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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3 December 2025 and 27 January 2026 has been entered.
The amendments to the claims filed 27 January 2026, which replaced the amendments to the claims filed 3 December 2025, have overcome the 35 USC 112(a) rejection over claims 1 and 3-8; the 36 USC 112(b) rejection over claims 1 and 3-7, the 35 USC 112(b) rejection over claim 8 with respect to rejection based on the configured wording in claim 1, the 35 USC 112(b) rejection over clams 14 and 16-20 as to the large number of thulium doped nanocrystals that do nor exhibit photon avalanching when exposed to near IR excitation wavelengths, the 35 USC 112(b) rejection over claim 16 with respect to the amount of thulium in the claimed nanoparticle. The amendment to claim 16 has overcome the art rejection based on Liu et al. The terminal disclaimer filed in copending Application No. 18/531,271 has overcome the provisional double patenting rejection. Applicants’ arguments in the submission of 3 December 2025 that “100% thulium doped” in claim 8 means that thulium is the only dopant has overcome the 35 USC 112(b) rejection and the art rejection based on Lui et al of claim 8. Applicants’ arguments with respect to the Liu et al articles are convincing and therefore that rejection based on that article is withdrawn. Upon rereading CN 1088384547, the rejection over claim 7 is no longer rejected over that reference since it teaches the NaYbF4 is a sensitizing shell layer.
Applicant's arguments in the submission filed 3 December 2025 with respect to the art rejections and the remaining 35 USC 112(b) rejection over claims 14 and 16-20 have been fully considered but they are not persuasive. The declaration under 37 CFR 1.132 filed 27 January 2026 is insufficient to overcome the rejection of claims 1 and 4-8 based upon CN 108384547 as set forth in the last Office action for the reasons discussed “Response to Arguments” section under the rejection based on CN 108384547.
The 35 USC 112(a) rejection over claims 14 and 16-20 has been modified in view of the 27 January 2026 amendment to claim 14. Based on Dr. Schuck argument made in the interview and the arguments with respect to this rejection made in the submission of 2 January 2026 that NaTmF4 nanoparticles without a shell will not exhibit photon avalanching, the rejection over CN 103623436 is withdrawn.
Election/Restrictions
Claims 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement by original presentation made in the office action of 6 June 2025, the election has been treated as an election without traverse (MPEP § 818.01(a)). Election was made without traverse.
Claim Rejections - 35 USC § 112
Claims 14 and 16-22 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.
Claims 14 and 16-20 teach a method for inducing photo avalanching comprising providing, or providing, a near infrared excitation wavelength to an up-converting nanoparticle having at least 8% thulium doped nanocrystals. The wording of the amended claim reads on the nanoparticles being composed of at least 8% upconverting nanoparticles doped with thulium and at most 92% of up-converting nanoparticles different from the thulium doped nanoparticles. This process is different from the process disclosed in the originally filed disclosure of a method for inducing photo avalanching comprising providing, or providing, a near infrared excitation wavelength of greater than about 1060 nm to thulium doped nanoparticles, where the amount of thulium dopant is at least 8%. The originally disclosed process taught all the exposed nanoparticle are thulium doped nanoparticles, where the amount of thulium dopant is at least 8%. The newly claimed process is new matter.
New claim 21 teaches the passivating shell reduces energy losses at the surface of the nanoparticles. New claim 22 teaches the combination of the base material and the at least one passivating shell reduces surface losses at the surface of the nanoparticle. The originally filed disclosure is silent as to reduces energy losses at the surface of the nanoparticles. It only discussed surface losses in pargraphs [0056], [0084] and [0085]. There is no teaching in the specification that these surface losses are energy losses. Thus the subject matter of claim 21 is not supported by the originally filed disclosure. While paragraph [0085] teaches the optically inert, or passivating, shell minimized surface losses, this teachings does not support the subject matter of claim 22 since there is no indication in this paragraph that it is the combination of the based material and this shell that reduce surface losses. There is no teaching in the originally filed disclosure as to the effect of the base material on the surface loss of the nanoparticles. Paragraphs [0056] and [0084] indicate that it is the dopant and the amount of the dopant that affect the surface loss of the nanoparticles. The subject matter of these new claims are not found in the originally filed disclosure for the reasons discussed above and thus are new matter.
Claims 14, and 16-20 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 14 and 16-20, as worded, teaches the thulium doped nanocrystals which exhibit photon avalanching have, or comprise 8% thulium doped nanocrystals. Thus means that only 8% of the claimed thulium doped nanocrystals are thulium doped nanocrystals. The claims are indefinite as to what is the composition of the other 92% or less of the up-converting nanoparticle that can be present in the claimed process which can induce photon avalanching when provided with, or exposed to, a near infrared excitation wavelength.
