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 .
Election/Restrictions
Applicant’s election without traverse of Invention 1, claims 1-5 and 14, in the reply filed on February 11, 2026 is acknowledged.
Claims 6-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 11, 2026.
Status of Claims
Claims 1-14 are pending.
Claims 6-13 have been withdrawn from consideration.
Claims 1-5 and 14 are under examination.
Information Disclosure Statement
The information disclosure statements filed on July 10, 2023 and September 30, 2025 are acknowledged and have been considered by the examiner.
Drawings
The drawings are objected to because of the following informalities.
The text of figure 2 is blurry and insufficiently clear. A reader is unable to determine the identities of the superscripts and subscripts associated with the listed elements, including both those for stoichiometry and charge states.
The text of figure 11 is insufficiently clear and difficult to read. Additionally, the data on figure 11A is difficult to interpret as it is difficult to distinguish the three curves.
The text of figure 12 is insufficiently clear and difficult to read.
The “(b)” label of figure 13b is very difficult to read because it is a gray colored font on a gray background.
Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities:
The caption for Fig. 8 in the Brief Description of the Drawings (paragraph 40, pg. 8) is missing a term or phrase. It is unclear what is meant by “Fig. 8 is an (a) before degradation and (b) after degradation.” It appears a noun or noun-containing phrase is missing between “an” and “(a).”
The caption for Fig. 13 in the Brief Description of the Drawings (paragraph 45, pg. 8) recites that panels C and D are “SEAD patterns” but one in the art would not recognize that acronym and it is not defined in the specification. In the art of HRTEM, selected area electron diffraction (SAED) data is recognized instead. The same mistake is made in paragraph 129 on page 24.
The captions for Fig. 6 and Fig. 15 in the Brief Description of the Drawings (paragraph 38 on pg. 7 and paragraph 47 on pg. 9, respectively) refers to “HADDF-STEM” images, but one in the art would not recognize that acronym and it is not defined in the specification. In the art of TEM, high-angle annular dark-field scanning transmission electron microscopy (HAADF-STEM) is recognized instead. The same mistake is made in paragraphs 108 and 136.
Appropriate correction is required.
Claim Objections
Claims 1 and 2 are objected to because of the following informalities:
Claim 1 recites that “Ln is a lanthanide element… and combinations thereof.” It is not possible for “Ln” to both be a single element and a combination at the same time. Please revise to “… or combinations thereof” instead of “and.”
Claim 1 recites “a nanoparticle doped with lanthanide ion,” which provides a singular noun, indicating just a single ion being present in the nanoparticle. Based on the context in the full claim set in view of the entire disclosure, the examiner suggests revising this to “lanthanide ions.” The examiner notes that such a revision may require further corresponding revisions to claims 2 and 3 to avoid potential antecedent basis issues.
Claim 2 recites that “the nanoparticle doped with the lanthanide ion is the nanoparticle doped with two or more different lanthanide ions.” The first recitation of a singular ion requires a singular ion and thus is incompatible with the presence of two or more ions. Based on the context in the full claim set in view of the entire disclosure, the examiner suggests revising the singular “lanthanide ion” to its plural form “lanthanide ions.”
Appropriate correction is required.
Claim Interpretation
The preambles of claims 1-5 recite “upconversion nanoparticle.” This is interpreted to be a limitation of these claims. The compositions of matter claimed are required to possess photon upconversion properties and be in the size range of nanoparticles.
Claim 1 provides Chemical Formula 1 (Li3ZrF7:Ln3+). The subscripts of this formula are interpreted to represent the stoichiometric ratios of these elemental components and the superscript 3+ is interpreted to require the lanthanide ion to be in a 3+ charge state.
Claim 3 states that the nanoparticle “includes” Li3ZrF7:Er3+, Yb3+. “Includes” is considered to be “comprising” language. Thus, it is interpreted that an upconversion nanoparticle that comprises Li3ZrF7:Er3+, Yb3+ would read on this claim even if it additionally contains other components.
