DETAILED ACTION
This office action follows a reply filed on February 12, 2026. Claims 18, 20-21, and 40 have been amended. Claims 18-21, 37-40 and 42 are currently pending and under examination.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
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
Claim 42 is objected to because of the following informalities:
The formulae for (41) through (47) are illegible.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 18-24, 37-40 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/079154 in view of JP 2018-048217. For convenience, the machine translation of JP ‘217 will be cited below.
WO ‘154 teaches providing an aqueous suspension of solid organic IR absorbing pigment (p. 3, ll. 20-21), where the IR absorbing pigment is exemplified as a metal dithiolene complex shown below (p. 35, Pigment A: [nickel(II), bis(diphenylimidazolidinetrithione-кS4, кS5)-, (SP-4-1)-], which meets applicants’ formula (1):
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516
518
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WO ‘154 teaches that in step i) the pigment is in the suspension in particulate form, where the particle size distribution of the particles of the IR absorbing pigment is smaller than the particle size of the microparticles containing the solid particles of the IR-absorbing organic pigment (which contains an aminoplast resin) (p. 26, ll. 11-16). WO ‘154 teaches that the particle size distribution of the particles of the IR absorbing organic pigment is characterized by having a D50 of preferably in the range of 20-300 nm (p. 26, ll. 16-25).
WO ‘154 teaches that if the particle size of the IR-absorbing organic pigment is outside of the above described range, the particle size can be reduced by using established particle comminution methods, including those which involve water or an organic solvent and grinding media like inorganic salts (col. 26, ll. 26-38). WO ‘154 does not teach the claimed d10.
JP ‘217 teaches polishing and kneading an infrared absorber so that the average particle size is preferably within 30-80 nm, teaching that when the size is less than 100 nm, the visible transparency is excellent, but if the particle size is too small, the dispersion stability in the solvent will be deteriorated. Salt milling by way of a kneader is taught as a suitable method for adjusting the particle size of the infrared absorber.
JP ‘217 teaches the coefficient of variation (CV) of the primary particle diameter of the infrared absorbing organic pigment as preferably 22-28%, which is calculated by the formula: CV=(standard deviation of primary particle diameter /arithmetic average value of primary particle diameter). Based on an average primary particle diameter of 60 nm, the standard deviation must be 13.2-16.8 nm to meet the desired CV, suggesting that there are little to no particles having a particle size of less than about 43 nm, suggesting that applicants’ claimed d10 is met.
See pp. 8-9 of JP ‘217.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have carried out salt milling on the infrared absorber of WO ‘154 using the method of JP ‘217, as WO ‘154 suggests carrying out salt milling on the infrared absorber to obtain a desirable d50, and JP ‘217 teaches that when the salt milling is carried out on an organic infrared absorber, the d50 can be controlled within a range of 30-60 nm, suitable for WO ‘154, and by controlling the coefficient of variation, aggregation is suppressed, providing increased dispersibility of the organic infrared absorber, which results in improved transparency and heat resistance.
WO ‘154 in view of JP ‘217 is prima facie obvious over instant claims 18-24, 35-40 and 42.
Response to Arguments
Applicant's arguments filed October 30, 2025 have been fully considered but they are not persuasive.
Applicants argue that WO ‘154 is directed to microparticle compositions, arguing that WO ‘154 does not teach or suggest a narrow particle size range as critical for the IR absorbance or stability of the pigment itself, further arguing unexpected superior IR absorbance, further arguing that the showing supports the existence of a critical particle size.
While the examiner agrees that WO ‘154 does not relate particle size to IR absorbance or stability of the pigment, these properties are inherent in the particle size, and something which is old does not become patentable upon discovery of a new property. A proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is “the natural result of the combination of prior art elements”. See MPEP 2112(I).
WO ‘154 teaches an overlapping range of the claimed D50 and JP ‘217 teaches a CV which meets the claimed D10.
As to the unexpected results, in addition to showing unexpected results and comparing the closest prior art, the showing must be commensurate in scope with the claimed invention.
The claimed invention allows for a D50 in the range of 50-70 nm and a D10 of greater than 30 nm, where the examples only show a D50 of 60.4 and aD10 being 38 nm. The comparative example has a particle size outside of the range suggested by JP ‘154.
Applicants believe that “[t]he comparative data shows that only within the claimed size range do the particles exhibit unexpectedly high IR absorbance, demonstrating the existence of a critical particle size range.”
A showing of unexpected results over a claimed range should include a comparison of a sufficient number of tests both inside and outside the claimed range to show criticality of the claimed range. See MPEP 216.02(d)(II). Applicants have only one example inside the range and one example outside of the claimed range. This is not sufficient to show unexpected results over the claimed range.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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