DETAILED ACTION
Response to Amendments
In response to the amendment received on 10/07/2025:
• Claims 1-4, 6, 7, 9-12, 14-17, and 20 are currently pending. Claims 5, 8, 13, 18, and 19 are canceled. The objection to claim 2 is withdrawn in light of the amendments to the claims. The rejection of claims 9-10 and 18-20 under 35 U.S.C. 112(b) is withdrawn in light of the amendments to the claims. The statutory double patenting rejection of claim 8 is withdrawn in light of the cancellation of claim 8. All nonstatutory double patenting rejections are withdrawn in light of the terminal disclaimer filed by Applicant.
Terminal Disclaimer
The terminal disclaimer filed on 10/09/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application No. 17/944,448 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 .
Claim Objections
Claim9 is objected to because of the following informality:
• In claim 9, line 7, the claim should be amended to read: “inkjet printing the aqueous black pigment-based ink…”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In claim 17, the weight ratio of the black pigment to the water-soluble fluorophore is claimed to range from 70:1 to 0.5:1; however, claim 1 only allows for a ratio range of 1.5:1 to 60:1 (3/2= 1.5; 6/0.1 = 60). Thus, claim 17 claims a broader range than claim 1 allows, resulting in confusion. For the purposes of examination, the Examiner is interpreting any ratio that falls within the range of 70:1 to 0.5:1 to read on the claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-4, 7, 11, 15, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Howald (DE-102010018364-A1), with reference to the previously included machine translation (hereinafter referred to as “Howald”), in view of Kim (KR-20210003544-A), with reference to the included machine translation (hereinafter referred to as “Kim”), with evidence from Benchchem (“Fluorescent Brightener 113.” Benchchem, www.benchchem.com/product/b1143748) (hereinafter referred to as “Benchchem”) as to the rejection of claims 1-4, 7, 11, 15, 17, and 20 only.
Regarding claims 1, 7, 11, 15, Howald teaches a method of providing a
colored image that exhibits fluorescence when exposed to fluorescence-exciting radiation (a method of marking an article with a colored latent fluorescent image as security indicia for authentication, information, or decoration, regarding claim 15) (see Howald at para. 0001, teaching an aqueous black-pigmented, UV-fluorescent inkjet ink; also see Howald at para. 0006, 0019, and 0023, teaching the inkjet ink as being used in an inkjet process; also see Howald at para. 0006, teaching the fluorescent ink may be used for security printing; thus, it necessarily follows that following printing of the fluorescent ink on a substrate, the substrate may suitably be used as a “security document”; also see Howald at para. 0019, suggesting a printer as printing the ink), the method comprising:
• imagewise applying an aqueous black pigment-based ink that is capable of fluorescence on an outer surface of a substrate to provide a black latent fluorescent image on the substrate outer surface (using inkjet printing, regarding claim 7) (see Howald at para. 0006, 0019, and 0023, teaching the inkjet ink as being printed in an inkjet process; also see Howald at para. 0011-0012, teaching the substrate may be paper; thus, Howald necessarily teaches the application of the aqueous fluorescent ink to a substrate (e.g., paper) via an inkjet process), wherein
• the aqueous black pigment-based ink that is capable of fluorescence comprises: a non-UV fluorescing, anionically-stabilized black pigment colorant in an amount of at least 3 weight % and up to and including 6 weight % (see Howald at para. 0007 and 0013, teaching the ink as containing about 1 to 6 wt% of anionic self-dispersing black pigment, e.g., carbon black; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05; further, carbon black is non-UV fluorescing);
• a non-polymeric, water-soluble fluorophore that when excited by fluorescence-exciting radiation having a peak of at least 200 nm and up to and including 400 nm, exhibits an emission peak of at least 400 nm and up to and including 750 nm, and which non-polymeric, water-soluble fluorophore is present in an amount of at least 0.1 weight % and up to and including 2 weight % (see Howald at para. 0007 and 0014, teaching the ink as containing 0.2 to 1.5 wt% of anionic, blue-fluorescent optical brightener, such as Fluorescent Brightener 113; Fluorescent Brightener 113 is a non-polymeric water-soluble fluorophore that absorbs UV light (below 400 nm) and has an emission peak of 440 nm, as evidenced by Benchchem at pg. 2; pg. 10, para. 3; and pg. 12, para. 1);
• an aqueous medium comprising water, all amounts being based on the total weight of the aqueous colored pigment-based ink that is capable of fluorescence (see Howald at para. 0007, teaching the ink as containing water as a remainder).
While Howald teaches the method outlined above, Howald fails to explicitly teach the substrate as being a non-UV fluorescing substrate.
