DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Response to Amendment/Restriction
Applicant’s election without traverse of Group II, Species II, Embodiment 2: FIG. 3 (sintered body), and Claims 11-19 in the reply filed on March 13, 2026 is acknowledged. Thus, Claims 1-10 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. Election was made without traverse in the reply filed on March 13, 2026.
Specification
The title of the invention is broad and not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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.
Claims 15-17 are 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. As to claims 15 and 16, the limitations “an excitation spectrum” and “an emission spectrum” fail to further define the structures or compositions of the recited phosphor ceramic. It is not clear how the phosphor ceramic has a “wavelength”. It is also not clear whether the “excitation spectrum” is directed to an external source that “excites/activates/interacts” with the phosphor ceramic such that the limitation appears to be an intended-use limitation and the composition of the phosphor ceramic is still defined in claim 11. Further, it is not clear whether the “emission spectrum” depends on a certain external source of wavelength to generate the recited emission spectrum and the composition of the phosphor ceramic is still defined in claim 11. This also appears to be an intended-use limitation as the phosphor ceramic does not appear to emit any wavelength by itself. Thus, the limitations render the claims indefinite and clarification is required. As to claim 17, the limitation “the laser flash method” lacks sufficient antecedent basis. It is also not clear what parameters are in this specific method to obtain the thermal diffusivity. Thus, the limitation renders the claim indefinite and clarification is required.
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) 11-16 and 18 are rejected under 35 U.S.C. 102(a)(1)(2) as being anticipated by U.S. Patent No. 5,063,186 to Taniguchi et al. (“Taniguchi”). As to claim 11, Taniguchi discloses a phosphor ceramic comprising aluminum nitride, yttrium, and manganese, wherein a content of oxygen in the phosphor ceramic is less than 2.4 mass % (See Column 10, lines 13-68, Column 11, lines 1-10) (Notes: the preamble “phosphor ceramic” is defined by the recited compositions).
As to claim 12, Taniguchi further discloses wherein the content of oxygen in the phosphor ceramic is 1 mass % or less (See Column 10, lines 40-68, Column 11, lines 1-10). As to claim 13, Taniguchi further discloses wherein a content of manganese in the phosphor ceramic is 50 ppm or less (See Column 10, lines 42-68). As to claim 14, Taniguchi further discloses wherein a content of manganese in the phosphor ceramic is 50 ppm or less (See Column 10, lines 42-68).
As to claim 15, Taniguchi further discloses wherein an excitation spectrum of the phosphor ceramic has a peak in a wavelength range of 230 nm to 250 nm (See Column 10, lines 13-68, Column 11, lines 1-10).
As to claim 16, Taniguchi further discloses wherein an emission spectrum of the phosphor ceramic has a peak in a wavelength range of 590 nm to 620 nm (See Column 10, lines 13-68, Column 11, lines 1-10). Further, the claim limitations “wherein an excitation spectrum of the phosphor ceramic has a peak in a wavelength range of 230 nm to 250 nm and wherein an emission spectrum of the phosphor ceramic has a peak in a wavelength range of 590 nm to 620 nm” specify an intended use or field of use, and is met by the prior art since it has been held that in device claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex Parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987).
As to claim 18, Taniguchi further discloses wherein a thermal conductivity of the phosphor ceramic is in a range of 150 W/(m·K) to 260 W/(m·K) (See Column 10, lines 37-39).
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) 19 rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2008/0191236 A1 to De Graaf et al. (“De Graaf”) in view of U.S. Patent No. 5,063,186 to Taniguchi et al. (“Taniguchi”). As to claim 19, although De Graaf discloses a light-emitting device comprising: an excitation light source (26); and the phosphor ceramic (15) and arranged at a position irradiated with light emitted by the excitation light source (26) (See Fig. 3, ¶ 0035, ¶ 0046, ¶ 0047), De Graaf does not further disclose the phosphor ceramic is according to claim 11. However, Taniguchi does disclose the phosphor ceramic is according to claim 11 (See Column 10, lines 13-68, Column 11, lines 1-10). In view of the teaching of Taniguchi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the phosphor ceramic according to claim 11 because the phosphor ceramic has the desired property of high thermal conductivity to provide good heat transfer property (See De Graaf ¶ 0035 and Taniguchi Column 10, lines 37-39).
Conclusion
Prior art made of record is considered pertinent to Applicant’s disclosure Yagi et al. (US 2010/0108995 A1). Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID CHEN whose telephone number is (571)270-7438. The examiner can normally be reached M-F 12-6.
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/DAVID CHEN/Primary Examiner, Art Unit 2815
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