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 .
Status of the Claims
A preliminary amendment was filed on 11/12/2024, including the cancelation of original claims 1-19 and amendments to paragraph [0001] of the specification. Since the preliminary amendment was filed after the filing date of the application, it will not be considered part of the original disclosure of the application. See MPEP 714.01(e). No new matter appears to have been added in accordance with MPEP § 608.04. Accordingly, claims 20-40 remain pending for prosecution.
Claim Rejections - 35 USC § 102
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 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 20, 22-23, 28-29, 31, 33, and 38-39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura (US PGP 2006/0019187 A1).
Nakamura teaches a toner including an infrared absorbent (corresponding to the claimed “identity-forming particles”) and an image forming apparatus having an electrophotographic image forming unit for forming a toner image on a recording medium with the electrophotographic toner, and a fixing unit for fixing the toner on the recording medium ([0014]-[0015]).
The infrared absorbent is taught to be dispersed (or dissolved) in the toner or adhered to or firmly fixed on the surface of the toner ([0062]). To firmly fix the infrared absorbent on the surface of the toner, a surface modification is taught to be used ([0063]).
In the examples, a toner composition including infrared absorbent including vanadylnaphthalocyanine and aminium as infrared absorbents was prepared ([0090]-[0091]). The toner was mixed with carrier particles and set in an image forming apparatus commercially available as “CF1100”. This image forming apparatus was taught to have xenon flash lamps as a fixing unit ([0095]-[0096]).
The image forming apparatus is taught to include a paper feeding roller which unrolls a rolled recording medium, a plurality of image forming units, and a fixing unit having flash lamps. Each image forming unit is taught to include a photoreceptor drum, an electrifier, an electrifier, a light exposure subunit, a developing subunit, and a cleaner around the photoreceptor ([0083], Fig. 1).
In another embodiment, invisible toner particles including the infrared absorbent, but excluding a colorant, are set in an image forming apparatus commercially available as “DOCUCENTRE 402FS” to form an invisible image on plain paper. This image forming apparatus was taught to have a heat roller as a heat fixing unit, rather than the xenon flash lamps fixing unit ([0105]). A bar code reader having a laser, an infrared ray-emitting diode serving as a light source, and a photodiode serving as a light receptor was used to read the invisible image made of the invisible toner including the infrared absorbent ([0106]-[0108]).
Claims 20, 22-23, 28-29, 31, 33, and 38-39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marinello et al. (US Patent No. 5,714,291).
Marinello teaches a method of preparing a laser printer or photocopier toner material for authentication comprising providing UV sensitive particles (corresponding to the claimed “identity-forming particles”) and mixing the toner with the UV sensitive particles, printing a document using the toner material and a laser printer or a photocopier, providing ultraviolet radiation to the document, and detecting the response of the document to the radiation (Col. 1, lines 40-67 and Col. 2, lines 1-2).
The laser printer is taught to include a photoconductive print drum and a fixing section including heating rollers where the paper and toner particles are passed through a fusing station causing the toner particles to securely attach to the paper (Col., 2, lines 16-67, Col. 3, lines 1-22, Fig. 1).
The UV sensitive particles are taught to include yttrium oxides and other rare earth metal lumiphores, fluorescent chemicals and brighteners, oxazoles, thiazoles, cumene, stilbenes, and their derivatives (Col. 4, lines 21-39). The UV sensitive particles are taught to be selected so that they have small submicron sizes, since toner particles are also submicron in size (Col. 5, lines 11-24).
In the examples, a method for making a document that can be authenticated is taught to include providing a toner material that fluoresces in response to UV radiation, printing a document using the laser printer or photocopier, and authenticating the toner image using a scanner to detect the response of the document to UV radiation in order to authenticate the document (Col. 5, lines 47-63).
Claims 20, 22-23, 28-31, 33, and 38-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaiser et al. (US Patent No. 6,501,825 B2).
Kaiser teaches a computer system including a printer where a taggant (corresponding to the claimed “identity-forming particles”) is incorporated into the printed document by mixing a taggant with ink (toner). The printer is taught to include conventional printers like electrophotographic printers, electrosensitive printers, electrostatic printers, ink-jet printers, and the like (Col. 8, lines 9-59).
The taggant is taught to include any suitable taggant known in the art, including ultraviolet and infrared fluorescent taggants (Col. 3, lines 21-42). The taggant is taught to be useful in establishing the authenticity of documents and currency (Col. 6, lines 22-36). The use of x-ray fluorescence analysis, the apparatus, and the methods of forming the toner composition with the taggant is taught to be advantageous because it is difficult to replicate and can be easily verified by a manufacturer or issuer (Col. 2, lines 6-15).
In the examples, toner cartridge was prepared by adding and mixing ZrO2 as a taggant to toner in a toner cartridge (Col. 13, lines 21-29). Next, a document was prepared and printed using the computer system and a laser printer. Then, a detection apparatus using a computerized system was then used to analyze the document using XRF analysis where a prominent peak was present for the Zr taggant (Col. 11, lines 49-61 and Col. 13, lines 30-38).
Claims 31, 33, and 38-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mei et al. (US Patent No. 7,394,997 B2).
Mei teaches an article of manufacture with anti-counterfeit properties including a consumable, a plurality of taggant nanoparticles (corresponding to the claimed “identity-forming particles”) dispersed within the consumable, where the plurality of taggant nanoparticles provides at least two different physical characteristics of at least two different categories as a taggant code encoding product identification for the consumable so as to permit identification of the consumable (Col. 2, lines 26-38).
