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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/23/2024, 11/25/2025, 05/08/2026, and 07/30/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Applicant should note that the large number of references in the attached IDS(s) have been considered by the examiner in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. See MPEP 609.05(b). Applicant is invited to point out any particular reference(s) in the IDS that they believe may be of particular relevance to the instant claimed invention in response to this Office Action. It is desirable to avoid the submission of long lists of documents if it can be avoided. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff ’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
Claim Objections
Claim 12 is objected to because of the following informalities: in line 7, there is a period in the middle of the claim; for examination purposes, the period has been interpreted as a semicolon “;”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: the claim does not end in a period; for examination purposes, the end of claim will be interpreted to have a period. Appropriate correction is required.
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 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 respectively of U.S. Patent No. 11,650,473. Additionally, claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,050,390. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent claims anticipate the instant application claims. Note that in the tables provided below, the bolded text is a discrepancy of claim limitations, while italicized text is viewed to be a matter of form. The bolded text is only present in the reference patents, thus each and every limitation in the instant application’s claims are anticipated by the claims of the reference patents.
Instant application 18/781,514
Reference U.S. Patent 11,650,473
Claim number
Claim language
Claim number
Claim language
1.
An article
comprising: a reflector having a first surface,
a second surface opposite the first surface,
and a third surface;
and a first selective light modulator layer external to the first surface of the reflector;
wherein the third surface of the reflector is open,
wherein the article has an asymmetric layer structure.
1.
An article
comprising: a reflector having a first surface,
a second surface opposite the first surface,
and a third surface;
a first selective light modulator layer external to the first surface of the reflector;
a first absorber layer external to the first selective light modulator layer;
and a second selective light modulator layer external to the first absorber layer;
wherein the third surface of the reflector is open,
wherein the article has an asymmetric layer structure,
and wherein the first selective light modulator layer comprises a host material, a defoamer and i) an oxygen inhibition mitigation composition or ii) 3-Ethyl-3-hydroxymethyloxetane, the oxygen inhibition mitigation composition comprising at least one acrylate chosen from epoxy acrylates, polyester acrylates, polyether acrylates and urethane acrylates.
8.
The article of claim 1, further comprising a magnetic-containing layer having a first surface and a second surface opposite the first surface; wherein the reflector layer is external to the first surface of the magnetic-containing layer.
4.
The article of claim 1, further comprising a magnetic-containing layer having a first surface and a second surface opposite the first surface; wherein the reflector layer is external to the first surface of the magnetic-containing layer.
Instant application 18/781,514
U.S. Patent 12,050,390
Claim number
Claim language
Claim number
Claim language
1.
An article
comprising: a reflector having a first surface,
a second surface opposite the first surface,
and a third surface;
and a first selective light modulator layer external to the first surface of the reflector;
wherein the third surface of the reflector is open, wherein the article has an asymmetric layer structure.
1.
An article
comprising: a reflector having a first surface,
a second surface opposite the first surface,
and a third surface;
and a first selective light modulator layer external to the first surface of the reflector,
wherein the first selective light modulator layer includes alternating layers of non-absorbing materials and absorbing materials;
wherein the third surface of the reflector is open; and wherein the article is an asymmetric layer structure.
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.
Claims 1-4, 6-8, 10, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Raksha et al. (2004/0166308, of record.
Regarding claim 1, Raksha discloses an article (Figure 2, 40, flake, which includes 42, RMF, the structure of which is depicted in Figure 1) comprising: a reflector (27, first reflector layer) having a first surface (top surface of 27, first reflector layer), a second surface opposite the first surface (bottom surface of 27, first reflector layer), and a third surface (left hand side surface of 27, first reflector layer); and a first selective light modulator layer external to the first surface of the reflector (44, first dielectric layer); wherein the third surface of the reflector is open ([0044] teaches 20, RMF, is fractured and removed from the web to form a plurality of flakes, thus 29, contiguous layer, which is shown in phantom, is viewed to be optional, which would leave the left hand side surface of 27, first reflector layer, open), wherein the article has an asymmetric layer structure (Figure 2 depicts the layer structure is asymmetric in the interpretation that from the central 42, RMF layer, the layers are different going outwards in the top and bottom directions, if only one of the optional 52, first transparent overlayer coating, and 54, second transparent overlayer coating, is utilized; [0087]).
