DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 11, 2026 has been entered.
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.
Claims 1, 3-6, 8-9, 12, and 14-15 are rejected under each of 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Yamada et al. (US 2019/0152244 A1).
With respect to claim 1, Yamada et al. teaches a method of manufacturing discretized optical security microstructures 32 on a substrate 52, comprising the steps of:
a) providing an ink 30’ (see paragraph [0109]) into cavities 12, 14 of a shim 100B, wherein each of the cavities of the shim represents a discretized optical security microstructure (see paragraphs [0002], [0032] and [0112]-[0113]), wherein the cavities comprise a first cavity having a first shape (i.e., the cavities 12, 14 on either end of the plate 100B in Figure 5(a)) and a second cavity having a second shape ( i.e., cavity 12 in the center of the plate 100B in Figure 5(a)), and wherein the first shape is different than the second shape (see, in particular, Figs 5(a), 5(c) and 6 and paragraph [0111] which illustrate and describe that the shapes are different and may be arbitrary),
b) pressing the shim 100B against the substrate 52 (Fig. 8(c)),
c) removing the shim 100B from the substrate 52 (Fig. 8(d)),
wherein in the step c) the shim 100B is removed from the substrate 52 such that the ink remains on a surface of the substrate, forming the discretized optical security microstructures 32, which form an image (i.e., a pattern, indicia, character, etc. as shown in Figures 2(a)-2(c) and described in paragraph [0054]), and
wherein each discretized optical security microstructure 32 is placed in a designed place (i.e., each microstructure is provided in a specific location on the substrate 52 defined by the geometry of the shim 100B),
wherein each discretized optical security microstructure 32 is separated from other such discretized optical security microstructures 32 by a separation distance S (see Figure 2(c) for example). Particular attention is invited to Figures 1-2, 5-6, and 8-9 as well as paragraphs [0103]-[0113] of Yamada et al.
With respect to claim 3, Yamada et al. teaches wherein a thickness of the ink 30 printed on the surface of the substrate 52 is defined as a function f of the location on the surface: wherein (x, y) are coordinates of a point on the surface and the thickness z1 is measured in the direction normal (i.e., perpendicular), to the surface, as shown in Figures 5(c).
With respect to claim 4, Yamada et al. teaches a step of hardening the discretized optical security microstructures 32 via exposure to curing energy (i.e., UV) from source, as described in paragraphs [0049], [0069], [0130] and [0133] and shown, for example, in Figure 8(c).
With respect to claim 5, Yamada et al. teaches wherein the discretized optical security microstructure 32 forms a lens, or a diffractive lens like structure, or other optical element, as described in paragraphs [0112]-[0113].
With respect to claim 6, Yamada et al. teaches the surface 36p of the discretized optical security element 32 is an optically active surface, as described in paragraph [0056] and shown in Figures 5(a) and 5(c) in particular.
With respect to claim 8, Yamada et al. teaches the substrate 52 comprises plastic or paper in paragraphs [0049] and [0123].
With respect to claim 9, Yamada et al. teaches wherein UV light is used in the hardening step, as described in paragraphs [0049], [0069], [0130] and [0133] and shown in Figure 8(c).
With respect to claim 12, Yamada et al. teaches the discretized optical security microstructures have at least two different heights or different surfaces, as shown in Figures 5(a) and 5(c).
With respect to claim 14, Yamada et al. teaches wherein the separation distance S is from 1 µm to 50 cm, as described in paragraph [0055] and shown in Figure 2(c).
With respect to claim 15, note Yamada et al. teach the substrate may include a “relief” (i.e., an intermediate layer) upon which the discretized optical security microstructure can be placed, as shown in Figures 9(d)-9(e) and described in paragraphs [0067]-[0070].
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.
Claims 2, 10-11, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. (US 2019/0152244 A1) in view of Holmes et al. (US 2018/0194157 A1).
With respect to claim 2, Yamada et al. teaches a method as recited but is silent with respect to the details of the application of ink on the surface of the shim and whether it includes removing excess ink from the shim such that the ink remains in the cavities. However, Holmes et al. teaches a method of manufacturing discretized optical security microstructures formed in a shim that includes the two steps of a1) providing the ink 205, 205a, 205b onto a surface of the shim 221’ and a2) removing excess ink (via scraper 213’, 213a”, 213b”) from the shim 221’ such that the ink 205, 205a, 205b remains in the cavities 225. See, for example, paragraphs [0097] and [0108] of Holmes et al. In view of this teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide steps of providing the ink onto the surface of the shim and removing excess ink from the shim such that the ink remains in the cavities to insure that excess ink is properly removed and only the ink in the cavities is transferred to the substrate as desired.
With respect to claim 10, Yamada et al. teaches a method as recited with the possible exception of using heat in the hardening step. However, Holmes et al. teaches a method of manufacturing discretized optical security microstructures including a step of hardening the microstructures using a variety of means including radiation, electron beam or heat, as described in paragraph [0060]. In view of this teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the hardening of the microstructures to occur using heat as it would simply require the obvious substitution of using one known hardening means for another to provide for appropriate hardening of the printed ink as desired.
