DETAILED ACTION
Applicant’s response filed on 11/20/2025 has been fully considered. Claims 1-3, 5, and 6 are pending. Claim 1 is amended. Claim 4 is canceled.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1 and 6 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamamoto et al. (US 2017/0005016 A1).
Regarding claims 1 and 6, Yamamoto teaches a protective film-forming film in which the light transmittance at a wavelength of 1600 nm is 72% or greater, and the light transmittance at a wavelength of 550 nm is 20% or less [0010], wherein it is preferable that the protective film-forming film is a single layer formed of an uncured curable adhesive [0012], wherein when the light transmittance at a wavelength of 550 nm is 20% or less, it becomes difficult for the protective film-forming film to transmit visible light beams [0036], wherein it is preferable the curable adhesive contains a curable component and a binder polymer component [0043], wherein a thermoset component can be used as the curable component [0043], wherein examples of the thermoset component include a benzoxazine resin [0044], where in the protective film-forming film, the light transmittance to visible light is lowered while maintaining the light transmittance to infrared ray [0073]. The specification of the instant application recites that the near-infrared transmitting black material of the present invention has an average transmittance of 20% or lower in a visible light range of 400 to 800 nm wavelength [0032], and that the average transmittance within the above range enables sufficient absorption of visible light and development of high blackness [0032]. Yamamoto’s teachings therefore read on a near-infrared transmitting black material comprising an oxazine resin, the black material having an average transmittance of 20% or lower in a visible light region of 400 to 800 nm wavelength and an average transmittance of 60% or higher in a near-infrared region of 900 to 2,500 nm wavelength as claimed, and a near-infrared transmitting filter comprising the near-infrared transmitting black material according to claim 1 as claimed.
Claim Rejections - 35 USC § 103
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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (US 2017/0005016 A1) as applied to claim 1, and further in view of Sun et al. (US 2018/0354798 A1, cited in IDS).
Regarding claim 2, Yamamoto teaches the near-infrared transmitting black material according to claim 1 as explained above. Yamamoto teaches that it is preferable the curable adhesive contains a curable component and a binder polymer component [0043], that a thermoset component can be used as the curable component [0043], and that examples of the thermoset component include a benzoxazine resin [0044].
Yamamoto does not teach that the oxazine resin is a naphthoxazine resin. However, Sun teaches a naphthoxazine resin that is an oxazine resin [0024], wherein black particles contain amorphous carbon derived from carbon contained in the oxazine resin [0010]. Yamamoto and Sun are analogous art because both references are in the same field of endeavor of a black material comprising an oxazine resin. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Sun’s naphthoxazine to substitute for Yamamoto’s benzoxazine resin in Yamamoto’s protective film-forming film. The proposed modification would read on wherein the oxazine resin is a naphthoxazine resin as claimed. One of ordinary skill in the art would have been motivated to do so because Sun’s naphthoxazine and Yamamoto’s benzoxazine resin are art recognized equivalents known for the same purpose because they are both an oxazine resin used for black material because Sun teaches that the naphthoxazine resin is an oxazine resin [0024] that is beneficial for being useful for black particles containing amorphous carbon derived from carbon contained in the oxazine resin [0010], and that the oxazine is alternatively benzoxazine resin instead of the naphthoxazine resin [0024], and because Yamamoto teaches a protective film-forming film in which the light transmittance at a wavelength of 1600 nm is 72% or greater, and the light transmittance at a wavelength of 550 nm is 20% or less [0010], that it is preferable that the protective film-forming film is a single layer formed of an uncured curable adhesive [0012], that it is preferable the curable adhesive contains a curable component and a binder polymer component [0043], that a thermoset component can be used as the curable component [0043], that examples of the thermoset component include a benzoxazine resin [0044], and that in the protective film-forming film, the light transmittance to visible light is lowered while maintaining the light transmittance to infrared ray [0073]. In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art (MPEP 2144.06(II)).
Allowable Subject Matter
Claims 3 and 5 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 3, Yamamoto et al. (US 2017/0005016 A1) teaches the near-infrared transmitting black material according to claim 1 as explained above.
