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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/30/2026 has been entered.
Response to Arguments
Regarding the drawing objections, applicant’s amendments to the drawings filed on 1/14/26 have overcome these rejections; therefore these objections are hereby withdrawn and the substitute drawings are hereby entered.
Regarding the amendments “a 1/10 afterglow of the first wavelength-converted light is less than 1 ms” and related arguments, applicant’s arguments have been fully considered but are not considered persuasive. While the examiner fully understands and appreciates applicant’s point related to the decay or afterglow characteristics of the phosphor of Bickford and specifically how Bickford teaches a much longer afterglow than what is currently claimed, the examiner is not convinced that this is a structural difference. Specifically, the claim limitation recites “the light irradiation type cosmetic apparatus includes a body part and a head part, and the light irradiation type cosmetic apparatus is capable of irradiating with an output light, including the primary light and the first wavelength-converted light, generated at the body part, through an irradiation port provided in the head part, and a 1/10 afterglow of the first wavelength-converted light is less than 1 ms”. There is nothing in applicant’s remarks that the phosphor taught by Bickford is not structurally capable of outputting light having the claimed afterglow, as Bickford teaches the exact same phosphor as disclosed by applicant. It is the examiner’s understanding that the afterglow is an inherent characteristic or property the phosphor itself or, alternatively, an inherent result or effect of the primary light from the light source being absorbed by the phosphor. Therefore, the same phosphor must be inherently capable of providing the same afterglow. Par 0069 of applicant’s specification provides a list a phosphors that seemingly provide the claimed afterglow. Par 0049 of Bickford discloses the exact same phosphors. Therefore, the examiner maintains that Bickford discloses the necessary structure, i.e. specific phosphor, that is inherently capable of providing the claimed afterglow; see MPEP 2112 and 2114 (cited below). If applicant somehow disagrees that the same phosphor is inherently capable of providing the same afterglow, then it is the examiner’s position that applicant’s specification fails to sufficiently disclose HOW such an afterglow is achieved and the claims are indefinite as to what is structurally required in order to meet this newly claimed limitation; see new 112a and 112b rejections below.
Additionally or alternatively, Par 0052 of Bickford seems to explicitly teach the claimed short afterglow of the trivalent chromium ion, i.e. Cr3+, and as disclosed in Par 0059, Bickford teaches numerous phosphors that contain fluorescence based on an electron energy transition of Cr3+. Therefore, the examiner maintains that since Bickford uses the same phosphor as disclosed by applicant, and seeming explicitly teaches the same short afterglow of Cr3+, then the limitation is met.
MPEP 2114:
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.
Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 and/or 35 U.S.C. 103 may be appropriate.
MPEP 2112:
"[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.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference
[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same."
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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 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.
[Claim 1] The limitation “a 1/10 afterglow of the first wavelength-converted light is less than 1 ms” is not sufficiently supported by applicant’s original specification, as it’s unclear what specific structure or structural configuration is required in order for the claimed phosphor to be capable of such an afterglow. MPEP 2163 makes it clear that a “claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved”. For example, Par 0069 of applicant’s specification lists numerous possible phosphors, but it’s unclear if all of these phosphors are inherently capable of providing the claimed afterglow, or if only some of them provide the claimed afterglow and if so, it’s unclear which ones provide the claimed afterglow. Additionally or alternatively, it’s unclear if additional structural modifications are required to be made to these phosphors in order for them to be capable of the claimed afterglow and if so, it’s unclear what modifications are required in order to be able to provide the claimed afterglow.
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 1-8 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.
[Claim 1] The limitation “a 1/10 afterglow of the first wavelength-converted light is less than 1 ms” is indefinite, as it’s unclear what is structurally required in order to meet the claimed property/characteristic or result/effect. As discussed above, in relation to the 112a written description, the specification provides no guidance as to the what makes a phosphor capable of such an afterglow. For example, is it an inherent property or characteristic of the phosphor itself, is it an inherent result or effect of the phosphor absorbing the primary light, or is it a specific structural modification required in order to elicit such an afterglow? MPEP 2173.05(g) states “the use of functional language in a claim may fail ‘to provide a clear-cut indication of the scope of the subject matter embraced by the claim’ and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear”. For examination purposes, the examiner contends that if the prior art teaches any of the phosphors disclosed in Par 0069 of applicant’s specification, then the limitation is inherently met.
