DETAILED ACTION
Response to Amendments
In response to the amendment received on 11/20/2025:
• Claims 1-12 are currently pending. Claims 6-12 are withdrawn for being directed to a non-elected invention(s).
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 § 102/103
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mori (WO-2018163766-A1), with reference to US patent family member US-20190369311-A1 as an English translation (hereinafter referred to as “Mori”), or, in the alternative, as obvious over Mori, with evidence from JP-7010796-B2, with reference to the included machine translation (hereinafter referred to as “’796”), as to the rejections of claims 1-4 only.
Regarding claim 1, Mori teaches an ink set (see Mori at Table 2 at para. 0372, teaching an IR Transmitting Composition 2-2; also see Mori at Table 3 at para. 0374, teaching an IR Absorbing Composition 2 (near infrared cut filter-forming composition); also see Mori at para. 0019, teaching both compositions as being used on a structure; thus, the IR Transmitting Composition and IR Absorbing composition taught by Mori collectively may be regarded as an “ink set”) comprising:
• an ink jet ink A which contains a polymerizable compound, a photopolymerization initiator, and perylene black and in which a proportion of a polyfunctional polymerizable monomer in the contained polymerizable compound is 60% by mass or more (see Mori at Table 2 at para. 0372, teaching an IR Transmitting Composition 2-2 that contains 40.51 parts of pigment dispersion Bk-2; also see Mori at Table 1 at pg. 36, teaching Pigment Dispersion Bk-2 as containing Pigment Black 32; Pigment Black 32 is a perylene black, as disclosed by Applicant’s specification at para. 0074; also see Mori at Table 2 at para. 0372, teaching IR Transmitting Composition 2-2 as containing 2.085 parts of curable compound D2; also see Mori at para. 0396, teaching compound D2 as being Aronix TO-2349; Aronix TO-2349 is a multifunctional compound, as evidenced by ‘796 at pg. 9, para. 6; Example 2-2 of Mori contains only compound D2 as the polymerizable component; thus, Example 2-2 of Mori contains 100% by mass of a polyfunctional compound (Aronix TO-2349) in the polymerizable component; also see Mori at Table 2 at para. 0372, teaching IR Transmitting Composition 2-2 as containing 1.2 parts of a photoinitiator; also see Mori at para. 0360, teaching inkjet printing as a suitable printing method); and
• an ink jet ink B which contains a polymerizable compound, a photopolymerization initiator, and an infrared absorbing dye and in which a proportion of a polyfunctional polymerizable monomer in the contained polymerizable compound is 60% by mass or more (see Mori at Table 3 at para. 0374, teaching an IR Absorbing Composition 2 containing 2.5 parts by mass of near infrared absorber A2, i.e., a near infrared absorbing dye; also see Mori at Table 3 at para. 0374, teaching IR Absorbing Composition 2 as containing 3.2 parts of curable compound D5 and 3.2 parts of curable compound D4; also see Mori at para. 0398-0399, teaching compound D4 as being NK Ester A-TMMT, and compound D5 as being Kayarad DPHA; also see Mori at para. 0258, teaching NK Ester A-TMMT as being pentaerythritol tetraacrylate, and Kayarad DPHA as being dipentaerythritol hexa(meth)acrylate; thus, IR Absorbing Composition 2 of Mori contains 100% by mass of polyfunctional compounds in the polymerizable component; also see Mori at Table 3 at pg. 38, teaching IR Absorbing Composition 1 as containing 1 part of photoinitiator; also see Mori at para. 0360, teaching inkjet printing as a suitable printing method).
In the alternative that the infrared absorbing compound A2 (in IR Absorbing Composition 2) of Mori does not read on the claimed “infrared absorbing dye”, Mori broadly teaches their near infrared absorber may be a dye (see Mori at para. 0181; also see Mori at para. 0355).
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 near infrared absorbing dye as the near infrared absorber in the examples of Mori, as Mori teaches as such (see Mori at para. 0181).
It is noted that the limitations of claim 1 claiming the ink set to be used “for forming a composite image,” the ink jet ink A to be used “for forming a black image,” and the ink jet B to be used “for forming an infrared absorbing image,” wherein the “the composite image includes an overlap portion where the black image and the infrared image overlap each other in a plane view” are recitations 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.
Regarding claims 2-3, while Mori (or modified Mori) teaches the ink set according to claim 1 outlined above, Mori fails to explicitly teach in their examples the infrared absorbing dye as including a squarylium compound represented by Formula (1).
However, Mori teaches in their broad disclosure that the infrared absorbing dye may include a squarylium compound, and further teaches a nearly identical structure, SQ-1, as that represented by the claimed Formula (1) for their squarylium compound (see Mori at para. 0185 and 0203-0211).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include a squarylium compound represented by the formula SQ-1 as the infrared absorbing compound in the IR Absorbing composition of Mori, as Mori teaches such a compound as suitable in their composition (see Mori at para. 0185 and 0203-0211). Moreover, the substitution of art-recognized equivalents has been shown to be within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Regarding claim 4, see Mori at Table 2 at para. 0372, teaching IR Transmitting Composition 2-2 as further containing 13.5 parts of pigment dispersion Y-1; also see Mori at Table 1 at pg. 36, teaching Pigment Dispersion Y-1 as containing a yellow pigment, PY139.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included here can be found earlier above in the present Office Action.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mori, or modified Mori, as applied to claim 1 above, and further in view of Oota et al. (US-20180120485-A1) (hereinafter referred to as “Oota”).
