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 § 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 6 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 6 recites “wherein the powder composed of the fluoride phosphor has a dispersity of 2.0% or more”. The phrase “dispersity of 2.0% or more” renders the claim indefinite. The definition of this claim is not clear. The specification does not clarify the issue.
Claim 6 is dependent from independent claim 1. While not a suggestion of claim language, in the interest of compact prosecution, all fluoride phosphors that read on parent claim 1, are considered to read on dependent claim 6.
Appropriate correction is required.
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 instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claims 1-7 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over CN105623565 B to Liu e al. (hereinafter Liu), provided with a machine translation in the IDS filed 6/21/23.
Regarding claims 1 and 3, Liu discloses a fluoride phosphor, having a first composition which comprises an alkali metal containing K, Si, Al, Mn, and F (para [0011]), wherein
in the first composition, when a total number of moles of the alkali metal is 1.5 to 1.999 which is so close as to constitute overlap with the instantly claimed amount of 2 (alkali A is 2-x , where 0.001≤x≤0.5); a number of moles of Si is 0.85 to 0.999999 (1-xy, where 0.001≤y≤0.3); a number of moles of Al (x) is 0.001 to 0.5, which overlaps the instantly claimed range of more than 0 and 0.1 or less; a number of moles of Mn (y) is 0.001 to 0.3, which overlaps the instantly claimed range of more than 0 and 0.2 or less; and a number of moles of F is 6, which falls completely within the instantly claimed range of 5.9 or more and 6.1 or less (para [0011]). Based on the ranges in para [0011] of Liu, discussed above, the total number of moles of Si, Al, and Mn is 0.852 to ~1.8, which overlaps the instantly claimed range of 0.9 or more and 1.1 or less. See MPEP 2144.05(I), which states that ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists…Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’.
The reference states that replacing a portion of Si with Al expands the lattice (para [0026]) and discloses an overlapping amount of Al, as discussed above. Liu does not expressly disclose that the fluoride phosphor has a crystal structure of cubic system and a lattice constant of not less than 0.8138 nm and not less than 0.8140 nm. However, see MPEP 2112.01(I), which states that ‘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…"When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."…Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product’. Therefore, as the reference teaches an overlapping phosphor composition having an expanded lattice and an overlapping amount of Al replacing Si, one of ordinary skill in the art would expect the Liu fluoride phosphor to have a cubic system and a lattice constant that at least overlaps the instantly claimed ranges of not less than 0.8138 and not less than 0.8140 nm, absent evidence to the contrary.
Regarding claim 2, Liu discloses the fluoride phosphor according to claim 1, wherein the number of moles of Al in the first composition is 0.001 to 0.5 (para [0011]), which overlaps the instantly claimed range of more than 0 but 0.03 or less. See MPEP 2144.05(I), cited above.
[Regarding claims 4 and 5, Liu discloses the fluoride phosphor according to claim 1, but is silent regarding the limitations “wherein a powder composed of the fluoride phosphor has an angle of repose of 60° or smaller” and “wherein the fluoride phosphor has an absorption peak in a wavenumber range of 590 cm⁻¹ to 610 cm⁻¹ in an infrared absorption spectrum”. However, see MPEP 2112.01(I), cited above. The reference teaches overlapping fluoride phosphors with expanded lattices. Therefore, one of ordinary skill in the art would expect the Liu phosphors to have overlapping properties including but not limited to overlapping angles of repose and overlapping absorption peaks, absent evidence to the contrary.
Regarding claim 6, Liu discloses the fluoride phosphor according to claim 1, but is silent regarding the limitation “wherein the powder composed of the fluoride phosphor has a dispersity of 2.0% or more”. However, the reference does teach overlapping fluoride phosphors. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect the Liu phosphors to have overlapping properties including but not limited to overlapping dispersity, absent evidence to the contrary.
This rejection is based on the interpretation set forth in para 3, above.
Regarding claim 7, Liu discloses the fluoride phosphor according to claim 1, but is silent regarding the limitation “wherein the powder composed of the fluoride phosphor has a bulk density of 1.00 g.cm⁻³ or higher”. However, the reference does teach overlapping fluoride phosphors comprising overlapping amounts of K, Si, Al, M and F. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect the Liu phosphors to have overlapping properties including to not limited to overlapping bulk densities, absent evidence to the contrary.