However, Kim teaches a color security printing method using an ultraviolet fluorescent ink (see Kim at pg. 1, para. 1). Kim further teaches that during the security printing step, it is preferable to use non-fluorescent paper in order to minimize interference of light emission of the ultraviolet fluorescent ink (see Kim at pg. 4, para. 9). In other words, it is desirable to prevent unintended background emission or interference from a fluorescing substrate which could hide the distinct security markings from the fluorescent ink.
Howald suggests their ink may be used for security applications and may be printed on paper (see Howald at para. 0006 and 0011).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a non-fluorescing paper as the paper substrate with the ink of Howald. One of ordinary skill in the art would have been motivated to do so in order to minimize interference of light emission of the ultraviolet fluorescent ink (see Kim at pg. 4, para. 9).
Regarding claim 2, the CIE L*, a*, and b* values are notably a property of the resulting composition (i.e., the color). Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant 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). In other words, burden of proof is shifted to Applicants to show the ink of Howald as not meeting the CIE L*, a*, and b* values as claimed.
Regarding claims 3-4, see Howald at para. 0014, teaching Fluorescent Brightener 113 as a suitable optical brightener; Fluorescent Brightener 113 is a white powder, as evidenced by Benchchem at pg. 12, para. 1; thus, the Fluorescent Brightener 113 used in the ink of Howald is colorless; further, Fluorescent Brightener 113 is a diamino stilbene compound having multiple sulfonate groups, as evidenced by Benchchem at pg. 12, para. 1.
Regarding claims 17 and 20, see Howald at para. 0007, teaching a fluorescent ink containing 1 to 6 wt% of anionic self-dispersing black pigment and 0.2 to 1.5 wt% anionic, blue-fluorescent optical brightener; thus, the weight ratio of pigment colorant to non-polymeric fluorophore in Howald ranges from 0.67 to 30 (1/1.5 = 0.67; 6/0.2 = 30); this range of 0.67 to 30 falls completely within the claimed ratio range; also see Howald at para. 0006, 0011, 0019, and 0023, teaching the inkjet ink as being printed on paper in an inkjet process; thus, Howald as modified by Kim necessarily teaches the article as claimed, see claim 1 rejection above; also see Howald at para. 0006, teaching the fluorescent ink may be used for security printing; thus, it necessarily follows that following printing of the fluorescent ink on a substrate, the substrate is a “security document.”
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Howald in view of Kim, as applied to claim 1 above, and further in view of Yamashita et al. (US-20170183526-A1) (hereinafter referred to as “Yamashita”) and Udagawa et al. (US-20050052515-A1) (hereinafter referred to as “Udagawa”).
Regarding claim 6, while modified Howald teaches the method according to claim 1 outlined above, modified Howald fails to explicitly teach the ink as further containing one or more water-soluble black dyes in a total amount of at least 0.1 weight% and up to and including 2 weight%, based on the total weight of the aqueous black pigment-based ink that is capable of fluorescence.
However, Yamashita teaches an inkjet ink containing a self-dispersible pigment, such as carbon black, and water (see Yamashita at para. 0023 and 0031). Yamashita further teaches the aqueous ink may further contain a dye as a coloring material for toning, that examples include acid dyes and dyes having anionic groups, and that a hue common to the self-dispersible pigment, e.g., a black hue, is preferred (see Yamashita at para. 0085). Moreover, Yamashita teaches the content of the dye to preferably range from 0.2 to 8.00% by mass in the ink (see Yamashita at para. 0085).
Additionally, it is well-known that water-soluble dyes, including acidic and anionic dyes, may suitably be used for color toning an ink in addition to a pigment (see Udagawa at para. 0041). Moreover, one of ordinary skill would readily recognize the benefits of using a water-soluble dye for color toning in an aqueous ink, namely, to dissolve the colorant more homogenously in the ink, thus reducing potential for sedimentation and clogging.
Howald teaches that dyes in addition to the anionic self-dispersing pigment may be utilized in their ink (see Howald at para. 0022).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an additional water-soluble black dye in an amount ranging from 0.2 to 8.00 wt% in the ink of modified Howald. One of ordinary skill in the art would have been motivated to do so in order to adjust the color tone of the ink, and further to use a dye that will dissolve homogenously in the aqueous ink, thus reducing potential for sedimentation and clogging.
This range of 0.2 to 8.00% overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claims 9, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Howald in view of Kim, as applied to claim 1 above, and further in view of Lussier et al. (US-20170292034-A1) (hereinafter referred to as “Lussier”), Lindstrom (US-8455570-B2) (hereinafter referred to as “Lindstrom”), and Cook (US-20140231674-A1) (hereinafter referred to as “Cook”).
