DETAILED ACTION
This is the first office action regarding application number 17849636, filed on 06/25/2022, which claims benefit of U.S. Provisional Application No. 63/215,385 filed June 25, 2021.
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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 primary light interface elements configured in part to absorb the incoming light in claim 20 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 Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “discreet”, the word should be “discrete”. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
"a marking zone" in claim 1, interpreted as conveyor as described “the marking zone 106 may be defined in part by a conveyor element 156” in paragraph [28 ] of the original disclosure, and equivalents thereof,
“laser transmission element” in claim 1, interpreted as laser source as described in Fig. 1 of the original disclosure, and equivalents thereof,
“primary light interface elements” in claims 14 and 15, interpreted as pattern as described “Light interface elements may be selected to take on a variety of shapes, depending upon, for example, the desired optical properties of the indelible identifier” in paragraph [40 ] of the original disclosure, and equivalents thereof,
“secondary light interface elements” in claim 15, interpreted as pattern as described “Light interface elements may be selected to take on a variety of shapes, depending upon, for example, the desired optical properties of the indelible identifier” in paragraph [40 ] of the original disclosure, and equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 8-18, 21, 28-30, 61-63, 72 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Dassie et al., US 20130244002 (hereafter Dassie).
Regarding claim 1,
An ultrashort pulse laser marking apparatus (Fig. 1 in Dassie)
for forming indelible identifiers on discreet consumable articles, the apparatus comprising: (Fig. 2)
a marking zone configured to retain one or more discrete consumable articles; and (Paragraph [63] teaches “The tablet C is present in a cavity 10 of cylindrical form used to position the tablet C within the field of the laser.” Paragraph [64] teaches “The relative movement of the surface of the tablet and of the laser ray is here obtained by means for displacing the tablet linked to the tool.” Here cavity with a means for displacing corresponds to the marking zone.)
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Fig. 1 and Fig. 2 in Dassie
an ultrashort pulse laser transmission element configured to transmit a beam of laser energy toward the marking zone (Paragraph [24] teaches “an infrared laser can be used with a pulse duration of 100 to 1000 fs”)
to form an optically-readable (Paragraph [35] teaches “this marking makes it possible to distinguish said pharmaceutical form from counterfeit products by virtue of the use of an optical microscope,”)
indelible identifier on a said discrete consumable article, (Paragraph [39] teaches “the marking pattern has a particularly long life.”)
the beam having a pulse duration less than 10 picosecond, (Paragraph [24] teaches “an infrared laser can be used with a pulse duration of 100 to 1000 fs”. Here the range taught in Dassie is within the claimed range of less than 10 ps and thus anticipated. MPEP 2131.03-I teaches “"If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).”)
and a wavelength of less than 1.5 microns. (Paragraph [24] teaches “a laser is used with a wavelength of 1030 nm.” Here the range taught in Dassie is within the claimed range of less than 1.5 microns and thus anticipated. MPEP 2131.03-I teaches “"If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).” )
Regarding claim 8,
The apparatus as defined in claim 1, wherein the one or more consumable articles comprise a photoreactive pigment configured to undergo a color change upon exposure to the beam of laser energy, and the indelible identifier is defined by the color change. (This limitation is directed to material or article worked upon by the apparatus in claim 1. The material or article worked upon is “the one or more consumable articles”. MPEP 2115 teaches “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).” MPEP 2115 further teaches “In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.”)
Regarding claim 9,
The apparatus as defined in claim 8, wherein the photoreactive pigment comprises one or more materials selected from the group consisting of titanium dioxide, yellow iron oxide, and red iron oxide. (This limitation is directed to material or article worked upon by the apparatus in claim 1. The material or article worked upon is “photoreactive pigment”. MPEP 2115 teaches “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).” MPEP 2115 further teaches “In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.”)
Regarding claim 10,
The apparatus as defined in claim 8, wherein the color change results from transformation of the photoreactive pigment into one or more other color pigments that are approved by the United States Food and Drug Administration (FDA) for human consumption. (This limitation is directed to material or article worked upon by the apparatus in claim 1. The material or article worked upon is “photoreactive pigment”. MPEP 2115 teaches “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).” MPEP 2115 further teaches “In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.”)
