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 .
This action is in response to the amendments filed 06/03/2026.
Claims 1-8 are pending. Claims 1-4 are being examined. Claims 5-8 are withdrawn from further consideration as being drawn to non-elected inventions. Claim 3 is amended with no new subject matter being introduced.
Claim Rejections - 35 USC § 102/103
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.
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Emoto (US 2013/0328478 A1).
Considering claim 1, Emoto teaches a phosphor powder represented by the claimed general formula with the claimed Si/Al atomic ratio and O/N atomic ratio (Emoto, claim 1). Emoto teaches the claimed phosphor powder; thus, it would be expected that Emoto’s phosphor powder would also have a diffuse reflectance X1 with respect to light having a wavelength of 700 nm that is equal to or more than 88% and equal to or less than 99.9%.
In the alternative, Emoto teaches the preference that the crystal phase present in the phosphor is a single crystal phase; a heterogeneous phase may be included as long as the fluorescence characteristics are not greatly affected (Emoto, [0040]). Emoto teaches that in the production of the phosphor, it is preferable to further perform an acid cleaning process to remove impurities and an annealing treatment process to improve crystallinity (Emoto, [0051]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the production process such as performing an acid wash treatment to remove impurities/heterogeneous phases and improve the crystallinity of the phosphor. One of ordinary skill in the before the effective filing date of the claimed invention would have been motivated to do so in order to achieve desired light-emitting properties including a diffuse reflectance X1 with respect to light having a wavelength of 700 nm that is equal to or more than 88% and equal to or less than 99.9% with a reasonable expectation of success.
Considering claim 2, Emoto teaches the claimed phosphor powder; thus, it would be expected that Emoto’s phosphor powder would also have a diffuse reflectance X2 of the phosphor powder with respect to light having a fluorescence peak wavelength equal to or more than 85% and equal to or less than 95%.
In the alternative, Emoto teaches the preference that the crystal phase present in the phosphor is a single crystal phase; a heterogeneous phase may be included as long as the fluorescence characteristics are not greatly affected (Emoto, [0040]). Emoto teaches that in the production of the phosphor, it is preferable to further perform an acid cleaning process to remove impurities and an annealing treatment process to improve crystallinity (Emoto, [0051]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the production process such as performing an acid wash treatment to remove impurities/heterogeneous phases and improve the crystallinity of the phosphor. One of ordinary skill in the before the effective filing date of the claimed invention would have been motivated to do so in order to achieve desired light-emitting properties including a diffuse reflectance X2 of the phosphor powder with respect to light having a fluorescence peak wavelength being equal to or more than 85% and equal to or less than 95% with a reasonable expectation of success.
Considering claim 3, Emoto teaches the claimed phosphor powder; thus, it would be expected that Emoto’s phosphor powder would also have a difference X1 - X2 between the diffuse reflectance X1 with respect to the light having the wavelength of 700 nm and the diffuse reflectance X2 with respect to light having the fluorescence peak wavelength equal to or more than 4% and equal to or less than 8%.
In the alternative, Emoto teaches the preference that the crystal phase present in the phosphor is a single crystal phase; a heterogeneous phase may be included as long as the fluorescence characteristics are not greatly affected (Emoto, [0040]). Emoto teaches that in the production of the phosphor, it is preferable to further perform an acid cleaning process to remove impurities and an annealing treatment process to improve crystallinity (Emoto, [0051]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the production process such as performing an acid wash treatment to remove impurities/heterogeneous phases and improve the crystallinity of the phosphor. One of ordinary skill in the before the effective filing date of the claimed invention would have been motivated to do so in order to achieve desired light-emitting properties including a difference X1 - X2 between the diffuse reflectance X1 with respect to the light having the wavelength of 700 nm and the diffuse reflectance X2 with respect to light having the fluorescence peak wavelength being equal to or more than 4% and equal to or less than 8% with a reasonable expectation of success.
Considering claim 4, Emoto teaches a volume -based cumulative 50% size D50 measured by a laser diffraction scattering method is equal to or more than 8 µm and equal to or less than 25 µm by teaching the average particle size of the phosphor obtained by a laser diffraction/scattering method is 18 µm (Emoto, [0054]).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/035,593 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to the same phosphor powder and it would be expected that they would have the same light emitting properties (diffuse reflectance and light absorption A700).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed regarding the phosphor of Emoto includes neither the acid treatment step nor the classification step and is not a production method that includes a series of steps including (1) to (4), a series of steps including (1) to (3) and (5), or a series of steps including (1) to (5) have been fully considered but are not persuasive.
Emoto teaches that in the production of the phosphor, it is preferable to further perform an acid cleaning process (Emoto, [0051]). Thus, Emoto does teaches a production method that includes a series of steps including (1) to (4) (preparation of raw material mixed powder, firing step, pulverization step of fired product, acid treatment step).
Applicant’s arguments filed regarding Emoto does not disclose or suggest any relationship between satisfying the claimed diffuse reluctance have been fully considered but are not persuasive.
Emoto does teaches a production method that includes a series of steps including (1) to (4) (preparation of raw material mixed powder, firing step, pulverization step of fired product, acid treatment step) similar to Applicant’s production method. Thus, it would be expected that the product of Emoto would also have properties similar to that of Applicant’s (i.e., claimed diffuse reluctance). "[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" (see MPEP §2112(I)-(II)).
Applicant’s arguments filed regarding the double patenting rejection have been fully considered but are not persuasive.
Instant application and copending Application No. 18/035,593 are both directed to a phosphor powder made by the same production method that includes a series of steps including (1) to (4), a series of steps including (1) to (3) and (5), or a series of steps including (1) to (5). Thus, it would be expected that they would have the same light emitting properties (diffuse reflectance and light absorption A700).
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 ANITA NASSIRI-MOTLAGH whose telephone number is (571)270-7588. The examiner can normally be reached M-F 6:30-3:00.
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/ANITA NASSIRI-MOTLAGH/Primary Examiner, Art Unit 1734
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