DETAILED ACTION
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
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in EP on 23 May 2022. It is noted, however, that applicant has not filed a certified copy of the EP 22174756.1 application as required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities: the semi colon in line 3 should be a comma (i.e. “particle; wherein” should be –particle, wherein--). Appropriate correction is required.
Claim 2 is objected to because of the following informalities: the recitation of “further comprising a further layer” should instead be –comprising a further layer--. Appropriate correction is required.
Claims 4-5 are objected to because of the following informalities: a comma is missing after “claim 1” in the preamble. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: a comma is missing after “claim 5” in the preamble. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: in step a) “a pigment particle of claim 1” should instead be –the pigment particle— (i.e. remove the second recitation of ‘claim 1’). Appropriate correction is required.
Claims 13-14 are objected to because of the following informalities: a comma is missing after “claim 12” in the preamble. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: in the line 2-3 recitation of “0.1 wt.%, to about 20.0 wt.%” the comma after 0.1 wt.% should be removed. Appropriate correction is required.
Claims 17-18 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot reference two sets of claims to different features. See MPEP § 608.01(n). It is note amending the claims to recite –, wherein the pigment particles are present-- should overcome this objection.
Claim 19 is objected to because of the following informalities: i) in line 2, “a pigment particle of claim 1 to” should instead be –the pigment particle to-- (i.e. remove the second recitation of ‘claim 1’); and ii) a comma is missing after “Claim 1” in the preamble. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: in step a) “pigment particles of claim 1” should instead be –the pigment particles— (i.e. remove the second recitation of ‘claim 1’). Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10, 14 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 10, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation of markers selected from ‘lanthanides, hafnium, tantalum, yttrium, zinc, molybdenum, tungsten, gallium, germanium, tin, and scandium’ and the claim also recites ‘yttrium, zinc, molybdenum, tungsten, germanium, tin, scandium and mixtures thereof’ which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 14, there is a lack of antecedent basis for the recitation of “the marker” in claim 14 as well as in any claim from which it depends.
Regarding claim 20, the claim is indefinite as:
i) the step b) recitation of ‘obtaining recorded information’ is unclear, meaning its is not clear if this is a step of finding published or otherwise available materials (as in printed or electronic databases, etc.) or is meant to be a positive step of recording information on the pigment particles; and
ii) the step d) recitation is highly unclear given that step a) requires the pigment particles be present therefore ‘determining’ whether the particles are present includes the possibility that the particles are not present, which is in direct contradiction to the requirement of step a).
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7, from which claim 8 depends, recites the range of “about 1,000 ppm to about 50,000 ppm”. Therefore the claim 8 recitation of “greater than 1,000 ppm” constitutes improper broadening as the range is open-ended and implies a range greater than the range of the claim from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 1-3 and 5-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blumel et al. (US PGPub 2007/0175364).
Regarding claim 1, Blumel teaches titanium dioxide pigment particles (abstract) which are coated with a dense layer of SiO2 (instant at least one layer) that is doped with at least one doping element including Ce ([0011]-[0012]; [0023]; [0113]; [0131])(Ce being a known lanthanide; instant doped with at least one lanthanide).
Regarding claims 2-3, Blumel teaches the particles as set forth in claim 1 above and further teaches an additional coating layer of aluminum oxide ([0024])(instant further layer).
Regarding claims 5-8, Blumel teaches the particles as set forth in claim 1 above and further teaches the doping element is present in an amount of 0.05 to 2.0 wt% of the total pigment ([0023]) (where 0.05 to 2.0 wt% generally corresponds to approximately 500 to 20,000 ppm, the range of Blumel substantially overlaps with and renders taught the instantly claimed ranges of about 100 ppm to about 100,000 ppm (claim 6), about 1,000 ppm to about 50,000 ppm (claim 7), and greater than 1,000 ppm (claim 8)).
While Blumel is silent to the amount ‘sufficient’ to emit visible light when exposed to NIR wavelengths between about 1,100 and about 2,000 nm (claim 5), Blumel teaches the claimed amounts of claims 6-8 and further the instant original specification states that meeting the claimed amounts will be ‘sufficient’ to result in a pigment that has the claimed property (original specification [0026]-[0028]). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Regarding claims 9-10, Blumel teaches the pigment particles of claim 1 above. Blumel further teaches combinations of one or more dopants (additional dopants readable over instant ‘marker’)([0031]), wherein other dopants include Sn, Ge, Y, Zn, Mo, W, etc. ([0011]-[0012]; [0030]).
