DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is a CON of App No. 16/835,983, filed on 03/31/2020, now US Pat. No. 12,078,550 B2, which is entitled to and claims the benefit of priority to U.S. Provisional App. Nos. 62/908,986, filed 10/01/ 2019, and 62/827,715, filed 04/01/ 2019, respectively. The preliminary amendment filed on 07/13/ 2026 is entered and acknowledged by the Examiner.
3. Applicant’s election of Group I, claims 111,112,114,117-130 without traverse in the reply filed on 07/13/2026 is acknowledged.
4. Claims 111-130. Claims 111,112,114,117-130 are under examination on the merits. Claim 114 is previously amended. Claims 1-110 are previously canceled. Claims 113, 115-116 are withdrawn to a non-elected invention from further consideration.
Information Disclosure Statement
5. The information disclosure statement submitted on 09/17/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Drawings
6. The drawings are received on 09/03/2024. These drawings are acceptable.
Double Patenting
7. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
8. Claims 111-130 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of U.S. Patent No.12,078,550 B2 (hereinafter ”’550”). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘550 discloses a temperature sensor, comprising: a reversible thermochromic color-changing system comprising: a dye; a developer; and a solvent; wherein upon exposure to a preselected temperature threshold, association or disassociation of said dye and said developer results in a visible color change; wherein said color-changing system comprises a color-memory property which facilitates retention of said color change to record said exposure to said temperature threshold; and wherein said solvent comprises a mixture of (i) one ester having Formula I and a first R group and another said ester having Formula I and a second R group which is different from said first R group, (ii) one said ester having Formula III and another said ester having Formula IV, or (iii) one said ester having Formula VII and another said ester having Formula VIII:
Formula I
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wherein R in Formula I can be (i) a straight-chain or branched alkyl group, (ii) a straight-chain or branched alkenyl group, or (iii) a straight-chain or branched alkynyl group, wherein any of said groups can be unsubstituted or substituted; and
wherein R in Formula I can have 5, 7, 9, 11, 13, or 19 carbon atoms;
Formula III
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Formula IV
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Formula VII
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wherein m and n in Formula VII can each be an integer between 1 and 15; and
Formula VIII
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wherein m and n in Formula VIII can each be an integer between 2 and 15. ‘550 discloses The temperature sensor , wherein said coloration temperature differs from said decoloration temperature by between about 40 Celsius degrees to about 100 Celsius degrees. Given that a temperature sensor, comprising: a reversible thermochromic color-changing system in the instant application as presently read on a temperature sensor, comprising: a reversible thermochromic color-changing system as disclosed by ‘550 in the patent claims, it would have been obvious to one ordinary skill in the art that the scope of cited claims encompasses the scope of the patent claims, and thus, render the present claims prima facie obvious.
Claim Rejections - 35 USC § 102
9. 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.
10. Claims 111, 117-130 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Katsuyuki Fujita (US Pub. No.2004/0229754 A1, hereinafter “’754”).
Regarding claim 111: ‘754 discloses a temperature sensor (Page 1, [0001]), comprising: a reversible thermochromic color-changing system (Page 1, [00013]) comprising: a dye, a developer, and a solvent comprising an ester (Page 1, [0007]; Page 6, [0136], Example 1), wherein upon exposure to a preselected temperature threshold, association or disassociation of said dye and said developer results in a visible color change (Page 6, [0137], Example 1), wherein said color-changing system comprises a color-memory property which facilitates retention of said color change to record said exposure to said temperature threshold (Page 2, [0018], Fig. 1; Page 6, [0136]-[0137], Example 1).
Regarding claim 117: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said dye comprises a leuco dye which reversibly changes between a substantially colorless state and a visibly colored state (Page 2, [0018], Fig. 1; Page 6, [0136]-[0137], Example 1).
Regarding claim 118: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said color- changing system comprises: a coloration temperature at which said leuco dye changes to said colored state, and a decoloration temperature at which said leuco dye changes from said colored state, wherein said coloration temperature differs from said decoloration temperature (Page 2, [0018], Fig. 1,T1 is a complete coloring temperature, T2 is a coloring starting temperature, T3 is a decoloring starting temperature, T4 is a complete decoloring temperature, ΔH is a maximum hysteresis width).
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Regarding claim 119: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said color- changing system comprises: a coloration temperature at which said leuco dye changes to said colored state, and a decoloration temperature at which said leuco dye changes to said colorless state, wherein said coloration temperature differs from said decoloration temperature temperature (Page 2, [0018], Fig. 1,T1 is a complete coloring temperature, T2 is a coloring starting temperature, T3 is a decoloring starting temperature, T4 is a complete decoloring temperature, ΔH is a maximum hysteresis width).
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Regarding claim 120: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said coloration temperature is less than said decoloration temperature (Page 2, [0018], Fig. 1, T1 has a high color density an occur at lower temperature T2, which has a lower color density).
