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 entitled to and claims the benefit of priority of KR Patent App. No. 10-2023-0181831, filed 12/14/2023. The preliminary amendment filed on 11/21/2024 is entered and acknowledged by the Examiner.
3. Claims 1-19 are pending. Claims 1-19 are under examination on the merits.
Information Disclosure Statement
4. The information disclosure statements submitted on 01/16/2026, and 04/19/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Drawings
5. The drawings are received on 11/21/2024. These drawings are acceptable.
Priority
6. Acknowledgment is made of applicant's claim for foreign priority based on an application filed 12/14/2023. However, that applicant has not filed a certified copy of the application 10-2023-0181831 as required by 35 U.S.C. 119(b).
Claim Rejections - 35 USC § 102
7. 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.
8. Claims 1-4, 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miletto et al. (Bright photoluminescent hybrid mesostructured silica nanoparticles, Phys. Chem. Chem. Phys., 2012,14,10015–10021, hereinafter “Miletto”).
Regarding claims 1-4: Miletto discloses an absorbent comprising a cation represented by 1,1’-di-propyltrimethoxysilil-3,3,3’,3’-tetramethyl indocarbocyanines (I3Si) as shown below corresponding to the instant absorbent comprising a cation represented by Formula 1 (Page 10016, Scheme 1).
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Regarding claims 7-8: Miletto discloses the absorbent comprising a cation represented by 1,1’-di-propyltrimethoxysilil-3,3,3’,3’-tetramethyl indocarbocyanines (I3Si) as shown above corresponding to the instant absorbent comprising a cation represented by Formula 1 (Page 10016, Scheme 1). Miletto is silent regarding the absorbent exhibits an absorption maximum within a wavelength range of 600 nm to 950 nm, and wherein a 5% thermal decomposition temperature of the absorbent is 190 °C or higher.
However, since Miletto discloses the identical or substantially identical absorbent comprising a cation represented by 1,1’-di-propyltrimethoxysilil-3,3,3’,3’-tetramethyl indocarbocyanines (I3Si) as shown above corresponding to the instant absorbent comprising a cation represented by Formula 1 as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. absorption, and thermal decomposition temperature, would inherently/ implicitly be achieved by Miletto’s absorbent (i.e., the absorbent exhibits an absorption maximum within a wavelength range of 600 nm to 950 nm, and a 5% thermal decomposition temperature of the absorbent is 190 °C or higher). If there is any difference between the product of Miletto and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
Claim Rejections - 35 USC § 103
9. 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.
10. Claims 5-6 are rejected under 35 U.S.C. 103(a) is being unpatentable over Miletto et al. (Bright photoluminescent hybrid mesostructured silica nanoparticles, Phys. Chem. Chem. Phys., 2012,14,10015–10021, hereinafter “Miletto”) in view of Zheng et al. (US Pub. No. 2008/0095699 A1, hereinafter “Zheng”).
Regarding claims 5-6: Miletto teaches an absorbent comprising a cation represented by 1,1’-di-propyltrimethoxysilil-3,3,3’,3’-tetramethyl indocarbocyanines (I3Si) as shown below corresponding to the instant absorbent comprising a cation represented by Formula 1 (Page 10016, Scheme 1).
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Miletto does not expressly teach the absorbent, wherein the cation is represented by Formula 2 and Formula 3, wherein R₉ and R₁₀ in Formula 2 are the substituents in Formula 3.
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However, Zheng teaches a nanoparticle comprising a. a hydrophobic dye with a first silane moiety and b. a copolymer which is comprised of i. a hydrophilic block and ii. a hydrophobic block with a second silane moiety cross-linked to the first silane moiety, wherein c. the dye is immobilized in the hydrophobic block, and wherein d. the copolymer self-assembles to form a nanoparticle when disposed in an aqueous medium such that the hydrophobic block defines a core region of the nanoparticle and the hydrophilic block defines an exterior region of the nanoparticle (Page 3, [0023]. Page 28, Claim 1), wherein example of fluorescent dyes is
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wherein R1', R2', R3', R4', R5', R6', R7', R8', and R9' are each independently selected from the group consisting of H, and at least one of R1', R2', R3', R4', R5', R6', R7', R8', and R9' can be further reacted to form a silane moiety (Page 9, [0068]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000).
