DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 01/06/2026.
3. Claims 1-7, 9-10, 12-18 are pending. Claims 1-7, 9-10, 12-18 are under examination on the merits. Claim 1 is amended. Claims 8,11 are cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 01/06/2026 have been fully considered but they are not persuasive, thus claims 1-7, 9-10, 12-18 stand rejected as set forth in Office action dated 10/23/2025 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. 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.
7. Claim 1 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Okada et al. (Oxygen vacancies and pseudo Jahn‐Teller destabilization in cesium‐doped hexagonal tungsten bronzes, J Am Ceram Soc. 2019;102:5386–5400, hereinafter “Okada”).
Regarding claim 1: Okada teaches Infrared absorbing particles comprising: composite tungsten oxide particles, wherein the composite tungsten oxide particles have a hexagonal crystal structure (Page 5387, left Col., Fig. 1), and wherein the composite tungsten oxide particles are represented by a general formula CsxWO3−y , 0.20 ≤ x ≤ 0.32, 0 < y ≤ 0.46 as shown below (Page 5389, Table 1). Okada teaches the ratio of x/y=0.322 and z/y=2.831 which is close to 2.84 in Example 1 (Page 5389, Table 1, Example 1; a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05)). Okada does not expressly teach a color tone when only light absorption by the infrared absorbing particles is calculated is b*>0 in a L*a*b* color system.
PNG
media_image1.png
398
714
media_image1.png
Greyscale
However, since Okada teaches substantially identical infrared absorbing particles comprising: composite tungsten oxide particles, wherein the composite tungsten oxide particles have a hexagonal crystal structure (Page 5387, left Col., Fig. 1), wherein the composite tungsten oxide particles are represented by a general formula MxWyOz where M is one or more elements selected from Cs, Rb, K, Tl, Ba, Ca, Sr, and Fe, W is tungsten, 0 is oxygen, 0.25 ≤ x/y ≤ 0.39, and 2.84 ≤ z/y ≤2.90 as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e., a color tone, would be the same as claimed (i.e., a color tone when only light absorption by the infrared absorbing particles is calculated is b*>0 in a L*a*b* color system). If there is any difference between the product of Okada and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
8. Claims 2-6, 10, 12-14 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Okada et al. (Oxygen vacancies and pseudo Jahn‐Teller destabilization in cesium‐doped hexagonal tungsten bronzes, J Am Ceram Soc. 2019;102:5386–5400, hereinafter “Okada”) as applied to claim 1 above, and further in view of Takeda et al. (US Pub. No. 2006/0178254 A1, hereinafter “Takeda”).
Regarding claim 2: The disclosure of Okada is adequately set forth in paragraph 7 above and is incorporated herein by reference. Okada does not expressly teach the infrared absorbing particles are coated with a compound including one or more atoms selected from Si, Ti, Zr, and Al.
However, Takeda teaches infrared absorbing particles comprising: composite tungsten oxide particles (Page 1, [0001]), wherein the composite tungsten oxide particles have a hexagonal crystal structure (Page 3, [0035]), and wherein the composite tungsten oxide particles are represented by a general formula MxWyOz, where M is one or more elements selected from Cs, Rb, K, Tl, Ba, Ca, Sr, and Fe, W is tungsten, O is oxygen, 0.001 ≤ x/y ≤ 1.0, and 2.2 ≤ z/y ≤ 3.0 (Page 3, [0032]-[0033]; Page 16, Claim 1), wherein the infrared absorbing particles are coated with a compound including one or more atoms selected from Si, Ti, Zr, and Al (Page 3, [0037]; Page 16, Claim 8) with benefit of providing an improving weather stability of the infrared-shielding material (Page 6, [0087]).
In an analogous art of infrared absorbing particles, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the infrared absorbing particles by Okada, so as to include the infrared absorbing particles are coated with a compound including one or more atoms selected from Si, Ti, Zr, and Al as taught by Takeda, and would have been motivated to do so with reasonable expectation that this would result in providing an improving weather stability of the infrared-shielding material as suggested by Takeda (Page 6, [0087]).
Regarding claim 3: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 7 above and is incorporated herein by reference. Takeda teaches an infrared absorbing particle dispersion liquid (Page 1, [0001]) comprising: a liquid medium, and the infrared absorbing particles provided in the liquid medium (Page 3, [0039]; Page 16, Claim 10).