Regarding claim 11,
The apparatus as defined in claim 9, wherein the photoreactive pigment transforms into black iron oxide when exposed to the beam of laser energy. (This limitation is directed to material or article worked upon by the apparatus in claim 1. The material or article worked upon is “photoreactive pigment”. MPEP 2115 teaches “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).” MPEP 2115 further teaches “In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.”)
Regarding claim 12,
The apparatus as defined in claim 9, wherein the color change is by way of multiphoton absorption. (This limitation is directed to material or article worked upon by the apparatus in claim 9. The material or article worked upon is “photoreactive pigment” . MPEP 2115 teaches “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).” MPEP 2115 further teaches “In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.”)
Regarding claim 13,
The apparatus as defined in claim 12, wherein (a) the color pigment is configured to change color under UV exposure but not under IR exposure; and(This limitation is directed to material or article worked upon by the apparatus in claim 1. The material or article worked upon is “the color pigment” . MPEP 2115 teaches “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).” MPEP 2115 further teaches “In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.”)
(b) the ultrashort pulse laser transmission element is only configured to operate in the IR range. (Paragraph [24] in Dassie teaches “a laser is used with a wavelength of 1030 nm.” It is inherent that wavelength of 1030 nm is within IR range.)
Regarding claim 14,
The apparatus as defined in claim 1, wherein (a) the indelible identifier is defined at least by a primary pattern field having a primary array of primary light interface elements distributed therein, (Paragraph [21] in Dassie teaches “the production of a continuous groove on the surface of the form by means of laser ablation by the laser ray and by means of the relative displacement of the surface and of the laser ray.” Here The groove corresponds to the primary light interface elements.)
the primary light interface elements being configured to interact with rays from a source of incoming light and thereby collectively present a primary pattern reflected light intensity, (Paragraph [35] teaches “this marking makes it possible to distinguish said pharmaceutical form from counterfeit products by virtue of the use of an optical microscope,”. It is understood that when the grooves are inspected under optical microscope they interact with rays of light, part of the light is reflected towards the microscope.)
(b) the article has a precursor surface configured to interact with the source of incoming light to present a baseline reflected light intensity, and (This limitation is directed to material or article worked upon by the apparatus in claim 1. The material or article worked upon is “the one or more consumable articles”. MPEP 2115 teaches “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).” MPEP 2115 further teaches “In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable.”)
(c) the optical readability is at least in part by way of the primary pattern reflected light intensity being distinguishable from the baseline reflected light intensity from a viewpoint outward of the article. (Paragraph [66] teaches “The verification of the marking pattern, which comprises two closed continuous grooves alongside one another, was done by optical microscopy.” It is implied that patterns are visible under optical microscopy because they reflect light that is distinguishable from other lights.)
Regarding claim 15,
The apparatus as defined in claim 1, wherein (a) the indelible identifier is defined in part by a primary pattern field having a primary array of primary light interface elements distributed therein, (Paragraph [21] in Dassie teaches “the production of a continuous groove on the surface of the form by means of laser ablation by the laser ray and by means of the relative displacement of the surface and of the laser ray.” Here The groove corresponds to the primary light interface elements.)
the primary light interface elements being configured to interact with rays from a source of incoming light and thereby collectively present a primary pattern reflected light intensity, (Paragraph [35] teaches “this marking makes it possible to distinguish said pharmaceutical form from counterfeit products by virtue of the use of an optical microscope,”. It is understood that when the grooves are inspected under optical microscope they interact with rays of light, part of the light is reflected towards the microscope.)
