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 .
Response to Arguments
With respect to the objection to the specification, the specification has been amended to include the phrase “a quarter hour”. Accordingly the objection is WITHDRAWN.
With respect to the objection to Claim 5 regarding the tense Claim 5 has been amended to read only in the present tense. Accordingly the objection is WITHDRAWN.
With respect to the rejection of Claims 5-7 under 35 U.S.C. 112(b)/2nd par. as being indefinite for failing to particularly point out and distinctly claim the subject matter, Claims 5-7 have been amended.
Claim 5 has been amended to remove the phrase “Teflon-lined”. Accordingly the rejection is WITHDRAWN.
Claim 6 has been amended to remove the phrases “mainly include”, “such as”, and “etc.”. Furthermore Claim 6 has been amended to recite a non-zero lower limit of the amount of fluxing agent used, making it clear that fluxing agents are not optional. Claim 6 now clearly sets forth the limitations to the claimed scope. Accordingly the rejection is WITHDRAWN.
Claim 7 has been amended to link the Markush group with the phrase ”or”. Accordingly the rejection is WITHDRAWN.
With respect to the rejection of Claims 5-7 under 35 U.S.C. 103 as being unpatentable over Ruediger, as understood the traversal relies on arguments. Applicant argues “Ruediger fails to disclose or suggest the full scope of the claimed preparation methods as claim 5 recites three distinct alternatives: a high-temperature solid-state reaction method, a solution method, or a hydrothermal method.” [Remarks, Page 11, Paragraph 4]. This is unpersuasive because Claim 5 lists 3 methods of synthesis linked by the phrase “or”. This means that it is not required for the cited prior art to meet/satisfy the full scope of all embodiments of Claim 5.
Applicant further argues “Ruediger's conditions differ materially in the hydrothermal route: the claimed temperature range of 120-800 °C is significantly broader and higher than Ruediger's preferred 100-375 °C range, and the claimed molar ratios of alkali-metal/boron/phosphorus (1-5:7- 16:0.5-4) are not disclosed or suggested in Ruediger.” [Remarks, Page 11, Paragraph 4]. This is unpersuasive, as overlapping ranges are prima facie obvious. MPEP 2144.05.I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”. Further supporting the obviousness of the overlap in ranges it is noted that all hydrothermal synthesis methods disclosed in the instant application specification (Embodiment 4 and 5, Page 17) use a temperature within the range disclosed by Ruediger. Regarding the molar ratios claimed, this was addressed in the original rejection; Ruediger discloses a method of making crystals comprising the formula required by Claim 5 and teaches that the molar ratios of the reactants may be the same as the molar ratio of the product formed. Therefore while Ruediger does not explicitly disclose the ratio claimed (1-5:7-16:0.5-4) the ratio is implicitly disclosed. MPEP 2144.01.
Applicant further argues “claim 5 specifies starting materials including elemental K, Rb, Cs, elemental boron, and elemental phosphorus, which are entirely absent in Ruediger's examples and teachings” [Remarks, Page 11, Paragraph 4]. This is unpersuasive. Firstly, what is argued is the invention (“elemental K, Rb, Cs, elemental boron, and elemental phosphorus”) is not consistent with what is claimed (“potassium/rubidium/cesium- containing compound, boron-containing compound and phosphorus-containing compound” [Claim 5]). Because a chemical compound requires 2 or more elements to be present, elemental K (as an example) is not a K containing compound. Furthermore, elemental K and elemental phosphorus are highly reactive chemicals that cannot be handled in water as required by at least a hydrothermal method without a potentially dangerous reaction (involving heat and explosive gasses) that would generate K and phosphorus compounds anyway. There is no teaching or suggestion anywhere in the specification that motivates one of ordinary skill in the art to have used a more dangerous and expensive starting material than what is disclosed by means of examples.
Applicant further argues “The Examiner's assertion that one of ordinary skill in the art "would have" adopted these precise conditions from Ruediger is a hindsight, as the reference lacks any teaching, motivation, or reasonable expectation of success in modifying its examples to arrive at the claimed invention.” [Remarks, Page 12, Paragraph 1]. This is unpersuasive as disclosed embodiments without a working example are still disclosed. MPEP 2123.II states “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.”. In other words Ruediger’s inclusion of examples outside of the range that is presently claimed does not change the fact that Ruediger discloses a method of making the crystals of the present application.