Yamamoto does not teach that the black material has a particulate shape with an average particle size of 0.02 µm or larger and 10.0 µm or smaller. There would not have been a teaching, suggestion, or motivation for one of ordinary skill in the art to have modified Yamamoto’s protective film-forming film to have a particulate shape with an average particle size of 0.02 µm or larger and 10.0 µm or smaller because Yamamoto teaches a protective film-forming film [0010], wherein it is preferable that the protective film-forming film is a single layer formed of an uncured curable adhesive [0012]. Modifying Yamamoto’s protective film-forming film to have a particulate shape with an average particle size of 0.02 µm or larger and 10.0 µm or smaller would make it no longer a film-forming film, which would render Yamamoto’s invention unsatisfactory for its intended purpose. If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, there may be no suggestion or motivation to make the proposed modification (MPEP 2143.01(V)).
Regarding claim 3, Hano et al. (Hano et al., “Monodisperse Surface-Charge-Controlled Black Nanoparticles for Near-Infrared Shielding”, Applied Nano Materials, 2019, vol. 2, p. 3597-3605, cited in IDS, made of record on 04/26/2023) teaches black polymer nanoparticles that are prepared by microwave-assisted polymerization of 1,5-dihydroxynaphthalene and 1,3,5-trimethyl-1,3,5-triazinane under high temperature and pressure, wherein the nanoparticles express selective reflectivity of NIR wavelengths (p. 3597), wherein an oxazine ring is formed by the polymerization of DHN and TA in all nanoparticles (p. 3601), wherein the DHN is 1,5-dihydroxynaphthalene, and the TA is 1,3,5-trimethyl-1,3,5-triazinane (p. 3598), wherein the average diameter of the nanoparticles ranges from 20 to 700 nm (p. 3597), which reads on a near-infrared transmitting black material comprising an oxazine resin, wherein the black material has a particulate shape with an average particle size of 0.02 µm or larger and 0.7 µm or smaller.
Hano does not teach that the black material has an average transmittance of 20% or lower in a visible light region of 400 to 800 nm wavelength and an average transmittance of 60% or higher in a near-infrared region of 900 to 2,500 nm wavelength. Hano’s black material would not inherently have the claimed average transmittance because Hano teaches that the nanoparticles, before calcination, after calcination at 200 °C, after calcination at 250 °C, and after calcination at 300 °C, have reflectance of less than 20% at a wavelength of 400 nm to 800 nm (p. 3601), that the nanoparticles, after calcination at 300 °C, have reflectance of less than 60% at a wavelength of 900 nm to 2200 nm but greater than the reflectance at a wavelength of 400 nm to 800 nm (p. 3601), and that the nanoparticles are black (p. 3602), which means that Hano’s black material has lower reflectance at a wavelength of 400 nm to 800 nm than at a wavelength of 900 nm to 2200 nm, which also means that Hano’s black material has greater transmittance at a wavelength of 400 nm to 800 nm than at a wavelength of 900 nm to 2200 nm. Hano therefore teaches away from the black material having an average transmittance of 20% or lower in a visible light region of 400 to 800 nm wavelength and an average transmittance of 60% or higher in a near-infrared region of 900 to 2,500 nm wavelength.
Regarding claim 5, Yamamoto et al. (US 2017/0005016 A1) teaches the near-infrared transmitting black material according to claim 1 as explained above.
Yamamoto does not teach a near-infrared transmitting ink comprising the near-infrared transmitting black material according to claim 1. There would not have been a teaching, suggestion, or motivation for one of ordinary skill in the art to have modified Yamamoto’s protective film-forming film to be an ink because Yamamoto teaches a protective film-forming film [0010], wherein it is preferable that the protective film-forming film is a single layer formed of an uncured curable adhesive [0012]. Modifying Yamamoto’s protective film-forming film to be an ink would make it no longer a film-forming film, which would render Yamamoto’s invention unsatisfactory for its intended purpose. If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, there may be no suggestion or motivation to make the proposed modification (MPEP 2143.01(V)).
Regarding claim 5, Hano et al. (Hano et al., “Monodisperse Surface-Charge-Controlled Black Nanoparticles for Near-Infrared Shielding”, Applied Nano Materials, 2019, vol. 2, p. 3597-3605, cited in IDS, made of record on 04/26/2023) teaches black polymer nanoparticles that are prepared by microwave-assisted polymerization of 1,5-dihydroxynaphthalene and 1,3,5-trimethyl-1,3,5-triazinane under high temperature and pressure, wherein the nanoparticles express selective reflectivity of NIR wavelengths (p. 3597), wherein an oxazine ring is formed by the polymerization of DHN and TA in all nanoparticles (p. 3601), wherein the DHN is 1,5-dihydroxynaphthalene, and the TA is 1,3,5-trimethyl-1,3,5-triazinane (p. 3598), wherein the obtained nanoparticles have greater potential for use in inkjet ink (p. 3602), wherein the black nanoparticles are applicable as environmentally friendly materials to inkjet ink (p. 3603-3604), which reads on a near-infrared transmitting ink comprising a near-infrared transmitting black material comprising an oxazine resin.
