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 § 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 1-6, 8, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0193578 A1 to Pan et al. (hereinafter Pan).
Regarding claim 1, Pan discloses an oxide fluorescent material, having a composition represented by the following formula
ZnxGayGezO (x+(3y/2)+2z):tCr3+,mR (para [0013]),
wherein a portion of Ga may be replaced with a Group IIIA metal (e.g., Al and/or In),
wherein a portion of Ge may be replaced with a Group IVA metal (e.g., Si and/or Sn),
C is Cr3+, Ni2+, or a combination thereof, and
R is selected from a group comprising Ni and lanthanide ions including Ce, Eu, Nd, Tm, Ho, Er, and Yb,
x, y, and z are integers from 1 to 5;
t is 0.01 to 2 and represents mol%; and
m is 0 to 5 and represents mol% (para [0013]).
This provides a formula ZnxGayGezO (x+(3y/2)+2z):tCr3+, mR, when C contains Cr3+, with an oxygen content, O, of 4.5 to 22.5, that overlaps the amount set forth in instantly claimed formula (1) 11.0 ≤ x ≤ 17.0.
The formulas overlap. Note that instantly claimed formula (1) cites
(Mg1-sMs1)2(Al1-tM2t)u(Ge1-vM3v)wOx:Cry,M4z
wherein M¹ represents at least one element selected from the group consisting of Ca, Sr, Ba, and Zn;
M² represents at least one element selected from the group consisting of Ga, Sc, and In;
M³ represents at least one element selected from the group consisting of Si, Ti, Zr, Sn, and Hf;
M⁴ represents at least one element selected from the group consisting of Ni, Ce,
Eu, Fe, Mn, Nd, Tm, Ho, Er, and Yb; and
s, t, u, v, w, x, y, and z satisfy 0 ≤ s ≤ 1.0, 0 ≤ t ≤ 1.0, 1.5 ≤ u ≤ 2.5, 0 ≤ v ≤ 0.5, 3.0 ≤ w ≤ 6.0, 11.0 ≤ x ≤ 17.0, 0.005 ≤ y ≤ 1.0, and 0 ≤ z ≤ 0.5, respectively.
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 2, Pan discloses the oxide fluorescent material according to claim 1, wherein s (amount of M1/Zn x) is 1 to 5 and may contain up to 2 mol% of an alkaline earth such as Mg (para [0013]). This leaves about 98 to 100 mol% Zn or 98 ≤ s ≤ 1.0, which overlaps the instantly claimed range of 0 ≤ s < 1.0 in the formula (1). See MPEP 2144.05(I), cited above.
Regarding claim 3, Pan discloses the oxide fluorescent material according to claim 1, wherein u (M2/Ga amount y) is 1 to 5 (para [0013]), which overlaps the instantly claimed range of 1.8 ≤ u ≤ 2.2 in the formula (1). See MPEP 2144.05(I), cited above.
Regarding claim 4, Pan discloses the oxide fluorescent material according to claim 1, wherein w (Ge amount z) is 1 to 5 (para [0013]), which overlaps the instantly claimed range of 3.5 ≤ w ≤ 4.5 in the formula (1). See MPEP 2144.05(I), cited above.
Regarding claim 5, Pan discloses the oxide fluorescent material according to claim 1, wherein t (Ga/M2 amount y) is 1 to 5 (para [0013]). In Pan, “y” accounts for the total amount of Ga plus IIIA substituents. The instantly claimed formula separates them. There is a total amount of Al +M2 =1 in the instant formula. Pan further discloses that the Ga may contain some Al with an Al/Ga ratio of 0.1 to 0.5 (para [0067]). This provides an amount Al0.01-0.5Ga0.5-0.9 or a t range of 0.5 ≤ t ≤ 0.9, which falls within the instantly claimed range of 0 ≤ t < 1.0.
Regarding claim 6, Pan discloses the oxide fluorescent material according to claim 1, wherein y (Cr amount t) satisfies 0.01 to 5 mol% or 0.0001 ≤ t ≤ 0.05 (para [0013]), which overlaps the instantly claimed range of 0.04 ≤ y ≤ 0.40 in the formula (1). See MPEP 2144.05(I), cited above.
Regarding claim 8, Pan discloses the oxide fluorescent material according to claim 1, wherein the fluorescent material has a high intensity and long persistence time at 1000 nm (para [0065]) but is silent regarding the limitation “wherein in a light emission spectrum of the oxide fluorescent material, a light emission intensity at 1,000 nm is 5% or more relative to a light emission intensity at the light emission peak wavelength as 100%”. However, the reference does teach an overlapping oxide fluorescent material, as discussed above. 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 fluorescent materials overlap. Therefore, one of ordinary skill in the art would expect the Pan fluorescent material to have overlapping optical properties, including overlapping light emission intensity under the same conditions, absent evidence to the contrary.
