DETAILED ACTION
Drawings/Specification
The amended Drawings and Specification are not accepted since they are new matter. A broad recitation that “various combinations of the individual embodiments are possible” is not a clear and definite previous disclosure of Figure 8 and an amended Specification drawn to that Figure.
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, 8-16, 18-22, and 27, 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.
Independent claims 1 newly recite “wherein the optical effect layer consists essentially of an absorber layer applied directly to the structure in the second region and a spacer layer applied directly to a side of the absorber layer facing away from the structures” which is not supported by the originally filed Specification. It is assumed that the applicant is using the language from 0013 to support this amendment which states “According to an advantageous advancement, the spacer layer and the absorber layer may be applied to the structures in the sequence of absorber layer-spacer layer or spacer-layer absorber layer” which is not tantamount to the optical effect layer consisting essentially of “an absorber layer-spacer layer”. The (0013) recitation does not exclude other components of the optically effect layer (it is assumed that the “essentially” modifier is used to not include optional protective layer and/or adhesion promotion layer, which “do not materially affect the basic and novel characteristic(s)” of the optical layer (MPEP 2111.03.III). Rather, the Specification states that it is advantageous that at least one absorber and at least one spacer layer are used (0010), and that the order of these layers starting from the structures may be either absorber-spacer or spacer absorber (0013).
Furthermore, no Figure supports the claim language. Figures 4 and 6 show the absorber 11 directly applied to the structures 4 and the spacer 12, however Figure 4 discloses another absorber layer 11 above the spacer layer and Figure 6 discloses a reflective layer 14 above the spacer layer. A second absorber layer and a reflective layer are clearly material to the invention and effect the optical effect layer, thus there is not support in the Figures for the new claim language.
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 1, 5, 8-12, 14-23, and 27, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fuhse et al. (US 2012/0319395).
In respect to claims 1, 4, and 18, Fuhse et al. disclose a security element comprising: at least a first region ¾ with structures (micromirrors) 9 which reflect an image motif in different spatial regions to form a “moving image” which changing with viewing angle and/or light source angle (0097-0098; Figs. 1 & 3) (additionally moving image Figs. 8a-9c is another embodiment); wherein an optical effect layer formed of a thin-layer element 18 covers the structures 8 (Fig. 6). The thin-layer element may be formed over only part of the surface (0026). Fuhse et al. disclose that the reflective layer 12 is optional, as “[they] can have a reflection-enhancing, in particular reflective, coating” (0024), and further more specifically disclose that the thin-layer element 18 may be either “on the upper side 8 [of the structures] or on the reflective coating 12” (0102). The thin-layer element comprises a spacer (“dielectric”) layer 13 and an absorber (“upper metal layer”) 14, of which the spacer 13 may be directly applied to the structures, thus forming a sequence of: structures – spacer layer – absorber layer.
In respect to the amended subject matter, the amendment constitutes new matter which is not supported by the original disclosure. Thus, the amendment does not provide any distinction, as supported by the originally filed Specification, which distinguishes from Fuhse et al.
In respect to claims 5 and 23, the claimed structure cannot be ascertained for reasons detailed in the 35 USC 112 rejection above, however, Fuhse et al. disclose the claims as best can be determined, as they further disclose an optional reflective layer 12 (Fig. 6).
In respect to claims 8, 11, and 21, Fuhse et al. disclose that the security element may further comprise luminescent substances (“remitting electromagnetic waves”), which as best can be construed by the Examiner in consulting the Specification, as a “optically non-linear layer”.
In respect to claims 9-10, and 15, Fuhse et al. disclose the thin-layer element comprises at least an absorber (partially transparent metal) layer 14, at least one spacer layer 13 which is a dielectric, and a reflection layer 12 (0102; Fig. 6). Although indefinite and drawn to a product-by-process, Fuhse et al. disclose that the layers may be vapor-deposited (0102); the thin-element layer results in a color-shifting layer (0103).
In respect to claim 12, Fuhse et al. disclose a carrier layer which may be PET (0093).
