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 .
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 on 6 February 2026. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 13 January 2026 has been entered.
The amendments to the claims have overcome the objection to claim 1 and the art rejection. Upon further consideration and a new search, new grounds of rejections are being made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 1 and 9 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.
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 1, which limits D to containing at least one of Ho, Er and Tm, recites the broad recitation “x =0.0001-2”, and the claim also recites “when D contain Er, x is 0.05-2; when D contains Ho, x is 0.02-2; and when D contains Tm, x is 0.01-2”, which are the narrower statements of the range. Claim 9 implicitly includes these x amounts. The claims are considered indefinite because there are two different value ranges of x for each of the claimed polysulfides containing Er, the claimed polysulfide containing Ho and the polysulfide containing Tm.
It is suggested to delete the x definition in line 6 of the claim to overcome this rejection.
Claim Rejections - 35 USC § 102
Claims 1 and 9 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by EP 1,135,838.
This reference teaches a phosphor having the formula (Y0.919Yb0.08Tm0.001)2S3, which can be rewritten as Y1.838Yb0.16Tm0.002S3. The reference teaches yttria is the matrix (para 28), which means that ytterbium and thulium are the codopants for the phosphor and that the formula can be written as Y1.838S3:Yb0.16Tm0.002. The total amount of codopants is 0.162, which falls within the claimed x value, when the dopant D includes Tm. The taught codopant of Yb is one of the claimed codopants. Since the taught phosphor has a composition that falls within that claim formula and composition, the taught phosphor must inherently be upconverting and emit light in at least one of range of UV-NIR when excited by NIR in the range of 750-850 and/or 1180-1260 nm, absent any showing to the contrary. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) Also see MPEP 2112.01(I) and (II).
While the taught phosphor is used as a lasing media, there is no evidence on the record that the taught phosphor would also not have the claimed properties and thus also act as an up-conversion phosphor. "[T]he 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." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id. The reference teaches the claimed phosphor.
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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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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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
3/19/26
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