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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. FI20215742 and PCT/FI2022/050422, filed on June 23, 2021, and June 17, 2022, respectively.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: instances where the “°” symbol is transcribed as “o” for temperatures throughout.
Appropriate correction is required.
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 1-12 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Lastusaari (US PGPub 20200109332) in view of Zahoransky et al.
Regarding claim 1, teaches synthesis and use of a radiation sensing material known as a hackmanite, a variety of sodalite material (paragraph [0066]) represented by the following formula (paragraphs [0021-64]): “(M′)8M″6M″′6O24(X,S)2:M″″”. M′ represents a monoatomic cation of an alkali metal selected from Group 1 of the IUPAC periodic table of the elements, or any combination of such cations (thus corresponds to M1’ of the instant). Throughout the rest of examination, examiner uses the ’ and ′ as equivalent symbols. M″ represents a trivalent monoatomic cation of an element selected from Group 13 of the IUPAC periodic table of the elements, or of a transition element selected from any of Groups 3-12 of the IUPAC periodic table of the elements, or any combination of such cations (thus corresponds to M’’ of the instant as obvious to exclude the transition elements in disclosed embodiments of Lastusaari et al). M″′ represents a monoatomic cation of an element selected from Group 14 of the IUPAC periodic table of the elements, or any combination of such cations (thus corresponds to M’’’ of instant). X represents an anion of an element selected from Group 16 of the IUPAC periodic table of the elements, or any combination of such anions or X represents an anion of an element selected from a group consisting of F, Cl, Br, and I, or any combination of such anions (thus corresponds to X and X’ of the instant). S also corresponds to a specific case of X’ in the instant. M″″ represents a cation of an element selected from rare earth metals of the IUPAC periodic table of the elements, or from transition metals of the IUPAC periodic table of the elements, or any combination of such cations, or wherein M″″ is absent (thus corresponds to M’’’’ of the instant). O24 is also shared between both. Lastusaari, by having M’’ and M’’’ included at 6 and X and S included at 2, teaches a specific example whereby b of the instant application = 6 , whereby c*d=1, and n=1. Since S can be considered X’, c in this case is = 2 and thus d is 0.5, satisfying limitations as claimed. Lastusaari does not teach inclusion of Group 2 or alkaline earth metals for the M2’ of the instant nor considerations for an equivalent of “a” outside of having the Group 1 elements included at a total amount of 8, which is shared between the molar total of M1’ and M2’ and thus obvious to keep consistent. Zahoransky discloses and characterizes the luminescence and tenebrescence of sodalite materials which have general formula M8(T’T’’O4)6X2 (introduction). M typically contains mono- to divalent elements such as Ca, K, Li, Na, Sr, Mn and Zn. The T site contains tetrahedrally coordinated elements such as Al, Si, B and Be. Considerable variations occur on the extra framework-site, X, where anions or molecules such as Cl−, Br−, I−, S2−, SO4 2− CO3 2− and OH− are present. From Table 1, Zahoransky discloses naturally found sodalite compositions which include Haüyne and Lazurite, matching the composition of the disclosed formula (I) of the instant application. Thus, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to include Ca with the disclosed M’ cations as a known elemental component of sodalite materials to produce a radiation sensing material in the process of Lastusaari. Thus Lastusaari and Zahoransky teach the claimed “A radiation sensing material represented by the following formula (I): (M1’8-2aM2’a)(M’’14-(4b/3)M’’’b)O24(X2-dcdX’nc-):M’’’’ formula (I) wherein M1' represents a monovalent monoatomic cation of an alkali metal selected from Group 1 of the IUPAC periodic table of the elements, or any combination of such cations; M2' represents a divalent monoatomic cation of an alkaline earth metal selected from Group 2 of the IUPAC periodic table of the elements, or any combination of such cations; M" represents a trivalent monoatomic cation of an element selected from Group 13 of the IUPAC periodic table of the elements, or any combination of such cations; M"' represents a monoatomic cation of an element selected from Group 14 of the IUPAC periodic table of the elements, or any combination of such cations; X represents an anion of an element selected from the halogens of Group 17 of the IUPAC periodic table of the elements, or any combination of such anions; X' represents an anion of one or more elements selected from the chalcogens of Group 16 of the IUPAC periodic table of the elements, or any combination of such anions; M"" represents a dopant cation of an element selected from rare earth metals of the IUPAC periodic table of the elements, or from transition metals of the IUPAC periodic table of the elements, or of Ba, Sr, TI, Pb, or Bi, or any combination of such cations, or wherein M"" is absent; and a is a value of 0.05 -4 b is a value of 1-10 c is a value of 1, 2, 3, or 4 d is a value of above 0 - 2 n is a value of 1, 2, 3, or 4.”
