DETAILED ACTION
Claims 69 – 75 are pending in the present application.
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 .
Claim Objections
Claim 74 is objected to because of the following informalities: in the second to last and last line “about 0.25 to about I weight percent of a flow agent” the “I” is a type-O and should be “1” or the like.
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 69-73 and 75 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, 17 and 21 of U.S. Patent No. 12,123,858 in view of Ribi (US 20140106963).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim set is obvious over the examined claims in view of the Ribi reference as follows:
Regarding instant claim 69:
A composition for making a precursor TTI device comprising at least one binder (see patented claim 1, preamble and 1st indent),
particles of at least one thermally inactive diacetylene (see patented claim 1, 1st indent and 3rd indent “the diacetylene is inactive thermally”),
and
one or more additives selected from the group of a UV absorber, a melting point depressor, a nucleating agent, a release agent and opaque particles (see patented claim 1, 1st indent – at least a UV absorber).
The patented claim set does not limit by an organic solvent or water.
However, Ribi teaches compositions with diacetylenic compounds ([0072] with [0073-91] listing such compounds) which have an organic solvent or water ([0176] “Solvents can include, but are not limited to aqueous solvents, organic solvents …”).
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the patented claim set with the knowledge of using the organic solvent or water as taught by Ribi. This is because such solvents are a known portion of “a co-developer/solvent” compounds ([0107] of Ribi) and it has been held that omission of an element (here solvent from the patented claim set) and its function in a combination where the remaining elements perform the same functions as before (TTI composition) involves only routine skill in the art (see MPEP 2144.04-II-A/B.)
Regarding instant claims 70-72:
70. The composition of claim 69 (see treatment of claim 69 above) which is made by heating the composition to dissolve the thermally inactive diacetylene and cooling to a lower temperature to crystallize the diacetylene (see patented claim 17) or by milling the particles of the diacetylene (see patented claim 8).
71. The composition of claim 69 (see treatment of claim 69 above) which is made by milling the particles of diacetylene with or without one or more of additives selected from a binder, UV absorber, a melting point depressor and a nucleating agent (see patented claim 8 – milling without additives).
72. A process of making a visitor's badge composed of a substrate having thereon a thermally printable layer and a layer of the composition of claim 69 (see treatment of claim 69 above; see claim 21 regarding thermally printing a visitor’s badge).
Regarding instant claim 73:
A precursor TTI composition comprising at least one inactive diacetylene (see patented claim 1, 1st indent and 3rd indent “the diacetylene is inactive thermally”) and at least one binder (see patented claim 1, preamble and 1st indent).
The patented claim set does not limit specifically by a toner (do see claims 15 and 21 depending from claim 1 limiting by a thermal printer).
However, Ribi teaches compositions with diacetylenic compounds ([0072] with [0073-91] listing such compounds) are known to be useful in “toners” ([0209]).
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the patented claim set with the knowledge of using the compound in a toner as taught by Ribi. This is because such toners are a known to use the colorant/ diacetylenic compounds and it has been held that omission of an element (here toner from the patented claim set) and its function in a combination where the remaining elements perform the same functions as before (TTI composition for thermal printing) involves only routine skill in the art (see MPEP 2144.04-II-A/B.)
Regarding instant claim 75:
75. A TTI toner device made by melting and cooling a layer of composition of claim 73 on a substrate (see treatment of claim 73 above; see claims 15, 17 and 21 regarding thermally printing and melting/cooling).
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.
Claims 69-75 are rejected under 35 U.S.C. 103 as being unpatentable over Ribi (US 20140106963) in view of Patel (US 4276190).
