DETAILED ACTION
Response to Amendment
Applicants’ amendment filed 9/2/2026 has been entered. Currently, claims 1-6, 8-10 and 15-20 are pending and claims 7 and 11-14 are canceled.
The Examiner notes that formula (2) in claim 1 has been amended at “(3)n” and this change has not been shown by the proper strikethrough/underline notation.
In claim 9, the formula (4) has changed as the “4” and “6” of R4” and “R6” has moved. This change has not been shown by the proper strikethrough/underline notation.
In the interest of compact prosecution, the claims will be examined with these issues in mind.
Specification
The disclosure is objected to because of the following informalities:
In the corrected [0044] filed 9/2/2026, while the previous objection has been overcome, the amendment now has the ‘N’ and ‘O’ atoms shifted on formulae F-49 through F-54.
Appropriate correction is required.
Claim Objections
Claims 8, 9 and 20 are objected to because of the following informalities:
In claim 8, the phrase “are independently selected from aromatic substituents” is objected to grammatically as there is no group of substituents to select from. This objection can be overcome by changing the phrase to “are each an aromatic substituent” which is how the claim will be interpreted.
In claim 9, the substituents on formula (4) have had the changed names without the proper underline/strikethrough notation, e.g. “R4” to “4R” etc., and it is unclear if this was intentional or due to a structure editor artifact. This objection can be overcome by changing the R groups back to R4, R5 and R6, which is how the claim will be interpreted.
In claim 20, the limitation “the ink composition” is objected to grammatically as there are five different ink compositions in claim 1. This rejection can be overcome by changing the phrase to “the UV curable security ink composition” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-6, 8-10 and 15-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1, the Examiner does not find support for the substrate being selected from cellulosic substrates” in the specification as originally filed. The specification only describes a cellulose substrate at [0098] and not a “cellulosic” substrate which is a broader concept as it includes cellulose derivatives.
In claim 1, the Examiner does not find support for the “(3)n” in the formulas (1) and (2) and does not find support for the limitations “n is an integer selected from 1 and 2” in the specification as originally filed. This represents a subgeneric claim that does not find support in the specification as originally filed. The inventive compounds M7 through M9 would not support this subgeneric claim as they would not support the scope of n=1 and there are no examples of the formula (2) that was made.
Claims 1-6, 8-10 and 15-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, the limitations that “Y is a linker, which may be absent, or” renders the claim indefinite as the requires Y, but then makes it not required. This rejection can be overcome by changing the phrase to “Y is a linker, which may be a single bond, or” which is how the claim will be interpreted.
In claim 9, the structure (4) and its substituents R4, R5 and R6 render the claim indefinite as an aromatic ring has 6 bonding positions and it is unclear what may or may not be bonded to the ring and if there are multiple of each of the R4, R5 and R6 on the ring. Also, it is unclear where this aromatic group is supposed to bond at the R1, R2 or R3 position.
In claim 20, the claim is indefinite as it depends from canceled claim 11. The rejection can be overcome by making the claim depend from claim 1.
Claims 9 and 16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In claim 9, the limitations that the R1-R3, “may each” independently have the structure (4) fails to limit the claim from which it depends as this breadth allows for each of these R groups to not be the structure (4). In that instance, claim 9 fails to limit the claim from which it depends.
In claim 16, the option of “R1 and R2 are directly attached to an imide N of rylene substructure (W)” fails to limit the claim from which it depends as this is already required in claim 1. This rejection can be overcome by deleting this option in claim 16.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
Applicant’s arguments, see Remarks, filed 9/2/2026, with respect to the previous claim objections, the 112(a) scope of enablement rejection, the previous 112(b) rejections and the prior art rejections have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
As to claim 9, applicants arguments are reasonable that the “direct” bonding limitation of R1, R2 and R3 in claim 1 means that one of the six positions on the phenyl ring structure (4) will necessarily be bonded to the structures (1) or (2), three other positions on the phenyl ring structure will be bonded to R4, R5 and R6 and the remaining two positions will necessarily be hydrogen atoms. This will be the interpretation used for the scope of this claim.
The Examiner maintains that the indefiniteness rejections of claims 1 and 9 were proper and were raised because in claim 1 a single bond to one substituent -(3) could mean multiple (3) could be present on formulae (1) and (2), which is not the established convention in chemistry and patent prosecution, but in the structure (4) the single bonds to R4, R5 and R6 now used the traditional chemical understanding of one of each of these substituents being present. The 112(b) rejections of claims 1 and 9 were set forth so that applicants had the opportunity to clarify the metes and bounds of the structures in the claims.
Applicants’ arguments filed 9/2/2026 have been fully considered but they are not persuasive.
Applicants argue that the case is in condition for allowance as all of the previous objections/rejections have been overcome.
The Examiner respectfully disagrees and notes that the amended specification [0044] submitted has raised new issues due to how some of the substituents in the table appear. The claims have raised new issues of 112(a) new matter, 112(b) and 112(d) for the reasons noted above, which means the claims are not in condition for allowance.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