Claim 14 is interpreted to contain functional language. The phrase “bioimaging probe” describes an intended use of the claimed upconversion nanoparticle of claim 1 and does not provide additional structural restriction on the composition. Please note that a recitation of intended use does not distinguish over the prior art since a composition claim covers what the composition is and not what it is used for. A chemical composition and its properties are inseparable (MPEP § 2112.01). Therefore, as long as the prior art teaches the claimed structural features of the upconversion nanoparticle of claim 1 and the composition is capable of being used as a bioimaging probe, it reads on the claim.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 requires the upconversion nanoparticle to be biodegradable. However, the disclosure does not provide any evidence that the claimed nanoparticles possess the property of being biodegradable. The applicant provides examples of Li3ZrF7:Er3+, Yb3+ nanoparticles degrading in a mixture of water and cyclohexane, pure water, saline, and phosphate buffered saline. However, biodegradation is understood to require biological processes to be an essential component of the degradation. Biodegradation is performed by or within biological organisms or by processes naturally found in these organisms (such as the use of metabolic enzymes). Degradation of a material within solvents lacking biological material does not provide evidence of biodegradable properties. Therefore, it is understood that the specification does not provide adequate written support to describe any embodiments of the claimed upconversion nanoparticles as biodegradable.
Claims 1 and 2 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for upconversion nanoparticles of Chemical Formula 1 in which Ln represents a single lanthanide ion of Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, and Yb and combinations of lanthanide ions that include at least one of the members of this subset list with any other lanthanide ion on the full list, does not reasonably provide enablement for upconversion nanoparticles of Chemical Formula 1 in which Ln represents just La, just Lu, or the combination of just La and Lu. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is “reasonable” or is “undue.” Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. These factors include, but are not limited to:
The breadth of the claims;
The nature of the invention;
The state of the prior art;
The level of one of ordinary skill;
The level of predictability in the art;
The amount of direction provided by the inventor;
The existence of working examples; and
The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
These factors are always applied against the background understanding that scope of enablement varies inversely with the degree of unpredictability involved. In re Fisher, 57 CCPA 1099, 1108, 427, F.2d 833, 839, 166 USPQ 18, 24 (1970). To be enabling, the specification of the patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. Keeping that in mind, the Wands factors are relevant to the instant fact situation for the following reasons:
The nature of the invention, state and predictability of the art, and relative skill level
The invention of claims 1 and 2 relate to upconversion nanoparticles of Chemical Formula 1 (Li3ZrF7:Ln3+) in which Ln represents a lanthanide element or combinations thereof. This describes a particle with a diameter of approximately 1 to 100 nm that possesses photon upconversion properties.
The relative skill of those in the art who would synthesize such nanoparticles is moderate to high, likely that of one who has obtained at least a master’s degree.
In the art, the electron energetics of the 3+ state of lanthanide metal ions is very well understood and quantified. Practitioners can readily predict upconversion luminescence properties of materials comprising upconversion-inert host materials doped with lanthanide ions. It is understood that each 3+ state lanthanide ion has unique electron energetics. It is also known that of these ions, La3+ and Lu3+ do not possess any unpaired 4f electrons. Therefore, it is understood that La and Lu do not possess upconversion properties on their own. However, it is understood that combinations of lanthanide ions of poor upconversion properties can be combined with other ions that do possess upconversion abilities and the resulting co-doped material will exhibit upconversion properties. Thus, nanoparticles co-doped with La or Lu and other lanthanide ions can be upconversion nanoparticles.
The breadth of the claims
Claim 1 is broad insofar as the “Ln” component of Chemical Formula 1 encompasses the selection of individual lanthanide ions and any combination of any number of the 15 lanthanide ions, which is 32,767 total possible options for doped ions in the nanoparticles. Claim 2 is only slightly less broad, encompassing 32,752 possible options.
The amount of direction or guidance provided and the presence or absence of working examples
The specification provides little direction or guidance for practicing the claimed invention in its “full scope.” The only working example provided is an upconversion nanoparticle of the formula Li3ZrF7:Er3+, Yb3+. No working examples are provided for doping with other lanthanide ions, doping with a single lanthanide ion, or doping with combinations of three or more lanthanide ions. No examples are provided using La or Lu as the lanthanide metals.
The quantity of experimentation necessary
As the current understanding of the electron energetics of La3+ and Lu3+ do not suggest the metals to be capable of effective upconversion of photons on their own, the quantity of experimentation required to generate an upconversion nanoparticle with host material Li3ZrF7 doped with either just La3+ or Lu3+ would be significant.
Because of the known state of the art, and in the absence of experimental evidence and working examples, it is difficult to determine the amount of experimentation required to synthesize a nanoparticle of host material Li3ZrF7 doped with either just La3+ or Lu3+ or the combination of the two ions that would possess photon upconversion properties.
Accordingly, the instant claims do not comply with the enablement requirement of §112(a), since to practice the claimed invention in its “full scope,” a person of ordinary skill in the art would have to engage in an unreasonable amount of experimentation, with no reasonable expectation of success.
