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 .
Drawings
The drawings are objected to because ‘where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear’ (See 37 CFR 1.84(u)(1)). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 1-8 is 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.
Applicant uses the abbreviations CASN and SCASN in the claims without setting forth the meaning or scope of these abbreviations. Based upon the specification, these abbreviations are interpreted as being drawn to CaAlSiN3 and (Sr,Ca)AlSiN3. It is unclear what scope of phosphors applicant is claiming in terms of the CaAlSiN3 or (Sr,Ca)AlSiN3 system as this term is not explicitly defined in the claims or specification. As this is the case, the metes and bounds of the claimed powdery phosphor’s composition are currently indefinite. For the sake of examination, the CASN material claimed is interpreted as being drawn to compositions of formula CaAlSiN3 having a dopant therein. Appropriate correction is required. Claims 2-8 depend from or incorporate the subject matter of claim 1 and are rejected on the same basis.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeda in WO2019188632 (wherein US20210009896 is used as an English language equivalent and cited herein) in view of Watanabe in US20090134775.
Claim Interpretation: The claims are drawn to a collection of phosphor particles, wherein the claims delineate the aggregation state (dx90/dy90) of the powder based upon determining the particle size of the as-prepared particles compared to the particle size of particles having undergone a secondary treatment as set forth, which is a method of providing ultrasonication and small amounts of a surfactant. While the claims set forth a testing methods, the claims are interpreted as being drawn to the initial state of the particles before such a treatment. The claims are not drawn to a method of creating or treating a collection of phosphor particles, but the phosphor particles themselves prior to the claimed ‘treatment’. As this is the case, the claimed treatment process is not given patentable weight based upon the actual manipulations as set forth therein, but the implications of the treatment are given consideration. The implication as it is understood from the specification is the removal of soft aggregates.
Regarding Claim 1-2: Takeda teaches the creation of phosphor particles comprising, one or two selected from CaAlSiN3 crystals (CASN) or (Sr,Ca)AlSiN3 crystals (SCASN) provided in the form of a powder (See Paragraph 26). The phosphor is provided as a powder (powdery phosphor) (See Paragraph 30). The powder of Takeda has a d50 value from 5-30 microns (See paragraph 32). Thus the d50 value of Takeda lies within the d50 value instantly claimed. Takeda teaches that the as-created phosphor may undergo post treatment in the form of various washing steps. Takeda notes that their measurements are made on a volume basis and D10, D50, and D90 are understood to correspond to a cumulative numerical value in the volume based integrated fraction of the particles according to a laser diffraction scattering method (See Paragraph 57; same means of measuring as instantly claimed).
Takeda is silent regarding the use of ultrasonic treatments to provide powders being free of soft agglomerates and the value of Dx90/Dy90 being from 0.7 to 15.
However, the use of ultrasonic treatments and other methods to remove soft agglomerates from CASN powders is well known in the art and taught by Watanabe. Watanabe teaches the creation of CaAlSiN3 phosphors (See Paragraph 17 and 72). Watanabe teaches that the particles of CaAlSiN3 preferably have a relatively small size from 3 to 20 microns and may be likely to agglomerate. Watanabe teaches that such agglomeration may cause deleterious effects such as producing non-uniform coatings or clogging dispensers (See Paragraph 274). Watanabe teaches that typically when the particle size of CaAlSiN3 is measured, a dispersion of the particle is created by applying ultrasonic waves to the powder and applying a trace amount of a surfactants to prevent re-agglomeration of the particles (See Paragraph 499). Those of ordinary skill in the art would have found it obvious to provide the same ultrasonic agitation of Watanabe to the powders of Takeda in order to provide powders being free of soft agglomerates. Those of ordinary skill in the art would have been motivated to ultrasonicate the powders of Takeda in order to provide uniform coatings that are free of aggregates and a flowable powder that will not block dispensers (See Watanabe Paragraph 274). Additionally, those of ordinary skill would consider ultrasonication a conventional process in particle measurement as is shown by Watanabe.
