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 .
Status of Claims
Claims 18-19 and 25 are amended. No claims are newly added. Claims 6, 8, 14-16, and 26 are canceled. Claims 1-5, 7, 9-13 and 17-25 are pending.
Claim Interpretation
The preamble recites the phrase “a Purcell enhanced metamaterial scintillator structure comprising…”. The body of claim 1 recites a structurally complete invention (a conducting structure and an adjacent dielectric structure comprising a structure of scintillating nanoparticles). The preamble states only an intended characteristics of that structure without breathing life of meaning into the claim (see MPEP 2111.02(II)). No claim recites a Purcell factor, an enhancement magnitude, a periodicity, or any dimensional relationship by which a “metamaterial” is distinguished from an ordinary layered composition. To overcome the interpretation, the applicant should identify the specific claim language that structurally requires Purcell enhancement.
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.
Claims 2, 12, 13, and 24 are 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 2 recites the phrase “wherein the conducting structure and/or the dielectric structure is subwavelength (wavelength of luminescence) in thickness”. Parenthetical phrases are unclear because it is not claim if a limitation intended to be limiting or non-limiting. Furthermore, because luminescence spans a band rather than a single wavelength, which wavelength of that band sets the threshold? For the purposes of examination, the phrase will be interpreted as a thickness less than the peak luminescence wavelength.
Claim 12 recites the phrase, “wherein the scintillating nanoparticles experience plasmon resonances in conductive nanoparticles or shells”. Neither “conductive nanoparticles” nor “shells” has antecedent basis in the claim—claim 1 recites a “conducting structure” and “scintillating nanoparticles”. The claim further fails to make clear how the recited scintillating nanoparticles can “experience plasmon resonances in” separate elements, i.e., whether the claim requires conducive nanoparticles or shells as additional structure, requires scintillating nanoparticles themselves to be coated or merely recites a physical phenomenon. For purposes of examination, claim 12 is interpreted as requiring conductive nanoparticles or conductive shells disposed to plasmonically couple to the scintillating nanoparticles.
Claim 13 recites the phrase “high-refractive nanoparticles”. The term “high-refractive nanoparticles” is a relative term or degree and the specification provides no standard for understanding what qualifies as “high” (see MPEP 2173.05(b)).
Claim 24 recites the phrase “wherein said formed dielectric structure is self-assembled”, which states a property of the resulting structure whose structure scope is not clear. MPEP 2113 explains that a product-by-process claim is limited by the structure and not the manner in which it is formed.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7, 9-13 and 17-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description and enablement requirements. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding independent claim 1, to the extent that the phrase “Purcell enhanced metamaterial scintillator structure” is given patentable weight, the Purcell enhancement of emissions is not a property of merely juxtaposing a conductor and a dielectric material. This phenomenon arises only from a resonant EM-field environment, and further requires that the resonance be spectrally matched to the emission of the emitter and that the emitter lies within the region of the enhanced field. Any given conductor-plus-dielectric arrangement may just as easily produce quenching rather than enhancement depending on those same parameters.
The examiner notes that the body of claim 1 recites no resonant cavity, no periodic arrangement or unit-cell dimensions, no layer thickness, no spectral relationship between a resonance and the emission of the scintillating nanoparticles, and no placement of the nanoparticles relative to any field maximum. The claim therefore encompasses every arrangement of a conducting structure and an adjacent nanoparticle-containing dielectric structure that produces Purcell enhancement, however configured.
The specification enables particular designs. It discloses that “Purcell enhanced metamaterial designs may be configured and/or optimized to enhance the scintillator decay rate”, identifies coupled wave analysis and commercial EM simulation as the tools for analyzing the EM field distributions in periodic media including plasmonic particle arrays and metal-dielectric structures, describes tuning the wavelengths of largest enhancement with crescent dimensions, and reports enhancement on the order to 100-1000x from an emitter in such structures (specification, [0114]).
What the specification does not provide is a relationship or common structure or characteristic by which one of ordinary skill could determine (without undertaking the applicant’s process of simulating and optimizing for each arrangement) which structures within the scope of claim 1 exhibit Purcell enhancement and which do not. Disclosure of a limited number of simulated and/or fabricated species does not show possession of or enable, the full scope of the claim (see MPEP §§ 2164.08 & 2163). The applicant may overcome this rejection by amending claim 1 to recite the structural parameters that produce the enhancement. Independent claims 17 and 20 each recite substantially similar claim limitations and are rejected according to the same rationale. Dependent claims are rejected on dependence for failing to address the above issues.
