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 .
This action is responsive to Applicant’s amendment/remarks filed 04/07/2026.
Claims 1, 6, and 8-17 are currently pending.
Response to Amendment
The rejection of claims 1, 6, and 8-17 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is withdrawn in view of the above amendment. Applicant has amended the colorant from a gallium tetrabenzoporphyrin complex that was not described in the original disclosure to a gallium phthalocyanine complex with sufficient written description basis in the original disclosure.
However, the amendment from a gallium tetrabenzoporphyrin complex to a gallium phthalocyanine complex necessitates a new 103 rejection over the Woyciesjes et al. (US 2006/0054564 A1) and Vonwiller et al. (US 2006/0027138 A1) references of record. See the new 103 rejection, below.
Claim Interpretation
Chemical Formula 2-4 has four pendent “TEG” substituent groups. TEG is a clear and definite abbreviation for triethylene glycol (see, for example [0054] of the original specification, that sets forth a clear definition and standard for the abbreviation), e.g., “-OCH2CH2OCH2CH2OCH2CH2OH”.
Also, as set forth in Applicant’s remarks on p.5-6 of the remarks filed 11/17/2025, that the claimed PEG0.4k group is well-known in the art as meaning a polyethylene glycol (PEG) having an average molecular weight of about 400, that such a product is widely commercially available, and a person having ordinary skill in the art would immediately recognize and understand the claimed -O-PEG0.4k group means a PEG substituent having an average molecular weight of about 400.
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, 6, and 8-17 are rejected under 35 U.S.C. 103 as being unpatentable over Woyciesjes et al. (US 2006/0054564 A1) in view of Vonwiller et al. (US 2006/0027138 A1).
As to claim 1, Woyciesjes et al. teach a heat transfer fluid composition (abstract). The heat transfer fluid composition is also referred to as an antifreeze composition (para. 0026). The composition comprises at least one alcohol, preferably a glycol, in an amount of 10-99.9 wt.% of the composition and subsets thereof and water in an amount of 0-90 wt.% of the composition and subsets thereof (para. 0031-0032 & 0067-0069), which overlaps the claimed presence and amounts of a glycol compound and water. The composition further comprises a colorant (para. 0031 & 0053+), preferably at a concentration of 0 to -0.2 wt.% of the composition (para. 0053 & 0066), and colorants with various chromophores such as phthalocyanine or conjugated heterocyclic groups may be provided (para. 0055). The colorant should be non-ionic and soluble (or dispersible) in the mixture of alcohol and water (para. 0053).
Woyciesjes et al. fail to teach the colorant comprises a (gallium-based phthalocyanine) structure of Chemical Formula 2-4.
However, Vonwiller et al. teach metal cyanine complexes of the following formula for use as dyes:
PNG
media_image1.png
218
242
media_image1.png
Greyscale
(para. 0121) where M is selected from a small number of metals and metalloids including gallium (“Ga(A1)”, para. 0123) and the Qs are preferably an arylene of formula (i):
PNG
media_image2.png
207
127
media_image2.png
Greyscale
(para. 0153) where R1 and R2 may each be hydrogen atoms (para. 0154), T is a polymeric chain or a hydrocarbyl group where n is 0, 1, or 2, i.e., optional, (para. 0155 & 0159), and W is a hydrophilic group where m is 0, 1, or 2, i.e., optional, (para. 0156 & 0158). The totality of hydrogens as the R groups and the T and W being optional amounts to a gallium phthalocyanine dye corresponding the general structure of Chemical Formula 2-5 without the -TEG substituents. Note the gallium is present as “Ga(A1)” (Id. in para. 0123).
Regarding the claimed -O-PEG0.4k axial substituent, Vonwiller et al.’s A1 is an axial ligand comprising a hydrophilic group (para. 0124). The hydrophilic group is preferably a hydrophilic polymer chain (para. 0098 & 0138), and an example of a hydrophilic polymer chain is a PEG, i.e., polyethylene glycol, chain comprising 2-5,000 repeating units, preferably 2 to 100 repeating units, of ethylene glycol (para. 0099 & 0139). This reads on the claimed “-O-PEG0.4k”. PEG with 9 repeating units, as encompassed by the cited teachings of the reference, has a molecular weight of 397 which is about/approximately 400.
