DETAILED ACTION
An Office Action was mailed 07/01/2025. Applicant filed a response, and amended claims 1-2 on 09/29/2025.
Claims 1-9 are pending. Claims 3-9 are withdrawn from consideration as being drawn to a non-elected invention.
Claims 1-2 are rejected.
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 .
Claim Objections
Claims 1-2 are objected to because of the following informalities:
Claim 1, line 6, and
Claim 2, line 8,
it is suggested to amend “SrAl2O4:Eu2+,Dy3+” to “SrAl2O4:Eu2+Dy3+” (i.e., no comma) for consistency with the specification ¶ [0022].
Appropriate correction is required.
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 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.
Claim 1, line 9, the term “the metal powder” is indefinite because this term lacks proper antecedent basis in the claims. Claim 1, line 2, amending the term “matrix;” to “matrix comprising a metal powder;” can overcome this rejection.
Claim Rejections - 35 USC § 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 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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Giraud et al, EP 3943573 A1 (Giraud) in view of Delgado et al, “Characterization and afterglow of SrAl2O4:Eu,Dy for various phosphor applications” (Delgado), taken in view of evidence by Bruton et al, US 2023/0313384 A1 (Bruton).
The machine translation of Giraud provided with the Office Action mailed 07/01/2025 is referenced in the below rejection.
Regarding claims 1 and 2, Giraud discloses a luminescent material comprising a luminescent pigment and a metal matrix, wherein the luminescent pigment is dispersed within the metal matrix (Giraud; [0011] and [0020]).
The metal particles (i.e., powder) used to prepare the luminescent material have a number-mean size (D50) between 1 and 200µm, more advantageously between 5 and 100 µm (Giraud; [0040]). These mean particle sizes overlap in scope with the claimed metal powder diameters of 5-75µm.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The coatings of Giraud do not comprise other elements, besides any impurities that do not exceed 10ppm by weight of the luminescent material (i.e., 0% by volume non-metallic composite particles as claimed) (Giraud; [0013]). Given Giraud does not require any non-metallic composite particles, it is clear that the luminescent material comprises non-metallic composite particles dispersed within the metallic matrix at 0% by volume, which falls within the recited range.
The luminescent pigment represents 5 to 40%, more advantageously 10 to 30%, relative to the volume of the luminescent material (Giraud; [0022]). These volume percents fall within the claimed luminescent material disposed within the metal matrix/powder at 1-50% by volume.
The luminescent pigment used to prepare the luminescent material is in the form of particles having a number-average size of between 1 and 200µm, more advantageously between 1 and 100µm (Giraud; [0036]). These particle sizes overlap in scope with the claimed luminescent material diameters of 5-200µm.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The luminescent pigment is generally an inorganic compound, wherein according to a preferred embodiment the pigment is strontium aluminate (SrAl2O4) doped with rare earths such as europium or dysprosium (Giraud; [0025]).
The luminescent material may be made by spraying a powder of metal particles and a powder luminescent pigment, wherein a mixture is formed during the spraying (Giraud; [0054]).
Integrating a luminescent material into the hands or marks of a dial of a watch allows or facilitates the reading of the time in the dark, i.e., wherein the luminescent material is visible to the unaided eye of claim 1 (Giraud; [0004]). The luminescent materials of Giraud are used in horology or jewelry such as watches (Giraud; [0059]).
Giraud exemplifies a luminescent material comprising 75% by volume gold powder having D90 particle size 52µm, and 25% by volume the luminescent pigment strontium aluminate doped with europium or dysprosium (Giraud; [0065]). After exposure to artificial light for 20 seconds the material is luminescent for several tens of minutes (Giraud; [0068]).
Giraud does not explicitly teach a luminescent material as presently claimed. Particularly, Giraud does not explicitly teach strontium aluminate doped with europium and dysprosium as presently claimed.
With respect to the difference, Delgado teaches that SrAl2O4 optically activated with Eu2+, often additionally co-doped with Dy3+, is a non-radioactive persistent phosphor which is well known for its afterglow properties. It is used is various application such as the watch industry. Incorporation of dysprosium into SrAl2O4;Eu significantly increases (by a factor of about 4 to 8) the number of traps in the afterglow of this persistent phosphor (Delgado; Abstract). The studies performed show that the addition of dysprosium, i.e., SrAl2O4:Eu,Dy, improves the afterglow properties of strontium aluminate doped with only Eu (Delgado; 11371C-3, Section “3.2 Afterglow measurements” and page 113571C-5, para 3).
