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 .
Response to Amendment
• Claims 1-17 are currently pending. Claims 18-20 are cancelled. The objection to claim 13 is withdrawn in light of the amendments to the claims. The statutory double patenting rejection of claim 2 is withdrawn. The nonstatutory double patenting rejections of claims 1 and 3-17 are withdrawn in light of the terminal disclaimer filed.
Terminal Disclaimer
The terminal disclaimer filed on 10/14/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application No. 17/944,383 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 9-10 and 13-14 are 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 9, the claim is written in a manner to suggest the application of three inks – first, the application of the fluorescent ink claimed in claim 1; second, the application of the non-black colored pigment-based ink that is non-fluorescent claimed in claim 9; and third, an additional application of the fluorescent ink claimed in claim 1. When reading the claim, the method is followed chronologically – the step of claim 1, then followed by the steps of claim 9. Here, there is no indication that the non-black colored pigment-based ink that is non-fluorescent is applied prior to the fluorescent ink application step of claim 1. It is believed that Applicants intended the non-black colored pigment-based ink that is non-fluorescent to be applied prior to the application step of the fluorescent ink in claim 1. Consequently, the Examiner is interpreting as such. To correct, the Examiner suggests amending the claim so that this distinction is clear. Claim 13 is rejected for a similar reason (i.e., there is no indication the non-fluorescent ink is to be applied prior to the ink application step claimed in claim 1). Claims 10 and 14 are also rejected by virtue of their dependency on claims 9 and 13.
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, 8, 12, 16, and 17 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”), and Sowinski et al. (US-20100304028-A1) (hereinafter referred to as “Sowinski”), and Cook (US-20140231674-A1) (hereinafter referred to as “Cook”), with evidence from Benchchem (“Fluorescent Brightener 113.” Benchchem, www.benchchem.com/product/b1143748) (hereinafter referred to as “Benchchem”) as to the rejection of claims 1-6, 8, 12, 16, and 17 only.
Regarding claims 1, 2, 12, 16, and 17, 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 16) (wherein the article is a security document, currency, or lottery ticket, regarding claims 12 and 17) (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 is a “security document”; also see Howald at para. 0019, suggesting a printer as printing the ink), the method comprising:
• imagewise applying an aqueous colored pigment-based ink (black ink, regarding claim 17) that is capable of fluorescence on an outer surface of a substrate using inkjet printing, to provide a colored latent fluorescent image on the substrate outer surface (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 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 a non-UV fluorescing pigment);
• 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 (1) the substrate as being a non-UV fluorescing substrate, and (2) the inkjet printing as being continuous inkjet printing, wherein the aqueous colored pigment-based ink that is capable of fluorescence is provided from a main fluid supply that can both supply the aqueous colored pigment-based ink that is capable of fluorescence and receive returned non-printed aqueous colored pigment-based ink that is capable of fluorescence (regarding claim 2).
Regarding (1), 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 (2), Sowinski teaches a continuous inkjet printer fluid delivery system that contains a main ink supply reservoir that feeds the ink to the printhead as well as receives any unprinted ink that is returned (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).
Regarding claim 3, 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 modified Howald as not meeting the CIE L*, a*, and b* values as claimed.
Regarding claims 4-5, 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 claim 6, see Howald at para. 0007 and 0013, teaching the ink as containing an anionic self-dispersing black pigment, such as carbon black.
Regarding claim 8, see Howald at para. 0007, teaching the ink as containing 0.01 to 0.1 wt% surfactant, 1 to 6 wt% of pigment, and 0.2 to 1.5 wt% of fluorescent optical brightener; these are the only “solid” components taught by Howald in para. 0007; thus, the solid content in the ink of Howald necessarily ranges from 1.21 to 7.6 wt% (0.01 + 1 + 0.2 = 1.21 wt% minimum; 0.1 + 6 + 1.5 = 7.6 wt% maximum); this range falls completely within the claimed range).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Howald in view of Kim, Sowinski and Cook, 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 7, modified Howald teaches the method according to claim 1 outlined above, wherein the aqueous colored pigment-based ink that is capable of fluorescence is an aqueous black pigment-based ink that is capable of fluorescence (see Howald at para. 0007 and 0013).