Regarding the claimed -TEG (triethylene glycol) substituents, Vonwiller et al.’s arylene Q groups (Id., see formula (i) in para. 0153 and the definitions of variables thereof among para. 0154-0160) may have a “W” hydrophilic substituent with 0, 1, or 2 “m” repeating units. The W is preferably a PEG chain (para. 0166). As already cited above, the PEG chains are hydrophilic polyethylene glycol chains comprising 2-5,000 repeating units, preferably 2 to 100 repeating units, of ethylene glycol (para. 0099 & 0139). PEG with 3 repeating units, as encompassed by the cited teachings of the reference, is a triethylene substituent just as that claimed. Any remaining substituents in the arylene Q groups (e.g., a Tn- polymeric chain or C1-30 hydrocarbyl) are optional because the variable (n) includes zero. The reference also meets the claimed para substitution of the -TEG substituents as there are only two possible positions for the -W hydrophilic substituent to be placed at (circled below); both are -para because it is impossible for the ortho positions to have substituents and the meta positions already have the R groups present:
PNG
media_image3.png
207
127
media_image3.png
Greyscale
Vonwiller et al. teach the disclosed dyes have an improved water solubility (para. 0004) and the axial “A” ligands (e.g., PEG) and arylene-bound “W” hydrophilic group(s) (e.g., PEG encompassing TEG, a PEG with 3 repeating units) all impart this solubility via their hydrophilicity (para. 0105, 0119, & 0120). Note that Vonwiller et al. not only teaches their dye is water soluble (Id.) but that the dye may also be provided with a glycol-based organic solvent such as ethylene glycol or propylene glycol along with the water as a co-solvent (para. 0191).
Thus, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide Vonwiller et al.’s axially- and arylene--substituted PEG gallium phthalocyanine dye as Woyciesjes et al.’s phthalocyanine colorant in order to obtain a colored heat transfer fluid/antifreeze composition where the colorant is sufficiently soluble in the composition’s water+alcohol mixture with a reasonable expectation of success.
The claimed limitation that the (gallium phthalocyanine) colorant has a weight loss of 10% or less at a temperature of 250°C or less is met by the combination of references. The recited stability would flow naturally from the cited teachings of the reference as Vonwiller et al. teach a specific gallium phthalocyanine colorant encompassing the scope of the claimed formula. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As to claims 6 and 17, the claimed limitations that the colorant has a solubility of 1 g/L or higher in the antifreeze composition and the composition has an electric conductivity of 50 uS/cm or less are met by the combination of references. Regarding the solubility of the colorant, note that Woyciesjes et al. teach the colorant should be soluble (or dispersible) in the mixture of alcohol and water (Id.) and Vonwiller et al.’s silicon phthalocyanine colorant has an improved water solubility by the inclusion of hydrophilic groups (Id.). The recited solubility would flow naturally from the combination of references if the solubility of Vonwiller et al.’s colorant/dye was quantified. Regarding the conductivity of the composition, Woyciesjes et al. teach their composition has a conductivity of less than 200 uS/cm, preferably less than 50 uS/cm, (abstract, para. 0020, 0028; see also, e.g., para. 0080), and teach this can be attained by providing a colorant that is substantially free of functional groups that will form an ionic species due to hydrolysis in aqueous alcohol or glycol solution (para. 0054). Precise functional groups that the colorant should be substantially free of are also listed at the same para. 0054. Vonwiller et al.’s silicon phthalocyanine dye (Id.) precisely meets Woyciesjes et al.’s definition of a colorant substantially free of the undesirable functional groups; in any event, any potential functional groups disclosed in Vonwiller et al. that might detract from this are entirely optional in the Vonwiller et al. and need not be provided. Accordingly, the recited electric conductivity would flow naturally from the combination of references if the conductivity of Vonwiller et al.’s colorant in Woyciesjes et al.’s composition were quantified. See also In re Wiseman and Ex parte Obiaya (Id.).
As to claim 8, Woyciesjes et al. teach ethylene glycol is a preferred alcohol species (Id. in para. 0067). See also the other disclosed glycol species at the same paragraph.
As to claim 9, Woyciesjes et al. teach the composition may further comprise an antifoam agent and/or a defoamer (para. 0031 & 0072). Note that the total amount of additives beyond the water, glycol, and corrosion inhibitor main components may be up to 10 wt.% of the composition (Id. in para. 0072; see also para. 0073) where this 0-10 wt.% includes any antifoam agent/defoamer present. The total amount of additives which may include an antifoam agent and/or defoamer overlaps the claimed range. In any event, determination of an antifoaming amount of an antifoam agent and/or a defoaming amount of a defoamer in the heat transfer fluid amounts to routine experimentation motivated by the reference’s express suggestion to provide an antifoam agent and/or a defoamer as additives in the heat transfer fluid.
