DETAILED ACTION
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 13 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.
Claim 13 recites that “the second IR-ink has a greater amount of absorbing pigment than the first IR-ink” which infers that the first IR-ink has some absorbing pigment, which directly conflicts with the new recitation in claim 6, from which it depends.
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.
Claims 6, 9, 13, 16 and 18-23, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abe et al. (US 4,869,532).
In respect to claims 6, 16, 18, and 20, Abe et al. disclose a base material 1 which may comprise a plastic film (Col. 5, 62) which has printed thereon a first IR-ink (“infrared reflective”) (forming a first printing image) having a first remission value and a second IR-ink ink (“infrared absorptive”) (forming a second printing image) having a second remission value (Fig. 1); at an IR-wavelength of 1000, the remission value “reflectivity” of first image may be 95% and the remission value “reflectivity’ of the second image may be 1% (>40% difference) (Col. 9, 1-10). Abe et al. inherently disclose a difference of reflectivity of exactly 40%. A Reflectivity % to wavelength graph plot is necessarily continuous and a wavelength of 700 nm wavelength yields a R% of 15, and a 800 nm wavelength yields a R% of 93. One of ordinary skill understands that between 700 nm and 800 nm, the reflectivity must cross 40% (<50%). One of ordinary skill in the art also understands the reflectivity of the second image to be a near static 1% across 700-800nm, thus providing a 40% difference. (Col. 9, 1-10). Abe et al. disclose that the first and second image are perceptible in the visible wavelength range as the same hue, specifically “The present inventors have hence found that effective use of properties of an ink making use of a carbon black pigment [IR absorptive, 2nd ink] having infrared ray absorbance and those of another ink making use of a coloring agent [IR reflective, first ink] having infrared ray reflectivity permits distinction of letters and/or patterns by an infrared reader although they look exactly the same and cannot be distinguished from each other under visible light (visually)” (Col. 2, 66 – Col. 3, 5). Abe et al. further disclose that the coloring agent, which forms the IR reflective (first IR-ink) is preferably selected from a variety of azo coloring agents including that disclosed in Abe et al. JP 138857/1987 (Col 5, 14). This Abe et al. reference discloses: “the present invention is a coloring composition for image recording comprising a colorant and a resin dispersion medium, wherein the colorant is an azo-based organic pigment or dye having a residue having an azomethine group”.
In respect to claim 9, Abe et al. disclose that the IR-inks may be water-based or solvent-based (Col. 6, 1-8).
In respect to claim 13, although unclear for the reasons stated above, Abe et al. disclose that the first IR-ink may have zero pigment (only a dye), thus less pigment than the second IR-ink.
In respect to claim 19, Abe et al. disclose that the second IR-ink may be almost completely reflective in the IR range (1000-1100 nm) (95%) (Col. 9, 1-10), and further that “reflectivity” may be defined as a transmissive property, thus the ink assuming the color of the material behind it (Col. 5, 47-68). One of ordinary skill would readily infer that this would appear “not perceptible”, at least in several conditions which are open to this broad interpretation (lighting levels, distance, viewer acuity, etc.).
In respect to claims 21-23, Abe et al. disclose two different inks composed of different materials. One of ordinary skill in the art readily ascertains them to functionally capable of a different color in the UV-range. Each of the inks has a different reflective profile, and further may be comprise different combinations of inks (Col. 7, 65 – Co. 8, 16). The only instance where the color impression would be the same across the entire UV-range (10 – 400 nm) would be identical reflective profiles across the entire range, which would be recognized as impossible by one of ordinary skill (even more so when different combinations of inks are used). Regardless, Abe et al. disclose the first and second ink having different colors (reflectivity) in the UV range (300 nm), of 6% and 1%, respectively.
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 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.
Claims 6, 9, 13, 16, 18-20, and 22-23, are rejected under 35 U.S.C. 103 as being obvious over Abe et al. (US 4,869,532) in view of Munday (WO 2018/206936).
