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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 11/29/23. These drawings are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The present specification fails to teach all steps of the method of estimating an expected spectral reflectance value to be expected of a layer system consisting of a layer sequence of materials and printing inks so that one reasonably skilled in the art could make and use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation (see Minerals separation Ltd. V. Hyde, 242 U.S. 261, 270 (1916) and United State v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed.Cir.1988)). In other words, the disclosure, when filed, does not contain sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention.
a) With respect to the present claimed invention, the disclosure fails to teach Step b) of claim 1 recites “ascertain a resulting reflectance value of the layer sequence from the spectral transmission values, the spectral reflectance values, the spectral absorption values, and the spectral scattering values determined in step a) by tracing different light paths in a sequential course through the individual layers. Page 5, lines 24-26 only states that “After the behavior of each individual layer with respect to transmission, reflection, absorption and scattering has been predetermined, the resulting reflectance value can thus be determined using the method according to the invention”. However, the “resulting reflectance value” is not defined. Nowhere in the specification teaches what “a resulting reflectance value” is? and how the “resulting reflection value” obtained from tracing different light paths in a sequential course through the individual layers?.
b) The entire specification and drawings only shows what happen when the light beam (2) passes through each layers (11-15), which beams are considered as “transmission beams”, “reflection beams”, “scattered beams”, etc… However, the specification does not teach how to come up with “spectral transmission values”, “spectral reflectance values”, “spectral absorption values” and “spectral scattering values”?
c) In summary, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation or that any experimentation must be “reasonable” (see Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023)).
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meier et al (2002/0131770) (of record) in view of Uefuji et al (2013/0176615) (hereinafter: “Meier” and “Uefuji’) (all of record).
Applicant is noted that since the language “a resulting reflectance value” is broad enough to read on the teachings of the references. For the purpose of the examination, “a resulting reflectance value” claimed can be interpreted as “a model spectrum” or “a combination/adding of all of the four values of the spectral transmission values, the spectral reflectance values, the spectral absorption values, and the spectral scattering values”.
Applicant is also noted that the “preamble” recites “method of estimating an expected spectral reflectance value to be …..and printing inks”; however, the body of the claim has nothing to do with “an expected spectral reflectance value” and “printing inks”.
Regarding claims 1 and 4, Meier discloses a well-known method for: i) determining a spectral transmission (i.e., light transmission properties) at interface of an individual layer (par. [0036)]); ii) determining a spectral reflectance (i.e., (spectral) light reflection properties) at the interface of the individual layer (par. [0036] and [0114]); iii) determining a spectral absorption (i.e., light absorption properties) in a layer volume of the individual layer (i.e., for an infinitesimally thin colored layer dw, the absorption rate and scattering rate for upwardly and downwardly directed light can be determined based on the spectral absorption coefficient K(8) and scattering coefficient K(8) (figure 4 and par. [0036] and [0114]); and iv) determining a spectral scattering in the layer volume of the individual layer (i.e., for an infinitesimally thin colored layer dw, the absorption rate and scattering rate for upwardly and downwardly directed light can be determined based on the spectral absorption coefficient K(8) and scattering coefficient K(8) (figure 4 and par. [0036] and [0114]); and ascertaining/determining/learning a resulting reflectance value (i.e., model spectrum) (par. [0110]) from the determined values determined in steps i-iv for the layer sequence by tracing the different light paths in a special path through the individual layers (figure 4 teaches that the different light paths upwardly and downwardly are used to measured spectral absorption and scattering light ) (par. [0095], [0114] and figure 4 below).
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Meier does not explicitly teach that the method steps are applied to a plurality of layers; however, such the feature is known in the art as taught by Uefuji.
Uefuji, from the same field of endeavor, discloses a multi-layered optical film and method for producing the same in which a plurality of layers (101-111) are arranged and the reflectance and transmittance of the multi-layered optical film can be determined (see figure 1 below and par. [0029]-[0039)).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to use the basic device of Meier to the plurality of layers of Uefuji so that the properties of each of layer can be determined.
Both Meier and Uefuji do not explicitly teach step of ascertaining a resulting reflectance value of the layer sequence from the spectral transmission values, the spectral reflectance values, the spectral absorption values, and the spectral scattering values. Since Meier discloses all of the four values, it would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to combine/add all of the four values into “a resulting reflectance value” as now claimed. Regarding claim 2, Meier and Uefuji teach that a light beam impinging on the surface of the layer system and the light beam passed through the individual layers and a remaining reflection (see figure 4 of Meier and figure 1 of Uefuji).
Regarding claim 3, Meier and Uefuji teach that by respectively determining the spectral transmission, the spectral reflectance, the spectral absorption, and the spectral scattering as a function of a wavelength (A) (see par. [0008], [0024] and [0056] of Meier and par. [0029], [0031], [0039] of Uefuji).
Regarding claim 5, Meier teaches that the spectral absorption is measured (par. [0036]).
Regarding claim 6, Meier teaches that a foil is arranged as an uppermost layer of the layer system (par. [0014)).
Regarding claim 7, Meier does not explicitly teach the layer system is positioned on white and/or black substrates when performing; however, such the feature is known the art as taught by Uefuji.
Uefuji, from the same field of endeavor, discloses a multi-layered optical film and method for producing the same in which a plurality of layers (101-111) are arranged on a plastic substrate (101) (see abstract, figure 1, par. [0024)).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to use the basic device of Meier to the plurality of layers of Uefuji in which the plurality of layers are arranged on a substrate so that the properties of each of layer can be determined.