Regarding claims 9 and 12, while Howald teaches the method according to claim 1 outlined above, Howald fails to explicitly teach the method as further comprising: prior to the imagewise applying of the aqueous black pigment-based ink that is capable of fluorescence, inkjet printing an aqueous non-black colored pigment-based ink that is non-fluorescent on the outer surface of the non-UV fluorescing substrate to provide a non-black, non-fluorescent colored image on the non-UV fluorescing substrate outer surface; and then inkjet printing the aqueous black pigment-based ink that is capable of fluorescence onto at least a portion of the non-black colored image to provide a black latent fluorescent image on the at least a portion of the non-black colored image, wherein the aqueous colored non-black pigment-based ink that is non-fluorescent comprises a colored, anionically-stabilized non-black pigment in an amount of at least 1 weight %, and an aqueous medium comprising water.
However, Lussier teaches an aqueous green inkjet ink (see Lussier at para. 0005). Lussier further teaches the green ink may be used in combination with additional aqueous color inkjet ink compositions in an ink set to provide expanded color gamut (see Lussier at para. 0087). Moreover, Lussier teaches the additional ink compositions may comprise a pigment, including self-dispersing colorants such as those described in US-8455570, i.e., Lindstrom. Lindstrom teaches anionic self-dispersing pigments may be used (see Lussier at para. 0093; also see Lindstrom at col. 11, lines 49-53). Thus, Lussier necessarily teaches the pigment in their additional ink composition(s) may be an anionically-stabilized pigment (see Lussier at para. 0093; also see Lindstrom at col. 11, lines 49-53). Moreover, Lussier teaches the use of pigments that are non-fluorescent in their additional ink (e.g., phthalocyanine, titanium dioxide, or carbon black pigments, see Lussier at para. 0092). Furthermore, Lussier teaches the content of the pigment colorant in the additional ink compositions to range from 0.1 to 30 wt% (see Lussier at para. 0095). Additionally, Lussier teaches currency and lottery tickets as suitable substrates (see Lussier at para. 0006 and 0126).
In general, it is well-known in the art that similar fluorescent inks like Howald may be applied to materials like currency as a security measure for authenticating said materials (see Cook at para. 0010 and 0014). Additionally, Howald directly suggests such an application as suitable for their fluorescent ink (see Howald at para. 0006).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the ink set of Lussier (which contains additional inks with anionically-stabilized non-fluorescent colorants) together with the black pigment-based fluorescent ink of Howald, in which the inks of Lussier are first inkjet printed onto a substrate (e.g., to form a specific color on a dollar bill or a lottery ticket), followed by inkjet printing of the black pigment-based fluorescent ink of Howald onto the area in which the ink(s) was applied (e.g., as a number, label, etc.), in order to provide the ability to authenticate the substrate. Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Here, the “additional aqueous color inkjet ink” taught by Lussier in their ink set corresponds to the claimed “aqueous colored non-black pigment-based ink that is non-fluorescent.” The pigment content range of 0.1 to 30 wt% for such inks taught by Lussier (see Lussier at para. 0095) overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 10, see Lussier at para. 0091, teaching pigments may be used in combination in their additional inks, and that for example, a carbon black pigment may be combined with a cyan copper phthalocyanine pigment; thus, Lussier necessarily teaches the resulting image to be a “multicolored image”, as the ink contains two different-colored pigments; also see Lussier at para. 0087, teaching the additional colored inks, like cyan, magenta, and yellow inks, may be used together with the green ink in an ink set to form an image; thus, modified Howald necessarily suggests embodiments in which the resulting image on the substrate (e.g., currency) is “multicolored”, as it can be formed from multiple-colored inks).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Howald in view of Kim, as applied to claim 1 above, and further in view of Willems et al. (US-20180326770-A1) (hereinafter referred to as “Willems”).
Regarding claim 14, while modified Howald teaches the method according to claim 1 outlined above, modified Howald fails to explicitly teach the method as further comprising inkjet printing an aqueous colorless composition onto the colored latent fluorescent image on the non-UV fluorescing substrate outer surface.
However, Willems teaches a post-treatment liquid which may be applied onto a printed ink composition in order to increase the print robustness or other properties of a print, such as gloss level (see Willems at para. 0149-0151). Willems further suggests the post-treatment liquid may improve other properties, such as image density, color saturation, and fixability (see Willems at para. 0151). Moreover, Willems teaches the post-treatment liquid may be an aqueous solution which may form a transparent protective layer, i.e., may be colorless (see Willems at para. 0152). Additionally, Willems teaches inkjet printing as suitable (see Willems at para. 0144).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to apply via inkjet printing the aqueous colorless post-treatment liquid of Willems following application of the fluorescent ink of Howald onto a substrate. One of ordinary skill in the art would have been motivated to do so in order to increase the print robustness or other properties of a print, such as gloss level, image density, color saturation, and fixability (see Willems at para. 0149-0151).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Howald in view of Kim, as applied to claim 15 above, and further in view of in view of Sowinski et al. (US-20100304028-A1) (hereinafter referred to as “Sowinski”) and Cook.
