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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/Eileen Moudou/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738