Delgado is analogous art as it teaches the luminescent material SrAl2O4:Eu2+Dy3+.
In light of the motivation provided by Delgado to use SrAl2O4:Eu2+Dy3+ as a persistent afterglow luminescent material, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the SrAl2O4:Eu2+ luminescent pigment of Giraud with SrAl2O4:Eu2+Dy3+ in order to obtain a luminescent material, such as for watches, with improved persistent afterglow properties as compared to when using strontium aluminate doped with only Eu2+, and thereby arrive at the claimed invention.
While there is no disclosure that the luminescent material of Giraud in view of Delgado is a “cold spray” coating or “cold spray” feed powder as presently claimed, Applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all 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”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e., cold spray coating or cold spray feed powder, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Examiner further notes that Giraud teaches that the metal matrix represents 60 to 95% by volume, more advantageously 70 to 90% by volume, relative to the volume of the luminescent material of the invention (Giraud; [0026]). The metal is chosen from gold, platinum, palladium, silver or an alloy thereof (Giraud; [0011]). Applicant’s specification teaches that the metal matrix may be any type of metal or alloy or materials practical [0019]. The specification teaches using the metal aluminum in an amount of 70-90% by volume [0025]).
As is evidenced by Bruton, silver, gold, palladium and platinum can be cold-sprayed (Bruton; last sentence of [0066]).
For these reasons, the photoluminescent material of Giraud in view of Delgado are substantially identical in composition to the claimed cold spray coatings and powders, absent a showing otherwise.
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). See MPEP 2112.01 (I).
Response to Arguments
1) The Amendments to claim 1, filed 09/29/2025, have overcome the claim objection previously of record. Note, however, the new claim objections due to Applicant’s claim amendments.
2) The Amendments to claim 2, filed 09/29/2025, have overcome the 35 USC 112 rejection previously of record. Note, however, the new 35 USC 112 rejection over claim 1 due to Applicant’s claim amendments.
3) The Amendments to claims 1 and 2, filed 09/29/2025, have overcome 35 USC 102(a)(1) rejection over Giraud et al, EP 3943573 A1 (Giraud), taken in view of evidence by Bruton et al, US 2023/0313384 A1 (Bruton).
Specifically, Giraud teaches a preferred embodiment wherein the luminescent pigment is strontium aluminate (SrAl2O4) doped with europium or dysprosium (Giraud; [0025]). Giraud also exemplifies using europium- or dysprosium-doped strontium aluminate (Giraud; [0065]). However, Giraud, alone or in combination with Bruton, does not teach strontium aluminate doped with europium and dysprosium, i.e., SrAl2O4:Eu2+Dy3+ as presently claimed. Therefore, Giraud taken in view of evidence by Bruton does not teach or suggest luminescent materials as presently claimed.
However, after further consideration and search due to Applicant’s claim amendments, a new 35 USC 103 rejection is made under over Giraud in view of Delgado, taken in view of evidence by Bruton, as set forth above.
4) The Amendments to claims 1 and 2, filed 09/29/2025, have overcome 35 U.S.C. 103 over Bown et al, US 2009/0084981 A1 (Bown) in view of Schoenung et al, WO 2005/079209 A2 (Schoenung), for the following reasons.
Bown teaches luminescent materials which may be cold sprayed onto metals. Bown teaches that the luminescent material may be Y2O3:Eu (Bown; [0029]).
Bown does not teach incorporating the luminescent material into a metal matrix or dispersed within a metal powder as claimed. Therefore, Bown does not teach metal powder diameters as presently claimed.
Bown also does not teach luminescent material volume percentages or particle size diameters as presently claimed.
Schoenung teaches cold spray metal powders. However, Schoenung does not teach using a luminescent material. Therefore, Schoenung also does not teach luminescent material volume percentages or particle size diameters as presently claimed.
Further, the metal particles of Schoenung are 1-200nm (Schoenung; [0013]), while the present claims recite metal particle sizes 5-75µm. Therefore, Schoenung does not teach metal powder diameters as presently claimed.
For these reasons, Bown and Schoenung, alone or in combination, do not teach luminescent cold spray coatings or feed powders comprising luminescent materials and metal powders as presently claimed.
5) The Remarks and four Declarations under Rule 1.132, filed 09/29/2025, have been fully considered, but are not deemed persuasive for the following reasons.
Applicant primarily argues:
“None of the limitations are included, taught, or suggested by the references listed. Applicant respectfully states that the amended claims are not obvious. None of the cited references describe all the elements of Applicants' invention, while none of the references suggest, teach, or discuss these functions or elements.”
