DETAILED ACTION
An Office Action was mailed 03/30/2026. Applicant filed a Response on 06/25/2026. Claims 16, 28, 55 and 57 have been amended. Claims 23 and 54 have been cancelled. Claims 64-65 have been added.
Claims 16, 21, 25-26, 28-30, 53 and 55-65 are pending. Claims 16, 21, 25-26, 28-30, 55-58, 60, 62 and 64-65 are rejected. Claims 53, 59, 61 and 63 are withdrawn from consideration.
Non-Compliant Claim Amendments
The amendment document filed on 06/25/2026 is considered non-compliant because it has failed to meet the requirements of 37 CFR 1.121 or 1.4. In order for the amendment document to be compliant, correction of the following item(s) is required.
Amendments to the claims:
A complete listing of all the claims is not present. Specifically, the amended claim set of 06/25/2026 does not include claim 12.
For further explanation of the amendment format required by 37 CFR 1.121, see MPEP § 714.
Examiner’s Note
Claim 12 is interpreted as being cancelled for this office action, as it was not included in the amended claim set filed 06/25/2026.
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 § 112
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.
Claims 55-56 and 64-65 are 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.
Claims 55-56 and 64-64 depend upon, or ultimately depend upon, claim 1 which has been cancelled. If a base claim has been canceled, a claim which is directly or indirectly dependent thereon is rejected as incomplete. See MPEP 7.36.01.V.
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.
Claims 55 and 64-65 have been interpreted as being dependent upon claim 16 for this office action.
Claims 16, 21, 25-26, 28-30, 55-58, 60, 62 and 64-65 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 enablement requirement. The claims contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise, undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compositions within the scope of claims 16, 21, 25-26, 28-30, 53, 55-58, 60, 62 and 64-65 can be used as claimed and whether claims 12, 16, 21, 25-26, 28-30, 53, 55-58, 60, 62 and 64-65 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 16, 21, 25-26, 28-30, 55-58, 60, 62 and 64-65, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since from the specification (paragraph [0032]), it appears that a variety of microcapsules (e.g., material) encapsulating various environmental indicator material, including those broadly described in Specification [0079], in non-activated configuration must be met to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, ammonia exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time, there is nothing in the specification that discloses what microcapsules (e.g., material) and environmental indicator materials achieve the non-activated configuration necessary to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, ammonia exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time. Given the breadth of claim 16 which encompasses any type material of microcapsules encapsulating any type of environmental indicator material in a non-activated configuration, the quantity of experimentation necessary to allow the occurrence of the observable effect after exposure to the predetermined environmental condition and after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, ammonia exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time, would be great. To achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various materials of microcapsules encapsulating various environmental indicators, including those broadly described in specification [0079], the microcapsule materials and environmental indicator materials present in non-activated configuration while intact and producing any observable after liquifying and at least a portion of the microcapsules rupturing, without any apparent predictability.
(b) There is no direction or guidance presented for the conditions necessary for microcapsules encapsulating an environmental indicator material in a non-activated configuration to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, ammonia exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time; there is nothing in the specification that discloses what microcapsules (e.g., material) and environmental indicator materials are necessary to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, ammonia exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time.
No guidance is provided on what the microcapsules (e.g., material) and environmental indicator materials in non-activated configuration achieve the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, ammonia exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time.
(c) There is an absence of working examples concerning the conditions necessary for microcapsules encapsulating the environmental indicator material in a non-activated configuration to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, ammonia exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time, and there is nothing in the specification that discloses what microcapsules (e.g., material) and environmental indicator materials in non-activated configurations are necessary to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, ammonia exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time.
Therefore, there would be undue experimentation to determine not only as to what microcapsules (e.g., material) and environmental indicator material in a non-activated configuration must be met to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, ammonia exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time, but also what the scope of each these conditions must be, i.e., what microcapsules (e.g., material) and environmental indicator materials in non-activated configuration are required, etc., to allow the occurrence of the liquification and observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, ammonia exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time.
In light of the above, it is seen that undue experimentation would be necessary to make and use the invention of claims 16, 21, 25-26, 28-30, 55-58, 60, 62 and 64-65.
Response to Arguments
1) Applicant’s Amendments filed 06/25/2026 have overcome the claim objections previously of record.