(b) the indelible identifier is defined in part by a secondary pattern field having a secondary array of secondary light interface elements distributed therein, (Paragraph [38] teaches “It is also possible to envisage marking the pharmaceutical form with a marking pattern that is visible to the naked eye which makes it possible to identify the point where the groove invisible to the naked eye is located, according to one or more particular criteria.” Here the pattern visible to naked eye corresponds to the secondary light interface elements.)
the secondary light interface elements being configured to interact with rays from the source of incoming light and thereby collectively present a secondary pattern reflected light intensity, and (Paragraph [38] teaches “It is also possible to envisage marking the pharmaceutical form with a marking pattern that is visible to the naked eye which makes it possible to identify the point where the groove invisible to the naked eye is located, according to one or more particular criteria. This may allow the customs officer easier access to the groove, by optical microscopy”. It is understood that the marking pattern interacts with ray of light and thus becomes visible.)
(c) the optical readability is at least in part by way of the primary pattern reflected light intensity being distinguishable from the secondary reflected light intensity from a viewpoint outward of the article. (Paragraph [66] teaches “The verification of the marking pattern, which comprises two closed continuous grooves alongside one another, was done by optical microscopy.” It is implied that patterns are visible under optical microscopy because they reflect light that is distinguishable from other lights.)
Regarding claim 16,
The apparatus as defined in claim 14, wherein (a) a light source axis is defined as extending between the source and the indelible identifier, (b) a viewing axis is defined as extending between the indelible identifier and the viewpoint, and (c) the viewing axis is off-angle from the light source axis. (The limitation is directed towards the method of reading the article prepared by the apparatus. MPEP 2115 teaches “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). In Otto, the claims were directed to a core member for hair curlers (i.e., a particular device) and a method of making the core member (i.e., a particular method of making that device) and "not to a method of curling hair wherein th[e] particular device is used." 312 F.2d at 940. The court held that patentability of the claims cannot be based "upon a certain procedure for curling hair using th[e] device and involving a number of steps in the process." The court noted that "the process is irrelevant as is the recitation involving the hair being wound around the core" in terms of determining patentability of the particular device. Therefore, the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.”)
Regarding claim 17,
The apparatus as defined in claim 14, wherein the primary light interface elements are configured in part to obstruct the incoming light. (Abstract teaches forming “a continuous groove on the surface thereof, said groove preferably being 20 .mu.m to 50 .mu.m deep and preferably 5 .mu.m to 120 .mu.m wide.” Paragraph [1] teaches “Such a laser marking is invisible to the naked eye, but can be revealed by optical microscopy.” It is inherent that the groove reflects light towards the microscope, thus groove obstructs the incoming light.)
Regarding claim 18,
The apparatus as defined in claim 14, wherein the primary light interface elements are configured in part to reflect the incoming light. (Abstract teaches forming “a continuous groove on the surface thereof, said groove preferably being 20 .mu.m to 50 .mu.m deep and preferably 5 .mu.m to 120 .mu.m wide.” Paragraph [1] teaches “Such a laser marking is invisible to the naked eye, but can be revealed by optical microscopy.” It is inherent that the groove reflects light towards the microscope.)
Regarding claim 21,
The apparatus as defined in claim 14, wherein the indelible identifier includes one or more characters selected from the group consisting of a letter, a number, a symbol, a punctuation mark, a logo, a graphic design and a machine-readable optical code. (Paragraph [16] in Dassie teaches “the pharmaceutical form most commonly comprises at least two grooves each forming a closed continuous line.”)
Regarding claim 28,
The apparatus as defined in claim 1, wherein the optical readability is within the optical radiation portion of the electromagnetic spectrum. (Dassie teaches in paragraph [1] “Such a laser marking is invisible to the naked eye, but can be revealed by optical microscopy.” It is implied that the identifier is within the optical radiation portion because the identifier is visible with an optical microscope.)
Regarding claim 29,
The apparatus as defined in claim 28, wherein the optical readability is within the human-visible portion of the electromagnetic spectrum. (Dassie teaches in paragraph [38] “It is also possible to envisage marking the pharmaceutical form with a marking pattern that is visible to the naked eye which makes it possible to identify the point where the groove invisible to the naked eye is located”.)
Regarding claim 30,
The apparatus as defined in claim 14, wherein the beam of laser energy is configured to form the array of light interface elements by etching of the article. (Dassie teaches in paragraph [30] “The pharmaceutical form is marked (or etched) with the groove (or incision).”)
