Detailed Office Action
Notice of Pre-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
The amendment filed on 07/15/2025 has been entered. Claims 1 – 3 and 5 – 9 are pending and under examination. Claim 9 has been added and finds support in at least [0029] of the specification.
Applicant’s amendments have overcome the previous objections
Applicant’s amendments have overcome the previous rejections under 112(b) and 112(d).
Claim Rejections – U.S.C. §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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 – 3 and 5 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hong (KR2018/091679, using espacenet translation) in view of Tian (WO2017/211135, using espacenet translation) and Huang (WO2019/0477822, using espacenet translation, cited in the Office Action of 08/21/2024), in further view of Nagahama (JP2009/289976, using espacenet translation)
Regarding claims 1 and 6, Hong teaches a reflective polycrystalline fluorescent film produced by sintering [0017], meeting the claimed limitation of a sintered body.
Hong teaches that the reflective polycrystalline fluorescent film contains first fluorescent crystals, and second fluorescent crystals, and pores [0187]. The first fluorescent crystal is 10 – 1000 nm, which overlaps with the claimed range (0.1 – 5 µm), and the second fluorescent crystal is 6 – 20 µm, which overlaps with the claimed range (1.1 – 15 µm), meeting the claimed limitations of the first crystal phase and second crystal phase [0185].
Hong teaches that the second fluorescent particles are present in a ratio 3 – 30% [0184], wherein the average crystal phase size of the first and second fluorescent crystal phases would be in a range of 0.277 ((0.97 * 0.1 µm) + (0.03 * 6 µm)) to 6.7 µm ((0.7 * 1 µm) + (0.3 * 20 µm)), which overlaps with the claimed range of the crystal phase (0.3 – 4.7 µm).
Wherein the second fluorescent particles are present in a range of about 3% to about 30% relative to mixing ratio of first and second fluorescent particles, implying that the first fluorescent particles used are present in a range of about 70% to about 97%, which overlaps with the claimed range of 30 – 70% [0210]. Overlapping endpoints are a prima facie case of obviousness (MPEP 2144.05 I) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Lastly, the particle size of the first raw material YAG fluorescent and second raw material YAG fluorescent that are mixed to form a molded body and perform calcining are product by process limitations. ("[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.)(MPEP 2113 I). To this, Hong teaches a rare earth sintered body [0017] with a first crystal phase and second crystal phase that overlap in size with the first and second crystal phase of the product [0185], as well as the mixing ratio [0210]. As such, Hong meets the limitations of the product itself.
However, for purposes of compact prosecution, the examiner notes that Hong teaches the particle size used for the first fluorescent particles is about 100 – 1000 nm which overlaps with the claimed range (0.3 – 1.0 µm) [0212], and the particle size of the second fluorescent particle is about 6 – 20 µm which overlaps with the claimed range (1.1 – 10 µm) [0215].
Hong does not expressly teach the size of the pores [0187]. Hong shows that the sintered body is plate-shaped [Fig 1], but Hong does not teach the thickness. Hong shows that the incident surface and emitting surface are the same [Fig 3], which meets claimed imitation, but Hong does not explicitly teach the ratio of an emitting light diameter to incident light diameter.
Tian teaches a luminescent ceramic comprising a matrix, luminescent centers, and pores [page 16, line 25 – 30], including pores in a similar range to Hong of 1 – 10%. Tian teaches that the pores contained in the luminescent ceramic have a size of 0.8 – 2 µm, which falls within the claimed range [Page 17, line 74 – 78]. Tian teaches that the pores being a size of 0.8 – 2 µm and 1 – 10% ensures lower light loss as well enhances scattering of light and reduces the proportion of direct transmission of incident light so that said light can fully excited the phosphor to emit light [page 17, light 74 – 78].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the polycrystalline fluorescent film of Hong containing pores in a range of 3 – 10% [Hong, 187] and controlled the pore size to be in a range of 0.8 – 2 µm, as taught by Tian. As disclosed by Tian, controlling the pores to this size in this range ensures lower light loss as well enhances scattering of light and reduces the proportion of direct transmission of incident light so that said light can fully excited the phosphor to emit light [page 17, light 74 – 78]. Furthermore, given that Hong and Tian are in the same field of endeavor, a person of ordinary skill in the art would have a reasonable expectation of success in modifying the invention of Hong with the teachings of Tian.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Hong in view of Tian does not explicitly teach the average number of pores per 645 µm2. However, given that Tian discloses a pore size that falls within the claimed range of claim 1 [page 17, line 74 – 78], and Hong has a relative density that falls within the claimed range of claim 3 (implying a same amount of pore/porosity) [0187], there is a reasonable expectation to a person of ordinary skill in the art that Hong in view of Tian would meet the claimed average number of voids (i.e. pores) per 645 µm2 of claim 1 and claim 6.
