DETAILED ACTION
Claim Rejections - 35 USC § 102
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 6, 9, 16 18-20, and 22-23, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abe et al. (US 4,869,532).
In respect to claims 6, 16, 18, and 20, Abe et al. disclose a base material 1 which may comprise a plastic film (Col. 5, 62) which has printed thereon a first IR-ink (“infrared reflective”) (forming a first printing image) having a first remission value and a second IR-ink ink (“infrared absorptive”) (forming a second printing image) having a second remission value (Fig. 1); at an IR-wavelength of 1000, the remission value “reflectivity” of first image may be 95% and the remission value “reflectivity’ of the second image may be 1% (>40% difference) (Col. 9, 1-10). Abe et al. inherently disclose a difference of reflectivity of exactly 40%. A Reflectivity % to wavelength graph plot is necessarily continuous and a wavelength of 700 nm wavelength yields a R% of 15, and a 800 nm wavelength yields a R% of 93. One of ordinary skill understands that between 700 nm and 800 nm, the reflectivity must cross 40% (<50%). One of ordinary skill in the art also understands the reflectivity of the second image to be a near static 1% across 700-800nm, thus providing a 40% difference. (Col. 9, 1-10). Abe et al. disclose that the first and second image are perceptible in the visible wavelength range as the same hue, specifically “The present inventors have hence found that effective use of properties of an ink making use of a carbon black pigment [IR absorptive, 2nd ink] having infrared ray absorbance and those of another ink making use of a coloring agent [IR reflective, first ink] having infrared ray reflectivity permits distinction of letters and/or patterns by an infrared reader although they look exactly the same and cannot be distinguished from each other under visible light (visually)” (Col. 2, 66 – Col. 3, 5). Abe et al. further disclose that the coloring agent, which forms the IR reflective (first IR-ink) is preferably selected from a variety of azo coloring agents including that disclosed in Abe et al. JP 138857/1987 (Col 5, 14). This Abe et al. reference discloses: “the present invention is a coloring composition for image recording comprising a colorant and a resin dispersion medium, wherein the colorant is an azo-based organic pigment or dye having a residue having an azomethine group”.
In respect to claim 9, Abe et al. disclose that the IR-inks may be water-based or solvent-based (Col. 6, 1-8).
In respect to claim 19, Abe et al. disclose that the second IR-ink may be almost completely reflective in the IR range (1000-1100 nm) (95%) (Col. 9, 1-10), and further that “reflectivity” may be defined as a transmissive property, thus the ink assuming the color of the material behind it (Col. 5, 47-68). One of ordinary skill would readily infer that this would appear “not perceptible”, at least in several conditions which are open to this broad interpretation (lighting levels, distance, viewer acuity, etc.).
In respect to claims 22-23, Abe et al. disclose two different inks composed of different materials. One of ordinary skill in the art readily ascertains them to functionally capable of a different color in the UV-range. Each of the inks has a different reflective profile, and further may be comprise different combinations of inks (Col. 7, 65 – Co. 8, 16). The only instance where the color impression would be the same across the entire UV-range (10 – 400 nm) would be identical reflective profiles across the entire range, which would be recognized as impossible by one of ordinary skill (even more so when different combinations of inks are used). Regardless, Abe et al. disclose the first and second ink having different colors (reflectivity) in the UV range (300 nm), of 6% and 1%, respectively.
In respect to the amended subject matter, Abe et al. disclose the first and second printing images arranged together, wherein the first printing image portion (comprised of the first IR-ink) of a thread of text (e.g. APP) is IR-reflective and the second printing image portion (comprised of the second IR-ink) of the thread of text (e.g. ARENT) is IR-absorbative (Fig. 2A). It is reasonably to construe the first and second printing images, together, forming a first machine-readable code under visible wavelengths (it is “machine-readable” e.g. camera and text analysis) and forms a “code” which is nebulous and doesn’t require any particular structure e.g. the first machine-readable text may from a “code” e.g APPARENT where every numerical value may have a coded corresponding value e.g. a number). This is the same for the second machine-readable code, which only comprises the text ARENT under IR wavelength. It is noted that there is no method of reading a “code” which would be explicitly taught by Abe, but rather a structure which is capable of being read as a “code” by a “machine”. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997). (MPEP 2114).
Claim Rejections - 35 USC § 103
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.
Claims 6, 9, 16, 18-20, 22-23, are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US 4,869,532) in view of Araki et al. (JP 2009-113447) (See NPL for English Translation).