Applicant further argues “The generic disclosure of water-soluble salts in Ruediger cannot reasonably be interpreted as motivating one of ordinary skill to select the claimed fluxing agents and specific ratios to achieve the transparent nonlinear optical crystals of the invention.” [Remarks, Page 12, Paragraph 2]. This is unpersuasive as the current specification does not disclose what properties a fluxing agent needs to have to be considered a fluxing agent. One of ordinary skill in the art would therefore not be able to distinguish between a fluxing agent and a water soluble salt based on the present disclosure. Additionally it noted that Claim 6 is very broad (the salts used may be hydroxides, oxides, halides, carbonates, etc.), not requiring any specific compounds or fluxing agents but instead giving a long list of possible water soluble salts that could be used. If it is known in the art that a synthesis can occur with water soluble salts as precursors it is not inventive to merely list a page full of examples of suitable water soluble salts. Additionally the present invention does not contain any comparative examples of a failed synthesis with a water soluble salt so there is no teaching that the salts claimed are critical and that one of ordinary skill in the art would have required undue experimentation to have arrived at the method claimed. MPEP 716.02(d)II.
Applicant further argues “Ruediger does not teach or suggest the specific molar ratios of fluxing agents recited in claim 7. As claim 7 recites specific molar ratios for multiple systems, such as KOH-B2O3, K2CO3-H3BO3, and K2CO3-NH4H2PO4, among others, each with defined ranges necessary to achieve single-phase A3B11P2O23 polycrystalline powders with desired transparency and nonlinear optical properties. Ruediger's disclosure of stoichiometric ratios for generic metal, borate, and phosphate sources in polar solvents does not teach or suggest selecting these specific fluxing agents, nor does it provide any guidance or motivation to achieve the claimed ranges.” [Remarks, Page 12, Paragraph 3]. This is unpersuasive. As discussed above and in the original rejection Ruediger teaches the formula of claim 5 and the molar ratio should be the same between reactants and the desired product. Ruediger teaches the ratios claimed. Regarding “selecting these specific fluxing agents”, it is pointed out that in the original rejection it was stated “For the purpose of this action the example of water soluble salts used by Ruediger is chosen as the combination of K2CO3, H3BO3, and NH4H2PO4, but it should be understood that a similar rejection using KF, KOH, K2O, KBF4, or KCI as the potassium source, or the equivalent Cs or Rb salts could have been presented without changing the thrust of the rejection.”. In other words the specific fluxing agents chosen were exemplary and it is noted that all the possible combinations of fluxing agents claimed are within the disclosure of Ruediger because they all use water soluble salts.
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.
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 9525066 A1 Ruediger. Claim 5 requires “A preparation method for the alkali metal borophosphates A3B11P2O23 (A = K, Rb, Cs) nonlinear optical crystals by a high-temperature solid-state reaction method, a hydrothermal method or a solution method”. Ruediger discloses “The invention accordingly comprises, in a first embodiment, crystalline borophosphates and processes for the preparation of crystalline borophosphates of monovalent and/or polyvalent cations of the general formula (I) xM2/nO·y(B,Al)2O3·P2O5·mH2O where n is 1, 2 or 3 and expresses the valence of the metal M, y is between 0.1 and 50, m is a number in the range from 0 to (2 + y), x is chosen so that n-x lies in the range 0.1 to 6.(1 + y), (B, Al) boron and optionally aluminum” [0013-0020]. Regarding the identity of M Ruediger further discloses “Ammonium ions as well as any mono-, di- or trivalent cations can be used as metal cations M. Examples of monovalent cations are the alkali metal cations and in particular sodium and potassium ions.” [0023]. Therefore the current disclosure lies within the range disclosed by Ruediger when x is 1.5, M is potassium (K), n = 1, y = 5.5, (B, Al) = only B, and m = 0; formula (I) is expressed as 1.5K2O·5.5B2O3·P2O5 which is equivalently K3B11P2O23.
Regarding the method of synthesis Ruediger discloses a hydrothermal method “a source of the metal or ammonium cations M, of borate ions, phosphate ions and optionally of aluminum ions is dissolved or suspended in a polar solvent and the solution or suspension is heated in a pressure reactor under the pressure which is established in each case to a temperature between 100°C and the critical temperature of the solvent” [0022]. Claim 5 further limits the hydrothermal method of synthesis: “the hydrothermal method comprising the following steps: a. a mixture of the potassium/rubidium/cesium-containing compound, the boron-containing compound, the phosphorus-containing compound is combined with deionized water (0.1-50 mL) or boric acid 0.1-50 g”. Ruediger discloses mixing M, borate and phosphate with water “Examples of suitable polar solvents are lower mono- or polyhydric alcohols such as methanol, ethanol, propanol, ethylene glycol and the like, and in particular water.” [0022]. Ruediger does not disclose the volume of water to be used, however they do disclose the size of the hydrothermal reactor in Example 5 “The well-ground starting materials are mixed in Teflon autoclaves (Roth, volume 20 mL)” [0100], which necessarily limits the amount of water used to 0.1-20 mL.