Regarding claim 69, Ribi teaches a composition (abstract) for making a precursor TTI device (see at least [0163] teaching applications for the composition include at least “high temperature/time indication, medium temperature/time indication, low temperature/time indication”; see also [0166]; [0177] and [0191-192]) comprising at least one binder ([0177-179] teaches that the “time-temperature indicating system” [0177] may have tackifiers/adhesives including binders and that “Polymeric binders of the adhesive” [0178] may include a variety of listed polymers [0178-179]), particles of at least one diacetylene ([0072] – see also [0073-91] listing numerous exemplary diacetylenic compounds), an organic solvent or water ([0176] “Solvents can include, but are not limited to aqueous solvents, organic solvents …”) and one or more additives selected from the group of a UV absorber, a melting point depressor, a nucleating agent, a release agent and opaque particles (see at least [0172] teaches regarding using polyacrylic acids as additives for “melting point characteristics” modification; [0136] teaches additive “control release agent in pharmaceuticals” and [0120] teaches particle coating).
Ribi does not directly state that the diacetylene is specifically thermally inactive.
However, Patel teaches regarding a thermally inactive form of a diacetylene compound (abstract; see also col. 5, ¶ at 21 teaching that “The inactive form is unreactive to polymerization upon thermal annealing”) known to be useful for time-temperature indication (see at least abstract and all throughout the summary).
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the diacetylene compounds/compositions for TTIs of Ribi with the knowledge of using the specifically thermally inactive diacetylene compounds for TTIs of Patel. This is because such thermally inactive diacetylene compounds allow for preventing color change prior to activation (abstract of Patel). This is important in order to provide desired end user functionality such as storage without activation and then activation for measurement when desired (see at least example 14, starting on col. 13 of Patel).
Further, while the citations above are to the specific portions of the prior art that Examiner felt were most pertinent the documents are large (at least 383 paragraphs including a number of large tables for Ribi and at least at least 16 columns and at least nine tables for Patel) and the entire disclosure of the Ribi (US 20140106963) and Patel (US 4276190) publications are cited broadly for all they teach (see MPEP 2123 stating that references “are part of the literature of the art, relevant for all they contain.”)
Regarding claim 70, Ribi teaches regarding the composition of claim 69 (see treatment of claim 69 above) which is made by heating the composition to dissolve the thermally inactive diacetylene and cooling to a lower temperature to crystallize the diacetylene or by milling the particles of the diacetylene ([0119-120] teaches that the diacetylenic monomers may be microencapsulated -[0119]- and that the microencapsulation process is by “mechanical or physical processes including, but not limited to … milling processes” –[0120]; see [0351] teaching further that the color formers are known to be milled – see at least [0128] teaching that a diacetylenic composition is a known color former).
Regarding claim 71, Ribi teaches regarding the composition of claim 69 (see treatment of claim 69 above) which is made by milling the particles of diacetylene ([0119-120] teaches that the diacetylenic monomers may be microencapsulated -[0119]- and that the microencapsulation process is by “mechanical or physical processes including, but not limited to … milling processes” –[0120]; see [0351] teaching further that the color formers are known to be milled – see at least [0128] teaching that a diacetylenic composition is a known color former) with or without one or more of additives selected from a binder, UV absorber, a melting point depressor and a nucleating agent (please note that “with or without” covers all possibilities via binary choice and as such is not considered to further limit; however see [0119] which teaches that “diacetylenic monomers … and the like can be microencapsulated alone or in combination with the active optical change agents describe herein”).
Regarding claim 72, Ribi teaches a process of making a visitor's badge ([0163] Applications include, but are not limited … security badges; see also “H.” between [0339] and [0340] as well as [0340-341]) composed of a substrate having thereon a thermally printable layer ([0340-341] teaches a security badge printed on “paper and film stocks” in view of [0209] which teaches adding additives to form “toners” of the color formers – please note that toners are used in thermal printers- see [0343] “The security badge can be directly thermally printed with visitor, date, time, and intended information using a digital thermal printer”; see also [0276]) and a layer of the composition of claim 69 (see treatment of claim 69 above).
Regarding claim 73, Ribi teaches a precursor TTI toner composition (abstract; [0163]; see also [0166]; [0177] and [0191-192] as well as [0209] which teaches adding additives to form “toners” of the color formers) comprising at least one diacetylene ([0072] – see also [0073-91] listing numerous exemplary diacetylenic compounds) and at least one binder ([0177-179] teaches that the “time-temperature indicating system” [0177] may have tackifiers/adhesives including binders and that “Polymeric binders of the adhesive” [0178] may include a variety of listed polymers [0178-179]).