Claim 19 requires that the plurality of detectors has “a coincidence time resolution (CTR) of < 50 picoseconds (ps)”. The specification recites this value, and an even lower value of less than 10 ps only as a statement of a desired parameter in the summary of example embodiments (Specification, [0049]). The disclosure provides no measured coincidence time resolution, discloses no detector configuration shown to achieve any particular CTR, and provides no analysis linking a disclosed Purcell enhancement factor to a resulting timing resolution. Considering the Wands factors (MPEP 2164.01(a)): the breadth of the claim covers any plurality of detectors meeting the recited figure; the state of the art at the time of filing was substantially above the claimed value, the best reported scintillator/photosensor combination benchtop coincidence time resolution being approximately 58 ps for a short crystal, degrading to approximately 98 ps at clinically usable crystal depth (GUNDACKER et al.1) with the best clinical system resolution being approximately 210 ps (VAN SLUIS et al.2). The working examples provide no direction to the claimed result. The quantity of experimentation to practice a detector achieving the recited resolution would therefore be undue. The applicant is invited to identify wherein the specification describes a detector demonstrated to achieve a CTR below 50 ps.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 7, 11-13, 20-22, 25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by VO-DINH et al. (US 20100261263 A1).
Regarding claim 1, VO-DINH discloses a Purcell enhanced metamaterial scintillator structure (enhancement via surface plasmon resonance; see e.g. claim 1) comprising:
a conducting structure (metallic nanoparticle, nano-cap, nano-shell, or the like, wherein down-conversion materials would also be applicable for enhancement; FIGs 6A- 6D; [0137-0143]); and
a dielectric structure disposed adjacent to the conducting structure (e.g. dielectric materials such as Y2O3 are suitable for down-conversion; [0126]);
wherein the dielectric structure comprises a structure of scintillating nanoparticles (nanocrystals having down-conversion properties such as scintillation emission; [0125-0126, 0159, 0209, 0222, 0227]).
Regarding claim 2, VO-DINH discloses wherein the conducting structure and/or the dielectric structure is subwavelength (wavelength of luminescence) in thickness (graph mapping wavelength v. Qext shows a subwavelength thickness; FIG 4B; [0029, 0097]).
Regarding claim 3, VO-DINH discloses wherein the conducting structure and/or the dielectric structure is greater in thickness than a wavelength of luminescence (sub-1000 nm dielectric core; with emissions in the sub-1000 nm range; FIG 4B; [0095-0097]).
Regarding claim 4, VO-DINH discloses wherein the metamaterial scintillator structure comprises one or more unit cells, each unit cell comprising the conducting structure and the dielectric structure (FIG 6A-6D; [0137-0143]).
Regarding claim 5, VO-DINH discloses wherein the conductive structure and the dielectric structure are provided as alternating structures (FIG 6B-G and 6C-G each show a multi-layered metal nanoparticle covered with dielectric layer and metal nanoshell with protective layer).
Regarding claim 7, VO-DINH discloses wherein the Purcell enhanced metamaterial scintillator structure includes one or more resonance cavities to provide increased radiative states and/or an increased local density of optical states (a physical characteristic of metallic structure is set to a value where a surface plasmon resonance in the metallic structure resonates at a frequency which provides spectral overlap with either the first or second wavelength; [0090]).
Regarding claim 9, VO-DINH discloses wherein the scintillating nanoparticles are made from a luminescing material (e.g. Y2O3 is a scintillator; [00126]).
Regarding claim 11, VO-DINH discloses wherein the scintillating nanoparticles are doped with active lanthanide ions (e.g. Er3+, Tm3+, Yb3+, etc.; [0077-0079]).
Regarding claim 12, VO-DINH discloses wherein the scintillating nanoparticles experience plasmon resonances in conductive nanoparticles or shells (abstract; [0233]).
Regarding claim 13, VO-DINH discloses wherein the scintillating nanoparticles comprise high-refractive nanoparticles (e.g. Y2O3 has an n=1.93 at visible wavelengths).
