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 § 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(s) 1-5 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukuchi in JP2021067718.
Regarding Claim 1: Fukuchi teaches the creation of a quantum dot containing composition 8, which is a resin composition comprising semiconductor particle (A) and a resin (B). The resin in composition 8 is an acrylate resin Joncryl 586 and the semiconductor particles are InP quantum dots. The ratio of a content of the semiconductor particle (A) to that of the resin (B) is 11/48 or 0.2292, which is less than 0.9. Composition 8 does not contain a polymerizable compound (C) or a polymerization initiator (D) rendering the content of each of these components 0% by mass, falling within the claimed range (See Section: Quantum dot containing composition 8 and Table 1 reproduced and translated below).
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Regarding Claim 2: Fukuchi teaches that Composition 8 includes the InP semiconductor nanoparticles associated with Quantum Dot 1. Quantum dot 1 does not appear to include an organic ligand. It is noted that Fukuchi teaches that such a ligand may alternatively be included (See Quantum Dot 1 section; Suitable ligands are also taught in the Section “Quantum Dots”). As Fukuchi does not teach that the quantum dots used in Example 8 include ligands, the ratio of semiconductor particle (a) and the organic ligand (F) to the content of resin (B) is 11/48 or 0.2292, which is less than 1.0 (See Table 1).
Regarding Claim 3: Fukuchi shows that example 8 does not include a polymerization initiator or a polymerizable compound. The content of each of these components in example 8 is 0% by mass based on the total amount of the solid content of the resin (See Table 1).
Regarding Claim 4: Fukuchi teaches that the resin used in example 8 is Joncryl 586, which is an acrylic resin from BASF having a weight average molecular weight of 4600 and an acid value of 108. The ratio between the weight average molecular weight of this resin to an acid value of the resin is 4600/108 or 42.5, which is within the claimed range of 150 or less (See Section: “Quantum Dot Containing Composition 8”).
Regarding Claim 5: The resin composition created by Fukuchi in Example 8 contains a light scattering agent in terms of a dispersion of light scattering particle 3 (See Table 1, and Quantum Dot containing composition 8).
Regarding Claim 7: Fukuchi teaches that the resin composition may be provided as a light wavelength conversion layer (See Section: Light wavelength conversion layer; Quantum dot-containing composition). Such a layer is a film as claimed.
Regarding Claim 8: Fukuchi teaches that the resin layer as set forth may be used in a display device (See Technical Field).
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukuchi as applied to claim 1 above, and further in view of Yasuda in KR20190098130.
Fukuchi teaches a resin composition comprising a resin and semiconductor particles (See quantum dot containing composition 8 and section regarding quantum dot containing composition, quantum dots, and resin; See above). Fukuchi teaches that such a composition may be used to create a light conversion layer by various methods (See Manufacturing of optical wavelength conversion member).
Fukuchi is silent in terms of the appropriate viscosity of the composition when such a layer is created.
However, Yasuda also teaches the creation of light conversion layers from resin compositions containing semiconductor particles (See Sections Phosphor Particles (A) and binder). Yasuda teaches that such a composition may be used to create a conversion layer through various means such as by inkjet printing or by screen printing (See Section Viscosity Regulator). Yasuda teaches that when screen printing is used the viscosity may be from 100 to 5000 MPa*s. Yasuda teaches that a suitable viscosity may be achieved by adjusting the amount of the solvent or the addition of viscosity modifying components. Those of ordinary skill in the art would have found it obvious to adjust the viscosity of the quantum dot- resin composition of Fukuchi to be between 100 and 5000 mPa*s in order to apply the quantum dots using a screen printing method as is set forth by Yasuda. Those of ordinary skill in the art would have been motivated to adjust the viscosity to be between 100 and 5000 mPa*s in order to use a screen printing method to create the light conversion layer of Fukuchi, as Yasuda teaches that screen printing is a suitable means for creating such a layer (See Paragraph beginning ‘the coating method is not particularly limited’).