Regarding claim 9, Pan discloses the oxide fluorescent material according to claim 1, but is silent regarding the limitation “wherein the oxide fluorescent material has a full width at half maximum that is 90 nm or more and 250 nm or less”. However, the reference does teach an overlapping oxide fluorescent material, as discussed above. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect the Pan fluorescent material to have overlapping optical properties including overlapping full width at half maximum (FWHM), absent evidence to the contrary.
Regarding claim 11, Pan discloses the oxide fluorescent material according to claim 1, wherein the oxide fluorescent material has a light emission peak wavelength that is 690 to 1106 nm (para [0013]), which overlaps the instantly claimed range of 680 nm or more and 1,000 nm or less. See MPEP 2144.05(I), cited above.
Claims 1, 3, 4, 6, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0161849 A1 to Bickford.
Regarding claim 1, Bickford discloses an oxide fluorescent material, having a composition represented by the following formula
ZnxGayGezO (x+(3y/2)+2z):tCr3+,mR (para [0052]),
where R is a co-dopant selected from a group consisting of alkaline earth ions, Li+ ions, and lanthanide ions which inherently includes Ce, Eu, Nd, Tm, Ho, Er, and Yb,
x, y, and z are integers from 1 to 5;
t is 0.01 to 5 mol%; and
m is 0 to 5 mol% (para [0052]).
This provides a formula ZnxGayGezO (x+(3y/2)+2z):tCr3+,mR, where O is from 4.5 to 22.5, that overlaps instantly claimed formula (1).
Instantly claimed formula (1) cites (Mg1-sMs1)2(Al1-tM2t)u(Ge1-vM3v)wOx:Cry,M4z
wherein M¹ represents at least one element selected from the group consisting of Ca, Sr, Ba, and Zn;
M² represents at least one element selected from the group consisting of Ga, Sc, and In;
M³ represents at least one element selected from the group consisting of Si, Ti, Zr, Sn, and Hf;
M⁴ represents at least one element selected from the group consisting of Ni, Ce,
Eu, Fe, Mn, Nd, Tm, Ho, Er, and Yb; and
s, t, u, v, w, x, y, and z satisfy 0 ≤ s ≤ 1.0, 0 ≤ t ≤ 1.0, 1.5 ≤ u ≤ 2.5, 0 ≤v≤0.5, 3.0 ≤ w ≤ 6.0, 11.0 ≤ x ≤ 17.0, 0.005 ≤ y ≤ 1.0, and 0 ≤ z ≤ 0.5, respectively.
The formulas overlap when s=1, M1=Zn, t=1, M2=Ga, and v=0 in the instantly claimed formula. See MPEP 2144.05(I), cited above.
Regarding claim 3, Bickford discloses the oxide fluorescent material according to claim 1, wherein u (M2/Ga amount y) is 1 to 5 (para [0052]), which overlaps the instantly claimed range of 1.8 ≤ u ≤ 2.2 in the formula (1). See MPEP 2144.05(I), cited above.
Regarding claim 4, Bickford discloses the oxide fluorescent material according to claim 1, wherein w (Ge amount z) is 1 to 5 (para [0052]), which overlaps the instantly claimed range of 3.5 ≤ w ≤ 4.5 in the formula (1). See MPEP 2144.05(I), cited above.
Regarding claim 6, Bickford discloses the oxide fluorescent material according to claim 1, wherein y (Cr amount t) satisfies 0.01 to 5 mol% or 0.0001 ≤ t ≤ 0.05 (para [0052]), which overlaps the instantly claimed range of 0.04 ≤ y ≤ 0.40 in the formula (1). See MPEP 2144.05(I), cited above.
Regarding claim 11, Bickford discloses the oxide fluorescent material according to claim 1, wherein the oxide fluorescent material has a light emission peak wavelength that is 650-900 nm (para [0045]), which overlaps the instantly claimed range of 680 nm or more and 1,000 nm or less. See MPEP 2144.05(I), cited above.
Regarding claim 13, Bickford discloses a light emitting device (kit/tool, para [0235]), comprising:
the oxide fluorescent material according to claim 1; and
a light emitting element (LED light source) irradiating the oxide fluorescent material and having a light emission peak wavelength in the range of about 100 nm to about 400 nm (UV light) or about 400 to about 700nm (fluorescent light) (para [0235]) that overlaps the instantly claimed range of 365 nm or more and 650 nm or less. See MPEP 2144.05(I), cited above.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 28 of copending Application No. 18/564084 (hereinafter 084). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach overlapping oxide phosphors comprising overlapping compositions having overlapping formulas with overlapping amounts of elements selected from groups including Mg, Al, Ge, and Cr (instant claims 1-7 and 084 claim 28). The 084 claims are silent regarding the optical properties set forth in instant claims 8-12. However, as discussed above, the phosphors overlap. Therefore, per MPEP 2112.01(I) cited above, one of ordinary skill in the art would expect the 084 phosphors to have overlapping optical properties, including but not limited to overlapping intensities, overlapping FWHM, and overlapping emission ranges under the same conditions, absent evidence to the contrary.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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