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. JP2021-146399 and PCT/JP2022/026112, filed on September 8, 2021, and June 29, 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: Pg 5 line 2, “grater” should be corrected to “greater”.
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.
Claim 5 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 5 defines a general formula of (CaxSryEuz)AlSiN3 whereby 0 ≤ x < 1, 0 < y < 1, and 0 < z < 1. Since x can be 0, there are cases where Ca is no longer included in the formula or fluorescent substance powder. Claim 1, on which claim 5 depends upon, requires the fluorescent substance powder to comprise CASN-based fluorescent substance particles, thus necessitating that the fluorescent substance powder must have Ca in its composition. Therefore, claim 5 is indefinite.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sugita et al (WO2020054351) in view of Nomiyama et al (US PGPub 20200251619).
Regarding claim 1, Sugita describes preparation of a fluorescent substance powder which comprises particles (a “plurality”) of general formula MAlSiN3:Eu, whereby M is one or more elements selected from Sr, Mg, Ca, and Ba. In one embodiment, Sugita discloses the phosphor is represented by CaSiAlN3:Eu, thus a CASN-based fluorescent substance particle. In another embodiment, Sugita discloses particles represented by SrCaSiAlN3:Eu, another CASN-based particle otherwise known as SCASN. Similarly, Nomiyama teaches preparation of a fluorescent substance powder comprising CASN-based fluorescent substance particles (or SCASN). Both Sugita and Nomiyama teach having a median diameter of particles (d50) exceeding 1 µm (thus having particles with size >1 µm). Sugita also teaches removal of ultrafine particles by decanting in preparation, as ultrafine particles (size of 0.2 µm or less) increase scattering and reflection of light. However, both Sugita and Nomiyama are silent on the “average ruggedness” of the particles. Average ruggedness is a physical property of the prepared particles which would be understood in the art to be inherent to the process or method of preparation of such particles. The teachings of Sugita and Nomiyama, through their preparation methods, would enable one of ordinary skill in the art to arrive at the invention as claimed and subsequently described through arrival to the preparation method of the instant specification. Sugita teaches a general mixing process of precursor materials (Sr, Ca, Eu, Si, Al, and N sources), a baking/heating process, and an acid treatment. In the baking, Sugita first heats to 850°C and reaches a pressure of 0.13MPaG (examples 1-4) or 0.80MPaG (example 5). Then, Sugita heats to 1750°C for 4 hours or 1950°C for 8 hours. Subsequently, the baked mass is cooled to room temperature and subjected to ball mill pulverization with a metal ball of 5mm diameter for 5 hours. The powder is passed through a 250 µm mesh sieve. Then, the powder is acid treated with 0.5M HCl or 1.0M HCL at boiling temperature for 1 hour with stirring (can be ultrasonically mixed). In example 5, Sugita specifically removes ultrafine particles and HCl through decantation steps. In decantation, Sugita mixes with sodium hexametaphosphate as a dispersion medium and finally dries for 12 h at 100-120°C. Then, the dried powder is classified with a sieve having an opening of 75 µm to obtain the phosphor particles. The process of Sugita differs from the process of the instant application as Sugita does not perform an annealing step. However, Nomiyama teaches annealing, along with inclusion of optional acid treatment, pulverization, and classification steps (paragraph [0035]) that can be performed after any step such as calcination, annealing or “other steps” which Sugita does cover. In paragraph [0037], Nomiyama teaches an annealing temperature of 1100-1650°C for 4-24hours at a pressure of 0.65MPaG or less in an inert gas atmosphere. The annealing step enables enhancement of the Eu content without lowering the luminance of the phosphor by reducing crystal defects (see paragraphs [0021] and [0025]). Thus, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to add an annealing step, as informed by Nomiyama, to the process of Sugita in order to enhance Eu content of the phosphor by reducing crystal defects without sacrificing luminance and arrive at the preparation of the invention as claimed. Therefore, it would be expected that the prepared substance would have an average ruggedness as claimed due to being an inherent physical property of such prepared particles. Sugita and Nomiyama teach the claimed “A fluorescent substance powder comprising: a plurality of CASN-based fluorescent substance particles, wherein average ruggedness of fluorescent substance particles having a particle size of 1 µm or greater among the CASN-based fluorescent substance particles is 0.981 or greater”.
