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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed 4 June 2026, with respect to the rejection(s) of claim(s) 7 and 8 under 35 U.S.C. § 102 have been fully considered and are persuasive. Applicant amended the claims to further specify a temperature rate increase which is not specifically taught in Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. § 103.
Applicant's amendments and arguments filed 4 June 2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art of Sasakura cannot result in the same properties because Sasakura uses a different heating temperature and rate. However, Sasakura teaches the same firing temperature specifically 1000-1200°C [0070] which is within the claimed range of newly amended claim 7 which puts the temperature at 1000 to 1400°C. Further, arguments drawn to the heating rate being different are not persuasive as they do not appear to be supported in the specification or in additional data.
Accordingly, the arguments and amendments are not persuasive and the rejections have been maintained and modified to the extent needed to address the new claim language.
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.
Claims 1 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasakura et al. (US 2012/0018674, hereinafter referred to as “Sasakura”).
As to Claim 1: Sasakura teaches an emitting phosphor comprising an orthorhombic structure comprising Ga and S (Abstract). Sasakura further teaches that the phosphor has a structure MGa2S4 [0027] wherein M can be selected from Ba, Sr, and Ca [0023] and the composition further comprises an activator, also referred to as a “luminescent center” [0019].
Sasakura does not expressly teach part of the phosphor has a crystal phase represented by MGa4S7 wherein M is selected from Ba, Sr, and Ca. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the MGa4S7 wherein M is selected from Ba, Sr, and Ca is formed by sintering at a temperature above 1000°C with an excess amount of Ga (Instant Specification [0075]). Sasakura teaches that the method involves mixing Ga in excess and firing at 1000°C or higher. Therefore, the claimed effects and physical properties, i.e. MGa4S7 wherein M is selected from Ba, Sr, and Ca, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Sasakura does not expressly teach the phosphor has a ratio la/lc of 0.4 or more. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the presence of Ia and Ic are based on the structure and production method of the composition having MGa4S7 (Instant Specification [0035-0036]) wherein M is selected from Ba, Sr, and Ca is formed by sintering at a temperature above 1000°C with an excess amount of Ga (Instant Specification [0075]). Sasakura teaches that the method involves mixing Ga in excess and firing at 1000°C or higher. Therefore, the claimed effects and physical properties, i.e. the phosphor has a ratio la/lc of 0.4 or more, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 3: Sasakura teaches the phosphor of claim 1 (supra). Sasakura additionally teaches examples with a ratio of Ga/(M+A) in the range of about 2 to about 2.45 (Tables 1 and 2).
As to Claim 5: Sasakura teaches the phosphor of claim 1 (supra).
Sasakura does not expressly teach the phosphor has a ratio Ib/Ic of 0.4 or more. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the presence of Ib and Ic are based on the structure and production method of the composition having MGa4S7 -(Instant Specification [0038-0039]) wherein M is selected from Ba, Sr, and Ca and the composition is formed by sintering at a temperature above 1000°C with an excess amount of Ga (Instant Specification [0075]). Sasakura teaches that the method involves mixing Ga in excess and firing at 1000°C or higher. Therefore, the claimed effects and physical properties, i.e. the phosphor has a ratio Ib/Ic of 0.4 or more, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 6: Sasakura teaches the phosphor of claim 1 (supra). Sasakura further teaches that the element A which functions as the luminescent center can be selected from Eu, Ce, Mn, and Sm [0040].
Claims 2 and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasakura et al. (US 2012/0018674, hereinafter referred to as “Sasakura”).
As to Claim 2: Sasakura teaches an emitting phosphor comprising an orthorhombic structure comprising Ga and S (Abstract). Sasakura further teaches that the phosphor has a structure MGa2S4 [0027] wherein M can be selected from Ba, Sr, and Ca [0023] and the composition further comprises an activator, also referred to as a “luminescent center” [0019].
Sasakura does not expressly teach part of the phosphor has diffraction peaks observed in a range of 2-theta =27.55° or more and 28.30° or less and a range of 2-theta =28.45° or more and 28.75° or less. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the MGa4S7 wherein M is selected from Ba, Sr, and Ca is formed by sintering at a temperature above 1000°C with an excess amount of Ga (Instant Specification [0075]). The original specification states that these peaks are from the composition having the formula MGa4S7 (Instant Specification [0034-0039]). Sasakura teaches that the method involves mixing Ga in excess and firing at 1000°C or higher. Therefore, the claimed effects and physical properties, i.e. the phosphor has diffraction peaks observed in a range of 2-theta =27.55° or more and 28.30° or less and a range of 2-theta =28.45° or more and 28.75° or less, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claims 11: Sasakura teaches the phosphor of claim 1 (supra). Sasakura additionally teaches examples with a ratio of Ga/(M+A) in the range of about 2 to about 2.45 (Tables 1 and 2).
