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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/02/2026 has been entered.
Response to Amendments
In response to the amendment received on 04/02/2026:
• Claims 1, 3, 4, 6-8, 10-13, 15-23, and 25-30 are currently pending. Claims 2, 5, 9, 14, and 24 are canceled. Claims 15-19, 21-23, and 25-29 are withdrawn for being directed to a non-elected invention(s).
• All previous prior art grounds of rejection are withdrawn in light of the amendments to the claims.
Claim Objections
Claim 1 is objected to because of the following informalities:
• In claim 1, line 5, the term “it” should be replaced with “the nanocomposite.”
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 7 is 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.
In claim 7, the term “(PDMS)” is in parentheses. PDMS refers to polydimethylsiloxane, which is a specific type of polysiloxane. It is unclear whether the parentheses necessitates the polysiloxane to be PDMS or not. To correct, the Examiner suggests deleting the term “(PDMS)” from the claim. For the purposes of examination, the Examiner is interpreting any polysiloxane to suitably read on the claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 4, 7, 8, 10-13, 20, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa et al. (JP-2017186454-A), with reference to the previously included machine translation (hereinafter referred to as “Ishikawa”), with evidence from Yuasa et al. (US-20150221447-A1) (hereinafter referred to as “Yuasa”) as to the rejection of claim 12 only.
Regarding claims 1, 3, and 7, Ishikawa teaches a photothermal-responsive melanin-based nanocomposite comprising:
• a plurality of natural or synthetic melanin nanoparticles and a polymer matrix, wherein said plurality of natural or synthetic melanin nanoparticles comprise polydopamine (PDA) nanoparticles (regarding claim 3), and wherein the polymer matrix is polystyrene (regarding claim 7) (see Ishikawa at pg. 4, para. 3, teaching a structural color ink including a light absorbing material, a pinning agent, and particles capable of observing a structural color; also see Ishikawa at pg. 4, para. 4-5, teaching the particles may include polystyrene particles; also see Ishikawa at pg. 7, para. 6, pg. 8, para. 1, and pg. 8, para. 4-5, teaching the light-absorbing material to preferably be polydopamine, and the polydopamine to be nanometer-sized/thick; the polydopamine of Ishikawa corresponds to the claimed “plurality of natural or synthetic melanin nanoparticles;” also see Ishikawa at pg. 13, para. 5, teaching the liquid component of the structural color ink as being evaporated to form an image portion containing a particle structure; the components present after evaporating the liquid portion of the ink necessarily correspond to the claimed “nanocomposite;” also see example 2 at Table 1 of Ishikawa at pg. 20 (pg. 22 of untranslated Ishikawa), teaching an example ink containing 10 wt% of polystyrene particles Pst-200 (see Ishikawa at pg. 14, para. 6), 1 wt% of polydopamine particles PDA-100Bk (see Ishikawa at pg. 15, para. 4), 3 wt% of sodium alginate as a pinning agent (see Ishikawa at pg. 15, para. 7), 66 wt% of H2O, and 20 wt% of ethylene glycol monobutyl ether acetate as a solvent (see Ishikawa a pg. 15, para. 12); in example 2 of Ishikawa, the polystyrene particles Pst-200, the polydopamine particles PDA-100Bk, and the sodium alginate collectively correspond to the claimed “nanocomposite” following evaporation of the solvent components; further, it necessarily follows that the polystyrene particles function as a “polymer matrix” via the distribution of the polydopamine particles in the nanocomposite containing the polystyrene particles (also see the claim 10 rejection below)).
While Ishikawa teaches the nanocomposite outlined above, Ishikawa fails to explicitly teach (1) the concentration of said plurality of natural or synthetic melanin nanoparticles in the nanocomposite to range from more than 10 wt% to about 40 wt% or less, and (2) the temperature of the nanocomposite to increase when it is exposed to light.