11. Claims 1-19 are rejected under 35 U.S.C. 103(a) is being unpatentable over Daifuku et al. (US Pub. No. 2023/0340269 A1, hereinafter “Daifuku”) in view of Miletto et al. (Bright photoluminescent hybrid mesostructured silica nanoparticles, Phys. Chem. Chem. Phys., 2012,14,10015–10021, hereinafter “Miletto”).
Regarding claims 1-6,9-10: Daifuku teaches a near-infrared absorbing composition (Page 1, [0001]) comprising an organic dye, and a metal compound (Page 1, [0018]). The organic dye includes: at least one of a squarylium dye (A) or a cyanine dye (B) each having an absorption maximum in a range of 680 to 740 nm (Page 1, [0019]) and a cyanine dye (C) having an absorption maximum at 760 nm or higher as shown below (Page 1, [0020]; Page 3, [0033]). Daifuku teaches the near-infrared absorbing film having the single-layer configuration is formed by a coating solution prepared by adding a matrix resin to the near-infrared absorbing composition is applied onto a substrate by spin coating or a wet coating method using a dispenser (Page 46, [0322]), wherein polysiloxane that can be used as the matrix resin of the near-infrared-absorbing film is available as a commercial product. Examples thereof include KR-255, KR-300, KR-2621-1, KR-211, KR-311, KR-216, KR-212, and KR-251, which are silicone resin manufactured by Shin-Etsu Chemical Co., Ltd. (Page 46, [02325]). Daifuku does not expressly teach an absorbent comprising a cation having a silane moiety linked to N group.
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However, Miletto teaches an absorbent comprising a cation represented by 1,1’-di-propyltrimethoxysilil-3,3,3’,3’-tetramethyl indocarbocyanines (I3Si) as shown below corresponding to the instant absorbent comprising a cation represented by Formula 1 (Page 10016, Scheme 1) with benefit of providing incorporation of functionalized fluorescent cyanine dyes with organosilane into the channels of MCM-41 mesoporous silica by physical adsorption and covalent grafting to produce bright photoluminescent mesostructured silica nanoparticles (Page 10015, Abstract, lines 1-4; Page 10018, Fig. 2).
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In an analogous art of curable composition for an optical filter, 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 cyanine dye by Daifuku, so as to include an absorbent comprising a cation having a silane moiety linked to N group as taught by Miletto, and would have been motivated to do so with reasonable expectation that this would result in providing to incorporate of functionalized fluorescent cyanine dyes with organosilane into the substrate by physical adsorption and covalent grafting as suggested by Miletto (Page 10015, Abstract, lines 1-4; Page 10018, Fig. 2).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
cyanine dyes) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claims 7-8: The disclosure of Daifuku in view of Miletto is adequately set forth in paragraph above and is incorporated herein by reference. Daifuku in view of Miletto does not expressly teach the absorbent exhibits an absorption maximum within a wavelength range of 600 nm to 950 nm, and wherein a 5% thermal decomposition temperature of the absorbent is 190 °C or higher.
However, since Daifuku in view of Miletto discloses the identical or substantially identical absorbent comprising a cation represented by 1,1’-di-propyltrimethoxysilil-3,3,3’,3’-tetramethyl indocarbocyanines (I3Si) corresponding to the instant absorbent comprising a cation represented by Formula 1 as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. absorption, and thermal decomposition temperature, would expect to be the same as claimed (i.e., the absorbent exhibits an absorption maximum within a wavelength range of 600 nm to 950 nm, and a 5% thermal decomposition temperature of the absorbent is 190 °C or higher). If there is any difference between the product of Daifuku in view of Miletto and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
Regarding claim 11: The disclosure of Daifuku in view of Miletto is adequately set forth in paragraph above and is incorporated herein by reference. Daifuku teaches the composition, further comprising a solvent (Page 45, [0296]-[0299]).