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 obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). In this case, Hong in view of Tian teaches an identical size and amount (porosity) of the pores as the claimed product (i.e. structure).
Hong shows that the sintered body is plate-shaped [Fig 1], which meets the claimed limitation, but Hong does not teach the thickness. Hong shows that the incident surface and emitting surface are the same [Fig 3], which meets claimed imitation, but Hong in view of Tian does not explicitly teach the ratio of an emitting light diameter to incident light diameter.
Huang teaches a fluorescent ceramic for use in various applications including head lights/lamps [0001 – 0002]. Huang teaches that the fluorescent ceramic contains rare earth aluminate, multiple crystal phases, and pores [0023]. Huang teaches that the fluorescent ceramic is made via sintering [0030]. Lastly, Huang teaches that in practical applications the fluorescent ceramic is generally 0.1 – 0.2 mm (i.e. 100 – 200 µm) [0061], which falls within the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the thickness of the polycrystalline fluorescent body of Hong in view of Tian to a range of 0.1 – 0.2 mm, as taught by Huang. Hong, Tian, and Huang are directed to fluorescent ceramic material containing rare earth aluminate and produced by sintering (same field of endeavor). Furthermore, as disclosed by Huang this thickness is generally used for practical applications and as such, an ordinarily skilled artisan would have a reasonable expectation of success in applying the teachings of Huang to Hong in view of Tian to achieve predictable results.
Hong shows that the incident surface and emitting surface are the same [Fig 3], which meets claimed imitation, but Hong in view of Tian and Huang does not explicitly teach the ratio of an emitting light diameter to incident light diameter.
Nagahama teaches a wavelength conversion member containing oxides and rare earth aluminate [0034, 0035]. Nagahama teaches the wavelength conversion member can be a flat plate shape [0034] and used for head lights/lamps [0069]. Lastly, Nagahama teaches that the diameter of the wavelength conversion member perpendicular to the emitting light (i.e. the emitting surface) should be smaller than 120% of the beam diameter of the incident light laser beam [0006], which overlaps with the claimed range, because color unevenness occurs at the ends of the wavelength conversion member as the area increase [0007].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the sintered fluorescent member of Hong such that the surface perpendicular to the emitting light (i.e. the emitting surface) was smaller than 120% of the beam diameter of the incident light laser beam [0006], as taught by Nagahama. Hong, Tian, Huang, and Nagahama are directed to light conversion members for use in head lights/lamps (i.e. same field of endeavor). Furthermore, Hong explicitly recognizes that color characteristics are an important feature in the disclosure [0007]. As such, an ordinarily skilled artisan would be motivated to apply the teachings of Nagahama to Hong as-modified because controlling the diameter ratio reduces color unevenness that occurs at the ends of the wavelength conversion member, and would have a reasonable expectation of success.
Regarding claim 2, Hong in view of Tian, Huang, and Nagahama teaches the invention as applied in claim 1. Hong teaches first fluorescent crystal can have a composition of (Y1-xCex)3Al5O12 with x being 0.001 – 0.05 [0214] and the second fluorescent crystal can have a composition of (Y1-xCex)3Al5O12 with x being 0.01 – 0.1 [0217]. Wherein the combined composition of the fluorescent crystal phase (including first and second based on the mixing ratio of 3 – 30% second fluorescent crystal [0184]) would have the disclosed composition of Hong with the x value being 0.00397 ((0.97 * 0.001) + (0.03 * 0.01)) to 0.065 ((0.7 *0.05) + (0.3 * 0.1)), which overlaps with the claimed range of “n”, and meets claimed range of “m” (i.e. 0) and “k” (i.e. 1).
Selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05.I).
Regarding claim 3, Hong in view of Tian, Huang, and Nagahama teaches the invention as applied in claim 1. Hong teaches that the relative density is 90 – 96% [0187], which falls within the claimed range.