Claims 1-3, 5-10 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tiedemann et al. (US PGPub 2007/0298059).
Regarding claims 1-3, Tiedemann teaches titanium dioxide pigment particles (abstract; [0002]), suitable for use in identification and verification methods ([0007]), where the particles contain a quantity of at least one detectable marker ([0008]) present in the crystal lattice and/or added in a coating on the surface ([0012]; [0016]; [0022]-[0025])(instant at least one layer; instant doped). Tiedemann teaches suitable marker substances are rare-earth metals (lanthanides), yttrium, zinc, molybdenum, tungsten, germanium, tin and scandium ([0020]). Tiedemann also teaches it is known to coat titanium dioxide with a dense SiO2 coating followed by a final coating layer of aluminum oxide ([0013])(instant further layer). Tiedemann exemplifies TiO2 pigment particle having a first SiO2 coating to which is added La2O3 marker substance and a second coating of Al2O3 (example; [0041]).
Regarding claims 5-8, Tiedemann teaches the pigment particles as set forth in claim 1 above and further teaches the marker concentration is up to 1 wt% (where up to 1 wt% generally corresponds to approximately up to 10,000 ppm, the range of Tiedemann substantially overlaps with and renders taught the instantly claimed ranges of about 100 ppm to about 100,000 ppm (claim 6), about 1,000 ppm to about 50,000 ppm (claim 7), and greater than 1,000 ppm (claim 8)). Tiedemann further exemplifies 300 ppm (example; [0041])) (the example anticipates about 100 ppm to about 100,000 ppm (claim 6)) and teaches an end-use where the marker is present from roughly 100 to 1,000 ppm ([0030])(the end-use anticipates about 100 ppm to about 100,000 ppm (claim 6) and about 1,000 to about 50,000 ppm (claim 7)).
While Tiedemann is silent to the amount ‘sufficient’ to emit visible light when exposed to NIR wavelengths between about 1,100 and about 2,000 nm (claim 5), Tiedemann teaches the claimed amounts of claims 6-8 and further the instant original specification states that meeting the claimed amounts will be ‘sufficient’ to result in a pigment that has the claimed property (original specification [0026]-[0028]). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Regarding claims 9-10, Tiedemann teaches the pigment particles of claim 1 above and as noted teaches that the marker can be present in both the crystal lattice of the particle and the coating layer on the particle (see above), where suitable markers include rare-earth metals (lanthanides), yttrium, zinc, molybdenum, tungsten, germanium, tin and scandium ([0020]).
Regarding claim 19, Tiedemann teaches the pigment particles of claim 1 above and further teaches methods of use of the particles for the purpose of product identification and verification (abstract; [0002]; [0037]). Tiedemann teaches a person skilled in the art will target a concentration of marker (amount ‘sufficient’ absent evidence to the contrary) that corresponds to the detection limit of the substance to be analyzed ([0028]), and teaches products include fibers, papers, pharmaceuticals, plastics, paints and various coatings ([0029]; [0032]-[0034]).
Tiedemann teaches the methods include steps of: using a quantity marker in production of the particles, where in the marker is detectable in a product containing the particles; recording information about the marker; testing a product containing the particles to determine whether it contains the marker substance; and comparing the results of the test to the recorded information ([0039]).
While Tiedemann is silent to the amount ‘sufficient’ to emit visible light ‘when exposed’ to NIR wavelengths between about 1,100 and about 2,000 nm (noting claim 19 contains no positive recitation of exposing such that ‘exposing’ is held as a property and/or an intended use), Tiedemann teaches amounts of up to 1 wt% (approx. 10,000 ppm) and the instant original specification states that such amounts will be ‘sufficient’ to result in a pigment that has the claimed property (original specification [0026]-[0028]). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)). Further, the recitation of an intended use does not impart patentability to otherwise old compounds or compositions (see In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982); and In re Schreiber, 44 USPQ 2d 1429, (Fed. Cir. 1997)).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable Tiedemann et al. (US PGPub 2007/0298059).
Regarding claim 4, Tiedemann teaches the pigment particles of claim 1 above and further teaches the marker can be selected from rare-earth metals (lanthanides). While Tiedemann does not specifically state selecting from europium, samarium, erbium, praseodymium or neodymium, it is noted that Tiedemann teaches selecting from the entirety of a finite list of rare-earth metals well known to one of ordinary skill in the art. As such, it would have been obvious to one of ordinary skill in the art to select from the known and finite members of the rare-earth metal group and arrive at the instant invention with a reasonable expectation of success. Motivation stemming from Tiedemann teaching rare-earth metals are suitable.