As to Claim 12: Sasakura teaches the phosphor of claim 1 (supra).
Sasakura does not expressly teach the phosphor has a ratio la/lc of 0.4 or more. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the presence of Ia and Ic are based on the structure and production method of the composition having MGa4S7 (Instant Specification [0035-0036]) wherein M is selected from Ba, Sr, and Ca is formed by sintering at a temperature above 1000°C with an excess amount of Ga (Instant Specification [0075]). Sasakura teaches that the method involves mixing Ga in excess and firing at 1000°C or higher. Therefore, the claimed effects and physical properties, i.e. the phosphor has a ratio la/lc of 0.4 or more, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 13: Sasakura teaches the phosphor of claim 1 (supra).
Sasakura does not expressly teach the phosphor has a ratio Ib/Ic of 0.4 or more. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the presence of Ib and Ic are based on the structure and production method of the composition having MGa4S7 -(Instant Specification [0038-0039]) wherein M is selected from Ba, Sr, and Ca and the composition is formed by sintering at a temperature above 1000°C with an excess amount of Ga (Instant Specification [0075]). Sasakura teaches that the method involves mixing Ga in excess and firing at 1000°C or higher. Therefore, the claimed effects and physical properties, i.e. the phosphor has a ratio Ib/Ic of 0.4 or more, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 14: Sasakura teaches the phosphor of claim 1 (supra). Sasakura further teaches that the element A which functions as the luminescent center can be selected from Eu, Ce, Mn, and Sm [0040].
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasakura et al. (US 2012/0018674, hereinafter referred to as “Sasakura”).
As to Claim 9: Sasakura teaches a light-emitting element can be made of the phosphor and a resin material [0085, 0088, 0091]. Sasakura teaches an emitting phosphor comprising an orthorhombic structure comprising Ga and S (Abstract). Sasakura further teaches that the phosphor has a structure MGa2S4 [0027] wherein M can be selected from Ba, Sr, and Ca [0023] and the composition further comprises an activator, also referred to as a “luminescent center” [0019].
Sasakura does not expressly teach part of the phosphor has a crystal phase represented by MGa4S7 wherein M is selected from Ba, Sr, and Ca. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the MGa4S7 wherein M is selected from Ba, Sr, and Ca is formed by sintering at a temperature above 1000°C with an excess amount of Ga (Instant Specification [0075]). Sasakura teaches that the method involves mixing Ga in excess and firing at 1000°C or higher. Therefore, the claimed effects and physical properties, i.e. MGa4S7 wherein M is selected from Ba, Sr, and Ca, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasakura et al. (US 2012/0018674, hereinafter referred to as “Sasakura”).
As to Claim 10: Sasakura teaches a light-emitting device can be made of the phosphor and an excitation source [0081-0091]. Sasakura teaches an emitting phosphor comprising an orthorhombic structure comprising Ga and S (Abstract). Sasakura further teaches that the phosphor has a structure MGa2S4 [0027] wherein M can be selected from Ba, Sr, and Ca [0023] and the composition further comprises an activator, also referred to as a “luminescent center” [0019].
Sasakura does not expressly teach part of the phosphor has a crystal phase represented by MGa4S7 wherein M is selected from Ba, Sr, and Ca. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the MGa4S7 wherein M is selected from Ba, Sr, and Ca is formed by sintering at a temperature above 1000°C with an excess amount of Ga (Instant Specification [0075]). Sasakura teaches that the method involves mixing Ga in excess and firing at 1000°C or higher. Therefore, the claimed effects and physical properties, i.e. MGa4S7 wherein M is selected from Ba, Sr, and Ca, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Claim 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasakura et al. (US 2012/0018674, hereinafter referred to as “Sasakura”).
As to Claim 15: Sasakura teaches a light-emitting element can be made of the phosphor and a resin material [0085, 0088, 0091]. : Sasakura teaches an emitting phosphor comprising an orthorhombic structure comprising Ga and S (Abstract). Sasakura further teaches that the phosphor has a structure MGa2S4 [0027] wherein M can be selected from Ba, Sr, and Ca [0023] and the composition further comprises an activator, also referred to as a “luminescent center” [0019].
