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
Claims 13, 15-18, 20-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election of Group I, claims 1, 4-10 was made without traverse in the reply filed on June 23, 2026.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4-5, 7-8 is/are rejected under 35 U.S.C. 102(a1 and a2) as being
anticipated by KR20170115797.
Regarding claims 1 and 4: ‘797 teaches a glass article comprising a glass substrate having first and second opposing major surfaces and an opaque ink layer on the second major surface (Figures, 0055).
The layer comprises a UV curable (photocurable) ink (abstract) comprising a content of pigment as claimed (0028, Examples) and the layer has a thickness and OD as claimed (0060, 0062, Examples, 0134).
Note that the claim only positively recites the layer as just a layer and never actually positively recites the layer being a cured layer. As such, the limitation “after curing via exposure to curing light from a UV LED, the opaque layer exhibits….” as well as the properties following are considered all conditional in which the prior art product only needs to have the features/properties “when” treated similarly.
In the instant case, given that ‘797’s article is the same as claimed, and in comparing Applicants’ disclosure with that of ‘797’s both appear to include substantially similar components and contents of components in their layer, one skilled in the art would expect ‘797 to result in the same features/properties when treated cured similarly (MPEP 2112).
However, the Examiner would like to note for the record that ‘797 does teach that after curing their layer via UV LED, the layer has a pencil hardness of greater than 3H when measured according to ASTM 336 and an adhesion to the glass of greater than 4B when tests according to ASTM 3359 (see 0064, 0130-0131). Regarding the adhesion value after being subjected to a certain temperature and humidity, note that given that ‘’797’s article is the same as claimed, it would be expected to result in the same adhesion properties after being subjected to the same temperature and humidity conditions (MPEP 2112).
Regarding claim 5: ‘797’s ink is free of the materials listed (entire disclosure, Examples).
Regarding claim 7: Given that ‘797’s article is the same as Applicants for reasons above, it would be expected to result in the same surface tension properties upon curing (MPEP 2112).
Regarding claim 8: Given that ‘797’s article is the same as Applicants for reasons above, it would be expected to result in the same properties when measured as claimed (MPEP 2112).
Claim(s) 1, 4-5, 7-8 is/are rejected under 35 U.S.C. 102(a1 and a2) as being
anticipated by USPN10,723,900
Regarding claims 1 and 4: ‘900 teaches a glass article comprising a glass substrate panel which will have first and second opposing major surfaces and an opaque ink layer on the second major surface (Col. 1, Col. 2, lines 61-62, Examples, ‘900’s claims).
The layer comprises a UV curable (photocurable) ink (abstract) can comprise a content of pigment as claimed (Col. 3, lines 56-65, Col. 5, lines 52-60) and the layer has a thickness and OD as claimed (Col. 3, lines 34-35, Col. 5, lines 29-34, Table 2).
As previously mentioned, the claim only positively recites the layer as just a layer and never actually positively recites the layer being a cured layer. As such, the limitation “after curing via exposure to curing light from a UV LED, the opaque layer exhibits….” as well as the properties following are considered all conditional in which the prior art product only needs to have the features/properties “when” treated similarly.
In the instant case, given that ‘900’s article is the same as claimed, and in comparing Applicants’ disclosure with that of ‘900’s both appear to include substantially similar components and contents of components in their layer, one skilled in the art would expect ‘900 to result in the same features/properties when treated cured similarly (MPEP 2112).
However, the Examiner would like to note for the record that ‘900 does teach that after curing their layer via UV LED, the layer has a pencil hardness of greater than 3H when measured according to ASTM 336 and an adhesion to the glass of greater than 4B when tests according to ASTM 3359 (Col. 5, lines 35-40, Col. 7, lines 49-54, Table 2). Regarding the adhesion value after being subjected to a certain temperature and humidity, note that given that ‘900’s article is the same as claimed, it would be expected to result in the same adhesion properties after being subjected to the same temperature and humidity conditions (MPEP 2112).
Regarding claim 5: ‘900’s ink is free of the materials listed (entire disclosure, Examples).
Regarding claim 7: Given that ‘900’s article is the same as Applicants for reasons above, it would be expected to result in the same surface tension properties upon curing (MPEP 2112).
Regarding claim 8: Given that ‘900’s article is the same as Applicants for reasons above, it would be expected to result in the same properties when measured as claimed (MPEP 2112).
