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 .
Examiner’s Comments
Applicants’ response filed on 10/16/2025 has been fully considered. Claims 2-3 are canceled and claims 1 and 4-10 are pending.
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1, 4-5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Takaguchi et al (JP 2019-131727 A) in view of Radke et al (US 2011/0080451 A1).
A machine translation is being used for the English translation for Takaguchi et al (JP 2019-131727 A).
Regarding claim 1, Takaguchi disclose an anti-counterfeit ink composition (infrared absorbing ink; paragraph [0009]) comprising:
organic-inorganic hybrid infrared absorbing particles (composite particles; paragraph [0030]);
wherein the organic-inorganic hybrid infrared absorbing particles include infrared absorbing particles and a coating resin (composite particles comprises a tungsten-based infrared absorbing pigment with a coating resin that covers at least a part of a surface of the infrared absorbing particles; paragraph [0030]),
wherein the organic-inorganic hybrid infrared absorbing particles are a mini-emulsion containing a raw material of the coating resin and the infrared absorbing particles in which the infrared absorbing particles are encapsulated in the coating resin (composite particles comprises a tungsten-based infrared absorbing pigment with a coating resin that covers at least a part of a surface of the infrared absorbing particles; paragraph [0030]),
wherein each of the organic-inorganic hybrid infrared absorbing particles form a spherical structure having a size of 50 nm or more and 500 nm or less in which the infrared particles are encapsulated (composite particles has a number average particle size of 0.5 µm or more and 3 µm or less; paragraph [0013]),
and wherein the coating resin includes polystyrene (thermoplastic resin comprises polystyrene; paragraph [0031]).
The number average particle size of the composite particles overlaps the claimed range for the size of the mini-emulsion of the organic-inorganic hybrid infrared absorbing particles.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the ink be suitable for gravure printing (paragraph [0012] of Takaguchi). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The organic-inorganic hybrid infrared absorbing particles obtained by polymerizing a raw material of the coating resin is a product-by-process limitation.
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Takaguchi does not disclose the anti-counterfeit ink composition comprising a surfactant and wherein the surfactant is a quaternary ammonium salt.
However, Radke discloses an ink comprising a surfactant and wherein the surfactant is a quaternary ammonium salt (ink comprising one or more surfactants and wherein the one or more surfactants comprises quaternary ammonium salt compounds; paragraph [0032]).
It would have been obvious to one of ordinary skill in the art to modify the infrared absorbing ink of Takaguchi to include the surfactant of a quaternary ammonium salt compound of Radke in the infrared absorbing ink of Takaguchi because having the required surfactant reduces the surface tension of the ink leading to improved image quality during printing of the ink onto a substrate.
Regarding claim 4, Takaguchi and Radke disclose the anti-counterfeit ink composition of claim 1 as noted above and Takaguchi discloses the anti-counterfeit ink composition comprising the coating resin being a photocurable resin and wherein the photocurable resin includes a resin to be cured by irradiation with ultraviolet rays, visible rays or infrared rays (the thermoplastic resin comprises polystyrene; paragraph [0031]).
The polystyrene is considered to be a photocurable resin cured by irradiation with ultraviolet rays, visible rays or infrared rays as polystyrene is the same as the Applicant’s preferred material of polystyrene for the coating resin as claimed in claim 1 and paragraphs [0068]-[0069] of Applicant’s Specification discloses that polystyrene is an example of a photocurable resin.
Regarding claim 5, Takaguchi and Radke disclose the anti-counterfeit ink composition of claim 1 as noted above and Takaguchi discloses the anti-counterfeit ink composition comprising the infrared absorbing particles including tungsten oxide represented by the formula WyOz satisfying 2.2 ≤ z/y ≤ 2.999 (tungsten oxide fine particles having the formula WyOz satisfying 2.45 ≤ z/y ≤ 3.0; paragraph [0022]) and composite tungsten oxide represented by the formula MxWyOz satisfying 0.001 ≤ x/y ≤ 0.85 and 2.0 ≤ z/y ≤ 3.0 with M being selected from H (composite tungsten oxide fine particles having the formula MxWyOz satisfying 0.001 ≤ x/y ≤ 0.85 and 2.2 ≤ z/y ≤ 3.0 with M being selected from H; paragraph [0022]).