Abe discloses the claimed subject matter for the reasons stated above, including text which can reasonably be construed as a “first machine-readable code” (under visible wavelengths) and a “second machine readable code” (under IR wavelengths), however, Araki et al. further teach a very similar invention which utilizes both an IR-reflective ink (forming a first printing image) 23a and an IR-transparent ink (forming a second printing image) 23b (See remission/reflection chart, Fig. 5) in a similar fashion; the first and second printing images form a first machine-readable code (Fig. 4a) and a second machine-readable code (Fig. 4b) (wherein the IR-reflective ink disappears in IR wavelengths, removing itself from the second machine-readable code)(0023). It would have been obvious to one of ordinary skill at the time of the effective filing date of the present application to modify the text string taught in Abe to be encoded and machine-readable, with the first and second printing portions forming different machine-readable codes in view of Araki et al. to provide anti-counterfeit methods to text strings, e.g. for checks, tickets, etc. (0002)..
Claims 6, 9, 16, 18-20, and 22-23, are rejected under 35 U.S.C. 103 as being obvious over Abe et al. (US 4,869,532) in view of Munday (WO 2018/206936).
In respect to claims 6, 16, 18, 20, and 22-23, Abe et al. disclose a base material 1 which may comprise a plastic film (Col. 5, 62) which has printed thereon a first IR-ink (“infrared reflective”) (forming a first printing image) having a first remission value and a second IR-ink ink (“infrared absorptive”) (forming a second printing image) having a second remission value (Fig. 1); at an IR-wavelength of 1000, the remission value “reflectivity” of first image may be 95% and the remission value “reflectivity’ of the second image may be 1% (>40% difference) (Col. 9, 1-10). Abe et al. inherently disclose a difference of reflectivity of exactly 40%. A Reflectivity % to wavelength graph plot is necessarily continuous and a wavelength of 700 nm wavelength yields a R% of 15, and a 800 nm wavelength yields a R% of 93. One of ordinary skill understands that between 700 nm and 800 nm, the reflectivity must cross 40% (<50%). One of ordinary skill in the art also understands the reflectivity of the second image to be a near static 1% across 700-800nm, thus providing a 40% difference. (Col. 9, 1-10). Abe et al. disclose that the first and second image are perceptible in the visible wavelength range as the same hue, specifically “The present inventors have hence found that effective use of properties of an ink making use of a carbon black pigment [IR absorptive, 2nd ink] having infrared ray absorbance and those of another ink making use of a coloring agent [IR reflective, first ink] having infrared ray reflectivity permits distinction of letters and/or patterns by an infrared reader although they look exactly the same and cannot be distinguished from each other under visible light (visually)” (Col. 2, 66 – Col. 3, 5). Abe et al. further disclose that the coloring agent, which forms the IR reflective (first IR-ink) is preferably selected from a variety of azo coloring agents including that disclosed in Abe et al. JP 138857/1987 (Col 5, 14). This Abe et al. reference discloses: “the present invention is a coloring composition for image recording comprising a colorant and a resin dispersion medium, wherein the colorant is an azo-based organic pigment or dye having a residue having an azomethine group”.
Abe et al. do not disclose that the first IR-ink comprises a first fluorescence at a first color and the second IR-ink comprises a second fluorescent at a second different color, however, Munday teaches a similar pair of metameric (look identical in visible light) which further comprise a first and second fluorescence, respectively, which appear as different colors in UV light (Abstract & Col. 3, 11-21). It would have been obvious to provide the IR-inks in Abe et al. with further fluorescent properties in view of Munday to provide additional security to the inks under UV-illumination, which still appear identical under visible light (Col. 2, 31 – Col. 3, 9)
Claims 6, 9, 13, 16, 18-20, and 22-23, are additionally rejected under 35 U.S.C. 103 as being obvious over Abe et al. (US 4,869,532) in view of Munday (WO 2018/206936) and Araki et al. (JP 2009-113447) (See NPL for English Translation).
Abe et al. and Munday disclose the claimed invention for the reasons stated above (with Abe discloses the machine-readable codes), however, it would have been obvious to one of ordinary skill at the time of the effective filing date of the present application to provide the teaching of Araki et al. for the same motivations detailed in the rejections above.
Response to Arguments
In respect to the 35 USC 102(a)(1) rejection over Abe, applicant's arguments filed 04/14/26 have been fully considered but they are not persuasive.
The applicant contends that the first and second printing images of Abe are not “arranged as bits of a first machine-readable code” however the Examiner disagrees for the reasons detailed in the Office Action above. Although Abe does not disclose the use of the printed text as a “code” there is not structural distinction, and the text is capable of being used as a “code” for verification and capable of being read by a machine.
Furthermore, Araki et al. has been applied to all claims as a secondary or tertiary reference, since it teaches a very similar invention which explicitly uses the IR reflective ink and IR absorbative inks as elements “bits” in first and second machine-readable codes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy, can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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