While modified Howald teaches the method 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, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Howald in view of Kim, Sowinski and Cook, as applied to claim 1 above, and further in view of Lussier et al. (US-20170292034-A1) (hereinafter referred to as “Lussier”).
Regarding claims 9, 13, and 14, while modified Howald teaches the method according to claim 1 outlined above, modified Howald fails to explicitly teach the method as comprising: continuous 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 colored image on the non-UV fluorescing substrate outer surface; and continuous inkjet printing the aqueous colored pigment-based ink that is capable of fluorescence, which is an 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 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 that contains a green copper phthalocyanine pigment and an azo-coupled β-ketoamide pigment (see Lussier at para. 0005). Lussier further teaches the green phthalocyanine pigment to be present in the ink in an amount ranging from 1 to 5 wt% (see Lussier at para. 0054). Moreover, Lussier teaches currency as a suitable substrate for their green ink (see Lussier at para. 0006).
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 green ink of Lussier together with the black pigment-based fluorescent ink of Howald in an ink set, in which the green ink of Lussier is first inkjet printed onto a substrate to form a currency (e.g., to form the green color on a dollar bill), followed by inkjet printing of the black pigment-based fluorescent ink of Howald onto the area in which the green ink was applied (e.g., as a number, label, etc.), in order to provide the ability to authenticate the currency. 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.
It is noted that continuous inkjet printing would be applied for the printing steps in the above modification, for the same motivation as previously outlined above by Sowinski (see claim 1 analysis above). Moreover, it is noted that the substrate would be non-UV fluorescing, for the same motivation as previously outlined above by Kim (see claim 1 analysis above).
Regarding claim 10, see Lussier at para. 0005 and 0040, teaching that in addition to the green phthalocyanine pigment, the ink of Lussier further contains an azo-coupled β-ketoamide pigment, which may include yellow pigments; thus, Lussier necessarily teaches the resulting image to be a “multicolored image”, as the ink contains both green and yellow pigments, i.e., multiple colored pigments; alternatively, see Lussier at para. 0087, teaching the green ink may be used together with other colored inks, like cyan, magenta, and yellow inks, 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).
Claims 11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Howald in view of Kim, Sowinski and Cook, as applied to claim 1 above, and further in view of Willems et al. (US-20180326770-A1) (hereinafter referred to as “Willems”).
Regarding claims 11 and 15, while modified Howald teaches the method according to claim 1 outlined above, modified Howald fails to explicitly teach the method as further comprising continuous 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 continuous 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 continuous inkjet printing the aqueous colorless post-treatment liquid of Willems following application of the fluorescent ink of modified 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).
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered. The Examiner agrees that the amendments to the claims overcome the previous rejections over Cook as a primary reference (see Applicant’s Remarks at pg. 10-12), and the Examiner has withdrawn such rejections.
Next, Applicants argue Cook does not teach the use of water-soluble fluorophores in their ink, and that one of ordinary skill would not be drawn to the teachings regarding continuous inkjet printing in Cook for use in Howald (see Applicant’s Remarks at pg. 12).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Cook is merely relied upon to demonstrate that continuous inkjet printing is known to be used in similar fluorescent inks in the art. Applicants have provided no reason as to why the use of a “water-insoluble” fluorophore in Cook would lead one away from using continuous inkjet printing. There is no indication that the presence of a “water-soluble” vs. a “water-insoluble” fluorophore would have any impact on the use of continuous inkjet printing, or detract from the motivation to use continuous inkjet printing provided by Sowinski. In fact, Applicants do not address Sowinski in their argument at all, which is the primary motivation for using continuous inkjet printing.
Next, the Examiner agrees with Applicants that Howald does not explicitly teach the use of a non-UV fluorescing substrate (see Applicant’s Remarks at pg. 12-13); however, a new ground of rejection using Kim is presented above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hersch et al. (US-20080259400-A1) teach a preference for using paper without brighteners in order to avoid interference with fluorescent inks (see Hersch at para. 0077).
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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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.
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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731