Regarding claim 2, Sugita and Nomiyama teach the fluorescent substance powder of claim 1. As described in the rejection of claim 1, Sugita and Nomiyama are silent on an average ruggedness and thus a standard deviation of ruggedness. However, the arrival to the invention of claim 1 through an identical preparation process would also provide particles having a standard deviation within the range as claimed (less than 0.025). Furthermore, throughout several steps of the process, Sugita employs an ultrasonic homogenizer to the prepared powder. Homogenizers are well understood in the art to ensure consistency across treated samples which thus would factor in reducing the standard deviation. Additionally, Sugita utilizes a classification step which selectively removes particles of ultrafine size. By removing ultrafine particles, the subsequently retained particles would be of consistent sizing and texture or ruggedness, thus minimizing the standard deviation further. Thus, Sugita and Nomiyama satisfy the claimed “The fluorescent substance powder according to claim 1, wherein a standard deviation of the ruggedness of fluorescent substance particles having a particle size of 1 µm or greater among the CASN-based fluorescent substance particles is less than 0.025”.
Regarding claim 3, Sugita and Nomiyama teach the fluorescent substance powder of claim 1. Sugita and Nomiyama are both silent on the aspect ratio of their particles. Aspect ratio is well understood in the art as a geometric measure of circularity or how elliptical the particles present (i.e., a ratio of minor and major axes). Thus, the aspect ratio is also an inherent physical property of the particles that would be heavily dictated by their preparation. As described in the rejection of claim 1, Sugita and Nomiyama teach a preparation process that enables arrival to the invention as claimed. Thus, Sugita and Nomiyama teach the claimed “The fluorescent substance powder according to claim 1, wherein an average aspect ratio of fluorescent substance particles having a particle size of 1 µm or greater among the CASN-based fluorescent substance particles is 1.275 or less”.
Regarding claim 4, Sugita and Nomiyama teach the fluorescent substance powder of claim 1. Further, Sugita in the composition section teaches that their present invention has a “main crystal phase having the same crystal structure as CaAlSiN3”. Thus, Sugita and Nomiyama teach the claimed “The fluorescent substance powder according to claim 1, wherein a main crystal phase constituting the CASN-based fluorescent substance has the same structure as in a CaAlSiN3 crystal phase”.
Regarding claim 5, Sugita and Nomiyama teach the fluorescent substance powder of claim 1. Sugita teaches a general formula of their present invention (see “composition” section) as MAlSiN3:Eu where M is any one or more elements selected from Sr, Mg, Ca, and Ba. Sugita teaches generally that when Ca is originally included, then inclusion of Sr will substitute into the place of Sr such that the formula becomes Ca1-xSrxAlSiN3:Eu. Eu also partially replaces Ca such that Eu becomes a luminescence center and the phosphor emits red light. Thus, Ca, Sr, and Eu are all implicitly included in a range of 0 to 1. In example 5, Sugita teaches preparation of CaSrAlSiN3:Eu by including precursors of Si, Al, N, Eu, Ca, and Sr. Therefore, Sugita and Nomiyama teach the claimed “The fluorescent substance powder according to claim 1, wherein the fluorescent substance powder is expressed by a general formula of (CaxSryEuz)AlSiN3, and in the general formula, conditions of 0 ≤ x < 1, 0 < y < 1, and 0 < z < 1”.
Regarding claim 6, Sugita and Nomiyama teach the fluorescent substance powder of claim 1. Sugita does not disclose the specific wavelength emission of their invention outside that inclusion of Eu as the luminescent center enables red emission. In the art, it is well understood that red light contains wavelengths in the range of 620-750nm. Nomiyama teaches a SCASN phosphor of identical formula to Sugita, but Nomiyama discloses their emission is between 635-650nm (paragraph [0040]). Further, Nomiyama teaches how including Eu between a mass% of 4.5-7 causes shifting of emission peak wavelengths such that it is in a range of 635-650nm and enables high luminance with high color-rendering properties of a light-emitting device (see paragraph [0021], <4.5% inclusion then luminance is insufficient and wavelength emission shifts to shorter wavelengths and >7mass% then Eu does not dissolve and volatizes in synthesis). Thus, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to include Eu in a mass% range of 4.5-7 to the composition of Sugita so that emission is between 635-650nm for high color-rendering properties in a light-emitting device. Therefore, Sugita and Nomiyama teach the claimed “The fluorescent substance powder according to claim 1, wherein a wavelength of a light-emission peak is 605 nm to 670 nm”.
