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 § 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) 1, 5-10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over 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 ([0054], [0136]-[0140], [0194]-[0204] teaches a mixed solution of Fullerene (C60) in chlorobenzene, and the morphology of fullerene single crystals is different via grown with different solvent: one-dimensional needle-like crystals from m-xylene and one-dimensional ribbon-like crystals from the mixed solvents composed by m-xylene and carbon tetrachloride); 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], [0136]-[0140], [0194]-[0204] 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]).
Li et al teaches a shearing temperature of 0 to 200°C with examples of forming C60 solutions at 60°C ([0053], [0138]-[0146]). Li et al does not explicitly teach a temperature of growth is 25°C to 60°C. Overlapping ranges are prima facie obvious (MPEP 2144.05). Also, temperature is a result effective variable; therefore, 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 temperature to obtain the claimed range by conducting routine experimentation of a result effective variable (MPEP 2144.05).
In regards to the solvent and ribbon-like structure, Li et al teaches forming ribbon like fullerene crystals using m-xylene which clearly suggests meta-xylene and forming ribbon like crystals ([0054]). The selection of a known material based on its suitability for its intended purpose is prima facie obvious (MPEP 2144.07).
In regards to the fullerene is C60, Li et al teaches preparing a C60 solution to form a C60 single crystal film using a shearing tool ([0194]-[0204]).
In regards to the coverage ratio of 43% to 96%, Li et al teaches obtaining high coverage ratio in both the vertical coverage ratio and horizontal coverage ratio, and coverage ratios which overlap the claimed range in Table 3, no horizontal coverage ratios of C60 of about 67%; and coverage ratios of greater than 70% ([0012]-[0016], [0027]). Therefore, 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 crystallization process to obtain the claimed coverage ratio through routine experimentation. Furthermore, overlapping ranges are prima facie obvious (MPEP 2144.05).
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 and 12, 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(s) 2-4 and 11 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.
Referring to claim 11, see remarks above regarding claim 2. Zhang et al teaches a concentration of a C60 solution is 0.8 mg/ml-1.5 mg/ml (CT [0029], [0066], [0077]). Therefore, 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.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 05/13/2026 have been fully considered but they are not persuasive.
Applicant’s argument that Li teaches both Rubrene and C60 to form a composite film is noted but not found persuasive. The Examiner admits that Li et al teaches forming a composite film. However, Li et al also teaches a comparative example of forming a single crystal C60 film using a C60 solution without Rubrene ([0194]-[0204]). Therefore, forming a single crystal C60 using a shear method using a C60 solution is taught by Li et al and would have been obvious to one of ordinary skill in the art at the time of filing.
Applicant’s argument regarding the solvent is noted but not found persuasive. Applicant alleges Li teaches a chlorobenzene solvent, and not one of the claimed solvents. Li et al teaches forming ribbon like fullerene crystals using m-xylene which clearly suggests meta-xylene and forming ribbon like crystals ([0054]). The selection of a known material based on its suitability for its intended purpose is prima facie obvious (MPEP 2144.07).
Applicant’s argument regarding the temperature is noted but not found persuasive. Li et al teaches a shearing temperature of 0 to 200°C with examples of forming C60 solutions at 60°C ([0053], [0138]-[0146]). Li et al does not explicitly teach a temperature of growth is 25°C to 60°C. Overlapping ranges are prima facie obvious (MPEP 2144.05). Also, temperature is a result effective variable; therefore, 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 temperature to obtain the claimed range by conducting routine experimentation of a result effective variable (MPEP 2144.05). The examiner maintains that temperature is a well known result effective variable and the claimed range overlaps the known range for C60 formation using solution growth; therefore, would have been obvious to one of ordinary skill in the art at the time of filing by conducting routine optimization.
Applicant’s arguments that there is no motivation to combine Li and Zhang is noted but not found persuasive. Applicant alleges that Li teaches a composite film and could not combine with Zhang. As discussed above, Li is not limited to a multi-component heterojunction, and broadly teaches form a single crystal C60 film using a C60 solution. Applicant also alleges different methods of growth. The examiner maintains that both Li and Zhang teaches C60 crystal growth from a solution, and solution concentration is taught to be a result effective variable; therefore, It would have been obvious to one of ordinary skill in the art at the time of filing to modify Li by optimizing a result effective variable (solution concentration) through routine experimentation and the known range of solution concentration taught by Zhang overlaps the claimed range.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Zhang is not relied upon to teach the claimed solvent. Li teaches the claimed solvent, as discussed above.
Applicant’s argument about unexpected result of ribbon formation and coverage ratio is noted but not found persuasive. Li et al teaches forming ribbon like fullerene crystals using m-xylene which clearly suggests meta-xylene and forming ribbon like crystals ([0054]). The selection of a known material based on its suitability for its intended purpose is prima facie obvious (MPEP 2144.07). Li et al also teaches obtaining a high coverage ratios which overlaps the claimed range, and conventionally known processes obtain coverage ratios within the claimed range, as discussed above; therefore, the claimed coverage ratio is not unexpected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CN 112322961 teaches using C60 powder as raw material, by dissolving it with the meta-xylene solution, and dropping the formed solution to the de-ionized water liquid surface, when the solution is completely volatilized, growing the C60 single crystal nano-rod (page 3 of the computer translation).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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, Kaj Olsen can be reached at 571-272-1344. 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.
MATTHEW J. SONG
Examiner
Art Unit 1714
/MATTHEW J SONG/ Primary Examiner, Art Unit 1714
Prosecution Insights