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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 2 and 4, in the reply filed on 3 March 2026 is acknowledged.
Claims 3 and 5-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse.
Information Disclosure Statement
The Korean Notice of Allowance cited in the information disclosure statement filed 29 November 2023 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
In the information disclosure statements of 29 November 2023 and 13 May 2025, applicants list the Japanese, Chinese and Korean patent documents and their English abstracts separately. The English abstracts are considered as part of these patent documents and should not be listed separately. Accordingly, the citations of the English abstracts on forms PTO/SB/08a have lines drawn through them. It is noted that the Japanese, Chinese and Korean patent documents have been considered with respect to the provided English abstracts.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
The drawings are objected to because the shading of the lines in figure 1 is so similar that hey look identical and thus it cannot be determine which line in the graph corresponds with which Application Example.
The photograph of figure 2 is blurry and thus the writing therein cannot be read. In addition, the purpose of figure 2 is unclear since it is a picture of an IR detector and is unrelated to the claimed inventions.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
The first full paragraph on page 2 of the specification discusses patent applications and gives their numbers. The country in which these patent applications were filed is missing and needs to be provided.
For Chemical Formula 2, the amounts of the Zn, Mg and Ce in M are not taught. Thus it is unclear what amounts of each of these elements is present where the sum of molar amount of each of the three elements equals to the value of z. Furthermore, it is unclear where M is present in the material in that it is unclear if M partially replaces La and/or Si or if M is an interstitial dopant.
Pages 3 and 6 teach M in Chemical Formula 2 is Zn, Mg and Ce and the disclosed process for producing Chemical Formula 2 teaches the precursor mixture includes Zn, Mg and Ce. Thus these teachings indicate that the material having Chemical Formula 2 must include zinc, magnesium and cerium. Embodiment 2 teaches producing lanthanum fluoride-silica compounds containing with Er, Yb and Zn or lanthanum fluoride-alumina compounds containing with Er, Yb and Zn. In view of tis embodiment, it is unclear if M is all three of Zn, Mg and Ce, as taught on pages 3 and 6 or if M is one of Zn, Mg and Ce as implied by Embodiment 2.
The application number of the PCT published application listed in the last paragraph on page 6 is incorrect. It should be WO 2020153762A1. In the title for Embodiment 2, “prolide” should be “fluoride”.
Appropriate correction is required.
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 1, 2 and 4 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.
Claim 1 teaches a white to pale colored IR excited IR emitting material that emits light in the range of about 1000-1700 nm when excited by wavelengths in the range of about 800-1000 nm, and does not emit light in the visible range of about 380-780 nm. Depend claim 4 implicitly includes these teachings. Thus these claims define the claimed material in terms of the color and luminescence properties of the material. Accordingly, these composition claims are indefinite since they define the material in terms of properties alone. Ex parte Spacht 165 USPQ 409 (PO BdPatApp 1969); Ex parte Slob 157 USPQ 172 (PO BdPatApp 1967); Ex parte Pulvari 157 USPQ 169 (PO BdPatApp 1966).
Chemical Formula 2 in claim 2 does not teach the amounts of the Zn, Mg and Ce in M are not taught. Thus it is unclear what amounts of each of these elements is present where the total molar amount of these three elements equals to the value of z. Furthermore, it is unclear where M is present in the material in that it is unclear if M partially replaces La and/or Si or if M is an interstitial dopant. For these reasons, claim 2 is indefinite.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Buissette et al.
This article teaches luminescent nanoparticles of Y0.75Yb0.25VO4, which can be rewritten as YVO4:Yb0.25. This material has a formula that falls within Chemical Formula 1. Figure 2(b) shows that this material emits light in the range of 1000-1020 nm under 970 nm. Thus the taught material meets the excitation and emission properties set forth in claim 1. While the article does not teach the taught material does not emit visible light in the range of about 380-780 nm or that the nanoparticles have a white to pale coloring, one of ordinary skill in the art would expect the taught material to inherently have these properties since the taught material has a formula that falls within Chemical Formula 1, absent any showing to the contrary. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (I) and (II). The article anticipates the claimed material.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by U.S. patent 4,202,491 or WO 2020/153762.
Both of these references teach white IR excited IR emitting materials (WO: para 152; US (col. 2 lines 42-43). The taught materials are materials that are excited by about 800 nm wavelength and emit a wavelength of about 1050 nm or 1540 nm; a material excited by about 970 nm wavelength and emit a wavelength of about 1540 nm; and a material excited by about 980 nm wavelength and emit a wavelength of about 1015 nm. It is clear for the teachings in both of these references that the taught material do not emit visible light in the range of about 380-780 nm since emission in these wavelength would defeat the purpose of the taught material, as discussed in columns 1 and 2 of U.S. patent 4,202,491 and pages 1-3 of WO 2020/153762. These taught material all meet the requirements of claim 1 and therefore clearly anticipate the claimed material.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/153762 in view of U.S. patent 5,611,958.
WO 2020/153762 teaches security inks containing a white IR excited IR emitting material that is excited by about 980 nm wavelength and emit a wavelength of about 1015 nm, and which does not emit visible light in the range of about 380-780 nm. The taught ink is for forgery and adulteration prevention. This reference teaches the material has an average particle size of less than 5 microns. It does not teach the D90 size of the taught material, which is 90% of the maximum particle size in the cumulative particle size distribution. U.S. patent 5,611,958 teaches security inks for forgery and adulteration prevention which contains a white IR excited IR emitting material. This U.S. patent teaches the particles of IR excited IR emitting materials used in security inks should have a size of less than 5 microns and the reasons for this in the background section. Given these teachings in U.S. patent 5,611,958, one of ordinary skill in the art would have found it obvious to ensure all the taught particles of the IR excited IR emitting material in the ink of WO 2020/153762 is less than 5 microns. This means that one of ordinary skill in the art would want 90% of the maximum particle size in the cumulative particle size distribution to have a size of less than 5 microns. This suggests size range of less than 5 microns overlaps that of claim 4, since this suggested size does not teaches a minimum size. 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. The suggests material where 90% of the maximum particle size in the cumulative particle size distribution to have a size of less than 5 microns suggests that of claim 4.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
4/9/26
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