As to claims 10-13, Woyciesjes et al. teach the composition may further comprise, in addition to a certain required corrosion inhibitor, an additional optional corrosion inhibitor (para. 0071). Alkanol amines such as ethanolamine, diethanolamine, and triethanolamine are specific examples of such optional corrosion inhibitor (Id.). An alternative species of optional corrosion inhibitor is provided in an amount of 0-5 wt.% (Id. in para. 0071) which serves as a suggestion the other optional corrosion inhibitors should be provided in a similar if not same amount. Furthermore, note that the total amount of additives is up to 10 wt.% of the composition (Id., e.g., in para. 0072) which serves as a teaching any optional corrosion inhibitor(s) should be within this amount.
While Woyciesjes et al. teach their alkanolamines (e.g., triethanolamine) are provided as a corrosion inhibitor rather than as a “pH adjuster” as claimed/intended, Woyciesjes et al.’s triethanolamine corrosion inhibitor nevertheless reads on the alkanolamine amine-based pH adjuster because Woyciesjes et al. teaches the same exact compound as claimed (triethanolamine) in an amount overlapping that claimed (0-5 wt.% and 0-10 wt.% overlap 0.0005-0.1 wt.%). Note that the compound’s terminology as a pH adjuster is merely intended use that does not distinguish over the reference teaching the same compound in an overlapping amount albeit for a different purpose. In the heat transfer arts, certain additives may be used for a variety of purposes; one skilled person’s corrosion inhibitor might be another skilled person’s pH adjuster. In any event, determination of a corrosion inhibiting of an amine-based or triethanolamine corrosion inhibitor in the heat transfer fluid amounts to routine experimentation motivated by the reference’s express suggestion to provide a further corrosion inhibitor as an additive in the heat transfer fluid.
As to claims 14-15, Woyciesjes et al. teach the composition further comprises an azole compound as a corrosion inhibitor (abstract) meeting the claimed metal corrosion inhibitor and azole-based compound thereof. See also para. 0033.
As to claim 16, note that the claimed recitation that the antifreeze composition is used for internal combustion engines, electric batteries, or fuel cells are merely recitations of intended use of the antifreeze composition. The combination of references reads on the recited intended use limitation regardless of how Woyciesjes et al.’s heat transfer fluid/antifreeze composition is used. If a limitation merely states the purpose of intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the intended purpose/use is not considered a limitation and is of no significance to claim construction. However, note that Woyciesjes et al. nevertheless teach the same intended use as that claimed (para. 0075).
Response to Arguments
While the present grounds of rejection over Woyciesjes et al. (US 2006/0054564 A1) in view of Vonwiller et al. (US 2006/0027138 A1) is a new grounds of rejection, it is acknowledged Applicant did previously argue this combination of references in the remarks filed 11/17/2025.
Applicant's arguments filed 11/17/2025 regarding Woyciesjes et al. (US 2006/0054564 A1) and Vonwiller et al. (US 2006/0027138 A1) have been fully considered but they are not persuasive to obviate the new grounds of rejection
Applicant argues the cited references fail to disclose all the claimed elements, particularly the claimed TEG (triethylene glycol substituents). Applicant’s position is Vonwiller et al. teach the T and W groups that may be bound to their arylene Q groups are polymeric chains and hydrophilic groups and do not specifically describe a TEG substitution nor a TEG substitution at the para position. Applicant also disagrees with the Office’s position that the Q groups may comprise hydrogen atoms because the interpretation of the reference mischaracterizes the reference’s teachings and overlooks specific preferences, particularly para. 0161 of Vonwiller et al. teaching the Q’s are preferably of formula (v) rather than of the relied upon formula (i).
In response, this argument is not persuasive because, as similarly set forth in the Final Office action mailed , contrary to Applicant’s arguments, disclosed examples and preferred embodiments (e.g., Vonwiller et al.’s preference to formula (v) being the preferred Q groups) do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. The Q groups can still be of the cited and relied upon preferred formula (i) disclosed in para. 0153 even though Vonwiller et al. might prefer the Q groups to be formula (v) more per para. 0161.
