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 .
Election/Restrictions
Claims 1-14 and 24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/22/26.
Applicant’s election without traverse of the invention of group 2, claims 15-23, in the reply filed on 1/22/26 is acknowledged.
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.
Claims 15-23 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15, 18-22 recites the broad recitation such as ‘a haze h2 of 20 < h2 < 70%’, and the claim also recites further limitations like ‘in particular h2 < 80%’, ‘‘in particular of h2 < 70%’, and ‘very particular of h2 < 60%’ which are the narrower statement of the range/limitation. Each of claims 18-22 includes similar narrow/broad limitations, wherein the claim recites a broad limitation and then uses the language ‘in particular’, ‘preferably’, ‘very particular’, ‘most preferably’ to set forth a narrow limitations. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Each of these limitations is given its broadest reasonable interpretation and is examined on the basis of the broad limitation. Each of claims 15-23 is rejected on this basis for including these limitations or being dependent on a claim that includes these limitations. 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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 15-16, 18-21 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luchinger in WO2018028870.
Regarding Claim 15: Luchinger teaches the creation of films comprising luminescent crystals embedded in a polymer (See Page 7, paragraphs 1-2; Page 37, paragraph 3). These polymeric films containing embedded luminescent crystals are shown in Figures 5-7. Luchinger teaches that the film may be provided as a bilayer film (See Paragraph bridging page 37 and 38), wherein the first film comprises luminescent crystals emitting red light and the second film comprises luminescent crystals emitting green light. Luchinger teaches that said first and second film may be provided attached to one another as a bilayer film (See Page 42, paragraph 4). This bilayer film may be a self-supporting film as it does not require a substrate.
Luchinger teaches that the luminescent crystals may have a perovskite crystal structure (See Page 8, Paragraph 4; Page 2, Paragraph 8). Luchinger teaches that the luminescent crystals in each of the layers may individually emit green or red light in response to excitation by light of a shorter wavelength (See Paragraph bridging page 37 and 38).
Luchinger teaches that the film may have a haze value between 10 and 90% (See Paragraph bridging pages 41 and 42). Luchinger thus teaches an overlapping range of haze values. Overlapping ranges have been held to establish a prima facie case of obviousness over the prior art. Those of ordinary skill would only need to select from the overlapping portion of the range to arrive at the invention as claimed.
Regarding Claim 16: Luchinger teaches that the film may comprise scattering particles (See Paragraph bridging pages 41 and 42).
Regarding Claim 18: Luchinger teaches the luminescent crystals are selected from compounds of Formula:
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492
564
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The formula of Luchinger represents an overlapping range of compositions with those claimed. Overlapping ranges have been held to establish a prima facie case of obviousness over the prior art. Those of ordinary skill would only need to select from the overlapping portion of the range to arrive at the invention as claimed.
Regarding Claim 19: Luchinger teaches that M2 may be Pb (See Page 7 and Examples). Luchinger teaches that the content of the luminescent crystals within the film may be from 0.05 g/m2 to 3 g/m2 (50 mg to 3000 mg/m2; See Paragraph bridging pages 39 and 40). Luchinger is noted as teaching that the perovskite composition is CsPbBr3. The atomic weight of Cs, Pb and Br are 133, 207 and 80 respectively. The atomic weight of the compound is 133+207+80*3=580. The weight fraction of Pb in the compound is 207/580=0.35. Luchinger teaches no other source of lead. Thus the lead concentration of the films is the (luminescent crystal content)*(weight fraction of Pb in the crystal). The concentration of Pb is thus from 50*(0.35) to 3000*(0.35) or 17.5 to 1050 mg/m2 of the film. Thus Luchinger teaches an overlapping range of Pb concentration. Overlapping ranges have been held to establish a prima facie case of obviousness over the prior art. Those of ordinary skill would only need to select from the overlapping portion of the range to arrive at the invention as claimed.
Regarding Claim 20: Luchinger teaches that the polymer comprises an acrylate (See Page 23, paragraph 3).