Claim Rejections - 35 USC § 112(b)
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 5 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 5 requires “an upconversion luminescence intensity of 5x105 or more,” but does not provide units for this value. Thus, it is unclear what the metes and bounds of this limitation are, rendering the claim is indefinite.
Claim 5 requires “the upconversion nanoparticle has an upconversion luminescence intensity of 5x105 or more in a wavelength range of 400 nm to 700 nm” but does not specify the excitation wavelength. Furthermore, it is unclear whether the luminescence is claimed to be 5x105 or more throughout the entirety of the 400 nm to 700 nm range or just that this intensity value is achieved at any luminescence wavelength within that spectrum. Additionally, it is not specified under what conditions this upconversion luminescence intensity is achieved. Luminescence intensity depends on several factors such as analyte concentration, buffer/solvent conditions, and intensity of the primary light source and the value reported on an instrument depends on the detector settings. Therefore, the metes and bounds of the claim are unclear with regard to under what conditions this intensity is achieved, thus rendering the claim indefinite. The examiner will interpret the claim to refer to the luminescence intensity under the circumstances of excitation by any wavelength of light and under any experimental conditions. The examiner further interprets this claim to mean that a luminescence intensity of 5x105 or more achieved at any emission wavelength within this range satisfies this requirement.
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.
Claims 1-5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Peng (Peng, P.; et al., ACS Nano, 2020) further in view of Dou (Dou, Q.; Zhang, Y., Langmuir, 2011).
Peng teaches an upconversion nanocrystal with a host matrix of an alkali metal (potassium, K) and ZrF7 doped with Yb3+ and Er3+ lanthanide ions of formula K3ZrF7:Er3+, Yb3+ (pg. 16672, Abstract). Peng further teaches and its utilization for biological imaging and biodegradation properties (pg. 16675, Figure 3).
Peng does not teach an upconversion particle with a host matrix of ZrF7 and lithium (in Li3ZrF7 stoichiometry).
Dou teaches a method of tuning the structure and emission spectra of upconversion nanocrystals (pg. 13236, Abstract). Dou generated upconversion nanoparticles possessing a host matrix of XYF4 doped with Er3+ and Yb3+, wherein X is sodium, potassium, or lithium, or a mixed ratio of sodium and potassium or sodium and lithium (pg. 13237, Nanocrystal Synthesis). Dou teaches that by increasing the lithium content of the nanoparticle, the luminescence emission spectra is changed and the green luminescence intensity (545 nm) is increased (pg. 13239, Figure 4). While the direct analysis of lithium in Dou is a comparison between sodium and lithium, a similar comparison between sodium and potassium (pg. 13240, Figure 7) depicts increased potassium incorporation to be inversely proportional with both max emission intensity and green emission intensity. Therefore, it can be transitively determined that a comparison between potassium and lithium would depict an even greater increase in max emission intensity and green emission intensity as the lithium content is increased.
A person of ordinary skill in the art would have recognized that the upconversion nanoparticles of Peng (K3ZrF7:Er3+, Yb3+) and Dou, (K/Na/Li)YF4:Er3+, Yb3+, are similar in that they are both lanthanide-doped (Er3+and Yb3+) nanoparticles possessing photon upconversion properties further containing host materials comprising an alkali metal ion and a metal-fluoride complex. Furthermore, it would be recognized that the switching of potassium to lithium in the host material would increase maximum luminescence intensity and enable tuning the emission color.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the upconversion nanoparticle taught by Peng by incorporating the teachings of Dou (to swap the potassium with lithium). This would result in the predictable conversion of K3ZrF7:Er3+, Yb3+ to Li3ZrF7:Er3+, Yb3+, resulting in an upconversion nanoparticle that reads on the claimed Chemical Formula 1.
Regarding claim 1, applying the potassium to lithium swap taught by Dou (pg. 13237, Nanocrystal Synthesis) to the K3ZrF7:Er3+, Yb3+ upconversion nanoparticle of Peng (pg. 16672, Abstract) would result in an upconversion nanoparticle of the formula Li3ZrF7:Er3+, Yb3+. Claim 1 requires an upconversion nanoparticle of Chemical Formula 1 (Li3ZrF7:Ln3+) in which Ln is a lanthanide element or combinations thereof. The product of the teachings of Peng and Dou reads on Chemical Formula 1 wherein Ln is the combination of Er and Yb. Therefore, the combined teachings of Peng and Dou render claim 1 obvious.