Regarding claim 9, Liu discloses a light emitting device, comprising:
a first light emitting material comprising the fluoride phosphor according claim 1; and a light emitting element having an emission peak wavelength in a wavelength range of 440 to 460 nm (para [0025] and [0064]), which falls within the instantly claimed range of 380 nm to 485 nm.
Regarding claims 10 and 11, Liu discloses the light emitting device according to claim 9, further comprising a second light emitting material having an emission peak wavelength in a wavelength range of 495 nm to 590 nm, wherein the second light emitting material is at least one selected from the group consisting of a β-sialon phosphor, a silicate phosphor, a rare earth aluminate phosphor, and a nitride phosphor (para [0007]).
Regarding claim 12, Liu discloses the light emitting device according to claim 10, wherein the second light emitting material comprises at least one selected from the group consisting of light emitting materials having a composition represented by any one of the following:
Si6-tAltOtN8-t:Eu(IIa) wherein, t represents a number satisfying 0 < t ≤ 4.2 (para [0098]),
(Y)3(Al)5O12:Ce (IId), and
(Ca)AlSiN₃:Eu (IIh) (para [0007]).
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 16, and 27 of U.S. Patent No. 12,204,128 (hereinafter 128). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping light emitting devices comprising overlapping fluoride phosphors (instant claim 9 and 128 claims 16 and 27). Both teach that the overlapping phosphors are cubic phosphors comprising K, Si, Al, Mn, and F in the same amounts, having overlapping lattice constants (instant claims 1-3 and 8 and 128 claim 1). Both also teach that the overlapping fluoride phosphors have overlapping angles of repose (instant claim 4 and 128 claim 2). The 128 claims are silent regarding the properties set forth in instant claims 5-7. However, the fluoride phosphors closely overlap, as discussed above. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect the fluoride phosphor of 128 to have overlapping absorption peaks (instant claim 5), dispersity (instant claim 6), and bulk density (instant claim 7), absent evidence to the contrary. See MPEP 2144.05(I), cited above.
The rejection of claim 6 is based on the interpretation set forth in para 3, above.
Claims 1-8, 13-15, and 21-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 9-12, and 19 of copending Application No. 18/565218 (hereinafter 218). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach closely overlapping methods of making closely overlapping fluoride phosphors. The methods comprise mixing first fluoride particles comprising overlapping KSF:Mn material with second fluoride particles comprising overlapping KAlF material and subjecting the mixture to overlapping heat treatments (instant claims 13 and 22-25 and 218 claims 9-12). Both methods employ water (instant claims 14 and 15 and 218 claims 11 and 19). Both teach that the methods produce overlapping phosphors with overlapping formulas (instant claim 21 and 218 claims 3 and 9).The overlapping cubic fluoride phosphors comprise K, Si, Al, Mn and F in overlapping amounts, having overlapping lattice constants (instant claims 1-3 and 218 claims 1, 4, and 5). Both also teach overlapping formulas (instant claim 8 and 218 claim 3). 218 claim 2 teaches the absorption peak in instant claim 5. However, instant claim 5 is dependent from instant claim 4. The 218 claims are silent regarding the properties as set forth in instant claims 4-7. The 218 claims recite an overlapping fluoride phosphor. See MPEP 2112.01(I), cited above. Therefore, one of ordinary skill in the art would expect the fluoride phosphor of 218 to have overlapping angles of repose (instant claim 4) absorption peaks (instant claim 5), dispersity (instant claim 6), and bulk density (instant claim 7), absent evidence to the contrary. See MPEP 2144.05(I), cited above.
The rejection of claim 6 is based on the interpretation set forth in para 3, above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 16-20 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 typically employs solution methods to produce fluoride phosphors. The closest prior art teaching a particle process, 218 cited above, recites a similar method but does not teach or suggest a process that includes a liquid medium with a reducing agent or a heat treatment with a fluorine-containing substance.
Conclusion
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/L.E./ Examiner, Art Unit 1734
/Matthew E. Hoban/ Primary Examiner, Art Unit 1734
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