Response to Amendment
This action is in response to applicants’ amendment of 12 August 2026. Applicants are correct that the citation of 2002/0118632 was a typographical error. It should have been US 2002/0018632.
The replacement title, replacement abstract and amendment to the specification have overcome the objections to the title, abstract and disclosure. The cancelation of claims 2-5 has overcome the rejections over these claims and the objection to the specification for failing to provide proper antecedent basis. The amendments to claim 1 has overcome the rejections over Srivastava et al, Tamang et al, WO 95/20693, US 2010/0012168, US 2020034538 and US 2002/0018632. The obviousness-type double patenting rejection has been modified in view of the amendments to claim 1.
Claim Rejections - 35 USC § 112
Claims 1 and 5-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The change of the invention from An InAs quantum dot to an InAs quantum dot composition in claims 1, 5 and 6 is new matter since there is no teaching or suggestion in the originally filed disclosure of a InAs quantum dot composition. Compositions, in U.S. patent claim, mean materials that can be composed of one or more components. The originally filed disclosure only disclosed a method for producing one or more InAs quantum dots and either a quantum dots or a plurality of InAs quantum dots produced by the disclosed method. Neither of these disclosures support the newly claimed compositions, which reads on inks, composites, formulations, solutions and any other material that can comprise a plurality of InAs quantum dots. Since dependent claim 7 includes the newly added composition of claim 6, it also includes new matter.
Claims 1 and 5 have been amended to now include the limitations that the InAs quantum dots have a local absorption of wavelength in a range of 1600-1800 nm or 1600-1700 nm. The phrase “local absorption of a wavelength” does not appear in the originally filed disclosure. This means there is no teaching or suggestion of local absorption of wavelengths and thus this new limitation is new matter. Claims 6 and 7, since they include the InAs quantum dots of claim 1, also include this new matter.
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.
Claims 1, and 5-7 are 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.
Claims 1 and 5 teach the InAs quantum dots have a local absorption of wavelength in a range of 1600-1800 nm or 1600-1700 nm. It is unclear what is meant by this since “local absorption of wavelength” is not defined in the art nor in the specification. Since the meaning of this term is unclear, claims 1 and 5 are indefinite. Claims 6 and 7 are also indefinite for this reason since they include all the limitations of claim 1.
Response to Arguments
Applicants state figure 6 supports the newly added limitations that the InAs quantum dots have a local absorption of wavelength in a range of 1600-1800 nm or 1600-1700 nm. Figure 6, which is the absorption spectrum, for the InAs of examples 1, which has a particle size of 6.8 nm and a diameter relative standard deviation of 17.2%. The spectrum shows that absorption spectrum starts to decrease at 1600 nm until it is 0 at a wavelength between 1900-2000 nm. There is a uniform decrease between 1600-1800 nm. Since there is a uniform decrease in absorption from 1600-1800 nm, one cannot say there is a local absorption of wavelength in a range of 1600-1800 nm or 1600-1700 nm. There is constant decreasing absorption in these ranges. Thus the figure does not support nor define the newly added limitations that the InAs quantum dots have a local absorption of wavelength in a range of 1600-1800 nm or 1600-1700 nm.
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 and 5-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6, 7, 17, 19 and 20 of U.S. Patent No. 12,122,951. Although the claims at issue are not identical, they are not patentably distinct from each other because the InAs quantum dots of patented claim 17, and in the photodevice of patented claims 19 and 20, are produced by the process of patented claim 6 which corresponds to the process in claim 1 of this application and has the same absorption peak as those of claim 1 of this application. Patented claims 7 teaches the InAs quantum dots resulting from the patented process, which is the process of claim 1, are InAs quantum dots having a diameter 3-12 nm. Given this teaching, one of ordinary skill in the art would expect quantum dots of patented claim 17 to also have a diameter of 3-12 nm, which overlaps that of claim 1. The patented InAs quantum dots are a plurality of InAs quantum dots which read upon the newly claimed quantum dot composition comprising a plurality of InAs quantum dots. Since the patented process is the same as that in claim 1 of this application, one of ordinary skill in the art would expect that the produced quantum dots of patented claim 17 to inherently have a local absorption of wavelength in the range of 1600-1800 nm or 1600-1700 nm and to inherently have a diameter relative standard deviation of 20% or less, absent any showing to the contrary. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01(I). The patented claims suggest the composition and devices of claims 1 and 5-7 of this application.
Response to Arguments
Applicants’ comments with respect to this rejection have been considered. Since rejections cannot be held in abeyance, it is maintained.
Conclusion
Applicants’ 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 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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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
8/27/26
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