Regarding claim 4: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 7 above and is incorporated herein by reference. Takeda teaches the infrared absorbing particle dispersion liquid (Page 1, [0001]), wherein an average dispersion particle size of the infrared absorbing particles is in a range from 1 nm to 800 nm (Page 2, [0030]; Page 16, Claim 2).
Regarding claim 5: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 7 above and is incorporated herein by reference. Takeda teaches the infrared absorbing particle dispersion liquid (Page 1, [0001]), wherein the liquid medium is one selected from a liquid medium material group consisting of water, an organic solvent, oil or fat, a liquid resin, and a liquid plasticizer for plastics, or a mixture of two or more selected from the liquid medium material group (Page 3, [0039]; Page 8, [0105]; Page 16, Claim 10).
Regarding claim 6: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 7 above and is incorporated herein by reference. Takeda teaches the infrared absorbing particle dispersion liquid (Page 1, [0001]), wherein the infrared absorbing particle dispersion liquid includes a dispersant (Page 9, [0109]).
Regarding claim 10: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 7 above and is incorporated herein by reference. Takeda teaches an infrared absorbing particle dispersion material (Page 3, [0031] comprising: a solid medium, and the infrared absorbing particles provided in the solid medium (Page 3, [0039]; Page 8, [0105]; Page 16, Claim 10).
Regarding claim 12: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 7 above and is incorporated herein by reference. Takeda teaches an infrared absorbing particle dispersion material (Page 3, [0031], wherein the solid medium comprises a thermoplastic resin or a UV- curable resin (Page 8, [0105]).
Regarding claim 13: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 7 above and is incorporated herein by reference. Takeda teaches an infrared absorbing particle dispersion material (Page 3, [0031], wherein the thermoplastic resin comprises one resin selected from a resin group consisting of polyethylene terephthalate resin, polycarbonate resin, acrylic resin, styrene resin, polyamide resin, polyethylene resin, vinyl chloride resin, olefin resin, epoxy resin, polyimide resin, fluororesin, ethylene-vinyl acetate copolymer, and polyvinyl acetal resin; a mixture of two or more resins selected from the resin group; or a copolymer of two or more resins selected from the resin group (Page 8, [0105]). .
Regarding claim 14: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 7 above and is incorporated herein by reference. Takeda teaches an infrared absorbing particle dispersion material (Page 3, [0031], wherein the infrared absorbing particle dispersion material is provided in a sheet shape, a board shape, or a film shape (Page 3, [0040]; Page 16, Claim 11).
9. Claim 7 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Okada et al. (Oxygen vacancies and pseudo Jahn‐Teller destabilization in cesium‐doped hexagonal tungsten bronzes, J Am Ceram Soc. 2019;102:5386–5400, hereinafter “Okada”) in view of Takeda et al. (US Pub. No. 2006/0178254 A1, hereinafter “Takeda”) as applied to claim 1 above, and further in view of Nakayama et al. (US Pub. No. 2021/0087070, hereinafter “Nakayama”).
Regarding claim 7: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 8 above and is incorporated herein by reference. Okada in view of Takeda does not expressly teach the infrared absorbing particle dispersion liquid contains 0.001% by mass or more and 80.0% by mass or less of the infrared absorbing particles.
However, Nakayama teaches a near-infrared absorbing material fine particle dispersion (Page 1, [0001]), wherein the infrared absorbing particle dispersion liquid contains 0.001% by mass or more and 80.0% by mass or less of the infrared absorbing particles (Page 12, Examples, Table 1) with benefit of providing a near-infrared absorbing material fine particle dispersion, a near-infrared absorber, near-infrared absorber laminate, and a laminated structure for near-infrared absorption, which can exhibit higher near-infrared absorption property, compared to near-infrared fine particle dispersions, near-infrared absorber laminates, and laminated structures for near-infrared absorption, containing tungsten oxides or composite tungsten oxides, (Page 1, [0006]).
In an analogous art of infrared absorbing particles, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the amount of infrared absorbing particles in the dispersion liquid by Okada, so as to include the infrared absorbing particle dispersion liquid contains 0.001% by mass or more and 80.0% by mass or less of the infrared absorbing particles as taught by Nakayama, and would have been motivated to do so with reasonable expectation that this would result in providing a near-infrared absorbing material fine particle dispersion, a near-infrared absorber, near-infrared absorber laminate, and a laminated structure for near-infrared absorption, which can exhibit higher near-infrared absorption property, compared to near-infrared fine particle dispersions, near-infrared absorber laminates, and laminated structures for near-infrared absorption, containing tungsten oxides or composite tungsten oxides as suggested by Nakayama (Page 1, [0006]).
