DETAILED ACTION
Response to Amendments
In response to the amendment received on 03/31/2026:
• Claims 1, 3-8, 10, 15-18, and 20 are currently pending. Claims 2, 9, 11-14, and 19 are 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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
• In claim 1, line 13, the phrase “the at least one second first dye composition” appears to include a typo by using the word “first;” to correct, the Examiner suggests amending the claim as follows: “the at least one second
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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, 3, 4, 7, 10, 16, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Masuju (JP-2006289804-A), with reference to the previously included machine translation (hereinafter referred to as “Masuju”), with additional reference to the previously included certified human translation of para. 0023 of Masuju (hereinafter referred to as “Certified Translation of Para. 0023 of Masuju”).
Regarding claims 1 and 20, Masuju teaches a marking system (see Masuju at pg. 2, para. 9, pg. 3, para. 1, and pg. 3, para. 12, teaching an applicator comprising a discoloring liquid, i.e., a color changing liquid; also see Masuju at pg. 6, para. 4, teaching the applicator as further containing an ink containing a dye that is decolored; also see Masuju at pg. 10, para. 12, teaching the inks may be applied on a paper substrate; the color changing liquid, the ink, and the paper substrate collectively correspond to the claimed “marking system”) comprising:
a) a color-change agent composition (see Masuju at pg. 2, para. 9, pg. 3, para. 1, and pg. 3, para. 12, teaching a discoloring liquid, i.e., a color changing liquid; also see Example 2 of Masuju at pg. 8, para. 9-12, teaching an example discoloring liquid) comprising:
i) 40-95 wt% of a solvent and 1-25 wt% of a reactive agent (see Example 2 of Masuju at pg. 8, para. 9-12, teaching an example discoloring liquid containing 15 parts, or 15%, of a potassium sulfite reducing agent, and 73.7 parts, or 73.7%, of water as a solvent; these values fall within the respective claimed ranges); and
ii) at least one buffer, at least one wetting agent, at least one surfactant, and at least one humectant, wherein the humectant is present in an amount of 1-10 wt% based on a total weight of the color-change agent composition (see Example 2 of Masuju at pg. 8, para. 9-12, teaching an example discoloring liquid containing potassium carbonate, a phosphate ester surfactant, and 10 parts, or 10%, of glycerin; potassium carbonate corresponds to the claimed “buffer”, see Applicant’s specification at pg. 5, lines 14-16; moreover, glycerin corresponds to the claimed “humectant”, see Applicant’s specification at pg. 6, lines 21-24; further, given that the claimed wetting agent and the surfactant may be the same (see Applicant’s specification at pg. 6, lines 16-17), it necessarily follows that the phosphate ester surfactant in Example 2 of Masuju corresponds to both the claimed wetting agent and the claimed surfactant; in other words, a portion of the phosphate ester surfactant content corresponds to the claimed “wetting agent”, while the remaining portion of the phosphate ester surfactant content corresponds to the claimed “surfactant”);
b) one or more ink compositions each having a respective ink color, each respective ink composition comprising a respective:
i) at least one first dye composition characterized by a respective first color, the at least one first dye composition configured to react with the color-change agent composition; and
ii) at least one second dye composition characterized by a respective second color, the at least one second first dye composition configured to not react with the color-change agent composition; and
c) a substrate having the b) one or more ink compositions printed in a pattern thereon (wherein the substrate comprises a paper substrate, regarding claim 20), such that when the a) color-change agent composition contacts the c) substrate, each respective i) at least one first dye composition reacts with the a) color change agent composition, thereby producing each respective second color, wherein each respective first color is different from each respective second color, wherein each respective second color is different from each respective ink color, and wherein the production of each respective second color reveals the pattern in the c) substrate (see Masuju at pg. 6, para. 4, teaching an ink containing a dye that is decolored or discolored by a reducing action (i.e., a “reactive dye”); also see “Certified Translation of Para. 0023 of Masuju,” showing Masuju as teaching the dye that changes or fades with the reducing agent (i.e., reactive dye) may be used together with a dye or pigment that is less likely to change color with the reducing agent in the ink (i.e., a “non-reactive dye”) to produce a mixed color, and that after applying the color-changing liquid (i.e., the discoloring liquid), one of the dyes can change or fade, revealing a different color tone; thus, Masuju necessarily teaches embodiments in which the ink contains a first and second dye, whereby after applying the color-changing liquid (i.e., the discoloring liquid), the first dye reacts/decolors, resulting in a color change from the initial mixed color to the color of the second dye; note that para. 0023 of Masuju corresponds to pg. 6, para. 7-8 of the provided machine translation; also see Masuju at pg. 10, para. 12, teaching the ink as being applied on a paper surface, i.e., printed in a pattern on a substrate; also see “Certified Translation of Para. 0023 of Masuju,” teaching the color-changing liquid being applied to the “handwriting,” necessarily indicating the color-change liquid to be applied to the substrate to reveal the new color/reveal the pattern applied; furthermore, given that Masuju teaches the same system as that claimed, it necessarily follows the dyes are capable of a revealing step as claimed; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II)).
