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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/4/2026 has been entered.
Response to Arguments
Applicant's arguments filed 8/4/2026 have been fully considered but they are not persuasive. The applicant argues that Ye does not teach the sublimation of cocrystals, and points to an earlier article of Ye that sublimates single crystal powders. However, the earlier reference of Ye provided by the applicant was only cited as background information in the paper cited by the Examiner to detail a basic MAS method (p2 of Ye – Nature Communications). The reference of Ye used in the instant rejection (from Nature Communications) sublimates cocrystals as an improvement on that earlier method, shown in Ye page 8 where cocrystals such as fluoranthene-TCNB, anthracene-TCNB, pyrene-TCNB etc. and mixed powders are sublimated. Further, the naming convention of these types of materials (ie fluoranthene-TCNB, for example) indicates that they are cocrystals, not merely mixtures of powders. This is the same naming convention used for cocrystals as in the instant Examples. It is further noted that the applicant admits prior art where preformed cocrystals are known to be sublimated in para 0004.
The applicant argues that Ye does not teach preformed bulk cocrystalline material. This language is not present in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). “Bulk cocrystalline materials” as broadly claimed is not limited to these features. The claims do not exclude any prepatory steps of Ye.
Additionally, the claim language only requires that ‘bulk cocrystalline materials’ be vaporized to deposit cocrystalline materials. The powder, under its broadest reasonable interpretation, would include materials that are used to make cocrystalline materials as bulk cocrystalline materials as the language is broad. This language does not include that there is a structure. Having ‘substantilaly the same’ structure in the product as the bulk material is broad as well as it does not include having the same structure and a structure is not established. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As to claim 38, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Therefore, for at least these reasons, the previous rejections are maintained. New grounds of rejection are submitted based upon the 3/25/26 IDS.
Information Disclosure Statement and Specification
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 or placed in a proper PTO-1449, they have not been considered. Please amend the specification to conform with MPEP § 609.04(a).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 5-12, 15-17, 26 and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shtein et al. (WO 2020/215078 A1) in view of Ye et al. (Nature Communications, 2019, 10:761)
As to claim 1, Shtein et al. teaches a solvent-free vapor deposition method (para 0054) comprising vaporizing a crystalline material to form a vapor (para 0041), entraining the vapor into a carrier gas (para 0039-the compound in the presence of a carrier gas, para 0056), and depositing a film comprising a cocrystalline material (plurality of different compounds/ vapors in para 0047) on one or more discrete regions of a substrate (para 0053 – patterned deposition).
Shtein teaches vaporizing more than one crystalline powder in para 0114, but does not explicitly refer to these materials as cocrystaline materials. Ye et al. teaches the sublimation of cocrystals for use in pharmaceuticals to improve solubility or ease of formation of drugs (col. 1 p 2, col. 1 p 8) of cocrystals directly on a substrate without using solvents. Ye shows that the cocrystals maintain substantially the same ratio of 1:1 in Fig. 3, for example.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing that Shtein be able to also sublimate cocrystals of its compounds in its method as taught by Ye et al. in order to expand its purpose of pharmaceutical research to improve solubility or ease of formation of drugs.
As to claim 2, Shtein teaches sublimation in para 0039.
As to claim 3, Shtein teaches the pressure in para 0112, for example.
As to claim 5, Shtein teaches heating to sublimate to a vapor in para 0080.
As to claim 6, Shtein does not teach using solvents in its carrier gas in paras 0039, 0056, 0081 etc.
As to claim 7, Shtein teaches a powder, a pressed pellet, and a porous material in para 0058.
As to claim 8, Shtein desires no degradation of the material in para 0041, 0057.
As to claim 9, the cocrystals in Ye are vaporized in a stoichiometric ratio on p 2 col. 2 (1:1 ratio).
As to claim 10, Shtein teaches a crystalline or polycrystalline film in para 0068.
As to claim 11, Shtein teaches the crystal size in para 0068.
As to claim 12, Shtein teaches the crystals in as claimed in paras 0068-0069.
As to claim 15, the cocrystals in Ye are present in a stoichiometric ratio on p 2 col. 2 (1:1 ratio).