Regarding claim 5, Hong in view of Tian, Huang, and Nagahama teaches the invention as applied in claim 1. Hong teaches that the pores are formed between the first and second (nano-sized and micron-sized) fluorescent crystals [0187], which meets the claimed limitation.
Regarding claim 7, Hong in view of Tian, Huang, and Nagahama teaches the invention as applied in claim 1. Hong teaches that the reflective polycrystalline fluorescent film contains nano-sized fluorescent crystals, and micro-sized fluorescent crystals, and pores [0187] and does not teach the required inclusion of the other structures, meeting the claimed limitation of “consisting of”.
Regarding claim 8, Hong in view of Tian, Huang, and Nagahama teaches the invention as applied in claim 1. Hong teaches that the film can be used for headlamp that emits white light when blue wavelength range is incident (~wavelength of 380 – 500 nm, which falls within the claimed range), meeting the claimed limitation of a light emitting device with the body of claim 1 and a light emitting source with a wavelength of 350 – 500 nm) [0013].
Regarding claim 9, Hong in view of Tian, Huang, and Nagahama teaches the invention as applied in claim 1. Wherein the second fluorescent particles are present in a range of about 3% to about 30% relative to mixing ratio of first and second fluorescent particles, implying that the first fluorescent particles used are present in a range of about 70% to about 97%, which overlaps with the claimed range of 50 – 70% [0210]. Overlapping endpoints are a prima facie case of obviousness (MPEP 2144.05 I) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Claims 1 – 3 and 5 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hong (KR2018/091679, using espacenet translation) in view of Duan (WO2020/052256, using espacenet translation) and Huang (WO2019/0477822, using espacenet translation, cited in the Office Action of 08/21/2024), in further view of Nagahama (JP2009/289976, using espacenet translation).
It is noted that Duan designates the United States and possesses a priority date of 09/14/2018 and therefore is available under 35 U.S.C. 102(a)(2), see MPEP 2154.01(a)
Regarding claims 1 and 6, Hong teaches a reflective polycrystalline fluorescent film produced by sintering [0017], meeting the claimed limitation of sintered body.
Hong teaches that the reflective polycrystalline fluorescent film contains first fluorescent crystals, and second fluorescent crystals, and pores [0187]. The first fluorescent crystal is 10 – 1000 nm, which overlaps with the claimed range (0.1 – 5 µm), and the second fluorescent crystal is 6 – 20 µm, which overlaps with the claimed range (1.1 – 15 µm), meeting the claimed limitations of the first crystal phase and second crystal phase [0185].
Hong teaches that the second fluorescent particles are present in a ratio 3 – 30% [0184], wherein the average crystal phase size of the first and second fluorescent crystal phases would be in a range of 0.277 ((0.97 * 0.1 µm) + (0.03 * 6 µm)) to 6.7 µm ((0.7 * 1 µm) + (0.3 * 20 µm)), which overlaps with the claimed range (0.3 – 4.7 µm).
Wherein the second fluorescent particles are present in a range of about 3% to about 30% relative to mixing ratio of first and second fluorescent particles, implying that the first fluorescent particles used are present in a range of about 70% to about 97%, which overlaps with the claimed range of 30 – 70% [0210]. Overlapping endpoints are a prima facie case of obviousness (MPEP 2144.05 I) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Lastly, the particle size of the first raw material YAG fluorescent and second raw material YAG fluorescent that are mixed to form a molded body and perform calcining, are product by process limitations. ("[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.)(MPEP 2113 I). To this, Hong teaches a rare earth sintered body [0017] with a first crystal phase and second crystal phase that overlap in size with the first and second crystal phase of the product [0185], as well as the mixing ratio [0210]. As such, Hong meets the limitations of the product itself.
However, for purposes of compact prosecution, the examiner notes that Hong teaches the particle size used for the first fluorescent particles is about 100 – 1000 nm which overlaps with the claimed range (0.3 – 1.0 µm) [0212], and the particle size of the second fluorescent particle is about 6 – 20 µm which overlaps with the claimed range (1.1 – 10 µm) [0215].
Hong does not expressly teach the size of the pores [0187]. Hong shows that the sintered body is plate-shaped [Fig 1], but Hong does not teach the thickness. Hong shows that the incident surface and emitting surface are the same [Fig 3], which meets claimed imitation, but Hong does not explicitly teach the ratio of an emitting light diameter to incident light diameter.