Vonwiller et al.’s formula and teachings indeed read on the claimed -TEG substitutions on the arylene groups, even at the para position. Vonwiller et al.’s arylene Q groups (Id., see formula (i) in para. 0153 and the definitions of variables thereof among para. 0154-0160) may have a “W” hydrophilic substituent with 0, 1, or 2 “m” repeating units. The W is preferably a PEG chain (para. 0166). The PEG chains are hydrophilic polyethylene glycol chains comprising 2-5,000 repeating units, preferably 2 to 100 repeating units, of ethylene glycol (para. 0099 & 0139). PEG with 3 repeating units, as encompassed by the cited teachings of the reference, is a triethylene substituent just as that claimed. Any remaining substituents in the arylene Q groups (e.g., a Tn- polymeric chain or C1-30 hydrocarbyl) are optional because the variable (n) includes zero. The reference also meets the claimed para substitution of the -TEG substituents as there are only two possible positions for the -W hydrophilic substituent to be placed at (circled below); both are -para because it is impossible for the ortho positions to have substituents and the meta positions already have the R groups present:
PNG
media_image3.png
207
127
media_image3.png
Greyscale
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
Applicant further argues there is no motivation to combine the references because there is no motivation to select the structure of the claimed colorant formula because the claimed colorant has a simple, symmetrical substitution pattern while Vonwiller et al.’s compound may be varied such that compound may be asymmetric and structurally diverse compounds.
In response, this argument is not persuasive for substantially the same reasons as set forth above. Applicant appears they might be relying upon disclosed examples and preferred embodiments in Vonwiller et al. (although no particular citations are made) that do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. Where does Vonwiller et al. disclose an asymmetrical compound is required?
In response to Applicant’s argument that there is no motivation to select a simple symmetrical substitution pattern, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, following the teachings of the reference results in a colorant/dye encompassing a simple symmetrical substitution pattern. A dye made of Vonwiller et al.’s general formula of para. 0121 and preferred formula (i) as the Q of para. 0153 (respectively, below) is indeed a simple and symmetrical substitution pattern:
PNG
media_image1.png
218
242
media_image1.png
Greyscale
and
PNG
media_image2.png
207
127
media_image2.png
Greyscale
, respectively.
Applicant’s arguments in this section of the arguments regarding alleged lack of a -TEG group substituted at the para-/peripheral- positions of the arylene rings are not persuasive for the reasons already set forth above.
Applicant further argues there is no motivation to combine the references because there is no motivation for the proposed modification of Vonwiller et al.’s M, Q, and A (and now W) groups because numerous arbitrary selections amount to hindsight reasoning that reject and ignore the preferences of the reference.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The relied upon base formula of Vonwiller et al. (para. 0121) has variables. Selecting structures for the variable groups within the teachings of the reference in order to obtain a water soluble dye via the presence (and selection) of hydrophilic groups is not hindsight reasoning.
Regarding the alleged lack of teaching/motivation to select PEG with a molecular weight of approximately 400 despite a preference for a PEG with 2 to 100 repeating units, please note Vonwiller et al.’s PEG chain comprising 2-5,000 repeating units, preferably 2 to 100 repeating units, of ethylene glycol (para. 0099 & 0139) indeed reads on encompasses the claimed “-O-PEG0.4k”. PEG with 9 repeating units, as encompassed by the cited teachings of the reference, has a molecular weight of 397 which is about/approximately 400.
Applicant’s argument regarding lack of a teaching/motivation to determine the specific substitution pattern for the TEG substituents is not persuasive in view of the arguments set forth above in that the W hydrophilic groups (that may be PEG groups with repeating units encompassing 3, i.e., TEG) can only be at the para position per formula (i) (Id.).
Applicant’s argument to the selections made in Vonwiller et al. that are “contrary to any expressed preference”, “reject the explicitly preferred formula (v) for the Q groups and instead select a different arylene structure”, “select O-PEG as the specific axial ligand structure rather than other hydrophilic groups described in Vonwiller, including the preferred dendrimer structure of formula (IIIa)” are once again arguing preferred embodiments, which are not persuasive for the reasons already set forth above regarding examples and preferred embodiments that do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (Id.).
Applicant further argues there is no motivation to combine the references because Vonwiller et al. is unrelated to automotive heat transfer fluids like in Woyciesjes et al. (US 2006/0054564 A1).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, there is indeed sufficient motivation to combine the references based on the teachings of the references themselves. Woyciesjes et al. teach an aqueous heat transfer fluid composition comprising, inter alia, a colorant with any one of various chromophores such as phthalocyanine or conjugated heterocyclic groups may be provided so long as it is non-ionic and soluble (or dispersible) in the water (abstract and para. 0031-0032, 0053-0055, & 0067-0069). Vonwiller et al. teach metal cyanine complexes, including metal phthalocyanine complexes, for use as dyes, i.e., colorants, that comprise axially substituted hydrophilic groups that impart an improved water solubility/hydrophilicity to the dye (see the cited teachings of record). In other words, Woyciesjes et al. calls for a water soluble phthalocyanine colorant and Vonwiller et al. teach such a water soluble phthalocyanine colorant, which serves as plenty of motivation to combine the references.