Regarding claim 2, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. Furthermore, by following a sodalite composition disclosed by Zahoransky as described in the rejection of claim 1, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to add Ca as a known elemental component in sodalites to produce a radiation sensing material. Addition of Ca would produce a sodalite of composition (Na,Ca)8Si6Al6O24(X,S)2:M’’’’. The valencies of Na (M1’), Ca (M2’), Si (M’’’), Al (M’’), X (X), and S (X’) are: 1+, 2+, 4+, 3+, -1, and -2 respectively. Thus, Lastusaari and Zahoransky satisfy the claimed “The radiation sensing material of claim 1, wherein the charge of M1' is 1+; M2' is 2+; M" is 3+; M’" s 4+; X is 1-; and X' is 0.5- - 3.5-“.
Regarding claim 3, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. Furthermore, Lastusaari states in paragraphs [0049] and [0075] that in certain embodiments M’ represents only a monoatomic cation of Li, K, Rb, or Na. Thus, Lastusaari and Zahoransky teach the claimed “The radiation sensing material of claim 1, wherein M1' represents a monovalent monoatomic cation of Li, Na, K, Rb, Cs, or Fr”.
Regarding claim 4, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. As described in the rejection of claim 1, Zahoransky teaches that naturally found sodalite materials can also contain Ca. Thus, Lastusaari and Zahoransky teach the claimed “The radiation sensing material of claim 1, wherein M2' represents a divalent monoatomic cation of Be, Mg, Ca, Sr, Ba, or Ra”.
Regarding claim 5, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. As described in the rejections of claims 1 and 4 above, Zahoransky teaches naturally found sodalite material compositions. Haüyne and Lazurite have compositions (Table 1) whereby both Na and Ca are the only included correspondents of M1’ and M2’, respectively. Thus, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to include Ca with only Na as known elemental components of sodalite materials to produce radiation sensing materials in the process of Lastusaari. Thus, Lastusaari and Zahoransky teach the claimed “The radiation sensing material of claim 1, wherein M1' represents a monovalent monoatomic cation of Na and M2' represents a divalent monoatomic cation of Ca”.
Regarding claim 6, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. In disclosed embodiments, Lastusaari teaches the case where M’’ is only represented by Al (paragraph [0100]). Thus, Lastusaari and Zahoransky teach the claimed “The radiation sensing material of claim 1, wherein M" represents a trivalent monoatomic cation of a metal selected from a group consisting of Al and Ga, or a trivalent monoatomic cation of B, or any combination of such cations”.
Regarding claim 7, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. In disclosed embodiments, Lastusaari teaches the case where M’’’ is only represented by Si (paragraph [0100]). Thus, Lastusaari and Zahoransky teach the claimed “The radiation sensing material of claim 1, wherein M"' represents a monoatomic cation of an element selected from a group consisting of Si and Ge, or a combination of such cations”.
Regarding claim 8, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. In disclosed embodiments, Lastusaari teaches the case where X is Cl (paragraph [0100]). Thus, Lastusaari and Zahoransky teach the claimed “The radiation sensing material of claim 1, wherein X represents an anion of an element selected from a group consisting of F, Cl, Br, I, and At, or any combination of such anions”.
