DETAILED ACTION
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, 4, 6-8, 11, 13-14, and 21-24, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bala et al. (US 2007/0262579).
In respect to claims 1, 4, 6-8, and 14, Bala et al. disclose a method of providing a multispectral watermark comprising: providing a color pattern formed of color mixtures 1 and 2 (metameric pair of inks), wherein the metameric pair of inks use CMYK toners that allow more or less ultraviolet light to reach the underlying fluorescing media where it is rendered (0035: Fig. 1). Bala et al. do not explicitly disclose the IR properties of the device, particularly that the same watermark reflects differently in the IR spectrum in one of the two metameric pairs, however, Bala et al. disclose one embodiment wherein the metameric pairs are grey: one is provided only as black toner, and the other is provided by yellow mixed with cyan and magenta (which appear identical in visible light) (0036). Black toner inherently absorbs IR light, while the other colors do not substantially absorb (and highly reflect IR). This inherency is supported by Bala et al. (US 2008/0305444) (0035; Fig. 3). Thus, Bala et al. ‘579 inherently discloses the IR features of the device.
Bala. et al. ‘579 disclose appearance as a single color (e.g. gray) or else patterning (Fig. 5). Bala et al. ‘579 disclose paper used as the optically brightened “fluorescing” underlying substrate (0009). Bala et al. ’579 further disclose that at least some of inks usable in the metameric pair, specifically yellow, highly reflect in the infrared spectrum, as shown by the reflectance of yellow up to 772 nm ( >750 nm, which comprises the IR-spectrum). In respect to the new recitations “extra variable data layer” and “correlation mark data”, they are impossible to ascertain and thus compare to the prior art. Bala et al. further disclose the amended limitation, in at least one example, wherein “darker spots” (50% halftone of pure black ink) is used for one ink as compared to the other ink which uses a CYM mixture, the CYM ink allowing more UV light to pass (0036). Darker “spots” may also correspond to a pattern, wherein spots in one ink allow more UV light (Fig. 4).
Bala et al. further now state that the multispectral watermark is verifiable when visible with an IR camera, which is a functional limitation. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997). (MPEP 2114). The inks having the intrinsic IR properties as described above are capable of being verified by an IR camera.
In respect to the amended subject matter, Bala et al. disclose the claimed invention for the reasons stated above. All the functional limitations amended are clearly disclosed by the structure in Bala (See Response to Arguments).
In respect to claims 11 and 13, Bala et al. disclose the claimed invention. As detailed in several previous responses, the intention (“instruction”) of the metameric pair to provide a difference in UV-transparency such as to produce differentiation under UV illumination, at least in some embodiments inherently produces a metameric pair that provides a difference in IR-reflection/absorption, as one metameric pair may be produced with pure black (e.g. carbon black, highly absorbative) and the other metameric pair may be produced with CYK colors (rich black) which is largely reflective.
In respect to claims 21-24, Bala et al. disclose the claimed limitations for the reasons detailed above. Bala explicitly teaches configurating the spectrally encoded image which is verifiable in UV, and as detailed above, the UV-pattern will intrinsically have a differing IR-pattern.
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 1, 4, 6-8, 11, 13-14, and 21-24, are further rejected under 35 U.S.C. 103 as being unpatentable over Bala et al. (US 2007/0262579) in view of Bala et al. (US 2008/0305444).
Bala et al. disclose a very absorptive ink (black) which intrinsically very absorptive in all visible wavelengths (so that it appears black) and thus will carry over as at least very absorptive in at least near-IR range. Regardless, although Bala et al. ‘579 does not teach that the metameric pair with more black pigment necessarily contains carbon black (rendering it very IR-absorptive) it would have been obvious in view of Bala et al ‘444. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, selected carbon black as a black pigment since it is a common in the art, as stated by Bala et al. ’444. Bala et al. 579’ and Bala et al. ‘444 essentially disclose the same metameric structure, the difference being the usage of the verification under UV or IR spectra.
Any verification of the IR properties of the metameric pair, although not required by the claims, would be obvious in view of Bala ‘444, namely, to produce a secondary latent image through IR.
Response to Arguments
Applicant's arguments filed 10/16/25, pertaining to the 35 USC 102 and 35 USC 103 rejections, have been fully considered but they are not persuasive.
Many arguments are drawn to previously argued features which were not persuasive as adequately addressed in previous actions.
For new arguments drawn to the amendment, the applicant contends that “Bala does not teach or suggest a system or a method in which a watermark is simultaneously verifiable under both IR and UV illumination conditions [emphasis added]”, however this is not claimed. The claims only state that the IR and UV illumination conditions both produce measurable contrast, which is clearly anticipated or rendered obvious by the art. Regardless, the printed article of Bala et al. discloses, just in one example, a printed area looking gray (patterned black toner coverage) and a non-patterned mix of magenta, cyan, and yellow, would both produce distinct patterns in both lighting conditions: the black toner of the first colorant essentially absorbs all IR light while the other pattern does not (or reflects e.g. via yellow) which would result in a clearly marked patterned IR response in the first colorant and similarly the yellow in the second colorant will suppress the UV fluorescence of the white substrate, while the patterned black toner pattern will selectively allow light to reach the white substrate unobstructed, providing a clearly marked patterned UV response. In respect to the lack of evidence for the inherency argument that the black toner intrinsically has, is not persuasive. Even though carbon black is not explicitly taught, black toner, by definition absorbs visible light. Since the IR spectrum directly adjacent, it stands to reason that at the very least the black will strongly absorb at wavelengths just outside visible light, as would be readily ascertained by one of ordinary skill. Since the yellow colorant strongly reflects IR (See Fig. 2) a pattern would be visible, even if the black toner was not fully absorbing.
In respect to the argument that Bala fails to disclose “formulating the first ink to have a different UV transmittance than the second dink by adjusting the amount of paper white incorporated into the ink composition” is not persuasive. Bala explicitly discloses that the first ink may be patterned black toner and the second ink may have high amounts of yellow (see above, 0036), thus the first ink is formulated to have a different UV transmittance than the second ink, by providing a pattern (lack of total coverage) thus exposing the “paper white”.
In respect to arguments against In re Schreiber, the applicant is correct that the claims are method claims, however, there is no positive recitation of any verification step. Rather, the applicant provides for a method/system for the creation of a metameric pair of inks. Any limitations drawn to what that resultant article is capable of is not a provision of the method step, and thus they were correctly identified as functional limitations.
In respect to newly added claims 21-24, the claims are fully anticipated or obvious over Bala. It appears that the applicant is attempting to distinguish the applicant by intent via “configuring… produces distinguishable contrast in the selected non-visible spectral regions”, however Bala explicitly disclosed configuring the ink pairs for different response in the UV-spectrum. Due to the inherency, or else obviousness, of black toner providing differential IR-spectrum response, configuring a pattern for UV-spectrum analysis is also, even if not intended, configuring for IR-spectrum analysis.
The 35 USC 112 rejection has been obviated by amendment.
Conclusion
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 KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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