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 .
Claims 1, 3-10 and 12-13 are pending, of which claims 4-10 have been withdrawn.
Response to Arguments
Applicant's arguments filed 1/16/26 have been fully considered but they are not persuasive.
On pages 5-6 of the response, Applicant argues that claim 1 as amended recites specific ranges for thermal conductivity and thermal expansion coefficient. Applicant argues that McCarthy, et al, cited in the prior office action, does not provide any technical insight regarding the thermal conductivity or thermal expansion coefficient of the lanthanum-barium orthophosphate. Applicant concludes that a person skilled in the art could not arrive at amended claim 1 on the basis of the prior art.
This argument is unpersuasive because McCarthy teaches the exact compounds described in the instant specification as meeting the thermal conductivity and thermal expansion coefficient limitations. As noted in MPEP §2112, the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. The fact that Applicant has discovered the advantageous thermal conductivity and thermal expansion coefficients for the materials already disclosed by McCarthy does not render these materials patentable.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1, 3, and 12-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McCarthy, et al. “Synthesis and Crystal Data for Alkaline Earth-Lanthanide Phosphates with the Eulytite Structure.” The Rare Earths in Modern Science and Technology: Volume 3, Boston, MA: Springer US, 1982, 339-340 (“McCarthy”).
Regarding claim 1, McCarthy teaches a composition with a chemical formula A3Ln(PO4)3, which is the same as the claimed RM3P3O12 (see e.g. page 339, first paragraph, starting “Eulytite, Bi4(SiO4)3…” and Table 1, first, second, and fourth columns). Specifically, McCarthy teaches several lanthanide-barium orthophosphates, including dysprosium, holmium, and erbium (see e.g. Table 1, fourth column). Although McCarthy does not specifically state that the composition belongs to the -43 m space group, McCarthy describes the composition as a cubic eulytine structure (see e.g. page 339, first paragraph, starting “Eulytite, Bi4(SiO4)3…”). Examiner notes that the instant application likewise describes the compositions as cubic eulytine structures (see Abstract). Accordingly, the cubic eulytine structures of McCarthy, which are the exact same compositions with the exact same type of crystal structure as the instant application, would also belong to the -43m space group. Although McCarthy does not provide the thermal conductivity or thermal expansion coefficient, McCarthy does teach erbium-barium orthophosphate (see e.g. Table 1, 12th row, last column). As noted in the instant application, this compound has a thermal conductivity of 0.77 W/m.K and a thermal expansion coefficient of 18.2 X 10-6/°C, both of which are within the claimed ranges (see e.g. Specification at paragraphs [95]-[96]). Per MPEP §2112.01(I), 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. Because the prior art product is identical or substantially identical to the claimed product, claim 1 is anticipated by the prior art.
Regarding claim 3, McCarthy discloses each of the claimed compositions (see e.g. Table 1, 9th, 10th, and 12th rows, last column).
Regarding claim 12, McCarthy teaches erbium-barium orthophosphate (see e.g. Table 1, 12th row, last column). As noted in the instant application, this compound has a thermal conductivity of 0.77 W/m.K, which is within the claimed range (see e.g. Specification at paragraphs [95]-[96]).
Regarding claim 13, McCarthy teaches erbium-barium orthophosphate (see e.g. Table 1, 12th row, last column). As noted in the instant application, this compound has a thermal expansion coefficient of 18.2 X 10-6/°C, which is within the claimed range (see e.g. Specification at paragraphs [95]-[96]).
Conclusion
THIS ACTION IS MADE FINAL. 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 ERIC S SHERMAN whose telephone number is (703)756-4784. The examiner can normally be reached Monday-Friday 8:30-5:00 ET.
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/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736