Regarding claim 11, Tiedemann teaches the pigment particles of claim 1 above and exemplifies the titanium oxide particle as being anatase (example; [0041]).
Tiedemann teaches the marker can be present in the coating as noted above (see above), where the marker can be selected from rare-earth metals (lanthanides). While Tiedemann does not specifically state selecting europium, it is noted that Tiedemann teaches selecting from the entirety of a finite list of rare-earth metals that are well known to one of ordinary skill in the art. As such, it would have been obvious to one of ordinary skill in the art to select europium from the known and finite members of the rare-earth metal group and arrive at the instant invention with a reasonable expectation of success. Motivation stemming from Tiedemann teaching all of the rare-earth metals are suitable.
Claims 12-15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable Tiedemann et al. (US PGPub 2007/0298059) in view of Robb (EP 2285912 B1).
Tiedemann teaches the pigment particles of claim 1 above and further teaches methods of use of the particles for the purpose of product identification and verification (abstract; [0002]; [0037]). Tiedemann teaches a person skilled in the art will target a concentration of marker (amount ‘sufficient’ absent evidence to the contrary) that corresponds to the detection limit of the substance to be analyzed ([0028]), teaches using detection methods that will yield unequivocal and reconstructable results ([0015]) and teaches products include fibers, papers, pharmaceuticals, plastics, paints and various coatings ([0029]; [0032]-[0034]).
Tiedemann teaches the methods include steps of: using a quantity marker in production of the particles, where in the marker is detectable in a product containing the particles; recording information about the marker; testing a product containing the particles to determine whether it contains the marker substance; and comparing the results of the test to the recorded information ([0039]).
Tiedemann teaches testing the product via detection methods for the marker substance so as to obtain unequivocal results (claim 14). Tiedemann does not specifically teach the detection method to include exposing to a near infrared (NIR) source. However, Robb teaches that coated titanium dioxide particles ([0001]-[0003]), including lanthanide containing coatings ([0017]), have known emissions when exposed to the NIR region of the electromagnetic spectrum, between 700 and 2500 nm ([0004]; [0011]; [0035])(claims 12-13), specifically when exposed to the sun ([0130]-[0131]; [0182])(claim 15), where products containing the pigments are testable using UV/vis/NIR spectrophotometers ([0234]). Robb and Tiedemann are analogous art and are combinable because they are concerned with the same field of endeavor, namely coated titanium dioxide pigment particles and detection thereof. At the time of filing a person having ordinary skill in the art would have found it obvious to test the products of Tiedemann by exposure to the UV/vis/NIR source, such as the sun, as taught by Robb and would have been motivated to do so as Tiedemann teaches testing by use of known and suitable detection methods and further as Robb teaches NIR region exposure of coated titanium dioxide pigment particles will result in known electromagnetic emissions.
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable Tiedemann et al. (US PGPub 2007/0298059) in view of Bauer et al. (US PGPub 2017/0145234).
Tiedemann teaches the pigment particles as set forth in claim 1 above and teaches a plurality of end-uses including paints, coatings, papers, etc. ([0030]-[0034]). Tiedemann does not specifically teach an aqueous ink. However, Bauer teaches a known use of titanium dioxide pigment particles is an aqueous inkjet ink compositions (abstract; [0006]; [0046]), wherein the titanium dioxide pigment is present from at least 2 wt% up to 25 wt% of the ink ([0055]) and where additional known ink components may be present including humectants, solvents, dispersing polymers, viscosity modifiers, defoamers, surfactants, biocides, etc. ([0061]; [0077]; [0087]). Bauer and Tiedemann are analogous art and are combinable because they are concerned with the same field of endeavor, namely end-uses of titanium dioxide pigment particles including coatings. At the time of filing a person having ordinary skill in the art would have found it obvious to utilize the titanium dioxide pigment particles of Tiedemann in formulating inkjet inks as taught by Bauer and would have been motivated to do so as Tiedemann teaches a plurality of end uses to for titanium dioxide pigment particles having detectable markers and further as Bauer teaches it is known and suitable to include titanium dioxide pigments in inkjet inks for their effective light scattering properties in forming images on a substrate ([0018]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/106,322 (reference application; note that a notice of allowance has been issued in the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar pigment particles comprising a titanium dioxide pigment particle and at least one layer wherein the layer has been doped (copending ‘modified’) with substantially similar amounts of a compound readable over instant lanthanides, and where further layers may be present. Regarding the instant application emission property recitations, it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767