Ribi does not directly state that the diacetylene is specifically inactive.
However, Patel teaches regarding an inactive form of a diacetylene compound (abstract) known to be useful for time-temperature indication (see at least abstract and all throughout the summary).
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the diacetylene for a precursor TTI toner composition of Ribi with the knowledge of using the specifically inactive diacetylene compounds for TTIs of Patel. This is because such inactive diacetylene compounds allow for preventing color change prior to activation (abstract of Patel). This is important in order to provide desired end user functionality such as storage without activation and then activation for activities such as thermal printing when desired.
Further, while the citations above are to the specific portions of the prior art that Examiner felt were most pertinent the documents are large (at least 383 paragraphs including a number of large tables for Ribi and at least at least 16 columns and at least nine tables for Patel) and the entire disclosure of the Ribi (US 20140106963) and Patel (US 4276190) publications are cited broadly for all they teach (see MPEP 2123 stating that references “are part of the literature of the art, relevant for all they contain.”)
Regarding claim 74, Ribi lacks direct and specific teaching regarding the precursor TTI toner composition of claim 73 comprising from about 50 to about 95 weight percent of the binder, about 2 to about 50 weight percent of the inactive diacetylene, about 0 to about 6 weight percent of a wax, about 0 to about 3 weight percent charge control agent, about 0.25 to about I weight percent of a flow agent and 0 to about 1 weight percent other additives.
However, Ribi does disclose binder weight percentages (see at least [0172]); diacetylene / colorant weight percentages (see at least [0107]); wax weight percentages (see at least [0271]); flow / viscosity additive weight percentages (see at least [0255] in view of [0184]); and other additive weight percentages (see at least [0109]) as well as both teaching regarding toner and thermal printing (see at least [0209] for toner and [0237], [0276] and [0342-349] regarding thermal printing).
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the substantial teaching regarding these additive weight percentages for the composition and the knowledge of toner and thermal printing of Ribi with the specific ranges as claimed here. This is because it has been held that where the general conditions of a claim are disclosed in the prior art (toner and composition with voluminous weight percentages), discovering the optimum or workable ranges involves only routine skill in the art (MPEP 2144.05 (II-A).
Further, while the citations above are to the specific portions of the prior art that Examiner felt were most pertinent the document is large (at least 383 paragraphs including a number of large tables for Ribi) and the entire disclosure of the Ribi (US 20140106963) publication is cited broadly for all they teach (see MPEP 2123 stating that references “are part of the literature of the art, relevant for all they contain.”)
Regarding claim 75, Ribi teaches a TTI toner device made by melting and cooling a layer (see at least [0163] teaching that applications include, but are not limited … security badges; see also “H.” between [0339] and [0340] as well as [0340-341] teaching printing, in view of [0209] teaching adding additives to form “toners” of the color formers – please note that toners are used in thermal/laser printers which melt and cool a layer of toner to form the printing; see [0343] “The security badge can be directly thermally printed with visitor, date, time, and intended information using a digital thermal printer”; see also [0237]; [0276]; [0343] and [0345]; see further Patel at col. 1, ¶ at 36 teaching “an inactive diacetylene is converted by melt or solvent recrystallization to an active form” is known) of composition of claim 73 (see treatment of claim 73 above) on a substrate ([0340-341] teaches the security badge is printed on “paper and film stocks”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
See especially:
Ivory (US 4298348 A); abstract and col. 3, ¶ at 63 and on to col. 4 as well as claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP COTEY whose telephone number is (571)270-1029. The examiner can normally be reached M-F 9-5.
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/PHILIP L COTEY/ Examiner, Art Unit 2855
/LAURA MARTIN SWEENEY/ Supervisory Patent Examiner, Art Unit 2855
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