UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`15/547,450
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`07/28/2017
`
`Natsuki SATO
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`MIYOP0135WOUS
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`5323
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`HOBAN MATTHEW E
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`ART UNIT
`1734
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`05/15/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`ipdoeket@rennerotto.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
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`Application No.
`15/547,450
`Examiner
`MATTHEW E HOBAN
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`Applicant(s)
`SATO, Natsuki
`Art Unit
`1734
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 7/28/17.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`7—10 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) w is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)I:l Some**
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`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190510
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`

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`Application/Control Number: 15/547,450
`Art Unit: 1734
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013,
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`is being examined
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`under the first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 102
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`2.
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`The following is aquotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1 ) the claimed inventionwas patented, described in a printed publication, or in public use,
`on sale orothenNise available to the public before the effective filing date of the claimed
`invention.
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`3.
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`Claim(s) 7-8 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being
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`anticipated by Kubel in their publication entitled “Ba2.2Cao.sl\/lg4Fi4, a new “solid solution
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`stabilized” matrix for an intense blue phosphor”.
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`Regarding Claim 7 and 8: Kubel teaches a phosphor composition (wavelength
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`conversion member) of formula Ba2.2Cao.sl\/lg4Fi4doped with 1 mol% Eu (See Powder
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`Synthesis 2). The phosphor composition is of the same composition as that which is
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`instantly claimed and disclosed (See Example 2). As the material of the prior art is of
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`the same composition as that which is disclosed, it would inherently have the same
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`characteristics in terms of internal quantum efficiency and refractive index as that which
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`is claimed. Materials of the same composition and structure must inherently have the
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`same properties as those properties stem directly from the material composition.
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`

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`Application/Control Number: 15/547,450
`Art Unit: 1734
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`Page 3
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`Regarding Claim 10: Kubel shows the incorporation of the material in a photovoltaic
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`device (See Luminescence Spectra and Figures 5-7).
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`Claim Rejections - 35 USC § 103
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`4.
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`This application currently names joint inventors.
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`In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly owned as of the effective filing date of the claimed invention(s) absent any
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`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`owned as of the effective filing date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
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`5.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`A patent for a claimed invention maynotbe obtained, notwithstanding that the claimed
`invention is not identicallydisclosed as set forth in section 102, if the differences between the
`claimed invention and the priorartare such that the claimed invention as awhole would have
`been obvious before the effective filing date of the claimed i nvention to a person having
`ordinaryskill in the art to which the claimed invention pertains. Patentabilityshall notbe
`negated by the manner in which the invention was made.
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`6.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`

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`Application/Control Number: 15/547,450
`Art Unit: 1734
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`Page 4
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`7.
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`Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubel in
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`their publication entitled “Ba2.2Cao.8Mg4F14, a new “solid solution stabilized” matrix for an
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`intense blue phosphor” as applied to claim 7 above, and further in view of Nakajima in
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`U82010/0157583.
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`Kubel teaches a phosphor composition (wavelength conversion member) of formula
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`Ba2.2Cao.sMg4Fi4doped with 1 mol% Eu (See Powder Synthesis 2). The phosphor
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`composition is of the same composition as that which is instantly claimed and disclosed
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`(See Example 2). As the material of the prior art is of the same composition as that
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`which is disclosed, it would inherently have the same characteristics in terms of internal
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`quantum efficiency and refractive index as that which is claimed. Materials of the same
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`composition and structure must inherently have the same properties as those properties
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`stem directly from the material composition.
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`Kubel teaches that phosphors may be used in a light emitting device using a diode in
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`conjunction with phoshpors, but is silent as to the structure of such a device.
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`However, Nakajima teaches that such a device is created by providing an ultraviolet
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`LED chip and a mixture of red and blue phosphors that are encapsulated and dispersed
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`within a resin (See paragraph 35). Such a device may be incorporated with other chips
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`in order to make the device shown in the Figures.
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`It would have been obvious to use
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`

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`Application/Control Number: 15/547,450
`Art Unit: 1734
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`Page 5
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`the phosphors of Kubel in the device of Nakajima as they are blue phosphors that are
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`made explicitly for use in such devices. Those of ordinary skill in the art would have
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`been motivated to incorporate the phosphor in conventional devices known in the art.
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`Such conventional use requires the encapsulation of the phosphor in a sealant material
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`such as a resin.
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`8.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MATTHEW E HOBAN whose telephone number is
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`(571)270-3585. The examiner can normally be reached on M—F 9:30am-6:00pm.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Jonathan Johnson can be reached on 571-272—1177. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Application/Control Number: 15/547,450
`Art Unit: 1734
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`Page 6
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`Business Center (EBC) at 866-217-9197 (toll-free).
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`If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`/Matthew E. Hoban/
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`Primary Examiner, Art Unit 1734
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`