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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 22 December 2025 and 27 January 2026 has been entered.
The claims filed 27 January 2026 replace those filed 22 December 2025. The cancelation of claims 39 and 40 in the amendment of 27 January 2026 overcome the objections to the specification for failing to provide proper antecedent basis for the claimed subject matter. The amendments to claims filed 27 January 2026 have overcome the objections to the claims, the 35 USC 112 rejections over claims 21-29 and 39-40, the 35 USC 112(a) and (b) rejections over claims 37 and 38 with respect to the wording with implied the amount of thulium doped nanoparticles in the doped nanoparticles is at least 4% or at least 8%, and the art rejection over claims 25-28 and 39-41. Applicants arguments in the response filed 27 January 2026 with respect to the art rejection over Liu et al are convincing and therefore that rejection is withdrawn.
The terminal disclaimer filed on 27 January 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 17/531,266 has been reviewed and is accepted. The terminal disclaimer has been recorded and the provisional obviousness-type double patenting rejection is withdrawn.
Applicant's arguments with respect to the 35 USC 112 rejections over claims 30-38 and 41 and the art rejection over claims 21-23 and 29 have been fully considered but they are not persuasive. The declaration under 37 CFR 1.132 filed 27 January 2026 is insufficient to overcome the rejection of claims 21-23 and 29 based upon CN 108384547 as set forth in the last Office action for the reasons discussed “Response to Arguments” section under the rejection based on CN 108384547.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Interpretation
The wording of “…% thulium-doped” in claims 26, 29, 37 and 38 is being interpreted as meaning the amount of thulium present in the base material or nanoparticles as a dopant.
Claim Rejections - 35 USC § 112
Claim 41 is 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.
There are no other optical sensitizers taught in the specification besides trivalent ytterbium which means the subject matter of claim 41, which encompasses all known optical sensitizers, is not supported and thus is new matter.
Claims 30 and 33-38 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.
Claims 30 and 33-38 now teach a method for inducing photo avalanching by upconverting the absorbed excitation wavelength comprising providing a near infrared excitation wavelength to a nanoparticle having thulium doped nanocrystals and a shell. This process is different from the process disclosed in the originally filed disclosure of a method for inducing photo avalanching comprising providing a near infrared excitation wavelength of greater than about 1060 nm to upconverting thulium doped nanoparticles having a shell, where the amount of thulium dopant is at least 4%. The claimed nanoparticles having thulium doped nanocrystals and a shell which are used in the claimed process are not limited to the originally disclosed upconverting luminescent thulium doped nanoparticles, wherein the nanoparticles contain at least 4% thulium and have a shell. The claimed nanoparticles are any nanoparticles having a shell contains any amount of thulium. The originally disclosed teachings of the excitation wavelength range of greater than about 1060 nm does not support the newly claimed “near-infrared excitation range, which covers the entire near infrared wavelength range of about 750-2500 nm. The newly claimed process is not supported by the originally filed disclosure and thus are new matter.
Claims 30-38 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.
Claims 30-38 are indefinite since not all thulium doped nanocrystals will exhibit photon avalanching by upconverting an absorbed wavelength when excited by near IR wavelengths or by wavelengths in the ranges of claims 31 and 32. Therefore the claims include a very large number of nanosized thulium doped materials that do not and cannot induce photon avalanching by upconverting an absorbed wavelength, when excited by near IR wavelengths or by wavelengths in the ranges of claims 31-32. The claims include luminescent down converting nanoparticles as well as non-luminescent nanoparticles. This very large number of thulium doped nanocrystals that do not exhibit the claimed property make the scope of the claims unclear and therefore indefinite.
Response to Arguments
Applicants’ with respect to the above rejections have been considered but are not convincing.
Applicants argues, with respect to the rejections based on 35 USC 112(a), they are not limiting the scope of the claim to a single exemplary configuration and that the specification teaches a recipe for the creation of a photon avalanching nanoparticle. Applicants argues they should not limit the scope of the claims while providing third-party with a road map for creating photon avalanching nanoparticles not covered by the claims. Basically applicants argument is that the claims should not be limited to what is 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 but that they should also include what would have been obvious to one skilled in the relevant art based on the teachings in the specification. The fact the subject matter of claims 30-38 and 41 may be obvious to one skilled in the relevant art does not meet the written description requirement of 35 USC 112(a), which requires the claimed subject matter of this claim to be supported by the originally filed disclosure. As discussed above, the limitation of claim 41 is not found in the originally filed disclosure and the process of claims 30-38 are not supported by the specification. Description requirement of 112 is contrasted with obviousness under 103, i.e. even though it may have been obvious to one of ordinary skill in the art to arrive at applicant's invention by reading the specification and through experimentation, this does not establish that applicant had possession of the invention at the time of filing. In re Blaser 194 USPQ 122 (CCPA 1977); In re Winkhaus 188 USPQ 129 (CCPA 1975). Subject matter that is obvious from reading the specification/originally filed disclosure but not disclosed in the specification/originally filed disclosure does not establish that applicant had possession of the obvious subject matter at the time of filing. Thus the claimed subject matter, which applicants are implying would have been obvious from reading the specification/originally filed disclosure but not found in the specification does not meet the written description requirement of 35 USC 112(a). Applicants have not shown where in the specification the claimed subject matter is actually disclosed. The rejections are maintained.