10. Claims 9-10, 14-15, 17 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Okada et al. (Oxygen vacancies and pseudo Jahn‐Teller destabilization in cesium‐doped hexagonal tungsten bronzes, J Am Ceram Soc. 2019;102:5386–5400, hereinafter “Okada”) in view of Takeda et al. (US Pub. No. 2006/0178254 A1, hereinafter “Takeda”) as applied to claim 1 above, and further in view of Nakayama et al. (US Pub. No. 2021/0070961, hereinafter “Nakayama”).
Regarding claim 9: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 8 above and is incorporated herein by reference. Okada in view of Takeda does not expressly teach a concentration of the infrared absorbing particles is 0.045% by mass when a visible light transmittance is set to 80%.
However, Nakayama teaches infrared absorbing particles comprising: composite tungsten oxide particles (Page 1, [0001]), wherein the composite tungsten oxide particles have a hexagonal crystal structure (Page 2, [0036]), and wherein the composite tungsten oxide particles are represented by a general formula MxWyOz, where M is one or more elements selected from Cs, Rb, K, Tl, Ba, Ca, Sr, and Fe, W is tungsten, O is oxygen, 0.20 ≤ x/y ≤ 0.37, and 2.2 ≤ z/y ≤ 3.0 (Page 2, [0030]-[0033]; Page 17, Claim 7). Nakayama teaches the infrared absorbing particle dispersion liquid (Page 1, [0014], wherein a concentration of the infrared absorbing particles is 0.045% by mass (i.e., a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05)) when a visible light transmittance is set to 80% (Page 16, Example 17, Table 2) with benefit of providing a near-infrared absorbing material fine particle dispersion, a near-infrared absorber, and a laminated structure for near-infrared absorption, which can exhibit higher near-infrared absorption property while securing higher transparency, compared to near-infrared fine particle dispersions, near-infrared absorbers, and laminated structures for near-infrared absorption, containing tungsten oxides or composite tungsten oxides (Page 1, [0007]).
In an analogous art of infrared absorbing particles, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the amount of infrared absorbing particles in the dispersion liquid by Okada, so as to include a concentration of the infrared absorbing particles is 0.045% by mass when a visible light transmittance is set to 80% as taught by Nakayama, and would have been motivated to do so with reasonable expectation that this would result in providing a near-infrared absorbing material fine particle dispersion, a near-infrared absorber, near-infrared absorber laminate, and a laminated structure for near-infrared absorption, which can exhibit higher near-infrared absorption property, compared to near-infrared fine particle dispersions, near-infrared absorber laminates, and laminated structures for near-infrared absorption, containing tungsten oxides or composite tungsten oxides as suggested by Nakayama (Page 1, [0007]).
Regarding claim 10: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 8 above and is incorporated herein by reference. Nakayama teaches an infrared absorbing particle dispersion material (Page 1, [0014] comprising: a solid medium, and the infrared absorbing particles provided in the solid medium (Page 3, [0062]; Page 17, Claim 1).
Regarding claim 14: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 8 above and is incorporated herein by reference. Nakayama teaches an infrared absorbing particle dispersion material (Page 1, [0014], wherein the infrared absorbing particle dispersion material is provided in a sheet shape, a board shape, or a film shape (Page 2, [0039]; Page 17, Claim 11).
Regarding claim 15: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 8 above and is incorporated herein by reference. Nakayama teaches an infrared absorbing laminate transparent substrate comprising: a plurality of transparent substrates, and the infrared absorbing particle dispersion material, wherein the infrared absorbing laminate transparent substrate has a laminated structure in which the infrared absorbing particle dispersion material is arranged between the plurality of transparent substrates (Page 2, [0047]; Page 17, Claims 12-14)
Regarding claim 17: The disclosure of Okada in view of Takeda is adequately set forth in paragraph 8 above and is incorporated herein by reference. Nakayama teaches an infrared absorbing transparent substrate comprising: a transparent substrate, and an infrared absorbing layer disposed on at least one surface of the transparent substrate, wherein the infrared absorbing layer is the infrared absorbing particle dispersion material (Page 2, [0045]; Page 17, Claim 12)
12. Claims 1, 10, 14-18 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over
Okada et al. (US Pub No. 2020/0170150 A1, hereinafter “Okada1”) in view of Okada et al. (Oxygen vacancies and pseudo Jahn‐Teller destabilization in cesium‐doped hexagonal tungsten bronzes, J Am Ceram Soc. 2019;102:5386–5400, hereinafter “Okada2”).