Regarding (1), Ishikawa teaches an example, example 2 (see Table 1 at pg. 20 and untranslated Ishikawa at pg. 22), which contains 10 wt% of polystyrene particles Pst-200 (see Ishikawa at pg. 14, para. 6), 1 wt% of polydopamine particles PDA-100Bk (see Ishikawa at pg. 15, para. 4), 3 wt% of sodium alginate as a pinning agent (see Ishikawa at pg. 15, para. 7), 66 wt% of H2O, and 20 wt% of ethylene glycol monobutyl ether acetate as a solvent (see Ishikawa a pg. 15, para. 12). Moreover, Ishikawa broadly teaches their light-absorbing material, i.e., the polydopamine particles, may range from 0.001% by mass or more and 5% by mass or less in their ink composition (see Ishikawa at pg. 8, para. 3).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the content of the polydopamine particles in example 2 of Ishikawa to range from 0.001 to 5% by mass, given Ishikawa broadly teaches the concentration of their polydopamine particles may be present in the ink in this range (see Ishikawa at pg. 8, para. 3).
Example 2 Component
Concentration of Component in Ink Composition Prior to Evaporation (mass%)
Polystyrene particles Pst-200
10%
Polydopamine particles PDA-100Bk
0.001 – 5%
Sodium alginate
3%
Following the above modification, ink example 2 of Ishikawa contains the following components (excluding water and the ethylene glycol monobutyl ether acetate solvent):
Accordingly, following evaporation of the water and the ethylene glycol monobutyl ether acetate solvent, the “nanocomposite” of modified example 2 of Ishikawa contains:
55.6% - 76.9% polystyrene particles (10% polystyrene/(10% polystyrene + 5% polydopamine max + 3% sodium alginate) • 100 = 55.6% polystyrene in nanocomposite min; 10% polystyrene/(10% polystyrene + 0.001% polydopamine min + 3% sodium alginate) • 100 = 76.9% polystyrene in nanocomposite max);
0.008% - 27.8% polydopamine particles (0.001% polydopamine min/(10% polystyrene + 0.001% polydopamine min + 3% sodium alginate) • 100 = 0.008% polydopamine in nanocomposite minimum; 5% polydopamine max/(10% polystyrene + 5% polydopamine max + 3% sodium alginate) • 100 = 27.8% polydopamine in nanocomposite max); and
16.7% - 23.1% of sodium alginate (3% sodium alginate/(10% polystyrene + 5% polydopamine max + 3% sodium alginate) • 100 = 16.7% sodium alginate in nanocomposite min; 3% sodium alginate/(10% polystyrene + 0.001% polydopamine min + 3% sodium alginate) • 100 = 23.1% sodium alginate in nanocomposite max).
The above results are summarized in table form below for easier viewing:
Example 2 “Nanocomposite” Component
Concentration Range of Component in “Nanocomposite” (mass%)
Polystyrene particles Pst-200
55.6% - 76.9%
Polydopamine particles PDA-100Bk
0.008% - 27.8%
Sodium alginate
16.7% - 23.1%
Thus, following the above modification, the “nanocomposite” present in the ink of example 2 of Ishikawa contains 0.008% to 27.8% of polydopamine particles relative to the overall nanocomposite. This range overlaps the claimed range of 10 to 40%, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding (2), given that the coating of example 2 of modified Ishikawa is the same as that claimed, including the same natural or synthetic melanin nanoparticles as claimed (polydopamine) and the same polymer matrix as claimed (polystyrene) in the same overlapping claimed amount (e.g., 0.008% - 27.8%), it necessarily follows that the solid coating of Ishikawa (i.e., the nanocomposite) meets the claimed property of increasing temperature following exposure to light; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II)); the burden of proof then shifts to Applicants to provide objective evidence to the contrary, see In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01)).
Regarding claim 4, see Ishikawa at pg. 8, para. 4, teaching the average particle diameter of the light-absorbing material (i.e., polydopamine) to range from 10 to 100 nm, which falls completely within the claimed range.
Regarding claims 8 and 13, see the claim 1 rejection above, which is incorporated herein; the coating produced after evaporating the ink of Ishikawa (e.g., Example 2) corresponds to the claimed “coating;” alternatively, the ink composition of modified example 2 of Ishikawa may simply comprise the three components (polydopamine, polystyrene, and sodium alginate) which collectively correspond to the claimed “nanocomposite.”
