DETAILED ACTION
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 1-3, 5, 8-13, 16-18, and 20-26, are rejected under 35 U.S.C. 103 as being unpatentable over Johansen et al. (US 2011/0039042) in view of Tanko (US 2019/0337322),
In respect to claims 1 and 9, Johansen et al. disclose a security note comprising: a first transparent substrate 12 having an area defining the boundaries of the security note; a first base layer 20 (e.g. gold) deposited on the first transparent substrate 12; and a second transparent substrate 32 (0061-0062; Fig. 4). Johansen et al. further disclose that the layer of gold may be “feathered” wherein the metal layer thickness may vary between 15-750 nm (0059; Fig. 5) i.e. in one specific example, the gold may be 200-400 nm thick in a first portion and <200 nm in the feathered region (second portion) 28 (0092; Fig. 5); the thinner layer of gold in the second portion acts as a security feature, as the feathering “produces a characteristic and distinctive spectral change with decreasing thickness”, which can be measured/verified in many ways (0016).
Johansen et al. do not disclose a second base layer with an opening (between the first base layer 20 and the second transparent substrate 32) however Tanko teaches a similar security note, including a first base layer 105 that includes at least some regions of precious metal (e.g. gold) 103 (Fig. 2). Tanko additionally teaches providing upper and lower base layers 104/106, sandwiching the precious metal layer. These base layers may be provided as opaque with openings to allow viewing of the precious metal (0041; Fig. 2). The openings may be provided on both sides of the document such that the precious metal is visible from both sides (Fig. 2, Figs. 4A-4B). It would have been obvious to provide the security note taught in Johansen et al. with a first and second base layers in view of Tanko to provide opaque areas 101 for printing (0041; Fig. 1 & Fig. 4A) as well as to provide patterned windows to the precious metal (0038). It is noted that in Johansen et al. the metal layer itself is construed as the first base layer, however, with the teaching of Tanko, above, the first base layer would be the lower base layer of Tanko, and this further comprises the layer of gold thereupon. The windows are taught to be in discrete regions, thus the other portions of the would extend beyond the windows.
Johansen et al. in view of Tanko do not explicitly teach that at least one of the openings is aligned with the second portion of the gold layer, however, this would have been obvious. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, since Johansen et al. explicitly disclose the special transmission/reflection characteristics in the second “feathered” region 28 (0016). It would be readily ascertainable in looking at Tanko to provide the openings in areas to be tested/authenticated, which is in the second region 28.
In respect to claims 2-3, 5, and 10, Johansen et al. disclose that the second region 28 may extend to an edge (Fig. 6), may be inward of the boundaries (Fig. 5), or may extend around the boundary “periphery” (0068). As per the analysis above, the teaching of Tanko would provide windows in the areas to be tested, and thus in the second regions 28.
In respect to claim 8, Johansen in view of Tanko do not explicitly teach a third base layer and a fourth base layer, however these are extremely broadly claimed and could constitute any well-known layers in the art, such as tie layers, primer layers, and other layers. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, utilizing additional layers to help with bonding, lamination, or printing.
In respect to claims 9, Tanko further teaches openings with distinct sections with different security features 103a and 103b (Fig. 3).
In respect to claims 12-13 and 20, Tanko further teaches forming the opening via selective des position of the prinked ink (first layer); Tanko alternatively teaches forming the opening via a cut or laser etching (0025). Although it is not clear whether his operation extends to the printed layer, and is only explicitly drawn to the opening in a core layer that houses the security feature (gold), it would have been obvious to cut at the same time through the printed layer. Regardless, the core layer may be construed to be the “second base layer”.
In respect to claim 16, Johansen et al. further disclose providing a hologram on the first transparent substrate 12 (0088).
In respect to claims 17-18 and 21, Tanko further teaches that the printing forming the first and second base layers may incorporate several special inks and metals (0049), of which vacuum deposition and/or magnetron sputtering are well known methods of application in the art. In respect to claim 19, Tanko further discloses a core layer 105 which may be construed as a “blocking layer” (Fig. 2).
In respect to claim 24, Tanko additional teaches providing a second layer of a different precious metal on the first layer of precious metal (0183).
In respect to claims 25 and 26, Tanko additionally teaches providing the feathering as a “shadow” image (0129; Fig. 9).
Response to Arguments
The claims being considered are not amended and were presented as Response After Final (02/03/25). The arguments against Johansen et al. in view of Tanko were addressed and not found persuasive in the Advisory Action (02/07/25).
The applicant has been provided an opportunity to address the Advisory Action, but has not provided new arguments. Thus, the response in the Advisory Action will be repeated verbatim:
The applicant alleges that "the Office Action has failed to articulate any rationale as to why a person of skill in the art would be motivation to add additional base layers to Johansen"...since "Johansen already incorporates opaque areas for printing, [and] there is no need for the additional base layer of Tanko”. However, this is not persuasive. This argument is not persuasive since the "opaque" layer of gold is hardly analogous to a separate, easily printable layer as taught by Tanko. One of ordinary skill readily understands that the additional printable layer in Tanko affords many types of inks and/or methods of printing, wherein gold is either hardly printable by a vast array of inks, or must be etched. Thus, the provision of Tanko provides for a much larger and wider array of printing options. Furthermore, although Johansen discloses a bottom substrate suitable for such printing operations, Tanko provides a means to provide similar options to the top surface, while also allowing viewing of the feature gold region of reduced thickness.
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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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637