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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 14 is drawn to a composition. However, parent claim 12 is drawn to a method. The composition of claim 14 does not further limit the method of claim 12. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
The instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claims 1-3 and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Upconverting Lanthanide-Doped NaYF4-PMMA Polymer Composites Prepared by In Situ Polymerization” by Boyer et al. (hereinafter Boyer), provided by applicant in the IDS filed 6/10/24.
Regarding claim 1, Boyer discloses a composition comprising:
particles comprising an upconversion material that receives excitation light in a first wavelength range and emits light in a second wavelength range shorter than the first wavelength range (page 2010, para 4); and
a curable component (methyl methacrylate, MMA, monomer, page 2011, para 1),
wherein the upconversion material comprises a rare earth element (page 2011, para 1), and
wherein the curable component comprises a compound having an alkylene glycol group, polyethylene glycol, PEG (page 2011, para 2).
Regarding claim 2, Boyer discloses the composition according to claim 1
wherein the upconversion material comprises at least one selected from the group consisting of yttrium, ytterbium, and erbium (page 2011, para 1).
Regarding claim 3, Boyer discloses the composition according to claim 1,
wherein the upconversion material comprises a fluoride of the rare earth elements (page 2011, para 1).
Regarding claim 6, Boyer discloses the composition according to claim 1, wherein the particles are coated with an unsaturated fatty acid, oleic acid ligands (page 2011, para 1).
Regarding claim 7, Boyer discloses the composition according to claim 1, wherein a content of the particles is 0.5 to 3 wt% (page 2012, para 1), which falls completely within the instantly claimed range of 0.1 mass% to 20 mass% based on a total amount of the composition.
Regarding claim 8, Boyer discloses the composition according to claim 1,
wherein the compound having the alkylene glycol group is an ultraviolet curable compound, PEG (page 2011, para 2).
Regarding claim 9, Boyer discloses the composition according to claim 1,
wherein the alkylene glycol group is an ethylene glycol group, ethylene glycol in PEG (page 2011, para 2).
Regarding claim 9, Boyer discloses the composition according to claim 1,
wherein the curable component comprises a first curable component, PEG with two functional groups (hydroxyl) and a second curable component having a greater number of functional groups than the first curable component, MMA (page 2011, para 2) with three functional groups (alkene, ester and methyl).
Claim Rejections - 35 USC § 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 (i.e., changing from AIA to pre-AIA ) 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.
The instant claims contain the transitional phrase “comprising”. See MPEP 2111.03, cited above. This open-ended definition has been taken into consideration in the following rejections.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0001024 A1 to Grubbs et al. (hereinafter Grubbs).
Regarding claim 1, Grubbs discloses a composition comprising:
particles comprising an upconversion material that receives excitation light in a first wavelength range and emits light in a second wavelength range shorter than the first wavelength range (para [0011]); and
a curable component (para [0009]-[0010]),
wherein the upconversion material comprises a rare earth element (para [0019]), and
wherein the curable component comprises a compound selected from a group including polyethylene glycol, PEG (para [0014]), a compound having an alkylene glycol group.
The reference recites PEG as one of sixteen possible options. It would be obvious to one of ordinary skill in the art to employ PEG as a compound in the curable component to facilitate preparation and modification of lenses in a safe and cost-effective manner (para [0004]).
Regarding claim 2, Grubbs discloses the composition according to claim 1
wherein the upconversion material comprises at least one selected from the group consisting of yttrium, ytterbium, and erbium (para [0019]).
Regarding claim 3, Grubbs discloses the composition according to claim 1,
wherein the upconversion material comprises a fluoride of the rare earth elements (para [0019]).
Regarding claim 4, Grubbs discloses the composition according to claim 1,
wherein an average value of maximum lengths (at least one dimension) of the particles is 1 to 250 nm (para [0151]). Alternatively, when the particles are considered to be spheres (para [0151]), the diameter is approximately the same as the length and is 20 to 500 nm (para [0213]). Both ranges,1 to 250 nm and 20 to 500 nm, overlap the instantly claimed range of 100 nm to 10 µm. See MPEP 2144.05(I), which states that
‘In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists’.
Regarding claim 5, Grubbs discloses the composition according to claim 1,
wherein an average particle diameter of the particles is 20 to 500 nm (para [0213]), which overlaps the instantly claimed range of 100 nm to 10 µm. See MPEP 2144.05(I), cited above.
Regarding claim 6, Grubbs discloses the composition according to claim 1,
wherein the particles are coated with an unsaturated fatty acid (para [0020]).
Regarding claim 7, Grubbs discloses the composition according to claim 1,
wherein a content of the particles is 0.1 to 5 wt% (para [0117]), which overlaps the instantly claimed range of 0.1 mass% to 20 mass% based on a total amount of the composition. See MPEP 2144.05(I), cited above.
Regarding claim 8, Grubbs discloses the composition according to claim 1,
wherein the compound having the alkylene glycol group is an ultraviolet curable compound, PEG (para [0014]).
Regarding claim 9, Grubbs discloses the composition according to claim 1,
wherein the alkylene glycol group is an ethylene glycol group, ethylene glycol in
PEG (para [0014]).
Regarding claim 10, Grubbs discloses the composition according to claim 1,
wherein the curable component comprises a first curable component, PEG (para [0014]) and a second curable component, based on (meth)acrylate (para [0014]) defined as including methyl methacrylate, MMA, (para [0069]). As discussed above, MMA has more functional groups than PEG.
Regarding claim 11, Grubbs discloses a resin molded body, a lens (para [0231]), comprising:
a cured product (cured/polymerized, para [0232]) of the composition according to claim 1, as discussed above.
Regarding claim 12, Grubbs discloses a method for producing a resin molded body, comprising:
a step of preparing a composition (adding particles to a lens mix, para [0231]) comprising particles comprising an upconversion material (para [0011]) that receives excitation light in a first wavelength range and emits light in a second wavelength range shorter than the first wavelength range, and a curable component (para [0009]-[0010]);
and
a step of curing (polymerizing) the composition (via 365 nm UV source, para [0232] and UV-absorber in the lens mix, para [0010] and [0087]);
wherein the upconversion material comprises a rare earth element (para [0019]), and
wherein the curable component comprises a compound selected from a group including polyethylene glycol, PEG (para [0014]), a compound having an alkylene glycol group.
The reference recites PEG as one of sixteen possible options. It would be obvious to one of ordinary skill in the art to employ PEG as a compound in the curable component to facilitate preparation and modification of lenses in a safe and cost-effective manner (para [0004]).
Regarding claim 13, Grubbs discloses the method according to claim 12, further comprising:
a step of molding the composition between the step of preparing the composition and the step of curing the composition (para [0231]).
Regarding claim 14, Grubbs discloses the composition according to claim 12,
wherein the compound having the alkylene glycol group is an ultraviolet curable compound (PEG, para [0014]), and
wherein, in the curing step, the composition is cured by irradiating the composition with ultraviolet light (365 nm, para [0232]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNNE EDMONDSON whose telephone number is (571)272-2678. The examiner can normally be reached M-F 10-6:30.
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/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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