CTNF 18/559,811 CTNF 85056 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Status of Application Claims 16-30 are pending and presented for examination. Specification The abstract of the disclosure is objected to because of the use of the word “said”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). 06-16 AIA Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. 06-31 AIA The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. Claim Objections 07-29-01 AIA Claim s 23 and 25 are objected to because of the following informalities: In claim 23, “photoinitiator (C)” should correctly be “photoinitiator (D)”. In claim 25, “(d) (d) at least one” should correctly be “(d) at least one” Appropriate correction is required. Double Patenting 08-33 AIA 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. 08-37 AIA 1. Claim s 16, 17 and 21-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 16, 17, 20 and 24-30 of copending Application No. 18/275435 in view of Thomson et al. (EP 3778768). Regarding claims 16, 17 and 21-30, Application No. 18/275435 teaches the same composition, process, and products as recited in claims 16, 17 and 21-30 but fails to teach the inclusion of a surfactant as recited in claims 16 and 17. However, Thomson teaches a surfactant which is a block copolymer which meets the limitations of the surfactant as recited in claims 16 and 17 (see Thomson at abstract, 0010-0012 and 0071). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the claims of Application 18/275435 to include a surfactant as disclosed by Thomson. One would have been motivated to make this modification as Thomson teaches the copolymer surfactants increase substrate wetting, anti-cratering and act as a leveling agent (0001) . This is a provisional nonstatutory double patenting rejection. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 2. Claim 29 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 29 is a use claim that does not purport to claim a process, machine, manufacture, or composition of matter. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 3. Claims 17, 18, 27 and 29 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. Claim 17 recites the limitation "R 47’ ” and “R 49 ". There is insufficient antecedent basis for these limitations in the claim. Claim 17 refers back to the block copolymer of claim 16. However, none of the formulas in claim 16 or 17 include a group R 47’ or R 49 . Therefore, it is unclear as to what is being referred to with these groups. Claim 18 includes a formula with substituents R 47 and R 47’ . However, these substituents are not defined in the composition. Therefore, it is unclear exactly what compounds are encompassed by the formula. For examination purposes, any substituents at these locations will be interpreted as meeting the limitations of the claim. 07-34-08 Regarding claim 27, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claim 29 is indefinite as it is a “use claim” and it attempts to claim a process without setting forth any steps involved in the process. Note that attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-aia AIA 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. 07-21-aia AIA 4. Claim (s) 16, 17 and 20-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grigorenko et al. (WO 2020/083794) in view of Thomson et al. (EP 3778768) . I. Regarding claims 16, 17 and 20-24, Grigorenko teaches a radically curable (middle of page 28) composition comprising: silver nanoplatelets with a diameter of 20-70 nm and a thickness of 5-30 nm (Grigorenko at claim 1), a photoinitiator having the structure PNG media_image1.png 70 120 media_image1.png Greyscale as claimed in claim 23 (Grigorenko at middle of page 30), a reactive diluent, such as butyl acrylate (top of page 40), and a stabilizing agent having the formula PNG media_image2.png 114 146 media_image2.png Greyscale (Grigorenko at claim 7). Grigorenko additionally teaches the silver nanoplatelets bearing a surface stabilizing agent having the formula PNG media_image3.png 124 548 media_image3.png Greyscale (Grigorenko at claim 4), and the inclusion of a surfactant (page 8). Grigorenko fails to teach the surfactant being a block copolymer surfactant as claimed in claims 16 and 17. However, Thomson teaches a surfactant (title) comprising a block copolymer (abstract) comprising a first block which may comprise a methyl methacrylate and a hydroxy ethylmethacrylate (0022) and a second block comprising a fluorinated (meth)acrylic ester having the formula as claimed in claim 17 (abstract and 0012-0013). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Grigorenko’s composition by substituting Thomson’s block copolymer surfactant for Grigorenko’s surfactant. One would have been motivated to make this modification as Thomson teaches that the use of the block copolymer surfactant would increase substrate wetting, anti-cratering and act as a leveling agent for the composition (0001). II. Regarding claim 25, Grigorenko in view of Thomson make obvious the composition as claimed in claim 16 (see above), and the composition may not include oligomers (see throughout Grigorenko). Claim 25 recites further limitations of the oligomers; however, it is noted that the oligomers are claimed as optional. As Grigorenko in view of Thomson’s composition is recited as not including oligomers, then it also makes obvious the limitations of claim 25, as claim 25 only recites additional limitations to the oligomers if they are present. III. Regarding claims 26-28, Grigorenko in view of Thomson make obvious the composition as claimed in claim 16 (see above). Additionally, Grigorenko teaches a security feature comprising a substrate, a coating on the substrate comprising a liquid crystal compound, and a coating comprising the silver nanoplatelet composition on the liquid crystal compound or the opposite side of the substrate (see Grigorenko at claims 10-12), and a product comprising this security feature (see Grigorenko at claim 13). Therefore, Grigorenko in view of Thomson make obvious claims 26-28. IV. Regarding claim 29, Grigorenko in view of Thomson make obvious the security element as claimed in claim 26 (see above). Additionally, Grigorenko teaches the use of this security element for prevention of counterfeit or reproduction, on a document of value (see Grigorenko at claim 24). Therefore, Grigorenko in view of Thomson make obvious claim 29. V. Regarding claim 30, Grigorenko in view of Thomson make obvious the composition of claim 16 (see above). Additionally, Grigorenko teaches a process comprising: providing a substrate, applying the silver nanoplatelet composition to a portion of the substrate, and curing the composition with actinic radiation (see Grigorenko at bottom of page 53). Therefore, Grigorenko in view of Thomson make obvious claim 30 . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 5. Claim 19 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. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to teach or suggest the composition of claim 19. In particular, the prior art fails to teach or suggest a radically curable composition including platelet shaped metal particles and the specific block copolymer surfactant having the formula as claimed in claim 19 . Conclusion Claims 16-30 are pending. Claims 16-18 and 20-30 are rejected. Claim 19 is objected to. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5. 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, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ROBERT S WALTERS JR/ April 25, 2026Primary Examiner, Art Unit 1717 Application/Control Number: 18/559,811 Page 2 Art Unit: 1717 Application/Control Number: 18/559,811 Page 3 Art Unit: 1717 Application/Control Number: 18/559,811 Page 4 Art Unit: 1717 Application/Control Number: 18/559,811 Page 5 Art Unit: 1717 Application/Control Number: 18/559,811 Page 6 Art Unit: 1717 Application/Control Number: 18/559,811 Page 7 Art Unit: 1717 Application/Control Number: 18/559,811 Page 8 Art Unit: 1717 Application/Control Number: 18/559,811 Page 9 Art Unit: 1717 Application/Control Number: 18/559,811 Page 10 Art Unit: 1717 Application/Control Number: 18/559,811 Page 11 Art Unit: 1717
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