Regarding claim 9, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. Lastusaari teaches for all cases whereby X’ would be just S. Thus, Lastusaari and Zahoransky teach the claimed “The radiation sensing material of claim 1, wherein X' represents a monoatomic or a polyatomic anion of one or more elements selected from a group consisting of O,S, Se, and Te, or any combination of such anions”.
Regarding claim 10, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. As described in the rejection of claim 1, Lastusaari teaches M’’’’ such that it can be any rare earth element, from transition metals, or combinations thereof. In paragraph [0085], Lastusaari discloses M’’’’ as a cation of an element selected from a group consisting of Eu and Tb, a combination of such cations, or a cation of an element selected from a group consisting of Ti, V, Cr, Mn, Fe, Co, Ni, Cu, and Zn, or any combination of such cations, thus obvious to select from any of the listed elements to arrive at invention as claimed. Further, in paragraph [0100], Lastusaari discloses embodiments whereby Eu or Tb are included. Thus, Lastusaari and Zahoransky teach the claimed “The radiation sensing material of claim 1, wherein M"" represents a cation of an element selected from a group consisting of Yb, Er, Tb, and Eu, or of an element selected from a group consisting of Ti, V, Cr, Mn, Fe, Co, Ni, Cu, Ag, W, and Zn, or any combination of such cations”.
Regarding claim 11, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. In paragraph [0006], Lastusaari discloses that the material is used to provide an X-radiation and/or UV radiation sensing material. In paragraphs [0115-146], Lastusaari teaches a method for measuring X-radiation and UV radiation with their disclosed material. Thus, Lastusaari and Zahoransky teach the claimed “The radiation sensing material of claim 1, wherein the radiation sensing material is ultraviolet radiation, x-radiation, gamma-radiation, infrared radiation, near-infrared radiation, and/or particle radiation, sensing material”.
Regarding claim 12, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. In paragraphs [0066] and [0143], Lastusaari teaches that their material changes color upon exposure to UV radiation. The material’s color is returned to “colorless (white)” with visible light or heating, enabling it to be reused. Lastusaari does not disclose that their material specifically changes color to yellow but does leave it open to any color. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to choose for any indicator color such as yellow to arrive at the invention as claimed. Zahoransky also teaches that sodalite materials are photochromic and change colors upon exposure to radiation and that a yellow color in sodalites can often be attributed to presence of S. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to modify the amount of S included in the sodalite material such that it changes from colorless to specifically yellow as the indicator of radiation. Regardless, the photochromic properties are inherent to the composition of the material itself. Thus, by arriving to the material of claim 1 as taught, it would be expected that the material would change from colorless or white to yellow after radiation exposure. Therefore, Lastusaari and Zahoransky teach the claimed “The radiation sensing material of claim 1, wherein the radiation sensing material is a photochromic material changing its color from white to yellow upon exposure to radiation.”.
Regarding claim 14, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. Lastusaari teaches that the sensor material changes color in response to radiation exposure. By emitting color or changing color in response to radiation, the radiation sensing material is thus also luminescent. Furthermore, in examples 5 and 7, Lastusaari measures color intensity after irradiation with a luminescence spectrometer (Figs. 1 and 3). Thus, Lastusaari and Zahoransky teach the claimed “The radiation sensing material of claim 1, wherein the radiation sensing material is a luminescent material, a material showing persistent luminescence, and/or a material showing afterglow”.
Regarding claim 15, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. Lastusaari teaches that their radiation sensing material is to be used in a device (paragraphs [0006] and [0013]). Thus, Lastusaari and Zahoransky teach the claimed “A device, wherein the device comprises the radiation sensing material as defined in claim 1”.
Regarding claim 16, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. In paragraphs [0104-0108], Lastusaari teaches that a UV or an X-radiation sensing material comprises their sensor material and is thus derived from that sensor material. Lastusaari and Zahoransky teach the claimed “A material derived from the radiation sensing material as defined in claim 1”.
