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 .
Election/Restrictions
Claims 1-8 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/08/25.
Applicant's election with traverse of the invention of group II, claims 9-14, in the reply filed on 12/08/25 is acknowledged. The traversal is on the ground(s) that the examination of both inventions together creates no undue burden in examination. This is not found persuasive because the examination of both inventions requires a divergent search based on differing classification. The examiner has established such a burden and that the inventions as set forth are related as process of making and a product made, wherein the product may be made through materially different methods as was discussed.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 9 is objected to because of the following informalities: The claim uses the abbreviations PMSQ and PSQ. These abbreviations are also used and defined in claim 1; however, as claim 9 is not dependent on claim 1, the definition as set forth in claim 1 is not incorporated into claim 9. The claims are examined on the basis that these abbreviations have the same meaning as set forth elsewhere. It is noted that the word silsesquioxane is misspelled in claim 1 and does not have consistent spelling in the specification (page 11: silsesquioxane page 3: silesquioxane). 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 10 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation of the time, such as from 5 to 120 minutes, and the claim also recites a narrow range of the same time period such as from 10 to 60 minutes which is the narrower statement of the range/limitation. The optional dwelling time also sets forth a broad and narrow range. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 13, the phrase "or other polymers coming from similar groups" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or other polymers coming from similar groups"), thereby rendering the scope of the claim(s) unascertainable. It is unclear what specific polymers or groups of polymers applicant is referring to. It is unclear what constitutes ‘similar groups’ and the metes and bounds required for such a similarity to exist. See MPEP § 2173.05(d).
Regarding claim 14, the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
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) 9-11 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haraguchi in WO2014017501 (all citations to the machine translation attached hereto) in view of Shiobara in US20130133008.
(Claim interpretation: The claim uses the word extruding. In the material sciences, extruding may refer to the process of extrusion, which is a molding technique wherein a material flows through an orifice and a longitudinal object having a cross-section consistent with said orifice is created. Extruding also may have a conventional meaning, which simply means to force out or remove. For the sake of examination the term ‘extruding’ is given its conventional meaning. This meaning is consistent with the specification’s use of the word extruding at page 10 line 10-14 of the as-filed specification, which describes the part as being ‘extruded or pushed out of the die’ after being pressed and cured.)
Regarding Claim 9: Haraguchi teaches the creation of a composite material comprising a phosphor powder and a polymethylsilsesquioxane (PMSQ) powder. Haraguchi describes the phosphor as a powder at Page 6, Paragraph 2 and has a particle size of several microns or more. Haraguchi teaches the addition of suitable ‘spherical silicone resins’ which may be polymethylsilsesquioxane (spherical silicone referring generally to the silsesquioxane structure; See Page 6, Paragraph 3). Haraguchi teaches the ‘spherical silicone resins’ are also a powder and have a particle size from 2 to 30 microns (See Page 6, last paragraph).
Haraguchi shows the composition for creating a disk-shaped wavelength conversion component (composite material) in the Example spanning pages 12 and 13. The components in the composite material are curable silicone, fumed silica, spherical silica, ‘spherical silicone resin’ (which may be PMSQ), YAG (phosphor), B-sialon (phosphor) and SCASN (phosphor). The only liquid component in this mixture is likely the ‘curable silicone’. Haraguchi is silent in terms of mixing the solid components (such as the phosphors and PMSQ) with one another prior to adding liquid components; however, the selection of any order of mixing the components as set forth would be prima facie obvious to those of ordinary skill in the art in the absence of new or unexpected results (See MPEP 2144.04(IV)C). Thus adding dry components, such as PMSQ and phosphors, prior to the addition of a liquid resin would have been obvious to those of ordinary skill in the art.
Haraguchi is silent in terms of homogenizing the precursor components as set forth.
However, means for mixing and homogenizing silicone and phosphors to create wavelength conversion composites are known within the art and taught by Shiobara. Shiobara teaches that all of the components for creating such a composition may be mixed with one another by means of a ball mill. Shiobara teaches that such a mixture may be uniform, or homogenous (See Paragraph 127). Thus Shiobara identifies ball milling as means of mixing and homogenizing precursor components in the creation of composite materials. Those of ordinary skill in the art would have found it obvious to use a ball milling step in the process of Haraguchi as it provides a uniform mixture capable of creating a wavelength conversion composite. Those of ordinary skill in the art would have been motivated to use ball-milling as it is shown to be capable of producing suitably uniform mixtures and would have been considered a conventional means for creating such a mixture. Haraguchi and Shiobara are highly combinable as both deal with the creation of composites comprising phosphors and silicone resins
Haraguchi teaches that their composite may be produced by press molding (pressing) (See Section 5.3 and 5.3.2-5.3.3). Haraguchi teaches that the pressing may occur at a temperature between 80 and 300C (See Page 9, First full paragraph). Haraguchi teaches that the pressed composite material may be combined with a blue LED for further testing of its light emission properties (See Section 5.3.3). Combining the composite with a blue LED requires the removing, or extruding, of the material from the mold.