Hano does not teach that the black material has an average transmittance of 20% or lower in a visible light region of 400 to 800 nm wavelength and an average transmittance of 60% or higher in a near-infrared region of 900 to 2,500 nm wavelength. Hanao’s black material would not inherently have the claimed average transmittance because Hano teaches that the nanoparticles, before calcination, after calcination at 200 °C, after calcination at 250 °C, and after calcination at 300 °C, have reflectance of less than 20% at a wavelength of 400 nm to 800 nm (p. 3601), that the nanoparticles, after calcination at 300 °C, have reflectance of less than 60% at a wavelength of 900 nm to 2200 nm but greater than the reflectance at a wavelength of 400 nm to 800 nm (p. 3601), and that the nanoparticles are black (p. 3602), which means that Hano’s black material has lower reflectance at a wavelength of 400 nm to 800 nm than at a wavelength of 900 nm to 2200 nm, which also means that Hano’s black material has greater transmittance at a wavelength of 400 nm to 800 nm than at a wavelength of 900 nm to 2200 nm. Hano therefore teaches away from the black material having an average transmittance of 20% or lower in a visible light region of 400 to 800 nm wavelength and an average transmittance of 60% or higher in a near-infrared region of 900 to 2,500 nm wavelength.
Response to Arguments
Applicant’s arguments, see p. 3-6, filed 11/20/2025, with respect to the rejection of claim 1 under 35 U.S.C. 102(a)(1) as being anticipated by Hano et al. (Hano et al., “Monodisperse Surface-Charge-Controlled Black Nanoparticles for Near-Infrared Shielding”, Applied Nano Materials, 2019, vol. 2, p. 3597-3605, cited in IDS, made of record on 04/26/2023) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Yamamoto et al. (US 2017/0005016 A1).
Applicant’s arguments, see p. 3-6, filed 11/20/2025, with respect to the rejection of claim 2 under 35 U.S.C. 102(a)(1) as being anticipated by Hano et al. (Hano et al., “Monodisperse Surface-Charge-Controlled Black Nanoparticles for Near-Infrared Shielding”, Applied Nano Materials, 2019, vol. 2, p. 3597-3605, cited in IDS, made of record on 04/26/2023) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Yamamoto et al. (US 2017/0005016 A1) and further in view of Sun et al. (US 2018/0354798 A1, cited in IDS).
Applicant’s arguments, see p. 3-6, filed 11/20/2025, with respect to the rejection of claims 3 and 5 under 35 U.S.C. 102(a)(1) as being anticipated by Hano et al. (Hano et al., “Monodisperse Surface-Charge-Controlled Black Nanoparticles for Near-Infrared Shielding”, Applied Nano Materials, 2019, vol. 2, p. 3597-3605, cited in IDS, made of record on 04/26/2023) have been fully considered and are persuasive. The rejection of claims 3 and 5 under 35 U.S.C. 102(a)(1) as being anticipated by Hano et al. (Hano et al., “Monodisperse Surface-Charge-Controlled Black Nanoparticles for Near-Infrared Shielding”, Applied Nano Materials, 2019, vol. 2, p. 3597-3605, cited in IDS, made of record on 04/26/2023) has been withdrawn.
Applicant’s arguments, see p. 3-6, filed 11/20/2025, with respect to the rejection(s) of claim 6 under 35 U.S.C. 103 as being unpatentable over Hano et al. (Hano et al., “Monodisperse Surface-Charge-Controlled Black Nanoparticles for Near-Infrared Shielding”, Applied Nano Materials, 2019, vol. 2, p. 3597-3605, cited in IDS, made of record on 04/26/2023) as applied to claim 1, and further in view of Takishita et al. (US 2015/0293282 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Yamamoto et al. (US 2017/0005016 A1).
Correspondence
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/DAVID T KARST/ Primary Examiner, Art Unit 1767