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 .
DETAILED ACTION
This office action is in response to application 19/288,775 filed 8/1/25. Claims 2-21 are pending with claims 2, 8 and 14 in independent form.
Terminal Disclaimer
The terminal disclaimer filed 3/18/26 is not accepted. Please check either box 1 or 2. Please resubmit the TD. No fee 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 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,380,306 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application recite similar limitations of the ‘306 patent. For instance, in claim 1 of the instant application and in the ‘306 patent, the applicant claims:
Application No. 19/288,775
Patent No. 12,380,306 B2
2. A coating system configured to enable detection of a concealed pattern, comprising: a first coating layer comprising a pattern disposed over at least a portion of the substrate, wherein the first coating layer forms the pattern in a shape of a machine-readable image, barcode, or QR code using a plurality of regions using a combination of near-IR absorptive and near-IR reflective material; and a second layer applied over the first coating layer, the second layer comprising a visibly opaque layer that is disposed over the pattern, the visibly opaque layer being at least partially near-IR transparent, the visibly opaque layer comprising a film; wherein the reflectance and/or emittance and/or absorbance of infrared electromagnetic radiation by the pattern at a wavelength in the range of 700 to 2500 nm differs from the reflectance and/or emittance and/or absorbance by the contrasting regions of the pattern of the first coating layer at the wavelength; wherein the contrast results from near-IR absorptive and near-IR emissive and/or near-IR reflective materials; and wherein the visibly opaque layer is sufficiently transmissive to infrared wavelengths due to sufficiently low level of infrared absorbing pigments and/or infrared reflecting and/or scattering pigments, such that the combination of near-IR absorptive, near-IR reflective, near-IR scattering, and near-IR emissive material beneath the second layer is detectable through the second layer at the wavelength.
1. A coating system configured to enable detection of a concealed pattern, comprising: a first coating layer comprising a pattern disposed over at least a portion of the substrate, wherein the first coating layer forms the pattern in a shape of a machine-readable image, barcode, or QR code using a plurality of regions using a combination of near-IR absorptive and near-IR emissive material; and a second coating layer applied over the first coating layer, the second coating layer comprising a visibly opaque layer that is substantially free of TiO.sub.2, the visibly opaque layer being near-IR transparent, the visibly opaque layer comprising an infrared transparent pigment disposed over the pattern, wherein the emissivity and/or absorbance of infrared electromagnetic radiation by the pattern at a wavelength in the range of 700 to 1100 nm differs from the emissivity and/or absorbance by the contrasting regions of the pattern of the first coating layer at the wavelength using regions of near-IR absorptive and near-IR emissive material; wherein the visibly opaque layer is substantially free of an infrared absorbing pigment and/or an infrared emissive pigment, such that the combination of near-IR absorptive and near-IR emissive material beneath the second coating layer is detectable through the second coating layer at the wavelength; wherein the near-IR emissive material comprises an infrared fluorescent pigment.
Therefore, in respect to the above discussions, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the teaching of claims 1-20 of the ‘306 patent as a general teaching for a coating system, to perform the same function and method as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘306 patent and differ only in terminology.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTY A HAUPT whose telephone number is (571)272-8545 and email address is kristy.haupt@uspto.gov. The examiner can normally be reached on Mon-Sun 5:30 AM- 10PM; Flex during day.
If all attempts to reach the examiner by telephone and email are unsuccessful, the examiner’s supervisor, Michael Lee, can be reached at telephone number 571-272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTY A HAUPT/
Primary Examiner, Art Unit 2876
KAH
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