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 .
Response to Amendment
In response to the Amendment received on 01/28/2026, the examiner has carefully considered the amendments.
Response to Arguments
Applicant's arguments filed 01/28/2026 have been fully considered but they are not persuasive. It appears applicant is relying on the amendment to overcome the claims. The claims have been amended to require the cured product of the claimed ink has a positive b* value. The examiner does not find a teachings in the disclosure that the cured product has a positive b* value. It is unclear if applicant is implying the teaching at [0022] would suggest a skilled artisan would understand the cured inventive ink composition has a positive b* value. Section [0022] sets forth the cesium tungsten oxide obtained by the disclosed method produces a less bluish color and a more neutral tone in the dispersed products thereof. It is the understanding of the examiner that a positive b* would indicate a more yellow tone instead of a less bluish tone since the b* value indicates yellow to blue tones, where yellow is a b* value and blue is a negative b* value. The term “less bluish color” is a relative and/or subjective term without an actual b* value. A less bluish color would indicate a light blue or pale blue color.
As set forth in the arguments the reference sets forth said particles are light blue in color, wherein it is deemed light blue is a more neutral tone than yellow (positive b* value)—see [0035]. Okada, additionally, the dispersed particle size of the composite tungsten oxide fine particles is 200 nm or less, the light blue coloration can be canceled by a coloring, as well as, setting forth “…from the viewpoint of canceling the pale blue coloration, the dispersed particle size is preferably 150 nm or less, and more preferably 100 nm or less”—see [0035]. Additionally, Okada sets forth the cured infrared ink composition of example 7 (cited in rejection) comprises the dispersed cesium particles having a particle size of 80 nm and a particle size in the cured ink of 24 nm and is visually transparent—see [0204]. Additionally, the teachings of Nakakura set forth as the particle sizes grows the particles go from a greenish to blue color, as seen in figure 2(c), wherein it is deemed the box in 2(c) that show after HT @300 deg. C appears to be a light blue/greenish neutral tone compared the boxes showing HT @450 deg. C and 600 deg. C.
Which suggest to the examiner the b* value of the cesium particles have a more positive b* than cesium particles having a particles size above 200 nm (from [0035]), in absence of evidence to the contrary and/or unexpected results, and therefore still reads on applicant’s claimed invention, as written and argued (see [0022]). And because The Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. Therefore, the rejection still stands. Additionally, the amendment has invoked a 35 USC 112(a) rejection for new matter. Please find below.
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.
Claim(s) 1, 3, 5-8, and 11-13 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Okada et al (WO2018/235829, where family member EP 3 643 754 is used as the English language equivalent) as evidenced by Nakakura et al (Inorg. Chem, 2019).
Okada sets forth near-infrared-curable ink compositions and methods for producing the same. Said ink composition contains composite tungsten oxide fine particles as near-infrared absorbing fine particles, having the formula MxWyOz and a thermosetting resin, wherein said composite particles have a XRD peak top intensity ratio value of 0.33—see abstract, [0013], and [0028].
Regarding the fine tungsten oxide particles having the formula MxWyOz, Okada teaches the absorption in the near-infrared region is improved when said tungsten particles comprise a metal cation (M) such as cesium, wherein the cesium containing tungsten oxide particles have a hexagonal crystal structure, where Cs exist in the hexagonal voids formed in units of tungsten oxide (WxOy)--[0057]. The ratio of W (tungsten) to Cs (cesium) is found a ratio of x/y is 0.30 to 0.35, preferably 0.33-- [0058]. Said particles have a granular size from 10 nm or more or 200 nm or less, preferably from 10 to 200 nm— [0062]. Okada sets forth when said particles are coated with oxide containing one kind or more elements of Si, Ti, Zr, Al the weather resistance of said ink coating is improved—see [0078].
Okada sets forth producing particles of cesium tungsten oxide by heating/firing in a reduced atmosphere of 2 % H gas with N2 gas at a temperature of 800 deg. C for 30 min. and thereafter heating/firing to a temperature of 800 deg. C in a N2 atmosphere for 90 min to obtain cesium tungsten oxide fine particles having a hexagonal structure. 20 g of said obtained particles are mixed with 80 g of water to obtain a slurry, wherein said slurry is then pulverized and dispersed to obtain a dispersion liquid (g), wherein the cesium tungsten oxide has a hexagonal crystal structure— [0198]- [0291]. Said cesium tungsten oxide particles are represented by the general formula Cs0.29WO325 parts of said particle dispersion of cesium tungsten oxide particles are than added to 75 parts of thermosetting ink screen ink comprising an uncured thermosetting resin obtain a near-infrared ink composition—see example 7 and [0291]. Said ink composition is coated onto a glass substrate and cured by exposure to irradiation of near infrared rays.