Regarding claim 3, see Example 2 of Masuju at pg. 8, para. 9-12, teaching an example discoloring liquid containing 73.7 parts, or 73.7%, of water as a solvent.
Regarding claims 4 and 7, see Masuju at pg. 6, para. 4 and pg. 7, para. 4.
Regarding claim 10, see Example 2 of Masuju at pg. 8, para. 9-12, teaching an example ink containing carboxylic acid; since carboxylic acid is an acid, it necessarily adjusts the pH upon its addition; thus, the carboxylic acid in Example 2 of Masuju corresponds to the claimed “pH adjuster”.
Regarding claim 16, see Masuju at pg. 6, para. 6 and pg. 9, para. 14, teaching their reactive dye may include C.I. Basic Red 14, and further teaching an example using the dye in their ink.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5, 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Masuju, as applied to claim 1 above, and further in view of Kwan et al. (US-20070017413-A1) (hereinafter referred to as “Kwan”).
Regarding claim 5, while Masuju teaches the marking system according to claim 1 outlined above, Masuju fails to explicitly teach the marking system as comprising two or more ink compositions b), wherein each respective ink color of the two or more ink compositions b) is the same, and wherein at least one of the respective second colors is different from the other of the respective second colors.
However, Kwan teaches an eradicable mixture system containing an ink including a dye and an eradicator fluid (see Kwan at para. 0011). Kwan further teaches the ink in its non-eradicated state can be black and in its eradicated state may be red, green, or blue, and further teaches two example ink formulations that color-change from black to red and from black to green (see Kwan at para. 0050 and 0104). Moreover, one of ordinary skill in the art would readily recognize the benefits of using two inks that color-change into different colors, namely, to expand the color gamut that is produced.
Masuju teaches their applicator set may have a plurality of color-changing or non-color-changing writing tools having different color tones, and that by doing so, it is possible to form handwriting and designs rich in variations (see Masuju at pg. 5, para. 9, and pg. 6, para. 1).
In this case, using two or more ink compositions in a marking system, wherein each respective ink color of the two or more ink compositions is the same, and wherein at least one or more of the respective second colors is different from the other of the respective second colors, is known in the art (as exemplified by Kwan at para. 0050 and 0104), and thus the inclusion of such inks in the similar marking system of Masuju 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 include two or more ink compositions in the marking system of Masuju, wherein each respective ink color of the two or more ink compositions is the same, and wherein at least one of more of the respective second colors is different from the other of the respective second colors, as similar marking systems in the art demonstrate as such (see Kwan at para. 0050 and 0104). 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. Moreover, one of ordinary skill in the art would have been motivated to do so in order to expand the color-gamut of inks being used.
Regarding claim 8, while Masuju teaches the marking system according to claim 1 outlined above, Masuju fails to explicitly teach the b) one or more ink compositions as further comprising at least one binder.
However, Kwan teaches an eradicable mixture system containing an ink including a dye and an eradicator fluid (see Kwan at para. 0011). Kwan further teaches the ink may contain a binder resin to impart smear resistance and water resistance to the ink (see Kwan at para. 0081).
Masuju teaches their ink may include additives (see Masuju at pg. 7, para. 8).
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 binder in the ink of Masuju. One of ordinary skill in the art would have been motivated to do so in order to impart smear resistance and water resistance to the ink (see Kwan at para. 0081).
Regarding claim 17, while Masuju teaches the marking system according to claim 1 outlined above, Masuju fails to explicitly teach the ii) at least one second dye composition as comprising patent/food blue 5/AB3, acid blue 9, acid red 1, acid red 18, acid red 87, acid yellow 23, acid yellow 36, and FD&C Yellow 6, or a combination thereof.