Response to Arguments
Applicants’ arguments with respect to the above rejections, previous presented, have been considered but are not convincing. The arguments treat the claims as if claim 14 teaches a method for inducing photo avalanching comprising providing, or providing, a near infrared excitation wavelength of greater than about 1060 nm to thulium doped nanoparticles, where the amount of thulium dopant is at least 8%. The claims, as written, do not state this. Claim 14, as written, teaches “8% thulium doped nanocrystals” which teaches the amount of thulium doped nanocrystals in the upconverting nanoparticles. The claimed 8% does not refer to a doping amount. The argument with respect to a process of doping made on paged 7 of the submission dated 3 December 2025 does not address the rejected claims, since the rejected claims are not directed to a method of doping a material with Tm. Dependent claims 16-20 do not change the basic teachings in claim 14. The 35 USC 112 rejections over claims 14 and 16-20 are maintained.
Claim Interpretation
Claim 8 is being interpretated as meaning the nanoparticle is only doped with thulium and that the thulium doping amount is at least 8%, as discussed on page 10 of the submission of 3 December 2025 and page 11 of the supplemental response filed 27 January 2026.
Claim Rejections - 35 USC § 102
Claims 1, 4-6, 8, 21 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 108384547.
Example 4 teaches producing, or configuring, up-converting luminescent nanoparticles, or nanocrystals, of NaYF4:10% Tm cores which have shells of NaYbF4 and NaYF4 thereon. The NaYF4 shell is a passivating shell. The atomic concentration of thulium in this compound is 10% and falls within the range of claim 1. The taught NaYbF4 shell is not excluded from the claimed nanoparticles. The taught NaYbF4 is not a dopant and thus the taught nanoparticles only contain thulium as a dopant. The taught core, including the base material, is compositionally identical to what is disclosed in the specification. The taught outer shell is a passivating shell and thus must have the property of claim 21 and the property of claim 22, when combined with the taught NaYF4 base material, which is the same as that used by applicants in their examples, absent any showing to the contrary. Since the taught core is identical to that disclosed by applicants, it must exhibit photon avalanching. There is no indication in the reference nor art that the NaYbF4 shell affects the excitation wavelength of the taught nanoparticle nor the photon avalanching behavior of the core. Thus the taught nanoparticles would be expected be photon avalanching and to have a excitation wavelength within the ranges of claim 4 and 5, absent any showing to the contrary. The reference anticipates the claimed nanoparticles
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.
Claims 1, 46, 8 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over CN 108384547.
This reference teaches up converting luminescent nanoparticles, or nanocrystals, of NaLnF4:10-50% A cores having a first shell of NaYbF4 and an outer passivating shell of NaLnF4, where in Ln is at least one of Y, Gd and Lu and A is a dopant and is selected from Er+3 or Tm+3. Thus the reference suggests nanoparticles of NaYF4 cores doped with 10-50% thulium having a first shell of NaYbF4 and an outer passivating shell of NaYF4. The taught core reads upon the claimed based material doped with thulium and the taught amount of thulium falls within that of claim 1. The taught NaYbF4 shell is not excluded from the claimed nanoparticles. The taught NaYbF4 is not a dopant and thus the taught nanoparticles only contain thulium as a dopant. The taught core, including the base material, is compositionally identical to what is disclosed in the specification. The taught outer shell is a passivating shell and thus must have the property of claim 21 and the property of claim 22, when combined with the taught NaYF4 base material, which is the same as that used by applicants in their examples, absent any showing to the contrary. Since the taught core is identical to that disclosed by applicants, it must exhibit photon avalanching. There is no indication in the reference nor art that the NaYbF4 shell affects the excitation wavelength of the taught nanoparticle nor the photon avalanching behavior of the core. Thus the taught nanoparticles would be expected be photon avalanching and to have a excitation wavelength within the ranges of claim 4 and 5, absent any showing to the contrary. The reference anticipates the claimed nanoparticles. The reference suggests the claimed nanoparticles.
Response to Arguments
Applicants’ arguments with respect the rejection have been considered but are not convincing. The declaration under 37 CFR 1.132 and the arguments are insufficient to overcome this rejection because the assert that the taught and suggested nanoparticles do not meet the three criteria required for a material to exhibit photon avalanche but do not provide any experimental data supporting this assertion. The reference shows that the taught nanoparticles have different emission behavior than the conventional Yb and either Tm or Er codoped sodium rare earth fluoride upconverting nanoparticles. The arguments and the declaration refer to an article which teaches exciting the taught nanoparticles at 980 nm. While this article does not show photon avalanche at this wavelength, it does not show that photon avalanches could not or does not occur at other excitation wavelengths, such as at the claimed range of above 1064 nm. The rejection is maintained.
Allowable Subject Matter
Claims 3 and 7 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.
There is no teaching or suggestion in the cited art of record of an upconverting luminescent nanoparticles which exhibits photon avalanching comprising a base material doped with at least 99% thulium. There is no teaching or suggestion in the cited art of record of an upconverting luminescent nanoparticles which exhibits photon avalanching comprising a base material doped with at least 8% thulium and the nanoparticles are free of a Yb+3 sensitizer. The taught outer shell is a passivating shell and thus must have the property of claim 21, absent any showing to the contrary. The reference suggests the claimed upconverting nanoparticles.
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
2/6/26