Regarding claim 1: Okada1 teaches Infrared absorbing particles comprising: composite tungsten oxide particles (Page 2, [0022]), wherein the composite tungsten oxide particles have a hexagonal crystal structure (Page 2, [0022]), and wherein the composite tungsten oxide particles are represented by a general formula MxWO3−y , 0.15 ≤ x ≤ 0.33, 0 < y ≤ 0.46, wherein M include at least one or more species selected from among K, Rb, and Cs (Page 2, [0022]; Page 20, Table,1 Examples). Okada1 does not expressly teach the composite tungsten oxide particles are represented by a general formula MxWyOz where M is one or more elements selected from Cs, Rb, K, Tl, Ba, Ca, Sr, and Fe, W is tungsten, 0 is oxygen, 0.25 ≤ x/y ≤ 0.39, and 2.84 ≤ z/y ≤2.90, and a color tone when only light absorption by the infrared absorbing particles is calculated is b*>0 in a L*a*b* color system.
However, Okada2 teaches Infrared absorbing particles comprising: composite tungsten oxide particles, wherein the composite tungsten oxide particles have a hexagonal crystal structure (Page 5387, left Col., Fig. 1), and wherein the composite tungsten oxide particles are represented by a general formula CsxWO3−y , 0.20 ≤ x ≤ 0.32, 0 < y ≤ 0.46 (Page 5389, Table 1). Okada teaches the ratio of x/y=0.322 and z/y=2.831 which is close to 2.84 in Example 1 (Page 5389, Table 1, Example 1; a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05)) with benefit of providing cesium‐doped hexagonal tungsten bronzes with oxygen vacancies due to solar control properties in the form of nanoparticles, with strong near‐infrared (NIR) absorption and high luminous transmission since oxygen defects and doped alkali ions, on crystal structures is a fundamental concern not only in clarifying the absorption mechanism but also in relevance to various above properties (Page 5386, left Col. Introduction, lines 5-11).
In an analogous art of infrared absorbing particles, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the infrared absorbing particles by Okada1 so as to include the
composite tungsten oxide particles are represented by a general formula CsxWO3−y , 0.20 ≤ x ≤ 0.32, 0 < y ≤ 0.46 as taught by Okada1, and would have been motivated to do so with reasonable expectation that this would result in providing cesium‐doped hexagonal tungsten bronzes with oxygen vacancies due to solar control properties in the form of nanoparticles, with strong near‐infrared (NIR) absorption and high luminous transmission since oxygen defects and doped alkali ions, on crystal structures is a fundamental concern not only in clarifying the absorption mechanism but also in relevance to various above properties as suggested by Okada1 (Page 5386, left Col. Introduction, lines 5-11).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two infrared absorbing particles) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Since Okada1 in view of okada2 teaches substantially identical infrared absorbing particles comprising: composite tungsten oxide particles, wherein the composite tungsten oxide particles have a hexagonal crystal structure (Page 5387, left Col., Fig. 1), wherein the composite tungsten oxide particles are represented by a general formula MxWyOz where M is one or more elements selected from Cs, Rb, K, Tl, Ba, Ca, Sr, and Fe, W is tungsten, 0 is oxygen, 0.25 ≤ x/y ≤ 0.39, and 2.84 ≤ z/y ≤2.90 as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e., a color tone, would be the same as claimed (i.e., a color tone when only light absorption by the infrared absorbing particles is calculated is b*>0 in a L*a*b* color system). If there is any difference between the product of Okada1 in view of Okada2 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 10: The disclosure of Okada1 in view of Okada2 is adequately set forth in paragraph above and is incorporated herein by reference. Okada1 teaches an infrared absorbing particle dispersion material (Page 2, [0022] comprising: a solid medium, and the infrared absorbing particles provided in the solid medium (Page 10, [0147]-[0148]).
