DETAILED ACTION
This office action follows a reply filed on July 13, 2026. No claims 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 (1) through (47) are illegible, as shown below:
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444
534
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498
438
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746
494
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586
576
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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 July 13, 2026 have been fully considered but they are not persuasive.
Applicants argue that the D(v,50) of WO ‘154 is the volume-weighted median diameter, whereas the D50 used according to the instant invention represents the median diameter based on particle counts, where these values are not comparable.
The examiner agrees that these values are not comparable; however, applicants only claim the median particle size, D50, not the number average D50, or Dn50, where D50 can also mean the median particle size in a particle size distribution based on the samples volume or mass.
Applicants disclose the particles as having a median particle size of 30-90 nm, and then claim the number average particle size as 35-95 nm. This is not the same range; therefore, it is unclear as to whether applicants’ claimed D50 is the number average particle size, as argued.
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Therefore, based on the broadest reasonable interpretation of the claimed invention, the above rejection still meets the claimed limitations.
Amending to claim the number average particle size would be sufficient to overcome the above prior art rejection.
Applicants argue that the prior art is not interested in improving absorbing properties, light stability and heat stability as in the instant invention.
Please see MPEP 2144(IV) Rationale Different From Applicant’s Is Permissible.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.
Applicants argue that the claimed D50 is outside of the most preferred average particle size of the prior art.
Please see MPEP 2123 [R-5] Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments
I. PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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