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 of Group I, claims 1-9, without traverse in the reply filed on 06/26/2026 is acknowledged.
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/26/2026.
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.
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.
Claim 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Okada et al. (WO-2017047736-A1), with reference to the included machine translation (hereinafter referred to as “Okada”), in view of Son et al. (KR-101182194-B1), with reference to the included machine translation (hereinafter referred to as “Son”).
Regarding claims 1, 2, and 5, Okada teaches an infrared curable ink composition (see Okada at pg. 2, para. 4, teaching a near-infrared curable ink), comprising:
ֽ• infrared absorbing particles; and a thermosetting resin (see Okada at pg. 2, para. 7, teaching the ink as containing composite tungsten oxide as near-infrared absorbing particles; also see Okada at pg. 5, para. 7, teaching the ink as containing an uncured thermosetting resin), wherein
• the infrared absorbing particles include particles of a complex tungsten oxide represented by formula MxWyOz, where M is one or more elements selected from the group consisting of H, He, alkali metals, alkaline earth metals, rare-earth elements, Mg, Zr, Cr, Mn, Fe, Ru, Co, Rh, Ir, Ni, Pd, Pt, Cu, Ag, Au, Zn, Cd, Al, Ga, In, Ti, Si, Ge, Sn, Pb, Sb, B, F, P, S, Se, Br, Te, Ti, Nb, V, Mo, Ta, Re, Be, Hf, Os, Bi, and I; W is tungsten, O is oxygen, and 0.001 ≤ x/y ≤ 1 (see Okada at pg. 3, last two paragraphs and pg. 4, para. 1).
While Okada teaches the ink above, Okada fails to explicitly teach the tungsten oxide as satisfying the claimed relationship 3.0 ≤ z/y, wherein a particle diameter of the infrared absorbing particles is 10 nm or more and 100 nm or less (regarding claim 2), and wherein M in the formula is Cs (regarding claim 5).
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However, Son teaches an infrared absorbing inorganic compound, which may have the formula AxByOz, where A can be an alkali metal, B can be tungsten, O is oxygen, 0.001 ≤ x/y ≤ 1, and 3 < z/y ≤ 5 (see Son at pg. 3, para. 1). Moreover, Son teaches an example compound, Example 1, which has the following formula and a particle diameter of 20 to 30 nm (see untranslated Son at pg. 11; also see Son at pg. 7, para. 2):
Son further teaches their specific inorganic compound to have a high transmittance of visible light and a high infrared shielding rate, and has a property of not being discolored by sunlight or ultraviolet rays (see Son at pg. 4, para. 3). Additionally, Son teaches the particles may be mixed with a dispersant and a solvent to form a coating solution (see Son at pg. 5, para. 2).
Okada teaches their composite tungsten oxide particles to have a “preferred” or “desirable” z/y ratio of 2.2 ≤ z/y ≤ 3.0 (see Okada at pg. 4, para. 1 and pg. 4, para. 3). Accordingly, one of ordinary skill would recognize Okada as not strictly limiting their z/y ratio, as terms like “preferred” or “desirable” do not necessarily limit larger z/y ratios. Okada further teaches high transmission in the visible light region and high absorption in the near-infrared region to be desirable properties of their ink (see Okada at pg. 4, para. 4).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the tungsten oxide particles of Son, e.g., Example 1 of Son shown above, which has a particle diameter of 20 to 30 nm, as the composite tungsten oxide particles in the ink of Okada. One of ordinary skill in the art would have been motivated to do so in order to generate an ink having a high transmittance of visible light and a high infrared shielding rate, and that has a property of not being discolored by sunlight or ultraviolet rays (see Son at pg. 4, para. 3). Moreover, combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Following the above modification, the ink of modified Okada contains Cs0.348W1O3.745 as composite tungsten oxide particles, which has an x/y value of 0.348 (0.348/1 = 0.348), and a z/y value of 3.745 (3.745/1 = 3.745), which satisfy the claim 1 formula. Further, the particle size of 20 to 30 nm falls within the claim 2 range.
Regarding claim 3, see Okada at pg. 2, second to last paragraph, teaching the dispersed particle size of the near-infrared absorbing particles to range from 800 nm or less, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 4, see Okada at pg. 3, para. 6, teaching the tungsten oxide may have a hexagonal structure; also see Son at pg. 7, para. 2, teaching the compound of Example 1 as having a hexagonal structure.