Regarding claim 20, VO-DINH discloses a method for forming a Purcell enhanced metamaterial scintillator structure comprising: fabricating scintillating nanoparticles; and forming a conducting structure and a dielectric structure disposed adjacent to the conducting structure.
Regarding claim 21, VO-DINH discloses wherein the scintillating nanoparticles are fabricated from a luminescing material ()[0027-0029]).
Regarding claim 22, VO-DINH discloses wherein the conductive structure comprises a conductive layer and the dielectric structure comprises a dielectric layer (FIGs 6).
Regarding claim 25, VO-DINH discloses wherein the conducting structure and/or the dielectric structure comprises one or more nanostructures; and wherein the nanostructures comprises one or more of nanospheres, nanocubes, nanorods, nanoellipsoids, or nanostars (FIG 6).
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.
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) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over VO-DINH et al. (US 20100261263 A1) in view of SCHMAND et al. (US 20150069250 A1).
Regarding claim 17, VO-DINH discloses a Purcell enhanced metamaterial scintillator structure (enhancement via surface plasmon resonance; see e.g. claim 1) comprising: a conducting structure (metallic nanoparticle, nano-cap, nano-shell, or the like, wherein down-conversion materials would also be applicable for enhancement; FIGs 6A- 6D; [0137-0143]); and a dielectric structure disposed adjacent to the conducting structure (e.g. dielectric materials such as Y2O3 are suitable for down-conversion; [0126]). VO-DINH does not specify a photosensor configured to receive scintillation light from the metamaterial scintillator structure in response to the metamaterial scintillator structure receiving photons emitted from a patient and to generate timing and energy signals in response. In the same field of endeavor, SCHMAND PET system comprising a detector 26 including a scintillation crystal 12, SPAD array 14, timing pick-off (MTP) 16 and processor 18 ([0035]), with the benefit of improved detection. In light of the teachings of SCHMAND, it would have been obvious to one of ordinary skill in the art at the time of filing to combine with the teachings of VO-DINH.
Regarding claim 18, SCHMAND discloses wherein the detector is one of a plurality of detectors according to claim 17 in an imaging system; wherein the imaging system further comprises: a processing electronics configured to receive generated timing and energy signals from a pair of the detectors; and a processor configured to generate an image by processing the generated signals (FIG 1).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over VO-DINH et al. (US 20100261263 A1) in view of COOKE et al. (US 20080092557 A1).
Regarding claim 10, VO-DINH does not disclose wherein the scintillating nanoparticles are embedded in a host matrix, or wherein the dielectric structure comprises a thin film. In the same field of endeavor, COOKE discloses a nanocomposite scintillator for radiation detection comprising scintillating nanoparticles of Ce-doped oxyorthosilicate having size of 100 nm or less, wherein the cerium is an active lanthanide ion, and carried in a matrix (claim 16). It would have been obvious to one of ordinary skill in the art at the time of filing to form VO-DINH’s scintillating nanoparticles as COOKE’s lanthanide-doped nanophosphors embedded in a host matrix as a thin film in order to obtain a mechanically integrated scintillating layer of known composition with the emission properties COOKE describes, with a reasonable expectation of success (see MPEP 2143(I)(A)).
Allowable Subject Matter
Claims 19, 23 and 24 contain allowable subject matter.
Regarding claim 19, the prior art fails to disclose or suggest, in combination with the other claimed elements, wherein the plurality of detectors has a coincidence time resolution (CTR) of < 50 picoseconds (ps), and wherein processing the generated signals uses time of flight (ToF) methods.
Regarding claim 23, the prior art fails to disclose or suggest, in combination with the other claimed method steps, wherein said forming a dielectric structure comprises 3D printing a thin film.
Regarding claim 24, the prior art fails to disclose or suggest, in combination with the other claimed method steps, wherein said formed dielectric structure is self-assembled.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CASEY BRYANT whose telephone number is (571)270-7329. The examiner can normally be reached M-F // 7-3P EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, UZMA ALAM can be reached at 571-272-3995. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CASEY BRYANT
Primary Examiner
Art Unit 2884
/CASEY BRYANT/ Primary Examiner, Art Unit 2884
1 Physics in Medicine and Biology 6405512 (2019).
2 Journal of Nuclear Medicine 60, 1031 (2019).
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