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
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 in the Office Action mailed 10/1/25. This open-ended definition has been taken into consideration in the following rejections.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over US 6159686 to Kardos et al. (hereinafter Kardos).
Regarding claim 15, Kardos discloses a luminescent lanthanide nanoparticle (particles having a size of 0.01 to 3 µm or 10 to 3000 nm, col 17, ln 27-29), comprising a lanthanide ion nanoparticle (col 14, ln 16-17 and 29-36) selected from a group of four lanthanides including terbium (col 14, ln 34), and several molecules of chromophore ligand that are bonded to the surface of the lanthanide ion nanoparticle (chelates, col 29, ln 26-39),
wherein said lanthanide ion nanoparticle comprises terbium (Tb) ions (col 14, ln 34) and ions of at least a second lanthanide selected from the group consisting of: praseodymium (Pr), neodymium (Nd) (col 29, ln 51-53), holmium (Ho), erbium (Er), thulium (Tm) (col 14, ln 33-34) and ytterbium (Yb) (col 14, ln 33);
said ligand is an organic molecule comprising at least one chromophore radical of formula II:
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wherein R is selected from H or COOH, particularly dipicolinic acid (col 29, ln 34-36).
It would be obvious to one of ordinary skill in the art to select Tb because Tb is listed as one of four preferred ions (col 14, ln 34). It would also be obvious to select the optimal combination of lanthanide ions, including Tb, to provide a luminescent nanoparticle with the desired optical and chemical properties (col 14, ln 43-49).
Kardos further discloses a ratio of at least about 1:1 of the absorber (first lanthanide ion, Tb) to the emitter (second lanthanide ion), more usually about 3:1 to 5:1 (col 14, ln 36-38). This provides a ratio of about 67:33 to about 80:20 of the first lanthanide ion to the second lanthanide ion, or 67-80 mol% Tb and 20-33 mol% second lanthanide ion, which overlaps the instantly claimed ratios of between 75 and 99.9 mol% Tb and between 0.1 and 25 mol% of the second lanthanide. 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’.
Response to Arguments
Applicant’s arguments, see page 8, filed 12/31/25, with respect to the claim objection have been fully considered and are persuasive. The most recent amendment to the claim resolves the issue.
Therefore, the objection to claim 10 has been withdrawn.
Applicant’s arguments, see pages 9-10, filed 12/31/25, with respect to Kardos have been fully considered and are persuasive. The newly amended claims require at least one of Ce, Sm and Dy in combination with Tb. Kardos does not teach or suggest this combination.
Therefore, the 103 rejection of claims 1-9 and 11-13 as obvious over Kardos has been withdrawn.
Applicant’s arguments, see pages 10-11, filed 12/31/25, with respect to the double patenting rejection have been fully considered and are persuasive. A proper terminal disclaimer was filed on 12/31/25.
Therefore, the obviousness double patenting rejection of claims 1-13 as unpatentable over the claims of 077 has been withdrawn.
New claims 14-16 are addressed on page 11 of the response filed 12/31/25. All three claims are supported by the original disclosure.
It is agreed that Kardos does not teach or suggest the subject matter of new claims 14 and 16.
New claim 15 recites between 75 and 99.9 mol% Tb ions and between 0.1 and 25 mol% of ions of the second lanthanide. Applicant argues that Kardos discloses about 50 mol % Tb and about 50 mol% Yb but does not teach the amounts of Tb and the second lanthanide ion as set forth in the new claim. However, Kardos does teach that the ratio of absorber (first ion Tb) to emitter (second ion) is at least about 1:1, more usually about 3:1 to 5:1 (col 14, ln 36-38). This provides a Tb to second ion ratio of about 67:33 to about 80:20, which overlaps the instantly claimed ranges, as discussed above. See MPEP 2144.05(I), cited above.
Allowable Subject Matter
Claims 1-14 and 16 are allowed.
The following is an examiner’s statement of reasons for allowance: The closes prior art is applicant’s prior invention, US 12163077 B2, and a proper terminal disclaimer has been filed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/L.E./Examiner, Art Unit 1734
/Matthew E. Hoban/Primary Examiner, Art Unit 1734