Response to Amendment
This action is in response to applicants’ amendment of 17 July 2026. The amendments to the claims have overcome the 35 USC 112(b) rejections over claims 3-6, 8-10, 12, 15-18, 20-22, 24, 27-29, 33-36 and 38-40; the obviousness-type double patenting rejection over copending Application No. 18/852,173 and the art rejections based on U.S. patent 2,806,002; U.S. patent 5,632,244; WO 2012/036570; CN 113831914; CN 114479841; and U.S. patent application publication 2023/0183569. The obviousness-type double patenting rejection over copending Application 17/240,344 and the art rejection over U.S. patent application publication 2012/0124064 have been modified in view of the amendments to the claims. Applicant's arguments with respect to the 35 USC 112(b) rejection over claim 52 have been fully considered but they are not persuasive. The newly added 35 USC 112 rejections and art rejections are based on the amendments to the claims.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
The subject matter of claims 2-10, 12-31 and 53-61, which includes the scintillator material having formulas (I), (Ia), (Ib), (Ic), (Id), (II), (IIa), (IIb), (IIc), (IId), (III), (IIIa), (IIIb), and (IIIc) has the effective filing date of 16 September 2022 since the claimed subject matter is taught in provisional application 63/407377, as discussed in the previous action.
The subject matter of claims 32-35, 37-40, 42-45, 47 and 50-52, which includes the scintillator material having formulas (IV), (IVa), (IVb), (IVc) and (V) has the effective filing date of 13 March 2023 since the claimed subject matter is taught in provisional application 63/451,687, but not in provisional application 63/407377, as discussed in the previous action.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered new claim 50, which appears between new claims 58 and 60, has been renumbered as “59”.
Claim Interpretation
It is understood that for the claims that depends from independent claims that further define A, B and X using comprising, the use of “comprising” in these definitions do not open the definition of A, B and X to cations and halides besides those set forth in the independent claims or the main body of the claims. Thus dependent claims 8-10, 22, 23, 38 and 40 teach A, B and X must contain the claimed ions, but can also contain any of the other monovalent cation, divalent cations and halides listed in claim 7.
Claim Rejections - 35 USC § 112
Claims 8-10, 12, 14-17, 22, 24, 39, 52 and 59-61 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.
Claims 52 and 59-61 recites the limitation "the vertical Bridgman technique". There is insufficient antecedent basis for this limitation in the claim.
Claim 8 teaches the scintillator material of claim 7 comprises cesium at least once in A of formula (I), as defined in claim 7. Claim 9 teaches scintillator material of claim 7 comprises magnesium or zinc at least once in B of the formula (I), as defined in claim 7. It is unclear what is meant by the phrase “at least once” in these claims since there is no indication in the formula of claim 7 that cesium, magnesium or zinc can appear more than once in the host part of the formula A2BX4.
Claim 10, which depends from claim 7, teaches “at least one instance of X”. It is unclear what is meany by this phrase since there is no indication in the formula of claim 7 there is more than one X.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation “X comprises at least one of F, Cl or Br”, and the claim also recites “X comprises Cl” which is the narrower statement of the range/limitation. In addition, claims 12 and 24 recite the broad recitation “0.005<i<0.20”, and the claim also recites “0.05<i<0.10” which is the narrower statement of the range/limitation. Finally, claim 12 recites the broad recitation “X’ or X” comprises at least one of F, Cl or Br”, and the claim also recites “X’ or X” comprises Cl” which is the narrower statement of the range/limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 14 teaches the definitions for A, B and X are A is one or more monovalent cations, B is one or more divalent cations and X is one or more halides, but the newly added proviso requires A to comprises two or more monovalent cations, B to comprise two or more divalent cations and X to comprises two or more halides. Claim 15 teaches the definitions for A and X are A is one or more monovalent cations, and X is one or more halides, but the newly added proviso requires A to comprises two or more monovalent cations, and X to comprises two or more halides. Claim 16 teaches the definitions for B and X are B is one or more divalent cations and X is one or more halides, but the newly added proviso requires B to comprise two or more divalent cations and X to comprises two or more halides. Claim 17 teaches the definitions for A and B are A is one or more monovalent cations, and B is one or more divalent cations, but the newly added proviso requires A to comprises two or more monovalent cations and B to comprise two or more divalent cations. The internal inconsistency in these claims makes the claims indefinite. In addition, these claims are indefinite as to whether the cations and halides of the provisos are the ions in the main body of the claims or if they are other monovalent cations, other divalent cations and At.
Claim 39, which depends from claim 32, teaches B comprises Mg or Zn. Claim 32 has been amended to teach B is at least one Mg or Zn. The amendment makes claim 39 indefinite as to its scope since its unclear what is now being claimed, B is Mg or Zn; or B is at least one of Mg and Zn. The last case is what is being claimed in claim 32. Applicants need to clarify the scope of claim 39.
Response to Arguments
Applicants argue the amendment to claim 52 has overcome the antecedent basis based rejection over this claim. The amendment did not overcome it since the claim still recites "the vertical Bridgman technique". The use of “the” in front of “vertical Bridgman technique” creates an antecedent basis issue since the claim contains no earlier recitation “vertical Bridgman technique”. See MPEP 2173.05(e). This rejection is maintained.
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.
Claims 14-17 are 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 claim(s) 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.
Applicants amended these claims by adding the provisos that A comprises at least two different monovalent cations, B comprises at least two different divalent cations and/or X comprises at least two different halides. The use of “comprises” opens the compositions of A, B and X in these claims to other ions besides those in the main body of the claims since the provisos do not clearly refer to the A, B and X definition in the main body of the claims and the definitions in the main body of the claims allows for two or more of the listed ions. Thus newly added provisos, as written which opens the compositions of A, B and X in these claims to other ions besides those in the main body of the claims is new matter.