Regarding claim 61, similar scope to claim 16, therefore rejected under the same argument.
Regarding claim 62, similar scope to claim 17, therefore rejected under the same argument.
Regarding claim 63, similar scope to claim 18, therefore rejected under the same argument.
Regarding claim 66, similar scope to claim 21, therefore rejected under the same argument.
Regarding claim 72, similar scope to claim 30, therefore rejected under the same argument.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dassie as applied to claim 14 above, and further in view of Bunick et al., US 8383159 (hereafter Bunick).
The apparatus as defined in claim 14, wherein the primary light interface elements are configured in part to refract the incoming light. (Dassie is silent about this.
Bunick teaches lenticules 920 formed on a tablet in Fig. 11c. Column 32, lines 55-60 teaches “when light passes through the lenticules 920 of a microrelief coating on a core 921 as illustrated in FIG. 11, it is reflected from an underlying surface, i.e., e.g., the tablet surface that contains printed information or an image. The lenticule refracts the returning light and magnifies the underlying information or image.”
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Fig. 11 in Bunick teaches lights reflecting and refracting from patterns
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to design the pattern on article to refract light as taught in Bunick to the apparatus in Dassie. One of ordinary skill in the art would have been motivated to do so because “As the orientation of the lenticular surface is changed in relation to the line of sight by an observer, different image stripes can then be seen as complete images” as taught in column 32, lines 64-66 in Bunick.)
Claim(s) 64 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dassie as applied to claim 15 above, and further in view of Bunick et al., US 8383159 (hereafter Bunick).
Regarding claim 64, similar scope to claim 19, therefore rejected under the same argument.
Claim(s) 20, 22-24, 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dassie as applied to claim 14 above, and further in view of Klocke et al., WO 2009051794 (hereafter Klocke).
Regarding claim 20,
The apparatus as defined in claim 14, wherein the primary light interface elements are configured in part to absorb the incoming light. (Primary combination of references is silent about this.
Klocke teaches on page 9, paragraph 6 “complex random or semi-random nanostructures with sizes between 10nm and 500nm which significantly enhance the optical surface area of the pill and/or also trap the light leading to increased absorption and therefore darkening of the surface;”.
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to add the nanostructures to absorb light as taught in Klocke to the pattern in Dassie. One of ordinary skill in the art would have been motivated to do so because “Depending on the precise surface geometry a single or a combination of several optical mechanisms are responsible for contrast formation: interference, diffuse single and/or multiple scattering, single and/or multiple reflection and single and/or multiple absorption of visible light” as taught in page 8, paragraph 8 in Klocke.)
Regarding claim 22,
The apparatus as defined in claim 14, wherein the primary light interface elements are homogeneously shaped with respect to one another. (Primary combination of references is silent about this.
Klocke teaches homogenous structures 10b in Fig. 1b.
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Fig. 1b in Klocke
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to add the structures in Fig. 1b as taught in Klocke to the pattern in Dassie. One of ordinary skill in the art would have been motivated to do so because “Depending on the precise surface geometry a single or a combination of several optical mechanisms are responsible for contrast formation: interference, diffuse single and/or multiple scattering, single and/or multiple reflection and single and/or multiple absorption of visible light” as taught in page 8, paragraph 8 in Klocke.)
Regarding claim 23,
The apparatus as defined in claim 14, wherein the primary light interface elements are arranged randomly throughout a majority or an entirety of the primary pattern field. (Primary combination of references is silent about this.
Klocke teaches randomly arranged structures in Fig. 5B.
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Fig. 5 in Klocke
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to add the random structures as taught in Klocke to the pattern in Dassie. One of ordinary skill in the art would have been motivated to do so because “Depending on the precise surface geometry a single or a combination of several optical mechanisms are responsible for contrast formation: interference, diffuse single and/or multiple scattering, single and/or multiple reflection and single and/or multiple absorption of visible light” as taught in page 8, paragraph 8 in Klocke.)