Regarding claim 7, Takaguchi discloses an anti-counterfeit printed product including a printed portion (infrared absorbing ink gravure printed onto a substrate; paragraph [0055]) and wherein the anti-counterfeit ink composition of claim 1 is met by Takaguchi in view of Radke as noted above.
Regarding claim 8, Takaguchi and Radke disclose the anti-counterfeit printed product of claim 7 as noted above and Takaguchi discloses the anti-counterfeit printed product comprising an organic binder (a binder resin; paragraph [0043]).
Regarding claim 9, Takaguchi and Radke disclose the anti-counterfeit ink composition of claim 1 as noted above and Takaguchi discloses the anti-counterfeit ink composition comprising a dispersant (paragraph [0036]).
Claims 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Takaguchi et al (JP 2019-131727 A) in view of Radke et al (US 2011/0080451 A1) in further view of Tsunematsu et al (US 2021/0047518).
Tsunematsu et al (US 2021/0047518) is being used as the English translation for Tsunematsu et al (WO 2019/093524 A1) published 5/16/2019.
Regarding claim 6, Takaguchi and Radke disclose the anti-counterfeit ink composition of claim 1 as described above.
Takaguchi and Radke do not disclose the anti-counterfeit ink including a liquid uncured material of a resin to be cured by energy rays.
However, Tsunematsu discloses infrared-absorbing fine particle dispersion liquid comprising a liquid uncured material of a resin to be cured by energy rays (the infrared-absorbing fine particle dispersion liquid further comprising a resin binder of a ultraviolet curable resin; paragraph [0167]).
It would have been obvious to one of ordinary skill in the art to modify the infrared absorbing ink of Takaguchi and Radke to include the ultraviolet curable resin for the binder resin of Tsunematsu because doing so provides the desired binding of components in the ink.
Regarding claim 10, Takaguchi and Radke disclose the anti-counterfeit ink composition of claim 1 as described above.
Takaguchi and Radke do not disclose the anti-counterfeit ink composition comprising a dispersant including a copolymer having an amine functional group and a polyether structure.
However, Tsunematsu discloses an infrared-absorbing fine particle dispersion liquid comprising a dispersant comprising SOLSPERSE 20000 (dispersant including a copolymer having an amine functional group and a polyether structure; paragraph [0173]).
SOLSPERSE 20000 is considered to be a dispersant including a copolymer having an amine functional group and a polyether structure as paragraph [104] of Applicant’s Specification states that SOLSPERSE 20000 is an example of a dispersant including a copolymer having an amine functional group and a polyether structure.
It would have been obvious to one of ordinary skill in the art to modify the infrared absorbing ink of Takaguchi and Radke to include the dispersant of SOLSPERSE 20000 for the dispersant of Takaguchi because doing so provides improved dispersion stability of the surface-treated infrared absorbing fine particles and avoids coarsening of the dispersed particle size due to re-aggregation (paragraph [0170] of Tsunematsu).
Response to Arguments
Applicant's arguments filed 10/16/2025 have been fully considered but they are not persuasive.
Applicants argue that the feature of each of the organic-inorganic hybrid infrared absorbing particles forming a spherical structure having a size of 50 nm or more and 500 nm or less in which the infrared absorbing particles are encapsulated obtained by polymerizing a mini-emulsion cannot be obtained by pulverizing the composite kneaded body.
This argument is not persuasive as the claimed mini-emulsion and the composite kneaded body that has been pulverized both have a structure of infrared absorbing particles encapsulated in a coating resin, therefore the structure would be the same. Obtaining the claimed organic-inorganic hybrid infrared absorbing particles by polymerizing a mini-emulsion is a product-by-product limitation as there is not obvious structural difference between the claimed mini-emulsion and the composite kneaded body that has been pulverized.
Applicants argue that Radke does not cure the deficiencies of Takaguchi.
This argument is not persuasive as Radke is a teaching reference used to teach a surfactant of a quaternary ammonium salt compound.
However, note that while Radke does not disclose all the features of the present claimed invention, Radke is a teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches certain concepts, namely a surfactant of a quaternary ammonium salt compound, and in combination with the primary reference, discloses the presently claimed invention.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785