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 Objections
Claim 4 is objected to because of the following informalities: Claim 4 is marked “currently amended” but has not indicated the differences between the claims as filed and the claims as amended. Appropriate correction is required.
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 instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0298504 A1 to Janczewski et al. (hereinafter Janczewski).
Regarding claim 4, Janczewski discloses a method of making a functionalized Quantum Dot (QD) with a ligand (para [0099]), comprising the steps of:
mixing QDs with a solution comprising a solvent selected from a group
that includes chloroform (para [0096]) and synthesized ligands (amphiphilic
polymer) to functionalize the QDs forming functionalized QDs (para [0099]); and
suspending the functionalized QDs in a solution of chloroform forming a
functionalized QD solution (para [0075] and [0099]).
The reference is silent regarding a 1.5 µM solution of chloroform.
However, see MPEP 2144.05(II)(A) which states that 'Generally, differences in
concentration or temperature will not support the patentability of subject matter
encompassed by the prior art unless there is evidence indicating such
concentration or temperature is critical'. It would also be obvious to one of
ordinary skill in the art to optimize the concentration of the chloroform solution to
facilitate QD functionalization in a safe and cost-effective manner.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over "Facile Fabrication of Color Tunable Film and Fiber Nanocomposites via Thiol Click Chemistry" by Boyd et al. (hereinafter Boyd 2014).
Regarding claim 4, Boyd 2014 discloses a method of making a functionalized Quantum Dot (QD) with a ligand, comprising the steps of:
mixing QDs (Au nanoparticles) with a chloroform solution comprising synthesized ligands to functionalize the QDs forming functionalized QDs (page 696, para 8); and
suspending the functionalized QDs in a solution of chloroform forming a
functionalized QD solution (page 696, para 8) but does not expressly disclose a 1.5 µM chloroform solution.
However, see MPEP 2144.05(II)(A), cited above. It would also be obvious
to one of ordinary skill in the art to optimize the concentration of the chloroform to
facilitate QD functionalization for efficient incorporation into polymer materials (page 696, para 9).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Boyd 2014 in view of "Hydrodynamic Shaping, Polymerization, and Subsequent Modification of Thiol Click Fibers" by Boyd et al. (hereinafter Boyd 2012).
Regarding claim 3, Boyd 2014 recites a luminescent quantum dot (gold nanoparticles) thiol-yne nanocomposite (film, page 695, para 4), comprising a quantum dot (nanoparticle) functionalized with a ligand (page 696, para 8), and comprising a polymerized thiol-yne prepolymer comprising a thiol-yne prepolymer comprising a combination of 1 mole equivalent of the tetrathiol pentaerythritol tetrakis (3-mercaptopropionate ) (PETMP) with 1 mole equivalent of the dialkyne 1,7-octadiyne (ODY) (page 697, para 1). Boyd 2014 states that the nanocomposite is color tunable (page 702, para 5) and that the nanocomposite comprises gold (Au) nanoparticles (page 702, para 5). Therefore, the nanocomposite is understood to be luminescent. Boyd 2014 further states that the nanocomposite has little to no color when the quantum
dots are uniformly distributed (page 699, para 4) but is silent regarding transparency.
However, Boyd 2012 does teach a thiol-yne composite material made by the
reaction of ODY and PETMP in a 1:1 mole equivalency (page 115, para 2) that is
transparent (page 116, para 6).
Boyd 2014 discloses an overlapping nanocomposite comprising 1:1 ODY:PETMP, as discussed above. Boyd 2012 teaches that 1:1 ODY:PETMP is transparent. Therefore, one of ordinary skill in the art would expect the Boyd 2014 nanocomposite to be transparent, absent evidence to the contrary.
Claim 3 is a product by process claim. Boyd 2014 in view of Boyd 2012 teaches the nanocomposite of claim 3 but does not explicitly teach the claimed process as written. However, MPEP 2113 states “[E]ven 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. If the product in the product-by-process claim 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, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
MPEP 2113 also states “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)”. In the instant case, it is found that the instantly claimed process of making the claimed product does not impart any structural or functional characteristics to the claimed product, absent evidence to the contrary.
The limitations directed to the method for producing the claimed composition are not considered to add patentable weight to the examination of the product claims. It is well settled that if the examiner can find a product in the prior art that is the same or so similar as to have been obvious, the burden can be shifted to the applicant to demonstrate that the process for producing the composition somehow imparts a patentable distinction to the composition under examination.
Response to Arguments
Applicant's arguments filed 8/12/26, regarding Janczewski and Boyd 2014 have been fully considered but they are not persuasive. Applicant argues that while concentration modifications are generally considered routine, MPEP 2144.05(II)(A) carves out an exception where evidence indicates such concentration is critical. However, applicant has not provided such evidence. Applicant states that the specific selection of a 1.5 µM chloroform solution is not arbitrary and that this concentration prevents premature aggregation of the ligand functionalized QDs prior to introduction into the polymer matrix. Applicant further argues that the claimed chloroform concentration also preserves the final transparency of the final nanocomposite. Applicant points to pages 4-6 of the instant disclosure as evidence to support these arguments. However, pages 4-6 do not recite criticality of the chloroform concentration. A 1.5 µM chloroform solution is the only concentration cited. Page 6 of the specification credits thiol-yne chemistry for improvements to the current polymer chemistries. Pages 4-6 do not provide evidence of criticality of a 1.5 µM chloroform solution. See MPEP 716.02(d)(II), which states that to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In the instant case the currently amended claim and original disclosure only have data for a single point at 1.5 µM. Applicant has not provided sufficient evidence of criticality of a 1.5 µM chloroform solution.
Therefore, the 103 rejection of claim 4 as obvious over Janczewski stands.
The 103 rejection of claim 4 as obvious over Boyd 2014 stands.
Applicant's arguments filed 8/12/26, regarding Boyd 2014 in view of Boyd 2012 have been fully considered but they are not persuasive. Applicant argues that the core method of claim 4 has been amended to define non-obvious steps. However, claim 3 is an independent claim and not dependent from claim 4.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the process of claim 4 and a precise un-optimized 1.5µM step) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As discussed above in the rejection, claim 3 is product by process claim. It was found that the instantly claimed process of making the claimed product did not impart any structural or functional characteristics to the claimed product, absent evidence to the contrary. Applicant has not provided such evidence.
Therefore, the 103 rejection of claim 3 as obvious over Boyd 2014 in view of Boyd 2012 stands.
Applicant’s arguments, see page 3, filed 8/12/26, with respect to the double patenting rejections have been fully considered and are persuasive. A proper terminal disclaimer was filed on 8/6/26.
Therefore, the non-statutory double patenting rejection of claims 1, 2, 4, and 5 as being unpatentable over claims 1-4 of 696 has been withdrawn.
The non-statutory double patenting rejection of claims 1, 2, 4, and 5 as being unpatentable over claims 1-7 of 519 has been withdrawn.
the non-statutory double patenting rejection of claim 4 as being unpatentable over claim 1 of 152 has also been withdrawn.
Allowable Subject Matter
Claims 1 and 2 are allowed.
The following is an examiner’s statement of reasons for allowance: The closest prior art is applicant’s prior invention, US 11180696, and a proper terminal disclaimer has been filed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claim 5 is 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: The closest prior art is applicant’s prior invention, US 11180696, and a proper terminal disclaimer has been filed.
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.
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/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
