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 .
Status of Claims
Claims 1, 3 and 15 have been amended. No new claims are added. Claim 12 is cancelled. Claims 1-11, and 13-20 remain pending.
Response to Remarks
Claim Rejections – 35 USC 112
In light of the amendments to claims field 04/06/2026, the previous rejection under 112(b) is withdrawn.
Claims Rejections – 35 USC § 103(a)
After further consideration of the newly filed amendments to independent claims 1 and 15 (Response filed 04/06/2026), a new rejected has been made below in view of WANG et al. under 35 USC § 103(a).
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.
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.
Claims 1-10, 12-14 rejected under 35 U.S.C. 103 as being unpatentable WANG et al.1 in view of CARRO-TEMBOURY2.
Regarding claim 1, WANG discloses a system comprising:
a composition comprising at least two different metal elements adsorbed into an inert encapsulating material (zeolites functionalized with a plurality of lanthanides Ln3+ ions and/or dopants; abstract; Table 1),
wherein the identity of the metal elements and the mass ratio of the metal elements relative to each other is an identifying marker of the composition (inherent to any multiply-doped zeolite, where the identity and mass ratio are inherent properties of any combination and thus confer the identity of the composition),
wherein separate embodiments of doped zeolites comprises at least two different elements cerium (Ce3+/Tb3+, rows 2 and 5 of Table 1) and lanthanum (Nd3+/Y3+/La3+/Gd3+; row 18 of Table 1).
WANG does not specify a single zeolite comprising two different metal elements including calcium, cerium, chromium, cobalt, copper, iron, lanthanum, manganese, nickel, and/or strontium. However, the simple substitution of one known element (e.g. terbium from the example of table 1, row 2) for another (e.g. lanthanum (table 1, row 18)) to obtain predictable results (multi-doped zeolite of a specific luminescent spectral response (see emission color) and quantum efficiency (see QY%)) would have been obvious to one of ordinary skill in the art at the time of filing. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). Additionally, WANG does not explicitly disclose the invention comprising a taggant. In the same field of metal-organic framework (MOF) devices, CARRO-TEMBOURY discloses a zeolite taggant for using in authentication systems which applies the lanthanide zeolites as taggants (abstract) within a product, with the benefit of lanthanide zeolites having stability, and narrow excitation/emission bands for authentication applications. In light of the teachings of CARRO-TEMBOURY, it would have been obvious to one of ordinary skill in the art at the time of filing to combine with the teachings of WANG.
Regarding claim 2, WANG discloses the inert encapsulating material comprising an inert zeolite and the metal elements comprise metal ions (zeolite with lanthanides; abstract).
Regarding claim 3, WANG discloses adjusting the amount of ions coordinated within the linker to modulate the intensity and wavelength of light emissions (page 9773), but does not specify adjusting the relative concentrations of the different metal elements by about 5%. It would have been obvious to one of ordinary skill in the art at the time of filing to modify the concentration of metal elements based on the application at hand in order to achieve a desired emission profile.
Regarding claim 4, WANG further discloses 3 or more different elements (see Table 1, page 9767).
Regarding claim 5, WANG discloses substantially the same structure at set forth in the claim 1, and thus is inherently non-toxic inherent (see MPEP 2112.01(I-II)).
Regarding claim 6, WANG discloses an inert coating on a portion of the taggant (zeolite).
Regarding claim 7, WANG discloses the inert coating comprising a metal oxide (zeolite).
Regarding claims 8, 9 and 11, WANG discloses substantially the same structure as the claim, and thus the identification system is capable of being incorporated in a surface or coating of an object to be identified (substantially the same structure, and thus inherently possess the properties described above, see MPEP 2112.01(I-II)). It is noted by the examiner that the claim as currently constructed does not explicitly include the object to be identified, coating, ink, layers, etc. Thus, the claim phrase is a recitation of intended use of the apparatus, which is not structurally limiting of the device per se. Accordingly, the device of WANG is capable of being used according to the intended recitation of the claim. Additionally, WANG discloses the materials incorporated in a polymer matrix (page 9774).
Regarding claim 10, WANG discloses the system as less than 1mm thickness (on the order of nanometers in scale; FIG 8a).
Regarding claim 12, WANG discloses the elements comprising lanthanides (Ce, La; Table 1).
Regarding claim 13, CARRO-TEMBOURY discloses an object comprising the identification system of claim 1 (abstract).
Regarding claim 14, WANG discloses the object comprises a good in commerce (page 9774).
Allowable Subject Matter
Claims 15-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter
Regarding claim 15, the closest prior art, MA et al. (US 20130221277 A1), discloses a method of identifying an object comprising applying a taggant to an object (identification taggant applied to an ink, [0002]), wherein the taggant comprises at least two different metal elements (two different metal elements; [0033]); wherein the identification of the metal elements and the ratio of the metal elements is an identifying marker of the taggant (identification of the element through artificial abundance exceeds natural abundance, [0033-0035]; artificial ratio of isotopes exceeds natural ratio; [0033]); and detecting the identification of the metal elements and the ratio of the metal elements of the taggant (detecting fluorescence light using an IR source; [0034]). The prior art fails to disclose or suggest, in combination with the other claimed steps, wherein the identity of the metal elements and the mass ratio of the metal elements relative to each other is an identifying marker of the taggant; and detecting the identity of the metal elements and the mass ratio of the metal elements relative to each other of the taggant.
Claims 16-20 are allowed on dependence.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CASEY BRYANT whose telephone number is (571)270-7329. The examiner can normally be reached M-F // 7-3P EST.
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CASEY BRYANT
Primary Examiner
Art Unit 2884
/CASEY BRYANT/Primary Examiner, Art Unit 2884
1 WANG et al. “Luminescent materials of zeolite functionalized with lanthanides”, CrystEngComm, 2014,16,9764–9778.
2 CARRO-TEMBOURY et al., “An optical authentication system based on imaging of excitation-selected lanthanide luminescence,” Science Advances, 26 Jan 2018, (4) 1, DOI: 10.1126/sciadv.1701384.
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