DETAILED ACTION
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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 8 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation 20°C to 120°C, and the claim also recites 25°C to 60°C which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation 20 mm to 400 mm, and the claim also recites 50 mm to 200 mm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation 1 mm/s to 1 mm/s, and the claim also recites 5 mm/s to 200 mm/s which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 8 provides for the use of the fullerene single-crystal films but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1 and 5-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al (US 2022/0173340).
Li et al teaches A method for preparing fullerene single-crystal films using a gas-liquid-solid three-phase interface, comprising: 1) mixing fullerene and solvent to form a mixture ([0136]-[0140] teaches a mixed solution of Fullerene (C60) in chlorobenzene); and 2) employing a solution shear method to induce crystallization growth of the fullerene in mixture on a substrate surface, thereby obtaining the fullerene single-crystal films (Table 1; [0050]-[0065] and [0136]-[0140] teaches a solution shearing process comprising using a shearing tool to shear the mixed solution along a constant direction at a constant shearing speed at a constant shearing temperature, in order to obtain an organic single-crystalline thin film on a substrate).
In regards to “for preparing fullerene single-crystal films using a gas-liquid-solid three-phase interface,” this language is in the preamble. When reading the preamble in the context of the entire claim, the recitation “using a gas-liquid-solid three-phase interface” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02. Furthermore, Li et al teaches a three phase interface (air-liquid-solid interface) for crystal nucleation and growth ([0040]-[0043]).
Referring to claim 5, Li et al teaches precisely control the gap distance between the shearing tool and the substrate; and a constant linear velocity ([0057], [0138]), which reads on the solution shear method comprises using a shear tool positioned above the substrate, such that the mixture is located between the shear tool and the substrate, and either the substrate or the shear tool is operated at a certain linear velocity.
Referring to claim 6, Li et al teaches an example of shearing velocity of 20+1 mm/s and a gap distance of 200+5 mm (Table 1, Example 16).
Referring to claim 7, Li et al teaches producing fullerene single crystal films using the process of claim 1. Furthermore, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. (MPEP 2113). Here, Li et al teaches fullerene single crystal films; therefore, meets the claimed limitation.
Referring to claim 8-10, Li et al teaches optoelectronic devices selected from any one or more of organic thin film transistors, organic solar cells, organic light-emitting diodes, organic complementary circuits, organic sensors and organic memory devices ([0067]-[0068]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al (US 2022/0173340), as applied to claim 1 and 6-10 above, and further in view of Zhang et al (CN 111697134 A), an English computer translation (CT) is provided.
Li et al teaches all of the limitations of claim 1, as discussed above, except a concentration of the fullerene, based on a total volume of the mixture is 0.2 to 20 mg/mL. Li et al teaches the fullerene is C60 ([0136]). Li et al teaches a solvent is toluene, xylene, trimethylbenzene, chlorobenzene, dichlorobenzene, trichlorobenzene, decalin, tetrahydronaphthalene, and chlorinated naphthalene ([0054], [0138]). Li et al teaches the substrate is a silicon substrate (Si/SiO2), a metal oxide substrate (AlOx), a flexible polymer substrate, such as polyethylene terephthalate (PET), polyethylene naphthalate (PEN), or polyimide (PI) ([0097], [0106], [0136]-[0138]). Li et al teaches crystallization at 30°C or 60°C ([0136]-[0138], [0147]; Table 1). Li et al teaches an ambient temperature of the growth environment will affect the evaporation rate of the solution and the diffusion of the solutes concentration gradient during the solution shearing process ([0056]) ,which clearly suggests concentration of the solute is a result effective variable.
In a method of making fullerene single crystals, Zhang et al teaches a concentration of a C60 solution is 0.8 mg/ml-1.5 mg/ml (CT [0029], [0066], [0077]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Li et al by optimizing the concentration of the C60 solution to be within the claimed range by conducting routine experimentation of a result effective variable, and the claimed C60 concentration is within the range known to one of ordinary skill in the art at the time of filing suitable for crystal growth, as evidenced by Zhang et al.
Referring to claim 3-4, the combination of Li et al and Zhang et al teaches an explicit example with a layer of a coating of crosslinked polystyrene on the substrate as a modification layer (Li [0097], [0193]-[0204]) and broadly teaches a cross-linked product (c-PMMA), polyvinyl alcohol (PVA) and its cross-linked product (c-PVA), divinyltetramethyldisiloxane-bis(benzocyclobutene) (BCB) (Li [0106]), which clearly suggests a wetting layer because the combination of Li et al and Zhang et al teaches coating the substrate with the same claimed material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J SONG whose telephone number is (571)272-1468. The examiner can normally be reached Monday-Friday 10AM-6PM.
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MATTHEW J. SONG
Examiner
Art Unit 1714
/MATTHEW J SONG/ Primary Examiner, Art Unit 1714