Regarding claim 2, applying the potassium to lithium swap taught by Dou (pg. 13237, Nanocrystal Synthesis) to the K3ZrF7:Er3+, Yb3+ upconversion nanoparticle of Peng (pg. 16672, Abstract) would result in an upconversion nanoparticle of the formula Li3ZrF7:Er3+, Yb3+. Claim 2 requires the upconversion nanoparticle of claim 1 to be doped with two or more different lanthanide ions. The aforementioned product of combining the works of Peng and Dou is an upconversion nanoparticle doped with two different lanthanide ions (Er and Yb). Therefore, the combined teachings of Peng and Dou render claim 2 obvious.
Regarding claim 3, applying the potassium to lithium swap taught by Dou (pg. 13237, Nanocrystal Synthesis) to the K3ZrF7:Er3+, Yb3+ upconversion nanoparticle of Peng (pg. 16672, Abstract) would result in an upconversion nanoparticle of the formula Li3ZrF7:Er3+, Yb3+. Claim 3 requires the upconversion nanoparticle of claim 1 to be doped with Er3+ and Yb3+. The aforementioned product of combining the works of Peng and Dou is an upconversion nanoparticle with a host material of Li3ZrF7 doped with Er3+ and Yb3+. Therefore, the combined teachings of Peng and Dou render claim 3 obvious.
Regarding claim 4, Peng teaches that the upconversion nanoparticle of the formula K3ZrF7:Er3+, Yb3+ is biodegradable by administering the nanoparticle to a live animal and monitoring the luminescence intensity over time (pg. 16675, paragraph 2). Peng further teaches that this biodegradable property is related to pH-dependent hydrolysis of the host material to water soluble [ZrF7 ]3- and K+ ions (pg. 16673, paragraph 1). As the potassium to lithium swap of Dou (pg. 13237, Nanocrystal Synthesis) does not alter the other host material atoms, the ZrF7 would persist in the product of the combined teachings and thus the biodegradability of the upconversion nanoparticle is not expected to be changed by the incorporation of lithium. Therefore, the combined teachings of Peng and Dou render claim 4 obvious.
Regarding claim 5, Peng teaches that the upconversion nanoparticle of the formula K3ZrF7:Er3+, Yb3+ displays upconversion luminescence at wavelengths between 400 nm and 700 nm (pg. 16673, Figure 1). Dou teaches that interconversion between potassium, sodium, and lithium alkali metal ions shifts the relative intensities of peaks between 400 nm and 700 nm but does not remove this property from the material (pg. 13239, Figure 4 and pg. 13240, Figure 7). In fact, the data from Dou indicates that decreasing potassium contents and increasing lithium contents are both associated with increasing the maximum emission intensity in this wavelength range. Therefore, the product of the combined teachings of Peng and Dou would possess upconversion luminescence properties between 400 nm and 700 nm. The language of claim 5 does not specify the experimental conditions under which the claimed intensity of 5x105 is achieved (see interpretation associated with 112(b) rejection). Since the product of the teachings of Peng and Dou possesses luminescence emission in this range, there must be a condition (combination of nanoparticle concentration, intensity of incident light, detector amplification parameters, etc.) under which the upconversion nanoparticle taught by combining the teachings of Peng and Dou achieves an upconversion luminescence intensity of 5x105 at some wavelength between 400 nm and 700 nm. These adjustments, such as analyte concentration variation, amount to routine optimization (MPEP §2144.05). Therefore, the combined teachings of Peng and Dou render claim 5 obvious.
Regarding claim 14, Peng teaches that the upconversion nanoparticle of the formula K3ZrF7:Er3+, Yb3+ can be used as a bioimaging probe by administering the nanoparticle to a live animal and monitoring the luminescence intensity in animal tissue (pg. 16675, Figure 3). As Dou teaches that the switch from potassium to lithium does not remove the upconversion luminescence properties of lanthanide-doped nanoparticles and perhaps even improves these properties (pg. 13239, Figure 4 and pg. 13240, Figure 7), the combined product of Peng and Dou, Li3ZrF7:Er3+, Yb3+, would be expected to retain its ability to be used as a bioimaging probe. Therefore, the combined teachings of Peng and Dou render claim 14 obvious.
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/774,558 in view of Dou and further in view of Hu (Hu, J.; et al., Chem. Mater., 2022).
The claims of copending application 18/774,558 are drawn toward a biodegradable core-double shell upconversion nanoparticle. Conflicting claim 2 specifically requires the core layer comprises Na3ZrF7:Yb, Er/Tm, Ca nanoparticles.