Remarks, page 5.
Although Examiner agrees that Giraud does not teach all elements of Applicant’s claimed invention, Examiner respectfully disagrees that Giraud does not teach any of the limitations for the reason set forth in the above rejection, see pages 5-9 above. Because Applicant has not pointed to the supposed errors of Giraud, Examiner maintains that the rejection over Giraud in view of Delgado taken in view of evidence by Bruton is proper as set forth above.
6) Applicant further argues:
“Objective evidence or secondary considerations such as unexpected results, commercial success, long-felt need, failure of others, copying by others, licensing, and skepticism of experts are relevant to the issue of obviousness, and must be considered in every case in which they are present. … There has been a persistent need for this invention recognized by those of ordinary skill in the art and the industry as well as, a long felt need that was never satisfied by another. These factors are shown via the included four declarations from Joseph Heelan, Aaron Nardi, Neal Matthews, and Darryll Beneteau (all persons of ordinary skill in the art as shown in their respective declaration). Each declarant describes, in detail, previous attempts to solve the problem and how the claimed invention meets a long-felt need. Every declaration includes objective evidence and is not mere assertion.”
Remarks, pages 5-6.
Examiner respectfully traverses for the following reasons. MPEP 716.04.I. states, “Establishing long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution (emphasis added).”
The Declaration of Neil Matthews states “This need has been recognized and persistent for a considerable time. Previous attempts to solve this problem have been unsuccessful” (page 1). “Therefore, cold spray repair location has been a significant problem that continues to exist in operational environments for a considerable time without a satisfactory solution” (page 2). Although examples of cold spray repairs are mentioned, the statements are not supported by objective evidence.
The Declaration of Joseph Heelan states “This need has been recognized and persistent for a significant time” (page 1). “Previous attempts to solve this problem have been unsuccessful. … This has been a significant problem that existed in the filed for a considerable time without a satisfactory solution (page 2)”. Although examples of identification of cold spray repairs are discussed, the statements are not supported by objective evidence.
The Declaration of Aaron T. Nardi states “This need has been recognized and persistent for a significant time. Previous attempts to solve this problem have been unsuccessful” (page 1). Although some attempts are mentioned, there is no objective evidence of record supporting the statements.
The Declaration of Darryl Beneteau states “… I believe this invention will help engineers quickly identify repaired regions a long-felt need standing. Previous solutions, like ultrasonic methods for detecting density differences, have not worked, leaving the problem unresolved until now” (page 1). Again, no objective evidence is provided with this conclusion.
Conclusory statements must be supported by factual evidence. There is no evidence of record, e.g. data, to support the statements long-felt need. MPEP 716.01(c) states, “TO BE OF PROBATIVE VALUE, ANY OBJECTIVE EVIDENCE SHOULD BE SUPPORTED BY ACTUAL PROOF: Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor (emphasis added).”
7) Applicant lastly argues:
“Furthermore, currently the United States Navy is in the process of finalizing a license with several corporations. The attached declarations further indicate an interest in licensing the invention, further indicating another form of objective evidence of commercial success, thus rendering the invention non-obvious. As a result of these secondary considerations, the claimed invention should be deemed unobvious over the references cited.”
Remarks, page 6.
Examiner respectfully traverses because potential interest in a licensing agreement, as stated in all four Declarations, does not provide evidence of established commercial success. Further, an affidavit or declaration attributing commercial success to a product or process "constructed according to the disclosure and claims of [the] patent application" or other equivalent language does not establish a nexus between the claimed invention and the commercial success because there is no evidence that the product or process which has been sold corresponds to the claimed invention, or that whatever commercial success may have occurred is attributable to the product or process defined by the claims. Ex parte Standish, 10 USPQ2d 1454, 1458 (Bd. Pat. App. & Inter. 1988). MPEP 716.03(a).I.
For all these reasons, Applicant’s Remarks and the evidence of record have been fully considered, but are not deemed persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO 2011/101001 A1, teaches marking a metal component with a metal coating which may comprise a luminescent material (page 3, line 30-page 4, line 8 and page 9, lines 11-19), wherein the coating may be applied by cold gas spraying (page 20, line 22-page 21, line 7).
TW 200813564A, teaches high-resolution tracking of industrial process materials with added trace amounts of luminescent markers, wherein cold spray processes may be used (see translation at page 1, lines 1-1 and page 37, lines 6-7).
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.
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/CDL/Examiner, Art Unit 1732 /CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732