Sasakura does not expressly teach part of the phosphor has diffraction peaks observed in a range of 2-theta =27.55° or more and 28.30° or less and a range of 2-theta =28.45° or more and 28.75° or less. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the MGa4S7 wherein M is selected from Ba, Sr, and Ca is formed by sintering at a temperature above 1000°C with an excess amount of Ga (Instant Specification [0075]). The original specification states that these peaks are from the composition having the formula MGa4S7 (Instant Specification [0034-0039]). Sasakura teaches that the method involves mixing Ga in excess and firing at 1000°C or higher. Therefore, the claimed effects and physical properties, i.e. the phosphor has diffraction peaks observed in a range of 2-theta =27.55° or more and 28.30° or less and a range of 2-theta =28.45° or more and 28.75° or less, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Claim 16 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasakura et al. (US 2012/0018674, hereinafter referred to as “Sasakura”).
As to Claim 16: Sasakura teaches a light-emitting device can be made of the phosphor and an excitation source [0081-0091]. : Sasakura teaches an emitting phosphor comprising an orthorhombic structure comprising Ga and S (Abstract). Sasakura further teaches that the phosphor has a structure MGa2S4 [0027] wherein M can be selected from Ba, Sr, and Ca [0023] and the composition further comprises an activator, also referred to as a “luminescent center” [0019].
Sasakura does not expressly teach part of the phosphor has diffraction peaks observed in a range of 2-theta =27.55° or more and 28.30° or less and a range of 2-theta =28.45° or more and 28.75° or less. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the MGa4S7 wherein M is selected from Ba, Sr, and Ca is formed by sintering at a temperature above 1000°C with an excess amount of Ga (Instant Specification [0075]). The original specification states that these peaks are from the composition having the formula MGa4S7 (Instant Specification [0034-0039]). Sasakura teaches that the method involves mixing Ga in excess and firing at 1000°C or higher. Therefore, the claimed effects and physical properties, i.e. the phosphor has diffraction peaks observed in a range of 2-theta =27.55° or more and 28.30° or less and a range of 2-theta =28.45° or more and 28.75° or less, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sasakura et al. (US 2012/0018674, hereinafter referred to as “Sasakura”).
As to Claim 7: Sasakura teaches a method for producing a phosphor (Abstract). Sasakura teaches that the phosphor is made by mixing BaS, SrS, Ga2S3, and EuS which were mixed and sintered [0099-0106].
Sasakura does not expressly teach a portion of the ingredient composition is melted. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a process using the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. According to the original specification, the ingredient composition melting is related to the ratio of the ingredients and the sintering temperature [0070, 0092]. Therefore, the claimed effects and physical properties, i.e. a portion of the ingredient composition is melted, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
Sasakura is silent to the heating rate being 1-10°C/min.
However, Sasakura teaches sintering at the recited temperature [0070, 0092] and it would have been obvious to a person having ordinary skill in the art to use different heating rates based on equipment capabilities and also to optimize the properties of the resulting composition.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sasakura et al. (US 2012/0018674, hereinafter referred to as “Sasakura”).
As to Claim 8: Sasakura teaches a method for producing a phosphor (Abstract). Sasakura teaches that the phosphor is made by mixing BaS, SrS, Ga2S3, and EuS which were mixed and sintered [0099-0106]. Sasakura further teaches that the phosphor has a structure MGa2S4 [0027] wherein M can be selected from Ba, Sr, and Ca [0023] and the composition further comprises an activator, also referred to as a “luminescent center” [0019].
Sasakura does not expressly teach part of the phosphor has a crystal phase represented by MGa4S7 wherein M is selected from Ba, Sr, and Ca. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Sasakura. However, Sasakura teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, the MGa4S7 wherein M is selected from Ba, Sr, and Ca is formed by sintering at a temperature above 1000°C with an excess amount of Ga (Instant Specification [0075]). Sasakura teaches that the method involves mixing Ga in excess and firing at 1000°C or higher. Therefore, the claimed effects and physical properties, i.e. MGa4S7 wherein M is selected from Ba, Sr, and Ca, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Sasakura is silent to the heating rate being 1-10°C/min.
However, Sasakura teaches sintering at the recited temperature [0070, 0092] and it would have been obvious to a person having ordinary skill in the art to use different heating rates based on equipment capabilities and also to optimize the properties of the resulting composition.
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 1-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 8,603,360. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to emitting phosphor composition comprising MGa2S4 wherein M is selected from Ba, Sr, and Ca and a luminescent center selected from Eu, Ce, Mn, and C.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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/Andrew J. Oyer/ Primary Examiner, Art Unit 1767
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