Regarding claim 6, see Okada at pg. 5, para. 6.
Regarding claims 7-9, see Okada at pg. 5, second to last paragraph; and pg. 8, para. 8.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, and 4-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, and 11-13 of U.S. Patent Application No. 18/292,561 (hereinafter referred to as ‘561) (see claim set dated 06/08/2026; note the ‘561 claims have been allowed but a patent number has not yet been issued at the time of writing).
With respect to instant claim 1, although the claims at issue are not identical, they are not patentably distinct because instant claim 1 is met by claim 1 of ‘561 (claim 1 of ‘561 claims the formula CsxW1-yO3-z, where 0.2≤x≤0.4, 0<y≤0.4, 0<z≤0.46; consequently, claim 1 of ‘561 necessarily claims a ratio z/y ranging from greater than 2.54 to less than 5 ((3-0)/(1-0.4) = 5; (3-0.46)/(1-0) = 2.54); this range of greater than 2.54 to less than 5 overlaps the claimed z/y range, establishing a prima facie case of obviousness, see MPEP § 2144.05; note that Cs is an alkali metal).
With respect to instant claim 2, although the claims at issue are not identical, they are not patentably distinct because instant claim 2 is met by claim 7 of ‘561 (0.1 to 200 nm overlaps the instant claim 2 range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
With respect to instant claims 4-9, although the claims at issue are not identical, they are not patentably distinct because instant claim 4 is met by claim 1 of ‘561; instant claim 5 is met by claim 1 of ‘561; instant claim 6 is met by claim 8 of ‘561; instant claim 7 is met by claim 11 of ‘561; instant claim 8 is met by claim 12 of ‘561; and instant claim 9 is met by claim 13 of ‘561.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of ‘561, as applied to instant claim 1 above, and further in view of Chonan et al. (US-20200224043-A1) (hereinafter referred to as “Chonan”).
With respect to instant claim 3, ‘561 fails to claim the claimed dispersion particle diameter. However, Chonan teaches a dispersed particle diameter of 1 to 800 nm to be preferable because at that size, the near-infrared absorbing fine particles efficiently absorb near-infrared rays, and the rays are easily converted to thermal energy (see Chonan at para. 0045). Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious for one of ordinary skill to set the dispersed particle diameter of the particles of claim 1 of ‘561 to range from 1 to 800 nm. One of ordinary skill in the art would have been motivated to do so in order to allow the particles to more efficiently absorb near-infrared rays, and to more easily convert the rays to thermal energy (see Chonan at para. 0045).
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, and 11 of U.S. Patent No. US-12565429-B2 (hereinafter referred to as ‘429) in view of Machida et al. (JP-2016210984-A), with reference to the included machine translation (hereinafter referred to as “Machida”), and Chonan.
With respect to instant claim 1, claim 1 of ‘429 claims most of the limitations of instant claim 1 (including an implied z/y ratio range of greater than 2.54 to less than 5, see the claim 1 double patenting rejection over ‘561 above to see how these values were calculated). However, ‘429 fails to claim the particles as being used in an infrared curable ink combined with a thermosetting resin.
However, Machida teaches an ink or colored film which may comprise titanium compound fine particles, carbon black fine particles, a solvent, a dispersant, an infrared absorbing compound, a coating resin, an adhesive, an additive, a transparent substrate, and a thermoplastic resin (see Machida at pg. 3, para. 3). Machida further teaches the infrared absorbing compound may include composite tungsten oxide compounds, and that the composition may contain a thermosetting resin (see Machida at pg. 2, para. 7 and pg. 5, para. 3). In general, it is well-known that composite tungsten oxide particles may suitably be used in infrared curable inks together with thermoplastic resins to provide infrared shielding properties (see Chonan at para. 0020 and 0121).
Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the electromagnetic wave absorbing particles in claim 1 of ‘429 in an infrared curable ink, like that taught by Chonan and/or Machida, together with a thermosetting resin, because combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
With respect to instant claim 2, although the claims at issue are not identical, they are not patentably distinct because instant claim 2 is met by claim 7 of ‘429 (0.1 to 200 nm overlaps the instant claim 2 range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
With respect to instant claim 3, ‘429 fails to claim the claimed dispersion particle diameter. However, Chonan teaches a dispersed particle diameter of 1 to 800 nm to be preferable because at that size, the near-infrared absorbing fine particles efficiently absorb near-infrared rays, and the rays are easily converted to thermal energy (see Chonan at para. 0045). Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious for one of ordinary skill to set the dispersed particle diameter of the particles of modified claim 1 of ‘429 above to range from 1 to 800 nm. One of ordinary skill in the art would have been motivated to do so in order to allow the particles to more efficiently absorb near-infrared rays, and to more easily convert the rays to thermal energy (see Chonan at para. 0045).
With respect to instant claims 4, 5, 6, and 9, although the claims at issue are not identical, they are not patentably distinct because instant claim 4 is met by claim 1 of ‘429; instant claim 5 is met by claim 1 of ‘429; instant claim 6 is met by claim 8 of ‘429; instant claim 9 is met by claim 11 of ‘429.
With respect to instant claims 7 and 8, ‘429 fails to claim the presence of a pigment or a dispersant. However, it is well known that a dispersant may be added together with near-infrared absorbing fine particles to improve dispersibility of the particles, and further, that a pigment may be added to color the composition to a desired color (see Chonan at para. 0129 and 0167). Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious to use a dispersant and a pigment in modified ‘429. One of ordinary skill in the art would have been motivated to do so in order to more easily disperse the composite tungsten oxide particles and to further color the composition to a desired color (see Chonan at para. 0129 and 0167).
Claims 1 and 3-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, and 7-11 of U.S. Patent No. US-11685839-B2 (hereinafter referred to as ‘839) in view of Son.
With respect to instant claim 1, claims 1 and 2 of ‘839 claim most of the instant limitations except for 3.0 < z/y. However, claim 2 of ‘839 claims z/y to satisfy the relationship 2.2 ≤ z/y ≤3.0. While the range of 2.2 ≤z/y ≤ 3.0 claimed by ‘839 does not overlap the claimed range of 3.0 ≤ z/y, the ranges are close at their end-points. 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. See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773. See MPEP § 2144.05(I). It is known in the art that z/y values ranging from 3 to 5 demonstrate suitable visible light transmitting and infrared-absorbing/shielding properties (see Son at pg. 4, para. 3; also see Example 1 of untranslated Son at pg. 11, teaching Cs0.348W1O3.745 as a suitable tungsten oxide compound). Thus, although the claims at issue are not identical, they are not patentably distinct because it is reasonable to expect an ink with a z/y value of, for example, 3.001 that falls within the instantly claimed range, and a z/y value of, for example, 3.0 that falls within the range as claimed by ‘839, to demonstrate similar properties, as the difference between their values is very small, on the order of the thousandths decimal place (or smaller).
With respect to instant claims 3-9, although the claims at issue are not identical, they are not patentably distinct because instant claim 3 is met by claim 11 of ‘839; instant claim 4 is met by claim 4 of ‘839, instant claim 5 is met by claim 2 of ‘839; instant claim 6 is met by claim 7 of ‘839; instant claim 7 is met by claim 8 of ‘839; instant claim 8 is met by claim 9 of ‘839; and instant claim 9 is met by claim 10 of ‘839.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of ‘839 in view of Son, as applied to instant claim 1 above, and further in view of Tsunematsu et al. (WO-2019054478-A1), with reference to the included machine translation (hereinafter referred to as “Tsunematsu”).
With respect to instant claim 2, ‘839 fails to claim the instantly claimed particle size range. However, Tsunematsu teaches a near-infrared curable ink which may include composite tungsten oxide particles (see Tsunematsu at pg. 2, para. 9). Tsunematsu further teaches the composite tungsten oxide fine particles to have an average particle size ranging from 10 to 100 nm from the viewpoint of exhibiting more excellent infrared absorption characteristics (see Tsunematsu at pg. 6, para. 1). Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious to set the average particle diameter of the particles of modified ‘839 to range from 10 to 100 nm. One of ordinary skill in the art would have been motivated to do so in order to obtain particles with more excellent infrared absorption characteristics (see Tsunematsu at pg. 6, para. 1).
Conclusion
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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