Response to Arguments
Applicant's arguments filed 9/26/24 have been fully considered but they are not persuasive.
a. Applicant is noted that this case is reopened based on the panel decision. The panelists are agreed with Examiner; however, the Office action needs to clarify a bit more on 112, first paragraph and rejection under 35 USC 103.
b. With respect to the rejection under 35 USC 112, first paragraph; applicant uses figure 3 to support for the step b) of claim 1; applicant argues that “a resulting reflectance value is ascertained from spectral values determined in step a) for each layer, these values being used to determine a resulting reflectance value by tracing different light paths in a sequential course through the layers”. However, applicant fails to teach how “a resulting reflectance value” is determined from “tracing different light paths”? Figure 3 only show where the light beam (10) goes when it passes the plurality of layers (11-15); thus, the argument is not deemed to be persuasive.
c. Specification, page 2, 4th paragraph “Thus, it is assumed that a light beam incident at a certain angle on a layer known with respect to transmission, reflection, absorption, and scattering is split up in that a part is reflected back into the previous layer and the rest is allowed to enter. This entering portion is thereby refracted and split again inside the volume: into a portion that is partially absorbed, into a portion that is partially redirected by scattering, and the remainder that reaches the bottom edge of the layer. This certain portion meets there the next layer, for which then the same considerations are made, until a part of the light beam reaches the lowest layer”. This paragraph only teaches how the light beam (10) reflects, scatters, splits and absorbs within each layer of the layer system and nowhere in the paragraph teach how “a resulting reflectance value” is determined?
d. Applicant uses specification, page 5, lines 16-23 to support for the claimed subject matter; this paragraph “In each of the layers, transmissions, reflections, absorptions and scatterings take place as described above, which is indicated by the different arrows. The light beam passes through the foil and experiences reflections in the interfaces. The rest of the light enters the ink layer, where absorption, scattering, reflection take place and another rest of the light enters the layer. This process repeats itself until the residual light is reflected at the white measuring substrate and the light beam traveling upward experiences the same reflections, absorptions and scatterings in each of the layers, so that finally a remaining part emerges” only teaches the light beam (10) reflects, scatters, splits and absorbs within each layer of the layer system and nowhere in the paragraph teach how “a resulting reflectance value” is determined?
e. Finally, applicant use last paragraph of page 5 “After the behavior of each individual layer with respect to transmission, reflection, absorption and scattering has been predetermined, the resulting reflectance value can thus be determined using the method according to the invention” to support for the claimed subject matter. The disclosure fails to teach how to obtain “a resulting reflectance value” after the light beam (10) passes through each layer (11-15).
f. Page 2 of the remarks, applicant state that “In summarizing this process, the specification (p. 5, lines 24-26) sets forth that the result of consideration of the behavior of each layer along the light beam path (down to the measuring substrate and up to the top again) through the layer system is the resulting reflectance value, i.e., applying the predetermined values (transmission, reflection, absorption, scattering) for each layer along the path of the light beam through the layer system brings about the resulting reflectance value. The inventive method teaches a layer-by-layer consideration of the light paths and summarizing the outcome for each layer to arrive at the reflectance value of the layer system”. It is not understood what applicant trying to explain the “behavior” of each individual layer; how the “behavior” relate to “resulting reflectance value”?
g. Applicant mentioned about well-known calculation methods such as discrete Markov chains or matrix-based layering models of Kubelka; however, these method were not cited in the specification for the purpose of the invention.
h. No response on the 35 USC 112(b) because the rejection has been withdrawn due to the broadest interpretation of the claim.
i. With respect to the rejection under 35 USC 103, applicant argues that “But there is no disclosure as to how modeling can be done and no teaching as to how to employ any of the reflection, absorption, and/or transmission values of the pigments. The only concrete teaching related to spectral estimation in Meier is to use the simplified Kubelka-Munk model using only spectral absorption K”. Applicant is noted that the claims are broad enough to read on the teachings of Meier and Uefuji. As mentioned above, Meier teaches step a) the spectral transmission values, spectral reflectance values, spectral absorption values and spectral scattering values are determined and step b) “a resulting reflectance value” can be read as a result from the Kubelka-Munk model (par. [0114]) or model spectrum (par. [0110]). In addition, applicant admit that matrix-based layering models of Kubelka is a well-known calculation method.
j. Applicant argues that “Meier does not mention optical interfaces or diffraction or Fresnel equations. Meier does not teach anything about modelling the optical light path in a multi-layer system. Meier does not teach how to model or evaluate a sequence of layers with different optical properties along a light path. Meier does not teach determining four spectral values - only the spectral absorption K is used in the proposed modeling”. However, the claimed invention and the present disclosure do not teach or suggest the “optical interfaces or diffraction or Fresnel equations”, “modelling the optical light path in a multi-layer system” and “how to model or evaluate a sequence of layers with different optical properties along a light path”. Claims must be examined on the basic of what they say, absent limitations may not be considered to be present.
k. With respect to the argument on the Uefuji, applicant is noted that the combination of Meier and Uefuji in that applying the process for the color modeling of a photographic image reproduced on a medium of Meier on a plurality mediums of Uefuji instead of a single medium because one skill in the art known how to apply the process on a medium or on a plurality of mediums, it is merely a duplication of parts (In re Harza, 274 F2d 669, 124 USPQ 378 (CCPA 1960).
In view of the foregoing, it is believed that the rejections under 35 USC 112 and 103 are proper.
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HP /HOA Q PHAM/ Primary Examiner, Art Unit 2877 January 17, 2025
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