Regarding claim 2, Raksha discloses the article of claim 1, further comprising a first absorber layer external to the first selective light modulator layer; wherein the first absorber layer is partially absorbing (48, first absorber layer).
Regarding claim 3, Raksha discloses the article of claim 2, wherein the first selective light modulator layer is non-absorbing ([0054, 0057] teach the dielectric layer may be optionally clear).
Regarding claim 4, Raksha discloses the article of claim 2, further comprising a second light selective light modulator layer external to the first absorber layer (46, second dielectric layer); wherein the first selective light modulator layer is non-absorbing ([0054, 0057] teach the dielectric layer may be optionally clear), and the second light selective light modulator layer is absorbing ([0054, 0057] teach the dielectric layer may be selectively absorbing).
Regarding claim 6, Raksha discloses the article of claim 4, wherein the article is a pigment flake (at least Abstract).
Regarding claim 7, Raksha discloses the article of claim 1, further comprising a carrier layer (at least Abstract teaches the foils can be formed on a carrier substrate).
Regarding claim 8, Raksha discloses the article of claim 1, further comprising a magnetic-containing layer (22, magnetic layer) having a first surface (top surface of 22, magnetic layer) and a second surface opposite the first surface (bottom surface of 22, magnetic layer); wherein the reflector layer is external to the first surface of the magnetic-containing layer (Figure 1).
Regarding claim 10, Raksha discloses the article of claim 1, wherein the first selective light modulator layer comprises a host material, the host including at least one of an organic polymer, an inorganic polymer, and a composite material (at least [0060]).
Regarding claim 11, Raksha discloses the article of claim 10, wherein the first selective light modulator layer further comprises selective light modulator particles (SLMP), selective light modulator molecules (SLMM), additives, or a combination thereof ([0059-0060] teach materials that can be used for the dielectric layers, thus they necessarily contain the molecules/particles of these materials).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Raksha et al. (2004/0166308, of record in view of Phillips et al. (2003/0215641, of record).
Regarding claim 5, Raksha discloses the article of claim 4, but fails to teach wherein the article has an aspect ratio of 1:1 to 1:50 thickness to width. Raksha and Phillips are related because both teach an article.
Phillips teaches an article wherein the article has an aspect ratio of 1:1 to 1:50 thickness to width ([0104] teaches the aspect ratio of thickness to width to be 1:5-15, thus falling within the claimed range).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified Raksha to incorporate the teachings of Phillips and provide wherein the article has an aspect ratio of 1:1 to 1:50 thickness to width. Doing so would allow for improved brightness and reflectivity while maintaining desired dispersion in a medium.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Raksha et al. (2004/0166308, of record in view of Takano et al. (2006/0063004, of record).
Regarding claim 9, Raksha discloses the article of claim 1, but fails to teach a leafing agent in the form of a layer. Raksha and Takano are related because both teach an article.
Takano teaches an article comprising a leafing agent in the form of a layer (at least [0186] teaches a polymerizable monomer unit having alkyl fluoride groups which causes leafing due to strong water repellency).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified Raksha to incorporate the teachings of Takano and provide a leafing agent in the form of a layer. Doing so would allow for high brightness of the article.
Claims 12-14 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Raksha et al. (2004/0166308, of record in view of Saitoh et al. (2009/0322993, of record).
