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 Objections
Claim 17 is objected to because of the following informalities: The claim is listed as cancelled and currently amended. The cancellation of original claim 17 is thought to be a typographical error. 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.
The term “ biocompatible” in claim 5 is a relative term which renders the claim indefinite. The term “biocompatible” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term biocompatible is a subjective standard of a material’s compatibility with the human body and considers whether a material causes a toxic reaction, allergic responses or immune rejection. A singular material may be considered to be biocompatible in certain applications and systems and not biocompatible in others- thus biocompatibility is not necessarily a ‘material property’ but the property of a biological system. As this is the case, the determination of whether a material is ‘biocompatible’ is largely qualitative and the actual scope of the term is ambiguous and not well defined. The ambiguous and subjective nature of these terms are noted and discussed in the attached publication of David Williams and the Wikipedia article “Biocompatibility”. The ambiguity around this term make it unclear exactly what range of properties and applications are being considered by applicant and what range of materials meet applicant’s standard for biocompatibility, rendering the scope of the claim 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.
Claim(s) 1-6 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Merkel in their publication “Low-power green-to-blue and blue-to-UV upconversion in rigid polymer films”.
Regarding Claim 1: The instant disclosure teaches that various compounds provide triboluminescence in amorphous materials. These compounds are listed in Table 1, which shows that compounds such as 9,10-diphenylanthracene (DPA) are considered by applicant to be luminophores and create a triboluminescent material when dispersed in PMMA. These disclosed embodiments are amorphous triboluminescent materials comprising a luminophore and a polymer as claimed.
Merkel teaches the creation of luminescent films comprising emitters such as DPA. Merkel shows that such a film is created by providing DPA and PMMA dissolved in dichloromethane and creating a film with the composition. The film is then dried (See Section 2.1-2.2). The composite of Merkel is made by the same process as is taught by applicant (dispersing a luminophore with PMMA in dichloromethane and forming a film- See Example 1). Merkel teaches a film comprising PMMA, which is a polymer, and DPA, which is the same luminophore disclosed by applicant and thus teaches a component having the same essential elements as those that are instantly disclosed. It is noted that Merkel’s film may further comprise a sensitizer, but the presence of such a compound would not be expected to inhibit the functionality of DPA in the material. It is further noted that Merkel also creates films free from additional components (See Page 305, Column 1, Paragraph 2). Furthermore, Merkel notes that these compounds are molecularly dispersed and thus are not in the form of crystals or crystallites (See Section 4). The composite of Merkel is thus amorphous as it is formed from PMMA by the same method as applicant. Based on the above, Merkel clearly teaches an amorphous triboluminescent material comprising a luminophore and a polymer as is claimed. The discovery of a previously unappreciated property of a prior art composition does not render the old composition patentably new to the discoverer (See MPEP 2112(I)).
Regarding Claim 2: The luminophore of Merkel is DPA, which is free from Cu (See Section 2-1-2.2, Abstract).
Regarding Claim 3: The luminophore of Merkel is DPA, which is not taught as being attached to the polymer covalently. Merkel teaches this compound is molecularly dispersed ( See section 4).
Regarding Claim 4: The luminophore of Merkel is DPA (See Section 2.1-2.2 and abstract). DPA contains a central anthracene polycyclic structure, which is a condensed polycyclic structure in which three rings are condensed. DPA’s structure is shown in applicant’s original disclosure at Paragraph 23.
Regarding Claim 5: Merkel teaches that the DPA is dispersed through PMMA (See Section 2.1-2.2). PMMA is considered to be a biocompatible polymer in many systems (used in dentistry, implants, etc).
Regarding Claim 6: Merkel teaches that the DPA is dispersed through PMMA (See Section 2.1-2.2). PMMA is an amorphous polymer (See Paragraph 41 of instant disclosure- PMMA used in an amorphous blended polymer film).
Regarding Claim 17: The film of Merkel is established as being capable of use as a mechanoresponsive sensor or film by applicant (See Example 1). The discovery of a previously unappreciated property of a prior art composition does not render the old composition patentably new to the discoverer (See MPEP 2112(I)).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 7-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Merkel as applied to claim 7 above, and further in view of McClure in their publication “Polyester (PET) films as a substrate: a Tutorial.
Regarding Claim 7: Merkel teaches that the DPA is dispersed through PMMA and a film is created by applying this solution to a poly(ethylene terephthalate) (PET) support (See Section 2.1-2.2). Merkel thus teaches the formation of an amorphous triboluminescent layer containing the luminophore (DPA) and the polymer (PMMA) and a luminophore-free material containing a polymer and not containing a luminophore (PET). PMMA is an amorphous polymer (See Paragraph 41 of instant disclosure- PMMA used in an amorphous blended polymer film).
Merkel is silent in terms of the dimensions of the PET substrate, i.e. providing PET as a film.
However, the use of PET films as a support for a coating process is known in the art and taught by McClure. McClure teaches that PET films are a widely used substrate in many coating processes (See Abstract). McClure teaches that PET films are often used for as a substrate for coatings due to its physical, chemical, thermal and electrical properties, which leads to a wide range of applications. Those of ordinary skill in the art would have found it obvious to provide the PET substrate of Merkel in the form of a PET film as McClure establishes that such use is conventional in the art. Those of ordinary skill in the art would have been motivated to use the various PET films taught by McClure to ensure that the substrate is transparent as taught by Merkel. The films discussed by McClure have a transparency of 88% (See Miscellaneous Properties).
Regarding Claim 8: The instant claim is noted as containing product-by-process limitations in terms of the luminophore-free layer being ‘laminated’ on the amorphous triboluminescent layer. Product-by-process limitations are examined on the basis of the implications of the process and not the actual practice of the manipulations as set forth. The implications of the instant product-by-process limitations is the creation of a composite having two films or layers, having a first the luminophore-free layer and a second triboluminescent layer. The product of Merkel in view of McClure is the very same as that which is claimed, being a composite having two layers, wherein one layer is a luminophore free layer and the second is a triboluminescent layer as claimed.
Regarding Claim 9: The polymer of the amorphous triboluminescent layer and the polymer of the luminophore-free layer of Merkel in view of McClure are two different kinds of polymer, being PMMA and PET (See Section 2.2 of Merkel).
Regarding Claim 10: The polymer of the luminophore free layer of Merkel in view of McClure is PET. McClure teaches that PET is crystalline (See ‘PET FILM’ section 692; See Instant Disclosure paragraph 29).
Regarding Claim 11-12: Merkel in view of McClure teaches the PMMA layer is coated on a PET layer by applying a coating solution with a doctor blade onto the support and then drying the coating solution under a vacuum. As all portions of the PMMA layer are created on said PET layers, the amorphous triboluminescent layer is entirely covered with the luminophore-free layer. Being entirely covered means at least a part of the amorphous triboluminescent layer is covered by the luminophore-free layer. It is noted that Merkel teaches coating the PMMA layer on said PET layer and the claims set forth covering the triboluminescent layer with the luminophore free layer; however, the claims are drawn to a product. One layer of a bilayer ‘covering’ the other is a matter of perspective; either layer could be said to be an upper or lower layer depending on orientation or the position of an observer. The structure as taught by Merkel in view of McClure meets the film structure as set forth.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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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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/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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