Claim 5 further requires “in which element potassium/rubidium/cesium in the potassium/rubidium/cesium-containing compound, elemental boron in the boron-containing compound, and elemental phosphorus in the phosphorus-containing compound are in a molar ratio of 1-5:7-16:0.5-4”. Ruediger discloses “The sources of the metal or ammonium cations as well as of the borate and phosphate ions are preferably dissolved or suspended in the polar solvent in the stoichiometric ratio given by formula (I).” [0024], in other words in order to make K3B11P2O23 the ratio of elemental potassium to boron to phosphorous would have been 3:11:2, the stoichiometric ratio of the formula targeted which reads on the range claimed.
Claim 5 further requires “b. the mixture is loaded into autoclave and subsequently sealed”. One of ordinary skill in the art would know that autoclaves need to be sealed because the reactions occur under increased pressure.
Claim 5 further requires ”c. the autoclave is heated to 120-800 °C, held for a period of time, and then cooled to room temperature”. Ruediger discloses “heated in a pressure reactor under the pressure which is established in each case to a temperature between 100°C and the critical temperature of the solvent, if necessary after maintaining this temperature for a time interval between one minute and 24 hours, cooling again to a temperature between the freezing and boiling point of the solvent” [0022]. The critical temperature of water is about 375 °C, therefore Ruediger discloses heating to between 100-375 °C, holding for a period of time, and cooling to between 0-100 °C which reads on the range claimed.
Claim 5 further requires “d. filter the solution containing crystals to obtain the transparent alkali metal borophosphates compounds”. Ruediger discloses “isolating the solid from the solvent.” [0022]. While Ruediger does not disclose filtering per se, it would have been obvious for one of ordinary skill in the art to have used a filter for isolating a solid from a liquid, as filters are a well-known conventional method of isolating solids.
Claim 6 requires “a molar ratio of the compound A3B11P2O-23 (A = K, Rb, Cs) single-phase polycrystalline powder to the fluxing agent is 1:0.6-20; or a molar ratio of the potassium/rubidium/cesium-containing compound, the boron- containing compound, the phosphorus-containing compound and the fluxing agent is 0.5- 5:6-16:0.5-4:0.6-20”. Ruediger discloses “The source of these metal cations is considered to be compounds from which the metal cations can be released in an aqueous environment. These are in particular the water-soluble salts, preferably borates and phosphates, but also salts of other inorganic or organic acids, organic complex compounds such as acetylacetonates as well as oxides and hydroxides.” [0024]. As understood from the rest of Claim 6 (which lists self-service fluxing agents) compounds such as, for example, K2CO3, H3BO3, and NH4H2PO4 can be considered fluxing agents. Therefore a sociometric ratio of K2CO3, H3BO3, and NH4H2PO4 (all of which are water soluble salts and/or inorganic acids) necessary to make K3B11P2O-23, would necessarily have a ratio of potassium, boron, phosphorous, and fluxing agent of 3:11:2:14.5 (1.5 parts K2CO3 + 11 parts H3BO3 + 2 parts NH4H2PO4 = 14.5 parts of fluxing agent). For the purpose of this action the example of water soluble salts used by Ruediger is chosen as the combination of K2CO3, H3BO3, and NH4H2PO4, but it should be understood that a similar rejection using KF, KOH, K2O, KBF4, or KCI as the potassium source, or the equivalent Cs or Rb salts could have been presented without changing the thrust of the rejection.
