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 .
Status of the Application
Claims 1-11 and 13-16 are pending, of which Claims 4, 8-10, 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-3, 5-7, 11, 13-14 and 16 are under current examination.
Amendment necessitated new claim rejection as set forth below.
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.
Claims 1-3, 5-7, 11, 13-14 and 16 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 pre-AIA the applicant regards as the invention.
Claim 1 is indefinite as claim 1 recites “and having a naphthalene ---any other ring”. It is unclear if the recited limitation is for naphthalene compound or it’s another substituent on naphthalene compound. If applicant intends the limitation for the naphthalene compound, applicant is suggested to recite “wherein the naphthalene compound has a naphthalene skeleton that is ----not condensed with any other ring”.
Since the dependent claims doesn’t cure the above deficiency, claims 2 -3, 5-7, 11, 13-14 and 16 are also indefinite.
Appropriate correction required.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-7, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishimura (ACS Materials Lett., 2019, 1, 660-664).
Nishimura discloses a method of photon upconversion comprising irradiating a composition containing a 1, 4-disubstitued naphthalene compound substituted with two alkynyl groups substituted with silyl group (same group as in the elected species) in 1, 4-position and a benzene ring (i.e., 3 substituents), with a visible light (380-740nm):
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608
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514
844
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(entire article). The naphthalene compound substituted with two alkynyl groups substituted with silyl group (same group as in the elected species) in 1, 4-position and a benzene ring (i.e., 3 substituents) reads on compound of the instant claim 7, when m=2, n=1, R1=R2=R3=isopropyl; X=aromatic ring.
Since the cited prior art reads on all the limitations of the instant claims 1-3, 5-7, and 13, these claims are anticipated.
Claims 1-3, 5-7, 11, 13-14 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maeda (Journal of Photochemistry and Photobiology A: Chemistry 342 (2017)153-160).
Maeda discloses synthesis and luminescence properties of 1, 4-bis(silylethynyl)naphthalenes) compounds:
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412
567
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and composition comprising such compounds (compounds 1a-2c reads on the instant claims) in the form of film when irradiated with a light, with UV and visible light (entire article).
With regard to the limitation of the instant claims, “photon upconversion”, since the cited prior art teaches same method using same compound, the process of the cited prior art must be capable of being able to accomplish “photon upconversion”. Importantly, “photon upconversion”, is an inherent property of a compound when irradiated and the compound of the cited prior art is expected to accomplish “photon upconversion”, when irradiated with light. Further, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000). Thus, the cited prior art reads on all limitations of the instant claims.
Since the cited prior art reads on all the limitations of the instant claims 1-3, 5-7, 11, 13-14 and 16, these claims are anticipated.
Claims 1, 3, 5-6, 11, 13-14 and 16 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Xia (US8742657 B2).
Xia discloses a method of photon upconversion comprising irradiating a composition and/or a film containing such composition, containing a 1, 4-disubstitued naphthalene compound substituted with two alkynyl groups substituted in 1, 4-position, halogen and a benzene ring (i.e., 4 substituents), with a visible light (absorption), such as 500nm to 600nm and emission with a wavelength of about 400nm (UV) (i.e., conversion of visible to UV) (entire patent, especially abstract, col 3, 4, 7, 8, 13-14, Table 1, 25-30, 33, 49, 50, 57, 58, 91-94, 97, 98 and claims)
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Or compound (wherein the naphthalene compound has a naphthalene skeleton that is ----not condensed with any other ring)
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Or
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Since the cited prior art reads on all the limitations of the instant claims 1, 3, 5-6, 11, 13-14 and 16, these claims are anticipated.
Response to Arguments
Applicant’s remarks and amendment, filed on 01/02/2026, have been fully considered but not found persuasive.
Applicant’s argument is moot in view of new rejection as set forth above.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Conclusion
No Claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623