DETAILED ACTION
Response to Amendments
In response to the amendment received on 03/26/2026:
• Claims 16-30 are currently pending. Claims 1-15 are canceled. Claims 26-30 are withdrawn for being directed to a non-elected invention(s). The objections to claims 20 and 24 are withdrawn in light of the amendments to the claims. The rejection of claims 16-25 under 35 U.S.C. 112(b) are withdrawn in light of the amendments to the claims.
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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16-24 are rejected under 35 U.S.C. 103 as being unpatentable over Friedrich (US-20130153118-A1) (hereinafter referred to as “Friedrich”) in view of Oh (KR-20100099466-A), with reference to the previously included machine translation (hereinafter referred to as “Oh”).
Regarding claim 16-23, see Friedrich at para. 0001, teaching a phosphorescent composition which may be used in a paint; the paint corresponds to the claimed “ink”; also see Friedrich at para. 0016 and 0023, teaching the composition to contain a phosphorescent pigment, such as SrAl2O4:Eu; also see Friedrich at para. 0024, teaching the composition to further comprise a fluorescent pigment, such as Y2O2S:Eu; the SrAl2O4:Eu and Y2O2S:Eu compounds of Friedrich correspond to the claimed first and second pigment, respectively, as claimed in claims 20-23; it is noted that the limitations of claims 16-19 are properties of the resulting ink/pigments; since the pigments are the same as those claimed (see claims 20-23), it necessarily follows that the paint of Friedrich meets the claimed properties of claims 16-19; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II); moreover, the courts have held that it is well settled that where there is a reason to believe that a characteristic would be inherent in the prior art, the burden of proof then shifts to the Applicant to provide objective evidence to the contrary, see In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997), see MPEP § 2112(V). In other words, burden of proof is shifted to Applicants to show the paint of Friedrich as not meeting the claim 16-19 properties as claimed; moreover, it is noted that the limitation of claim 1 indicating the claimed ink to be a “security” ink is a recitation of intended use; since the structure of the prior art teaches all structural limitations of the claim, the same is considered capable of meeting the limitation, see MPEP § 2111.
While Friedrich teaches the ink outlined above, Friedrich fails to explicitly teach the first fluorescent and phosphorescent pigment and the second fluorescent pigment to each range from 40% to 60% by weight based on a total pigment content of the security ink.
However, Oh teaches a luminescent paint composition containing a gel-coat, a phosphorescent pigment, and a fluorescent pigment (see Oh at pg. 3, para. 5-8). Oh further teaches the phosphorescent pigment may include a strontium aluminate compound containing europium, and the fluorescent pigment may include yttria containing europium (see Oh at pg. 4, para. 11 and pg. 5, para. 5). Moreover, Oh teaches the content of the phosphorescent pigment to range from 20 to 45 wt% in the paint, and that if it is less than 20 wt%, the paint cannot exhibit sufficient afterglow luminescence, and that if it is more than 45 wt%, usability, applicability, and storage stability become poor (see Oh at pg. 5, para. 1). Additionally, Oh teaches the content of the fluorescent pigment to range from 20 to 40 wt%, and that when the content is less than 20 wt%, the visibility is lowered, and that if it is more than 40 wt%, the usability and coating property are poor (see Oh at pg. 5, para. 9). Moreover, Oh teaches an example ink containing 30 wt% of phosphorescent pigment and 30 wt% of fluorescent pigment in a 1:1 ratio (see Oh at pg. 6, para. 10).
Friedrich teaches their paint to contain both a phosphorescent pigment and a fluorescent pigment (see Friedrich at para. 0016, 0023, and 0024).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the content of the phosphorescent pigment in the paint of Friedrich to range from 20 to 45 wt%, and the content of the fluorescent pigment in the paint of Friedrich to range from 20 to 40 wt%, relative to the entire weight of the paint. One of ordinary skill in the art would have been motivated to do so in order to obtain sufficient afterglow luminescence, improve usability, applicability, and storage stability, and to improve usability and coating property (see Oh at pg. 5, para. 1 and pg. 5, para. 9).
Following the above modification, the paint of modified Friedrich contains 20 to 45 wt% of phosphorescent pigment and 20 to 40 wt% of fluorescent pigment. Thus, the ratio of the phosphorescent pigment in the total pigment content necessarily ranges from 33.3% to 69.2% (20% phosphorescent pigment minimum/(20% phosphorescent pigment min + 40% fluorescent pigment max) • 100 = 33.3% ratio min; 45% phosphorescent pigment max/(45% phosphorescent pigment max + 20% fluorescent pigment max) • 100 = 69.2% ratio max).
Further, the ratio of the fluorescent pigment in the total pigment content necessarily ranges from 30.8% to 66.7% (20% fluorescent pigment min/(20% fluorescent pigment min + 45% phosphorescent pigment max) • 100 = 30.8% ratio min; 40% fluorescent pigment max/(40% fluorescent pigment max + 20% phosphorescent pigment min) • 100 = 66.7% ratio max).
These ranges of 33.3% to 69.2% for the phosphorescent pigment and 30.8% to 66.7% for the fluorescent pigment overlap the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Further, one of ordinary skill in the art would have a reasonable expectation of success in incorporating such ranges into the paint of Friedrich, e.g., a 1:1 ratio of 50% each, given Oh teaches at least one example where a 1:1 ratio is used (see Oh at pg. 6, para. 10).