Regarding claim 17, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. Lastusaari teaches that their material is used to indicate presence and/or intensity of UV and/or X-radiation. Thus, Lastusaari and Zahoransky teach the claimed “The use of the radiation sensing material as defined in claim 1 for indicating the presence and/or intensity of ultraviolet radiation, x-radiation, gamma-radiation, infrared radiation, near-infrared radiation, and/or particle radiation.”.
Regarding claim 18, Lastusaari and Zahoransky teach the radiation sensing material of claim 1. In paragraph [0114], Lastusaari teaches their invention may be used in a security device. In paragraph [0108], Lastusaari teaches their material can be used in a bottle of skin cream or sunscreen or in jewelry (i.e., consumer products), in raw materials for production of plastic bottles, a sticker, (i.e., more consumer products), or glass (thus a window), or in the display portion of a meter (i.e., a display screen). Thus, Lastusaari and Zahoransky teach the claimed “The use of the radiation sensing material as defined in claim 1 as a light source, in a consumer product, in a security device, in detecting, in imaging, in image acquisition, in display, screen, window or touch screen solutions, in medicine, in drug development, and/or in diagnostics”.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Lastusaari et al in view of Zahoransky et al as applied to claim 1 above, and further in view of Blumentritt et al.
Lastusaari and Zahoransky teach the radiation sensing material of claim 1 but neither mention absorption spectra for near-IR radiation. Photoluminescent properties as such are inherent to the material, thus arrival to the radiation sensing material as claimed would be expected to also absorb near-IR radiation (780nm to 2500nm). Blumentritt characterizes near-IR absorption of similar aluminosilicates (other sodalites and scapolites). In Figs. 3 and S5, Blumentritt shows absorption of wavelengths >750nm and 4000cm-1 (2500nm). Blumentritt shows in Fig. 3 that presence of S3- sulfur atoms likely contributes to redshifting the absorption spectra. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to utilize S3- sources in the process of Lastusaari for driving near-IR absorption in the radiation sensing material. Thus, Lastusaari, Zahoransky, and Blumentritt teach the claimed “The radiation sensing material of claim 1, wherein the radiation sensing material is a material absorbing radiation within the near-infrared region of the electromagnetic spectrum.”.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Lastusaari et al in view of Zahoransky et al as applied to claims 1 and 14 above, and further in view of Norrbo et al.
Lastusaari and Zahoransky teach the radiation sensing material of claim 1. Norrbo characterizes persistent luminescence of synthetic hackmanites which are similar in composition to the sensor material disclosed by Lastusaari and differs from the radiation sensing material by not including an alkaline earth metal. Norrbo defines that persistent luminescence also goes by “afterglow” in the introduction. Figs 2-3 and 5-7 display persistent luminescence or afterglow of such synthetic hackmanites. Thus, it would be expected that arrival to the radiation sensing material as claimed would also produce a persistent luminescent material or material that exhibits afterglow. Norrbo teaches that such synthetic materials represent lower cost alternatives for persistent luminescent materials. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to ensure persistent luminescence in the radiation sensing material as a more cost-effective luminescent alternative. Thus, Lastusaari, Zahoransky, and Norrbo teach the claimed “The radiation sensing material of claim 1, wherein the radiation sensing material is a luminescent material, a material showing persistent luminescence, and/or a material showing afterglow”.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Lastusaari et al in view of Zahoransky et al as applied to claim 1 above, and further in view of Webb et al.
Lastusaari and Zahoransky teach the radiation sensing material of claim 1. Lastusaari teaches their material can be used in sensing erythema (or sunburn, see Fig. 4) but does not specify a use in disease detection. Lastusaari follows the protocol of Webb et al in their erythema detection. Webb teaches that the action spectrum for erythema is also used as a proxy in quantifying UV for other UV effects such as skin cancer or vitamin D synthesis. Thus, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to use the radiation sensing material for erythema detection, as informed by Webb, as a proxy for determining diseases such as skin cancer or vitamin D synthesis afflictions. Therefore, Lastusaari, Zahoransky, and Webb teach the claimed “The use of the radiation sensing material as defined in claim 1 for detection of a disease, in an antibody or staining entity, in a biomarker test kit, in a screening platform, and/or in a combination with a further material.”.