Duan teaches a fluorescent ceramic [0001]. Duan teaches that the ceramic is a rare earth aluminate based fluorescent [0048]. Additionally, Duan teaches that a pore phase exists in a similar amount to Hong of 1 – 10% [0046]. Duan further teaches that the pore phase has a size of 0.5 – 1.5 µm, which falls within the claimed range [0045]. Duan teaches that controlling the pores to this size and range ensures light conversion efficiency of the fluorescent ceramic and minimizes backscattering [0045, 0046]
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the polycrystalline fluorescent film of Hong containing pores in a range of 3 – 10% [Hong, 187] and controlled the pore size to be in a range of 0.5 – 1.5 µm, as taught by Duan. As disclosed by Duan, controlling the pores to this size in this range ensures light conversion efficiency of the fluorescent ceramic and minimizes backscattering [0045, 0046]. Furthermore, given that Hong and Duan are in the same field of endeavor, a person of ordinary skill in the art would have a reasonable expectation of success in modifying the invention of Hong with the teachings of Duan.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Hong does not explicitly teach the average number of pores per 645 µm2. However, given that Duan discloses a pore size that falls within the claimed range of claim 1 [page 17, line 74 – 78] and Hong teaches a relative density that falls within the claimed range of claim 3 (implying a same amount of pore/porosity) [0187], there is a reasonable expectation to a person of ordinary skill in the art that Hong in view of Duan would meet the claimed average number of voids (i.e. pores) per 645 µm2 of claim 1 and claim 6.
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 obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (See MPEP 2112.01)). In this case, Hong in view of Duan teaches an identical size range and total amount (porosity) of the pores as the claimed product (i.e. structure).
Hong shows that the sintered body is plate-shaped [Fig 1], which meets the claimed limitation, but Hong does not teach the thickness. Hong shows that the incident surface and emitting surface are the same [Fig 3], which meets claimed imitation, but Hong in view of Duan does not explicitly teach the ratio of an emitting light diameter to incident light diameter.
Huang teaches a fluorescent ceramic for use in various applications including head lights/lamps [0001 – 0002]. Huang teaches that the fluorescent ceramic contains rare earth aluminate, multiple crystal phases, and pores [0023]. Huang teaches that the fluorescent ceramic is made via sintering [0030]. Lastly, Huang teaches that in practical applications the fluorescent ceramic is generally 0.1 – 0.2 mm (i.e. 100 – 200 µm) [0061], which falls within the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the thickness of the polycrystalline fluorescent body of Hong in view of Duan to a range of 0.1 – 0.2 mm, as taught by Huang. Hong, Duan, and Huang are directed to fluorescent ceramic material containing rare earth aluminate and produced by sintering (same field of endeavor). Furthermore, as disclosed by Huang this thickness is generally used for practical applications and as such, an ordinarily skilled artisan would have a reasonable expectation of success in applying the teachings of Huang to Hong in view of Duan to achieve predictable results.
Hong shows that the incident surface and emitting surface are the same [Fig 3], which meets claimed imitation, but Hong in view of Duan and Huang does not explicitly teach the ratio of an emitting light diameter to incident light diameter.
Nagahama teaches a wavelength conversion member containing oxides and rare earth aluminate [0034, 0035]. Nagahama teaches the wavelength conversion member can be a flat plate shape [0034] and used for head lights/lamps [0069]. Lastly, Nagahama teaches that the diameter of the wavelength conversion member perpendicular to the emitting light (i.e. the emitting surface) should be smaller than 120% of the beam diameter of the incident light laser beam [0006], which overlaps with the claimed range, because color unevenness occurs at the ends of the wavelength conversion member as the area increase [0007].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the sintered fluorescent member of Hong such that the surface perpendicular to the emitting light (i.e. the emitting surface) was smaller than 120% of the beam diameter of the incident light laser beam [0006], as taught by Nagahama. Hong, Duan, Huang, and Nagahama are directed to light conversion members for use in head lights/lamps (i.e. same field of endeavor). Furthermore, Hong explicitly recognizes that color characteristics are an important feature in the disclosure [0007]. As such, an ordinarily skilled artisan would be motivated to apply the teachings of Nagahama to Hong as-modified because controlling the diameter ratio reduces color unevenness that occurs at the ends of the wavelength conversion member, and would have a reasonable expectation of success.