With respect to claim 11, note that Yamada et al. teaches the discretized optical security microstructures having a width and length from 80 µm to 50 cm as described, for example, in paragraph [0111] and shown in Figure 6 but is silent with respect to the particular depth of the microstructures. Note Yamada et al. teaches the depth of the recessed portions 16p to be certain values in paragraph [0048] but is silent with respect to the overall depth of the entire microstructure element 32. However, Holmes teaches it is well known in the art to provide the formation of discretized optical security microstructures having a depth from 300 nm to 100 µm as discussed in paragraphs [0087]-[0091] and [0125]-0129]. Furthermore, the particular sizing of the optical security microstructure{s)/cavities is an obvious matter of design choice that is dependent upon the desired optical effect to be printed and the type of inks/substrates used. In view of this, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the discretized optical security microstructures/cavities of Yamada et al. to have any desired size, such as having a width and length from 80 µm to 50 cm and having a depth from 300 nm to 100 µm, as it would simply require the optimum selection of the desired sizing to produce the desired optical effects and such sizes of optical security microstructures are well known in the art.
With respect to claim 16, Yamada et al. teaches a shim 100B for use in manufacturing discretized optical security microstructures on a substrate 52, the shim comprising a plurality of cavities 12, 14, wherein the cavities have a width and length from 80 µm to 50 cm (see paragraph [0111]), wherein each of the cavities of the shim represents a discretized optical security microstructure representing diffractive or another optically active surface (see paragraph [0056]), wherein the discretized optical security microstructures form an image (see Figures 2(a)-2(c), and wherein each of the discretized optical security microstructures are place in a designed place (i.e., each microstructure is provided in a specific location on the substrate 52 defined by the geometry of the shim 100B), wherein the discretized optical security microstructures comprise a first discretized optical security microstructure having a first shape (i.e., the cavities 12, 14 on either end of the plate 100B in Figure 5(a)) and a second discretized optical security microstructure having a second shape ( i.e., cavity 12 in the center of the plate 100B in Figure 5(a)), wherein the first shape is different from the second shape (see, in particular, Figs 5(a), 5(c) and 6 and paragraph [0111] which illustrate and describe that the shapes are different and may be arbitrary), and wherein each discretized optical security microstructure 32 is separated from other such discretized optical security microstructures 32 by a separation distance S (see Figure 2(c) for example).
With respect to the particular size of the cavities, note that Yamada et al. teaches the discretized optical security microstructures/cavities having a width and length from 80 µm to 50 cm as described, for example, in paragraph [0111] and shown in Figure 6 but is silent with respect to the particular depth of the microstructures/cavities. Note that Yamada et al. teaches the depth of the recessed portions 16p to be certain values in paragraph [0048] but is silent with respect to the overall depth of the entire microstructure element 32. However, Holmes teaches it is well known in the art to provide the formation of discretized optical security microstructures from cavities in a shim, the microstructures having a depth from 300 nm to 100 µm as discussed in paragraphs [0087]-[0091] and [0125]-0129]. Furthermore, the particular sizing of the optical security microstructure{s) and/or cavities forming the microstructures is an obvious matter of design choice that is dependent upon the desired optical effect to be printed and the type of inks/substrates used. In view of this, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the discretized optical security microstructures of Yamada et al. to have any desired size, such as having a width and length from 80 m to 50 cm and having a depth from 300 nm to 100 m, as it would simply require the optimum selection of the desired sizing to produce the desired optical effects and such sizes of optical security microstructures are well known in the art.
With respect to claim 17, Yamada et al. teaches each cavity has a different size or surface, as shown in Figures 5(a) and described in paragraph [0111].
With respect to claim 18, Yamada et al. teaches wherein the separation distance S is from 1 µm to 50 cm, as described in paragraph [0055] and shown in Figure 2(c).
With respect to claim 19, Yamada et al. teaches the shim 100B is made of metal in paragraph [0073].
With respect to claim 20, Yamada et al. teaches wherein a thickness of the ink 30 printed on the surface of the substrate 52 is defined as a function f of the location on the surface: wherein (x, y) are coordinates of a point on the surface and the thickness z1 is measured in the direction normal (i.e., perpendicular), to the surface, as shown in Figures 5(c).
With respect to claim 21, Yamada et al. teaches wherein said one or more cavities of the shim are a negative of the discretized optical security microstructure or are a positive of the discretized optical security microstructure, as shown in Figures 5(a) and 5(c) and described in paragraph [0110].
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. (US 2019/0152244 A1) in view of Hill (EP 2 290 620 A1).
With respect to claim 13, Yamada et al. teaches a method as recited with the exception of including a second layer over the first layer (i.e., substrate) such that the discretized optical security microstructure is between the substrate and the second layer. However, note Hill teaches the manufacture of a security device wherein a protective layer can be applied over the optical security element on a substrate such that the optical security element is between the substrate and the second layer to protect the security device from damage. See, for example, Figure 1B and paragraph [0046] of Hill. In view of this teaching, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the substrate of Yamada et al. to be laminated with a protective layer as taught by Hill such that the optical security microstructure of Yamada et al. is provided between the substrate and the protective layer to allow for the optical security microstructure to be appropriately protected from damage.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6 and 8-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ogata (JP H09315023 A), Davis et al. (WO 2005/080089 A1) and Nakamura et al. (JP 2007-152645 A) each teach an intaglio printing arrangement including cells with different shapes and having similarities to the claimed subject matter that are readily apparent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE J THOMPSON whose telephone number is (571) 272-2161. The examiner can normally be reached M-W 8:30-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen D Meier can be reached at 571-272-7149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Leslie J Thompson/Primary Examiner, Art Unit 2853
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