Drawings
Figures 1A and 1B should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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:
The names of the binary compounds containing P or Sb and the ternary and quaternary compounds having P or Sb as the last element are all incorrect. They should be phosphides and antimonides respectfully, in the same manner in which the binary, ternary and quaternary compounds having N or As as the last element are nitrides and arsenides.
Page 7, lines 14-21 teach generic III-V quantum dots having a 2θ peak of 25.5-26.5 in XRD, that this peak may have a (111) crystal orientation and that the quantum dots have binding energy peaks of 1020-1030 and 1040-1050 in XPS. The only quantum dot taught in the rest of the specification as having these properties are In(Zn)As quantum dots. It is unclear if the generic III-V quantum dots discussed in lines 14-21 on page 7 must be zinc doped in order to have these properties or not.
All occurrences of the phrases “III group”, “V group” and “III-V group” should be rewritten as “Group III”, “Group V” and “Group III-V”. Appropriate correction is required.
Claim Objections
Claims 1, 3, 6 and 9-17 is objected to because of the following informalities:
The names of the binary compounds containing P or Sb and the ternary and quaternary compounds having P or Sb as the last element in claim 3 are all incorrect. They should be phosphides and antimonides respectfully, in the same manner in which the binary, ternary and quaternary compounds having As or N as the last element are arsenides and nitrides.
In claims 1, 3, 6 and 9-17, the phrases “III group”, “V group” and “III-V group” should be rewritten as “Group III”, “Group V” and “Group III-V”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This claim teaches the zinc doped III-V quantum dots having a ligand thereon has a diameter of 1-34 nm. Page 5, lines 15-16 and page 14, lines 2-5 teaches the zinc doped III-V quantum dots having a ligand thereon has a diameter of 1-9.5 nm. This discrepancy between the claimed diameter range and the disclosed diameter range need to be corrected.
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 16-19 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 16 teaches the ratio of Zn to III precursor is greatly controlled. The term “greatly” in the claim is a relative term which renders the claim indefinite. The term “greatly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 17-19 teach generic III-V quantum dots having a 2θ peak of 25.5-26.5 in XRD, that this peak may have a (111) crystal orientation and that the quantum dots have binding energy peaks of 1020-1030 and 1040-1050 in XPS. The only quantum dot taught in the specification as having these properties are In(Zn)As quantum dots. Based on the teachings in the specification, it is unclear if the claimed generic III-V quantum dots must be zinc doped in order to have these properties or not. Therefore, the claims are indefinite.
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 1-15 and 17-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,840,654. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented method of producing III-V quantum dots suggests the claimed method of producing quantum dots, the claimed quantum dots and the claimed electronic elements.
The patented process has the same steps, solvent and Group III and Group V precursors as that of claims 6-11, 13 and 14 and teaches that the compound having the formula R-M-R that reduces the Group V precursor is a Group II metal and patented claims 7 and 8 include zinc and all but two of the compounds of claim 12 of this application. Thus the patented claims clearly teaches the process of claims 6-14 of this application.
While the patented claims do not explicitly teach that the ratio of zinc to the Group III is controlled by controlling the mixing amount of the reduced Group V precursor and the solution comprising a solvent and the Group III precursor; the patented step of mixing the reduced Group V precursor and the solution comprising a solvent and the Group III precursor implicitly teaches this step. This is because the compound having the formula R-M-R that reduces the Group V precursor, which includes those where M is Zn, is present with the reduced Group V precursor which means that amount of reduced Group V precursor added determines the amount of R-Zn-R compound present and by controlling the amount of reduced Group V precursor added to the solution will control the ratio of R-Zn-R compound present in the mixture to the amount of Group III present in the mixture.
Since the patented process produces Group III-V quantum dots, as shown by patented claims 11 and 12, and the patented process teaches the claimed process; one of ordinary skill in the art would expect the Group III-V quantum dots produced by the patented process to have a ligand thereon, to be doped with zinc and to have p-type semiconductor properties; and/or have the properties of claims 17-19, absent any showing to the contrary. See MPEP 2112.01(I). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Patented claim 13 teaches the quantum dots produced by the patented process have a diameter of 1.6-9.5 nm, which falls within the size range of claim 5 and the compositions of patented claim 12 are those of claim 3 of this application. It is notoriously well known in the art that the solvents used in a wet synthesis reaction for forming quantum dots, such as that patented, become ligands on the surface of the formed quantum dots. Thus, the solvents in the patented process, taught in patented claim 6, would become ligands on the surface of the produced Group III-V quantum dots and these resulting ligands are those claim 4. Thus the patented process suggests the quantum dots of claims 1-5 and 17-19 of this application.
Finally, one of ordinary skill in the art would have found it obvious to use the quantum dots produced by the patented process in electronic elements since that use is one of the most common uses of quantum dots, as admitted by applicants in the background section of their specification.
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 1-5 and 20-24 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by U.S. patent application publication 2021/0340010.
This reference teaches zinc doped GaN quantum dots having oleylamine ligand attached thereto. Zn doped GaN quantum dots are inherently p-type semiconductors. The reference teaches, in figure 6, that the Zn doped GaN quantum dots have a diameter that ranges from 2 to about 5, which falls within the size rage of claim 5. Finally, the reference teaches electronic devices, or elements, comprising the taught quantum dots. The reference clearly teaches the claimed quantum dots and electronic elements.
Claims 1-3, 5, 17-22 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 10637068.
This reference teaches quantum dot cores of InZnAs and InZnP which have a ligand thereon. This format of InZnAs and InZnP means that the InAs quantum dots and the InP quantum dots are doped with zinc. Since these taught InZnAs quantum dots are identical to the ones taught in the specification, they would be expect to have the properties of claims 2 and 17-19, absent any showing to the contrary. Since these taught InZnP quantum dots are identical to the ones taught in the specification, they would be expect to have the properties of claim 2, absent any showing to the contrary. See MPEP 2112.01(II). “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. The reference teaches quantum dots have a size of 1-20 nm, which means the taught quantum dots have this size, which falls within the range of claim 5. Finally, the reference teaches quantum dots are used in displays and lighting, both of which are electronic elements. This teaching indicates that the reference implicitly teaches using the taught cores of InZnAs and InZnP which have a ligand thereon in these electronic elements. The reference teaches the claimed quantum dots and electronic elements.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by the Janke et al article.
This article teaches zinc doped InP quantum dots having oleylamine ligand on the surface thereon (see for example fig 7). The conclusion teaches the zinc doped InP are p-type semiconductors. The reference clearly teaches the claimed quantum dots.
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.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
7/31/26
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