DETAILED ACTION
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “the optical effect layer consists essentially of an absorber layer applied directly to the structures in the second region and a spacer layer applied directly to a side of the absorber layer facing away from the structures” (claim 1) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4, 8-16, 18-22, and 24-27, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding independent claims 1 and 4, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
New claim 27 is indefinite. The claim recites that the “optical effect layer further comprises a color-shifting ply”, which directly contradicts the Specification as well as claim 1 from which it depends. The Specification state that “the optical effect layer 7 formed as a thin-layer element [claim 1] may also be formed as a color-shifting layer or comprise a color-shifting ply.” Which states that a color-shifting layer or color-shifting ply (claimed) are alternative versions of the optical effect layer. This also directly contradicts claim 1 which states that the optical effect layer is a thin-layer element and the an absorber-spacer are essentially constituting elements of this layer. Thus, the claim is further indefinite and unclear.
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 claim is impossible to ascertain for several reasons detailed in the 35 USC 112(b) rejection, thus any reasonable comparison to Fuhse et al. cannot be made.
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
In respect to claims 1, 8-16, 18-22, and 27, the applicant has amended to include new matter. The Specification or Drawings do not support the specifically constrained definition of “consisting essentially of…” as detailed above. Fuhse et al. is not distinguished from, since the newly amended matter is not part of the original disclosure.
In respect to claim 4 and 24-26, Fuhse et al. (‘049) is newly applied.
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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