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18707783 (reference application). Although the claims at issue are not identical, they are not distinct from each other because the copending claims teach an overlapping range of resin compositions comprising a semiconductor particle and a resin in an overlapping range of mass contents and a polymerizable compound and polymerization initiator in an overlapping content (See Copending Claim 1; Re: Claim 1). Claims 2-8 correspond directly to copending claims 2-8 teaching all of the same limitations as instantly claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18707800 in view of Fukuchi in JP2021067718. The copending claims teach a similar resin composition comprising a semiconductor particle, a resin and the same range of polymerizable compound and initiator ( less than 0.01 wt% or 0%; see copending claim 1-2).
The copending claims are silent in terms of the ratio of semiconductor particles to resin in such a composition.
However, suitable contents of semiconductor particles in resins are known in the art and taught by Fukuchi. Fukuchi teaches that in terms of total solid contents, semiconductor nanoparticles (quantum dots) can be provided in an amount from 5 to 40 mass% based on the total solid content (See Section ‘quantum dots’), while a resin may be 50-85 mass% on the based on the total solid content (See Section ‘resin’) Fukuchi thus teaches that the quantum dots may have a mass ratio of 0.058 to 0.8 to the resin. Those of ordinary skill in the art would have found it obvious to use a ratio of 0.058 to 0.8 in terms of semiconductor particles to resin in the composition of the copending claims as Fukuchi teaches similar compositions comprising the same components and used for the same purpose. Those of ordinary skill would have been motivated to use the ratios taught by Fukuchi in order to create a suitable ink for a display device or security element (See Technical Field).
The limitations of instant claim 2 correspond to copending claim 5. The limitations of instant claim 3 correspond to copending claim 2. The limitations of instant claim 4 correspond to copending claim 3. The limitations of instant claim 5 correspond to copending claim 4. The limitations of instant claims 6-8 corresponds to copending claims 6-8.
This is a provisional nonstatutory double patenting rejection.
Claims 1-5 and 7-8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18707818 in view of Fukuchi in JP2021067718. The copending claims teach a similar resin film that comprises a resin composition comprising a semiconductor particle, a resin and the same range of polymerizable compound and initiator ( less than 0.01 wt% or 0%; see copending claim 3-5).
The copending claims are silent in terms of the ratio of semiconductor particles to resin in such a composition.
However, suitable contents of semiconductor particles in resins are known in the art and taught by Fukuchi. Fukuchi teaches that in terms of total solid contents, semiconductor nanoparticles (quantum dots) can be provided in an amount from 5 to 40 mass% based on the total solid content (See Section ‘quantum dots’), while a resin may be 50-85 mass% on the based on the total solid content (See Section ‘resin’) Fukuchi thus teaches that the quantum dots may have a mass ratio of 0.058 to 0.8 to the resin. Those of ordinary skill in the art would have found it obvious to use a ratio of 0.058 to 0.8 in terms of semiconductor particles to resin in the composition of the copending claims as Fukuchi teaches similar compositions comprising the same components and used for the same purpose. Those of ordinary skill would have been motivated to use the ratios taught by Fukuchi in order to create a suitable ink for a display device or security element (See Technical Field).
The copending claims are silent in terms of a ligand and thus it would have been obvious to those of ordinary skill to provide the copending composition with the lack of such (Re: instant claim 2). The limitations of instant claim 3 correspond to copending claim 5. The limitations of instant claim 5 correspond to copending claim 6. The copending claims 1-6 are drawn to a resin film meeting instant claim 7. The limitations of instant claim 8 correspond to copending claim 7.
In terms of instant claim 4, the copending claims are silent in terms of suitable acid values and molecular weights of resins useful in resin-semiconductor nanoparticle composites; however, Fukuchi teaches suitable resins having values within the claimed range. Fukuchi shows the use of the resin joncryl586 as a suitable resin (See Composition 8). This resin has an acid value of 108 and a molecular weight of 4600 meaning that it has a ratio between the two within the claimed range. Those of ordinary skill would have been motivated to use such as resin as the resin of the copending claims as it has been demonstrated to be suitable for the creation of resin-semiconductor particle composites.
This is a provisional nonstatutory double patenting rejection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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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.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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