Regarding claim 12, as best understood, Raksha discloses a method for manufacturing an article (Figure 2, 40, flake, which includes 42, RMF, the structure of which is depicted in Figure 1) comprising: depositing a reflector layer (27, first reflector layer) on a substrate (at least Abstract teaches the foils can be formed on a carrier substrate), the reflector layer having a first surface (top surface of 27, first reflector layer), a second surface opposite the first surface (bottom surface of 27, first reflector layer), and a third surface (left hand side surface of 27, first reflector layer); and depositing a first selective light modulator layer external to the first surface of the reflector (44, first dielectric layer); wherein the third surface of the reflector is open ([0044] teaches 20, RMF, is fractured and removed from the web to form a plurality of flakes, thus 29, contiguous layer, which is shown in phantom, is viewed to be optional, which would leave the left hand side surface of 27, first reflector layer, open), wherein the article has an asymmetric layer structure (Figure 2 depicts the layer structure is asymmetric in the interpretation that from the central 42, RMF layer, the layers are different going outwards in the top and bottom directions, if only one of the optional 52, first transparent overlayer coating, and 54, second transparent overlayer coating, is utilized; [0087]).
Raksha fails to teach wherein the first selective light modulator layer is deposited using a liquid coating process. Raksha and Saitoh are related because both teach a method for manufacturing an article.
Saitoh teaches a method for manufacturing an article wherein the first selective light modulator layer is deposited using a liquid coating process ([0134-0135]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified Raksha to incorporate the teachings of Saitoh and provide wherein at least one of the first selective light modulator layer and the second selective light modulator layer is deposited using a liquid coating process. Doing so would allow for an efficient and reliable method to obtain an accurate sheet.
Regarding claim 13, the modified Raksha discloses the method of claim 12, further comprising depositing a first absorber layer external to the first selective light modulator layer, wherein the first absorber layer is partially absorbing (48, first absorber layer).
Regarding claim 14, the modified Raksha discloses the method of claim 13, further comprising depositing a second selective light modulator layer external to the first absorber layer (46, second dielectric layer), wherein the second selective light modulator is absorbing ([0054, 0057] teach the dielectric layer may be selectively absorbing).
Regarding claim 17, the modified Raksha discloses the method of claim 13, further comprising depositing a second selective light modulator layer (46, second dielectric layer).
Regarding claim 18, the modified Raksha discloses the method of claim 17, wherein the second selective light modulator layer is deposited using a liquid coating process (Saitoh: [0134-0135]).
Regarding claim 19, the modified Raksha discloses the method of claim 12, further comprising depositing between the substrate and the reflector layer a magnetic-containing layer (22, magnetic layer).
Regarding claim 20, the modified Raksha discloses the method of claim 19, further comprising depositing a first absorber layer (48, first absorber layer), wherein the first selective light modulator layer is non-absorbing ([0054, 0057] teach the dielectric layer may be optionally clear).
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Raksha et al. (2004/0166308, of record in view of Saitoh et al. (2009/0322993, of record) as applied to claim 12 above, and further in view of Phillips et al. (2003/0215641, of record).
Regarding claim 15, the modified Raksha teaches the method of claim 14, but fails to teach wherein the article has an aspect ratio of 1:1 to 1:50 thickness to width. The modified Raksha and Phillips are related because both teach a method of manufacturing an article.
Phillips teaches a method of manufacturing an article wherein the article has an aspect ratio of 1:1 to 1:50 thickness to width ([0104] teaches the aspect ratio of thickness to width to be 1:5-15, thus falling within the claimed range).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified Raksha to incorporate the teachings of Phillips and provide wherein the article has an aspect ratio of 1:1 to 1:50 thickness to width. Doing so would allow for improved brightness and reflectivity while maintaining desired dispersion in a medium.
Regarding claim 16, the modified Raksha discloses the method of claim 15, wherein the first selective light modulator layer is non-absorbing ([0054, 0057] teach the dielectric layer may be optionally clear).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BALRAM T PARBADIA whose telephone number is (571)270-0602. The examiner can normally be reached 9:00 am - 5:00 pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bumsuk Won can be reached at (571) 272-2713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BALRAM T PARBADIA/Primary Examiner, Art Unit 2872
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