Regarding claim 10, see modified example 2 of Ishikawa at Table 1 at pg. 20 (pg. 22 of untranslated Ishikawa) from the claim 1 rejection above; after evaporating the ink, the obtained coating contains 55.6% - 76.9% of polystyrene, 0.008% - 27.8% of polydopamine, and 16.7% - 23.1% of sodium alginate, as previously shown above; thus, the “coating” contains primarily polystyrene, and thus necessarily functions as a vehicle holding the polydopamine in place; alternatively, see Ishikawa at pg. 5, para. 2, teaching the content of the particles (i.e., polystyrene) may range from 1 to 60 mass%; this range of 1 to 60 mass% encompasses values greater than 50 wt%, thus necessarily suggesting the particles (i.e., polystyrene) may additionally function as a vehicle in the liquid ink prior to evaporating).
Regarding claims 11-12, see Ishikawa at pg. 4, para. 4-5, teaching that the particles may be polyacryl, i.e., polyacrylic particles (i.e., alternative to polystyrene particles); the polyacryl particles taught by Ishikawa correspond to the claimed “acrylics;” furthermore, polyacrylic particles are transparent materials that suitably form a film, as evidenced by Yuasa at para. 0076; thus, the polyacrylic particles of Yuasa necessarily correspond to the claimed “clear varnish.”
Regarding claim 20, see modified example 2 of Ishikawa, as previously outlined in the claim 1 rejection above; it necessarily follows that following printing and evaporating of the ink of modified example 2 onto a substrate, the resulting coating functions as a “sensor” like that claimed, as it responds (i.e., increases in temperature) following a stimulus (i.e., exposure to light)); products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II); the burden of proof then shifts to Applicants to provide objective evidence to the contrary, see In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01)).
Regarding claim 30, see Ishikawa at pg. 8, para. 4, teaching the particle size of the light absorbing material (i.e., the polydopamine) to range from 1 nm or more to 200 nm or less. While the content range of 1 to 200 nm taught by Ishikawa does not overlap the claimed range of more than 200 nm to about 500 nm, the ranges are close at their end-points. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773. See MPEP § 2144.05(I). It is reasonable to expect polydopamine particles with a diameter of, for example, 200.0001 that falls within the claimed range and a diameter of, for example, 200 nm that falls within the range as taught by Ishikawa (see Ishikawa at pg. 8, para. 4) to demonstrate similar properties, as the difference between their values is very small, on the order of the thousandths decimal place (or smaller).
Claim 6 is rejected under 35 U.S.C 103 as obvious over Ishikawa, or in the alternative, as obvious over Ishikawa further in view of Britton (US-5024700-A) (hereinafter referred to as “Britton”).
Regarding claim 6, Ishikawa teaches the photothermal-responsive melanin-based nanocomposite according to claim 1 outlined above, wherein the plurality of natural or synthetic melanin nanoparticles are substantially homogenously distributed throughout the polymer matrix (see Ishikawa at pg. 4, para. 3, teaching a structural color ink including a light absorbing material and particles capable of observing a structural color; also see Ishikawa at pg. 12, para. 1, teaching the materials in the structural ink to be stirred and mixed together; thus, it necessarily follows that upon mixing, the plurality of natural or synthetic melanin nanoparticles are distributed homogenously throughout the structural ink, and thus, throughout the polystyrene polymer matrix upon drying of the ink).
In the alternative, one of ordinary skill in the art would readily recognize the common sense benefits of homogenous distribution of components in an ink, namely, for even consistency and spread upon printing (also see Britton at col. 5, lines 11-18). The MPEP supports the position that a patent examiner may rely on "common knowledge and common sense of [a] person of ordinary skill in the art without any specific hint or suggestion in a particular reference.” See MPEP § 2143(I)(E).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to distribute the polystyrene and polydopamine particles homogenously throughout the ink of Ishikawa. One of ordinary skill in the art would have been motivated to do so in order to obtain an ink having an even consistency and spread upon printing (also see Britton at col. 5, lines 11-18).