Regarding claim 5, Mori (or modified Mori) teaches the ink set according to claim 1 outlined above, wherein the ink set further comprises an ink jet ink C which contains a polymerizable compound and a photopolymerization initiator, and in which a proportion of a polyfunctional polymerizable monomer in the contained polymerizable compound is 60% by mass or more (see Mori at para. 0353-0354 and 0412, teaching the formation of a third composition, a color filter-forming composition; also see the example color filter-forming composition, Red Composition 1, at para. 0412 of Mori; Red Composition 1 contains a curable compound 1 as the polymerizable component; also see Mori at para. 0421, teaching curable compound 1 as being a hexafunctional compound; thus, since Red Composition 1 contains only curable compound 1 as the polymerizable component, Red Composition 1 contains 100% by mass of polyfunctional compounds in the polymerizable component; also see Mori at para. 0412, teaching Red Composition 1 as containing a photoinitiator; also see Mori at para. 0360, teaching inkjet printing as a suitable printing method; also see the Green and Blue compositions taught by Mori at para. 0413-0414, teaching similar components).
While Mori teaches the ink set outlined above, Mori fails to explicitly teach the inkjet ink C as containing a fluorescent substance.
However, Oota teaches a similar ink set as Mori comprising an infrared transmitting composition, an infrared absorbing composition, and a coloring composition including a chromatic colorant (see Oota at para. 0064, 0613, 0742, 0768, 0843, and 0850). Moreover, Oota teaches the coloring composition may include a chromatic colorant, and that the chromatic colorant includes the colorants previously described for the infrared absorbing composition (see Oota at para. 0613). Oota further teaches the chromatic colorant may include dyes such as Rhodamine B (see Oota at para. 0293).
Mori teaches their color filter-forming composition may include a chromatic colorant, such as a pigment or a dye, and further teaches well-known dyes may be used without any particular limitation, including xanthene dyes (see Mori at para. 0154 and 0353).
In this case, Rhodamine B is a known xanthene dye suitable for use in a coloring composition for a color filter similar to that taught by Mori (as exemplified by Oota at para. 0064, 0293, 0613, 0742, 0768, 0843, and 0850), and thus its use in the coloring composition of Mori 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 Rhodamine B as the chromatic colorant in the color filter-forming composition of Mori, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Rhodamine B is a fluorescent substance, as disclosed by Applicant’s specification at para. 0125.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants argue Mori teaches their near infrared transmitting filter and near infrared cut filter as being provided at positions different from one another, and thus, as teaching away from the claimed overlapping limitation (see Applicant’s Remarks at pg. 8-9). Applicants further argue Mori does not disclose how the near infrared transmitting filter composition can be used for forming a black image, nor how the near infrared cut filter composition can be used for forming an infrared absorbing image (see Applicant’s Remarks at pg. 8-9). Moreover, Applicants argue Mori fails to teach the technical effect of forming a composite image as described in the present application (see Applicant’s Remarks at pg. 9-10).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
In response to Applicant's argument that Mori does not teach the newly added limitations “for forming a composite image” that “includes an overlap portion,” “for forming a black image,” and “for forming an infrared absorbing image,” such limitations are recitations of intended use. 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. See MPEP § 2111. Here, the compositions of Mori are the same structurally as the inks claimed by Applicants (see claim 1 rejection above). The newly added intended use limitations do not structurally modify the claimed inks. Accordingly, given the compositions of Mori are the same as those claimed, such compositions are necessarily “capable” of performed the claimed intended use of forming a composite image in an overlap portion, forming a black image, and forming an infrared absorbing image. Thus, Mori reads on the claims.
Additionally, Mori’s teaching of certain embodiments where the compositions are placed at different positions is not a teaching away, as Mori does not expressly discourage from overlapping the compositions or indicate a negative result from doing so. In fact, Mori teaches embodiments where the near infrared transmitting filter and near infrared cut filter may be placed on top of one another (see Fig. 6 of Mori and Mori at para. 0105-0106, teaching an embodiment where the near infrared transmitting filter 11 is formed on top of the near infrared cut filter 23; also see Mori at para. 0106, teaching another infrared cut filter may be arranged on a surface of the second near infrared transmitting filter 12). Consequently, Mori still reads on the claims.
Next, Applicant argue their claimed ink set as being used to form printed articles having excellent effects in the initial logo readability, logo readability after rub and invisibility of the logo, which Mori is silent on (see Applicant’s Remarks at pg. 9).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Nothing in the claims is directed to initial logo readability, logo readability after rub and invisibility of the logo. Furthermore, since the inks of Mori are the same as those claimed, it necessarily follows that such inks would demonstrate the alleged excellent effects. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
Additionally, a showing of unexpected results must be based on evidence, not argument
or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997).
See MPEP § 2145. No data or evidence is provided to support Applicant’s alleged “excellent effects” statement. A mere conclusion that Applicant’s claimed ink set has “excellent effects in the initial logo readability, logo readability after rub and invisibility of the logo” is not enough to show nonobviousness. See MPEP § 716.02.
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.
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/J.E.B./
Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731