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.
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Claims 1, 6-11, 13, 15, 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-11, 13-16, and 20 of U.S. Patent No. 18/292944 (hereinafter Case '944). Claims 1, 11, 13 and 17 of the instant application map to claim 1 of case ‘944. Claim 6 of the instant maps to claims 9-10. Claim 7 maps to claim 11. Claim 8 maps to claim 12. Claim 9 maps to claim 14. Claim 10 maps to claims 15 and 16. Claim 15 maps to claim 20. Although the claims at issue are not identical, they are not patentably distinct from each other because the listed claims of the instant application shares a radiation sensing material of general formula (I) which matches the "sensor" material of the listed claims of case '944.
Regarding claims 1, 11, 13 and 17, the radiation sensing material of general formula (I) contains M1’ and M2’ existing in a molar amount totaling 8. The sensor material possesses M’ which also exits in a molar amount of 8. M1’ represents any combination of cations of alkali metals (group 1) while M2’ represents any combination of alkaline earth metal cations (group 2). M’ represent calcium, a cation of an alkali metal, or any combination of such cations, thus obvious to include calcium and any other alkali metal to arrive at the M1’ and M2’ as claimed. M’’ of the instant is any combination or individual cation of Group 13 elements while M’’ of case ‘944 is a cation from group 13 or of a transition element, or any combination as such. M’’’ of both applications can be a cation of Group 14 elements or any combination as such. X of both applications can be a halogen of Group 17 (or combination of halogens/elements). X’ of both can be an anion of one or more elements from Group 16. M'’’’ of both is recognized as any dopant from rare earth metals, transition metals, some shared listed elements (Ba, Sr, Tl, Pb, Bi) or any combination. The sensor material of case ‘944 is a specific example where M’’ and M’’’ are present at molar amounts of 6. Both materials contain (X, X’)2 and O24. The suitable materials disclosed in the specification of case ‘944 would satisfy the radiation sensing material of the instant claim 1 outside of including M2’. However, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to include calcium as a known alkaline earth metal that can be present in a radiation sensing material. Therefore claim 1 of the instant and claim 1 of case ‘944 are not patentably distinct. Furthermore, claims 11, 13, and 17 of the instant specify the radiation that the material senses which is any form of listed electromagnetic radiation (UV, X, Gamma, IR, near-IR, and/or particle claim 11), near-IR region (claim 13), and the use of the material to indicate the presence and/or intensity of such radiation shared in claim 11 (claim 17). Claim 1 of case ‘944 discloses a method of determining an amount of radiation having a wavelength of 1zm – 10pm or particle radiation, whereby the intensity of reflected, transmitted or detected radiation is measured and the amount of radiation determined. Overlapping ranges have been held to present a prima facie case of obviousness over the prior art. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to select from the overlapping portion of the wavelength ranges to arrive at the invention as claimed.
Claims 6-10 of the instant provide further limitations on the identities of M’’ (6), M’’’ (7), X (8), X’ (9), and M’’’’ (10) which are not patentably distinct from the limitations in case ‘944 claims 9-10, 11, 12, 14, and 15-16, respectively (see mapping listed above).
Claim 15 of the instant draws towards a device comprising the radiation sensing material of the instant claim 1. Claim 20 of case ‘944 draws toward a dosimeter for gamma irradiation comprising their material of claim 1. A dosimeter is a device, thus the claims are not patentably distinct.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fleet et al and Favaro et al characterize lapis and/or lazurite materials which have compositions and properties relevant to that disclosed in the instant application. Sokolova et al teach scapolite-group minerals which have general formula overlapping with that of the radiation sensing material of the instant application. Carvalho et al teach a synthesis of hackmanite minerals with similar composition and properties to that of the radiation sensing material disclosed in the instant application.
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/NWFG/Examiner, Art Unit 1759
/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759
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