Haraguchi in view of Shiobara thus obviate all of the claimed limitations.
Regarding Claim 10: Haraguchi teaches that the pressing and extruding may occur at a temperature from 80-200C. Haraguchi teaches that the molding may occur for a time period from 3 seconds to 20 minutes (See Page 9, first full paragraph). Those of ordinary skill would have found it obvious to heat the mold within the described range over the whole of the molding time, and thus the heat up time would at least overlap with said molding time. Haraguchi thus teaches an overlapping range of heat up times and temperatures. Overlapping ranges have been held to present a prima facie case of obviousness over the prior art. Those of ordinary skill in the art would only need to select from the overlapping portion of the range to arrive at the invention as claimed.
Haraguchi teaches the use of an optional post-cure heat treatment which may be performed at a temperature between 100 and 300C for a period from 3 minutes to 5 hours (See Page 9, paragraph 3). This heat treatment overlaps the conditions of the ‘optional dwelling time’ claimed.
Regarding Claim 11: Haraguchi teaches that the mold pressing may be performed at a pressure of 50 kg/cm2 (See Section 5.23, 5.3.1). 50 kg/cm2 corresponds to 711 psi (50*(2.20462 lb/kg)*(6.4516 cm2/in2-). Thus the pressing of Haraguchi takes place under a pressure of 711 psi, which falls within the claimed range.
Regarding Claim 14: Haraguchi in view of Shiobara teach that ball milling is a suitable means for mixing and homogenizing the various precursor components used in creating the composite material of Haraguchi (See Shiobara paragraph 127).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haraguchi in view of Shiobara as applied to claim 9 above, and further in view of Handa in US6217995.
Haraguchi in view of Shiobara teach a method of manufacturing a composite material, comprising the steps of mixing and homogenizing a phosphor powder and PMSQ powder in a dry state and then pressing and extruding the mixture at a temperature from 50 to 500C (See above).
Haraguchi in view of Shiobara teaches the use of a hot press but is silent in terms of the pressing plates having a smooth surface with a surface roughness below 1 micron.
However, Handa also teaches the production of resin materials used as optical sheets that are created through a hot press method (See Columns 11-12). Handa teaches that in order to have beneficial properties, such a sheet should have low roughness (See Column 4, Lines 44-47). Handa teaches that low roughness is imparted on the sheets by using a hot press that has a roughness of less than 0.1 microns (See Column 12, Lines 4-16). As Haraguchi in view of Shiobara teaches an optical member created by a hot pressing process, those of ordinary skill in the art would have found it obvious to use pressing plates having a smooth surface with a surface roughness below 0.1 microns in order to provide an optical member with beneficial properties. Those of ordinary skill in the art would have been motivated to use a low roughness pressing plate in order to achieve such properties. The prior art to Handa is highly combinable with Harguchi as both are drawn to the creation of resin compositions through hot pressing.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haraguchi in view of Shiobara and Handa as applied to claim 12 above, and further in view of Okami in US5705258.
Haraguchi in view of Shiobara teach a method of manufacturing a composite material, comprising the steps of mixing and homogenizing a phosphor powder and PMSQ powder in a dry state and then pressing and extruding the mixture at a temperature from 50 to 500C (See above). Handa further teaches that the use of low roughness pressing plates in the hot pressing process provide for high quality films having low roughness. Handa thus obviates the use of pressing plates having a roughness below 0.1 microns in the process of Haraguchi in view of Shiobara (See above).
Haraguchi in view of Shiobara and Handa are silent in terms of providing a thin layer of a fluoropolymer on the surface of the pressing plate.
However, the use of fluoropolymers as releasing materials in the press molding process is well known in the art and is taught by Okami. Okami teaches the hot pressing of silicone materials at similar temperatures and pressures as those taught by Haraguchi (See Columns 7-8). Okami teaches that the plate material and the material being pressed should preferably be made in a manner such that the material being pressed is releasable therefrom (See first paragraph of column 8). Okami teaches that suitable release materials include a fluororesin-coated plate or films of Teflon (PTFE- fluororesin) or PET. Those of ordinary skill in the art would have found it obvious to provide similar release materials in the form of a fluororesin-coated pressing plate or a thin layer of PTFE/PET in the process according to Haraguchi in view of Shiobara and Handa. Those of ordinary skill in the art would have been motivated to include a release agent in the form of a coated plate or thin film in order to provide molded products that were easily removed from the mold, improving efficiency. The teachings of Okami are highly combinable as they are also drawn to the press molding of polymeric materials.
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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/Matthew E. Hoban/Primary Examiner, Art Unit 1734