Applicants arguments with respect to the 35 USC 112(b) rejection is that the claims 30-38 are not indefinite since the claims includes nanoparticles that will exhibit photo avalanching by upconverting the absorbed NIR excitation wavelength. This fact does not overcome the indefinite rejection which is that due to the very large number of nanoparticle having thulium doped nanocrystals and a shell that cannot be induced to exhibit photo avalanching by upconverting the absorbed NIR excitation wavelength which means the scope of the claims is indefinite. Applicants also argue the claims should not be artificially restricted to one specific nanoparticle. This argument does not address the rejection that the scope of the claim is indefinite due to the very large number of nanoparticles that cannot be used in the claimed process. Limiting the composition of nanoparticles to such that the majority of claimed nanoparticles will exhibit photo avalanching by upconverting the absorbed NIR excitation wavelength so that the scope of the claims is clear is not artificially restricting the claims. It is making the metes and bounds of the claimed process clear. The rejection is maintained.
Claim Rejections - 35 USC § 102
Claims 21-24 and 29 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by CN 108384547.
Example 4 teaches producing, or configuring, up-converting luminescent nanoparticles, or nanocrystals, of NaYF4:10% Tm cores which have shells of NaYbF4 and NaYF4 thereon. The NaYF4 shell is a passivating shell. The atomic concentration of thulium in this compound is 10% and falls within the range of claims 21 and 29. The taught NaYbF4 shell reads upon the shell of claim 21 and the outer passivating shell of NaYF4 reads upon the passivating shell of claim 24. The taught core, including the base material, is compositionally identical to what is disclosed in the specification. Since the taught core is identical to that disclosed by applicants, it must exhibit photon avalanching. There is no indication in the reference nor art that the NaYbF4 shell affects the excitation wavelength of the taught nanoparticle nor the photon avalanching behavior of the core. Thus the taught nanoparticles would be expected be photon avalanching and to have a excitation wavelength within the ranges of claim 22 and 23, absent any showing to the contrary. The reference anticipates the claimed nanoparticles
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.
Claims 21-24 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over CN 108384547.
This reference teaches up converting luminescent nanoparticles, or nanocrystals, of NaLnF4:10-50% A cores having a first shell of NaYbF4 and an outer passivating shell of NaLnF4, where in Ln is at least one of Y, Gd and Lu and A is a dopant and is selected from Er+3 or Tm+3. Thus the reference suggests nanoparticles of NaYF4 cores doped with 10-50% thulium having a first shell of NaYbF4 and an outer passivating shell of NaYF4. The taught core reads upon the claimed based material doped with thulium and the taught amount of thulium falls within that of claims 21 and 29. The taught NaYbF4 shell reads upon the shell of claim 21 and the outer passivating shell of NaYF4 reads upon the passivating shell of claim 24. The taught core, including the base material, is compositionally identical to what is disclosed in the specification. Since the taught core is identical to that disclosed by applicants, it must exhibit photon avalanching. There is no indication in the reference nor art that the NaYbF4 shell affects the excitation wavelength of the taught nanoparticle nor the photon avalanching behavior of the core. Thus the taught nanoparticles would be expected be photon avalanching and to have a excitation wavelength within the ranges of claim 22 and 23, absent any showing to the contrary. The reference anticipates the claimed nanoparticles. The reference suggests the claimed nanoparticles.
Response to Arguments
Applicants’ arguments with respect the rejection have been considered but are not convincing. The declaration under 37 CFR 1.132 and the arguments are insufficient to overcome this rejection because the assert that the taught and suggested nanoparticles do not meet the three criteria required for a material to exhibit photon avalanche but do not provide any experimental data supporting this assertion. The reference shows that the taught nanoparticles have different emission behavior than the conventional Yb and either Tm or Er codoped sodium rare earth fluoride upconverting nanoparticles. The arguments and the declaration refer to an article which teaches exciting the taught nanoparticles at 980 nm. While this article does not show photon avalanche at this wavelength, it does not show that photon avalanches could not or does not occur at other excitation wavelengths, such as at the claimed range of above 1064 nm. The rejection is maintained.
Allowable Subject Matter
Claims 25-27 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
There is no teachings or suggestion in the cited art of record of an upconverting luminescent nanoparticles which exhibits photon avalanching comprising a base material doped with 100% thulium and a shell. There is no teachings or suggestion in the cited art of record of an Yb+3 free upconverting luminescent nanoparticles which exhibits photon avalanching comprising a base material doped with at least 4 % thulium and a shell. There is no teachings or suggestion in the cited art of record of an upconverting luminescent nanoparticles which exhibits photon avalanching comprising a base material doped with at least 4% thulium and a shell, wherein the nanoparticles extends for less than 100 nm in a 3-D space, i.e. has a particle size of less than 100 nm.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
2/20/25