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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 21, 2026 has been entered.
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.
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 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (Journal of the Korean Physical Society, Vol. 75, No. 12, 2019, 953-956) in view of Haraguchi et al. (Macromolecules, 2020, 53, 4185-4192).
Considering Claims 19 and 20: Kim et al. teaches a formulation for use in preparing a scintillator through three dimensional printing comprising a vinyl toluene base monomer; a first and second dye, and a photoinitiator (Section II(1), Fig. 1). The composition is polymerized by exposing the mixture to light followed by annealing (Fig. 1) during the formation of a geometric pattern (Fig. 2).
Kim et al. does not teach the photoinitator as being a cationic photoinitiator. However, Haraguchi et al. teaches using an iodonium salt as a cationic photoinitiator for styrene monomers (Abstract). Kim et al. and Haraguchi et al. are analogous art as they are concerned with a similar technical difficulty, namely photoinitiation of styrenic monomers. As such, the teachings of Haraguchi et al. would be reasonably pertinent to a person of ordinary skill in the art. It would have been obvious to a person of ordinary skill in the art to have used the cationic photoinitiator of Haraguchi et al. in the mixture of Kim et al., and the motivation to do so would have been, as Haraguchi et al. suggests, the polymerization provides controllable molecular weights and is pollution free (Conclusions).
Claims 1-4 and 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yemam et al. (US 2019/0033474) in view of Haraguchi et al. (Macromolecules, 2020, 53, 4185-4192).
Considering Claims 1, 2, and 4: Yemam et al. teaches a formulation for forming a scintillator comprising a styrene based monomer (¶0009), that is preferably vinyl toluene (¶0081); a first dopant/dye; a second dopant/dye (¶0009); and a photoinitiator (¶0078).
Yemam et al. does not teach the photoinitator as being a cationic photoinitiator. However, Haraguchi et al. teaches using an iodonium salt as a cationic photoinitiator for styrene monomers (Abstract). Yemam et al. and Haraguchi et al. are analogous art as they are concerned with a similar technical difficulty, namely photoinitiation of styrenic monomers. As such, the teachings of Haraguchi et al. would be reasonably pertinent to a person of ordinary skill in the art. It would have been obvious to a person of ordinary skill in the art to have used the cationic photoinitiator of Haraguchi et al. in the mixture of Yemam et al., and the motivation to do so would have been, as Haraguchi et al. suggests, the polymerization provides controllable molecular weights and is pollution free (Conclusions).
Considering Claims 3 and 9: Yemam et al. teaches that divinyl benzene can be used as a crosslinker (¶0072). Although this leads to decreased reliability, “a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP § 2123. When substituting divinyl benzene for the acrylate crosslinker, the composition would only contain styrene based monomers.
Considering Claims 6-8: Yemam et al. does not teach the addition of solvent.
Considering Claim 10: Yemam et al. teaches an acrylate crosslinker (¶0070-71).
Considering Claim 11: Yemam et al. does not teach the inclusion of particles.
Considering Claim 12: Yemam et al. teaches additional small molecules in the composition (¶0105).
Considering Claims 13 and 14: Yemam et al. teaches using fluorene based aromatic hydrocarbon-based dyes that do not contain nitrogen as the first and second dye of a scintillator (¶0060; 0062).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yemam et al. (US 2019/0033474) in view of Haraguchi et al. (Macromolecules, 2020, 53, 4185-4192) as applied to claim 1 above, and further in view of Crivello et al. (US Pat. 6,632,960).
Considering Claim 5: Yemam et al. and Haraguchi et al. collectively teach the composition of claim 1 as shown above.
Haraguchi et al. does not teach the iodinium salt as being a hexafluorostibate salt. However, Crivello et al. teaches using an iodonium hexafluorostibate salt (5:49-64) as a cationic photoinitiator for styrene monomers (8:23-26). It would have been obvious to a person of ordinary skill in the art to have used a hexafluorostibate salt in the process of Yemam et al., and the motivation to do so would have been, as Crivello et al. suggests, the polymerization is rapid, energy efficient, and pollution free (1:15-20).