In respect to claims 14, and 16-17, Fuhse et al. disclose that the absorber layer and/reflection layer may be aluminum, chromium, etc. (0024) and the dielectric layer (spacer layer) may be ZnS (among others).
In respect to claims 19 and 22, Fuhse et al. disclose a lacquer layer 9 which may also be construed as the “carrier layer” or alternately an “additional layer”, wherein the structures are embossed therein (0059; Fig. 6).
In respect to claim 20, the “further layer” lacks proper antecedent basis and thus the thickness being referred to is completely indefinite. Regardless, Fuhse et al. disclose several ranges of lacquer, which may be construed as a “further layer” having thicknesses in the claimed ranges (0028).
In respect to claim 27, the optical effect layer forms a color-shifting layer, shifting upon viewing angle change.
Claims 4 and 24-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fuhse et al. (US 2018/0037049).
In respect to claims 4 and 25, Fuhse et al. disclose a security element comprising: at least a first region 16 with structures (micromirrors) 34 which reflect an image motif in different spatial regions to form a “moving image” which changing with viewing angle and/or light source angle (Abstract; Figs 1-2); wherein an optical effect layer formed of a thin-layer element 36 (0054-0056; Fig. 2) which covers the structures 34 and may consist essentially of an absorber/dielectric (spacer)/absorber (0004; 0018; 0054).
In respect to claims 24 and 26, Fuhse et al. disclose that either absorber layer may comprise at least one metal e.g. aluminum, silver, chromium, gold or copper, and the dielectric (spacer) may comprise SiO2 or MgF2 (0054).
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 13, 14, and 17, are rejected under 35 U.S.C. 103 as being unpatentable over Fuhse et al. (US 2012/0319395).
In respect to claim 13, Fuhse et al. do not explicitly disclose a thickness of the carrier layer of 5 – 1000 µm, however such a selection within the extensive range would have been obvious since, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984). There is absolutely no specificity to a range of 200x. Thicknesses in this range are standard for banknotes (one of the uses of Fuhse et al.).
In respect to claims 14 and 17, Fuhse et al. seem to suggest that the metal layers which form the absorber and reflection layers may be the metals listed however, use of any of the metals claimed would be obvious as the thin-layer element comprises a metal-dielectric-metal (0029). The selection of any known metal would be obvious, as the only constraint is a higher refractive index than the dielectric layer. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the claimed metals as the absorber/reflection layer, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed 09/03/26 have been fully considered but they are not persuasive.
The applicant alleges that the issued limitation of “wherein the optical effect layer consists essentially of an absorber layer applied directly to the structure in the second region and a spacer layer applied directly to a side of the absorber layer facing away from the structure” has support in the “originally filed claims 2 and 3 and in paragraphs [0010] and [0013] of US 2025/0144954 when taking into account claim 4, Figs. 3 and 4, and paragraph [0085]”. However, this is not persuasive.
The applicant argues that paragraph {0010] states “the optical effect layer formed as a thin-layer element comprises at least one absorber layer and at least one spacer layer” which the applicant argues leaves the options of “1) that the optical effect layer consists essentially of an absorber layer and a spacer layer 2) and that further absorber layer and/or spacer layers are possible” which is not persuasive. The first option is not true. The applicant has provided a plethora of support for the argument that the optical effect layer comprises an absorber layer – spacer layer. There is no support for the optical effect layer consisting essentially of an absorber layer and a spacer layer. For example, it is well known that an absorber layer and spacer layer are traditionally combined with a reflective layer. Stating that the optical effect layer comprises an absorber/spacer stack, does not exclude other common features such as a reflective layer.
If this was truly the inventive concept, a simple “consisting essentially” could have been present in the original disclosure, or a single figure showing this concept. All original Figures do not show this configuration. This configuration was not searched. The Examiner was lenient in not restricting between the different species of optical configurations in Figures 3-7.
Arguments against the 35 USC 102 and 103 rejections are not persuasive. Arguments hinge on the “essentially consisting” language which is new matter and not supported by the original disclosure.
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
