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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant's election with traverse of Group I, claims 20-31, in the reply filed on January 23, 2026 is acknowledged. The traversal is on the ground(s) that the technical feature linking Groups I and II is a fluorescent composition comprising a polymer matrix. This is not found persuasive because the restriction requirement is between Groups I-III and Group III does not require a polymer matrix. Therefore, the technical feature linking Groups I-III is a compound having formula II as set forth in the restriction requirement.
The requirement is still deemed proper and is therefore made FINAL.
Claims 32-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 23, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 20-22, 24, and 28-31 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Cohen et al. (US Pub. No. 2019/0294069).
Regarding Claims 20 and 24: Cohen et al. teaches a fluorescent composite comprising a polymer/resin matrix and a fluorescent dye such as 2-(2-hydroxyphenyl)benzimidazole, a compound of formula I wherein X is NH, Z is OH, R and R1-3 are H (abstract, [0029], and [0062]).
Regarding Claim 21: Cohen et al. teaches that the matrix resin (second resin) may be a polyamide, polyethylene, polypropylene, polycarbonate, polystyrene, polyvinylchloride, polyurethane, polymethacrylic acid resins, or polyethylene terephthalate ([0078]).
Regarding Claim 22: Cohen et al. teaches the fluorescent dye may alternatively be 2-(2-hydroxyphenyl)benzothiazole, a compound of formula I wherein X is S, Z is OH, R and R1-3 are H ([0062]).
Regarding Claims 28-30: Cohen et al. teaches the fluorescent composite as part of an ink for printing a security image on paper (abstract and [0001]-[0002]).
Regarding Claim 31: Cohen et al. does not teach the ink for the claimed printing methods, however, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claim(s) 20-25 and 28-29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yanagisawa et al. (JP 2015183128 A and English machine translation thereof).
Regarding Claims 20 and 22-25: Yanagisawa et al. teaches a fluorescent material comprising a resin (polymer matrix) and a compound such as:
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(N-(2-(benzo[d]thiazol-2-yl)phenyl)benzamide), a compound of formula 1 wherein X is S, Z is NHR5, R and R1-3 are hydrogen, and R5 is -C(O)OR4 wherein R4 is aryl ([0038] of JP 2015183128 A and [0008], [0015], and [0018] of the English machine translation).
Regarding Claim 21: Yanagisawa et al. teaches the polymer such as a polyethylene, a polypropylene, a polyurethane, and an ethylene-vinyl acetate ([0131]).
Regarding Claims 28-29: Yanagisawa et al. does not teach the composition for securing a product, however, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cohen et al. (US Pub. No. 2019/0294069).
Cohen et al. teaches the composition of claim 20 as set forth above. Cohen et al. teaches that the fluorescent dyes may be used in combination and further teaches dyes such as 2-(2-hydroxyphenyl)benzothiazole, a compound of formula I wherein X is S, Z is OH, R and R1-3 are H ([0062]).
Cohen et al. does not teach a specific embodiment comprising both 2-(2-hydroxyphenyl)benzimidazole and 2-(2-hydroxyphenyl)benzothiazole. However, at the time of the invention a person of ordinary skill in the art would have found it obvious to include both 2-(2-hydroxyphenyl)benzimidazole and 2-(2-hydroxyphenyl)benzothiazole as the fluorescent dyes in the composition of Cohen et al. with a reasonable expectation of success and would have been motivated to do so because Cohen et al. teaches that they dyes may be used in combination with each other ([0062]). Furthermore, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (MPEP 2144.06).
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yanagisawa et al. (JP 2015183128 A and English machine translation thereof).
Yanagisawa et al. teaches the composition of claim 20 as set forth above. Yanagisawa et al. further teaches compounds such as:
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a compound reading on formula 1 wherein X is NH, Z is NHR5, R and R1-3 are hydrogen, R5 is -C(O)OR4 wherein R4 is C1 alkyl ([0065]).
Yanagisawa et al. does not teach a specific embodiment comprising multiple compounds reading on formula 1. However, at the time of the invention a person of ordinary skill in the art would have found it obvious to include both fluorescent compounds of Yanagisawa et al. with a reasonable expectation of success and would have been motivated to do so because Yanagisawa et al. teaches that they are both suitable for the invention. Furthermore, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (MPEP 2144.06).
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cohen et al. (US Pub. No. 2019/0294069) in view of Prete (US Pub. No. 2019/0016953).
Cohen et al. teaches the composition of claim 20 as set forth above.
Cohen et al. does not teach the composition comprising a compound of formula III. However, Prete teaches compounds of formula:
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wherein R1-6 are as claimed ([0061]-[0068]). Cohen et al. and Prete are analogous art because they are both concerned with the same field of endeavor, namely fluorescent compositions for security ink. At the time of the invention a person of ordinary skill in the art would have found it obvious to include the compound of Prete in the composition of Cohen et al. and would have been motivated to do so because Prete teaches that the compound allows for detection on all three levels of security and can be included in small amounts ([0018] and [0042]). Furthermore, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (MPEP 2144.06).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 February 13, 2026