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.
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) 20-21, 24-26, and 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yanagisawa et al. (JP 2015183128 A and English machine translation thereof).
Regarding Claims 20-21 and 24-25: 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 ([0095] of JP 2015183128 A and [0008], [0015], and [0018] of the English machine translation). Yanagisawa et al. teaches the polymer such as a polyethylene, a polypropylene, and a polyurethane ([0131] of English machine translation).
Yanagisawa et al. does not teach a specific embodiment comprising both N-(2-(benzo[d]thiazol-2-yl)phenyl)benzamide and a polyethylene, a polypropylene, or a polyurethane. However, at the time of the invention a person of ordinary skill in the art would have found it obvious to include both N-(2-(benzo[d]thiazol-2-yl)phenyl)benzamide and a polyethylene, a polypropylene, or a polyurethane with a reasonable expectation of success and would have been motivated to do so because Yanagisawa et al. teaches that both are suitable for the invention.
Regarding Claim 26: Yanagisawa et al. further teaches compounds such as:
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a compound reading on formula 1 wherein X is S, Z is NHR5, R and R1-3 are hydrogen, R5 is -C(O)OR4 wherein R4 is C1 alkyl ([0096] of JP 2015183128 A).
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).
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.
Allowable Subject Matter
Claims 27 and 30-31 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed May 19, 2026 have been fully considered and sufficiently responded to in the new grounds of rejection as set forth 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 PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
Examiner interviews are available via telephone, in-person, 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 http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 July 29, 2026
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