Regarding claim 14: The disclosure of Okada1 in view of Okada2 is adequately set forth in paragraph above and is incorporated herein by reference. Okada1 teaches the infrared absorbing particle dispersion material (Page 2, [0022], wherein the infrared absorbing particle dispersion material is provided in a sheet shape, a board shape, or a film shape (Page 10, [0153]; Page 22, Claim 14).
Regarding claim 15: The disclosure of Okada1 in view of Okada2 is adequately set forth in paragraph above and is incorporated herein by reference. Okada1 teaches an infrared absorbing laminate transparent substrate comprising: a plurality of transparent substrates, and the infrared absorbing particle dispersion material, wherein the infrared absorbing laminate transparent substrate has a laminated structure in which the infrared absorbing particle dispersion material is arranged between the plurality of transparent substrates (Page 13, [0194]; Page 14, [0200]; Page 22, Claim 15)
Regarding claim 16: The disclosure of Okada1 in view of Okada2 is adequately set forth in paragraph above and is incorporated herein by reference. Okada1 teaches an infrared absorbing laminate transparent substrate (Page 13, [0194], wherein a light transmittance at a wavelength of 850 nm is 30% or higher (Pages 20-21, Table 2, Examples).
Regarding claim 17: The disclosure of Okada1 in view of Okada2 is adequately set forth in paragraph above and is incorporated herein by reference. Okada1 teaches an infrared absorbing transparent substrate comprising: a transparent substrate, and an infrared absorbing layer disposed on at least one surface of the transparent substrate, wherein the infrared absorbing layer is the infrared absorbing particle dispersion material (Page 23, [0196]; Page 22, Claim 15)
Regarding claim 18: The disclosure of Okada1 in view of Okada2 is adequately set forth in paragraph above and is incorporated herein by reference. Okada1 teaches an infrared absorbing laminate transparent substrate (Page 13, [0194], wherein a light transmittance at a wavelength of 850 nm is 30% or higher (Pages 20-21, Table 2, Examples).
Response to Arguments
13. Applicant's arguments filed 01/06/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that Okada does not teach a general formula MxWyOz where M is one or more elements selected from Cs, Rb, K, Tl, Ba, Ca, Sr, and Fe, W is tungsten, 0 is oxygen, 0.25 ≤ x/y ≤ 0.39, and 2.84 ≤ z/y ≤2.90,
The examiner respectfully disagrees. Okada teaches Infrared absorbing particles comprising: composite tungsten oxide particles, wherein the composite tungsten oxide particles have a hexagonal crystal structure (Page 5387, left Col., Fig. 1), and wherein the composite tungsten oxide particles are represented by a general formula CsxWO3−y , 0.20 ≤ x ≤ 0.32, 0 < y ≤ 0.46 as shown below (Page 5389, Table 1). Okada teaches the ratio of x/y=0.322 and z/y=2.831 which is close to 2.84 in Example 1 (Page 5389, Table 1, Example 1; a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05)). Okada does not expressly teach a color tone when only light absorption by the infrared absorbing particles is calculated is b*>0 in a L*a*b* color system.
PNG
media_image1.png
398
714
media_image1.png
Greyscale
However, since Okada teaches substantially identical infrared absorbing particles comprising: composite tungsten oxide particles, wherein the composite tungsten oxide particles have a hexagonal crystal structure (Page 5387, left Col., Fig. 1), wherein the composite tungsten oxide particles are represented by a general formula MxWyOz where M is one or more elements selected from Cs, Rb, K, Tl, Ba, Ca, Sr, and Fe, W is tungsten, 0 is oxygen, 0.25 ≤ x/y ≤ 0.39, and 2.84 ≤ z/y ≤2.90 as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e., a color tone, would be the same as claimed (i.e., a color tone when only light absorption by the infrared absorbing particles is calculated is b*>0 in a L*a*b* color system). If there is any difference between the product of Okada and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
In response to the Applicant’s argument that Okada’150 does not teach a color tone when only light absorption by the infrared absorbing particles is calculated is b*>0 in a L*a*b* color system.
The examiner respectfully disagrees. The Applicant's argument is rendered moot since the claims rejection under Okada’150, Takeda in view of Okada, Takeda in view of Okada, and further in view of Nakayam’070 or Nakayam’961 are withdrawn.
14. 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.
Examiner Information
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
01/24/2026
bijan.ahvazi@uspto.gov