Specification
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.
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, 4-5 and 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-9 of copending Application No. 18/809259 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The semiconductor film of copending claim 5 reads on the film of claim 1 of this application. Copending claim 5 also suggest the film of claim 4 of this application since the copending claim teaches the ligand includes an inorganic ligand containing a halogen element, which means the copending claim teaches the inorganic ligand contains at least one of fluorine, chlorine, bromine and iodine.
The combination of the teachings of copending claims 1, 4, 5 and 6, where the combination suggests to one of ordinary skill in the art that the inorganic ligand of the film can contain both indium and a halogen element teaches the subject matter of claim 5 of this application.
The combination of the teachings of copending claims 1, 4, 5 and 7 suggests to one of ordinary skill in the art that the semiconductor quantum dots in the film of claim 5 can have a band gap of 1.0 eV or less, and thus teaches the subject matter of claim 7 of this application. This is because one of ordinary skill in the art would have found it obvious to use the ligand from copending claim 5 in the film of claim 7 since both ultimately depend from claim 1 and claim 5 further defines the ligand used in the claimed films.
One of ordinary skill in the art would have found it obvious to use the film of claim 5 in the photodetection element of copending claim 8 and the image sensor of copending claim 9 since the film of claim 5 further defines the film of copending claim1 and the devices of copending claims 8 and 9 is that of claim 1. It would have been obvious to one of ordinary skill in the art to use the film of any of the claims that depend from claim 1 in the claimed devices since the film of any of the claims that depend from claim 1 further define the film.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 7, 10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by U.S. patent application publication 2018/0163070.
This reference teaches an ink, which is a dispersion liquid, comprising InSb quantum dots having BF4- ligands coordinated with the quantum dots (para 19 and 22, ex. 4). InSb quantum dots have a band gap of 0.17 eV. The reference teaches forming a film from this ink by applying the ink to a substrate (para 23, ex. 5) and that the film is in a photodetection element (ex. 6). The reference clearly teaches the claimed film, photodetection element, dispersion liquid and method of making a film.
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 1 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/002131 or WO 2021/002134.
Both of these references teach a semiconductor film comprising an aggregate of semiconductor quantum dots, an inorganic halide ligand coordinated with the quantum dots and an organic ligand coordinated with the quantum dots. The references teach photodetection elements and image sensors comprising the taught film. The exemplified inorganic halide ligands include indium iodide, indium chloride, indium bromide, zinc bromide, cadmium bromide and gallium bromide. The quantum dots can be InSb, which has a band gap of 0.17 eV. Thus the references suggest the claimed film, photodetection element and image sensor.
Allowable Subject Matter
Claims 2, 3 and 11 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.
There is no teaching or suggestion in the cited art of record of a semiconductor film comprising an aggregate of semiconductor quantum dots that comprise an In element and a Group 15 element and a ligand coordinated to the quantum dot, wherein the Group 15 element includes an Sb element, the ligand includes a halogen element containing inorganic ligand, and the molar ratio of the Sn element to the halogen element in the film is 0.3-3.2 or 0.5-3.00. There is no teaching or suggestion in the cited art of record of a dispersion liquid comprising semiconductor quantum dots that comprise an In element and a Group 15 element and a ligand coordinated to the quantum dot, wherein the Group 15 element includes an Sb element, the ligand includes a halogen element containing inorganic ligand, and the molar ratio of the Sn element to the halogen element in the liquid is 0.3-3.2.
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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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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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
9/11/26
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