In respect to claims 6, 16, 18, 20, and 22-23, Abe et al. disclose a base material 1 which may comprise a plastic film (Col. 5, 62) which has printed thereon a first IR-ink (“infrared reflective”) (forming a first printing image) having a first remission value and a second IR-ink ink (“infrared absorptive”) (forming a second printing image) having a second remission value (Fig. 1); at an IR-wavelength of 1000, the remission value “reflectivity” of first image may be 95% and the remission value “reflectivity’ of the second image may be 1% (>40% difference) (Col. 9, 1-10). Abe et al. inherently disclose a difference of reflectivity of exactly 40%. A Reflectivity % to wavelength graph plot is necessarily continuous and a wavelength of 700 nm wavelength yields a R% of 15, and a 800 nm wavelength yields a R% of 93. One of ordinary skill understands that between 700 nm and 800 nm, the reflectivity must cross 40% (<50%). One of ordinary skill in the art also understands the reflectivity of the second image to be a near static 1% across 700-800nm, thus providing a 40% difference. (Col. 9, 1-10). Abe et al. disclose that the first and second image are perceptible in the visible wavelength range as the same hue, specifically “The present inventors have hence found that effective use of properties of an ink making use of a carbon black pigment [IR absorptive, 2nd ink] having infrared ray absorbance and those of another ink making use of a coloring agent [IR reflective, first ink] having infrared ray reflectivity permits distinction of letters and/or patterns by an infrared reader although they look exactly the same and cannot be distinguished from each other under visible light (visually)” (Col. 2, 66 – Col. 3, 5). Abe et al. further disclose that the coloring agent, which forms the IR reflective (first IR-ink) is preferably selected from a variety of azo coloring agents including that disclosed in Abe et al. JP 138857/1987 (Col 5, 14). This Abe et al. reference discloses: “the present invention is a coloring composition for image recording comprising a colorant and a resin dispersion medium, wherein the colorant is an azo-based organic pigment or dye having a residue having an azomethine group”.
Abe et al. do not disclose that the first IR-ink comprises a first fluorescence at a first color and the second IR-ink comprises a second fluorescent at a second different color, however, Munday teaches a similar pair of metameric (look identical in visible light) which further comprise a first and second fluorescence, respectively, which appear as different colors in UV light (Abstract & Col. 3, 11-21). It would have been obvious to provide the IR-inks in Abe et al. with further fluorescent properties in view of Munday to provide additional security to the inks under UV-illumination, which still appear identical under visible light (Col. 2, 31 – Col. 3, 9)
In respect to claim 9, Abe et al. disclose that the IR-inks may be water-based or solvent-based (Col. 6, 1-8).
In respect to claim 13, although unclear for the reasons stated above, Abe et al. disclose that the first IR-ink may have zero pigment (only a dye), thus less pigment than the second IR-ink.
In respect to claim 19, Abe et al. disclose that the second IR-ink may be almost completely reflective in the IR range (1000-1100 nm) (95%) (Col. 9, 1-10), and further that “reflectivity” may be defined as a transmissive property, thus the ink assuming the color of the material behind it (Col. 5, 47-68). One of ordinary skill would readily infer that this would appear “not perceptible”, at least in several conditions which are open to this broad interpretation (lighting levels, distance, viewer acuity, etc.).
In respect to claims 24 and 25, the claims cannot be ascertained for reasons detailed in the 35 USC 112 rejection. As best can be determined, Abe et al. in view of Munday appears to teach the claims.
Response to Arguments
Applicant's arguments filed 12/11/25 have been fully considered but they are not persuasive.
In respect to the 35 USC 102 rejection to claims 6, 9, and 13, the arguments are moot, as a secondary reference has been applied to meet the amended limitation.
In respect to the 35 USC 102 rejection to claims 16 and 18-23, the arguments are not persuasive. The disclosure of both pigmented and dye IR-inks via the incorporation of Abe et al. JP 138857/1987, as adequately detailed in this Final Action and the previous Non-Final Office Action.
In respect to the 35 USC 112 rejection to claim 13, the arguments are not persuasive. The cited paragraphs only support adjusting the amount of absorption in absorbing inks, since these inks use pigments. The disclosure of grey levels is drawn to the amount of absorbing pigment. The IR-transparent inks are formed of dyes (also recited in claim 6). Thus the “level of reduced transparency” is referring to the absorbing IR-inks, and not the transparent IR-inks. Thus, there is no disclosure of the transparent IR-ink having any absorbing pigment. Thus, the claims are indefinite and unclear. New claims 24 and 25 are unclear and indefinite for the same reasons.
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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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637