Regarding claim 16, while modified Howald teaches the method according to claim 15 outlined above, including the formation of a security document (it necessarily follows that following printing of the fluorescent ink of Howald on a substrate, the substrate is a “security document”), modified Howald fails to explicitly teach the inkjet printing as being continuous inkjet printing.
However, Sowinski teaches a continuous inkjet printer fluid delivery system (see Sowinski at para. 0004). Sowinski further teaches that continuous ink jet printing provides the fastest means of generating ink drops from the orifices of an individual printhead nozzle plate, and therefore it is valued for its ability to print at the highest feasible speeds with high image quality (see Sowinski at para. 0002).
Furthermore, it is known that similar fluorescent inks like that taught by Howald may be used in continuous inkjet printing processes like that taught by Sowinski (see Cook at para. 0001 and 0090).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the ink of Howald in a continuous inkjet printing process like that taught by Sowinski. One of ordinary skill in the art would have been motivated to do so because continuous ink jet printing provides the fastest means of generating ink drops from the orifices of an individual printhead nozzle plate, and therefore can print at the highest feasible speeds with high image quality (see Sowinski at para. 0002).
Response to Arguments
Applicant's arguments filed 10/07/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants argue the previous anticipation rejections over Howald alone are overcome following the amendments to the claims (see Applicant’s Remarks at pg. 10). The Examiner agrees, and has withdrawn the 102 rejections over Howald alone. However, a new 103 rejection over Howald in view of Kim is applied, see above.
Next, Applicants argue Howald fails to teach an aqueous black pigment-based ink that exhibits advantages, including high optical density and higher resistance to smearing or removal from a non-UV fluorescing substrate (see Applicant’s Remarks at pg. 11). Applicants further argue these advantages are not taught by Howald, and point to the examples in their specification demonstrating the unexpected results of their claimed method (see Applicant’s Remarks at pg. 11-12).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
First, the examples in Applicant’s specification are not fully commensurate in scope with the claimed invention. See MPEP § 716.02(d). Applicants use in their examples only three non-polymeric fluorophores – FA-1, FA-2, and FA-3 – despite the claims suggesting a wide variety of suitable fluorophores (e.g., Fluorescent Brightener 113, like that taught by Howald, see Howald at para. 0014). As such, it is unclear whether Applicants alleged showing of unexpected results applies to the varying embodiments for the fluorophore included in claim 1.
Similarly, Applicants’ examples only use a single black pigment in their examples, Cabot Corp. BLACK PEARLS 900 (see Applicant’s specification at pg. 41, line 30), despite the claims suggesting a wide variety of pigments. In fact, it is not clear whether the black pigment used in Applicant’s examples is even anionically stabilized, given that it is dispersed with a polymeric dispersant (see Applicant’s specification at pg. 41, lines 26-32). Accordingly, it is unclear whether Applicants alleged showing of unexpected results applies to the varying embodiments for the black pigment included in claim 1.
Furthermore, to establish unexpected results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP § 716.02(d)(II). Applicants provide no comparative examples where the content of the fluorophore is above the claimed upper range of 2 wt%. Moreover, Applicants provide no comparative examples where the concentration of the pigment is above 6 wt% or below 3 wt%. As such, doubts are raised as to the criticality of the claimed ranges.
Moreover, a showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997). See MPEP § 2145. A mere generic pointing to Applicant’s examples, without pointing to specific reasoning or data, is not enough to show nonobviousness. See MPEP § 716.02.
Lastly, while Howald may not explicitly teach the same beneficial advantages as Applicants, Howald teaches the same claimed method as Applicants, including the claimed overlapping ranges. Accordingly, the composition of Howald necessarily demonstrates the claimed advantages, absent a showing of unexpected results. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
It is noted that Applicant’s amendments to the claims overcome Cook as a primary reference, and thus, Applicant’s arguments surrounding Cook are rendered moot (see Applicant’s Remarks at pg. 12-13). It is further noted that a new grounds of rejection is presented using Kim. Moreover, to the extent that Cook is relied upon in the present rejection, Cook is merely used to demonstrate broadly that similar inks as that taught by Howald may be used as security applications for currency and/or in continuous inkjet printing processes (see claim 9, 10, 12, and 16 rejections above). One of ordinary skill would readily recognize such applications regardless of the fact that Cook fails to teach the presence of a water-soluble fluorophore specifically.
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.
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/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731