Regarding claim 24,
The apparatus as defined in claim 14, wherein the primary light interface elements are arranged equidistantly in a first direction throughout a majority or entirety of the primary pattern field. (Primary combination of references is silent about this.
Klocke teaches equidistant structures 10b in Fig. 1b.
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to add the structures in Fig. 1b as taught in Klocke to the pattern in Dassie. One of ordinary skill in the art would have been motivated to do so because “Depending on the precise surface geometry a single or a combination of several optical mechanisms are responsible for contrast formation: interference, diffuse single and/or multiple scattering, single and/or multiple reflection and single and/or multiple absorption of visible light” as taught in page 8, paragraph 8 in Klocke.)
Regarding claim 27,
The apparatus as defined in claim 15, wherein (a) the primary light interface elements are spaced apart from one another to define primary interstitial surfaces therebetween; (Fig. 5a in Klocke)
(b) the secondary light interface elements are spaced apart from one another to define secondary interstitial surfaces therebetween; and (Fig. 5a in Klocke)
(c) the primary interstitial surfaces are non-coplanar with the secondary interstitial surfaces. (Fig. 5a in Klocke)
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Fig. 5 in Klocke
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to add the structures in Fig. 5a as taught in Klocke to the pattern in Dassie. One of ordinary skill in the art would have been motivated to do so because “Depending on the precise surface geometry a single or a combination of several optical mechanisms are responsible for contrast formation: interference, diffuse single and/or multiple scattering, single and/or multiple reflection and single and/or multiple absorption of visible light” as taught in page 8, paragraph 8 in Klocke.)
Claim(s) 65-69 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dassie as applied to claim 15 above, and further in view of Klocke et al., WO 2009051794 (hereafter Klocke).
Regarding claim 65, similar scope to claim 20, therefore rejected under the same argument.
Regarding claim 67, similar scope to claim 22, therefore rejected under the same argument.
Regarding claim 68, similar scope to claim 23, therefore rejected under the same argument.
Regarding claim 69, similar scope to claim 24, therefore rejected under the same argument.
Claim(s) 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dassie and Klocke as applied to claim 24 above, and further in view of Posage, WO 9748384 (hereafter Posage).
Regarding claim 25,
The apparatus as defined in claim 24, wherein the primary light interface elements are arranged equidistantly in a second direction throughout a majority or an entirety of the primary pattern field. (Primary combination of references is silent about this.
Posage teaches “An alternative comprises moving a solid dosage form past a plurality of pulsed laser beams arranged along a single line thus creating dot matrix patterns on the surface of the solid dosage form” in page 3, paragraph 7.
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to add the matrix structures as taught in Posage to the pattern in Dassie. One of ordinary skill in the art would have been motivated to do so because “Finally, the method using a laser has the further advantage of not introducing any new materials into the dosage form, which is a distinct advantage in pharmaceutical applications” as taught in page 3, paragraph 4 of Posage.)
Regarding claim 26,
The apparatus as defined in claim 25, wherein the first direction and the second direction are perpendicular to one another. (Posage teaches “An alternative comprises moving a solid dosage form past a plurality of pulsed laser beams arranged along a single line thus creating dot matrix patterns on the surface of the solid dosage form” in page 3, paragraph 7. It is inherent that a matrix pattern has two directions perpendicular to one another.
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to add the matrix structures as taught in Posage to the pattern in Dassie. One of ordinary skill in the art would have been motivated to do so because “Finally, the method using a laser has the further advantage of not introducing any new materials into the dosage form, which is a distinct advantage in pharmaceutical applications” as taught in page 3, paragraph 4 of Posage.)
Claim(s) 70-71 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dassie and Klocke as applied to claim 69 above, and further in view of Posage, WO 9748384 (hereafter Posage).
Regarding claim 70, similar scope to claim 25, therefore rejected under the same argument.
Regarding claim 71, similar scope to claim 26, therefore rejected under the same argument.
Conclusion
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/FAHMIDA FERDOUSI/ Examiner, Art Unit 3761