Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
The drawings are objected to because the labeling of each figure in figures 1A-3E, 5A-6D, and 8A-10E with the lower cases letters is unnecessary since they are already individually labeled with the combination of a number and an upper case letter.
Figures 6B and 6D are objected to since it is unclear which black line is the spectrum for pristine SWCNT and which is for MA-SWCNTs
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.
Specification
The disclosure is objected to because of the following informalities:
All occurrences of “-NR4” and “-CR5R6” should be written as “-NR4-” and “-CR5R6-” so that the form of these groups match that of “-O-”. The dash before “C1-4 alkyl” in the definitions for R2, R3 and R4 in paragraphs [0009], [0012], [0050] is unnecessary and should be deleted. In line 2 on page 15, “CR5R6” should be written as “-CR5R6-” so that the form of this group matches the format for the rest of the R1 groups.
The specification states figures 1A, 1B, 3B, 4, 5A-5D, 7, and 10E include colors but the as filed figures are in black and white.
Line 13 on page 19 states the composition comprising the disclosed nanotubes is monodispersed. It is unclear if this means the nanotubes in the composition is monodispersed or if the composition is monodispersed in an undefined material. Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1, 3, 5, 15, 17 and 19 objected to because of the following informalities: In claims 1, 3, 15 and 17; “-NR4” and “-CR5R6” should be written as “-NR4-” and “-CR5R6-” so that the form of these groups match that of “-O-”. In addition, the dash before “C1-4 alkyl” in the definitions for R2, R3 and R4 in claims 1 and 15 is unnecessary and should be deleted. In claims 5 and 19, “CR5R6” should be written as “-CR5R6-” so that the form of this group matches the format for the rest of the R1 groups. Appropriate correction is required.
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.
Claims 8 and 14-20 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 8 refers to Formula IIIB, but this formula is not in the claim. Therefore, the claim is indefinite.
Claim 14 teaches the composition comprising the disclosed nanotubes is monodispersed. It is unclear if this means the nanotubes in the composition is monodispersed or if the composition is monodispersed in an undefined material. Accordingly, this claim is indefinite.
Claim 15, and dependent claims 16-20 which include all the limitations of claim 15, teach a process for producing functionalized SWCNT by mixing a solution of the nanotubes and a solvent with a compound having formula III and heating the mixture at some undefined temperature for some undefine period of time. The claims are indefinite as to what reaction time and temperature ranges applicants intend to cover, i.e. the metes and bounds of the claimed process is unclear.
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.
Claims 1, 2, 7 and 9-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the McPhail et al article.
This article teaches maleic anhydride functionalized single-walled carbon nanotubes. These taught nanotubes have the structure set forth in claims 1 and 2, as shown by the art of record; which means they must inherently emit near-IR photons within the ranges of claims 1 and 11; be bonded to the sidewall at one of the angles of claims 9 and 10; and have three bonding configurations, absent any showing to the contrary. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01. The article teaches the functionalized single-walled carbon nanotubes are HiPco single-walled carbon nanotubes which comprise (6,5), (6,4), (7,6), (8,4), (10,0), (9,1), (12,1) and (9,2) nanotubes and thus meets the requirements of claim 7. The article teaches the claimed nanotubes. The article teaches producing monodispersed suspensions of the taught nanotubes. These suspensions would inherently act as quantum emitter compositions and thus the article teaches the compositions of claims 13 and 13.
Claims 1, 2, and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. patent application publication 2015/0018490.
This reference teaches maleic anhydride functionalized single-walled carbon nanotubes. The examples teach producing these functionalized single-walled carbon nanotubes by combining single-walled carbon nanotubes and maleic anhydride in toluene, which has a boiling point of 110.6oC and thus higher than 110oC; heating the mixture at 180oC for 24 hours and then filtered to obtain the maleic anhydride functionalized single-walled carbon nanotubes. These taught nanotubes have the structure set forth in claims 1 and 2, as shown by the art of record; which means they must inherently emit near-IR photons within the ranges of claims 1 and 11; be bonded to the sidewall at one of the angles of claims 9 and 10; and have three bonding configurations, absent any showing to the contrary. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01. The reference teaches the claimed nanotubes.
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.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent application publication 2015/0018490.
As stated above, the examples of his reference teach producing these functionalized single-walled carbon nanotubes by combining single-walled carbon nanotubes and maleic anhydride in toluene, which has a boiling point of 110.6oC and thus higher than 110oC; heating the mixture at 180oC for 24 hours and then filtered to obtain the maleic anhydride functionalized single-walled carbon nanotubes. The example teach supplying the toluene, nanotubes and maleic anhydride to the autoclave where no order of mixing is given. The only possible orders of mixing for this process is adding all three at the same time; mixing the toluene and nanotubes and then adding the maleic anhydride; mixing the toluene and maleic anhydride and then adding the nanotubes; or adding them individually. Since there is no indication that the order of mixing is critical, one of ordinary skill in the art would have found it obvious to select any one of these order of mixing, which includes the claimed method of mixing the toluene and nanotubes and then adding the maleic anhydride since the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) and the selection of any order of mixing ingredients is prima facie obvious, In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). The reference suggests the claimed process.
Allowable Subject Matter
Claims 3-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 8, 17-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
There is no teaching or suggestion in the cited art of record of a single-walled carbon nanotube functionalized by one of the groups of claims 3-6 or produced by the process in claim 8 wherein the functional groups is obtained from a compound having formula IIIB. There is no teaching or suggestion in the cited art of record of producing a functionalized single-walled carbon nanotube by the process of combining single-walled carbon nanotube with a solvent having a boiling point high than 110oC to from a suspension, adding a compound having formula IIIB, IIIB’, IIIC or IIIC’ to the suspension to form a mixture, heating the mixture at 70-200oC for 1-24 hours and then separating the nanotubes from the resulting mixture.
Conclusion
The Li et al article is cited to show the chirality vectors for HiPco “pristine” SWCNTs. U.S. patent applications 2012/0289711 and 2013/0271718 are cited as of interest to show the structure of maleic anhydride bonded to the sidewall of SWCNTs when produced by the method taught in the McPhail et al article.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. MELISSA KOSLOW whose telephone number is (571)272-1371. The examiner can normally be reached Mon-Tues:7:45-3:45 EST;Thurs-Fri:6:30-2:00EST; and Wed:7:45-2:00EST.
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.
/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
7/30/26
Prosecution Insights