DETAILED ACTION
(1)
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 . Applicant’s preliminary amendment, filed November 12, 2024, is entered. Applicant cancelled claims 2-4, 10, 11, 13-17, 19 and 20. No new matter is entered. Claims 1, 5-9, 12, 18 and 21-32 are pending before the Office for review.
(2)
Claim Rejections - 35 USC § 112
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.
Claim 18 is 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 18 recites the limitation "the same face" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Therefore, the claim is indefinite because its scope is unascertainable to one ordinarily skilled in the art.
(3)
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, 5-9 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nazif et al., Nano Lett., 2021, 21, 3443-3450, which is cited in Applicant’s information disclosure statement. Lee et al. (U.S. Publication No. 2021/0143188) is cited to support a statement of fact.
With respect to claim 1, Nazif teaches an optoelectronic device comprising a thin film of a transition metal dichalcogenide (WS2), an aluminum electrode (first electrode) directly contacting the thin film and a gold electrode (second electrode) directly contacting the thin film. Abstract and Figure 1b. Nazif further teaches one of the first and second metals forms an electron selective layer with the WS2 and the other of the first and second metals forms a hole selective layer with the WS2. Page 3444, Col. 1, First full paragraph.
With respect to claim 5, Nazif teaches a portion of the WS2 is extrinsic n-doped. Figure 1b and Page 3444, Col. 2, First full paragraph.
With respect to claim 6, Nazif teaches the first metal (Al) forms the electron selective layer and the second metal (Au) forms the hole selective layer. Page 3444, Col. 1, First full paragraph.
With respect to claim 7, Nazif teaches the WS2 is extrinsic p-doped semiconductor. Page 3444, Col. 1, First full paragraph.
With respect to claim 8, Nazif teaches the WS2 is both p-type and n-type doped, as explained above. Figure 1b.
Regarding the hole or electron selectivity of the respective electrodes, Examiner notes that the courts have held that "a compound and all its properties are mutually inseparable," In re Papesch, 315 F.2d 381 (CCPA 1963). Additionally, as per the MPEP, the "products of identical chemical compositions cannot have mutually exclusive properties. 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." MPEP 2112.01 (internal citation omitted). In this case, the structure taught by Nazif is within the scope of the claimed invention.
With respect to claim 9, Nazif teaches the transition-metal dichalcogenide is WS2. Abstract and Figure 1b. This is an ambipolar semiconductor. Examiner relies on Lee to support this statement of fact. Lee teaches WS2 is an ambipolar semiconductor material. Paragraph 11.
With respect to claim 12, Examiner that the claim is a product-by-process claim. “If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985); MPEP 2113. In this case, Nazif teaches a thin film transition-metal dichalcogenide meeting the requirements of the claimed invention. Figure 1b.
(4)
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 18 is rejected under 35 U.S.C. 103 as being unpatentable over Nazif et al., Nano Lett., 2021, 21, 3443-3450 in view of Bao et al. (U.S. Publication No. 2018/0172908, both of which are cited in Applicant’s information disclosure statement.
With respect to claim 18, Nazif teaches the optoelectronic device but is silent as to whether the electrodes are both formed to contact the same face of the thin film.
However, Bao, which deals with transition-metal dichalcogenide containing devices, teaches the electrodes of such a device are also formed to contact the same face of the thin film. Figure 1b. Bao teaches this arrangement serves as a base configuration and allows for further integration with electronic devices. Paragraph 8.
Therefore, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to modify Nazif’s device in view of Bao’s disclosure so that the electrodes are on the same face of the transition-metal dichalcogenide thin film because Bao teaches doing so obtains a base device that is ready for further integration.
(5)
Claims 21-24 and 26-32 are rejected under 35 U.S.C. 103 as being unpatentable over Nazif et al., Nano Lett., 2021, 21, 3443-3450 in view of Reese et al. (U.S. Publication No. 2015/0369928), both of which are cited in Applicant’s information disclosure statement.
