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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 20-34, in the reply filed on 2/18/2026 is acknowledged.
For purposes of compact prosecution, the Examiner also contacted applicants by telephone as the response filed did not include the required election of species. Applicants elected species ‘i.' wherein there are no mixed cores of fluorescent and phosphorescent substances on 4/2/2026. This election reads on claims 20-24, 26-29 and 31-34.
Please note that claim 25 is withdrawn as it requires that the core and shell of each capsule “consist of the same materials”, which means this claim would necessarily require the species of a mixed core of fluorescent and phosphorescent substances.
Claims 25, 30 and 35-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Groups or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/18/2026 and the phone call of 4/2/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The substitute specification filed 2/5/2024 has been entered.
Claim Objections
Claims 21, 29, 31 and 33 are objected to because of the following informalities:
In claim 21 on line 5 and claim 29 on line 6, the phrase “below 1” microsecond is objected to grammatically. The objection can be overcome by changing the phrase to “less than 1” microsecond, which is how the claim will be interpreted.
In claim 29 on lines 6 and 7, the phrase “fluorescent capsule” and “phosphorescent capsule” are objected to grammatically. The objection can be overcome by changing the phrase to “first fluorescent capsule” and “second phosphorescent capsule” which is how the claim will be interpreted.
In claim 31 on line 2, the phrase “in the capsule luminescence pigments” microsecond is objected to grammatically. The objection can be overcome by changing the phrase to “in the one or more capsule luminescence pigments, which is how the claim will be interpreted.
In claim 33 on line 2, the phrase “of the capsule luminescence pigments” microsecond is objected to grammatically. The objection can be overcome by changing the phrase to “in the one or more capsule luminescence pigments, which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 20-24, 26-29 and 31-34 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.
In claim 20 on line 4 and 8-9 (two instances), the phrase “capsule luminescence pigment types” renders the claim indefinite as the word “type” seeks to extend the scope of the capsule luminescence pigments such that it renders the term indefinite. It has been held that “[t]he addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955); likewise, the phrase “ZSM-5-type aluminosilicate zeolites” was held to be indefinite because it was unclear what “type” was intended to convey Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986).” Please see MPEP 2173.05(b). This rejection can be overcome by changing the phrase to “capsule luminescence pigments” for the two instances, which is how the claim will be interpreted.
In claim 20 on lines 7-9, the phrase “the fluorescent substance and the phosphorescent substance are each present as luminescent substance in the core of one or more of the capsule luminescence pigment types, such that the capsule luminescent pigments form fluorescent and/or phosphorescent capsule luminescent pigments having fluorescence and phosphorescence” renders the claim indefinite because the first clause would imply that both luminescent substances are required in the core, but the next clause then makes it optional for the capsule to either have fluorescence and/or phosphorescence. Also, the phrase “the capsule luminescent pigments” lacks antecedent basis in the claim.
The rejection can be overcome by changing the phrase to “wherein the luminescent substance in each of the one or more capsule luminescence pigments comprises the fluorescent substance having fluorescence, the phosphorescent substance having phosphorescence or both the fluorescent substance having fluorescence and the phosphorescent substance having phosphorescence, such that the one or more capsule luminescent pigments form fluorescent and/or phosphorescent capsule luminescent pigments” which is how the claim will be interpreted.
In claim 20 on line 12, the phrase “the same lightfastness” renders the claim indefinite as the definition of this term is not clear from [0031] of the specification as filed versus [0208]-[0215] of US 2018/0311992, which is the US national stage entry of WO 2017/080654. The Examiner notes that US 2018/0311992 gives one definition of what is considered the “same lightfastness”, i.e. differ by less than 30 percentage points, and [0031] of the specification as filed has a narrower definition, i.e. differ by less than 20 percentage points. Additionally, [0031] of the specification as filed describes “lightfastness is equal especially when” which is unclear as to whether this is a preferable definition or required for the definition. For purposes of examination, the Examiner will be using the broader definition of US 2018/0311992. In order to overcome the rejection, Applicants are required to state what definition is being used.