Claim Rejections - 35 USC § 103
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.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0163651 to Bickford in view of US 2013/0344454 to Nath.
[Claims 1 and 7] Bickford discloses a light irradiation type cosmetic apparatus, comprising:
a light emitting device (a kit including a light source and any of the disclosed substrates or cosmetic tools, as shown in Fig. 1-14; Par 0235) including:
a light source (“and a UV light- or fluorescent light-emitting LED light source”) configured to emit primary light; and
a wavelength converter including a first phosphor (NIR light-emitting material; see examples in Par 0049) configured to absorb the primary light and convert the primary light into first wavelength-converted light having a wavelength longer than that of the primary light (At least Par 0051; by definition, near infrared/NIR light has a longer wavelength that UV or fluorescent/visible light), wherein:
the light source is a solid-state light source having a rated output of 1 W or more (an LED is inherently a solid-state light source. Regarding the “rated output of 1 W or more”, this is an inherent characteristic of any/all LEDs, especially those used in a therapy/treatment setting; see MPEP sections 2112 and 2114. If applicant disagrees, see alternative 103 below.),
the primary light is light emitted from the solid-state light source (Par 0051 makes it clear that the UV or fluorescent/visible light from the LED activates the NIR material in order to ultimately emit near infrared light),
the first wavelength-converted light contains fluorescence based on an electron energy transition of Cr3+ (Par 0049 discloses examples of NIR materials that contain fluorescence based on an electron energy transition of Cr3+. Furthermore, it is noted that these are the same phosphors that are disclosed by applicant and therefore inherently they will have the same effect/properties; MPEP 2112. See Par 0069 of applicant’s specification), and
the first wavelength-converted light has a fluorescence spectrum having a fluorescence intensity maximum value in a wavelength range exceeding 710 nm (Par 0045 defines NIR light as light in the range of 650-900 nm. The examiner takes the position that this disclosed range anticipates the claimed range, as the range is taught with sufficient specificity; MPEP 2131.03. If applicant disagrees, see alternative 103 rejection below)
the light irradiation type cosmetic apparatus is capable of irradiating with an output light, and a 1/10 afterglow of the first wavelength-converted light is less than 1 ms (Par 0049 of Bickford discloses the same exact phosphors as disclosed by applicant in Par 0069 of their specification; therefore based on the doctrine of inherency, the examiner contends that the same phosphors are at the very least capable of providing the same duration of afterglow; see MPEP 2112, 2114. See also Par 0052 which teaches “The period of light emission from the trivalent chromium ion, however, is relatively short (i.e., a few milliseconds)”)
Regarding the claimed wavelength range of 710 nm or more, Bickford discloses an overlapping range of 650 nm to 900 nm. MPEP 2144.05 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. Therefore, it would have been obvious to choose/try any of the wavelengths disclosed by Bickford, including those greater than 710 nm, as these are all known NIR wavelengths that achieve the desired cosmetic or dermatological effects (Abstract).
Regarding the solid state light source with a rated output of 1W or more, the examiner contends that this is an inherent property/characteristic of any/all LEDs used in a therapeutic/treatment setting. Specifically, the LED used in Bickford is structurally equivalent the generic LED disclosed by applicant. If applicant disagrees, then the examiner contends that using such a light source is obvious in view of Nath. Additionally, Bickford while explicitly teaching the use of “a UV light- or fluorescent light-emitting LED light source” (Par 0235), the reference is technically silent to multiple LEDs. Nath is in the same field of endeavor, i.e. a cosmetic/dermatological light treatment device that activates a phosphor (at least Par 0064 and Abstract), and teaches multiple solid-state light sources (11, Fig. 1; “one or more (an array of) light-emitting diodes”; Pars 0020-24 and 0047-49), with a rated output of 1W or more (Pars 0020, 0022-23, 0047, 0105, 0125, 0129, 0134, and 0147, especially Par 0147). Therefore, it would have been obvious to one of ordinary skill in the art to substitute the generic, single LED taught by Bickford for the specific LED array with an output power of around 3W, as taught by Nath, as a simple substitution of one known element (generic, single LED) for another (LED array with specific power output) to obtain predictable results (activate a phosphor/fluorescent material used in a cosmetic or dermatological light treatment); this could also be considered a duplication of parts, specifically duplicating a single LED to include multiple LEDs as a routine engineering choice; MPEP 2144.04.