Regarding claim 7, Sugita and Nomiyama teach the fluorescent substance powder of claim 1. Sugita teaches that their phosphor can be included in a light-emitting device as a red-light component but does not teach the specific incorporation to such a device. Nomiyama also teaches their SCASN-based phosphor is to be implemented into a light-emitting device but does not utilize the term “wavelength converter” to describe the layer in which it is implemented. Regardless, the structure of light-emitting devices are well understood in the art to have: a light source and a wavelength conversion medium which absorb the light emitted by the light source in order to emit a light of different wavelength. In paragraph [0050], Nomiyama describes such a structure for their white LED. Nomiyama discloses adding their SCASN phosphor (emits wavelength 635-650nm) to the device along with a blue LED element (emits excitation wavelength of 450nm). Thus, when blue light is emitted onto the phosphor, the phosphor emits light of a longer wavelength than the primary light (435nm to 635-650nm) emitted (see also paragraph [0040]). It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to incorporate the SCASN phosphor of Sugita into the structure as informed by Nomiyama as a known method of incorporating such a phosphor to produce a light-emitting device. Thus, Sugita and Nomiyama teach the claimed “A light-emitting device, comprising: a light-emitting element that emits primary light; and a wavelength converter that absorbs a part of the primary light and emits secondary light having a wavelength longer than a wavelength of the primary light, wherein the wavelength converter comprises the fluorescent substance powder according to claim 1”.
Claims 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sugita et al in view of Nomiyama et al as applied to claim 1 above, and further in view of Kasai (US PGPub 20190081202).
Regarding claim 3, Sugita and Nomiyama teach the fluorescent substance powder of claim 1. Sugita and Nomiyama are both silent on the aspect ratio of their particles. Aspect ratio is well understood in the art as a geometric measure of circularity or how elliptical the particles present (i.e., a ratio of minor and major axes). Thus, an aspect ratio of 1.0 implies a circular or spherical shape (equal axes, thus equivalent to a radius). Kasai teaches a method for manufacturing a light emitting device which has a wavelength conversion member comprising SCASN-based particles and a filler (paragraph [0046]). Kasai teaches that the shape of the filler is preferably spherical to help with filling properties and agglomeration suppression. Although the filler is not the same as the SCASN particles, given that the SCASN particles also fill the same medium, it would be an obvious extension to desire a similar morphology. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to make the SCASN particles spherical, as informed by Kasai, to improve filling properties and agglomeration suppression when incorporated into a wavelength conversion member. Therefore, the corresponding aspect ratio of a spherical particle would be ~1.0 (less than 1.275). Sugita, Nomiyama, and Kasai teach the claimed “The fluorescent substance powder according to claim 1, wherein an average aspect ratio of fluorescent substance particles having a particle size of 1 µm or greater among the CASN-based fluorescent substance particles is 1.275 or less”.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sugita et al in view of Nomiyama et al as applied to claim 1 above, and further in view of Aoyagi et al (US PGPub 20190305193).