Regarding claim 12: The disclosure of Daifuku in view of Miletto is adequately set forth in paragraph above and is incorporated herein by reference. Daifuku teaches an absorption membrane comprising a resin component and the absorbent Page 45, [0315]-[0316]).
Regarding claim 13: The disclosure of Daifuku in view of Miletto is adequately set forth in paragraph above and is incorporated herein by reference. Daifuku teaches the absorption membrane, wherein the resin component includes silicone resin (Page 46, [0325]).
Regarding claim 14: The disclosure of Daifuku in view of Miletto is adequately set forth in paragraph above and is incorporated herein by reference. Daifuku in view of Miletto does not expressly teach the absorption membrane exhibits an absorption maximum within a wavelength range of 600 nm to 950 nm.
However, since Daifuku in view of Miletto discloses the identical or substantially identical composition comprising a cation represented by 1,1’-di-propyltrimethoxysilil-3,3,3’,3’-tetramethyl indocarbocyanines (I3Si) corresponding to the instant absorbent comprising a cation represented by Formula 1, matrix resin as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. absorption, would expect to be the same as claimed (i.e., the absorption membrane exhibits an absorption maximum within a wavelength range of 600 nm to 950 nm). If there is any difference between the product of Daifuku in view of Miletto and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
Regarding claim 15: The disclosure of Daifuku in view of Miletto is adequately set forth in paragraph above and is incorporated herein by reference. Daifuku in view of Miletto does not expressly the absorption membrane, wherein an absolute value of ΔA in Equation 1 is 10% or less.
However, since Daifuku in view of Miletto discloses the identical or substantially identical composition comprising a cation represented by 1,1’-di-propyltrimethoxysilil-3,3,3’,3’-tetramethyl indocarbocyanines (I3Si) corresponding to the instant absorbent comprising a cation represented by Formula 1, matrix resin as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. absolute value of transmittance, would expect to be the same as claimed (i.e.,
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). If there is any difference between the product of Daifuku in view of Miletto and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
Regarding claim 16: The disclosure of Daifuku in view of Miletto is adequately set forth in paragraph above and is incorporated herein by reference. Daifuku in view of Miletto does not expressly the absorption membrane, wherein an absolute value of Δλ in Equation 2 is 10% or less.
However, since Daifuku in view of Miletto discloses the identical or substantially identical composition comprising a cation represented by 1,1’-di-propyltrimethoxysilil-3,3,3’,3’-tetramethyl indocarbocyanines (I3Si) corresponding to the instant absorbent comprising a cation represented by Formula 1, matrix resin as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. absolute value of absorption, would expect to be the same as claimed (i.e.,
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). If there is any difference between the product of Daifuku in view of Miletto and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
Regarding claim 17: The disclosure of Daifuku in view of Miletto is adequately set forth in paragraph above and is incorporated herein by reference. Daifuku teaches an optical filter comprising a substrate and the absorption membrane formed on one or both sides of the substrate (Page 46, [0322]; Page 47, [0340]; Page 59, Claims 10).
Regarding claim 18: The disclosure of Daifuku in view of Miletto is adequately set forth in paragraph above and is incorporated herein by reference. Daifuku an image capturing device comprising the optical filter (Page 47, [0347]; Page 59, Claim 9).
Regarding claim 19: The disclosure of Daifuku in view of Miletto is adequately set forth in paragraph above and is incorporated herein by reference. Daifuku teaches an infrared sensor comprising the absorption membrane ((Page 47, [0348]; Page 59, Claim 11).
Examiner Information
12. 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
06/24/2026
bijan.ahvazi@uspto.gov
Prosecution Insights