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 Species A (claims 1-21) in the reply filed on 2/13/2026 is acknowledged.
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.
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.
Claim(s) 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Rowe et al, USP 11,656,388 in view of Barbera-Guillem, USP 6,576,155.
Regarding claim 1, Rowe teaches a fiber based textile product (column 11 lines 34-40 and claim 1) with a pigment having a reflectivity in the visible spectrum of electromagnetic radiation that is less than or equal to 10.0%, and a reflectivity in the near-IR and LiDAR spectrum of electromagnetic radiation that is greater than or equal to 12% (see Figure 1B and claim 1).
Rowe does not teach that the pigment is added to a matric made from pulp to make a paper product but instead focuses on the treatment of fibers that are then applied to a textile product.
In the same field of endeavor of utilizing copper oxide nanocrystals (see column 4) as pigment to in a product, Barbera-Guillem teaches that the same type of pigment as shown in Rowe is utilized as an ink to be printed on a paper that is a conventional papers (computer paper, currency paper, bond paper, copying paper, image paper), glass, rubber, vinyl, plastics, fabrics, films, inorganic substrates (e.g., metals and woods), and the like. In a preferred embodiment, the substrate comprises a porous or absorbent substrate, such as paper (column 12 lines 59-67), which reads on the limitations of a matrix made of pulp.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the pigment of Rowe and apply it to the conventional track of printing the ink or the ink coated fibers in one of the conventional applications as taught by Barbera-Guillem for the benefit of leaving identifiable patterns to provide identification on security markings (see abstract and column 13) The act of applying a pigment to a paper is an obvious and conventional application of pigments in the papermaking industry.
Regarding claim 2, Barbera-Guillem further teaches the dying process for the pulp matrix layer (column 1 in discussing dyes and 12 to address the application processes of the ink)
Regarding claims 3, 8, and 14, Rowe teaches that the product would have a reflectivity in the visible spectrum of electromagnetic radiation that is less than or equal to 10.0%, and a reflectivity in the near-IR and LiDAR spectrum of electromagnetic radiation that is greater than or equal to 12% (claim 1 and figure 1B). It stands to reason that the paper would have the same properties as the ink being utilized in the design.
Regarding claims 4, 7, and 12, Rowe further teaches that the doped amount of the product has less than 5% (column 4 line 26).
Regarding claims 5, 9, and 15, Rowe further teaches that the My of the pigment is between 125-155 (see abstract).
Regarding claim 6, Barbera-Guillem further teaches that the pigment can be in the form of an ink (see column 2).
Regarding claims 10 and 13, Rowe further teaches the pigment can be incorporated as a fiber (see column 3).
Regarding claim 11, Rowe further teaches that the pigmented composite is 5 microns (see claim 16).
Regarding claims 16-17 and 21, Barbera-Guillem further teaches that the pigment is used to make a security document such as a bank note that will have an identifying action (see column 13 methods of identifying).
Regarding claims 18-20, Rowe teaches that the pigment is a copper oxide nanocrystal of 5-15 nm (see column 9) and that the crystallites have the claimed ratio (column 8 lines 40-48).
Double Patenting
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.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,391,836, 11,656,388, 12,169,294, US Application numbers 18/105,550, and 17/835,338,
. Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between the instant application and the above patents is the material the pigment is printed upon. The act of using the same pigment that is generically utilized in marking a substrate or textile or other material would have been obvious to also be used on a paper matrix as paper is a common substrate utilized with ink or pigments for identification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748