As is noted above, the claim is drawn to a powder having a Dx10, Dx50, Dx90 and a Dy10, Dy50, and Dy90; wherein each Dx value is the volume-based integrated particle size at the cumulative numeric value associated with the variable prior to the claimed treatment. Each Dy value is the volume-based integrated particle size at the cumulative numeric value associated with the variable after the treatment as is set forth. It is noted that the treatment as claimed is understood to break apart soft aggregates. As the powder of Takeda in view of Watanabe would have already had its soft-aggregates broken by a similar ultrasonication process, the value of Dx90/Dy90 and Dx50/Dy50 (Re:Claim 2) would necessarily be very close to 1 as the claimed treatment would have no additional effect on the phosphor powder as the soft-aggregates, which would cause these ratios to be greater than 1, would have already been removed.
Regarding Claim 3: Takeda teaches various values of D50 and D90 by way of example. Takeda shows example 2 which has a D50 value of 9.2 microns and a D90 value of 15.7 microns. The value of (Dx90-Dx50)/Dx50 of such a sample is 0.71. Those of ordinary skill in the art would have found it obvious to provide the powder of Takeda in view of Watanabe with the same or similar values.
Regarding Claim 4: Takeda teaches a D10 value may be measured which corresponds to the same volume-based integrated fraction as set forth (See Paragraph 57). Takeda teaches that the ‘span’ of the phosphors, which is (D90-D10)/D50 is 1.6 or less (See Paragraph 33), representing an overlapping range with that which is claimed. Those of ordinary skill in the art would have found it obvious to provide the powder of Takeda in view of Watanabe with the same or similar values.
Regarding Claim 5: Takeda is silent in terms of the specific surface area of the phosphor particles being between 1 and 10 m2/g; however, as the phosphor particles of Takeda in view of Watanabe are of the same size distribution as the claimed powders, those of ordinary skill in the art would have expected the powder to have the same or an overlapping specific surface area. Powders of the same composition and size must necessarily have the same surface area as the calculation of such is based on the particle size and density. Thus those of ordinary skill in the art would expect the specific surface are of the powder of Takeda in view of Watanabe to be between 1 and 10 m2/g.
Regarding Claim 6: The instant claim sets forth the intended use of the phosphor powder. Recitations of intended use are examined on the capability of the material to be used in such a manner and not the actual use thereof. The material of Takeda in view of Watanabe is capable of such a use as it is a phosphorescent material capable of being incorporated into an LED. Takeda teaches the same intended use at paragraph 48.
Regarding Claim 7: Takeda teaches that the phosphor powder has a d50 value from 5-30 microns representing an overlapping range (See Paragraph 32). Those of ordinary skill in the art would have found it obvious to provide the powder of Takeda in view of Watanabe with the same or similar values. Overlapping ranges have been held to present 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 8: Takeda teaches that such a phosphor may be incorporated into a light emitting device, by providing the phosphor particles above in conjunction with a light emitting element that emits excitation light (See Paragraph 48).
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11434421. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 1-2: The patented claims delineate a phosphor powder comprising CaAlSiN3 (CASN) having undergone particle measurement after ultrasonication to break soft aggregates in the material. This process has the same effect as the claimed ‘treatment (a)’ and thus the values of dx10, dx50, and dx90 would be essentially the same as dy10, dy50, and dy90 leading to ratios of dx90/dy90, dx50/dy50, and dx10/dy10 of about 1 (Re: Claim 1 and 2). The patented claims teach that dx50 is 7.5 microns or less, representing an overlapping range with the values claimed (See Patented Claim 1).
Regarding Claim 3: The patented claims teach that d90 may be 9.0 microns and d50 may be 7.5 microns. Based on these values (d90-d50)/d50 may be 1.5/7.5 or 0.2, falling within the claimed rage.
Regarding Claim 4: The patented claims teach that (dx90-d10)/d50 is 1.7 or less, representing an overlapping range (See Patented Claim 1).
Regarding Claim 5: The patented claims are drawn to particles having the same range and distribution of particle size. Those of ordinary skill would have expected powders being made of the same composition and having the same size and distribution to have the same specific surface area. Thus the specific surface area of the patented phosphors would necessarily at least overlap the claimed range.
Regarding Claim 6: The instant claim is drawn to an intended use. The phosphor of the patented claims is capable of the same use as it is the same composition.
Regarding Claim 7: The patented claims teach that dx50 is 7.5 microns or less, representing an overlapping range with the values claimed (See Patented Claim 1).
Regarding Claim 8: The patented claims teach the creation of a light emitting device comprising an LED (light emitting diode; component that emits excitation light) and the phosphor as discussed above (See Patented Claim 1 and 5).
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