With respect to claims 21 and 31, Nazif teaches an optoelectronic device in the form of a solar cell comprising a thin film of a transition metal dichalcogenide (WS2), a first electrode directly contacting the thin film and a second electrode directly contacting the thin film. Abstract and Figure 1b. Nazif further teaches the first electrode (Al) forms the electron selective layer and the second electrode (Au) forms the hole selective layer. Page 3444, Col. 1, First full paragraph.
Nazif is silent as to whether the first and second electrodes are interdigitated finger electrodes.
However, Reese, which deals with optoelectronic devices in the form of a photodetectors, teaches in a photodetector comprising a transition-metal dichalcogenide material, the first and second electrodes are interdigitated with one another. Figure 3 and Paragraph 77. Reese teaches this electrode feature facilitates transfers of electrical energy from the photo detecting material, which is the transition-metal dichalcogenide (paragraphs 50-54) and the electrodes. Paragraph 77.
Therefore, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to modify Nazif’s electrodes to be interdigitated, as taught by Reese, because doing so facilitates the transfer of electrical energy from the transition-metal dichalcogenide material to the electrodes.
With respect to claim 22, modified Nazif teaches each of the plurality of first fingers forms a gap with each of its one or more nearest-neighbor fingers of the plurality of second fingers. Reese, Figure 3.
With respect to claims 23 and 24, as per the MPEP, “where the only difference between the prior art and the claims [is] a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device [is[ not patentably distinct from the prior art device.” MPEP 2144.04(IV)(A) (internal citation omitted). In this case, modified Nazif’s finger electrodes facilitate the transfer of electrical energy independent of this specific gap.
With respect to claim 26, modified Nazif teaches the thin film is a multilayer. Page 3444, Col. 1, First full paragraph.
With respect to claim 27, Examiner that the claim is a product-by-process claim. “If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985); MPEP 2113. In this case, Nazif teaches a thin film transition-metal dichalcogenide meeting the requirements of the claimed invention. Figure 1b.
With respect to claim 28, Nazif teaches the thin film is an exfoliated flake. Page 3444, Col. 1, First full paragraph.
With respect to claims 29 and 30, modified Nazif teaches a substrate supports the thin film and the first and second interdigitated electrodes, wherein the electrodes are additionally supported on the thin film. Reese, Figure 3.
With respect to claim 32, as per the MPEP, “where the only difference between the prior art and the claims [is] a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device [is[ not patentably distinct from the prior art device.” MPEP 2144.04(IV)(A) (internal citation omitted). In this case, modified Nazif’s optoelectronic device performs its function independent of its specific size.
(6)
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Nazif et al., Nano Lett., 2021, 21, 3443-3450 in view of Reese et al. (U.S. Publication No. 2015/0369928), both of which are cited in Applicant’s information disclosure statement, as applied to claims 21-24 and 26-32 above, and further in view of Meade et al. (U.S. Publication No. 2018/0061665).
With respect to claim 25, Nazif teaches a photovoltaic device, type of optoelectronic device, comprising a transition-metal dichalcogenide multilayer of WS2 and is silent as to whether a monolayer is used in its place.
However, Meade, which deals with optoelectronic devices including photovoltaic cells, teaches monolayer WS2 is an effective material for semiconductor devices, such as photovoltaic cells. Paragraphs 20 and 45. The specific monolayer material taught by Meade is a 2D material that exhibits reduced density of interstitial defects and/or vacancy defects. Paragraph 22.
Therefore, it would have been obvious to one ordinarily skilled in the art at a time before the effective filing date of the claimed invention to use a 2D monolayer material, as taught by Meade, in Nazif’s photovoltaic device because Meade teaches a 2D monolayer material of WS2 that is associated with reduced density of interstitial defects and/or vacancy defects.
(7)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI S MEKHLIN whose telephone number is (571)270-7597. The examiner can normally be reached Monday-Friday 7:00 am to 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at 571-272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELI S MEKHLIN/Primary Examiner, Art Unit 1759
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