Regarding claim 24, it is noted that the limitations of claim 24 are recitations of intended use (e.g., for “offset inks,” the ink is to be used in an offset printing process). Since the structure of the prior art teaches all structural limitations of the claim, the same is considered capable of meeting the limitation. See MPEP § 2111.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Friedrich in view of Oh, as applied to claim 16 above, and further in view of Watanabe (JP-2017110168-A), with reference to the previously included machine translation (hereinafter referred to as “Watanabe”).
Regarding claim 25, Friedrich as modified by Oh teaches the ink according to claim 16 outlined above, wherein the ink further comprises:
i) 5 to 50% by weight in sum of the first fluorescent and phosphorescent pigment, the second fluorescent pigment and optional further pigment(s) (see the claim 16 modification above, setting forth the paint of modified Friedrich as containing 20 to 45 wt% of phosphorescent pigment and 20 to 40 wt% of fluorescent pigment; thus, modified Friedrich necessarily teaches a total pigment content of 40 to 85 wt% in the paint (20 + 20 = 40; 45 + 40 = 85); this range of 40 to 85 wt% for the total pigment content overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
ii) one or more binders (see Friedrich at para. 0026, teaching their paint may be combined with a binder); and
iii) one or more solvents (see Friedrich at para. 0026, teaching their paint may be combined with a solvent).
While modified Friedrich teaches the ink outlined above, modified Friedrich fails to explicitly teach the ink as comprising:
(1) 10 to 40% by weight of the binder, and
(2) 20 to 60% by weight of the solvent, wherein the solvent is selected from the group of vegetable oils, mineral oils, wood oils and any combinations thereof.
Regarding (1), Oh teaches a luminescent paint composition containing a phosphorescent pigment and a fluorescent pigment (see Oh at pg. 3, para. 5-8). Oh further teaches the paint composition to include a gel-coat, which imparts adhesion of the composition to a structure (i.e., functions as a binder) (see Oh at pg. 3, para. 11). Moreover, Oh teaches epoxy as a suitable gel-coat (see Oh at pg. 4, para. 1). Additionally, Oh teaches the content of the gel-coat in the paint to range from 15 to 55 wt%, and that if the content is less than 15 wt%, the viscosity of the composition is low, resulting in the structure to flow down before being fixed, and that if the content is greater than 55 wt%, the viscosity is too high, which causes applying difficulties (see Oh at pg. 4, para. 2).
Friedrich teaches their paint may include a binder, such as an epoxide resin (see Friedrich at para. 0026).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a binder, e.g., an epoxy binder, like that taught by Oh in an amount of 15 to 55 wt% in the paint of modified Friedrich. One of ordinary skill in the art would have been motivated to do so in order to prevent the viscosity from becoming too low or high, preventing the structure from flowing down before being fixed and reducing applying difficulties (see Oh at pg. 4, para. 2).
This range of 15 to 55 wt% for the binder content overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding (2), Watanabe teaches a fluorescent ink comprising a fluorescent pigment, such as Y2O2S activated with Europium, and a binder (see Watanabe at pg. 1, para. 1; pg. 2, para. 7; and pg. 6, para. 4). Watanabe further teaches the ink to contain a solvent, such as an aliphatic solvent such as mineral oil, in an amount ranging from 3 to 40 wt%, and that mineral oil is preferably used as an aliphatic solvent from the viewpoint of environmental measures (see Watanabe at pg. 7, para. 4, 5, and 8).
Friedrich teaches their paint composition may contain customary organic solvents, such as aliphatic hydrocarbons (see Friedrich at para. 0026).
In this case, the use of 3 to 40 wt% of mineral oil as a solvent in a fluorescent composition is known in the art (as exemplified by Watanabe at pg. 7, para. 4, 5, and 8), and thus the use of mineral oil as the aliphatic hydrocarbon solvent in the composition of Friedrich in such an amount would yield a reasonable expectation of success.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the mineral oil of Watanabe in an amount ranging from 3 to 40 wt% in the paint of Freidrich, as such an amount is known to be used in a similar fluorescent composition in the art (see Watanabe at pg. 7, para. 4, 5, and 8). Moreover, one of ordinary skill would have been motivated to do so in order to use an aliphatic hydrocarbon solvent that is more preferable in terms of environmental measures (see Watanabe at pg. 7, para. 8).
This range of 3 to 40 wt% for the mineral oil solvent content overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Response to Arguments
Applicant's arguments filed 03/26/2026 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, the Examiner agrees that Applicant’s amendments overcome the previous 102 rejections over Aoyama and Friedrich (see Applicant’s Remarks at pg. 9-16). However, a new ground of rejection is present under 35 U.S.C. 103 over Friedrich in view of Oh, see the claim 16 rejection above.
Next, Applicants argue the chemical manufacturing of security ink is an unpredictable art, and that thus, a person of ordinary skill would have no reasonable expectation of success in using the teachings of Friedrich, Oh, and Watanabe to arrive at the claimed composition (see Applicant’s Remarks at pg. 17).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Applicants have not explicitly articulated why the specific art of security inks are an unpredictable technology, as well as how such unpredictability precludes the combination as claimed. Applicants merely generically and broadly state that the art is unpredictable. Further, Applicants do not explicitly explain why one of ordinary skill in the art would not have a reasonable expectation of success in combining the teachings of Oh, Friedrich, and Watanabe. Oh, Friedrich, and Watanabe are all directed to the same art of luminescent ink compositions with similar pigments; additionally, Oh and Watanabe provide explicit motivations for combining their teachings with Friedrich (see modifications above). There is no express indication of unpredictability with respect to such combinations. Accordingly, one of ordinary skill would have a reasonable expectation of success in combining the teachings.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
Prosecution Insights