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 .
Claims 1-12, 14-19 and 21-23 are pending in the instant application.
Claims 6, 7, 22 and 23 are presented for examination.
Election/Restriction
Claims 1-5, 8-12, 14-19 and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/03/2026.
Applicant's election with traverse of group II, claims 6-7, 22 and 23 in the reply filed on 08/03/2026 is acknowledged. The traversal is on the ground(s) that examination of all claim groups would not impose a serious search and examination burden. A search directed to the elected product claims would necessarily identify the same prior art references relevant to the remaining claim groups, as compositions comprising, the process and/or use claims are directed to making and/or using the same subject matter recited in the product claims. Accordingly, the search fields, classes/subclasses, and relevant prior art are expected to substantially overlap, such that separate searches would not be required.
It is the examiner’s position that Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct and there would be a serious examination burden based on the following factors:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due their recognized divergent subject matter;
(c) the inventions have acquired a different field of search (for example searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior at applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112 first paragraph.to the nonelected groups.
This arguments are not found persuasive because of the above reasons. The requirement is still deemed proper and is therefore made FINAL.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 6 and 23 is/are rejected under 35 U.S.C. 102(a)(1)/102 (a)(2) as being anticipated by Jahan et al. (submitted by the applicant).
Claims 6 and 23 are product by process claims. The claims will be examined to the extent that read on a product. The product of claims 6 and 23 is a carbon dot. Jahan teaches a carbon dot produced by a different process using a glycine derivative and boric acid. See the entire article. Such teaching reads on the product of claims 6 and 23. The process by which a carbon dot is made does not create a patentably distinct product.
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, 7, 22 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jahan et al. (submitted by the applicant).
Regarding Claims 6 and 23, the claims are product by process claims. The claims will be examined to the extent that read on a product. The product of claims 6 and 23 is a carbon dot. Jahan teaches a carbon dot produced by a different process using a glycine compound and boric acid. See the entire article. Such teaching reads on the product of claims 6 and 23. The process by which a carbon dot is made does not create a patentably distinct product.
Regarding claims 7 and 22, Jahan et al. teach carbon dots with the emission peak of 500 nm, the wavelength of 260-500 nm and absorbance 310 nm. See page 10234 column 2 and figures 1 and 2. Jahn differs from the claimed invention in the specific emission peak, wavelength range and absorbance peak. It would have been obvious to a person skilled in the art to determine the optimum emission peak, wavelength range and absorbance rate in the absence of evidence to the contrary.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZOHREH A FAY whose telephone number is (703)756-1800. The examiner can normally be reached Monday-Friday 9:30AM-6:00.
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, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZOHREH A FAY/Primary Examiner, Art Unit 1617
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