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 .
Status of Claims
Claims 1-6 and 8-12 are presently under consideration as amended in applicant’s response dated 26 February 2026. Claim 7 is cancelled by applicant’s amendments.
Applicant’s amendments to the claims have overcome the indefiniteness rejection of claim 3 of record under 35 U.S.C. 112(b) which is thus withdrawn.
Applicant’s amendments to the claims have overcome the prior art rejections of record which are thus withdrawn.
Applicant’s amendments to the specification included in applicant’s response dated 26 February 2026 are acceptable and overcome the drawing objections of the prior office action.
Examiner unsuccessfully attempted to reach applicant’s representative on 26 May 2026 at the provided Telephone number of 703-236-4500 to file a terminal disclaimer to overcome the nonstatutory double patenting rejection of record, and as such the nonstatutory double patenting rejection is maintained and otherwise updated to show where the new limitations are in U.S. Patent No. 12,199,204.
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 1-6, and 8-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,199,204 (‘204 patent) in view of Dasgupta’580 (US 2009/0255580).
Claim 1 of the ‘204 patent discloses a superlattice film having the limitations of instant claim 1 but claims the layers of nanocrystals are sorted by size increasing from one side to another which will have the same effect as the claim 1 limitation of “wherein said layers are sorted by the energy gap of the nanocrystals in ascending order from said first conductor towards said second conductor, so that a maximum energy gap layer is adjacent to said first conductor and a minimum energy gap layer is adjacent to said second conductor” (see for example Dasgupta’580 at para [0007] and Fig. 1) and the ’204 patent further recites “a plurality of first layers comprising first nanocrystals having a first shape, said first layers comprising at least one layer wherein the nanocrystals have a first size, and one layer wherein the nanocrystals have a third size that is greater than said first size; a plurality of second layers comprising second nanocrystals having a second shape that is different from said first shape, said second layers comprising at least one layer wherein the nanocrystals have a second size, and one layer wherein the nanocrystals have a fourth size that is greater than said second size; said plurality of first layers being alternated with said plurality of second layers” which meets the claim 1 limitations of “wherein said layers comprise: - layers of a first type which comprise nanocrystals having a first shape, and - layers of a second type which comprise nanocrystals having a second shape that is different from said first shape; said layers of the first type being alternated with said layers of the second type”.
The ‘204 patent does not explicitly discloses a first conductor and a second conductor where said superlattice film further comprising at least one among: an electron blocking layer interposed between the maximum energy gap layer and the first conductor, and an electron transport layer interposed between the minimum energy gap layer and the second conductor.
However, these limitations are obvious in view of Dasgupta’580 which teaches the inclusion of conductor layers and electron transport or barrier layers as routine (Dasgupta’580, [0037], [0043], Fig. 5 see: first conductor layer 510 and second conductor 520 and added layers 580 and 590 which can act as carrier transport layers or barrier to electron or holes). As such it would have been obvious to one having ordinary skill in the art at the time of the invention to modify the claimed superlattice film of the ‘204 patent in view of Dasgupta’580 to include these features of a first conductor and a second conductor and at least one of an electron blocking layer and an electron transport layer as claimed as such layers are well known in the art for providing charge collection or providing selective charge transport as in Dasgupta’580 ([0037], [0043], Fig. 5 see: first conductor layer 510 and second conductor 520 and added layers 580 and 590 which can act as carrier transport layers or barrier to electron or holes).
Instant claims 2-9 are further disclosed by the limitations of claims 1-5 of the ‘204 patent.
Allowable Subject Matter
Claim 1 and it’s dependents 2-6, and 8-12 would be allowable if applicant overcomes the nonstatutory double patenting rejection(s), set forth in this Office action.
Claims 11 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claim 1 regarding the layers comprising the array of nanocrystals recites “- layers of a first type which comprise nanocrystals having a first shape, and - layers of a second type which comprise nanocrystals having a second shape that is different from said first shape; said layers of the first type being alternated with said layers of the second type; wherein said layers of the first type and said layers of the second type are sorted by the size of the nanocrystals in ascending or descending order along a cross direction along which electrical conductivity is required” which is not taught disclosed or made obvious by the prior art of record.
The prior art of Dasgupta’580 (US 2010/0240167) at para [0036] discloses a bandgap gradient can be formed by layers of quantum dots having differences in quantum dot size, composition, shape, or any combination thereof, and the prior art of Arakawa et al (US 2014/0326302) teaches in Fig. 4 and para [0140] alternately and repeatedly stacking quantum dot layers 6a and 6b having two different sizes in the z direction and in Fig. 7 and para [0141] alternately and repeatedly stacking quantum dot layers 6c and 6d composed of two different materials in the z direction.
However, the prior art of record does not otherwise teach or disclose the combination of stacked layers of nanocrystals having a first shape, and - layers of a second type which comprise nanocrystals having a second shape that is different from said first shape; said layers of the first type being alternated with said layers of the second type; wherein said layers of the first type and said layers of the second type are sorted by the size of the nanocrystals in ascending or descending order along a cross direction along which electrical conductivity is required as in claim 1 and by dependency claims 2-6, and 8-12.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6, and 8-12 have been considered but are moot because the grounds 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.
Conclusion
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 ANDREW J GOLDEN whose telephone number is (571)270-7935. The examiner can normally be reached 11am-8pm.
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, Jeffrey Barton can be reached at 571-272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANDREW J. GOLDEN
Primary Examiner
Art Unit 1726
/ANDREW J GOLDEN/Primary Examiner, Art Unit 1726
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