It is noted that the originally filed disclosure supports provisos which state A is at least two different said monovalent cations, B is at least two different said divalent cations and/or X is at least two different said halides.
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 45 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of copending Application No. 17/240,344 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application teach and suggest the scintillator material, radiation detector and method of detecting gamma rays, X-rays, cosmic rays and/or particles having an energy of 1 keV or greater claimed in this application.
Claims 1 and 11 of the copending application teaches a scintillator material comprising A3M’X5, wherein M can be at least one of Cs and Tl or comprises Cs; M’ can be one or more of Zn, Hg and Cd, or comprises Zn, and X is one or more halogens, which are known to include F, Cl, Br and I. Thus these claims suggest A3M’X5, wherein M is one or more of Li, Na, Rb, Cs and Tl; M’ is one or more of Zn, Hg and Cd, Zn , X is one or more of F and I; and Cs3ZnX5, wherein X is one or more of F, and I. The suggested scintillators can be A3CdX5 and A3HgX5, wherein A is Tl, Li, Na and combinations thereof and X is F and/or I. These scintillators suggest that of claim 45.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants’ comments with respect to the remaining rejection have been considered but are not convincing. Rejections, even provisional ones, cannot be held in abeyance. Accordingly, the rejection over claim 45 is maintained.
Claim Rejections - 35 USC § 103
Claims 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent application publication 2021/0124064.
This reference teaches a scintillator material comprising a cesium halide doped with thallium and a codopant. The taught cesium halide has the formula CsX:Tl,Me, wherein X is I or I1-qBrq where q is 0.01-0.5 (para 13) and Me can be Cd. The amount of Tl can be 0.01-10 mol% (para 14) and the amount of Me is 10-7 to 0.1 mol% (para 15). This formula can be rewritten as Cs1-x-yTlxX:yCd, wherein x is 0.0001-0.1, y is 10-9 to 0.001, and X is I or I1-qBrq where q is 0.01-0.5. This formula corresponds with formulas (I), (IIIa), (IIIb) and (IIIc) wherein the amount of y overlaps the claimed i range, the taught x range falls within the claimed y range and the taught q range falls within the claimed w range. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05. Thus the reference suggests the scintillator of claims 26-29.
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent application 2022/0025257.
This published application was published more than 1 year before the effective filing date of the subject matter of claim 45.
This reference teaches a scintillator material comprising A3M’X5, wherein M can be at least one of Cs and Tl or comprises Cs; M’ can be one or more of Zn, Hg and Cd, or comprises Zn, and X is one or more halogens, which are known to include F, Cl, Br and I. Thus these claims suggest A3M’X5, wherein M is one or more of Li, Na, Rb, Cs and Tl; M’ is one or more of Zn, Hg and Cd, Zn , X is one or more of F and I; and Cs3ZnX5, wherein X is one or more of F, and I. The suggested scintillators can be A3CdX5 and A3HgX5, wherein A is Tl, Li, Na and combinations thereof and X is F and/or I. These scintillators suggest that of claim 45.
Response to Amendment
Applicants’ arguments with respect to U.S. patent application publication 2021/0124064 have been considered but are not convincing. The deletion of Mn as a dopant ion and In, Li, Na, K and Rb from A from claims 26-29 did not overcome the rejection since the reference teaches the dopant ion could be Cd and that A is Cs and Tl. The rejection is maintained.
Allowable Subject Matter
Claims 2-7, 13, 25, 31, 32-38, 40, 42-44, 50, 51 and 53-58 are allowed.
Claims 18-21 and 23 are objected to as being dependent upon a rejected base claim, but would be allowable if claim 18 is rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 30 is 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.
Claim 47 is 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.
Claims 8-10, 11, 22, 24, 39, 52 and 59-61 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
There is no teaching or suggestion in the art of record of scintillators having the formulas of claims 13, 25, 31, 43, 44 and 53-55. Since these scintillators are novel and allowable, radiation detectors contain these scintillators, methods for preparing these scintillators and a method of using radiation detectors contain these scintillators are also or also would be allowable.
There is no teaching or suggestion in the art of record of scintillators having a formula that falls within the formulas (I), (Ia), (Ib), (Ic), (Id), (IId), (IV), (IVa), (IVb) and (IVc) of claims 2-10, 11, 18-24, 32-35, 37-40 and 42. There is no teaching or suggestion in the art of record of scintillators having a formula that falls within the formula A3MgX5, wherein X is F and/or I and A is at least one of Tl, In, Li, Na and K. Ib), (Ic), (Id), (IId), (IV), (IVa), (IVb) and (IVc) of claims 2-10, 11, 18-24, 32-35, 37-40 and 42. There is no teaching or suggestion in the art of record of scintillators having a formula that falls within the formula A1-iX:Di, wherein A is Tl and Cs; X is at least one of F, Cl and Br and can optionally further contain I: and D contains Zn and optionally further at least one of Cd, Hg and Ga, wherein the amount of Zn is more than 5 wt% of less than 0.5 wt% so that the total amount of i is 0.0001-0.9999.
Applicant is advised that since claim 18 has be found allowable, claims 14-17 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof, once they are amended to overcome the 35 USC 112 rejections discussed above and claim 18 has been rewritten as an independent claim. Once claims 14-17 have been amended to overcome the 35 USC 112 rejections , claims 14, 15, 16 and 17 will all be duplicates of each other. When two or more claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. MELISSA KOSLOW whose telephone number is (571)272-1371. The examiner can normally be reached Mon-Tues:7:45-3:45 EST;Thurs-Fri:6:30-2:00EST; and Wed:7:45-2:00EST.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
8/19/26
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