In claim 20 on line 13, the phrase “the same chemical stability” renders the claim indefinite as the definition of this term is not clear from [0033] of the specification as filed versus [0176]-[0204] of US 2018/0311992, which is the US national stage entry of WO 2017/080654. The Examiner notes that US 2018/0311992 gives one definition of what is considered the “same chemical stability”, i.e. >80% remaining luminescence withstanding all chosen test solutions at [0187], and [0033] of the specification as filed has a different definition, i.e. >80% remaining luminescence including different solvent selections. Additionally, [0033] of the specification as filed describes “especially after exposure” to the solvent selections, which is unclear as to whether this is a preferable definition or required for the definition. For purposes of examination, the Examiner will be using the definition in US 2018/0311992. In order to overcome the rejection, Applicants are required to state what definition is being used.
In claim 20 on lines 14-15, the phrase “essentially corresponding color impression in visual terms” renders the claim indefinite as the definition of this term is not clear from [0036] of the specification as filed. This paragraph states that two luminescences “have an essentially corresponding color impression especially when” the luminescences lie in adjoining color regions or in the same color region; however, the phrase “especially when” does not establish that whatever appears after it is a definition because this term could be interpreted as saying whatever appears after it is one option of what is considered essentially corresponding color impression. Also, the paragraph does not define that the luminescences that lie in adjoining color regions or in the same color region are essentially corresponding color impression in “in visual terms” as claimed. For purposes of examination, any two colors will read on “essentially corresponding color impression in visual terms” as any two colors “correspond” to each other in that they are colors.
In claim 22, the claim contains broad/narrow limitations in the same claim. Lines 1-3 of the claim have the broad limitations of what the phosphorescent and fluorescent substances and then lines 4-6 with the phrase “in that the phosphorescent substance…an organic fluorescent substance” is the narrower limitations. This rejection can be overcome by deleting the narrower limitations, which is how the claim will be interpreted.
In claim 24, the phrase “the green spectral region” lacks antecedent basis in the claims; furthermore, the specification does not define this term and the metes and bounds of the wavelengths that are considered green would not be known by one having ordinary skill in the art.
In claim 26, the limitations “the fluorescence and phosphorescence intensities normalized to the starting value” and “the wool scale” lack antecedent basis in the claim. As explained above, the definition of lightfastness in claim 20 is indefinite; furthermore, US 2018/0311992 does not refer to “the wool scale” or “the starting value”, which means these terms do not have inherent antecedent basis due to the definition.
In claim 26, the claim contains broad/narrow limitations in the same claim. The broad limitation is “by fewer than 20 percentage points” and the narrower limitation is “by fewer than 10 percentage points”. The rejection can be overcome by deleting the narrower limitations, which is how the claim will be interpreted.
In claim 28 on lines 4 and 6, the phrase “pigment type” (two instances) renders the claim indefinite as the word “type” seeks to extend the scope of the capsule luminescence pigments such that it renders the term indefinite. This rejection can be overcome by deleting the word “type” in both instances.
In claim 28 on lines 5 and 7, the phrase “the cores contain” (two instances) renders the claim indefinite because these phrases contain contradictory limitations for the cores, i.e. one phrase requires solely fluorescent while the other phrase requires solely phosphorescent substances. This rejection can be overcome by changing the phrase on line 5 to “the core of the first fluorescent capsule luminescent pigment contains” and changing the phrase on line 7 to “the core of the second phosphorescent capsule luminescent pigment contains” which is how the claims will be interpreted.
In claim 29 on lines 4-7, the phrase “pigment type” (four instances) renders the claim indefinite as the word “type” seeks to extend the scope of the capsule luminescence pigments such that it renders the term indefinite. This rejection can be overcome by deleting the word “type” in the four instances.
In claims 32 and 34, the phrase “the luminescence brightness of the printing ink is at least 100%, of the reference brightness” renders the claim indefinite as “the luminescence brightness” and “the reference brightness” lack antecedent basis in the claims. This rejection can be overcome by changing “the luminescence brightness” and “the reference brightness” to “a luminescence brightness” and “a reference brightness” which is how the claims will be interpreted.