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by
(KR20170115797) as evidenced by (USPub20140035995) or, in the alternative, under 35 U.S.C. 103 as obvious over (KR20170115797) in view of (USPub20120207935).
Regarding claim 6: As discussed above, ‘797 teaches the invention of claim 1. While ‘797 may not explicitly disclose their particle size, note that ‘797’s photocurable ink is an inkjet ink. Given that ‘995 explicitly states that in traditional inkjet inks, particle size much be less than 100nm (0005), one skilled in the art would reasonably conclude a particle size as claimed to be implicit within ‘797.
Alternatively, again note that ‘797’s photocurable ink is an inkjet ink.
As ‘935, from the same field of endeavor of photocurable inkjet inks, discloses that pigments in such inks should have a size as small as possible to enable stable dispersion of the particles and to prevent clogging of the ink channels in an ink jet printer and a desirable size range is 0.001-0.3micron (1-300nm) (0094), it would have been obvious to one having ordinary skill at the time of invention to modify ‘797 to include their pigment being 0.001-0.3micron (1-300nm), which overlaps the claimed range (MPEP 2144.05), in order to make the size as small as possible to enable stable dispersion of the particles and to prevent clogging of the ink channels in an ink jet printer.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated
by (KR20170115797) or, in the alternative, under 35 U.S.C. 103 as obvious over (KR20170115797) in view of (WO2020205519).
Regarding claims 9 and 10: Given that ‘797’s article is the same as claimed, it would be expected to result in the same properties when illuminated as claimed (MPEP 2112).
Alternatively, note that ‘797’s ink is a black pigmented ink for the surfaces of displays, etc.
As ‘519, who similarly teaches black pigmented ink for the surfaces of displays, etc., teaches that it is desirable in the art to make the CIELAB a* and b* <1 and the L* <30 for color neutrality (0017, 0027), it would have been obvious to one having ordinary skill at the time of invention to modify ‘797 to include making their article have a CIELAB a* and b* <1, overlapping the ranges claimed (MPEP 2144.05), and the L* <30 for color neutrality.
Claim(s) 6 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by
(USPN10,723,900) as evidenced by (USPub20140035995) or, in the alternative, under 35 U.S.C. 103 as obvious over (US10723900) in view of (USPub20120207935).
Regarding claim 6: As discussed above, ‘900 teaches the invention of claim 1. While ‘900 may not explicitly disclose their particle size, note that ‘900’s photocurable ink is an inkjet ink. Given that ‘995 explicitly states that in traditional inkjet inks, particle size much be less than 100nm (0005), one skilled in the art would reasonably conclude a particle size as claimed to be implicit within ‘900.
Alternatively, again note that ‘900’s photocurable ink is an inkjet ink.
As ‘935, from the same field of endeavor of photocurable inkjet inks, discloses that pigments in such inks should have a size as small as possible to enable stable dispersion of the particles and to prevent clogging of the ink channels in an ink jet printer and a desirable size range is 0.001-0.3micron (1-300nm) (0094), it would have been obvious to one having ordinary skill at the time of invention to modify ‘900 to include their pigment being 0.001-0.3micron (1-300nm), which overlaps the claimed range (MPEP 2144.05), in order to make the size as small as possible to enable stable dispersion of the particles and to prevent clogging of the ink channels in an ink jet printer.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated
by (USPN10723900) or, in the alternative, under 35 U.S.C. 103 as obvious over (USPN10723900) in view of (WO2020205519).
Regarding claims 9 and 10: Given that ‘900’s article is the same as claimed, it would be expected to result in the same properties when illuminated as claimed (MPEP 2112).
Alternatively, note that ‘900’s ink is a black pigmented ink for the surfaces of displays, etc.
As ‘519, who similarly teaches black pigmented ink for the surfaces of displays, etc., teaches that it is desirable in the art to make the CIELAB a* and b* <1 and the L* <30 for color neutrality (0017, 0027), it would have been obvious to one having ordinary skill at the time of invention to modify ‘900 to include making their article have a CIELAB a* and b* <1, overlapping the ranges claimed (MPEP 2144.05), and the L* <30 for color neutrality
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, 4-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,473,446. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap in scope.
Claims 1, 4-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 21-32 of copending Application No. 18/766940 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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