A method for tagging and automatically identifying consumable printer ink including toner materials is taught to include mixing the taggant nanoparticles with the ink and filling printer cartridges with the blended ink (Col. 5, lines 33-45). The printer is taught to include a printer controller having a taggant identification apparatus which uses an interrogator to shine preselected particular wavelengths of light on the printer cartridge, exciting any fluorescent taggants present in the ink (Col. 5, lines 52-62). Suitable inks are taught to include inkjet ink, electrophoretic ink and dry toner powder (Col. 6, lines 1-9).
Signals from the scanning circuitry of the detector are taught to be processed by a microprocessor subsystem to recognize and measure spectral peaks in light received from the ink and are used to extract the taggant code (Col. 6, lines 10-26). The method and apparatus are taught to be adaptable to include an arbitrary number and type of taggants (Col. 7, lines 24-30).
Claims 20-23, 28-33, and 38-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gaathon et al. (US PGP 2019/0095668 A1).
Gaathon teaches a method of manufacturing an object and obtaining unique code from object elements (corresponding to the claimed “identity-forming particles”). The unique code is taught to be generated for the object based on orientation information using a scanner system that extracts the element information and a computer system that generates the unique code from the element information. The object elements are taught to include diamond particles having one or more color centers (Abstract, [0084], Fig. 14). The diamond particles are taught to have sizes that are one or more orders of magnitude smaller than the object, including having largest dimensions on the order of nanometers ([0110]). However, Gaathon appears to be silent to teach or suggest a specific range for the size of the diamond particles.
The distribution of the diamond particles is taught to be controlled by a highly complex, random or quasi-random process, which makes it difficult or impractical to clone or duplicate in the manufacturing of another object ([0113]). Therefore, Gaathon appears to be silent to teach or suggest selecting a target weight percentage of the diamond particles to be within a particular amount.
The manufacturing of the object is taught to include printing using a composition that absorbs green light and fluoresces at wavelengths similar to the nitrogen-vacancy center in the diamond particles ([0037]). Specifically, the diamond particles are taught to be distributed on the surface of the object by mixing the diamond particles into toner or ink (e.g., in a printer cartridge) and printing the toner or ink material on the object. The toner or ink material is taught to be of the type that is typically used in ink-jet printers, laser printers, and the like. The toner or ink material is taught to be printed on paper, fabric, or other material that forms all or part of the object by a conventional printer (e.g., an electrostatic printer) or another type of system ([0080]).
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.
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.
Claims 21 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Kaiser et al. (US Patent No. 6,501,825 B2), in view of Gaathon et al. (US PGP 2019/0095668 A1).
The teachings of Kaiser and Gaathon are discussed above and incorporated herein. Kaiser appears to be silent to teach or suggest that the taggant includes diamond particles. However, as discussed above, Kaiser teaches that the taggant can be any suitable taggant known in the art.
According to MPEP § 2123, “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).”
As discussed above, Gaathon teaches the use of diamond particles as object elements, which function as taggants when mixed with a toner or ink composition. The composition of the diamond particles is taught to make it sufficiently unlikely for a printed object to be replicated, improving the ability for the object’s authenticity to be validated ([0025]-[0026]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have used the diamonds particles of Gaathon as the taggant in Kaiser, in view of improving the ability for the printed document’s or currency’s authenticity to be validated.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Mei et al. (US Patent No. 7,394,997 B2), in view of Gaathon et al. (US PGP 2019/0095668 A1).
The teachings of Mei and Gaathon are discussed above and incorporated herein. Mei appears to be silent to teach or suggest that the taggant nanoparticles include diamond particles. However, Mei teaches that the taggant can be arbitrarily selected for its intended properties, including size, shape, infrared fluorescence, ultraviolet fluorescent, reflectance, and magnetic properties (Col. 3, lines 15-35).
According to MPEP § 2123, “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).”
As discussed above, Gaathon teaches the use of diamond particles, including those having a size on the order of nanometers, as object elements which function as taggants when mixed with a toner or ink composition. The composition of the diamond particles is taught to make it sufficiently unlikely for an object to be replicated, improving the ability for the object’s authenticity to be validated ([0025]-[0026]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have used the diamonds particles of Gaathon as the taggant nanoparticles in Mei, in view of improving the ability for the ink’s or dry toner powder’s authenticity to be validated.
Allowable Subject Matter
Claims 24-27 and 34-37 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pre-Grant Publication 2015/0060699 A1 to Janoff teaches an authentication system for products employing populations containing particles of diamonds that have fluorescent emissions of various wavelengths, intensities, and durations (Abstract). The diamond particles area taught to be combined with various products including pharmaceutical products, textiles, inks, paint, currency, cosmetics, luxury items, fragrances, or food ([0018]). The inclusion of the diamond particles in ink is taught to be used to identify the packaging of goods as trademarked ([0056]).
However, Janoff is silent to teach a method or system of printing a toner or ink including the diamond particles using an electrostatic image forming apparatus.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Boone A Evans whose telephone number is (571)272-1420. The examiner can normally be reached Monday - Friday: 9:00 AM - 6:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BOONE ALEXANDER EVANS/Examiner, Art Unit 1737
09/24/2026
