DETAILED ACTION
A preliminary amendment was entered on 11/25/24.
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 .
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.
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.
Claim 7 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation an organic semiconductor, and the claim also recites specific examples of semiconductors which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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, 3-9, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Noever et al. (“Transferable Organic Semiconductor Nanosheets for Application in Electronic Devices”, 2017, Adv. Mater. 29, p. 1606283) in light of Kim et al. (“Architectural Engineering of Rod-Coil Compatibilizers for Producing Mechanically and Thermally Stable Polymer Solar Cells,” 2014, ACSNano Vol. 8, No. 10, pp. 10461-70).
Claims 1, 4, 5 and 13: Noever teaches a process of transferring a pentacene film (i.e. an organic semiconductor film) from a first substrate to a target substrate (Abst.), comprising the steps of: coating a water soluble PVA film on a first substrate (p. 2, Col. 2; Fig. 1a); growing a layer of pentacene on the PVA film (p. 2, Col. 2; Fig. 1a); placing the PVA film in contact with water to dissolve it (p. 3, col. 1; Fig. 1a); floating the pentacene film in water (p. 3, col. 1; Fig. 1a); placing one end of the pentacene film in contact with the target substrate (p. 3, col. 1; Fig. 1a) and passing the target substrate through the meniscus of the water at an angle to transfer the pentacene film to the target substrate (p. 3, col. 1; Fig. 1a).
Noever teaches that the pentacene film is floated in the water, but does not teach floating the film on the meniscus of the water. Kim teaches a method of transferring a layer of a semiconductor to a target substrate wherein a water soluble layer is dissolved to free the transferrable layer and explains that the transferrable layer can be floated on the water’s surface rather than within the water’s volume (p. 10468, col. 2). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have floated the pentacene film on the meniscus of the water in Noever with the predictable expectation of success.
Claims 6 and 7: Noever teaches that the semiconductor film is pentacene which is organic and has a molecular weight of about 278 Daltons.
Claims 8 and 9: Noever teaches that any suitable substrate can be selected as the target and gives MoS2 as an example of a material used in organic semiconductor devices (p. 1, col. 1). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected MoS2 as a suitable substrate in the process of Noever with the predictable expectation of success.
Claim 12: Noever also teaches applying gold contacts to the film (p. 4, col. 2).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Noever and Kim in light of Takeya et al. (US 2012/0193618).
Claim 2: Noever teaches drying the substrate, but fails to teach doing so in an upright or inclined position. However, Takeya teaches a process of forming a semiconductor film explains that the angle of inclination used during drying can be adjusted to adjust properties of the film (¶ 0082). Where 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected an inclined angle depending on the desired properties.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Noever and Kim in light of Okachi et al. (US 2016/0035903).
Claims 10 and 11: Noever teaches that a variety of substrates are suitable, but fails to teach an aluminum oxide substrate. Okachi teaches a semiconductor device (Abst.) and explains that a suitable substrate for the semiconductor film in the device is an aluminum oxide layer passivated with a self-assembled monolayer (i.e. claimed SAM) of tetradecylphosphonic acid (¶ 0094). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected the claimed passivated aluminum oxide layer as the substrate in Noever with the predictable expectation of success.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Noever.
Claim 13: As discussed above, with respect to claims 1 and 13, Noever teaches the claimed heterojunction device manufactured by the method of claim 1 except that Noever teaches that the pentacene film is floated in the water, but does not teach floating the film on the meniscus of the water. Claim 13 is a product-by-process claim which is defined by the product produced and not by the method used to produce it. In this case, the Office takes the position that the product produced by the process of Noever would be the same as the product claimed in claim 13.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712