This is deemed to anticipate the ink composition of claim 1, wherein it is deemed the cesium tungsten oxide particles inherently has a line-shaped or plane-shaped defect in the prismatic lane, as evidenced by Nakakura. Nakakura shows it is known in the art that cesium tungsten oxide particles obtained by heating in a reductive atmosphere comprises tungsten deficiencies in the prismatic plane, as well as, oxygen defects—see page 9101 in Introduction section and 2nd paragraph in left column and page 9104, figure 3(b) and 1st paragraph in right col. Therefore, it is deemed Okada anticipate the infrared ink in claim 1, wherein the line shaped or plane shaped tungsten defect on the prismatic plane, as well as, oxygen deficiencies (oxygen loss) is inherent to the particles for the reasons set forth above—claims 1, 3, and 5.
Regarding claim 6: Okada sets forth said fine tungsten oxide particles can be obtained by mixing as raw materials a tungsten compound and a metal element compound, such as cesium in the presence of an impurity element, such as Si, Al and Zr to help suppress the crystal growth of the obtained fine tungsten oxide particles—see [0101].
Regarding claim 7: Said particles have a granular size from 10 nm or more or 200 nm or less, preferably from 10 to 200 nm— [0062]. Said particles in example 7 have a crystal size of 23.7 nm—see Table 2.
Regarding claim 8: Okada sets forth coating said particles with Si, Ti, Zr, Al improves the weather resistance of said particles—see [0078].
Regarding claim 11: Okada sets forth the ink composition may further comprise a colorant, such as a pigment (organic or inorganic) and dyes—see [0114] to [0131].
Regarding claims 12-13: Okada sets forth the ink composition is obtained by adding said fine tungsten oxide particles to an uncured thermosetting resin, a solvent, and a dispersant—see [0139]- [0140].
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada as applied to claims 1, 3, 5-8, and 11-13 above.
Okada does not expressly teach or set forth the c-axis length of the cesium tungsten oxide, wherein the c-length is being a value translated in terms of a hexagonal crystal. It is deemed the obtained cesium tungsten oxide fine particles are obtained in the same manner as instantly claimed; have the same tungsten and oxygen defects as claimed in at least one of the claimed planes (prismatic plane), as well as, have the structure as found in instant claim 1 therefore they should inherently have a c-axis length of 7.560 A or greater; however, the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims have been amended to require the cured product of the claimed ink has a positive b* value. The examiner does not find a teachings in the disclosure that the cured product has a positive b* value. It is unclear if applicant is implying the teaching at [0022] would suggest a skilled artisan would understand the cured inventive ink composition has a positive b* value. Section [0022] sets forth the cesium tungsten oxide obtained by the disclosed method produces a less bluish color and a more neutral tone in the dispersed products thereof. It is the understanding of the examiner that a positive b* would indicate a more yellow tone instead of a less bluish tone since the b* value indicates yellow to blue tones, where yellow is a b* value and blue is a negative b* value. The term “less bluish color” is a relative and/or subjective term without an actual b* value. A less bluish color would indicate a light blue or pale blue color. Thus, causing undue experimentation for a skilled artisan. It is not clear how a skilled artisan would know how positive a b* value is needed or when said positive b* value is reached to obtain the claimed ink composition. Additionally, there are no working examples which suggest the color tone and/or the b*value. It is not clear which color space model applicant acquired said b* value, i.e., CIELAB OR CIE XYZ. Clarification and/or appropriate action is requested.
Allowable Subject Matter
Claim 9 is 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—see above 35 USC 112(a) rejection.
The following is a statement of reasons for the indication of allowable subject matter: Okada sets forth the ratio of cesium to tungsten (x/y) is from 0.30 to 0.35 which is a tungsten to cesium (claimed m/n) of 2.9 to 3.3, preferably 3.03 in the overall teachings, which is outside applicant’s claimed inequality of 3.6 <= m/n <= 9.0—see [0058].
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere-Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc
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