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 .
Priority
This application is a 371 of PCT/JP2024/002209 (filed on 01/25/2024). Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in Japan on 02/06/2023.
Information Disclosure Statement
The information disclosure statements (IDS) filed on 08/07/2025 and 06/18/2026 are in compliance with the provisions of 37 CFR 1.97 and have been considered by the examiner. An initialed copy accompanies this Office Action.
Drawings
The drawings filed on 06/2/2025 have been considered.
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 9-16 of copending Application No. 18/792,199 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application discloses a dispersion liquid comprises a quantum dot having a band gap pf 1.35 eV or less, a ligand, and a solvent (See claim 1) where the ligand is a compound having at least one functional group including carboxy group, a phospho group, a sulfonimide group and a sulfo group (See claim 4). The functional group is structurally same as the claimed ligand-containing compound; therefore, the pKa and molecular weight (Mw) of the functional group would be the same or substantially same as the claimed ligand-containing compound, i.e., pKa of 3 or less and Mw of 50 to 500. The reference application also discloses a content of quantum dot in a component obtained by removing the solvent and the ligand from the dispersion liquid is 50% by mass or more (See claim 9). The reference application further discloses that the dispersion useful as a photoelectric conversion layer for photodetection element and image sensor (See claims 13-16). The reference application anticipates the instant claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 1 (and dependent claims 2-11) is 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.
Claim 1, at lines 5-6, recites “a content of the quantum dots in a component obtained by removing the solvent and the ligand from the dispersion liquid is 50% by mass or more”. Since the dispersion liquid only comprises a quantum dot, a ligand, and a solvent, it is unclear what is the remaining less than 50 wt% of the component when solvent and ligand are removed. Appropriate correction and/or clarification is required.
Claims 2-11 directly or indirectly depend from claim 1 and are indefinite based on their dependencies.
Claim Rejections - 35 USC § 102
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.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wo 2021002114 A1 (hereinafter Masashi).
Regarding claims 1-6, Masashi discloses a semiconductor quantum dot dispersion liquid comprises a ligand imparted to a surface of a semiconductor quantum dot dispersed in a solvent (See connecting unlabeled pages 9-10). Masashi discloses that the quantum dot can be binary or ternary semiconductor such as InAs, InGaAs, CuInS, CuInSe, CuInGaSe, InSb, HgTe, Ag2Se, and Ag2Te having a band gap of 0.5-2.0 eV, preferably 1.5 eV or less (See top of unlabeled page 5). Masashi further discloses that the ligand is a polydentate ligand containing a coordination portion including a carboxyl group, a sulfo group, a phosphor group and a phosphonic group (See bottom of unlabeled page 5 and middle of unlabeled page 6). The coordination portion of the ligand of Masashi is structurally same as the claimed ligand-containing compound; therefore, the pKa and molecular weight (Mw) of the coordination portion (i.e., a carboxyl group, a sulfo group, a phosphor group and a phosphonic group) would be the same or substantially same as the claimed ligand-containing compound, i.e., pKa of 3 or less and Mw of 50 to 500. It has been held that structurally similar compounds are generally expected to have similar properties (i.e., pKa and Mw). In re Gyurik, 596 F. 2d 1012,201 USPQ 552. Closely related homologues, analogs and isomers in chemistry may create a prima facie case of obviousness. In re Dillon USPQ 2d 1 897,1904 (Fed. Cir. 1990); In re Payne 203 USPQ 245 (CCPA 1979); In re Mills 126 USPQ 5 13 (CCPA 1960); In re Henze 85 USPQ 261 (CCPA 1950); In re Hass 60 USPQ 544 (CCPA 1944).
Regarding the limitation of “a content of the quantum dot in a component obtained by removing the solvent and the ligand from the dispersion liquid”, since the dispersion composition only contains three component and two components are removed, the only remaining component, i.e., quantum dot, has to be 50% by mass or more. In the instant case, Masashi discloses a step of filtering to remove impurities and a step of drying and removing of solvent from the dispersion (See bottom of unlabeled page 9). Thus, the remaining content would be at least 50% by mass of the quantum dot as claimed.
Regarding claim 7, Masashi discloses that the quantum dots having a high external quantum efficiency for light wavelength in the infrared region of 900 nm to 2,000 nm (See top of unlabeled page 5 and bottom of unlabeled page 3).
Regarding claims 8-9, Masashi discloses a photoelectric conversion film obtained by applying the dispersion liquid onto a substrate and drying (See unlabeled page 9).
Regarding claim 10, Masashi discloses the photoelectric conversion film useful as a photodetector (See bottom of unlabeled page 14; Test Examples 1-3).
Regarding claim 11, Masashi discloses the photoelectric conversion film useful as an image sensor (See bottom of unlabeled page 11).
The reference specifically or inherently meets each of the claimed limitations in their broadest interpretations. The reference is anticipatory.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
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 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHANH TUAN NGUYEN whose telephone number is (571)272-8082. The examiner can normally be reached M-F 9:00 AM to 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHANH T NGUYEN/Primary Examiner, Art Unit 1761