The copending application does not teach an upconversion nanoparticle lacking calcium and comprising lithium in the host material of the formula Li3ZrF7:Ln3+.
As described above, Dou teaches a method of switching alkali metal ions in upconversion nanoparticles (pg. 13237, Nanocrystal Synthesis). Dou specifically teaches that switching sodium to lithium increases the maximum emission intensity and enables modulation of the emission spectra (pg. 13239, Figure 4).
Hu teaches an upconversion material of the formula β-Ba2ScAlO5:Er3+, Yb3+(pg. 3089, Abstract). Hu further teaches that both the calcium-doped and undoped variants of this upconversion nanomaterial display upconversion luminescence at wavelengths between 400 nm and 700 nm (pg. 3091, Figure 3).
A person of ordinary skill in the art would have recognized that the copending application 18/774,558, Dou, and Hu all teach upconversion materials doped with Er3+and Yb3+. It would be recognized that the works of Dou and Hu teach that modulation of host or doped inorganic cations can be used to tailor an upconversion material. Hu teaches that removal of doped calcium does not change the upconversion luminescence wavelengths and Dou teaches that switching sodium to lithium increases upconversion luminescence maximum intensity.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Dou (switching sodium to lithium) and Hu (removal of doped calcium) with the reference application. This would yield a biodegradable upconversion nanoparticle that would read on the instant claims.
Regarding instant claim 1, conflicting claim 2 of the reference application teaches a biodegradable upconversion nanoparticle with a core layer comprising Na3ZrF7:Yb, Er/Tm, Ca nanoparticles. Applying the teaching of Dou to switch the alkali metal from sodium to lithium would produce a biodegradable upconversion nanoparticle with a core layer comprising nanoparticles of the formula Li3ZrF7:Yb, Er/Tm, Ca. Applying the teaching of Hu to prepare an alternative material not doped with calcium would produce a biodegradable upconversion nanoparticle with a core layer comprising nanoparticles of the formula Li3ZrF7:Yb, Er or Li3ZrF7:Yb, Tm; the former reads on Chemical Formula 1 of instant claim 1.
Regarding instant claim 2, as described above, applying the combined teachings of Dou and Hu to the Na3ZrF7:Yb, Er/Tm, Ca nanoparticles of the reference application would produce a biodegradable upconversion nanoparticle with a core layer comprising nanoparticles of the formula Li3ZrF7:Yb, Er or Li3ZrF7:Yb, Tm, both of which are doped with two or more different lanthanide ions.
Regarding instant claim 3, as described above, applying the combined teachings of Dou and Hu to the Na3ZrF7:Yb, Er/Tm, Ca nanoparticles of the reference application would produce a biodegradable upconversion nanoparticle with a core layer comprising nanoparticles of the formula Li3ZrF7:Yb, Er or Li3ZrF7:Yb, Tm; the former reads on the claimed formula of Li3ZrF7:Yb3+, Er3+.
Regarding instant claim 4, as described above, applying the combined teachings of Dou and Hu to the Na3ZrF7:Yb, Er/Tm, Ca nanoparticles of the reference application would produce a biodegradable upconversion nanoparticle with a core layer comprising nanoparticles of the formula Li3ZrF7:Yb, Er or Li3ZrF7:Yb, Tm; the former reads on the claimed formula of claim 1 and is biodegradable.
Regarding instant claim 5, as described above, applying the combined teachings of Dou and Hu to the Na3ZrF7:Yb, Er/Tm, Ca nanoparticles of the reference application would produce a biodegradable upconversion nanoparticle with a core layer comprising nanoparticles of the formula Li3ZrF7:Yb, Er or Li3ZrF7:Yb, Tm. As the doped lanthanide ions are the primary determinants of the upconversion luminescence spectra of the combined material, the taught upconversion nanoparticle doped with Er and Yb would still possess upconversion luminescence between the wavelengths of 400 nm and 700 nm. The language of claim 5 does not specify the experimental conditions under which the claimed intensity of 5x105 is achieved (see interpretation associated with 112(b) rejection). Since the product of the teachings of the copending application, Hu, and Dou possesses luminescence emission in this range, there must be a condition (combination of nanoparticle concentration, intensity of incident light, detector amplification parameters, etc.) under which the upconversion nanoparticle taught by combining the teachings achieves an upconversion luminescence intensity of 5x105 at some wavelength between 400 nm and 700 nm.
This is a provisional nonstatutory double patenting rejection.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric P Mosher whose telephone number is (571)272-3258. The examiner can normally be reached Monday-Friday 9am-5pm.
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/E.P.M./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612