It necessarily follows that upon homogenous distribution of both the polystyrene and polydopamine particles throughout the ink of Ishikawa, the polydopamine particles are substantially homogenously distributed throughout the polystyrene polymer matrix following drying of the liquid component.
Response to Arguments
Applicant's arguments filed 04/02/2026 have been fully considered. The Examiner agrees with Applicants that the amendments to the claims overcome the previous 35 U.S.C. 102 rejection (see Applicant’s Remarks at pg. 6-7). However, a new grounds of rejection is presented over 35 U.S.C. 103, see above. To the extent that Applicant’s arguments apply to the new grounds of rejection, they are addressed below:
First, Applicants argue that amending the claimed range to 10% to 40% by mass overcomes Ishikawa (see Applicant’s Remarks at pg. 6-7).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
As shown in the claim 1 rejection above, Ishikawa broadly teaches a concentration for their light-absorbing material (i.e., the polydopamine) in their ink to range from 0.001 to 5% by mass (see Ishikawa at pg. 8, para. 3). Thus, it would have been obvious to modify example 2 of Ishikawa to have this range of 0.001 to 5% by mass of polydopamine particles, resulting in a polydopamine particle concentration in the nanocomposite of 0.008% - 27.8% (see claim 1 rejection above). Consequently, the amended claims do not overcome Ishikawa.
Next, Applicants argue Ishikawa fails to teach the photothermal absorption properties of the polydopamine in their composition, and further, that one of ordinary skill would have no reason to believe the temperature to increase when exposed to light given the dearth of particles present (see Applicant’s Remarks at pg. 7-8).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Ishikawa teaches embodiments which contain the synthetic or natural melanin particles in the nanocomposite that overlap the claimed amount (see claim 1 rejection above). Thus, regardless of whether Ishikawa teaches ranges that extend low to 0.001% does not negate the teaching for values that fall within the claimed range. Further, Applicants do not mention that Ishikawa also teaches values higher than 0.001 wt%, e.g., 5 wt% (see Ishikawa at pg. 8, para. 3). Consequently, given that the coating of example 2 of modified Ishikawa is the same as that claimed, including the same natural or synthetic melanin nanoparticles as claimed (polydopamine) and the same polymer matrix as claimed (polystyrene) in the same overlapping claimed amount (e.g., 0.008% - 27.8%), it necessarily follows that the coating of Ishikawa (i.e., the nanocomposite) meets the claimed property of increasing temperature following exposure to light; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II)); the burden of proof then shifts to Applicants to provide objective evidence to the contrary, see In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01)).
Examiner’s Suggestions
In the interest of expedited prosecution, the Examiner proposes a potential amendment to overcome the current grounds of rejection. It is noted that this amendment is suggested following a brief, cursory glance of the specification and the prior art, and there is no guarantee such amendment won’t read on the current references upon a more detailed review. Moreover, further search and consideration would be required if such amendment is added (i.e., allowability is NOT guaranteed following the incorporation of such amendment). Lastly, Applicants may use all or none of such suggestion – it is merely intended as a helpful starting point for potential future amendments, if desired. If Applicants wish to clarify or discuss the below suggested amendment further, the Examiner invites Applicants to telephone for an interview.
Amendment Suggestion 1 (support found at claim 7):
(Currently amended) A photothermal-responsive melanin-based nanocomposite
comprising a plurality of natural or synthetic melanin nanoparticles and a polymer matrix, wherein the concentration of said plurality of natural or synthetic melanin nanoparticles in the nanocomposite is from more than 10 wt. % to about 40 wt. % or less, wherein the polymer matrix is selected from the group consisting of epoxy, polyurethanes, poly(lactic acid), polyolefins, vinyls, polyvinyl alcohol, polysiloxanes, rubbers and elastomers, and combinations thereof, and wherein the temperature of the nanocomposite increases when it is exposed to light.
Examiner’s Note: the above suggestion would appear, upon a brief initial glance, to overcome the current grounds of rejection, given polystyrene and acrylates are now excluded from the Markush group.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
Prosecution Insights