Claims 15, 16, 18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yemam et al. (US 2019/0033474).
Considering Claims 15, 16, and 21: Yemam et al. teaches a scintillator made from a formulation for forming a scintillator comprising a styrene based monomer (¶0009), that is preferably vinyl toluene (¶0081); a first dopant/dye; a second dopant/dye (¶0009); and a photoinitiator (¶0078).
Yemam et al. teaches that the scintillator can be machined to any particular shape (¶0089), which would include shapes with different geometries in different portions. It would have been obvious to a person of ordinary skill in the art to have machined the scintillator into a shape having different geometries in different portion, and the motivation to do so would have been, the shape would be controlled by the intended use of the scintillator.
Yemam et al. does not teach the scintillator as being made by a three dimensional printing process. However, the instant claims are product by process claims. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113.
Considering Claim 18: Yemam et al. teaches the scintillator is configured for pulse shape discrimination (¶0011).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Yemam et al. (US 2019/0033474) as applied to claim 15 above, and further in view of Kuriwada et al. (US 2022/002617).
Considering Claim 17: Yemam et al. teaches the product of claim 15 as shown above.
Yemam et al. does not teach forming a pixelated array. However, Kuriwada et al. teaches a pixelated array of scintillators (¶0069-70). Yemam et al. and Kuriwada et al. are analogous art, as they are concerned with the same field of endeavor, namely scintillator materials. It would have been obvious to a person of ordinary skill in the art to have prepared an array of scintillator materials made of Yemam et al., as in Kuriwada et al., and the motivation to do so would have been, as Kuriwada et al. suggests, to allow for fine tuned detection of X-ray radiation.
Claims 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Yemam et al. (US 2019/0033474) in view of Haraguchi et al. (Macromolecules, 2020, 53, 4185-4192).
Considering Claims 20 and 22: Yemam et al. teaches a formulation for forming a scintillator comprising a styrene based monomer (¶0009), that is preferably vinyl toluene (¶0081); a first dopant/dye; a second dopant/dye (¶0009); and a photoinitiator (¶0078); exposing the mixture to light to cure the composition (¶0080); and heating the mixture to cure the composition (¶0083).
Yemam et al. does not teach the photoinitator as being a cationic photoinitiator. However, Haraguchi et al. teaches using an iodonium salt as a cationic photoinitiator for styrene monomers (Abstract). Yemam et al. and Haraguchi et al. are analogous art as they are concerned with a similar technical difficulty, namely photoinitiation of styrenic monomers. As such, the teachings of Haraguchi et al. would be reasonably pertinent to a person of ordinary skill in the art. It would have been obvious to a person of ordinary skill in the art to have used the cationic photoinitiator of Haraguchi et al. in the mixture of Yemam et al., and the motivation to do so would have been, as Haraguchi et al. suggests, the polymerization provides controllable molecular weights and is pollution free (Conclusions).
Response to Arguments
Applicant's arguments filed January 21, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that the proposed modification of Kim et al. to use a cationic photoinitiator would render the Kim’s invention unsatisfactory for its intended purpose is not persuasive. The original specification teaches that the hydrocarbon dopants have been shown to outperform nitrogen containing dopants (¶0054-55). The fluorophores taught in Kim et al. are said to be “not preferred choices for fluorophores for PVT scintillator material cured by cationic photopolymerization”. However, this is not the same as showing that fluorophores would not function as intended in the scintillator of Kim et al. "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP § 2123.
It is noted that the independent claims allow for the use of nitrogen containing fluorophores.
B) In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to a person of ordinary skill in the art to have used the cationic photoinitiator of Crivello et al. in the mixture of Kim et al., and the motivation to do so would have been, as Crivello et al. suggests, the polymerization is rapid, energy efficient, and pollution free (1:15-20). Crivello et al. explicitly teaches using the initiator with styrene monomers (8:23-26).
The rejection as set forth relies upon the teaching, suggestion, or motivation standard, not the combination of known elements to achieve predictable results rationale, as alleged by the applicant.
C) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/ Primary Examiner, Art Unit 1767
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