Regarding the claimed arrangement/configuration of a light source (that generates primary light) and wavelength converter (that converts the primary light to generate a first wavelength-converted light) located in a body portion and a head part including an irradiation port through which output light is provided. It is noted that Bickford, while teaching a device including a light source, wavelength converter and applicator (Par 0235), is silent to the specific configuration/order/location of these elements in relation to each other. However, Nath is in the same field of endeavor, i.e. a cosmetic/dermatological light treatment device that activates a phosphor (at least Par 0064 and Abstract), and teaches the claimed configuration (see annotated Fig. 4B below). Specifically, Nath discloses a body part (tube 45) which includes the light source for emitting primary light (41) and the wavelength converter (fluorescent plate 47) that converts the primary light into the first wavelength-converted light (Pars 0101-0103). Nath also teaches a head part with an irradiation port (transparent cap 418; at least Pars 0025-26 and 0059-60) through which output light is transmitted out of the device. It would be obvious to modify the device of Bickford (including a light source, wavelength converter and applicator; Par 0235) to have the specific arrangement taught by Nath, as a known configuration for similar wavelength converting devices used for dermatological treatments.
PNG
media_image1.png
790
1042
media_image1.png
Greyscale
[Claim 2] The light emitting diodes taught by Bickford and/or Nath are structurally capable of emitting light having the claimed power density. Specifically, Nath discloses an LED with an output power of 3W (Par 0147), such an LED is capable of emitting the claimed power density, specifically, when it focused to a focal spot/area in the millimeter range. MPEP 2114 states… "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.
[Claim 3] Nath discloses a garnet crystal structure for the phosphor (Par 0114). Therefore, it would have been obvious to one of ordinary skill in the art to modify the phosphor material of Bickford to have a garnet crystal structure, as this is a commonly known and used form of phosphors, as taught by Nath. If applicant disagrees, see alternative 103 below.
[Claims 4-5] Par 0221 of Bickford discloses “Additionally, the sheet substrate may include NIR light-emitting particles 20, NIR light-emitting particles 20', or a combination thereof. The use of more than one NIR light-emitting material in or on the same substrate is also contemplated.” And Par 0049 discloses multiple examples of Cr3+-activated phosphors.
[Claim 6] Bickford discloses fluorescent light as the primary light, it is well-known and understood that fluorescent light refers to visible light from 400-700 nm (“What is the wavelength range of the light radiation that is emitted by CFLs”; https://www.fda.gov/radiation-emitting-products/home-business-and-entertainment-products/compact-fluorescent-lamps-cfls-fact-sheetfaq). MPEP 2144.05 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. Therefore, it would have been obvious to choose/try any fluorescent/visible wavelengths disclosed by Bickford, including those in the range of 600 to 710 nm, as these are all visible wavelengths that are capable of activating the phosphor to achieve the desired results. Specifically, applicant would choose/try any wavelength known to activate the specific phosphors listed in Par 0049 of Bickford, including 600 to 710 nm, as this amounts to optimization of a result effective variable.
[Claim 8] The examiner considers the kit disclosed in Par 0235 of Bickford to be an electronic device, specifically any device that includes a light source/LED is an electronic device, as it requires electricity to function. If applicant disagrees, then it would be obvious to modify the kit of Bickford, i.e. the combination of an LED and cosmetic tool, into a single electronic device, as taught by Nath, as a known configuration for similar cosmetic/dermatological light treatment device that use a light source to activate a phosphor/fluorescent material.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Bickford and Nath as applied to claim 1 above, and further in view of US 2020/0048549 to Hong OR US 2019/0035983 to Abe.
Bickford and Nath are discussed above, but are silent to a phosphor having a garnet crystal structure, as it’s not entirely clear in Nath if the garnet structure is referring to the phosphor or the material the phosphor is contained within. However, in the same field of endeavor, i.e. light emitting device that use phosphors to convert light from one wavelength to another, both Hong (Par 0148) and Abe (at least abstract and Pars 0002-3) disclose a commonly known and used form of Cr3+-activated phosphors is a garnet crystal structure. Therefore, it would have been obvious to one of ordinary skill in the art to modify the phosphor(s) taught by Bickford to have a garnet crystal structure, as this is a commonly known and used form of Cr-3+- activated phosphors, as taught by Hong or Abe.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lynsey C Eiseman whose telephone number is (571)270-7035. The examiner can normally be reached Monday-Thursday and alternating Fridays 7 to 4 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at 571-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796