Regarding Claim 21: Luchinger teaches that the acrylate may have a formula as shown in Figure III. The Composition of Figure 3 contains 3 Carbons, 2 Oxygens, R9, R10 and X. R9 may be CH3 (1 carbon). R10 may be a C1-25 alkyl. X is preferably a spacer of formula IIIa, containing 1 oxygen and preferably 2 carbons. The composition described by Luchinger may contain 3+1+(1 to 25)+2=7-31 carbons and 2+1=3 oxygens. Thus the range of compositions of Luchinger may have a ratio of (oxygen+nitrogen) to carbon from 3/7 to 3/31 oxygen, which translates to a ratio of 0.096-0.42 as claimed. The polymer compositions used in the examples are also noted and are also considered to fall within the overlapping range as claimed. Luchinger thus teaches the use of polymers having an overlapping ratio of oxygen and nitrogen to carbon. Overlapping ranges have been held to establish a prima facie case of obviousness over the prior art. Those of ordinary skill would only need to select from the overlapping portion of the range to arrive at the invention as claimed.
Regarding Claim 23: Luchinger teaches that the luminescent film may be sheetlike (See Page 33, Paragraph 4 and Figures 5-7). Luchinger also teaches that the polymers may be sandwiched between two barrier layers (See Page 33, Paragraph 4; See Page 42, Paragraph 4).
Claim(s) 17 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luchinger in WO2018028870 as evidenced by Sartomer in the technical data sheets of “SR595” and “SR506C”.
Regarding Claim 17: Luchinger teaches a self-supporting film comprising a polymer and luminescent crystals embedded in said polymer as is discussed above in terms of claim 15. Luchinger teaches that the polymer may be cured or hardened (See Paragraph 2), but is silent in terms of crosslinking of the polymer. However, Luchinger teaches the use of multifunctional acrylates (See Page 25-26). Luchinger shows the use of plural acrylates in examples 6-11 and 13 in the form of an isobornyl acrylate and a decane-diol-diacrylate. The isobornyl acrylate is a monofunctional precursor (See evidentiary document ‘SR506C’). When this monofunctional precursor is combined with a difunctional precursor (decane-diol-diacrylate, See evidentiary document ‘SR595’), Irgacure, and cured under a UV lamp, those of ordinary skill in the art would expect the solid polymer created to be crosslinked. Those of ordinary skill in the art would expect crosslinking based on the difunctional nature of the diacrylate and its ability to link between proximate isobornyl acrylate chains. Thus on the basis of the examples, those of ordinary skill in the art would have found it obvious to provide multifunctional monomers that produce crosslinked polymers when cured.
Regarding Claim 22: Luchinger teaches that various polymers may be used to create the film (See Page 23-26). Luchinger is silent in terms of the glass transition temperature of the polymers disclosed. However, Luchinger teaches the use of a isobornyl acrylate based polymer in the examples (See Example 6-11 and 13). The evidentiary document SR506C shows that polymers based on isobornyl acrylate have a Tg of 95C. Based on Luchinger’s use of this polymer and the range of compositions shown at pages 23-26, those of ordinary skill would have expected the polymers of Luchinger to have a glass transition temperature that would at least overlap the claimed range. Overlapping ranges have been held to establish a prima facie case of obviousness over the prior art. Those of ordinary skill would only need to select from the overlapping portion of the range to arrive at the invention as claimed.
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 15-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12448565. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims teach a self-supporting film comprising luminescent crystals embedded in a polymer (See patented claim 1). The patented film contains green and red luminescence crystals (See claim 1) and has a haze from 10 to 80% (See Claim 2), scattering particles (See Claim 3), and the luminescent crystals are of the same composition, wherein M may be Pb (See Claim 5). The content of Pb may be an overlapping range from 5-200 mg/m2 (See Claim 1) and the polymer may be an acrylate (See Claim 1). The claimed acrylates have a ratio (N+O)/C of less than 0.4, overlapping the claimed range. The Tg of these polymers would also necessarily overlap as they may be the same composition. Positioning the claimed self-supporting film between two barrier layers is taught in claim 4. All of the instant claim limitations are anticipated or obviated by the patented claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734