However, Kwan teaches a highlighting composition comprising at least one eradicable colorant, at least one non-eradicable dye, and at least one solvent (see Kwan at para. 0008). Kwan further teaches the use of an eradicator fluid which causes the eradicable colorants to substantially lose their colors or to change in color (see Kwan at para. 0073). Moreover, Kwan teaches Basic Red 14 as a suitable eradicable colorant, and Acid Blue 9 as a suitable non-eradicable colorant (see Table I of Kwan at para. 0052; also see Kwan at para. 0060).
In this case, Acid Blue 9 is a known non-eradicable dye suitable for use in a similar marking system as Masuju (as exemplified by Kwan at para. 0060), and thus its use as the non-reactive dye in the composition of Masuju 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 Acid Blue 9 as the non-reactive dye in the ink of Masuju, 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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Masuju, as applied to claim 1 above, and further in view of Nakamura (WO-2007063892-A1), with reference to the previously included machine translation (hereinafter referred to as “Nakamura”).
Regarding claim 6, while Masuju teaches the marking system according to claim 1 outlined above, Masuju fails to explicitly teach the b) one or more ink compositions to comprise from 60% to 95% of the respective i) first dye composition and from 5% to 40% of the respective ii) second dye composition, based on the total weight of the respective i) first dye composition and the respective ii) second dye composition.
However, Nakamura teaches a water-based ink composition containing a basic dye decolorized by a reducing agent and a colorant that is not decolorized by a reducing agent, such that when the reducing agent is applied, the color changes from an initial mixed color tone to the color tone based on the latter colorant (see Nakamura at pg. 3, para. 2). Nakamura further teaches the reducing agent may be a sulfite contained in an erasing composition (see Nakamura at pg. 5, para. 5). Moreover, Nakamura teaches the colorant that can be decolored by a reducing agent may include Basic Red 14 (see Nakamura at pg. 3, para. 4). Additionally, Nakamura teaches the content of the colorant that can be decolored to range from preferably 0.1 to 20 wt% in the ink in order to prevent the handwriting from becoming too thin and impractical and to prevent the ink viscosity from becoming too high (see Nakamura at pg. 3, para. 5 and pg. 4, para. 1). Furthermore, Nakamura teaches the content of the colorant that is not decolored to range from 0.1 to 20% for the same reasons (see Nakamura at pg. 4, para. 5). Moreover, Nakamura teaches an example ink, Example 4, containing 5 wt% of Basic Red 14 and 3 wt% of Basic Yellow 40, which fall within the broad ranges of 0.1 to 20% taught by Nakamura for each respective colorant (see Table 1 of untranslated Nakamura at pg. 9; also see Nakamura at pg. 3, para. 5 and pg. 4, para. 1 and 5).
Masuju teaches their reactive dye may include C.I. Basic Red 14, and further teaches an example using the dye in their ink (see Masuju at pg. 6, para. 6 and pg. 9, para. 14).
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 C.I. Basic Red 14 in the ink of Masuju in an amount of, for example, 5 wt%, and the non-reactive dye in an amount of, for example, 3 wt%, in the ink of Masuju. One of ordinary skill in the art would have been motivated to do so in order to prevent the handwriting from becoming too thin and impractical and to prevent the ink viscosity from becoming too high (see Nakamura at pg. 3, para. 5 and pg. 4, para. 1). Moreover, 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.
Following the above modification, the ink of modified Masuju contains 5 wt% of reactive dye, or Basic Red 14, and 3 wt% of non-reactive dye. Thus, the ratio of reactive dye (corresponds to the claimed “first dye”) in the entire dye component is 62.5% (5/(5 + 3) • 100 = 62.5%), and the ratio of the non-reactive dye (corresponds to the claimed “second dye”) in the entire dye component is 37.5% (3/(3 + 5) • 100 = 37.5%). These values fall within their respective claimed ranges.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Masuju, as applied to claim 1 above, and further in view of Caffier et al. (US-20240059915-A1) (hereinafter referred to as “Caffier”).
Regarding claim 15, while Masuju teaches the marking system according to claim 1 outlined above, Masuju fails to explicitly teach a pH of the color-change agent composition to be 8 or higher.
However, Caffier teaches a non-aqueous writing ink containing a pH-sensitive dye that when exposed to a basic eradicator solution, changes from an initially colored state to a decolored state (see Caffier at para. 0010). Caffier further teaches the eradicator solution to advantageously have a pH of 9.0 or higher in order to convert the pH-sensitive dye from a colored to a decolored state, and that the eradicator composition may comprise a sulfite (see Caffier at para. 0015). Moreover, Caffier teaches the pH-sensitive dye may be Basic Red 14 (see Caffier at para. 0016).