Regarding any potential implied argument Vonwiller et al. is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Vonwiller et al. meets the second test that it reasonably pertinent to a problem with which the inventor was concerned. The original disclosure of the present application indicates dissolubility and compatibility of the phthalocyanine dyes/colorants with antifreeze solvents (e.g., water and glycols) when hydrophilic polymer substituents do not have a proper chain length or molecular weight is a problem faced by the inventor (see, e.g., [0042] & [0058]-[0062]). Similarly, Vonwiller et al. teach metal cyanine complex, encompassing gallium phthalocyanines, dyes that comprise various hydrophilic groups, such as an axial hydrophilic group bound to the central metal/gallium and hydrophilic groups bound to peripheries of the complex, that impart an improved water solubility to the dye, and the dye is compatible with glycol co-solvents with the water (Id., e.g., in the rejection of record and response to arguments, above).
In response to Applicant’s allegation the addition of an IR-absorbing functionality could interfere with the heat transfer properties of the fluid, there is no probative evidence of record supporting this allegation. Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
Applicant further argues the recited thermal stability in claim 1 is critical because the present specification demonstrates criticality. Applicant points to the comparative showing in the specification that compares the thermal stability of the claimed colorant of Chemical Formula 2-1 (Example 1) achieving a weight loss of only 8.8% at 250°C. While Applicant indicates the chemical structures of Chemical Formulae 3-1 to 3-5 are highly relevant (Comparative Examples 1-5), Applicant indicates “Comparative Examples 1-5 (Chemical Formulae 3-1 to 3-5) do not include thermal stability data.
In response, the examples in the specification are no probative value in the determining patentability of claims since they do not involve a comparison of Applicant’s invention with the closest applied prior art, i.e., Vonwiller et al.’s dyes. See In re De Blauwe, 222 USPQ 191 (FED. Cir. 1984), and In re Fenn, 208 USPQ 470 (CCPA 1981).
Even if, arguendo, the comparison was done between the Applicant’s invention and the closest prior art, the claims are not deemed patentable over the reference of record since they are not commensurate in scope with the probative value of data in the examples. Note that the specification’s comparative showing only tests thermal stability (Example 3) of the chemical formulae 2-4 and 2-5 (Compound/sample Examples 1 and 2). As cited by Applicant in the present remarks, the comparative showing does not test the thermal stability of the comparative chemical formulae 3-1 to 3-5 (Compound/sample comparative examples 1 to 5) such that it is unclear if a certain thermal stability is critical. Applicant has not demonstrated the claimed thermal stability is unexpected because there are no comparative examples comparing the obtained thermal stability of the claimed compound to the thermal stability other non-claimed compounds. See In re Clemens, 206 USPQ 289 (CCPA 1980).
Regarding Applicant’s concern that the limitation “the colorant has a weight loss of 10% or less at a temperature of 250°C or less” requires heating the colorant to a temperature at or below 250°C the weight loss at that temperature and the weight loss is 10% or less and the examples heat to 250°C, please note that any temperature at or below 250°C reads on the claim. The limitation does not require the colorant has a certain thermal stability (weight loss of 10% or less) at all temperatures up to 250°C (or above 250°C, as tested in the spec.) but rather merely requires there is a weight loss of 10% or less “at a temperature of 250°C or less” (i.e., a single temperature within the range of 250°C or less, i.e., -273.15°C to +250°C). For example, thermal stability at 20°C, 30°C, 50°C, etc. (all temperatures “of 250°C or less”) read on the claim. While Applicant notes the examples test thermal stability at 250°C and above, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that Vonwiller et al. merely describes PEG substitution for water solubility in aqueous dye applications rather than an enhancement of thermal stability as in the claimed invention, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Please note this argument is somewhat confusing because Applicant’s arguments state “The thermal stability results from the structure”, which is substantially the Office’s position of record (“The recited stability would flow naturally from the cited teachings of the reference as Vonwiller et al. teach a specific gallium phthalocyanine colorant encompassing the scope of the claimed formula.”). See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
Examiner interviews are available via telephone 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 https://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. 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.
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
May 21, 2026
Prosecution Insights