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(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.
Claim 2 is 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.
Regarding claim 2, the claim recites the phrase "between 1.15 and 1.25, preferably equal to 1.20". The term “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
While not a suggestion of claim language, in the interest of compact prosecution, the range “between 1.15 and 1.25” will be searched.
Appropriate correction is required.
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”. 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 1-10 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over “Selective synthesis of hexagonal and monoclinic LaPO4:Eu3+ nanorods by a hydrothermal method” by Yang et al. (hereinafter Yang).
Regarding claim 1, Yang discloses a process for synthesizing nanorods having the formula LaPO4:Eu3+ (abstract) which overlaps instantly claimed formula
La1-a-bAaBbPO₄ where a=0, so A is not present, and B is Eu in an amount (b) of 0.05 (page 4753, para 3), which falls within the instantly claimed range of 0 ≤ b ≤ 0.2, the process involving:
a. the preparation of an acidic mother liquor having a pH of 0.5 to 1 (page 4753, para 4), which is so close as to constitute overlap with the lower end of the instantly claimed range of between 1.0 and 3.0 by mixing at least:
- a solvent (ethanol and water),
- a first constituent providing La³⁺ ions,
- a second constituent, in excess, providing PO4³⁻ ions,
- a=0
- if b > 0, a constituent providing luminescence-activating dopant ions B³⁺,
in amounts such that, in the mother liquor, the ratio of the number of moles of
PO4³⁻ ions to the number of moles of La³⁺ ions and, where appropriate, A³⁺ ions
and/or B³⁺ ions is about 1.3 (based on 1.1 g Na3PO4 and 0.78 g La0.95Eu0.05Cl3, page 4753, para 4), which falls within the instantly claimed range of between 1.10 and 1.50,
b. heating the mother liquor under hydrothermal conditions at a heating
temperature of 90-210°C (page 4753, para 4), which overlaps the instantly claimed range of above 120°C until La1-a-bAaBbPO₄ nanorods of monazite (monoclinic) crystallographic structure are obtained (at temperatures of at least 150 C, page 4755, para 1). 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…Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’.
Regarding claim 2, Yang discloses the process as claimed in claim 1, the amounts of the first and second constituents being such that the ratio of the number of moles of PO4³⁻ ions to the number of moles of La³+ ions and, where appropriate, B³+ ions is about 1.3, which is so close as to constitute overlap with the upper limit of the instantly claimed range between 1.15 and 1.25. See MPEP 2144.05(I), cited above.
This rejection is based on the interpretation set forth in para #3, above.
Regarding claim 3, Yang discloses the process as claimed in claim 1, the first
constituent being chosen from lanthanum chloride, lanthanum oxide and mixtures thereof and/or the second constituent being Na₃PO₄ (page 4753, para 3).
Regarding claim 4, Yang discloses the process as claimed in claim 3. The constituents set forth in the instant claim further limit the second, phosphate, constituent to diammonium phosphate (NH₄)₂HPO₄ and/or the first, lanthanum, constituent to lanthanum nitrate La(NO₃)₃, within the Markush groups of claim 3, but do not necessitate their selection. Yang does teach the first constituent being chosen from lanthanum chloride, lanthanum oxide and mixtures thereof and the second constituent being Na₃PO₄ (page 4753, para 3), which falls within the Markush group of parent claim 3, as discussed above. Therefore, the reference reads on the instant claim.
Regarding claim 5, Yang discloses the process as claimed in claim 1. Element A as set forth in the instant claim further limits the scope of formula La1-a-bAaBbPO₄, within the Markush group of claim 1 but does not necessitate its selection. The reference does teach formula LaPO4:Eu3+ (abstract), which falls within the Markush group of parent claim 1, as discussed above. Therefore, the reference reads on the instant claim.
Regarding claim 6, Yang discloses the process as claimed in claim 1, the coefficient a being equal to 0 (as discussed above, a=0, no element A present).
Regarding claim 7, Yang discloses the process as claimed in claim 1, the luminescence-activating dopant B being Eu (abstract).
Regarding claim 8, Yang discloses the process as claimed in claim 1, the mother liquor preferably being heated in step b) to a heating temperature of 90-210°C (page 4753, para 4), which overlaps the instantly claimed range of less than 200°C. See MPEP 2144.05(I), cited above.
Regarding claim 9, Yang discloses the process as claimed in claim 1, the solvent being polar (water and ethanol, page 4753, para 4).
