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 .
Summary
The Applicant’s arguments and claim amendments received on December 17, 2025 are entered into the file. Currently, claim 1 is amended; claims 3, 7-13, 18, and 19 are cancelled; resulting in claims 1, 2, 4-6, and 14-17 pending for examination.
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.
Claims 1, 2, 4-6, and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Olsson (US 2011/0200656, previously cited) in view of O’Keeffe et al. (US 2018/0244616, previously cited), Uhr et al. (US 2016/0360753, previously cited), Otto et al. (EP 2634309, previously cited), and “The Chemistry of Paper and Polymer Banknotes” by Compound Interest (https://web.archive.org/web/ 20161201165229/https://www.compoundchem.com/wp-content/uploads/2016/09/ The-Chemistry-of-Paper-and-Polymer-Banknotes.pdf; Published December 1, 2016; Retrieved from Wayback Machine; hereinafter “Compound Interest”).
Regarding claims 1, 2, 4-6, and 14-17, Olsson teaches a banknote having a superficial polymer layer or coating disposed thereon, wherein the coating (varnish) contains one or more antimicrobial agents ([0016]-[0017]). Olsson teaches that suitable antimicrobial agents can be incorporated in the coating composition in order to inhibit the growth of microbes on the substrate, thus counteracting the public health concern of microbial transfer from one handler of the banknote to the next ([0014], [0021]). Olsson teaches that the antimicrobial agent may be used with efficacy at concentrations ranging from about 500 ppm to about 20,000 ppm (i.e., 0.005 to 2 wt%) ([0032]), which overlaps the ranges of claims 1 and 2.
Although Olsson mentions that known antimicrobial agents such as silver, copper, zinc, triclosan, isothiazolone-based compounds, and the like can be effective when used at amounts overlapping the claimed ranges ([0022]-[0024], [0032]), the reference does not expressly teach that the varnish comprises a lactam, in particular, where the lactam is included in the varnish at an amount meeting the claimed ranges.
However, in the analogous art of anti-microbial coatings, O’Keeffe et al. teaches a composition suitable for use as anti-microbial, anti-biofilm, and bacteriostatic compositions (Abstract). O’Keeffe et al. teaches that the composition can be used as an anti-biofilm coating or paint and may comprise a lactam ([0005], [0008]). Similar to Olsson, O’Keeffe et al. teaches that the composition contains 0.000001 to 50 wt% lactam, preferably 0.01 to 2 wt% ([0011]), which overlaps the ranges of claims 1 and 2. O’Keeffe et al. further teaches two specific lactam compounds, i.e., 4-(4-chlorophenyl)-5-methylene-pyrrol-2-one and 5-methylene-4-(p-tolyl)pyrrol-2-one, which exhibit unexpectedly low toxicity when compared to other lactams having anti-microbial activity, thus making them especially suited for use in compositions which are regularly used by a consumer and which may be accessible to children and domestic animals ([0004], [0012]).
Given that banknotes are articles that regularly come into contact with the skin of a user, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the banknote of Olsson by selecting a lactam, in particular 4-(4-chlorophenyl)-5-methylene-pyrrol-2-one or 5-methylene-4-(p-tolyl)pyrrol-2-one, as the antimicrobial agent, as taught by O’Keeffe et al., based on their art-recognized suitability for inhibiting the growth of microorganisms on a surface. One of ordinary skill in the art would have been motivated to select the particular lactam compounds taught by O’Keeffe et al. because these lactams exhibit low toxicity to users while retaining sufficient anti-microbial activity, consistent with the objectives of Olsson. Furthermore, it is noted that O’Keeffe et al. teaches an effective amount of the lactam in the coating which overlaps the ranges of claims 1 and 2. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Olsson in view of O’Keeffe et al. differs from the claimed invention in that the combination of references does not expressly teach that the lactam is in encapsulated form, wherein the lactam is encapsulated in a polymer selected from a polyurea polymer, a melamine-formaldehyde copolymer, a urea-formaldehyde copolymer, and mixtures thereof.
