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 .
Response to Arguments
Applicant's arguments filed 02-12-2026 have been fully considered but they are not persuasive. Applicant argues that the cited prior art does not teach all the limitations of independent claim 1 and that the Examiner did not consider all claim elements or limitations. Applicant further argues that the Examiner appears to be confused with superficially similar nomenclature ("quantum dots") that involves fundamentally different structures, compositions, and functions. Applicant argues that the cited prior art does not teach or suggest a carbon quantum dot anion. Examiner respectfully disagrees.
The cited prior art (US 2009/0152664) teaches that the photodetector comprises quantum dots that transports carrier types (paragraph 110). Klem further discloses that the quantum dots are charged (paragraph 115) and have oxide layers (paragraph 131); and the Examiner submits that charged layer oxides are surface oxygen anion. The lithium metal carrier of the cited prior art is sufficient to anticipate the alkali metal cation of the claim because it is charged in the transference of electrons. Additionally, while the “consisting of” inclusive language is utilized, it is directed to what the salt form—a term found only in the preamble—is. The composition itself can contain additional components.
Applicant arguments are still not persuasive for reasons made herein and of record.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Pre-Grant Publication No. 2009/0152664 hereinafter Klem.
Regarding Claim 1, Klem teaches an apparatus comprising: a photodetector comprising multiple electrodes with a semiconductor film between them, the photodetector comprising quantum dots that transports carrier types (paragraph 110). Klem discloses that the quantum dots are charged (paragraph 115) and have oxide layers (paragraph 131); it is the Office’s position that charged layer oxides are surface oxygen anion. Klem discloses that that the QDs are 0.5 to 10 nm in size (paragraph 104). Since the composition is the same as claimed, it must have the same properties (surface potential). See MPEP 2112.01. It should be noted that while the “consisting of” inclusive language is utilized, it is directed to what the salt form—a term found only in the preamble—is. The composition itself can contain additional components.
Regarding Claims 2-6, Klem teaches surface carboxyl functional groups (paragraph 455) and that the carriers are lithium (paragraph 586). Because the QDs are 0.5 to 10 nm in size (paragraph 104) and the composition is the same as claimed, then it must have the same properties (surface potential). See MPEP 2112.01 as shown above.
Regarding Claims 7-9, Klem teaches that the device is a photodetector as described above and a battery is not necessarily present in claim 7.
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-4, 12-14 and 16 of copending Application No. 16,616,283 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to a device comprising an electrolyte that comprises a salt form consisting of:(i) an alkali metal cation, and (ii) a carbon quantum dot anion in a form of graphite oxide having at least one oxygen anion on a surface thereof and having an average diameter in the range of 2 to 12 nanometers (nm) and a surface potential of -20 mV or less.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,996,521. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to a device comprising an electrolyte that comprises a salt form consisting of:(i) an alkali metal cation, and (ii) a carbon quantum dot anion in a form of graphite oxide having at least one oxygen anion on a surface thereof and having an average diameter in the range of 2 to 12 nanometers (nm) and a surface potential of -20 mV or less.
Conclusion
THIS ACTION IS MADE FINAL. 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 OSEI K AMPONSAH whose telephone number is (571)270-3446. The examiner can normally be reached Monday - Friday, 8:00 am - 5:00 pm EST.
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, NICHOLAS A SMITH can be reached at (571)272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OSEI K AMPONSAH/ Primary Examiner, Art Unit 1752