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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 5 and 12-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claims 5 and 12-15 claim “A use” or “the use” and use claims do not fall within at least one of the four categories, process, machine, manufacture, or composition.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2, 5, 6, and 8-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshida et al. (WO 2016/140164) (hereafter “Yoshida”), where a machine translation is used as the English equivalent.
Regarding claims 1, 2, 5, 6, and 8-15, Yoshida teaches a triplet quencher compound that can be used in a composition with a semiconductor laser dye (pages 17 and 18 of the machine translation) (claims 5 and 6). Yoshida teaches that the composition is found in a coating on a substrate (page 17 of the machine translation) (claims 9-11). Yoshida teaches that the amount of the quencher in the composition is 1% to 20% (page 58 of the machine translation) (claim 8). Yoshida teaches that the composition is used as an active gain medium for light amplification in organic solid state lasers (pages 19-21, 54, and 58 of the machine translation) (claims 12, 13, and 15). Yoshida teaches that the laser is electrically pumped (pages 58-60 of the machine translation) (claim 14). Yoshida teaches that the quencher can have the following structure,
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(page 12 of the machine translation) (claims 1 and 2).
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (WO 2016/140164) (hereafter “Yoshida”), where a machine translation is used as the English equivalent, as applied to claims 1, 2, 5, 6, and 8-15 above, and further in view of Mamada et al. (Adv. Funct. Mater. 2018, 28, 1802130) (hereafter “Mamada”).
Regarding claim 7, Yoshida does not limit the laser dye used (page 18 of the machine translation). Yoshida teaches the laser dye can have the following structure,
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(page 18 of the machine translation).
Yoshida does not specifically teach a compound that meets the applicant’s claimed compound.
Mamada teaches laser dyes for used in organic solid state lasers (page 1 introduction). Mamada teaches the dye can have the following structure,
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, where 1-d and 2-d are the same as the applicant’s claimed compounds (page 2 Figure 1). Mamada teaches that 1-d and 2-d are red shifted compared to 1-a (taught by Yoshida) and 2-a (page 5 Table 2).
It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Yoshida so 1-d or 2-d of Mamada was used as the laser dye. The motivation would have been to red shift the color of the laser.
Allowable Subject Matter
Claims 3 and 4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not teach or make obvious the applicant’s claimed quencher formula and compound. The closest prior art Yoshida et al. (WO 2016/140164) (hereafter “Yoshida”), where a machine translation is used as the English equivalent, teaches that the quencher can have the following structure,
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(page 12 of the machine translation). These compounds do not meet applicant’s claimed formula or compound and Yoshida nor the prior art teach of make obvious modify the compounds to arrive at the applicant’s claimed compounds; therefore, claims 3 and 4 comprise allowable subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Blanchard et al. (US 2015/0011731) teaches a quencher that meet applicant’s formula 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW K BOHATY whose telephone number is (571)270-1148. The examiner can normally be reached Monday-Friday 7am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW K BOHATY/Primary Examiner, Art Unit 1759
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