Masuju teaches their reactive dye may include C.I. Basic Red 14, and further teaches an example using the dye in their ink (see Masuju at pg. 6, para. 6 and pg. 9, para. 14).
In this case, eradicator compositions with a pH of 9.0 or greater are known in the art to be used with Basic Red 14 to initiate a color change from a colored to a decolored state (see Caffier at para. 0015-0016), and thus the use of such a pH in the discoloring composition of Masuju 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 set the pH of the discoloring composition of Masuju to range from 9.0 or higher. One of ordinary skill in the art would have been motivated to do so in order to suitably initiate a color change of the reactive dye, e.g., Basic Red 14, to a discolored state (see Caffier at para. 0015-0016). Moreover, 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.
The pH range of 9.0 or higher falls completely within the claimed range.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Masuju, as applied to claim 1 above, and further in view of Miller et al. (CA-2152546-A1) (hereinafter referred to as “Miller”) and Bethouart et al. (AU-2002229830-B2) (hereinafter referred to as “Bethouart”).
Regarding claim 18, while Masuju teaches the marking system according to claim 1 outlined above, Masuju fails to explicitly teach the i) at least one first dye composition as comprising a dye that intensifies in color when contacted with the a) color-change agent composition.
However, Miller teaches an aqueous coloring composition containing a pH-sensitive dye whose color may be modified upon application of an electric current, which serves to increase the pH and thus induce a color change in the pH-sensitive dye (see Miller at pg. 5, lines 20-26 and pg. 9, lines 1-28). Miller further teaches both Basic Red 14 and Pyranine 120 as suitable pH-sensitive dyes, and specifically teaches that Pyranine 120 changes from colorless to fluorescent yellow at high pHs (see Miller at pg. 9, lines 1-28). Moreover, Pyranine 120 is known to suitably be used in a writing instrument at high pHs to reveal its fluorescent color (see Bethouart at pg. 1, lines 2-4; pg. 2, lines 35-37; pg. 3, lines 1-2; and pg. 6, lines 1-7).
Masuju teaches the dye used in their ink may be any general-purpose dye that changes color or fades in response to a reducing agent (see “Certified Translation of Para. 0023 of Masuju”).
In this case, Pyranine 120 is a known pH-sensitive dye (i.e., reactive dye) suitable for use in writing instrument-based ink compositions (as exemplified by Miller at pg. 9, lines 8-12 and lines 25-28 and by Bethouart at pg. 1, lines 2-4; pg. 2, lines 35-37; pg. 3, lines 1-2; and pg. 6, lines 1-7), and thus its use as the reactive dye in the ink composition of Masuju 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 Pyranine 120 as the reactive dye in the ink composition of Masuju, 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.
Following the above modification, the ink composition of Masuju contains Pyranine 120, which intensifies in color following an increase in pH, i.e., when contacted with the a) color-change agent composition (as exemplified by Miller ‘546 at col. 9, lines 8-12 and lines 25-28 and as disclosed by Applicant’s specification at pg. 10, see Example 3 and the footnotes at the bottom of the table).
Response to Arguments
Applicant's arguments filed 03/31/2026 have been fully considered but they are not persuasive for at least the reasons set forth below.
Applicants argue that none of the cited references teach the use of a substrate with ink compositions printed in a pattern thereon as printing inks, and further that none of the references teach the revelation of such a pattern as the color-change agent contacts and reacts with the chemically reactive ink compositions printed on the substrate (see Applicant’s Remarks at pg. 6).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for at least the following reasons.
Masuju teaches the application of their inks on a paper substrate, followed by application of the color-changing liquid on the inks to initiate a color-change (see Masuju at pg. pg. 10, para. 12; also see “Certified Translation of Para. 0023 of Masuju”). Accordingly, Masuju necessarily teaches the application of their ink on a substrate to form a pattern—where the initial pattern is composed of a mixed color of both a reactive and non-reactive dye—followed by the revealing of the non-reactive dye color pattern from application of the color-change liquid to the ink. Furthermore, a handwriting is necessarily a “pattern” on a substrate. Thus, Masuju reads on the claims.
Furthermore, in claim 1, line 16, all limitations after the phrase “such that when the a) color-change agent composition” are effectively property limitations, given the use of the claimed term “when.” In other words, Masuju does not necessarily have to teach a revealing step, but rather, simply that the dyes are capable of such a step like claimed. Given that Masuju teaches the same system as that claimed, it necessarily follows the dyes are capable of a color-change revealing step as now claimed. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
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.
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/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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