However, in the analogous art of anti-microbial coatings, Uhr et al. teaches microcapsules containing one or more biocides, wherein the microcapsules provide improved protection of coating compositions against microbiological attack ([0001], [0004], [0012]). Uhr et al. teaches that biocides which have solubility in water and which are used in coating compositions having frequent contact with water may be washed out from the coating through a process called “leaching”, which results in a reduction in the biocidic effect of the coating composition as well as a severe local burden on the environment [0003]. The leaching of a biocidic component from a coating composition should be low so that the coatings are protected for a long time, wherein one option of reducing leaching is to use micro-encapsulations [0003]. Uhr et al. teaches that the microencapsulation material is a melamine-formaldehyde polymer, which is shown to have a particularly low leaching rate and high storage stability ([0013], [0064]-[0065], [0109]). Uhr et al. further teaches that general processes for producing microcapsules, in particular microcapsules of melamine-formaldehyde polycondensates, are known [0023].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the varnished banknote of Olsson in view of O’Keeffe et al. by providing the antimicrobial agent (i.e., the lactam) in encapsulated form using a melamine-formaldehyde copolymer as the encapsulating material, as taught by Uhr et al., for the benefit of reducing the leaching rate of the lactam from the varnish, thus improving the biocidic effect of the varnish.
With respect to the claimed double layer of varnish, Olsson teaches that the coating may a polymeric layer such as a transparent acrylate polymer layer or coating which is applied to protect the banknote, wherein the polymer coating can be applied as one or more layers and can be cured by an ultraviolet radiation curing process ([0016]-[0019]), but does not expressly teach that the varnish coating comprises both a water-based undercoat and an ultraviolet drying top coat.
However, in the analogous art of anti-microbial coatings, Otto et al. teaches a security paper for the production of valuable documents, such as banknotes, comprising a flat substrate which is at least partially provided with an antimicrobial coating (varnish) in order to extend the service life and fitness for circulation and to avoid endangering users from pathogenic microorganisms [0001]. Otto et al. teaches that the antimicrobial coating can be single-layer or multi-layer, where a multi-layer coating may be designed in two layers comprising an upper layer (top coat) that protects the substrate from physical and chemical influences, while the lower layer (undercoat) establishes contact with the substrate [0018]. A radiation-curing varnish, in particular a UV-crosslinking varnish (ultraviolet drying varnish), is used for the upper coating layer for its high abrasion and chemical resistance [0019]. The lower coating layer or primer layer is preferably formed by a physically drying lacquer layer, such as a water-based dispersion, which dries through evaporation and/or removal of solvents, wherein the primer layer serves to smooth the depressions, bumps, and pores of the substrate before the radiation-curing lacquer layer is applied ([0020]-[0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the varnished banknote of Olsson in view of O’Keeffe et al. and Uhr et al. by forming the varnish as a double layer comprising a water-based undercoat and an ultraviolet drying top coat, as taught by Otto et al., in order to smooth the surface of the substrate with the primer undercoat and to protect the substrate from damage due to physical and/or chemical influences with the UV-curing top coat.
With respect to the material of the banknote substrate, although Olsson teaches that the substrate material of the banknote is comprised of a polymer, such as a polypropylene film ([0015]), the reference does not expressly teach that the polypropylene is a biaxially oriented polypropylene (BOPP).
However, Compound Interest teaches that newer polymer banknotes are usually made from biaxially oriented polypropylene (BOPP), where ‘biaxially oriented’ refers to the manner in which the polymer is stretched during production, increasing its strength and transparency. White pigment, inks, and varnish are later applied to the notes.
It would, therefore, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the vanished banknote of Olsson in view of O’Keeffe et al., Uhr et al., and Otto et al. by selecting a biaxially oriented polypropylene as the propylene film used as the substrate material of the banknote, as taught by Compound Interest, given that such biaxially oriented polypropylene films exhibit increased strength and transparency and are recognized as being suitable for use as the material of a banknote substrate.
Response to Arguments
Response-Claim Rejections - 35 USC § 103
Applicant’s arguments, see pages 6-7 of the remarks filed December 17, 2025, with respect to amended claim 1 have been considered but are moot because they do not address the new combination of references being used in the rejections above. In light of the amendments to claim 1, the previous rejections based on Krupnick et al., Kumar et al., Fidge et al., and Otto et al. are withdrawn, and new rejections based on Olsson in view of O’Keeffe et al., Uhr et al., Otto et al., and “Compound Interest” are presented in the office action above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lang et al. (“Polymer bank notes”, https://www.rbnz.govt.nz/-/media/project/sites/rbnz/files/publications/bulletins/1999/1999jun62-2langbarry.pdf; Published June 1999) teaches that the polymer substrate used by the Reserve Bank of Australia comprises a core layer of biaxially oriented polypropylene (BOPP) in the form of a clear plastic film, to which two layers of white ink are applied to each side of the note apart from an area that is deliberately left clear, forming a transparent window (p. 44-45). The transparent window feature in the polymer note may be used as a security feature to combat counterfeiting (p. 44-45).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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/Rebecca L Grusby/Examiner, Art Unit 1785