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 .
DETAILED ACTION
Claims 1-13 of B. Ma, et al., US 18/823,063 (09/03/2024) are pending, under examination on the merits. Claims 7-13 are rejected, claims 1-6 are allowed.
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).
Double Patenting Rejection over US 11,104,695 B2 (2021)
Claims 7-13 is rejected on the ground of nonstatutory double patenting as being unpatentable over conflicting claims1, 13, and 15-18 of U.S. Patent No. US 11,104,695 B2 (2021).
The combination of conflicting claims 1, 13 and 15-18 claim a metal halide perovskite crystal comprising a unit cell according to formula (I) (RNH3)2(IC)n-1MnX3n+1, and the metal halide perovskite crystal has a quasi-2D structure, where R is benzylamine, n is 2 to 9, IC is Cs, M is Pb and X is I. The combination of conflicting claims 13 and 15-18 meet each and every limitation of instant claims 7-13, therefore, claims 7-13 are obvious.
Double Patenting Rejection over US12180241B2 (2024)
Claims 7-13 is rejected on the ground of nonstatutory double patenting as being unpatentable over conflicting claims 1, 3, 4 and 7-9 of U.S. Patent No. US12180241B2 (2024).
The combination of conflicting claims 1, 3, 4 and 7-9 claim a metal halide perovskite crystal comprising a unit cell according to formula (I) (RNH3)2(IC)n-1MnX3n+1, and the metal halide perovskite crystal has a quasi-2D structure, where R is benzylamine, n is 2 to 9, IC is Cs, M is Pb and X is I. The combination of conflicting claims 1, 3, 4 and 7-9 meet each and every limitation of instant claims 7-13, therefore, claims 7-13 are obvious.
Terminal Disclaimer
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.
Subject Matter Free of the Art Record
Claims 1-13 are free of the art recorded. The closest prior art of record is The closest prior art of record is M. Aamir, et al. 2.20, ChemistrySelect, 5595-5599 (2017)(“Aamir”)
.
M. Aamir, et al. 2.20, ChemistrySelect, 5595-5599 (2017)(“Aamir”)
Aamir teaches one-pot synthesis of qusai-2D layered lead halide perovskite nanoparticles using cesium inorganic cation and anilinium organic cation with tunable optical properties; and the as-prepared perovskite nanoparticles have a general formula of (Cs)x(PhNH3)2-xPbBr4-xIx. Aamir at title, abstract and page 5595, right col. paragraph 4, line 1-8.
The Aamir qusai-2D lead halide perovskite (Cs)x(PhNH3)2-xPbBr4-xIx maps the claimed formula (I) of claims 1 as:
R is phenyl that is a monocyclic aryl;
IC is Cs that is a monovalent metal;
M is Pb; and
X is Br and I.
Difference between Aamir and Claims 1-13
The Aamir qusai-2D lead halide perovskite (Cs)x(PhNH3)2-xPbBr4-xIx differs from the independent claims 1 and 7 in that per cell of Aamir qusai-2D lead halide perovskite (Cs)x(PhNH3)2-xPbBr4-xIx only comprise one molecule of Pb rather the claimed 2 to 9 (See Aamir at page 5596, Table 1). The Aamir qusai-2D lead halide perovskite (Cs)x(PhNH3)2-xPbBr4-xIx further differs from the independent claim 7 in that the phenyl in it is not a monocyclic arylalkyl.
Claims 1-13 are Not Obviousness
Obviousness of a claimed compound can also be supported where there is motivation to substitute particular chemical moieties in a prior art compound for others so as to arrive at a claimed compound. MPEP § 2143(I)(B). For example, in the pharmaceutical arts, the rational is stated as motivation to select a known compound and also motivation to structurally modify the selected compound in a particular way to achieve a claimed compound. MPEP § 2143(I)(B) (see for example, MPEP § 2143(I)(B) Example 9, citing Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 87 USPQ2d 1452 (Fed. Cir. 2008).
Claims 1-13 are not obvious because neither Aamir or Aamir in view a second art to motivate one ordinary skill to modify the Aamir prior art perovskite (Cs)x(PhNH3)2-xPbBr4-xIx to arrive at the claimed perovskite. Further neither Aamir nor prior art teaches specific utility of Aamir prior art perovskite. If the prior art does not teach any specific or significant utility for the disclosed compounds, then the prior art is unlikely to render structurally similar claims prima facie obvious in the absence of any reason for one of ordinary skill in the art to make the reference compounds or any structurally related compounds. MPEP2144.09(IV).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday.
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, Scarlett Goon can be reached at (571)2705241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692