Claim 6 further requires “the fluxing agents are selected from a group consisting of self-service fluxing agents, K2CO3, KF, KOH, K2O, KCI, KBF4, Rb2CO3, RbF, RbOH, Rb2O, RbCl, RbBF4, Cs2CO3, CsF, CsOH, Cs2O, CsCl, CsBF4, H3BO3, B2O3, KH2PO4, RbH2PO4, CsH2PO4, KBO2, RbBO2, CsBO2, NH4H2PO4, P2O5, and other composite fluxing agents, including KOH-H3BO3, KOH-B2O3, KOH-P2O5, KOH-NH4H2PO4, K2CO3-H3BO3, K2CO3-B2O3, K2CO3-P2O5, K2CO3-NH4H2PO4, KF-H3BO3, KF-B2O3, KF-P2O5, KF-NH4H2PO4, KCl-H3BO3, KCl-B2O3, KCl-P2O5, KCl-NH4H2PO4, K2O-PbO, K2O-PbF2, KOH-PbO, KOH-PbF2, KF-Bi2O3, KF-MoO3, KBF4-Bi2O3, KBF4-MoO3, K2CO3-Li4P2O7, K2CO3-KBO2, K2CO3-NaF, K2CO3-NaCl, K2CO3-Li4P2O7-NaF, K2CO3-Li4P2O7-NaCl, K2CO3-Li4P2O7-MoO3, K2CO3-LiBO2-MoO3, K2CO3-H3BO3-P2O5, K2CO3-H3BO3-NH4H2PO4, K2CO3-H3BO3-PbO, RbOH-H3BO3, RbOH-B2O3, RbOH-P2O5, RbOH-NH4H2PO4, Rb2CO3-H3BO3, Rb2CO3-B2O3, Rb2CO3-P2O5, Rb2CO3-NH4H2PO4, RbF-H3BO3, RbF-B2O3, RbF-P2O5, RbF-NH4H2PO4, RbCl-H3BO3, RbCl-B2O3, RbCl-P2O5, RbCl-NH4H2PO4, Rb2O-PbO, Rb2O-PbF2, RbOH-PbO, RbOH-PbF2, RbF-Bi2O3, RbF-MoO3, RbBF4-Bi2O3, RbBF4-MoO3, Rb2CO3-Li4P2O7, Rb2CO3-RbBO2, Rb2CO3-NaF, Rb2CO3-NaCl, Rb2CO3-Li4P2O7-NaF, Rb2CO3-Li4P2O7-NaCl, Rb2CO3-Li4P2O7-MoO3, Rb2CO3-LiBO2-MoO3, Rb2CO3-H3BO3-P2O5, Rb2CO3-H3BO3- NH4H2PO4, Rb2CO3-H3BO3-PbO, CsOH-H3BO3, CsOH-B2O3, CsOH-P2O5, CsOH-NH4H2PO4, Cs2CO3-H3BO3, Cs2CO3-B2O3, Cs2CO3-P2O5, Cs2CO3-NH4H2PO4, CsF-H3BO3, CsF-B2O3, CsF-P2O5, CsF-NH4H2PO4, CsCl-H3BO3, CsCl-B2O3, CsCl-P2O5, CsCl-NH4H2PO4, H3BO3-P2O5, H3BO3-NH4H2PO4, B2O3-P2O5, B2O3-NH4H2PO4, Cs2O-PbO, Cs2O-PbF2, CsOH-PbO, CsOH-PbF2, CsF-Bi2O3, CsF-MoO3, CsBF4-Bi-O3, CsBF4-MoO3, Cs2CO3-Li4P2O7, Cs2CO3-CsBO2, Cs2CO3-NaF, Cs2CO3-NaCl, Cs2CO3-Li4P2O7-NaF, Cs2CO3-Li4P2O7-NaCl, Cs2CO3-Li4P2O7-MoO3, Cs2CO3-LiBO2-MoO3, Cs2CO3-H3BO3-P2O5, Cs2CO3-H3BO3-NH4H2PO4, Cs2CO3-H3BO3-PbO”. As noted above, the water soluble metal salts/inorganic acids disclosed by Ruediger (such as K2CO3, H3BO3, and NH4H2PO4 as one example) has significant overlap with the fluxing agents claimed.
Claim 7 requires molar ratios of particular fluxing agents. Ruediger discloses “The source of these metal cations is considered to be compounds from which the metal cations can be released in an aqueous environment. These are in particular the water-soluble salts, preferably borates and phosphates, but also salts of other inorganic or organic acids, organic complex compounds such as acetylacetonates as well as oxides and hydroxides.” [0024], therefore one example of starting materials for the production of K3B11P2O-23 would be K2CO3, H3BO3, and NH4H2PO4 (all of which are water soluble salts and/or inorganic acids).
For K2CO3, H3BO3, and NH4H2PO4 specifically Claim 7 requires “the molar ratio of K2CO3 to H3BO3 in the K2CO3-H3BO3 system is 0.5-3:0.8-16; … the molar ratio of K2CO3 to NH4H2PO4 in the K2CO3-NH4H2PO4 system is 1-4:1.1-16”. Ruediger discloses “The sources of the metal or ammonium cations as well as of the borate and phosphate ions are preferably dissolved or suspended in the polar solvent in the stoichiometric ratio given by formula (I).” [0024]. Formula (I) (see Claim 5) allows for a range of products to be formed, when the product K3B11P2O-23 is targeted specifically the stoichiometric ratios of 1.5:11 would have been used for the K2CO3-H3BO3 system and the ratio of 1.5:2 would have been used for the K2CO3-NH4H2PO4 system. Both ratios read on the range claimed. The particular example of K2CO3, H3BO3, and NH4H2PO4 as starting materials is merely one possible example of water soluble salts that one of ordinary skill in the art could have chosen, however it is noted that all of the ranges of molar ratios claimed similarly contain at least the ratio of A:B:P of 3:11:2 and therefore regardless of the specific salt chosen the ratio used would have fallen within the claimed range.
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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/JOSHUA MAXWELL SPEER/
Examiner
Art Unit 1736
/DANIEL BERNS/Primary Examiner, Art Unit 1736
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