Regarding claim 121: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said coloration temperature differs from said decoloration temperature by at least about 40 Celsius degrees (Page 2, [0018], Fig. 1; Page 2, [0021]).
Regarding claim 122: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said coloration temperature differs from said decoloration temperature by at least about 45 Celsius degrees (Page 2, [0018], Fig. 1; Page 2, [0021]).
Regarding claim 123: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said coloration temperature differs from said decoloration temperature by at least about 50 Celsius degrees (Page 2, [0018], Fig. 1; Page 2, [0021]).
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Regarding claim 124: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said color- changing system is contained such that said dye, said developer, and said solvent are encapsulated together (Page 5, [0117]; Page 5, [0124]).
Regarding claim 125: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said color- changing system is encapsulated within a capsule to provide an encapsulated color-changing system (Page 5, [0117]; Page 5, [0124]).
Regarding claim 126: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said color- changing system is encapsulated within a microcapsule to provide a micro encapsulated color- changing system (Page 5, [0117]; Page 5, [0124]).
Regarding claim 127: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said color- changing system is incorporated into a coating (Page 5, [0124]).
Regarding claim 128: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said color- changing system is incorporated into an ink (Page 5, [0124]).
Regarding claim 129: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said ink is formulated for application to a substrate via printing (Page 5, [0124]-[0125]).
Regarding claim 130: ‘754 discloses the temperature sensor (Page 1, [0001]), wherein said ink is formulated for application to a substrate via medium-speed printing or high-speed printing (Page 5, [0124]-[0125]; Pages 5-6, [0132].
Claim Rejections - 35 USC § 103
11. 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.
12. Claims 112-114 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over
Katsuyuki Fujita (US Pub. No.2004/0229754 A1, hereinafter “’754”) as applied to claim 1 above, and further in view of Fujita et al. (JP 2006-188660 A, machine translation, hereinafter “’660”).
Regarding claims112-113: The disclosure of ‘754 is adequately set forth in paragraph 10 above and is incorporated herein by reference. ‘754 teaches the ester compound of component (C) to be used is an ester compound constituted from an alcohol compound having 2 aromatic rings in the molecule and a saturated or unsaturated fatty acid, having 4 or more carbon atoms (Page 4, [0109]). ‘754 does not expressly teach said ester comprises a diphenylmethyl ester, wherein said solvent comprises a mixture of two or more esters, and wherein said solvent comprises one said ester comprising a diphenylmethyl ester and another said ester comprising another diphenylmethyl ester.
However, ‘660 teaches a thermochromic color-memory composition and a microcapsule pigment comprises a homogeneously mixed material of (a) an electron-donating color-forming organic compound, (b) an electron-accepting compound, and (c) a compound represented by formula (1) as set forth as a reaction medium for controlling the color reaction of (a) and (b) (Page 4/23, Claim 1; Page 7/23, [0004]). ‘660 teaches specific examples of the ester compound of the component (c) includes 1,1-diphenylmethyl octanoate, 1,1-diphenylmethyl nonanoate, 1, 1-diphenylmethyl decanoate,1,1-diphenylmethyl undecanoate, 1,1-diphenylmethyl dodecanoate, 1,1-diphenylmethyl tridecanoate, 1,1-diphenylmethyl tetradecanoate, 1,1-diphenylmethyl pentadecanoate, 1,1-diphenylmethyl hexadecanoate, 1, 1-diphenylmethylhepta decanoate, 1,1-diphenylmethyl octadecanoate, 1, 1-diphenylmethyl nonadecanoate (Page 1/23, [0011]) with benefit of providing a hysteresis width as wide as or wider than that in the case of using an ester used in a conventional thermochromic color-memory composition, and specifically, the hysteresis width (ΔH) is 8 to 70 °C, and the wider hysteresis width (Δ H) is 40 to 70 °C. By having the above-described hysteresis width, it is excellent in a function capable of selectively holding any one of a color on a lower temperature side than the discoloration temperature and a color on a higher temperature side than the discoloration temperature, and is excellent in applicability to various uses (Page 13/23, [0012]).
In an analogous art of the temperature sensor, comprising: a reversible thermochromic color-changing system, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the solvent comprising an ester by ‘754, so as to include a diphenylmethyl ester, wherein said solvent comprises a mixture of two or more esters, and wherein said solvent comprises one said ester comprising a diphenylmethyl ester and another said ester comprising another diphenyl methyl ester as a solvent as taught by ‘660, and would have been motivated to do so with reasonable expectation that this would result in providing a larger hysteresis width which allows the use of inks at a greater variety of temperature as suggested by ‘660 (Page 13/23, [0012]).
Examiner Information
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
08/17/2026
bijan.ahvazi@uspto.gov
Prosecution Insights