Regarding claim 10, Yang discloses the process as claimed in claim 1, including a step c), successive to step b) of washing and dissolving (rewashing) the nanorods to form a nanorod dispersion (page 4753, para 4, nanorods in distilled water and ethanol).
Regarding claim 12, Yang discloses the process as claimed in claim 1, the nanorods at the end of step b) having a length of less than 500 nm (Fig.2e).
Using the scale in the figure, the length appears to be at least about 250 nm, which overlaps the instantly claimed range. See MPEP 2144.05(I), cited above.
Regarding claim 13, Yang discloses the process as claimed in claim 1, the nanorods having an aspect ratio, defined as the ratio of the length of a nanorod to
the width of a nanorod, of less than 100 (Fig. 2e). Using the scale in the figure, the width appears to be at least about 25 nm. For a length of at least about 250 nm as discussed above, this provides an aspect ratio of at least about 10. At least about 10 overlaps the instantly claimed range. See MPEP 2144.05(I), cited above.
Regarding claims 14 and 15, Yang discloses the process as claimed in claim 1, the preparation of the mother liquor also involving the mixing of a complexing agent,
chosen from a group that includes ethylenediaminetetraacetic acid disodium salt dihydrate (EDTA, page 4753, para 3).
Regarding claim 16, Yang discloses the process as claimed in claim 14, but is silent regarding the amount of the complexing agent being added to the mixture in a proportion such that the ratio of the number of moles of La³⁺ ions, and where appropriate A³⁺ ions and/or B³⁺ ions, to the number of moles of complexing agent, is between 10 and 5000. However, see MPEP 2144.05(II)(A), which states that ‘Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical’. One of ordinary skill in the art is expected to arrive at the optimal proportion of complexing agent via routine experimentation. It would also be obvious to optimize the amount of complexing agent relative the amount of rare earth ions to control precipitation and ultimately facilitate safe, efficient synthesis of LaPO₄ nanorods.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0044088 A1 to Chane-Ching et al. (hereinafter Chane-Ching).
Regarding claim 17, Chane-Ching discloses a colloidal dispersion of
LaxCeyTb1-x-yPO₄ nanorods (aspect ratio of 5:1, para [0032]). A being chosen from a group that includes Y, Ce, Pr, Pm, Gd, Tb and mixtures thereof, where x is between 0.4 and 0.7 and x+y is more than 7 (para [0033]), which overlaps the instantly claimed formula La1-a-bAaBbPO₄, A being chosen from Y, Sc, Ce, Pr, Nd, Pm, Sm, Gd, Tb, with 0 ≤ a ≤ 0.5. B is absent as b=0. See MPEP 2144.05(I), cited above.
Regarding claim 18, Chane-Ching discloses the dispersion as claimed in claim 17, wherein the dispersion is transparent to the eye (para [0100]), which indicates the transmittance of the dispersion to radiation of wavelengths in the visible spectrum being greater than 50%, measured at a nanorod concentration of at least 15 mg/ml (para [0034]), which overlaps the instantly claimed range of 20 mg/ml. See MPEP 2144.05(I), cited above. The reference is silent regarding the transmittance of 500 nm light under these conditions. However, the colloidal dispersions closely overlap, as discussed above, and 500 nm light is in the visible range. See MPEP 2112.01(I), which states that ‘Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established…"When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."…Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product’. The colloidal dispersions closely overlap and are transparent to the eye. Therefore, one of ordinary skill in the art would expect the Chane-Ching dispersion to have overlapping properties, including but not limited to the transmittance of the dispersion to visible radiation of 500 nm being greater than 50%, absent evidence to the contrary.
Claims 11 rejected under 35 U.S.C. 103 as being unpatentable over Yang in view of US 2007/0131906 A1 to Boilot et al. (hereinafter Boilot).
Regarding claim 11, Yang discloses the process as claimed in claim 1, but does not expressly disclose step c) being performed by dialysis.
However, Boilot does teach a method of making rare earth phosphates via a pH controlled process (para [0032]), using an excess of phosphate (para 0034]), wherein the product is purified by washing and resuspending the product in water or by dialysis.
It would be obvious to one of ordinary skill in the art to employ the dialysis of Boilot as an obvious alternative to the washing step of Yang, as they are considered obvious variants in the art (Boilot, para [0066]-[0067]). Dialysis would also facilitate purification of the product (Boilot, para [0065]).
Conclusion
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/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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