In claims 32 and 34, the phrase “ZnS:Cu standard security pigment” renders the claims indefinite as it is unclear if applicants are claiming all ZnS:Cu pigments or a subset of ZnS:Cu pigments that are considered “standard security pigments”. Also, the term “standard security pigments” is a subjective term as there is no definition in the specification and it would depend on the user of the pigments what they consider to be “standard” in the art.
Claim 23 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.
In claim 23, the limitations that the fluorescent substance and phosphorescent substance “have different luminescent spectra” is inherent to the fluorescent substance and phosphorescent substance of claim 20, which means claim 23 fails to limit the claim from which it depends.
Claim Rejections - 35 USC § 103
Claims 20-24, 26-29 and 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Kecht et al. (US 2018/0311992).
With regard to claims 20, 22-24 and 26-28, Kecht et al. teach a printing ink including a pigment mixture of a pigment system having at least two capsule luminescent pigments that have different emission spectra and have a core with a luminescent substance and a shell encapsulating the core, wherein the capsules having the same chemical stability and light fastness [0019], [0057] and [0150]-[0155]. The chemical stability and light fastness Kecht et al. are calculated in the same way as in applicants’ specification, including a light fastness that differs by less than 20 percentage points [0175]-[0185] and [0205]-[0218]. The capsule luminescent pigments can be excited in the UV, which reads on applicants’ excitation with nonvisible light, and emits in the visible spectral region [0228]. The luminescent dyes employed in the core can be fluorescent or phosphorescent and they can be organic molecules [0228] and [0242]. The colors of the capsule luminescent pigments can include green or it can include other colors that do not correspond to the three primary colors [0163]-[0164]; however, Kecht et al. do not specifically teach a mixture of fluorescent and phosphorescent capsule luminescent pigments having the color impression claimed.
It would have been obvious to one having ordinary skill in the art to have made separate fluorescent and phosphorescent capsule luminescent pigments having the same lightfastness and chemical stability, and then to have mixed them together in a printing ink. The rationale to have done so is to make a more complex security ink for value documents that is less likely to be counterfeited.
As has been explained in the 112(b) rejection above, the term “essentially corresponding color impression in visual terms” render the claim indefinite and any two colors will read on “essentially corresponding color impression in visual terms” as any two colors “correspond” to each other in that they are colors.
Even further, it would also have been obvious to have combined any two colors in a printing ink, including mixing two green capsule pigments or mixing a cyan fluorescent capsule, i.e. green-blue, with a green phosphorescent capsule or vice versa, wherein all the colors are in the green spectral region and will intrinsically be in adjoining or in the same Kelly color regions. The mixing of colors is ubiquitous in the art; further, the rationale would be to form more complex security prints for value documents that are less likely to be counterfeited. Also, it is prima facie obvious to combine two compositions, i.e. the aforementioned two green capsules or a cyan fluorescent capsule and green phosphorescent capsule, known for the same purpose to form a third composition useful for the same purpose.
With regard to claims 21 and 29, Kecht et al. also teach that it is known to have the phosphorescent substance have a decay time of greater than 100 microsecond and to have the fluorescent substance have a decay time of less than 50 microseconds, which overlaps with the ranges claimed [0245] and [0246]; however, they do not specifically teach the ranges claimed.
It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to have made the decay time of the fluorescent substance any amount within the range of the prior art, including less than 1 microsecond in order to clearly distinguish the fluorescent from the phosphorescent dye and to form a more complex security print for value documents. The resultant capsule pigments would then differ by at least a factor of 10 as claimed.
With regard to claims 31-34, since the two capsule luminescent pigments are made of the same materials as claimed and preferentially disclosed, they meet the lightfastness and chemical stability tests as claimed and disclosed and are for the same purpose as preferentially disclosed, the printing ink rendered obvious above will intrinsically permit visual testing of the fluorescent substance, permit machine testing of the phosphorescent substance and will have a luminescence brightness and phosphorescence intensity of at 100% of the reference samples absent objective evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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