2) Applicant’s Remarks and Amendments have overcome the 35 USC 112(a) rejections previously of record as failing to comply with the written description requirement. Examiner acknowledges basis for the claimed “temperature excursion above a predetermined temperature threshold” in ¶ [0017] of the published specification, US 20925/1063283A.
3) Applicant’s Amendments filed 06/25/2026 have overcome the 35 USC 112(b) rejection previously of record.
4) Applicant's arguments filed 06/25/2026 with respect to the 35 USC 112(a) rejection, as failing to comply with the enablement requirement, have been fully considered but they are not persuasive.
While claim 16 has been amended to: a) eliminate certain types of previously recited environmental stimuli, (b) more particularly recite the state change mechanism of the environmental indicator material, and (c) provide more detail on the mechanism of how the microcapsules prevent the observable effect, the fact remains, claims 16, 21, 25-26, 28-30, 55-58, 60, 62 and 64-65 remain to be subjected to the enablement issue, as set forth above.
5) Applicant argues:
“… Applicant has amended claim 16, which now specifies the indicator materials are materials that liquify in response to particular environmental stimuli and the microcapsules retain the liquified indicator material until ruptured. Thus, Applicant respectfully submits this issue has been addressed. For a particular indicator material, an ordinary artisan would be able to select a compatible material that retains the liquified indicator material until microcapsule is ruptured.”
Remarks, page 8.
Examiner respectfully traverses for the following reasons. Materials that liquify in response to particular environmental stimuli and microcapsules that retain the liquified indicator material until ruptured represent only a portion of the claimed invention. In claiming that the environmental indicator material is configured to liquify in response to an environmental condition, the environmental material must initially be either a solid or a gas. When exposed to an environmental condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, ammonia exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time, the environmental indicator material must be configured to liquify; however, the microcapsules must also prevent flow of the liquefied environmental material until at least a portion of the microcapsules are ruptured. Therefore, the environmental indicator material must liquefy after being exposed to the environmental material, such as ammonia exposure, while at least a portion of the microcapsules remain intact. Further defining the change of state of the environmental indicator material, while requiring further limitations on the how the ink composition of the invention is intended to work, does not enable those skilled in the art to select the proper composition materials and amounts thereof to achieve the claimed invention as a whole without undue experimentation. There is no guidance, direction or working examples in the specification to enable those skilled in the art to achieve the claimed requirements.
6) Applicant further argues:
“In light of the amendment of claim 16, it expressly recited that the microcapsules prevent flow of the liquified indicator material when intact, and release liquified indicator material when they are ruptured, thus permitting the observable effect. Applicant accordingly submits that it would not require undue experimentation to determine whether a particular microcapsule and indicator material can provide the recited feature. Accordingly, this objection has also been overcome and would not require undue experimentation.”
Remarks, page 8.
Although the claims now expressly recite that the microcapsules prevent flow of the liquified indicator material when intact, and release liquified indicator material when they are ruptured, thus permitting the observable effect, there is no guidance provided in the specification as to how to select the particular microcapsule material and environmental indicator material or amounts thereof, how to make the claimed microcapsules, or how to prevent (by remaining intact) or cause (by rupturing) flow of the environmental indicator material from the microcapsules to cause any observable effect in response the claimed environmental conditions, such as the elected closing or breaking of an electrical circuit. While Applicant concludes that selection of such materials is within the skill of the ordinary artisan, Applicant provides no evidence, guidance, direction or working examples as to the selection of suitable materials, amounts thereof, or manufacture thereof to enable those skilled in the art to achieve an ink composition which meets all of the claimed requirements.
For all these reasons, the enablement rejection remains as set forth above.
7) Applicant’s Remarks and Amendments are deemed persuasive to overcome the 35 USC 102(a), the 35 USC 102(a)/103, and the 35 USC 103 rejection over Xu et al, CN 112680030 (Xu), as well as the 35 USC 103 rejections over Xu in view of Arapov et al, “Conductive screen printing inks by gelation of graphene dispersions” (Arapov), and over Xu in view of Arapov and Kaga, US 2013/0044168 (Kaga). Xu, alone or in combination with Arapov and/or Kaga, does not teach wherein the carrier compositions forms a gelled material wherein the microcapsules are suspended in the gelled material as presently claimed. Further, the gels of Arapov are formed by mild heating rather than by cooling below a predetermined low temperature threshold to form a gelled material with the microcapsules suspended therein as presently claimed (Arapov; Abstract and section 3. Conclusion).
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 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.
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/CDL/ Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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