Regarding claim 2, Hong in view of Duan, Huang, and Nagahama teaches the invention as applied above in claim 1. Hong teaches first fluorescent crystal can have a composition of (Y1-xCex)3Al5O12 with x being 0.001 – 0.05 [0214] and the second fluorescent crystal can have a composition of (Y1-xCex)3Al5O12 with x being 0.01 – 0.1 [0217]. Wherein the combined composition of the fluorescent crystal phase (including first and second based on the mixing ratio of 3 – 30% second fluorescent crystal [0184]) would have the disclosed composition of Hong with the x value being 0.00397 ((0.97 * 0.001) + (0.03 * 0.01)) to 0.065 ((0.7 *0.05) + (0.3 * 0.1)), which overlaps with the claimed range of “n”, and meets claimed range of “m” (i.e. 0) and “k” (i.e. 1).
Selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05.I).
Regarding claim 3, Hong in view of Duan, Huang, and Nagahama teaches the invention as applied in claim 1. Hong teaches that the relative density is 90 – 96% [0187], which falls within the claimed range.
Regarding claim 5, Hong in view of Duan, Huang, and Nagahama teaches the invention as applied in claim 1. Hong teaches that the pores are formed between the first and second (nano-sized and micron-sized) fluorescent crystals [0187], which meets the claimed limitation.
Regarding claim 7, Hong in view of Duan, Huang, and Nagahama teaches the invention as applied in claim 1. Hong teaches that the reflective polycrystalline fluorescent film contains nano-sized fluorescent crystals, and micro-sized fluorescent crystals, and pores [0187] and does not teach the required inclusion of the other structures, meeting the claimed limitation of “consisting of”.
Regarding claim 8, Hong in view of Duan, Huang, and Nagahama teaches the invention as applied in claim 1. Hong teaches that the film can be used for headlamp that emits white light when blue wavelength range is incident (~wavelength of 380 – 500 nm, which falls within the claimed range), meeting the claimed limitation of a light emitting device with the body of claim 1 and a light emitting source with a wavelength of 350 – 500 nm) [0013].
Regarding claim 9, Hong in view of Duan, Huang, and Nagahama teaches the invention as applied in claim 1. Wherein the second fluorescent particles are present in a range of about 3% to about 30% relative to mixing ratio of first and second fluorescent particles, implying that the first fluorescent particles used are present in a range of about 70% to about 97%, which overlaps with the claimed range of 50 – 70% [0210]. Overlapping endpoints are a prima facie case of obviousness (MPEP 2144.05 I) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Hong states that the mixing ratio of the second fluorescent material is 3 – 30% but does not teach any mixing ratio above 30%. Therefore, Hong does not meet the claimed invention (page 3 – 4). This is respectfully not found persuasive.
While the second fluorescent particles are present in a range of about 3% to about 30%, the claimed limitation of 30 – 70% is directed to the first raw material (i.e. first crystal phase). Hong teaches that the range of about 3% to about 30% is the second fluorescent material relative to mixing ratio of first and second fluorescent particles. As such, this implies that the first fluorescent particles used are present in a range of about 70% to about 97%, which overlaps the endpoints of the claimed range of 30 – 70% [0210]. Overlapping endpoints are a prima facie case of obviousness (MPEP 2144.05 I) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Applicant argues that the Nagahama does not disclose or suggest reducing the spread of light by controlling the light diameter ratios and is instead directed to a different purpose of color unevenness. However, "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (MPEP 2145 II). As such, applicant’s argument that the benefit disclosed by Nagahama is different than the instant invention’s reason for controlling the light diameter ratio does not distinguish the claimed invention. Nagahama teaches that the diameter of the wavelength conversion member perpendicular to the emitting light (i.e. the emitting surface) should be smaller than 120% of the beam diameter of the incident light laser beam [0006], which overlaps with the claimed range, and even preferably mentions it should be less than 110% [0064]. By controlling the diameter of the emitting surface, this is also necessarily controlling the diameter of the light being emitted from said surface. Nagahama states that reducing the diameter of the emitting surface relative to the incident light diameter reduces color unevenness that occurs at the ends of the wavelength conversion member as the area increase [0007].
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738