As to claim 16, Ye shows that the cocrystals maintain substantially the same ratio of 1:1 in Fig. 3, for example.
As to claim 17, the substrate temperature is as claimed in Shtein para 0084.
As to claim 26, Shtein et al. teaches the deposition of the claimed compounds in paras 0051-0053 and 0061-0063.
As to claim 38, Shtein teaches these features in paras 0083-0084.
Claim(s) 20, 22 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shtein et al. (WO 2020/215078 A1) in view of Ye et al. (Nature Communications, 2019, 10:761) and in further view of Mascaro et al. (Organic Electronics 6 (2005) 211–220).
Shtein and Ye teach the limitations of Claims 20, 22 and 24 above but do not teach an annealing step. Mascaro et al. teaches a post deposition annealing step of organic materials in order to reorient their crystals or modify their size in the abstract. The claimed time is over 30 minutes throughout the document, including the Figures. As to the temperature, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to include the claimed temperature ranges, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
Claim(s) 1-3, 5-12, 15-17, 26 and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shtein et al. (WO 2020/215078 A1) in view of Zhang et al. (J. Crystal Growth, 469, 2017, pp 114-118).
As to claim 1, Shtein et al. teaches a solvent-free vapor deposition method (para 0054) comprising vaporizing a crystalline material to form a vapor (para 0041), entraining the vapor into a carrier gas (para 0039-the compound in the presence of a carrier gas, para 0056), and depositing a film comprising a cocrystalline material (plurality of different compounds/ vapors in para 0047) on one or more discrete regions of a substrate (para 0053 – patterned deposition).
Shtein teaches vaporizing more than one crystalline powder in para 0114, but does not explicitly refer to these materials as cocrystaline materials. Zhang et al. teaches the sublimation of cocrystals for use in pharmaceuticals to improve solubility or ease of formation of drugs (p114-115) of cocrystals directly on a substrate without using solvents. Zhang shows that the bulk and deposited crystal maintain substantially the same structure on p 114-115.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing that Shtein be able to also sublimate cocrystals of its compounds in its method as taught by Zhang e et al. in order to expand its purpose of pharmaceutical research to improve solubility or ease of formation of drugs.
As to claim 2, Shtein teaches sublimation in para 0039.
As to claim 3, Shtein teaches the pressure in para 0112, for example.
As to claim 5, Shtein teaches heating to sublimate to a vapor in para 0080.
As to claim 6, Shtein does not teach using solvents in its carrier gas in paras 0039, 0056, 0081 etc.
As to claim 7, Shtein teaches a powder, a pressed pellet, and a porous material in para 0058.
As to claim 8, Shtein desires no degradation of the material in para 0041, 0057.
As to claim 9, the cocrystals in Zhang are vaporized in a stoichiometric ratio (title).
As to claim 10, Shtein teaches a crystalline or polycrystalline film in para 0068.
As to claim 11, Shtein teaches the crystal size in para 0068.
As to claim 12, Shtein teaches the crystals in as claimed in paras 0068-0069.
As to claim 15, the cocrystals in Zhang are vaporized in a stoichiometric ratio (title).
As to claim 16, Zhang shows that the cocrystals maintain substantially the same ratio in the experimental sections.
As to claim 17, the substrate temperature is as claimed in Shtein para 0084.
As to claim 26, Shtein et al. teaches the deposition of the claimed compounds in paras 0051-0053 and 0061-0063.
As to claim 38, Shtein teaches these features in paras 0083-0084.
Claim(s) 20, 22 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shtein et al. (WO 2020/215078 A1) in view Zhang et al. (J. Crystal Growth, 469, 2017, pp 114-118) and in further view of Mascaro et al. (Organic Electronics 6 (2005) 211–220).
Shtein and Zhang teach the limitations of Claims 20, 22 and 24 above but do not teach an annealing step. Mascaro et al. teaches a post deposition annealing step of organic materials in order to reorient their crystals or modify their size in the abstract. The claimed time is over 30 minutes throughout the document, including the Figures. As to the temperature, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to include the claimed temperature ranges, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1718
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