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 .
Applicant’s election without traverse of Group I, claims 1-4 in the reply filed on 03/09/2026 is acknowledged.
Claims 5-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/09/2026.
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 Claims 5-8 are withdrawn from further consideration as being drawn to non-elected inventions.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 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 1-3 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 light absorption A700 at a wavelength of 700 nm equal to or less than 10%.
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 light absorption A700 at a wavelength of 700 nm equal to or less than 10% 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 A600-A700 equal to or more than 6% and equal to or less than 10% wherein a light absorption at wavelength of 600 nm is defined as A600(%).
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 A600-A700 equal to or more than 6% and equal to or less than 10%.
Considering claim 3, 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]).
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Emoto (US 2013/0328478 A1).
Considering claim 4, Emoto does not explicitly teach a volume -based cumulative 10% size D10 measured by a laser diffraction scattering method is equal to or more than 5 µm and equal to or less than 12 µm. However, Emoto teaches in order to suitably use the calcination product as a phosphor for LEDs, it is preferable to adjust the average particle size of the calcination product so as to be 6 to 30 µm (Emoto, [0050]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to adjust the particle size of the phosphor including such that a volume -based cumulative 10% size D10 measured by a laser diffraction scattering method is equal to or more than 5 µm and equal to or less than 12 µm. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to do so in order to achieve desired particle size/distribution for desired application such as in LEDs.
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. 18/035,435 (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.
Conclusion
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/ANITA NASSIRI-MOTLAGH/Primary Examiner, Art Unit 1734