Regarding claim 3, Sugita and Nomiyama teach the fluorescent substance powder of claim 1. Sugita and Nomiyama are both silent on the aspect ratio of their particles. Aoyagi teaches use of β-SiAlON fluorescent materials and desired aspect ratios of such materials in light emitting devices (paragraph [0041]). Aoyagi discloses a preferable aspect ratio in the range of 0.64-1.0. By having the aspect ratio >0.62, then light emitted from the light emitting element is entered from a substantially uniform surface direction with respect to the fluorescent material, and the change in chromaticity caused by entering the excitation light from various surface directions is suppressed, so that a wavelength converting member capable of providing a desired color tone can be obtained. Further, this aspect ratio allows the fluorescent material to be uniformly dispersed in the resin. Although Aoyagi teaches in reference to a particle of different chemical composition than Sugita and Nomiyama (inclusion of O in Aoyagi vs no O of Sugita and Nomiyama SCASN particles), the effect of physical or morphological properties on optics would be expected to hold consistent regardless of chemical composition to one of ordinary skill in the art as these features are dictated by isotropic or anisotropic effects of the morphology of the particle as opposed to the chemical makeup. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to produce SCASN particles of Sugita and Nomiyama having an aspect ratio between 0.64-1.0, as informed by Aoyagi, so that changes in chromaticity are suppressed, a desired color tone can be obtained, and to allow uniform dispersion of the particles in the resin of a light-emitting device. Thus, Sugita, Nomiyama and Aoyagi teach the claimed “The fluorescent substance powder according to claim 1, wherein an average aspect ratio of fluorescent substance particles having a particle size of 1 µm or greater among the CASN-based fluorescent substance particles is 1.275 or less”.
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 1-7 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18688846 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claim 1 of both copending applications describe "A fluorescent substance powder comprising: a plurality of CASN-based fluorescent substance particles, ..." whereby claim 1 of the instant application further limits the fluorescent substance powder by defining an average ruggedness of the fluorescent substance particles while claim 1 of case ‘846 defines an average circularity and standard deviation. While the instant application is silent on an average circularity and associated standard deviation and while the copending case ‘846 is silent on an average ruggedness, the corresponding examples and synthesis methods of each application are identical. The process of making the fluorescent substance powder composition (which comprise CASN-based fluorescent substance particles) are identical to one another, thus the compositions are identical to one another (compare Table 1 between applications for identical processes and characterizations outside of ruggedness and circularity of examples 1-5). While each application is silent on the associated measurement of either ruggedness or circularity, given the process of making each powder composition is identical, the ruggedness and circularity are inherent properties that would also be identical although unreported respectively. Thus, the claims are not patentably distinct from one another. Subsequently, claim 2 of the instant application, dependent on claim 1, defines a standard deviation of the ruggedness which would also be inherent to the fluorescent substance powder in claim 1 of case ‘846. Claims 3-7 of the instant (all dependent on claim 1 of the instant) map to claims 2-6 of case ‘846 (all dependent on claim 1 of case ‘846), respectively (i.e., claim 3 to claim 2, claim 4 to claim 3, etc.). Each of these claims carry the same extended limitations of the dependent claims. For instance, claim 3 of the instant and claim 2 of case ‘846 further limit their respective claim 1 by adding a limitation of “The fluorescent substance powder according to claim 1, wherein an average aspect ratio of fluorescent substance particles having a particle size of 1 µm or greater among the CASN-based fluorescent substance particles is 1.275 or less”. The same is true for all subsequent claims between each copending application. Claim 4 of the instant and claim 3 of the copending further limit by “wherein a main crystal phase constituting the CASN-based fluorescent substance has the same structure as in a CaAlSiN3 crystal phase”. Claim 5 of the instant and claim 4 of the copending further limit by “wherein the fluorescent substance powder is expressed by a general formula of (CaxSryEuz)AlSiN3, and in the general formula, conditions of 0 ≤ x < 1, 0 < y < 1, and 0 < z < 1”. Claim 6 of the instant and claim 5 of the copending further limit by “wherein a wavelength of a light-emission peak is 605 nm to 670 nm”. Claim 7 of the instant and claim 6 of the copending further limit by “A light-emitting device, comprising: a light-emitting element that emits primary light; and a wavelength converter that absorbs a part of the primary light and emits secondary light having a wavelength longer than a wavelength of the primary light, wherein the wavelength converter comprises the fluorescent substance powder according to claim 1”. Therefore, claims 1-7 of the instant application and claims 1-6 of copending case’846 are not patentably distinct from one another.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Inata et al disclose a sintered phosphor which can be SCASN and describe a desirable volume fraction of the phosphor being within a certain range. The volume fraction is affected by surface roughness of the sintered phosphor, thus a parameter to adjust (by proxy of volume fraction) to obtain a desired emission color, sufficient wavelength conversion, and wavelength conversion efficacy. Liaparinos and David disclose the effect of surface roughness of luminescent particles on corresponding optical properties.
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/NWFG/Examiner, Art Unit 1759
/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759
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